MEMO Electronics GmbH v. Ross LeBel
Claim Number: FA0204000110855
Complainant
is MEMO Electronics GmbH, Vienna,
AUSTRIA (“Complainant”) represented by Jesmar
Mifsud. Respondent is Ross LeBel, Surrey, British Columbia,
CANADA (“Respondent”).
The
domain name at issue is <memo.biz>,
registered with Domain Bank, Inc.
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 June 6, 2002.
On
June 20, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of July 10,
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 July 22, 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.
A. Complainant
1. Respondent’s <memo.biz> domain
name is identical to Complainant’s MEMO mark.
2. Respondent does not have any rights or
legitimate interests in respect of the <memo.biz> domain name.
3. Respondent registered the <memo.biz>
domain name in bad
faith.
B. Respondent did not submit a Response in
this proceeding.
Complainant is MEMO Electronics GmbH and
MEMO International Ltd. Complainant owns Austrian Trademark Reg. No. 148 531
for a stylized CONTACTLESS MEMO CARD mark, registered on February 4, 1993.
Complainant asserts that “Electronic memory cards” is the technical term for
the product group it promotes.
Respondent registered the domain name on
March 27, 2002. Respondent has yet to develop a purpose for the disputed domain
name.
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.
Although
Complainant owns trademark rights in the CONTACTLESS MEMO CARD mark, STOP
Policy ¶ 4(a)(i) speaks clearly in that Complainant’s mark must be identical to
Respondent’s domain name. Complainant provides evidence that its business names
incorporate the MEMO mark in question as Complainant’s rights extend to the
registered businesses “Memo Electronics GmbH” and “Memo International Ltd.”
However, Complainant fails to make the assertion that it is known or referred
to by the MEMO portion of its name only, and fails to provide information
supporting such an inference.
Due
to the nature of STOP proceedings and the interpretation of the plain language
of STOP Policy ¶ 4(a)(i), identicalness between Complainant’s mark and the
disputed domain name should never be a threshold issue. See Princeton
Linear Assoc., Inc. v. Copland o/b/o LAN Solutions Inc. FA 102811 (Nat.
Arb. Forum Feb. 8, 2001). Complainant fails to adequately support its
contention that it holds valid rights in a registered or common law mark identical
to the subject domain name.
Because
Complainant failed to fulfill the obligation imposed by STOP Policy ¶ 4(a)(i)
and because Respondent has not come forward with evidence that it holds rights
in the disputed domain name, the Panel will not make any determinations as to
STOP Policy ¶¶ 4(a)(ii) and (iii).
Having
failed to establish a necessary element under the STOP Policy, the Panel
concludes that relief should be hereby DENIED.
Accordingly,
it is Ordered that the <memo.biz> domain name shall not be
transferred and will remain with Respondent, and that subsequent challenges
under the STOP Policy against this domain name SHALL be permitted.
James A. Carmody, Esq., Panelist
Dated: July 25, 2002
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