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Alpine Electronics v. AlpineSys [2000] GENDND 768 (26 July 2000)

National Arbitration Forum

ARBITRATION BEFORE

THE NATIONAL ARBITRATION FORUM

Alpine Electronics, Inc. )

This is a domain name dispute proceeding pursuant to the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy").

PARTIES

The Complainant is Alpine Electronics, Inc., Japan ("Complainant"). The Respondent is AlpineSys, Sunnyvale, CA, USA ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is "<alpine.com>", registered with Register.com

PANELIST

The undersigned, Robert R. Merhige, Jr., was appointed by the National Arbitration Forum as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 06/06/2000; The Forum received a hard copy of the Complaint on 06/05/2000.

On 06/09/2000, Register.com confirmed by e-mail to The Forum that the domain name "<alpine.com>" is registered with Register.com and that the Respondent is the current registrant of the name.

On 06/07/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 06/27/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via email, post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts by email. The Respondent requested an extension, making the deadline to file the response 07/11/2000.

On 7/12/2000, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed Robert R. Merhige, Jr., as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant contends that Respondent’s domain name <alpine.com> is identical to Complainant’s mark. Complainant contends that Respondent has no rights or legitimate interest in the disputed domain name, and is wrongfully using same in bad faith.

B. Respondent denies Complainant’s contentions and asserts it is an internet start-up company with intentions to become a "Premier Travel internet site offering discounted travel at both ski and business destinations."

Respondent contends that Complainant does not have exclusive rights to the domain name. Respondent contends it has legitimate rights and interest in using what it refers to as a common term such as "alpine" in its domain name.

Respondent asserts it registered and used the domain name "alpine.com" in good faith.

FINDINGS

For the reasons stated below, I hold that the domain name be transferred to the Complainant.

I find from a preponderance of the evidence that the Complainant was established in 1967 and conducts business world-wide, having for several decades advertised its products for sale under the "Alpine" name in the United States. Complainant registered trademark protection for its name, "Alpine" in 1981 and has since that time issued seven trademarks related to the Alpine name.

Specifically, Complainant owns and has registered the following trademarks with the United States Patent and Trademark Office: (1) "Alpine" ("stereo tape players, stereo tape players with radios, and accessories – namely speakers, equalizers, amplifiers and boosters") registered on June 30, 1981, Registration No. 1158867; (2) "Alpine" ("security systems comprising controllers, keyboards, electronic sensors and alarms"), registered on October 1, 1985, Registration No. 1363008; (3) "Alpine" ("cellular telephone system comprising transceivers, control units, handsets, number displays, keypads, microphones, speakers, antennae, mounting hardware, cables and connectors, and printers"), registered on December 17, 1985, Registration No. 1375545; (4) "Alpine" ("electronic compact audio and video disc players"), registered on July 1, 1986, Registration No. 1399249; (5) "Alpine" (design plus words, letters and/or numbers), registered on November 6, 1990, Registration No. 1620906; (6) "Alpine" (words, letters and/or numbers in a stylized form), registered on December 10, 1991, Registration No. 1667505; and (7) "Alpine" ("computer keyboard terminals; floppy disk drives; mobile computers, office computers; personal computers; computer programs used to create and develop computer software, and used to support creating and developing micro-computers, recorded on cards, tapes and disks; modems; computer facsimile interfaces; and mobile facsimile machines and parts thereof") registered on April 22, 1997, Registration No. 2055630 (collectively "trademarks").

Alpine has invested substantial time, money and effort in advertising, promoting and marketing its business and its Alpine trademarks, and has developed good will and consumer loyalty for the name Alpine.

The evidence discloses that the domain name in issue was registered to AlpineSys of Sunnyvale, California, the Respondent, on May 20, 1997. The aforementioned registration is active, but there isn’t any evidence linking the name to an active web site. Though purportedly linked to a web site, the evidence discloses that the "web site" is devoid of any information whatsoever.

DISCUSSION AND FINDINGS

To obtain the requested relief, paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy, by which both parties are bound, requires that the Complainant prove each of the following:

A. Similarity between Respondent’s domain name and Complainant’s trademarks.

Under paragraph 4(a) of the Policy, it is clear that the domain name registered by Respondent, "alpine.com", is substantially similar to, and, in fact, is identical to the registered trademarks of Alpine.

As a consequence, the domain name "alpine.com" is easily subject to being mistaken for a number of Complainant’s trademarks for "Alpine."

B. No Legitimate Interest in the Domain Name

Respondent has no rights or legitimate interest in the domain name and has not used same or a corresponding name in connection with a bona fide offering of goods or services or in a legitimate, non-commercial, fair use manner.

Respondent’s contentions that it has made a legitimate use of the disputed domain name, i.e., that it registered the domain name in order to develop a business idea, is unpersuasive. In short, Respondent has linked the domain name to an inactive (blank) web site and the evidence fails to disclose that said web site had been active at any time.

Under paragraph 4(c) of the Policy, evidence of a registrant’s rights or a legitimate interest in a domain name includes:

There is not a scintilla of evidence of any preparation to use the domain name in connection with a bona fide offering of goods or services prior to the present dispute. Indeed, the record fails to contain any evidence, as distinguished from argument, containing conclusory contentions of any preparation to use the domain name in connection with a bona fide offering of goods or services with the exception of a self-serving five-line undated document styled "AlpineSys Mission Statement." This document was attached to Respondent’s "Response" dated July 12, 2000, more than a month after the filing of the Complaint in this case.

It is particularly noted by the undersigned that despite allegations contained in the Complainant’s first filing in this cause dated June 1, 2000, asserting that Respondent’s address was a Post Office Box in Sunnyvale, California, and that a public records search for the State of California failed to reveal any company named "AlpineSys" qualified to do business in the State of California. Additionally, it was asserted that a county records search indicated "that there is no fictitious business name for AlpineSys." In short, Complainant found no legitimate relationship between Respondent and the "Alpine" name. There has been no reference to that allegation in any of Respondent’s subsequent filings.

The evidence satisfies the undersigned that there is not any valid association, presence, brand awareness, right or legitimate interest in connection with the use and registration on the part of the Respondent with the use and registration of the domain name in issue.

The closest association between Respondent and the domain name in issue is its linking the name to a blank web site. Such conduct is in essence a "parking" of a domain name – the linking of a domain name to a blank web site is no more effective than not linking it to a web site. Such conduct is at the least contra to the spirit of the purpose of Congress’ intentions in its passing of the Anticybersquatting Consumer Protection Act, Pb.L. 106-113 ("ACPA"). See Beverages and More, Inc. v. Glenn Sobel, Mgt., AF-0092, March 9, 2000; also Sporty’s Farm, L.L.C. v. Sportsman’s Market, Inc., 2000 U.S. App. Lexis 1246, 53 U.S.P.Q.2d (BNA) 1570.

I find that the Respondent has provided no credible evidence to rebut the allegation of facts showing that it had any rights or legitimate interest in the domain name in dispute. Complainant thus has met its burden of proof with regard to the second prong under paragraph 4(a) of the Policy.

C. Respondent’s Bad Faith Registration and Use of the Domain Name

Under paragraph 4(b) of the Policy, evidence of the Respondent’s bad faith registration and use includes:

Respondent, in its efforts to defend against the instant Complaint, makes reference to Complainant’s trademark registration. This satisfies the undersigned that Respondent was well aware of Complainant’s well-established rights in and to the mark. When Respondent filed its registration for the domain name, it in the very filing represented that registration "would not infringe upon or otherwise violate the rights of any third party." Under the circumstances existing, it is reasonable to infer that this representation was false when made and the registering of the domain name represents bad faith.

Respondent’s failure to offer any bona fide services in connection with the domain name, other than its belated contention that it was planning to do so, is further evidence of bad faith, as well as its "parking" of the domain name for more than three years. The record reflects that Respondent had, at least three years prior to the filing of the instant Complaint, registered the domain name in issue with Network Solutions, Inc. (NSI). The unrefuted evidence is that, at the behest of the Complainant, upon being asked by NSI to provide "updated and accurate information" to it, Respondent failed to provide the requested information but apparently in place thereof, re-registered the domain name with its present registrar, Registrar.com. That registration contained the same address and an out-of-service telephone number noted in its original registration with NSI.

Finally, the Respondent’s failure to provide any indicia of any good faith use of the domain name in issue coupled with the evidence as a whole heretofore noted satisfies the undersigned that the Respondent has acted in bad faith.

CONCLUSION

For the reasons heretofore stated and pursuant to the authority vested in the undersigned who has acted independently and has no known conflict in serving as the arbitrator in this proceeding, it is

DIRECTED that the registration of the domain name "alpine.com" be forthwith transferred to the Complainant.

Dated: July 26, 2000 Robert Merhige, Jr., Panelist