DECISION

Keycom Enterprises, Inc. v. D&B International Computer Inc.

Claim Number: FA0310000198925

PARTIES

Complainant is Keycom Enterprises, Inc., Walnut, CA (“Complainant”) represented by Melanie L. Ronen, of Keesal, Young & Logan, 400 Oceangate, P.O. Box 1730, Long Beach, CA 90801-1730.  Respondent is D&B International Computer Inc., Taipei, Taiwan (“Respondent”) represented by Michael J. Andelson, of Best Best & Krieger LLP., 74-760 Highway 111, Suite 200, Indian Wells, CA 92210.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <asound.com>, registered with Network Solutions, Inc.

PANEL

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

Estella S. Gold as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 1, 2003; the Forum received a hard copy of the Complaint on October 1, 2003.

On October 6, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <asound.com> is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. registration agreement 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”).

DOCS_PH 1514504v1

On October 6, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 27, 2003 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@asound.com by e-mail.

Responded requested additional time to respond to the Complaint and Complainant consented.  On October 22, 2003, an extension was granted pursuant to the ICANN Rule 5(d).

A timely Response was received and determined to be complete on November 17, 2003.

Thereafter, an additional submission was received from Complainant on November 24, 2003, that was also timely.

Respondent replied on December 1, 2003, with a timely additional submission.

A subsequent submission, dated December 5, 2003, which was repetitious of prior submissions, was also received from Complainant.

On December 1, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Estella S. Gold, as Panelist.

The Panelist considered all submissions of the Complainant and Respondent, except for one:  the Panelist has not considered the Declaration of John Weeks, an employee of the Respondent’s counsels’ law firm.  Mr. Weeks is an agent of legal counsel and, therefore, is viewed as making counsel a witness in counsel’s case.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

Undisputed Facts:

There are only a few undisputed facts in this matter:

1. Registration of the disputed domain name with NSI;

2. Complainant has registered the trademark ASOUND with the United States Patent and Trademark Office on November 26, 2002 (Registration No. 2654444);

3. Respondent has registered the identical mark with the Republic of China in December 1997 (Registration No. 787052), Europe in November 2000 (Registration No. 001396118), and Singapore in November 1999 (Registration No. T99/13175A). 

A. Complainant

Complainant asserts that it used the mark in dispute in commerce prior to Respondent’s first use, and in fact, prior to the date of first use stated in its trademark application. 

Complainant asserts that it has priority in its use for the ASOUND mark both in the United States and in foreign commerce. 

Complainant asserts that it has a prior relationship with Respondent and that it subcontracted with Respondent for the production and assembly of its goods which were marketed under the mark ASOUND.

Complainant has produced business records in support of its allegations of the dates of actual first use of the mark in association with goods and services in commerce prior to Respondent’s first use of such marks in similar circumstances.

Complainant alleges that Respondent’s registration with the Federal Communications Commission was made on behalf of Complainant and not for Respondent’s independent use of the mark ASOUND.

Complainant alleges that various business records and contents of declarations from Respondent are false or, in some cases, forgeries.

B. Respondent

Respondent alleges that Respondent used the mark ASOUND in commerce in association with goods and services before Complainant did so.  Respondent alleges that it has a legitimate right to the use of the mark ASOUND in association with goods and services, and that Complainant’s Complaint is a reverse domain name hijacking.

Respondent denies that it ever had a business relationship with Complainant to assemble its goods under the name ASOUND.

Respondent alleges that the business records submitted by the Complainant and portions of the Declarations submitted by Complainant are false, and in some cases, forgeries.

Respondent alleges that it has priority in the use of the mark ASOUND for both domestic and international commerce based upon its registrations, as well as submissions of evidence showing dates on sound cards as early as 1995.

Respondent requests the Panel ignore certain evidence submitted by Complainant as lacking adequate foundation and other evidentiary objections.

FINDINGS

The Panel makes no finding as indicated in the discussion below.

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

It is undisputed that the domain name <asound.com> is identical to the registered trademark at the United States Patent and Trademark Office, registered by the Complainant, and is also identical to the registered trademarks registered by Respondent in China, Singapore, and Europe.

The Panel finds that this dispute is not within the scope of the ICANN Policy because the Policy is designed for only abusive domain name registration and use, not trademark claims that would require substantive discovery.  See AutoNation Holding Corp. v. Alawneh, D2002-0581 (WIPO May 2, 2002) (holding that assertions of trademark infringement "are entirely misplaced and totally inappropriate for resolution through an ICANN proceeding. The scope of an ICANN proceeding is extremely narrow: it only targets abusive cybersquatting, nothing else"); see also Com. Publ’g Co. v. EarthComm., Inc., FA 95013 (Nat. Arb. Forum July 20, 2000) (stating that the Policy’s administrative procedure is “intended only for the relatively narrow class of cases of ‘abusive registrations.’” Cases where registered domain names are subject to legitimate disputes are relegated to the courts).

Discovery in this case is required because the credibility of the various witnesses is at issue.  The parties do not even agree on whether or not there was a prior business relationship, much less what that relationship might have been.  The parties do not agree upon the translation of the Chinese language, nor the foundation to the documents.  Each party accuses the other of presenting forgeries to the Panel.  Assessment of the credibility of the witnesses, the reliability of the documents, the validity of the translation and the obvious need for discovery require that the Panel find that this is outside the scope of  ICANN Policy.

 

DECISION

This matter is DISMISSED without Decision because it is outside the scope of ICANN Policy.

Estella S. Gold, Panelist
Dated: December 18, 2003

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