START-UP TRADEMARK OPPOSITION POLICY

DECISION

Freedom Communications Inc. v. International Newcastle

Claim Number: FA0204000112484

PARTIES

Complainant is Freedom Communications Inc., Irvine, CA (“Complainant”) represented by Glenn Fuller.  Respondent is International Newcastle, Miami, FL (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <ocr.biz>, registered with Iholdings.com, Inc.

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 17, 2002.

On June 18, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 8, 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 22, 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

Complainant asserts that the <ocr.biz> domain name is identical to the OCR acronym for the name of its newspaper the Orange County Register.

Complainant asserts that Respondent registered the domain name in order to sell the registration to a subsequent bidder.

B. Respondent

Respondent failed to submit a Response.

FINDINGS

Complainant asserts that it is the owner of a newspaper called the Orange County Register.  Complainant asserts that this newspaper is sometimes referred to as OCR.  Complainant has owned this newspaper since 1950.  Complainant has submitted no evidence that it uses the OCR moniker to promote its newspaper, or that the OCR mark is uniquely identified with Complainant’s publication.

Respondent registered the disputed domain name on March 27, 2002. 

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 OCR mark because it has provided no evidence that the OCR moniker has developed secondary meaning and is uniquely associated with Complainant’s newspaper.  Complainant merely asserts that its newspaper, The Orange County Register is sometimes referred to as OCR, but provides no facts to support this assertion.  See Cyberimprints.com, Inc. v. Alberga, FA 100608 (Nat. Arb. Forum Dec. 11, 2001) (finding that the Complainant failed to prove trademark rights at common law because it did not prove the CYBERIMPRINTS.COM mark was used to identify the source or sponsorship of goods or services or that there was strong customer identification of the mark as indicating the source of such goods or services).

The Panel finds that STOP Policy ¶ 4(a)(i) has not been satisfied.  Accordingly, it is 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.  

DECISION

Having failed to establish all three elements required under the Start-up Trademark Opposition Policy, the Panel concludes that relief shall be hereby denied.

Accordingly, it is Ordered that the Complaint be dismissed.  There are no further challenges pending under the STOP Policy against this domain name.

James A. Carmody, Esq., Panelist

Dated: July 25, 2002

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