WIPO

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Dolby Laboratories Licensing Corporation v. Vitty, Inc.

Case No. DBIZ2002-00248

 

1. The Parties

The Complainant in this administrative proceeding is Dolby Laboratories Licensing Corporation, a New York corporation, having a business address and situs at 100 Potrero Avenue, San Francisco, California 94103-4813, United States of America

The Respondent is Vitty, Inc., a Taiwan corporation, with a business address and situs at 12F-8, No. 237, 2nd Sec., Fushing South Rd. Taipei, 08807, Taiwan, Province of China.

 

2. The Domain Name and Registrar

The domain name in dispute is <mlp.biz>.

The Registrar with which said domain name is registered is 007 Names, Inc. (hereinafter "the Registrar").

 

3. Procedural History

On May 21, 2002, the Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by e-mail. The hard copy of the Complaint was received by the Center on May 24, 2002.

The Center carried out a formal requirements compliance review. In accordance with paragraph 4(a) of the Rules for Start-up Trademark Opposition Policy for .BIZ (the "STOP Rules") the Center reviewed the Complaint to verify that the Complaint satisfied the formal requirements of the Start-up Trademark Opposition Policy for .BIZ (the "STOP"), the STOP Rules and the WIPO Supplemental STOP Rules (the "Supplemental Rules") and that payment in the required amount had been paid by the Complainant.

On June 28, 2002, the Center sent a Notification of STOP Complaint and Commencement of Administrative Proceeding to the Respondent by post/courier (with enclosures), facsimile and by e-mail. A copy of said Notification was sent to the authorized representative of the Complainant by e-mail. Further copies of said Notification were sent to the Internet Corporation for Assigned Names and Numbers ("ICANN") and to the Registrar by e-mail.

Said Notification of Complaint and Commencement of Administrative Proceeding inter alia advised the Respondent that this Administrative Proceeding had commenced on June 28, 2002, and that the Respondent was required to submit a Response to the Center on or before July 18, 2002.

No Response was received from the Respondent and on July 19, 2002, the Center sent a Notification of Respondent Default to the Respondent.

On July 31, 2002, after having received a Statement of Acceptance and Declaration of Impartiality from him in accordance with paragraph 7 of the STOP Rules, the Center proceeded to appoint James Bridgeman as the Administrative Panel. A Notification of Appointment of Administrative Panel and Projected Decision Date was sent to the Parties by e-mail. On the same day the case file was transmitted to the Administrative Panel.

In the view of the Administrative Panel, proper procedures were followed and this Administrative Panel was properly constituted.

 

4. Factual Background

The Complainant is the owner of the following trademark registrations for the MLP trademark :

MARK

COUNTRY

CLASS

APPLICATION NO./
FILING DATE

REGISTRATION NO./
REGISTRATION DATE

MLP

Australia

9

823175

02/10/00

823175

06/27/01

MLP

Switzerland

9

1533/2000

02/11/00

475061

08/10/00

MLP

China

9

2000024629

03/06/00

1578546

05/28/01

MLP

Japan

9

2000-010872

02/10/00

4513278

10/12/01

MLP

Mexico

9

411904

02/21/00

647311

03/27/00

MLP

Norway

9

200001500

02/11/00

206823

02/08/01

MLP

Turkey

9

2000/3297

02/25/00

2000/03297

MLP

Taiwan

9

89-008526

02/18/00

942963

06/01/01

MLP

United States

9

74/523283

05/02/94

2093964

09/09/97

 

The Complainant also owns the following pending applications for registration of the MLP trademark:

MARK

COUNTRY

CLASS

APPLICATION NO./
FILING DATE

MLP

Canada

9

1046043

02/10/00

MLP

European Community

9

1502657

02/10/00

MLP

United Kingdom

9

2222204

02/11/00

MLP

Hong Kong

9

2578/2000

02/10/00

MLP

Malaysia

9

2000/01432

02/16/00

MLP

Philippines

9

4-2000-01001

02/10/00

MLP

Poland

9

Z-213837

02/14/00

MLP

Russian Federation

9

2000702636

02/10/00

MLP

Singapore

9

T00/02696I

02/22/00

MLP

United States

9

75/902759

01/26/00

MLP

South Africa

9

2000/02083

02/10/00

MLP w/Korean transliteration

South Korea

9

2000-5774

02/11/00

MLP w/Korean transliteration

South Korea

9

2001-51943

11/23/01

There is no evidence available about the Respondent or its activities except for the information provided on the WHOIS database.

 

5. Partiesí Contentions

A. Complainant

The Complainant submits that this dispute is properly within the scope of the STOP and that the Respondent is required to submit to these Administrative Proceedings in accordance with paragraph 4(a) of the STOP on the grounds that

i. the domain name is identical to a trademark or service mark in which the Complainant has rights; and

ii. the Respondent has no rights or legitimate interests in respect of the domain name; and

iii. the Domain name was registered or is being used in bad faith.

The Complainant claims to be one of the best known companies in the world. The Complainant submits that it has been a leading innovator in sound technology for professional applications and consumer devices for more than a quarter of a century. The Complainant has an established Internet presence and general information about the Complainant is available in English, Chinese, and other languages on its www site at "www.dolby.com".

The Complainant claims that it actively promotes its name and trademarks, including the MLP trade mark, throughout the world. The Complainant claims to have sold more than one billion licensed products bearing its marks, through 164 distributors of cinema products in 58 countries, and 52 distributors of professional audio products in 53 countries. The Complainant claims that it actively protects its intellectual property rights and it has been granted 645 trademark registrations in 95 countries.

The Complainant states that it is beyond dispute that it owns rights to the MLP mark and has provided examples of its use of the trademark in trade.

The Complainant submits that the Respondent has no rights or legitimate interests in said domain name for inter alia the following reasons:

1. a careful review of the Respondentís www site at <www.vitty.com> indicates no active use or apparent plans to commence use of MLP as a mark or designation for any goods or services.

2. a review of all the records on the Saegis database of the trademark records for the United States (Federal and State), Canada, Austria, Benelux, Denmark, Finland, France, Germany, Italy, Liechtenstein, Monaco, Norway, Spain, Sweden, Switzerland, United Kingdom, Community Trademarks, International Register, and Japan indicates no applications or registrations for MLP associated with Respondent.

With regard to the allegation that the Respondent registered said domain name in bad faith, the Complainant argues that STOP panel decisions recognize that inferences of bad faith should be drawn fairly for complainants because the short complaint period limits the opportunity to develop proof of Respondentís bad-faith registration practices. In this regard the Complainant cites in its support the decision of the administrative panel in Fisher Communications v. Escape Ventures, (WIPO Case No. DBIZ2001-00041, June 3, 2002) where it stated:

"Unlike the Uniform Domain Name Dispute Resolution Policy ("UDRP"), the STOP only requires the Complainant to demonstrate that the domain name was registered or used in bad faith. Since the domain name registrant in a STOP proceeding (which must be brought by the Complainant within 20 days of receiving notification of domain name registration) will not have had much chance to use its .BIZ domain name, the emphasis is on registration in bad faith. In addition, the Panel should take into account the fact that many Complainants under the STOP will be hard-pressed to obtain direct evidence of bad faith, in view of the short period of use of the domain name by the Respondent, and thus must be prepared to draw fair inferences presented by the evidence, circumstantial or otherwise."

The effect and purpose of Respondentís effort to obtain exclusive rights to use said domain name is to deprive the Complainant, as owner of rights in that designation, of the ability to associate the said domain name with its business information relating to its MLP brand technology. The Complainant submits that the decision of the administrative panel in Telstra Corporation Limited v. Nuclear Marshmallows, (WIPO Case No. D2000-0003, February 18, 2000) illustrates how the registration of famous mark as a domain name may be evidence of bad faith.

The Complainant states that the Respondent appears in the records of .INFO domain name proceedings as the losing respondent in connection with two other similar domain names: <vpn.info> and <ipsec.info> and claims that this shows that the Respondent has engaged in at least two previous attempts to improperly register domain names.

Records of decisions in the two Sunrise Challenge decisions adverse to the Respondent are not publicly available. Nevertheless, evidence of the Respondentís two previous efforts to improperly register domain names ultimately assigned to others indicates a pattern and practice of improper domain name registration by the Respondent, from which the Panel may infer bad faith in this STOP proceeding.

In addition to owning a registration for the MLP trademark in Taiwan, the Respondentís own jurisdiction, the Complainant also promotes its MLP brand processing technology in Chinese language portions of its internet website, clearly accessible to Respondent in Taiwan.

The Complainant refers to the decision of the administrative panel in MGM Mirage v. Young Joon Choi, (WIPO Case No. DBIZ2001-00036, February 14, 2002) and submits that an inference of bad-faith is enhanced by registration of the mark and exposure within the Registrantís national market.

The Respondentís breach of its warranty of non-infringement in the registration agreement for the <mlp.biz> domain name is further evidence of its bad-faith registration practices. STOP panel decisions place a duty to investigate third-party rights "squarely" on the registrantís shoulders. In this regard the Complainant refers to the decision of the administrative panel in Fisher Communications v. Escape Ventures, (WIPO Case No. DBIZ2001-00041, March 6, 2002, and submits that when registering a .BIZ domain name containing a mark in which a respondent has no prior rights, a respondent has some responsibility to investigate whether any party has trademark rights in the alphanumeric string contained in the domain name. The Complainant further refers to the decision in MGM Mirage v. Young Joon Choi, (WIPO Case No. DBIZ2001-00036, February 14, 2002, and submits that a registrant should take "reasonable steps" to ensure that its domain name will not infringe upon the rights of another party, including a search of the United States Trademark Register if the registrant is from the United States.

The Complainant submits that in the present Administrative Proceedings, it is difficult to conceive that the Respondent could have discharged its responsibility under the STOP policy to determine whether the domain name registration impinged upon the Complainantís rights, especially because the MLP trademark is used widely throughout the world and is the subject of registrations in Respondentís home jurisdiction, where detailed information about the Complainants use of the MLP trademark is available in Respondentís presumed primary language.

The Complainant further submits that this clear breach by Respondent of its warranty is further evidence of its bad-faith registration of the <mlp.biz> domain name.

For all the foregoing reasons, Complainant submits that Respondent improperly registered the <mlp.biz> domain name in bad faith to deprive Complainant of the ability to use a domain name identical to Complainantís well-known mlp mark.

B. Respondent

There was no Response filed.

 

6. Discussion and Findings

In accordance with paragraph 4(a) of the STOP Policy, the Complainant must prove that:

(i) the domain name in dispute is identical to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered or is being used in bad faith.

The Complainant has established that it has rights in the MLP trademark through its numerous trademark registrations. The domain name in dispute is identical to the Complainantís MLP trademark and the Complainant has therefore established the first element of the test in paragraph 4(a) of STOP.

The Complainant has alleged that the Respondent has no rights or legitimate interest in the said domain name. The Complainant has not used said domain name. Any use of the domain name would clearly risk the possibility of infringing the Complainantís trademarks. The Respondent has not made any submissions in this Administrative Proceeding and it has been accepted by a number of panels that once the Complainant makes out a case that the Respondent has no such rights or interest in the domain name, the onus of proof shifts to the Respondent.

In the circumstances, and given the distinctive character of the domain name and in the absence of a Response, this Administrative Panel accepts that on the balance of probabilities the Respondent has no rights or legitimate interest in said domain name.

As to the question of bad faith, this Administrative Panel accepts the Complainantís submission that the Respondent has clearly registered the said domain name in order to block the Complainant from reflecting its distinctive trademark in a corresponding domain name. In the circumstances outlined by the Complainant such action amounts to a registration in bad faith.

In reaching this decision this Administrative Panel accepts that the Respondent must have been aware of the Complainantís rights in what is essentially a meaningless combination of three letters from the Roman alphabet. The Complainant has invested in a substantial portfolio of trademark registrations for this MLP mark including a registration in Taiwan, which is the presumed area of activity of the Respondent.

In reaching this decision, this Administrative Panel takes no inference from any .INFO proceedings as suggested by the Complainant.

In the absence of a Response therefore, this Administrative Panel accepts that on the balance of probabilities the Respondent registered the said domain name to prevent the Complainant from reflecting its MLP registered trademark in the corresponding <mlp.biz> domain name and this is considered as being prima facie evidence of registration and use of the domain name in bad faith as proposed by the provisions of sub-paragraph 4(b)(ii) of the STOP.

 

7. Decision

With specific reference to Paragraphs 4(i) of the STOP and 15 of the STOP Rules this Administrative Panel finds that the Complainant has satisfied the tests as set out in paragraph 4(a) of the STOP. The domain name <mlp.biz> is identical to the trademark MLP in which the Complainant has rights, the Respondent has no rights or legitimate interests in respect of said domain name, and said domain name has been registered in bad faith.

This Administrative Panel directs that the said domain name <mlp.biz> be transferred to the Complainant.

 


 

James Bridgeman
Sole Panelist

Dated: August 14, 2002