START-UP TRADEMARK OPPOSITION POLICY
Automatic Switch Co. v. American Society of Clinical Oncology
Claim Number: FA0205000114415
Complainant is Automatic Switch Co., Florham Park, NJ (“Complainant”) represented by Michael J Paulo. Respondent is American Society of Clinical Oncology, Alexandria, VA (“Respondent”) represented by Juan Carlos A. Marquez, of Reed Smith LLP.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <asco.biz>, registered with Nameengine, 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.
R. Glen Ayers served 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 24, 2002; the Forum received a hard copy of the Complaint on June 24, 2002.
On July 2, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 22, 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”).
A timely Response was received and determined to be complete on July 22, 2002.
On August 15, 2002, pursuant to STOP Rule 6(b), the Forum appointed R. Glen Ayers as the single Panelist.
Transfer of the domain name from Respondent to Complainant.
In this STOP Policy Complaint, Complainant asserts that it holds rights in the name ASCO. Complainant has provided evidence that it has registered ASCO with the United States Patent and Trademark Office. The registration deals with automatic electric switches and the like.
Complainant asserts that Respondent, the American Society of Clinical Oncology, has registered <ASCO.biz>. Obviously, the domain name ASCO is identical to the mark held by Complainant.
Complainant asserts that Respondent is the owner of a mark identical to the domain name. Complainant asserts the domain name is not used in connection the bonafide offering of goods and services and that Respondent is not commonly known by the domain name.
As to bad faith, Complainant states that “[t]he Respondent’s use of the registered domain name prevents the Complainant from using the mark in terms of conducting commerce.”
Respondent, as one might guess, also has registered a mark with the United States Patent and Trademark Office. That mark is ASCO. ASCO, in the context of this service mark, relates to the American Society of Clinical Oncology, a New York not for profit corporation. It is used for educational services including the providing of information concerning the practice of medicine.
Respondent states that it has the right to use ASCO and has been using the acronym since 1964. It operates under the name ASCO throughout the medical profession.
As to bad faith, Respondent points out that Complainant already holds the domain name <asco.com>.
Respondent also asserts that it has not registered the domain name in bad faith but rather registered the domain name to take advantage of internet opportunities for the American Society of Clinical Oncology. Respondent points out, it is not in the same line of business and that in none of its activities rise to the level of “bad faith.”
Obviously, except for the first element of the STOP Policy, this is not a STOP Policy case. While the domain name registered by Respondent and the mark held by Complainant are identical, in fact the identical marks are shared by both Respondent and Complainant. Neither competes with the other.
While it is not apparent that the Respondent has made any real attempt to use the “.biz” domain name, certainly there is no bad faith shown by Complainant.
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.”
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’s Rights in the Mark
Certainly Complainant has rights to the mark. However, Respondent has an identical mark and certainly has rights and legitimate interest in the disputed domain name.
Respondent’s Rights or Legitimate Interests
Respondent’s rights are completely legitimate. Respondent has a trademark, issued by the same people and on the same kind of paper as the one held by Complainant. Since Respondent has rights or legitimate interests, subsequent challenges to this domain name, as against the Respondent, under the STOP Policy shall not be permitted against this domain name
Registration or Use in Bad Faith
As indicated above, there is no bad faith present.
The Complaint is dismissed. The domain name shall not be transferred. Subsequent challenges to this domain name as against the Respondent under the STOP Policy shall not be permitted against this domain name.
R. Glen Ayers, Panelist
Dated: August 20, 2002
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page