START-UP TRADEMARK OPPOSITION POLICY

DECISION

Automated Power Exchange Inc. v. Stefan Schmiedl

Claim Number: FA0204000112502

PARTIES

Complainant is James Crossen Automated Power Exchange Inc., Santa Clara, CA, USA (“Complainant”) represented by John A Kelley, of Morrison & Foerster LLP.  Respondent is Stefan Schmiedl, Straubing Bayern, GERMANY (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <apx.biz>, registered with CORE.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no conflict in serving as Panelist in this proceeding.

Judge Karl Fink (Ret.) 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 27, 2002; the Forum received a hard copy of the Complaint on April 30, 2002.

On May 6, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 28, 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 May 20, 2002.

On June 24, 2002, pursuant to STOP Rule 6(b), the Forum appointed Judge Karl Fink (Ret.) as the single Panelist.

RELIEF SOUGHT

Transfer of the domain name from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant is the holder of registered trademark “APX,” Registration No. 2315516, issued on February 8, 2000.  Complainant is also the holder of a registered word and design mark “APX Automated Power Exchange,” Registration No. 2367484, issued on July 18, 2000. 

Automated Power Exchange, Inc. (“APX”) is a leading independent transaction-processing agent for wholesale electric power markets.  APX clients benefit from expanded market access and streamlined transaction processing infrastructure.  Since its founding in 1996, APX has earned a reputation as the industry’s trusted independent service agent. 

In addition to its registered trademarks in the United States, APX has pending applications for trademark registrations in Japan, China, and Korea.  Respondent has no trademark or other intellectual property rights in the domain name <apx.biz>. 

Respondent Stefan Schmiedl appears to have registered the <apx.biz> domain name in bad faith. 

B. Respondent

Respondent agrees the domain name <apx.biz> is identical to trademarks in which the Complainant has rights.  Respondent does not claim rights or interests in the <apx.biz> domain name.  During the pre-registration, Respondent was notified that there were possible trademark conflicts with the domain name <apx.biz>.  He tried to cancel his application for the domain name.  Neulevel support confirmed his cancellation. 

Respondent requests that the Panel grant the request to transfer the name. 

FINDINGS

Based upon the findings set forth below and Respondent’s consent, the Complainant has proven that the domain name should be transferred to Complainant.

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.”

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. Princeton Linear Assoc., Inc. v. Copland o/b/o LAN Solutions Inc. FA 102811 (Nat. Arb. Forum Feb. 8, 2001).  The domain name is identical to Complainant’s mark.

Complainant’s Rights in the Mark

Complainant’s trademark is proof that Complainant has rights in the mark. 

Respondent’s Rights or Legitimate Interests

Respondent makes no claim of rights or legitimate interests in the domain name and therefore has none. 

Registration or Use in Bad Faith

Respondent has attempted to withdraw his registration.   By his action, he has conceded that going forward with the registration, when he had knowledge of Complainant’s marks, would constitute registration in bad faith. 

DECISION

The disputed domain name <apx.biz> is ordered transferred to Complainant.  Subsequent challenges under the STOP policy against this domain name shall not be permitted. 

Judge Karl Fink (Ret.) Panelist
Dated: July 2, 2002

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