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Generic Top Level Domain Name (gTLD) Decisions |
Newport Corporation v. Newport
Electronics Inc.
Claim Number: FA0205000114325
PARTIES
Complainant
is Newport Corporation, Irvine, CA
(“Complainant”) represented by Kyhm Penfil,
of Irell & Manella LLP. Respondent is Newport Electronics Inc., Stamford, CT (“Respondent”) represented
by David R Haarz, of Dickinson Wright, PLLC.
The
domain name at issue is <newport.biz>,
registered with Domainpro, Inc.
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.
G.
Gervaise Davis III, Esq., is the single 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 May 17, 2002; the Forum
received a hard copy of the Complaint on
May 22, 2002.
On
May 24, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of June 13,
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”).
A
timely Response was received and determined to be complete on June 13, 2002.
On June 28, 2002, pursuant to STOP Rule 6(b), the Forum
appointed G. Gervaise Davis III, Esq., as
the single Panelist.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
Complainant
Newport Corporation was founded in the Newport area of southern California in
the 1960s and has been using the name “Newport”
since that time. Complainant Newport Corporation's federally
registered trademark no. 1558877 was registered before respondent Newport
Electronics
had any trademark registration and is now incontestable. Nevertheless, respondent Newport Electronics
continues to register and use “Newport”-related Internet domain names in which
it has
no legitimate right or interest.
In
1999, after three decades of peaceful co-existence, respondent Newport
Electronics sued complainant Newport Corporation in federal
court for trademark
and service mark infringement. Newport
Electronics, Inc. v. Newport Corporation, United States District Court,
District of Connecticut, Case No. 3:99-CV-1463 (JCH) (Judge Janet C.
Hall). The case was tried to a jury in
January 2002. The jury voted
unanimously in favor of Newport Corporation.
Respondent
Newport Electronics's registration of
<newport.biz> is simply Newport Electronics' latest attempt to harass
Newport Corporation.
Newport
Electronics has demonstrated no right or legitimate interest in <newport.biz>. For example, Newport Electronics has not
demonstrated that its customers will search for it at <newport.biz>. In
fact, Newport Electronics admits it has offered its website at <newportelectronics.com>,
<newportelect.com>, <newportinc.com>,
<newportus.com> and
<newportusa.com> for several years.
Respondent
Newport Electronics has amply demonstrated its bad faith with respect to
Internet domain names and complainant Newport
Corporation. For example, in 1994, Newport Corporation
registered the domain name <newport.com>. Newport Electronics knew in 1995 that Newport Corporation had
registered and was using <newport.com>.
Yet in 1996, Newport Electronics sought to register “NEWPORT.COM” as its
own trademark, even though Newport Electronics had never used the term
“NEWPORT.COM” and even though Newport Electronics knew that Newport
Corporation already had used the domain name.
Newport
Electronics is a corporate hoarder of Newport-related names as shown in
litigation between the parties, where Newport
Electronics admitted that it has registered over 78 Internet domain names that
include the term “NEWPORT.” Moreover,
Newport Electronics admits that its affiliate Omega Engineering, Inc. has
registered over 35 Internet domain names that
include the term “NEWPORT.”
In short, respondent Newport Electronics has
demonstrated its bad faith with respect to Newport Corporation and Internet
domain names. Newport Electronics'
registration of <newport.biz>
is simply Newport Electronics' latest attempt to harass Newport Corporation.
Complainant
lists in some detail the saga of disputes and litigation between the two
companies, both of whom apparently started operations
many years ago in the
Newport, California area, although Respondent has since moved its operations to
the East Coast of the U.S.
B.
Respondent
Complainant
Newport Corporation has alleged that the
<newport.biz> domain name is identical to “several marks in which
Complainant Newport Corporation has rights.”
However, it should be noted that although the <newport.biz> domain name is identical to registered marks
owned by Respondent, Complainant does not own any registrations
for the NEWPORT mark. Although
Complainant misrepresents in its Complaint that Registration No. 1,558,877
covers the mark “NEWPORT,” that registration,
which is Complainant's only
claimed registration upon which it bases its claim in this action, covers a
mark described in the records
of the United States Patent and Trademark Office
which “consists of the stylized representation of the word 'Newport' and
miscellaneous
design.” In addition,
action regarding all of Complainant's applications in the United States has
been suspended.
On
the other hand, the <newport.biz> domain name is identical to a
mark for which Respondent holds ten trademark registrations in the United
States. In addition, Respondent either
directly or through its subsidiaries owns seventeen other registrations for the
NEWPORT mark, outside
the United States, in Canada, the United Kingdom, France,
Germany, the Czech Republic, Benelux, Spain, Norway and the European Community.
Under
STOP Policy paragraph 4(c)(1), Respondent's ownership of a valid trademark
registration for the NEWPORT mark is a complete defense
to an action under
STOP. A party demonstrates rights and
legitimate interests in respect of the domain, where Respondent is “the owner
or beneficiary of a
trade or service mark that is identical to the domain
name.” Thus, under the clear and
unequivocal provisions of the STOP policy, Respondent has demonstrated that it
has rights and legitimate
interests in respect of the domain name at issue,
namely <newport.biz>. See Start-up Trademark Opposition Policy
decisions, TWA Airlines LLC v. Heathrow Express Operating Company Ltd.,
FA 102956 (Nat. Arb. Forum Feb. 6, 2002) and High Speed Productions v. Fabio
Blanco, FA 102951 (Nat. Arb. Forum Mar. 6, 2002).
In
light of Respondent's ownership of numerous valid registrations for the NEWPORT
mark in the United States and its registrations
for the NEWPORT mark in other
jurisdictions, it is unnecessary to determine the issue of bad faith
registration or use. However, it is
clear that Respondent neither registered nor used the <newport.biz> domain name in bad faith.
Complainant
fails to make a single allegation of facts regarding Respondent's bad faith in
connection with the <newport.biz>
domain name. All the allegations made
are of general misconduct and bad faith in the relationship of the companies
and the litigation and other
disputes.
Complainant
does not and cannot allege that Respondent registered the <newport.biz> domain name primarily for the purpose of
selling the <newport.biz>
domain name to Complainant or another party for an amount in excess of its
out-of-pocket cost because, in fact, Respondent intends
to use the <newport.biz> domain name in
connection with its sale of goods and services under its registered NEWPORT
mark.
Complainant
does not and cannot allege that Respondent registered the <newport.biz> domain name in order to prevent the
Complainant from reflecting the mark in a corresponding domain name because
Respondent, unlike
Complainant, is the owner of registrations covering the
NEWPORT mark in plain block letters and, therefore, has every right to register <newport.biz> as its domain
name.
Complainant
does not and cannot allege that Respondent registered the <newport.biz> domain name primarily for the purposes of
disrupting the business of a competitor because there has not been and cannot
be any disruption
of Complainant's business with regard to the <newport.biz> domain name.
Complainant
does not and cannot allege that Respondent has used the <newport.biz> domain name intentionally to attract for
commercial gain, Internet users to its site or other on-line location by
creating a likelihood
of confusion with the Complainant's mark as to the
source, sponsorship, affiliation, or endorsement of its web site or on-line
location
or of a product or service on its web site or on-line location because
the <newport.biz> domain name
has not been activated and, even if it were, Respondent's use of <newport.biz> would be in
connection with the goods and services it sells under its NEWPORT mark. In fact, Complainant alleges that the parties
have “three decades of peaceful co-existence” with regard to their respective
uses of
the NEWPORT mark.
Simply
put, there can be no bad faith with regard to Respondent's registration of the <newport.biz> domain name
because it owns and uses the NEWPORT mark for goods and services. This is a dispute between two companies that
both own and use the NEWPORT mark and would like to have domain names that
reflect that
fact. Complainant owns the
<newport.com> domain name and would like to own the <newport.biz> domain name.
Having been unable to register the <newport.com> domain name,
Respondent was able to register the
<newport.biz> domain name.
This situation is precisely one of the reasons that the new .biz TLD was
created. See ICANN Report (Part One) of
the Working Group C (New gTLDs) presented to the Names Council on March 21,
2000:
Companies
that currently have a domain name in the form of company.com have an extremely
important marketing and name-recognition
tool.
They have an advantage over all other companies that do not have
addresses in that form, because the companyname.com firms are the
ones that
consumers surfing the Net, will be able to find most easily. If the name space is expanded, companies
will be able to get easy-to-remember domain names more easily, and the entry
barriers to
successful participation in electronic commerce will be
lowered. Addition of new gTLDs will
allow different companies to have the same second-level domain name in
different TLDs. Those businesses
will have to compete based on price, quality and service, rather than the
happenstance of which company locked up
the most desirable domain name
first. [Emphasis supplied by Respondent].
In
recognition of the complete absence of bad faith regarding the domain name at issue,
Complainant attempts to present evidence of
a pattern of bad faith regarding
other domain names on the part of Respondent.
However, a review of Complainant's “evidence” of bad faith only reflects
a cursory one-sided presentation of a contested dispute regarding
the ownership
of trademarks, service marks and domain names containing the word NEWPORT. To make a determination of “bad faith” on
the basis being sought by Complainant would require a panelist to go far beyond
the analysis
contemplated in a STOP proceeding. The “bad faith” allegation in this proceeding involves a larger
dispute between the parties, only a portion of which has been put
into the
record and is beyond the scope of issues that can be fairly resolved under
STOP. See the UDRP panel decision CNA
Financial Corporation & Allstate Insurance Company v. Insurance Services
Plus, Inc. D2000-0955 (WIPO Dec. 15, 2000).
Finally,
Respondent asks that Complainant be held guilty of attempted reverse domain
name hijacking.
A. The domain name is NOT identical to a
trademark or service mark in which the Complainant has rights, in that the
Complainant’s
sole registered mark is a stylized logo in the form of a
representation of the word “Newport” and miscellaneous design. Other pending applications of Complainant
for the mark “Newport,” itself, have been suspended by the USPTO and have not
been acted
upon.
B. The Respondent is the owner of
numerous registered U.S. trademarks on use of the word “Newport” in many
classes and in several
foreign countries, and as such has a clear right and
legitimate interest in use of the domain <newport.biz> which is at
issue here.
C. The Respondent did NOT register or use
the domain name at issue in bad faith.
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.”
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.
The conclusive and ultimately determining
fact in this case is correctly pointed out by Respondent in its well-written
and documented
brief. Under STOP Policy
Paragraph 4(c)(1), Respondent's ownership of a valid trademark registration for
the NEWPORT mark is a complete defense
to an action under the STOP Policies,
for the very reasons laid out in Respondent’s brief. Because of the high demand for the first set of gTLD’s, ICANN
determined to permit additional gTLD’s so that companies with similar
names and
similar trademarks would have an alternative place to register a domain
name. The fact that Complainant does
not like this and would like to have this additional domain name for its use is
irrelevant under the
STOP Policies.
Respondent clearly has legal rights to use this domain name and its
“Newport” trademarks in the U.S. and elsewhere in the world.
Furthermore, it is highly unlikely that
any court hearing a trademark dispute would conclude that Respondent may not
use this domain
name because of any alleged confusion, dilution, or other legal
theory, since it is obviously derived from the Newport Beach area,
a
geographical term. Moreover, it is such
a common trademark that the USPTO database lists some 95 applications filed
using just that single word, including
cigarettes, electronic parts and many
other categories, and more than 400 filings that include the name “Newport”
within a combination
of word marks. The
mark in question is neither famous nor unusually distinctive or unique. The law
on this issue is so well established that it needs
no citation.
It is apparent that Complainant and
Respondent have serious differences of opinion and that they have been engaged
in litigation and
other contentious disputes over the years. That fact, however, does not deprive
Respondent of its rights under the STOP Policy, and such disputes do not
establish “bad faith”
registration under the Policy. Complainant’s allegations may be substantially, or even entirely
true, but they do not constitute evidence of bad faith within the
purview of
the STOP and related UDRP Policies and Rules, given the fact that Respondent is
the lawful owner of registered marks in
the U.S. and elsewhere. This Panel is not a court of equity, but a
simple arbitration proceeding bound by very specific rules, aimed at obtaining
prompt and
relatively inexpensive decisions.
For this Panel to go beyond the inquiry delineated in the Policy would
not only exceed its jurisdiction, but also defeat the purpose
of the STOP
Policy.
Attempted Reverse Domain Name Hijacking
The Panel took the option to set forth in
more detail than usual the facts on which Complainant bases its position, and
the details
of the Respondent’s position, since they rather completely explain
why Complainant has not succeeded in proving its case even though
it feels that
Respondent has acted unfairly.
Furthermore, it seems to this Panel that, given these well-known facts,
even a cursory reading of the STOP Policy and Rules would
have demonstrated to
Complainant’s counsel that this case should not have been brought.
However, given the mutually destructive
and overtly contentious efforts of both parties in regard to these
domains and trademarks, this Panel will not encourage further unnecessary
disputes by finding an attempted
reverse domain name hijacking here by
Complainant. Hopefully, this decision
will at least end one aspect of this continuing saga of two companies that
apparently have nothing more constructive
to do than fight over trademarks and
domain names.
DECISION
The requested transfer of the domain name
<newport.biz> is denied, and the Complaint dismissed, with
instructions that no further challenges to Respondent’s registration of the
domain name
at issue shall be permitted.
G. GERVAISE DAVIS III, Esq., Panelist
Dated: July 9, 2002
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