CommScope, Inc. of
Claim Number: FA0905001260847
PARTIES
Complainant is CommScope, Inc. of North Carolina (“Complainant”), represented by J. Mark Wilson, of Moore & Van Allen
PLLC,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <comscope.com>,
registered with Key-Systems Gmbh.
PANEL
The undersigned certifies that he has acted independently and
impartially and to the best of his knowledge has no known conflict in serving
as Panelist in this proceeding.
Dr. Reinhard Schanda as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 4, 2009; the National Arbitration Forum received a hard copy of the Complaint on May 5, 2009. The Complaint was submitted in both German and English.
On May 11, 2009, Key-Systems Gmbh confirmed by e-mail to the National
Arbitration Forum that the <comscope.com>
domain name is registered with Key-Systems Gmbh and that the Respondent is the
current registrant of the name.
Key-Systems Gmbh has verified that Respondent is bound by the
Key-Systems Gmbh 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 May 18, 2009, a German language Notification of Complaint and
Commencement of Administrative Proceeding (the “Commencement Notification”),
setting a deadline of June 8, 2009 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@comscope.com by e-mail.
A timely Response was received and determined to be complete on June 8,
2009.
On June 18, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Dr. Reinhard Schanda as Panelist.
The Panel, being mindful of UDRP Rule 11, finds that both parties have
provided submissions in English and appear to be in mutual agreement to proceed
in English. The Panel therefore determines to continue with this case in
English and provide an English-language decision.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends it is a corporation duly organized and existing
under the laws of the State of
Complainant has used the COMMSCOPE® mark in commerce in connection with
the marketing and sale of cable and cable-related products since at least as
early as 1969. Complainant is a world leader in infrastructure solutions for
communication networks, including communications cables and cable connectors,
and in the design and manufacture of high-performance, high –bandwidth cables
for telecommunications applications. It is listed and traded on the New York
Stock Exchange under the symbol CTV. Through its carious products and services,
Complainant is a global provider of radio frequency subsystem solutions for
wireless networks and network infrastructure solutions for business enterprise
applications, delivering complete end-to-end physical layer solutions,
including cables and connectivity, enclosures, intelligent software and network
design services. Complainant also is the premier manufacturer of coaxial cable
for broadband cable television networks and one of the leading North American
providers of environmentally secure cabinets for DSL and FTTN applications. In
2008, Complainant shipped more than 5 billion feet of coaxial, unshielded
twisted pair and fiber optic cable to customers around the globe. Backed by
strong research and development, Complainant combines technical expertise and
proprietary technology with global manufacturing capability to provide
customers with infrastructure solutions for evolving global communications
networks around the world. In the year 2008, Complainant had sales of
approximately $4 billion
Furthermore, Complainant registered the domain name <commscope.com> on February 10,
1994 and began operating a website promoting its business at that domain name
shortly thereafter. The website located at <commscope.com> is an
important part of Complainant’s marketing program and is used to promote
Complainant’s business and its wide variety of cable and cable-related
products. Additionally, Complainant’s employees conduct business on a daily
basis using e-mail to communicate with customers and prospective customers.
Complainant provides e-mail addresses to over half of its 15,000 employees that
resemble the following non-specific example: employeename@commscope.com E-mail
communications are directed thorough Complainant’s mail gateway located in
Newton, North Carolina and Chicago, Illinois, and are routed to employees
through various mail servers.
The COMMSCOPE® mark is also the subject of numerous federal
registrations, including US Trademark Registration No. 1,865,198 for the
COMMSCOPE® mark, which registration issued on November 29, 1994, ad recites
“communications cable and cable connectors” (Int. Class 9), U.S. Trademark
Registration No. 898,651 for the COMM/SCOPE® mark, which registration issued on
September 15, 1970, and recites “communication cable and cable connectors”
(Int. Class9), U.S. Trademark Registration No. 2,678,856 for the COMMSCOPE
WIRELESS® mark, which registration issued on January 21, 2003, and recites
“communications cables, namely, coaxial, fiber optic, and twisted pair cables
and hybrids thereof; and cable connectors” (Int. Class 9), U.S. Trademark
Registration No. 3,418,814 for the COMMSCOPE SOLUTIONS® mark, which
registration issued on April 29, 2008 and recites “communications cable,
namely, coaxial cable, twisted pair cable, fiber optic cable, and hybrids
thereof, and cable connectors therefore; fiber optic wire, cords and cables;
wire patch cords; fiber optic interconnection cables; telecommunications
adaptors; telecommunications connectors, plugs, jacks and connecting blocks;
telecommunications devices that repeat, reshape, or reformat signals from data
terminals and controllers; telecommunications brackets, clips and clamps to
house and support cable and telecommunications equipment all distributed as a
unit and; electrical wire for use in the telecommunications industry” (Int. Class9),
U.S. Trademark Registration No. 3,124,082 for the COMMSCOPE BIMETALS® mark,
which registration issued on August 1, 2006, and recites “communications
cables, namely coaxial cables, twisted pair cables, hybrids and components
thereof; and cable connectors therefore” (Int. Class 9), and U.S. Trademark
Registration No. 3,299,977 for the CONNECTED BY COMMSCOPE!® mark, which
registration issued on September 25, 2007 and recites “communications cables,
namely, fiber optic, twisted pair and coaxial cables, and hybrids thereof, and
connectors therefore” (Int. Class 9).
U.S. Trademark Registration No. 1,865,198 and 2,678,856 have been
accorded incontestable status by the U.S. Patent and Trademark Office. In addition,
CommScope also owns registrations for the COMMSCOPE® mark in all major
jurisdictions of the world including Argentina, Australia, Brazil, Bulgaria,
Canada, Chile, China, Colombia, European Community, Hong Kong, Hungary, India,
Indonesia, Japan, Kazakstan, Malaysia, Mexico, Norway, Pakistan, Paraguay,
Philippines, Republic of Korea, Romania, Russian Federation, Saudi Arabia,
Singapore, Slovakia, South Africa, Switzerland, Taiwan, Thailand, Turkey,
United Arab Emirates, Uruguay and Venezuela.
Complainant is an international corporation. Complainant has
manufacturing facilities located on five continents and ships to customers in
over 130 countries. Complainant’s cable and cable-related products have been
and are being advertised and promoted extensively under the COMMSCOPE® mark
worldwide in various forms of media. In advertising and promoting its goods to
the public under its proprietary mark and trade name COMMCOPE®, Complainant
spent $15.4 million in 2008 alone on advertising expenses. In addition,
Complainant has registered more than fifty (50) COMMSCOPE-formative domain
names. By reason of the adoption, marketing, and longstanding continuous use of
Complainant’s COMMSCOPE® mark, that designation has a distinctive quality and
has acquired special and particular significance and very valuable goodwill as
identifying Complainant and its business and products, so that when members of
the public n the United States and elsewhere see or hear such mark and trade
name, they automatically think of Complainant. Consequently, through such usage
and recognition, Complainant has acquire (in addition to its statutory rights)
common-law rights in the COMMSCOPE® mark as a proprietary trade name and
trademark, which rights extend, without limitation, to the exclusive right to
use the COMMSCOPE® mark in the United States and numerous other countries, and
the rights to prevent others from using any marks, domain names, or other
designations that are confusingly similar thereto.
According to Complainant Respondent is the owner of the domain name <comscope.com>. Respondent has
identified himself to the registrar, Key-Systems GmbH, as “Herbert Kuehleitner”
and has provided as mailing address of “Wagnermühle 55, Mondsee (St. Lorenz)
5310, AT,” a telephone number of “0041339710020,” a fax number of
“0041339710025,” and an email address of herbert@kuehleitner.com. Respondent is
using the domain name in bad faith for commercial gain to divert or redirect
Internet users to a parked web page that features, among other things,
unaffiliated, third-party links promoting the sales and marketing of
confusingly similar and competing communications cable and cable connectors.
Moreover, Respondent has engaged in such acts with full knowledge of
Complainant, its business, and its rights in the COMMSCOPE® mark.
In 2002, Complainant instituted a UDRP proceeding against Respondent
EHK AG a/k/a Chris Zumbrunn for the domain names <comscope.com>, <commscope.info>
and <comscope.info>. See CommScope, Inc. of
Complainant owns valid and enforceable rights in the COMMSCOPE® mark in
the
The accused domain name is strikingly similar to Complainant’s
registered COMMSCOPE® mark. Specifically, the accused domain name is identical
to Complainant’s mark except that the subject domain name excludes one letter
“m.” It is well established that the minor difference of a subtracted letter
does not create a distinct mark. Indeed, in a prior proceeding involving the
same Complainant and accused domain name, the Panel found the <comscope.com> domain name to be identical or confusingly similar to Complainant’s
COMMSCOPE® mark.
Furthermore Respondent cannot assert rights or legitimate interests in
the subject domain name based upon any of the circumstances identified in ICANN
Policy ¶ 4(c). Complainant has not authorized Respondent to use the COMMSCOPE®
mark. Respondent registered and began using the domain name long after
Complainant’s COMMSCOPE® mark acquired its extensive notoriety. Moreover, since
the prior UDRP proceeding involving this same domain name, the circumstances
have changes such that the domain name now resolves to a parked webpage
featuring competing goods and services of Complainant. Consequently, Respondent
has no rights in any designations relating to the subject domain name as a
trademark, service mark or trade name or any other legitimate interests in the
domain name.
Regarding ICANN Policy ¶ 4(c)(ii), Respondent
is not commonly known by the comscope.com domain name. The WHOIS database
information for the accused domain name indicates that the registrant is known
as “Herbert Kuehleitner” and is not known by the second-level domain that is
confusingly similar to Complainant’s COMMSCOPE® mark.
Respondent’s prior history also evidences his lack of rights or
legitimate interests in the domain name. Prior to the earlier UDRP proceeding,
Respondent Kuehleitner “contacted various employees of Complainant via e-mail
over forty times offering to sell” the <comscope.com>
domain name, among others. Respondent Kuehleitner’s offers to Complainant
ranged from $100,000 (USD) to $2,000,000 (USD) which grossly exceeded
Respondent’s out-of-pocket expenses for registering the domain name.
Respondent’s previous attempts to sell the domain name is confusingly similar,
for a profit, is sufficient to demonstrate that he has no legitimate interest
in it.
Indeed, Respondent currently advertises that the <comscope.com> domain name is for sale. First, the web site
located at the <comscope.com> domain
name has a header stating the “This website is for sale!”.
The web site also contains a section called “Buy this domain” which says that
the <comscope.com> domain name
may be for sale by its owner. When visitors to the <comscope.com> domain name click to learn “more details”
about the offer for sale, they are taken to a website hosted at the <sedo.com> domain name that
includes an “offer description,” which states that “[m]any companies in the
field of cable, IT, TV and others see a possible identification with this
name and their company.” Respondent’s offer to sell the domain, and especially,
advertising the domain name as a cable or TV-related domain name when
Respondent allegedly uses the comscope.com domain name in the field of
“computer-assisted analysis of hair marketed to the coiffure and hair salon
trade” exhibits his lack of rights or legitimate interests in the domain name. Respondent’s “apparent willingness to dispose of [his]
rights in the [subject] domain name suggests that [he] lacks rights or
legitimate interests in the domain name.
Further, in the prior UDRP proceeding involving the comscope.com domain
name, the Panel found that Complainant had not met its burden of persuasion
with regard to this factor because Respondent EHK AG alleged to be using the
domain name as part of a supposed business involving computer-assisted analysis
of hair. The Panel was not persuaded that Respondent EHK AG was aware of
Complainant’s use of the mark at the time it offered its computer-assisted hair
analysis goods and services to the coiffure and hair salon trade. However,
since that decision, Respondent Kuehleitner has now registered the comscope.com
domain name in his own name and has resolved the comscope.com domain name to a
parked web page that provides further evidence that Respondent lacks rights or
legitimate interests in the domain name. Specifically, Respondent’s domain name
diverts or redirects Internet users to a parked web page that features, among
other things, unaffiliated, third-party links displaying and promoting
confusingly similar and competing communications cable and cable connectors.
For example, the parked web page advertises that it is the “gateway to sites on
the Internet for cable!” and contains links advertising “Cable Manufacturer,”
etc., which links are directly competitive and/or confusing to Complainant’s
products and services offered in connection with its COMMSCOPE® mark.
Any preexisting rights or legitimate interests Respondent might have
had have now been abandoned in favor of Respondent’s further attempts to
disrupt Complainant’s business and/or unfairly profit from his registration and
use of the <comscope.com> domain
name. It is well settled that “Respondent’s use of domain names that are
confusingly similar to Complainant’s mark to divert Internet users to
Third-party websites for Respondent’s own commercial gain does not constitute a
bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or
a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”
Because Respondent has no present rights in the domain name, Respondent
is not commonly known by the domain name, and Respondent is using the domain
name for improper purposes, Respondent has no rights or legitimate interests in
the subject domain names.
According to Complainant there is strong evidence suggesting that
Respondent had actual knowledge of Complainant’s COMMSCOPE® mark, especially as
related to communications cable and cable connectors, when Respondent became
the registrant of the <comscope.com>
domain name. In the prior UDRP proceeding involving the <comscope.com> domain name,
Respondent EHK AG a/k/a Chris Zumbrunn argued for rights and/or legitimate
interests in the <comscope.com> domain
name based on the fact that the website to which this domain name previously
resolved promoted products and services allegedly related to computer-assisted
analysis of hair marketed to the coiffure and hair salon trade. It was also
shown that Respondent Kuehleitner was associated with Respondent EHK AG a/k/a
Chris Zumbrunn since Respondent Kuehleitner was corresponding with Complainant
regarding exorbitant offers to sell the domain name. At some point after the
resolution of the prior UDRP proceeding, Respondent Kuehleitner became the
registrant of the <comscope.com> domain
name and thus, registered the domain name in bad faith at that time. At that
time, respondent Kuehleitner was aware and had actual knowledge of Complainant
and its COMMSCOPE® mark. Additionally, in the time between the prior UDRP
proceeding and the present, the websites to which the <comscope.com> domain name resolved changed from a website
allegedly affiliated with a computer-assisted hair analysis business to a
parked web page featuring competing goods and services of Complainant. There
can be no reasonable dispute that, at the time of these changes, Respondent was
well-aware of Complainant, its business, and its trademark rights. Under these
circumstances, Respondent’s activities in respect of the <comscope.com> domain name evidence bad faith pursuant to
ICANN Policy ¶ 4(a)(iii).
The <comscope.com> domain
name has been and continues to be the subject of offers for sale. Respondent
Kuehleitner previously “contacted carious employees of Complainant via e-mail
over forty times offering to sell” the <comscope.com>
domain name, among others. Respondent Kuehleitner’s previous offers to
Complainant ranged from $100,000 (USD) to $2,000,000 (USD) which grossly
exceeds any out-of-pocket expenses for registering the domain name. It is well
established that registering a trademark as a domain name and then offering to
sell the domain name to the rightful trademark owner for valuable consideration
in excess of documented out-of-pocket costs constitutes evidence that he domain
name was registered and is being used in bad faith.
Likewise, the <comscope.com>
domain name currently makes no mention of any alleged products and services
related to computer-assisted analysis of hair marketed to the coiffure and hair
salon trade, but rather, is marketing itself for sale to potential buyers for
cable and TC-related use. First, the web site located at the <comscope.com> domain name has a
header stating that “This website is for sale!”.
Moreover, Respondent’s commercial use of the <comscope.com> domain name to attract those seeking
Complainant’s website and services is further evidence of bad faith.
Respondent’s domain name diverts or redirects Internet users to a parked web
page that features, among other things, unaffiliated, third-party links
displaying and promoting confusingly similar and competing communications cable
and cable connectors. For example, the parked web page advertises that it is the
“gateway to sites on the Internet for cable!” and contains links advertising
“Cable Products,” “Cable Companies,” “Coaxial Cable,” “Low Cost CAT5E Bulk
Cable,” “Wire & Cable Manufacturer,” etc., which links are directly
competitive to Complainant’s products and services offered in connection with
its COMMSCOPE® mark. Since Respondent and/or those in privity with Respondent
presumably receive commercial benefits, monetary (i.e. in the form of
“click-through fees”) or otherwise, when Internet users access these links and
are diverted to third-party websites that sell goods and services that compete
with Complainant’s cable and cable related products and services, Respondent
registered and is using the domain in bad faith.
Consequently,
Respondent registered and is using the subject domain name for commercial gain
to intentionally attract Internet users to Respondent’s website by creating a
likelihood of confusion as to the source, sponsorship, affiliation or
endorsement of its website, which is evidence of bad faith under ICANN Policy §
4(b)(iv).
Based on the evidence of Respondent’s bad-faith registration and
commercial use of the <comscope.com>
domain name to divert Complainant’s consumers to websites offering
competing communications cable and cable connectors, Respondent’s intent to
profit from the sale of the domain name and Respondent’s actual and
constructive knowledge of Complainant’s rights in the well-known COMMSCOPE®
mark, Complainant submits that is has also satisfied the requirement for
showing that Respondent registered and used the subject domain name in bad
faith.
B. Respondent
Respondent contends that Complainant seems to be the owner of the
combined word-trademark COMM/SCOPE and the word trademark COMMSCOPE, registered
for the goods for communication cables, cable connectors, co-axial cables and
fiber of cables. As the Complainant alleges himself, he is using his trademark
with the marketing and sale of cable and cable related products.
Respondent registered his domain name <comscope.com> in 1998 and has used it for his company
activities in connection with retailing the COMSCOPE computer-aided hair
analysis system. Respondent is selling this product (hard and software)
exclusively to coiffeur and beauty salons.
COM is a generally known shortcut for COMPUTER and COMM for
COMMUNICATION. SCOPE is part of the word MICOSCOPE and means a compass or a
special range or zone. The trademark research report obtained by Respondent
before filing for trademark protection for the mark COMSCOPE in
Both for the Complainant’s business, the communication cables, and the
Respondent’s business, computers, software and optical equipment for analysis,
the expression COMMSCOPE resp. COMSCOPE is descriptive and for that a very weak
mark. Under this condition, the Complainant has to put up with others using
similar marks, especially in combination with other services and goods.
Trademarks and domain names are not just used alone, but in connection
with goods and/or services. Complainant and Respondent are using their marks
and domain names in connection with very different goods and services. The
Complainant’s trademarks and the Respondent’s domain name are focusing
attention to very different markets and audiences.
To the extent that there is a risk of confusion between COMMSCOPE and
COMSCOPE, the risk is inherent in weak combined word marks of this kind and is
technical, not legal. To avoid that kind of technical problem the Complainant
could have, as he registered the domain name <commscope.com> in 1994,
also registered the domain name <comscope.com>.
As Respondent registered his domain name in 1998, it would have been free for
registration by Complainant in 1994 and the following four years.
Due to repeated interest of various parties for buying the domain name
comscope.com, Respondent’s business focused more on serving local market’s
through the domains <comscope.ch>, <comscope.de> and <comscope.eu>,
and Respondent placed the domain comscope.com on the Sedo domain market place
in order to gauge existing interest for it. As part of this service provided by
Sedo, the domain was associated with automatic keyword advertisement based on
Google search ranking. The confusion of the matched search terms happened due
to purely technical circumstances as a result of the business practices of
Sedo, Google and their advertisers. Respondent in no way influenced the
advertisements that Sedo displayed on that page and in no way intended to
infringe on Complainant’s trademarks. See Sedo’s confirmation of these
circumstances in the Annex.
Meanwhile, an agreement has been reached between the Respondent and his
business partner COMHAIR GmbH Deutschland, which requires that the domain <comscope.com> is used to provide
the COMSCOPE product information provided by the partner COMHAIR GmbH
Deutschland. The domain will no longer be offered in the Sedo domain
marketplace, which eliminates the problem of the above mentioned technical confusion.
This agreement with COMHAIR GmbH Deutschland is analog to a
pre-existing agreement for the domain name <comhair.com>, which is also
owned by Respondent and has been pointing to that same website for several
years.
It seems that the Complainant is, for already the second time, misusing
the UDRP arbitration instead of going into trademark litigation. Additionally,
the Complainant is bringing the same domain dispute before the arbitration
panel for a second time, in disregard of the outcome of the UDRP Arbitration
proceedings in 2002.
Already in 1993 the Respondent participated in the Euro Congress of
Coiffure in
These facts show also that COMSCOPE is one product of a series all
beginning with the shortcut COM. That means, the name COMSCOPE the Respondent
is using has nothing to do with the Complaint’s trademark, and instead is a
fantasy name consisting of a word combination relating to the kind of products
and services.
The fact that Respondent is interested in selling the domain name <comscope.com> does not in no way
mean that Respondent has a reduced in respect to the domain name. To the
contrary, the fact that Respondent has so far not sold the domain comscope.com
despite ongoing interest and offers from various parties,
shows that the Respondent is not willing to sell the domain name without
realizing a price that would adequately compensates Respondent for not being
able to use the domain for his own legitimate interests in the future.
Respondent’s offering of the domain in the Sedo domain marketplace is to be
seen in this context, and the automatic placement of advertisement by Sedo was
coincidental and can not be construed to be an intent
to mislead Complainant’s customers or tarnish a trademark.
As has been shown, the Respondent used the name corresponding to his
domain name <comscope.com> in
connection with a bona fide offering of goods and services long before any
notice to the dispute. Furthermore, the Respondent’s COMSCOPE, COMHAIR and
COMCASH product family has been commonly known in the coiffure industry already
before the domain name was registered n 1998, and the Respondent cannot be
accused of having an intent to mislead diverted
consumers or tarnish the trademark or service mark in issue.
Furthermore Respondent already registered the domain name <comscope.com> in 1998.
Respondent already established use of the name COMSCOPE in the coiffure
industry at that time and started using the domain comscope.com in that
context. Respondent had no intent of selling the domain to anybody else and had
no knowledge of the existence of Complainant. In this context it is also to
remark that Complainant is absolutely unknown in
At the beginning of 2000, it was CommScope Inc. that first contacted
Respondent, and not the other way around. Mr Gabbard, as employee of
Complainant, sent e-mails to Respondent, suggesting that Complainant would be
interested in obtaining the domain <comscope.com>.
Although Respondent had no particular interest in selling the domain name,
after Mr Gabbard’s second request, Respondent legitimately replied with an
intentionally high asking price and later followed up several times attempting
to get either a counter offer from Complainant or information to the fact that
Complainant was no longer interested in obtaining the domain name. On March 29,
2001, more than one year after Complainant’s first enquiry, Respondent received
a request of Mr. Michel mandoux, Territorial Manager of Complainant in Europe
in
The Complainant alleges that Respondent in recent years, since the
previous UDRP Arbitration regarding this same domain dispute, has somehow sold
the domain to himself, and that this transfer constitutes a registration in bad
faith. Even if Respondent would have registered or bought the domain from someone
else after the previous UDRP Arbitration, that registration or purchase would
have been in good faith, since Respondent would have been intending to use for
the same purpose in connection with Respondent’s COMSCOPE products and
services. However, in fact no such transfer ever took place and the domain is
still owned by the same Respondent that originally registered in 1998.
From the original registration of the domain in 1998 continuing to this
day, Respondent used the services of Chris Zumbrunn as service provider for the
registration and technical handling of Respondent’s domain. It was in that
context that Chris Zumbrunn was listed as the contact person on behalf of
Respondent’s business. The organization name associated with the domain already
at that time reflected the name of Respondent’s business. Under Swiss law and
its current legal form, there is no difference between EHK Kühleitner and
Respondent, as they are the same legal entity. As Respondent is an Austrian
citizen and also has a residence in
The Respondent has registered the domain name for his own legitimate
interest outside the scope of Complainants trademarks, has used it extensively
for that purpose over a period of many years, has removed the domain from the
Sedo domain marketplace in order to stop the possibility that advertisements
may be displayed that Complainant may deem problematic, and will continue to
use the domain in connection with the COMSCOPE products and services offered by
Respondent and his partners.
As shown above, the third party advertisements displayed during the
time the domain was offered in the Sedo domain marketplace were not intended by
Respondent and were not under the direct control of Respondent and as such can
not be construe as a use of the domain name in bad faith.
As has been shown, there are no circumstances indicating that
Respondent has registered or has acquired the domain name primarily for the
purpose of selling, renting or otherwise transferring the domain name
registration to the Complainant or to a competitor of the Complainant.
As has been shown, the Respondent has also not registered the domain
name in order to prevent Complainant from reflecting his trademarks in a
corresponding domain name.
As shown by the presented circumstances, Respondent has also not
registered the domain name primarily for the purpose of disrupting the business
of a competitor.
As shown by the presented circumstances, Respondent has also not
intentionally attempted to attract, for commercial gain, Internet users to
Respondent’s website or other online location, by creating a likelihood of
confusion with the Complainant’s marks as to the source, sponsorship,
affiliation, or endorsement of Respondent’s website or location or of a product
or service on Respondent’s website or location.
FINDINGS
AND
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.”
Preliminary Issue: Res Judicata
Complainant previously submitted a complaint regarding the <comscope.com> domain name, though the complaint was denied by the panel in that case on the grounds that Complainant failed to prove that Respondent lacked rights and legitimate interests in the disputed domain name. See CommScope, Inc. of N.C. v. EHK AG a/k/a Chris Zumbrunn, FA 109052 (Nat. Arb. Forum May 28, 2002).
Typically, complaints may not be
resubmitted for relief subsequent to their denial due to res judicata principles unless the complainant meets its high
burden of demonstrating the need for such additional review. See,
e.g., Creo Prods. Inc. v. Website in Dev., D2000-1490 (WIPO Jan. 19,
2001) (finding that the burden of establishing that a second complaint should
be entertained is “high”). Several
criteria have been set forth for determining whether a complaint may be
refiled. See
Grove Broad. Co. Ltd. v. Telesystems Commc’ns Ltd.,
D2000-0703 (WIPO Nov. 10, 2000) (noting, and subsequently applying to the UDRP,
the four common-law grounds for the rehearing or reconsideration of a
previously filed decision as (1) serious misconduct on the part of a judge,
juror, witness or lawyer; (2) perjured evidence having been offered to the
court; (3) the discovery of credible and material evidence which could not have
been reasonably foreseen or known at trial; or (4) a breach of natural justice).
Complainant
provides evidence that Respondent’s WHOIS information has changed since the
previous UDRP decision, which could mean that Respondent is a different
party. However, Complainant admits that
“Herbert Kuehleitner,” the current registrant, made offers to Complainant to
sell the disputed domain name before the previous UDRP case was initiated in
2002. In addition, Respondent argues
that the change in WHOIS information was merely a change in employees in charge
of the disputed domain name and therefore the Respondent is still the same
party.
The Panel finds that the Complaint is barred by the decrement of res judicata. See Koninklijke Philips Elecs. N.V.
v. Relson Ltd., DWS2002-0001 (WIPO June 14, 2002) (determining that it
“should follow the consensus view that has emerged” with regard to refiled
complaints and holding such refiling impermissible unless the subsequent
proceeding would be appropriate under the Grove Broadcasting standards).
DECISION
Having found that Complainant’s re-filing is precluded on the basis of res judicata, the Panel concludes that
this re-filing be dismissed and therefore relief shall be DENIED.
Accordingly, it is Ordered that the <comscope.com>
domain name be RETAINED by Respondent.
Dr. Reinhard Schanda, Panelist
Dated: June 29, 2009
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