EAC Corporation v. Marco Publishing
Corporation
Claim Number: FA0204000112503
Complainant
is EAC Corporation, Teterboro, NJ
(“Complainant”). Respondent is Marco Publishing Corporation, Us, TX
(“Respondent”) represented by Stephen Sturgeon.
The
domain name at issue is <batteries.biz>,
registered with Bondi LLC.
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.
Robert
T. Pfeuffer, Senior District Judge 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 May 3, 2002.
On
May 13, 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”).
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.
Respondent
submitted a late Response on June 17, 2002.
On July 17, 2002, pursuant to STOP Rule 6(b), the Forum
appointed Robert T. Pfeuffer 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
EAC
Corporation, the Complainant, asserts that it has made common law use of the
term Batteries since October 1, 1976, and that it first used this term in
commerce on the same date. It states
that it is in the business of providing goods and services to battery-related
products and services involving the manufacturing of battery assemblies to
order and/or, specification of others and in providing information about
batteries both via a global computer network.
Also, it contends that it has in the past and currently utilizes certain
registered domain names which include the word “batteries", at least
eleven of which are set out in paragraph 5C of the Complaint.
B.
Respondent
Respondent
Marco Publishing Corporation has submitted no timely Response, and although not
considered in the final determination, its untimely Response has been reviewed
by the Panel.
The Complainant is required to prove by
competent evidence that it has rights to the mark in dispute, otherwise, the
Complaint must be dismissed. While
Complainant has alleged that it has common law trademark rights in the word
“batteries”, it has provided no proof whatsoever of any common law trademark
right. No evidence has been presented
by Complainant to prove the duration, the extensiveness of use or any public
recognition of the word “batteries”.
The absence of definitive proof
of a trademark has previously been held to be fatal to a Complainant’s
request for the transfer of a domain name.
See Primo Incense v. Spring.net, FA 96565 (Nat. Arb. Forum Apr.
12, 2001). In that case, the Panel
stated clearly that the Complainant must demonstrate the factual existence of
its right in a trademark or service mark.
In this case, the Complainant has wholly failed to present competent
evidence that it has legal rights to the trademark. Further Complainant has been unable to establish by competent
evidence the recognition of the word as being associated with any services or
products that the Complainant markets or provides to the public.
While
under ordinary circumstances the Panel must also determine whether the
Respondent has rights or legitimate interests in the disputed domain name, no
evidence is before this Panel because the Response was not filed within twenty
days of service of the Complaint as required by the rules and therefore, the
Response and any evidence it may have contained, has not been considered by the
Panel. Therefore, the Panel declines to
make such determination.
The
Panel having determined that the Complaint must be dismissed, it declines to
address further issues of rights or legitimate interests or registration or use
in bad faith by the Respondent.
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.
The Complainant having wholly failed to
discharge its burden of proof as required by the rules, the Complaint is in all
things dismissed with prejudice.
Further challenges under the STOP Policy as brought by unique IP
claimants shall be permitted.
_
Robert T. Pfeuffer, Panelist
Dated: July 29, 2002
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