WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
All Packaging Machinery Supplies, Corp. v. Crystal Flex Packaging Corp.
Case No. D2002-0383
1. The Parties
Complainant is All Packaging Machinery Supplies, Corp., a New York corporation located in Ronkonkoma, New York, United States of America.
Respondent is Crystal Flex Packaging, located in East Brunswick, New Jersey, United States of America.
2. The Domain Names and Registrar
The domain names at issue are: , , and , (the "Domain Names").
The registrar is Network Solutions, Inc., located at Huntmar Park Drive, Hendon, VA 20170, United States of America.
3. Procedural History
This action was brought in accordance with the ICANN Uniform Domain Name Dispute Resolution Policy, approved October 24, 1999 ("the Policy"), and the ICANN Rules for Uniform Domain Name Dispute Resolution Policy, approved October 24, 1999 ("the Rules").
The Complaint was submitted on April 24, 2002. A Response was submitted on May 18, 2002.
Mark V. B. Partridge was appointed as Panelist on June 20, 2002.
4. Factual Background
Complainant is engaged in the manufacture and sale of packaging machinery and related products. It has used the name and mark ALL PACKAGING MACHINERY since 1982. During that time, it has enjoyed about $37 million in sales and spent over $1 million in advertising. The mark ALL PACKAGING MACHINERY is the subject of a pending application, but is not registered.
From May 1994 to November 2000, Respondent was an independent distributor for some of Complainant's products. That relationship has been terminated and Respondent no longer sells any of Complainant's products.
Complainant's former president and part owner was Irving Litt. Several years ago, Mr. Litt, who has since resigned from the company, asked Lesley Litt, his son and owner of Respondent, to design a web site for Complainant's business.
Lesley Litt registered the domain name in Respondent's name on December 14, 1998, but failed to set up the web site for Complainant.
In April 2001, Respondent used the domain name to direct Internet traffic to a web page for the business of Crystal-Flex Packaging Corp.
When Complainant learned about the registration of , it requested the Lesley Litt transfer the domain name to Complainant. By letter dated October 12, 2001, Respondent advised Complainant that "the total out of pocket expenses that he has incurred in connection with the registration, design, setup, artwork and maintenance of the website, as well as the cost for transferring the same is in excess of $15,000.00." On December 14, 2001, Respondent offered to transfer the domain name for $10,588.30.
Complainant later learned that Respondent registered three additional domain names on August 10, 2001: , and . These domain names lead Internet users to a page stating that the site is under construction.
5. Parties� Contentions
Complainant contends that the Domain Names are identical or confusingly similar to its mark, that Respondent has no rights or legitimate interests in the Domain Names and has registered and used the Domain Names in bad faith by seeking payment in excess of its legitimate out of pocket expense and by directing Internet site to a competing web site.
Respondent claims that "all packaging machinery" is not protectable as a trademark, that it has a legitimate interest in the Domain Names based on a Distribution Agreement and that it has registered and used the Domain Names in good faith in accordance with that agreement.
6. Discussion and Findings
A. Confusing Similarity
Complainant has demonstrated rights in the mark ALL PACKAGING MACHINERY. Although the phrase may be descriptive, it is entitled to protection as a mark based on 20 years of use. As a result of that long use, there is a presumption that the mark has acquired distinctiveness, and Respondent has presented no evidence to rebut that presumption.
The Domain Names are all either identical to or confusingly similar to a mark in which Complainant has demonstrated rights.
B. No Rights or Legitimate Interests
Complainant has shown that Respondent is not known by the Domain Names and is not using the Domain Names in connection with a bona fide offering of goods or services.
Respondent's sole basis for asserting a legitimate interest in the Domain Names is the allegation that it registered the Domain Names pursuant to a Distribution Agreement between the parties. In support, Respondent relies on purchase orders with Complaint and Complainant's allegation that Respondent was previously an independent distributor of Complainant's products. Respondent's claim in this regard is not credible and is not supported by the evidence. The record contains no evidence of any "Distribution Agreement", and to the extent that there was any distribution arrangement between the parties, the arrangement was terminated in November 2000, well before three of the Domain Names were registered. Moreover, there is no basis to believe that any arrangement involving distribution of Complainant's goods would also have authorized Respondent to register domain names corresponding to Complainant's mark.
Accordingly, it appears that Respondent lacks any right or legitimate interest in the Domain Names.
C. Bad Faith Registration and Use
The Policy includes a non-exclusive list of circumstances that may demonstrate bad faith. In this case, bad faith registration and use is demonstrated by the following facts:
1. Respondent was a distributor of Complainant's products and therefore was aware of Complainant's rights in its mark.
2. Although Respondent was asked to develop a web site on Complainant's behalf, it instead registered the first domain name in its own name and linked that domain name to its own, apparently competing web site.
3. When confronted with Complainant's request for transfer of the domain name , Respondent demanded payment in excess of its reasonable out of pocket expense for registration of the domain name.
4. In addition, well after any distribution arrangement had ended, Respondent registered the three additional domain names , and . The only apparent purpose for doing so was to extract additional payment from Complainant.
I see no good faith explanation for this conduct. If Respondent feels it is entitled to payment for work it was asked to perform in the development of a web site, as suggested in its $15,000 demand, that is a separate contractual dispute unrelated to the registration and use of the Domain Names. Any expectation of payment for web site development is not justification for Respondent's bad faith registration and use of the Domain Names as described above
7. Conclusion
I find in favor of Complainant. Therefore, the Domain Names , , and should be transferred to Complainant.
Mark V.B. Partridge
Sole Panelist
Dated: July 17, 2002
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