National Arbitration Forum




CLIFF Electronic Components Ltd. v. Cliff Electronic Components

Claim Number: FA0806001212866




Complainant is CLIFF Electronic Components Ltd. (“Complainant”), represented by John C. Hilton, of McCormick Paulding & Huber LLP, Connecticut, USA.  Respondent is Cliff Electronic Components (“Respondent”), represented by Richard J. Raimond, of Law Offices of Goodell, Stratton, Edmunds & Palmer, Kansas, USA.



The domain name at issue is <>, registered with Totalregistrations.



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


James Bridgeman as Panelist.



Complainant submitted a Complaint to the National Arbitration Forum electronically on June 26, 2008; the National Arbitration Forum received a hard copy of the Complaint on June 30, 2008.


On July 4, 2008, Totalregistrations confirmed by e-mail to the National Arbitration Forum that the <> domain name is registered with Totalregistrations and that the Respondent is the current registrant of the name.  Totalregistrations has verified that Respondent is bound by the Totalregistrations 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 July 11, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 31, 2008 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 by e-mail.


On July 18, 2008, Respondent requested an extension of twenty days to respond to the Complaint pursuant to the National Arbitration Forum’s Supplemental Rule 6, and Complainant consented to the extension.  On July 21, 2008, the National Arbitration Forum granted an extension setting a new deadline of August 11, 2008 by which Respondent could file a response to the Complaint.


A timely Response was received and determined to be complete on August 11, 2008.


Complainant filed an Additional Submission on August 14, 2008, which was determined to be timely and complete in compliance with the National Arbitration Forum’s Supplemental Rule 7.


On August 18, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James Bridgeman as Panelist.



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


Respondent requests that the Panel make a finding that in bringing the Complaint, Complainant is engaged in reverse domain name hijacking.



A. Complainant


Complainant was founded in 1977 and manufactures and sells a variety of electrical components worldwide.


Complainant relies on its rights as the registered owner of U.S Federal Registered Trademark CLIFF, registration number 1,858,355, filed on November 17, 1992 and issued by the United States Patent and Trademark Office on October 18, 1994. Complainant also claims rights as the owner of a large portfolio of Internet domain names, listed below and furthermore claims common law rights in the following trademarks and trade names: CLIFFCON; QUICKTEST; ARTIKULA; STACKJACK; CLIFF ELECTRONIC COMPONENTS, LTD.; CLIFF, INC.; CLIFF ELECTRONICS; CLIFF ENTERPRISES; and CLIFF COMPONENTS INTERNATIONAL.


Complainant submits that the domain name <> is confusingly similar to Complainant’s said U.S. Registered Trademark CLIFF and further asserts that the domain name in dispute is also confusingly similar to Complainant’s domain name <>. Complainant argues that the word “cliff” is the dominant portion of both domain names, and is the sole property of Complainant. 


Complainant states that Respondent was formed in the year 2007 (the date is disputed by Respondent and the Panel accepts that Complainant is incorrect).


Complainant submits that Respondent was a distributor, and trusted reseller of Complainant’s CLIFF products for more than 10 years (1994 – 2007), but some time in 2007 Respondent violated that trust by importing counterfeit CLIFF goods from sources outside the quality and control of Complainant and passing their counterfeit CLIFF goods off as genuine CLIFF products and the distributorship was terminated by Complainant for cause in April 2008.


Complainant alleges that it discovered that customers for its CLIFF products were being deceived by Respondent when these customers complained to Complainant in late 2007 about the quality of the trademarked CLIFF products purchased from Respondent.  Upon inspection of these inferior CLIFF goods, Complainant discovered that they were indeed counterfeit, having the CLIFF trademark embossed on at least some of these products. Complainant submits that the intent of Respondent could only have been to pass off these counterfeit CLIFF goods for authentic CLIFF products of the same quality as Respondent’s customers had come to expect from previous purchases of CLIFF products that were from sources authorized by Complainant. Respondent is no longer authorized to purchase CLIFF products from Complainant.


Complainant submits that while Respondent has been commonly known by the domain name <>, Respondent has not acquired trademark or service mark rights therein because Respondent was formerly controlled by Complainant prior to the termination of that relationship in April 2008. Respondent’s use of the CLIFF trademark since that time at least, has been solely to benefit Respondent in violation of Complainant’s rights as owner of said incontestable U.S. Registered Trademark CLIFF (Reg. No. 1,858,355).


Although Respondent had been affiliated with Complainant in the past, that is no longer the case and Respondent’s use of the CLIFF trademark is no longer lawful, because such use by Respondent can only create confusion among those considering the purchase of CLIFF trademarked products.


Complainant submits that Respondent now operates without oversight or control by Complainant and continues to conduct business under the name Cliff Electronic Components, Inc., maintaining a website at the <> domain name address. Complainant has furnished print-outs of pages from the website established by Respondent at the <> address in an annex to the Complaint.


Complainant refers to print-outs of Complainant’s and Respondent’s respective websites and submits that it is apparent from a comparison of each that Respondent is trading upon Complainant’s reputation such as to constitute unfair competition under US law, both state and federal. Complainant submits that Respondent’s website is clearly designed to confuse customers, and infringes upon the trade dress of Respondent’s authentic website.  For example, the prominent use of the trademark and trade name CLIFF is presented with a blue background, and in a rectangular box on Respondent’s website, in a deliberate attempt to imitate the presentation used by Complainant in its website. Furthermore, Complainant alleges that the listing of products on Respondent’s website is strikingly similar to that presented on Complainant’s website.


Complainant refers to Respondent’s website and notes that under the heading “About CLIFF” it is stated that the parent company of Respondent was founded in 1964 as Cliff Plastic Products, and that “Cliff” is a worldwide company having subsidiaries in many countries, including not only the UK, but Australia, Taiwan, and Hong Kong. It is alleged by Complainant that at least some of these associations claimed by Respondent are completely false, and are designed to create an impression among prospective purchasers generally that Respondent is somehow still connected with Complainant.  In fact, no such connection exists. Respondent is not controlled by Complainant nor does any trademark license exists between them. Complainant submits that the competition now created by Respondent with Complainant, is both unfair and illegal under the laws of the United States. 


Complainant alleges that for some time past, Respondent has sold and continues to sell infringing and/or counterfeit products that are held out and passed off as lawfully manufactured by or for Complainant in a manner that constitutes willful trademark infringement under the federal and state laws of the United States. Complainant submits that some of the alleged counterfeit CLIFF products offered by Respondent infringe U.S. patents and trademarks of the Complainant.


Complainant submits that the circumstances outlined in the Complaint, clearly demonstrate that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s <> website by creating a likelihood of confusion with the Complainant’s CLIFF trademark and trade name, CLIFF ELECTRONIC COMPONENTS, as to the source, sponsorship, affiliation, or endorsement of Respondent’s <> website.


Complainant states that Respondent has been cut off from all authorized sources of authentic CLIFF goods, and nevertheless continues to hold itself out as offering CLIFF goods to customers, who are being deceived by the name and content of Respondent’s website, and who are being sold infringing and/or counterfeit goods that are passed off by Respondent as genuine CLIFF goods.


Complainant states that all of its affiliation with Respondent was terminated in April 2008, and Respondent is no longer allowed to claim to have any right to use the CLIFF trademark in the marketing of electronic components to prospective purchasers in the United States.  Those purchasers accessing Respondent’s website will think that an affiliation of some sort exists between complainant and respondent, when in fact no such relationship exists. Complainant refers to the decision of the panel in Treeforms, Inc. v Cayne Industrial Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000).


Complainant submits that as the sole authorized source for CLIFF goods, it is suffering harm as a result of the alleged unlawful infringing conduct by Respondent.


Complainant submits that Respondent’s website and the trade dress adopted by Respondent on its website established at the <> address, violate the federal trademark laws of the United States and the remedy requested herein would be within the power of any court of general jurisdiction to grant Complainant the relief requested here in the event that legal proceedings are found necessary by Complainant. 


B. Respondent


The Respondent requests that the Panel denies the remedy requested by the Complainant and asks that the Panel make a finding that in bringing this Complaint, Complainant is engaged in reverse domain name hi-jacking.


Respondent submits that it has been a working corporation in the U.S. for over fifteen (15) years, distributing CLIFF products for that entire time. Respondent submits that while the Complaint mischaracterizes the nature of the Parties’ relationship entirely, Complainant’s statement of facts expressly acknowledges that Respondent was at the very least a distributor for Complainant up until recently.


Respondent acknowledges that Complainant was founded in 1977, but states that Complainant is not the original “CLIFF” company and Complainant is only partly responsible for the development of the CLIFF line of products, in the development of which Respondent was extensively involved. Respondent submits that the CLIFF range of products originated with Cliffgroup, Ltd. (formerly known as Cliff Plastic Products, Ltd.), which was formed in the United Kingdom in 1964.  As Complainant states, Complainant was then established in 1977 to distribute Cliffgroup’s products throughout Europe.  Respondent states that Cliffgroup continues to hold the European trademark rights to the CLIFF name.


As the global market for CLIFF products continued to grow, Respondent was similarly established in 1992 to distribute these products in the United States.  Thus, the assertion that Respondent is “a corporation formed in 2007” is entirely false.  Respondent was both formed and incorporated in 1992. In this regard Respondent refers to a print out of the California Secretary of State’s Company Information for Cliff Electronic Components, Inc., stating the date of incorporation annexed to the Complaint. Respondent relocated to Topeka, Kansas in 2007 and registered its business there (although it is still incorporated in Benicia, California)—and not when it was formed. 


Addressing the elements of the test that Complainant must satisfy in order to succeed in this Complaint, Respondent does not deny that its registered domain name, <>, is similar to Complainant’s registered trademark CLIFF.  This similarity is entirely intentional, however, as Respondent has been selling CLIFF products in the United States for over fifteen years.


Respondent claims to have a legitimate interest in the domain name <>. Respondent has sold the CLIFF line of products, originated by Cliffgroup, in the United States since 1992.  When Respondent was formed, the intent was that Respondent would buy its products from Complainant and then sell them in the United States.  Although, in a sense, Respondent was “distributing” products obtained from Complainant, Complainant was in many instances itself obtaining these products from Cliffgroup.  This arrangement continued until 2005 when Respondent, with Complainant’s agreement, began buying some CLIFF products directly from Cliffgroup in order to maintain sales in the face of a weakening dollar. Respondent refers to an e-mail exchange of April 13, 2005 between Complainant and Respondent which it submits outlines this arrangement.


Respondent states that despite this arrangement, however, Respondent was never solely Complainant’s “distributor,” as alleged by Complainant, nor was Respondent ever under the “control” of Complainant, as also alleged.  A director of Complainant was one of several directors of Respondent from its formation in 1992 until his resignation in 2007, and he remains a minority shareholder in the company to this date.


Respondent submits that over the course of its business relationship with Complainant, Respondent was also actively involved in the development of the CLIFF line of products, assisting in their design and manufacture, and financing the defense of the patents and trademarks in the United States. Respondent has submitted copies of documents that it claims not only demonstrate Respondent’s joint involvement in the design stage and naming of the “STARJACK” product that Complainant is now attempting to prevent Respondent from selling. Respondent objects that Complainant has likewise since attempted to claim the trademark “STACKJACK” as its own.


Respondent submits that furthermore, as part of this arrangement between the Parties, Respondent paid for much of the tooling which Complainant uses to produce those same products it is now refusing to supply Respondent.  Since relations between the two companies terminated, moreover, Complainant has steadfastly refused to reimburse Respondent for this tooling. 


Respondent submits that it has therefore developed and distributed CLIFF products in the United States for over 15 years with Complainant’s active cooperation.  Respondent registered the domain name <> in 2002 as part of this understanding and has used it continually ever since.


Addressing Complainant’s accusation that Respondent is now using the domain name in dispute as the address for a website supplying “counterfeit products,” Respondent states that it continues to sell products produced by Cliffgroup—the originator of the CLIFF name—using the same designs and specifications Complainant uses to produce these same products.


Respondent denies that it is attempting to pass off its products as those manufactured by or for Complainant as alleged, but asserts that it is holding its products out as genuine CLIFF products, as produced by Cliffgroup, and in accordance with the designs and specifications jointly developed by Cliffgroup, Respondent, and Complainant.


Respondent points out that the CLIFF name existed for 13 years prior to Complainant’s formation, and claims that the patents and trademark referred to by Complainant were jointly developed by Cliffgroup, Respondent and Complainant.  The U.S. trademark and patents were assigned solely to Complainant in 1994, despite assurances to Cliffgroup and Respondent that they would be registered in the name of all three companies.  Respondent protested these actions at the time but felt it was not in anyone’s interest to pursue the correct ownership rights at the time given the close working relationship between the companies. 


Moreover, even if one were to apply Complainant’s logic that any products that do not come directly from Complainant are “counterfeit,” Complainant explicitly gave Respondent permission to use the CLIFF trademark, including on its website, “to the extent necessary for the sale of authentic CLIFF goods still in your inventory” by letter on May 30, 2008.  A copy of said letter has been submitted as an annex to the Complaint.


Although Respondent asserts that it has rights in the CLIFF name and can continue to use the domain name <> notwithstanding Complainant’s written grant of permission, it shows a certain degree of bad faith to grant that permission and then attempt to shut down Respondent’s website less than two months later.


Respondent asserts that it clearly did not acquire the domain name <> in bad faith, as even Complainant concedes that Respondent was previously able to sell CLIFF products—even those supposedly “authentic” products purchased directly from Complainant. This fact alone is enough to cause the Complaint to fail. Respondent cites the decision in Sebastian International, Inc. v. Sebastian Contracting Services, Inc., FA 1106694 (Nat. Arb. Forum Jan. 7, 2008) where the panel emphasized that the third requirement for the Complainant to prove is whether the domain name has been both registered and is being used in bad faith.


Respondent states its continued use of the website established at the <> address cannot amount to bad faith given its legitimate claims to use of the CLIFF name stemming from its significant contribution to the development and production of the CLIFF brand, and its continued relationship with Cliffgroup—the originator of the brand name.


Furthermore, for Complainant to suggest that Respondent’s website is “strikingly similar” to Complainant’s website disregards the fact that it was developed that way in conjunction with Cliffgroup and Complainant and the similarity is intentional.  Respondent has sold Cliffgroup’s products in the United States for over fifteen years and the website was designed to make that connection explicit.


Finally, Respondent argues that it is in no way attempting to trade off Complainant’s name through the use of the <> domain name.  Complainant, until recently, had little or no presence in the U.S. other than through Respondent.  Instead, Respondent has painstakingly built up its own reputation and business over a period of fifteen years, and now finds that Complainant is attempting to usurp that business by setting up a rival U.S. office through one of Respondent’s former employees—possibly using Respondent’s confidential customer database to go after Respondent’s customers directly.  In direct contrast to Complainant’s actions, however, Respondent is not attempting to drive Complainant out of business and has unsuccessfully tried for some time to resolve matters with Complainant without the need for litigation.


Respondent submits that the present case bears a number of similarities to the recently-decided SeeMore Putter Company v. RWS, FA 1213524 (Nat. Arb. Forum Jul. 29, 2008), in which the panel dismissed the Complaint based on the fact that the Respondent had previously been a distributor for the Complainant and had registered the domain name in good faith as part of this relationship. The Policy is “intended solely to address instances of ‘cyber-squatting,’” the Panel stated that it was beyond the scope of the Policy to decide such matters. Quoting from an earlier domain name dispute case, the Panel concluded: “Respondent submits that it is not the function of an ICANN Administrative Panel to resolve all issues concerning the use of intellectual property rights.  Matters beyond the narrow purview of the Policy are for the courts of appropriate jurisdictions.”


Respondent requests that the Panel make a finding of reverse domain name hijacking, which the Panel may make under Rule 15(e) where it finds that the Complaint is brought in bad faith, citing Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) Respondent states that such bad faith requires that the Respondent demonstrate “either that the complainant knew of the respondent’s unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith.” 


Respondent submits that here, Complainant not only knew that Respondent did not register the domain name <> in bad faith, but states as much in its Complaint.


Moreover, Complainant’s deliberate misrepresentation of the nature and extent of the Parties’ relationship and history—such as claiming that Respondent was formed in 2007—suggests that Complainant is well aware of the flaws in its case and is attempting to conceal them from the Panel.  See, e.g., Altru Health System v. Altruism Network, FA 1195584 (Nat. Arb. Forum July 15, 2008) (“The Panel concludes that Complainant’s actions were made in an attempt to convince the Panel to decide in Complainant’s favour in spite the fact [sic] that the case had obvious flaws.  It is this Panel’s opinion that Complainant’s behaviour constitutes an abuse of the administrative proceeding.”).


Respondent argues that Complainant cannot claim that it was unaware of Respondent’s claims that it was entitled to continue to sell CLIFF products as Respondent explicitly set out all its underlying claims by letter to Complainant on June 13, 2008, in direct response to Complainant’s letter of May 30, 2008.  Although Complainant attached its May 30 letter to the Complaint, it omitted to mention that Respondent answered that letter within two weeks. For purposes of providing a fuller record therefore, Respondent has furnished a copy of Respondent’s June 13, 2008 in an annex to the Response.


Despite Complainant’s actual knowledge of Respondent’s claim to the rightful use of the CLIFF name, or its explicit acknowledgement that Respondent’s registering of the domain <> could not possibly be in bad faith, Complainant still chose to bring this action.  To this end, Complainant made no effort to establish the merits of its intellectual property claims beforehand, but rather Complainant tried to wrest ownership of the domain name <> from its rightful owner in an apparent effort to run Respondent out of business.  As such, this is a clear case of an attempt at reverse domain name hijacking on Complainant’s part.


C. Complainant’s Additional Submissions


In timely Additional Submissions considered by the Panel, Complainant contests the statements made by Respondent in the Response.


Complainant states that as originally alleged in the Complaint, Complainant believed it controlled Respondent through commonality in the respective makeup of the corporate Boards of Directors of Complainant and Respondent.


Respondent maintains that when the domain name <> was applied for, in 2002, and up through the present time, Respondent had every intention of ignoring any and all trademark rights of it's original source for CLIFF products, namely Complainant.


Complainant submits that Respondent acted in bad faith when creating its website in October of 2002. The fact that Respondent, claims to have done so in apparent collusion with a third party, Cliff Group, formerly known as Cliff Plastics, clearly demonstrates that when registering its <> domain name, Respondent was well aware of Complainant's Intellectual Property rights, both patent and trademark, including the registered U.S. Trademark No. 1,858,355 for the mark CLIFF on which Complainant relies.


Complainant submits that the world wide trademark rights of Complainant have never been contested by Cliff Group (aka Cliff Plastics) because that third party is merely a preferred supplier of electronic components to Complainant and Complainant’s distributors world wide for the past 20 years.


Complainant submits that the email exchange relied upon by Respondent merely reinforces Complainants factual statements in the Complaint that the direct shipments of authentic CLIFF goods from Cliff Plastics to Respondent were to aid Respondent in a time of financial crisis, and did not constitute total relinquishment by Complainant of all control over the quality of these CLIFF trademarked goods.


The correspondence referred to by Respondent was exchanged between the Parties at a time when Complainant and Respondent were thought to share a close enough relationship so that the latter could speak for the former. However, subsequent facts have demonstrated that the Parties to this proceeding did not share the commonality of interest that was believed to exist in June of 2002.


Finally, the shared tooling expenses referred to in Respondent's alleged facts do not show any more than the early sharing of information and expenses between the Intellectual Property owner, Complainant and its preferred supplier Cliff Group (aka Cliff Plastics) and Respondent which, as U.S. distributor, was entrusted in 1992 with sole distribution rights in the United States for Complainant's CLIFF trademarked electronic components.


Since at least October 2002, when Respondent registered the <> domain name and established its website at that address, Respondent has intentionally attempted to attract for its own commercial gain, Internet users to it's website, by creating a likelihood of confusion with Complainant's registered trademark as to the source sponsorship affiliation or endorsement of Respondents website and domain name or products advertised for sale on that website.



Complainant is the registered owner of U.S. Federal Trademark Registration No. 1,858,355 filed on November 17, 1992 and issued by the United States Patent and Trademark Office on October 18,1994, for the word mark CLIFF, and used in commerce regulated by the U.S. in connection with the goods and/or services as early as 01/00/1982.  In an amendment to this registration, filed May 7, 2008, the goods were amended as follows: Class 006 for cable clips substantially made of metal; Class 007 for wire bending, cutting and forming machines, electric motor; and Class 009 for electric and electronic apparatus and instruments and parts thereof and scientific and measuring apparatus and instruments; namely, cabinets, casings and housings specifically designed for electrical, electronic and scientific apparatus and instruments and parts, electrical connectors, plugs, sockets, terminals and adaptors; electrical conduits and electrical cable; sleeve protectors and coilers for electrical cable; control knobs and handles for electronic, scientific apparatus and instruments; electrical loudspeakers; fuse holders and fuses; visually readable instrument control panels incorporating instruments; apparatus for testing electrical apparatus; namely, test tone generators for testing audio amplification units and electrical loud speakers. 


Complainant is the owner of the following domain names: <>; <>; <>; <>; <>; <>; <>; <>; <>; <>; <>; <>; <>; <>; <>; <>; <>; <>; <>; <>; <>; <>; <>; <>; <>; <>; <>; <>.


Complainant and Respondent had an amicable business relationship until April 2008 on which date it was terminated due to a dispute relating to the sourcing of products by Respondent.


Respondent was incorporated in 1992 and registered the domain name in dispute in October 2002.


Respondent distributed Complainant’s goods under a business relationship that was terminated by Complainant in April 2008. The exact terms and nature of the relationship is disputed by the Parties.



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


Respondent accepts that the domain name is confusingly similar to Complainant’s trademark. There is no issue between the Parties on this element of the test in ¶ 4(a) of the Policy.


In the circumstances given that the word CLIFF being the subject of Complainant’s U.S. Federal Trademark Registration Number 1,858,355 is the dominant element of the domain name in dispute, this Panel is satisfied that the Complainant has satisfied the first element of the test in ¶ 4(a) of the Policy.


Rights or Legitimate Interests


Respondent’s rights or interests in the domain name, if any, arise in the context of a contractual or business dispute between the Parties. The issues are complex, beyond the scope of the Policy and more suitable for another forum.


The Policy is not intended to resolve such complex disputes and the ownership of the domain name in dispute must be seen in the context of a wider dispute. See Everingham Bros. Bait Co. v. Contigo Visual, FA 440219 (Nat. Arb. Forum Apr. 27, 2005) (“The Panel finds that this matter is outside the scope of the Policy because it involves a business dispute between two parties.  The UDRP was implemented to address abusive cybersquatting, not contractual or legitimate business disputes.”); see also Fuze Beverage, LLC v. CGEYE, Inc., FA 844252 (Nat. Arb. Forum Jan. 8, 2007) (“The Complaint before us describes what appears to be a common-form claim of breach of contract or breach of fiduciary duty.  It is not the kind of controversy, grounded exclusively in abusive cyber-squatting, that the Policy was designed to address.”).


In any event, it is neither necessary nor appropriate therefore for this Panel to make a determination on the extent of Respondent’s rights or legitimate interest, if any, in the domain name because the Complainant has failed to prove that the domain name was registered in bad faith.


Registration and Use in Bad Faith


As Respondent has pointed out, in order to succeed in its application, Complainant is required to prove that the domain name was both registered and is being used in bad faith.


The domain name at issue was registered by Respondent in October 2002.


In the Additional Submissions Complainant alleges that Respondent had every intention of ignoring any and all trademark rights of Complainant as early as 2002 when the domain name was registered. This allegation has not been supported by any evidence and in fact Complainant has stated that Respondent was a distributor and trusted reseller of Complainant’s CLIFF products for more than ten years (1994 – 2007), but alleges that it was at some time in the year 2007 that Respondent violated that trust. It follows that at the time of registration of the domain name and for almost five years thereafter Complainant allowed the use without challenge.


Complainant bears the burden of proof and in the circumstances therefore, Complainant has failed to discharge the burden and satisfy the Panel that the domain name registered by Respondent in bad faith.


It would appear that Complainant both knew of and was happy to benefit from the use of the domain name by Respondent for a number of years. The terms on which the domain name was registered are possibly for another forum to decide.


While there are other decisions under the Policy that are of assistance to this Panel such as Urbani Tartufi s.n.c. v. Urbani U.S.A., D2003-0090 (WIPO Apr. 7, 2003) (finding that the disputed domain name was not registered in bad faith where the original registration occurred in the context of a healthy distributor relationship between the parties which was subsequently revoked by the complainant), the present case turns very much on its own facts. Respondent was aware of Complainant’s rights in the registered trademark when it registered the domain name but on the other hand Complainant appears to have accepted Respondent’s registration and use of the domain name and apparently, it was only after the relationship broke down that the issue of Respondent’s use of the domain name became contentious.


In the circumstances Complainant has failed to satisfy the third element of the test in ¶ 4(a) of the Policy and the Complaint must fail.


Reverse Domain Name Hijacking


Respondent has alleged reverse domain name hijacking by Complainant.


“Reverse Domain Name Hijacking” is defined in the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”


Rule 15(e) provides inter alia: If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.


This dispute has arisen at the end of a long and complex relationship between the Parties. Given the limitations of the procedures under the Policy, Respondent has not established an unassailable right or legitimate interest in the disputed domain name nor has it been established that Complainant took these proceedings in the belief that there was a clear lack of bad faith registration and use of the domain name by Respondent. In fact it seems clear that Complainant’s case is based on its honest belief that Respondent’s continued ownership and use of the domain name in dispute infringes Complainant’s statutory rights as registered owner of its U.S. trademark CLIFF.


This Panel therefore denies Respondent’s request for a finding of Reverse Domain Name Hijacking by Complainant.





Complainant, having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.




James Bridgeman, Panelist
Dated: September 1, 2008





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