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Generic Top Level Domain Name (gTLD) Decisions |
Fort Dearborn Life Insurance Company v.
dotPartners LLC
Claim Number: FA0204000112455
Complainant
is Fort Dearborn Life Insurance Company,
Chicago, IL (“Complainant”). Respondent
is dotPartners LLC, Livingston, NJ (“Respondent”).
The
domain name at issue is <pfg.biz>,
registered with TLDS, Inc.
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.
Judge
Harold Kalina (Ret.) as Panelist.
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 6, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of May 28,
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 25, 2002, pursuant to STOP Rule 6(b), the Forum
appointed Judge Harold Kalina (Ret.)
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.
Transfer
of the domain name from Respondent to Complainant.
A. Complainant
1. Respondent’s <pfg.biz> domain name is identical to Complainant’s PFG mark.
2. Respondent has no rights or legitimate
interests in the <pfg.biz> domain
name.
3. Respondent registered the <pfg.biz> domain name in bad
faith.
B. Respondent failed to submit a Response.
Complainant is the owner of U.S. Patent
and Trademark Office (“USPTO”) Reg. No. 2,410,562, registered December 5, 2000
on the Principal
Register for the PFG mark. Complainant’s mark is used for the
administration and underwriting of life, health and casualty insurance.
Respondent registered the contested
domain name on March 27, 2002 and has yet to designate a purpose for the domain
name or develop
an attached website. Complainant’s investigation has revealed
that Respondent registered 192 apparently unrelated domain names, including
<pfg.biz> and other names that
reflect the marks of other entities. Complainant compiled a list of
Respondent’s registered domains, which includes
the following names:
<household.biz>, <peter.biz>, <livesex.biz>,
<male.biz>, <zodiac.biz>, <beauty.biz>,
<slut.biz>,
<irish.biz> and <orbitz.biz>.
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
has established that it has rights in the PFG mark through registration with
the USPTO on the Principal Register, and
subsequent continuous use of the mark.
Respondent’s <pfg.biz> domain
name is identical to Complainant’s PFG mark in form and spelling.
Accordingly, the Panel finds that
STOP Policy ¶ 4(a)(i) has been satisfied.
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 Respondents’ 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
USPTO registration.
Respondent has not come forward to proffer any evidence
that it has rights in the PFG mark anywhere in the world. Therefore, Respondent
has not established rights or legitimate interests in the <pfg.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 financial services to
Respondent’s website. This is not a legitimate use of the <pfg.biz> domain name under STOP Policy ¶ 4(a)(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)”).
Furthermore, Respondent has failed to come
forward with evidence illustrating a
valid course of business under the disputed domain name. Respondent has failed
to exhibit demonstrable
preparations to use the domain name in connection with
a bona fide offering of goods or services pursuant to STOP Policy ¶ 4(c)(ii).
See Gene Logic Inc. v. Bock, FA 103042
(Nat. Arb. Forum Mar. 4, 2002) (finding that in order to show rights or
legitimate interests in the disputed domain name
Respondent must establish with
valid evidence “a course of business under the name, or at least significant preparation
for use of
the name prior to learning of the possibility of a conflict” with an
IP Claimant).
There is no evidence on the record, nor
has Respondent come forward to establish that it is commonly known by the <pfg.biz> domain name pursuant to STOP
Policy ¶ 4(c)(iii). Respondent is known to this Panel as dotPartners, LLC. See 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); see also 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).
The Panel finds that STOP Policy ¶
4(a)(ii) has been satisfied.
There are unrefuted circumstances
indicating that Respondent registered the domain name primarily in order to
prevent Complainant
from reflecting its mark in a corresponding name under STOP
Policy ¶ 4(b)(ii). As previously stated, Respondent registered 192 apparently
unrelated domain names during NeuLevel’s “.biz” registration procedure.
Respondent’s registered domain names are unrelated with the
exception that some
reflect a generic word that may be considered valuable, while others represent
the established marks of businesses
(e.g., Orbitz). Respondent’s pattern of
behavior evidences bad faith registration under STOP Policy ¶ 4(b)(ii). See Pep
Boys Manny, Moe, & Jack v. E-Commerce Today, Ltd., AF-0145 (eResolution
May 3, 2000) (finding bad faith that where the Respondent registered many
domain names, held them hostage,
and prevented the owners from using them); see also Toyota Jidosha Kabushiki Kaisha v.
S&S Enter. Ltd., D2000-0802 (WIPO Sept. 9, 2000) (finding that
“Registration of a domain name goes further than merely correctly using in an
advertisement
the trade mark of another in connection with that other’s goods
or services: it prevents the trade mark owner from reflecting that
mark in a
corresponding domain name”); see also
Caterpillar Inc. v. Miyar, FA 95623 (Nat. Arb. Forum Dec. 14, 2000) (finding that registering multiple
domain names in a short time frame indicates an intention to prevent the mark
holder from using its mark and provides evidence
of a pattern of conduct).
Due to Complainant’s registration of the
PFG 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 mark when it registered the disputed domain name.
Respondent’s
actions signify bad faith registration under STOP Policy ¶ 4(a)(iii). See 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”); see also
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).
The Panel finds that STOP Policy ¶
4(a)(iii) has been satisfied.
Having
established all three elements required under the STOP Policy, the Panel
concludes that relief shall be hereby GRANTED.
Accordingly,
it is Ordered that the domain name <pfg.biz>
be TRANSFERRED from Respondent
to Complainant and that subsequent challenges under the STOP Policy against
this domain SHALL NOT be permitted.
Judge Harold Kalina, Panelist
Dated:
June 26, 2002
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