WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Uniroyal Engineered Products, Inc. v. Nauga Network Services
Case No. D2000-0503
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 Respondentís 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 Respondentís 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 Complainantís undisputed representation, Complainantís use of the "NaugaCase" mark precedes Respondentís registration of the "naugacase.com" domain name (id.) 1.
Complainant has registered and uses the domain name "nauga.com". According to a Network Solutionsí WHOIS database query printout, this domain name was registered on May 31, 1996. Complainant is the named registrant (Panelís Network Solutionsí WHOIS database search of July 16, 2000).
Network Solutionsí 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 Solutionsí 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. Respondentí s domain name "naugacase.com" has been used to transfer Internet users entering the address "www.naugacase.com" to Complainantís 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. Davidoffís 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 Uniroyalís trademark registration." (Id.)
The Service Agreement in effect between Respondent and Network Solutions subjects Respondent to Network Solutionsí 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. Partiesí Contentions
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 Ďcoated fabrics of the so-called artificial leather typeí in International Class 18. Ö.
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 componentÖ.
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 accessoriesÖ.
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 Complainantís products. The term ĎNAUGAí has no meaning in the English language except as the identifier of Complainantís 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. Complainantís 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, Complainantís 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.
Without the Complainantís consent, and with full knowledge of Complainantís 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 Complainantís registered U.S. trademark for NAUGA. The naugacase.com domain name, registered on January 15, 1999, replicates the Complainantís common law trademark for NAUGACASE. Respondent adopted the nauga.net and naugacase.com names with the intent to exploit Complainantís goodwill in its marks.
On January 11, 1999, shortly after learning of Respondentís registration and use of the NAUGA mark in its domain name, Complainantís attorney sent a letter to Respondent, via Federal Express, objecting to Respondentís attempt to trade on Complainantís goodwill and insisting that Respondent delete its registration for the nauga.net domain nameÖ. That letter was received by Respondent on January 12, 1999. Almost immediately after receiving Complainantís demand letter, Respondent registered naugacase.com with NSI on January 15, 1999 and began directing site traffic from that domain name to Complainantís website.
Respondentís counsel responded to Complainant by letter dated May 20, 1999Ö. 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 Ďappropriate consideration.í
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, Respondentís counsel stated that he has been unable to contact Respondent for several months and no longer knows Respondentís whereabouts. Yet the site continues.
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:
The domain names registered by Respondent, nauga.net and naugacase.com, incorporate wholesale Complainantís valuable NAUGA and v [stet] NAUGACASE brands. Respondentís domain names are also confusingly similar to the NAUGA-Formative marks. Upon information and belief, Respondentís 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 Complainantís and Respondentís domain names, and to sell these domain names to Complainant.
Under Paragraph 4(c) of the Policy, Respondent has no legitimate interest in the contested domain names in view of Complainantís prior statutory and common law rights in the trademarks NAUGA and NAUGACASE. These rights were established by Complainantís continuous use in commerce of NAUGA and NAUGACASE long prior to Respondentís 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 Complainantís 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.
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 profitÖ.This is per se bad faith under Paragraph 4(b)(i) of the Policy.
Respondentís wholesale incorporation of Complainantís 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 Complainantís nauga.com website. As a result, Complainantís customers have come to expect to find information about Complainantís 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.
Respondentís 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, Respondentís bad faith is further exemplified by its intentional failure to maintain accurate contact information with NSI. See 15 U.S.C. ß 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).
Respondent did not reply to the Complainantís 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) Respondentís 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) Respondentís 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 Complainantís 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). Complainantís 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 Complainantís registration of the trademark "NAUGA", and without prejudice to Complainantís earlier-arising rights in the marks (e.g., "NAUGAHYDE"), the Panel determines that Complainantís rights in the trademark arose prior to Respondentís 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 Complainantís "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 Complainantís representation regarding long use of that mark, the Panel determines that Complainantís rights in the trademark "NaugaCase" arose prior to Respondentís registration of the domain name "naugacase.com".
Respondent has registered the domain name "nauga.net". This name is identical to Complainantís 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, Respondentís domain name "nauga.net" is "identical" to Complainantís trademark, since Respondentís domain name "nauga.net", is without doubt confusingly similar to Complainantís trademark "Nauga".
Respondent has registered the domain name "naugacase.com". This name is identical to Complainantís 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, Respondentís domain name "naugacase.com" is "identical" to Complainantís trademark, since Respondentís domain name "naugacase.com", is without doubt confusingly similar to Complainantís trademark "NaugaCase".
The Panel determines that the domain names "nauga.net" and "naugacase.com" are confusingly similar to Complainantís 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 Complainantís "Nauga" marks, and the lack of evidence of Respondentís 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 Complainantís "www.nauga.com" website. The Panel does not regard this use as establishing Respondentís legitimate interest in the "naugacase.com" domain name. The "naugacase.com" name was registered immediately following Respondentís receipt of a cease and desist letter from Complainant regarding the "nauga.net" domain name. Respondentís 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 [respondentís] 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, Ö [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 complainantís mark as to the source, sponsorship, affiliation, or endorsement of [respondentís] 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.
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.,
Frederick M. Abbott
Dated: July 18, 2000
1. The web pages on which Complainant promotes its "NaugaCase" products bear a copyright date of 1996. This supports Complainantís claim of usage of the "NaugaCase" mark for a substantial period. The Panel relies on Complainantís undisputed representation for its determination.
2. See Educational Testing Service v. TOEFL, Case No. D2000-0044, decided March 16, 2000.
3. 15 USCS ß 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 Complainantís 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.