National Arbitration Forum

 

DECISION

 

Xerox Corporation v. Michael Franklin d/b/a Cognito Inc.

Claim Number: FA0502000425390

 

PARTIES

Complainant is Xerox Corporation (“Complainant”), represented by David M. Kelly, of Finnegan Henderson Farabow Garrett & Dunner L.L.P., 901 New York Avenue NW, Washington, DC 20001.  Respondent is Michael Franklin d/b/a Cognito Inc.  (“Respondent”), represented by Steven Horowitz, 295 Madison Avenue, Suite 700, New York, NY 10017.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <xeroxny.com>, <xeroxny.net>, <xeroxny.org>, <xeroxny.biz>, <xeroxny.info>, <xeroxnyc.com>, <xeroxnyc.net>, <xeroxnyc.org>, <xeroxnyc.biz>, <xeroxnyc.info>, <xerox7700.com>, <xerox7750.com>, <xerox8400.com>, <phaser7700.com> and <phaser8400.com>, registered with Go Daddy Software, Inc.

 

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.

 

Hugues G. Richard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 18, 2005; the National Arbitration Forum received a hard copy of the Complaint on February 21, 2005.

 

On February 18, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the domain names <xeroxny.com>, <xeroxny.net>, <xeroxny.org>, <xeroxny.biz>, <xeroxny.info>, <xeroxnyc.com>, <xeroxnyc.net>, <xeroxnyc.org>, <xeroxnyc.biz>, <xeroxnyc.info>, <xerox7700.com>, <xerox7750.com>, <xerox8400.com>, <phaser7700.com> and <phaser8400.com> are registered with Go Daddy Software, Inc. and that the Respondent is the current registrant of the name.  Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 February 23, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 15, 2005 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@xeroxny.com, postmaster@xeroxny.net, postmaster@xeroxny.org, postmaster@xeroxny.biz, postmaster@xeroxny.info, postmaster@xeroxnyc.com, postmaster@xeroxnyc.net, postmaster@xeroxnyc.org, postmaster@xeroxnyc.biz, postmaster@xeroxnyc.info, postmaster@xerox7700.com, postmaster@xerox7750.com, postmaster@xerox8400.com, postmaster@phaser7700.com and postmaster@phaser8400.com by e-mail.

 

A timely Response was received and determined to be complete on March 21, 2005.

 

A timely Additional Submission filed by Complainant was received and determined to be complete on March 29th, 2005.

 

A timely Additional Submission filed by Respondent was received and determined to be complete on April 4th, 2005.

 

On March 31st, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hugues G. Richard as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

 

A. Complainant

 

Complainant is a global leader in the document management field. It offers a wide array of products, and has used its XEROX trademark and trade name for nearly 60 years. In its Complaint, Complainant affirms that it spends millions of dollars each year to advertise and promote Xerox and its XEROX-branded products and services in the U.S. and in countries around the world.

 

Complainant owns several registrations with the U.S. federal trademark register for the XEROX mark. Complainant also owns several registrations for XEROX-formative marks, such as “the xerox company store,” “xerox scan manager,” “xerox professional document services,” “xerox productivity centre,” and “via xerox,” the whole as is further detailed in Exhibit 6 of the Complaint. Complainant also owns several registrations for the PHASER mark, the whole as is further detailed in Exhibit 7 of the Complaint. Complainant argues that Respondent registered the domain names in June 2004, nearly 60 years after Complainant began using its XEROX mark, more than 15 years after Complainant began using its PHASER mark, and long after the effective dates of Complainant’s trademark registrations for those marks.

 

Complainant also claims that Respondent currently uses the domain name <xeroxny.com> for a one-page website advertising its sale of supplies for XEROX printers, including xerox phaser printers, and displaying the XEROX logo, while using the remaining fourteen (14) domain names to redirect Internet users to its <xeroxny.com> website.

 

Complainant contends that the domain names <xeroxny.com>, <xeroxny.net>, <xeroxny.org>, <xeroxny.biz>, <xeroxny.info>, <xeroxnyc.com>, <xeroxnyc.net>, <xeroxnyc.org>, <xeroxnyc.biz> and <xeroxnyc.info> are confusingly similar to Complainant’s XEROX mark because each is comprised of the XEROX mark and a geographic term. Complainant also contends that the Domain names <xerox7700.com>, <xerox7750.com>, <xerox8400.com>, <phaser7700.com> and <phaser8400.com> are confusingly similar to Complainant’s XEROX or PHASER marks because each is comprised of Complainant’s mark and a model number that identifies Complainant’s PHASER printers.

 

Complainant adds that Respondent has no rights or legitimate interests in the domain names, because Respondent was not commonly known by the domain names prior to Respondent’s registration of those names. Complainant also argues that Respondent is not using, has not used, and has not demonstrated the intent to use the domain names in connection with a bona fide offering of goods or services. Complainant alleges that Respondent made an unauthorized use of its trademarks and trade names, and cites several U.S. decisions where such unauthorized use of domain names was considered illegal by the courts.

 

Complainant also contends that Respondent’s registration and use of the domain names meet the bad faith element set forth in Section 4(b)(iv) of the UDRP because Respondent allegedly uses the domain names to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s famous XEROX mark and/or its federally registered PHASER mark as to the source, sponsorship, affiliation, and endorsement of Respondent’s commercial website. Complainant also argues that Respondent’s use of the Domain names meets the bad faith criterion because Respondent’s activities sufficiently define him as a competitor and because these activities disrupt Complainant’s business. Moreover, Complainant adds that Respondent’s registration of the fifteen (15) domain names constitutes a pattern of registering trademark-related domain names in bad faith pursuant to Section 4(b)(ii) of the UDRP. Complainant contends that Respondent’s behavior constitutes bad faith because he was on notice of Xerox’s rights in its XEROX mark when he registered and used the domain names to trade on Xerox’s goodwill.

 

B. Respondent

 

In his Response, Respondent argues that the domain names in dispute are not identical to the trademarks in which Complainant has rights, and that the issue of confusing similarity should be viewed as separate from the other two required elements of Complainant’s case.

 

Respondent also claims it has a legitimate interest in the domain names, since they were registered and used in connection with the authorized resale of XEROX office printer products. These activities were allegedly included in an authorized reseller agreement between the parties, which allegedly does not prohibit the registration and use of domain names in conjunction with the XEROX trademark. Moreover, Respondent claims that the “Authorized Dealer Agreement” Complainant filed as Exhibit 14 of its Complaint places limitations on the use of trademarks only in conjunction with “copiers and related supplies”. Respondent claims it has been awarded as a “Peak Elite Reseller” of XEROX printer products in 2001 and every year thereafter, and that throughout this time it has resold XEROX products exclusively. It adds that it loyally refrains from promoting any XEROX competitor on its web site, that it is the only seller of XEROX office printer products that can make immediate delivery in Manhattan of virtually any XEROX office printer product, and that because of this its use of the web site constitutes a bona fide offering of the trademarked goods.

 

Respondent also claims that it has not registered and used the domain names in bad faith since, when it registered the domain names, it was already selling over a million dollars of XEROX office printer products annually, was authorized to service XEROX printers under XEROX warranty, and had a written license agreement signed with XEROX permitting it to use the XEROX trademark. Respondent alleges it has never had the intention of preventing XEROX from registering domain names incorporating its trademark, and that it has never offered to sell the web site or the domain names to Complainant or anyone else. Therefore, it maintains that it registered and used the Domain names in good faith.

 

C. Additional Submissions

 

In its Reply, Complainant claims that the documents relied upon by Respondent in its Response in fact support Complainant’s position. It argues that the three contracts which govern the relationship between the parties do not authorize or otherwise permit Respondent to register or use domain names incorporating Xerox’s trademarks. Complainant also argues that Respondent is in breach of the Authorized Dealer Agreement, since it provides without exception that the registration and use of domain names containing Xerox’s trademarks is prohibited. It maintains that Respondent’s status as a reseller of other Xerox products during the same period is irrelevant and cannot excuse its breach of contract. Complainant also argues that the terms of the Reseller Agreement gives Xerox the right to reject any uses of Xerox’s trademarks in any form by Respondent. Complainant also argues that the Service Provider Agreement between the parties contains no authorization to register domain names comprised of Complainant’s marks. Complainant adds that Respondent’s use of the domain names is not bona fide, because it existed only for a short time before notice of the present dispute, and that its use of the domain names is not fair use of its trademarks. Finally, Complainant contends that Respondent registered and uses the domain name in bad faith because it did so with knowledge of Xerox’s rights in the XEROX and PHASER marks, of its prohibition on registering domain names incorporating Xerox’s marks, and of Xerox’s right to approve any use of Xerox’s trademarks made by Respondent pursuant its three agreements with it.

 

In its Reply, Respondent argues that it has registered and used the domain names in connection with a bona fide offering of goods and services because, allegedly in conformity with past UDRP decisions: it actually offers the goods and services at issue, it uses the web site to sell only the trademarked goods, it prevents confusion by making clear in its use of the domain name that it is not the trademark owner by accurately disclosing the registrant’s relationship with the trademark owner, and that it does not corner the market in all domain names or deprive the trademark owner of reflecting its own mark in a domain name. Respondent also argues that Complainant cannot show any bad faith on Respondent’s behalf in this case, as it never used the domain names to sell goods of Xerox’s competitors, and that the web site operated from the Domain names does not lead Internet users to believe that it is the official home page of Xerox. Respondent also claims that Complainant’s reading of the Agreements is misleading, as the Dealer Agreement does not apply to office printer products, and the Service Provider and the Tektronix Agreements do not prohibit the registration and use of domain names.

 

FINDINGS

 

The Panel finds it has no jurisdiction to decide on the current dispute, as it finds the existence of contractual issues that are central to the dispute.

 

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.

 

Procedural Issues

 

It is clear that the issues arising from the contractual relationships between the parties are of central importance to the present case.

 

Both Complainant and Respondent refer to prior agreements between Respondent and Complainant, and between Respondent and a company that Complainant subsequently acquired.  The relationship between Complainant and Respondent is thus one that was until recently subject to three agreements. In their submissions to this Panel, both Complainant and Respondent rely heavily on the interpretation of said agreements to support their arguments, particularly concerning the second and third elements of Paragraph 4(a) of the Policy, namely whether Respondent has rights or legitimate interests in the Domain Name, and whether it registered and is using the Domain names in bad faith.

 

Therefore, the Panel is of the opinion that the present domain name dispute involves contractual issues that are not within the jurisdiction of the UDRP.  Particularly, the Panel finds that these issues are central to the domain name dispute, and that the current proceeding falls outside the scope of the UDRP.  See Discover New England v. The Avanti Group, Inc. FA 123886 (Nat. Arb. Forum Nov. 6, 2002) (finding the dispute outside the scope of the UDRP because the dispute centered on the interpretation of contractual language and whether or not a breach occurred).

 

In particular, both Complainant’s and Respondent’s Replies focus heavily on the issue of the right to use Xerox’s trademarks pursuant to the three agreements in question. In paragraph 8 of its Reply, Complainant affirms that “the Reseller Agreement contains no authorization for resellers to register domain names comprised of Xerox’s marks,” and relies on the provisions of the agreement that condition the use of Tektronix’s trademarks, which Xerox subsequently acquired, but which do not include the XEROX mark. It also relies on a provision of the Service Provider Agreement which states that “Xerox reserves the right to monitor and approve Service Provider’s use of Xerox’ trademarks”. On the other hand, Respondent was an authorized dealer, a service provider and reseller of Xerox products for many years, and Respondent was not expressly prohibited from registering and using domain names. That in itself casts doubts on the existence or lack thereof of rights or legitimate interests of Respondent to the Domain names that can only be resolved by a more serious interpretation of the agreements, the context in which they were entered into, and the overall business relationship between the parties. See Hewlett Packard Co., v. Napier, FA 94368 (Nat. Arb. Forum Apr. 28, 2000) (finding that Respondent’s sale and service of Complainant’s software established its legitimate interest in the domain name openview.com, which contained Complainant’s trademark OPENVIEW); see also K&N Eng'g., Inc. v. Kinnor Serv., D2000-1077 (WIPO Jan. 19, 2001) (finding legitimate interest because “Respondent has been an authorized distributor of the Complainant's goods for many years. The Respondent is in the business of selling the Complainant's products and is using the Domain Name in connection with that business”). Moreover, the contractual language expressly used in the agreements pertains to trademark issues more precisely, and as such confirms the Panel’s finding that the current dispute falls outside the scope of this ICANN proceeding.  See AutoNation Holding Corp. v. Rabea Alawneh, D2002-0581 (WIPO May 2, 2002) (holding that assertions of trademark infringement "are entirely misplaced and totally inappropriate for resolution through an ICANN proceeding. The scope of an ICANN proceeding is extremely narrow: it only targets abusive cybersquatting, nothing else"). These are all questions which involve the substantive interpretation of the agreements that formed the basis for the business relationship between the parties for many years, and the Panel finds that it does not have the jurisdiction to do so. Moreover, several other issues in this affair, such as Complainant’s contention that Respondent’s “deceptive” request to Mr. DiFransescantonio for the letter it submitted as Exhibit L of its Response raises issues of professional conduct, would also be best settled before a court of law.

 

Additionally, Respondent has attempted to address the issue of acquiescence which is an equitable remedy, which the Panel may find outside the scope of the present proceedings.  See Thread.com, LLC v. Poploff, D2000-1470 (WIPO Jan. 5, 2001) (refusing to transfer the domain name and stating that the ICANN Policy does not apply because attempting “to shoehorn what is essentially a business dispute between former partners into a proceeding to adjudicate cybersquatting is, at its core, misguided, if not a misuse of the Policy”); see also Commercial Publ’g Co. v. EarthComm., Inc. FA 95013 (Nat. Arb. Forum July 20, 2000) (stating that the Policy’s administrative procedure is “intended only for the relatively narrow class of cases of ‘abusive registrations.’”).

 

This finding should by no means be interpreted as implying that the registration and use of the domain names were legal or legitimate. But cases in which there is a deep contractual relationship between the parties, and where registered domain names are subject to legitimate disputes, should normally be relegated to the courts. This decision is also, naturally, without prejudice to Complainant’s right to obtain relief for Respondent’s actions through other legal channels. Having no jurisdiction to conduct an in-depth analysis of the agreements in question, this Panel elects not to pronounce itself on the existence or the opportunity of such a right, one way or another.

 

Since the Panel finds it has no jurisdiction to consider the contractual issues between the parties, it also finds it is not necessary to consider the three elements under Paragraph 4(a) of the Policy.

 

DECISION

 

Having declined to consider the three elements of Paragraph 4(a) of the ICANN Policy, the Panel concludes that relief shall be DENIED, without prejudice to Complainant seeking other legal remedies based on the same facts covered in this dispute.

 

 

 

 

Hugues G. Richard, Panelist
Dated: April 14th, 2005

 

 

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