Newport Corporation v. Newport Electronics Inc.
Claim Number: FA0205000114325
Complainant is Newport Corporation, Irvine, CA (“Complainant”) represented by Kyhm Penfil, of Irell & Manella LLP. Respondent is Newport Electronics Inc., Stamford, CT (“Respondent”) represented by David R Haarz, of Dickinson Wright, PLLC.
The domain name at issue is <newport.biz>, registered with Domainpro, 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.
G. Gervaise Davis III, Esq., is the single 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 May 17, 2002; the Forum received a hard copy of the Complaint on May 22, 2002.
On May 24, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 13, 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 13, 2002.
On June 28, 2002, pursuant to STOP Rule 6(b), the Forum appointed G. Gervaise Davis III, Esq., as the single Panelist.
Transfer of the domain name from Respondent to Complainant.
Complainant Newport Corporation was founded in the Newport area of southern California in the 1960s and has been using the name “Newport” since that time. Complainant Newport Corporation's federally registered trademark no. 1558877 was registered before respondent Newport Electronics had any trademark registration and is now incontestable. Nevertheless, respondent Newport Electronics continues to register and use “Newport”-related Internet domain names in which it has no legitimate right or interest.
In 1999, after three decades of peaceful co-existence, respondent Newport Electronics sued complainant Newport Corporation in federal court for trademark and service mark infringement. Newport Electronics, Inc. v. Newport Corporation, United States District Court, District of Connecticut, Case No. 3:99-CV-1463 (JCH) (Judge Janet C. Hall). The case was tried to a jury in January 2002. The jury voted unanimously in favor of Newport Corporation.
Respondent Newport Electronics's registration of <newport.biz> is simply Newport Electronics' latest attempt to harass Newport Corporation.
Newport Electronics has demonstrated no right or legitimate interest in <newport.biz>. For example, Newport Electronics has not demonstrated that its customers will search for it at <newport.biz>. In fact, Newport Electronics admits it has offered its website at <newportelectronics.com>, <newportelect.com>, <newportinc.com>, <newportus.com> and <newportusa.com> for several years.
Respondent Newport Electronics has amply demonstrated its bad faith with respect to Internet domain names and complainant Newport Corporation. For example, in 1994, Newport Corporation registered the domain name <newport.com>. Newport Electronics knew in 1995 that Newport Corporation had registered and was using <newport.com>. Yet in 1996, Newport Electronics sought to register “NEWPORT.COM” as its own trademark, even though Newport Electronics had never used the term “NEWPORT.COM” and even though Newport Electronics knew that Newport Corporation already had used the domain name.
Newport Electronics is a corporate hoarder of Newport-related names as shown in litigation between the parties, where Newport Electronics admitted that it has registered over 78 Internet domain names that include the term “NEWPORT.” Moreover, Newport Electronics admits that its affiliate Omega Engineering, Inc. has registered over 35 Internet domain names that include the term “NEWPORT.”
In short, respondent Newport Electronics has demonstrated its bad faith with respect to Newport Corporation and Internet domain names. Newport Electronics' registration of <newport.biz> is simply Newport Electronics' latest attempt to harass Newport Corporation.
Complainant lists in some detail the saga of disputes and litigation between the two companies, both of whom apparently started operations many years ago in the Newport, California area, although Respondent has since moved its operations to the East Coast of the U.S.
Complainant Newport Corporation has alleged that the <newport.biz> domain name is identical to “several marks in which Complainant Newport Corporation has rights.” However, it should be noted that although the <newport.biz> domain name is identical to registered marks owned by Respondent, Complainant does not own any registrations for the NEWPORT mark. Although Complainant misrepresents in its Complaint that Registration No. 1,558,877 covers the mark “NEWPORT,” that registration, which is Complainant's only claimed registration upon which it bases its claim in this action, covers a mark described in the records of the United States Patent and Trademark Office which “consists of the stylized representation of the word 'Newport' and miscellaneous design.” In addition, action regarding all of Complainant's applications in the United States has been suspended.
On the other hand, the <newport.biz> domain name is identical to a mark for which Respondent holds ten trademark registrations in the United States. In addition, Respondent either directly or through its subsidiaries owns seventeen other registrations for the NEWPORT mark, outside the United States, in Canada, the United Kingdom, France, Germany, the Czech Republic, Benelux, Spain, Norway and the European Community.
Under STOP Policy paragraph 4(c)(1), Respondent's ownership of a valid trademark registration for the NEWPORT mark is a complete defense to an action under STOP. A party demonstrates rights and legitimate interests in respect of the domain, where Respondent is “the owner or beneficiary of a trade or service mark that is identical to the domain name.” Thus, under the clear and unequivocal provisions of the STOP policy, Respondent has demonstrated that it has rights and legitimate interests in respect of the domain name at issue, namely <newport.biz>. See Start-up Trademark Opposition Policy decisions, TWA Airlines LLC v. Heathrow Express Operating Company Ltd., FA 102956 (Nat. Arb. Forum Feb. 6, 2002) and High Speed Productions v. Fabio Blanco, FA 102951 (Nat. Arb. Forum Mar. 6, 2002).
In light of Respondent's ownership of numerous valid registrations for the NEWPORT mark in the United States and its registrations for the NEWPORT mark in other jurisdictions, it is unnecessary to determine the issue of bad faith registration or use. However, it is clear that Respondent neither registered nor used the <newport.biz> domain name in bad faith.
Complainant fails to make a single allegation of facts regarding Respondent's bad faith in connection with the <newport.biz> domain name. All the allegations made are of general misconduct and bad faith in the relationship of the companies and the litigation and other disputes.
Complainant does not and cannot allege that Respondent registered the <newport.biz> domain name primarily for the purpose of selling the <newport.biz> domain name to Complainant or another party for an amount in excess of its out-of-pocket cost because, in fact, Respondent intends to use the <newport.biz> domain name in connection with its sale of goods and services under its registered NEWPORT mark.
Complainant does not and cannot allege that Respondent registered the <newport.biz> domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name because Respondent, unlike Complainant, is the owner of registrations covering the NEWPORT mark in plain block letters and, therefore, has every right to register <newport.biz> as its domain name.
Complainant does not and cannot allege that Respondent registered the <newport.biz> domain name primarily for the purposes of disrupting the business of a competitor because there has not been and cannot be any disruption of Complainant's business with regard to the <newport.biz> domain name.
Complainant does not and cannot allege that Respondent has used the <newport.biz> domain name intentionally to attract for commercial gain, Internet users to its site or other on-line location by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site or on-line location or of a product or service on its web site or on-line location because the <newport.biz> domain name has not been activated and, even if it were, Respondent's use of <newport.biz> would be in connection with the goods and services it sells under its NEWPORT mark. In fact, Complainant alleges that the parties have “three decades of peaceful co-existence” with regard to their respective uses of the NEWPORT mark.
Simply put, there can be no bad faith with regard to Respondent's registration of the <newport.biz> domain name because it owns and uses the NEWPORT mark for goods and services. This is a dispute between two companies that both own and use the NEWPORT mark and would like to have domain names that reflect that fact. Complainant owns the <newport.com> domain name and would like to own the <newport.biz> domain name. Having been unable to register the <newport.com> domain name, Respondent was able to register the <newport.biz> domain name. This situation is precisely one of the reasons that the new .biz TLD was created. See ICANN Report (Part One) of the Working Group C (New gTLDs) presented to the Names Council on March 21, 2000:
Companies that currently have a domain name in the form of company.com have an extremely important marketing and name-recognition tool. They have an advantage over all other companies that do not have addresses in that form, because the companyname.com firms are the ones that consumers surfing the Net, will be able to find most easily. If the name space is expanded, companies will be able to get easy-to-remember domain names more easily, and the entry barriers to successful participation in electronic commerce will be lowered. Addition of new gTLDs will allow different companies to have the same second-level domain name in different TLDs. Those businesses will have to compete based on price, quality and service, rather than the happenstance of which company locked up the most desirable domain name first. [Emphasis supplied by Respondent].
In recognition of the complete absence of bad faith regarding the domain name at issue, Complainant attempts to present evidence of a pattern of bad faith regarding other domain names on the part of Respondent. However, a review of Complainant's “evidence” of bad faith only reflects a cursory one-sided presentation of a contested dispute regarding the ownership of trademarks, service marks and domain names containing the word NEWPORT. To make a determination of “bad faith” on the basis being sought by Complainant would require a panelist to go far beyond the analysis contemplated in a STOP proceeding. The “bad faith” allegation in this proceeding involves a larger dispute between the parties, only a portion of which has been put into the record and is beyond the scope of issues that can be fairly resolved under STOP. See the UDRP panel decision CNA Financial Corporation & Allstate Insurance Company v. Insurance Services Plus, Inc. D2000-0955 (WIPO Dec. 15, 2000).
Finally, Respondent asks that Complainant be held guilty of attempted reverse domain name hijacking.
A. The domain name is NOT identical to a trademark or service mark in which the Complainant has rights, in that the Complainant’s sole registered mark is a stylized logo in the form of a representation of the word “Newport” and miscellaneous design. Other pending applications of Complainant for the mark “Newport,” itself, have been suspended by the USPTO and have not been acted upon.
B. The Respondent is the owner of numerous registered U.S. trademarks on use of the word “Newport” in many classes and in several foreign countries, and as such has a clear right and legitimate interest in use of the domain <newport.biz> which is at issue here.
C. The Respondent did NOT register or use the domain name at issue 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 conclusive and ultimately determining fact in this case is correctly pointed out by Respondent in its well-written and documented brief. Under STOP Policy Paragraph 4(c)(1), Respondent's ownership of a valid trademark registration for the NEWPORT mark is a complete defense to an action under the STOP Policies, for the very reasons laid out in Respondent’s brief. Because of the high demand for the first set of gTLD’s, ICANN determined to permit additional gTLD’s so that companies with similar names and similar trademarks would have an alternative place to register a domain name. The fact that Complainant does not like this and would like to have this additional domain name for its use is irrelevant under the STOP Policies. Respondent clearly has legal rights to use this domain name and its “Newport” trademarks in the U.S. and elsewhere in the world.
Furthermore, it is highly unlikely that any court hearing a trademark dispute would conclude that Respondent may not use this domain name because of any alleged confusion, dilution, or other legal theory, since it is obviously derived from the Newport Beach area, a geographical term. Moreover, it is such a common trademark that the USPTO database lists some 95 applications filed using just that single word, including cigarettes, electronic parts and many other categories, and more than 400 filings that include the name “Newport” within a combination of word marks. The mark in question is neither famous nor unusually distinctive or unique. The law on this issue is so well established that it needs no citation.
It is apparent that Complainant and Respondent have serious differences of opinion and that they have been engaged in litigation and other contentious disputes over the years. That fact, however, does not deprive Respondent of its rights under the STOP Policy, and such disputes do not establish “bad faith” registration under the Policy. Complainant’s allegations may be substantially, or even entirely true, but they do not constitute evidence of bad faith within the purview of the STOP and related UDRP Policies and Rules, given the fact that Respondent is the lawful owner of registered marks in the U.S. and elsewhere. This Panel is not a court of equity, but a simple arbitration proceeding bound by very specific rules, aimed at obtaining prompt and relatively inexpensive decisions. For this Panel to go beyond the inquiry delineated in the Policy would not only exceed its jurisdiction, but also defeat the purpose of the STOP Policy.
Attempted Reverse Domain Name Hijacking
The Panel took the option to set forth in more detail than usual the facts on which Complainant bases its position, and the details of the Respondent’s position, since they rather completely explain why Complainant has not succeeded in proving its case even though it feels that Respondent has acted unfairly. Furthermore, it seems to this Panel that, given these well-known facts, even a cursory reading of the STOP Policy and Rules would have demonstrated to Complainant’s counsel that this case should not have been brought.
However, given the mutually destructive and overtly contentious efforts of both parties in regard to these domains and trademarks, this Panel will not encourage further unnecessary disputes by finding an attempted reverse domain name hijacking here by Complainant. Hopefully, this decision will at least end one aspect of this continuing saga of two companies that apparently have nothing more constructive to do than fight over trademarks and domain names.
The requested transfer of the domain name <newport.biz> is denied, and the Complaint dismissed, with instructions that no further challenges to Respondent’s registration of the domain name at issue shall be permitted.
G. GERVAISE DAVIS III, Esq., Panelist
Dated: July 9, 2002
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page