Key II, Inc. d/b/a
Collector's Armoury v. Confino, Vico
Claim Number: FA0704000954029
PARTIES
Complainant is Key II, Inc. d/b/a
Collector's Armoury (“Complainant”),
represented by Patrick J. Jennings, of Pillsbury Winthrop Shaw Pittman, LLP, 2300 N Street, N.W., Washington,
DC 20037. Respondent is Confino,
Vico (“Respondent”), 6601 Lyons Road D-1,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <collectorsarmory.com>, registered
with Network
Solutions, 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.
Joel Grossman as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on April 4, 2007; the
National Arbitration Forum received a hard copy of the Complaint on April 11, 2007.
On April 4, 2007, Network Solutions, Inc. confirmed by e-mail to
the National Arbitration Forum that the <collectorsarmory.com> domain name is
registered with Network Solutions, Inc.
and that 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 April 16, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of May 7, 2007 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@collectorsarmory.com by e-mail.
On May 3, 2007, Respondent
submitted a request for additional time to submit a response pursuant to
National Arbitration Forum Supplemental Rule 6(a)(i).
An Extension of Time to Respond was issued, setting a
new deadline of May 21, 2007 by which Respondent could file a Response to the
Complaint.
A timely Response was received and determined to be complete on May 18, 2007.
On May 23, 2007, Complainant filed an Additional Submission with the National Arbitration Forum that was determined to be timely and complete pursuant to Supplemental Rule 7.
On May 25, 2007, Respondent submitted an Additional Submission, consisting of a cover letter and a CD which purports to be a recording of a conversation between Respondent and the President of Complainant. According to Respondent’s cover letter, the CD “contains a complete timeline negotiation conversation between the Respondent and the Complainant President James Kemp via telephone.”
On May 30, 2007, Complainant objected to the admission of the CD in this proceeding.
Respondent states,
and Complainant concurs, that the CD represents only Respondent’s side of a
conversation purportedly concerning Complainant’s potential purchase of the
disputed domain name from Respondent. The
CD is by definition incomplete and of no value to the Panel. The Panel therefore will not consider the CD
in its deliberations. The Panel will
discuss the relevance of the potential purchase of the domain name in the Bad
Faith section below.
On May 25, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Joel Grossman as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant asserts that it owns the registered trademarks “The
Collector’s Armoury” and “Collector’s Armoury, Ltd.” It further contends that Respondent’s domain
name, <collectorsarmory.com>,
is identical to, or confusingly similar to these marks. Complainant contends
that Respondent has no rights or legitimate interests in the disputed domain
name since it is using the disputed domain name to confuse Complainant’s
potential customers, and is trying to divert traffic from Complainant’s site to
Respondent’s site. Finally, Complainant
asserts that Respondent registered the disputed domain name, and continues to
use the disputed domain name, in bad faith. Among other things, Complainant asserts that
Respondent is using the disputed domain name to disrupt Complainant’s business
or pass itself off in the marketplace as Complainant, and that the disputed domain
name causes confusion in the marketplace.
Complainant asserts that Respondent had actual and constructive
knowledge of Complainant’s trademarks when it registered the disputed domain
name, and that Respondent offered to sell the disputed domain name to
Complainant for $50,000, each of which is further evidence of bad faith.
B. Respondent
Respondent cannot and does not contend that the disputed domain name is
not similar or identical to Complainant’s marks. Rather, Respondent contends that it is a
legitimate reseller of Complainant’s goods, and is engaged in a bona fide offering of goods and services
prior to any notice of the dispute. Respondent
notes that it does hundreds of thousands of dollars of business with Complainant,
and has done so for years. Respondent points out that it paid $2,000 to
Complainant in 1999 to upgrade its relationship with Complainant to “contract”
status, entitling Respondent to certain favored terms. Respondent notes that Complainant commonly received
orders from Respondent’s customers which Complainant shipped directly to Respondent’s
customers. Respondent asserts that
Complainant had actual or constructive knowledge of Respondent’s use of the disputed
domain name, and made no objections to Respondent’s use until 2007. While Respondent does not use the term
“laches,” in its Response, it notes that: “the failure of the Complainant to
notify the Respondent of any dispute for eight years while continuing to accept
payment for its products can be perceived as ‘implied consent’ to a valid
relationship.” Respondent points out
that it has a checking account and credit card using the disputed domain name,
and that it registered its business in the State of
C. Additional Submissions
In its Additional Submission Complainant
states that it never consented to Respondent’s registration of the disputed domain
name. Complainant further states that “to the extent
there may have ever been an implied consent between the parties, such consent
would have been terminated on January 23, 2007 when Complainant sent Respondent
its first cease and desist letter.” Complainant
points out that if Respondent is attempting to use the defense of laches, it
will not succeed since the equitable doctrine of laches does not apply under
the Policy. Complainant confirms that it
was Complainant who initially approached Respondent with an offer to purchase
the disputed domain name for $3,000 but characterizes Respondent’s comment that
the disputed domain name had been valued at $50,000 as an implied counter-offer
to sell the disputed domain name for $50,000. Complainant notes that it is
acting in good faith in asserting its claims and is not engaged in reverse
domain name hijacking.
Respondent submitted an Additional Submission consisting of a CD and a
cover letter. The CD was purportedly a recording of a portion of a conversation
between Complainant and Respondent. As
noted above, the Panel has rejected this submission.
FINDINGS
The Panel finds as follows:
1.
The
domain name is confusingly similar or identical to Complainant’s marks;
2.
Respondent’s
use of the domain name is in connection with a bona fide offering of goods or services; and
3.
The
domain name was not registered and is not being used in bad faith.
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 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;
(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.
There is no doubt that the domain name <collectorsarmory.com> is
virtually identical to Complainant’s COLLECTORS ARMOURY marks. The exclusion of the letter “u” in the word “armory”
is of no consequence. See Microsoft Corp. v. Domain Registration Phillipines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (addition of an additional “s” in
“microssoft.com” insufficient to avoid a finding of confusing similarity).
Respondent has been using the disputed domain
name since it was registered in 1999 as part of its marketing of Complainant’s
products to Respondent’s customers with the full cooperation of Complainant. Respondent has been granted special “contract”
status with Complainant, and has purchased for resale over $400,000 of
Complainant’s goods. Respondent had no knowledge of the current dispute until
January 2007 when it received the first cease and desist
letter from Complainant. As noted above,
Complainant’s Additional Submission states that: “to the extent that there may
have ever been an implied consent between the parties, such consent would have
been terminated on January 23, 2007 when Complainant sent Respondent its first
cease and desist letter.” It thus
appears that Respondent was using the name in connection with the bona fide sale of goods before any
knowledge of the dispute. The Panel
concludes that Respondent has established that it is an authorized reseller of
Complainant’s goods and as such it is using the disputed domain name in
connection with the bona fide
offering of goods and services prior to knowledge of the dispute. See Grobet File Co. of Am., Inc. v. Exch. Jewelry Supply, FA 94960
(Nat. Arb. Forum July 14, 2000) (since prior to the dispute respondent
was an authorized distributor of complainant’s goods, the domain name—which was
identical to complainant’s mark—was registered and used in connection with a
bona fide offering of goods and services.); see
also K&N Eng’g, Inc. v. Kinnor
Servs., D2000-1077 (WIPO Jan. 19,
2001).
Because the Panel has determined that
Respondent, without notice of the dispute, was using the disputed domain name
in connection with the bona fide
offering of goods and services, it follows that the name was not registered or
being used in bad faith. The Panel notes
that Respondent never approached Complainant with an offer to sell the name;
rather the Complainant sought to purchase the name for $3,000 and Respondent
said that it had valued the disputed domain name on its books at $50,000. Even if this statement was an implied
counter-offer to sell the name to Complainant for $50,000, in connection with a
showing of bad faith it is important to note that it was Complainant who
initially approached Respondent about the sale. See Puky
GmbH v. Agnello, D2001-1345 (WIPO
Jan. 3, 2002). It is also noted that
because the Panel does not need to reach the issue of laches; given the result,
this issue is moot. Finally, the Panel
does not find that Complainant engaged in this process in bad faith, and
therefore declines to find that Complainant is guilty of reverse domain name
hijacking.
DECISION
Having failed to establish all three elements required under the ICANN
Policy, the Panel concludes that relief shall be DENIED.
Joel M. Grossman, Panelist
Dated: June 5, 2007
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National
Arbitration Forum