Generic Top Level Domain Name (gTLD) Decisions

The Complainant is The Information Center, Co., Eagan, MN, USA ("Complainant"). The Respondent is ALM Systems Inc., Elk Grove Village, IL, USA ("Respondent").

The domain names at issue are "almsys.com", registered with Network Solutions and "almsys.net", registered with Tucows.

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as the panelist in this proceeding.

James Alan Crary as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on September 12, 2000; The Forum received a hard copy of the Complaint on September 12, 2000.

On September 14, 2000, Network Solutions confirmed by e-mail to The Forum that the domain name "almsys.com" is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions Version 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On September 15, 2000, Tucows confirmed by e-mail to The Forum that the domain name "almsys.net" is registered with Tucows and that the Respondent is the current registrant of the name. Tucows has verified that Respondent is bound by the Tucows registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On September 18, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 9, 2000 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@almsys.com and postmaster@almsys.net by e-mail.

On October 9, 2000, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed James Alan Crary as Panelist.

The Complainant requests that the domain names be transferred from the Respondent to the Complainant.

A. Complainant

The Complainant is the owner of the trademark ALMSYS registered February 17, 1998 with the United States Patent and Trademark Office for computer programs and accompanying documentation sold as a unit, for use in originating, processing and tracking consumer loans primarily in connection with automobile financing, in Class 9. The trademark was first used in commerce January 25, 1997.

Respondent’s domain name almsys.com and almsys.net are identical to complainants registered trademark. Complainant maintained that Respondent does not offer goods or services under the ALMSYS name but under its corporate name ALM SYSTEMS, INC. and further that Respondent was not commonly known as ALMSYS but rather as ALM SYSTEMS, INC.

Bad faith was alleged by the Complainant since ALMSYS was documented and an established trademark before either domain names were registered.

Complainant maintains that almsys.net was registered in August 2000 with clear and full knowledge that it violated Complainant's registered mark. Registration of almsys.net prevented Complainant from reflecting its trademark in a corresponding domain name.

Respondent continues to use almsys.com for five months after being notified in writing of the violation of the standing trademark owned by the Complainant. Respondent registered and continued to use almsys.com to prevent Complainant from reflecting the trademark in a corresponding domain name. Complainant therefore sought transfer of almsys.com and almsys.net from the Respondent.

B. Respondent

Respondent admitted that the disputed domain name was confusingly similar to the registered trademark owned by the Complainant.

Respondent had been offering products, goods, and services through its web site using the almsys.com and was commonly known as almsys.com as well as ALM SYSTEMS, INC. Respondent offers industrial, commercial and residential lighting and lighting systems.

Respondent maintained that at the time it registered almsys.com in March 1998 it was unaware of Complainant’s business or trademark registration.

Respondent denied that it’s use of almsys.com violated a standing trademark owned by the Complainant but did not deny that it continued to use almsys.com for five months in the same manner that it had since March 1998 in connection with a bona fide offering of goods, products and services to its customers via it’s web site.

Respondent registered almsys.net in order to prevent confusion between Respondent and another company using similar domain names not to prevent Complainant from reflecting its mark in a corresponding domain name.

Respondent maintained that its renewal of its registration in April 2000 was to maintain a status quo.

Respondent denied that it intended to take advantage of Complainant’s company name or reputation or disrupt Complainant’s business. Respondent had made legitimate commercial and fair use of the domain name without intent to divert customers or to tarnish Complainant’s trademark. It engaged in a different business than Complainant and was not Complainant’s competitor. Respondent denied bad faith asserting that it had rights and legitimate interests in the disputed domain name. Respondent does not acquire well-known domain names. No attempt was made to sell the disputed domain names to the Complainant. Respondent sought to retain the disputed domain names.

1. The Complainant is the owner of the registered trademark ALMSYS issued for computer programs and accompanying documentation sold as a unit, for use in originating processing and tracking consumer loans primarily in connection with automobile financing.

2. The Respondent registered the domain name almsys.com March 30, 1998 and almsys.net on August 3, 2000. Respondent offered industrial, commercial and residential lighting and lighting systems.

3. Respondent was been engaged in business manufacturing electrical lighting components in the state of Illinois since 1981.

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the complainant must 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

Respondent conceded that the disputed domain names are confusingly similar to Complainant registered trademark.

The Respondent did not dispute that Complainant had a valid registered US trademark but it denied any infringement or dilution. It was pointed out that Respondent and the Complainant are not competitors. Respondent conducts business in lighting components and systems field, a business in which it has operated for approximately 20 years. The Complainant sells computer programs.

It appears from the evidence that the Respondent for approximately 20 years has been engaged in the lighting components field, operating under the ALM SYSTEMS, INC. name. The evidence did not rebut Respondent’s assertion that it registered the almsys.com name unaware of Complainant’s existence or trademark registration. The Panel concluded Respondent had established rights and interests in the disputed domain name. It was making a bona fide offering of goods and services in the field of lighting components long before any notice of the dispute was doing business under the ALM SYSTEMS, INC. name, a name which corresponded to the domain name almsys.com and almsys.net the subject of the dispute herein. (See policy 4(c)(i);(ii) )

A trademark does not confer on its owner any rights in gross or at large. Unlike copyright or patent owners, trademark owners have no rights in gross. The law does not per se prohibit the use of trademarks or service marks as domain names. Rather, the law prohibits only uses that infringe or delute a mark. Innocent third party users of a trademark have no duty to police the mark for the benefit of the mark’s owner. See Panavision Int’l, L. P. v. Toppen 945 F. Supp. 1296 (1996).

It also would appear from the evidence that Respondent was known by the ALMSYS name particularly to people who had visited the site. In the case of the Respondent the ALMSYS name was nothing more than a contraction of a name that it had been using for almost two decades.

With regard to the amsys.net domain name, the same reasoning as would apply to the almsys.com. The fact that the domain name was registered August 3, 2000, presumably after Respondent was aware of Complainant’s trademark did not alter the result. The domain name was available at the time and could have been registered by the Complainant had it chosen to do so.

Since it was concluded that the Respondent had rights and legitimate interests in the almsys.com and the almsys.net domain names Complainant has failed to meet it’s burden of proof in respect to paragraph 4(a)(ii). It is not necessary for the Panel to consider whether or not the Respondent has registered or is using the domain names in bad faith.

It was concluded Complainant failed to establish an abusive domain name registration within the meaning of Section 4(a) of the Policy and thus it was not entitled to relief under Section 4(i) of the Policy. Therefore it is ordered that the Respondent retain the disputed domain names almsys.com and almsys.net.