MARCOM HandelsgesmbH v. MARCOM automatisering bv
Claim Number: FA0204000110854
Complainant is MARCOM HandelsgesmbH, Vienna, AUSTRIA (“Complainant”) represented by Margit Wendelberger. Respondent is MARCOM automatisering bv, Tiel Gld, NETHERLANDS (“Respondent”).
The domain name at issue is <marcom.biz>, registered with Domain People.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
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, Complainant timely noted its intent to file a STOP Complaint against Respondent with the Registry Operator, NeuLevel and with the National Arbitration Forum (the “Forum”).
Complainant submitted a Complaint to the Forum electronically on April 25, 2002; the Forum received a hard copy of the Complaint on April 30, 2002.
On May 7, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 28, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with paragraph 2(a) of the Rules for the Start-up Trademark Opposition Policy (the “STOP Rules”).
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On June 26, 2002, pursuant to STOP Rule 6(b), the Forum appointed James A. Carmody, Esq., as the single Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the STOP Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the STOP Policy, STOP Rules, the Forum’s STOP Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Transfer of the domain name from Respondent to Complainant.
The <marcom.biz> domain name is identical to Complainant’s common law MARCOM mark.
Respondent has inferior rights or legitimate interests in the <marcom.biz> domain name.
Respondent did not submit a Response in this proceeding.
Complainant’s business was founded on March 2, 1962. The MARCOM name has been in existence since November 19, 1963. Since that time, Complainant has consistently used MARCOM in its business operations and has been commonly known by MARCOM.
Respondent registered the <marcom.biz> domain name on March 27, 2002. Respondent’s business was founded about fourteen years ago.
Paragraph 15(a) of the STOP Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the STOP Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the STOP Rules.
Paragraph 4(a) of the STOP Policy 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.
Complainant asserts it has rights to the MARCOM name through continuous use in commerce since 1963. Since Respondent did not submit a Response, the Panel may accept as true all arguments of the Complainant. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”). Moreover, Respondent’s <marcom.biz> is identical to Complainant’s MARCOM business name, which Complainant’s claims to hold rights in. See Crazy Creek Prods., Inc. v. Siemen’s Bus. Servs., FA 102795 (Nat. Arb. Forum Feb. 12, 2002) (finding that the Complainant satisfied STOP Policy ¶ 4(a)(i) by demonstrating its common law rights in the CRAZY CREEK mark).
Accordingly, the Panel presumes that STOP Policy ¶ 4(a)(i) has been satisfied.
Complainant relies solely on its longstanding use of the MARCOM name in asserting that it has superior rights to <marcom.biz> over Respondent. Complainant itself provided information that Respondent has been operating its business for fourteen years under the name “MARCOM automatisering bv.” Complainant’s only argument supporting a transfer of <marcom.biz> is that it has conducted business under the MARCOM name longer than Respondent. By recognizing Respondent’s rights in the domain name, this is not a valid argument under the STOP Policy. Therefore, since Respondent was first to register the <marcom.biz> domain name and Complainant’s interests in MARCOM only consist of longer use of the MARCOM name for its business, the domain name should not be transferred to Complainant. Further, it is obvious that Complainant concedes that Respondent is known by the domain name at issue and has long established legitimate interests in respect to the name.
Accordingly, the Panel finds that STOP Policy ¶ 4(a)(ii) of the Stop Policy has not been satisfied.
No STOP Policy ¶ 4(a)(iii) bad faith analysis needs to be conducted in light of the fact that Complainant has not established superior rights in the domain name. Furthermore, Complainant failed to assert or provide proof that Respondent was guilty of bad faith in the registration or use of the domain name at issue.
Having failed to establish a required element under the STOP Policy, the Panel concludes that relief shall be denied.
Accordingly, the Complaint is dismissed. No further IP Claims are pending against this domain name under the STOP Policy.
James A. Carmody, Esq., Panelist
Dated: July 1, 2002
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