WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Uniroyal Engineered Products, Inc. v. Nauga Network Services
Case No. D2000-0503
1. The Parties
The Complainant is Uniroyal Engineered Products, Inc., a corporation organized in the State of New Jersey, United States of America (USA), with place of business in Sarasota, Florida, USA.
The Respondent is Nauga Network Services, with address in North Walpole, New Hampshire, USA.
2. The Domain Name(s) and Registrar(s)
The disputed domain names are "" and "".
The registrar of the disputed domain names is Network Solutions, Inc., with business address in Herndon, Virginia, USA.
3. Procedural History
The essential procedural history of the administrative proceeding is as follows:
a) Complainant initiated the proceeding by the filing of a complaint via e-mail, received by the WIPO Arbitration and Mediation Center ("WIPO") on May 26, 2000, and by courier mail received by WIPO on May 29, 2000. Payment by Complainant of the requisite filing fees accompanied the courier mailing. On May 29, 2000, WIPO transmitted a Request for Registrar Verification to the registrar, Network Solutions, Inc. On June 7, 2000, the complaint was amended by Complainant to correct a technical deficiency. On June 7, 2000, WIPO completed its formal filing compliance requirements checklist.
b) On June 7, 2000, WIPO transmitted notification of the complaint and commencement of the proceeding to Respondent via e-mail, telefax and courier mail. According to WIPO records, telefax and e-mail transmission were successful. Notification was also transmitted via e-mail, telefax and courier mail to Respondent�s Technical Contact.
c) On June 28, 2000, WIPO transmitted notification to Respondent of its default in responding to the complaint via e-mail and telefax.
d) On July 3, 2000, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On July 3, 2000, the undersigned transmitted by fax the executed Statement and Declaration to WIPO.
e) On July 5, 2000, Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by July 18, 2000. On July 5, 2000, the Panel received an electronic file in this matter by e-mail from WIPO. The Panel subsequently received a hard copy of the file in this matter by courier mail from WIPO.
The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties (taking note of Respondent�s default in responding to the complaint). The proceedings have been conducted in English.
4. Factual Background
Complainant is the holder of trademark registrations on the Principal Register at the USPTO for: (1) the term "NAUGA" (Reg. No. 0876281, dated September 9, 1969); (2) the term "NAUGAHYDE" (Reg. No. 0354435, dated February 15, 1938)); the term "NAUGALON" (Reg. No. 0810004, dated June 21, 1966), and; (4) the term "NAUGAFORM" (Reg. No. 0925738, dated December 21, 1971)(Complaint, para. 12, and Annexes E-H.) Complainant has filed an application for trademark registration for the term "NAUGASOFT" on the Principal Register at the PTO (Ser. No. 75-626473, dated January 25, 1999)(id., Annex I). This application is active. The NAUGA marks have been used in commerce since at least 1938 (based on the foregoing registrations), and continue to be used in commerce. The term "NAUGA" has no meaning in the English language and was developed by Complainant for use in connection with its products (id., para. 12).
Complainant uses the term "NAUGACASE" in commerce in connection with the sale of computer cases and accessories (id., para. 12 and Annex J). Based on Complainant�s undisputed representation, Complainant�s use of the "NaugaCase" mark precedes Respondent�s registration of the "" domain name (id.) 1.
Complainant has registered and uses the domain name "". According to a Network Solutions� WHOIS database query printout, this domain name was registered on May 31, 1996. Complainant is the named registrant (Panel�s Network Solutions� WHOIS database search of July 16, 2000).
Network Solutions� WHOIS database query response (Complaint, Annex A) indicates that "Nauga Network Services", with Administrative Contact at "Davidoff, Andrew", is registrant of the domain name "NAUGA.NET". The record of this registration was created on October 21, 1998, and was last updated on February 14, 2000 (id.).
Network Solutions� WHOIS database query response (Complaint, Annex B) indicates that "Nauga Network Services", with Administrative Contact at "Davidoff, Andrew", is registrant of the domain name "NAUGACASE.COM". The record of this registration was created on January 15, 1999, and was last updated on January 15, 1999 (id.).
There is no indication on the record of this proceeding that Respondent has maintained a website identified by either of the disputed domain names. Respondent� s domain name "" has been used to transfer Internet users entering the address "www." to Complainant�s website at "www." (Complaint, para. 12).
In a response, dated May 20, 1999, to a cease and desist letter from Complainant, dated January 11, 1999, Respondent through its counsel offered to sell the disputed domain names to Complainant for "an appropriate consideration." Respondent also offered "to transfer to [Complainant] in exchange for the right to continue to use " (Letter from Richard H. Coutant [for Respondent] to Christopher J. Glancy, dated May 20, 1999, Complaint, Annex L). Counsel for Respondent, at that stage, indicated that Respondent was making no commercial use of the disputed domain name "", that "Mr. Davidoff�s use of the name is purely personal", and stated "Mr. Davidoff is not interested in using his registered domain names for commercial purposes, but he values them for reasons of personal identification, and does not believe that his use of these names interferes with Uniroyal�s trademark registration." (Id.)
The Service Agreement in effect between Respondent and Network Solutions subjects Respondent to Network Solutions� dispute settlement policy, the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration (Policy, para. 4(a)). Respondent has not contested that it is properly before this Administrative Panel.
5. Parties� Contentions
A. Complainant
Complainant states:
"12. I.�
A) Complainant has registered the mark NAUGA in the United States and internationally. Complainant owns a U.S. trademark for NAUGA, Registration No. 876,281, for �coated fabrics of the so-called artificial leather type� in International Class 18. �.
Complainant has made continuous use of its NAUGA brand for its famous upholstery products and accessories, and the mark has become incontestable. The Complainant also owns international trademark registrations for NAUGA in Australia, the Benelux countries and France.
B) The Complainant owns several U.S. trademark registrations for marks that contain NAUGA as the dominant component�.
C) The Complainant owns a common law trademark for NAUGACASE by virtue of its use of NAUGACASE in connection with the sale of its line of Naugahyde computer cases and accessories�.
II�.
For many decades, Complainant has made widespread and continuous use of the NAUGA mark and NAUGA-formative Marks in connection with its popular upholstery products and accessories. Complainant began using the famous mark NAUGAHYDE in 1936 for its artificial leather covering, and received a U.S. trademark registration for that mark in 1938. In 1969, Complainant received a U.S. trademark registration for its famous NAUGA brand. NAUGA and all of the NAUGA-Formative Marks are fanciful marks coined by Complainant and are used exclusively to identify Complainant�s products. The term �NAUGA� has no meaning in the English language except as the identifier of Complainant�s products.
Complainant has expended considerable time, effort and money in advertising, promoting and selling products in connection with the NAUGA mark and the NAUGA-Formative marks. As a result, the NAUGA mark has become a global brand of enormous strength. Complainant�s NAUGA-branded upholstery products and accessories are known by consumers throughout the world for their durability, ease of cleaning, and performance. NAUGA-branded products are commonly found in motor vehicles, health care facilities, restaurants, hotels, airports, casinos, offices and homes. In short, Complainant�s NAUGA mark is famous throughout the world and embodies substantial goodwill. It is universally relied upon as identifying Complainant as the sole source of NAUGA products.
III. �
Without the Complainant�s consent, and with full knowledge of Complainant�s trademark rights, Respondent registered the domain names and with NSI. The domain name, registered on October 21, 1998, replicates Complainant�s registered U.S. trademark for NAUGA. The domain name, registered on January 15, 1999, replicates the Complainant�s common law trademark for NAUGACASE. Respondent adopted the and names with the intent to exploit Complainant�s goodwill in its marks.
IV. �
On January 11, 1999, shortly after learning of Respondent�s registration and use of the NAUGA mark in its domain name, Complainant�s attorney sent a letter to Respondent, via Federal Express, objecting to Respondent�s attempt to trade on Complainant�s goodwill and insisting that Respondent delete its registration for the domain name�. That letter was received by Respondent on January 12, 1999. Almost immediately after receiving Complainant�s demand letter, Respondent registered with NSI on January 15, 1999 and began directing site traffic from that domain name to Complainant�s website.
Respondent�s counsel responded to Complainant by letter dated May 20, 1999�. Respondent declined to relinquish its registration for the domain name and offered to sell both the and domain names to Complainant for �appropriate consideration.�
After some negotiation, Respondent agreed to transfer both domain names to Complainant in exchange for $500. Subsequently, however, Respondent repeatedly refused and failed to sign the domain name transfer agreement required by NSI.
For over three months, Complainant has made numerous attempts to contact Respondent to resolve this matter, but to no avail. Moreover, Respondent�s counsel stated that he has been unable to contact Respondent for several months and no longer knows Respondent�s whereabouts. Yet the site continues.
V. �
Respondent registered the and domain names for the purpose of selling those names to Complainant, or,
