START-UP TRADEMARK OPPOSITION POLICY

DECISION

TRW Inc. v. Swarthmore Associates L.L.C.

Claim Number: FA0204000112485

PARTIES

Complainant is TRW Inc., Cleveland, OH (“Complainant”) represented by Christopher C. Larkin, of Small Larkin L.L.P.  Respondent is Swarthmore Associates L.L.C., Pacific Palisades, CA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <trw.biz>, registered with PSI-Japan, Inc.

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 P. Buchele 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 May 1, 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 27, 2002, pursuant to STOP Rule 6(b), the Forum appointed James P. Buchele 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 <trw.biz> domain name is identical to Complainant’s TRW mark.

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

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

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant owns a trademark registered with the United States Patent and Trademark Office (“USPTO”) for the TRW mark (Reg. No. 1,362,434 issued September 24, 1985).  Complainant first had the TRW mark registered for reporting of credit information.  Subsequently, Complainant’s business has evolved and Complainant currently uses the TRW mark in connection with space and defense communication systems, intelligence data analysis systems, satellite communications, lasers and laser communication systems, semiconductors, navigation and identification systems, and computer hardware and software, among other goods and services.  Due to Complainant’s extensive use of its TRW mark, the mark has gained fame and notoriety throughout the world.

Respondent registered the <trw.biz> domain name on March 27, 2002 and has established no use for it.  Respondent is located in Southern California, where Complainant has a large presence.

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 its rights to the TRW mark through registration with the USPTO and subsequent continuous use.

Respondent’s <trw.biz> domain name contains Complainant’s TRW mark in its entirety.  Respondent’s domain name contains no addition of a distinguishing feature that could classify it as unique and distinct from Complainant’s TRW mark.  Therefore, Respondent’s <trw.biz> is identical to Complainant’s mark.

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

Rights or Legitimate Interests

In light of the fact that Complainant has established its rights in the TRW mark and that Respondent has not submitted a Response in this proceeding, the Panel may presume Respondent has no such rights 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 <trw.biz> domain name.  Complainant’s investigation revealed that Respondent has no interests in a TRW mark or TRW.BIZ mark.  Hence, Respondent has not met the requirements of STOP Policy ¶ 4(c)(i). 

Complainant discovered through investigation that Respondent has never used the <trw.biz> domain name to resolve to a website.  Complainant also could not find any evidence of demonstrable preparations to use the domain name.  Therefore, Respondent is not using the domain name in connection with a bona fide offering of goods and 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).

Furthermore, Complainant’s mark is well known due to its longstanding use in association with numerous goods and services.  Thus, it can be inferred that any use of <trw.biz> by Respondent would create confusion as to affiliation with Complainant, therefore, attracting its customers.  Consequently, STOP Policy ¶ 4(c)(ii) cannot be satisfied.   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 Complainant’s HOUSEHOLD BANK mark, with hopes of attracting Complainant’s customers and thus finding no rights or legitimate interests); see also 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)”);

Finally, Respondent has not come forward to offer any evidence that it is commonly known by TRW or <trw.biz>.  Respondent is known to this Panel as Swarthmore Associates L.L.C.  Further, Complainant notes that Respondent’s general partner’s initials do not reflect the TRW mark.  Therefore, Respondent has not met the requirements of 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).

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the domain name, thus, STOP Policy ¶ 4(a)(ii) has been satisfied. 

Registration or Use in Bad Faith

Prior to Respondent’s registration of the <trw.biz> domain name, Respondent was on notice of Complainant’s rights in the TRW mark due to Complainant’s registration of the mark on the Principal Register with the USPTO and the STOP registration procedure.  Registration with such notice constitutes bad faith under STOP Policy ¶ 4(a)(iii).  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 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”). 

Additionally, Complainant’s mark is well established, especially in the Southern California locale where Respondent is from and where Complainant has established its presence for over forty years.  Given that Respondent is from Southern California, it is appropriate to infer that Respondent registered the <trw.biz> domain name with knowledge of Complainant’s rights in the TRW mark with the intent to cause confusion.  Therefore, Respondent registered the domain name in bad faith.  See Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constitutes bad faith); see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); 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).

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

DECISION

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

James P. Buchele, Panelist

Dated:  July 1, 2002

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