WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cyclone Industries Pty Ltd v. Corporate Domains, Inc
Case No. DBIZ2002-00221
1. The Parties
The Complainant in this proceeding is Cyclone Industries Pty Ltd, an Australian Corporation of 221 East Boundary Road, East Bentleigh, Victoria, 3165, Australia.
The Respondent in this proceeding is Corporate Domains, Inc., a Delaware Corporation of 2711 Centreville Road, Wilmington, Delaware, 19808, United States of America.
2. The Domain Name and Registrar
This dispute concerns the domain name <cyclone.biz> (the "Domain Name").
It is also noted that there are further IP claims in the queue with regard to the disputed Domain Name above.
The Registrar with whom the Domain Name is registered is: Corporate Domains, Inc. United States of America
3. Procedural History
The 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, the Complainant timely noted its intent to file a STOP Complaint against the Respondent with the Registry Operator, NeuLevel and with the Center.
A complaint pursuant to the Start-up Trademark Opposition Policy for .BIZ adopted by NeuLevel Inc ("the STOP") and the Rules for Start-Up Trademark Opposition Policy ("STOP Rules") both of which were approved by ICANN on May 11, 2001, was received by WIPO Arbitration and Mediation Center in electronic format on April 28, 2002, and in hardcopy on May 1, 2002. Payment in the required amount to the Center has been made by the Complainant.
On May 22, 2002, the Center sent a notification of STOP complaint and commencement of administrative proceeding to the Respondent. A response was due on June 11, 2002. On July 4, 2002, the Respondent was sent a notification of default, advising that the Respondent had failed to file a Response within the allotted time.
On July 18, 2002, a notification of appointment of administrative panel and projected decision date ("the appointment notification") was sent to the Complainant and the Respondent. The appointment notification informed the parties that the administrative panel would be comprised of a single panelist, Clive Elliott and advised that the decision should be forwarded to the Center by August 1, 2002.
On July 24, 2002, a decision was submitted to the Center.
4. Factual Background
The Complainant is a wholly owned subsidiary of Illinois Tool Works, Inc., of Illinois, United States of America. The Complainant is in the business of manufacturing gardening equipment, in particular garden tools including hand tools, striking tools, cutting tools, replacement handles, power tools accessories and insect screening. CYCLONE is The Complainant's "house mark".
The Complainant is the registered owner of the trademark CYCLONE in Australia, People's Republic of China, Indonesia, Malaysia, Papua New Guinea and Singapore. Its first trademark application for CYCLONE was filed in 1907.
The Complainant is also the Applicant for the trademark CYCLONE in Indonesia and New Zealand.
The Complainant claims that it is one of the largest manufacturers of its type of goods in Australia. It has manufacturing operations in the State of Victoria, Australia and sells its goods throughout Australia through a wide range of retail and wholesale outlets. In addition, the Complainant distributes its goods throughout several countries in the Asia Pacific region, namely New Zealand, Indonesia, People's Republic of China, Malaysia, Papua New Guinea and Singapore.
Throughout Australia and the Asia Pacific region, the goods manufactured by the Complainant are sold and marketed under the trademark CYCLONE.
The Complainant is the registered owner of the domain name <cyclone.com.au> and operates a website at this address.
The Respondent appears to be a domain name registration entity or an entity otherwise associated with this activity.
5. Partiesí Contentions
The Complainant claims the CYCLONE trademark is well-known in Australia and the Asia Pacific region as a result of its extensive activities in marketing and selling its products. The Complainant also claims it is one of the largest manufacturers in the Asia-Pacific region of gardening equipment.
The Complainant claims it has made extensive use of the CYCLONE mark and distributes the above goods throughout Australia and New Zealand, Indonesia, People's Republic of China, Malaysia, Papua New Guinea and Singapore. It is asserted that the CYCLONE trademark has become well known in Australia and the Asia Pacific region as a result of the Complainant's extensive activities in marketing and selling its products.
The Complainant describes its website activities as available to persons worldwide. The site allows customers to download product information including order codes for all products, view distributor contacts throughout the world, provide feedback and queries and access extensive information about its company history.
The Complainant notes that there is no website operational at "www.cyclone.biz".
On April 24, 2002, Davies Collison Cave ("DCC") on behalf of the Complainant, sent an e-mail to the Respondent at <firstname.lastname@example.org> explaining that the Complainant was considering filing a STOP complaint but requested the Respondent to provide any information showing it had a legitimate interest in the Domain Name. This e-mail stated that DCC would advise the Complainant not to file a STOP if evidence of legitimate interest was provided.
On April 26, 2002, DCC received a response from the Respondent stating that all enquiries regarding the Domain Name should be sent to <email@example.com>. DCC subsequently sent the said e-mail to this email address. To date DCC is yet to receive a response or any other information from the Respondent showing that it has any legitimate interest in the Domain Name.
Finally it is asserted that the Respondent has given no indication of a legitimate interest in the Domain Name. It is also asserted that all indications are that the Domain Name has been registered for a non-commercial purpose and breaches the biz. registration restriction.
There was no response received from Respondent
6. Discussion and Findings
Paragraph 15(a) of the STOP Rules instructs the Panel 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; 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.
Complainantís Rights in the Mark
The Complainant avers and the Respondent does not dispute that the CYCLONE trademark is registered and is well known in Australia and the Asia Pacific region as a result of its extensive activities in marketing and selling its products and that the Complainant is one of the largest manufacturers in the Asia-Pacific region of gardening equipment. The Respondent does not dispute this.
Leaving aside the descriptive element <biz>, it is clear that the registered trademark and Domain Name are identical.
Accordingly, it is possible to conclude without difficulty, that the Domain Name is identical to a trademark in which Complainant has rights. Accordingly, the first ground is made out by the Complainant.
Respondentís Rights or Legitimate Interests
In the absence of any denial, it is hard to find any legitimate basis for the Respondent to register and hold the Domain Name.
In the absence of any explanation in this case, it is found that an unconnected party has no right or legitimate interest to hold or use an otherwise deceptive trademark, name or indicia. Generally, such an owner of rights should be able to control how such trademarks, names and indicia are held or used in the course of trade.
In so finding, notice is taken by the Panel of the longstanding and extensive use the Complainant has made of its CYCLONE trademark.
Cyclone is of course a common English word. The Respondent may have had good cause to register the Domain Name. However, in the face of the Complainantís contentions and evidence the Respondentís actions cannot be explained and justified through silence and the Panel cannot speculate as to what its motives were.
This is more so given the request (see above) that the Respondent provide any information showing it had a legitimate interest in the Domain Name and the statement that the Complainant would not file a STOP proceeding if evidence of legitimate interest was provided
Accordingly, this ground is made out.
Registration or Use in Bad Faith
Given what seems to be the substantial reputation and goodwill in the CYCLONE trademark and for the reasons given above it is difficult to see how the Respondent can claim to have registered or used the Domain Name in good faith. Accordingly, it is not necessary to repeat what has been said above.
It is thus found that this ground is made out.
Therefore, and in consideration of the Complaintís compliance with the formal requirements of the STOP Rules, to the factual evidence and legal contentions that were submitted, to the confirmation of the presence of each of the elements contemplated in Paragraph 15(a) of the STOP Rules and Paragraph 4(a) of the STOP, it is found:
(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 by the Respondent.
Therefore, the Panel requires that the Domain Name be transferred to the Complainant.
Dated: July 23, 2002