American Savings Bank F.S.B. v. Cades
Schutte Fleming & Wright
Claim Number: FA0204000112491
Complainant
is American Savings Bank F.S.B.,
Honolulu, HI (“Complainant”). Respondent is Cades Schutte Fleming & Wright, Honolulu, HI (“Respondent”).
The
domain name at issue is <asb.biz>,
registered with NameScout.com.
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.
The
Honorable Charles K. McCotter, Jr. (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 26, 2002.
On
May 13, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of June 3,
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 July 8, 2002, pursuant to STOP Rule 6(b), the Forum
appointed the Honorable
Charles K. McCotter, Jr. (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
The
<asb.biz> domain name is identical to Complainant's ASB mark.
Respondent
has no rights or legitimate interests in the <asb.biz> domain
name.
Respondent
registered the <asb.biz> domain name in bad faith.
B.
Respondent
Respondent
failed to submit a Response in this proceeding.
Complainant has a registered service mark
in the State of Hawaii for ASB relating to its banking services. Complainant advertises and promotes its
services under the ASB service mark throughout Hawaii. Complainant currently does business at the
<asbhawaii.com> domain name
because another entity registered <asb.com>.
Respondent is Complainant’s counsel. Due to a mistake in the registration
process, the registrar mistakenly registered the disputed domain name in
Respondent’s name. Complainant and
Respondent have unsuccessfully attempted to change this situation through other
means than this dispute resolution procedure.
Respondent has no intention of using the domain name for any legitimate
business reason, nor is it licensed to use Complainant’s trade name in Hawaii.
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 ASB mark through registration and use
of its service mark in the State of Hawaii.
The <asb.biz> domain name is identical to Complainant’s ASB
mark and therefore STOP Policy ¶ 4(a)(i) has been satisfied.
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 that Respondent
holds any trademarks or service marks for the ASB mark anywhere in the
world. Therefore, Respondent has no
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). Furthermore, Respondent is not commonly known as
ASB or <asb.biz>.
Therefore, Respondent has not established any 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).
Upon Complainant’s information and
belief, Respondent does not plan to use the disputed domain name in relation to
any legitimate business purpose. There
is no evidence that Respondent has a business plan for the domain name. On the contrary, there is evidence that
Respondent registered the domain name for ultimate use by Complainant. Therefore Respondent is not using the
disputed domain name for 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); see also Pharmacia & Upjohn AB v. Romero,
D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests
where Respondent failed to submit a Response to the Complaint and had made no
use of the domain name in question).
The Panel finds that STOP Policy ¶
4(a)(ii) has been satisfied.
Based on the nature of the NeuLevel STOP
IP Claim procedure, Respondent was informed of Complainant’s rights in <asb.biz>
when it registered the disputed domain name.
Therefore Respondent was on actual notice of Complainant’s rights. A Respondent’s registration of the disputed
domain name despite this notice is evidence of bad faith registration pursuant
to STOP Policy ¶ 4(a)(iii). See 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”).
However, Respondent was acting on behalf of Complainant, the trademark
holder and his client, in registering the domain name. Therefore, the Panel concludes that the
registration was not in bad faith.
However, the lack of bad
faith in registration does not end the inquiry as the Panel concludes that the
intended use of the domain name, i.e. no use or passive holding, constitutes
bad faith for the purpose of this proceeding.
Due to a mistake in the registration process, the domain name was registered in
Respondent’s name. Respondent intends
to make no use of the domain name and would transfer the domain name to
Complainant if possible. Because
Respondent does not intend to use the domain name, Respondent’s intended use of
the domain name, passive use, permits an inference of use in bad faith. See
Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug 30, 2000) (passive
holding of a domain name permits an inference of registration and use in bad
faith). Making all inferences in favor
of Complainant since Respondent has not filed a Response, See Talk City, Inc. v. Robertson, supra,
the Panel finds use in 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 <asb.biz> be transferred from Respondent to
Complainant and subsequent challenges under the STOP Policy against this domain
name shall not be permitted.
The Honorable Charles K. McCotter, Jr.,
Panelist
Dated: July 12, 2002
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