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Generic Top Level Domain Name (gTLD) Decisions |
MARCOM HandelsgesmbH v. MARCOM
automatisering bv
Claim Number: FA0204000110854
Complainant
is MARCOM HandelsgesmbH, Vienna,
AUSTRIA (“Complainant”) represented by Margit
Wendelberger. Respondent is MARCOM automatisering bv, Tiel Gld,
NETHERLANDS (“Respondent”).
The
domain name at issue is <marcom.biz>,
registered with Domain People.
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.
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
April 30, 2002.
On
May 7, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of May 28,
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 June 26, 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.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
The
<marcom.biz> domain name is identical to Complainant’s common law
MARCOM mark.
Respondent
has inferior rights or legitimate interests in the <marcom.biz>
domain name.
B.
Respondent
Respondent
did not submit a Response in this proceeding.
Complainant’s business was founded on
March 2, 1962. The MARCOM name has been
in existence since November 19, 1963.
Since that time, Complainant has consistently used MARCOM in its
business operations and has been commonly known by MARCOM.
Respondent registered the <marcom.biz>
domain name on March 27, 2002.
Respondent’s business was founded about fourteen years ago.
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
asserts it has rights to the MARCOM name through continuous use in commerce
since 1963. Since Respondent did
not submit a Response, the Panel may accept as true all arguments of the
Complainant. See Talk City, Inc.
v. Robertson, D2000-0009 (WIPO Feb. 29, 2000)
(“In the absence of a response, it is appropriate to accept as true all
allegations of the Complaint”).
Moreover, Respondent’s <marcom.biz> is identical to
Complainant’s MARCOM business name, which Complainant’s claims to hold rights
in. See Crazy Creek Prods.,
Inc. v. Siemen’s Bus. Servs., FA 102795 (Nat. Arb. Forum Feb. 12, 2002)
(finding that the Complainant satisfied STOP Policy ¶ 4(a)(i) by demonstrating
its common
law rights in the CRAZY CREEK mark).
Accordingly,
the Panel presumes that STOP Policy ¶ 4(a)(i) has been satisfied.
Complainant relies solely on its
longstanding use of the MARCOM name in asserting that it has superior rights to
<marcom.biz> over Respondent.
Complainant itself provided information that Respondent has been
operating its business for fourteen years under the name “MARCOM
automatisering
bv.” Complainant’s only argument
supporting a transfer of <marcom.biz> is that it has conducted
business under the MARCOM name longer than Respondent. By recognizing Respondent’s rights in the
domain name, this is not a valid argument under the STOP Policy. Therefore, since Respondent was first to
register the <marcom.biz> domain name and Complainant’s interests
in MARCOM only consist of longer use of the MARCOM name for its business, the
domain name
should not be transferred to Complainant. Further, it is obvious that Complainant concedes that Respondent
is known by the domain name at issue and has long established legitimate
interests in respect to the name.
Accordingly, the Panel finds that STOP
Policy ¶ 4(a)(ii) of the Stop Policy has not been satisfied.
No STOP Policy ¶ 4(a)(iii) bad faith
analysis needs to be conducted in light of the fact that Complainant has not
established superior
rights in the domain name. Furthermore, Complainant failed to assert or provide proof that
Respondent was guilty of bad faith in the registration or use of the
domain
name at issue.
Having failed to establish a required
element under the STOP Policy, the Panel concludes that relief shall be denied.
Accordingly, the Complaint is dismissed. No further IP Claims are pending against
this domain name under the STOP Policy.
James A. Carmody, Esq., Panelist
Dated: July 1, 2002
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URL: http://www.worldlii.org/int/other/GENDND/2002/997.html