START-UP TRADEMARK OPPOSITION POLICY

DECISION

EAC Corporation v. Marco Publishing Corporation

Claim Number: FA0204000112503

PARTIES

Complainant is EAC Corporation, Teterboro, NJ (“Complainant”).  Respondent is Marco Publishing Corporation, Us, TX (“Respondent”) represented by Stephen Sturgeon.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <batteries.biz>, registered with Bondi LLC.

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.

Robert T. Pfeuffer, Senior District Judge 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 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”).

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.

Respondent submitted a late Response on June 17, 2002.

On July 17, 2002, pursuant to STOP Rule 6(b), the Forum appointed Robert T. Pfeuffer  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

EAC Corporation, the Complainant, asserts that it has made common law use of the term Batteries since October 1, 1976, and that it first used this term in commerce on the same date.  It states that it is in the business of providing goods and services to battery-related products and services involving the manufacturing of battery assemblies to order and/or, specification of others and in providing information about batteries both via a global computer network.  Also, it contends that it has in the past and currently utilizes certain registered domain names which include the word “batteries", at least eleven of which are set out in paragraph 5C of the Complaint.

B. Respondent

Respondent Marco Publishing Corporation has submitted no timely Response, and although not considered in the final determination, its untimely Response has been reviewed by the Panel.

FINDINGS

The Complainant is required to prove by competent evidence that it has rights to the mark in dispute, otherwise, the Complaint must be dismissed.  While Complainant has alleged that it has common law trademark rights in the word “batteries”, it has provided no proof whatsoever of any common law trademark right.  No evidence has been presented by Complainant to prove the duration, the extensiveness of use or any public recognition of the word “batteries”.  The absence of definitive proof  of a trademark has previously been held to be fatal to a Complainant’s request for the transfer of a domain name.  See Primo Incense v. Spring.net, FA 96565 (Nat. Arb. Forum Apr. 12, 2001).  In that case, the Panel stated clearly that the Complainant must demonstrate the factual existence of its right in a trademark or service mark.  In this case, the Complainant has wholly failed to present competent evidence that it has legal rights to the trademark.  Further Complainant has been unable to establish by competent evidence the recognition of the word as being associated with any services or products that the Complainant markets or provides to the public.

      While under ordinary circumstances the Panel must also determine whether the Respondent has rights or legitimate interests in the disputed domain name, no evidence is before this Panel because the Response was not filed within twenty days of service of the Complaint as required by the rules and therefore, the Response and any evidence it may have contained, has not been considered by the Panel.  Therefore, the Panel declines to make such determination.

      The Panel having determined that the Complaint must be dismissed, it declines to address further issues of rights or legitimate interests or registration or use in bad faith by the Respondent.

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.

DECISION

The Complainant having wholly failed to discharge its burden of proof as required by the rules, the Complaint is in all things dismissed with prejudice.  Further challenges under the STOP Policy as brought by unique IP claimants shall be permitted.

_

Robert T. Pfeuffer, Panelist

Dated: July 29, 2002

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