THE NATIONAL ARBITRATION FORUM

P.O. BOX 50191

MINNEAPOLIS, MINNESOTA  55405  USA

                                                                                               

GROBET FILE COMPANY OF

AMERICA, INC.

                                                                                              

                                                                   ADMINISTRATIVE

                                                COMPLAINANT,                  PANEL  DECISION

          

                        vs.

                                                                                                                   No.:  FA0006000094960

THE EXCHANGE JEWELRY SUPPLY

                               

                                                RESPONDENT.

                                                                                               

This is a domain name dispute proceeding pursuant to the ICANN Uniform Domain Name Dispute Resolution Policy (the “Policy”) before the presiding panelist, Judge Nelson A. Diaz (Retired), of Philadelphia, PA.  The presiding panelist has confirmed to the National Arbitration Forum that he has no known conflicts of interest.  For the reasons explained below, the panelist holds that the domain name should NOT be transferred to Complainant.

1. The Parties

Complainant is Grobet File Company of America, Inc. Complainant was represented by Troy J. Cole, Esq. of the law firm of Woodard Emhardt et al.  Respondent is The Exchange Jewelry Supply (“Respondent”).  Respondent was represented by D. Joe Modlin, Esq.

2. Procedural Findings

Domain Name: <grobet.com>

Domain Name Registrar: Network Solutions, Inc.

Domain Name Registrant: The Exchange Jewelry Supply

Date of Domain Name Registration: December 13, 1999

Date Complaint Filed: June 5, 2000

Date of Commencement of Administrative Proceeding in Accordance with Rule 2(a) and Rule 4(c): June 9, 2000

Due Date for a Response: June 29, 2000; a timely response was received

Remedy Requested: Transfer of Domain Name

In compliance with Rule 2(a), the National Arbitration Forum (“The Forum”) forwarded the Complaint to the Respondent in a timely manner.  In compliance with Rule 4(d), The Forum immediately notified the above Registrar, Network Solutions, the Internet Corporation for Assigned Names and Numbers (ICANN), and Complainant and Respondent that the administrative proceeding had commenced. 

The Panel issues its decision below based upon the complaint, the filed documents, the response, the reply to the response, the Policy and Rules.

3. Factual Background

Complainant is the owner of a certain common law trademarks, including Grobet and Grobet USA, which it has used in commerce for more than sixty (60) years in connection with its manufacture and sale of jewelry tools, supplies and equipment.

Respondent is an online and catalog distributor of tools, supplies and equipment to the jewelry industry and primarily uses the web site Jewelrysupply.com.  On December 13, 1999, Respondent registered the domain name <grobet.com> with Network Solutions.  By registering its domain name with Network Solutions, Respondent agreed to resolve any dispute regarding its domain name pursuant to ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) and the Policy.  Shortly thereafter, respondent launched a web site resolving to www.grobet.com.  Respondent, a distributor of complainant, began to sell complainant’s products from the grobet.com site.  On April 14, 2000, counsel for complainant sent Respondent a letter requesting that Respondent cease and desist all activities associated with the <grobet.com> name.  Subsequent thereto Respondent’s distributorship was revoked and, at present, the web site was converted into a mere link to Respondent’s Jewelrysupply.com web site. 

4. Parties’ Contentions

A. Complainant contends that Registrant’s domain name <grobet.com> is identical to Complainant’s GROBET mark.

B. Complainant contends that Respondent has no rights or legitimate interest in the disputed domain name. 

C. Complainant contends that Respondent registered and is using the domain name in bad faith.

D. Respondent denies that the domain name is confusingly similar to Complainant’s mark.

E. Respondent denies Complainant’s assertion that it has no rights or legitimate interest in the disputed domain name.

F. Respondent denies that it has acted in bad faith in registering and using the domain name.

5. Discussion and Conclusions

As discussed below, under the standards applicable to this proceeding, the Panel concludes that Complainant is not entitled to relief on the record presented.  To obtain the requested relief, 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 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. Similarity Between Respondent’s Domain Name and Complainant’s Trademark.

It is certain that the domain name registered by Respondent, <grobet.com>, is substantially similar to, and, in fact, identical to Complainant’s mark which has been used in commerce for more than sixty (60) years.  Contrary to the argument raised by Respondent, registration of a mark is not required to obtain trademark protection.

B. Respondent’s Rights or Legitimate Interest in the Domain Name.

Whether the Respondent has any rights or legitimate interest in the domain name presents a somewhat more difficult question.

Under Paragraph 4(c) of the Policy, Respondent may rebut Complainant’s allegations by demonstrating its rights or legitimate interest in the domain name.   If proven, the following non-exclusive circumstances may serve as evidence of Respondent’s rights or legitimate interest in the domain name:

1) Demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to the dispute;

2) An indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights; or

3) Legitimate noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark.

Respondent has shown that, prior to this dispute, Respondent was an authorized distributor of Complainant’s goods.  In fact, Complainant agrees that Respondent was an authorized distributor of Complainant’s products.  Within its rights as a distributor, therefore, Respondent registered the domain name and sold Complainants legitimate goods online (December 1999 to April 2000).[1]  In sum, Respondent has successfully shown that it was using the <grobet.com> domain name and web site in connection with the bona fide offering of goods and services, before any notice of the dispute. See Weber-Stephen Products Co. v. Armitage Hardware, WIPO Arbitration and Mediation Center, Case No. D2000-0187, May 11, 2000 and The New Piper Aircraft, Inc. v. Piper.com, National Arbitration Forum, Case No. FA94367, May 2, 2000. Such rebuts Complainant’s assertion that it had “no right or legitimate interest” in the <grobet.com> domain name.

Having failed to prove the second prima facie element, the Panel need give no consideration to the third element, Respondent’s bad faith registration and use of the domain name.  Accordingly, the Panel finds that Complainant has failed to meet its burden of proof under the Policy.

6. Decision

Based upon the above findings and conclusions, and pursuant to Rule 4(i), the Panel decides in favor of Respondent and denies Complainant’s request that the domain name <grobet.com> be transferred. 

Honorable Nelson A. Diaz

District Court Judge (Ret.)

Arbitrator

July 14, 2000