Exxon Mobil Corporation v. Marco Publishing Corporation
Claim Number: FA0204000112534
Complainant is Exxon Mobil Corporation, Irving, TX, USA (“Complainant”) represented by Laura D. Robertson, of Fulbright & Jaworski LLP. Respondent is Marco Publishing Corporation, Houston, TX, USA (“Respondent”).
The domain name at issue is <energy.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.
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 28, 2002; the Forum received a hard copy of the Complaint on April 28, 2002.
On May 9, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 29, 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 1, 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.
Complainant asserts that the <energy.biz> domain name is identical to its ENERGY mark.
Complainant asserts that Respondent has no rights or legitimate interests in the <energy.biz> domain name.
Complainant asserts that Respondent registered the <energy.biz> domain name in bad faith.
Respondent failed to submit a Response.
Complainant uses its ENERGY mark in relation to magazines and papers. Complainant asserts that it holds a trademark registration in Japan for ENERGY but provides no documentation of this trademark. Complainant does not allege that ENERGY has acquired a secondary meaning to uniquely identify its goods or services.
Respondent registered the disputed domain name on March 27, 2002. Respondent registered numerous domain names at the same time it registered <energy.biz>, including <creditcards.biz>, <brands.biz> and <cellularphones.biz>. Upon Complainant’s information and belief Respondent registered the disputed domain name with the intention of selling it at a price not reflecting its out-of-pocket expenses.
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 ENERGY mark, even though it claims to have a trademark registration in Japan. Without evidence of trademark registration, Complainant must show that it has used the mark in commerce thereby creating common law rights and secondary meaning. ENERGY is generic and cannot be used to uniquely identify any activity in the energy industry. Furthermore, with a highly descriptive mark like ENERGY, Complainant must provide evidence that consumers identify Complainant as the source of products under the ENERGY moniker. Complainant has not even asserted that Japanese consumers identify the ENERGY mark uniquely with Exxon’s goods and services, therefore Complainant has failed to establish that it has rights in the ENERGY mark. See SOCCERPLEX, INC. v. NBA Inc., FA 94361 (Nat. Arb. Forum May 25, 2000) (finding that the Complainant failed to show that it should be granted exclusive use of the domain name <soccerzone.com>, as it contains two generic terms and is not exclusively associated with its business). Moreover, even if Complainant were to have provided this evidence, the word “energy” is so descriptive that it cannot serve to properly distinguish any product and is therefore unprotectable. See Successful Money Mgmt. Seminars, Inc. v. Direct Mail Express, FA 96457 (Nat. Arb. Forum Mar. 7, 2001) (finding that seminar and success are generic terms to which Complainant cannot maintain exclusive rights); see also Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) (stating that "[c]ommon words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis"); see also fabric.com v. LinZan Song, FA 109701 (Nat. Arb. Forum June 1, 2002) (finding that “fabric” is a generic term and that neither Complainant nor Respondent could have protectable rights in such a mark.).
The Panel finds that STOP Policy ¶ 4(a)(i) has not been satisfied. It is, accordingly, 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.
The Complainant having failed to establish all three elements required under the Start-up Trademark Opposition Policy, the Panel concludes that relief shall be and is hereby denied.
Accordingly, it is Ordered that the Complaint be dismissed without prejudice to further proceedings on Complaints timely brought by other IP claimants.
James A. Carmody, Esq., Panelist
Dated: July10, 2002
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