START-UP TRADEMARK OPPOSITION POLICY

DECISION

Tamko Roofing Products Inc. v. Cambridge

Claim Number: FA0205000114386

PARTIES

Complainant is Tamko Roofing Products Inc., Joplin, MO (“Complainant”) represented by William B. Kircher, of Shook Hardy & Bacon.  Respondent is Cambridge, Miami, FL (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <epoch.biz>, registered with Iholdings.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.

Judge Harold Kalina (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 May 21, 2002; the Forum received a hard copy of the Complaint on May 23, 2002.

On May 31, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 20, 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 9, 2002, pursuant to STOP Rule 6(b), the Forum appointed Judge Harold Kalina (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 <epoch.biz> domain name is identical to Complainant’s EPOCH common law mark.

2. Respondent does not have any rights or legitimate interests in respect of the <epoch.biz> domain name.

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

B. Respondent did not submit a Response in this proceeding.

FINDINGS

Complainant has operated EPOCH Composite Products, Inc. in commerce in the U.S. since November 1999 in respect to composite lumber products. Complainant has spent more than $100,000 in advertising goods and services bearing the EPOCH trademark. Complainant has a pending trademark application (Serial No. 75/847,040) filed with the U.S. Patent and Trademark Office (“USPTO”) on November 12, 1999.

Respondent registered the disputed domain name on March 27, 2002 through NeuLevel’s STOP domain name registration procedure. Complainant’s investigation revealed that Respondent, Cambridge, represents DomainCollection Inc., an entity involved in the registration and selling of domain names irrespective of a third party’s prior rights.

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 common law rights in the EPOCH mark through a pending trademark application and continuous use of the mark in relation to its composite lumber products since 1999. The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name complaint under the Policy.  See McCarthy on Trademarks and Unfair Competition, § 25:74.2, Vol. 4 (2000); see also SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the Complainant's trademark or service mark be registered by a government authority or agency for such rights to exist. Rights in the mark can be established by pending trademark applications); see also Crazy Creek Prods., Inc. v. Siemen’s Bus. Servs., FA 102795 (Nat. Arb. Forum Feb. 12, 2002) (finding that the Complainant satisfied STOP Policy ¶ 4(a)(i) by demonstrating its common law rights in the CRAZY CREEK mark).

Respondent’s <epoch.biz> domain name is identical to Complainant’s EPOCH common law mark because Respondent’s second level domain incorporates Complainant’s mark in its entirety. Respondent’s domain name deviates from Complainant’s mark only in the inconsequential addition of the gTLD “.biz.” See Princeton Linear Assoc., Inc. v. Copland o/b/o LAN Solutions Inc. FA 102811 (Nat. Arb. Forum Feb. 8, 2001) (finding that the <.biz> gTLD in the disputed domain name is not a factor and hence to be ignored, in determining whether a disputed domain name is identical to the mark in which Complainant asserts rights).

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

Rights or Legitimate Interests

Respondent did not submit a Response in this proceeding. Therefore, it is presumed that Respondent lacks rights and legitimate interests in the <epoch.biz> domain name. See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).

Furthermore, because Respondent failed to submit a Response in this proceeding, the Panel is permitted to make all reasonable 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”).

Respondent has yet to develop a stated purpose for the disputed domain name and has not provided any evidence showing demonstrable preparations to use <epoch.biz> in connection with a bona fide offering of goods or services pursuant to STOP Policy ¶ 4(c)(ii). Complainant’s investigation produced credible evidence that Respondent is actually representing DomainCollection Inc., a domain name auction site that registers domain names with the intent to sell them at a profitable margin. Respondent’s registration of the disputed domain name for the purpose of selling it and monetarily benefiting is not considered to be a bona fide offering of goods or 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 Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).

There is no evidence that suggests Respondent is the owner or beneficiary of a trademark or service mark reflecting the <epoch.biz> domain name pursuant to STOP Policy ¶ 4(c)(i), nor is there any information that implies Respondent is commonly known by its registered <epoch.biz> domain name. As stated, Complainant’s investigation provides the Panel with information that Respondent is actually known as “DomainCollection Inc.,” a domain name auction site with no apparent legitimate connection to the infringing domain name other than to offer it for sale. 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); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); 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).

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

Registration or Use in Bad Faith

Respondent registered an infringing domain name without any apparent rights or legitimate interests. Respondent’s lack of legitimate interest in the <epoch.biz> domain name and knowledge of Complainant’s rights in the EPOCH mark implies that Respondent registered the disputed domain name in order to prevent Complainant from reflecting its mark in a corresponding domain name. Respondent’s depriving Complainant of the ability to accurately reflect its mark in a domain name represents bad faith registration under STOP Policy ¶ 4(b)(ii). See Toyota Jidosha Kabushiki Kaisha v. S&S Enter. Ltd., D2000-0802 (WIPO Sept. 9, 2000) (finding that “Registration of a domain name goes further than merely correctly using in an advertisement the trade mark of another in connection with that other’s goods or services: it prevents the trade mark owner from reflecting that mark in a corresponding domain name”); see also Peachtree Software v. Scarponi, FA 102781 (Nat. Arb. Forum Jan. 23, 2002) (finding bad faith under STOP Policy ¶ 4(b)(ii), noting that it was reasonable to conclude Respondent registered <peachtree.biz> with the intent to prevent Complainant from reflecting its PEACHTREE mark in a corresponding domain name, given Respondent's knowledge of Complainant's mark and Respondent's lack of rights or interests in the mark).

Complainant provided the Panel with evidence that Respondent registered the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the domain name. Registration of an infringing domain name with the intention of commercially benefiting from its sale represents bad faith registration under STOP Policy ¶ 4(b)(i). 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 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).

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 should be hereby GRANTED.

Accordingly, it is Ordered that the <epoch.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.

Judge Harold Kalina (Ret.), Panelist

                                                             Dated:  July 18, 2002

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