START-UP TRADEMARK OPPOSITION POLICY

DECISION

MEMO Electronics GmbH v. Ross LeBel

Claim Number: FA0204000110855

PARTIES

Complainant is MEMO Electronics GmbH, Vienna, AUSTRIA (“Complainant”) represented by Jesmar Mifsud.  Respondent is Ross LeBel, Surrey, British Columbia, CANADA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <memo.biz>, registered with Domain Bank, 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 25, 2002; the Forum received a hard copy of the Complaint on June 6, 2002.

On June 20, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 10, 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

1. Respondent’s <memo.biz> domain name is identical to Complainant’s MEMO mark.

2. Respondent does not have any rights or legitimate interests in respect of the <memo.biz> domain name.

3. Respondent registered the <memo.biz> domain name in bad faith.

B. Respondent did not submit a Response in this proceeding.

FINDINGS

Complainant is MEMO Electronics GmbH and MEMO International Ltd. Complainant owns Austrian Trademark Reg. No. 148 531 for a stylized CONTACTLESS MEMO CARD mark, registered on February 4, 1993. Complainant asserts that “Electronic memory cards” is the technical term for the product group it promotes.

Respondent registered the domain name on March 27, 2002. Respondent has yet to develop a purpose for the disputed domain name.

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

Although Complainant owns trademark rights in the CONTACTLESS MEMO CARD mark, STOP Policy ¶ 4(a)(i) speaks clearly in that Complainant’s mark must be identical to Respondent’s domain name. Complainant provides evidence that its business names incorporate the MEMO mark in question as Complainant’s rights extend to the registered businesses “Memo Electronics GmbH” and “Memo International Ltd.” However, Complainant fails to make the assertion that it is known or referred to by the MEMO portion of its name only, and fails to provide information supporting such an inference.

Due to the nature of STOP proceedings and the interpretation of the plain language of STOP Policy ¶ 4(a)(i), identicalness between Complainant’s mark and the disputed domain name should never be a threshold issue. See Princeton Linear Assoc., Inc. v. Copland o/b/o LAN Solutions Inc. FA 102811 (Nat. Arb. Forum Feb. 8, 2001). Complainant fails to adequately support its contention that it holds valid rights in a registered or common law mark identical to the subject domain name.

Because Complainant failed to fulfill the obligation imposed by STOP Policy ¶ 4(a)(i) and because Respondent has not come forward with evidence that it holds rights in the disputed domain name, the Panel will not make any determinations as to STOP Policy ¶¶ 4(a)(ii) and (iii).

 

DECISION

Having failed to establish a necessary element under the STOP Policy, the Panel concludes that relief should be hereby DENIED.

Accordingly, it is Ordered that the <memo.biz> domain name shall not be transferred and will remain with Respondent, and that subsequent challenges under the STOP Policy against this domain name SHALL be permitted.

James A. Carmody, Esq., Panelist

Dated: July 25, 2002

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