Claim Number: FA0806001212866
PARTIES
Complainant is CLIFF Electronic Components Ltd. (“Complainant”), represented by John
C. Hilton, of McCormick Paulding & Huber LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cliffusa.com>, registered with Totalregistrations.
PANEL
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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on
On
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 postmaster@cliffusa.com by e-mail.
On
A timely Response was received and determined to be complete on
Complainant filed an Additional Submission on
On
RELIEFS SOUGHT
Complainant requests that the domain name <cliffusa.com> 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.
PARTIES’ CONTENTIONS
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,
Complainant submits that the domain name <cliffusa.com> 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 <cliffuk.co.uk>. 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
Complainant submits that while Respondent has been commonly known by
the domain name <cliffusa.com>,
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 <cliffusa.com> domain name address.
Complainant has furnished print-outs of pages from the website established by
Respondent at the <cliffusa.com>
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
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 “
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
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 <cliffusa.com> 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 <cliffusa.com> 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
Complainant submits that as the sole authorized source for
Complainant submits that Respondent’s website and the trade dress
adopted by Respondent on its website established at the <cliffusa.com> 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
Respondent acknowledges that
Complainant was founded in 1977, but states that Complainant is not the
original “
As the global market for
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, <cliffusa.com>, is similar to Complainant’s registered trademark
Respondent claims to have a
legitimate interest in the domain name <cliffusa.com>.
Respondent has sold the
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
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
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
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
Respondent points out that the
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
Although Respondent asserts that it
has rights in the
Respondent asserts that it clearly did not acquire the domain name <cliffusa.com> 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 <cliffusa.com> 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
Finally, Respondent argues that it
is in no way attempting to trade off Complainant’s name through the use of the
<cliffusa.com> domain
name. Complainant, until recently, had
little or no presence in the
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
Respondent submits that here, Complainant not only knew that Respondent did not register the domain name <cliffusa.com> 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
Despite Complainant’s actual
knowledge of Respondent’s claim to the rightful use of the
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 <cliffusa.com>
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
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 <cliffusa.com>
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 <cliffusa.com>
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.
FINDINGS
Complainant is the registered owner of U.S. Federal Trademark
Registration No. 1,858,355 filed on
Complainant is the owner of the following domain names:
<cliffuk.co.uk>; <cliffchinagroup.com>; <cliffuk.co.uk>;
<cliffchina.com>; <cliffasia.com>;
<cliffelectroniccomponents.co.uk>; <cliffelectroniccomponents.com>;
<cliffelectronics.co.uk>; <cliffelectronics.com>;
<cliffenterprise.co.uk>; <cliffenterprise.com>;
<cliffinc.com>; <cliffinternational.co.uk>;
<cliffinternational.com>; <clifftaiwan.com>; <cliffuk.net>;
<cliffus.com>; <cliffusagroup.com>; <cliffukgroup.com>;
<cliffworldwide.co.uk>; <cliffworldwide.com>;
<cliffww.co.uk>; <cliffww.com>; <cliffwww.co.uk>; <cliffwww.com>;
<stackjack.co.uk>; <stakjack.co.uk>; <stakjack.com>.
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.
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.
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
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.
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
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
This Panel therefore denies Respondent’s
request for a finding of Reverse Domain Name Hijacking by Complainant.
DECISION
Complainant, having failed to establish all three elements required
under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Dated:
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