WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Novell, Inc. v. Marinelli Co.
Case No. D2001-1100
1. The Parties
The Complainant in this administrative proceeding is Novell, Inc., a Delaware corporation, principally located at 1800 South Novell Place, Novell, Utah, U.S.A.
The Respondent is Marinelli Co, represented by Mr. Greg Hauser whose address is 20810 N 62nd Drive, Glendale, Arizona 85308, U.S.A.
2. The Domain Names and Registrar
The domain names in dispute are as follows: ; ; and . The domain names were registered with BulkR, Inc. on February 2, 2000, February 10, 2000, and February 1, 2001, respectively.
3. Procedural Background
On September 5 and 11, 2001, the WIPO Arbitration and Mediation Center (the Center) received from Complainant Complaint (in hard copies and in e-mail resectively) for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation of Assigned Names and Numbers (ICANN) on August 26, 1999 ("Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 ("Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (Supplemental Rules).
The Complaint was filed in compliance with the requirements of the Rules and the Supplemental Rules, payment was properly made, the administrative panel was properly constituted, and the panelist submitted the required Statement of Acceptance and Declaration of Impartiality and Independence.
The instant Administrative Proceeding was commenced on September 14, 2001.
Respondent filed a Response on October 3, 2001. The Center Acknowledged its receipt on October 5, 2001.
4. Factual Background
Complainant Novell, Inc. is a leading provider of Net services software that secures and powers all types of computer networks. Since its inception of 1983, Novell and its products and services have become well known in the computer and Internet industry.
Novell holds 332 trademark registrations worldwide for or containing the NOVELL mark (See Complaint, Annex 3). Novell also owns various U.S. trademark registrations for the mark NOVELL PRESS under which it distributes all educational and supplemental printed materials in regard to its various products and services (See Complaint, Annex 4).
Novell also has registered the mark CNA in Japan and has used the mark in the U.S. since September 1994. See Complaint, Annex 5. CNA is the acronym for "Certified Novell Administrator," a well-known education course offered by Novell.
Novell owns registrations for the mark CNE in the U.S. and elsewhere and has used the mark since January 1989. See Complaint, Annex 6. CNE is the acronym for "Certified Novell Engineer," a well-known education course offered by Novell. A CNE certification is considered very marketable in the computer and Internet industry, and thousands of people are licensed to use the title each year.
The disputed domain names relate to Web sites which "frame" Novell's Education home page. The top of each site indicates that the domain names are for sale. The sites also include a counting device to track the number of "hits."
Novell sent a "cease and desist" letter to Respondent requesting that it cease its infringing use. However, since the address listed in the WHOIS database was incorrect, the letter was returned as "undeliverable." The letter was then sent to Respondent via e-mail. Respondent's representative, Mr. Hauser, responded that he had registered the domain names as part of a Web development course he was teaching and that his students, without his knowledge, offered the domain names for sale. On April 30, 2001, Mr. Hauser agreed to assign the domain names to Novell but has not yet returned the assignment forms.
5. Parties' Contentions
Complainant contends that the domain name is identical to its registered marks NOVELL and NOVELL PRESS and that there is a likelihood of confusion between its CNE and CNA marks and the domain names and . According to Novell, both CNE and CNA refer to its educational courses and the term "tutor" is commonly associated with educational assistance. Thus, Novel argues, "it stands to reason that one would associate a `CNE tutor' or `CNA tutor' as someone with a relationship with Novell who is offering assistance with Novell's CNE or CNA educational course."
Complainant further argues that Respondent has no legitimate interest in the domain names, given that Novell has not licensed Respondent or Mr. Hauser to use any of the marks or to apply for any domain names incorporating any of Novell's marks.
In its Response, Respondent argues that neither CNE nor CNA is unique. It maintains that countless companies use these acronyms.
With respect to the issue of "bad faith" registration and use, Respondent contends that the name was registered as part of a college e-commerce class and that the sole intent of the class was to sell the name to Novell for $15.00, the registration cost. According to Respondent, it made phone calls to Novell in an effort to notify it that the name was secured for Novell. These calls were not returned. Respondent also indicates that, upon being notified by Novell, it "pointed" the domain name to and ceased any further use of the name.
6. Discussion and Findings
The Panel has carefully reviewed the evidence presented and determines that Complainant has not met all the requirements set forth in para. 4(a) of the Policy.
As an initial matter, the Panel concludes that Novell has established rights in the marks NOVELL, NOVELL PRESS, CNA and CNE through its registrations in the U.S. and/or in other countries. It is also clear that the domain name is confusingly similar to Novell's NOVELL PRESS mark. However, the Panel determines that the domain names and are neither identical nor confusingly similar to Novell's CNA and CNE marks. In the Panel's opinion, the addition of the term "tutor" in the domain names creates a commercial impression markedly different from either CNA or CNE alone. The terms cnatutor and cnetutor do not, in the Panel's view, look like or sound like either CNA or CNE.
While Complainant contends that there is a likelihood of confusion between its CNA and CNE marks and the and domain names on the basis that the term "tutor" is associated with educational assistance, which service is provided by Novell under the CNE and CNE marks, in the Panel's view, likelihood of confusion is not the appropriate test under the Policy. In this regard, the Panel notes that under the "Anticybersquatting Consumer Protection Act" (ACPA), 15 U.S.C. 1125(d), a determination as to whether a domain name is identical or confusingly similar to a mark is made "without regard to the goods or services of the parties." See 15 U.S.C. 1125(d)(1)(A). While this statutory language, obviously, is not controlling in the instant proceeding, the Panel deems it instructive. This is especially so given that the ACPA and the UDRP are both aimed at providing relief against cybersquatters and both require proof that the domain name(s) in issue is "identical or confusingly similar" to the trademark owner's mark [1].
With respect to the domain name , the Panel further concludes that Respondent, at least initially, used it in a noncommercial manner. It appears, however, that Respondent, currently, is not making any use of this domain name.
In any case, the Panel finds no evidence of the required "bad faith" use and registration. While it appears that the disputed web sites advertised that the domain names were for sale, the evidence indicates that the compensation sought did not exceed Respondent's out-of-pocket costs directly related to the domain name. Further, the Panel is persuaded, as contended by Respondent, that the domain name was registered as part of an educational exercise, with no intent to disrupt the business of a competitor or to cause any likelihood of confusion. The Panel also credits Respondent's argument that, upon being contacted by Novell's attorneys, the Web site was "pointed" to Complainant's site. Such conduct is consistent with a finding of lack of "bad faith."
7. Decision
In view of the above, the Panel denies Complainant's request for transfer to it of the domain names ; ; and .
Jeffrey M. Samuels
Sole Panelist
Dated: November 13, 2001
Footnote:
1. The Panel further notes that the term "likelihood of confusion" is used in the Policy in connection with para. 4.b.(iv), dealing with "bad faith" registration and use. Presumably, if likelihood of confusion was intended to be the standard under para. 4.a.(i) of the Policy, the Policy would so state.
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