Taylor Corporation v. TechniCard
[Indexed as: Taylor Corporation v. TechniCard]
National Arbitration Forum
Administrative Panel Decision
Forum File 0003000094308
Commenced: 14 March 2000
Judgement: 17 April 2000
Presiding Panelist: Gilbert T. Cave
Domain name - Domain name dispute resolution policy - U.S. service mark - U.S. service mark infringement - Identical - Confusingly similar - Cybersquatting - Bad faith domain name registrations - Abusive domain name registrations - Elements for complaint relief - Application of Uniform Dispute Resolution Policy.
Complainant was owner of United States service mark, Technicard. Respondent registered domain name, TECHNICARD.COM. On its TECHNICARD.COM web site, Respondent markets electronic software to be sold to businesses for promotional purposes which is described on the web site as "technicards" and as "business cards that are never thrown away. Respondent appears to have made every effort to address any concern of the Complainant and in a telephone conversation with the Complainants attorney even indicated that she would remove the term "business card" if that would placate Complainant.
HELD, Name Not Transferred to Complainant.
To be granted relief, the Complainant must establish all three elements under Paragraph 4 of the Uniform Domain Dispute Resolution Policy, namely, (1) the domain name and the trade or service mark are identical, (2) the Respondent has no rights or legitimate interest in the domain name, and (3) the Respondent has registered and is using the domain name in bad faith.
In this case, only the first element was established. The mere fact that the domain name is identical to the trade or service mark is not enough to establish the second element. The third element implies the conscious doing of a wrong because of dishonest purpose or moral obliquity. There is no evidence of the Respondent acting in such a manner.
Because these three elements must be made out, the Uniform Dispute Resolution Policy therefore applies only to bad faith/abusive domain names registrations (cybersquatting). It is not the vehicle to resolve trade or service mark disputes and does not preclude the parties ability to litigate such disputes in a court of law.
Policies referred to
Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999
Cave, Panelist: -
The above entitled matter came on for an administrative hearing on April
17, 2000 on the Complaint of Taylor Corporation, the Complainant, represented
by Ann K. Bloodhart, of Gray, Plant, Mooty, Mooty & Bennett, P.A.,
33 S. 6th Street, 3400 City Center, Minneapolis, MN 55402 against TechniCard,
the Respondent , represented by Nancy Lie-Winters, 18880 Marsh Lane #405,
Dallas, TX 75287, who has filed a Response on behalf of TechniCard. Each
party has also filed a
supplemental reply.
PROCEDURAL FINDINGS
Domain Name:TECHNICARD.COM
Domain Name Registrar: Network Solutions, Inc.
Domain Name Registrant: TechniCard
Date of Domain Name Registration: December 23, 1997
Date Complaint Filed: March 13, 2000
Date of Commencement of Administrative Proceeding: March 14, 2000
Due Date for Response: April 6, 2000
Response to Compliant was submitted timely
After reviewing the Complaint and determining it to be in administrative
compliance, the National Arbitration Forum ("Forum") forwarded the Complaint
to the Respondent on March 14, 2000 in compliance with Rule 2(a) of ICANNs
Rules for Uniform Domain Name Resolution Policy commencing the administrative
procedure pursuant to Rule 4( c). In Compliance with Rule 4(d) the Forum
immediately notified Network Solutions, Inc. that the administrative proceeding
had been
commenced. The Complaint and the Response were docketed and forwarded
to this arbitrator for decision.
FINDINGS OF FACT
1. The Complainant or its predecessor first used the name Technicard
in commerce on May 10, 1971 and registered it as a service mark in the
United States Patent and Trademark Office on July 25, 1972 and subsequently
renewed the service mark on July 25, 1992.
2. The Complainant or its predecessor has been using the service mark
TECHNICARD in connection with its business of printing business cards since
1971.
3. Respondent registered the domain name TECHNICARD.COM on December
23, 1997.
4. Respondent on its TECHNICARD.COM web site markets electronic software
to be sold to businesses for promotional purposes which is described on
the web site as "technicards" and as "business cards that are never thrown
away". The Respondent is not in the printing business.
5. The domain name registered to the Respondent and the service mark
of the Complainant are identical or confusingly similar.
6. The Respondent registered the domain name and developed the web
site in connection with a bona fide offering of goods and services before
any notice of this dispute, which did not occur until Complainants cease
and desist letter to the Respondent dated January 18, 2000.
7. There is no evidence that the Respondent had acted in bad faith
in acquiring the domain name or is using the domain name to attract Complainants
customers by intentionally creating a likelihood of confusion with Complainants
service mark. Respondent appears to have made every effort to address any
concern of the Complainant and in a telephone conversation with the Complainants
attorney even indicated that she would remove the term "business card"
if that would placate Complainant.
CONCLUSIONS
The undersigned certifies that he has acted independently and has no known conflict of interest as the Arbitrator in this proceeding. Having been duly selected, and being impartial, the undersigned makes the following conclusions:
1. Under Paragraph 4 of the Uniform Domain Dispute Resolution Policy
the Complainant must prove that all three elements set forth in the Paragraph
are present before relief can be granted. Only the first element
that the domain name and the trade or service mark are identical has been
established.
2. The second element that the Respondent has no rights or legitimate
interest in the domain name can not be established in this venue by the
mere fact that it is identical to a trade or service mark. The Respondent
registered the domain name in late 1997 and used it in connection with
a bona fide business and was not aware that the use of the name was being
disputed until she received the letter from Complainants attorney dated
January 18, 2000.
3. Lastly the third element required is that the Respondent has registered
and is using the domain name in bad faith. Bad faith implies the
conscious doing of a wrong because of dishonest purpose or moral obliquity.
4. In simplest form, the Uniform Dispute Resolution Policy applies
only to bad faith/abusive domain names registrations (cybersquatting) and
provides an efficient alternative mechanism to resolve such disputes. It
is not the vehicle to resolve trade or service mark disputes and does not
preclude the parties ability to litigate such disputes in a court of law.
The decision in this proceeding is based solely on the Rules and Policy
previously set forth to which the parties contractually agreed to submit
themselves and does not purport to decide the issue of service mark infringement.
DECISION
Based upon the above findings and conclusions, and pursuant to Rule 4 (I) of ICANNs Rules for Uniform Domain Dispute Resolution Policy, it is decided as follows:
THE UNDERSIGNED DIRECTS THAT THE DOMAIN NAME "TECHNICARD.COM" REGISTERED BY RESPONDENT NOT BE TRANSFERRED TO COMPLAINANT, TAYLOR CORPORATION.
Signed and dated this 17th day of April, 2000
by Judge Gilbert T. Cave (Retired),
arbitrator.
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