WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cooper Industries Inc. v. Bobby Amlani
Case No. D2001-0794
Fulleon Limited v. Bhavesh Kotecha
Case No. D2001-0795
1. The Parties
The Complainant in Case No. D2001-0794 is Cooper Industries Inc.("Cooper"), a United States corporation of Houston, Texas, U.S.A. The Complainant in Case No. D2001-0795 is Fulleon Limited ("Fulleon"), a United Kingdom corporation of Cwmbran, Gwent, U.K. Both Complainants are represented by Paula J. Kransy and Jasmine Abdel-Khalik of Baker & McKenzie, Attorneys of Chicago, Illinois, U.S.A.
The Respondent in Case No. D2001-0794 is Bobby Amlani and the Respondent in Case No. D2001-0795 is Bhavesh Kotecha. The address of both is given as 29 Ridgeway, Newport, Gwent, U.K. A Response was filed by Bobby Amlani on behalf of both Respondents.
In light of the above, and because the contentions are similar in both cases, it is convenient to issue one decision to cover both Complaints.
2. The Domain Names and Registrar
The domain names at issue are <coopermenvier.net> (D2001-0794) and <fulleon.com> and <fulleon.net> (D2001-0795).
All names are registered with Internet Names Worldwide (a division of Melbourne IT) of Melbourne, Victoria, Australia ("the Registrar").
3. Procedural History
Both Complaints were submitted electronically on June 15, 2001, and by hard copy on June 18, 2001, by the respective Complainants to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center").
On June 19, 2001, requests for Registrar verification were transmitted by the WIPO Center to the Registrar requesting the Registrar to:
Confirm that a copy of each Complaint had been sent to it by each Complainant as requested by WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"), paragraph 4(b).
Confirm that the domain names at issue are registered with that Registrar.
Confirm that the person(s) identified as the Respondent is the current registrant of the domain names.
Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrarís WHOIS database for the registrants of the disputed domain names, the technical contact, the administrative contact and the building contact for the domain names.
Confirm that the Uniform Domain Name Dispute Resolution Policy ("UDRP") was in effect.
Indicate the current status of the domain names.
The Registrar advised the WIPO Center as follows:
The Registrar had received a copy of both Complaints.
It is the Registrar of all the disputed domain names.
The named Respondent is the current registrant in each case.
The UDRP applies to each domain name.
The disputed domain namesí registrations are currently in "active" status.
The Registrar has adopted the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"). As can be deduced from the advice of the Registrar that the domain names in question are "active", neither Respondent has requested that any of the domain names at issue be deleted from the domain name database, nor has sought to terminate the agreement with the Registrar. Accordingly, both Respondents are bound by the provisions of the Policy.
Having verified that both Complaints satisfied the formal requirements of the Policy and the ICANN Rules for Uniform Domain Name Dispute Resolution Policy as approved on October 24, 1000 (the "Rules"), the WIPO Center, on June 20, 2001, transmitted by courier, email and facsimile notifications of each Complaint and of the Commencement of Administrative Proceedings to the Respondent in both cases. A copy of the notifications of Complaints and Commencement of Administrative Proceedings was also emailed to the Registrar and ICANN.
The Respondents were advised that a Response to the Complaints was required within 20 calendar days. It was also advised that any Response should be communicated, in accordance with the Rules, by one original and four sets of hard copy and by email. On July 2, 2001, Bobby Amlani (Respondent in Case No. D2001-0794) filed an informal Response in respect of each Complaint. He indicated his willingness to transfer the disputed domain names to the respective Complainants. He offered to instruct the Registrar to effect transfers. Despite the apparent willingness of the Respondents to transfer the names, the Complainants wish a decision from the Panel. In the circumstances outlined in the summary of the Complainantsí contentions, their attitude is understandable.
Each Complainant elected to have its Complaint resolved by a single Panelist. The requisite amounts have been paid to the WIPO Center.
The WIPO Center invited the Honourable Sir Ian Barker QC of Auckland, New Zealand, to be sole Panelist in both cases. For each case, it transmitted to the Panelist a Statement of Acceptance and requested a Declaration of Impartiality and Independence. The Panelist duly advised his acceptance and forwarded the statements of impartiality and independence.
On July 24, 2001, the WIPO Center forwarded to the Panelist by email and courier the relevant submissions and the records. These were duly received by him. The Panel was required to forward its decision(s) by August 6, 2001.
The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaints meet the formal requirements of the Rules and the Supplemental Rules.
The language of the administrative proceeding is English, being the language of the registration agreement.
4. Factual Background
Cooper was founded in 1833 as a manufacturer of power and compression equipment for natural gas transmission. Today, Cooper is a multi-national which operates in 100 countries, manufacturing electrical products and tools.
"Cooper Menvier" is a division of Cooper that sells fire detection and alarm equipment throughout the world. The "Menvier" part of the Cooper Menvier name comes from Cooperís 1997 acquisition of a company named Menvier Swain Plc ("Menvier").
Cooper owns trademark registrations for marks consisting of or containing the "Cooper" name in many countries throughout the world.
Menvier, a wholly-owned subsidiary of Cooper, owns trademark registrations in various countries containing or consisting of the term "Menvier".
With Menvierís permission, Cooper uses the COOPER MENVIER mark to promote the products sold by the Cooper Menvier division of Cooper.
In 2000, the Cooper Menvier division of Cooper spent approximately $3.4 million in promoting products sold under the COOPER MENVIER mark. As a result of Cooper Menvierís extensive marketing and use of the COOPER MENVIER mark in connection with the sale of its products, the mark COOPER MENVIER has come to represent the quality and goodwill associated with the Cooper Menvier division of Cooper and has become well-known in the fire detection and alarm system industry.
In 1992, Menvier acquired Fulleon Limited ("Fulleon") from its founder, Manhar Amlani, known as "Bill" Amlani. Fulleon is a manufacturer of sounders, beacons, combined sounders and beacons, bells, callpoints, specialized equipment for hazardous areas, and door release units. It is headquartered in the United Kingdom.
When Bill Amlani and other members of the Amlani family, including his son, the Respondent Bobby Amlani, sold the stock in Fulleon to Menvier, they relinquished whatever rights, title, and interest they had in and to the "Fulleon" name and mark. After Bill Amlani sold Fulleon in 1992, Fulleon hired him as the companyís managing director. Bill Amlani worked for Fulleon until 1994. That same year, Bill Amlani founded Rafiki Protection, Ltd. ("Rafiki"), a manufacturer of commercial fire alarm control equipment and sounders that competes with Fulleon.
On February 25, 2000, Bill Amlaniís son, the Respondent in Case No. D2001-0794, Bobby Amlani, registered the domain name <coopermenvier.net>. The address Bobby Amlani provided to the Registrar was 29 Ridgeway, Newport, NP20 5AG, Gwent, United Kingdom, which is also the address of the registered office of Rafiki. This was the address from which Bill Amlani operated Fulleon when he owned that company.
Fulleon is a leader in the market for fire alarm systems ancillary components. Fulleon presently has approximately a 30 per cent share of the European sales and approximately a 65 per cent share of the United Kingdom sales for these components. Approximately 45 per cent of Fulleonís overall sales are direct exports, 85 per cent of which are exports to other European countries.
Fulleon advertises its products in about 20 different trade journals worldwide, eleven of which are international and nine of which are distributed primarily in the United Kingdom. Each of these advertisements features the FULLEON mark.
The FULLEON trademark is registered in the United Kingdom in word and logo format, and there are pending applications to register the mark as a Community Trademark and in the Peopleís Republic of China.
By February 2000, Fulleon learned that Bill Amlaniís son, Bobby Amlani, registered the <fulleon.com> and <fulleon.net> domain names. Approximately six months later, Fulleon learned that the name of the registrant for the <fulleon.com> and <fulleon.net> domain names had been changed from Bobby Amlani to "Bhavesh Kotecha". However, the registrantís address, the administrative contact, the technical contact, and the servers for the domain names did not change. The address is also that of Rafikiís headquarters.
5. Partiesí Contentions
The Complainants verified both Complaints with statutory declarations and numerous documents.
The Respondents, which are clearly associated, have no rights in any of the disputed names.
The Fulleon domain names are identical to the FULLEON marks. The components of the Cooper Menvier domain name are identical to the registered marks of COOPER and MENVIER. The composite mark is identical to the common law mark COOPERMENVIER used by the Complainant Cooper to market certain products.
Having sold their stock in Fulleon in 1992, neither Bill, Bobby, nor any other member of the Amlani family has any right to use "Fulleon" as a trademark, trade name, or domain name or to authorize others, such as Bhavesh Kotecha, to register or use a domain name consisting of the FULLEON mark.
Moreover, Fulleon has not granted any license to use the FULLEON mark to Bill, Bobby, or any other Amlani, or to Bhavesh Kotecha. Neither the Amlanis, any company owned or controlled by a member of the Amlani family, nor Bhavesh Kotecha is related to, associated with, or in business with Fulleon. Bobby Amlaniís registration of and subsequent "transfer" of the <fulleon.com> and <fulleon.net> domain names to Bhavesh Kotecha was in bad faith. The evidence showing the bad faith registration and use of <fulleon.com> and <fulleon.net> is overwhelming.
First, the address listed on the registration information for the domain names (i.e., 29 Ridgeway, Newport, Gwent, NP20 5AG, U.K) is unquestionably associated with the Amlanis. When the name of the registrant of the Fulleon domain names was changed from Bobby Amlani to Bhavesh Kotecha, neither the Newport, Gwent address nor any of the other information in the registration records was changed. Accordingly, Bhavesh Kotecha is either a fictional name or alias for Bill or Bobby Amlani or is a person associated with or controlled by Bill or Bobby Amlani, or Rafiki. The registrantís name was changed to discourage or frustrate communication with the person(s) controlling the <fulleon.com> and <fulleon.net> domain names.
Second, before changing the name of the registrant from Bobby Amlani to Bhavesh Kotecha, Bobby Amlani created a link between the <fulleon.com> and <fulleon.net> domain names and the website for Digisound Electronic GmbH ("Digisound"), thereby diverting away traffic intended for Fulleonís website.
Digisound is a former Fulleon distributor in Germany. Fulleon terminated its relationship with Digisound and subsequently sued for unfair competition in Germany. Fulleon terminated the distributorship for various reasons, including Digisoundís unauthorized duplication of Fulleonís product line. On February 23, 2001, a German court ordered Digisound to change the design of three of its products that compete with Fulleon and to pay the costs of the case.
Upon learning that Bobby Amlani used the <fulleon.com> and <fulleon.net> domain names to divert web traffic intended for Fulleon to Digisoundís website and knowing that Bill Amlaniís son, Bobby Amlani, had registered the domain names, Stewart Strong, Fulleonís Managing Director, contacted Bill Amlani by email on February 25, 2000.
In his February 25, 2000 email, Stewart Strong advised Bill Amlani that Fulleon was aware of the link between the <fulleon.com> and <fulleon.net> domain names and Digisoundís website and demanded that the link be broken.
In his responding email the next day, Bill Amlani admitted that his son Bobby Amlani had registered and was improperly controlling and using the "Fulleon" domain names. Specifically, in his February 26, 2000, email, Bill Amlani wrote:
"I have told Bobby to break the link to digisound and he has promised to do it. What he did was mischievous I apologise on his behalf. As far as suing is concerned that will be your choice. However if you want to by it of him, you can ask him."
Bill Amlaniís suggestion that Fulleon buy the "Fulleon" domain names from Bobby Amlani further evidences the Respondentís bad faith registration and use of the domain names, in violation of Paragraph 4(b)(i) of the Policy.
During the time of the deteriorating relations between Fulleon and Digisound and while the links between the <fulleon.com> and <fulleon.net> domain names and the Digisound website were still active, Bill Amlani was in business discussions with Digisound. In his February 26, 2000 email, Bill Amlani disclosed that he knew that Digisound was no longer acting as Fulleonís distributor and confirmed that he had recently visited Digisoundís factory in India and met with officers of the company.
Shortly after sending the email to Bill Amlani, Stewart Strong checked the links between the "Fulleon" domain names and the Digisound website and discovered that they had been broken. On April 3, 2000, Stewart Strong sent a follow-up email directly to Bobby Amlani, with a copy to Bill Amlani, asking Bobby Amlani to contact Fulleon to discuss his registration of the <fulleon.com> and <fulleon.net> domain names. Fulleon received no response to this email.
Under Paragraph 4(b)(ii) of the Policy, a pattern of registering domain names that reflect the trademarks of others in order to prevent the trademark owners from using their trademarks in domain names is strong evidence of bad faith registration and use of the domain names.
The day Stewart Strong first contacted Bill Amlani about his sonís improper registration and use of the <fulleon.com> and <fulleon.net> domain names (i.e., February 25, 2000) was the same day that Bobby Amlani registered various domain names containing the trademarks and trade names of companies that compete with his fatherís company, Rafiki, namely <hochiki.net>, <apollo-fire.net>, <apollofire.net>, <apollo-fire.com>, <cereberus.net>, and <coopermenvier.net>.
The domain names <rafikis.com> and <rafikis.net> were registered on March 9, 2000, and the companyís owner, Manhar ("Bill") Amlani, is listed as the registrant. However, the address of the registrant (i.e., 29 Ridgeway, Newport NP20 5AG, Gwent, U.K), the administrative contact information, the technical contact information, and the servers are identical for the domain names <rafikis.com>, <rafikis.net>, <fulleon.com>, <fulleon.net>, <hochiki.net>, <apollo-fire.net>, <apollofire.net>, <apollo-fire.com>, <cereberus.net>, and <coopermenvier.net>.
Bobby Amlani currently is listed as the registrant for all of the above-listed domain names, with the exception of the "Rafiki" domain names that are in his fatherís name and of the <fulleon.com> and <fulleon.net> domain names, where the name of the registrant was changed from Bobby Amlani to Bhavesh Kotecha. As described below in more detail, this pattern of Bobby Amlani registering the domain names of competitors of Rafiki clearly demonstrates that the <fulleon.com> and <fulleon.net> domain names were registered and used in bad faith.
Hochiki, a leading manufacturer of fire detection and alarm systems, competes with Rafiki. Hochiki uses its HOCHIKI mark in connection with its products in various countries, including Japan, the United Kingdom, and the United States. Hochiki obtained a registration for its HOCHIKI mark in the United Kingdom in 1975, and has a pending application to register the mark in the United States. Hochiki America owns the <hochiki.com> domain name. Having no apparent rights in or to the "Hochiki" name, Bobby Amlani nonetheless registered the domain name <hochiki.net> on February 25, 2000.
Apollo Fire Detectors Ltd. ("Apollo Fire") is a United Kingdom manufacturer of conventional and analog addressable smoke and heat detectors. A European market leader in the field of commercial and smoke and heat detectors, Apollo Fire has been using its APOLLO FIRE mark in connection with its products for over 20 years, and its web page can be accessed at <apollo-fire.co.uk>. Having no apparent rights in the "Apollo Fire" name, Bobby Amlani on February 25, 200 registered the <apollo-fire.com>, <apollo-fire.net> and <apollofire.net> domain names in his own name.
Cerberus is a division of Siemens Corporation that manufactures and installs a variety of security and safety systems, including fire and explosion detection and prevention systems. The products sold by Siemensí Cerberus division also compete with Rafikiís products. Siemens owns four United Kingdom and one United States registration for its CERBERUS mark used in relation to fire protection and detection. Siemens also owns the <cerberus.com> and <cerberus.net> domain names. Again, having no rights in the Cerberus name, Bobby Amlani registered the domain name <cereberus.net>, which is a slight misspelling of the CERBERUS trademark (i.e. typosquatting).
Apart from Bobby Amlaniís "Response" offering to transfer all the names, neither Respondent has made submissions. The Panel is satisfied from the Complainantís evidence that the Respondent Bhavesh Kotecha is either an alias for Bobby Amlani or is a person closely associated with him.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to:
"decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable".
The burden for the Complainant, under Paragraph 4(a) of the ICANN Policy, is to show:
- 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;
- That the Respondent has no rights or legitimate interests in respect of the domain name; and
- That the domain name has been registered and is being used in bad faith.
In the opinion of the Panel, the domain names <fulleon.com> and <fulleon.net> registered by the Respondent are identical to the Complainantís FULLEON marks. The Panel considers that the name <coopermenvier.net> is identical to the common law mark of the Complainant Cooper and confusingly similar to its registered marks COOPER and MENVIER.
The Complainants must show that the Respondent has no rights or legitimate interests in respect of the dispute domain names. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with Paragraph 4(c) of the Policy:
(i) That he has made 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 prior to the dispute;
(ii) That he is commonly known by the domain name, even if he has not acquired any trademark or service mark rights; or
(iii) That he intends to make a legitimate, non-commercial 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.
The Complainants have not given the Respondent any rights in respect of either name. In the Panelís view, the Respondent cannot show any of the circumstances in Paragraph 4(c) of the Policy, quoted above. The allegation of the Complainants, supported by sworn statements and documentary evidence, support this view, as does the Respondentís acknowledgement and offer to transfer the names.
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 including that you have registered or you 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 your documented out-of-pocket costs related to the domain name; or
(ii) you 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you 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 complainantís mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
It should be noted that the circumstances of bad faith are not limited to the above.
The Panel considers that the Respondent has registered and used the domain names in "bad faith" for all the reasons set out in the Complainantsí submissions summarised above. The Complainants' evidence makes out a very clear case of bad faith.
In addition, Bobby Amlaniís response is a form of Ďjudgment by consentí. He clearly acknowledges that the disputed names should not be registered in his name nor in that of ĎBhavesh Kotechaí (whoever that person may be).
For the foregoing reasons, the Panel decides:
(a) That the domain name <coopermenvier.net> registered with the name of the Respondent Bobby Amlani is identical and/or confusingly similar to marks to which the Complainant Cooper has rights;
(b) That the domain names <fulleon.com> and <fulleon.net> registered in the name of the Respondent Bhavesh Kotecha are identical to marks to which the Complainant Fulleon has rights.
(c) That neither Respondent has rights or legitimate interests in respect of any of the said domain names; and
(d) That the said domain names have been registered and are being used in bad faith.
Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <coopermenvier.net> be transferred to the Complainant Cooper and that the domain names <fulleon.com> and <fulleon.net> be transferred to the Complainant Fulleon.
Hon. Sir Ian Barker
Dated: August 9, 2001