Telamon Corporation v. Telamon Systems
Claim Number: FA0204000112500
Complainant is Telamon Corporation, Carmel, IN, USA (“Complainant”) represented by Laura Gridley. Respondent is Telamon Systems, Finchampstead Berks, UNITED KINGDOM (GREAT BRITAIN) (“Respondent”) represented by Emma Riach, of Laytons Solicitors.
The domain name at issue is <telamon.biz>, registered with Network Solutions, 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.
R. Glen Ayers served 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 27, 2002; the Forum received a hard copy of the Complaint on April 26, 2002.
On May 9, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 29, 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 submitted a timely Additional Submission on May 29, 2002. Respondent submitted a timely Additional Submission on May 31, 2002.
On June 20, 2002, pursuant to STOP Rule 6(b), the Forum appointed R. Glen Ayers as the single Panelist.
Transfer of the domain name from Respondent to Complainant.
Complainant alleges that it holds a registered U.S. trademark “Telamon.” It alleges its first use of the name was in 1987. The domain name is identical to the Complainant’s mark.
Complainant alleges that Respondent has no rights or legitimate interests in the domain name under STOP Rule 3(c)(ix)(2) and STOP Policy ¶ 4(a)(ii) because “respondent’s business practices (network integration and support for computer systems) under the name Telamon Systems infringe....” Further, Complainant says it “has the legal right over the respondent to use telamon.biz given the trademark....”
Complainant has not investigated Respondent’s ownership of trademarks.
Complainant alleges Respondent is not using the domain name but that Complainant intends to use the name.
As to “bad faith”[STOP Rule 3(c)(ix)(3) and STOP Policy ¶ 4(a)(iii)], Complainant says that there is a “conflict of interest to the business practices outlined in the Complainant’s trademark agreement.” Complainant says it has no knowledge of what Respondent intends to do with the name, but that Complainant intends to use the name in compliance with its trademark.
Complainant asserts that it filed an IP Claim and appropriate registration documents in an attempt to procure the “.biz” domain name.
Respondent admits that the domain name and trademark are identical.
But, Respondent alleges, with supporting documents, that it holds a United Kingdom (U.K.) trademark in the name “Telamon,” which it registered in 1998.
If this were not enough to establish rights in the name, Respondent asserts: (1) that it had sales of £2.89 million under that mark in the period of April, 2001, to March, 2002; (2) that it had held and used the domain name <telamon.co.uk> since January, 1998; and (3) that it properly applied for the “.biz” domain name (it alleges that it filed an IP Claim for the name).
Once it received the name, it prepared to use the name, but its preparations were halted by the filing of the Complaint. The registration was awarded only 23 days prior to the filing of the Complaint).
Respondent alleges (mistakenly) that Complainant holds <telamon.com> and that it wished to use”.biz” for the obvious commercial reasons.
As to “bad faith”, Respondent reasserts its earlier allegation, and denies any intent to block Complainant’s commercial activities or any intent to resell the name.
Respondent alleges that a number of persons applied for the domain name and that it was chosen by random selection.
As an aside, Respondent alleges that Complainant did not timely file for the name as an “IP Claim” (a filing by a trademark or other intellectual property holder) because Complainant filed after the last date for IP holders to file for “.biz” names.
C. Additional Submissions
Complainant, in it additional submission, replies that it does not hold <telamon.com>. Complainant also re-alleges a timely filing of its “IP Claim” application. Complainant asserts prior use of the mark (since 1985) and that its annual sales are $450 million (U.S.).
In is additional submission, Respondent does not dispute that Complainant does not hold <telamon.com> but asserts that Respondent’s registration of <telamon.biz> was proper. Respondent asserts that Complainant’s prior use of the trademark is irrelevant to a dispute under STOP.
Obviously, the domain name <telamon.biz> and Complainant’s U.S. mark, “Telamon” are identical, but Respondent’s U.K. mark “Telamon” is also identical.
Clearly, as the holder of a valid U.K. mark, Respondent has legitimate rights in the name.
Finally, Complainant really offered no evidence of “bad faith”.
Respondent, however, showed that it properly applied for the “.biz” name. Respondent was told that there were multiple applicants, all apparently with “IP Claims” to the name. Respondent was then awarded the name by random selection.
As in High Speed Prods. v. Blanco, FA 102951 (Nat. Arb. Forum Mar. 6, 2002), a mark holder certainly has “rights” in a name. Respondent has also used the domain name <telamon.uk.co> for several years. This use also establishes rights in the name. Am. Airlines, Inc. v. Webtoast Internet Servs., Inc., FA 102954 (Nat. Arb. Forum Feb. 24, 2002). Also, the Respondent is commonly known by the name “Telamon.” Gene Logic, Inc. v. Bock, FA 1030 42 (Nat. Arb. Forum Mar. 4, 2002).
Complainant has shown no evidence of “bad faith” under the Rules or Policy for STOP. Respondent, holder of a registered trademark, won the random selection process in competition with others, including Complainant, all apparently holding rights in the name.
Complainant has wholly failed to show any reason why the domain name should be transferred under STOP.
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.
Complainant has rights in the mark; it holds a U.S. trademark. The mark and domain name are identical.
Respondent has rights in the mark; it holds a registered trademark in the U.K. It has used the mark and is commonly known by the mark.
Registration or Use in Bad Faith
The Complainant has demonstrated no bad faith; it has alleged no facts relevant to the issue of bad faith. As set out above, Complainant lost the registration race to Respondent who has equivalent, competing rights to the domain name.
The Complaint is dismissed; the domain name will not be transferred; and, subsequent challenges under the Policy against this domain name shall be permitted.
R. Glen Ayers, Panelist, Dated: July 1, 2002
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