United States Filter
Corporation v. Purlzer Corporation
Claim Number: FA0106000097377
PARTIES
The Complainant is United States Filter Corporation, Lowell, MA, USA (“Complainant”)
represented by Frank P. Presta, of Nixon & Vanderhye, P.C. The Respondent is Purizer Corporation, Oak Brook, IL, USA (“Respondent”) represented
by Matthew P. Pasulka.
REGISTRAR AND DISPUTED
DOMAIN NAME
The domain name at issue is <bioxide.com>, registered with Network Solutions, Inc.
PANEL
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.
John J. Upchurch as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National
Arbitration Forum (“the Forum”) electronically on June 6, 2001; the Forum
received a hard copy of the Complaint on June 11, 2001.
On June 7, 2001, Network Solutions, Inc. confirmed
by e-mail to the Forum that the domain name <bioxide.com> is registered with Network Solutions, Inc. and
that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that
Respondent is bound by the Network Solutions, Inc. 5.0 registration agreement
and has thereby agreed to resolve domain-name disputes brought by third parties
in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On June 18, 2001, a Notification of Complaint and
Commencement of Administrative Proceeding (the “Commencement Notification”), setting
a deadline of July 9, 2001 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent’s registration as technical,
administrative and billing contacts, and to postmaster@bioxide.com by e-mail.
A timely response was received and determined to be
complete on July 9, 2001.
On July 16, 2001 a timely additional submission was
received from Complainant.
On July 16, 2001, pursuant to
Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch
as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be
transferred from Respondent to Complainant.
PARTIES’
CONTENTIONS
A. Complainant
Complainant
asserts that the subject domain name is substantially identical to
Complainant’s previously used trademark and service mark BIOXIDE.
Complainant
has rights in its federally registered mark, and Respondent has no rights or
legitimate interests in respect of the domain name; and the domain name has
been registered and is being used in bad faith.
B. Respondent
Respondent
asserts that Complainant has failed to demonstrate any evidence that shows the
Complainant has any rights to the subject domain name or why Respondent should
be considered as having no rights or legitimate interests.
Respondent
asserts Complainant has failed to demonstrate any evidence of bad faith on the
part of Respondent.
C. Additional Submissions
Complainant
submitted evidence of a chain of assignments in and to Complainant’s BIOXIDE mark vesting the named
Complainant with ownership of the mark’s federal registration.
FINDINGS
Complainant has failed to
establish the requisite elements for transfer of the domain name.
DISCUSSION
Paragraph 15(a) of the Rules
for Uniform Domain Name Dispute Resolution Policy (the “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 Policy requires that the
Complainant must prove each of the following three elements to obtain an order
that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is
identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered and is being
used in bad faith.
Identical and/or Confusingly
Similar
The domain name is identical
to Complainant’s federally registered trademark and service mark. See
Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to Complainant’s mark because the generic
top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).
Rights or Legitimate
Interests
Respondent has a legitimate
interest in the disputed domain name because it has used it in connection with
legitimate and substantial offering of goods and services since 1997, and
became commonly known by the domain name.
See Bankinter S.A. v. BI Fin. Inc.,
D2000-0460 (WIPO Sept. 5,
2000) (finding that Respondent has rights and legitimate interests in the
domain name where Respondent is using the domain name for a legitimate and fair
purpose and there is evidence that it is known by the disputed domain name).
Registration and Use in Bad
Faith
There is no showing to
counter Respondent’s claim that the domain names were registered and used in
good faith and that no confusion has or will result from Respondent’s use of
the domain names. Complainant has not
offered any evidence to demonstrate bad faith.
See Schering Aktiengesellschaft v.
Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000) (finding that the Respondent
did not register or use the domain name <metagen.com> in bad faith where
Respondent registered the domain name in connection with a fair business
interest and no likelihood of confusion was created); see also Mule Lighting, Inc. v. CPA, FA 95558 (Nat. Arb. Forum Oct.
17, 2000) (finding no bad faith where Respondent has an active website that has
been in use for two years and where there was no intent to cause confusion with
the Complainant’s website and business); see
also Energy Source Inc. v. Your
Energy Source, FA 96364 (Nat. Arb. Forum Feb. 19, 2001) (finding that
Respondent successfully rebutted Complainant’s averments that it registered and
used the domain name at issue in bad faith and that Complainant produced no
credible evidence of bad faith on the part of Respondent).
DECISION
The request for transfer of
the subject domain name is hereby denied.
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