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Generic Top Level Domain Name (gTLD) Decisions |
MVTec Software GmbH v. Globalia
Corporacion Empresarial S.A.
Claim Number: FA0205000112610
Complainant
is MVTec Software GmbH, Muenchen,
GERMANY (“Complainant”) represented by Olaf
Munkelt. Respondent is Globalia Corporacion Empresarial S.A.,
Madrid, SPAIN (“Respondent”).
The
domain name at issue is <halcon.biz>,
registered with Melbourne IT.
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. Crary 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 30, 2002; the Forum
received a hard copy of the Complaint on
May 9, 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”).
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 11, 2002, pursuant to STOP Rule 6(b), the Forum
appointed James A. Crary 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
The
<halcon.biz> domain name is identical to the HALCON trademark
Complainant has applied for.
Respondent
has no rights or legitimate interests in the <halcon.biz> domain
name.
Respondent
registered the <halcon.biz> domain name in bad faith.
B.
Respondent
Respondent
failed to submit a Response in this proceeding.
Complainant applied for a HALCON
trademark in the United States, Japan and the European Union. Complainant is currently involved in a
dispute concerning the application for the HALCON trademark in the European
Union. In another dispute, the current
Respondent filed opposition to Complainant’s European Union trademark
application and subsequently
applied for a HALCON trademark with the European
Union. Complainant, however, has been
unable to contact Respondent to resolve the European Union trademark
application matter.
Respondent registered the <halcon.biz>
domain name on March 27, 2002.
According to the Complaint, Respondent uses the HALCON mark in Spain but
has never used the mark outside of Spain.
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 applied for HALCON trademarks in the United States, Japan, and the European
Union. Complainant, however, has not
asserted or provided any evidence of common law rights in the HALCON mark. However, for purposes of this Complaint,
because Complainant fails to assert a valid claim under STOP Policy ¶¶ 4(a)(ii)
and (iii),
the Panel presumes that Complainant’s trademark applications sufficiently
establish rights in the HALCON mark. See
SeekAmerica Networks Inc. v. Masood,
D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the
Complainant's trademark or service mark be registered
by a government authority
or agency for such rights to exist. Rights
in the mark can be established by pending trademark applications).
Respondent’s <halcon.biz> domain name is
identical to Complainant’s HALCON mark.
Accordingly, the Panel accepts that STOP Policy ¶ 4(a)(i) has been
satisfied.
Complainant notes that Respondent uses
the HALCON mark in Spain but has not used the mark anywhere outside of
Spain. Complainant also notes that
Respondent applied for a HALCON trademark with the European Union and that
Complainant is involved in
a dispute with Respondent over this
application. From the evidence on
record it appears that Respondent is the owner or beneficiary of a HALCON mark
in Spain, which is identical to
the <halcon.biz> domain name. Therefore, Respondent has rights and
legitimate interests in the disputed domain name pursuant to STOP Policy ¶
4(c)(i).
Complainant fails to make any arguments
under STOP Policy ¶¶ 4(c)(ii) and (iii).
The Panel finds that Complainant has not
satisfied STOP Policy ¶ 4(a)(ii) and that Respondent has rights and legitimate
interests
with respect to <halcon.biz>.
Complainant claims to have older rights
in the HALCON mark than Respondent.
Complainant argues that it is “our opinion” that Respondent registered
the <halcon.biz> domain in bad faith in order to “bypass our older
European rights.” However, being first
to register a domain name identical to one’s own mark does not constitute bad
faith. Furthermore, Complainant does
not provide any evidence to support its belief that Respondent registered <halcon.biz>
in bad faith. See Loris Azzaro BV, SARL v. Asterix & De
Vasconcellos, D2000-0608 (WIPO Sept. 4, 2000) (“Mere belief and indignation
by Complainant that Respondents have registered and are using the
Domain Name
in bad faith are insufficient to warrant the making of such a finding in the
absence of conclusive evidence”); see also Asphalt Research Tech., Inc. v. Anything.com, D2000-0967 (WIPO Oct.
2, 2000) (finding that the Complainant has failed to prove that the domain name
<ezstreet.com> was registered
and is being used in bad faith or held
passively for use by the Respondent in bad faith).
The Panel finds that STOP Policy ¶
4(a)(iii) has not been satisfied.
Having failed to establish two of three
elements required under the STOP Policy, the Panel concludes that Complainant’s
claim should
be hereby DISMISSED.
Accordingly, since Respondent has rights
and legitimate interests in the <halcon.biz> domain name, no
further challenges shall be permitted.
James A. Crary, Panelist
Dated: July 16, 2002
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URL: http://www.worldlii.org/int/other/GENDND/2002/1174.html