MVTec Software GmbH v. Globalia Corporacion Empresarial S.A.
Claim Number: FA0205000112610
Complainant is MVTec Software GmbH, Muenchen, GERMANY (“Complainant”) represented by Olaf Munkelt. Respondent is Globalia Corporacion Empresarial S.A., Madrid, SPAIN (“Respondent”).
The domain name at issue is <halcon.biz>, registered with Melbourne IT.
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. Crary 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 30, 2002; the Forum received a hard copy of the Complaint on May 9, 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.
On July 11, 2002, pursuant to STOP Rule 6(b), the Forum appointed James A. Crary 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.
The <halcon.biz> domain name is identical to the HALCON trademark Complainant has applied for.
Respondent has no rights or legitimate interests in the <halcon.biz> domain name.
Respondent registered the <halcon.biz> domain name in bad faith.
Respondent failed to submit a Response in this proceeding.
Complainant applied for a HALCON trademark in the United States, Japan and the European Union. Complainant is currently involved in a dispute concerning the application for the HALCON trademark in the European Union. In another dispute, the current Respondent filed opposition to Complainant’s European Union trademark application and subsequently applied for a HALCON trademark with the European Union. Complainant, however, has been unable to contact Respondent to resolve the European Union trademark application matter.
Respondent registered the <halcon.biz> domain name on March 27, 2002. According to the Complaint, Respondent uses the HALCON mark in Spain but has never used the mark outside of Spain.
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 applied for HALCON trademarks in the United States, Japan, and the European Union. Complainant, however, has not asserted or provided any evidence of common law rights in the HALCON mark. However, for purposes of this Complaint, because Complainant fails to assert a valid claim under STOP Policy ¶¶ 4(a)(ii) and (iii), the Panel presumes that Complainant’s trademark applications sufficiently establish rights in the HALCON mark. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the Complainant's trademark or service mark be registered by a government authority or agency for such rights to exist. Rights in the mark can be established by pending trademark applications).
Respondent’s <halcon.biz> domain name is identical to Complainant’s HALCON mark. Accordingly, the Panel accepts that STOP Policy ¶ 4(a)(i) has been satisfied.
Complainant notes that Respondent uses the HALCON mark in Spain but has not used the mark anywhere outside of Spain. Complainant also notes that Respondent applied for a HALCON trademark with the European Union and that Complainant is involved in a dispute with Respondent over this application. From the evidence on record it appears that Respondent is the owner or beneficiary of a HALCON mark in Spain, which is identical to the <halcon.biz> domain name. Therefore, Respondent has rights and legitimate interests in the disputed domain name pursuant to STOP Policy ¶ 4(c)(i).
Complainant fails to make any arguments under STOP Policy ¶¶ 4(c)(ii) and (iii).
The Panel finds that Complainant has not satisfied STOP Policy ¶ 4(a)(ii) and that Respondent has rights and legitimate interests with respect to <halcon.biz>.
Complainant claims to have older rights in the HALCON mark than Respondent. Complainant argues that it is “our opinion” that Respondent registered the <halcon.biz> domain in bad faith in order to “bypass our older European rights.” However, being first to register a domain name identical to one’s own mark does not constitute bad faith. Furthermore, Complainant does not provide any evidence to support its belief that Respondent registered <halcon.biz> in bad faith. See Loris Azzaro BV, SARL v. Asterix & De Vasconcellos, D2000-0608 (WIPO Sept. 4, 2000) (“Mere belief and indignation by Complainant that Respondents have registered and are using the Domain Name in bad faith are insufficient to warrant the making of such a finding in the absence of conclusive evidence”); see also Asphalt Research Tech., Inc. v. Anything.com, D2000-0967 (WIPO Oct. 2, 2000) (finding that the Complainant has failed to prove that the domain name <ezstreet.com> was registered and is being used in bad faith or held passively for use by the Respondent in bad faith).
The Panel finds that STOP Policy ¶ 4(a)(iii) has not been satisfied.
Having failed to establish two of three elements required under the STOP Policy, the Panel concludes that Complainant’s claim should be hereby DISMISSED.
Accordingly, since Respondent has rights and legitimate interests in the <halcon.biz> domain name, no further challenges shall be permitted.
James A. Crary, Panelist
Dated: July 16, 2002
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