Coby Electronics Corporation v. Coby Co.
Claim Number: FA0605000700114
Complainant is Coby Electronics Corporation (“Complainant”), represented by A. John P. Mancini, of Mayer Brown Rowe & Maw, LLP, 1675 Broadway, New York, NY 10019. Respondent is Coby Co. (“Respondent”), represented by Coby O'Brien, 429 80th Ave., St. Pete Beach, FL 33706.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <coby.com>, registered with Network Solutions, Inc.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 3, 2006; the National Arbitration Forum received a hard copy of the Complaint on May 5, 2006.
On May 5, 2006, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <coby.com> domain name is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 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 12, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 1, 2006 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on May 30, 2006.
A timely Additional Submission on the part of Complainant was received and considered by the Panel for all purposes.
On June 6, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
1. Complainant alleges that Respondent’s domain name at issue <coby.com> is identical to or confusingly similar to Complainant’s COBY mark.
2. Complainant also alleges that Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Finally, Complainant asserts that Respondent registered and is using the domain name at issue in bad faith.
1. Respondent notes that there are many web sites which contain the COBY mark and that his own name is Coby, so Complainant does not have exclusive rights in the mark.
2. Respondent claims that he has used the domain name at issue for many years prior to this dispute and that he has been commonly known by the name “Coby” since birth in 1959.
3. Respondent claims that he has been using the domain name at issue for many years and has done so in good faith. He states that he did not offer to sell the domain name at issue and “demand an unreasonable sum” from Complainant.
C. Additional Submissions
Complainant filed an Additional Submission on June 5, 2006, which was considered for all purposes.
Complainant is the owner of the famous U.S. word and design trademarks in the word COBY in international classes 016 and 042, and U.S. classes 002, 005, 022, 023, 029, 037, 038, 050, 100, and 101 relating to, among other things, consumer electronic products and electronic and electrical equipment. In addition, Complainant has registered and continues to use the mark COBY in connection with similar goods and services in numerous countries around the world. Complainant is known internationally for several industry-leading designs for its products, including its portable DVD players – many of which have won industry design awards. Some representative samples of these products are exhibited on Complainant’s web site, located at <cobyusa.com>. Since at least as early as 1990, Complainant has continually used the COBY trademark in commerce in the United States in connection with a wide variety of consumer electronics products. Complainant also uses the COBY mark abroad and owns trademark registrations and applications for COBY in dozens of foreign countries.
The Respondent has had the given name Coby (O’Brien is his surname) since 1959, the year in which he was born. Respondent has been responding to being called Coby since 1959. He is called and recognized by the name Coby among family, friends and professionals. Respondent is recognized by the name Coby by reputable service organizations such as the Bank of America, the United States Postal Service, and Verizon. The Respondent had already been using the name Coby for 31 years before the Complainant decided to start its business and also call itself Coby (in 1990). Thus, Respondent also claims rights and legitimate interests in the name Coby.
Complainant has not licensed or otherwise authorized Respondent to use the name Coby and it is not clear that Respondent has made a bona fide offering of goods or services in connection with the domain name at issue or a name corresponding to the domain name. However, it clearly appears that the Respondent is commonly known by the name Coby and that he registered the domain name at issue containing his given name in April of 1996. This date was after the first claimed use of the COBY mark by Complainant in 1990, but this early registration, more than 10 years earlier than the date of this Decision, substantially predates the UDRP Policy (1999) governing this proceeding and, in fact, the creation of ICANN (1998). While Respondent does not make the argument, and while there is no statute of limitations applicable to the bringing of a UDRP complaint, it is difficult for this panelist to overlook the fact that Complainant has waited a decade to challenge the open and obvious registration and use of the domain name at issue by Respondent.
In its argument that Respondent’s “sole purpose in registering www.coby.com was to induce Complainant to purchase it” Complainant has produced a 1999 exchange of email between the parties, Respondent’s segment of which reads in part: “At Darwin Digital, we pay an average of $14K for domain named on a regular basis, and the best story I’ve heard is what Chase paid for chase.com -- $2MM. So, between $14,000 and $2,000,000.” Accordingly, Complainant argues that this is clear evidence of bad faith in that Respondent is suggesting that he is open to negotiate a sale of the domain name at issue at many times the out of pocket expenses associated with registration and maintenance of the site. On the other hand, Respondent asserts that a full reading of the email exchange suggests that he had no intention of selling the domain name at issue. I find that a fair reading of the email suggests that Respondent may have been coyly trying to get the bidding going by his “between $14,000 and $2,000,000” remark.
Whether or not Respondent was acting in bad faith would depend, in significant part, on whether or not he rightfully registered the domain name at issue. Once again, Complainant’s evidence of bad faith involves and exchange of email between the parties three years after Respondent registered the domain and about seven years prior to this proceeding.
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.
Complainant has established rights in the COBY mark pursuant to Policy ¶ 4(a)(i) because of its federal trademark registrations with the United States Patent and Trademark Office (“USPTO”) and elsewhere. Registration of a mark with the USPTO evinces a complainant’s rights in the mark. In Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005), the panel determined that the complainant had demonstrated rights in its AIG mark by registering the mark with several trademark authorities throughout the world, including the USPTO. Furthermore, the panel in Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004), stated, “Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.” Since Complainant registered the COBY mark with the USPTO, the Panel may find that Complainant has sufficiently demonstrated rights in the mark pursuant to Policy ¶ 4(a)(i). It should be noted that the Complainant also claims and had demonstrated common law rights in the COBY mark.
Respondent does not dispute that his <coby.com> domain name is identical or
confusingly similar to Complainant’s COBY mark.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent’s name, as well as Respondent’s WHOIS information, suggest that Respondent is commonly known by the <coby.com> domain name. He has established, over ten years since registration, rights or legitimate interests with respect to the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Toyota Motor Sales U.S.A. Inc. v. J. Alexis Prods., D2003-0624 (WIPO Oct. 16, 2003) (finding that the respondent was commonly known by the <lexusmichaels.com> domain name because the respondent’s stage name was LEXUS MICHAELS); see also Avnet, Inc. v. Aviation Network, Inc., D2000-0046 (WIPO Mar. 24, 2000) (finding that the respondent was commonly known by the <avnet.net> domain name because the respondent submitted “evidence that it was known by the name AVNET for at least ten years prior to its domain name registration”).
Respondent registered and previously used the <coby.com> domain name for several legitimate purposes, including building websites for clients and friends, exchanging intellectual properties between writers and artists, and posting online photography exhibits and stories. Respondent is currently using the <coby.com> domain name to teach mass communications students at a university, allowing students to post their works on the web site located at the disputed domain name. Consequently, Respondent’s prior and current use of the disputed domain name constitutes 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). See Lee Procurement Solutions Co. v. getLocalNews.com, Inc., FA 366270 (Nat. Arb. Forum Jan. 7, 2005) (finding that the respondent used the <bettendorfnews.com> domain name in connection with a bona fide offering of goods or services by hosting “interactive Internet newspapers that allow[ed] the public to post articles, stories and comments directly to its site”); see also Funskool (India) Ltd. v. funschool.com Corp., D2000-0796 (WIPO Nov. 30, 2000) (finding a bona fide use of the <funskool.com> domain name where the respondent submitted an article that indicated that the respondent had been using the similar <funschool.com> domain name to resolve to a popular gaming website for school children prior to notice of the dispute).
The Panel finds that Policy ¶ 4(a)(ii) has NOT been satisfied.
Since the Complainant has failed to satisfy Policy ¶ 4(a)(ii), it is not necessary to make a finding with respect to this element.
To some extent, this Decision is the product of an unusual fact scenario. Would I hold that if a “Fred Starbucks” were to register <starbucks.com> that he would be entitled to retain the domain name against a reasonably prompt (less than 10 years) UDRP challenge by the coffee giant? Probably not. But here, the 1996 registration of one’s own name, two years before ICANN and three years before the UDRP, at a time when the USPTO database was probably not as easily accessible (if at all) as it is today, with no challenge until 1999 by the registered trademark owner, except by email, and then no UDRP action for another six or seven years, …. Well, this is not a Fred Starbucks case. The circumstances here overturn the presumption in favor of Complainant with respect to Respondent’s lack of use and militate in favor of a finding of rights and legitimate interests in favor of the Respondent. If there are other issues involving wrongful use of Complainant’s intellectual property on the website at <coby.com>, they ought to be resolved in a forum other than this one.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <coby.com> domain name NOT be transferred from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: June 20, 2006
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