Bully Dog Technologies, LLC v. Concours Direct Inc.
Claim Number: FA1202001428542
Complainant is Bully Dog Technologies, LLC (“Complainant”), represented by Grace Han Stanton of Perkins Coie LLP, Washington, USA. Respondent is Concours Direct Inc. (“Respondent”), represented by Christopher D. Olszyk, Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bullydogparts.com>, <bullydogparts.net>, <bullydogoutlet.com>, <bullydogbigrigdirect.com>, and <bullydogbigrigpup.com>, registered with Godaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Mark McCormick as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 7, 2012; the National Arbitration Forum received payment on February 7, 2012.
On February 8, 2012, Godaddy.Com, Inc. confirmed by e-mail to the National Arbitration Forum that the <bullydogparts.com>, <bullydogparts.net>, <bullydogoutlet.com>, <bullydogbigrigdirect.com>, and <bullydogbigrigpup.com> domain names are registered with Godaddy.Com, Inc. and that Respondent is the current registrant of the names. Godaddy.Com, Inc. has verified that Respondent is bound by the Godaddy.Com, 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 February 9, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 29, 2012 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@bullydogparts.com, postmaster@bullydogparts.net, postmaster@bullydogoutlet.com, postmaster@bullydogbigrigdirect.com, and postmaster@bullydogbigrigpup.com. Also on February 9, 2012, the Written Notice of the Complaint, notifying Respondent of the email 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 March 1, 2012.
Complainant’s Additional Submission was received on March 5, 2012 and deemed compliant with Supplemental Rule 7.
Respondent’s Additional Submission was received on March 12, 2012 and deemed compliant with Supplemental Rule 7.
On March 7, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mark McCormick as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that it has used its BULLY DOG mark since June 1999, and it obtained trademark registration of its mark effective April 20, 2007. Complainant alleges that Respondent’s <bullydogparts.com>, <bullydogparts.net>, <bullydogoutlet.com>, <bullydogbigrigdirect.com>, and <bullydogbigrigpup.com> domain names are confusingly similar to Complainant’s mark. Complainant alleges that Respondent is not commonly known by the domain names and lacks rights and legitimate interests in their use. Complainant also alleges that Respondent’s use of the domain names on its website is not bona fide use since the website also offers goods and services of Complainant’s competitors. Complainant asserts that Respondent registered and uses the domain names in bad faith, relying in part on Respondent’s registration of more than 30 domain names that contain third-party trademarks and also relying on the multiple registrations incorporating the BULLY DOG mark. Complainant also asserts that Respondent uses the domain names to sell Complainant’s products without authorization, which disrupts Complainant’s business.
B. Respondent
Respondent acknowledges Complainant’s rights in its mark but contends that the disputed domain names are not confusingly similar. Respondent contends that it has rights and legitimate interests in the domain names because it has used the domain names to sell Complainant’s products, previously at least, as an authorized distributor. Respondent also relies on the doctrine of fair use. Respondent contends that the domain names that haven’t yet been used were registered with a plan to use them to sell additional Complainant’s products. Respondent denies that the domain names were registered and used in bad faith.
C. Additional Submissions
In its Additional Submission, Complainant denies that it is misusing the UDRP process and that the panel should recognize that its action was brought because of Respondent’s authorized use of Complainant’s BULLY DOG mark. Complainant also contends that the addition of descriptive or generic terms to Complainant’s mark makes them confusingly similar within the meaning of the Policy. Complainant disputes Respondent’s contention that its use of the domain names is bona fide because Respondent has links on its website to other websites that offer competitors’ products. Complainant alleges that Respondent has not successfully refuted Complainant’s allegations regarding Respondent’s bad faith registration and use of the domain names.
Respondent, in its Additional Submission, reiterates its contention that Complainant brought the action for a purpose outside the URDP, in particular as a means to obtain leverage against resellers who refuse to sign Complainant’s Internet Reseller’s Agreement. Respondent repeats its contentions that Complainant has failed to establish its contentions under the Policy, relying particularly on the fact that Respondent registered the domain names in 2005 and used them as an authorized distributor of Complainant’s products until the present dispute arose.
Even though the parties plainly had a contractual or business dispute, Complainant focused its Complaint on the UDRP issues. The panel finds, however, that at the time Respondent registered and commenced its use of the domain name <bullydogparts.net>, containing Complainant’s BULLY DOG mark, Respondent was an authorized distributor of Complainant’s products. Such relationship continued until Respondent refused Complainant’s ultimatum that it sign Complainant’s Internet Reseller’s Agreement. Because this issue is determinative, it is unnecessary for the panel to make findings addressing Complainant’s contentions other than its contention accusing Respondent of bad faith registration and use.
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.
The panel has determined that it has jurisdiction of the dispute because Complainant focused its allegations on the elements of the Policy under the URDP. The case thus presents the question whether Complainant has met its burden to prove the elements of the policy. The panel obviously has jurisdiction to decide that question. See Weber-Stephen Prod. Co. v. Armitage Hardware, D2000-0187 (WIPO May 11, 2000).
Registration and Use in Bad Faith under Policy Paragraph 4(a)(iii).
Respondent registered and commenced use of the <bullydogparts.com> domain name in 2005 when the record shows Respondent was an authorized distributor of Complainant’s products. A disputed domain name will not be held to have been registered and used in bad faith when the registration occurred in the context of an authorized distributor relationship. See Urbani Tartufi s.n.c. v. Urbani U.S.A., D2003-0090 (WIPO Apr. 7, 2003). Moreover, the record establishes that Respondent made demonstrable plans to use the additional disputed domain names. Its failure to implement its plans does not show bad faith. See Spiliadis v. Androulidakis, FA 1072907 (Nat. Arb. Forum Oct. 17, 2007).
Complainant has failed to meet its burden to prove that Respondent registered and used the disputed domain names in bad faith as required by Policy Paragraph 4(a)(iii).
Because Complainant has 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 <bullydogparts.com>, <bullydogparts.net>, <bullydogoutlet.com>, <bullydogbigrigdirect.com>, and <bullydogbigrigpup.com> domain names REMAIN WITH Respondent.
Mark McCormick, Panelist
Dated: March 20, 2012
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