Eclat Textile Co. Ltd. v. Eclat AG
Claim Number: FA0205000114329
Complainant is Eclat Textile Co. Ltd., Taipei, TAIWAN (“Complainant”) represented by Edward Wang. Respondent is Eclat AG, Erlenbach, SWITZERLAND (“Respondent”) represented by Marc E. Bloch, of Gloor & Sieger Attorneys at Law.
The domain name at issue is <eclat.biz>, registered with CORE.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) 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 May 18, 2002; the Forum received a hard copy of the Complaint on May 21, 2002.
On May 29, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 18, 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 17, 2002.
On July 2, 2002, pursuant to STOP Rule 6(b), the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as the single Panelist.
Transfer of the domain name from Respondent to Complainant.
The domain name is identical to a trademark or service mark in which Complainant has rights; and
Respondent has no rights or legitimate interests in respect of the domain name; and
domain name has been registered or is being used in bad faith.
Respondent contends that <eclat.biz> was registered and will be used in terms of a bona fide business use to facilitate the exchange of its services. Respondent contends that it is commonly known as ECLAT.
Complainant, Eclat Textile Co., Ltd., is a well-known name in worldwide fabric market, especially in Lycra knitting industry. Consumers can also find the ECLAT name on Eclon® and BodyCare® products in the market.
Complainant has trademarks for ECLAT and/or ECLAT & DEVICE in numerous countries. Complainant, established in 1977, has annual sales of almost 100 million dollars. Complainant regularly advertises the ECLAT name and fabrics in Women’s Wear Daily, a major fashion industry newspaper in the USA. Complainant has participated in the Interstoff fabric shows at Frankfurt, Germany and in international fabric shows in other countries.
Complainant claims that Respondent does not promote the ECLAT name as well as Complainant.
Respondent, Eclat AG, is a joint-stock company duly organized under Swiss Law in 1988 and operates in the areas of corporate identity and communications design with a special focus on "Crossover branding, Employer branding, Location-based communication and
Business reports". Within this area Eclat AG claims to have an almost worldwide reputation.
Respondent has used the brand and company name ECLAT name since 1988 in connection with its offering of services. Respondent has been commonly known by the company name ECLAT since 1988.
In its capacity as a corporate identity and communications design agency, Respondent has developed visual communication concepts for Opel motor shows, a business entity of General Motors Europe, as well as developed a packaging prototype for the "Harvard" brand of Philip Morris.
Respondent claims that its brand has become renowned among experts and the public. In 1996, Eclat New York Inc., a wholly owned subsidiary, was formed with its office in Ithaca, NY. Other subsidiaries are located in Germany and Switzerland. Respondent has won numerous design awards.
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 established that it has rights to the ECLAT mark through registration and use. Complainant’s ECLAT mark is identical to Respondent’s <eclat.biz> domain name.
Therefore, the Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
A Respondent in a STOP proceeding may demonstrate its rights or interests in a disputed domain name by proving its use of or demonstrable preparations to use the domain name for a bona fide offering of goods or services. STOP Policy ¶ 4(c)(ii). Respondent, Eclat AG, has been operating in the areas of corporate identity and communications design since 1988.
A Respondent may demonstrate its rights or interests in a domain name by proving that it has been commonly known by the domain name, even if it has acquired no trademark or service mark rights. STOP Policy ¶ 4(c)(iii).
As the Panel has determined that Respondent has legitimate interests in respect to the mark ECLAT, it is unnecessary for the Panel to address the third issue of bad faith.
The Panel finds that STOP Policy ¶ 4(a)(ii) has not been satisfied.
Complainant’s Complaint is dismissed. Subsequent challenges under the STOP Policy to the domain name, <eclat.biz>, as against Respondent, shall not be permitted.
The Honorable Charles K. McCotter, Jr.
Dated: July 11, 2002
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page