Freedom Communications Inc. v.
International Newcastle
Claim Number: FA0204000112484
Complainant
is Freedom Communications Inc.,
Irvine, CA (“Complainant”) represented by Glenn
Fuller. Respondent is International Newcastle, Miami, FL
(“Respondent”).
The
domain name at issue is <ocr.biz>,
registered with Iholdings.com, 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 26, 2002; the Forum
received a hard copy of the Complaint on May 17, 2002.
On
June 18, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of July 8,
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
Complainant
asserts that the <ocr.biz> domain name is identical to the OCR
acronym for the name of its newspaper the Orange County Register.
Complainant
asserts that Respondent registered the domain name in order to sell the
registration to a subsequent bidder.
B.
Respondent
Respondent
failed to submit a Response.
Complainant asserts that it is the owner
of a newspaper called the Orange County Register. Complainant asserts that this newspaper is
sometimes referred to as OCR.
Complainant has owned this newspaper since 1950. Complainant has submitted no evidence that
it uses the OCR moniker to promote its newspaper, or that the OCR mark is
uniquely identified with Complainant’s publication.
Respondent registered the disputed domain
name on March 27, 2002.
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
has not established that it has rights in the OCR mark because it has provided
no evidence that the OCR moniker has developed secondary meaning and is
uniquely associated with Complainant’s newspaper. Complainant merely asserts that its newspaper, The Orange
County Register is sometimes referred to as OCR, but provides no facts to
support this assertion. See
Cyberimprints.com, Inc. v. Alberga, FA 100608 (Nat. Arb. Forum Dec. 11,
2001) (finding that the Complainant failed to prove trademark rights at common
law because it did not prove the CYBERIMPRINTS.COM mark was used to identify
the source or sponsorship of goods or services or that there was strong
customer identification of the mark as indicating the source of such goods or
services).
The
Panel finds that STOP Policy ¶ 4(a)(i) has not been satisfied. Accordingly, it is not necessary to
determine whether the Respondent has rights or legitimate interests in respect
of the mark or whether it was registered or is being used in bad faith.
Having failed to establish all three
elements required under the Start-up Trademark Opposition Policy, the Panel
concludes that relief shall be hereby denied.
Accordingly, it is Ordered that the
Complaint be dismissed. There
are no further challenges pending under the STOP Policy against this domain
name.
James A. Carmody, Esq., Panelist
Dated: July 25, 2002
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