ELIGIBILITY
REQUIREMENTS DISPUTE RESOLUTION POLICY
DECISION
Van Kampen Investments Inc. v. Titan Net c/o Titan
Claim Number: FA0509000566611
PARTIES
Complainant is Van Kampen Investments Inc. (“Complainant”), represented by Baila H. Celedonia, of Cowan, Liebowitz & Latman, P.C., 1133 Avenue of the Americas, New York, NY 10036-6799. Respondent is Titan Net c/o Titan (“Respondent”), Kenyatta Avenue P.O. Box 4276-30100, Eldoret, Kenya 30100.
REGISTRAR AND DISPUTED REGISTERED NAMES
The Registered Names at issue are <vankampen.name>
and <vankampeninvestments.name>, registered with Intercosmos
Media Group, Inc. d/b/a Directnic.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as Panelist in this proceeding.
Honorable Paul A. Dorf (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on September 21, 2005; the Forum received a hard copy of the Complaint on September 25, 2005.
On September 22, 2005, Intercosmos
Media Group, Inc. d/b/a Directnic.com
confirmed by e-mail to the Forum
that the Registered Names <vankampen.name> and
<vankampeninvestments.name> are registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the Registered Names. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.com registration agreement and has thereby agreed to resolve registered name disputes brought by third parties in accordance with the Eligibility Requirements Dispute Resolution Policy (“ERDRP”).
On September 29, 2005 a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 19, 2005 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with 2(a) of the Rules of Procedure for the Eligibility Requirements Dispute Resolution Policy (the “ERDRP Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 27, 2005, pursuant to ERDRP Rule 6(b), the Forum appointed Honorable Paul A. Dorf (Ret.) as the single Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibilities under Paragraph 2(a) of the ERDRP Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ERDRP, ERDRP Rules, the Forum’s ERDRP Supplemental Rules and any rules and principles of law that the panel deems applicable, without the benefit of any Response from Respondent.
Complainant requests that the Panel issue a Defensive Registration for the <vankampen.name> and <vankampeninvestments.name> Registered Names in accordance with ERDRP Policy 5(f)(i)(C).
A. Complainant
Complainant asserts that
Respondent registered <vankampen.name> and
<vankampeninvestments.name> in violation of the Eligibility Requirements for the following reasons:
1. Respondent’s legal name is not “Van Kampen” or “Van Kampen Investments.”
2. Respondent does not have any trademark or service mark rights in fictional characters named “Van Kampen” or “Van Kampen Investments.”
3. Respondent as an individual has not been commonly known by the names “Van Kampen” or “Van Kampen Investments.”
Complainant asserts that the <vankampeninvestments.name> Registered Name is identical to the textual or word elements of Complainant’s VAN KAMPEN INVESTMENTS mark and therefore has established rights in the <vankampeninvestments.name> Registered Name under Phase I.
B. Respondent
No Response was received.
Complainant has registered its VAN KAMPEN INVESTMENTS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,502,489 issued October 30, 2001) which was registered in connection with “investment asset management and sponsoring and distribution of unit investment trusts,” among other services. Complainant has also established common law rights in its VAN KAMPEN mark as it has used the mark continuously in commerce.
Respondent registered the <vankampen.name> and <vankampeninvestments.name> Registered Names on August 18, 2005. Respondent has not presented any evidence to show that its legal name includes any variation of “Van Kampen Investments” or “Van Kampen” or that it is commonly known by either of these names.
Paragraph 15(a) of the ERDRP 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.”
In view of Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a), and 15(a) of the ERDRP Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the ERDRP Rules.
Paragraph 4(b) of the ERDRP requires that the Complainant prove each of the following elements in order to establish that the Registered Name was registered in violation of the Eligibility Requirements and obtain an order that a Registered Name should be cancelled:
(1) the name corresponding to the Registered Name is not the legal name of Respondent; and
(2) the name corresponding to the Registered Name is not the name of a fictional character in which the Respondent has trademark or service mark rights; and
(3) the Respondent has not been commonly known by the name corresponding with the Registered Name.
There is no evidence that Respondent’s legal name is “Van Kampen” or “Van Kampen Investments.” The evidence in the record reveals that Respondent’s legal name is Titan Net or Titan. Therefore, Respondent’s registration of the <vankampen.name> and <vankampeninvestments.name> Registered Names do not meet this Eligibility Requirement, and the ERDRP Policy paragraph 4(b)(i) has been satisfied.
Name of
Fictional Character
Respondent has not come forward
with any evidence establishing Respondent’s ownership of any trademark or
service mark rights for a character by the name of “Van Kampen” or “Van Kampen
Investments.” Therefore, Respondent
does not meet the requirements of paragraph 4(b)(ii) of the ERDRP.
Commonly
Known As
There is no evidence that
Respondent is commonly known by the names “Van Kampen” or “Van Kampen
Investments.” Therefore, Respondent’s
Registered Names, <vankampen.name> and <vankampeninvestments.name>,
do not meet the requirements of paragraph 4(b)(iii), and the ERDRP Policy
has been satisfied.
Phase I Defensive Registration
Complainant requests that the Panel
issue a Defensive Registration for the <vankampeninvestments.name> Registered
Name pursuant to ERDRP 5(f)(i)(C).
Therefore, Complainant must meet the Common Defensive Registration
Requirements.
Paragraph 2(b) of the Eligibility
Requirements for Phase I Defensive Registrations of the .NAME Restrictions
requires Complainant to prove that the name is identical to the textual or word
elements of Complainant’s trademark or service mark. Complainant has provided the Panel with evidence of its
registrations of its VAN KAMPEN INVESTMENTS mark with the USPTO, that was issued
prior to Respondent’s registration of the Registered Names on August 18,
2005. The VAN KAMPEN INVESTMENTS mark
is identical to the <vankampeninvestments.name> Registered Name
and Complainant has thus satisfied the requirements of paragraph 5(f)(i)(C) of
the ERDRP for Phase I Defensive Registration.
Phase II Defensive Registration
Complaintant also requests that the
Panel issue a Phase II Defensive Registration for the <vankampen.name>
Registered Name under Paragraph 2(c) of the ERDRP of the .NAME
Restrictions. Pursuant to Paragraph
2(c), Phase II Defensive Registrations may be requested by any entity for any
string or combination of strings. See
Proposed Unsponsored TLD Agreement: Appendix L (.name), ¶ 2(c) Aug. 8,
2003. Complainant has met this
requirement for a Phase II Defensive Registration.
Complainant has established that
the <vankampen.name> and <vankampeninvestments.name> Registered
Names were registered in violation of the Eligibility Requirements. Having established ERDRP Policy Eligibility
Requirements for the issuance of a Defensive Registration for the Registered
Names, the Panel concludes that the requested relief should be granted.
Accordingly, it is hereby ordered
that Phase I and Phase II defensive registration in the Registered Names is
granted to Complainant.
Honorable Paul A. Dorf (Ret.) Panelist
Dated: November 10, 2005
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