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.
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.
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.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page