STMicroelectronics Inc v. Stefano Trabalza
Claim Number: FA0110000100637
The Complainant is STMicroelectronics, Inc., Carrollton, TX (“Complainant”) represented by Molly Buck Richard, of Strasburger & Price, LLP. The Respondent is Stefano Trabalza Morphos Ltd, Szeged, Hu (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <stmicroelectronics.info>, registered with Namebay.com.
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.
James Alan Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on October 15, 2001; the Forum received a hard copy of the Complaint on October 16, 2001.
On October 25, 2001, Namebay.com confirmed by e-mail to the Forum that the domain name <stmicroelectronics.info> is/are registered with Namebay.com and that the Respondent is the current registrant of the name. Namebay.com has verified that Respondent is bound by the Namebay.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 25, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 14, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
A timely response was received and determined to be complete on November 14, 2001.
On November 16, 2001 an additional submission was received from the Complainant. The additional submission was in compliance with Supplemental Rule 7.
On November 20, 2001 an additional submission was received from Respondent. The additional submission was in compliance with the Forum’s Supplemental Rule 7.
On December 4, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James Alan Crary as Panelist.
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
The Complainant was a Delaware Corporation with its principle office in Carrollton, Texas.
Complainant is the owner of numerous proprietary marks used in connection with a broad range of semi-conductor integrated circuits and other devices used in microelectronics applications.
The Complainant is the owner of numerous trademarks and services marks worldwide including ownership of the mark STMicroelectronics in Hungary where the Respondent is located. <STMicroelectronics.info>, the disputed domain name was registered with NameBay.com on October 2, 2001.
The disputed domain name is confusingly similar to Complainant’s marks since it consists of Complainant’s trademark and the new URL suffix “info”.
Complainant has no relationship with Respondent who is neither a licensee of the Complainant nor authorized to use Complainant’s marks.
Potential customers of the Complainant were likely to be confused into believing that there was some affiliation, connection, sponsorship, approval, or association between Respondent and Complainant when in fact none existed.
Respondent has no rights or legitimate interests in the domain name. Respondent is known by the name Morphos Ltd. and is not commonly known by the name STMicroelectronics. The Respondent was not using the domain name in connection with a bona fide offering of goods and services nor was it making a legitimate non-commercial for fair use of the domain name.
Complainant asserted that Respondent registered and used the domain name in bad faith. It was asserted that Respondent intentionally intended to attract for commercial gain consumers to its web site by creating likelihood of confusion with Complainant’s marks as to the sponsorship, affiliation, or endorsement of Respondent’s web site. Consumers searching for Complainant on the Internet who entered Complainant’s name and the “info” (URL) would be surprised and confused by the appearance of a domain name registration page with no affiliation to the Complainant.
Respondent’s failure to use the domain name to sell or provide any goods or services was evidence of bad faith registration and use.
Respondent had waited for one day after the expiration period of registration in which registrants with legitimate rights and trademarks could register domain names to register the disputed domain name. This fact indicated Respondent knew it had no legitimate right in the mark and registered and used the domain name in bad faith. Thereafter Respondent offered to rent Complainant the disputed domain name for a 3-month period for $2900.
Respondent maintained that the disputed domain name <STMicroelectronics.info> was owned by Excelsa Co-op. This sale was pursuant to a September 29, 2001 agreement which was completed on October 10, 2001. On October 19, 2001 documents verifying a change of ownership were forwarded to NameBay.com, the domain name registrar.
It was asserted that Excelsa Co-op was engaged in a variety of businesses including Internet development. The purpose of the business was to enable users of the Internet to establish contact with large companies all over the world in an easier, simpler manner, free of charge. By creating the web page it was asserted that Excelsa Co-op aims to contribute to the development of the Internet.
Respondent maintained that Complainant had been free to register during the sunrise registration period, “where solely companies with trademark rights are permitted to register”. Respondent registered the disputed domain name in the open period (October 1, 2001) “where anyone was free to do so”. Complainant could register its trademark under other top-level domains such as “.net”, “.org”, “.hu”, or “.fr”, etc.
Respondent admitted the Complainant’s assertions as to the trademarks and service marks owned by the Complainant. While it was true the disputed domain name strongly resembled Respondent’s trademark the two were not the same.
The disputed domain name was registered in good faith, with the intention to create a web page accessible free of charge.
Respondent had not acted out of malice; there was no intention of benefit from its registration, intent to spoil the image of Complainant or intent to misled Complainant’s customers. Respondent reiterated that the disputed domain name was registered in the open period and the registration was not in violation of any applicable rules.
Respondent did not write nor was it familiar with claimant’s exhibit 52 (an e-mail letter addressed to Complainant offering to rent the disputed domain name for a period of three month for $2900).
Respondent “acknowledged” Complainant’s assertions concerning use of a false designation of origin and false description or representation likely to cause confusion, mistake, or deception as to the affiliation, between Complainant and Respondent. Respondent believed it had not caused inconvenience to the Complainant since no functioning web page was created. Respondent had not caused damage to Complainant’s “image”. Respondent denied that it had any intention of misusing the disputed domain name and that it should have the “possibility” to keep the domain name.
C. Additional Submissions
Complainant moved to strike the Response. Complainant had filed its action against Respondent Stefano Trabalza. Mr. Trabalza continued to be listed as the registrant of the domain name and only the administrative and billing contacts were changed to Excelsa Co-op. Complainant maintained that Morphos Ltd and Excelsa Co-op were related entities. Since Morphos Ltd was not the registrant, Mr. Trabalza had filed no Response. Respondent was now in default under the Policy.
The Response did not include the mandatory language in Rule 5(b)(viii) of the UDRP Rules. On that basis the Response should be stricken and not considered.
Two e-mail offers were received from Mr. Trabalza dated October 1 and October 5, 2001 respectively. Both originated from Casabella@Casabella.hu. The second e-mail indicated that different conditions from the prior offer to lease the disputed domain name would be in effect after October 15, 2001. Both of the e-mails came from Morphos after it purportedly had agreed to sell the domain name to Excelsa.
<Casabella.hu> appeared to be related to Morphos as Morphos advertises the services of both Morphos and Casabella. The address listed on the web site for Casabella is the same address given for Morphos Ltd in it’s Response. Giovanni Bertotto was listed as the same contact person as Excelsa Co-op and at Casabella. It was submitted that Morphos anticipated that this action would be filed and had attempted to transfer the domain name to a related entity that it controlled in order to defeat Complainant’s attempt to obtain the disputed domain name.
The Response was inconsistent in that Morphos sought to retain the disputed domain name on the one hand, on the other hand it was claimed that the disputed domain name had been transferred to Excelsa Co-op.
Respondent also submitted an additional Response. It was asserted that the Respondent was Morphos Ltd and not Stefano Trabalza. Morphos had sold the disputed domain name to Excelsa. The domain name was “required” by Morphos Ltd. (acquired?). The transaction was not completed because “NameBay did not have the possibility to change the name of the registrar since the domain name <stmicroelectronics.info> was blocked.”
1. Complainant is the owner of the trademark STMicroelectronics.
2. Respondent concedes the existence of the mark and thus issue is undisputed.
3. Respondent is Stefano Trabalza.
4. Respondent is known by the name Morphos Ltd.
5. Respondent registered the disputed domain name <STMicroelectronics.info> on October 2, 2001.
6. Respondent attempted transfer of <STMicroelectronics.info> was not permitted since it was premature, under the Registry-Registrar Agreement.
The “.info” is the first top-level domain (TLD) to come into use since “.com”. Afilias LLC is the ICANN selected registry for “.info” registrations.
Beginning July 25, 2001 to date more than 700,000 “.info” registrations have been submitted. Registration began with an initial Sunrise Period in which owners of registered trademarks and service marks could register in the “.info” domain. The Sunrise Period was designed to protect intellectual property, prevent cybersquatting and to provide time for dispute resolution.
On October 1, 2001, Real Time Registration (“Land Rush”) began, the startup period ended, and “.info” domain names became available for open registration in real time, on a first-come, first-served basis.
Afilias LLC of Dublin, Ireland is under contract with ICANN to be the Registrar for domain names within the “.info” top-level domain. Under Registry-Registrar Agreement registered name holders are required to submit to proceedings commenced under the URDP.
Exhibit F of the Registry-Registrar Agreement provides that registrations made during the Land Rush period may not be transferred until sixty days after the conclusion of the Land Rush period, absent the order of a URDP Panel, or Court of competent jurisdiction.
Respondent’s attempted transfer of the domain name to either Morphis LTD or Excelsa Co-op could not be accomplished because transfer was not authorized under the Registry-Registrar Agreement. As a consequence the Panel concluded, as did Afilias the Registry, that Stefano Trabalza was the registered holder of <stmicroelectronics.info>, and the Respondent in this case.
The Respondent failed to demonstrate any of the circumstances indicating rights or legitimate interests in the disputed domain name. Respondent’s submissions are insufficient to demonstrate use or demonstrated preparations for use in connection with a bona fide offering of goods and services. Rather it appeared to the Panel that the name was registered so it could be offered for rent by the Respondent at almost $1000 per month.
Respondent is known as Morphos Ltd and was never commonly known by the domain name herein.
Respondent does not assert nor does the record support that Respondent was making a legitimate non-commercial or fair use of the domain. Respondent’s e-mail offers to rent the domain name to Complainant, constituted an unfair commercial use of the domain name for commercial gain.
The Response and the additional response submitted by Morphos Ltd were accepted for the purposes of this discussion as the Response of the Respondent Stefano Trabalza. Since the Response failed to include the mandatory language required in Rule 5(b)(viii) of the UDRP Rules it was given little weight by the Panel.
Paragraph 15(a) of the UDRP 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 Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
Identical and/or Confusingly Similar
The Respondent acknowledged Complainant’s assertions regarding its ownership of the trademark STMicroelectronics. The Panel concluded that the disputed domain name is identical to Complainant’s trademark. The addition of the top-level domain name “info” to Complainant’s mark does not defeat a claim that they are identical. See World Wrestling Federation Entertainment Inc. v. Rapuano, D2001-0010 (WIPO May 23, 2001). See also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000).
Rights or Legitimate Interests
The Panel found that the Respondent had no right or legitimate interest in <STMicroelectronics.info>. Passive holding of <STMicroelectronics.info> combined with the absence of any evidence of an attempt to develop it indicates that Respondent was not making a bona fide offering of goods or legitimate or fair use of the domain name. See American Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001). See also Bloomburg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001). Apparently Respondent was under the mistaken assumption that it was permitted to register the infringing domain name.
“We registered the domain name <STMicroelectronics.info> in the open period, where anyone was free to do so.”
While in the broadest sense that is true, it is also true that abusive domain name registrations are a subject to the URDP dispute resolution process. Respondent did not gain legitimacy or right in the disputed domain name by mere registration.
Registration and Use in Bad Faith
The Panel concluded that the Respondent registered and used the disputed domain in bad faith. In two separate e-mails addressed to the Complainant dated October 1 and October 5, 2001, Respondent offered to rent <STMicroelectronics.info> to the Complainant for $2900. The first e-mail was sent one day before <STMicroelectronics.info> was registered with Namebay. Since Respondent already had it in mind to rent the domain to Complainant at the time it was registered, the Panel considered this to be strong evidence of a bad faith registration, which was in no way rebutted by Respondent.
The Panel concluded these circumstances constituted bad faith registration and use under URDP Section 4(b)(i). See Globosat Programadora Ltda v. Artmidia Comunicacao Visual Criacao E Arte Ltda, D2000-0605 (WIPO Sept 13, 2000). In that case Respondent registration of the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a Complainant’s competitor for valuable consideration was bad faith.
Based on the findings and conclusions stated above, the Panel orders that the disputed domain <STMicroelectronics.info> be transferred to the Complainant.
James Alan Crary, Panelist
Dated: December 18, 2001
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