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Generic Top Level Domain Name (gTLD) Decisions |
Prime Manufacturing Technologies Inc. v.
Burns Philp & Company Limited
Claim Number: FA0204000112478
PARTIES
Complainant is Prime Manufacturing Technologies Inc.,
Savage, MD, USA (“Complainant”) represented by Richard C. Litman, of Litman
Law Offices Ltd. Respondent is Burns Philp & Company Limited,
Sydney, AUSTRALIA (“Respondent”) represented by Michael Coyne.
The domain name
at issue is <prime.biz>,
registered with Melbourne IT.
The undersigned
certifies that she has acted independently and impartially and to the best of
her knowledge, has no known conflict
in serving as Panelist in this proceeding.
Anne M. Wallace,
Q.C. 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 April 26, 2002; the Forum
received a hard copy of the Complaint on
April 27, 2002.
On May 10, 2002,
a Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting
a deadline of May 30, 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 May 28, 2002.
Complainant’s
additional submissions were received on June 3, 2002.
On June 24, 2002, pursuant to STOP Rule 6(b), the Forum appointed Anne M.
Wallace, Q.C. as the single Panelist.
Upon reviewing Complainant’s Additional Submissions, the Panel noted
Complainant’s statement that Complainant had not received copies
of
Respondent’s exhibits. On July 2, 2002, the Panel directed that copies of
Respondent’s exhibits be forwarded to Complainant and
that Complainant have
until July 8, 2002 to make any additional submissions with respect to the
Respondent’s exhibits.
Complainant has since advised that Complainant did in fact receive copies
of Respondent’s exhibits and that Complainant has no further
submissions to
make.
Transfer of the
domain name from Respondent to Complainant.
Complainant
claims the domain name, <prime.biz>, is identical to the dominant
portion of Complainant’s company name, Prime Manufacturing Technologies,
Inc.. The dominant portion of the
company name is the word PRIME. On certain of Complainant’s literature the
PRIME portion of its company
name is shown in a type style larger than that of
the rest of the said company name. Complainant was registered in the State of
Maryland
on March 18, 1991 and has used its corporate name continuously ever since.
The name appears on promotional literature, purchase orders,
invoices and in
other ways, and is and has been so used both in the United States (in at least
six different states) and overseas.
Complainant
asserts that Respondent should be considered as having no rights or legitimate
interests in respect of <prime.biz>. Complainant asserts, on information and
belief that Respondent has no registrations of any kind for the name PRIME
other than the
domain name which is the subject of the complaint and that
Respondent has no history of usage of the word PRIME. A search of Respondent’s
web site at <burnsphilip.com> did not show any evidence of use of any
trademark having PRIME as part of it. Complainant also
caused searches of the
Australian Securities and Investments Commission as well as lesser known sites
and found no indication that
Respondent has registered as a “company name” or
as a “business name” any name or mark having PRIME as part of it.
In light of my
findings below with respect to rights or legitimate interests, I need not
recite Complainant’s allegations of bad faith.
Respondent
asserts that Complainant has no registered trademarks that are identical to the
<prime.biz> domain name, and
has not registered trademarks that contain the word PRIME. A search of the
United States Patent and Trademark Office
showed no trademarks owned by
Complainant. Complainant relies on the whole company name PRIME MANUFACTURING
TECHNOLOGIES INC., in
order to assert a right over just one part of that name.
The domain name <prime.biz>, is identical to
registered trademarks in which Respondent has rights. Respondent, through its
wholly owned subsidiary Burns Philip
Technology Limited, is the owner and
beneficiary of Class 29 and Class 30 PRIME trademarks in China. In the same
way, Respondent
is owner and beneficiary of the Class 30 trademark “PRIME and
device” in Vietnam. The trademark PRIME FRESH YEAST has been used in
India and
Bangladesh for a number of years. Burns Philip Indian Limited, a wholly owned subsidiary
of Respondent, has applied to
register class 5 and 30 trademarks in 1995. In
2000, the Registrar of Trademarks raised certain objections and they have been
responded
to. Respondent applied in 1995 in India to a register class 30
trademark for PRIME POWERFUL CAKE GEL.
All of these
trademarks have been used by Respondent and its subsidiaries in the marketing
and distribution of its yeast products
around the world. The PRIME product name
has also appeared on invoices for a number of years.
In light of my
findings below, I need not recite Respondents submissions with respect to bad
faith.
Complainant
asserts, in response to Respondent’s submission, that Complainant does not rely
on the whole corporate name, but on the
prominence of the word PRIME in that
name as evidence that the disputed domain name is identical to a trademark in
which Complainant
has rights. Complainant also filed additional evidence to
show the use of the word PRIME since 1991.
The
Panel finds that the domain name <prime.biz>
is identical to a trademark in which Complainant has rights. The Panel further
finds that Respondent has rights and legitimate interests
in the domain name.
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 evidence
filed by the Complainant does establish at least some rights in the trademark
PRIME. While Complainant uses the word
PRIME as part of its corporate name, PRIME MANUFCTURING TECHNOLOGIES INC., the
dominant word in the corporate name is the word PRIME. Complainant does not own
any registered
trademarks or service marks for the mark PRIME, but through the
evidence filed has established that it has through usage acquired
at least some
rights in the PRIME mark.
The domain name
in question, <prime.biz>, is
identical to Complainant’s mark within the meaning of the STOP Policy.
Respondent has
established rights in the domain name <prime.biz>
through its beneficial ownership of registered trademarks for the word PRIME.
These rights are set out in Respondent’s submissions
outlined above and include
trademark registrations in China and Vietnam and trademark applications in
India. Under STOP Policy 4(c)(i),
therefore, Respondent has demonstrated that
it is the owner or beneficiary of a trademark that is identical to the domain
name. As
such, Respondent has demonstrated rights or legitimate interests in
the domain name.
In light of my findings above, I need not
deal with the allegations of bad faith.
DECISION
The Complaint is hereby dismissed. No further challenges against this
domain name shall be permitted under the STOP Policy.
Anne M. Wallace, Q.C., Panelist
Dated: July 15, 2002
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URL: http://www.worldlii.org/int/other/GENDND/2002/1161.html