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Generic Top Level Domain Name (gTLD) Decisions |
Eclat Textile Co. Ltd. v. Eclat AG
Claim Number: FA0205000114329
PARTIES
Complainant
is Eclat Textile Co. Ltd., Taipei,
TAIWAN (“Complainant”) represented by Edward
Wang. Respondent is Eclat AG, Erlenbach, SWITZERLAND (“Respondent”)
represented by Marc E. Bloch, of Gloor & Sieger Attorneys at Law.
The
domain name at issue is <eclat.biz>,
registered with CORE.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) 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 May 18, 2002; the Forum
received a hard copy of the Complaint on
May 21, 2002.
On
May 29, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of June 18,
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 17, 2002.
On July 2, 2002, pursuant to STOP Rule 6(b), the Forum
appointed the Honorable
Charles K. McCotter, Jr. (Ret.) as the single Panelist.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
The domain name is identical to a
trademark or service mark in which Complainant has rights; and
Respondent
has no rights or legitimate interests in respect of the domain name; and
The
domain name has been registered or is being used in bad faith.
B.
Respondent
Respondent contends that <eclat.biz>
was registered and will be used in terms of a bona fide business use to
facilitate the exchange of its services.
Respondent contends that it is
commonly known as ECLAT.
Complainant, Eclat Textile Co.,
Ltd., is a well-known name in worldwide fabric market, especially in Lycra
knitting industry. Consumers can also
find the ECLAT name on Eclon® and
BodyCare® products in the market.
Complainant
has trademarks for ECLAT and/or ECLAT & DEVICE in numerous countries. Complainant, established in 1977, has annual sales
of almost 100 million dollars. Complainant
regularly advertises the ECLAT name and fabrics in Women’s Wear Daily, a major
fashion industry newspaper in the USA.
Complainant has participated in the Interstoff fabric shows at
Frankfurt, Germany and in international fabric shows in other countries.
Complainant
claims that Respondent does not promote the ECLAT name as well as Complainant.
Respondent,
Eclat AG, is a joint-stock company duly organized under Swiss Law in 1988 and
operates in the areas of corporate identity
and communications design with a
special focus on "Crossover branding, Employer branding, Location-based
communication and
Business
reports". Within this area Eclat
AG claims to have an almost worldwide reputation.
Respondent has used the brand and company name ECLAT name
since 1988 in connection with its offering of services. Respondent has been commonly known by the
company name ECLAT since 1988.
In
its capacity as a corporate identity and communications design agency,
Respondent has developed visual communication concepts for
Opel motor shows, a
business entity of General Motors Europe, as well as developed a packaging
prototype for the "Harvard"
brand of Philip Morris.
Respondent
claims that its brand has become renowned among experts and the public. In 1996, Eclat New York Inc., a wholly owned
subsidiary, was formed with its office in Ithaca, NY. Other subsidiaries are located in Germany and Switzerland. Respondent has won numerous design awards.
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.
Complainant
has established that it has rights to the ECLAT mark through registration and
use. Complainant’s ECLAT mark is
identical to Respondent’s <eclat.biz> domain name.
Therefore,
the Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
A Respondent in a STOP proceeding may
demonstrate its rights or interests in a disputed domain name by proving its
use of or demonstrable
preparations to use the domain name for a bona fide
offering of goods or services. STOP
Policy ¶ 4(c)(ii). Respondent,
Eclat AG, has been operating in the areas of corporate identity and
communications design since 1988.
A Respondent may demonstrate its rights
or interests in a domain name by proving that it has been commonly known by the
domain name,
even if it has acquired no trademark or service mark rights. STOP Policy ¶ 4(c)(iii).
As the Panel has determined that
Respondent has legitimate interests in respect to the mark ECLAT, it is
unnecessary for the Panel
to address the third issue of bad faith.
The Panel finds that STOP Policy ¶
4(a)(ii) has not been satisfied.
DECISION
Complainant’s Complaint is dismissed. Subsequent challenges under the STOP Policy
to the domain name, <eclat.biz>, as against Respondent, shall
not be permitted.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated: July 11, 2002
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URL: http://www.worldlii.org/int/other/GENDND/2002/1117.html