WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Amphenol Corporation v. Applied Interconnect, Inc.
Case No. D2001-0296
1. The Parties
Complainant is Amphenol Corporation, a Delaware corporation located in Wallingford, Connecticut, USA.
Respondent is Applied Interconnect, Inc. located in Sunnyvale, California, USA.
2. The Domain Name and Registrar
The domain name at issue is ("Domain Name"):
The registrar is Network Solutions, Inc.
3. Procedural History
This action is subject to the ICANN Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999, ("the Policy") and the ICANN Rules for Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999, ("the Rules").
The Complaint was submitted on February 28, 2001at the WIPO Arbitration and mediation Center. An Amended Complaint was filed on March 15, 2001. The Response was submitted on April 4, 2001.
On April 12, 2001, Mark V.B. Partridge was appointed as a Sole Panelist.
4. Factual Background
Complainant is the owner of the trademark AMPHENOL, a coined word. The trademark is the subject of various federal registrations, including Reg. No. 1,158,967, dated June 30, 1981, for various electrical components, including "electrical, radio and radio frequency connectors, cables, switches and wires; optical fiber connectors, cables, switches and couplers." The Registration is incontestable and claims first use as of June 1, 1940.
Complainant's primary business is connectors, but over 20 % of its business apparently involves other electrical products including cables. Respondent is primarily engaged in the sale of cable assemblies. Respondent has purchased AMPHENOL connectors and cables from Complainant since 1996, and combines those products and similar products from other companies into cable assemblies.
Respondent registered the Domain Name on June 30, 1999. Respondent uses the Domain Name for a web site selling its cable assemblies.
When Complainant learned of Respondent's registration, it objected to use of its trademark as part of the Domain Name. Respondent claimed to have a legitimate interest in using the domain name because it advertises and sells AMPHENOL products, but noted that "We are reasonable business people and would entertain alternatives." The parties began to discuss payment for transfer of the Domain Name, but reached no agreement. This proceeding followed.
5. Parties’ Contentions
Complainant contends that the Domain Name is confusingly similar to its mark, that Respondent has no rights or legitimate interests in the Domain Name, and that Respondent has registered and used the Domain Name in bad faith as a deliberate attempt to trade on Complainant's mark.
Respondent contends that that the Domain Name is not confusingly similar to Complainant's mark. Respondent claims it has a legitimate interest because it began using the Domain Name to sell cable assemblies prior to notice of the dispute. Finally, Respondent denies that the Domain Name was registered or used in bad faith.
To obtain relief under the ICANN Uniform Domain Name Dispute Resolution Policy, Paragraph 4(a) of the Policy requires the Complainant to prove each of the following:
(1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) that the Respondent has no rights or legitimate interest in the domain name; and
(3) that the domain name has been registered and used in bad faith.
A. Confusing Similarity
Complainant has established rights in the AMPHENOL mark based on registration. As noted above, the registration covers use in connection with cables.
The Domain Name is not identical to Complainant's trademark, but is formed by adding the generic term "cable" to Complainant's trademark.
Prior decisions have found similar domain names to be confusingly similar. The decision in Chanel, Inc. v. Estco Technology Group, WIPO Case No. D2000-0413, stated that "the addition of the generic terms "store" and "fashion" are not sufficient to avoid confusion" between the mark CHANEL and the domain names <chanelstore.com> and <chanelfashion.com>.
Similarly, the decision in Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809, considered the similarity between the mark CHANEL and the domain name <chanelpurfumes.com>, and stated:
CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, "perfumes" is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant's business.
Applying those principles here, I believe the Domain Name is confusingly similar to Complainant's trademark. AMPHENOL is the salient feature of the term at issue. The additional generic terms are apt choices for products sold by Complainant and are likely to increase rather than dispel the potential for confusion. Therefore, I find that Complainant has met the requirements of Paragraph 4(a)(i) of the Policy.
B. Legitimate Interests
Under the Policy, legitimate interests in a domain name may be demonstrated by showing that: (i) before any notice of this dispute, Respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; (ii) Respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or (iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue. Policy 4(c).
Here, Respondent contends that it has a legitimate interest because it offers goods for sale at its site and did so before it received an objection from Complainant. Respondent also contends that it has a legitimate interest in using the AMPHENOL mark because it purchases products from Complainant. Complainant asserts that Respondent's activities are a deliberate infringement of its rights and therefore cannot be bona fide use.
With respect to Respondent's use of the Domain Name for the sale of goods, other decisions recognize that consideration of good faith is a key issue in determining whether use is bona fide under the policy. See World Wrestling Federation Entertainment, Inc. v. Rift, WIPO Case No. D2000-1499, ("not all use prior to notice of the dispute can qualify as bona fide use"). As explained in Ciccone v. Parisi, WIPO Case No. D2000-0847, intentionally infringing use should not be viewed as bona fide use:
We . . . conclude that use which intentionally trades on the fame of another can not constitute a "bona fide" offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.
Here, there is no dispute that Respondent has used the Domain Name for the sale of goods. However, that alone is inconclusive for a finding of legitimate interest, as noted in the cases cited above. Use of AMPHENOL to trade on Complainant's good will would not be a bona fide use under the Policy. It appears that Respondent used the Domain Name as a means of attracting Internet Users to its site where it sells cable assemblies comprised of parts from Complainant and from other companies. This is not a case where Respondent is only using Complainant's mark to describe the cables it sells. Instead, it seems the mark is used as "bait" to lead consumers to its own hybrid cable assemblies. There is no evidence that its hybrid cable assemblies are commonly called "amphenol cables." Instead, the Domain Name used by Respondent refers to Complainant's product only, a product which Respondent apparently does not sell in its original state.
Other cases have found that the use of a trademark as part of a domain name leading to a site selling other products was not bona fide. See Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809, (finding no legitimate interest in use of CHANEL as part of domain name leading to web site selling various types of perfume). Similarly, I believe that Respondent does not have a legitimate interest in using Complainant's mark to lead customers to a site that sells its own hybrid cable assemblies.
For similar reasons, Respondent's use is not a fair use of Complainant's trademark. Respondent is not using the Domain Name merely to describe the nature of the goods it sells. Indeed, Respondent contends that it does not sell AMPHENOL cables, but merely sells cable assemblies composed of various components. Moreover, Respondent is using Complainant's trademark as an attention getting device to lead Internet users to its site, not merely as a description in the content of the site. Accordingly, such use does not satisfy the requirement of fair use under U.S. trademark law.
Accordingly, I find that Respondent lacks any right or legitimate interest in the Domain Name.
C. Bad Faith Registration and Use
Paragraph 4(b) of the Policy states:
"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [Respondents] have registered or [Respondents] have acquired the domain name 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; or
(ii) [Respondents] have 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 [Respondents] have engaged in a pattern of such conduct; or
(iii) [Respondents] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [Respondents] have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on [Respondents’] web site or location."
As specifically noted in the Policy, the circumstances of bad faith are not limited to the above. See, e.g., Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. D2000-0003, 3636257 Canada v. eResolution.com, WIPO Case No. D2000-0110.
Complainant claims that Respondent's offer to sell the Domain Names is evidence of bad faith, but I do not rely on that evidence here because the offer came in the context of settlement negotiations and may merely have been a good faith effort to settle rather than a bad faith attempt to profit from domain name trafficking. There is no other evidence in the record to show any intent to traffick in the sale of Domain Names.
Instead, I rely on the evidence of Respondent's intent in registering and using the Domain Name.
Respondent has been Complainant's customer for many years and therefore obviously knew of Complainant's mark when it registered and began use of the Domain Names.
Giving Respondent the benefit of any doubt, it seems clear that Respondent registered the Domain Name because it used AMPHENOL products in its cable assemblies and felt that potential purchasers of AMPHENOL cables were likely purchasers of its cable assemblies. Respondent's use of AMPHENOL was clearly intended as a device that would lead Internet users to Respondent's site because it is a reference to Complainant's products. Internet users lead to Respondent's site by the Domain Name are likely to be confused or mislead because Respondent apparently does not sell AMPHENOL cables per se, but instead sells cable assemblies that may or may not include AMPHENOL cables.
Therefore, based on the evidence presented, it appears that Respondent registered and used the domain name in bad faith by deliberately selecting and using AMPHENOL to trade on the recognition of Complainant's mark. Accordingly, I find that Complainant has met its burden under Paragraph 4(a)(iii) of the Policy.
I conclude that the Domain Name is confusingly similar to a mark in which Complainant has prior rights, that the Registrant lacks any right or legitimate interest in the Domain Name, and that the Domain Name was registered and used in bad faith. Therefore, Complainant's request for transfer of the Domain Name <amphenolcables.com> is granted.
Dated: May 8, 2001