EBSCO Industries Inc v. Cotton Cordell Fishuntravel Inc
Claim Number: FA0111000101571
The Complainant is EBSCO Industries, Inc., Birmingham , AL (“Complainant”) represented by Robert J. Veal, of Burr & Forman LLP. The Respondent is Cotton Cordell Fishuntravel, Little Rock, AR (“Respondent”) Kelly S. Jennings.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cottoncordell.com>, registered with Network Solutions, Inc.
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.
Anne M. Wallace, Q.C. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on November 1, 2001; the Forum received a hard copy of the Complaint on November 2, 2001.
On November 6, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <cottoncordell.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. 5.0 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”).
On November 7, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 27, 2001 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on November 27, 2001.
Additional submissions received December 3, 2001 from Complainant.
On December 5, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Anne M. Wallace, Q.C., as Panelist.
Additional submissions received December 10, 2001 from Respondent. All submissions to this point were timely and all have been considered.
Further additional submission was received from Complainant on December 13, 2001. This submission was limited to commentary to brand new information raised by Respondent in December 10, 2001 submission.
All submissions have been considered in reaching this decision.
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
Complainant through registration and extensive use established that it is the owner of the CORDELL and COTTON CORDELL trademarks. On December 10, 1980 Complainant purchased Cordell Tackle, Inc. and Cordell Manufacturing, Inc.. This purchase included all of the trademarks and trademark rights in the names CORDELL and COTTON CORDELL. The asset Purchase Agreement stated that the Seller would give up all goodwill, trademarks, trademark rights, trade names, service marks, licenses, and the rights to use the names CORDELL, COTTON CORDELL and DOLL and deviations or modifications thereof.
Further, a Consulting and Non-competition Agreement between the purchasers and Carl R. “Cotton” Cordell, signed contemporaneously stated that Mr. Carl R. “Cotton” Cordell assigned, irrevocably and forever the exclusive right to the names CORDELL and COTTON CORDELL and agreed not to use the name or grant and assign anyone else the name in connection with the TACKLE business or any business activities related thereto, in any manner that would be or is confusingly similar to, or which creates a likelihood of confusion with, the use of the CORDELL or COTTON CORDELL marks.
Respondent registered the domain name <cottoncordell.com> in 1995 and starting using the web site in 1997 for a business involving fishing advice and arranging fishing and hunting expeditions.
Respondent’s domain name is identical to Complainant’s COTTON CORDELL mark and confusingly similar to its CORDELL mark.
While Respondent asserts that it has a trademark registration for FISHUNTRAVEL COTTON CORDELL’S WORLD CLASS CHOICE COLLECTIONS, the evidence establishes that this mark was never registered.
Complainant asserts that Respondent, Fishuntravel Inc., is not commonly known by <cottoncordell.com> and therefore has no rights or legitimate interests in the disputed domain name. Furthermore, Respondent has no rights or legitimate interests in the disputed domain name because Carl “Cotton” Cordell transferred all of his rights to the COTTON CORDELL and CORDELL names to Complainant, thereby leaving no power to assign his name to Respondent. Mr. Cordell sold all the rights to his name to Complainant.
Respondent is intentially diverting Internet users to its website for its own commercial gain and is therefore not making legitimate noncommercial, or fair use of the disputed domain pursuant to Policy 4(c)(iii).
Complainant argues that <cottoncordell.com> is confusingly similar to the Complainant’s marks and the Internet user will likely believe that there is an affiliation between Respondent and Complainant. Registration of the <cottoncordell.com> domain name despite confusing similarity is evidence of bad faith. Complainant alleged that Respondent has attempted to sell the domain name at issue to Complainant and this is evidence of bad faith.
Complainant further argues that Respondent had full knowledge of Complainant’s rights in the domain name as well as Respondent’s own lack thereof when it registered the domain name. As a result, Respondent was on notice of Complainant’s rights and the registration of <cottoncordell.com> was an act of bad faith.
Complainant asserts in its additional submissions that Respondent registered the disputed domain name despite the fact that Respondent knew it could avoid infringing on Complainant’s mark by registering its own mark as <fishuntravel.com> instead of <cottoncordell.com>.
Complainant further alleges that Respondent is holding the <cottoncordell.com> domain name hostage in order to prevent Complainant from using it.
Respondent asserts that the domain name is merely a shortened version of its mark FISHUNTRAVEL COTTON CORDELL’S WORLD CLASS CHOICE COLLECTIONS.
Respondent submits that the domain name is merely a form of Mr. Cordell’s legal name and therefore he has rights and legitimate interests. Respondent further submits that the Consulting and Non-competition Agreement does not prevent Mr. Cordell from using his name for everything associated with the fishing industry. It only prohibits use for the TACKLE business and any businesses related thereto. Respondent uses the domain name to dispense fishing advice and arrange guided fishing and hunting expeditions.
Respondent says the domain name was registered in 1995 and has been used since 1997 to dispense fishing advice. Respondent says the name was registered in good faith because “fishing advice” is not an activity prohibited by the non-competition agreement. Furthermore, Complainant’s lack of diligence in bringing this proceeding to stop Respondent’s use of <cottoncordell.com> for this purpose has abrogated its ability to bring any claim against Respondent.
Respondent further asserts that its offer to sell the disputed domain name to Complainant was not in bad faith because its purposes for registering the domain name were not to sell it but to use it for fishing and hunting services.
C. Additional Submissions
To the extent necessary, I will refer to any additional submissions in my discussion of the findings in this case.
There is no question that the domain name <cottoncordell.com> is identical to or confusingly similar to the Complainant’s COTTON CORDELL and CORDELL trademarks. However, I am unable to come to conclusions on the questions of rights or legitimate interests or on the question of bad faith. While I have grave concerns about the veracity of Respondent’s evidence and while I fear the Respondent is acting in bad faith in a more general sense, this dispute is essentially a business dispute over the interpretation of a contract and therefore does not fall within the realm of the UDRP.
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
There is no question that the domain name <cottoncordell.com> is identical to or confusingly similar with Respondents marks COTTON CORDELL and CORDELL. Complainant succeeds on this element. Respondent’s claim that it has rights in the name because of its mark FISHUNTRAVEL COTTON CORDELL’S WORLD CLASS CHOICE COLLECTIONS is completely unfounded. The evidence before me establishes that no trademark application for FISHUNTRAVEL COTTON CORDELL’S WORLD CLASS CHOICE COLLECTIONS ever proceeded and there is no registration for such mark.
Rights or Legitimate Interests and Registration and Use in Bad Faith
I will discuss these two elements together because in light of my decision with respect to these two elements, I will not be considering the parties’ submissions in detail. Complainant purchased assets and properties of two companies, Cordell Tackle, Inc. and Cordell Manufacturing, Inc., in 1980. In the agreements the business is referred to as TACKLE. In the Consulting and Non-competition Agreement between Carl Cordell and the Complainant, Cordell agrees not to engage in the TACKLE business or any business activities related thereto. TACKLE is essentially defined in the agreement as the businesses previously carried on by the two sellers.
The dispute over the domain name is essentially a business dispute over whether the non-competition agreement prevents Cordell or his assigns from using the marks COTTON CORDELL or CORDELL in connection with their business activities and whether the agreements prevent Mr. Cordell or his assigns from engaging in certain types of businesses. This becomes a question of whether Cordell and his assigns are engaged in the TACKLE business or any business activities related thereto using the Complainant’s marks. Cordell does appear to have some residual rights in the names COTTON CORDELL and CORDELL. He has however essentially sold substantial rights in those names in relation to the TACKLE business and any business activities related thereto.
The UDRP process is intended to deal with clear cases of cybersquatting. While I have grave doubts about the veracity of the evidence put forth by Respondent, and while I doubt that Respondent should ultimately be permitted to use the name <cottoncordell.com> for the activities in which he is engaging, the current dispute is essentially a business dispute over interpretation of a contract and therefore does not fall within the intended realm of the UDRP. The UDRP is intended to expeditiously deal with clear cases of cybersquatting. The issues between these parties are not such a clear case and are more appropriately to be decided in the courts.
For the reasons set out above, I hereby dismiss this Complaint.
Anne M. Wallace, Q.C., Panelist
Dated: December 21, 2001
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