Mitchell Voting Products Inc. v. Vitty
Inc.
Claim Number: FA0205000114328
Complainant
is Mitchell Voting Products Inc.,
Portland, OR, USA (“Complainant”).
Respondent is Vitty Inc.,
Taipei, TAIWAN (“Respondent”).
The
domain name at issue is <MVP.biz>,
registered with 007 Names, 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.
The
Honorable Charles K. McCotter, Jr. (Ret.) 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 May 18, 2002; the Forum
received a hard copy of the Complaint on May 17, 2002.
On
July 9, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of July 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 August 14, 2002, pursuant to STOP Rule 6(b), the
Forum appointed the
Honorable Charles K. McCotter, Jr. (Ret.) 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
1. Respondent’s <mvp.biz> domain
name is identical to Complainant’s MVP common law mark.
2. Respondent does not have any rights or
interests in the <mvp.biz> domain name.
3. Respondent registered the <mvp.biz>
domain name in bad faith.
B. Respondent failed to submit a Response.
Complainant, Mitchell Voting Products,
Inc., asserts that it has been using the MVP mark in marketing its ballot
counting and election management software. Complainant has allegedly been using
the mark in relation to its advertising scheme since the creation of the
corporation, in August 1990.
Respondent registered the <mvp.biz>
domain name on March 27, 2002. Complainant contends that Respondent has
registered 265 domain names ending in “.biz,” including such domain names as
<domainresellers.biz> and <boyscouts.biz>.
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 fails in establishing rights in the MVP mark
pursuant to STOP Policy ¶ 4(a)(i).
In
STOP proceedings, Complainant must establish that it has rights in a mark
identical to Respondent’s domain name. In the present case, Complainant’s
Submission fails to provide any corroborating evidence or information that
would support its assertion that it holds common law rights in the MVP mark.
Although the ICANN dispute resolution policy is broad in scope, in that the
reference to a trademark in which the Complainant has rights means that
ownership of a registered mark is not required, Complainant must establish a prima
facie case illustrating its rights in the relevant mark. See generally
McCarthy on Trademarks and Unfair Competition, § 25:74.2, Vol. 4 (2000).
Complainant
is required to submit an Intellectual Property Claim Form for the “.biz” domain
name matching the exact alphanumeric string contained in the trademark or
service mark in which that Claimant has rights. See STOP Policy ¶ 1.
However, Complainant’s asserted rights revolve around the mere statement,
“Mitchell Voting Products, Inc. uses the MVP common-law trademark in marketing
its ballot counting and election management software. It has been using MVP as
a trademark since. . .August 1990.”
Complainant’s
assertion that it has rights in the MVP acronym reflecting its trade name
raises fundamental questions underlined by Policy ¶ 1. More specifically,
Complainant provides no evidence supporting its statements that it has been
known by the MVP acronym standing alone, besides its mere assertion.
Furthermore, it is not apparent that Complainant has sufficiently established
common law rights in the Mitchell Voting Products, Inc. trade name reflected in
its entirety. Thus, Complainant fails in meeting its burden of proving, by a
preponderance of the credible, relevant and admissible evidence, that the
domain name is identical to a mark in which it has rights. See Vietnam
Venture Group v. Cosmos Consulting Gmbh, FA 102610 (Nat. Arb. Forum Feb. 6,
2002) (finding the Complaint must be dismissed under Policy ¶ 4(a)(i) because
Complainant does not hold a registered trademark in VVG, nor did Complainant
demonstrate sufficiently strong identification of its mark such that there
would be recognition among Internet users that the mark “VVG” identifies goods
or services unique to Complainant); see FRH Freies Rechenzentrum v.
Ingenieurburo FRH, FA 102945 (Nat. Arb. Forum Jan. 18, 2002) (determining
that Complainant has not proven by a preponderance of the relevant, admissible
and credible evidence that the domain name in question is identical to a
trademark in which Complainant has rights despite Complainant’s mark being the
dominant feature of Complainant’s trade name).
Under
NeuLevel’s STOP IP Claim Procedure, Complainant must initially present a prima
facie showing that it has rights in a mark identical to the disputed domain
name. Following Complainant’s prima facie presentation of its case, the
burden shifts to Respondent to demonstrate that it has legal rights to the MVP
identifier as used in its second-level domain. However, because Complainant
failed in fulfilling the burden imposed by STOP Policy ¶ 4(a)(i) and represents
the last IP Claimant against the subject domain name, the Panel need not
analyze Respondent’s rights under STOP Policy ¶ 4(a)(ii), or its motivations in
registering the domain name under STOP Policy ¶ 4(a)(iii). See Do the Hustle
v. Tropic Web, D2000-0624 (WIPO August 21, 2000) (finding that Paragraph
4(a) of the UDRP sets out three elements implying that Complainant has the
burden of proof as to each of the three elements); see also Interactive Television Corp. v. Noname.com,
D2000-0358 (WIPO June 26, 2000) (finding that “[S]erious questions as to
whether Complainant has any proprietary rights require us to reject
Complainant’s claim”).
Accordingly,
the Panel finds that Policy ¶ 4(a)(i) has not been satisfied.
Because Complainant failed in
establishing rights in a trademark, service mark or common law mark identical
to Respondent’s <mvp.biz> domain name pursuant to STOP Policy ¶
4(a)(i), the Panel concludes that relief shall be hereby DENIED.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated: August 22, 2002
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