DECISION

OCZ Technology Group, Inc. v. Megazine Publications

Claim Number:  FA0403000244094

PARTIES

Complainant is OCZ Technology Group, Inc. (“Complainant”), represented by Richard C. Balough, 656 W. Randolph St., Ste. 500 West, Chicago, IL, 60661.  Respondent is Megazine Publications (“Respondent”), 215 Avendia Cabrillo, San Clemente, CA, 92672.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ocz.com>, registered with Tucows Inc.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically March 8, 2004; the Forum received a hard copy of the Complaint March 10, 2004.

On March 9, 2004, Tucows Inc. confirmed by e-mail to the Forum that the domain name <ocz.com> is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. verified that Respondent is bound by the Tucows Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On March 16, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 5, 2004, by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@ocz.com by e-mail.

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 April 15, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. The domain name registered by Respondent, <ocz.com>, is identical to Complainant’s OCZ mark.

2. Respondent has no rights or legitimate interests in the <ocz.com> domain name.

3. Respondent registered and used the <ocz.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, OCZ Technology Group, established with extrinsic proof in this proceeding that it is in the business of developing and marketing computer hardware, including high performance computer memory chips, video cards, semiconductors, microprocessors, integrated circuits and heat sinks. Complainant has marketed its products under the OCZ name via the Internet since 2001. OCZ products are well known within the industry and Complainant has expended considerable time and money in developing its name and reputation.

Complainant holds a trademark registration with the United States Patent and Trademark Office for the OCZ mark (Reg. No. 2,810,218, issued February 3, 2004) related to computer hardware. The copy of the trademark registration indicates that Complainant first used the OCZ mark in commerce December 1, 2000. The copy also indicates that Complainant filed its application for the OCZ mark March 3, 2003.

Complainant’s main website is located at the <ocztechnology.com> domain name where customers can conduct their business online with Complainant.

Respondent registered the disputed domain name June 5, 1998. Currently, the disputed domain name resolves to an inactive website.

DISCUSSION

Paragraph 15(a) of the 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 Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical to and/or Confusingly Similar

Complainant holds a trademark registration for the OCZ mark with the United States Patent and Trademark Office but Complainant did not register the mark prior to the date that Respondent registered the <ocz.com> domain name, June 5, 1998. In fact, the evidence in the record provided by Complainant shows that Respondent registered the <ocz.com> domain name before Complainant’s first use of the mark in commerce, before Complainant’s filing for trademark protection, and prior to Complainant’s perfecting trademark registration of the OCZ mark through the United States Patent and Trademark Office.

Complainant’s submission establishes that Respondent registered the <ocz.com> domain name June 5, 1998, two years before Complainant acknowledges that it began using the OCZ mark in commerce on December 1, 2000. Furthermore, Complainant’s submission establishes that Complainant filed its trademark application March 3, 2003, some five years after Respondent registered the disputed domain name. Complainant was granted its trademark registration February 3, 2004.

Thus, despite the fact that Respondent is passively holding the <ocz.com> domain name, Complainant has failed to establish rights in the mark that predate Respondent’s registration of the domain name.

The UDRP has consistently been interpreted as requiring a Complainant to establish rights that predate Respondent’s registration of the disputed domain name. See Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001) (stating that “We are of the unanimous view that the trademark must predate the domain name.”); see also Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) (finding that Policy ¶ 4(a)(i) “necessarily implies that Complainant’s rights predate Respondent’s registration. . .of the domain name.”); see also Intermark Media, Inc. v. Wang Logic Corp., FA 139660 (Nat. Arb. Forum Feb. 19, 2003) (finding that any enforceable interest that Complainant may have in its common law mark did not predate Respondent’s domain name registration, therefore finding that Policy ¶ 4(a)(i) had not been satisfied).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has not been satisfied.

Because Complainant failed to prove the first element under the UDRP, inquiry by the Panel into the remaining two elements is unnecessary. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because Complainant must prove all three elements under the Policy, Complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary).

Absent a showing of rights in the mark, it would be impossible to establish bad faith registration and use of the domain name by Respondent on the showing made in this case since Respondent’s registration of the domain name predates Complainant’s use of the mark. See Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where Respondent registered the domain prior to Complainant’s use of the mark); see also Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith where Respondent registered the domain name in question before application and commencement of use of the trademark by Complainant); see also Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO October 5, 2001) (finding that it is impossible for Respondent to register disputed domain name in bad faith if Complainant's company did not exist at the time of registration).

DECISION

Having failed to meet the threshold showing under ICANN Policy of rights in the mark that predate registration of the domain name, the Panel concludes that relief shall be DENIED.  Accordingly, it is Ordered that the <ocz.com> domain name REMAIN WITH Respondent; and that the Complaint be DISMISSED without prejudice.

Hon. Carolyn Marks Johnson, Panelist

Dated: April 29, 2004

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