START-UP TRADEMARK OPPOSITION POLICY

DECISION

CEREBOS PACIFIC LIMITED v. MARCO PUBLISHING CORPORATION

Claim Number: FA0204000112525

PARTIES

Complainant is CEREBOS PACIFIC LIMITED, Singapore, SINGAPORE (“Complainant”) represented by Chung Nian Lam, of LEE & LEE.  Respondent is MARCO PUBLISHING CORPORATION, Us, TX, USA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <brands.biz>, registered with Bondi LLC.

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.

James A. Carmody, Esq., 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 May 7, 2002.

On May 7, 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 20, 2002, pursuant to STOP Rule 6(b), the Forum appointed James A. Carmody, Esq., 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

The <brands.biz> domain name is identical to Complainant's BRAND’S mark.

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

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

B. Respondent

Respondent failed to submit a Response.

FINDINGS

Complainant has registered its BRAND’S mark in Singapore (Reg. No. 5910/93), Canada (Reg. No. UC027686), Malaysia (Reg. No. M/25191), Brunei (Reg. No. 19,787), Hong Kong (Reg. No. 8953/93), Indonesia (Reg. No. 318.579), Taiwan (Reg. No. 302057), Thailand (Reg. No. 24740), Bangladesh (Reg. No. 31027) and Vietnam (Reg. No. 24,526).  The BRAND’S mark has been used in relation to Complainant’s traditional double-boiled chicken soup since the 1920’s in Singapore and Malaysia.  In 1959, the original company was acquired by Complainant and expanded into greater Asia.  Complainant is now a leading global foods company listed on the Singapore Exchange and Securities Limited.

Respondent registered the disputed domain name on March 27, 2002.  Respondent is not licensed by Complainant to use its BRAND’S mark. Complainant’s investigation has revealed that Respondent has registered over eighty domain names including: <spas.biz>, <watches.biz>, <prescriptions.biz>, <etickets.biz>, and numerous others incorporating generic descriptions of products. Respondent has also registered domain names that include registered marks such as <pbs.biz>, and <linux.biz>. Respondent has not begun to use any of these domain names, or the disputed domain name in relation to a business.

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 to its BRAND’S trademark through registration throughout Asia.  In light of the default nature of this proceeding and the prior decisions of registration authorities to ignore the generic nature of the word, “brands”, that issue will not be tackled for the first time here. The <brands.biz> domain name is identical to Complainant’s BRAND’S mark because it is impossible to include an apostrophe in a domain name, therefore the omission of punctuation is irrelevant when determining whether a domain name is identical.  See Chernow Communications Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark").

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 and therefore it is presumed that Respondent has not demonstrated 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 Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).

There is no evidence on the record, and Respondent has not come forward to establish that it has a trademark or service mark for BRAND’S or <brands.biz>.  Therefore Respondent has not established that it has rights or legitimate interests in the disputed domain name pursuant to 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).

Respondent is not currently using the domain name in relation to any business purpose.  Moreover, Respondent registered eighty other domain names when it registered <brands.biz>, therefore it can be inferred that Respondent registered <brands.biz> and the other domain names in order to sell them.  The sale of a domain name is not considered to be a bona fide offering of goods and services pursuant to STOP Policy ¶ 4(c)(ii).  See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit); see also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the Respondent registered the domain name with the intention of selling the domain name).

Respondent is known to the Panel as Marco Publishing Corporation and there is no evidence establishing that it is commonly known as BRAND’S or <brands.biz>.  Therefore Respondent has no rights or legitimate interests in the disputed domain name pursuant to STOP Policy ¶ 4(c)(iii).  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.

Registration or Use in Bad Faith

Based on Respondent’s registration of numerous other domain names at the same time it registered <brands.biz> it can be inferred that Respondent registered the disputed domain name in order to sell them.  Registration of a domain name with the intent to sell, rent or transfer it is evidence of bad faith registration and use pursuant to STOP Policy ¶ 4(b)(i).  See Cruzeiro Licenciamentos Ltda v. Sallen & Sallen Enter., D2000-0715 (WIPO Sept. 6, 2000) (finding that mere passive holding of a domain name can qualify as bad faith if the domain name owner’s conduct creates the impression that the name is for sale). 

Furthermore, Respondent’s registration of a domain name to prevent Complainant from registering domainnames reflecting its mark is evidence of bad faith registration and use pursuant to STOP Policy ¶ 4(b)(ii).  See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the UDRP ¶ 4(b)(ii)); see also Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding a bad faith pattern of conduct where Respondent registered many domain names unrelated to its business which infringe on famous marks and websites).

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 and is hereby granted.

Accordingly, it is Ordered that the domain name <brands.biz> be transferred from Respondent to Complainant and subsequent challenges under the STOP Policy against this domain name shall not be permitted.

James A. Carmody, Esq., Panelist

Dated: June 28, 2002

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