ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. The Parties and Contested Domain Name.
Complainant is: Cello Holdings, LLC., 3112 Fairview Park Drive, Falls Church, Virginia 22042 USA. Complainant is represented by Richard Adams, 3112 Fairview Park Drive, Falls Church, Virginia 22042 USA. Email: firstname.lastname@example.org.
Registrant is: Lawrence dahl Co., 21727 Wahoo Trail, Chatsworth, California 91311 USA. Email: email@example.com Registrant is represented by Matthew Mead, Engel & McCarney 720 Fifth Avenue, New York, New York 10019 USA. Email: firstname.lastname@example.org.
Contested Domain Name: "cello.com". The Clerk of eResolution verified the Registrar as Network Solutions, Inc.
2. Procedural History.
The electronic version of the Complaint form was filed on-line through eResolution's Website on October 10, 2000. The hardcopy of the Complaint Form and annexes were received on October 13, 2000. Payment was received on October 13, 2000.
Upon receiving all the required information, eResolution's clerk proceeded to:
- Confirm the identity of the Registrar for the contested Domain Name;
- Verify the Registrar's Whois Database and confirm all the essential contact information for Respondent;
- Verify if the contested Domain Name resolved to an active Web page;
- Verify if the Complaint was administratively compliant.
This inquiry lead the Clerk of eResolution to the following conclusions: the Registrar is Network Solutions, Inc., the Whois database contains all the required contact information, the contested Domain Name resolves to an active Web page and the Complaint is administratively compliant.
An email was sent to the Registrar by eResolution Clerk's Office to obtain confirmation and a copy of the Registration Agreement on October 10, 2000. The requested information was received October 11, 2000.
The Clerk then proceeded to send a copy of the Complaint Form and the required Cover Sheet in accordance with paragraph 2 (a) of the ICANN's Rules for Uniform Domain Name Dispute Resolution Policy. The Clerk's Office fulfilled all its responsibilities under Paragraph 2(a) in forwarding the Complaint to the Respondent, notifying the Complainant, the concerned Registrar and ICANN on October 16, 2000. This date is the official commencement date of the administrative proceeding.
On November 4, 2000, the Respondent submitted, via eResolution Internet site, his response. The signed version of the response was received on November 10, 2000.
On November 15, 2000, the Clerk's Office contacted a first Panelist, and requested that she act as panelist in this case.
On November 21, 2000, this first Panelist, accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On November 21, 2000, the Clerk's Office forwarded a user name and a password to the first Panelist, allowing her to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.
On November 21, 2000, the parties were notified that a Panelist had been appointed and that a decision was to be, save exceptional circumstances, handed down on December 5, 2000.
On December 7, 2000, the Clerk's Office, because of the Panelist inability to comply with the delays, had to request another Panelist to act in this case.
On December 7, 2000, the Clerk's Office contacted Mr. Richard Faulkner, and requested that he acts as panelist in this case.
On December 7, 2000, Mr. Richard Faulkner accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On December 8, 2000, the Clerk's Office forwarded a user name and a password to Mr. Richard Faulkner, allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.
On December 8, 2000, the parties were notified that Mr. Faulkner had been appointed and that a decision was to be, save exceptional circumstances, handed down on December 21, 2000.
3. Factual Background.
Complainant and Registrant - Respondent are both domiciled in the United States of America.
Complainant, Cello Holdings LLC stated that it is the owner of numerous registered and pending trade and service marks in the United States and other jurisdictions, including the registration of the Trade-mark / Marque De Commerce "Cello". The trade-mark "Cello" covers a variety of products and services and an exposition of the extent of the coverage of the Complainant's registered marks "Cello", was provided to the Tribunal and is listed below.
1) Cello Holdings, LLC holds registered trademarks or service marks for Cello and variants and licenses them to subsidiary companies.
2) US Registrations include:
3) Cello: IC 009. US 021. G & S: amplifiers, preamplifiers, tone controls, speakers, switchboxes, power supplies, and associated accessories. FIRST USE: 19851122. Registration Number 1913134, Registration Date: 22-Aug-1995 http://tess.uspto.gov/bin/gate.exe?f=doc&state=h5qp48.3.9
4) Cello: IC 042. US 100 101. G & S: restaurant and bar services. FIRST USE: 19950215. Registration Number 2291452, Registration Date November 9, 1999 http://tess.uspto.gov/bin/gate.exe?f=doc&state=h5qp48.4.21
5) Cello: IC 041. US 100 101 107. G & S: Entertainment services, namely, presentation of live and recorded performances by a musical group or artist. FIRST USE: 19981028. Filed as Intent to Use September 24, 1997 Registration Number 2360870, Registration Date June 20, 2000 http://tess.uspto.gov/bin/gate.exe?f=doc&state=h5qp48.4.20
6) CELLO MUSIC & FILM SYSTEMS: IC 009. US 021 023 026 036 038. G & S: Sound amplifiers and preamplifiers, antennas, audio mixers, audio tape recorders, electrical cables and wires, video cassette recorders, blank audio cassettes, blank video cassettes, compact disc players and recorders, digital audio tape players and recorders, DVD players and recorders, television sets, loudspeakers, loudspeaker cabinets, video monitors, video cameras, motion picture cameras, phonographs, cameras, movie projectors, radios, receivers, tuners, transceivers, tone controls, electric switch boxes, audio speakers, and electrical power supplies, and accessories therefor; wireless remote control for use in accessing and controlling audio and video systems, namely, video projectors, projection screens, sound amplifiers, sound preamplifiers, tone controls, time delay processors, switch boxes, compact disc players and recorders, DVD players and recorders, laser disc players, turntables, audio cassette players and recorders, video cassette players and recorders, audio speakers, radios, stereo tuners and receivers, video monitors and cameras, telephones, antennas, lighting and satellites. FIRST USE: 19850000. Registration Number 2384480Registration Date September 12, 2000 http://tess.uspto.gov/bin/gate.exe?f=doc&state=h5qp48.4.5
7) Other applications to register Cello have been filed in other categories, but have not yet been registered in the US
8) In the European Community:
9) Cello: Class 09 for Audio and video Equipment. Registration Number 816926, Registered 5 May 1998
10) Cello Music & Film Systems: Class 09 for Audio and Video Equipment: Registration Number 816991, Registered 5 May 1998
11) In Switzerland:
12) Cello Music & Film Systems, in Class 09 for audio and Video equipment, registered 1 Sept 1998, number 458938
13) In Australia:
14) Cello: Class 09 for Audio and video equipment, registered 5 May 1999, number 771483
15) Cello Music & Film Systems, Class 09 for audio and video equipment, registered 11 August 1999, number 771485
16) In Hong Kong:
17) Cello, Class 09 for audio and video equipment, registered 30 April, 1998, number 03993 of 1999.
18) Cello Music & Film Systems, Class 09 for audio and video equipment, registered 30 April, 1998, number 09018 of 1999.
19) In Japan:
20) Cello Music & Film Systems holds registration number 4354683, issued 7/28/2000 for audio equipment with the same description of goods as the USA.
21) Other applications are pending world wide.
The Domain Name registered by Registrant and at issue in this Complaint is "cello.com" (the "Domain Name").
Complainant states without contradiction that it continues in the operations for which it obtained its' original and subsequent marks and for which it has additional applications for marks pending.
Registrant specifically admitted that he offered to sell the Domain Name at issue to the Complainant and to others. Significantly, his own deposition testimony established that he determined a proposed price range of from U.S.D. $3,000 to 5,500.
Registrant has actual notice of these proceedings according to the ICANN Regulations, has responded to the Complaint and has freely participated in this arbitration.
The Tribunal was advised by Complainant that this issue began with a Complaint filed in October 1997 in the United States District Court for the Southern District of New York, Case Number: 97 Civ. 7677. That case proceeded for almost three years without any resolution and with significant expense. Cello Holdings LLC asserted that it voluntarily dismissed that case so as to avail itself of this dispute resolution policy which was not available at the time of the 1997 filing, thereby saving significant time and expense over the continued litigation.
The Respondent stated that on October 16, 1997, Cello Holdings, LLC and Cello Music and Film Systems, Inc. filed an identical complaint against Lawrence-Dahl Companies and Lawrence Storey in the United States District for the Southern District of New York in an action entitled Cello Holdings, L.L.C. v. Lawrence-Dahl Companies, Case Number: 97 Civ. 7677 (DC). Claimant there asserted claims under the Federal Trademark Dilution Act, 15 U.S.C. § 1125(c), Section 360-l of New York General Business Law and the Anticybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d). Respondent states that said action was discontinued with prejudice by Order dated August 15, 2000. However, Respondent further asserts that: "which, (Order) as noted above, acts as an adjudication on the merits of complainant's claims."
The Tribunal was furnished with evidence including documentation from the United States District Court reciting that the case was dismissed on the basis of an undisclosed settlement. The Tribunal accepts the observations of the United States District Judge that the underlying case was settled by the parties on some mutually acceptable basis and not on a basis precluding this action.
The Tribunal specifically notes that unlike many of these proceedings where the Tribunal is presented with limited information, these parties have submitted voluminous material in support of their respective positions. Those submissions included, but were not limited to, copies of pleadings, correspondence, motions, memoranda and attachments submitted to the United States District Court for the Southern District of New York, extracts of deposition transcripts, the Memorandum Decision of the United States District Court denying the parties cross motions for summary judgment and the dismissal of that federal action with prejudice on the representation by the parties to the District Court that the case was settled. The parties also provided the Tribunal with substantial trademark documentation annexed to their respective complaint and response forms. All of the material submitted was carefully reviewed by the Tribunal in the preparation of this decision.
The Tribunal reviewed and noted "The Facts" as found by the District Court and recited in its' Memorandum Decision. As those are contained in the parties evidence, they will not be reproduced here. However, the Tribunal accepts the findings of the United States District Court that the Respondent has attempted, if with only limited success, to advertise for sale a number of domain names, including the name at issue here and that as an amateur musician Respondent was aware that "Cello" was a brand name for audio equipment. (Storey TR. At 92 - 93, 96; Memorandum Decision Page 6 - 7.) It also accepts the District Court's observations that a reasonable factfinder could conclude that Storey acted with a "bad faith intent to profit." For example, he had no proprietary rights to the "cello" mark when he registered www.cello.com, he had not previously used it, and he had engaged in a pattern of registering domain names that could be of interest to others and then trying to sell them. (Memorandum Decision Page 20.) A contrary determination could also be made based on Storey's evidence. (Memorandum Decision Page 20 - 21.)
4. The Parties' Contentions.
Complainant's General Contentions:
The Complainant asserts that the Domain Name "cello.com" is identical to Complainant's registered trademark "cello" after removing the ".com" and/or is confusingly similar to "Cello Music & Film Systems." The Complainant documents this assertion in multiple ways the most damaging of which is by reference to the testimony of the Respondent in his deposition taken the use in the case formerly before the United States District Court.
Essentially Complainant claims that the as a result of the long-standing and extensive use that it has made of its trade-mark and service marks throughout the world and the degree of similarity between the Domain Name and the Complainant's trademarks and service marks, there is a likelihood that the Domain Name at issue, "www.cello.com" would be viewed as belonging to the Complainant or having a connection to the business activities of the Complainant.
The Complainant asserts that Registrant, Lawrence A. Storey, d.b.a. Lawrence - dahl Co., has no right or legitimate interest in the Domain Name "www.cello.com". Mr. Storey is not known by the name "Cello", nor does he operate a business known by the name of "Cello" or any variant thereof. Mr. Storey acquired the Domain Name at issue in June 1997, over a decade after the Complainant began selling "high end" audio equipment and 2 years after Complainant established rights in the trademark "Cello" and began internationally filing associated names and marks. Since acquiring the Domain Name in1997 Mr. Storey, has not established any genuine commercial interest in using the Domain Name, except insofar as he has attempted to sell it.
Complaint's Assertion of Illegitimacy
The Claimant asserted that Respondent admitted in his deposition that he had no legitimate rights to the name and registered it solely to sell for profit. The Respondent's testimony was that: "I will only benefit from the sale of it". "I intend to sell it." "If I did not sell it, I would keep it until I did sell it." "It is owned solely for the purpose of sale." (See Transcript of Deposition of Lawrence Alan Storey December 17, 1998", 282:1-12)
The Claimant further asserts that the Respondent's lack of legitimate interest is also demonstrated by the fact that nothing has been posted on the web page www.cello.com since Respondent obtained control of the domain except an offer to sell the domain name.
Complaint's Assertion of Bad Faith:
It is the Complainant's assertion that the Domain Name "www.cello.com" has been registered and used primarily for the purpose of selling or transferring the Domain Name to the Complainant or other parties, for valuable consideration in excess of documented out of pocket costs related to the transfer of the Domain Name contrary to the provisions of ICANN Policy.
The Claimant asserts that it documents this contention by establishing that Respondent admitted in his deposition that he acquired the domain name in violation of ICANN Policy 4b(i). In his testimony the Respondent admits that he was aware of Cello as a audio company and that he contacted a subsidiary of Complainant, as well as other organizations, and offered to sell the domain name for "$5,000-$5,500" an amount that was clearly in excess of his costs. (See Storey Tr. 81:25-86:17, 91:8-92:10, 147:24-148:11.)
It further asserts that Respondent has admitted that he never operated the cello.com site. (Storey Tr. at 138:12-139:4) and that he admitted that "I will only benefit from the sale of the domain name", (Storey Tr. at 282:1-2.)
Claimant's maintains that its' assertions of Bad Faith are additionally buttressed by the admissions of the Respondent that he operated a web site "logicaldomains.com" for the sole purpose of selling domain names. (Storey Transcript at 111:1-7.)
Finally, Claimant asserts that it has established the requisite Bad Faith by the fact that since the date of the commencement of this dispute, the web page "www.cello.com" offers the domain name for sale and performs no other purpose.
Consequently, Claimant maintains that the Registrant's purpose in registering the Domain Name was to profit from its sale or transfer. It claims that the facts and evidence it has submitted demonstrate that the Registrant registered the Domain Name in bad faith and he is using the Domain Name in bad faith because he is offering the Domain Name for sale on a web site that he owns or controls. [Such use, i.e., offering to sell the Domain Name, constitutes using the Domain Name in bad faith. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman, Case No. D99-0001, Administrative Panel Decision (WIPO Jan. 14, 2000).]
Registrant first asserts that the discontinuance of the original action in the United States District Court precludes action by this Tribunal. The Respondent's assertions are at variance with this Tribunal's reading of the evidence he submitted and are expressly rejected. Furthermore, as Respondent has made no attempt to enjoin the actions of eResolution or this Tribunal, a claim that jurisdiction is absent or that Respondent has not consented to participate in these proceedings is likewise unpersuasive.
Respondent's more serious contention is that as "cello" is a common noun, "cello.com" is not identical to or confusingly similar to Complainant's marks. The Respondent's assertion is purportedly further supported by the observation that numerous businesses use "cello" as part of their name or incorporate it into at least twenty (20) other federal trademarks.
Consequently, Respondent's contentions have been considered as generally denying Claimant's assertions and that it has the right to any remedy.
Complainant, Cello Holdings LLC requests that the ownership of the Domain Name at issue, www.cello.com be transferred to Cello holdings LLC.
5. Discussion and Findings.
The issue presented in this case is effectively whether the registration of the common English, Italian and German word "cello" as a Domain Name is subject to mandatory transfer under the ICANN Policy or Rules when that word has also been legitimately trademarked by dozens of companies throughout the world over the preceding decades. As the United States Court of Appeal for the Second Circuit so wryly observed in the Sporty's Farm case, infra, cyber-squatters have become increasingly sophisticated and ingenious in avoiding liability under the established trademark and trademark dilution law. Here the Respondent acquired a Domain name admittedly knowing of the Claimant's trademark and of the widespread mercantile use of that name by numerous other companies around the world. This Claimant and any of those other companies have uncontradicted long standing rights and legitimate interests in the name "cello", all of which would be superior to the interest of Respondent under the ICANN Policy. Thus the covert issue arises of whether this Respondent, or others similarly situated, can successfully and effectively create a profit-making opportunity by registering Domain Names that transgress the rights of not one but a multiplicity of trade mark and service mark holders and use that multiplicity of potential claimants to escape sanction under the ICANN Policy.
The ICANN Policy in Paragraph 4.a. requires Cello Holdings, LLC to prove, with respect to the Domain Name at issue, each of the following:
(i) The Domain Name at issue is identical or confusingly similar to a trademark or service mark in which Cello Holdings, LLC has rights; and
(ii) Lawrence Storey, dba Lawrence - dahl Co. has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
The ICANN Policy in Paragraph 4.b delineates four exemplar circumstances, that for the purposes of Paragraph 4(a)(iii), supra, are clear evidence of the registration and use of a Domain Name in bad faith.
The ICANN Policy at Paragraph 4.c. sets out three exemplar defenses which, if proved by Registrant, shall demonstrate Registrant's rights or legitimate interests to the Domain Name for purposes of Paragraph 4(a)(ii), supra.
a. Identity or Confusing Similarity
Claimant urges that the Domain Name at issue is within the concept of "confusing similarity". Thus, Complainant has the burden of establishing that the Domain Name at issue is "confusingly similar" to its corresponding marks and/or names.
The Domain Name at issue is patently substantially identical and confusingly similar to the corresponding marks and names. This is especially true in the context of the Internet where, as the Second Circuit has already observed, people tend to "locate" a business by typing its name or logo and appending the suffix".com.". The assertion that the Domain Name is not confusingly similar to the corresponding mark is not remotely credible.
The parties in this case are American, and especially as this dispute was originally within the jurisdiction of the United States Court of Appeals of the Second Circuit, this Tribunal is assisted and persuaded by the reasoning of the Second Circuit in the case of Sporty's Farm L.L.C. vs. Sportsman's Market, Inc., 2000 U.S. App. LEXIS 1246, 53 U.S.P.Q. 2D (BNA) 1570. There the Court observed that: "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. n3" Any consumer attempting to do so presently would not be directed to Cello Holdings, LLC or any of its related entities. Instead they would reach a web site offering them an opportunity to acquire a Domain Name identical to the Complainant's marks and names.
b. Rights or Legitimate Interests
Respondent 's basic defense on this point consists of the assertion that the Domain Name at issue is a common English, Italian (and German) noun. Therefore, he contends that as there is a multiplicity of businesses using the word "cello" in their name, he could therefore acquire the Domain Name and effectively auction it off to such of them as might be interested. The Tribunal expressly notes that Respondent does not challenge (1) the validity of any of the Claimant's marks, (2) Claimant's rights in those marks with respect to its' goods and/or services, (3) the reputation or goodwill inherently associated with those marks, or (4) any fact represented by Claimant. as to its' present or future use of the marks.
Respondent does not deny Claimant's assertion that he has no active website under the Domain Name at issue. The Tribunal has already recognized that the Parties in this matter are United States domiciliaries. It is clear to this Tribunal that Respondent's registration of this Domain Name is precisely the type of undesirable behavior envisioned by the United States Congress when it articulated the public policy of the United States by passing the Anticybersquatting Consumer Protection Act of 1999 and the Second Circuit Court of Appeals in Sporty's Farm, supra. That Court pointedly quoted the United States Senate stating "cybersquatters have become increasingly sophisticated as the case law has developed and now take the necessary precautions to insulate themselves from liability. For example, many cybersquatters are now careful to no longer offer the Domain Name for sale in any manner that could implicate liability under existing trademark dilution case law." The Court went on to note that "(the American) Congress passed the ACPA. (Anticybersquatting Consumer Protection Act) 'to protect consumers and American businesses, to promote the growth of online commerce, and to provide clarity in the law for trademark owners by prohibiting the bad-faith and abusive registration of distinctive marks as Internet Domain Names with the intent to profit from the goodwill associated with such marks -- a practice commonly referred to as 'cybersquatting'." S. Rep. No. 106-140, at 4. The Internet has already addressed these issues through the enlightened Procedures, Rules and Regulations of ICANN, which provide this Tribunal with the authority to determine these disputes. This also makes available the most persuasive logic and authority of the developing jurisprudence and legislation from every forum and jurisdiction that has also struggled with these issues.
c. Bad Faith.
The registration and use of the Domain Names at issue in bad faith according to the exemplars contained in the ICANN Regulations is obvious. It is uncontroverted that the Domain Name at issue has not been used in commerce nor on any active website by Respondent.
The totality of the evidence adduced by Claimant clearly demonstrates that the Domain Name at issue was primarily registered for the purposes of selling, renting, or otherwise transferring it to the owner of the trademark or service mark, or a competitor, for valuable consideration in excess of the documented out of pocket costs directly related to the acquisition of the Domain Name. The evidence in this case clearly establishes that the Respondent knew and candidly admitted under oath in his deposition that he acquired the Domain name in question for the purpose of resale to anyone who might have an interest in the use of that name, and was willing to pay him for it. Consequently, the issue of bad faith under the ICANN policy is easily determinable. The responded freely admitted all of the elements necessary to establish the requisite bad faith and the Tribunal finds that he sufficiently established that he acted in bad faith contrary to the ICANN Policy.
d. Paragraph 4.c. Defenses.
Registrant, Respondent , has failed to prove any of the three circumstances set out in ICANN Policy at paragraph 4.c., viz.:
(i) before any notice to Respondent of the dispute, he used or was preparing to use the Domain Name in connection with a bona fide offering of goods or services, or
(ii) Respondent or a related entity has been commonly known by the Domain Name, or
(iii) Respondent is making legitimate noncommercial or fair use of the Domain Name, "without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue".
e. Equal Treatment and Due Process.
Registrant, Lawrence Storey, d.b.a. Lawrence - dahl Co, knew, or reasonably should have known, when he registered the Domain Name at issue that he agreed to and accepted the Procedures, Rules and the Regulations established by the Registrar and its' successors. This Tribunal recognizes it has a duty to treat the parties equally and to afford them a fair opportunity to present their case. The extensive evidence submitted in this case exceeds that presented in any other case previously considered by this Tribunal. The ICANN Policy and Rules and the applicable arbitration laws provide that this Tribunal is expressly acknowledged to possess the power to determine the admissibility, relevance, materiality and weight of all evidence submitted to it. The Parties have freely and actively participated in this case and all of the Parties respective submissions, statements and representations have been considered for their relevance, materiality and admissibility. All have been given due and appropriate weight.
It is the opinion of this Tribunal that whilst this version of cyber-squatting is innovative, mere novelty does not thereby ensure success. However, it is expressly noted that the Tribunal does not attempt to rank, regulate or order any of the rights of the multiplicity of legitimate businesses holding trademarks or service marks including part or all of the word "cello." Rather, the Tribunal holds that as between this particular Claimant and this Respondent, this Claimant is entitled to the Domain Name. Should any of those other businesses have asserted such claims with similar evidence against this Respondent, they too likely would have prevailed for the strongest evidence against the Respondent arises from his own testimony and behavior. This particular form of cyberpiracy while novel and brazen, still violates the provisions of ICANN Policy and is thereby impermissible.
6. Conclusions, Decision and Award.
The evidence, submissions of the Parties and the guidance of the ICANN Regulations cause this Panel to conclude and decide that (a) the Domain Name registered by Respondent, and at issue herein, is in the context of the Internet virtually identical or confusingly similar to the business name and the various registered mark(s) of Claimant, (b) Respondent has no legitimate interests in respect of the Domain Name, and (c) the Domain Name at issue was registered and is being used in bad faith by Respondent .
Accordingly, the Tribunal hereby awards, directs, requires and orders that the registration of the Domain Name at issue, "www.cello.com" be transferred from Respondent to Claimant, Cello Holdings, LLC.
Thus done and signed in Dallas, Texas, United States of America on December 21, 2000.
(s) Hon. Richard D. Faulkner, J.D., LL.M., F.C.I.Arb.