Frog Publications v. CustomWeather Inc.
Claim Number: FA0204000112550
Complainant is Frog Publications, Tampa, FL (“Complainant”) represented by Dennis M. Hand. Respondent is CustomWeather Inc, San Francisco, CA (“Respondent”).
The domain name at issue is <frog.biz>, registered with Corporate Domains, 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 28, 2002; the Forum received a hard copy of the Complaint on May 16, 2002.
On May 21, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 10, 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 7, 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 contends that it has common law rights in the term FROG because its company name is FROG PUBLICATIONS and some people refer to it as FROG. Complainant asserts that this common law FROG mark is identical to <frog.biz>.
Complainant asserts that Respondent has no rights or legitimate interests in the <frog.biz> domain name.
Complainant asserts that Respondent owns no trademarks for FROG, nor does it do business under FROG, and therefore Respondent must have registered the disputed domain name in bad faith.
Respondent failed to submit a Response.
Complainant has submitted evidence that its company name is FROG PUBLICATIONS, and it has asserted that some people refer to it as FROG. However, Complainant has submitted no evidence that its company has established any secondary meaning in the word FROG such that FROG serves to uniquely identify the source, origin or sponsorship of Complainant’s goods and services. It has submitted evidence that it has been known as FROG PUBLICATIONS since 1977, and that this name is associated with elementary level educational materials.
Respondent registered the disputed domain name <frog.biz> 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 claimed that it has common law rights in the FROG PUBLICATIONS mark because it has used the name in commerce in relation to its educational materials since 1977. However, Complainant has submitted no evidence that it has common law rights to the FROG mark or that FROG serves to uniquely identify its goods and services and thus has a secondary meaning in the mind of the public. The FROG PUBLICATIONS mark is not identical to the <frog.biz> domain name because it includes the word “publications.” See Commonwealth Bank v. Rauch, FA 102729 (Nat. Arb. Forum Feb. 23, 2002) (finding that the Complainant failed to establish rights in <cominvest.biz> pursuant to STOP Policy ¶ 4(a)(i) because its COMMINVEST mark was not identical to “cominvest” or <cominvest.biz>). Complainant has failed to show that the domain name at issue is identical to a trademark or service mark in which it has rights.
Therefore, the Panel finds that Complainant has not satisfied STOP Policy ¶ 4(a)(i).
Because Respondent failed to submit a Response, there is insufficient evidence to determine whether Respondent has rights in <frog.biz>, precluding analysis under the STOP Policy.
Having failed to establish a necessary element 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. No further IP claims are pending against this domain name under the STOP Policy.
James A. Carmody, Esq., Panelist
Dated: July 10, 2002
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