|
|
Home
| Databases
| WorldLII
| Search
| Feedback
Generic Top Level Domain Name (gTLD) Decisions |
Telamon Corporation v.
Telamon Systems
Claim Number:
FA0204000112500
PARTIES
Complainant
is Telamon Corporation, Carmel, IN, USA (“Complainant”) represented by Laura
Gridley. Respondent is Telamon
Systems, Finchampstead Berks, UNITED KINGDOM (GREAT BRITAIN) (“Respondent”)
represented by Emma Riach, of Laytons Solicitors.
The
domain name at issue is <telamon.biz>, registered with Network
Solutions, 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.
R.
Glen Ayers served 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 27, 2002; the Forum
received a hard copy of the Complaint on
April 26, 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
the Start-up Trademark Opposition Policy (the “STOP Rules”).
A
timely Response was received and determined to be complete on May 28, 2002.
Complainant
submitted a timely Additional Submission on May 29, 2002. Respondent submitted a timely Additional
Submission on May 31, 2002.
On
June 20, 2002, pursuant to STOP Rule 6(b), the Forum appointed R. Glen Ayers as
the single Panelist.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
Complainant
alleges that it holds a registered U.S. trademark “Telamon.” It alleges its first use of the name was in
1987. The domain name is identical to
the Complainant’s mark.
Complainant
alleges that Respondent has no rights or legitimate interests in the domain
name under STOP Rule 3(c)(ix)(2) and STOP
Policy ¶ 4(a)(ii) because “respondent’s
business practices (network integration and support for computer systems) under
the name
Telamon Systems infringe....”
Further, Complainant says it “has the legal right over the respondent to
use telamon.biz given the trademark....”
Complainant
has not investigated Respondent’s ownership of trademarks.
Complainant
alleges Respondent is not using the domain name but that Complainant intends to
use the name.
As
to “bad faith”[STOP Rule 3(c)(ix)(3) and STOP Policy ¶ 4(a)(iii)], Complainant
says that there is a “conflict of interest to the
business practices outlined
in the Complainant’s trademark agreement.”
Complainant says it has no knowledge of what Respondent intends to do
with the name, but that Complainant intends to use the name
in compliance with
its trademark.
Complainant
asserts that it filed an IP Claim and appropriate registration documents in an
attempt to procure the “.biz” domain name.
B.
Respondent
Respondent
admits that the domain name and trademark are identical.
But,
Respondent alleges, with supporting documents, that it holds a United Kingdom
(U.K.) trademark in the name “Telamon,”
which it registered in 1998.
If
this were not enough to establish rights in the name, Respondent asserts: (1) that it had sales of £2.89 million under
that mark in the period of April, 2001, to March, 2002; (2) that it had held
and used
the domain name <telamon.co.uk> since January, 1998; and (3)
that it properly applied for the “.biz” domain name (it alleges
that it filed
an IP Claim for the name).
Once
it received the name, it prepared to use the name, but its preparations were
halted by the filing of the Complaint.
The registration was awarded only 23 days prior to the filing of the
Complaint).
Respondent
alleges (mistakenly) that Complainant holds <telamon.com> and that it
wished to use”.biz” for the obvious commercial
reasons.
As
to “bad faith”, Respondent reasserts its earlier allegation, and denies any
intent to block Complainant’s commercial activities
or any intent to resell the
name.
Respondent
alleges that a number of persons applied for the domain name and that it was
chosen by random selection.
As
an aside, Respondent alleges that Complainant did not timely file for the name
as an “IP Claim” (a filing by a trademark or other
intellectual property
holder) because Complainant filed after the last date for IP holders to file
for “.biz” names.
C.
Additional Submissions
Complainant,
in it additional submission, replies that it does not hold
<telamon.com>. Complainant also
re-alleges a timely filing of its “IP Claim” application. Complainant asserts prior use of the mark
(since 1985) and that its annual sales are $450 million (U.S.).
In
is additional submission, Respondent does not dispute that Complainant does not
hold <telamon.com> but asserts that Respondent’s
registration of <telamon.biz>
was proper. Respondent asserts that
Complainant’s prior use of the trademark is irrelevant to a dispute under STOP.
Obviously,
the domain name <telamon.biz> and Complainant’s U.S. mark,
“Telamon” are identical, but Respondent’s U.K. mark “Telamon” is also
identical.
Clearly,
as the holder of a valid U.K. mark, Respondent has legitimate rights in the
name.
Finally,
Complainant really offered no evidence of “bad faith”.
Respondent,
however, showed that it properly applied for the “.biz” name. Respondent was told that there were multiple
applicants, all apparently with “IP Claims” to the name. Respondent was then awarded the name by
random selection.
As
in High Speed Prods. v. Blanco, FA 102951 (Nat. Arb. Forum Mar. 6,
2002), a mark holder certainly has “rights” in a name. Respondent has also used the domain name
<telamon.uk.co> for several years.
This use also establishes rights in the name. Am. Airlines, Inc. v. Webtoast Internet Servs., Inc., FA
102954 (Nat. Arb. Forum Feb. 24, 2002).
Also, the Respondent is commonly known by the name “Telamon.” Gene Logic, Inc. v. Bock, FA 1030 42
(Nat. Arb. Forum Mar. 4, 2002).
Complainant
has shown no evidence of “bad faith” under the Rules or Policy for STOP. Respondent, holder of a registered
trademark, won the random selection process in competition with others,
including Complainant,
all apparently holding rights in the name.
Complainant
has wholly failed to show any reason why the domain name should be transferred
under STOP.
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 rights in the mark; it
holds a U.S. trademark. The mark
and domain name are identical.
Respondent has rights in the mark; it holds a
registered trademark in the U.K. It has
used the mark and is commonly known by the mark.
Registration or Use in Bad Faith
The Complainant has demonstrated no bad faith; it has
alleged no facts relevant to the issue of bad faith. As set out above, Complainant lost the registration race to
Respondent who has equivalent, competing rights to the domain name.
DECISION
The Complaint is dismissed; the domain name will not
be transferred; and, subsequent challenges under the Policy against this domain
name shall be permitted.
R. Glen Ayers, Panelist,
Dated: July 1, 2002
WorldLII:
Copyright Policy
|
Disclaimers
|
Privacy Policy
|
Feedback
URL: http://www.worldlii.org/int/other/GENDND/2002/995.html