DECISION

CommScope, Inc. of North Carolina v. EHK AG a/k/a Chris Zumbrunn

Claim Number: FA0204000109052

PARTIES

The Complainant is CommScope, Inc. of North Carolina, Hickory, NC (“Complainant”) represented by J. Mark Wilson, of Alston & Bird, LLP.  The Respondent is Chris Zumbrunn, a/k/a EHK AG, Mont-Soleil, SWITZERLAND (“Respondent”) represented by Ueli Gruter, of Sury Brun Hool & Associates.

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are: <comscope.com>, registered with Network Solutions, Inc., and <commscope.info>, <comscope.info>, registered with Register.com.

PANEL

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

Hon. Charles A. Kuechenmeister (Ret.) is the Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on April 4, 2002; the Forum received a hard copy of the Complaint on April 8, 2002.

On April 8, 2002, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <comscope.com> is registered with Network Solutions, Inc. and on April 5, 2002 Register.com confirmed by e-mail to the Forum that the domain names <comscope.info>, <commscope.info>, are registered with Register.com and that the Respondent is the current registrant of the names.  Network Solutions, Inc. and Register.com have verified that Respondent is bound by the Network Solutions, Inc. and Register.com registration agreements and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On April 11, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 1, 2002 by which Respondent could file a Response to the Complaint, was transmitted 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@comscope.com, postmaster@commscope.info, postmaster@comscope.info by e-mail.

A timely Response was received and determined to be complete on April 30, 2002.

On May 16, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Charles A. Kuechenmeister (Ret.) as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

            A.          Complainant

Complainant is the Owner of U.S. Trademark Registration Nos. 0898651 issued September 15, 1970 (for COMM/SCOPE), and 1865198 issued November 29, 1994, and 2053255 issued April 15, 1997 for the mark COMMSCOPE, both covering high performance, high-bandwidth cables for telecommunications applications.  Complainant has used the COMMSCOPE mark in commerce in connection with the marketing and sale of cable and cable-related products at least as early as 1969.  Complainant registered COMMSCOPE in the European Union (EU) in February 2000.

Complainant is the world's largest manufacturer of broadband coaxial cable for hybrid fiber coaxial applications, and a leading supplier of fiber optic and twisted pair cables for LAN, wireless and other applications.  In the year 2000, COMMSCOPE produced more than 2,800 miles of cable per day from its seven plants located in the United States, Brazil and Belgium, and had sales in excess of $900 million.

For several years, Complainant has exclusively used the trademark COMMSCOPE to identify its cables and cable-related products.  Complainant has also used the domain name <commscope.com> in connection with its business.

Complainant registered <commscope.com> on February 10, 1994 and began operating a website promoting its business at that domain name shortly thereafter.  That website is an important part of Complainant's marketing program.

Complainant's products have been and are being advertised and promoted extensively under the COMMSCOPE mark worldwide in various forms of media.  In advertising and promoting its goods to the public under that name, Complainant spends millions of dollars annually.  By reason of Complainant's longstanding use of its COMMSCOPE mark, that designation has a distinctive quality and has acquired special and particular significance and very valuable goodwill as identifying Complainant and its business products.  Through such usage and recognition, Complainant has acquired, in addition to its statutory rights, common law rights in the COMMSCOPE mark as a proprietary trade name and trademark, which rights extend, without limitation, to the exclusive right to use COMMSCOPE in the United States and numerous other countries, and the right to prevent others from using any marks, domain names, or other designations that are confusingly similar thereto.

Respondent registered and is using three domain names that violate Complainant's rights.  Respondent's domain name <commscope.info> is identical to Complainant's mark COMMSCOPE, and Respondent's domain names <comscope.com> and <comscope.info> are confusingly similar to it.

All three domain names resolve to the same internet website located at domain name <ehk.com>.  Respondent's said website is in German, but appears to be directed to computer services for beauty shops.

Respondent's representative, Herbert Kühleitner, has contacted various employees of Complainant via e-mail over forty times offering to sell Respondent's domain names.  Respondent's asking price for the domain name <comscope.com> varied from a low of U$S 100,000 to a high of U$S 2 million, with Respondent offering to sell both that domain and the domain name <comscope.info> as a package on several occasions for as much as U$S 700,000 U.S.  These offers grossly exceed Respondent's out-of-pocket expenses incurred in registering the domain names at issue.

In many of its communications to Complainant, Respondent has admitted that it has no need for the <comscope.com>, and that that domain name has caused mutual confusion among Complainant's customers and prospective customers.  Respondent stated that it receives approximately 100 to 200 e‑mail messages every day that are intended for Complainant and are mistakenly received by Respondent.

Respondent registered the domain names <comscope.info> and <commscope.info> after Respondent was aware of Complainant's use of its mark COMMSCOPE.

Respondent has no known senior rights in the COMSCOPE or COMMSCOPE marks.

B.     Respondent

Respondent is a hard and software company retailing a computer aided system to analyze hairs.  Respondent sells its products (hard and software) exclusively to coiffeur and beauty salons.

As early as 1993, Respondent presented its computer aided system to analyze hairs under the name COMSCOPE.  In 1995, Respondent was selling its product and services under the name COMSCOPE and also promoted its products in a coiffeur journal in 1996 using that same COMSCOPE mark.  Respondent delivered its computer aided hair analysis system under the name COMSCOPE to the worldwide active and well known hair products company Wella in 1996, and has continued its use of that COMSCOPE mark in connection with its hair analysis program at least through 1999.

COM is a generally known abbreviation for computer, while COMM is a generally known abbreviation for communication.  Because the marks of both parties are thus descriptive, they are both relatively weak marks, and both parties must for this reason expect a certain amount of confusion resulting from others using similar marks, especially in combination with other goods and services.

Respondent uses its mark COMSCOPE in connection with goods and services that are very different from those represented by Complainant's mark COMMSCOPE.  They focus on very different markets and audiences.  There is thus very little risk of confusion among the two marks, and among the domain names based upon them.

Complainant is absolutely unknown in Switzerland.  Complainant alleges to have a trademark in the EU, but does not have one in Switzerland, which is not a member of the EU.  Moreover, the potential market of Complainant's products is limited to a closed number of specific companies which use those types of cables and products, and it is relatively simple for them to distinguish Complainant's mark and domain name from Respondent's mark and domain name.

Respondent registered its domain name <comscope.com> in February 1998.  That domain name is used directly with Respondent's home page and is not deflected to Respondent's other domain name <ehk.com>.

Respondent was completely unaware of the existence of Complainant until early in the year 2000, when a Mr. Gabbard, employed by Complainant, sent an e‑mail to Respondent and inquired whether Complainant would be able to buy the domain name <comscope.com> from Respondent.  Until this communication occurred, Respondent had no idea of Complainant, its use of the mark COMMSCOPE, or the interest that Complainant might have in acquiring <comscope.com> from Respondent.

Until the communication from Mr. Gabbard as described above, Respondent had no thought of selling the <comscope.com> domain name because he was using it to market his own products.

Respondent did not respond to the first e‑mail of Mr. Gabbard and in fact deleted it because he had no interest in selling <comscope.com>.  It was only when Mr. Gabbard contacted Respondent a second time for the same purpose that Respondent began to consider a possible sale.

Any transfer of the <comscope.com> domain name would require a complete change of marketing and communications strategy for Respondent's product, which would cost substantial sums of money, and Respondent is entitled to request compensation from Complainant in an amount reasonably likely to offset those costs.

Following the second communication from Mr. Gabbard, Respondent initiated a number of communications with Complainant offering to sell its registered domain names at issue in this case.  He persisted in these communications for a period of over a year in order to resolve the uncertainty present in its mind arising out of the trade names issues.

Respondent denies registration and use in bad faith with respect to all three domain names.

FINDINGS AND 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 Rules 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

Complainant is the Owner of U.S. Trademark Registration Nos. 0898651 issued September 15, 1970 (for COMM/SCOPE), and 1865198 issued November 29, 1994, and 2053255 issued April 15, 1997 for the mark COMMSCOPE, both covering high performance, high-bandwidth cables for telecommunications applications.  Complainant has used the COMMSCOPE mark in commerce in connection with the marketing and sale of cable and cable-related products at least as early as 1969.  Complainant registered COMMSCOPE in the EU in February 2000.

Complainant is the world's largest manufacturer of broadband coaxial cable for hybrid fiber coaxial applications, and a leading supplier of fiber optic and twisted pair cables for LAN, wireless and other applications.  In the year 2000, Complainant produced more than 2,800 miles of cable per day from its seven plants located in the United States, Brazil and Belgium, and had sales in excess of $900 million.

For several years, Complainant has exclusively used the trademark COMMSCOPE to identify its cables and cable-related products.  Complainant has also used the domain name <commscope.com> in connection with its business.

Complainant registered the domain name <commscope.com> on February 10, 1994 and began operating a website promoting its business at the domain name shortly thereafter.  That website is an important part of Complainant's marketing program.

<commscope.info>

The <commscope.info> domain name registered by Respondent is identical to Complainant’s COMMSCOPE mark.  It incorporates the entirety of Complainant’s mark and merely adds the generic top-level domain name “.info.”  Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (<pomellato.com> is identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); Sporty's Farm L.L.C. vs. Sportsman's Market, Inc., [2000] USCA2 33; 202 F.3d 489 (2nd Cir. 2000) cert. denied, 530 U.S. 1262 (2000), ("For consumers to buy things or gather information on the Internet, they need an easy way to find particular companies or brand names. The most common method of locating an unknown domain name is simply to type in the company name or logo with the suffix .com.").

<comscope.com> and <comscope.info>

The only difference between Complainant’s COMMSCOPE mark and <comscope.com> and <comscope.info> is that these have only one "M."  This minor difference does not create a distinct mark.  See, State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (the domain name <statfarm.com> is confusingly similar to the Complainant’s STATE FARM mark); see also Compaq Info. Techs. Group, L.P. v. Seocho , FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name <compq.com> is confusingly similar to Complainant’s COMPAQ mark because the omission of the letter “a” in the domain name does not significantly change the overall impression of the mark).

Respondent asserts that the goods and services of the parties as represented by their respective marks are so different as to eliminate the possibility of confusion. Where the products of the parties involved are not identical, the likelihood of confusion issue extends to whether the public would "probably assume" that the product or service represented by a name is associated with the source of a different product represented by a similar name or mark.  Scott Paper Co. v. Scott's Liquid Gold, Inc., [1978] USCA3 1009; 589 F.2d 1225, 1229 (C.A. Del.,1978).  Similarity or dissimilarity of the products themselves is only one of several factors to be considered.  Others include (1) the strength of Plaintiff’s mark; (2) the degree of similarity between marks; (3) the relationship between parties’ channels of trade; (4) the relationship between parties’ advertising; (5) the degree of care exercised by relevant consumers; (6) evidence of actual confusion, and (7) the intent of the allegedly infringing user.  Id.; see also Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir.1961).  The advent of the Internet is giving a new context in which these factors are weighed.  The Internet is not forgiving, or understanding of subjective intent—what the seeker of a website or an e-mail address enters on the keyboard absolutely determines where he is sent, regardless of what he might have intended or thought.  The channels of trade of both parties include the Internet; both say it is important for them.  One M or two is virtually the only difference between going to a coiffure-related site on the one hand or a communication cables site on the other.  The parties agree that actual confusion has occurred not just often, but continuously, 100 or 200 e-mail messages a day intended for Complainant misdirected to Respondent, even according to Respondent.  See, Complaint Exhibit E, Item 41.

Based upon the foregoing, the Panel finds and determines that <commscope.info>, <comscope.info> and <comscope.com> are identical or confusingly similar to the mark COMMSCOPE, in which Complainant has rights.

Rights or Legitimate Interests

<commscope.info>

Respondent is not commonly known by the mark COMMSCOPE.  Its uses of this mark as reflected by the evidence consisting of its registration of <commscope.info> in October 2001, long after January 2000 when it first learned of Complainant's existence and use of COMMSCOPE for communications cable products, and its subsequent attempt to interest Complainant in buying it.  See, Policy ¶ 4(c)(ii), and Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

Respondent also uses <commscope.info> to divert users to its <ehk.com> website, but such use is not considered a bona fide offering pursuant to Policy ¶ 4(c)(i), nor a legitimate, noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal to suck surfers into a site sponsored by Respondent hardly seems legitimate”); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name).

Based upon the foregoing, the Panel finds and determines that Respondent has no right or legitimate interest in respect of <commscope.info>.

<comscope.info> and <comscope.com>

Respondent began using COMSCOPE to represent one of its products and services, i.e., computer-assisted analysis of hair marketed to the coiffure and hair salon trade, possibly as early as 1993.  Its use of COMSCOPE in this connection in 1995 and 1996 is well documented by copies of invoices and print ads.  This was well before Respondent learned of Complainant's existence or of the dispute about any of the domain names at issue in this case.  This use appears to fall squarely within the provisions of Policy Paragraph 4(c)(i), which permits a Respondent to demonstrate a right or legitimate interest in respect of a domain name by showing that before it had notice if the dispute it used the domain name or a name corresponding to it in connection with a bona fide offering of goods or services.

That said, COMSCOPE is still confusingly similar to Complainant's COMMSCOPE, and that raises the issue whether Respondent could legitimately acquire its right or legitimate interest in light of Complainant's demonstrated prior use of its mark.  Respondent asserts that Complainant is unknown in Switzerland.  It also asserts that Complainant's trademark registration in the E.U. does not control because Switzerland is not a member of the E.U., and Complainant did not obtain that registration in any event until late February 2000.

COM is a generally known abbreviation for computer, while COMM is a generally known abbreviation for communication.  SCOPE likewise has a generic or descriptive meaning.  The marks of both parties are thus descriptive, and they are both relatively weak marks, at least in the absence of evidence of a strong secondary meaning.

Ultimately, Complainant has the burden of persuasion.  It may be that at a full evidentiary hearing Complainant could demonstrate that its COMMSCOPE mark was so well-known generally throughout the 1990s that members of the public at large, and by implication Respondent in particular, could not fail to recognize or be aware of it.  See Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (finding that Respondent’s state trademark registration and intent-to-use application for YAHOO VENTURES were not enough to establish rights and legitimate interests in <yahooventures.com> within the meaning of Policy ¶ 4(a)(ii) where Respondent had not established an actual business at the domain name before initiation of the dispute, and similarity of the marks, products, services, channels of distribution, and consumers all pointed to a lack of rights and legitimate interests); see also Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark); see also Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark).  The evidence before this Panel does not take COMMSCOPE to that level.  The Panel is not persuaded that Respondent either was or should have been aware that that mark was being used by Complainant for its communications cable products at the time it began offering its computer-assisted hair analysis goods and services under the mark COMSCOPE.

Accordingly, the Panel finds and determines that Complainant has failed to demonstrate that Respondent has no right or legitimate interest in respect of <comscope.info> or <comscope.com>.

Registration and Use in Bad Faith

<commscope.info>

Respondent registered <commscope.info> in October 2001, long after January 2000 when it first learned of Complainant's existence and use of COMMSCOPE for communications cable products.  By then it had engaged in continuous efforts to sell <comscope.com> to Complainant.  Given that circumstance and the fact that Respondent has never offered goods or services under the mark COMMSCOPE, the only possible inference is that it registered <commscope.info> solely to sell it to Complainant.  Subsequently, it included <commscope.info> in a package deal offer with the other disputed domain names for sale to Complainant.  This is clear evidence of bad faith registration and use.  See, Policy Paragraph 4(b)(i), Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where the Respondent offered the domain names for sale); see also Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding Respondent's offer to sell the domain name at issue to Complainant was evidence of bad faith).

Based upon the foregoing, the Panel finds and determines that the Respondent registered and is using < commscope.info> in bad faith.

<comscope.info> and <comscope.com>

Having found for Respondent on the right or legitimate interest element in respect of these two domain names, the Panel is not required to address the issue of bad faith registration and use of these names.

DECISION

Based upon the foregoing Findings and Discussion, the relief sought in the Complaint as to <commscope.info> is granted.  The domain-name <commscope.info> is ordered transferred to Complainant.   The relief sought in the Complaint as to <comscope.info> and <comscope.com> is denied.

Honorable Charles A. Kuechenmeister (Ret.)

Dated:  May 28, 2002

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