WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Charming Shoppes, Inc. v. Young & Laramore
Case No. DBIZ2002-00123
The Claimant is Charming Shoppes, Inc., a corporation organized and existing under the laws of Pennsylvania, United States of America, having its principal place of business at 3750 State Road, Bensalem, Pennsylvania, United States of America.
The Respondent is Young & Laramore, an entity with a mailing address at 310 East Vermont St., Indianapolis, Indiana, United States of America.
2. The Domain Name and Registrar
The domain name at issue is <monsoon.biz> the registrar of which domain name was not identified by Complainant, but determined by the WIPO Center to be Bulkregister.com, Inc. ("Bulkregister.com").
3. Procedural History
The Complaint was made in accordance with the Start-up Trademark Opposition STOP for .BIZ, adopted by NeuLevel, Inc. and approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on May 11, 2001 (the "STOP"), the Rules for Start-up Trademark Opposition STOP for .BIZ, adopted by NeuLevel, Inc. and approved by the ICANN on May 11, 2001 (the "STOP Rules"), and the WIPO Supplemental Rules for Start-up Trademark Opposition STOP for .BIZ (the "Supplemental STOP Rules").
Complainant filed a STOP Complaint with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on April 26, 2002, in electronic format and on April 29, 2002, 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 Center transmitted an Acknowledgement of Receipt of Complaint on May 3, 2002.
The Center stated that the Complaint was deficient, and sent Complainant a STOP Complaint Deficiency Notification, dated June 12, 2002, noting: "An argument must be laid out indicating the following:
1.You need to indicate more than your company owns or has rights in a trademark. How is the mark used, how well known is the mark, etc.
2.You need to provide some information that the domain name is identical to your company's trademark.
3.You must also provide some indication as to why the Respondent does not have rights or legitimate interests in using the domain name in question."
On June 19, 2002, Complainant submitted an Amendment to Stop Complaint. The Complaint and the amendment thereto will hereafter be referred to as the "Complaint."
The Center verified that the Complaint satisfied the formal Requirements of the STOP, the STOP Rules, and the Supplemental STOP Rules. The required fees were paid on time and in the required amount by Complainant.
No deficiencies having been recorded, on June 21, 2002, a Notification of STOP Complaint and Commencement of Administrative Proceeding was transmitted to the Respondent (with copies to the Complainant, Bulkregister.com, and ICANN), setting a deadline of July 11, 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 Bulkregister.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 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 July 17, 2002, not having received a formal Response, the Center sent the Respondent a Notification of Respondent Default.
On July 31, 2002, having received his Statement of Acceptance and Declaration of Impartiality, the 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 alleges that it "is the exclusive licensee in the United States of trademark No. 1,412,439, for 'Monsoon.' The registration is in Class 25, and was registered on October 7, 1986, prior to the domain name in issue which was registered on March 27, 2000." The Complainant further alleges that it is "the exclusive Licensee of the trademark in the United States pursuant to a Trademark License Agreement dated October 23, 2000." Complainant furnishes neither proof of trademark registration nor any copy of the trademark license agreement.
Complainant alleges that "Monsoon is a design led retailer offering a wide range of women's clothing and accessories and all product is private label. Monsoon has developed a strong brand with a highly distinctive identity. Today Monsoon's designers gather inspiration and ideas from around the world to create the individual Monsoon look and Monsoon continues to strive to keep this as a very distinctive look. Currently, Monsoon operates 137 shops throughout the UK, as well as many more in Australia, Denmark, France, Greece, Gibraltar, Iceland, Ireland, Jersey Malta, the Middle East, New Zealand, United States of America, Spain and South Africa."
Complainant alleges that "Complainant also maintains a website at www.monsoon.co.uk". Complainant alleges that Respondent "has no rights or legitimate interests in respect of the domain name. He does not have a history of using the name as the Complainant does and the Respondent already has an email address www.monsoonpower.com as well as www.monsoonaudio.com [sic]."
A search of the online files of the United States Patent and Trademark Office ("USPTO") shows that the registered owner of U.S. Trademark No. 1,412,439 is Monsoon Fashions Limited, 74 Winslow Road, London, England. There is no indication of the registration of an assignment.
According to the Whois for co.uk, the registrant of the domain name <monsoon.co.uk> is Monsoon Ltd.
5. Parties’ Contentions
Complainant contends that the domain name at issue is identical to the mark in which Complainant has rights. Complainant contends that Respondent has no rights or legitimate interests 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 STOP, these Rules, and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the STOP 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 in 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 alleged, but failed to submit proof of, assignments of the exclusive rights in the United States to the U.S. registered mark No. 1,412,139. Such bare allegations without more, especially where the Respondent has not appeared and contested Complainant's pleadings, are not sufficient evidence of rights in the mark. Cyro Industries v. Contemporary Design, WIPO Case No. D2000-0336 (where photocopies with handwritten notations of alleged assignment of trademark rights were found insufficient in a default proceeding). It is incumbent upon the Panel to hold the Complainant to an exacting standard of proof in cases where the Respondent has not appeared to defend. Edgar Rice Burroughs, Inc. v. Adtel Communications, WIPO Case No. D2000-0115.
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. Lauren 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, 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, there has been no use. The Complainant has failed to show bad faith registration, alleging only that Respondent has not used the mark in the same way as has Complainant, and that Respondent is using other domain names that include the mark at issue. This does not demonstrate bad faith.
Complainant's Rights or Legitimate Interests in Respect of the Domain Name at Issue
Complainant has failed to allege that it has made any use of the mark at issue, arguing only that some unidentified entity named "Monsoon" has made use of the mark. Accordingly, Complaint has failed to show that it has any rights or legitimate interests in respect of the domain name at issue.
For all of the foregoing reasons, the Panel decides that Complainant has failed to prove 1) that the Complainant has rights in respect of the trademark, or 2) that Complainant has rights or legitimate interests in respect of the domain name at issue, or 3) that Respondent registered the domain name in bad faith. Further, the Panel finds that: 1) Respondent has failed to demonstrate rights or legitimate interests in respect of the domain name at issue; 2) Complainant has failed to demonstrate either that Complainant has rights or legitimate interests in respect of the domain name at issue or to demonstrate that the domain names were registered in bad faith. Therefore, pursuant to the STOP, Paragraph 15(e)(iii), the Panel hereby dismisses the Complaint and determines that subsequent challenges under this Policy against the domain name <monsoon.biz> shall be permitted.
M. Scott Donahey
Dated: August 20, 2002