START-UP TRADEMARK OPPOSITION POLICY

DECISION

Technology Transfer v. More Virtual Agency

Claim Number: FA0204000110859

PARTIES

Complainant is Technology Transfer, Rome, ITALY (“Complainant”) represented by Giovanni Modica.  Respondent is More Virtual Agency, Bonn, GERMANY (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <technologytransfer.biz>, registered with Key-Systems Gmbh.

PANEL

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.

James A. Carmody, Esq., as Panelist.

PROCEDURAL HISTORY

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 April 26, 2002; the Forum received a hard copy of the Complaint on May 13, 2002.

On May 15, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 4, 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 June 26, 2002, pursuant to STOP Rule 6(b), the Forum appointed James A. Carmody, Esq., 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.

RELIEF SOUGHT

Transfer of the domain name from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

1. Respondent’s <technologytransfer.biz> domain name is identical to Complainant’s TECHNOLOGY TRANSFER trademark.

2. Respondent has no rights or legitimate interests in the <technologytransfer.biz> domain name.

3. Respondent registered the <technologytransfer.biz> domain name in bad faith.

B. Respondent failed to submit a Response.

FINDINGS

Complainant asserts that it has rights in the TECHNOLOGY TRANSFER mark. Complainant has been providing information technology seminars and conferences to IT professionals worldwide under the TECHNOLOGY TRANSFER moniker since 1986. Complainant also operates from two domains, specifically, <technologytransfer.it> and <technologytransfer.info>.  There is no allegation that Complainant has registered its claimed mark with any governmental entity or that its use has caused the highly descriptive mark to achieve secondary meaning status.

Respondent registered the disputed domain name on March 27, 2002 and has yet to develop a website. It appears that both Complainant and Respondent are in the same general business.

DISCUSSION

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’s Rights in the Mark

Complainant has not established that it has rights in the TECHNOLOGY TRANSFER mark, even though it claims continuous use of the mark in commerce since 1986. There is no allegation by Complainant that it has registered the mark with any governmental entity.  The UDRP 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).  See Roberts v. Boyd, D2000-0210 (WIPO May 29, 2000) (finding that trademark registration was not necessary and that the name “Julia Roberts” has sufficient secondary association with the Complainant that common law trademark rights exist). Here, however, the Complainant has failed to meet this flexible standard.

If Complainant’s highly descriptive “mark” is claimed to be a common law trademark, there is no allegation that the mark has developed a secondary meaning to uniquely identify Complainant’s goods and services.  In fact, however, the phrase “technology transfer” could never serve as a proper trademark as it is a generic description of an industry; thus, it cannot serve to distinguish anything and is unprotectable. See fabric.com v. Song, FA 109701 (Nat. Arb. Forum June 1, 2002) (finding that “fabric” is a generic term and that neither Complainant nor Respondent could have protectable rights in such a mark).

The Panel finds that STOP Policy ¶ 4(a)(i) has not been satisfied.  It is, accordingly, not necessary to determine whether the Respondent has rights or legitimate interests in respect of the mark or whether it was registered or is being used in bad faith.  Since there are no further timely contestants for the domain name at issue, and since the Complainant has no protectable rights in TECHNOLOGY TRANSFER, there is no justification to disturb Respondent’s registration of the domain name at issue.

DECISION

The Complainant having failed to establish the first element required under the STOP Policy, the Panel concludes that relief should be hereby DENIED.  There being no further IP challenges to the domain name at issue, it will remain vested in the Respondent.

Accordingly, it is Ordered that the <technologytransfer.biz> domain name not be transferred from Respondent to Complainant.

James A. Carmody, Esq., Panelist

Dated: July 1, 2002

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