Aptis Inc. v. ALSTOM
Claim Number: FA0204000112480
Complainant is Aptis Inc., San Antonio, TX, USA (“Complainant”). Respondent is ALSTOM, Paris, FRANCE (“Respondent”).
The domain name at issue is <aptis.biz>, registered with Register.com.
The undersigned Daniel B. Banks, Jr., certifies he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
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 May 2, 2002.
On May 20, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 10, 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 June 6, 2002.
On July 17, 2002, pursuant to STOP Rule 6(b), the Forum appointed Daniel B. Banks, Jr., as the single Panelist.
Transfer of the domain name from Respondent to Complainant.
Aptis is the Service Mark of Aptis, Inc. This word mark was filed for registration on July 20, 1999 as a design plus words, letters, and/or numbers mark drawing. It was published for opposition on September 26, 2000 and was registered on December 19, 2000. The registration number is 2413761.
Complainant contends that Respondent should be considered as having no rights or legitimate interests in respect of the domain name <aptis.biz> for several reasons. First, though Respondent is the owner or beneficiary of a trade or service mark that is identical to the domain name, Complainant's predates Respondent's. Second, Respondent has not been commonly known by the domain name, while Complainant's corporate and product identities are inherent and integral to the domain name in dispute. Third, the domain name should be considered as having been registered or used in bad faith. The Complainant has an earlier trademark filed and seeks to utilize this trademark.
Respondent is a company known worldwide. It is listed in the New York, Paris and London Stock Exchanges. In energy, Respondent is active in power generation, power transmission and distribution and in transport through its activities in rail and marine. Respondent has annual sales in excess of 23 billion Euros and employs 120,000 people in over 70 countries.
The disputed domain name is not exactly identical to a trademark or service mark in which the Complainant has rights. Complainant's mark is a design mark as shown below:
The disputed domain name is therefore only identical to the verbal form of the mark as registered. The Complainant has not established the exact content of its rights and may be considered as having submitted the present Complaint in bad faith or in an incomplete manner.
The Respondent has rights or legitimate interests in respect of the disputed domain name. The domain name is identical to the Trademark APTIS No. 2475738 filed by Respondent on July 20, 2000 and registered on August 7, 2001 for goods and services in Class 9, Class 12 and Class 39, having to do with control systems for railway lines, automatic rail or pneumatic-tired mass transit vehicles and transport of automatic mass transit vehicles.
The mark filed and registered by Respondent is a word mark, i.e. without any figurative element. Also, Complainant has not filed any opposition to the registration of the Respondent's mark APTIS No. 2475738. There is no likelihood of confusion between the two marks in view of the differences between the goods and services as claimed in the respective Trademark registrations.
Respondent has not submitted any proof that the domain name should be considered as having been registered or used in bad faith.
Complainant is a product development division of EUR Systems, that, according to the website of the company (<aptissoftware.com>), has been pioneering innovative billing and revenue management solutions. There is no link between the business of the Respondent and the Complainant. Specifically there is no evidence that the domain name was registered primarily for the purpose of selling, renting or otherwise transferring the domain name to the Complainant or a competitor of Complainant for valuable consideration in excess of Respondent's costs; that it was registered to prevent Complainant from reflecting the mark in a corresponding domain name; the it was registered primarily for the purpose of disrupting the business of a competitor; or that by using the domain name, Respondent has attempted to attract, for commercial gain, Internet users to Respondent's web-site or other on-line location.
1 - The disputed domain name is identical to a trademark or service mark in which the Complainant has rights.
2 - The Respondent has rights or legitimate interests in respect of the domain name.
3 - The domain name was not registered or is it being used in bad faith.
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 Complainant has demonstrated that it has legitimate rights or interests in respect of the disputed domain name.
Respondent has rights and legitimate interests in the disputed domain name. It is the owner of a registered trademark for that name and uses that name to identify its tram system and its complete package of systems, which integrates a range of service proven subsystems. A guided light rail system, APTIS is designed to run on a dedicated track to ensure that a consistent commercial speed is maintained. See High Speed Prods. V. Blanco, FA 102951 (Nat. Arb. Forum Mar. 6, 2002) (noting that the Respondent's trademarks in THRASHER MAGAZINE, registered in Spain, sufficiently demonstrate its rights and interests under STOP Policy 4(a)(ii) in the <thrashermagazine.biz> domain name.
The Complainant makes the bare allegation that the domain name should be considered as having been registered or used in bad faith apparently because the Complainant has an earlier trademark filed and seeks to utilize that trademark. However, there is no evidence presented to this Panel that the domain name was registered for the purpose of selling, renting, or otherwise transferring the name to Complainant or its competitor for valuable consideration in excess of Respondent's out-of-pocket costs (STOP Policy 4(b)(i); that it was registered for the purpose of preventing Complainant from registering domain names that reflect its mark (STOP Policy 4(b)(ii); that it was registered primarily for the purpose of disrupting the business of a competitor (STOP Policy 4(b)(iii); or that by using the domain name, Respondent 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 source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location (STOP Policy 4(b)(iv).
The Complainant and Respondent are not competitors and their respective goods and services are not related in any way.
Having determined that the Respondent has rights and legitimate interests in respect of the domain name <aptis.biz> and that it was not registered or used in bad faith, it is ordered that this Complaint is dismissed and that subsequent challenges under the STOP Policy against the domain name <aptis.biz> shall not be permitted. COMPLAINT DISMISSED.
Daniel B. Banks, Jr., Panelist
Dated: July 29, 2002
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