EAC Corporation v. Fa.Thorsten Opitz
Claim Number: FA0204000112507
Complainant is EAC Corporation, Teterboro, NJ, USA (“Complainant”). Respondent is Fa.Thorsten Opitz, Musterstadt Nrw, GERMANY (“Respondent”).
The domain name at issue is <EAC.biz>, registered with Secura GMBH.
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 P. Miranda, 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”).
A timely Response was received and determined to be complete on May 21, 2002.
On June 25, 2002, pursuant to STOP Rule 6(b), the Forum appointed David P. Miranda as the single Panelist.
Transfer of the domain name from Respondent to Complainant.
Complainant contends that it is owner of the trademark EAC registered with the United States Patent and Trademark Office (Reg. No. 1,614,256) for “manufacturing battery assemblies to order and/or specification of others”, with a date of first use in commerce of July 11, 1994. Complainant also owns and operates the domain name <EAC.com> for its business. Complainant contends that its research of the United States Patent and Trademark Office electronic database does not reveal any trademarks or service marks for the term EAC related to the Respondent. In its search of Respondent’s use of the term EAC or <EAC.biz> the Complainant found the domain name <EAC-COM.de> to be associated with Respondent but claims that that domain does not indicate Respondent’s plans to use the <EAC.biz> for business purposes or otherwise. Complainant contends it is unaware of trademarks or service marks attributable to Respondent regarding the term EAC and the information supplied by <EAC.COM.de> does not indicate that the Respondent has any goods or services available to support the use of <EAC.biz> without providing confusion with <EAC.com>. Complainant further contends that other than <EAC-COM.de> Respondent is not associated with any individual, company or company business entity directly utilizing EAC or <EAC.biz>. Complainant contends that the <EAC-COM.de> e-mail address was not provided by Respondent to NeuLevel at the time of registration. Complainant is unaware of how Respondent plans to utilize the domain <EAC.biz> and contends the Respondent’s use of <EAC.biz> could detract from the overall business activity and customer base of the Complainant who is already known on the Internet as <EAC.com>. Complainant also contends that because Complainant holds the trademark to the term EAC, confusion will be inevitable.
Respondent contends that it is a representative of EAC Automation-Consulting GmbH (hereinafter EAC Automation). Respondent contends that EAC Automation is a company founded and registered in Germany since 1988 under Registration No. HRB11544. Respondent also claims to have registered the trademark “EAC” in Germany under Registration No. 2,020,217 since 1991 and has been so using the term EAC since 1988 for its business and products. Respondent contends that it seeks to use the domain <EAC.biz> for the purpose of the business currently located at <EAC-COM.de>.
Pursuant to STOP Policy paragraph 4(a), in order to obtain an order that a domain name be transferred, the Complainant must prove the following three elements:
First, the domain name is identical to a trademark or service mark in which the Complainant has rights; and
Second, the Respondent has no rights or legitimate interest in respect of the domain name; and
Third, the domain name has been registered or is being used in bad faith.
Complainant has submitted proof of its ownership of a trademark for EAC, and has established the domain name in question is identical to the trademark in which the Complainant has rights. Complainant has satisfied the first element in accordance with STOP Policy paragraph 4(a)(i).
Pursuant to STOP Policy paragraph 4(a)(ii) the burden is upon the Complainant to establish that the Respondent has no rights or legitimate interest to the domain name. Complainant contends that the Respondent does not own and is not associated with any individual, company or business or entity directly utilizing the name EAC or <EAC.biz> other than <EAC-COM.de>. Complainant concedes that Respondent has an affiliation with the domain name <EAC-COM.de> and the .biz registry WHOIS data for <EAC.biz> submitted by Complainant in its papers indicates that Respondent is using <EAC-COM.de> as his e-mail address. Respondent confirms that he has been using the domain name <EAC-COM.de> for the business of EAC Automation. Respondent contends that the domain name <EAC.biz> was registered on behalf of EAC Automation which is currently using the domain name <EAC-COM.de>. Complainant does not offer any proof contrary to this contention of Respondent and concedes Respondent’s association with <EAC-COM.de>. A review of the <EAC-COM.de> website reveals that it is dedicated to legitimate business purpose.
In this case, the Respondent contends that it intends to use the domain <EAC.biz> for the business of EAC Automation. Complainant submits no proof contrary to this assertion. A Respondent in a STOP proceeding may demonstrate its rights and interests in a disputed domain name by providing its use of or demonstrable preparations to use the domain name for a bona fide offering of goods or services. STOP Policy ¶ 4(c)(ii). Where the Respondent operates a website at a similar domain name, such use may fulfill the “use of, or demonstrable preparations to use” test of STOP Policy ¶ 4(c)(ii). See Am. Airlines Inc. v. Webtoast Internet Servs. Inc., FA102954 (Nat. Arb. Forum Feb. 24, 2002) (finding that, where the Respondent continuously operated a website at <americanway.com> for over five years in connection with the sale of its video series “The American Way of Training Hunters & Jumpers,” such activity satisfied the requirements of STOP Policy in regard to the identical domain name <americanway.biz>). Although a Respondent may not assert the rights of a third party to demonstrate rights or legitimate interest pursuant to STOP Policy paragraph 4 (a)(ii) a Respondent may be found to have rights and legitimate interest in a domain name registered on behalf of another with whom he has an association or other relationship. K2r Produkte AG v. Trigano, D2000-0622 (WIPO Aug. 23, 2000) (finding that the Respondent has rights and legitimate interest in the domain name <k2r.com> under UDRP ¶ 4(a)(ii) where he registered the domain name for a website in connection with his mother’s store, “KIRK ET ROSIE RICH’).
Respondent alleges that it has been doing business using the EAC name since 1988 and that it has had a registered trademark for EAC in Germany since 1991. Complainant offers no proof contrary to this claim. When a Respondent alleges to be the owner of a trademark and offers at least some proof to support the assertion, the Complainant’s failure to dispute the assertion warrants a finding that the Respondent has rights to and legitimate interest in the disputed domain name sufficient to satisfy the Respondent’s burden under STOP Policy ¶ 4(a)(ii). See Optum, Inc. v. United Health Group, FA 104102 (Nat. Arb. Forum March. 8, 2002) (finding that Respondent United Health Group’s assertion that United Healthcare Corporation assigned to United Health Group its trademark rights in OPTUM, when supported by “some proof” and undisputed by Complainant, warranted dismissal of the claim). Respondent’s assertion of EAC Automation’s company registration in Germany with a German registration number as well as a German trademark registration number for EAC, although not conclusive, constitutes “some proof” and Complainant has failed to dispute these assertions.
Complainant has failed to submit any proof of bad faith in the registration or use of the domain on the part of 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.”
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 established its rights in the mark EAC.
Complainant has failed to establish that Respondent has no rights or legitimate interest in the domain <EAC.biz>.
Complainant has failed to establish that Respondent has registered or is using the domain <EAC.biz> in bad faith.
Based upon the above, the complaint is dismissed. Further challenges against this domain name under the STOP Policy shall not be permitted.
David P. Miranda, Panelist
Dated: July 9, 2002
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