Prime Manufacturing Technologies Inc. v. Burns Philp & Company Limited
Claim Number: FA0204000112478
Complainant is Prime Manufacturing Technologies Inc., Savage, MD, USA (“Complainant”) represented by Richard C. Litman, of Litman Law Offices Ltd. Respondent is Burns Philp & Company Limited, Sydney, AUSTRALIA (“Respondent”) represented by Michael Coyne.
The domain name at issue is <prime.biz>, registered with Melbourne IT.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge, has no known conflict in serving as Panelist in this proceeding.
Anne M. Wallace, Q.C. as 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 10, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 30, 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’s additional submissions were received on June 3, 2002.
On June 24, 2002, pursuant to STOP Rule 6(b), the Forum appointed Anne M. Wallace, Q.C. as the single Panelist.
Upon reviewing Complainant’s Additional Submissions, the Panel noted Complainant’s statement that Complainant had not received copies of Respondent’s exhibits. On July 2, 2002, the Panel directed that copies of Respondent’s exhibits be forwarded to Complainant and that Complainant have until July 8, 2002 to make any additional submissions with respect to the Respondent’s exhibits.
Complainant has since advised that Complainant did in fact receive copies of Respondent’s exhibits and that Complainant has no further submissions to make.
Transfer of the domain name from Respondent to Complainant.
Complainant claims the domain name, <prime.biz>, is identical to the dominant portion of Complainant’s company name, Prime Manufacturing Technologies, Inc.. The dominant portion of the company name is the word PRIME. On certain of Complainant’s literature the PRIME portion of its company name is shown in a type style larger than that of the rest of the said company name. Complainant was registered in the State of Maryland on March 18, 1991 and has used its corporate name continuously ever since. The name appears on promotional literature, purchase orders, invoices and in other ways, and is and has been so used both in the United States (in at least six different states) and overseas.
Complainant asserts that Respondent should be considered as having no rights or legitimate interests in respect of <prime.biz>. Complainant asserts, on information and belief that Respondent has no registrations of any kind for the name PRIME other than the domain name which is the subject of the complaint and that Respondent has no history of usage of the word PRIME. A search of Respondent’s web site at <burnsphilip.com> did not show any evidence of use of any trademark having PRIME as part of it. Complainant also caused searches of the Australian Securities and Investments Commission as well as lesser known sites and found no indication that Respondent has registered as a “company name” or as a “business name” any name or mark having PRIME as part of it.
In light of my findings below with respect to rights or legitimate interests, I need not recite Complainant’s allegations of bad faith.
Respondent asserts that Complainant has no registered trademarks that are identical to the <prime.biz> domain name, and has not registered trademarks that contain the word PRIME. A search of the United States Patent and Trademark Office showed no trademarks owned by Complainant. Complainant relies on the whole company name PRIME MANUFACTURING TECHNOLOGIES INC., in order to assert a right over just one part of that name.
The domain name <prime.biz>, is identical to registered trademarks in which Respondent has rights. Respondent, through its wholly owned subsidiary Burns Philip Technology Limited, is the owner and beneficiary of Class 29 and Class 30 PRIME trademarks in China. In the same way, Respondent is owner and beneficiary of the Class 30 trademark “PRIME and device” in Vietnam. The trademark PRIME FRESH YEAST has been used in India and Bangladesh for a number of years. Burns Philip Indian Limited, a wholly owned subsidiary of Respondent, has applied to register class 5 and 30 trademarks in 1995. In 2000, the Registrar of Trademarks raised certain objections and they have been responded to. Respondent applied in 1995 in India to a register class 30 trademark for PRIME POWERFUL CAKE GEL.
All of these trademarks have been used by Respondent and its subsidiaries in the marketing and distribution of its yeast products around the world. The PRIME product name has also appeared on invoices for a number of years.
In light of my findings below, I need not recite Respondents submissions with respect to bad faith.
Complainant asserts, in response to Respondent’s submission, that Complainant does not rely on the whole corporate name, but on the prominence of the word PRIME in that name as evidence that the disputed domain name is identical to a trademark in which Complainant has rights. Complainant also filed additional evidence to show the use of the word PRIME since 1991.
The Panel finds that the domain name <prime.biz> is identical to a trademark in which Complainant has rights. The Panel further finds that Respondent has rights and legitimate interests in the domain name.
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.
The evidence filed by the Complainant does establish at least some rights in the trademark PRIME. While Complainant uses the word PRIME as part of its corporate name, PRIME MANUFCTURING TECHNOLOGIES INC., the dominant word in the corporate name is the word PRIME. Complainant does not own any registered trademarks or service marks for the mark PRIME, but through the evidence filed has established that it has through usage acquired at least some rights in the PRIME mark.
The domain name in question, <prime.biz>, is identical to Complainant’s mark within the meaning of the STOP Policy.
Respondent has established rights in the domain name <prime.biz> through its beneficial ownership of registered trademarks for the word PRIME. These rights are set out in Respondent’s submissions outlined above and include trademark registrations in China and Vietnam and trademark applications in India. Under STOP Policy 4(c)(i), therefore, Respondent has demonstrated that it is the owner or beneficiary of a trademark that is identical to the domain name. As such, Respondent has demonstrated rights or legitimate interests in the domain name.
In light of my findings above, I need not deal with the allegations of bad faith.
The Complaint is hereby dismissed. No further challenges against this domain name shall be permitted under the STOP Policy.
Anne M. Wallace, Q.C., Panelist
Dated: July 15, 2002
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