Vulcan Materials Company d/b/a Vulcan
Chemicals v. Sungjo Park
Claim Number: FA0206000114525
Complainant
is Vulcan Materials Company d/b/a Vulcan Chemicals, Birmingham, AL, USA (“Complainant”). Respondent is Sungjo Park, Songpa-ku, Seoul, KOREA (“Respondent”).
The
domain name at issue is <vulcan.biz>,
registered with Hangang Systems, Inc. d/b/a Doregi.com.
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.
Hon.
Ralph Yachnin 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 June 9, 2002; the Forum
received a hard copy of the Complaint on June 18, 2002.
On
June 27, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of July 17,
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 23, 2002, pursuant to STOP Rule 6(b), the Forum
appointed Hon. Ralph Yachnin
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 <vulcan.biz>
domain name is identical to Complainant’s VULCAN common law mark.
2. Respondent does not have any rights or
legitimate interests in the <vulcan.biz> domain name.
3. Respondent registered the <vulcan.biz>
domain name in bad faith.
B. Respondent did not submit a Response in
this proceeding.
Complainant is Vulcan Materials
Company d/b/a Vulcan Chemicals, a construction aggregate company incorporated
in New Jersey. Complainant is also known by the names, inter alia,
Vulcan Aggregates Company, Vulcan Chemicals Investments, Vulcan Distribution
Company, Vulcan Holdings, and Vulcan International. Since as early as 1952,
Complainant’s alleged VULCAN mark has been utilized both as a trade name to
identify Complainant’s business and as a common law trademark in connection
with its goods and services. Complainant contends that the promotion of its
mark has established meaning and recognition within the construction aggregate
industry. Complainant sells and advertises goods bearing the VULCAN mark
throughout the U.S., as well as internationally.
Respondent registered the <vulcan.biz>
domain name on March 27, 2002 and has yet to develop a purpose for the
domain name.
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 <vulcan.biz> domain name under
STOP Policy ¶ 4(a)(i).
In
STOP proceedings, Complainant must establish rights in a trademark or service
mark identical to Respondent’s domain name. The ICANN dispute resolution policy
is “broad in scope” in that “the reference to a trademark or service mark ‘in
which the complainant has rights’ means that ownership of a registered mark is
not required–unregistered or common law trademark or service mark rights will
suffice” to support a domain name Complaint under the policy. McCarthy on Trademarks and Unfair
Competition, § 25:74.2, Vol. 4 (2000). Complainant is required to submit an
Intellectual Property Claim Form (“IP Claim Form”) for the .BIZ domain name
matching the exact alphanumeric string contained in the trade or service mark
in which that Claimant has rights. See STOP Policy ¶ 1.
However,
Complainant’s asserted rights center around the alleged VULCAN mark with the
addition of other descriptive words, such as: aggregates, company, materials,
holdings, international and chemicals, among others. A significant portion of
Complainant’s evidence includes the VULCAN mark with the addition of the words
“Materials Company” and “Performance Chemicals,” thereby weakening
Complainant’s contentions that it has established secondary meaning in the
VULCAN mark standing alone. Complainant’s Submission also includes reference to
Fortune magazine’s article on “America’s Most Admired Companies,” where
Complainant was listed as “Vulcan Materials,” once again undermining
Complainant’s argument that it has rights to the VULCAN mark without the
addition of a qualifying word.
Complainant
contends that its alleged VULCAN moniker is the dominant word in each of its
marks, representing a collective identifier for all its trade names.
However, the Complaint provided
insufficient evidence showing that Complainant has established rights in the
VULCAN mark alone. Therefore, Complainant fails in meeting its burden to prove
by a preponderance of the credible, relevant and admissible evidence that the
domain name is identical to a trademark in which it has rights. 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); see
also 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 also Woodworker’s
Supply Inc. v. Roloff Mktg., Inc., FA 103055 (Nat. Arb. Forum Jan. 30,
2002) (finding that Complainant’s Woodworker Supply, Inc. trade name is not
identical to the <woodworker.biz> domain name).
Under
NeuLevel’s STOP IP Claim Procedure, Complainant must first present a prima
facie showing that it has rights in a mark identical to the contested
domain name, then the burden shifts to Respondent to show that it has legal
rights to the Vulcan identifier as used in its second level domain. However,
Complainant has failed in meeting the initial burden imposed by STOP Policy ¶
4(a)(i). Because Complainant failed in establishing rights in the VULCAN mark
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 ¶ 4(a) of the Policy 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. The ultimate decision as to whether Complainant does or
does not have proprietary rights is better left to a court or trademark office
tribunal”).
Because Complainant failed in
establishing rights in a trademark, service mark or common law mark identical
to Respondent’s <vulcan.biz> domain name pursuant to STOP Policy ¶
4(a)(i), the Panel concludes that relief should be hereby DENIED. As noted, there are no further challenges
pending against this domain name under the STOP Policy.
Hon. Ralph Yachnin, Panelist
Justice,
Supreme Court, NY, (Ret.)
Dated: July 31, 2002
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