P. O. Box 50191
Minneapolis, Minnesota 55405 USA
Cordstrap B.V.
Postbus 315
5750 AH Deuvne Geyserstraat 4
5753 RP Deuvne, Netherlands
COMPLAINANT
vs.
Avner Aliphas
28 Hampden Terrace
Newton, MA 02149
RESPONDENT
DECISION
FILE NO.: FA0002000094110
The above entitled matter came on for
an administrative hearing on April 4, 2000 before a panel of three arbitrators,
on the Complaint of Cordstrap B.V. ("Complainant"), represented
by Mark P. Szpak, Esq., Ropes & Gray, One
International Place, Boston,
MA 02110, against Avner Aliphas, ("Respondent"), represented
by Peter T. Wakiyama,
Esq., Wolf, Block, Schorr and Solis-Cohen, LLP,
111 South 15th Street, Philadelphia, PA 19102. Upon the written
submitted record including the Complaint, the Response to Complaint
and the Complainant’s Rebuttal to Respondent’s Reply to the
Complaint, the following DECISION is rendered:
PROCEDURAL FINDINGS
Domain Name: cordstrap.com
Domain Name Registrar: Network Solutions,
Inc.
Domain Name Registrant: Avner Aliphas
Date of Domain Name Registration: July 12,
1998
Date Complaint Filed: February 21, 2000
Date Response to Complaint Filed: March 15,
2000. Filing was timely.
After reviewing the complaint, and determining
it to be in administrative compliance, the National Arbitration Forum
("Forum") forwarded the Complaint to the Respondent on February
22, 2000 in compliance with Rule 2(a) and the
administrative proceeding
was commenced pursuant to Rule 4(c). In compliance with Rule 4(d), the
Forum immediately
notified Network Solutions that the administrative
proceeding had commenced. The Complainant elected to have this administrative
proceeding conducted by a three-arbitrator panel and paid the appropriate
fee for same. The Complaint, the
Response, Complainant’s Rebuttal
to Respondent’s Reply to Complaint and the Objection of Respondent
to Consideration by the Panel of the Rebuttal were docketed and forwarded
to each of the undersigned arbitrators for
decision.
FINDINGS OF FACT
1. Neither the Complainant nor
the Respondent contests the jurisdiction of the Forum or the
undersigned arbitrators to resolve this controversy.
-
Complainant is a Dutch company, operating
as Cordstrap B.V. since 1965, with affiliates using "Cordstrap"
in their names in a number of European countries and in the Middle
East. Exhibit B to the Complaint lists
21 countries, without limitation,
in which Complainant does business. Such list does not include
the United States or Mexico.
-
Complainant has applied for and obtained
trademark registration of the mark "CORDSTRAP" in a
number
of countries, the first of which appears to be in 1974
as a Benelux registration. No registration or application
for
registration in the United States or in Mexico is claimed by either
Complainant or Respondent.
-
In October of 1998, Complainant sought
to register "cordstrap.com" as a domain but learned
that
Respondent had registered the identical domain name on July
12, 1998. At the time, Respondent was a student at Johns
Hopkins
University in Baltimore, Maryland. As became apparent in communications
between the parties,
the domain name and associated website were
actually obtained and set up by Respondent for his uncle in Mexico
who operated a strapping materials company there named Van Dyck,
S.A. de C.V. ("Van Dyke"). Respondent’s
uncle,
Avihu Aliphas, had also formed a Deleware Corporation by the name
of Cordstrap, LLC as early
as September 24, 1998, the month prior
to Complainant’s attempt to register cordstrap.com.
-
Following unsuccessful settlement
negotiations, a complaint to Network Solutions succeded in inactivating
the domain name. The new regime under which domain name disputes
are decided caused Network Solutions
advise the parties that a
formal complaint should be filed or Respondent would be reinstated
in
the right to use cordstrap.com.
-
Complainant argues that his case
tracks the three tests for relief under paragraph 4 of the Policy:
4.a.(1) the domain name is identical to or confusingly similar
to a trademark or service mark in which the Complainant
has rights;
4.a.(2) that Respondent has no rights or legitimate interests
in respect to the domain
name, and 4.a.(3) that Respondent registered
and is using the domain name is bad faith. Customers and prospective
customers of Complainant will be confused and attracted to Respondent’s
website which will
be http://www.cordstrap.com
if Respondent is not accorded relief by this panel.
-
Respondent asserts that Van Dyke
developed a new woven product in its strapping materials business
in early 1998 of a type not manufactured by Complainant. It regarded
"cordstrap" as a generic term describing
packaging strapping
and has attached several exhibits to its Response so indicating
a generic usage
of "cordstrap," "cord strap"
and "cord strapping." Thus, it was natural, suggests
Respondent, to
incorporate Cordstrap, LLC in 1998 and to obtain
the domain cordstrap.com in 1998.
-
On the one hand, while alleging considerable
business activity in the U.S. and numerous international registrations
of "CORDSTRAP," Complainant does not explain why it
apparently did not apply for trademark registration
with the U.S.
Patent and Trademark Office. Respondent seems to argue that Complainant’s
failure
to appear at industry trade shows on this side of the
Atlantic should have some probative force here. On the other
hand,
Respondent does not claim that it was unaware of Cordstrap B.V.,
a company in the same industry,
when incorporating Cordstrap,
LLC in Deleware and when registering cordstrap.com with Network
Solutions.
If there were no distinctive value in the word "cordstrap,"
because it is generic and descriptive, why choose it
to name your
new company–especially with knowledge of a competitor’s
use? It would seem
that, by laying claim to the domain name and
bolstering with a U.S. incorporation using a name identical to
that of a European competitor, more than "nimble" activity
is involved on the part of Respondent. It
was an attempt to keep
a competitor an ocean away.
-
Based upon the undisputed aspects
of the record before us, the panel finds as matters of fact: a.
That the domain name at issue is identical to a trademark in which
Complainant has rights; b. That Respondent
has no rights or legitimate
interests in respect of the domain name; and c. That Respondent
registered
cordstrap.com in order to prevent the owner of the
trademark from reflection of the mark in a corresponding domain
name, to disrupt the competitive U.S. business of Complainant
and to attract, for commercial gain,
Internet users to Respondent’s
website by creating a likelihood of confusion with the Complainant’s
mark as to the source, sponsorship, or affiliation of the www.cordstrap.com
website.
CONCLUSION
The undersigned arbitrators certify that
they have acted independently and have no known conflict of interest
to serve on the arbitral panel in this proceeding. Having been duly
selected, and being impartial, the undersigned
make the following conclusions:
-
The arbitral panel wishes to commend
the very high quality of legal argument and the creativity of counsel
on both sides of this controversy.
-
With regard to the objection of counsel
for Respondent that a "second round" of pleadings was
impermissibly
begun with the "short reply" of Complainant
to the Response, it should be noted that the panel did not give
consideration to such pleading and it had no influence on this DECISION.
-
Based on the foregoing, we find that
Respondent has registered the domain "cordstrap.com" in
bad faith
within the meaning and in violation of paragraph 4 of
the Policy and that Complainant is hereby granted the relief
below.
DECISION
Based upon the above findings and conclusions,
and pursuant to Rule 4(i) of the ICANN’s Rules for Uniform Domain
Name Dispute Resolution Policy and the National Arbitration Forum’s
Supplemental Rules to ICANN’s
Uniform Domain Resolution Policy,
it is decided as follows:
THE UNDERSIGNED DIRECT THAT THE DOMAIN
NAME "CORDSTRAP.COM," REGISTERED BY RESPONDENT AVNER ALIPHAS,
BE
TRANSFERRED TO COMPLAINANT CORDSTRAP B.V.
Signed this 5th of April 2000
John A. Bender, Chairman Hon. Robert
R. Merhige, Jr James A. Carmody, esq.
520 Pike Street, Suite 2600 Hunton &
Williams 5718 Westheimer, Suite 1010
Seattle, WA 98101 951 E. Byrd Street
Houston, TX 77057
Riverfront Plaza, East Tower
Richmond, VA 23219
