v.
Nauga Network Services
[Indexed as: Uniroyal Engineered Products v. Nauga Network]
[Indexed as: nauga.net et al.]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Case No. D2000-0503
Commenced: 26 May 2000
Judgement: 18 July 2000
Presiding Panelist: Frederick M. Abbott
Domain name Domain name dispute resolution Registered trademarks Use of trademarks in commerce Replication of trademark - Redirection of users Cease and desist letter Identical Confusingly similar Differences not legally significant No rights or legitimate interests No evidence for personal identification interest Bad faith registration - Offer to sell domains.
Complainant owned trademarks for NAUGA and uses the term NAUGACAS to sell its products. Complainant also registered the domain name NAUGA.COM. Respondent registered domain name NAUGACASE.COM which transfer Internet users to Complainants website. Complainant sent Respondent a cease and desist letter. Respondents response to the letter was to offer to sell the domain NAUGACASE.COM and NAUGA.NET, which was registered by Respondent after receiving the cease and desist letter. Respondent did agree to sell the domain names but has refused and failed to sign the transfer agreement as required. Complainant asks for a transfer of the domain names in question. Respondent never submitted a reply, but Panel is satisfied that all reasonable steps were taken to notify Respondent of proceedings against it.
Held, Name Transferred
Domain name nauga.net is identical to Complainants registered
trade mark except that it include the .net suffix and is in lower case
letters. However, these are not legally significant differences.
For the very same reasons, the domain name naugacase.com is identical
to Complainants registered trademark. The domain names in question are
confusingly similar to Complainants registered trademarks.
Respondent has no legitimate rights or interests in the domain names
in question. Respondent argues that it has personal identification interests
in the domain names but failed to put forward any evidence to support this
claim. The fact that Internet users would be transferred to
Complainants website from naugacase.com does not constitute a legitimate
interest. That domain name was registered after receipt of a cease and
desist letter from Complainant, which seems to indicate an intention to
register domain names with the purpose of selling them to Complainant.
Registration of the domain names was done in bad faith. An
offer to sell a domain name after receipt of a cease and desist letter
does not necessarily constitute bad faith. However, registering the domain
naugacase.com after receiving the letter, and then offering to sell both
domain names indicates an intent to register domain names with the purpose
of selling them to Complainant for an amount greater than out-of-pocket
expenses directly related to registration of the names.
Policies referred to
Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999
Cases referred to
Educational Testing Service v. TOEFL, Case No. D2000-0044
Avery Dennison v. Sumpton (9th Cir. 1999), 189 F.3d 868.
Brookfield Communications v. West Coast Entertainment, 174 F.3d
1036, 1055 (9th Cir. 1999)
Sporty's Farm v. Sportsman's Market, 202 F.3d 489, 498, (2d Cir. 2000)
Panel Decision referred to
--
Abbott, Panelist: -
1. The Parties
The Complainant is Uniroyal Engineered Products, Inc., a corporation
organized in the State of New Jersey, United States of America (USA), with
place of business in Sarasota, Florida, USA.
The Respondent is Nauga Network Services, with address in North Walpole,
New Hampshire, USA.
2. The Domain Name(s) and Registrar(s)
The disputed domain names are "nauga.net" and "naugacase.com".
The registrar of the disputed domain names is Network Solutions, Inc.,
with business address in Herndon, Virginia, USA.
3. Procedural History
The essential procedural history of the administrative proceeding is
as follows:
a) Complainant initiated the proceeding by the filing of a complaint
via e-mail, received by the WIPO Arbitration and Mediation Center ("WIPO")
on May 26, 2000, and by courier mail received by WIPO on May 29, 2000.
Payment by Complainant of the requisite filing fees accompanied the courier
mailing. On May 29, 2000, WIPO transmitted a Request for Registrar Verification
to the registrar, Network Solutions, Inc. On June 7, 2000, the complaint
was amended by Complainant to correct a technical deficiency. On June 7,
2000, WIPO completed its formal filing compliance requirements checklist.
b) On June 7, 2000, WIPO transmitted notification of the complaint
and commencement of the proceeding to Respondent via e-mail, telefax and
courier mail. According to WIPO records, telefax and e-mail transmission
were successful. Notification was also transmitted via e-mail, telefax
and courier mail to Respondents Technical Contact.
c) On June 28, 2000, WIPO transmitted notification to Respondent of
its default in responding to the complaint via e-mail and telefax.
d) On July 3, 2000, WIPO invited the undersigned to serve as panelist
in this administrative proceeding, subject to receipt of an executed Statement
of Acceptance and Declaration of Impartiality and Independence ("Statement
and Declaration"). On July 3, 2000, the undersigned transmitted by fax
the executed Statement and Declaration to WIPO.
e) On July 5, 2000, Complainant and Respondent were notified by WIPO
of the appointment of the undersigned sole panelist as the Administrative
Panel (the "Panel") in this matter. WIPO notified the Panel that, absent
exceptional circumstances, it would be required to forward its decision
to WIPO by July 18, 2000. On July 5, 2000, the Panel received an electronic
file in this matter by e-mail from WIPO. The Panel subsequently received
a hard copy of the file in this matter by courier mail from WIPO.
The Panel has not received any requests from Complainant or Respondent
regarding further submissions, waivers or extensions of deadlines, and
the Panel has not found it necessary to request any further information
from the parties (taking note of Respondents default in responding to
the complaint). The proceedings have been conducted in English.
4. Factual Background
Complainant is the holder of trademark registrations on the Principal
Register at the USPTO for: (1) the term "NAUGA" (Reg. No. 0876281, dated
September 9, 1969); (2) the term "NAUGAHYDE" (Reg. No. 0354435, dated February
15, 1938)); the term "NAUGALON" (Reg. No. 0810004, dated June 21, 1966),
and; (4) the term "NAUGAFORM" (Reg. No. 0925738, dated December 21, 1971)(Complaint,
para. 12, and Annexes E-H.) Complainant has filed an application for trademark
registration for the term "NAUGASOFT" on the Principal Register at the
PTO (Ser. No. 75-626473, dated January 25, 1999)(id., Annex I). This application
is active. The NAUGA marks have been used in commerce since at least 1938
(based on the foregoing registrations), and continue to be used in commerce.
The term "NAUGA" has no meaning in the English language and was developed
by Complainant for use in connection with its products (id., para. 12).
Complainant uses the term "NAUGACASE" in commerce in connection with
the sale of computer cases and accessories (id., para. 12 and Annex J).
Based on Complainants undisputed representation, Complainants use of
the "NaugaCase" mark precedes Respondents registration of the "naugacase.com"
domain name (id.) 1.
Complainant has registered and uses the domain name "nauga.com". According
to a Network Solutions WHOIS database query printout, this domain name
was registered on May 31, 1996. Complainant is the named registrant (Panels
Network Solutions WHOIS database search of July 16, 2000).
Network Solutions WHOIS database query response (Complaint, Annex
A) indicates that "Nauga Network Services", with Administrative Contact
at "Davidoff, Andrew", is registrant of the domain name "NAUGA.NET". The
record of this registration was created on October 21, 1998, and was last
updated on February 14, 2000 (id.).
Network Solutions WHOIS database query response (Complaint, Annex
B) indicates that "Nauga Network Services", with Administrative Contact
at "Davidoff, Andrew", is registrant of the domain name "NAUGACASE.COM".
The record of this registration was created on January 15, 1999, and was
last updated on January 15, 1999 (id.).
There is no indication on the record of this proceeding that Respondent
has maintained a website identified by either of the disputed domain names.
Respondent s domain name "naugacase.com" has been used to transfer Internet
users entering the address "www.naugacase.com" to Complainants website
at "www.nauga.com" (Complaint, para. 12).
In a response, dated May 20, 1999, to a cease and desist letter from
Complainant, dated January 11, 1999, Respondent through its counsel offered
to sell the disputed domain names to Complainant for "an appropriate consideration."
Respondent also offered "to transfer naugacase.com to [Complainant] in
exchange for the right to continue to use nauga.net" (Letter from Richard
H. Coutant [for Respondent] to Christopher J. Glancy, dated May 20, 1999,
Complaint, Annex L). Counsel for Respondent, at that stage, indicated that
Respondent was making no commercial use of the disputed domain name "nauga.net",
that "Mr. Davidoffs use of the name is purely personal", and stated "Mr.
Davidoff is not interested in using his registered domain names for commercial
purposes, but he values them for reasons of personal identification, and
does not believe that his use of these names interferes with Uniroyals
trademark registration." (Id.)
The Service Agreement in effect between Respondent and Network Solutions
subjects Respondent to Network Solutions dispute settlement policy, the
Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August
26, 1999, and with implementing documents approved by ICANN on October
24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy")
requires that domain name registrants submit to a mandatory administrative
proceeding conducted by an approved dispute resolution service provider,
of which WIPO is one, regarding allegations of abusive domain name registration
(Policy, para. 4(a)). Respondent has not contested that it is properly
before this Administrative Panel.
5. Parties Contentions
A. Complainant
Complainant states:
"12. I.
A) Complainant has registered the mark NAUGA in the United States and
internationally. Complainant owns a U.S. trademark for NAUGA, Registration
No. 876,281, for coated fabrics of the so-called artificial leather type
in International Class 18.
.
Complainant has made continuous use of its NAUGA brand for its famous
upholstery products and accessories, and the mark has become incontestable.
The Complainant also owns international trademark registrations for NAUGA
in Australia, the Benelux countries and France.
B) The Complainant owns several U.S. trademark registrations for marks
that contain NAUGA as the dominant component
.
C) The Complainant owns a common law trademark for NAUGACASE by virtue
of its use of NAUGACASE in connection with the sale of its line of Naugahyde
computer cases and accessories
.
II
.
For many decades, Complainant has made widespread and continuous use
of the NAUGA mark and NAUGA-formative Marks in connection with its popular
upholstery products and accessories. Complainant began using the famous
mark NAUGAHYDE in 1936 for its artificial leather covering, and received
a U.S. trademark registration for that mark in 1938. In 1969, Complainant
received a U.S. trademark registration for its famous NAUGA brand. NAUGA
and all of the NAUGA-Formative Marks are fanciful marks coined by Complainant
and are used exclusively to identify Complainants products. The term NAUGA
has no meaning in the English language except as the identifier of Complainants
products.
Complainant has expended considerable time, effort and money in advertising,
promoting and selling products in connection with the NAUGA mark and the
NAUGA-Formative marks. As a result, the NAUGA mark has become a global
brand of enormous strength. Complainants NAUGA-branded upholstery products
and accessories are known by consumers throughout the world for their durability,
ease of cleaning, and performance. NAUGA-branded products are commonly
found in motor vehicles, health care facilities, restaurants, hotels, airports,
casinos, offices and homes. In short, Complainants NAUGA mark is famous
throughout the world and embodies substantial goodwill. It is universally
relied upon as identifying Complainant as the sole source of NAUGA products.
III.
Without the Complainants consent, and with full knowledge of Complainants
trademark rights, Respondent registered the domain names nauga.net and
naugacase.com with NSI. The nauga.net domain name, registered on October
21, 1998, replicates Complainants registered U.S. trademark for NAUGA.
The naugacase.com domain name, registered on January 15, 1999, replicates
the Complainants common law trademark for NAUGACASE. Respondent adopted
the nauga.net and naugacase.com names with the intent to exploit Complainants
goodwill in its marks.
IV.
On January 11, 1999, shortly after learning of Respondents registration
and use of the NAUGA mark in its domain name, Complainants attorney sent
a letter to Respondent, via Federal Express, objecting to Respondents
attempt to trade on Complainants goodwill and insisting that Respondent
delete its registration for the nauga.net domain name
. That letter was
received by Respondent on January 12, 1999. Almost immediately after receiving
Complainants demand letter, Respondent registered naugacase.com with NSI
on January 15, 1999 and began directing site traffic from that domain name
to Complainants website.
Respondents counsel responded to Complainant by letter dated May 20,
1999
. Respondent declined to relinquish its registration for the nauga.net
domain name and offered to sell both the nauga.net and naugacase.com domain
names to Complainant for appropriate consideration.
After some negotiation, Respondent agreed to transfer both domain names
to Complainant in exchange for $500. Subsequently, however, Respondent
repeatedly refused and failed to sign the domain name transfer agreement
required by NSI.
For over three months, Complainant has made numerous attempts to contact
Respondent to resolve this matter, but to no avail. Moreover, Respondents
counsel stated that he has been unable to contact Respondent for several
months and no longer knows Respondents whereabouts. Yet the site continues.
V.
Respondent registered the nauga.net and naugacase.com domain names
for the purpose of selling those names to Complainant, or, alternatively,
to unfairly trade on the goodwill Complainant has developed in its brands.
This Complaint is made on the following grounds:
A
.
The domain names registered by Respondent, nauga.net and naugacase.com,
incorporate wholesale Complainants valuable NAUGA and v [stet] NAUGACASE
brands. Respondents domain names are also confusingly similar to the NAUGA-Formative
marks. Upon information and belief, Respondents registration and use of
the NAUGA-branded domain names is for the specific purpose of causing confusion
among Internet users who will presume and an association between Complainants
and Respondents domain names, and to sell these domain names to Complainant.
B
.
Under Paragraph 4(c) of the Policy, Respondent has no legitimate interest
in the contested domain names in view of Complainants prior statutory
and common law rights in the trademarks NAUGA and NAUGACASE. These rights
were established by Complainants continuous use in commerce of NAUGA and
NAUGACASE long prior to Respondents registration of nauga.net and naugacase.com.
Respondent has also not made any legitimate, non-commercial, fair use
of the domain names nauga.net and/or naugacase.com. Indeed, the only uses
made by Respondent of these domain names are (1) the rerouting of site
traffic from naugacase.com to Complainants website; and (2) the offer
to sell the domain names to Complainant. These uses are not legitimate,
or non-commercial, and they do not constitute fair use of the marks.
C
.
Respondent never used the domain names for legitimate personal or business
purposes. Instead, Respondent offered to sell the domain names to the complainant,
indicating that Respondent registered the domain names only for the purpose
of selling the domain name registrations to the trademark owner at a profit
.This
is per se bad faith under Paragraph 4(b)(i) of the Policy.
Respondents wholesale incorporation of Complainants famous and distinctive
trademarks into the contested domain names was a willful and an intentional
bad faith attempt to attract Internet users to its sites by creating a
likelihood of confusion as to source, sponsorship, affiliation and endorsement
of its sites. This is per se bad faith under Paragraph 4(b)(iv) of the
Policy. In particular, Respondent automatically reroutes site traffic from
naugacase.com to Complainants nauga.com website. As a result, Complainants
customers have come to expect to find information about Complainants products
at the naugacase.com, even though the domain name is owned and controlled
by Respondent. Moreover, Respondent could easily redirect site traffic
to other material, subjecting Complainant to further injury.
Respondents registration of a second infringing domain name, naugacase.com,
after the Complainant demanded that Respondent delete its infringing nauga.net
domain name is also indicative of bad faith. Upon information and belief,
Respondents bad faith is further exemplified by its intentional failure
to maintain accurate contact information with NSI. See 15 U.S.C. §
1125(d)(1)(B)(i)(VII). Complainant has previously been unable to reach
Respondent at the telephone number Respondent provided to NSI." (Complaint)
Complainant requests that the Panel ask the Registrar to transfer the
domain names "nauga.net" and "naugacase.com" from Respondent to it (id.,
para. 13).
B. Respondent
Respondent did not reply to the Complainants contentions.
6. Discussion and Findings
The Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted
by the Internet Corporation for Assigned Names and Numbers (ICANN) on August
26, 1999 (with implementing documents approved on October 24, 1999), is
addressed to resolving disputes concerning allegations of abusive domain
name registration. This sole panelist has in an earlier decision discussed
the background of the administrative panel procedure, and the legal characteristics
of domain names, and refers to this earlier decision for such discussion
2. The Panel will confine itself to making determinations necessary to
resolve this administrative proceeding.
It is essential to dispute resolution proceedings that fundamental
due process requirements be met. Such requirements include that a respondent
have notice of proceedings that may substantially affect its rights. The
Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy
(the "Rules"), establish procedures intended to assure that respondents
are given adequate notice of proceedings commenced against them, and a
reasonable opportunity to respond (see, e.g., para. 2(a), Rules).
In this case, the Panel is satisfied that WIPO took all steps reasonably
necessary to notify the Respondent of the filing of the complaint and initiation
of these proceedings, and that the failure of the Respondent to furnish
a reply is not due to any omission by WIPO. There is ample evidence in
the form of confirmations of the sending of e-mail and telefax that Respondent
was notified of the complaint and commencement of the proceedings (see
Procedural History, supra).
Paragraph 4(a) of the Policy sets forth three elements that must be
established by a Complainant to merit a finding that a Respondent has engaged
in abusive domain name registration, and to obtain relief. These elements
are that:
(i) Respondents domain name is identical or confusingly similar to
a trademark or service mark in which the complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of
the domain name; and
(iii) Respondents domain name has been registered and is being used
in bad faith.
Each of the aforesaid three elements must be proved by a complainant
to warrant relief.
Because the Respondent has defaulted in providing a response to the
allegations of Complainant, the Panel is directed to decide this administrative
proceeding on the basis of the complaint (Rules, para. 14(a)), and certain
factual conclusions may be drawn by the Panel on the basis of Complainants
undisputed representations (id., para. 15(a)).
Complainant is the holder of trademark registrations for the term "NAUGA"
and for several NAUGA-formative marks, including "NAUGAHYDE", "NAUGALON"
and NAUGAFORM", in the United States and is using those marks in commerce
(see Factual Background, supra). Complainants registration of the "NAUGA"
marks on the Principal Register at the PTO establishes a presumption of
their validity in U.S. law 3. The Panel determines that Complainant has
rights in the trademarks "NAUGA", "NAUGAHYDE", "NAUGALON" and NAUGAFORM"
4. Based on the September 9, 1969 date of Complainants registration of
the trademark "NAUGA", and without prejudice to Complainants earlier-arising
rights in the marks (e.g., "NAUGAHYDE"), the Panel determines that Complainants
rights in the trademark arose prior to Respondents registration, on October
21, 1998 and January 15, 1999, respectively of the disputed domain names
"nauga.net" and "naugacase.com".
Complainant uses the trademark "NaugaCase" in connection with the sale
of computer cases and accessories (see Factual Background, supra). In light
of the arbitrary or fanciful character of Complainants "NAUGA" mark, and
its holding of rights in several "NAUGA"-formative marks, the Panel accepts
that Complainant holds common law trademark rights in the United States
in respect to the "NaugaCase" trademark. In the absence of any contrary
evidence from Respondent, and in light of Complainants representation
regarding long use of that mark, the Panel determines that Complainants
rights in the trademark "NaugaCase" arose prior to Respondents registration
of the domain name "naugacase.com".
Respondent has registered the domain name "nauga.net". This name is
identical to Complainants trademark "NAUGA", except that (1) the domain
name adds the generic top-level domain name ".net", and (2) the domain
name employs lower case letters, while the trademark is generally used
with an initial capital letter.
Insofar as domain names are not case sensitive, the Panel concludes
that use of the lower case letter format in "nauga.net" is a difference
without legal significance from the standpoint of comparing "nauga.net"
to "Nauga" 5. Similarly, the addition of the generic top-level domain (gTLD)
name ".net" is likewise without legal significance since use of a gTLD
is required of domain name registrants, ".net" is one of only several such
gTLDs, and ".net" does not serve to identify a specific enterprise as a
source of goods or services 6.
For purposes of this proceeding, it is unnecessary to decide whether,
in light of these factors, Respondents domain name "nauga.net" is "identical"
to Complainants trademark, since Respondents domain name "nauga.net",
is without doubt confusingly similar to Complainants trademark "Nauga".
Respondent has registered the domain name "naugacase.com". This name
is identical to Complainants trademark "NAUGACASE", except that (1) the
domain name adds the generic top-level domain name ".com", and (2) the
domain name employs lower case letters, while the trademark is generally
used with an initial capital letter and a capital "C" (i.e., "NaugaCase").
Insofar as domain names are not case sensitive, the Panel concludes
that use of the lower case letter format in "naugacase.com" is a difference
without legal significance from the standpoint of comparing "naugacase.com"
to "NaugaCase". Similarly, the addition of the generic top-level domain
(gTLD) name ".com" is likewise without legal significance since use of
a gTLD is required of domain name registrants, ".com" is one of only several
such gTLDs, and ".com" does not serve to identify a specific enterprise
as a source of goods or services 7.
For purposes of this proceeding, it is unnecessary to decide whether,
in light of these factors, Respondents domain name "naugacase.com" is
"identical" to Complainants trademark, since Respondents domain name
"naugacase.com", is without doubt confusingly similar to Complainants
trademark "NaugaCase".
The Panel determines that the domain names "nauga.net" and "naugacase.com"
are confusingly similar to Complainants trademarks "NAUGA" and "NAUGACASE",
respectively, in the sense of paragraph 4(a)(i) of the Policy.
Complainant has met the burden of proving that Respondent is the registrant
of domain names (as to each disputed name) that are identical or confusingly
similar to trademarks in which the Complainant has rights, and it has thus
established the first of the three elements necessary to a finding that
Respondent has engaged in abusive domain name registration.
The second element of a claim of abusive domain registration is that
the Respondent has no rights or legitimate interests in respect of the
domain name (Policy, para. 4(a)(ii)). The Policy enumerates several ways
in which a respondent may demonstrate rights or legitimate interests:
"Any of the following circumstances, in particular but without limitation,
if found by the Panel to be proved based on its evaluation of all evidence
presented, shall demonstrate your rights or legitimate interests to the
domain name for purposes of Paragraph 4(a)(ii)
(i) before any notice to you of the dispute, your use of, or demonstrable
preparations to use, the domain name or a name corresponding to the domain
name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been
commonly known by the domain name, even if you have acquired no trademark
or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the
domain name, without intent for commercial gain to misleadingly divert
consumers or to tarnish the trademark or service mark at issue." (Policy,
para. 4(c)).
Although Respondent has not provided a response in this proceeding,
Respondent (through counsel) in prior correspondence with Complainant disclaimed
that it had any commercial interest in the disputed domain names, suggesting
that it "values them for reasons of personal identification" (see Factual
Background, supra). Respondent offered no evidence that might support its
claim of a personal identification interest in the names.
In view of the arbitrary or fanciful character of Complainants "Nauga"
marks, and the lack of evidence of Respondents prior use of the marks
for personal identification, the Panel is not persuaded that Respondent
has a legitimate personal identification interest in the disputed domain
names.
There is evidence on the record that Respondent has used the "naugacase.com"
domain name to transfer Internet users to Complainants "www.nauga.com"
website. The Panel does not regard this use as establishing Respondents
legitimate interest in the "naugacase.com" domain name. The "naugacase.com"
name was registered immediately following Respondents receipt of a cease
and desist letter from Complainant regarding the "nauga.net" domain name.
Respondents registration and use of the "naugacase.com" name appears intended
to promote the sale of the disputed domain names to Complainant.
The Panel determines that Respondent has no rights or legitimate interests
in the disputed domain names. Thus, the Complainant has established the
second element necessary to prevail on its claim that Respondent has engaged
in abusive domain name registration.
The Policy indicates that certain circumstances may, "in particular
but without limitation", be evidence of bad faith (Policy, para. 4(b)).
Among these circumstances are (1) that the domain name has been registered
or acquired by a respondent "primarily for the purpose of selling, renting,
or otherwise transferring the domain name registration to the complainant
who is the owner of the trademark or service mark or to a competitor of
that complainant, for valuable consideration in excess of [respondents]
documented out-of-pocket costs directly related to the domain name" (Id.,
para. 4(b)(i)); (2) that a respondent has registered the domain name "in
order to prevent the owner of the trademark or service mark from reflecting
the mark in a corresponding domain name, provided that [the respondent
has] engaged in a pattern of such conduct" (id., para. 4(b)(ii)), and (3)
that a respondent "by using the domain name,
[has] intentionally attempted
to attract, for commercial gain, Internet users to [its] web site or other
on-line location, by creating a likelihood of confusion with the complainants
mark as to the source, sponsorship, affiliation, or endorsement of [respondents]
web site or location of a product or service on [its] web site or location"
(id., para. 4(b)(iv)).
In this case, Respondent offered to sell the disputed domain names
to Complainant in response to a cease and desist letter. Standing alone,
an offer to sell domain names in response to a cease and desist letter
from another party does not constitute bad faith within the meaning of
the Policy.
Respondent registered "nauga.net" prior to receipt of the cease and
desist letter from Complainant. It registered the "naugacase.com" domain
name after receipt of the letter. It then offered to sell both names to
Complainant. In its offer of sale, it asserted a spurious personal identification
interest in the names. The Panel considers this conduct to evidence that
Respondent registered the disputed domain names for the purpose of selling
them to Complainant for a price in excess of its out-of-pocket expenses
directly related to the names. This constitutes bad faith within the meaning
of paragraph 4(b)(i) of the Policy.
In the interests of administrative economy, the Panel will not address
other potential bad faith activities on the part of Respondent.
Respondent is determined to have registered and used the disputed domain
names in bad faith within the meaning of paragraph 4(b) of the Policy.
Complainant has established the third and final element necessary for a
finding that the Respondent has engaged in abusive domain name registration.
The Panel will therefore request the registrar to transfer the domain
names "nauga.net" and "naugacase.com" to the Complainant.
7. Decision
Based on its finding that the Respondent, Nauga Network Services, has
engaged in abusive registration of the domain names "nauga.net" and "naugacase.com"
within the meaning of paragraph 4(a) of the Policy, the Panel orders that
the domain names "nauga.net" and "naugacase.com" be transferred to the
Complainant, Uniroyal Engineered Products, Inc.,
Footnotes:
1. The web pages on which Complainant promotes its "NaugaCase"
products bear a copyright date of 1996. This supports Complainants claim
of usage of the "NaugaCase" mark for a substantial period. The Panel relies
on Complainants undisputed representation for its determination.
2. See Educational Testing Service v. TOEFL, Case No.
D2000-0044, decided March 16, 2000.
3. 15 USCS § 1057(b). See, e.g., Avery Dennison
v. Sumpton (9th Cir. 1999), 189 F.3d 868.
4. For purposes of reaching a decision in this proceeding,
the Panel need not consider the significance of Complainants application
for registration of the trademark "NAUGASOFT".
5. See Brookfield Communications v. West Coast Entertainment,
174 F.3d 1036, 1055 (9th Cir. 1999).
6. See Sporty's Farm v. Sportsman's Market, 202 F.3d
489, 498, (2d Cir. 2000), citing Brookfield, id. For purposes of its decision,
the Panel need not address whether ".net" may be capable of acquiring secondary
meaning in another context.
7. For purposes of its decision, the Panel need not address
whether ".com" may be capable of acquiring secondary meaning in another
context.
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