START-UP TRADEMARK OPPOSITION POLICY
DECISION
Muze Inc. v. H. Grishaver
Claim Number: FA0204000112512
PARTIES
Complainant is Muze Inc., New York, NY, USA (“Complainant”) represented by Robert S. Weisbein, of Darby & Darby P.C. Respondent is H. Grishaver, Amsterdam, NETHERLANDS (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <muze.biz>, registered with Register.com.
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.
The Honorable Charles K. McCotter, Jr.
(Ret.) 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 1, 2002.
On May 9, 2002, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of May 29, 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 10, 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.
RELIEF SOUGHT
Transfer of the domain name from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s
<muze.biz> domain name is
identical to Complainant’s MUZE mark.
2. Respondent
has no rights or legitimate interests in the <muze.biz> domain name.
3. Respondent
registered the <muze.biz>
domain name in bad faith.
B. Respondent
failed to submit a Response.
FINDINGS
Complainant owns U.S. Patent and
Trademark Office (“USPTO”) Reg. No. 1,758,885 for the MUZE mark as listed on
the Principal Register. Complainant registered its MUZE mark on March 16, 1993
and has used the mark in connection with its business of creating information
databases regarding music, movies and books for over nine years. Complainant is
also the owner of numerous international trademark registrations, including:
Australia, Reg. No. 595,631; Germany, Reg. No. 2,054,825; and United Kingdom,
Reg. No. 1,527,054; among others. Complainant also conducts operations from
numerous domain names incorporating the MUZE trademark, including
<muze.com> and <muzebiz.com>. Complainant’s investment in creating
and updating its databases totals over $75,000,000.
Respondent registered the disputed domain
name on March 27, 2002 and has yet to develop a use for the domain. Respondent
is not licensed or authorized to use Complainant’s MUZE mark. Complainant’s
investigation revealed that Respondent registered several domain names that are
presently located on a domain auction site.
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 in the MUZE mark through registration with the USPTO and subsequent
continuous use for the past nine years.
Respondent’s <muze.biz> domain name contains Complainant’s MUZE mark in
its entirety. Respondent’s domain name contains no addition of a distinguishing
feature or alteration of the existing mark that could classify it as unique and
distinct from Complainant’s MUZE mark. Therefore, Respondent’s <muze.biz> is identical to
Complainant’s mark.
Accordingly, 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. 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 Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27,
2000) (finding it appropriate for the Panel to draw adverse inferences from
Respondent’s failure to reply to the Complaint).
Respondent has not come forward to
proffer any evidence that it has trademark rights in the MUZE mark. Respondent
is not licensed or authorized to use Complainant’s MUZE mark. Therefore,
Respondent has no rights or legitimate interests in the <muze.biz> 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’s unauthorized use of the
domain name, which incorporates Complainant’s mark, does not establish
Respondent’s rights and legitimate interests. The intended use of a domain name
identical to Complainant’s mark, which would mislead or confuse Internet users,
is not considered a bona fide offering of goods or services pursuant to STOP
Policy ¶ 4(c)(ii). See 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); see also State Farm Mut. Auto. Ins. Co. v.
LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (finding that
“unauthorized providing of information and services under a mark owned by a
third party cannot be said to be the bona fide offering of goods or services”).
Additionally, there is no evidence that
Respondent is commonly known by the <muze.biz>
domain name pursuant to STOP Policy ¶ 4(c)(iii). 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 Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interest where Respondent was not
commonly known by the mark and never applied for a license or permission from
Complainant to use the trademarked name).
The Panel finds that STOP Policy ¶
4(a)(ii) has been satisfied.
Registration
or Use in Bad Faith
Due to the nature of NeuLevel’s STOP
registration procedure, Respondent is thought to have been on notice of Complainant’s
rights in the MUZE mark. Respondent’s registration of the disputed domain name
despite having notice of Complainant’s prior rights evidences bad faith under
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”); see also 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>”).
Additionally, Complainant’s investigation
revealed that Respondent registered numerous unrelated domain names, such as
<emlak.cc>, <otel.cc> and <kiralik.cc>, among others. All of
the domain names resolve to a “domain auction market” where bids are placed for
available domain names. Respondent’s pattern of bad faith behavior implies that
Respondent has intentions of selling Complainant’s domain name. See Am. Anti-Vivisection Soc’y v. “Infa dot
Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that
“general offers to sell the domain name, even if no certain price is demanded,
are evidence of bad faith”); see also Wrenchead.com,
Inc. v. Hammersla, D2000-1222 (WIPO Dec. 12, 2000) (finding that offering
the domain name for sale at an auction site is evidence of bad faith
registration and use).
The Panel finds that 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 <muze.biz> domain name be TRANSFERRED from Respondent to
Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated: July 15, 2002
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