Carmen J. Cappella v. Cappella Drumsticks
c/o Joe Loria
Claim Number: FA0501000399613
PARTIES
Complainant
is Carmen J. Cappella (“Complainant”),
P.O. Box 96, Kendall Park, NJ 08824.
Respondent is Cappella Drumsticks
c/o Joe Loria (“Respondent”), 164 Applegarth Road, Monroe Township, NJ
08831.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <acappelladrumsticks.com>
(“the disputed domain name”), registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide (“Melbourne
IT”).
PANEL
The
undersigned, David H Tatham, certifies that he has acted independently and
impartially and to the best of his knowledge has no known conflict in serving
as a Panelist in this proceeding.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on January
10, 2005; the National Arbitration Forum received a hard copy of the Complaint
on January 11, 2005.
On
January 11, 2005, Melbourne IT confirmed by e-mail to the National Arbitration
Forum that the disputed domain name was registered with Melbourne IT and that
the Respondent is the current registrant of the name. Melbourne IT has verified that the Respondent is bound by the Melbourne
IT 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
January 17, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of February 7, 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@acappelladrumsticks.com by e-mail.
A
timely Response was received and determined to be complete on January 28, 2005.
A
timely Additional Submission was filed by Complainant on January 31, 2005 in
accordance with Rule 7 of the National Arbitration Forum’s Supplemental
Rules. It is summarized below and, so
far as it is relevant to this dispute, the Panel has taken it into account.
On February 8, 2005, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed David H Tatham as Panelist.
On February 22, 2005 the time period within which the
Panel was required to render its Decision was extended until March 8, 2005.
RELIEF SOUGHT
Complainant
requests that the disputed domain name be transferred from Respondent to
Complainant.
FACTS
This
domain name dispute appears to be the latest skirmish in a long-running battle
between Complainant, Mr. Carmen J. Cappella, and Respondent, particularly its
owner, Mr. Joe Loria.
Both
parties submitted copies of a Consent Judgment issued by the United States
District Court, District of New Jersey dated June 29, 1993. The parties to this Judgment were Carmen J.
Cappella and A Cappella Products, Ltd. (“Plaintiffs”) and Cappella Wood
Enterprises, Inc., Carmen Gumina, Jack Mula, and Sticks, Inc.
(“Defendants”). The Consent Judgment
drew a line between the activities of the parties. Plaintiffs were restrained from using, inter alia, the
CAPPELLA name in connection with the sale of any musical instrument or any wood
percussion instruments of any kind and from infringing Defendants’ names,
CAPPELLA, CAPPELLA THE DRUMSTICK PEOPLE and CAPPELLA THE REAL DRUMSTICK PEOPLE,
as used in association with drumsticks and other percussion wood products,
namely marching sticks, tympani mallets, tympani beaters, slapsticks, claves,
toner boxes and practice pads.
Defendants were restrained from using the CAPPELLA name in connection
with the sale of martial arts equipment and products including night sticks and
billy clubs, and from representing that their goods were sponsored by,
authorized by, or in any way associated with A Cappella Products, Ltd. The Judgment was binding on the “agents,
servants, employees, affiliates, and those persons in active concert or
participation with them who receive actual notice” of the Consent
Judgment. However, the parties were
permitted to continue using their corporate names, i.e. “Cappella Wood
Enterprises, Inc.” and “A Cappella Products, Ltd.”
It
would appear from the evidence that Mr. Joe Loria purchased all the assets of
Cappella Wood Enterprises, Inc. at some time in 1999 and is bound by the
Consent Judgment.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant contends as follows:
·
That the disputed domain name is confusingly similar to its
United States Patent and Trademark Office (“USPTO”) trademark for the ACAPPELLA
mark (Reg. No. 2,512,574) in which it has rights, and that if Respondent
continues to use this domain name it will fraudulently mislead customers away
from Complainant. Complainant owned the
disputed domain name at one time and had every intention of using it.
·
That Respondent
should be considered as having no rights or legitimate interests in respect to
the disputed domain name and that the name was registered primarily for the
purpose of disrupting the business of Complainant, who is a competitor in the
same drumstick market.
·
That Respondent does not make a
bona fide offering of goods or services under the disputed domain name or under
Respondent’s <www.cappelladrumsticks.com> domain name, through which it
sells similar products and services to the public.
·
That Respondent has not been
known as a business under the name “acappella.”
·
That Respondent is misleading and
diverting consumers for commercial gain and is unfairly tarnishing
Complainant’s trademark and service mark.
·
That
Respondent has registered the disputed domain name in order to prevent the
owner of the trademark or service mark from reflecting the mark in a
corresponding domain name, and that Respondent has engaged in a pattern of such
conduct in the past.
·
That
Respondent registered the disputed domain name for the purpose of disrupting
Complainant’s business when he saw an advertisement in the October Vintage Drum
Magazine utilizing ACAPPELLA custom drumsticks in two separate ongoing
adds. This is when Mr. Joe Loria
registered the <acappelladrumsticks.com> and
<undergroundpercussion.com> domain names (which has also been the subject
of a Complaint that was filed in December 2004. See Cappella v. Cappella Drumsticks, FA 393256 (Nat Arb.
Forum February 14, 2005)).
·
That
Respondent is trying to use the domain name in an attempt to attract customers
for commercial gain on the Internet.
Since his existing website advertises similar goods and services
already, he will create a likelihood of confusion with Complainant’s mark. Consumers might think there is an
affiliation of products and services linked to Complainant’s
advertisement. This is evidence that Respondent
is trying to utilize this domain name in bad faith. Respondent has known since 1999 that Complainant owns the
ACAPPELLA registered trademark for the use of drumsticks and woodturnings.
·
That
Respondent is aware of all of Complainant’s trademarks and he does not like it
that Complainant manufactures similar products. He has been trying to harass Complainant into ceasing business
under its ACAPPELLA trademark in making custom woodturnings (drumsticks). Complainant has rights to this trademark
(USPTO Reg. No. 2,512,574) and Respondent chose to register the disputed domain
name, <acappelladrumsticks.com>, as a form of harassment.
Attached
to the Complaint were: a partial copy of the 1993 Consent Judgement, a Purchase
Order dated May 20, 2004 for 1000 Cuban Guiro Sticks worth $410, several
unidentified and undated address sheets and advertisements for aCappella, an
undated newspaper cutting of an interview with Mr. Carmen Cappella, a colored
advertisement for aCapella drumsticks (undated), and extracts from two U.S.
patents in the name of Carmen J. Cappella for drumstick caps (Nos. 5,260,506
dated November 9, 1993 and 5,400,685 dated March 28, 1995).
B.
Respondent
In
his reply to the Complaint, Respondent asserts as follows:
·
He
purchased Cappella Wood Enterprises, Inc., an existing business, in July 1999
from Mr. Carmen Gumina, a relative of Mr. Carmen Cappella, who is
Complainant. The purchase consisted of
a complete package – the building, property, machinery, customers, trademarks,
receivables and payables. This package
did not include Mr. Carmen Cappella or any of the Cappella family. The business has been located at the same
address, 164 Applegarth Road., Monroe Twp., NJ, since it was started.
·
Complainant
is a disgruntled ex-employee of Cappella Wood Enterprises, who had been
discharged by the former owners. Since
that time, he has been attempting to extort business from, and continues to
badger, Respondent. After his
dismissal, he registered the CAPPELLA trademark in an attempt to harass Respondent
and stop Cappella Wood Enterprises from conducting business. This was litigated and the District Court in
the State of New Jersey awarded various
CAPPELLA trademarks and names within the music industry to Cappella Wood
Enterprises, Inc.
·
Complainant
is distorting the court’s decision and attempting to deceive and defraud the
music industry by trying to use similar trade names, like aCappella, bCappella,
cCappella, etc. He is in violation of
the court’s decision by using aCappella Drumsticks as his trade name.
·
In December
2001, after much harassment and verbal arguments, Complainant sent a fax to
Respondent, a copy of which was attached to the Response, that indicated that
he would no longer be manufacturing drumsticks (which in any case he was not
supposed to do under the Consent Judgement) and woodturnings. Respondent did not acknowledge this
announcement.
·
In January
2002, Complainant again contacted Respondent, offering to sell three
trademarks, UNDERGROUNDPERCUSSION, CAPPELLA and ACAPPELLA. Respondent refused this offer because he
already owned several similar trademarks.
.
·
On the same
day that the Complaint was filed, Respondent received a harassing e-mail from
Complainant’s niece, Cynthia Straub (a copy of which was attached to the Response),
which Respondent alleges is an example of the type of harassment that he has
been receiving since 1999.
·
When Mr.
Loria took over the company in 1999, a website was created and the following
domain names were registered: <cappelladrumsticks.com>,
<cappelladrumsticks.net>, <acappelladrumstick.com>,
<appellaproducts.com>, <www.cappellasticks.com>. As will be seen, the disputed domain
name, <acappelladrumstick.com>, less the final letter “s,” was also registered
at that time. Complainant has no rights
to that name.
·
In an
attempt to defraud and mislead, Complainant has supplied old documentation with
the Complaint. He disclosed only 2
pages of the verdict in the court case dated July 1993. At that time he had been restrained from
using similar trade names in connection with the sale of musical or any wood
percussion instruments. With the
exception of the invoice, all the documentation submitted was issued prior to
2002, when Complainant announced that he would be going out of business. The invoice submitted is proof of
his direct disregard of the 1993 Agreement.
Complainant has been using the name “aCappella Drumsticks” as his
corporate business name. By using the
letter “a” in front of the name “Cappella Drumsticks” he is purposely and
knowingly trying to take business away from Respondent. Complainant has again been trying to use the
CAPPELLA name, which he does not own in any way or means.
·
In response
to Complainant’s personal accusations, Respondent maintains:
1)
There was never a verbal agreement
between the parties in relation to Complainant using the similar CAPPELLA names
or with Mr. Carmen Gumina.
2)
A restraining order was never issued
against Mr. Joe Loria in relation to his so-called harassment of Liscet
Cappella.
3)
As far as NAMM membership, the evidence submitted was issued in 2001, prior to
Complainant’s notification that he was going out of business.
4)
Mr. Cappella has had a reputation of constantly going in and out of business. In the five years of the Respondent’s
ownership of the company, Mr. Cappella has changed addresses three times, New
Brunswick, Kendall Park and North Brunswick.
The newspaper article submitted was another indication of his
discrediting the Cappella Wood Enterprises business, and it also stated he
would be opening in East Brunswick. The
advertisement on the World Wide Web, which was submitted, was from 1999 under
Black Ball Music. In light of this
evidence, there is no indication of a stable or reputable business.
·
Respondent
alleges that the articles published from a music trade magazine submitted by
Complainant are examples of confusion within the marketplace. As a result, Respondent has received emails
and phone calls from customers questioning Complainant’s so-called
drumsticks. Complainant’s blatant
disregard of court ordered documents indicates his instability and coherence of
understanding such information. Respondent,
Cappella Wood Enterprises, Inc., has been in business for over 35 years and
customers assume it is this business that the articles are referring to.
·
Respondent
requests that the Panel find that Mr. Cappella and his family are not only
unprofessional but also very vindictive and angry. Respondent bemoans the fact that he has been the victim of an
ongoing dispute that he was never personally involved in from the
beginning. The loss of the company by
the family was due to bad financial decisions and money management, and on the
death of the father the family, the company was left with no financial backing
and lost the business. It was purchased
ten years later from the previous owners who had won similar trademark battles
with Complainant in a court of law.
Since the day the business was purchased, Mr. Cappella has tried to do everything
within his power to interrupt or intrude upon it. Respondent believes that he has been very fair and patient with
Mr. Cappella out of respect for his father but wants this harassment to stop.
·
Finally,
Respondent proffered information that in October 2003, he offered to sell the
company back to Mr. Cappella and his mother, Barbara Cappella, so the
harassment would end and the parties could move on. However Respondent believes that neither of them was financially
able to purchase the company at that time.
C.
Additional Submissions
Complainant
filed an Additional Submission of which the following is a summary:
Firstly,
Complainant asks that the <acappelladrumstick.com> domain name be added
to the Complaint and claims that this name was re-registered by Respondent
after Complainant had published the fact that it would be abandoned if it was
not renewed by February 15, 2005.
Complainant says that his understanding
of the Consent Judgment is:
·
That he can
use the name “acappella” for woodturning business, for custom woodturnings,
drumsticks, nightsticks, martial arts supply and in association with musical
instruments;
·
That the
company Cappella Wood Enterprises, Inc. has the right to use the names:
“Cappella”, “Cappella The Drumstick People”, “Cappella the Real Drumstick
People”, “The original Drumstick People” as trademarks for products to be sold
in music stores, and that it could not use any of these names for wood
percussion instruments;
·
That the
ACAPPELLA service mark was not part of the judgment;
·
That Joe
Loria and Cappella Wood Enterprises, Inc. could not associate themselves with
ACAPPELLA, could not unfairly compete with ACAPPELLA, could not falsely
associate themselves with Mr. Carmen J. Cappella, and could not advertise or
promote any goods that falsely represent themselves with the ACAPPELLA
trademark;
·
That the
Agreement does not give Respondent any rights to the ACAPPELLA name.
Complainant
further alleges that “when Joe Loria
purchased the Company he did not want to accept this written and verbal
agreement for me to use acappella for custom wood turning business” and that following the Consent
Judgment, Complainant came to a verbal agreement with the former President of
the company Carmen Gumina “to let us
continue to utilize acappella for custom musical instruments” and that this was “witnessed by Barbara Jean Cappella months
before the shop was sold to Joe Loria.”
Complainant
further alleges that Respondent registered the disputed domain name only when
Complainant started advertising on the Web in 2000 and attended a trade show
under the name “acappella drumsticks” in 2001.
Complainant only found out about this domain name in October 2004.
Complainant
sells his services directly to consumers, while Respondent sells his brand of
products to music stores. There has
apparently been no confusion in the market until Respondent misled the public “by associating my service mark “acappella”
and registering <acappelladrumstick.com>. Recently he also registered <acappelladrumsticks.com>
and <undergroundpercussion.com>.”
Complainant
has done everything in its power to make the ‘a cappella’ trade name recognized
as “a cappella” which is a conjoining of two Italian words. The word “a cappella” refers to the
unaccompanied singing of ‘50s and ‘60s songs.
A cappella singers make music while they are singing without
instruments.
FINDINGS
The Panel finds that the disputed domain
name, <acappelladrumsticks.com>, is neither identical nor
confusingly similar to Complainant’s ACAPELLA trademark; that Respondent does
have legitimate rights and interest in the disputed domain name; and that it
was not registered and is not 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 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.
However,
before coming to any conclusion on the
above, there are two preliminary issues that the Panel will first address.
Preliminary
Issues
Firstly, Complainant has asked that the
<acappelladrumstick.com> domain name be included in this Complaint. However, Supplemental Rule 7(d) specifically
states, “Additional submissions and
responses to additional submissions may not amend the original Complaint or
Response.” Thus this second
domain name cannot be considered in this Decision despite its very close
similarity to the disputed domain name.
If Complainant feels disadvantaged by this other domain name, his only
recourse is to go through the expense of filing an additional Complaint.
Secondly, it will be noted from the above summaries of
the Complaint, the Response and the Additional Response that the parties have,
for the most part, dealt only with commercial issues and the ongoing dispute
between them. Complainant set out his
case, mostly by copying the wording from the Policy without much proof, and
Respondent has done nothing to counter these allegations, preferring to recount
the history of his evidently very bad relationship with Complainant. Whatever the rights and wrongs of that
relationship, the Panel must deal only with the domain name dispute and judge
it according to the Policy and its Rules.
Complainant’s
trademark is ACAPPELLA. It was
registered with the USPTO on November 27, 2001, claiming a date of first use of
November 3, 1999. It is protected in
respect to “Woodturning and woodworking services” in Class 40. Thus it is, strictly, a service mark, but it
has been referred to as a trademark, and the Panel prefers to use that latter
term.
The
disputed domain name contains this trademark in its entirety, and follows it
with the word “drumsticks.” Complainant
claims that this is a term that describes his products, but there is some doubt
about that. His earlier trademark is
not registered for drumsticks, and the Consent Judgment of 1993 restrains
Complainant from using the name “Cappella” in respect to any wood percussion
instruments (which in the opinion of the Panel includes drumsticks). Furthermore, the additional word
“drumsticks,” actually appears in the name of Respondent’s company, Cappella
Drumsticks, so it has every right to include it in a domain name.
The
first part of the disputed domain name, “a cappella,” is also generic – as
Complainant acknowledges. It is an Italian phrase meaning “in the style of the
chapel” and in current musical parlance it is used to describe a type of
singing without independent accompaniment.
So,
in addition to having no rights to the descriptive word “drumsticks,”
Complainant cannot claim exclusive rights to the term “acappella” either,
especially because spaces in the term “a cappella” cannot be reflected within a
domain name. See Zero Int’l Holding
v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) ("Common words and descriptive terms are
legitimately subject to registration as domain names on a 'first-come,
first-served' basis.”); see also CRS Tech. Corp. v. Condenet, Inc., FA
93547 (Nat. Arb. Forum Mar. 28, 2000) (“[C]oncierge is not so associated with
just one source that only that source could claim a legitimate use of the mark
in connection with a website.”) see
also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1147 (9th
Cir. 2002) ("Similarity of marks or lack thereof are context-specific
concepts. In the Internet context, consumers are aware that domain names for
different Web sites are quite often similar, because of the need for language
economy, and that very small differences matter."); see also Successful Money Mgmt. Seminars, Inc. v.
Direct Mail Express, FA 96457 (Nat. Arb. Forum Mar. 7, 2001) (finding that
“seminar” and “success” are generic terms to which Complainant cannot maintain
exclusive rights).
Precedents
are, of course, not binding on a Panel, and this Panel is well aware that a
body of opinion among UDRP Panels feels that the addition of a generic word to
a distinctive trademark in a domain name does make the mark and the name
confusingly similar. It has also been
held on a number of occasions that if a generic term is added, this does not
necessarily have to imply a connection with the goods or services for which the
trademark is registered or used.
However in this case the Panel is not convinced by these arguments and,
because Complainant’s trademark is not very distinctive, because the two parts
of the disputed domain name are so descriptive – more of Respondent’s mark than
that of Complainant’s – and because Complainant’s trademark is registered for
different services, the Panel has concluded that the disputed domain name, <acappelladrumsticks.com>,
is not confusingly similar to
the Complainant’s ACAPPELLA trademark.
Under the Policy, if a complainant makes
out a reasonable case that a respondent has no rights or legitimate interest in
a disputed domain name, the burden of proof shifts to the respondent. However, as was said above under the heading
“Preliminary Issues,” in this case Complainant has done very little to justify
his case other than to repeat the terms of the Policy. Thus, the Panel holds that the burden of
proof has not shifted and that Complainant still has the burden to prove his
case.
Complainant alleges that Respondent has
no rights or legitimate interests in the disputed domain name, and that the
name was registered primarily for the purpose of disrupting his business. This is, in fact, an example of “Bad Faith”
under paragraph 4(b) of the Policy. Indeed, in the Complaint, Complainant has
frequently blurs the two concepts of “Bad Faith” and “Rights or Legitimate
Interests,” so the Panel has decided to deal with them both simultaneously
under a single heading.
The first of Complainant’s allegations is
that Respondent registered the disputed domain name for the purpose of
disrupting his drumstick business.
However this cannot be true, since although he submitted some “evidence”
of his activity in this field, it has already been pointed out above that he
has no right to be in the market of making and selling drumsticks. Furthermore, Respondent alleges that this
“evidence”– with the exception of one invoice, which in any case is in breach
of the Consent Judgment – was all issued prior to 2002. The Panel has no means of proving or disproving
this date, but considers that because Complainant is prevented by the 1993
Judgment from entering the drumstick market, that is sufficient to refute the
allegation.
Complainant further contends that
Respondent’s use of the disputed domain name is not in connection with a bona
fide offering of goods or services. However this too is not true, as Respondent
does indeed make and sell drumsticks. That is the business which has been
carried on by him and his predecessors in the business for over 35 years. Indeed, Respondent advertises itself as “The
Real Drumstick People.” See Canned
Foods Inc. v. Ult. Search Inc., FA 96320 (Nat. Arb. Forum Feb. 13, 2001)
(stating that “Respondent is using the domain <groceryoutlet.com> for a
website that links to online resources for groceries and similar goods. The
domain is therefore being used to describe the content of the site,” as
evidence that Respondent was making a bona fide offering of goods or services
with the disputed domain name); see also Modern Props, Inc. v. Wallis,
FA 152458 (Nat. Arb. Forum June 2, 2003) (finding that Respondents operation of
a bona fide business of online prop rentals for over two years was evidence
that Respondent had rights or legitimate interests in the disputed domain
name).
Complainant claims that Respondent has
not been known as a business under the name “acappella” which is true, but then
the business has been known under the very similar name “cappella” for over 35
years while Complainant appears to have used the name “acappela” only since
1999 and, as would appear from the evidence of Respondent, this use has been
very intermittent and spasmodic.
Complainant’s claim that
Respondent is misleading and diverting consumers for commercial gain and
unfairly tarnishing Complainant’s trademark and service mark is totally without
proof and completely untrue on its face.
Complainant
next claims that Respondent has registered the domain name in order to prevent
him from reflecting the mark in a corresponding domain name, and that Respondent
has engaged in a pattern of such conduct in the past. There is absolutely no proof whatsoever of the latter statement,
and registration of the disputed domain name would not serve to prevent
Complainant from registering a domain name such as <acappella.com>.
Complainant
alleges that Respondent registered the disputed domain name for the purpose of
disrupting Complainant’s business when he saw advertisements in a magazine for
ACAPPELLA custom drumsticks. The year
when this magazine appeared is not given, so there is no means of checking this
statement. The disputed domain name was
registered on October 22, 2004. In any
case, it was hardly surprising that Respondent should react in some way when he
saw Complainant offering goods for sale which, by a court order, he was
prohibited from selling.
Complainant
further alleges that Respondent is trying to use the disputed domain name in an
attempt to attract customers for commercial gain on the Internet. Since Respondent’s existing website
advertises similar goods and services already, Respondent will thus create a
likelihood of confusion with Complainant’s mark. Consumers might think there is an affiliation of products and
services linked to Complainant’s advertisement, and this is evidence that Respondent
is trying to utilize this domain name in bad faith. Complainant does not identify any website which he might own or
operate, neither in the Complaint nor in any of the supporting documents filed
with it, so this allegation is another which it is impossible to prove or
disprove. However again it must be said
that if Complainant is indeed advertising similar goods, such advertisement
would be in violation of the Consent Judgment.
Complainant
goes on to allege that Respondent has known since 1999 that Complainant owns
the ACAPPELLA registered trade mark for the use of drumsticks and
woodturnings. It may be true that
Respondent knows about Complainant’s ownership of this trademark, but it is
registered not for drumsticks or woodturnings, but for services in connection
with woodturning and woodworking. Also
it would appear that in January 2002, Complainant was trying to sell his
trademark to Respondent. This is hardly
evidence of a lifelong attachment to the name.
Complainant’s
allegation that Respondent was aware of Complainant’s trademarks and that he is
unhappy that Complainant manufactures similar products is not a ground for
objection under the Policy.
There
are a number of findings under the Policy that are relevant to this dispute and
which support the proposition that in this case, Respondent has rights and
legitimate interests in the domain name pursuant to paragraph 4(c)(ii) of the
Policy. See Kryton Mktg. Div., Inc.
v. Patton Gen. Contracting, FA 123868 (Nat. Arb. Forum Oct. 21, 2002) (holding
that Respondent had rights and legitimate interests in the disputed domain name
as it had been commonly known by the domain name and has been using the name
"liquid siding" in marketing its goods and services since the
1990's); see also VeriSign Inc. v.
VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that Respondent has
rights and a legitimate interest in the domain name since the domain name
reflects Respondent’s company name); see also Coming Attractions, Ltd. v. Comingattractions.com, FA 94341 (Nat.
Arb. Forum May 11, 2000) (finding Respondent had the right to register the
subject domain name, <comingattractions.com>, based upon the generic use
of the term "coming attractions"); see also Car Toys, Inc. v. Informa Unlimited, Inc.,
FA 93682 (Nat. Arb. Forum Mar. 20, 2000) (finding that Respondent has rights
and legitimate interests in the domain name where Complainant submitted
insufficient evidence to establish either fame or strong secondary meaning in
the mark such that consumers are likely to associate <cartoys.net> with
the CAR TOYS mark).
As
pointed out above, the term “a cappella” is a generic term. Thus, Complainant’s
ACAPPELLA trademark is not particularly distinctive and so is a very weak
mark. It is difficult therefore to
conclude that Respondent registered it in bad faith, especially as his business
has the exclusive right to make and sell drumsticks under the name CAPPELLA,
and especially as Complainant has produced so little evidence of any bad faith
on the part of Respondent.
Thus,
the Panel concludes that Complainant has not proved its case, and that
Respondent does have rights and a legitimate interest in the disputed domain
name. Furthermore, the domain name was
not registered and is not being used in bad faith.
DECISION
Having
failed to establish all three elements required under the ICANN Policy, the
Panel concludes that relief shall be DENIED.
David H Tatham, Panelist
Dated: March 8, 2005
National
Arbitration Forum