Alpha Technologies Inc. v. Swarthmore Associates L.L.C.
Claim Number: FA0204000112449
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.
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.
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) 174 F.3d 1036, 1065-1066; see also Avery Dennison Corp. v. Sumpton (9th Cir. 1999) 189 F.3d 868).
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
Dated: June 21, 2002
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