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 Respondent’s Response for consideration by the Presiding Panelist.
On February 25, 2000, the Presiding Panelist accepted Complainant’s 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 Panelist’s 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 Claimant’s 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 Complainant’s 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 Respondent’s 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 Claimant’s 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 Respondent’s 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>.