WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Trader Publishing Company v. DNS Research, Inc.
Case No. DBIZ2002-00139
1. The Parties
The Complainant is Trader Publishing Company, a partnership organized and existing under the laws of Virginia, having its principal place of business in Norfolk, Virginia, United States of America.
The Respondent is DNS Research, Inc., an entity giving a mailing address at P.O. Box 17420, San Diego, California, United States of America.
2. The Domain Name and Registrar
The domain name at issue is <autotrader.biz>, which is registered with Registration Technologies, Inc., having its principal place of business at Greenville, Rhode Island, United States of America ("RTI").
3. Procedural History
Complainant filed a STOP Complaint with the World Intellectual Property Arbitration and Mediation Center ("the Center") on April 26, 2002, in electronic format and on April 30, 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 STOP Complaint on May 3, 2002.
On May 8, 2002, the Center received an email from the Respondent in which the Respondent indicated that it did not intend to contest this matter.
The Center verified that the Complaint satisfied the formal Requirements of the STOP, the STOP Rules, and the WIPO Supplemental STOP Rules. The Panel has independently determined and agrees with the assessment of the Center that the Complaint is in formal compliance with the requirements of the STOP, 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 May 12, 2002, 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 June 1, 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 Registrarís 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 June 3, 2002, not having received a formal Response, the Center sent the Respondent a Notification of Respondent Default.
On June 13, 2002, having received his Statement of Acceptance and Declaration of Impartiality and Independence, the Center appointed M. Scott Donahey to serve as Panelist in this matter and forwarded to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date.
4. Factual Background
Complainant is the holder of a trademark and a service marks for AUTO TRADER. Complainant's first trademark for AUTO TRADER dates to 1983. Complaint, Annex C.
Complainant uses the mark in conjunction with periodic magazines.
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.
Respondent indicated in an email to the Center that it had no intention to contest this matter, and Respondent has not filed a Response.
5. Partiesí Contentions
Complainant contends that the domain name at issue is identical to Complainant's AUTO TRADER 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 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 a Mark Identical to the Domain Name in Question
Complainant has rights in the mark AUTO TRADER as demonstrated by its registered trademarks, which is identical to the domain name in question.
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., Sarna Kunststoff Holding AG v. Coldwell Banker Burnet, WIPO Case No. DBIZ2001-00038.
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 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 are illustrative only, and are not intended to be comprehensive. STOP, Paragraph 4(b) ("in particular but without limitation"). The Panel finds that where the Respondent admits that it has no rights to the domain name at issue and does not intend to contest the Complaint, bad faith will be assumed.
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, the Panel requires that the registration of the domain name <autotrader.biz> be transferred to the Complainant.
M. Scott Donahey
Dated: June 26, 2002