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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