Vans, Inc. v. Military and Rescue Supply
Claim Number: FA1109001407743
Complainant is Vans, Inc. (“Complainant”), represented by Paul D. McGrady of Greenberg Traurig, LLP, Illinois, USA. Respondent is Military and Rescue Supply (“Respondent”), represented by Scott A. Johnson of Eastman & Smith, Ltd., Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <protechelmet.com>, registered with Tucows, Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflicts in serving as Panelists in this proceeding.
Bruce E. Meyerson, Jeffrey M. Samuels and Darryl C. Wilson as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 16, 2011; the National Arbitration Forum received payment on September 19, 2011.
On September 16, 2011, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <protechelmet.com> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 27, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 7, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@protechelmet.com. Also on September 27, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on November 8, 2011. In addition, the Panel considered Complainant’s Additional Submission filed on November 14, 2011, and Respondent’s Additional Submission filed on November 21, 2011. The Panel also considered Complainant’s Request that the Panel Disregard Respondent’s Amended Response Submitted in the Form of “Additional Submissions” filed on November 28, 2011, and Respondent’s Response filed on November 29, 2011.
On November 15, 2011, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson, Jeffrey M. Samuels and Darryl C. Wilson as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Vans, Inc., states that it is a leading action sports lifestyle company. It operates more than 160 retail stores in the United States and Europe. Complainant holds a registered trademark for PRO-TEC which it registered with the United States Patent and Trademark Office in 1982.
Complainant states that the domain name in dispute, <protechelmet.com>, is confusingly similar to its trademark because it incorporates the mark fully and adds the generic term “helmet” which is the primary product sold by Complainant.
Complainant states that Respondent does not have rights or legitimate interests in the domain name. According to Complainant, Respondent is not commonly known by the domain name nor has Complainant granted Respondent permission to use the domain name. Complainant further states that the Respondent is using the domain name to resolve to a website that sells products that compete with products sold by the Complainant “and/or which may be counterfeit knockoffs of Complainant’s own products.”
Complainant states that the only purpose served by registering the domain name would be to “trade off of the reputation and goodwill of Complainant’s marks,” and therefore the domain name has been registered in bad faith.
B. Respondent
Respondent states that it and affiliated companies have been using the domain for over seven years, since 2004. According to Respondent, in July 2006 Complainant demanded an assignment of the domain name from one of Respondent’s principals, Dan Wades. Mr. Wades refused and Respondent and its affiliated companies have used the domain name continuously since then until the filing of this Complaint. According to Respondent, Complainant does not sell PRO-TEC products directly to consumers, but only to authorized distributors who sell to consumers or third-party vendors.
Respondent states that 3DS Xtreme Sports & Gear LLC (“3DS”) is affiliated with Respondent and that 3DS was an authorized distributor of products bearing the PRO-TEC mark. Respondent states that he has “transitioned” its business operations from 3DS to Military and Rescue Supply LLC (“M&RS”). Respondent denies that it is offering for sale products which compete with products sold by Complainant. According to Respondent, the only products it offers for sale which are not PRO-TEC products are military helmets. Respondents states that Complainant does not offer military helmets for sale.
Respondent states that the Complaint should be barred under doctrine of laches because of the delay by Complainant in bringing this Complaint. Respondent states that during the intervening period it has developed a base of loyal customers and awareness about its website and that it would be severely prejudiced by the delay if the domain name were transferred.
Respondent states that it is not competing with Complainant but actually selling Complainant’s products and, therefore, its actions are a legitimate and fair use of the domain name.
C. Complainant’s Additional Submission
Although Complainant acknowledges that it did have a distributorship agreement with 3DS, as well as a distributorship with Product Unlimited Plus, an entity formerly affiliated with Respondent, Complainant denies that it ever had such agreement with Respondent or another entity affiliated with Respondent, DJDD Holdings, LLC. Because Complainant does not have a distributorship agreement with Respondent, Complainant contends that Respondent is not authorized to use the domain name in dispute. Complainant contends that because Respondent is using Complainant’s mark to attract users to Respondent’s website where Respondent is selling military helmets not manufactured by Complainant, Respondent is not engaging in a bona fide use of its mark. This also, according to Complainant, creates confusion as to the source of these helmets. This confusion is compounded, according to Complainant, because, in its advertising, Respondent is using Complainant’s copyrighted images of its helmets and logos.
Complainant disputes Respondent’s contention that the domain name is not confusingly similar to its trademark. Complainant also contends that the defense of laches is not available in UDRP proceedings. Complainant further contends that Respondent’s disclaimer is insufficient to avoid a finding of bad faith.
D. Respondent’s Additional Submission
Respondent contends that because it is reselling Complainant’s goods, it is making a nominative fair use of the Complainant’s mark. Respondent states that its limited sale of military helmets, which are not sold by Complainant, could not cause any misunderstanding by Internet consumers. Respondent points out that another entity, also owned by Dan Wades, held a distributorship with Complainant—PT Helmets. Respondent states that for over seven years, the affiliated companies, owned by Dan Wades, including Respondent, have sold over 23,000 PRO-TEC brand products. Respondent repeated its contention that the military helmets sold by Respondent do not compete with Complainant, because Complainant does not offer military helmets for sale.
Respondent denies that its use of photographs of Complainant’s products violates any rights of Complainant and questions whether Complainant’s “spade design” is “sufficiently original to warrant copyright protection under” applicable laws.
Complainant has requested that the Panel disregard Respondent’s Additional Submission. The Panel will consider Respondent’s Additional Submission and also the arguments set forth in Complainant’s Request. Complainant states that the proper entity for purposes of this proceeding is the Respondent, despite the contention of Mr. Wades that the real holder of the domain name is DJDD Holdings, LLC.[1] As to the Respondent, Complainant restates that M&RS holds no distributorship agreement with Complainant.
Complainant contends that Respondent’s contention that it has sold significant quantities of Complainant’s goods only demonstrates the magnitude of Respondent’s bad faith conduct. Furthermore, Complainant states that using the mark of another to sell goods, even those which do not compete with merchandise sold by the complaining party, does not create a legitimate interest within the meaning of the Policy. Finally, Complainant contends that Respondent’s use of its designs and photos of its helmets is further evidence of bad faith.
As explained here, the Panel finds that Respondent has not registered nor used the domain name in bad faith.
Paragraph 15(a) of 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; and
(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.
Because the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(iii), the Panel declines to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Paragraph 4(b)(iv) of the Policy requires evidence that the Respondent “intentionally” attempted to attract, for commercial gain, Internet users to his site by creating a likelihood of confusion. Based upon the record, the Panel has concluded that the evidence does not support a determination that Respondent registered the domain name with the intent to be a cybersquatter or to unfairly trade on Complainant’s goodwill. See Celebrity Signatures Int’l, Inc. v. Hera’s Inc., D2002-0936 (WIPO Dec. 16, 2002). As noted in the Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy, “Except in cases involving ‘abusive registrations’ made with bad-faith intent to profit commercially from others’ trademarks (e.g., cybersquatting and cyberpiracy), the adopted policy leaves the resolution of disputes to the courts . . . and calls for registrars not to disturb a registration until those courts decide.”
Respondent, through its affiliated entities had a long-standing business relationship with the Complainant. Pursuant to that relationship, these affiliated companies sold Complainant’s goods. Although Respondent does not have a distributorship agreement with Complainant, it has continued to sell Complainant’s goods, and other merchandise that does not compete with Complainant’s business.
Complainant has been aware for some time (since 2006) that Respondent and/or its affiliated companies have continued to use the domain name but neglected to take any action to assert its rights. Respondent and/or its affiliated companies continued to purchase, and sell, Complainant’s products during this period.
Respondent’s use of the domain name, in connection with its ongoing sale of Complainant’s products (and without competing with Complainant in any way) does not demonstrate bad faith registration and use as proscribed by the Policy.
Thus, this case is not unlike the situation in Kaspersky Lab Zao v. Bonsey, FA1363673 (Nat. Arb. Forum Feb. 1, 2011), where the Panel found no evidence of bad faith registration or use. The Panel observed, under facts similar to those present here:
The unrebutted evidence suggests that Complainant was clearly on notice of Respondent’s business plan and of Respondent’s use of the disputed domain name for a website devoted, in part, to the resale of Complainant’s products and did not, at least initially, appear to be concerned about such use. Over six years have now gone by and, while laches is not a defense to an ICANN dispute, such delay is relevant in applying the Policy.
The present case is even a stronger situation for not finding bad faith. Unlike here, where previous affiliated companies of Respondent held a distributorship with Complainant, the respondent in Kaspersky Lab Zao never had such an agreement with the complainant.
In short, the Panel is convinced that the parties’ dispute is not the type envisioned to be covered by the UDRP and is best left to be resolved by the courts.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <protechelmet.com> domain name REMAIN WITH Respondent.
Bruce E. Meyerson, Jeffrey M. Samuels and Darryl C. Wilson, Panelists
Dated: December 6, 2011
[1] The Panel’s review of this case will be based on treating the Respondent as the proper party to this proceeding.
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