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Virtual Realty Group Inc. v. Ross LeBel [2002] GENDND 917 (20 June 2002)


National Arbitration Forum

START-UP TRADEMARK OPPOSITION POLICY

DECISION

Virtual Realty Group Inc. v. Ross LeBel

Claim Number: FA0204000112526

PARTIES

Complainant is Virtual Realty Group Inc., Chicago, IL (“Complainant”).  Respondent is Ross LeBel, Blaine, WA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <virtualrealty.biz>, registered with Gal Communications, Ltd.

PANEL

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

Tyrus R. Atkinson, Jr., 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 27, 2002; the Forum received a hard copy of the Complaint on April 30, 2002.

On May 1, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 21, 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 6, 2002, pursuant to STOP Rule 6(b), the Forum appointed Tyrus R. Atkinson, JR., 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 <virtualrealty.biz> domain name is identical to Complainant’s VIRTUAL REALTY mark.

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

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

B. Respondent failed to submit a Response.

FINDINGS

Complainant is the owner of three registered VIRTUAL REALTY service marks in which the Complainant has intellectual property rights, specifically, U.S. Patent and Trademark Office (USPTO) Reg. Nos. 1,848,862, 2,130,797 and 2,175,922.

Respondent registered the disputed domain name March 27, 2002 and is not a franchisee or a licensee of Complainant. Complainant’s investigation has determined that Respondent does not own any registered trademarks. The Respondent has yet to make use of the contested domain name or develop an attached website. Also, Complainant discovered that Respondent apparently registered hundreds, if not thousands, of NeuLevel domain names all reflecting famous marks.

 

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 VIRTUAL REALTY mark through registration with the USPTO. Respondent’s <virtualrealty.biz> domain name is identical to Complainant’s VIRTUAL REALTY mark in form and spelling, thereby satisfying the identical requirement of STOP Policy ¶ 4(a)(i). The deletion of spaces is inconsequential when conducting an “identical” inquiry. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).

           

            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 registered trademarks in the United States. Respondent has not come forward to proffer any evidence that it has rights in the VIRTUAL REALTY mark anywhere in the world. Therefore, Respondent has not established rights or legitimate interests in the <virtualrealty.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. Therefore, Respondent’s registration of <virtualrealty.biz> is not in connection with a bona fide offering of goods and services under STOP Policy ¶ 4(c)(ii). See Credit Suisse Group o/b/o Winterthur Ins. Co. v. Pal-Ex Kft, FA 102971 (Nat. Arb. Forum Feb. 25, 2002) (“The use of another's trademark to attract users to Respondent's domain is not considered to be a bona fide offering of goods or services 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 <virtualrealty.biz> domain name pursuant to STOP Policy ¶ 4(c)(iii); Respondent is known to this Panel as Ross LeBel. 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 Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by the mark).

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

Registration or Use in Bad Faith

There are unchallenged circumstances indicating that Respondent registered the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant, or to a competitor of the Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs. Specifically, during the NeuLevel round robin selection of domain names Respondent secured 144 domain names, including such highly desirable and valuable marks as: TV GUIDE, CABLEVISION, MOTORSPORT, and HUSTLER, among others. These marks represent industries in which Respondent has no apparent legitimate business interest. The only common element found is the high marketability and monetary value of the domain names. Respondent is careful and deliberate in the domain names he chooses exhibiting an obvious pattern of cybersquatting that infringes on the rights of numerous intellectual property owners; providing further proof that Respondent registered the disputed domain name in bad faith under STOP Policy ¶ 4(b)(i). See Educ. Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that a general offer of sale combined with no legitimate use of the domain name constitutes registration and use in bad faith); see also Xerox Corp. v. Imaging Solution, D2001-0313 (WIPO Apr. 25, 2001) (finding that the Respondent registered the domain name in the hope and expectation of being able to sell it to the Complainant for a sum of money in excess of its out-of-pocket expenses and/or in the hope of forcing the establishment of a business arrangement beneficial to the Respondent).

Due to Complainant’s numerous registrations of the mark on the Principal Register of the USPTO and NeuLevel’s STOP IP claim notification procedure, Respondent was constructively aware of the existence of Complainant’s VIRTUAL REALTY mark when it registered the disputed domain name. Respondent’s actions signify 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).

Additionally, Respondent’s <virtualrealty.biz> domain name is identical to Complainant’s established VIRTUAL REALTY mark. Internet users will believe that there is some affiliation between Respondent and Complainant. Registration of the <virtualrealty.biz> domain name is evidence of bad faith use pursuant to STOP Policy ¶ 4(b)(iv) since it is inevitable that Respondent will attract Internet users seeking Complainant’s website. See Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding that Respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with Complainant, and thus is the equivalent to bad faith use); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).

 

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  <virtualrealty.biz> be TRANSFERRED from Respondent to Complainant.

Tyrus R. Atkinson, Jr., Panelist

Dated: June 20, 2002.


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