Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Telular Corporation, Vernon Hills, IL, USA ("Complainant"). The Respondent is Surf Pacific, United Kingdom ("Respondent").

The domain name at issue is "TELGUARD.COM", registered with Network Solutions, Inc. ("NSI").

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 05/25/2000; The Forum received a hard copy of the Complaint 05/30/2000.

On 05/30/2000, NSI confirmed by e-mail to The Forum that the domain name "TELGUARD.COM" is registered with NSI and that the Respondent is the current registrant of the name. NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 4.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On 05/31/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 06/20/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via email, post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts by email.

On June 26, 2000, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed Judge Ralph Yachnin as Panelist.

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

A. Complainant

The Complainant’s Mark "TELGUARD" was first used in commerce on October 5, 1989 and received Registration Number 1,855,592 on September 27, 1994. The Respondent’s Term is "TELGUARD.COM."

Other than Respondent’s registration of the Term with the Registrar to offer its products through the web site, Respondent did not use the Term. Respondent applied for two International Classes for the Term as its trademark and service mark on March 1, 1994 in the U.K. and each application was abandoned on January 20, 1996. There was no showing of a use or registration date.

Since registration of the term, Respondent has made use of the Complainant’s Mark as its Term offering goods on its web site legally identical to the use disclosed in Complainant’s U. S. trademark registration and application. Under United States and British law, without permission, Respondent has no rights in the Term or Complainant’s Mark. Further, Complainant’s use in 1989 and registration in 1994 predate Respondent’s registration and first date of introduction of its product under its Term.

Complainant has used the Mark worldwide prior to the registration or use of it by Respondent.

Complainant received numerous inquires involving confusion between the parties, and as a result of Respondent’s registration Complainant’s customers may not effectively communicate with Complainant respecting sales, and problems. In addition, Respondent can divert customers from Complainant as the goods each sells are legally identical.

B. Respondent

Respondent agrees that there is no material difference between Complainant’s Mark and Respondent’s Mark/Term. However, Respondent does not agree that Complainant’s Mark belongs to Complainant outside the United States or that the activities of Respondent and Complainant overlap to cause confusion or damage.

Complainant’s Mark has always been used for a wireless alarm signaling that allows alarm system to switch to a cellular telephone if the line is cut, and its use was primarily in the US market. By contrast, Respondent’s Mark/Term has been used for a door entry system, with no alarm functionality and uses existing telecommunications to avoid cabling and its use has been directed primarily to the UK market.

Complainant’s Mark has no trademark protections outside the Americas, and there is no evidence that Complainant ever regarded TELGUARD as being important enough, internationally, to register outside the U.S.A.

Complainant’s contention that Respondent did not use the Term in any way other that to register it is in error for Respondent’s domain name and the fact that it is being used is the subject of this complaint.

Respondent’s Mark/Term enjoys defensible common-law trademark right in the UK.

Complainant’s alleged U.S. trademark rights and alleged earlier use in the U.S. are irrelevant.

Respondent did not see the need to search the U.S. Trademark Registers when adopting a Mark in the UK in 1993.

Complainant has only used its Mark significantly in the U.S.A.

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2. The Complainant’s Mark "TELGUARD" was first used by Complainant in commerce on October 5, 1989 and received a registration number on September 27, 1994. The Respondent’s Term is "TELGUARD.COM."

3. The Complainant’s Mark predates Respondent’s Term registration and first date of introduction under the Term in 1995.

4. Respondent applied for International Classes for the Term as its trademark and service mark on March 1, 1994 in the U.K. and it was deemed abandoned on January 20, 1996. There was no showing of a use or registration date.

5. Complainant has used the Mark in the UK and worldwide prior to the registration or use of it by Respondent.

6. While the products of each party are somewhat different, they are also very similar, in that, both are an electronic device, both are used as an accessory of a building, both are used to prevent an unauthorized entry into a building, both are in the nature of a security devise. It is thus not inconceivable, and most probable that a customer of the Complainant would engage the Respondent’s domain site, being that the names are identical and the products are similar, for the purchase of the Complainant’s products, or for many other business reasons.

7. Respondent could have, but did not deem it necessary to search for the Complainant’s Mark when adopting a Mark for its use.

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") directs that the complainant must prove each of the following three elements in order to demonstrate claims that a domain name should be canceled 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; and (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.

That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights there is no doubt.

The Complainant both registered and used the Mark prior to the date that Respondent first introduced its product under its Term. Respondent could have caused a search to be made before using its Term to avoid this conflict, but chose not to. The Respondent has no right or legitimate interest in respect of the domain name.

The Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s web site or location or of a product or service. Therefore the Respondent’s domain name has been registered and is being used in bad faith.

Ralph Yachnin

Justice, Supreme Court, N.Y. (Ret.)

Arbitrator

Dated: July 7, 2000