OCZ Technology Group, Inc. v. Megazine
Publications
Claim
Number: FA0403000244094
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.
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.
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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
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.
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.
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.
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).
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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