Technology Transfer v. More Virtual
Agency
Claim Number: FA0204000110859
Complainant
is Technology Transfer, Rome, ITALY
(“Complainant”) represented by Giovanni
Modica. Respondent is More Virtual Agency, Bonn, GERMANY
(“Respondent”).
The
domain name at issue is <technologytransfer.biz>,
registered with Key-Systems Gmbh.
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 26, 2002; the Forum
received a hard copy of the Complaint on May 13, 2002.
On
May 15, 2002, a Notification of Complaint and Commencement of Administrative Proceeding
(the “Commencement Notification”), setting a deadline of June 4, 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
1. Respondent’s <technologytransfer.biz>
domain name is identical to Complainant’s TECHNOLOGY TRANSFER trademark.
2. Respondent has no rights or legitimate
interests in the <technologytransfer.biz> domain name.
3. Respondent registered the <technologytransfer.biz>
domain name in bad faith.
B. Respondent failed to submit a Response.
Complainant asserts that it has rights in
the TECHNOLOGY TRANSFER mark. Complainant has been providing information
technology seminars and conferences to IT professionals worldwide under the
TECHNOLOGY TRANSFER moniker since 1986. Complainant also operates from two domains,
specifically, <technologytransfer.it> and
<technologytransfer.info>. There
is no allegation that Complainant has registered its claimed mark with any
governmental entity or that its use has caused the highly descriptive mark to
achieve secondary meaning status.
Respondent registered the disputed domain
name on March 27, 2002 and has yet to develop a website. It appears that both
Complainant and Respondent are in the same general business.
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 has not established that it has rights in
the TECHNOLOGY TRANSFER mark, even though it claims continuous use of the mark
in commerce since 1986. There is no allegation by Complainant that it has
registered the mark with any governmental entity. The UDRP
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). See Roberts v. Boyd, D2000-0210 (WIPO May 29, 2000) (finding that
trademark registration was not necessary and that the name “Julia Roberts” has
sufficient secondary association with the Complainant that common law trademark
rights exist). Here, however, the Complainant has failed to meet this flexible
standard.
If Complainant’s highly descriptive “mark” is claimed to
be a common law trademark, there is no allegation that the mark has developed a
secondary meaning to uniquely identify Complainant’s goods and services. In fact, however, the phrase “technology
transfer” could never serve as a proper trademark as it is a generic
description of an industry; thus, it cannot serve to distinguish anything and
is unprotectable. See fabric.com v. Song,
FA 109701 (Nat. Arb. Forum June 1, 2002) (finding that “fabric” is a generic
term and that neither Complainant nor Respondent could have protectable rights
in such a mark).
The
Panel finds that STOP Policy ¶ 4(a)(i) has not been satisfied. It is, accordingly, not necessary to
determine whether the Respondent has rights or legitimate interests in respect
of the mark or whether it was registered or is being used in bad faith. Since there are no further timely
contestants for the domain name at issue, and since the Complainant has no
protectable rights in TECHNOLOGY TRANSFER, there is no justification to disturb
Respondent’s registration of the domain name at issue.
The
Complainant having failed to establish the first element required under the
STOP Policy, the Panel concludes that relief should be hereby DENIED. There being no further IP challenges to the
domain name at issue, it will remain vested in the Respondent.
Accordingly,
it is Ordered that the <technologytransfer.biz> domain name not be
transferred from
Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: July 1, 2002
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