START-UP TRADEMARK OPPOSITION POLICY

DECISION

Andrew Corporation v. Vitty Inc.

Claim Number: FA0204000112440

PARTIES

Complainant is Andrew Corporation, Orland Park, IL, USA (“Complainant”) represented by Zachary Smolinski, of Jenkens & Gilchrist.  Respondent is Paul Chou d/b/a Vitty Inc., Taipei, TAIWAN (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <andrew.biz>, registered with 007 Names Inc.

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge, has no known conflict in serving as Panelist in this proceeding.

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint, as it timely filed the required Intellectual Property (IP) Claim Form with the Registry Operator, NeuLevel.  As an IP Claimant, Complainant timely noted its intent to file a STOP Complaint against Respondent with the Registry Operator, NeuLevel and with the National Arbitration Forum (the “Forum”).

Complainant submitted a Complaint to the Forum electronically on April 26, 2002; the Forum received a hard copy of the Complaint on April 27, 2002.

On May 2, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 22, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with paragraph 2(a) of the Rules for the Start-up Trademark Opposition Policy (the “STOP Rules”).

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On June 13, 2002, pursuant to STOP Rule 6(b), the Forum appointed Sandra Franklin as the single Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the STOP Rules.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the STOP Policy, STOP Rules, the Forum’s STOP Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Transfer of the domain name from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

1. Respondent’s <andrew.biz> domain name is identical to Complainant’s ANDREW mark.

2. Respondent has no rights or legitimate interests in the <andrew.biz> domain name.

3. Respondent registered the <andrew.biz> domain name in bad faith.

B. Respondent failed to submit a Response.

FINDINGS

Complainant is the owner of forty-three trademark registrations and four pending applications held worldwide for the ANDREW mark. Specifically, Complainant owns U.S. Reg. No. 959,263 issued May 22, 1973, No. 1,861,667 issued November 8, 1994, and Taiwan Reg. No. 635,484 issued March 1, 1994, among others. Complainant has continuously and consistently used its ANDREW mark in the marketing and sales of its products and services throughout the world. Complainant also operates a website at <andrew.com>.

Respondent registered the contested domain name on March 27, 2002 and has yet to develop a purpose for the attached website. Complainant’s investigation has determined that Respondent does not own any registered trademarks or service marks for the ANDREW mark. Also, Respondent is not a franchisee or a licensee of Complainant. Furthermore, Respondent has operated a business in competition with Complainant since as early as 2000.  

DISCUSSION

Paragraph 15(a) of the STOP Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the STOP Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the STOP Rules.

Paragraph 4(a) of the STOP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:

(1) the domain name is identical to a trademark or service mark in which the Complainant has rights; and

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered or is being used in bad faith.

Due to the common authority of the ICANN policy governing both the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel will exercise its discretion to rely on relevant UDRP precedent where applicable.

Under the STOP proceedings, a STOP Complaint may only be filed when the domain name in dispute is identical to a trademark or service mark for which a Complainant has registered an Intellectual Property (IP) claim form.  Therefore, every STOP proceeding necessarily involves a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights.  The existence of the “.biz” generic top-level domain (“gTLD”) in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights.

Complainant’s Rights in the Mark

Complainant has established that it has rights in the ANDREW mark through international registration with various worldwide authorities, including the Respondent’s place of domicile, and subsequent continuous use of the mark in commerce since at least 1973. Respondent’s <andrew.biz> domain name is identical to Complainant’s ANDREW mark in form and spelling, thereby satisfying the identical requirement of STOP Policy ¶ 4(a)(i).

           

Accordingly, the Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to come forward with a Response. Therefore, it is presumed that Respondent has no rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondent’s failure to respond can be construed as an admission that they have no legitimate interest in the domain names). Furthermore, when Respondent fails to submit a Response the Panel is permitted to make all inferences in favor of Complainant. See Vertical Solutions Mgmt., Inc. v. Webnet-Marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

Complainant has established that it has rights in the disputed domain name because it is the owner of the relevant internationally registered trademarks. Respondent has not come forward to proffer any evidence that it has rights in the ANDREW mark anywhere in the world. Therefore, Respondent has not established rights or legitimate interests in the <andrew.biz> domain name under STOP Policy ¶ 4(c)(i). See Nat’l Acad. Of Recording Arts & Sci Inc. v. Lsites, FA 103059 (Nat. Arb. Forum Feb. 11, 2002) (finding that, because Respondent did not come forward with a Response, the Panel could infer that it had no trademark or service marks identical to <grammy.biz> and therefore had no rights or legitimate interests in the domain name).

It can be inferred that Respondent’s planned use of the domain name identical to Complainant’s mark will be to divert Internet users interested in Complainant’s services to Respondent’s website. As stated in the findings, Respondent is involved in the same business as Complainant and competes for customers with similar interests. Therefore, Respondent’s registration of <andrew.biz> is not in connection with a bona fide offering of goods and services under STOP Policy ¶ 4(c)(ii). See William L. Lyon & Assocs., Inc. v. Yata, FA 103043 (Nat. Arb. Forum March 21, 2002)  (finding the Respondent’s “intent to trade [on] the goodwill of Complainant’s mark, by attracting Internet users confused as to the likely affiliation between Complainant and Respondent’s website” indicated the respondent had no rights or legitimate interests pursuant to STOP Policy ¶ 4(c)(ii)); see also Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no rights or legitimate interests where Respondent diverted Complainant’s customers to his websites).

There is no evidence on the record, nor has Respondent come forward to establish that it is commonly known by the <andrew.biz> domain name pursuant to STOP Policy ¶ 4(c)(iii). Respondent is known to this Panel as Paul Chou, or Vitty, Inc. Complainant’s investigation has determined that Respondent operates a website at <vitty.com> where there is no mention of the ANDREW mark or any variation of it. See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

The Panel finds that STOP Policy ¶ 4(a)(ii) has been satisfied.

Registration or Use in Bad Faith

There are unrefuted circumstances indicating that Respondent registered the domain name primarily for the purpose of disrupting the business of Complainant. As previously stated in the findings, Respondent has been in competition with Complainant since as early as 2000 offering similar services and selling comparable products while operating from its <vitty.com> website. Registering Complainant’s ANDREW mark in a domain name represents bad faith under STOP Policy ¶ 4(b)(iii). The ANDREW mark represents a mark in which Respondent has no apparent legitimate business interest in except in using it to disrupt Complainant’s business. See EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the Complainant's marks suggests that the Respondent, the Complainant’s competitor, registered the names primarily for the purpose of disrupting the Complainant's business); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that Respondent registered the domain name in question to disrupt the business of Complainant, a competitor of Respondent).

Due to Complainant’s numerous international registrations of the ANDREW mark, Complainant’s business being in competition with Respondent, and NeuLevel’s STOP IP claim notification procedure, Respondent was aware of the existence of Complainant’s ANDREW mark when it registered the disputed domain name. Respondent’s subsequent registration of the disputed domain name signifies bad faith registration under STOP Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration); see also Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002) (finding that the unique nature of the STOP Policy and the notice given to Respondent regarding existing IP Claims identical to its chosen domain name precluded good faith registration of <genelogic.biz> when Respondent registered it with “full knowledge that his intended business use of this domain name was in direct conflict with a registered trademark of a known competitor in exactly the same field of business”).

Additionally, Respondent’s <andrew.biz> domain name is identical to Complainant’s established ANDREW mark. Internet users will believe that there is some affiliation between Respondent and Complainant. Registration of the <andrew.biz> domain name is evidence of bad faith pursuant to STOP Policy ¶ 4(b)(iv) since it is probable that Respondent will attract Internet users seeking Complainant’s products and services. See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of Complainant); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000) (finding bad faith where Respondent attempted to attract customers to its website, <efitnesswholesale.com>, and created confusion by offering similar products for sale as Complainant).

 

Accordingly, the Panel finds that STOP Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the Start-Up Trademark Opposition Policy, the Panel concludes that relief shall be hereby GRANTED.

Accordingly, it is Ordered that the domain name <andrew.biz> be TRANSFERRED from Respondent to Complainant and that subsequent challenges under the STOP Policy against this domain name SHALL NOT be permitted.

Sandra Franklin, Panelist

Dated: June 18, 2002

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