Telaxis Communications Corp.
v.
William E. Minkle
[Indexed as: Telaxis Communications Corp. v. Minkle]
[Indexed as: Telaxis.com et al.]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Case No. D2000-0005
Commenced: 14 January 2000
Judgment: 5 March 2000
Presiding Panelist: Richard W. Page
Domain name - Domain name dispute resolution policy - Identical - Confusingly similar - Bad faith registration - Bad faith use -- Bona fide offering of goods or services Trademarks -- Competing Rights Legitimate Interests.
Complainant was registrant of United States trademarks TELAXIS and TELAXIS COMMUNICATIONS. Registrant registered the domain name, telaxis.com and telaxis.net. Complainant alleged that its registered marks and the registered domain names were identical and that Respondent registered the domain names at issue in bad faith and had no rights or legitimate interest in the domain names.
Held, Name not Transferred to Complainant.
Complainant must establish both bad faith registration and bad faith use
It is clear that the domain name TELAXIS.COM and TELAXIS.NET are identical or confusingly similar to the trademarks registered and used by the Complainant, TELAXIS COMMUNICATIONS CORPORATION. The Complainant currently uses the trademarks TELAXIS and TELAXIS COMMUNICATIONS.
When the Respondent registered the domain name telaxis.com with the registrar NSI, the Complainant, then know as Millitech Corporation, Inc., had no trademarks, domain names or websites using the phrase telaxis. The Respondent had posted a temporary website to indicate his intentions to use telaxis.com to promote his real estate services. It is clear the Respondent had a legitimate interest in the domain name as he made preparations to use the domain name with a bona fide offering of services.
The Complainant has failed to demonstrate that the Respondent registered
the domain names in bad faith and had no rights or legitimate interest
in the domain names.
Page, Panelist -
The Parties
The Complainant is Telaxis Communications Corporation, a Delaware corporation
with its principal place of business located at 20 Industrial Drive East,
P.O. Box 109, South Deerfield, Massachusetts, 01373. Respondent is William
E. Minkle, an individual, who resides at 900 Golfers Pass Road, P.O. Box
5004, Incline Village, Nevada 89451.
The Domain Name(s) and Registrar(s)
The domain names at issue are <telaxis.com> and <telaxis.net>.
The registrar is Network Solutions, Inc. ("NSI") of Herndon, Virginia.
Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received the
Complaint of Telaxis Communications Corporation on January 14, 2000 by
email and on January 18, 2000 in hardcopy. The Complainant also filed a
letter supplementing its Complaint with regard to the Complainant's submission
to jurisdiction under Paragraph 3(b)(xiii) of the Rules for Uniform Domain
Name Dispute Resolution Policy (the "Rules"). The Center received this
supplemental letter on January 14, 2000 by email and on January 17, 2000
in hardcopy. The Complainant made the required fee payment.
On January 18, 2000, the Center sent an Acknowledgement of Receipt
of the Complaint to the Complainant. On the same date, the Center sent
to the registrar NSI, a request for verification of registration data.
On January 19, 2000, the registrar confirmed, inter alia, that it is the
registrar of the domain names in dispute and that these are registered
in the Respondent's name.
Having verified that the Complaint satisfies the formal requirements
of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"),
the Rules, and the Supplemental Rules for Uniform Domain Name Dispute Resolution
Policy (the "Supplemental Rules"), the Center on January 21, 2000 sent
to the Respondent, with a copy to the Complainant, a notification of the
administrative proceeding together with copies of the Complaint and of
the supplemental letter. This notification was sent by the methods required
under Paragraph 2(a) of the Rules. The formal date of the commencement
of this administrative proceeding is January 21, 2000.
On February 11, 2000, the Center received the Respondent's Response
in hardcopy, which the Center acknowledged to the parties on February 14,
2000. Also on February 14, after receiving his completed and signed Statement
of Acceptance and Declaration of Impartiality and Independence, the Center
appointed Mr. Richard W. Page as the single panelist (the "Presiding Panelist").
On the same date, the Center notified the parties of this appointment.
On February 23, 2000, Complainant submitted via fax a Reply to Respondents
Response for consideration by the Presiding Panelist.
On February 25, 2000, the Presiding Panelist accepted Complainants
Reply and allowed Respondent until 5:00 p.m. Pacific Standard Time on Wednesday,
March 1, 2000 to file his final comments in the form of a Sur-Reply. The
deadline for the delivery of the Presiding Panelists Decision on the Complaint
to the Center was extended until Monday, March 6, 2000.
On March 1, 2000, Respondent filed his Sur-Reply by fax and by email.
Factual Background
The trademarks upon which the Complaint is based are TELAXIS and TELAXIS
COMMUNICATIONS
Since 1995, Complainant has developed and supplied high-speed or broadband,
wireless access equipment to network service providers. During this time,
Complainant operated under the corporate name of Millitech Corporation,
Inc.
On November 1, 1998, the registrar NSI opened a record listing Respondent
as the registrant of the domain name <telaxis.com>.
In November, 1998, Complainant, then known as Millitech Corporation,
Inc., had no trademarks, domain names or websites using the phrase "telaxis".
In June 1999, Respondent posted a temporary website announcing the
pending launch of his real estate services to the telecommunications and
internet industries at the www.telaxis.com address. At this time, Respondent
loaded no content onto this website.
On September 27, 1999, Complainant filed intent-to-use application
Serial No. 75/809307 covering the trademark TELAXIS with the United States
Patent and Trademark Office.
On September 27, 1999, Complainant filed intent-to-use application
Serial No. 75/809318 covering the trademark TELAXIS COMMUNICATIONS with
the United States Patent and Trademark Office.
On September 30, 1999, Complainant filed a trademark application covering
TELAXIS in Morocco. That same day Morocco issued a trademark registration
for TELAXIS with Registration No. 70,971.
On September 30, 1999, Respondent applied for a business license in
the County of Washoe in the State of Nevada using the name "Telaxis".
On October 8, 1999, Complainant first contacted Respondent to purchase
the domain name <telaxis.com>.
On October 9, 1999, Respondent registered the domain name <telaxis.net>
with the registrar NSI.
In October 1999, Millitech Corporation, Inc. changed its corporate
name to Telaxis Communications Corporation.
During October and November 1999, negotiations ensued regarding the
potential sale of <telaxis.com> and <telaxis.net> by Respondent to
Complainant for an amount in the range of US$44,000-60,000.
During December 1999, Complainant alleges that Respondent redirected
<telaxis.com> and <telaxis.net> to point to websites of Claimants
competitors and/or to a pornographic website.
In February 2000, Respondent loaded content onto websites located at
www.telaxis.com and www.telaxis.net.
Complainant currently uses the trademarks TELAXIS and TELAXIS COMMUNICATIONS
for its wireless communications products. Complainant has registered the
domain name <telaxiscomm.com> and operates a website at www.telaxiscomm.com.
Parties Contentions
A. Complainant contends that pursuant to Paragraphs 4.a.(i)-(iii) of
the Policy, Respondent has no legitimate interest in the contested domain
names, has not used the domain names for a bona fide offering of goods
or services, and has acted in bad faith.
B. Respondent contends that Complainant has failed to demonstrate the
elements required by Paragraphs 4.a.(ii) and (iii). Furthermore, Respondent
asserts that he has shown the elements in Paragraph 4.c.(i) which prove
a legitimate interest in the domain names disproving the requirement of
Paragraph 4.a.(ii).
Discussion and Findings
A. The evidence presented by the parties demonstrates that Complainants
trademarks TELAXIS and TELAXIS COMMUNICATIONS are identical or confusingly
similar to the domain names <telaxis.com> and <telaxis.net>. Therefore,
the requirement of Paragraph 4.a.(i) is met.
B. The evidence presented by the parties demonstrates that Respondent
did have rights or legitimate interests in respect of the domain names.
Paragraph 4.c.(i) instructs that evidence of use or demonstrable preparations
to use with a bona fide offering of good or services prior to notice of
the dispute is sufficient to establish rights or legitimate interest which
will defeat the necessary element of Paragraph 4.a.(ii). Respondent registered
his domain name <telaxis.com> with the registrar NSI on November 1,
1998 which was prior to the dispute arising in October 1999. The preliminary
website established by Respondent at www.telaxis.com in June 1999 shows
use or demonstrable preparations to use in the offering of real estate
services. Therefore, the requirement of Paragraph 4.a.(ii) is not met.
C. The evidence presented by the parties demonstrates that the registration
of Respondents domain name <telaxis.com> was in good faith. Once the
dispute arose, the parties each engaged in a series of actions for the
primary purpose of strengthening their respective positions in the dispute.
The redirection of the disputed domain names to the websites of Claimants
competitors or to pornographic websites were acts of bad faith by Respondent.
However, Paragraph 4.a.(iii) requires that the domain name "has been registered
and is being used in bad faith" (emphasis added). The Respondents registration
of the domain name <telaxis.com> was not in bad faith. Therefore, the
requirement of Paragraph 4.a.(iii) is not met.
D. This dispute involves the competing rights and legitimate interests
of two parties in the domain names <telaxis.com> and <telaxis.net>.
Given the nature of this dispute it is properly solved by mediation or
arbitration before the Center or by litigation in a forum of competent
jurisdiction.
Decision
Claimant has failed to prove the necessary elements that the Respondent
had no rights or legitimate interest in the domain names and that Respondent
registered the domain names in bad faith. Therefore, the remedies requested
by Claimant pursuant to Paragraph 4.i of the Policy and Paragraph 15 of
the Rules are denied. Respondent shall not be required to cancel or to
transfer to Claimant the domain name <telaxis.com> or <telaxis.net>.
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