Automated Power Exchange Inc. v. Stefan
Schmiedl
Claim Number: FA0204000112502
PARTIES
Complainant
is James Crossen Automated Power
Exchange Inc., Santa Clara, CA, USA (“Complainant”) represented by John A Kelley, of Morrison & Foerster LLP.
Respondent is Stefan Schmiedl,
Straubing Bayern, GERMANY (“Respondent”).
The
domain name at issue is <apx.biz>,
registered with CORE.
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge, has no conflict in serving as Panelist in this
proceeding.
Judge
Karl Fink (Ret.) 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 27, 2002; the Forum
received a hard copy of the Complaint on April 30, 2002.
On
May 6, 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”).
A
timely Response was received and determined to be complete on May 20, 2002.
On June 24, 2002, pursuant to STOP Rule 6(b), the Forum
appointed Judge Karl Fink (Ret.)
as the single Panelist.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
Complainant
is the holder of registered trademark “APX,” Registration No. 2315516, issued
on February 8, 2000. Complainant is
also the holder of a registered word and design mark “APX Automated Power
Exchange,” Registration No. 2367484, issued on July 18, 2000.
Automated
Power Exchange, Inc. (“APX”) is a leading independent transaction-processing
agent for wholesale electric power markets.
APX clients benefit from expanded market access and streamlined
transaction processing infrastructure.
Since its founding in 1996, APX has earned a reputation as the industry’s
trusted independent service agent.
In
addition to its registered trademarks in the United States, APX has pending
applications for trademark registrations in Japan, China, and Korea. Respondent has no trademark or other
intellectual property rights in the domain name <apx.biz>.
Respondent
Stefan Schmiedl appears to have registered the <apx.biz> domain name in bad faith.
B.
Respondent
Respondent
agrees the domain name <apx.biz>
is identical to trademarks in which the Complainant has rights. Respondent does not claim rights or
interests in the <apx.biz>
domain name. During the
pre-registration, Respondent was notified that there were possible trademark
conflicts with the domain name <apx.biz>. He tried to cancel his application for the
domain name. Neulevel support confirmed
his cancellation.
Respondent
requests that the Panel grant the request to transfer the name.
Based upon the findings set forth below
and Respondent’s consent, the Complainant has proven that the domain name
should be transferred to Complainant.
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 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. Princeton Linear Assoc., Inc. v. Copland o/b/o LAN Solutions
Inc. FA 102811 (Nat. Arb. Forum Feb. 8, 2001). The domain name is identical to Complainant’s mark.
Complainant’s
trademark is proof that Complainant has rights in the mark.
Respondent
makes no claim of rights or legitimate interests in the domain name and
therefore has none.
Respondent has attempted to withdraw his
registration. By his action, he has
conceded that going forward with the registration, when he had knowledge of
Complainant’s marks, would constitute registration in bad faith.
DECISION
The disputed domain name <apx.biz>
is ordered transferred to Complainant.
Subsequent challenges under the STOP policy against this domain name shall
not be permitted.
Judge Karl Fink (Ret.) Panelist
Dated: July 2, 2002
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