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.
A.
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.
B.
Respondent:
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.
DECISION
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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