Energy Mfg. Co. Inc. v. Marco Publishing
Corporation
Claim Number: FA0209000125160
Complainant
is Energy Mfg. Co. Inc., Monticello,
IA (“Complainant”) represented by Allan
L. Harms. Respondent is Marco Publishing Corporation, TX
(“Respondent”).
The
domain name at issue is <energy.biz>,
registered with Bondi LLC.
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.
Tyrus
R. Atkinson, Jr., 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 September 13, 2002; the
Forum received a hard copy of the Complaint on September 16, 2002.
On
September 16, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of October 7,
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 October 28, 2002, pursuant to STOP Rule 6(b), the
Forum appointed Tyrus R. Atkinson, Jr., 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
The
<energy.biz> domain name is identical to Complainant's ENERGY
mark.
Respondent
has no rights or legitimate interests in the <energy.biz> domain
name.
Respondent
registered the <energy.biz> domain name in bad faith.
B.
Respondent
Respondent
failed to submit a Response.
Complainant holds two trademark
registrations with the United States Patent and Trademark Office for ENERGY
(Reg. Nos. 628,645 and 2,253,024).
Complainant uses the mark in relation to farm equipment such as
hydraulic valve kits for use in connection with tractors, hydraulic cylinders,
hydraulic pumps and motors, as well as pneumatically-powered machine
parts. Complainant first registered its
ENERGY mark in 1956 on the Principal Register of the United States Patent and
Trademark Office.
Respondent registered the disputed domain
name on March 27, 2002. Respondent has
made no use of the disputed domain name since its registration. Respondent registered numerous domain names
that appear to be generic in nature including for example,
<creditcards.biz> and <batteries.biz>. Respondent does not have a license from Complainant to use its
ENERGY mark.
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 established that it has rights in the ENERGY mark through its registration
of the mark on the Principal Register of the United States Patent and Trademark
Office. Respondent’s <energy.biz>
domain name is identical to Complainant’s mark because it incorporates the
entirety of Complainant’s mark and makes no changes to its appearance other
than the addition of the top-level domain “.biz.”
The
Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
Furthermore, when Respondent fails to
submit a Response the Panel is permitted to make all inferences in favor of
Complainant. See Talk City, Inc.
v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (“In
the absence of a response, it is appropriate to accept as true all allegations
of the Complaint”).
Respondent has not come forward with a
Response to establish that it holds any trademarks or service marks for ENERGY
anywhere in the world. Complainant
however, has established that it has held a trademark for ENERGY on the
Principal Register of the United States Patent and Trademark Office since
1956. Therefore, it is reasonable to
infer that Respondent does not hold any trademarks or service marks for ENERGY
and as a result, Respondent lacks rights and legitimate interests in the
disputed domain name pursuant to STOP Policy ¶ 4(c)(i). See Nat’l Acad. Of Recording Arts &
Sci Inc. v. Lsites, FA 103059 (Nat. Arb. Forum Feb. 11, 2002) (finding
that, because Respondent did not come forward with a Response, the Panel could
infer that it had no trademark or service marks identical to <grammy.biz>
and therefore had no rights or legitimate interests in the domain name); see
also Aetna Inc. v. Vitty Inc., FA 110804 (Nat. Arb. Forum June 17,
2002) (finding that when Respondent fails to come forward with a Response, the
Panel may infer that Respondent does not have any trademark or service marks
identical to the disputed domain name and, therefore, has no rights or
legitimate interests in the disputed domain name).
Respondent has registered numerous domain
names that incorporate common terms and has not put the domain names to use for
a business purpose other than to attempt to sell the domain names for a profit. The <energy.biz> domain name is
no exception, and Respondent has made no use of the domain name for any
purpose. Therefore, it can be inferred
that Respondent is not using and does not plan to use the disputed domain name
in connection with a bona fide offering of goods or services pursuant to STOP
Policy ¶ 4(c)(ii). See Gene Logic
Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002) (finding that in
order to show rights or legitimate interests in the disputed domain name
Respondent must establish with valid evidence “a course of business under the
name, or at least significant preparation for use of the name prior to learning
of the possibility of a conflict” with an IP Claimant). Furthermore, based on the fact that
Complainant’s mark is on Principal Register of the United States, any use of
the mark by Respondent would be an opportunistic attempt by Respondent to trade
off of Complainant’s goodwill. See State Farm Mut. Auto. Ins. Co. v. LaFaive,
FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (finding that “unauthorized providing
of information and services under a mark owned by a third party cannot be said
to be the bona fide offering of goods or services”).
There is no evidence on record, and
Respondent has not come forward with a Response to establish that it is
commonly known as ENERGY or <energy.biz>. Therefore, Respondent has failed to prove
that it has rights or legitimate interests in the disputed domain name pursuant
to STOP Policy ¶ 4(c)(iii). See Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in domain name when Respondent is not known by the mark); see also
CBS Broad., Inc. v. LA-Twilight-Zone,
D2000-0397 (WIPO June 19, 2000) (finding that Respondent has failed to demonstrate
any rights or legitimate interests in the <twilight-zone.net> domain name
since Complainant had been using the TWILIGHT ZONE mark since 1959).
The Panel finds that STOP Policy ¶
4(a)(ii) has been satisfied.
It can be inferred that Respondent
registered the disputed domain name for the purpose of selling, renting or
transferring the domain name registration.
Respondent has registered numerous other domain names that incorporate
common terms including <creditcards.biz>, <spy.biz> and
<cats.biz>. This shows a pattern
of registering marks with high marketability and monetary value, and therefore
gives rise to an inference of bad faith registration and use pursuant to STOP
Policy ¶ 4(b)(i). See Xerox Corp. v. Imaging Solution,
D2001-0313 (WIPO Apr. 25, 2001) (finding that Respondent registered the domain
name in the hope and expectation of being able to sell it to Complainant for a
sum of money in excess of its out-of-pocket expenses and/or in the hope of
forcing the establishment of a business arrangement beneficial to Respondent); see
also Wembley Nat’l Stadium Ltd. v.
Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding bad faith based on the
apparent willingness of Respondent to sell the domain name in issue from the outset,
albeit not at a price reflecting only the costs of registering and maintaining
the name).
The Panel finds that STOP Policy ¶
4(a)(iii) has been satisfied.
Having
established all three elements required under the Start-up Trademark Opposition
Policy, the Panel concludes that relief shall be hereby granted.
Accordingly, it is Ordered that the
domain name <energy.biz> be transferred from Respondent to
Complainant and subsequent challenges under the STOP Policy against this domain
name shall not be permitted.
Tyrus R. Atkinson, Jr., Panelist
Dated: October 31, 2002.
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