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Generic Top Level Domain Name (gTLD) Decisions |
STMicroelectronics,
NV v. Tower Entertainment GdbR
Claim Number: FA0112000102731
PARTIES
The Complainant is STIMicroelectronics, N.V., Amsterdam, Netherlands (“Complainant”) represented by Molly Buck Richard, of Strasburger & Price, L.L.P. The Respondent is Tower Entertainment GdbR, Schwetzingen, Germany (“Respondent”) represented by Christian Leistritz.
The domain name at issue is <stm.biz>, registered with Schlund & Partner.
The undersigned, Daniel B. Banks, Jr., 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.
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 December 5, 2001; the Forum received a hard copy of the Complaint on December 5, 2001.
On December 10, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 31, 2001 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, without evidence, was received on December 31, 2001. The Forum received Respondent’s exhibits after the Forum’s deadline, on January 7, 2002. The Panelist considered the Respondent's exhibits that were received after the Forum's deadline.
On January 29, 2002, pursuant to STOP Rule 6(b), the Forum appointed Daniel B. Banks, Jr., as the single Panelist.
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
A. Complainant:
STMicroelectronics, N.V.(STM), prior to May 1998 was known as SGS-Thomson Microelectronics, N.V. and is the owner of numerous proprietary marks in connection with a broad range of semiconductor integrated circuits and discrete devices used in a wide variety of microelectronics applications, including telecommunications systems, computer systems, consumer products, automotive products and industrial automation and control systems.
STM is also the owner of numerous trademarks and service marks registered worldwide and on the Principal Register of the United States Patent and Trademark Office. Complainant owns rights in the mark "STM" in the European Community where the Registrant's organization is located. Complainant is also the owner of numerous additional registered and pending trademark applications in the mark "STM" as set out in Exhibits 3 through 52 attached to Complainant's Complaint. The earliest date of issuance or filing an application is November, 1997.
The domain name <stm.biz> is confusingly similar to the famous STM marks in which Complainant has exclusive rights. Complainant's mark was in use for over four (4) years before Respondent registered the domain name <stm.biz>. Respondent does not have permission to use the STM mark in any manner; there is no relationship between Respondent and Complainant; Respondent is not a licensee of Complainant nor has it otherwise obtained and authorization to use Complainant's mark. Complainant's customers and potential customers are likely to be confused into believing that there is some affiliation, connection, sponsorship, approval or association between the Complainant and Respondent, when in fact, none exists.
Respondent should not be considered as having any rights or legitimate interests in the domain name. Respondent is known by the name Tower Entertainment GdbR. Respondent is not commonly known by the term “STM” or “stm.biz”, which wholly incorporates Complainant's established mark. Also, Respondent is not the owner or beneficiary of a trade or service mark that is identical to the domain name.
Respondent registered the domain name in bad faith by intentionally attempting to attract, for commercial gain, consumers to its <stm.biz> site, by creating a likelihood of confusion with Complainant's marks as to the source, sponsorship, affiliation or endorsement of Respondent's web site.
Respondent's unauthorized use in commerce of a domain name incorporating Complainant's famous STM mark constitutes use of a false designation or origin, as well as a false description or representation that is likely to cause confusion, mistake or deception as to the affiliation, connection or association between STMicroelectronics and Respondent.
B. Respondent:
Tower Entertainment GdbR was founded in July, 1994. It is the producer of television movies and also offers journalistic services for TV stations in Germany, the rest of the European Community, sometimes the USA, Canada and Brazil. S.T.M. Stay Tuned Medien GdbR is a subsidiary company of Respondent and has used that firm name since the year of foundation. Respondent registered the domain name <stm.biz> and uses its firm-name complete or in abbreviation, ("S.T.M."). For the Internet business, it is necessary to have a domain name that is identical to the firm name's abbreviation. It is not possible to register a domain name with dots in it so S.T.M. Stay Tuned Medien GdbR only had the possibility to register <stm.biz>. because the following domains are registered by other companies or persons:
Stm.de - registered by TouchNet GmbH, Germany
Stm.com - registered by SGS-Thomson Microelectronics, France
Stm.net - registered by STM Telecommunications, Argentina
Stm.org - registered by Hamid Ramezany, U.S.A
Stm.info - registered by Societe de Transport de Montreal (STM), Canada
Complainant only has trademark rights in the field of microelectronic products. The Respondent's activity is in the field of television services. There is no point of intersection between the business affairs or trademark rights of Complainant and Respondent. Complainant has no better or higher rights in using the domain <stm.biz>. STM is not the abbreviation of Complainant's firm name.
Respondent claims priority-older, non-registered rights in the mark S.T.M. The Complainant first registered the mark STM in November 1997, in Hong Kong and Mongolia and in the European Community in November 2000. Respondent has used its firm name and abbreviation since July 1994.
Complainant has not submitted any proof of its assertion that it has expended substantial effort and money to develop goodwill in the STM marks and to cause consumers worldwide to recognize the STM marks. Also, Complainant has not submitted any proof that Respondent registered the domain name in bad faith by intentionally attempting to attract, for commercial gain, consumers to its <stm.biz> site.
1 - The domain name is identical to Complainant's claimed registered trademark.
2 - The Respondent has demonstrated rights and legitimate interests in the domain name.
3 - There is no evidence to support a finding that the domain name was registered 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.
Complainant has demonstrated rights in the mark STM. It is therefore necessary to determine whether or not Respondent also has legitimate rights or interest in the domain name.
Respondent
contends that it has rights and legitimate interests in the disputed domain
name because its subsidiary company, S.T.M.
Stay Tuned Mediem GdbR, is commonly
known as STM. See VeriSign Inc. v. VeneSign C.A.,
D2000-0303 (WIPO June 28, 2000) (finding that the Respondent had rights and a
legitimate interest in the domain name since the
domain name reflected
Respondent’s company name); see also K2r
Produkte AG v. Trigano, D2000-0622 (WIPO Aug. 23, 2000) (finding that
Respondent had rights and legitimate interests in the domain name
<k2r.com>
where he registered the domain name for a website in connection
with his mother’s store, KIRK ET ROSIE RICH).
Respondent further claims to hold
unregistered trademark rights in STM in Germany, and also that its rights
predate Complainant’s
trademark registrations.
(STOP Policy ¶ 4(c)(i) allows a Respondent to demonstrate its rights and
interests by proving it is the owner or beneficiary of a
trademark or service
mark that is identical to the domain name.)
See Parachute,
Inc. v. Jones, FA 94947
(Nat. Arb. Forum July 12, 2000) (denying transfer of the domain name
because the Respondent’s use of the mark PARACHUTE preceded any use of the
service mark by Complainant); see also IG Index PLC v. Index Trade, D2000-1124 (WIPO Oct. 16, 2000)
(finding that Respondent had rights in the domain name because Respondent’s
claimed use of the domain
name was a “plausible explanation” to which the Panel
must give weight).
Respondent also asserts that
Complainant’s rights in the STM mark are not exclusive, since both parties
operate under the same mark
in different fields. See Philippe Tenenhaus v. Telepathy, Inc., FA 94355 (Nat. Arb. Forum May 17, 2000)
(finding that Respondent has rights and legitimate interests where Complainant
failed to
show that he should be granted exclusive use of the domain name
<daf.com>, as many other organizations use the generic term
DAF); see
also Asphalt Research Tech., Inc. v.
Anything.com, D2000-0967 (WIPO Oct. 2, 2000) (finding that the Respondent
had a legitimate interest in using a trademark or domain name in which
many
persons held an exclusive right in relation to different goods and services
because the Respondent’s goods or services were
sufficiently distinct from the
goods and services of others).
This
Panelist finds that Respondent does have rights and legitimate interests in the
domain name based on prior use in connection
with a legitimate business.
Respondent asserts that it registered the domain name to be used in good faith by its subsidiary, S.T.M. Stay Tuned Medien GdbR. See Schering AG v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000) (finding that the Respondent did not register the domain name <metagen.com> in bad faith where Respondent registered it in connection with a fair business interest and no likelihood of confusion was created); see also Chestnutt v. Tumminelli, D2000-1758 (WIPO Feb. 2, 2001) (finding no bad faith registration or use of the domain name <racegirl.com> where no evidence was presented that Respondent intended to divert business from the Complainant or for any other purpose prohibited by UDRP Rules).
In Response to Complainant’s
contention that Internet users will inherently expect Complainant’s website to
be hosted at the disputed
domain name, Respondent argues that the abbreviation
STM does not have such a universal meaning among users as Complainant
suggests. See ISL Mktg. AG, & The Fed'n. Int’l. de
Football Ass’n. v. Chung, D2000-0034 (WIPO Apr. 3, 2000) (finding that,
although one may argue that “wc” is an abbreviation of WORLD CUP, it is not
likely
the meaning most people would give to those letters); see also Successful Money Mgmt. Seminars, Inc. v.
Direct Mail Express, FA 96457 (Nat. Arb. Forum Mar. 7, 2001) (finding the
domain name <seminarsuccess.com> to be generic and that Respondent
registered
and used the domain name in good faith “because Respondent selected
the name in good faith for its web site, and was offering services
under the
domain name prior to the initiation of the dispute”).
Respondent further asserts that Complainant’s parent company holds the registration for <stm.com> and has not made any use of that domain. According to Respondent, this suggests Complainant has no intent to use the disputed domain name, but rather, wants only to prevent Respondent from using it.
There is no evidence to support a finding that Respondent registered the domain name in bad faith for any of the reason prohibited by UDRP Rules.
DECISION
The Respondent has rights and legitimate interests in the domain name and it was not registered in bad faith. It is therefore ordered, according to STOP policy, that the Complaint is dismissed and subsequent challenges to the domain name, as to this Respondent, shall not be permitted. Complainant's request that the domain name be transferred is denied.
Daniel B. Banks, Jr.,Panelist
Dated: February 11, 2002
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