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Generic Top Level Domain Name (gTLD) Decisions |
Alpha Technologies Inc. v. Swarthmore
Associates L.L.C.
Claim Number: FA0204000112449
PARTIES
Complainant is Alpha Technologies Inc, Bellingham, WA, USA (“Complainant”)
represented by Diane K Jensen, of Alpha Technologies Inc. Respondent is Swarthmore Associates LLC, Pacific Palisades, CA, USA
(“Respondent”) represented by Sherry
Anne Lear, of Law Offices of Sherry
Anne Lear.
The domain name at issue is <alpha.biz>, registered with PSI-Japan, 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.
Judge Irving H. Perluss (Retired) is the
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 7, 2002, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting
a deadline of May 28, 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.
On May 30, 2002,
pursuant to STOP Rule 6(b), the Forum appointed Judge Irving H. Perluss
(Retired) as the single Panelist.
Transfer of the domain name from
Respondent to Complainant.
A. Complainant
1. Alpha Technologies, Inc. is a
Washington State corporation with company headquarters in Bellingham,
Washington, U.S.A. (hereinafter
referred to as “Alpha”). Alpha is engaged in the business of the
design and sale of power protection products and supplies for new and existing
communications
networks. With sales
outlets through North and South America, Europe, Asia and Australia, Alpha is
the world’s leading supplier of power systems
to the broadband communications
industry.
2. Alpha has been using the word, “Alpha,”
as a mark to distinguish its various products in the market place since before
1977. Alpha has sold more than one
million power supplies and celebrated “Twenty-Five Years of Power” in 2001.
3. The trademark, “alpha” (stylized), was
registered with the Canadian Intellectual Property Office as Trademark
Registration No. 239,753
on February 8, 1980; and with the United States Patent
and Trademark Office as Trademark Registration No. 1,187,428 on January 26,
1982. Both the Canadian and the United
States Trademark Registrations have both been timely renewed and will exist for
another ten years,
with expiration dates of 2010 and 2012, respectively. The mark, “alpha,” continues to be placed on
the products, containers, and packaging, which are sold worldwide.
4. In
addition to the Canadian and United States trademark registrations, Alpha has
registered as a trademark, the words, “ALPHA TECHNOLOGIES”
in Argentina and
Brazil, and has pending registration applications in Malaysia and Mexico. Alpha has filed a registration application
for the mark, “alpha,” in stylized design, in both the European Community and
India. Alpha has filed trademark
oppositions to the registration of similar trademarks in International Class 9
with the European Community
and in the country of India.
5. Alpha
owns the web domain name of <alpha.com>
and has used this site since the inception of the web-based domain sites.
6. Respondent,
Swarthmore Associates, LLC, appears to be a law firm which is not a business that
uses the mark, “Alpha,” in relation
to its products, business or services.
7. The
Respondent does not appear to be the owner or beneficiary of a trade or service
mark that is identical to the domain name.
8. Respondent,
before any notice to it of the dispute, did not use or make demonstrable
preparations to use the domain name or a name
corresponding to the domain name
in connection with a bona fide offering of goods or services.
9. It
does not appear that Respondent (as an individual, business, or other
organization) has been commonly known by the domain name.
10. Respondent,
Swarthmore Associates, LLC, or the contact John C. Kirkland at Greenberg
Traurig, Attorneys at Law, has registered the
disputed domain name in bad faith
because it does not appear to have a trademark or service mark, whether
registered or at common
law, utilizing the word “alpha” in any way.
11. It
appears that the Respondent has registered the domain name primarily for the
purpose of transferring the domain name registration
to another business, and
will not use the domain name itself.
12. Respondent
has registered the domain name primarily for the purpose of disrupting the
business of a competitor and this must be the
case, as Swarthmore Associates,
LLC, may have an interest in Del Global Technologies Corp. which is a power
conversion company. Since Del Global
Technologies Corp. does not have the history nor industry recognition with the
word “Alpha,” Respondent could only
be attempting to leverage Alpha’s 25-year
reputation.
13. Swarthmore
Associates, LLC, may be attempting to block potential customers trying to
locate Alpha on the Internet.
B. Respondent
1. Respondent acknowledges that the domain
name is identical to the “ALPHA” trademark used by Complainant for electrical
power equipment.
2. Respondent has a legitimate interest in
the disputed domain name because all that is required is a business concept
which is not in
disaccord with honest practices in commercial matters.
3. Respondent acquired the <alpha.biz>
domain name for use in conjunction with the manufacture and sale of educational
toys by Pacific China Industries, Ltd. (PCI), a Hong
Kong limited company
specializing in manufacturing and distributing various consumer products,
including children’s toys. It has not
been possible to launch the site, because the domain registrar has advised that
it cannot redirect the settings during
the pendency of this STOP proceeding.
4. “Alpha” is the first letter of the
Greek alphabet, and the English word “alpha” is both a noun meaning “first,”
and an adjective meaning
“alphabetical.”
(Indeed, the English word “alphabet” comes from the first two letters of
the Greek alphabet, “alpha” and “beta.”)
The domain name <alpha.biz> is therefore “catchy” and easy
to remember, as well as easily associated with alphabet blocks, games and other
children’s educational
toys, which are the products to be sold via the site.
5. Complainant’s assertion that
“Swarthmore Associates, LLC appears to be a law firm” is erroneous. John Kirkland and his firm are simply
Respondent’s former attorneys, who handled the formation of the limited
liability company, as
well as the registration of the domain name, on behalf of
their clients.
6. Alpha Technologies, Inc. is not the
only company that uses, or has the right to use, the word “ALPHA.” There are numerous companies, products and
services, in a multitude of different settings that use the word “ALPHA.” These include, for example, Alpha Bank
<alpha.gr>, Alpha Software <alphasoftware.com>, Alpha International
<alphacourse.org>,
Alpha Company Ltd.
<micforg.com.jp/hajimee.html>, and numerous fraternities and sororities, e.g., <alkphaphi.org>,
<apo.org>, and <pad.org>, among others.
7. The <alpha.biz> site will
not make a trademark use of the word “ALPHA” nor any use of Complainant’s
stylized logo, nor will it offer any goods or
services even remotely similar to
the power supplies and electrical apparatus of Alpha Technologies, Inc. Instead, the word “alpha” will simply be
used in a generic sense. Respondent has
not used, and does not intend to use, “ALPHA”
in a manner that infringes upon Complainant’s trademark. The use of a generic word in a domain name
address is completely proper.
8. The educational toys to be provided at
the <alpha.biz> domain name are completely different than the
power protection supplies for communications networks that are offered by
Complainant. There is no likelihood of
confusion, and, therefore, no trademark infringement.
9. Complainant has failed to submit any evidence
establishing bad faith by Respondent in registering the disputed domain name
because
there is none. It is not bad
faith or improper to use a generic domain name in its generic sense.
10. Respondent did not register the disputed
domain name in order to prevent the Complainant from reflecting its trademark
in a corresponding
domain name. To the
contrary, Complainant already has a domain name, <alpha.com>, that
reflects its trademark.
11. Respondent did not register the domain
name primarily for the purposes of selling the domain name registration to the
Complainant
or to a competitor of Complainant, for valuable consideration in
excess of Respondent’s documented out-of-pocket costs directly related
to the
domain name. To the contrary,
Respondent has made no attempt of any kind to contact Complainant or any of its
competitors, or to sell the domain
name to Complainant or to its competitors.
12. Respondent did not register the domain
name primarily for the purpose of disrupting the business of a competitor. To the contrary, the <alpha.biz>
website will not compete at all with Complainant. They are completely different
businesses. Complainant operates
a very successful power supply company, while the Respondent’s website will be
used selling children’s toys.
Respondent has no interest in disrupting Complainant’s business.
13. Respondent has no agreement with Del
Global Technologies Corp. to allow it to use the <alpha.biz>
domain name; it has had no conversations, discussions or communications of any
kind with Del Global Technologies Corp., and, indeed,
it has never even heard
of Del Global Technologies Corp.
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.
STOP
Policy ¶4(a)(i)
Complainant has worldwide trademarks
utilizing the “ALPHA” mark, including a registration with the United States
Patent and Trademark
Office on January 26, 1982. It has used the mark “ALPHA” since October, 1977.
Accordingly, the Panel finds that
Complainant does have rights to the mark.
The Panel further finds and concludes that Complainant’s mark and the
disputed domain name are identical, as acknowledged by Respondent.
STOP
Policy ¶4(a)(ii)
STOP Policy ¶4(c) functions similarly to
UDRP ¶4(c) in providing ways for a Respondent to demonstrate its rights or
legitimate interests
in a domain name.
Under STOP Policy ¶4(c), the Respondent
may demonstrate its rights or interests by proving:
i. The
Respondent is the owner or beneficiary of a trade or service mark that is
identical to the domain name; or
ii. Before
any notice to the Respondent of the dispute, its use of, or demonstrable
preparations to use, the domain name or a name corresponding
to the domain name
in connection with a bona fide offering of goods or services; or
iii. The
Respondent (as an individual, business, or other organization) has been
commonly known by the domain name, even though it has
acquired no trademark or
service mark rights.
Respondent has submitted no evidence to
establish that it falls within the ¶4(c)(i) or ¶4(c)(ii), and the Panel finds
and concludes
that Respondent has not so demonstrated.
With respect to ¶4(c)(ii), Respondent
contends that he has gone as far as he could in light of the STOP process in
preparing to use
the disputed domain name in the sale of toys.
The Panel finds and concludes that this
assertion by Respondent is not sufficient.
STOP
Policy ¶4(a)(iii)
Finally, we must ascertain whether the
bad faith requirement of STOP Policy ¶4(a)(ii) has been met. This is not the
case here, as will be seen.
STOP Policy ¶4(b) provides four examples
of circumstances that, if proven, will satisfy the bad faith requirement of
STOP Policy ¶4(a)(ii). Paragraph 4(b)
makes clear that these are not the exclusive determinants of bad faith.
To prove bad faith under the STOP Policy,
a Complainant need only prove either
registration or use of the domain
name in bad faith, not both as the UDRP requires. STOP Policy ¶4(b) is otherwise similar to UDRP ¶4(b).
STOP claims differ from UDRP claims in
one very significant and fundamental way.
Unlike the UDRP, under STOP when a registrant (Respondent) registers a
domain name for which an IP Claim was previously filed, the
registrant is
notified of the potential for trademark infringement before being allowed to
proceed with the registration. One
Panel has recognized that registration of a domain name despite such notice, in
appropriate circumstances, could “almost preclude
any possibility of
registration in good faith of a domain name. . . .” Gene Logic, Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4,
2002) (finding bad faith where Respondent registered the <genelogic.biz>
domain name “with
full knowledge that his intended business use of this domain
name was in direct conflict with a registered trademark of a known competitor
in exactly the same field of business”).
First, however, there is no evidence that
Respondent registered the domain name primarily for the purpose of selling,
renting, or
otherwise transferring the name to Complainant or a competitor for
valuable consideration in excess of Respondent’s out-of-pocket
costs directly
related to the domain name which is the bad faith requirement of STOP Policy
¶4(b)(i). Respondent denies this
assertion. The Panel finds in favor of Respondent
and so concludes.
It is of interest to note that it has
been held that, where a domain name is generic, as here, even an offer for sale
by Respondent
will not establish bad faith.
See John Fairfax Publ’n. Pty Ltd. v. Domain Names 4U, D2000-1043
(WIPO Dec. 13, 2000) (finding legitimate interests and no bad faith registration
where the Respondent is a seller of
generic domain names); see also Lumena s-ka zo.o. v.
Express Ventures LTD, FA 94375 (Nat. Arb. Forum May 11, 2000) (finding
no bad faith where the domain involves a generic term and there is no direct
evidence
that Respondent registered the domain name with the intent of
capitalizing on Complainant’s trademark interest).
Under UDRP ¶4(b)(ii), a Complainant may
demonstrate Respondent’s bad faith by showing that Respondent registered the
domain name for
the purpose of preventing Complainant from registering domain
names that reflect its mark(s), provided Respondent has engaged in
a pattern of
such conduct. Under STOP Policy
¶4(b)(ii), the Complainant may similarly prove bad faith by showing the
Respondent registered the domain name for
the purpose of preventing Complainant
from registering domain names reflecting its mark(s). However, under the STOP provision, there is no “pattern” of
conduct requirement. Thus, Panels have
inferred bad faith under STOP Policy ¶4(b)(ii) when only one domain name was at
issue and no prior history of trademark
infringement was established. (See Peachtree Software v. Scarponi, FA
102781 (Nat. Arb. Forum Jan. 23, 2002) (finding bad faith under STOP Policy
¶4(b)(ii), noting that it was reasonable to conclude
Respondent registered
<peachtree.biz> with the intent to prevent Complainant from reflecting
its PEACHTREE mark in a corresponding
domain name, given Respondent’s knowledge
of Complainant’s mark and Respondent’s lack of rights or interests in the
mark)).
But here, secondly, there is no evidence
of such conduct by Respondent, either by pattern or otherwise. The Panel so finds and concludes.
STOP Policy ¶4(b)(iii) is nearly
identical to ¶4(b)(iii) of the UDRP. It
states that bad faith is established when a Respondent registers a domain name
“primarily for the purpose of disrupting the business
of a competitor.”
While the word “competitor” has often
been broadly interpreted under both the STOP Policy and the UDRP to encompass
claims by entities
that might not traditionally be viewed as competing, (see Tufts
Univ. v. Creation Research, FA 102787 (Nat. Arb. Forum Jan. 18, 2002)
(finding bad faith under STOP Policy¶4(b)(iii) where Complainant was a
university and
Respondent was a research company); see also Mission Kwa Sizabantu
v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” under
the UDRP as “one who acts in opposition to another and the context does
not
imply or demand any restricted meaning such as commercial or business competitor”)).
Complainant and Respondent clearly are not
in competition, i.e., power supply vis-à-vis
toys.
Thus, thirdly, here, this aspect of “bad
faith” has not been established. The
Panel so finds and concludes.
STOP Policy ¶4(b)(iv) is also essentially
identical to ¶4(b)(iv) of the UDRP. It
states that bad faith is established when a Respondent, by using the domain
name, has intentionally attempted to attract, for commercial
gain, Internet
users to its website 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 the website or location or of a product or
service on the website location.
Fourthly, Complainant makes this
assertion, but has failed to prove it.
It is of great importance to note that
the linchpin of Respondent’s defense is that it intends to utilize the generic
disputed domain
name in a non-trademark manner, i.e., as an address.
If this is so, and it has not been shown
otherwise, there can be no trademark infringement or the demonstration of bad
faith in a
domain name dispute.
When a non-trademark use is made, that
does not depend for its value on the existence of the trademark, it is then
appropriate to
use the trademark as another’s domain. (See United States of America Dep’t of the Navy NAVSEA v. NAVYWEB,
FA105977, (Nat. Arb. Forum May 21, 2002); see also Brookfield Communications, Inc. v. West Coast Entm’t
(9th Cir. 1999) [1999] USCA9 225; 174 F.3d 1036, 1065-1066; see also Avery
Dennison Corp. v. Sumpton (9th Cir. 1999) [1999] USCA9 436; 189 F.3d 868).
DECISION
Based on the above findings and
conclusions, the Complaint herein is dismissed. Subsequent challenges under the Policy
against the subject domain name shall be permitted.
JUDGE IRVING H. PERLUSS
(Retired), Panelist
Dated:
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URL: http://www.worldlii.org/int/other/GENDND/2002/909.html