Generic Top Level Domain Name (gTLD) Decisions

START-UP TRADEMARK OPPOSITION POLICY

DECISION

Dylog Italia S.P.A. v. Dylog Associates, Inc.

Claim Number: FA0204000110861

PARTIES

Complainant is DYLOG ITALIA S.P.A., Torino, ITALY (“Complainant”).  Respondent is DYLOG ASSOCIATES, INC., Litchfield Park, AZ, USA (“Respondent”).

           

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <dylog.biz>,  registered with Network Solutions, Inc.

PANEL

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.

            Judge Richard B. Wickersham, (Ret.) as Panelist

PROCEDURAL HISTORY

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 May 8, 2002.

On May 9, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 29, 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 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 Submission was timely received and determined to be complete on May 29, 2002.  Respondent’s Additional Submission was timely received and determined to be complete on June 3, 2002.

On June 10, 2002, pursuant to STOP Rule 6(b), the Forum appointed Judge Richard B. Wickersham, (Ret.), as the single Panelist.

RELIEF SOUGHT

Transfer of the domain name from Respondent to  Complainant.

           

PARTIES’ CONTENTIONS

A.   Complainant

This Complaint is based on the following factual and legal grounds:

[a]        The domain name <dylog.biz> is identical to the trademark DYLOG, property of Dylog Italia S.p.A. (The Complainant) (see US Trademark: serial n. 75/934629; European Community Trademark: reg. Number 1606318; International Registration n. 530583).  Therefore, the exclusive right to use this trademark is of Dylog Italia S.p.A. (The Complainant).

[b]        The Respondent Dylog Associates Inc. has no right in respect of the domain name <dylog.biz> because the trademark Dylog is exclusive property of Dylog Italia S.p.A. (the Complainant).  Dylog Italia S.p.A. (the Complainant) uses the name and the mark “Dylog”, since its foundation, in 1980, and since this date Dylog Italia S.p.A. is commonly known by the name and the mark “Dylog” all over the world.

[c]        The domain name <dylog.biz> has been registered in bad faith by Dylog Associates Inc. with the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant.  With the same purpose the Respondent has registered the domain <dylog.com>, which the Respondent has never used after the registration and for which there are negotiations between Dylog Italia and Dylog Associates in order to transfer the domain name <dylog.com> to Dylog Italia against payment of a sum to Dylog Associates.

B.   Respondent

This Response specifically responds to the statements and allegations contained in the Complaint and includes any and all bases for the Respondent to retain registration and use of the disputed domain name.  STOP Rule 5(c)(i).

[a.]       The domain name <DYLOG.BIZ> is similar to the mark “DYLOG”.  However, Respondent, DyLog Associates, Inc., has been an Arizona corporation doing business since July 1992.

Complainant’s claim of exclusive right to use the mark “DYLOG” is applicable to only those goods and services with which the mark is used.  Additionally, Complainant refers to a U.S. Trademark, providing an impression that the mark is registered in the United States.  Upon review of the status of said registration, it was determined that the Complainant’s application for registration has been suspended.  Therefore, the Complainant does not own a registered mark for “DYLOG” in the United States.

[b.]       Respondent should be considered as having rights and legitimate interests with respect to <DYLOG.BIZ>.   The Respondent, DyLog Associates, Inc., is an active Arizona corporation, which was incorporated to conduct business as a corporate entity in July 1992.  Thus, the Respondent has been commonly known as DyLog Associates, Inc. for greater than nine years and registered <DYLOG.BIZ> in connection with the bona fide offering of goods or services.

[c.]       There are no circumstances indicating that Respondent registered <DYLOG.BIZ> for the purposes of selling, renting, or otherwise transferring the domain name registration to the Complainant for valuable consideration.  The Complainant alleges that the Respondent registered <DYLOG.BIZ> with the purpose of selling it to the Complainant because of negotiations between the Respondent and the Complainant to transfer the domain name <DYLOG.COM> for payment.  The Complainant failed to disclose that the negotiations for the transfer of the domain name <DYLOG.COM> were initiated by the Complainant in December 2001.

[d.]      The Complainant also alleges that the Respondent has never used the registered domain name <DYLOG.COM>.  Contrary to this statement, the Respondent uses and is known by the domain name <DYLOG.COM> for all DyLog Associates, Inc. related e-mail correspondence.  The Complainant is fully aware of this use and acknowledged this use in Section 4 of the filed Complaint.

[e.]       In that the domain name <DYLOG.COM> is not the subject of this arbitration, the use and registration of <DYLOG.COM> is not at issue.  The only two domain names currently registered to Respondent are <DYLOG.COM> and <DYLOG.BIZ>.  Both registrations relate directly to the Respondent’s business of providing consulting services to the nuclear, automotive and alternative fuel industries.  Respondent, DyLog Associates, Inc., has never registered any domain that does not pertain to a commercial business entity.

[f.]       Additionally, the Respondent, DyLog Associates, Inc., did not register <DYLOG.BIZ> for the purpose of disrupting the business of the Complainant and has not attempted to attract any Internet users by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the Respondent’s web site or of a product or service on the Respondent’s web site.  Respondent does not have a web site for <DYLOG.BIZ> (Respondent’s development plans were suspended as a result of this proceeding, and a web site for <DYLOG.COM> is currently under development).  Thus, a disruption of business or the creation of the likelihood of confusion by Respondent’s web site is not possible.  Moreover, it is also unlikely that any consumer of the Complainant’s goods and services (software, Computer programs, electrical and scientific apparatus, non-destructive X-ray machinery for inspection and quality control, in the food industry and software for image processing computer programming for image processing) would be confused with the consulting services offered by the Respondent, DyLog Associates, Inc.

C.   Additional Submissions

Complainant Dylog Italia S.p.A. filed a timely Additional Submission which was carefully reviewed by the Panel.  The information provided a supplement to the allegations of the Complaint and argued that Dylog Italia S.p.A. was established in 1980 and for the past twenty-two years the name “Dylog” is well-known all over the world with reference to the business of Dylog Italia S.p.A.   The Additional Submission reviewed the various registrations of the domain name and alleged the bad faith of the registration of DyLog Associates, Inc.  The Respondents filed a timely reply to the Complainant’s Additional Submission, which was carefully reviewed by the Panel.   The Respondent answered various assertions made by the Complainant and alleged that the Respondent DyLog Associates, Inc. has been a valid commercial entity with presence in the United States since incorporation in 1992 and, thus, has established common law trademark rights in the United States.  Respondent notes that it incorporated under the name of DyLog Associates, Inc., a name chosen specifically as a combination of the names of the incorporator’s children – Dylan and Logan – thus, the use of a “D” and a “L” in the name.  Respondent suggests that the Complainant brought the Complaint in an attempt at Reverse Domain Name Hijacking.

FINDINGS

The Panel finds that the Complainant does have rights in the mark.   The Panel also, however, determines that Respondent has rights and legitimate interests in the disputed domain name.  Further, we find that the evidence does not support a finding that Respondent registered or used the domain name in bad faith.  As such, we will not order the transfer of the disputed domain name to the Complainant.  Accordingly and finally, the Panel will dismiss the Complaint.  No further challenges are pending against this domain name under the STOP Policy.

DISCUSSION

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 and 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 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 assets 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.

K2r Produkte AG v. Trigano, D2000-0622 (WIPO Aug. 23, 2000) (finding that the Respondent had rights and legitimate interests in the domain name <k2r.com> under UDRP ¶ 4(a)(ii) where he registered the domain name for a website in connection with his mother’s store, “KIRK ET ROSIE RICH”).

Open Sys. Computing AS v. Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding that Respondent was not acting in bad faith by discussing a sale when Complainant initiated an offer to purchase it from Respondent).

We adopt the argument, reasoning and logic of Respondent’s Response to the Complaint and Respondent’s Response to Complainant’s Additional Submission, as our own.  See Parties Contentions, B. Respondent, above, [a. to f.].

In Complainant’s Additional Submission, the status of the trademark “DYLOG” in the United States is discussed.  Complainant suggests that the suspension of the trademark application is temporary in nature.  Respondent points out, however, and we agree, that under United States Trademark Law similarity in sound (assonance) is a factor in determining the likelihood of confusion between marks.   Citing, Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228 USPQ 461 (TTAB 1985) (SEYCOS and design for watches held likely to be confused with SEIKO for watches and clocks).  Therefore, the similarity in sound between “DIALOGUE” and “DYLOG” is hardly a “marginal reason” for suspension of the application for registration.  Moreover, it is likely that the Complainant’s application for the registration of the mark “DYLOG” will be refused if the mark “DIALOGUE” is granted registration (its application is not in suspension, the company Dialogue was first to file application for registration and its goods and services are in the same International Class 009 as the Complainant’s goods and services).  Additionally, the application for registration of the mark “DYLOG” has been in suspension since June 29, 2001.

The Complainant states that it has had a commercial presence in each state in the United States “[s]ince the Nineties.”  However, the Complainant provides no proof of this statement.

The Respondent, DyLog Associates, Inc., has been a valid commercial entity with presence in the United States since incorporation in 1992.  (Documentation provided in Annex 1 to the Response).  Thus, DyLog Associates, Inc. has established common law trademark rights in the United States.

Additionally, a review of two of the top level domains registered to the Complainant, <DYLOG.ORG> and <DYLOG.NET>, reveals that the Complainant did not register its first top level domain containing “DYLOG” until greater than two years after the Respondent registered <DYLOG.COM>.

It has become apparent to the Respondent that, as this proceeding progresses; the Complainant’s proposal to acquire the domain name <DYLOG.COM> was made in bad faith.  The Complainant did not attempt to acquire <DYLOG.COM> from the Respondent until after the Complainant determined that the Respondent, DyLog Associates, Inc., had applied for the domain name <DYLOG.BIZ>.  This is all the Complainant uses to aid in its claim of bad faith registration on the part of the Respondent, although the Respondent made application/advance request to register the domain name greater than five months before the Complainant’s proposal.

The Complainant would have the Panel believe that the Respondent incorporated a company in 1992, and maintained the corporation active, for the sole purpose of registering the domain names <DYLOG.COM> and <DYLOG.BIZ> with intent to sell them.  This is clearly not the case.  In fact, the Respondent incorporated under the name of DyLog Associates, Inc., a name chosen specifically as a combination of the names of the incorporator’s children – Dylan and Logan — thus, the use of capital “D” and a capital “L” in the name.

Additionally, it is unlikely that the Complainant is capable of assessing the Respondent’s use of its domain name <DYLOG.COM> as it relates to the promotion of the Respondent’s specific business.  In fact, the use of the domain name for all of the Respondent’s e-mail correspondence has been very effective; it has been extremely well received by DyLog Associates, Inc. clients and has proven very customer and user friendly.  Therefore, the Respondent did not register <DYLOG.BIZ> domain name, or any other domain name, in bad faith.   Panel agrees with this argument on the part of Respondent and with the conclusion that Respondent did not register <DYLOG.BIZ> domain name, or any other domain name in bad faith.

DECISION

The Panel finds that the Complainant does have rights in the mark.  The Panel also, however, determines that Respondent has rights and legitimate interests in the disputed domain name.  Further, we find that the evidence does not support a finding that Respondent registered or used the domain name in bad faith.  As such, we will not order the transfer of the disputed domain name to the Complainant.  Accordingly and finally, the Panel will dismiss the Complaint.  No further challenges are pending against this domain name under the STOP Policy.

                                                           

                                                                       

                                                JUDGE RICHARD B. WICKERSHAM, (Ret. Judge), Panelist

                                                                       

                                                                                                Dated: June 18, 2002