WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sarna Kunststoff Holding AG v. Coldwell Banker Burnet
Case No. DBIZ2001-00038
1. The Parties
The Complainant is Sarna Kunststoff Holding, AG, a corporation organized and existing under the laws of Switzerland, having its principal place of business at Industriestrasse 6060 Sarnan, Switzerland.
The Respondent is Coldwell Banker Burnet, an entity with a mailing address at 270-4611 Viking Way V6V 2K9, Richmond, BC, Canada.
2. The Domain Name and Registrar
The domain name at issue is <sarna.biz>, which domain name is registered with Registrars.com, having its principal place of business at Vancouver, British Columbia, Canada ("Registrars.com").
3. Procedural History
Complainant filed a STOP Complaint with the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on December 14, 2001, in electronic format and on December 18, 2001, in hard copy. The Complainant has standing to file such a Complaint, as Complainant timely filed the required Intellectual Property (IP) Claim Form with the registry operator, NeuLevel. As an IP Claimant, Complainant noted its intent to file a STOP Complaint against Respondent. The WIPO Center transmitted an Acknowledgement of Receipt of Complaint on December 18, 2001.
The WIPO Center verified that the Complaint satisfied the formal Requirements of the Start-up Trademark Opposition Policy for <.biz>, adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001 (the STOP), the Rules for Start-up Trademark Opposition Policy for <.biz>, adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001 (the STOP Rules), and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for <.biz> (the WIPO Supplemental STOP Rules). The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the STOP Policy, the STOP Rules, and the WIPO Supplemental STOP Rules. The required Panel fees were paid on time and in the required amount by Complainant.
No deficiencies having been recorded, on December 28, 2001, A Notification of STOP Complaint and Commencement of Administrative Proceeding was transmitted to the Respondent (with Copies to the Complainant, eNom, and ICANN), setting a deadline of January 17, 2002, by which the Respondent could file a Response to the Complainant. The Commencement Notification was transmitted to the Respondent by email to the email addresses indicated in the Complaint and specified in Registrars.com's records. In addition, the Complaint was sent by express courier to the postal address given. Having reviewed the communications records in the case file, the Administrative Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the STOP Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."
On January 24, 2002, not having received a formal Response, the WIPO Center sent the Respondent a Notification of Respondent Default.
On February 6, 2002, having received his Statement of Acceptance and Declaration of Impartiality, the WIPO Center appointed M. Scott Donahey to serve as Panelist in this matter and forwarded to the parties a Notification of Appointment of Panel.
4. Factual Background
Complainant is the holder of several trademarks for SARNA. Complainant's first trademark for SARNA dates to 1981. Complaint, Annex 5.
Complainant uses the mark in conjunction with various products, including adhesives for industrial use, packaging materials made from plastics, other packaging materials, building and construction materials made from plastics, and asphalt construction.
Respondent is not licensed to use Complainant's trademarks, nor is there any other relationship between the parties that would entitle Respondent to use the mark.
There is no Coldwell Banker Burnet entity at the address given in Whois. The telephone number listed in Whois belongs to Infinet Communication.
Respondent has also applied for at least three additional domain names in <.biz>, each of which is identical to a trademark held by Complainant. Complaint, Annexes 13, 14, 15, 16, 17, and 18.
5. Parties’ Contentions
Complainant contends that the domain name at issue is identical to Complainant's SARNA mark. Complainant contends that Respondent has no right or legitimate interest in respect of the domain name at issue, and that Respondent has registered the domain name at issue in bad faith.
Respondent does not contest Complainant's allegations.
6. Discussion and Findings
Paragraph 15(a) of the STOP Rules provides that the Panel is 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."
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;
(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.
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 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 rights in the mark SARNA as demonstrated by its registered trademarks.
Rights or Legitimate Interests in Respect of the Domain Name at Issue
Respondent makes no assertion of rights or legitimate interests in respect of the domain name at issue. Where Complainant asserts that Respondent has no rights or legitimate interests and where Respondent fails to contest such assertions, the Panel is entitled to infer that Respondent has no such rights or interests. See, e.g., Alcoholics Anonymous v. Raymond, WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayai ve Tic. A.S., WIPO Case No. D2000-0011.
Bad Faith Registration or Bad Faith Use
Under the STOP Policy, Complainant must only show either bad faith registration or bad faith use, not both as are required under the UDRP. Here, as in most cases likely to be brought under the STOP Policy, there has been no use. The question arises, how is the Complainant to show bad faith registration.
The examples of bad faith registration or bad faith use set out in the STOP Policy are illustrative only, and are not intended to be comprehensive. STOP Policy, ¶ 4(b) ("in particular but without limitation"). The Panel finds that where the Respondent gives inaccurate and misleading contact information to the Registrar, which conduct Respondent fails to explain in the proceeding, the Respondent has registered the domain name in bad faith. Moreover, where the Respondent has applied for other domain names in the <.biz> gTLD which domain names are identical to other trademarks held by the Complainant, Respondent has registered the domain name in bad faith.
For all of the foregoing reasons, the Panel decides that the domain name registered by Respondent is identical to the trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name, and that Respondent has registered the domain name in bad faith. Accordingly, pursuant to Paragraph 4(i) of the STOP Policy, the Panel requires that the registration of the domain name <sarna.biz> be transferred to the Complainant.
M. Scott Donahey
Dated: February 13, 2002