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.
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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