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Generic Top Level Domain Name (gTLD) Decisions |
DECISION
Laurence Sax DBA Cap Factory v Cap Factory LTD
Claim Number: FA0012000096183
PARTIES
The Complainant is Laurence Sax DBA Cap Factory, Boston, MA, USA ("Complainant") represented by Jeffrey Upton, of Hanify & King, P.C. The Respondent is Michael Greeve Cap Factory LTD, Cramlingt on, Northumberland, UK ("Respondent") represented by Mark Pearce, of Dickinson Dees Law Firm.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are "thecapfactory.com" and "thecapfactory.net" registered with Tucows & Network Solutions.
PANEL
The undersigned 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 a panelist in this proceeding.
R. Glen Ayers acted as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on December 4, 2000; the Forum received a hard copy of the Complaint on December 4, 2000.
On December 12, 2000 (Tucows) & December 7, 2000 (Network Solutions), the Registrars confirmed by e-mail to The Forum that the domain names "thecapfactory.com" and "thecapfactory.net" are registered with Tucows and Net work Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by thi rd parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy").
On December 15, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 4, 2000 by which Respondent could file a Response to the Complaint, was tra nsmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@thecapfactory.com and postmaster@thecapfactory.net by e-mail.
On January 12, 2001, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed R. Glen Ayers as Panelist.
RELIEF SOUGHT
The Complainant requests that the domain names be transferred from the Respondent to the Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that it holds a registered service mark, "Cap Factory", as well as a second registered service mark "Custom Cap Factory". The first service mark was registered in 1996 and the second in 1997. Both service marks appl y to "retail store services featuring hats".
Complainant operates in Boston, Massachusetts. Although the pleadings are less than clear in this regard, it appears that the Complainant operates a retail store in Boston, Massachusetts. Complainant has established domain names and ope rates web sites on the Internet. Its domain names are "capfactory.com", "capfactory.net" and "capfactory.org".
Complainant asserts that the Respondent, which operates a similar retail business in the United Kingdom, has registered the following domain names which are alleged to be confusingly similar: "thecapfactory.com" and "thecapfactory.co.ne t".
Complainant also asserts that Respondent originally discussed a license arrangement with Complainant, but did not pursue those negotiations. Complainant subsequently learned that Respondent had established a cap business in the United K ingdom.
Then, on October 12, 2000, Respondent contacted Complainant and informed Complainant that it was receiving a steady number of inquiries on its web site from potential purchasers in the United States. Respondent offered a reciprocal agre ement whereby orders from Europe received by Complainant would be referred to Respondent; Respondent would refer all U.S. inquiries or orders to Complainant.
Complainant asserts that it surreptitiously placed an order with Respondent. That order was placed from the Untied States and was filled by Respondent.
B. Respondent
Respondent asserts first that the Complainant has registered no trade or service mark anywhere outside of the Untied States.
Respondent also asserts that it has registered a trademark in the United Kingdom, "Cap Factory".
Respondent further states that it does not intentionally sell to the United States. Respondent alleges that its web site states it does not ship orders to the United States.
Respondent admits that its web site includes a currency conversion function which converts prices to U.S. dollars but Respondent asserts that this is a function of the currency conversation program which it purchased and installed.
Respondent also admits that it did engage in negotiations with the Complainant and admits that it did offer a reciprocal agreement with Complainant so that inquiries it received could be referred to Complainant and inquiries Complainant received could be referred to it where appropriate -- that is, Respondent would fill European orders and Complainant would fill American orders. An e-mail dated October 12, 2000, is attached to Respondent’s submission.
Respondent also attached a number of documents indicating that when Respondent has received pre-paid orders from the United States out of its web site, that it has refunded the money, and redirected the person ordering the item to Compl ainant. Respondent contends that it has not been behaving in bad faith and that the e-mail in October 12, 2000 offering to cross refer to the Complainant is evidence of an absence of bad faith.
It alleges that it has mistakenly filed six orders received from the United States; that filling such orders is not its normal practice.
FINDINGS
The evidence clearly demonstrates that the Complainant has a registered service mark in the United States, "Cap Factory". It is also equally clear that the Respondent has a registered trademark in the United Kingdom in that same phr ase. Further, the Respondent has registered domain names which are identical to or confusingly similar. The registered domain names of the Respondent, "thecapfactory.com" and the "thecapfactory.net" are certainly identical to or confusingly similar.
However, it is also equally clear that the Respondent has certain rights in its U.K. trademark, which is identical to the service mark registered in the United States by Complainant.
There is simply not sufficient evidence here of Respondent’s registration and use of the domain names in "bad faith". Respondent’s e-mail of October 12, 2000, offering reciprocal referrals, together with Respondent’s evidence is evidenc e of lack of bad faith. Further, Respondent’s termination of transactions with residents of the United States and its attempt not to do business with residents of the United States, is clear. Its web site states that Respondent does not ship to the U.S. R espondent has taken reasonable steps to insure that it is not acting in bad faith as to the rights of Complainant by:
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rul es and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled 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;
(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.
Identical and/or Confusingly Similar
The Complainant’s contention that the Respondent’s domain names are identical and confusingly similar to its registered marks CAP FACTORY and CUSTOM CAP FACTORY is correct. See DCI S.A. v. Link Commercial Corp. D2000-1232 (WIPO Dec. 7, 2000) (finding that the domain name "5asec.com" is identical to the numerous trademark registrations of the Complainant’s mark "5 a sec"). However, as the Respondent has shown, the Complainant does not have international rights in th e CAP FACTORY marks because the Complainant does not hold registered trademarks or common law rights in Europe. Further, Respondent itself holds rights in the same phrase, registered as a trademark in the U.K.
Respondent’s Rights or Legitimate Interests
The Complainant contends that the Respondent has no rights or legitimate interests in the domain names where the Respondent knowingly registered domain names to infringe upon Complainant’s good will. See Kosmea Pty Ltd. v. Carmel Krpan, D2000-09 48 (WIPO October 3, 2000) (finding no rights in the domain name where the Respondent has an intention to divert consumers of the Complainant’s products to the Respondent’s site by using the Complainant’s mark). However, Complainant’s evidence was r ebuted by Respondent’s evidence.
The Respondent demonstrated that it has rights in the domain names because it is commonly known by THE CAP FACTORY phrase, is using the domain names in connection with a bona fide offering of goods and services in connection with its ca p business, and has registered the phrase as a trademark in the U.K. Policy ¶4(c)(i), (ii). See Bankinter S.A. v. BI Fin. Inc., D2000-0460 (WIPO Sept. 5, 2000) (finding that the Respondent has rights and legitimate interests in the domain name wher e Respondent is using the domain name for a legitimate and fair purpose and there is evidence that it is known by the disputed domain name); VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that the Respondent has rights and a legitimate interest in the domain name since the domain name reflects the Respondent’s company name).
Registration and Use in Bad Faith
Complainant has also failed to show that the Respondent registered the domain names in bad faith by knowingly registered the infringing domain names. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum, April 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration). In fact, at the time of registration, Respondent had rights in the names.
Attracting Internet users to a website, for commercial gain, by causing confusion with the Complainant’s mark as the sponsorship, endorsement, affiliation, or source of the website is evidence of bad faith. Policy ¶ 4.b.(iv). Registerin g a domain name in order to disrupt the business of a competitor is also evidence of bad faith. Policy ¶ 4.b.(iii). See Southern Exposure v. Southern Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to website that competes with Complainant’s business); Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000) (finding bad faith where the Respondent attempted to attract customers to its website, <efi tnesswholesale.com>, and created confusion by offering similar products for sale as the Complainant); EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where Respondent’s sites pass users throu gh to Respondent’s competing business).
The Respondent did not register the domain name in order to disrupt the Complainant’s business or to cause confusion with the Complainant’s business, even though confusion has resulted from registration of the domain names. See Aspha lt Research Tech., Inc. v Anything.com, D2000-0967 (WIPO Oct. 2, 2000) (finding that the Complainant has failed to prove that the domain name "ezstreet.com" was registered and is being used in bad faith or held passively for use by the Respondent in b ad faith); Goldmasters Precious Metals v. Gold Masters srl, FA 95246 (Nat. Arb. Forum Aug 21, 2000) (finding no bad faith where even though Respondent’s ownership and purported use of the domain name frustrates Complainant’s efforts, the record doe s not indicate any purpose or intent on the part of the Respondent to prevent Complainant from reflecting its mark in a corresponding domain name, to disrupt the business of a competitor, or to intentionally attract the customers of Complainant to Respond ent’s site by creating a likelihood of confusion).
Where confusion occurred, the Respondent took every step to send customers "back" to Complainant.
SUMMARY
The problem here is, of course, the nature of the Internet, which knows no borders, unlike copy write, and, trademark law, the net spans all borders. Search engines find sites, like Respondents, whether the user is in the U.S. or th e U.K. Given the rules under which this arbitration takes place, however the Complainant is not entitled to relief.
DECISION
The relief requested is denied. The domain names shall not be transferred.
R. Glen Ayers, Jr., Esq.
Arbitrator
Dated: January 31, 2001
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