WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cornell Trading, Inc. v. Web-Interactive.com Inc.
Case No. D2000-0887
1. The Parties
The Complainant is:
Cornell Trading, Inc. of 458 Hurricane Lane, Williston, VT 05495, United States of America.
Joel S. Goldhammer, Esq., of Aikin, Gump, Strauss, Hauer & Feld, L.L.P., of One Commerce Square, 2005 Market Street, Suite 2200, Philadelphia, PA 19103-7086, United States of America.
The Respondent is:
Web-Interactive.com Inc. of 38 Summitcrest Drive, Richmond Hill, Ontario L4S 1A7, Canada.
2. The Domain Name and Registrar
The domain name with which this dispute is concerned is: "cornelltrading.com"
The Registrar with which the domain name is registered is:
Network Solutions Inc., of 505 Huntmar Park Drive, Herndon, Virginia 20170-5139, United States of America.
3. Procedural History
3.1 The Complaint was submitted electronically and in hard copy to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on July 28 and July 31, 2000 respectively.
3.2 On August 9, 2000 the Registrar verified:
(i) that the current registrant of the domain name is the Respondent;
(ii) that the Registrar's 5.0 Service Agreement is in effect;
(iii) that the domain name is in "Active" status;
(iv) Respondent's Administrative Contact and Billing Contact is Latychev, Igor, 38 Summitcrest Drive, Richmond Hill, Ontario L4S 1A7, Canada
Phone: (905) 780 8280
Fax: (905) 780 3898
(v) The Technical Contact and Zone Contact is Name SV, 520 Toronto, Ontario M6G 1P4, Canada
Phone: (416) 000 0000
Fax: (416) 000 0000
3.3 On August 11, 2000 all formal requirements for the establishment of the complaint were checked by the WIPO Center and found to be in compliance with the applicable ICANN Policy, ICANN Rules ("the Rules") for Uniform Domain Name Dispute Resolution Policy ("the Policy"), and WIPO Supplemental Rules. The Panel has checked the file and confirms the WIPO Center's finding of proper compliance with the Rules and establishment of the complaint.
3.4 On August 11, 2000 the WIPO Center sent Notification of Complaint and Commencement of Administrative Proceeding as follows:
(i) by post and by facsimile to Respondent, the Administrative Contact, The Billing Contact and the Technical Contact;
(ii) by e-mail to Respondent, the Administrative Contact, the Billing Contact and the Technical Contact;
(iii) by e-mail to Postmaster@cornelltrading.com.
3.4.1 From the record it appears that:
(i) the posted and facsimile and e-mail transmissions to Respondent and the Technical, Administrative and Billing Contacts were delivered;
(ii) the e-mail to the Postmaster at the domain name was undelivered (reasons: 550 Host unknown);
3.4.2 Rule 2(a) of the Rules provides that it is the Provider's (WIPO Center's) responsibility to employ reasonably available means calculated to achieve actual notice to Respondent. The said Rule further provides that this responsibility is discharged by:
(i) sending the Complaint to all postal mail and facsimile addresses:
(a) shown in the Registrar's WHOIS data base for the domain name holder, the Technical Contact and the Administrative Contact; and
(b) the Billing Contact supplied by the Registrar for the registration; and
(ii) sending the Complaint by e-mail to:
(a) the e-mail addresses for the Technical, Administrative and Billing Contacts;
(b) the Postmaster at the domain name;
(c) if the domain name resolves to an active web page, any e-mail address or e-mail link shown on that web page.
(iii) sending the Complaint to any preferred address notified by Respondent and all other addresses provided by Complainant under Rule 3(b)(v).
3.4.3 The record shows that:
(i) the Center has satisfied the provisions of each of paragraphs (i)(A), (i)(B), (ii)(A), (ii)(B) and (iii) of Rule 2(a);
(ii) the domain name did not resolve to an active web-site;
(iii) Respondent has not notified any preferred address to WIPO Center.
3.4.4 The Panel therefore finds that the obligation imposed on the Center with respect to Notification of the Complaint and the Commencement of the Administrative Proceeding have been satisfied.
3.5 The due date for filing a Response was August 30, 2000. No Response was filed and Notice of Respondent Default was sent to Respondent and to the Technical, Administrative and Billing Contacts by post, facsimile and e-mail on August 31, 2000.
3.6 Panelist D.J. Ryan, having filed a Statement of Acceptance and Declaration of Impartiality and Independence the Panel was appointed on October 3, 2000.
3.7 The Panel therefore proceeds to its determination in accordance with the Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules and the applicable rules and principles of law on the basis of the Complaint.
4. Factual Background
4.1 Complainant is a New York corporation carrying on business at 458 Hurricane Lane, Williston, Vermont, United States of America, as an operator of retail clothing and houseware stores. It was incorporated under the name Cornell Trading, Inc., in 1981 and owns and operates 54 stores throughout the United States under the trading name "April Cornell".
4.2 Pike River Corporation of 14 Hurricane Lane, Williston, Vermont, is the registered proprietor of the following U.S. Trademark Applications:
No. 1833840 APRIL CORNELL Filed June 14, 1993 – registered in respect of goods in international classes 18, 21, 24, 25 and 27, and retail department store services in class 42.
No. 2347020 – APRIL CORNELL – Filed April 23, 1999 – registered in respect of goods in international classes 21 and 26, and retail and catalogue services in international class 35.
No. 75-688550 – KIT CORNELL –applied for in respect of goods in international classes 21, 24 and 25, and retail and catalogue services in international class 35.
4.3 Complainant claims to be the exclusive licensee of the trademark registrations of APRIL CORNELL referred to in paragraph 4.2.
4.4 No information is available in respect of Respondent or its business activities save that it is the registrant of more than 50 domain names in the ".com" domain.
5. Parties Contentions
5.1 Complainant contends that:
(i) it has used the name CORNELL TRADING in carrying on its business in respect of clothing, housewares and retail store services since at least 1981;
(ii) it owns and operates 54 stores throughout the United States under the name APRIL CORNELL, and is the exclusive Licensee under trademark registrations 1833840 and 2347020;
(iii) it has 2,500 wholesale accounts and does in excess of 44 million dollars in business per year;
(iv) it is known as CORNELL TRADING and it uses the name CORNELL TRADING in its business and in all correspondence and commercial documents associated with the business;
(v) Complainant produces copies of U.S. trademark records and records of New York Department of State Corporations Records in substantiation (Complainant Exhibits C and D);
(vi) the domain name does not resolve to a web-site.
5.2 There is no communication from Respondent.
6. Applicable Dispute
6.1 This dispute is one to which the Policy applies. By registering the domain name Respondent accepts the dispute resolution policy adopted by the Registrar from time to time. Registrar's current policy ,set out in its 5.0 Service Agreement, is the Policy.
6.2 To succeed in its Complaint, Complainant must show that each of the conditions of paragraph 4(a) of the Policy are satisfied, namely that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in the domain name;
(iii) the domain name has been registered and is being used in bad faith.
7. Parties Contention
7.1 Complainant contends that:
(a) the domain name is identical or confusingly similar to the trademarks referred to in paragraph 5.1 in which Complainant has rights as exclusive licensee;
(b) the domain name is substantially identical to its name "CORNELL TRADING" and it has substantial and continuous use of the name as its business name and in correspondence and commercial documents.
7.2 Complainant contends that Respondent has no legitimate rights or interests in the domain name.
7.2.1 Complainant contends that Respondent owns no trademark registrations of matter appearing in the domain name and Complainant has not agreed or consented to Respondent's use or registration of the domain name. The domain name does not resolve to a web-site or other online premises and Respondent has made no legitimate or commercial use of that name.
7.3 Complainant asserts registration and use of the domain name in bad faith.
7.3.1 Complainant asserts that Respondent has registered the domain name in order to prevent it, as the owner of the trademark or service mark CORNELL TRADING from reflecting the mark in a corresponding domain name and has engaged in a pattern of such conduct. Complainant points to the fact that Respondent has registered at least 50 domain names in the "dot.com" domain (Complainant Exhibit E), and asserts that none of these domain names resolves to a web-site. Complainant further cites the fact that of the 50 domain names, at least 14 are identical or confusingly similar to marks registered by others, in the United States or Canada (Complainant Exhibit F).
7.3.2 Complainant points to the passive holding of the domain name and the other domain names referred to above as evidence of use in bad faith, and cites in support Westfield Corporation, Inc. v. Graeme Michael Hobbs, Case No. D2000-0227, and August Storck KG v. Mohamad, Case No. D2000-0196.
8. Decision and Findings
Identical or Confusingly Similar Trademarks
8.1 The Panel finds that Complainant has rights in the registered trademark APRIL CORNELL as exclusive Licensee. That trademark however, is not identical to the domain name nor is it in the opinion of the Panel confusingly similar to the domain name having regard to the common surname significance of the name CORNELL. The names CORNELL TRADING and APRIL CORNELL are not, without more, likely to be confused.
However, the Policy is not limited to trademarks which are registered. Complainant has demonstrated long established use of the name CORNELL TRADING in the course of its business such as to establish for Complainant a reputation and rights at common law in respect thereof, (see Roberts v. Boyd, Case D2000-0210; Winterson v. Hogarth, Case No. D2000-0235). In its essential features the domain name is identical to Complainant's common law trademark CORNELL TRADING.
The Panel therefore finds that the domain name is identical to the trademark of Complainant.
Respondent's Rights or Legitimate Interests
8.2 Respondent has demonstrated no rights or legitimate interests. Respondent's failure to file a Response or to otherwise assert any such right or interest leads to a presumption that it is unable to show that such right or interest exists, (see Mondich and American Wine Biscuits v. Brown, Case No. D2000-0004). As pointed out by this Panel in Dow Jones & Co, Inc. v. The Hephzibah Intro-Net Project Limited, Case No. D2000-0704 the burden of proof is a shifting burden once Complainant has presented a prima facie showing, as it has done here. See also Hoblaws, Inc. v. Carlo Borbosa, Case No. AF-0163.
Registration and Use in Bad Faith
8.3 Respondent's registration of at least 50 domain names which do not resolve to a web-site and which, in at least several cases, are identical or confusingly similar to the trademarks of others indicates a strong probability that Respondent makes a business of registering domain names for the purpose of selling the domain name to the owner of the trademark or to a competitor of the owner. (Policy para. 4(b)(i)). It also suggests that the domain name was registered in order to prevent the Complainant, as the trademark owner, from reflecting its mark in a corresponding domain name and thereby force Complainant to deal with Respondent in respect of the domain name. A pattern of such conduct is indicated by the many other registrations by Respondent incorporating third party trademarks, (Policy para 4(b)(ii)). Irrespective of whether Respondent's conduct falls under one of the specific circumstances set out in para 4(b), those circumstances are not exhaustive of the categories of bad faith (see, inter alia, Jupiters Ltd v. Aaron Hall, Case No. D2000-0574). Respondent's conduct, absence of legitimate right or interest, and failure to respond demonstrate bad faith registration.
8.4 Respondent's passive holding of the domain name, together with the similar holding of a large number of other domain names incorporating the trade- marks of others constitutes evidence of use in bad faith within the meaning of that expression as adopted in Telstra v. Nuclear Marshmellows, Case No. D2000-0003, Westfield v. Hobbs (supra) and many others. Taken together with the finding of absence of legitimate right or interest and registration in bad faith above, bad faith use by such passive holding is found.
8.5 Complainant therefore has established registration and use of the domain name in bad faith.
The Panel therefore concludes and decides:
(i) the domain name is confusingly similar to trademark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interest in the domain name;
(iii) the domain name has been registered and is being used in bad faith;
(iv) the domain name should be transferred to Complainant.
Dated: October 11, 2000