Southwest Electronic Industries Inc. v.
Software Enterprises Inc.
Claim Number: FA0204000112545
PARTIES
The
Complainant is Southwest Electronic
Industries Inc., Richardson, TX (the
“Complainant”) represented by Kenneth
A Mazur, of CyberVillage Networkers
Inc. The Respondent is Software Enterprises Inc., Menlo Park,
CA (the “Respondent”) represented by Scott
Duchin.
The
domain name at issue is <sei.biz>,
registered with Registration
Technologies, 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.
Edward
C. Chiasson, Q.C. as Panelist.
The
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, the Complainant timely noted its intent to
file a STOP Complaint against the Respondent with the Registry Operator,
NeuLevel and with the National Arbitration Forum (the “Forum”).
The
Complainant submitted a Complaint to the Forum electronically on April 28, 2002;
the Forum received a hard copy of the Complaint on June 12, 2002.
On
June 21, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of July 11,
2002 by which the Respondent could file a Response to the Complaint, was
transmitted to the 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 July 9, 2002.
On July 23, 2002, pursuant to STOP Rule 6(b), the Forum
appointed Edward C. Chiasson, Q.C. as
the single Panelist.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
The
following is the complete text of the Complainant’s substantive factual case:
“Service
Mark Reg. No. 1,770,604 states that the term “SOUTHWEST ELECTRONIC INDUSTRIES,
INC.” and the Service Mark containing the letters SEI, as shown in Reg. No.
1,770,604, are covered by the Trademark Act of 1946 and name [the Complainant]
as the Principal Register. Reg. No.
1,770,604 further states that the first use of said Service Mark was in July of
1958.
United
States Patent and Trademark Office, Service Mark Reg. No. 1,770,604 explicitly
states that [the Complainant] is the Principal Register and sole beneficiary of
the Service Mark containing the letters SEI, those letters being identical to
the letters in the subject domain name SEI.BIZ.
On July 23, 2001, CyberVillage Networkers, Inc., acting on
the behalf of [the Complainant], filed a .BIZ TM Claim Form (IP Notification
Service) with Network Solutions, Inc. for the express purpose of receiving
advanced notification of any intent to register SEI.BIZ. However, events quickly followed allowing
the Respondent to register SEI.BIZ.
[The Complainant] proceeded with the STOP process once notified of the
attempted registration.
As
stated on the Respondent’s personal web site, http://www.duchin.com/sei.htm, “Software
Enterprises, Inc. was founded in 1977.
It is the professional corporation of Scott R. Duchin.”, the
Respondent intends to attract commercial prospects to SEI.BIZ”
B.
Respondent
The
following information is derived from the Response.
. The Respondent was awarded the subject
domain name in a fair competition for it has paid all registration fees
accordingly. The Respondent was awarded the subject domain name as an
early registrant.
The
Respondent is a business with the abbreviations of SEI and has a legitimate
interest in the subject domain name. In using the website to which the
subject domain name resolves, the Respondent is not infringing on the trademark
of the Complainant and does not use the trademark symbol anywhere on its site.
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 relies on its registrations of SEI.
The Respondent says that it is not infringing on the
Complainant’s trademark rights because it does not use the Complainant’s logo
on its website. It also asserts that
the registration of a trademark should not dictate the acquisition and use of
domain name and the websites to which they resolve.
The first step in a STOP proceeding is to determine
whether the Complainant has rights to a trademark or service mark and, if so,
whether the domain name under review is identical. This task usually does not require a consideration whether a
Respondent is trespassing on the
Complainant’s rights or the use to which the Respondent is putting the domain
name.
In this case, the subject domain name differs from the
Complainant’s mark only by the addition of .biz, which is irrelevant.
The Administrative Panel is satisfied that the
Complainant has met the requirements of paragraph 4(a)(i)
The Complainant has an obligation to
establish that the Respondent does not have a legitimate interest in the
subject domain name. It has provided no
information on which such a finding could be made.
The Respondent states that it acquired
the subject domain properly through a competition. This is not determinative of
the issue. The Respondent is a
business. The first letters of its name
are SEI.
The Administrative Panel is not satisfied
that the Complainant has met the requirements of paragraph 4(a)(ii).
The Complainant has an obligation to
establish bad faith. It has provided no
information on which such a finding could be made. The small amount of information available to the Administrative
Panel suggests an absence of bad faith.
The Administrative Panel is not satisfied
that the Complainant has met the requirements of paragraph 4(a)(iii).
DECISION
Based
on the information provided to it and on its findings, the Administrative Panel
concludes that the Complainant has not established its case. It is dismissed.
As against the Respondent, subsequent challenges to the
subject domain name under the STOP Policy shall not be permitted.
Edward C. Chiasson, Q.C., Panelist
Dated: July 31, 2002
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