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Generic Top Level Domain Name (gTLD) Decisions |
Exxon Mobil Corporation v. Marco
Publishing Corporation
Claim Number: FA0204000112534
Complainant
is Exxon Mobil Corporation, Irving,
TX, USA (“Complainant”) represented by Laura
D. Robertson, of Fulbright &
Jaworski LLP. Respondent is Marco Publishing Corporation, Houston,
TX, USA (“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.
James
A. Carmody, Esq., 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 April 28, 2002; the Forum
received a hard copy of the Complaint on
April 28, 2002.
On
May 9, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of May 29,
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 July 1, 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.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
Complainant
asserts that the <energy.biz> domain name is identical to its
ENERGY mark.
Complainant
asserts that Respondent has no rights or legitimate interests in the <energy.biz>
domain name.
Complainant
asserts that Respondent registered the <energy.biz> domain name in
bad faith.
B.
Respondent
Respondent
failed to submit a Response.
Complainant uses its ENERGY mark in
relation to magazines and papers.
Complainant asserts that it holds a trademark registration in Japan for
ENERGY but provides no documentation of this trademark. Complainant does not allege that ENERGY has
acquired a secondary meaning to uniquely identify its goods or services.
Respondent registered the disputed domain
name on March 27, 2002. Respondent
registered numerous domain names at the same time it registered <energy.biz>,
including <creditcards.biz>, <brands.biz> and
<cellularphones.biz>. Upon
Complainant’s information and belief Respondent registered the disputed domain
name with the intention of selling it at a price
not reflecting its
out-of-pocket expenses.
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 not established that it has rights in the ENERGY mark, even though it
claims to have a trademark registration in Japan. Without evidence of trademark registration, Complainant must show
that it has used the mark in commerce thereby creating common law
rights and
secondary meaning. ENERGY is generic and cannot be used to uniquely identify
any activity in the energy industry. Furthermore,
with a highly descriptive
mark like ENERGY, Complainant must provide evidence that consumers identify
Complainant as the source of
products under the ENERGY moniker. Complainant has not even asserted that
Japanese consumers identify the ENERGY mark uniquely with Exxon’s goods and
services, therefore
Complainant has failed to establish that it has rights in
the ENERGY mark. See SOCCERPLEX, INC. v. NBA Inc., FA 94361 (Nat. Arb. Forum May 25, 2000)
(finding that the Complainant failed to show that it should be granted
exclusive use of
the domain name <soccerzone.com>, as it contains two
generic terms and is not exclusively associated with its business). Moreover, even if Complainant were to have
provided this evidence, the word “energy” is so descriptive that it cannot
serve to properly
distinguish any product and is therefore unprotectable. See Successful Money Mgmt. Seminars, Inc. v. Direct Mail Express, FA
96457 (Nat. Arb. Forum Mar. 7, 2001) (finding that seminar and success are generic
terms to which Complainant cannot maintain
exclusive rights); see also Zero
Int'l Holding v. Beyonet Servs.,
D2000-0161 (WIPO May 12, 2000) (stating that "[c]ommon words and
descriptive terms are legitimately subject to registration
as domain names on a
'first-come, first-served' basis"); see also fabric.com v. LinZan 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.
The
Complainant having failed to establish all three elements required under the
Start-up Trademark Opposition Policy, the Panel concludes
that relief shall be
and is hereby denied.
Accordingly, it is Ordered that the
Complaint be dismissed without prejudice to further proceedings on
Complaints timely brought by other IP claimants.
James A. Carmody, Esq., Panelist
Dated: July10, 2002
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URL: http://www.worldlii.org/int/other/GENDND/2002/1099.html