Cordstrap B.V. v Avner Aliphas
[Indexed as: Cordstrap B.V. v Avner Aliphas]
[Indexed as: Cordstrap.com]
Commenced: February 21, 2000
Judgment: April 5, 2000
John A. Bender, Chairman Hon. Robert R. Merhige, Jr James A. Carmody, esq.
Domain name- ICANN'S Rules for Uniform Domain Name Dispute Resolution Policy- National Arbitration Forum's Supplemental Rules- Identical- Bad faith registration- Bad faith use- No legitimate interest- Distinctive value- Disrupt business- Commercial gain- Likelihood of confusion- Prevent from reflection of the mark- Generic names- Descriptive names
Complainant is a Dutch company and has trademark registration of the mark "CORDSTRAP". Complainant sought to register "CORDSTRAP.COM" as a domain but learned that Respondent had registered the identical domain name. Complainant alleged that its registered mark and the registered domain name were identical and that the Respondent registered the domain name at issue in bad faith.
Held, Name Transferred to Complainant.
Complainant must establish, according to paragraph 4 of the Policy, that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, that Respondent has no rights or legitimate interests in respect to the domain name, and that Respondent registered and is using the domain name is bad faith.
It is clear that the domain name at issue is identical to a trademark in which Complainant has rights and that the Respondent has no rights or legitimate interests in respect of the domain name. The domain name and associated website were actually obtained and set up by Respondent for his uncle in Mexico. This is bad faith registration.
asserts that developed a new woven product in its strapping materials business
in early 1998 of a type not manufactured by Complainant. It regarded
"CORDSTAP" as a generic term describing packaging strapping and has attached
several exhibits to its Response so indicating a generic usage of "CORDSTRAP,"
"CORD STRAP" and "CORD STRAPPING". Thus, it was natural, suggests
Respondent, to incorporate Cordstrap, LLC in 1998 and to obtain the domain
CORDSTRAP.COM in 1998.
Since the Respondent registered "CORDSTRAP.COM" in order to prevent the owner of the trademark from reflection of the mark in a corresponding domain name, to disrupt the competitive U.S. business of Complainant and to attract, for commercial gain, Internet users to Respondent's website by creating a likelihood of confusion with the Complainant's mark, this demonstrates bad faith use.
Policies referred to
ICANN'S Rules for Uniform Domain Name Dispute Resolution Policy
National Arbitration Forum's Supplemental Rules to ICANN'S Uniform Domain Resolution Policy
Registration Agreements referred to
Cases referred to
Panel Decisions referred to
Bender, Merhige, Carmody, Panelists:-
5750 AH Deuvne Geyserstraat 4
5753 RP Deuvne, Netherlands
28 Hampden Terrace
Newton, MA 02149
FILE NO.: FA0002000094110
The above entitled matter came on for an administrative hearing on April 4, 2000 before a panel of three arbitrators, on the Complaint of Cordstrap B.V. ("Complainant"), represented by Mark P. Szpak, Esq., Ropes & Gray, One International Place, Boston, MA 02110, against Avner Aliphas, ("Respondent"), represented by Peter T. Wakiyama, Esq., Wolf, Block, Schorr and Solis-Cohen, LLP, 111 South 15th Street, Philadelphia, PA 19102. Upon the written submitted record including the Complaint, the Response to Complaint and the Complainant's Rebuttal to Respondent's Reply to the Complaint, the following DECISION is rendered:
Domain Name: CORDSTAP.COM
Domain Name Registrar: Network Solutions, Inc.
Domain Name Registrant: Avner Aliphas
Date of Domain Name Registration: July 12, 1998
Date Complaint Filed: February 21, 2000
Date Response to Complaint Filed: March 15, 2000. Filing was 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 February 22, 2000 in compliance with Rule 2(a) and the administrative proceeding was commenced pursuant to Rule 4(c). In compliance with Rule 4(d), the Forum immediately notified Network Solutions that the administrative proceeding had commenced. The Complainant elected to have this administrative proceeding conducted by a three-arbitrator panel and paid the appropriate fee for same. The Complaint, the Response, Complainant's Rebuttal to Respondent's Reply to Complaint and the Objection of Respondent to Consideration by the Panel of the Rebuttal were docketed and forwarded to each of the undersigned arbitrators for decision.
FINDINGS OF FACT
1. Neither the Complainant nor the Respondent contests the jurisdiction of the Forum or the undersigned arbitrators to resolve this controversy.
1. Complainant is a Dutch company, operating as Cordstrap B.V. since 1965, with affiliates using "Cordstrap" in their names in a number of European countries and in the Middle East. Exhibit B to the Complaint lists 21 countries, without limitation, in which Complainant does business. Such list does not include the United States or Mexico.
2. Complainant has applied for and obtained trademark registration of the mark "CORDSTRAP" in a number of countries, the first of which appears to be in 1974 as a Benelux registration. No registration or application for registration in the United States or in Mexico is claimed by either Complainant or Respondent.
3. In October of 1998, Complainant sought to register "cordstrap.com" as a domain but learned that Respondent had registered the identical domain name on July 12, 1998. At the time, Respondent was a student at Johns Hopkins University in Baltimore, Maryland. As became apparent in communications between the parties, the domain name and associated website were actually obtained and set up by Respondent for his uncle in Mexico who operated a strapping materials company there named Van Dyck, S.A. de C.V. ("Van Dyke"). Respondent's uncle, Avihu Aliphas, had also formed a Deleware Corporation by the name of Cordstrap, LLC as early as September 24, 1998, the month prior to Complainant's attempt to register cordstrap.com.
4. Following unsuccessful settlement negotiations, a complaint to Network Solutions succeded in inactivating the domain name. The new regime under which domain name disputes are decided caused Network Solutions advise the parties that a formal complaint should be filed or Respondent would be reinstated in the right to use cordstrap.com.
5. Complainant argues that his case tracks the three tests for relief under paragraph 4 of the Policy: 4.a.(1) the domain name is identical to or confusingly similar to a trademark or service mark in which the Complainant has rights; 4.a.(2) that Respondent has no rights or legitimate interests in respect to the domain name, and 4.a.(3) that Respondent registered and is using the domain name is bad faith. Customers and prospective customers of Complainant will be confused and attracted to Respondent's website which will be http://www.cordstrap.com if Respondent is not accorded relief by this panel.
6. Respondent asserts that Van Dyke developed a new woven product in its strapping materials business in early 1998 of a type not manufactured by Complainant. It regarded "cordstrap" as a generic term describing packaging strapping and has attached several exhibits to its Response so indicating a generic usage of "cordstrap," "cord strap" and "cord strapping." Thus, it was natural, suggests Respondent, to incorporate Cordstrap, LLC in 1998 and to obtain the domain cordstrap.com in 1998.
7. On the one
hand, while alleging considerable business activity in the U.S. and numerous
international registrations of "CORDSTRAP," Complainant does not explain
why it apparently did not apply for trademark registration with the U.S.
Patent and Trademark Office. Respondent seems to argue that Complainant's
failure to appear at industry trade shows on this side of the Atlantic
should have some probative force here. On the other hand, Respondent does
not claim that it was unaware of Cordstrap B.V., a company in the same
industry, when incorporating Cordstrap, LLC in Deleware and when registering
cordstrap.com with Network Solutions. If there were no distinctive value
in the word "cordstrap," because it is generic and descriptive, why choose
it to name your new company-especially with knowledge of a competitor's
use? It would seem that, by laying claim to the domain name and bolstering
with a U.S. incorporation using a name identical to that of a European
competitor, more than "nimble" activity is involved on the part of Respondent.
It was an attempt to keep a competitor an ocean away.
8. Based upon the undisputed aspects of the record before us, the panel finds as matters of fact: a. That the domain name at issue is identical to a trademark in which Complainant has rights; b. That Respondent has no rights or legitimate interests in respect of the domain name; and c. That Respondent registered cordstrap.com in order to prevent the owner of the trademark from reflection of the mark in a corresponding domain name, to disrupt the competitive U.S. business of Complainant and to attract, for commercial gain, Internet users to Respondent's website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, or affiliation of the www.cordstrap.com website.
The undersigned arbitrators certify that they have acted independently and have no known conflict of interest to serve on the arbitral panel in this proceeding. Having been duly selected, and being impartial, the undersigned make the following conclusions:
1. The arbitral panel wishes to commend the very high quality of legal argument and the creativity of counsel on both sides of this controversy.
2. With regard to the objection of counsel for Respondent that a "second round" of pleadings was impermissibly begun with the "short reply" of Complainant to the Response, it should be noted that the panel did not give consideration to such pleading and it had no influence on this DECISION.
3. Based on the foregoing, we find that Respondent has registered the domain "cordstrap.com" in bad faith within the meaning and in violation of paragraph 4 of the Policy and that Complainant is hereby granted the relief below.
Based upon the above findings and conclusions, and pursuant to Rule 4(i) of the ICANN's Rules for Uniform Domain Name Dispute Resolution Policy and the National Arbitration Forum's Supplemental Rules to ICANN's Uniform Domain Resolution Policy, it is decided as follows:
THE UNDERSIGNED DIRECT THAT THE DOMAIN NAME "CORDSTRAP.COM," REGISTERED BY RESPONDENT AVNER ALIPHAS, BE TRANSFERRED TO COMPLAINANT CORDSTRAP B.V.
5th of April 2000
John A. Bender, Chairman Hon. Robert R. Merhige, Jr James A. Carmody, esq.
520 Pike Street, Suite 2600 Hunton & Williams 5718 Westheimer, Suite 1010
Seattle, WA 98101 951 E. Byrd Street Houston, TX 77057
Riverfront Plaza, East Tower
Richmond, VA 23219
Domain Name Transferred