ARBITRATION BEFORE THE

NATIONAL ARBITRATION FORUM

REGARDING AN INTERNET DOMAIN NAME DISPUTE

__________________

 

JACCARD CORPORATION                                    )

3421 North Benzing Road                                         )

Orchard Park, New York  14127                               )

                                                                                    )

                                                Complainant               )

                                                                                    )

v.                                                                                 )           Forum File No. FA0303000152463

                                                                                    )

GDC                                                                           )           Domain Name in Dispute:

17 Buckeye Road                                                       )                       <jaccard.com>

Amherst, New York  14226                                        )

                                                                                    )

                                                Respondent                 )

 

DECISION

 

PARTIES

Complainant is Jaccard Corporation, Orchard Park, NY ("Complainant") represented by Michael McDaniel, of Lipsitz, Green, Fahringer, Roll, Salisbury & Cambria LLP.  Respondent is GDC, Amherst, NY ("Respondent") represented by Ari Goldberger, of ESQwire.com Law Firm.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <jaccard.com>, registered with Network Solutions, Inc. (hereinafter "NSI").

PANEL

The Panelists are the undersigned, Honorable Robert R. Merhige, Jr. (Ret.); Rodney C. Kyle; and David E. Sorkin.

Each Panelist 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 (the "Forum") electronically on March 28, 2003; the Forum received a hard copy of the Complaint on March 31, 2003.

On April 8, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <jaccard.com> is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 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 April 8, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 28, 2003 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@jaccard.com by e-mail.

A timely Response was received and determined to be complete on May 19, 2003.

Complainant’s Additional Submission was received and determined to be timely on May 27, 2003.

Respondent’s Additional Submission was received and determined to be timely on June 2, 2003.

On June 6, 2003, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed the Honorable Robert R. Merhige, Jr. (Ret.), Rodney C. Kyle, and David E. Sorkin as Panelists.

RELIEF SOUGHT

Complainant requests that the registration of the domain name at issue be transferred from Respondent to Complainant.

Respondent requests a declaration that Complainant abused this proceeding and engaged in reverse domain name hijacking.

PARTIES’ CONTENTIONS

A. Complainant

Basically, Complainant makes three main contentions.

First, Complainant basically contends by way of seven points that (i) Complainant is the owner of United States Trademark Registration No. 1,172,879, issued 13 October 1981, for the mark JACCARD in International Class 7 for a meat tenderizer machine, United States Trademark Registration No. 1,216,431, issued 16 November 1982, for the mark IT’S JACCARDIZED in International Class 8 for a meat tenderizer in the nature of a hand tool, and United States Trademark Application Serial No. 78/216,383, filed 19 February 2003, for the mark JACCARD in International Class 8 for manually operated meat tenderizers, manually operated cutters for food, manually operated choppers for food, operated food shredders and manually operated food slicers; (ii) each of Complaint Exhibits A, B, and C is a print-out of authoritative ownership information from the database of the United States Patent & Trademark Office respectively evidencing said trademark registrations and application; (iii) Complainant first used said JACCARD mark in interstate commerce in 1964 to designate its products; (iv) said marks are famous and are used by Complainant as a manufacturer and worldwide provider of such goods, both on its goods and in the promotion, advertisement, and sale thereof; (v) said trademark registrations are but examples of trademark registrations of JACCARD, and variations thereon, that Complainant owns such as in China, Hong Kong, Japan, Taiwan and Turkey; (vi) Complainant registered the domain name <jaccardweb.com> on 30 December 2001, as evidenced by a print-out of current WHOIS information that is Complaint Exhibit H, and, no later than 30 December 2001, Complainant adopted and commenced use of its famous JACCARD mark in interstate and international commerce for the purpose of designating a website at <jaccardweb.com> to promote its goods, as evidenced by a print-out of the current opening page of said Complainant website that is Complaint Exhibit F; and (vii) the domain name <jaccard.com> was registered by Respondent (pursuant to a domain name registration agreement evidenced by the agreement document that is Complaint Exhibit G) on 14 October 1998 (as evidenced by a print-out of current WHOIS information that is Complaint Exhibit D) which is long after Complainant’s JACCARD mark was first adopted and registered by the Complainant, comprises Complainant’s famous JACCARD mark in its entirety (the addition of ".com" to Complainant's famous JACCARD mark not distinguishing said domain name from said mark), strongly suggests affiliation with or connection to or endorsement by Complainant, and therefore is confusingly similar to said marks, and (as evidenced by the print-out of the current opening page of a website operating at <jaccard.com> that is Complaint Exhibit E) is being used to divert internet users to a competing website for commercial benefit.

Second, Complainant basically contends by way of ten points that Respondent has no "rights or legitimate interests" in respect of the domain name at issue in that (i) Respondent GDC is not an authorized distributor of Complainant’s JACCARD branded goods, has no connection or affiliation with Complainant, and has not received any license, authorization or consent, express or implied, to use Complainant’s famous JACCARD registered trademark in a domain name or otherwise; (ii) the domain name <jaccard.com> was registered by Respondent long after Complainant’s adoption of the JACCARD mark; (iii) the Website operating at the domain name <jaccard.com> is a commercial Website offering goods and services, in direct competition with Complainant; (iv) on 19 February 2003, Complainant’s counsel issued a registered letter to Respondent demanding, inter alia, that the <jaccard.com> domain name be transferred to Complainant, and Complaint Exhibit I is a copy of said letter and return receipt and evidences said issuance; (v) no written response to said letter of 19 February 2003 was forthcoming from Respondent, which has failed to agree to transfer the <jaccard.com> domain name to Complainant; (vi) Respondent is not commonly known by the <jaccard.com> domain name; (vii) Respondent’s registration of Complainant’s trademark at <jaccard.com> and the sale of goods manufactured by and in competition with Complainant fails to create or demonstrate any bona fide offering of goods-- such use is an illegitimate use of said domain name and of Complainant’s famous JACCARD mark; (viii) Respondent is, without authorization, using a domain name identical and confusingly similar to Complainant’s famous trademarks as a way to divert Internet users to a competing commercial website for commercial benefit; (ix) Respondent’s use of <jaccard.com> to divert users to a competing commercial website is not a legitimate, non-commercial fair use of Complainant’s marks; and (x) through Respondent’s unfair registration and use of the domain name <jaccard.com>, Respondent is causing damage to Complainant’s JACCARD trademark, and Complainant has no control over said  registration and use.

            Third, Complainant basically contends by way of six points that Respondent's registration

            and use of the domain name at issue are in bad faith in that (i) the use of Complainant’s

            famous JACCARD mark to sell JACCARD branded goods suggests that the Respondent

            acquired the domain name <jaccard.com> primarily for the purpose of confusing

            consumers and disrupting Complainant’s business for financial gain; (ii) there is no

            plausible circumstance in which the Respondent could legitimately use Complainant’s JACCARD mark; (iii) Respondent acquired the domain name <jaccard.com> in the hope that potential customers would believe that the website operated thereat is operated or endorsed by Complainant, owner of the famous JACCARD mark; (iv) the domain name <jaccard.com> is being used to intentionally attract, for commercial gain, Internet users who are confused about the seller of the goods available at, and operators of, the website, and such use is evidence of bad faith; (v) Respondent’s unauthorized registration and use of a domain name identical, and thus confusingly similar, to Complainant’s JACCARD mark is evidence of an attempt to disrupt Complainant’s business; and (vi) there is no plausible situation in which the Respondent would have been unaware of Complainant’s famous JACCARD mark at the time of either or both of  registration or acquisition of the domain name.

B. Respondent

Basically, Respondent makes five main contentions.

First, Respondent basically contends by way of two points that John Felgemacher, rather than GDC, is the proper respondent in this proceeding, in that (i) John Felgemacher is an assignee, from GDC, of the registration of the domain name at issue, since (a) GDC was John Felgemacher's website designer and on 14 October 1998 registered the domain name at issue on behalf of John Felgemacher-- though erroneously in GDC's name, (b) in April 1999 GDC signed and had notarized an NSI Registrant Name Change Agreement transferring it to Keith Felgemacher-- a brother of John Felgemacher who had been working with John Felgemcher, (c) John Felgemacher has always been the user of the domain name at issue, the operator of the associated website, and listed in the registration as the administrative contact of the registration-- but, due to further errors with the April 1999 NSI agreement, GDC was never replaced as the registrant of the domain name at issue, and (d) Ziggy's Mexican Food, Inc. is a corporation of John Felgemacher's and on 1 April 2003 John Felgemacher arranged with NSI for the registration of the domain name at issue to be transferred to that corporation-- but the WHOIS records will not be updated until this proceeding is concluded and the lock removed from the registration of the domain name at issue; and (ii) said assignment (a) is evidenced by Response Exhibits 1 (Declaration of John Felgemacher), 2 (GDC Invoice for registration of Jaccard.com to John Felgemacher), 3 (NSI Registrant Name Change Agreement for Jaccard.com), 4 (Letter dated April 25, 2003 from Complainant's counsel to John Felgemacher's counsel), and 5 (Receipt of request for transfer of Jaccard.com) and (b) is in accordance with Ultrafem, Inc. v. Warren R. Royal (FA 97682, Nat. Arb. Forum Aug. 2, 2001), hereinafter referred to by the Panel as "Ultrafem", which Respondent contends is to the effect that "[w]here the assignee of a domain name is not properly reflected in the registrar records, the true assignee has standing as Respondent to file a response in a UDRP proceeding".

Second Respondent expressly pleads that it "does not dispute" the identicality of the domain name at issue to one of Complainant's registered marks, and implicitly pleads, at least to the extent that Complainant's first main set of contentions pertains to such identicality, that Respondent does not dispute those contentions.

Third, in response to Complainant's second main set of contentions, Respondent basically contends by way of two points that Respondent has rights or legitimate interests in respect of the domain name at issue in that, (i) by a perpetual and irrevocable license, made orally and by other communications and conduct (whereby Complainant, and Complainant's predecessor-in-title to Complainant's trademarks, consented to or acquiesced in (a) Respondent's registration of the domain name at issue, (b) Respondent's investing substantial money and effort in developing the corresponding website, and (c) Respondent's use of the domain name at issue, to sell Jaccard-branded products on-line), Respondent had and has a privilege to have registered, and had and has a privilege to use, said domain name, such that on this topic Complainant is barred in this proceeding, by either or both of the doctrine of estoppel or general doctrines of the law of equity, from contending or, in any event, from prevailing, against Respondent; and (ii) said contended perpetual and irrevocable license is (a) evidenced by Response Exhibits 1 supra, 4 supra,  6 (Sample invoices of sales of Jaccard products from Jaccard of Buffalo to Respondent), 7 (Invoice from D’Arata & Company to John Felgemacher),  8 (Declaration of David D’Arata),  and 9 (Email from Eric Wangler to John Felgemacher) and (b) in accordance with ten administrative panel decisions under the Policy and which Respondent cites and either quotes from or summarizes.

Fourth, in response to Complainant's third main set of contentions, Respondent basically contends that Respondent has registered said domain name, and is using said domain name, but that (in view of the exhibits, and the contended perpetual and irrevocable license, referred to in the immediately preceding paragraph hereof) such registration and use is not in bath faith.

Fifth, Respondent basically contends by way of three points that Complainant abused this proceeding and engaged in reverse domain name hijacking, in that (i) Complainant had full knowledge of said contended perpetual and irrevocable license; (ii) despite such knowledge, Complainant knowingly and intentionally withheld, from the Panel, material information as to said contended perpetual and irrevocable license; (iii) that such withholding was contrary to part of the certification required by Rule 3(b)(xiv) to appear as the closing paragraph of  the main body of a complaint and which does indeed appear in the Complaint, i.e. "that the information contained in this Complaint is to the best of Complainant's knowledge complete and accurate".

C. Complainant’s Additional Submission

In its Additional Submission, Complainant basically makes four main contentions.

First, by way of two points, that Respondent's contentions that John Felgemacher is the proper respondent to this proceeding do not avail, in that (i) Respondent's contended chain of title from GDC to John Felgemacher is contrary to headnote 3 of the Policy, which headnote provides that the Policy was entered into between, on the one hand, a domain name registrar and, on the other hand, whomever is both the domain name registrant and a prospective mandatory administrative proceeding respondent, i.e. GDC; and (ii) the Response was submitted in the name of John Felgemacher, and contains a self-serving and unsworn declaration by him as to his purported ownership of the registration of the domain name at issue (i. e. Response Exhibit 1, supra), and as a result the proper respondent, GDC, did not submit a response and the Panel should enter a default against GDC.

Second, by way of four points, that said contended perpetual and irrevocable license cannot avail John Felgemacher or any other person, in that (i) said contended perpetual and irrevocable license does not exist and that, rather than being consented to or acquiesced in by Complainant or by the predecessor-in-title to Complainant's trademarks, once aware of the ownership of the domain name at issue each of them has opposed Respondent's ownership thereof and has openly expressed discontent to Respondent about such ownership, trying for several years to obtain the domain name at issue; (ii) what is commonly referred to as the statute of frauds (as interpreted in D & N Boening v. Kirsch Beverages, 63 NY2d 449, (1984) and which the Panel hereinafter generally refers to as "Boening") requires a writing to memorialize contracts of indefinite terms and there is no such writing; (iii) Response Exhibit 1, supra, is a self-serving and unsworn declaration, by John Felgemancher, of little or no weight; and (iv) if a perpetual license of some sort was granted, it was  by Andre Jaccard who on behalf of said predecessor-in-title (without granting a privilege to use JACCARD as a domain name at <jaccard.com> or any other domain), merely stated verbally to John Felgemacher that John Felgemacher could advertise Jaccard meat tenderizers on the internet, and if granted it was revocable for cause and was revoked.

Third (basically in support of the first, second, and fourth contentions in the immediately preceding paragraph hereof as well as of bad-faith registration, and bad-faith use, by Respondent), that Complainant Additional Submission Exhibits A to G respectively comprise (a) the Declaration of Complainant's president and owner, Eric Wangler, who avers under oath as to Complainant Additional Submission Exhibits B to G (and, inter alia, that (i) shortly after said verbal statement by Andre Jaccard, John Felgemacher effected the registration of the domain name at issue and boasted that he thereby now held the keys to Jaccard Corporation and that any owner would have to pay him $50,000 to get the domain name back, (ii) John Fegelmacher's contention of investing substantial money and effort in developing the corresponding website is not true since approximately 90% of the content at said site has been taken verbatim from Jaccard Corporation marketing materials, (iii) from 1997 to the present date sales of Jaccard branded goods by way of the website operating at <jaccard.com> amounted to $4,559.15 whereas during the same period Jaccard Corporation's annual sales total approximately $1.1 million, and (iv) Complainant, and Andre Jaccard before it, have repeatedly attempted to obtain control of the domain name at issue by various means such as requests, demands, and other inducements but to no avail); (b) an e-mail dated 18 April 2002 from John Felgemacher to Eric Wangler, threatening Eric Wangler of Jaccard Corporation; (c) a copy of a letter, dated 30 April 1999 (i.e. less than one year after the domain name at issue was registered by Respondent), from Andre Jaccard to John Felgemacher, notifying John Felgemacher that he must release the disputed domain name <jaccard.com> to Jaccard Corporation; (d) a copy of  letter, dated 30 April 1999, from Andre Jaccard's then-counsel to John Felgemacher, which letter both provided that said counsel was surprised to learn that John Felgemacher was using the domain name at issue and clearly demonstrates that John Felgemacher did not have authorization to use the domain name at issue; (e) a copy of a letter, dated 29 September 1999, from Andre Jaccard to John Felgemacher, stating that John Felgemacher was no longer an authorized distributor of Jaccard brand goods, that at least as early as September 1999 John Felgemacher had promised and failed to shut down the website associated with the domain name at issue, and threatening legal action against John Felgemacher for John Felgemacher's misuse of the JACCARD trademark; (f) an exchange of e-mails, taking place on 22 December 2002 and 2 January 2003, between Eric Wangler of Jaccard Corporation and <zzBusiness.com>, an on-line business portal, informing the operator of said portal that the website at <jaccard.com> is not related to Jaccard Corporation and asking that said portal operator change the link to <jaccardweb.com>, the official website of Jaccard Corporation;  and (g) an undated printout from the website at <jaccard.com> suggesting it is the official website of Jaccard Corporation.

Fourth, as to reverse domain name hijacking, that Complainant did not engage in it, as indicated by the contentions described in the immediately preceding three paragraphs.

D. Respondent’s Additional Submission

In its Additional Submission, Respondent basically makes five main contentions.

First, as to John Felgemacher being the proper respondent, Complainant's Additional Submission concedes to John Felgemacher's being, since 1998, the owner and user of the domain name at issue.

Second, that in view of Complainant's having stated in Complainant's Additional Submission that Response Exhibit 1 is unsworn, substitute evidence for Response Exhibit 1 comprises John Felgemacher's sworn declaration, attached as Respondent Additional Submission Exhibit 1 and which evidences what Response Exhibit 1 had evidenced plus further testimony relevant to issues raised by Complainant's Additional Submission.

 

Third, that said further testimony is that (as evidenced by credit card statements attached as an exhibit to Respondent Additional Submission Exhibit 1), along with a company owned by Eric Wangler, Complainant and the predecessor-in-title of Complainant's trademarks supplied John Felgemacher with Jaccard branded products in 2000 and 2001 and those products totaled approximately $17,000 and were in turn sold through <jaccard.com>, evidencing Complainant's and said predecessor-in-title's recognition of and acquiescence in said contended perpetual and irrevocable license.

Fourth, that on 7 May 1999 and 5 October 1999 John Felgemacher replied to the letters from Andre Jaccard referred to in Complainant's Additional Submission, copies of which letters from John Felgemacher are Respondent Additional Submission Exhibit 2 and evidence said contended perpetual and irrevocable license.

Fifth, basically, that the statute of frauds is inapplicable to said contended perpetual and irrevocable license whereas the administrative panel decision in Gorstew Limited, Jamaica, and Unique Vacations v. Twinsburg Travel, FA 94944 (Nat. Arb. Forum July 7, 2000), which the Panel hereinafter refers to as "Gorstew", is applicable or, alternatively, that to the extent that both Gorstew and the statute of frauds apply and conflict, Gorstew prevails over the statute of frauds to the extent of that conflict.

FINDINGS

The Panel finds

(i)                  the domain name at issue <jaccard.com> is registered to Respondent, there are United States Trademark Registrations No. 1,172,879 as to JACCARD and No. 1,216,431 as to IT’S JACCARDIZED, and in which Complainant has rights, and the domain name at issue is either or both of identical or confusingly similar thereto;

(ii)                Respondent has no rights or legitimate interests in respect of the domain name at issue; and

(iii)              the domain name at issue has been registered and is being 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 and 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:

(i)                  the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii)                the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii)              the domain name has been registered and is being used in bad faith.

In view especially of Rule 15(a), the Panel notes four rules and principles of law that it especially deems applicable to ascertaining whether each of those three elements has been proven. First, that

Both [dispositive] and evidential facts must, under the law, be ascertained in some one or more of four possible modes: 1. By judicial admission (what is not disputed); 2. By judicial notice, or knowledge (what is known or easily knowable); 3. By judicial perception (what is ascertained directly through the senses; cf. "real evidence"); 4. By judicial inference (what is ascertained by reasoning from facts already ascertained by one or more of the four methods here outlined).[1]

 

Second, especially as to mode "3", that Rule 10(d) provides that "The Panel shall determine the admissibility, relevance, materiality and weight of the evidence." Third, as to construing and applying Rule 10(d), especially as to whether mode "1" rather than mode "3" applies: a complainant’s pleading of fact that is not disputed (or, phrased differently, not "put in issue") by a respondent against whom it is contended, is an admission by that respondent,[2] so evidence tendered as being rationally probative of (i.e. as being "relevant to") establishing that fact becomes immaterial, and hence inadmissible, as to establishing that fact.[3] Fourth, as to whether mode "2" rather than either of mode "1" or mode"3" applies, a canvassing of law and commentary shows that

It was not desirable, nor indeed possible, to foreclose the trier's use of background information but should the matter noticed be in the forefront of the controversy, should the fact be determinative, the law protected the adversary by insisting that the matter be so commonly known, and hence indisputable, that its notice could not prejudice the opponent.[4]

and that "The party who has the burden of proof on the issue may have to call on the trier to judicially notice the fact when it comes time to analyze the question."[5]

Also in view especially of Rule 15(a), the Panel notes three rules and principles of law that it especially deems applicable to ascertaining whether each of the three elements of Policy paragraph 4(a) has been proven. First,[6] that laws are rules of human conduct that have the following three attributes: they (i) are established by people who have and use law-making power; (ii) are enforceable by people acting as or through a nation-state (e.g. courts); and (iii) define what facts are dispositive of legal relations. Second,[7] that, at least in common-law nation-states, law basically comprises those rules of human conduct, in and as to the following ascending hierarchy: rules of the common law, rules of the law of equity, rules of enacted law (i.e. enactments), and rules (from whatever source) of constitutional law. Third,[8] rules of the common law and rules of the law of equity, as well as some rules of constitutional law, are commonly referred to as judge-made law in the sense of being "the law established by judicial precedent and decisions … [and] … having their source in judicial decisions as opposed to laws having their source in statutes or administrative regulations."

 

What then, of the Policy, rules made under the Policy, and administrative panel decisions made under the Policy and under such rules? It is basic that neither the Policy nor rules made under the Policy are law.[9] (Moreover, there are court decisions to that effect.[10]) As well, this Panel agrees with earlier administrative panel decisions under the Policy that "as general rule, it is desirable to have conformity with the decisions of earlier panels in relation to the same or closely similar facts"[11] and that "[i]n this process, we should look to prior panel decisions to offer guidance, and, to the extent reasonable, we should attempt to harmonize our decisions with those of prior panels"[12] and be "reluctant to point up areas of disagreement with other panels dealing with other sets of facts".[13] However, consistently with neither the Policy nor rules made under the Policy being law, it appears that administrative panel decisions under the Policy are not law and that there is not any enactment, or adjudication, or convincing learned commentary, to the contrary. Indeed, previous administrative panel decisions under the Policy have included that decisions by previous panels "are not binding"[14] and that "the principle of stare decisis does not apply in these proceedings and that the Panel is not bound by decisions reached by earlier panels".[15]

PROCEDURAL ASPECTS

Considering, or Not Considering, Various Submissions

Except for the following, neither Party’s Additional Submission permissibly provides anything pertinent that, in view of the Complaint and the Response, was not already apparent to the Panel as being at issue in this proceeding or as being the responsibility of the Panel: (i) Complainant Additional Submission contentions concerning (a) John Felgemacher not being the proper respondent, (b) the contended perpetual and irrevocable license and the interaction thereof with contended revocation and with the statute of frauds, and (c) reverse domain name hijacking; and (ii) Respondent Additional Submission contentions concerning the interaction of the statute of frauds with Gorstew and with the contended perpetual and irrevocable license.

As for Additional Submissions considered by the Panel, in this proceeding it was in the Response that Respondent first asserted to Complainant that (i) John Felgemacher is a proper party to this proceeding; (ii) Respondent has said contended perpetual and irrevocable license; and (iii) Complainant engaged in reverse domain name hijacking. Even if a prospective complainant is aware that a prospective respondent is or might be of the view that in relation to the complainant a particular person has interests (e.g. as to standing, or a license, or against reverse domain name hijacking), the complainant may not necessarily be of the same view, and it is a basic principle of making submissions, which principle does not conflict with the Rule 3(b)(xiv) requirement of certification of completeness and accuracy, that a complainant's submissions in proceedings such as this (as contrasted with e.g. an ex parte proceeding) not expressly anticipate any of a respondent's defenses in factual detail or as to the law; it is up to a respondent to defend themselves rather than, for example, a complainant to raise and then wholly or partially rebut possible defenses that the respondent might raise. Similarly, in this proceeding it was in Complainant's Additional Submission that Complainant first asserted to Respondent each of the following: (i) if John Felgemacher was licensed it was only to advertise Jaccard meat tenderizers on the Internet (rather than to register and use JACCARD as a domain name at <jaccard.com> or any other domain), and that such license had been revoked; and (ii) that the statute of frauds is a defense against Respondent's contended perpetual and irrevocable license.

As for Additional Submissions not considered by the Panel, Complainant's Additional Submission as to Response Exhibit 1 (i.e. that it is a self-serving and unsworn declaration and is therefore of little or no weight) is clearly on a topic that is apparent to the Panel as already being the responsibility of the Panel. Similarly, Respondent's Additional Submission of, and as to, sworn evidence to substitute for John Felgemacher's unsworn declaration, and which evidence is made part of Respondent Additional Submission as Exhibit 1, is an attempt to amend the Response, and therefore is clearly contrary to the Forum's Supplemental Rule 7(d) which provides that "Additional submissions and responses to additional submissions may not amend the original Complaint or Response." (The same is not true, however, of the submissions of and as to Respondent Additional Submission Exhibit 2 or of and as to the last few paragraphs of Respondent Additional Submission Exhibit 1 and the attachments to that Exhibit 1.) Several administrative panel decisions under the Policy include statements, whether as to evidence or otherwise, that the Parties are expected to "get it right the first time".[16]  In view of all of the above, the Panel prefers to apply that approach to the newly-sworn quality of the re-submitted parts of Respondent Additional Submission Exhibit 1, but neither as to procedural aspects nor as to substantive aspects of this case has that preference affected the outcome of this case: on each topic Complainant prevails either way.

As well, each Party's Additional Submission to some extent repeated that Party's original submission, and the Panel has endeavored to neither set out nor consider such repetition.

Proper Respondent

On this topic, this case appears to have more in common with America Online, Inc. v. Informatics, Inc., FA 104570 (Nat. Arb. Forum March 15, 2002) (finding that a submission by an entity other than the entity who registered the disputed domain name was inadmissible in the proceeding) and Broadcom Corp. v. Philippines Online c/o InfoDyne, FA 96683 (Nat. Arb. Forum March 20, 2001) (stating "[t]here is no obligation under the Policy to recognize any party other than the holder of the domain name registration") than with Ultrafem.

However, even taking John Felgemacher as Respondent, Complainant still prevails in the substantive aspects of this proceeding.

Reverse Domain Name Hijacking

In view of the Panel's disposition of the substantive aspects of this proceeding, the Panel dismisses the request for a declaration of reverse domain name hijacking.

SUBSTANTIVE ASPECTS

Identical or Confusingly Similar

As for Policy paragraph 4(a)(i), Respondent basically does not take issue with Complainant's contentions. On this topic, those contentions are therefore admitted by Respondent and Complaint Exhibits A to H are therefore immaterial and hence inadmissible.

In view of the immediately preceding paragraph hereof, the Panel finds that Policy paragraph 4(a)(i) is proven: the domain name at issue <jaccard.com> is registered to Respondent, there are United States Trademark Registration Nos. 1,172,879 (issued 13 October 1981, for the mark JACCARD in International Class 7 for a meat tenderizer machine) and 1,216,431 (issued 16 November 1982, for the mark IT’S JACCARDIZED in International Class 8 for a meat tenderizer in the nature of a hand tool), and in which Complainant has rights, and said domain name is identical thereto.

Rights or Legitimate Interests

Even if the Panel were to allow Respondent's attempted substitution of sworn evidence for unsworn evidence, Complainant still prevails on this topic.

The context in which this part of this discussion occurs includes (i) Policy paragraph 4(c); (ii) consent or acquiescence; (iii) the applicable statute of frauds along with court decisions thereunder and the relationship of administrative panel decisions thereto; and (iv) administrative panel decisions as to burden of production.

Policy Paragraph 4(c)

Policy paragraph 4(c) is basically directed from a domain name registrar to a domain name registrant and prospective mandatory administrative proceeding respondent, and includes that

When you receive a complaint, you should refer to [Rule 5] in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of [Policy paragraph] 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

(See endnote 2 hereof for some provisions of Rule 5.)

As for Policy paragraphs 4(c)(iii) and 4(c)(ii), neither of them appears to be contended for or against by evidence in this proceeding.

As for Policy paragraph 4(c)(i), and the preamble of Policy paragraph 4(c), they appear to be contended for or against by evidence in this proceeding, i.e. by evidence for or against Respondent's contended perpetual and irrevocable license.

Even conflicting evidence is no bar to resolution of disputes that are submitted to a mandatory administrative proceeding under the Policy; see e.g. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., D2000-1525 (WIPO Jan. 29, 2001) citing both Electronic Commerce Media, Inc. v. Taos Mountain, FA 95344  (Nat. Arb. Forum Oct. 11, 2000) and Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000).

Consent or Acquiescence

Neither consent to, nor acquiescence in, Respondent's contended perpetual and irrevocable license appears to have occurred in this case.

In Allen-Edmonds Shoe Corporation v. Takin’ Care of Business, D2002-0799 (WIPO Oct. 10, 2002), includes, with underlining added herein, that

even where a reseller is an authorized reseller, without a specific agreement between the parties, the reseller does not have the right to use the licensor’s trademark as a domain name. Nikon, Inc. and Nikon Corporation v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2001); 2 T.J. McCarthy, McCarthy on Trademarks and Unfair Competition, § 18:52 (4th Ed. 2000) ("licensee’s use [of a mark] inures to the benefit of the licensor-owner of the mark and the licensee acquires no ownership rights in the mark itself."). Thus, even if Respondent is acting on behalf of an "authorized" dealer (indeed, even if Respondent were itself an authorized dealer), its use of Complainant’s mark would not be legitimate absent a specific agreement between Complainant and Respondent to the contrary. There is no evidence of such an agreement here. The Panel finds that Complainant has shown that Respondent has no legitimate interest in the domain name.

 

As in that case, so too in this case: there is no evidence of an agreement between Complainant and Respondent whereby Respondent has either or both of a privilege to have registered, and a privilege to use, the mark that is the subject of one or more of Complainant's trademarks as a domain name. Nor is there any evidence that Respondent has obtained either or both of such types of privilege by any other means.

This case is much like Galatasaray Spor Kulubu Dernegi, Galatasaray Pazarlama A.S., Galatasaray Sportif Sinai Ve Ticari Yatirimlar A.S. v. Maksimum Iletisim A.S. D2002-0726 (WIPO October 15, 2002). That case illustrates that a prospective complainant's co-operation with a prospective respondent, regarding the disputed domain name and that prospective respondent's then-extant website, does not necessarily result in acquiescence by that prospective complainant. As stated in part 6 thereof as to Policy paragraph 4(c), the evidence in that case (over an approximately two year period and including the complainant's having on at least one occasion expressly "approved" that website) indicated to the panel in that case that "[t]hroughout the period in question the Respondent knew perfectly well that the Complainant objected to the Respondent's ownership of the Domain Name and was calling for its transfer" and that "there was still a live dispute over the ownership of the Domain Name and no acquiescence on the part of the Complainant. That being the case, notwithstanding the co-operation between the parties, the Respondent still has a case to answer."

Statute of Frauds, Court Decisions Thereunder, and the Relationship of Administrative Panel Decisions Thereto

Complainant appears to be the first disputant, in a proceeding under the Policy, to have pleaded a statute of frauds; indeed, there do not appear to be any previous reasons for decision, under the Policy, even mentioning a statute of frauds.

If a statute of frauds is potentially applicable as a result of Complainant's pleading, it is New York General Obligations Law §5-701, subdivision a, paragraph 1,[17] which is as follows:

Every agreement, promise or undertaking is void, unless it or some note or memorandum thereof be in writing, and subscribed by the party to be charged therewith, or by his lawful agent, if such agreement, promise or undertaking:

                        1. By its terms is not to be performed within one year from the making

thereof or the performance of which is not to be completed  before the end of a lifetime[.]

The Panel notices Cron v. Hargro Fabrics, which includes[18] that

[t]he Statute of Frauds was originally rooted in the prevention of "fraud in the proving of  certain legal transactions particularly susceptible to deception, mistake and perjury" (Boening, Inc. v Kirsch Beverages, supra, 63 NY2d, at 453) but not "'to afford persons a means of evading just obligations'" (Cohon & Co. v Russell, 23 NY2d 569, 574, quoting 4 Williston, Contracts, § 567A, pp 19 20 [3d ed.]).

(Boening was, of course, expressly referred to in Complainant's Additional Submission.)

 

The Panel also notices that Cron also includes[19] that

New York law provides that an agreement will not be recognized or enforceable if it is not in writing and "subscribed by the party to be charged therewith" when the agreement "by its terms is not to be performed within one year from the making thereof ..." (General Obligations Law § 5 701[a][1]). We have long interpreted this provision of the Statute of Frauds to encompass only those contracts which, by their terms, "have absolutely no possibility in fact and law of full performance within one year" (Boening, Inc. v Kirsch Beverages, 63 NY2d 449, 454). As long as the agreement may be "fairly and reasonably interpreted" such that it may be performed within a year, the Statute of Frauds will not act as a bar however unexpected, unlikely, or even improbable that such performance will occur during that time frame (Warren Chem. & Mfg. Co. v Holbrook, 118 NY 586, 593; see also, Kent v Kent, 62 NY 560, 564; Nat Nal Serv. Stations v Wolf, 304 NY 332, 335; North Shore Bottling Co. v Schmidt & Sons, 22 NY2d 171, 175; Shirley Polykoff Adv. v Houbigant, Inc., 43 NY2d 921, 922 [contract "which by its terms [could] be performed within a year *** would be without the statute even if, as a practical matter, it were well nigh impossible of performance within a year"]; Boening, Inc. v Kirsch Beverages, supra, 63 NY2d, at 455 [statute will not bar agreement where "there might be any possible means of performance within one year *** in whatever manner and however impractical"]).

The Panel further notices Romaine v. Colonial Tanning Corporation et al.,[20] which includes and applies the statement[21] that "[a]n agreement that cannot be performed within one year is void under the statute of frauds unless it is in writing and subscribed by the party to be charged". Romaine also includes accurate summary, and apt application, of two cases. First, at 2 to 3, that "whenever the option of terminating the contract is not an option retained by the party, but instead, a breach of the agreement, the statute of frauds applies (see D & N Boening v. Kirsch Beverages, [63 NY2d 449] at 456)". Second, at 4, that "full performance by both parties generally must be possible within a year to remove the contract from the statue of frauds (see Cron v. Hargro Fabrics, 91 NY2d 362 …) … [and that in Romaine] [t]he oral agreement … cannot be performed within one year and, accordingly, is void under the statute of frauds." The Panel also notices that Romaine was a case, like the case at hand, of a type in which it is relatively rare for the Statute Of Frauds to be pleaded in that, as is stated in Romaine,[22] "the existence of an underlying oral agreement is in dispute since the complainant-corporation denies an agreement was ever reached and, thus, all terms of the contract are based on" Respondent's allegations.

There is well-established New York case-law (similar to case law in other jurisdictions) requiring that for that statute of frauds to be satisfied the acts have to be "unequivocally referable to" the contended contract, in the sense of being "unintelligible or at least extraordinary" except by reference to the contended contract.[23] The acts in this case do not meet that test. Although the invoices in Respondent's Additional Submission were of some concern to the Panel, ultimately they are not unequivocally referable to Respondent's contended perpetual irrevocable license; they appear to be, for example, referable to point "iv" of the second main contention in Complainant's Additional Submission as set out above, and to point "iv" of item "a" in the third main contention in that same Additional Submission. (Point "iv" of that second main contention is that if a perpetual license of some sort was granted, it was by Andre Jaccard who on behalf of said predecessor-in-title-- without granting a privilege to use JACCARD as a domain name at <jaccard.com> or any other domain-- merely stated verbally to John Felgemacher that John Felgemacher could advertise Jaccard meat tenderizers on the internet, and if granted it was revocable for cause and was revoked. Point "iv" of item "a" of that third main contention is as to the contents of the sworn declaration of Complainant's president and owner, Eric Wangler; that point is that Complainant, and Andre Jaccard before it, repeatedly attempted to obtain control of the domain name at issue by various means such as requests, demands, and other inducements but to no avail and that instead, as stated in paragraph 25 of Eric Wangler's affidavit, John Felgemacher has placed orders for Jaccard products from a local distributor in Buffalo, New York.) Moreover, Complainant sales appear to be on the order of millions of dollars over the last several years, so some spillage corresponding to Respondent sales on the order of a couple of tens of thousands of dollars in the earlier part of that time would be understandable even if, as stated at page 5 of Complainant's Additional Submission, "Complainant has attempted to prevent Felgemacher form acquiring its products for resale". (In any event, such spillage would not confer Respondent's contended perpetual and irrevocable license. The evidence, i.e. the last two paragraphs of John Felgemacher's sworn declaration, indicates that only approximately $5,000 of the re-sales, and then only in the year 2000, were through the website at <jaccard.com>.) Instead, despite some degree of co-operation, there was, to use an expression from Galatasaray, supra, a "live dispute".

What, it might be asked, of defences against applying the statue of frauds? There appear to be conflicting views, expressed in and applied by administrative panel decisions under the Policy, as to whether various doctrines, such as the doctrine of estoppel, or such as general or other doctrines from the law of equity, can be applied in administrative panel decision-making under the Policy. That said, however, Respondent's contended defenses against the Statute of Frauds, such as equitable estoppel, do not apply in this case because there appears to be no evidence that Complainant was engaged in any conduct inducing or allowing Respondent to proceed such that Complainant should be estopped from asserting the Statute of Frauds against said contended perpetual and irrevocable license.[24]

The Panel finds that, within the meaning of the Statute of Frauds expressions quoted in the remainder of this sentence (and especially in the sense that respective ones of said expressions have in whole or in part been interpreted in the above-cited New York court decisions), Respondent's contended perpetual and irrevocable license has the following five attributes: (i) it is a contended "promise or undertaking" or is part of a contended "agreement"; (ii) neither "it" nor "some note or memorandum thereof" is "in writing"; (iii) it is not "subscribed by the party to be charged therewith, or by his lawful agent"; (iv) it "[b]y its terms is not to be performed within one year from the making thereof or the performance of which is not to be completed  before the end of a lifetime"; and  (v) in view of the first four enumerated points of this sentence, if it does indeed exist, it is, as a result of the Statute of Frauds, "void" and in this proceeding, as stated in Cron, supra, "will not be recognized or enforceable".

The Panel also finds that for the Panel to rule that if the contended-for perpetual and irrevocable license does indeed exist, and that pursuant to Statute of Frauds it is neither recognized nor enforceable, is in accordance with the purpose of that statute as stated in Cron, supra: "prevention of 'fraud in the proving of  certain legal transactions particularly susceptible to deception, mistake and perjury'" (citing Boening) without "'afford[ing] persons a means of evading just obligations'" (citing Cohon & Co. v Russell quoting Williston on Contracts).

Administrative Panel Decisions as to Burden of Production

Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) includes that when, as in this case, "the complainant has made a prima facie showing, the burden of production shifts to the respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue" (emphasis in original). To similar effect see e.g. Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002) and Twentieth Century Fox Film Corp. v. Benstein, FA 102962 (Nat. Arb. Forum Feb. 27, 2002).

Summary

In view of all of the above, the Panel finds that the burden of production shifted to Respondent but that on this topic Respondent has not met it. Accordingly, the Panel finds Respondent has "no rights or legitimate interests in respect of the domain name" within the meaning of that expression as it occurs in Policy paragraph 4(a)(ii).

In view of the immediately preceding paragraph hereof, the Panel finds that Policy paragraph 4(a)(ii) is proven.

Registration and Use in Bad Faith

The context in which resolution of the issue occurs also includes Policy paragraph 4(b).

Policy paragraph 4(b) is basically directed from a domain name registrar to a domain name registrant and prospective mandatory administrative proceeding respondent, and includes that

For the purposes of [Policy paragraph] 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.

As for each of Policy paragraphs 4(b)(i), 4(b)(ii), and 4(b)(iii), they basically define respective types of bad-faith registration and provide that if any one of such types of registration has been ascertained by a panel then bad-faith use is in turn evidenced via application of the respective one of those three provisions.

As for Policy paragraph 4(b)(iv), it basically defines a type of bad-faith use and provides that if such type of use is ascertained by a panel then bad-faith registration is in turn evidenced via application of that provision.

In this proceeding, Policy paragraph 4(b)(ii) appears to not be contended for.

However, in this proceeding, Policy paragraphs 4(b)(i), 4(b)(iii), and 4(b)(iv) appear to be contended for by Complainant.

In response, Respondent basically repeats various of Respondent's Policy paragraph 4(a)(ii) contentions, but they are as inapplicable on this topic as they were to Policy paragraph 4(a)(ii). Moreover, the Statute of Frauds standard of "unequivocally referable to", is long-extant, clear, and widely known; especially in view of it, and of the evidence submitted in this case, Respondent cannot seriously be contended to have not registered, and not be using, the domain name at issue in Policy paragraph 4(a)(iii) "bad faith".

Furthermore, there is the matter of initial interest confusion. Entry of Complainant's mark will result in visits not only to Complainant's website (referred to in uncontested Complaint contention "(i)" of Complainant's third main set of contentions) but also to Respondent's website which resolves through the domain name at issue. See e.g. Madonna Ciccone p/k/a Madonna v. Dan Parisi and ‘Madonna.com’, D2000-0847 (WIPO Oct. 12, 2000), which is extensively cited and applied for the proposition that even

Respondent's use of a disclaimer on its website is insufficient to avoid a finding of bad faith.  First, the disclaimer may be ignored or misunderstood by Internet Users.  Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent's actions.  Such confusion is a basis for finding a violation of Complainant's rights.

 

Similarly see e.g. The Prudential Insurance Company of America v. Prudential Mortgage Loans, FA 103880 (Nat. Arb. Forum March 20, 2002), which includes that the "fact that the Internet user ultimately discovers that a site is not that of Complainant, or that Respondent disclaims any association with Complainant, does not cure the fault".

In view of the immediately preceding eight paragraphs hereof, the Panel finds that Policy paragraph 4(a)(iii) is proven.

DECISION

All three elements required under the ICANN Policy having been established, the Panel concludes that the requested relief shall be GRANTED.

Accordingly, it is Ordered that the <jaccard.com> domain name be TRANSFERRED from Respondent to Complainant.

                                                                                                For the Panel

 

 

                                                                       

                                                                                                Robert R. Merhige, Jr., Chair

                                                                                                U.S.D.J. (Ret.)

                                                                                                June 19, 2003

 

 

      This Opinion, authored by Panelist Rodney C. Kyle, is concurred in by Panelist Robert R. Merhige, Jr.   Panelist David E. Sorkin Dissents.

 

 

DISSENTING OPINION

 

I respectfully dissent.

 

To prevail under the Policy, Complainant must prove, inter alia, that the disputed domain name was registered in bad faith.  The disputed domain name in this proceeding was registered and has been used over a period of years for the purpose of marketing genuine goods bearing Complainant’s trademark.  It is an unsettled legal question whether a distributor or reseller of such goods may legally use the trademark in or as an Internet domain name without permission from the trademark owner.  Compare Ty Inc. v. Perryman, 306 F.3d 509 (7th Cir. 2002), with PACCAR Inc. v. TeleScan Technologies, L.L.C., 319 F.3d 243 (6th Cir. 2003).  But even if the courts ultimately make it clear that such use is foreclosed by trademark laws, it most certainly cannot be said that the registration of a domain name for this purpose back in 1998 was an act of bad faith.  See MatchMaker International Development Corp. v. Kaiser Development Corp., FA 146933 (Nat. Arb. Forum May 9, 2003) (Sorkin, dissenting) (bad faith not present where respondent registered a domain name for purposes it reasonably believed were legitimate).

 

Furthermore, at the time of registration, Respondent or its client apparently was an authorized distributor of Complainant’s products.  While the existence of such authority is not essential to Respondent’s position, it lends further support to the view that the registration was not in bad faith.  If Complainant revoked such authority that could, of course, affect Respondent’s present rights or interests in the domain name, but it would not retroactively transform the 1998 registration into an act of bad faith.

 

I would dismiss the Complaint.

            David E. Sorkin, Panelist