Aloha Petroleum, Ltd d/b/a Vista v.
Norbain Limited
Claim Number: FA0208000123864
PARTIES
Complainant is Aloha Petroleum, Ltd d/b/a Vista, Honolulu, HI, USA
(“Complainant”) represented by Martin E.
Hsia. Respondent is Norbain Limited, Winnerersh Triangle,
Wokingham Berks, UK (“Respondent”) represented by Sanjay Kapur, of Eric Potter
Clarkson.
The domain name at issue is <vista.biz>, registered with Netbenefit.
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.
Judge Irving H. Perluss (Retired) is the
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 August 23, 2002; the Forum received a hard copy of the
Complaint on August 23, 2002.
On August 26, 2002, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of September 16, 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 September 16, 2002.
Complainant’s additional submission was
received on September 23, 2002.
Respondent’s additional submission was received on September 30, 2002.
On October 3, 2002,
pursuant to STOP Rule 6(b), the Forum appointed Judge Irving H. Perluss
(Retired) as the single Panelist.
Transfer of the domain name from
Respondent to Complainant.
A. Complainant
1.
Complainant
operates gasoline stations and convenience stores in Hawaii under the name
Vista and has done so at least as early as July of 2001. It has held Hawaii registrations for VISTA,
VISTA GAS, VISTA FUELS, and VISTA PREMIUM since March of 2000.
2.
Complainant
has used and does use the VISTA mark continuously in its business and has
developed valuable good will in its use of VISTA. VISTA is a recognized trade name and service mark of Complainant
for its business.
3.
Respondent,
Norbain, is a United Kingdom corporation with its principal place of business
in the United Kingdom, engaged in the business of providing “intruder detection
apparatus; electronic, electrical video surveillance equipment; video cameras;
television monitors; control panels; parts and fittings for all the aforesaid
goods; all included in class 9.”
4.
To the best
of Complainant’s knowledge, Respondent does not have any United States
trademark registrations for “Vista.”
5.
Pittway
Corporation, not Respondent, holds United States federal trademark registration
1,753,760 for “Vista,” pursuant to Section 15 of the Lanham Act, for the
business of home and business security systems. Those rights are incontestable.
6.
According
to Pittway’s trademark registration, the list of goods and services Pittway
offers is virtually identical to those offered by Respondent:
home and business security systems
comprising electrical, mechanical and electronic alarms, fire and smoke
detectors, automatic lighting, appliance and timing controls, open and closed
circuit monitors, switches and sensors.
As such, Respondent cannot use VISTA in
the United States without infringing upon Pittway’s incontestable trademark.
7.
<vista.biz> is not geographically limited. If Respondent offers its products or
services on the <vista.biz> website, it could be liable to Pittway
for infringing upon Pittway’s trademark.
8.
Respondent
is also, should it offer any products or services on the <vista.biz>
website, subject to suit by Pittway pursuant to Anticybersquatting Consumer
Protection Act (15 U.S.C. §1125(d)); for trademark dilution pursuant to 15
U.S.C. §1125(c); and for counterfeiting pursuant to 15 U.S.C.§1116.
9.
Even if
Respondent were allowed to retain <vista.biz>, it could not
operate a website under that domain name without infringing upon Pittway’s
rights. Thus, as a business reality,
Respondent may not operate <vista.biz>.
10.
Respondent
is well aware of Pittway’s trademark rights in VISTA for selling products
similar to those offered by Respondent.
In fact, Respondent is currently opposing Pittway’s application for the
VISTA trademark in the European Community.
11.
As
Respondent is engaged in an ongoing trademark dispute with Pittway in Europe,
it is presumably knowledgeable of not only the existence, but also the import,
of Pittway’s incontestable trademark and the rights Respondent would be
infringing upon should it operate a website under <vista.biz>.
12.
Respondent’s
conduct, while not specifically aimed at the Complainant, is apparently
intended to preclude usage of <vista.com> by its competitor,
Pittway, and therefore its registration was in bad faith.
13.
The
circumstances therefore suggest that Respondent registered <vista.biz>,
not to use the domain, but as a prophylactic measure to prevent Pittway from
using <vista.biz> -- in short, to disrupt the business of
Respondent’s competitor.
14.
Registering
a domain name to prevent a competitor from using it contradicts the policies
underlying good faith domain registration.
As set forth above, such actions constitute bad faith.
15.
If Respondent argues that it does not intend to
offer services or products on the <vista.biz> website, Respondent
would effectively be conceding that it registered <vista.biz> only
to prevent Pittway from doing so.
16.
Allowing
Respondent to retain <vista.biz> is inappropriate. Thus, Complainant, which does not market
products similar to Respondent and Pittway, should be awarded <vista.biz>.
B. Respondent
1.
Respondent,
Norbain, confirms that it is the registered owner of European Community
Trademark (“CTM”) Registration No. 22939 for the trademark VISTA, filed on
April 1, 1996, and registered on April 14, 1998. This registration extends to all 15 Member Sates of the European
Community, namely Austria, Belgium, Denmark, Finland, France, Germany, Greece,
Ireland, Italy, Luxembourg, Netherlands, Portugal, Spain, Sweden, and the
UK. Annex A comprises details of
Respondent’s European Community Registration No. 22939.
2.
The date of
filing of the Respondent’s CTM Registration No. 22939 (April 1, 1996) and the
date of registration of this trademark (April 14, 1998) both pre-date, by some
considerable time, the date of registration of the VISTA and VISTA formative
trademarks owned by Complainant.
Respondent therefore appears to have the earlier statutory rights.
3.
Details of
Respondent’s earlier National Trademark Registrations in European countries are
exhibited as follows:
Country Registration No. Registration Date
Austria 154627 09/30/94
France 1629115 11/22/90
Germany 2099954 01/19/96
Spain 1985184 12/905/96
UK 1557013 12/18/93
4.
Respondent
also has trademark registrations outside the European Community as follows:
Country Registration No. Registration Date
Switzerland 467530 09/11/99
Poland 106680 10/06/99
Taiwan 00907293 01/10/00
5.
Respondent
also has trademark applications pending for registration in China and India.
Country Registration No. Registration Date
China 9900131304 05/11/99
India 814429 12/08/98
6.
Respondent
has used its VISTA trademark for over 15 years and has developed and enjoys a
considerable reputation and goodwill, in many countries, in connection with its
area of use.
7.
Respondent
does not have any U.S. Registrations/Applications for the trademark VISTA.
8.
Respondent
admits that Pittway Corporation is the registered owner of U.S. Trademark
Registration No. 1,753,760 for the trademark VISTA. However, Respondent and Pittway Corporation have entered into a
Co-Existence Agreement in 2001, which provided for co-existence of their
respective VISTA trademarks, both in the market place and on trademark
Registers throughout the world. This
Agreement is worldwide in scope and therefore applies to the U.S.A., which is
where the trademark registration of Pittway is owned which the Complainants are
relying upon in their Complaint. The
Agreement between Respondent and Pittway Corporation was signed by Directors of
both parties.
C. Complainants’ Additional Submission
1.
The crucial
issue in this matter is not whether Respondent has used VISTA in Europe or
elsewhere to sell its products. The
issue is whether Respondent is precluded from using the <vista.biz>
domain name because of Pittway Corporation’s (“Pittway”) incontestable
trademark rights in the United States.
If so, Respondent’s registration of <vista.biz> would be in
bad faith.
2.
Respondent
suggests that Complainant is somehow improperly asserting Pittway’s rights and
that only Pittway can raise the issues raised herein. That argument is a red herring.
Complainant is not attempting to assert rights on Pittway’s behalf, but
is instead pointing out that Respondent cannot use <vista.biz> to
offer VISTA products in the United States without infringing upon, or diluting,
Pittway’s incontestable federally registered trademark. As Respondent would be
thereby precluded from using the <vista.biz> domain under United
States trademark law, its registration of the domain suggests an intent to
preclude Pittway from using it. That
would be bad faith, as to Pittway, but would also be bad faith as to
Complainant, because Complainant does business as “Vista” and could use the <vista.biz>
domain to sell its own products (unrelated to either Respondent’s or Pittway’s
products) without infringing on any other entity’s rights. By precluding others from using <vista.biz>,
especially to stifle a competitor, Respondent is in bad faith.
3.
Respondent
also responds to the issue of bad faith by asserting that it and Pittway have
geographically allocated areas between them regarding who can use VISTA where
and when. Respondent refuses, however,
to produce the alleged agreement to the Complainant (or at this point, even to
the Panel), citing its alleged confidentiality. It seems unlikely that there is any agreement between Respondent
and Pittway as broad as the alleged agreement referenced by Respondent. The mere existence of such an agreement
would suggest a level of horizontal marketplace allocation in direct
contravention of the antitrust laws of most countries.
4.
The Panel
cannot award <vista.biz> based on an illegal agreement and the
Panel therefore must review that agreement.
Further, fundamental fairness requires that Complainant also be allowed
to review the agreement. The Panel
cannot award <vista.biz> to Respondent based on an agreement that
Complainant has not had the opportunity to review.
5.
Complainant
insists that Respondent will not be able to use <vista.biz>
without violating Pittway’s rights and that it is inconceivable that any
reasonable businessperson in Pittway’s position would allow such usage. If there is any agreement, it is probably
one to mutually suppress <vista.biz>, an even more inappropriate
use of the domain. If Respondent
insists, however, that Pittway agreed to effectively concede its rights to
VISTA, that agreement must be produced to the Panel and Complainant for review
and analysis. Otherwise, <vista.biz>
must be awarded to Complainant.
D. Respondents’ Additional Submissions
1.
Complainant
states that the main issue is whether the Respondent’s registration of <vista.biz>
is in bad faith, in view of Pittway Corporation’s trademark rights in the
U.S.A. Respondent restates that it has
extensive trademark rights in Europe and beyond in the trademark VISTA and has
acted in good faith, and its registration of <vista.biz> does not
contravene Paragraph 4(a)(iii) of “The Start-Up Trademark Opposition Policy for
.Biz.” Complainant cannot satisfy the
condition that it must prove that Respondent has no rights or legitimate
interests in the disputed domain name.
2.
Respondent
has not suggested that Complainant has improperly asserted Pittway’s rights and
that only Pittway can raise the issues therein. Respondent has merely questioned whether Pittway is aware that
its trademark rights are being used, by Complainant, as the basis for this
Complaint.
3.
Respondent
has shown its legitimate rights and interests to the <vista.biz>
domain name, as part of the Response already filed, such that there can be no
question of Respondent acting in bad faith by registering the domain name. Respondent asserts that there is no bad
faith, directed at any part of “The Start-Up Trademark Opposition Policy for
.Biz.”
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.
This is a unique matter, and may be of
first impression, because Complainant is asserting the rights of a third party
to justify its request to transfer the disputed domain name to itself.
The Panelist is not aware of any
authority in the disputed domain name area to that effect, and Complainant has
cited none.
To the contrary, by analogy, the United
States Supreme Court has taught us that ordinarily a plaintiff cannot maintain a federal civil action
to redress injuries to others, or to assert the rights of third persons. See
Tileston v. Ullman, 318 U.S. 44, 46, 63 S.Ct. 493, 494 (1943)
(holding that the doctor had no standing to complain that his patients’ privacy
rights were violated by statute banning sale of contraceptives).
There are exceptions and a plaintiff may
be permitted to assert the constitutional or statutory rights of a third party
if: the litigant suffered “injury in
fact”; or if plaintiff has a close relationship with the third party so as to
have consistent interests; or if it would be difficult or impossible for such
parties to assert their rights themselves. See Powers v. Ohio, 499
U.S. 400, 410-411, 111 S.Ct. 1364, 1370-1371 (1991) (finding that white
criminal defendant can object to exclusion of blacks on juries); see also Craig
v. Boren, 429 U.S. 190,
194, 97 S.Ct. 451, 455 (1976) (stating that beer vendor had standing to attack
state law prohibiting sale of beer to males under 21 years of age).
None of the exceptions appear applicable
here. Indeed, to the contrary, the
third party Pittway Corporation, whose rights Complainant contends are being
violated by Respondent, did have the same opportunity, as others, to file a
STOP Complaint and, ultimately, if it wishes, to file a UDRP Complaint.
In any event, it appears to the Panelist
that in the area of disputed domain names, Complainant proves too much. This is because if Respondent is acting in
bad faith because of the alleged violation of Pittway Corporation’s rights, so
is Complainant also seeking to so do.
The Panelist, accordingly, finds, and the
evidence is sufficient to show:
1.
The
disputed domain name is identical to a service mark in which Complainant has
rights. STOP Policy ¶ 4(a)(i).
2.
Respondent,
however, does have rights and a legitimate interest in the disputed domain name
because it is the owner of a service mark identical to the disputed domain
name. Even if it is assumed, arguendo, for purposes of this case,
that Respondent does not have rights or a legitimate interest in the name, STOP
Policy ¶ 4(a)(ii), the Panelist finds that Respondent did not act in bad faith.
3.
In the last
analysis, Respondent has neither registered nor used the disputed domain name
in bad faith. STOP Policy ¶
4(a)(iii). While under STOP Policy ¶
4(b)(iii) bad faith is established when a Respondent registers a domain name
“primarily for the purpose of disrupting the business of a competitor,” the
Panelist believes and decides that the “competitor” must be Complainant and not
an unrelated third party. Whether or
not there is an allocation agreement between Respondent and Pittway is
irrelevant to this disputed domain name proceeding.
DECISION
Because the Panelist has found that
Respondent has rights and a legitimate interest in the disputed domain name,
which is identical to its mark, the Complaint is hereby DISMISSED.
Subsequent challenges to this domain
name, as against the Respondent, under the STOP Policy, SHALL NOT be
permitted.
JUDGE IRVING H. PERLUSS
(Retired), Panelist
Dated: October 11, 2002
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