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Generic Top Level Domain Name (gTLD) Decisions |
Hasbro Inc. v. Cambridge a/k/a
DomainCollection.com Inc.
Claim Number: FA0204000112481
Complainant
is Hasbro Inc., New York, NY
(“Complainant”) represented by Allison
K. Rutledge-Parisi, of Patterson
Belknap Webb & Tyler LLP.
Respondent is Cambridge a/k/a
DomainCollection.com Inc., Miami, FL (“Respondent”).
The
domain name at issue is <monopoly.biz>,
registered with IHoldings.com, 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.
John
J. Upchurch 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 John J. Upchurch
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
The
<monopoly.biz> domain name is identical to Complainant’s MONOPOLY
mark.
Respondent
has no rights or legitimate interests in the <monopoly.biz> domain
name.
Respondent
registered the <monopoly.biz> domain name in bad faith.
B.
Respondent
Respondent
failed to submit a Response in this proceeding.
Complainant has owned a United States
Trademark for MONOPOLY since 1935 (Reg. No. 326,723 registered on the Principal
Register). Complainant has expended and
continues to expend substantial time, money, and effort in promoting its MONOPOLY
mark in connection
with the MONOPOLY board game and many other goods.
Consequently, the MONOPOLY mark has become well-known worldwide.
Respondent registered the <monopoly.biz>
domain name on March 27, 2002 and has not developed a use. Complainant learned through a representative
that Respondent was offering the domain name for sale. In fact, Respondent offered to sell the
domain name to Complainant’s representative for $4,900. Complainant’s representative counter-offered
for $3,000. Respondent replied stating
that the domain name was no longer for sale but that the representative should
check back in a month to
receive an “update on this matter.”
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 its rights to the MONOPOLY mark through registration with the
United States Patent and Trademark Office
and subsequent continuous use. Respondent’s <monopoly.biz>
domain name contains Complainant’s entire MONOPOLY mark and the generic
top-level domain “.biz.” Therefore,
Respondent’s domain name is identical to Complainant’s mark.
Accordingly,
the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has demonstrated its rights
to and interests in the MONOPOLY mark. Because Respondent has not submitted a
Response in
this proceeding, the Panel may presume it has no such rights or
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).
There is no evidence on the record and
Respondent has not come forward to offer any evidence that it is the owner or
beneficiary of
a trade or service mark that is identical to the <monopoly.biz>
domain name. Therefore, Respondent does
not have any rights or legitimate interests 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).
Due to Respondent’s lack of Response and
the level of fame the MONOPOLY mark enjoys, it can be inferred that any use of <monopoly.biz>
by Respondent would be an opportunistic attempt to trade on the goodwill of
Complainant’s famous mark. Therefore,
no plausible bona fide offering of goods or services in connection with <monopoly.biz>
exists. See Nat’l Acad. Of
Recording Arts & Sci Inc. v. Lsites, FA 103059 (Nat. Arb. Forum Feb.
11, 2002) (finding that any planned use of <grammy.biz> by Respondent would be an opportunistic
attempt to attract Internet users via Complainant’s famous GRAMMY mark, therefore,
Respondent
had no rights or legitimate interests); see also Household Int’l, Inc. v. Cyntom Enter.,
FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (inferring that Respondent registered
the domain name <householdbank.com>, which
incorporates Complainants HOUSEHOLD
BANK mark, with hopes of attracting Complainant’s customers and thus finding no
rights or legitimate
interests).
There is no evidence on the record, nor
has Respondent come forward to offer any evidence that it is commonly known as
MONOPOLY or
<monopoly.biz>.
Respondent is only known to this Panel as DomainCollection.com and has
never received authorization from Complainant to use the MONOPOLY
mark. 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).
Furthermore, Complainant’s longstanding use of its MONOPOLY mark since
1935 creates a presumption that Respondent cannot be known
by the famous
mark. See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19,
2000) (finding that Respondent has failed to demonstrate any rights or
legitimate interests in the <twilight-zone.net>
domain name since
Complainant had been using the TWILIGHT ZONE mark since 1959).
The Panel finds that STOP Policy ¶
4(a)(ii) has been satisfied.
Respondent is in the business of selling
domain names and offered to sell the <monopoly.biz> domain name to
Complainant’s representative for $4,900, an amount in excess of out-of-pocket
cost for registering and maintaining
the domain name. Respondent’s behavior evidences bad faith pursuant to STOP Policy
¶ 4(b)(i). See Wembley Nat’l Stadium Ltd. v. Thomson,
D2000-1233 (WIPO Nov. 16, 2000) (finding bad faith based on the apparent
willingness of the Respondent to sell the domain name in
issue from the outset,
albeit not at a price reflecting only the costs of registering and maintaining
the name); see also Dollar Rent A
Car Sys. Inc. v. Jongho, FA 95391 (Nat. Arb. Forum Sept. 11, 2000) (finding
that the Respondent demonstrated bad faith by registering the domain name for
the purpose of transferring the domain name in the amount of $3,000, an amount
in excess of out of pocket costs).
Respondent had notice of Complainant’s
rights and interests in the MONOPOLY mark due to: (1) the mark’s registration on the Principal Register, (2) the
mark’s well-established identity and (3) the unique STOP IP claim notification
procedure. Therefore, Respondent’s registration of the <monopoly.biz>
domain name with knowledge of Complainant’s rights and interests in the
MONOPOLY mark constitutes bad faith. See
Victoria’s Cyber Secret Ltd. P’ship v. V Secret
Catalogue, Inc., 161 F.Supp.2d 1339, 1349
(S.D.Fla. 2001) (noting that “a Principal Register registration [of a trademark
or service mark] is constructive
notice of a claim of ownership so as to
eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072); see
also Ty Inc. v. Parvin,
D2000-0688 (WIPO Nov. 9, 2000) (finding that Respondent’s registration and use
of an identical and/or confusingly similar domain
name was in bad faith where
Complainant’s BEANIE BABIES mark was famous and Respondent should have been
aware of it); see also Valspar Sourcing, Inc.
v. TIGRE, FA 112596 (Nat. Arb. Forum June
4, 2002) (“Respondent was on notice of Complainant’s rights in PAINT.BIZ when
it registered the
disputed domain name, because Respondent received notice of
Complainant’s IP Claim. Respondent’s
registration of the disputed domain name despite this notice when Respondent
had no right or legitimate interest in the
domain name is evidence of bad
faith”).
The Panel finds that STOP Policy ¶
4(a)(iii) has been satisfied.
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 <monopoly.biz> be TRANSFERRED from Respondent
to Complainant and that subsequent challenges under the STOP Policy against
this domain name SHALL NOT be permitted.
John J. Upchurch, Panelist
Dated: June 28, 2002
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