|
|
Home
| Databases
| WorldLII
| Search
| Feedback
Generic Top Level Domain Name (gTLD) Decisions |
EAC Corporation v. Fa.Thorsten Opitz
Claim Number: FA0204000112507
PARTIES
Complainant
is EAC Corporation, Teterboro, NJ,
USA (“Complainant”). Respondent is Fa.Thorsten Opitz, Musterstadt Nrw,
GERMANY (“Respondent”).
The
domain name at issue is <EAC.biz>,
registered with Secura GMBH.
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.
David
P. Miranda, 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 April 27, 2002; the Forum
received a hard copy of the Complaint on
May 3, 2002.
On
May 13, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of June 3,
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 21, 2002.
On June 25, 2002, pursuant to STOP Rule 6(b), the Forum
appointed David P. Miranda as the single Panelist.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
Complainant contends that it is owner of
the trademark EAC registered with the United States Patent and Trademark Office
(Reg. No.
1,614,256) for “manufacturing battery assemblies to order and/or
specification of others”, with a date of first use in commerce of
July 11,
1994. Complainant also owns and
operates the domain name <EAC.com> for its business. Complainant contends that its research of
the United States Patent and Trademark Office electronic database does not
reveal any trademarks
or service marks for the term EAC related to the
Respondent. In its search of
Respondent’s use of the term EAC or <EAC.biz>
the Complainant found the domain name <EAC-COM.de> to be associated with
Respondent but claims that that domain does not indicate
Respondent’s plans to
use the <EAC.biz> for business
purposes or otherwise. Complainant contends it is unaware of trademarks or
service marks attributable to Respondent
regarding the term EAC and the
information supplied by <EAC.COM.de> does not indicate that the
Respondent has any goods or
services available to support the use of <EAC.biz> without providing
confusion with <EAC.com>. Complainant further contends that other than
<EAC-COM.de> Respondent is not associated with any individual, company or
company
business entity directly
utilizing EAC or <EAC.biz>. Complainant contends that the
<EAC-COM.de> e-mail address was not provided by Respondent to NeuLevel at
the time of registration. Complainant
is unaware of how Respondent plans to utilize the domain <EAC.biz> and contends the Respondent’s use of <EAC.biz> could detract from the
overall business activity and customer base of the Complainant who is already
known on the Internet as <EAC.com>.
Complainant also contends that because Complainant holds the trademark
to the term EAC, confusion will be inevitable.
B.
Respondent
Respondent contends that it is a
representative of EAC Automation-Consulting GmbH (hereinafter EAC
Automation). Respondent contends that
EAC Automation is a company founded and registered in Germany since 1988 under
Registration No. HRB11544. Respondent
also claims to have registered the trademark “EAC” in Germany under
Registration No. 2,020,217 since 1991 and has been
so using the term EAC since
1988 for its business and products.
Respondent contends that it seeks to use the domain <EAC.biz> for the purpose of the business currently located
at <EAC-COM.de>.
Pursuant to STOP Policy paragraph 4(a),
in order to obtain an order that a domain name be transferred, the Complainant
must prove
the following three elements:
First, the domain name is identical to a
trademark or service mark in which the Complainant has rights; and
Second, the Respondent has no rights or
legitimate interest in respect of the domain name; and
Third,
the domain name has been registered or is being used in bad faith.
Complainant has submitted proof of its
ownership of a trademark for EAC, and has established the domain name in
question is identical
to the trademark in which the Complainant has rights. Complainant has satisfied the first element
in accordance with STOP Policy paragraph 4(a)(i).
Pursuant to STOP Policy paragraph
4(a)(ii) the burden is upon the Complainant to establish that the Respondent has no rights or
legitimate interest to the domain name.
Complainant contends that the Respondent does not own and is not
associated with any individual, company or business or entity directly
utilizing the name EAC or <EAC.biz>
other than <EAC-COM.de>.
Complainant concedes that Respondent has an affiliation with the domain
name <EAC-COM.de> and the .biz registry WHOIS data for
<EAC.biz> submitted by
Complainant in its papers indicates that Respondent is using <EAC-COM.de>
as his e-mail address. Respondent
confirms that he has been using the domain name <EAC-COM.de> for the
business of EAC Automation. Respondent
contends that the domain name <EAC.biz>
was registered on behalf of EAC Automation which is currently using the domain
name <EAC-COM.de>. Complainant
does not offer any proof contrary to this contention of Respondent and concedes
Respondent’s association with <EAC-COM.de>. A review of the <EAC-COM.de> website reveals that it is
dedicated to legitimate business
purpose.
In
this case, the Respondent contends that it intends to use the domain <EAC.biz> for the business of EAC
Automation. Complainant submits no
proof contrary to this assertion. A
Respondent in a STOP proceeding may demonstrate its rights and interests in a disputed
domain name by providing its use of or demonstrable
preparations to use the
domain name for a bona fide offering of goods or services. STOP Policy ¶ 4(c)(ii). Where the Respondent operates a website at a
similar domain name, such use may fulfill the “use of, or demonstrable
preparations to
use” test of STOP Policy ¶ 4(c)(ii). See Am. Airlines Inc. v. Webtoast Internet Servs. Inc., FA102954
(Nat. Arb. Forum Feb. 24, 2002) (finding that, where the Respondent
continuously operated a website at <americanway.com>
for over five years in connection with the sale of
its video series “The American Way of Training Hunters & Jumpers,” such
activity satisfied
the requirements of STOP Policy in regard to the identical
domain name <americanway.biz>).
Although a Respondent may not assert the rights of a third party to
demonstrate rights or legitimate interest pursuant to STOP Policy
paragraph 4
(a)(ii) a Respondent may be found to
have rights and legitimate interest in a domain name registered on behalf of
another with whom he has an
association or other relationship. K2r Produkte AG v. Trigano,
D2000-0622 (WIPO Aug. 23, 2000) (finding that the Respondent has rights and
legitimate interest in the domain name <k2r.com>
under UDRP ¶ 4(a)(ii)
where he registered the domain name for a website in connection with his mother’s
store, “KIRK ET ROSIE RICH’).
Respondent
alleges that it has been doing business using the EAC name since 1988 and that
it has had a registered trademark for EAC
in Germany since 1991. Complainant offers no proof contrary to this
claim. When a Respondent alleges to be
the owner of a trademark and offers at least some proof to support the
assertion, the Complainant’s failure to dispute the assertion warrants a
finding that the Respondent has rights
to and legitimate interest in the
disputed domain name sufficient to satisfy the Respondent’s burden under STOP
Policy ¶ 4(a)(ii). See Optum, Inc.
v. United Health Group, FA 104102 (Nat. Arb. Forum March. 8, 2002) (finding
that Respondent United Health Group’s assertion that United Healthcare
Corporation
assigned to United Health Group its trademark rights in OPTUM, when
supported by “some proof” and undisputed by Complainant, warranted
dismissal of
the claim). Respondent’s assertion of
EAC Automation’s company registration in Germany with a German registration
number as well as a German trademark
registration number for EAC, although not
conclusive, constitutes “some proof” and Complainant has failed to dispute
these assertions.
Complainant
has failed to submit any proof of bad faith in the registration or use of the
domain on the part of the Respondent.
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.
Complainant has established its
rights in the mark EAC.
Complainant
has failed to establish that Respondent has no rights or legitimate interest in
the domain <EAC.biz>.
Complainant
has failed to establish that Respondent has registered or is using the domain <EAC.biz> in bad faith.
DECISION
Based upon the above, the complaint is dismissed.
Further challenges against this domain name under the STOP Policy shall
not be permitted.
David P. Miranda, Panelist
Dated: July 9, 2002
WorldLII:
Copyright Policy
|
Disclaimers
|
Privacy Policy
|
Feedback
URL: http://www.worldlii.org/int/other/GENDND/2002/1086.html