Complainant is MaCS GmbH, Oberschleissheim, GERMANY (“Complainant”) represented by Kai Fischer. Respondent is Macfarlanes, London, ENGLAND (GREAT BRITAIN) (“Respondent”), represented by Maurice Millen.
The domain name at issue is <macs.biz>, registered with Netbenefit dba Netnames.
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.
David A. Einhorn appointed 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 26, 2002; the Forum received a hard copy of the Complaint on April 26, 2002.
On May 14, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 3, 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”).
A timely Response was received and determined to be complete on June 3, 2002.
On June 24, 2002, pursuant to STOP Rule 6(b), the Forum appointed David A. Einhorn as the single Panelist.
Transfer of the domain name from Respondent to Complainant.
[a.] MaCS registered the name “MaCS” with the Amtsgericht München as its company name and has been using this name for nearly 8 years.
[b.] Respondent does not have any rights or legitimate interests with respect to the domain name since its name is “Macfarlanes” not “Macs”.
[a.] Respondent does not deny that the domain name is identical to a trademark to which Complainant has rights.
[b.] Respondent does not own the registered trademark for “MaCS”. Respondent does own UK trademark registrations for “Macfarlanes” and “macfarlanes.com”. Respondent now uses the abbreviation “macs” in its extranet, and its URL for the extranet is <extramacs.com>. Respondent has considered on occasion extending its use of “macs”, especially for online aspects of its business, and therefore has registered other domain names which also contain “macs”, such as <infomacs.com> and <macsinfo.com>.
[c.] Respondent has not sought to register the domain name either for the purpose of selling it or with the purpose of disrupting Complainant’s business.
Complainant has not established trademark rights in the mark, MACS.
Respondent has not established that it has rights or other legitimate interests in the mark, MACS.
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.”
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 must involve 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 has not established rights in the mark, “MACS”. Complainant does not allege that it holds any registered trademark in “MACS”. Neither has Complainant provided evidence to establish a “sufficiently strong identification of its mark such that there would be recognition among Internet users that the mark […] identifies goods or services unique to Complainant”. Vietnam Venture Group, Inc. v. Cosmos Consulting GmbH, FA 102610 (Nat. Arb. Forum, Feb. 6, 2002).
Neither has Respondent shown that it has rights or legitimate interests in the mark “MACS”. Respondent has not alleged that it owns a trademark identical to “MACS”. While Respondent has alleged that it has considered using the term MACS alone, and not part of a larger, composite term, Respondent has not alleged that it has made demonstrable preparation to use this domain, nor that it, or an associated business or organization, has been commonly known by the domain name <macs.biz>. See, Gene Logic, Inc. v. Cho Kyu Bock, FA 103042 (Nat. Arb. Forum, March 4, 2002). (“We think that to establish rights or legitimate interests in a name or a mark, the Respondent must do more than state that he considered using it in the past, along with other names he actually used”).
The Complaint of MaCS GmbH with respect to the domain name <macs.biz> is hereby dismissed. Accordingly, this Panel orders that the domain name at issue not be transferred from the Respondent to the Complainant.
As Respondent has not shown that it has any rights or legitimate interests in the mark MACS, subsequent challenges under the STOP Policy against this domain name shall be permitted.
David A. Einhorn, Panelist
Dated: July 3, 2002
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page