Always On UPS Systems Inc. v. Always-On, Inc.
Claim Number: FA0206000114467
Complainant is Always On UPS Systems Inc., Kelowna, BC, CANADA (“Complainant”). Respondent is Always-On, Inc., Tacoma, WA, USA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <alwayson.com> and <always-on.com>, registered with Register.com.
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.
P-E Petter Rindforth as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 4, 2002; the Forum received a hard copy of the Complaint on June 4, 2002.
On July 9, 2002, Register.com confirmed by e-mail to the Forum that the domain names <alwayson.com> and <always-on.com> are registered with Register.com and that the Respondent is the current registrant of the names. Register.com has verified that Respondent is bound by the Register.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 11, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 31, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com and firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on July 31, 2002.
On August 13, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Mr. P-E Petter Rindforth as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
The Complainant, established in 1997 in Canada, is a manufacturer of uninterruptible power supplies and power quality device, but also offer software solutions for UPS management and remote monitoring. Complainant contends that it is commonly referred to as Always “ON”, even though its company name is Always On UPS Systems Inc.
The Complainant claims that Respondent has no rights to the domain names, and that the said domain names are “causing confusion and inconvenience to our customers and prospective customers by diverting them to the wrong website.”
Complainant argues that its registered company name gives them rights in the ALWAYS ON mark for purposes of this domain name dispute and points out that Respondent registered the disputed domain names at least two years after the registration of Complainant’s corporate name.
The Respondent, an application service provider, changed its name in April 2000 from LIGHTPC.COM to Always-On, Inc.(copy of the Certificate of Amendment provided as Exhibit B of the Response). Respondent asserts that it registered the subject domain names as a primary marketing tool to reach its customers. Respondent maintains that its websites, located at the subject domain names, serve as portals by which customers access software applications that Always-On, Inc. licenses.
Respondent claims to have been commonly known by the domain names since changing its name to Always-On, Inc., and that the domain names comprise its corporate identity and serve as the main means for consumer identification.
Respondent claims not to have known of Complainant’s identity until it received a notice of this dispute. Respondent maintains that its business is completely different than Complainant’s. Respondent also claims to have had no intent to take commercial advantage of Complainant and only uses the domain names, which are similar to its corporate identity, to advance its own business interests.
DISCUSSION AND FINDINGS
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “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 Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
The relevant part of the disputed domain names are “alwayson” and “always-on”, being at least confusingly similar to the first part of Complainant’s corporate name / trade name Always “ON” UPS Systems Inc. Trade names are protected internationally under the Paris Convention for the Protection of Industrial Property in Article 8, 9 and 10biz. The function of a trade name differs from a trademark or service mark in that a trade name distinguish the owners entire business, independently of any goods or services he may offer. Trade names as such are, however, not the subject of the current Policy.
The Complainant is not the owner of any registered trademark or service mark for ALWAYS ON or similar. However, as stated in Winterson v. Hogarth, D2000-0235 (WIPO) and other cases, the Policy is not limited to registered trademarks - also unregistered marks are sufficient for the purposes of paragraph 4(a)(i) of the Policy.
The question is therefore whether Complainant has established unregistered (common law) trademark rights to the ALWAYS ON part of the trade name. The Complainant has provided a letter from a Canadian trademark agent (Annex 1 to the Complaint), dated January 9, 1998 and referring to “proposed new Canadian trademark application for ALWAYS ‘ON’ & Design”. There are no further documentation or even arguments that Complainant proceeded with the alleged application. Complainant only states that it is “best known simply as Always ‘ON.’”
The Panel therefore has to conclude that Complainant has failed to prove that they have trademark or service mark rights in Always “ON”. Accordingly, the disputed domain names cannot be said to be identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
Rights or Legitimate Interests
The Respondent changed its name to Always-On, Inc. in April, 2000 and claims to be commonly known by ALWAYS-ON since then. Exhibits C –F of the Response (press release and product information) show that ALWAYS-ON is used to identify the Respondent and its business.
Respondent further claims that the disputed domain names are used for its websites which serve as portals by which customers access software applications.
The Panel therefore concludes that the Respondent has rights and/or legitimate interests in the domain names, and that they are used for a legitimate and fair purpose.
Registration and Use in Bad Faith
Respondent, a US company, claims not to have known of Complainant’s identity until it received a notice of this dispute, and that it has never used the disputed domain names to gain commercial advantage over the Complainant or to mislead its customers.
The Panel concludes that the parties’ business seems sufficiently different and that the Complainant has failed to provide any evidence indicating that the domain names were registered and used in bad faith.
The Panel concludes (a) that the disputed domain names are not identical or confusingly similar to a trademark or service mark in which the Complainant has rights, (b) that the Respondent has rights and/or legitimate interests in the domain names, and (c) that the Complainant has failed to prove that the Respondent registered and used the domain names in bad faith.
Therefore, pursuant to paragraphs 4 of the Policy and 15 of the Rules, the Panel denies the Complainant’s request to transfer the domain names <alwayson.com> and <always-on.com> to the Complainant Always On UPS Systems Inc.
Dated: August 22, 2002
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