Cytec Industries Inc. v. Aybit GmbH / A. Bron
Claim Number: FA1212001473883
Complainant is Cytec Industries Inc. (“Complainant”), represented by Danielle I. Mattessich of Merchant & Gould P.C., Minnesota, USA. Respondent is Aybit GmbH / A. Bron (“Respondent”), Switzerland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <conap.com>, registered with INTERNET.BS CORP.
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.
Michael A. Albert as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 30, 2012; the National Arbitration Forum received payment on December 3, 2012.
On December 10, 2012, INTERNET.BS CORP. confirmed by e-mail to the National Arbitration Forum that the <conap.com> domain name is registered with INTERNET.BS CORP. and that Respondent is the current registrant of the domain name. INTERNET.BS CORP. has verified that Respondent is bound by the INTERNET.BS CORP. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 11, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 31, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@conap.com. Also on December 11, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on December 31, 2012.
A timely Additional Submission was received from Complainant on January 2, 2013 and determined to be complete pursuant to Forum Supplemental Rule 7.
On January 9, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Michael A. Albert as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights, that Respondent has no rights or legitimate interests in the Disputed Domain Name, and that Respondent registered and is using the Disputed Domain Name in bad faith.
Complainant is Cytec Industries Inc. a United States based producer of a chemicals and materials for potting, casting, and molding operations. Complainant contends that since 1964 it and its predecessors-in-interest have used the CONAP trademark in connection with its products. Complainant claims that through extensive use and promotion of its products under the CONAP trademark, consumers worldwide are aware of the CONAP trademark. Complainant also claims it has several United States trademark registrations for CONAP that were filed before 1986.
Complainant through its predecessor-in-interest registered the Disputed Domain Name on September 23, 1996 and continuously used it in connection with the CONAP products. Complainant contends that the ownership of the Disputed Domain Name inadvertently lapsed on October 26, 2009. Respondent then registered the Disputed Domain Name on November 2, 2009.
Complainant argues that the Disputed Domain Name is confusingly similar to its CONAP trademark because it incorporates Complainant’s entire trademark with the addition of a top-level domain <.com>. Complainant contends that the top-level domain does not change the overall impression and that the Disputed Domain Name is confusingly similar to its trademark because the Disputed Domain Name and CONAP trademark are identical.
Complainant argues that Respondent has no rights or legitimate interests in the Disputed Domain Name. Complainant offers evidence that the Disputed Domain Name does not provide a bona fide offering of goods or services but merely offers sponsored links to Complainant’s competitors. Complainant contends it has not authorized Respondent to use its trademark in the Disputed Domain Name and that Respondent is not commonly known by the Disputed Domain Name.
Complainant accuses Respondent of registering the Disputed Domain Name to prevent Complainant from using the domain name associated with its United States trademarks. Complainant contends that Respondent had constructive knowledge of Complainant’s trademarks because the CONAP trademarks are registered. Complainant also offers evidence that the Disputed Domain Name resolves to a parking page displaying sponsored links for products competing with Complainant’s CONAP-branded products. Furthermore, Complainant argues that the sponsored links offer CONAP-branded products but resolve to the websites of Complainant’s competitors. Complainant concludes that Respondent registered and is using the Disputed Domain Name in bad faith to trade on Complainant’s goodwill associated with the CONAP trademarks by confusing and misleading Internet users to revenue generating advertisements.
B. Respondent
Respondent contends that Complainant’s trademark registrations are irrelevant, that Respondent has rights and legitimate interests in the Disputed Domain Name, and that Respondent did not register and has not used the Disputed Domain Name in bad faith.
Respondent is Aybit LLC a Switzerland based smartphone application developer. Respondent contends that it operates in an industry distinct from Complainant and as such is entitled to use the Disputed Domain Name regardless of Complainant’s registered trademarks. Respondent argues that Complainant’s trademarks are irrelevant because Complainant and Respondent operate in different industries.
Respondent claims legitimate interests in the Disputed Domain Name as CONAP is a contraction of Connection Application – the product Respondent is developing. Respondent points out the uses of CONAP at different top-level domains by various organizations to buttress its argument that Respondent can use the Disputed Domain Name without confusing Internet users as to sponsorship or affiliation with Complainant.
Respondent argues that Complainant intentionally abandoned the Disputed Domain Name and even when owned by Complainant the Disputed Domain Name linked to Respondent’s main webpage <www.cytec.com>. Respondent contends it innocently purchased the Disputed Domain Name at auction for a significant sum and made sure the Disputed Domain Name would not conflict with any trademarks in Respondent’s industry. Also, Respondent points out that Complainant waited almost three years to raise its claim. Respondent argues that the delay demonstrates Respondent abandoned the Disputed Domain Name as opposed to inadvertently losing it.
Respondent contends that the Disputed Domain Name is not used as a parking page. Respondent accuses Complainant of attempting to manipulate the Panel by providing only part of the facts. Respondent acknowledges that for approximately two months, October and November of 2012, the Disputed Domain Name temporarily resolved to a parking page but that at all other times the Disputed Domain Name informed Internet users about Respondent and its operations. Respondent argues that this period is not dispositive given the almost non-existent traffic to the Disputed Domain Name. Finally, Respondent contends that the sponsored links offering competing products appeared only when Respondent visited because the nature of the ads are influenced by the visitor.
C. Additional Submissions
Complainant, through an additional submission, rejected Respondent’s argument that Complainant’s trademark registrations are irrelevant claiming the trademark registrations give Complainant rights. Complainant argued that because Respondent alleges it is developing a product called CONAP it does not offer any bona fide goods or services. Complainant reiterated that a parking page offering competing products demonstrates bad faith. Complainant submitted additional evidence demonstrating the Disputed Domain Name displayed sponsored links to Complainant’s competitors on November 20, 2009; June 7, 2010; October 16, 2012; and November 30, 2012.
Complainant is the owner of several United States trademark registrations including:
CONAPOXY (Reg. No. 1,252,607 registered June 3, 1982),
CONAP (Reg. No. 1,337,907 registered October 5, 1984), and
CONAP (Reg. No. 1,377,761 registered October 17, 1984).
The Disputed Domain Name was registered by Complainant’s predecessor in interest on September 23, 1996 and this registration expired on October 26, 2009. Respondent registered the Disputed Domain Name on November 2, 2009.
Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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 is incorrect in its argument that the variety of websites and possible meanings of CONAP render the Complainant’s trademark registrations irrelevant.
This element of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (NAF Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)). Complainant’s trademark registrations demonstrate Complainant’s rights in the CONAP trademark. See Miller Brewing Co. v. Miller Family, FA 104177 (NAF Apr. 15, 2002) (finding that registration of a mark with a federal trademark authority is evidence of having rights in a mark); Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (holding that the registration rights satisfy Policy ¶ 4(a)(i) regardless of the location of the parties). Therefore, the Panel finds that Complainant has rights in the CONAP trademark.
The Disputed Domain Name combines two elements: (1) the Complainant’s CONAP trademark and (2) the suffix “.com.” The relevant comparison to be made is with the second-level portion of the domain name only (i.e., “conap”), as it is well established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose. Playboy Enterprises International, Inc. v. John Taxiarchos, D2006-0561 (WIPO July 19, 2006). Therefore, the Panel finds the Disputed Domain Name is identical to the Complainant’s trademark.
The Panel finds that Complainant has proven the first element of the Policy.
Under the Policy, paragraph 4(c), legitimate interests in domain names may be demonstrated by showing that:
(i) before any notice of this dispute, Respondent used, or demonstrably prepared to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services;
(ii) Respondent has been commonly known by the domain names, even if no trademark or service mark rights have been acquired; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue.
A Complainant must show a prima facie case that a Respondent lacks rights or legitimate interests in a Disputed Domain Name, after which the burden of rebuttal passes to the Respondent. See Accor v. Eren Atesmen, Case No. D2009-0701 (citing Croatia Airlines d.d. v. Modern Empire Internet Ltd., D2003-0455 (WIPO Aug. 21, 2003).
Respondent is not commonly known by the Disputed Domain Name, is not a licensee of Complainant’s, and does not have any connection to Complainant. The Panel notes that the WHOIS record for the Disputed Domain Name lists “Aybit GmbH / A. Bron” as the domain name registrant and finds that Respondent is not commonly known by the Disputed Domain Name. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (NAF Aug. 3, 2006) (holding that the WHOIS record among other factors demonstrated whether a respondent is commonly known by a domain name). Therefore, the Panel finds that Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain Name.
Furthermore, Complainant offered evidence that Respondent does not use the Disputed Domain Name for a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Complainant demonstrated that the Disputed Domain Name resolved to a website that displayed sponsored links to Complainant’s competitors. See Complainant’s Exhibit 8; Disney Enters., Inc. v. Kamble, FA 918556 (NAF Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services or a legitimate noncommercial or fair use). Respondent acknowledged that this inadvertently occurred for two months in 2012 but argued this short period should not supersede Respondent’s legitimate use of the Disputed Domain Name for almost 3 years in identifying Respondent and its products. As part of its plea to the Panel, Respondent also stated that it had received no revenue from the sponsored ads.
The Panel does not need to consider the merits of Respondent’s plea that the brief period of inadvertent advertising should not swallow up its legitimate use of the Disputed Domain Name. Complainant submitted additional evidence that the Disputed Domain Name displayed sponsored links to Complainant’s competitors on November 20, 2009; June 7, 2010; October 16, 2012; and November 30, 2012. See Complainant’s Additional Submission Exhibit 15. Respondent’s declaration that the sponsored ads displayed inadvertently for only two months is contradicted by evidence before the Panel. On these facts, the Panel finds that the Respondent engaged in the tactics it accused Complainant of employing – attempting to manipulate the Panel by providing only part of the facts.
Therefore, the Panel finds that Respondent does not have rights or legitimate interests in the Disputed Domain Name because Respondent failed to rebut Complainant’s evidence that Respondent used the Disputed Domain Name as a parking page.
For all of the foregoing reasons, the Panel finds that Complainant has proven the second element of the Policy.
Paragraph 4(b) of the Policy sets out four illustrative circumstances of the registration and use of a domain name in bad faith. One of the illustrations of bad faith, Policy Paragraph 4(b)(iv), occurs when Respondent attempts to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark(s) as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product or service offered on the Respondent’s website.
In its Complaint and Additional Submission, Complainant argues that bad faith is evident because Respondent intentionally attempts to attract Internet users to the Disputed Domain Name for commercial gain by creating confusion. Respondent misrepresented to the Panel that this inadvertently occurred over one short period. Complainant sufficiently proved that the Disputed Domain Name since being registered by Respondent has been used primarily for the purpose of commercial gain by placing links to Complainant’s competitors. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
This evidence of bad faith is compounded by the fact that Complainant previously owned the Disputed Domain Name and associated it with Complainant’s products. Internet users are even more likely to be confused and tricked into believing that the links displayed will lead to Complainant’s CONAP products because of Complainant’s prior use of the Disputed Domain Name. These misled Internet users likely profit Respondent despite Respondent’s denials of revenue. Therefore, the Panel finds Respondent registered and is using the Disputed Domain Name in bad faith.
For all the foregoing reasons, this Panel finds that Complainant has proven the third element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <conap.com> domain name be TRANSFERRED from Respondent to Complainant.
Michael A. Albert, Panelist
Dated: January 22, 2013
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