Aloha Petroleum, Ltd d/b/a Vista v. Norbain Limited
Claim Number: FA0208000123864
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.
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>.
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.
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
Dated: October 11, 2002
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