START-UP TRADEMARK OPPOSITION POLICY

DECISION

Vulcan Materials Company d/b/a Vulcan Chemicals v. Sungjo Park

Claim Number: FA0206000114525

PARTIES

Complainant is Vulcan Materials Company d/b/a Vulcan Chemicals, Birmingham, AL, USA (“Complainant”).  Respondent is Sungjo Park, Songpa-ku, Seoul, KOREA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <vulcan.biz>, registered with Hangang Systems, Inc. d/b/a Doregi.com.

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.

Hon. Ralph Yachnin 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 June 9, 2002; the Forum received a hard copy of the Complaint on June 18, 2002.

On June 27, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 17, 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 23, 2002, pursuant to STOP Rule 6(b), the Forum appointed Hon. Ralph Yachnin 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 <vulcan.biz> domain name is identical to Complainant’s VULCAN common law mark.

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

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

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

FINDINGS

Complainant is Vulcan Materials Company d/b/a Vulcan Chemicals, a construction aggregate company incorporated in New Jersey. Complainant is also known by the names, inter alia, Vulcan Aggregates Company, Vulcan Chemicals Investments, Vulcan Distribution Company, Vulcan Holdings, and Vulcan International. Since as early as 1952, Complainant’s alleged VULCAN mark has been utilized both as a trade name to identify Complainant’s business and as a common law trademark in connection with its goods and services. Complainant contends that the promotion of its mark has established meaning and recognition within the construction aggregate industry. Complainant sells and advertises goods bearing the VULCAN mark throughout the U.S., as well as internationally.

Respondent registered the <vulcan.biz> domain name on March 27, 2002 and has yet to develop a purpose for the 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

Complainant fails in establishing rights in the <vulcan.biz> domain name under STOP Policy ¶ 4(a)(i).

In STOP proceedings, Complainant must establish rights in a trademark or service mark identical to Respondent’s domain name. The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name Complaint under the policy. McCarthy on Trademarks and Unfair Competition, § 25:74.2, Vol. 4 (2000). Complainant is required to submit an Intellectual Property Claim Form (“IP Claim Form”) for the .BIZ domain name matching the exact alphanumeric string contained in the trade or service mark in which that Claimant has rights. See STOP Policy ¶ 1.

However, Complainant’s asserted rights center around the alleged VULCAN mark with the addition of other descriptive words, such as: aggregates, company, materials, holdings, international and chemicals, among others. A significant portion of Complainant’s evidence includes the VULCAN mark with the addition of the words “Materials Company” and “Performance Chemicals,” thereby weakening Complainant’s contentions that it has established secondary meaning in the VULCAN mark standing alone. Complainant’s Submission also includes reference to Fortune magazine’s article on “America’s Most Admired Companies,” where Complainant was listed as “Vulcan Materials,” once again undermining Complainant’s argument that it has rights to the VULCAN mark without the addition of a qualifying word. 

Complainant contends that its alleged VULCAN moniker is the dominant word in each of its marks, representing a collective identifier for all its trade names. However,  the Complaint provided insufficient evidence showing that Complainant has established rights in the VULCAN mark alone. Therefore, Complainant fails in meeting its burden to prove by a preponderance of the credible, relevant and admissible evidence that the domain name is identical to a trademark in which it has rights. See FRH Freies Rechenzentrum v. Ingenieurburo FRH, FA 102945 (Nat. Arb. Forum Jan. 18, 2002) (determining that Complainant has not proven by a preponderance of the relevant, admissible and credible evidence that the domain name in question is identical to a trademark in which Complainant has rights despite Complainant’s mark being the dominant feature of Complainant’s trade name); see also Vietnam Venture Group v. Cosmos Consulting Gmbh, FA 102610 (Nat. Arb. Forum Feb. 6, 2002) (finding the Complaint must be dismissed under Policy ¶ 4(a)(i) because Complainant does not hold a registered trademark in VVG, nor did Complainant demonstrate sufficiently strong identification of its mark such that there would be recognition among Internet users that the mark “VVG” identifies goods or services unique to Complainant); see also Woodworker’s Supply Inc. v. Roloff Mktg., Inc., FA 103055 (Nat. Arb. Forum Jan. 30, 2002) (finding that Complainant’s Woodworker Supply, Inc. trade name is not identical to the <woodworker.biz> domain name).

Under NeuLevel’s STOP IP Claim Procedure, Complainant must first present a prima facie showing that it has rights in a mark identical to the contested domain name, then the burden shifts to Respondent to show that it has legal rights to the Vulcan identifier as used in its second level domain. However, Complainant has failed in meeting the initial burden imposed by STOP Policy ¶ 4(a)(i). Because Complainant failed in establishing rights in the VULCAN mark and represents the last IP claimant against the subject domain name, the Panel need not analyze Respondent’s rights under STOP Policy ¶ 4(a)(ii), or its motivations in registering the domain name under STOP Policy ¶ 4(a)(iii). See Do The Hustle v. Tropic Web, D2000-0624 (WIPO August 21, 2000) (finding that ¶ 4(a) of the Policy sets out three elements implying that Complainant has the burden of proof as to each of the three elements); see also Interactive Television Corp. v. Noname.com, D2000-0358 (WIPO June 26, 2000) (finding that “[S]erious questions as to whether Complainant has any proprietary rights require us to reject Complainant’s claim. The ultimate decision as to whether Complainant does or does not have proprietary rights is better left to a court or trademark office tribunal”).

DECISION

Because Complainant failed in establishing rights in a trademark, service mark or common law mark identical to Respondent’s <vulcan.biz> domain name pursuant to STOP Policy ¶ 4(a)(i), the Panel concludes that relief should be hereby DENIED.  As noted, there are no further challenges pending against this domain name under the STOP Policy.

Hon. Ralph Yachnin, Panelist

                                                                                                Justice, Supreme Court, NY, (Ret.)

Dated: July 31, 2002

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