WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ford Motor Company v. International Newcastle
Case No. DBIZ2002-00185
1. The Parties
The Complainant is Ford Motor Company, a corporation, having its principal place of business at Suite 600, Parklane Towers East, One Parklane Boulevard, Dearborn, Michigan, United States of America.
The Respondent is International Newcastle, an entity giving an address to the Registrar of FOR SALE at DomainCollection.com, Miami, Florida, United States of America.
2. The Domain Name and Registrar
The domain name at issue is <mercury.biz>, which domain name is registered with iHoldings, Inc., d/b/a Dotregistrar.com, located in Miami, Florida, United States of America.
3. Procedural History
Complainant filed a STOP Complaint with the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on April 27, 2002. 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 May 8, 2002.
The WIPO 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 WIPO 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 23, 2002, A Notification of STOP Complaint and Commencement of Administrative Proceeding was transmitted to the Respondent (with Copies to the Complainant, the Registrar, and ICANN), setting a deadline of June 12, 2002, by which the Respondent could file a Response. 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 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 June 24, 2002, not having received a formal Response, the WIPO Center sent the Respondent a Notification of Respondent Default.
On July 23, 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 MERCURY. Complainant's first trademark for MERCURY dates to 1939. Complaint, Annex 2.
Complainant uses the mark in conjunction with passenger and commercial automobiles, vehicle license plate frames, key fobs, key chains, money clips, vehicle floor mats, door mats, and carpet.
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.
The address given by Respondent is incomplete and does not contain either a street number or post office box.
5. Partiesí Contentions
Complainant contends that the domain name at issue is identical to Complainant's Mercury mark. Complainant contends that Respondent has no rights 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 the Mark
Complainant has rights in the mark MERCURY 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. See, STOP Rule 15(e)(i)(b).
Complainant is using the mark in conjunction with a legitimate business, and thus has rights and legitimate interests in respect of the domain name at issue. STOP Rule 15(e)(i)(a).
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 gives incomplete and 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. Sarna Kunststoff Holding AG v. Coldwell Banker Burnet, WIPO Case No. DBIZ2001-00038. See, STOP Rule, 15(e)(i)(c).
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 <mercury.biz> be transferred to the Complainant.
M. Scott Donahey
Dated: August 7, 2002