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Cissell Manufacturing Company v. SEA [2000] GENDND 1064 (11 September 2000)

National Arbitration Forum

The Complainant is Cissell Manufacturing Company, Louisville, KY, USA ("Complainant"). The Respondent is SEA, Inc., Northridge, CA, USA ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME(s)

The domain name at issue is "CISSELL.COM", registered with Network Solutions Inc. ("NSI").

PANELIST

The Panelist certifies that he or she has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as the panelist in this proceeding.

Robert R. Merhige, Jr., the undersigned, is the appointed Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 08/01/2000; The Forum received a hard copy of the Complaint on 08/03/2000.

On 08/02/2000, NSI confirmed by e-mail to The Forum that the domain name "CISSELL.COM" is registered with NSI and that the Respondent is the current registrant of the name. NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 4.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On 08/08/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 08/28/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts by e-mail. It was also e-mailed to HYPERLINK mailto:postmaster@cissell.com postmaster@cissell.com. On September 1, 2000, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed the undersigned, Robert R. Merhige, Jr., as Panelist.

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

A. Complainant

Complainant asserts that Respondent is guilty of using "CISSELL.COM" to intentionally attempt to attract, for commercial gain, internet users to their web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site as spelled out in paragraph 4b of the ICANN Uniform Domain Name Dispute Resolution Policy.

B. Respondent

Respondent asserts that it has both rights and legitimate interest in the subject domain name and its use of said name is not in violation of paragraph 4a of the ICANN Uniform Domain Name Dispute Resolution Policy.

The record reflects that the word "CISSELL" is a registered trademark of the Complainant who, from August 1996 until August 1997 owned the rights to "CISSELL.COM." Complainant having failed to re-register the domain name in issue with Network Solutions, Respondent procured same and has been utilizing it.

The record further reflects that Respondent was, and had been, an authorized distributor of Complainant’s dry cleaning machinery under a non-exclusive distributorship agreement

between Complainant and Respondent. Pursuant to that distributorship, Respondent offered for sale, sold and installed Cissell products to and for its customers. During the distributorship aforementioned (since terminated by Complainant) and continuing to the date of Complainant herein, Respondent also offered for sale, and sold and installed, dry cleaning equipment manufactured by competitors of Complainant as well as dry cleaning equipment manufactured by Complainant.

On April 2, 1997, Respondent established a web site ("progressequipment.com") and subsequently secured various other domain names which also accessed the established web site. Additionally, Respondent secured the subject domain name ("cissell.com") and utilized the names of other manufacturers of dry cleaning equipment of which it was an authorized distributor.

The record further reflects that Respondent’s web site has linked, and continues to link, as of the filing of the Complaint herein, the web sites of the manufacturers whose products Respondent’s web site advertises, including that of Complainant.

The unrefuted record is that approximately three months after Respondent began to use the subject domain name, having refused to transfer the name to Complainant, Complainant refused to sell any equipment directly to Progress, which effectively terminated the distributorship arrangement between the parties. The record further reflects, however, that Respondent has continued to acquire Cissell equipment from existing Cissell distributors and to sell same to its customers. There is no doubt but that the Respondent’s web site makes clear that Complainant herein is the manufacturer of the advertised Cissell equipment.

Though Complainant contends that Respondent’s use of the domain name in issue is violative of paragraph 4a(i), (ii) and (iii) of the ICANN Uniform Domain Name Dispute Policy, for the reasons which follow, I conclude Complainant has failed to establish by the greater weight of the evidence any violation of the Policy as alleged.

DISCUSSION

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the complainant must prove each of the following three elements to obtain an order that a domain name should be canceled or transferred:

(1) 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) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

There is no issue as to the contention that the domain name in issue is identical to a mark in which the Complainant has rights. However, the inquiry does not end there. The Policy limits the issues before the panel. Some disputes are left to the courts. See Commercial Publ’g Co. v. EarthComm, Inc. FA 95013 (Nat. Arb. Forum July 20, 2000) (stating that the Policy is intended to resolve only a narrow class of cases of "abusive registrations" and does not extend to cases where a registered domain name is subject to a legitimate disputes, which are relegated to the courts).

The evidence is unrefuted that Respondent’s use of the domain name has been in connection with a bona fide offering of goods and services. See EAuto, L.L.C. v. EAuto Parts, D2000-0096 (WIPO April 9, 2000) (finding that the respondent has rights and legitimate interest in the domain name where the respondent has used the domain name to post information on its business of maintaining and repairing automobiles).

The Respondent asserts that it does not compete with the Complainant’s business. The Respondent also notes that its web site makes it clear that the Complainant is the manufacturer of the equipment. Further, the Respondent notes that it did not register or use the domain name in bad faith by creating confusion with the Complainant’s mark as its web site contains a link to the Complainant’s web site. Based on these factors, it is reflected by the unrefuted evidence that Respondent’s registration and use of the domain name has not been in bad faith.

For the reasons aforesaid, Complainant’s request that the domain name in issue be transferred to it is hereby denied.

Robert R. Merhige, Jr.

U.S.D.J. (Retired)

Dated: September 11, 2000

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