Unified Brands, Inc. v. John Paul / International Chef Solutions
Claim Number: FA1406001563720
Complainant is Unified Brands, Inc. (“Complainant”), represented by David L. Johnson of Butler Snow LLP, Tennessee, USA. Respondent is John Paul / International Chef Solutions (“Respondent”), represented by Alan Schuster, Illinois.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue, numbered in accordance with the Amended Complaint (“the Domain Names”), all of which are registered with GODADDY.COM, LLC are:
1. <groenbraisingpan.com>
2. <groenbraisingpan.net>
3. <groencombiovens.com>
4. <groencommercialequipment.com>
5. <groencommercialequipment.net>
6. <groenintek.com>
7. <groenkettle.asia>
8. <groenkettle.net>
9. <groenkettles.co>
10. <groenpartsdirect.com>
11. <groensteamers.com>
12. <groensteamers.net>
13. <groenkettle.com>
14. <groenkettles.com>
15. <groenbrandproducts.com>
16. <groenahkettles.com>
17. <randellfoodpreptables.com>
18. <randellpizzapreptables.com>
19. <randellrefrigeration.com>
20. <groencook-chill.com>
21. <groencookchill.com>
22. <groendeekettles.com>
23. <groendhkettles.com>
24. <groendirectorder.com>
25. <groenee.com>
26. <groeneekettles.com>
27. <groenfoodserviceequipment.com>
28. <groenhy-3.com>
29. <groenhy-6.com>
30. <groenhypersteam.com>
31. <groenhypersteamer.com>
32. <groeninakettles.com>
33. <groeninteksteamers.com>
34. <groenkettle.biz>
35. <groenkettle.info>
36. <groenkettles.biz>
37. <groenkettles.net>
38. <groenkettles.org>
39. <groenkettlesdirect.com>
40. <groenkitchenequipment.net>
41. <groenmilitary.com>
42. <groenmilitarykettles.com>
43. <groenmilitaryproducts.com>
44. <groennavykettles.com>
45. <groenproducts.com>
46. <groenrestaurantequipment.com>
47. <groenrestaurantequipment.net>
48. <groenscraperblades.com>
49. <groensmartsteam.com>
50. <groenssb.com>
51. <groentdb.com>
52. <groentdbkettles.com>
53. <usedgroenkettles.com>
54. <usedgroenkettles.net>
55. <groenscraperblades.net>
56. <groenmanuals.com>
57. <groenbraisingpans.com>
58. <groenkitchenequipment.com>
59. <groensteamer.com>
60. <capkoldkettle.com>
61. <capkoldkettles.com>
62. <groencapkold.com>
63. <groenprocess.com>
64. <groenprocessequipment.com>
65. <groenprocessingkettles.com> and
66. <groentanks.com>.
PANEL
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Mark McCormick Esq., Christopher Gibson Esq., and Alan L. Limbury Esq., as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 10, 2014. The National Arbitration Forum received payment on June 10, 2014.
On June 11, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the Domain Names are registered with GODADDY.COM, LLC and that Respondent is the current registrant of the Domain Names. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, LLC 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 June 11, 2014, the Forum notified Complainant of certain deficiencies in the Complaint requiring rectification. That day Complainant submitted an Amended Complaint.
On June 12, 2014, the Forum served the Amended Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 2, 2014 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, separately, to postmaster@[each of the Domain Names]. Also on June 12, 2014, 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 July 2, 2014.
Complainant submitted a timely Additional Submission on July 7, 2014.
Respondent submitted a timely Additional Submission on July 11, 2014.
On July 11, 2014, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Mark McCormick Esq., Christopher Gibson Esq., and Alan L. Limbury Esq., as Panelists.
On July 16, 2014 the Panel issued a procedural order requesting Complainant to provide to the Forum, by email no later than July 23, 2014, a copy of all pleadings filed by any party in Complainant’s recently commenced Mississippi court proceeding. The order also extended the time for the Panel to render its decision until further order.
On July 16, 2014 Complainant complied with the order. This revealed that on June 27, 2014 Complainant commenced proceedings against Design & Processing Resources, Inc., claiming breach of contract in relation to allegedly unpaid invoices.
Complainant requests that the Domain Names be transferred from Respondent to Complainant.
Complainant manufactures and markets foodservice equipment for chefs and foodservice operations under United States federally registered trademarks GROEN (No. 891,131, registered May 19, 1970), RANDELL (No. 1,292,102, registered August 28, 1984) and CAP KOLD (No. 1,091,370, registered May 16, 1978). Complainant is also the registrant of the <groen.com> and <randell.com> domain names.
For many years Respondent, through Design & Processing Resources, Inc. (“DPR”), a company formed by Respondent in 2004, and through Chef Mart, Inc. (“CMI”), a company formed by Respondent in 2011, resold Complainant’s GROEN and RANDELL goods to restaurants and other foodservice operations as a distributor of products in the foodservice industry.
Respondent registered the Domain Names on the following dates (showing in parentheses the numbers accorded to them in the Amended Complaint):
April 10, 2006: <groenkettles.com> (14)
April 18, 2006: <groenkettle.com> (13)
February 24, 2009: <groensteamers.com> (11)
March 26, 2009: <groenbraisingpan.com> (1)
<groenbraisingpan.net> (2)
<groencommercialequipment.com> (4)
<groencommercialequipment.net> (5)
<groendirectorder.com> (24)
<groenkitchenequipment.net> (40)
<groenrestaurantequipment.com> (46)
<groenrestaurantequipment.net> (47)
<groenkitchenequipment.com> (58)
March 27, 2009: <groenkettle.net> (8)
<groensteamers.net> (12)
April 17, 2009: <groenscraperblades.com> (48)
<groenscraperblades.net> (55)
April 21, 2009 <usedgroenkettles.com> (53)
<usedgroenkettles.net> (54)
<groenmanuals.com> (56)
September 8, 2009: <groenpartsdirect.com> (8)
September 13, 2009: <groenprocessequipment.com> (64)
September 23, 2009: <groenproducts.com> (45)
February 3, 2010: <groencombiovens.com> (3)
<groenhypersteamer.com> (31)
<groenbraisingpans.com> (57)
February 18, 2010: <groenfoodserviceequipment.com> (27)
February 19, 2010: <groenbrandproducts.com> (15)
July 27, 2010: <groenkettles.co> (9)
December 17, 2010: <groenkettle.asia> (7)
January 3, 2011: <groenhypersteam.com> (30)
<groensteamer.com> (59)
February 23, 2011: <groencook-chill.com> (20)
<groencookchill.com> (21)
August 9, 2011: <groenprocess.com> (63)
<groenprocessingkettles.com> (65)
November 24, 2011: <groencapkold.com> (62)
December 14, 2011: <capkoldkettle.com> (60)
<capkoldkettles.com> (61)
January 15, 2012: <groenkettle.biz> (34)
<groenkettle.info> (35)
<groenkettles.biz> (36)
<groenkettles.org> (38)
February 13, 2012: <groeninteksteamers.com> (33)
<groensmartsteam.com> (49)
<groenssb.com> (50)
February 14, 2012: <groenahkettles.com> (16)
<groendeekettles.com> (22)
<groendhkettles.com> (23)
<groeneekettles.com> (26)
<groentdbkettles.com> (52)
March 2, 2012: <groentanks.com> (66)
March 5, 2012: <groentdb.com> (53)
<groenee.com> (25)
<groenhy-3.com> (28)
<groenhy-6.com> (29)
September 25, 2012:<groenmilitary.com> (41)
<groenmilitarykettles.com> (42)
<groenmilitaryproducts.com> (43)
<groennavykettles.com> (44)
March 30, 2013: <groenintek.com> (6)
June 23, 2013: <randellfoodpreptables.com> (17)
<randellrefrigeration.com> (19)
July 4, 2013 <randellpizzapreptables.com> (18)
July 23, 2013: <groenkettlesdirect.com> (39)
February 2, 2014: <groeninakettles.com> (32)
March 28, 2014: <groenkettles.net> (37)
At the time of registration of the Domain Names, Respondent was offering GROEN and RANDELL goods with Complainant’s permission. That permission was withdrawn when Complainant terminated the relationship on June 3, 2014.
A. Complainant
1. Complainant says the Domain Names are confusingly similar to Complainant’s trademarks and that Respondent does not have any rights or legitimate interests in the Domain Names, which were registered and are being used in bad faith.
Identity or confusing similarity
2. There is no dispute over this issue.
Rights and legitimate interests
3. Complainant says Respondent is not commonly known by “Groen,” “Cap Kold,” or “Randell.” He has simply sold the GROEN brand (along with other brands) while operating under the CMI and DPR names. Complainant does not believe that Respondent has ever resold any of Complainant’s CAP KOLD products.
4. Apparently beginning in 2006, Respondent began acquiring the Domain Names without Complainant’s knowledge or consent. Respondent has not made use of 7 of these 66 Domain Names (Nos. 60-66).
5. Respondent created websites on other Domain Names that marketed GROEN and RANDELL products but which, by prominently displaying “GROEN by Chef Mart, Inc”, falsely suggested that Respondent is the manufacturer of these products and owner of the Trademarks. (Ex. 7 & 8). For purposes of this Complaint, the primary such website utilized by Respondent is referred to as the “Unauthorized Website” and is reflected in Exhibit 7.
6. In June, 2014, shortly before the Amended Complaint was filed:
· Domain Names Nos. 1-54 redirected Internet users to Respondent’s <chefmartinc.com> website (“the CMI website”), which markets a number of brands, including including Delfield, Cleveland, Rational, Marsal, and Firex which compete with Complainant’s brands. (Ex. 9);
· Domain Names Nos. 55 and 56 resolved to pages displaying variations of Respondent’s DPR website, where users are directed to a page featuring brands owned by Complainant’s competitors, including Firex. See Complainant’s Exhibits 10 and 8, respectively.
· Domain Names Nos. 57-59 resolved to a page where Respondent falsely suggests that Respondent is the manufacturer of Complainant’s products. See Complainant’s Exhibit 7; and
· Domain Names Nos. 60-66 remained dormant, being “parked” for free by GoDaddy.com. The passive holding of these domain names “may not constitute use in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use”: Clark Equip. Co. v. Sharpley, FA 1513849 (NAF Sept. 24, 2013) (citing other decisions). It is nothing more than improper cybersquatting.
7. Although Respondent has used the remaining Domain Names to sell goods, Respondent’s use has not been legitimate. A manufacturer’s consent to a dealer reselling its goods does not legitimize a dealer’s use of the manufacturer’s trademark in a web domain. See, e.g., Ulmann v. Black Forest Stables, Inc., No. FA 1164380 (NAF May 14, 2008); Toyota Jidosha Kabushiki Kaisha v. Double Time Jazz, No. FA 0113316 (NAF July 10, 2002); Carlon Meter Co. v. Jerman, No. D2002-0553 (WIPO July 30, 2002); Caterpillar Inc. v. Off Road Equip. Parts, No. FA 0095497 (NAF Oct. 10, 2000).
8. Respondent does not satisfy any of the four elements set forth in Oki Data Americas, Inc. v. ASD, Inc., No. D2001-0903 (WIPO Nov. 6, 2001) in order to establish a legitimate interest in a domain name:
· Respondent no longer offers the goods at issue;
· Respondent’s use of the Domain Names to sell other goods;
· Respondent’s Web Sites do not appropriately disclose the parties’
Relationship; and
· Respondent has endeavoured to corner the market.
Bad faith registration and use
9. Complainant says the passive holding of those of the Domain Names that Respondent has not used (Nos. 60-66) is sufficient to demonstrate bad faith. Clark Equip., No. FA1513849; Oreck Holdings, No. FA1143439; Hamid, No. D2001-0032.
10. As regards the remaining domain names (Nos. 1-59), Respondent has acted in bad faith under Policy ¶ 4(b) (i), (ii), and (iv), as follows.
· Respondent has attempted to sell all the Domain Names to Complainant for $2,500,000.00;
· the sheer number of domain names acquired by Respondent in a short amount of time evidences a desire to corner the market, and is demonstrative of Policy ¶ 4(b)(ii) bad faith; and
· Respondent has attempted to attract and mislead Internet users to Respondent’s own website by creating a likelihood of confusion as to Complainant’s role in the Domain Names, and Respondent likely benefits from the resulting confusion.
B. Respondent
Summary dismissal
11. Insofar as Complainant’s constructive approval and/or acquiescence in Respondent’s use of the Domain Names is at issue, along with many other legal issues including breach of contract, breach of the implied duty of good faith and fair dealing, breach of fiduciary duty, unfair competition, tortious interference with business relations, as well as the affirmative defenses of waiver, estoppel and laches, which are matters to be adjudicated by a court of competent jurisdiction, this business dispute is well beyond the limited scope of the Policy and accordingly the Complaint should be summarily dismissed.
12. Complainant failed to state a claim for each Domain Name, but instead has relied on suspicion and speculation.
Identity or confusing similarity
13. Respondent does not deny the Domain Names are confusingly similar to a trademark in which the Complainant has rights in the context of this proceeding only, under Policy ¶ 4(a)(i).
Rights or legitimate interests
14. Respondent provides comprehensive business services to commercial users of specialized equipment, notably relating to food processing. Beginning in 2004, Respondent became authorized by Complainant to consult, design, engineer, sell, install, train and service Complainant’s product line brands including GROEN, RANDELL, and CAP KOLD.
15. It is true that when an Internet user clicks on domain names Nos. 1-54 the user is directed to the CMI website. This is part of an approved joint marketing program Respondent planned with Complainant beginning in 2009 in order to capture chefs in search on the Internet interested in Complainant’s brand products.
16. Following the implementation of this shared business plan in 2009, sales of Complainant’s products have exceeded $3 million. Hundreds of sales transactions of Complainant’s brand products took place between Complainant and Respondent, DPR and CMI, through the use of the disputed domain name <groenkettles.com> during the years 2009 to 2014. This is also true with respect to Complainant‘s CAP KOLD brand. Response Exhibits 6, 29, 11 and 5 show a bona fide offering of CAP KOLD goods and services at or about the time the relevant domains were registered.
17. This use of the Domain Names demonstrates Respondent’s legitimate rights and interest in the Domain Names and constitutes a bona fide offering of goods and services, Free Geek v Free Geek.com FA 1360890 (Nat. Arb. Forum Jan 31, 2011) (use of domains as a research tool constitutes a bona fide offering of goods and services).
18. Respondent has both a past and present legitimate interest in the Domain Names. Respondent’s legitimate use of the Domain Names has been to offer his personal services in the planning, design, engineering, installation, training and service of processing systems involving the products Respondent has been authorized to sell and service by the manufacturer.
19. The Domain Names do not offer products which are competitive with one another, since the product lines offered by the various manufacturers represented by Respondent are not fungible. Each manufacturer’s products are unique in their design, dimensions, assembly, material composition, temperature, pressure, engineering tolerances, durability, and application. The purpose for the display of the various logos of the manufacturers on Respondent’s websites is to convey to the end-user the product brands Respondent has access to in the design of the customer’s food processing lines and system, and nothing more.
20. The use of the Domain Names to bait & switch is implausible because of the personal nature of the services offered by Respondent.
21. When a user clicks on <groenscraperblades.net> the DPR webpage appears. This does not reference GROEN brand products because after Complainant gave its recent notice to Respondent that it was unilaterally terminating its dealer relationship with him, and would no longer offer to sell Complainant brand products to him or his companies, Respondent immediately removed Complainant’s presence from his websites. Nonetheless, Respondent retains a legitimate interest in this and the other disputed domains to continue to offer his design and consulting services to his existing customer base, as well as prospective customers inquiring about food processing systems utilizing the Complainant’s brand products, including the scraper blades offered under the GROEN brand.
22. Where a disputed domain is used by a dealer or distributor who has been authorized to offer goods and/or services on behalf of the trademark holder, a showing that the disputed domain name has been used in connection with a bona fide offering of goods and services is deemed to have been met under the Policy, Bully Dog Technologies, LLC v Concours Direct, Inc., FA 1428542 (Nat. Arb. Forum Mar. 20, 2012), (dismissing Complaint finding at the time the Respondent registered the disputed domain names it was an authorized distributor of Complainant’s products), citing Urbani Tartufi s.n.c. v Urbani U.S.A., D2003-0090 (Wipo Apr. 7, 2003), (dismissing Complaint finding at the time the domain was registered the parties were in a business relationship and the Complainant constructively approved or at least acquiesced to its use).
23. All of the Domain Names are active and linked to <groenkettles.com> which serves as the primary hub for the network of domains Respondent designed to facilitate doing business, and in particular the business with Complainant, which includes the design of foodservice, pharmaceutical, nutraceutical and chemical processing systems, planning, engineering, consulting, product procurement, product sales, product installation, product training and post-installation services, (see DPR website, <designprocessinc.com> and the CMI website, <chefmartinc.com>).
24. Respondent’s websites adequately disclose the parties’ relationship and Complainant is now estopped from claiming otherwise on grounds of waiver, estoppel and laches. CMI was incorporated by Respondent in 2011 and agreed to a marketing program with Complainant to target chefs who are in search on the Internet for GROEN brand products. Complainant has been aware of the <www.chefmartinc.com> site, which only displays GROEN brand products, since its inception and has never made a demand on Respondent to cease or desist using the site until the time an irretrievable breakdown in their business relationship occurred in April 2014. For the same reasons discussed above, Complainant is now estopped and should be barred from asserting any of its claims on grounds of laches, (Complaint dismissed finding Complainant guilty of laches by allowing Respondent to use disputed domain names for years without objection), Jaguar Land Rover Limited v Mountain Rovers, Inc., FA 1507702 (Nat. Arb. Forum Aug. 15, 2013)); (laches relevant in applying the UDRP policy), Kaspersky Lab Zao v. Paul Bonsey, FA 1363673 (Nat. Arb. Forum Feb. 1, 2011).
25. Clicking on any of the disputed domains linked to the CMI website <chefmartinc.com> shows only the corporate information page of CMI, displaying only the logos of the manufacturers with which Respondent has been authorized to do business for informational purposes. To suggest this website is being used to market “competitor” brands or for “bait and switch” purposes is ludicrous. The DPR website <designprocessinc.com> is similarly formatted. Its homepage is designed to depict the brand logos of the companies Respondent is authorized to deal in for information purposes only.
26. On or about April 22, 2014, Respondent modified the CMI website to add the GROEN symbol to the GROEN logo and added qualifying language prominently displayed in red print on the home page which states “GROEN is a registered trademark of Dover company,” which is depicted in Response, Ex. 1. The Dover company is the apparent parent company of Complainant which is an apparent holding company who has acquired various company brands over the years and has consolidated them under Unified Brands.
27. In any event, it should be apparent that this website was not intended to cause any confusion as to the ownership of the trademark or who the manufacturer of the GROEN brand is. The website and the “About Us” page (Response, Ex 2.), does not state or in anyway infer that CMI is the manufacturer of GROEN products or for that matter, that CMI is even a manufacturer. It does however accurately state that it sells and services multiple brands of equipment as clearly stated, “Chef Mart was not designed to sell every brand of restaurant and food service equipment, just the best brands, followed by the best service…. In addition to sales we also offer, training, tech. support, parts and service,” (emphasis added, Response, Ex. 2). The language that it “sells brands” is suggestive that it is a dealer of various brands of goods and is not at all suggestive of Chef Mart being the manufacturer of “every brand of restaurant and food service equipment.”
28. Respondent has not cornered the market. There is nothing improper in the registration of a large number of domains considering Respondent’s showing of his legitimate interest and use of these domains since the time of registration. Complainant had every opportunity to register any one or more of the Domain Names for its own use years before Respondent registered them. The attorneys who are representing Complainant in this proceeding registered the GROEN trademark in 1968, (Response Ex. 36). They had every opportunity and ability to register any of the disputed domains for their own use for over 45 years prior to time of Respondent’s registrations. Complainant cannot now complain that Respondent has cornered the market given its own lack of diligence, and also because Complainant presently owns and uses domains sufficient to market and sell its products.
29. Respondent does not retain a controlling ownership interest in Firex, and the brand of processing equipment Firex offers is also not competitive with the brands offered by Complainant. No facts are offered to show that any Firex brand product has ever been substituted in place of a Complainant brand product in a scheme to “bait and switch,” and accordingly Complainant allegations should be summarily dismissed. To suggest any relationship between Respondent and Firex supports a cyberstalking claim is untenable given the fact Firex has only recently begun doing business in the United States which is many years after the Domain Names were first registered.
30. Shortly after Complainant provided its recent notice terminating Respondent‘s dealership agreement with DPR., the display of the Complainant brands were removed from the website. The display of manufacturers and their logos on dealer/reseller information pages is a common practice and Respondent’s websites are no different in display than other Complainant authorized dealer websites which also depict the logos of manufacturers other than Complainant, (see for example <trimarkusa.com>; <wasserstrom.com>; <katom.com>; <atlantafixture.com>). This practice does not constitute cyberstalking or even trademark infringement, under any theory.
Bad faith
31. Respondent has not engaged in bad faith as Respondent has been actively doing business in Complainant’s brands. No proof the domains Nos. 60-66 are being passively held in bad faith is offered and mere assertions of bad faith are insufficient: Calibers National Shooters Sport Center, L.C. v W.D. Group, Ltd., F.A. 525053 (Nat. Arb. Forum Nov. 14, 2013).
32. All Domain Names, including Nos. 60-66, are active and linked to Respondent’s primary domain and websites. Because Respondent has been actively doing business in the Complainant’s GROEN , RANDELL and CAP KOLD brands, no bad faith registration can be shown.
33. Complainant filed this Complainant in retaliation for the recent breakdown in the parties’ business relationship in April 2014, when Complainant demanded the Respondent resolve the Domain Names to Complainant’s own website, or Complainant would cease selling products to Respondent.
34. Complainant has failed to offer any evidence that at the time Respondent registered the Domain Names beginning in 2009 [sic], he intended to sell them to Complainant. The offer to sell the Domain Names came 5 years after registration because of an irretrievable breakdown in the parties’ business relationship which was initiated by Complainant.
35. Complainant has failed to show Respondent engaged in a pattern of conduct demonstrating an intent to prevent Complainant from reflecting its mark in a corresponding domain name. Complainant owns multiple domain names which are sufficient to market and sell its brands, and Complainant has not offered any proof to the contrary. Complainant has had over 45 years before Respondent first registered any of the Domain Names, to register any one or more of them for its own use. Its own choice and/or neglect not to register any of the Domain Names when it could have cannot now be ignored to claim bad faith on the part of Respondent.
36. The multiple registration of the Domain Names is clearly shown to have been done pursuant to a marketing plan known and approved by Complainant to increase Complainant’s e-commerce presence and sales. Complainant knew of this marketing plan for years, did nothing to object to the use of these domains, while at the same time allowing Respondent to develop customer goodwill and the domains into sales for Complainant’s benefit in excess of 3 million dollars. Complainant is now estopped from claiming any Policy violations under Policy ¶ 4(a)(iii) on grounds of waiver and laches.
37. The CMI website was designed and used with Complainant’s full knowledge and consent for years. Significant business between Complainant and CMI has been shown to have transacted for years through use of the Domain Names.
38. Complainant’s claims that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site 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 Respondent’s web site or location or of a product or service on Respondent’s web site or location is not sustainable given that CMI was authorized to sell the GROEN and the other Complainant products, did sell only GROEN products through the CMI website and at no time prior to Complainant’s unilateral termination of the parties’ business relationship did Complainant make demand upon Respondent to discontinue the use of the website. Complainant’s actual and/or constructive approval of the use of the CMI website and its silence during the many years Complainant received a direct economic benefit through the use of the Domain Names linked to the CMI website all show a lack of bad faith intent on the part of Respondent at the time the Domain Names were registered.
39. While Complainant claims bad faith is shown by Respondent refusing to modify the CMI website to dispel purported confusion as to the owner of its mark, that allegation has been shown not to be true. Its contention that the CMI website displays “competitors” products has also been shown to be false because only the logos of brands Respondent companies are authorized to deal in are shown for general informational purposes, and the food processing equipment offered among the various manufactures are not at all fungible or competitive with one another.
40. Finally, Complainant’s claim that Respondent engaged in a “mass reconfiguration” of the Domain Names following the recent breakdown of the parties’ business relationship has not been proven. Even if it had, Respondent has shown that he continues to have a legitimate interest and use of the Domain Names to provide his business services, (design, consulting, engineering, repair), to his existing customer base who have been acquired over the years through the use of the Domain Names and who now own or use Complainant’s processing equipment, and this is true despite Complainant’s unilateral wrongful termination of the parties’ business relationship and its recent refusal to sell Respondent its processing equipment.
Reverse domain name hijacking
41. Complainant has engaged in reverse domain-name hijacking.
Other legal proceedings
42. On June 27, 2014, Complainant filed a breach of contract suit against DPR in the County Court of Hinds County, Mississippi, First Judicial District.
C. Additional Submissions
Complainant
43. There is no basis for dismissal. Complainant merely seeks transfer of the Domain Names and it does not seek legal relief that only courts may provide. Respondent references no lawsuit in which the Domain Names are at issue.
44. Complainant has taken issue with all of the Domain Names. The Amended Complaint defines “Domain Names” to include all of those in dispute. Moreover, Complainant specifically referenced the improper uses of all the Domain Names, which as set forth below, Respondent has attempted to manipulate in bad faith.
45. Respondent represents that all of the Domain Names are active and linked to <groenkettles.com>, which houses the “GROEN by Chef Mart” website set forth in Exhibit 7 to the Amended Complaint (that Complainant has referred to as the “Unauthorized Website”). This is untrue and was untrue when Complainant initiated this proceeding, the pertinent time for the Panel’s review. After receiving Complainant’s initial complaint, Respondent apparently tried to reconfigure all the Domain Names so that each would display the Unauthorized Website, hoping the Panel could not see the more obviously egregiously improper uses for the 63 of the 66 Domain Names that (as of submission of the complaint) did not link to the Unauthorized Website. Complainant has presented proof herewith (Ex. 1-2) showing that Respondent’s attempt to cover up his actions has failed (at least as of the time this brief was prepared). Although Respondent changed many of the Domain Names to the Unauthorized Website after receiving the complaint, as of July 2, 2014, 7 of the Domain Names (Nos. 60-66) remained dormant, 17 of the Domain Names (Domain Nos. 10, 17-21, 26, 34-39, 41, 51, 53-54), continued to display the “Chef Mart Website” set forth in Exhibit 9 to the Amended Complaint, and 2 of the Domain Names (Domain Nos. 55-56) displayed a variation of Respondent’s DPR website, set forth in Exhibits 8 and 10 to the Amended Complaint. (Ex. 1).
46. Despite claiming that “all of the domain names are active and linked to <groenkettles.com>,” Respondent appears to acknowledge that the <groenscraperblades.net> domain (No. 55) instead links to the DPR website found at <designprocessinc.com>. (Amended Compl., Ex. 10).
47. Respondent claims that he removed references to GROEN from that <designprocessinc.com> site because after Complainant terminated the parties’ relationship on June 3, 2014, “Respondent immediately removed Complainant’s presence from his websites.” (Response, p. 9). Yet, the Internet archive attached hereto as Exhibit 3 shows that Complainant was not featured with competing brands on that website’s main page as of May 17, 2014. Further, if Respondent truly “removed Complainant’s presence from his websites,” why do both the Unauthorized Website and the CMI website continue to display Complainant’s product lines as of the time of the filing of this action and thereafter? (See Ex. B to Ex. 1 hereto; Amended Compl., Ex. 7, 9).
48. Before termination of the parties’ relationship, Respondent was using Complainant’s GROEN trademark to steer Internet users to a webpage that did not even feature GROEN brands, but instead, competitors’ brands.
49. The appropriate analysis is the use of the Domain Names at the time that Complainant first initiated this proceeding, and in fact, Respondent’s attempt to manipulate the Domain Names after Complainant initiated this proceeding show both that he has no legitimate interest as well as bad faith under the Policy. Bose Corp. v. Adplus Etc, S.A., No. FA0314279 (NAF Sept. 30, 2004); Int’l Info. Sys. Sec. Certif. Consortium (ISC)2 v. Rifin d.o.o., No. FA 145282 (NAF Apr. 25, 2003); Edmunds.com, Inc. v. Ult. Search Inc, No. E2001-1319 (WIPO Feb. 1, 2002); Caterpillar Inc. v. Feimer, FA0706001008998 (NAF July 28, 2007).
50. At the time this proceeding was initiated (the pertinent time for the Panel’s consideration), the uses of the Domain Names were as follows:
· Domain Nos. 1-54 redirected traffic to the CMI Website set forth in Exhibit 9 to the Amended Complaint;
· Domain Nos. 55 & 56 displayed variations of Respondent’s DPR website, as set forth in Exhibits 10 & 8 respectively to the Amended Complaint;
· Domain Nos. 57-59 continued to display the Unauthorized Website set forth in Exhibit 7 to the Amended Complaint; and
· Domain Nos. 60-66 remained dormant.
51. Respondent’s estoppel, laches and “constructive approval” theories lack merit. As noted just this month, “the doctrine of laches is not available in a UDRP proceeding.” Caesars License Co., LLC v. Ez LLC, No. FA1560221 (NAF July 2, 2014) (citing Broadcasting Bd. of Gov. v. Voice of Am., No. FA1414846 (NAF Dec. 21, 2011)). See also Empire Bonding Agency Inc. v. Zouvelos, No. FA 1527080 (NAF Dec. 26, 2013); Cable News Network, Inc. v. Webworx, No. FA1450267 (NAF July 31, 2012); Orbitz, LLC v. Vikamsey, No. FA1190997 (NAF July 8, 2008); Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) (“The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defence of laches has no application.”).
52. Complainant repeats its assertions that Respondent has no legitimate rights or interests in the Domain Names and has acted in bad faith and denies that Complainant has engaged in reverse domain hijacking.
Respondent
53. To the extent Complainant’s Additional Statement seeks to inject new claims not alleged in its Amended Complaint, they must be ignored and dismissed as being violative of Rule 7.(f) which provides that “additional submissions must not amend the Complaint.” Complainant’s Additional Statement does not advance “new law or facts not reasonably available or foreseeable at the time it filed its Amended Complaint” but merely replies to the Respondent’s Response, all of which constitutes an improper additional submission, Oki Data Americas, Inc. v ASD, Inc. No. D2001-0930 (WIPO Nov. 6, 2001).
54. Respondent repeats its contention that the Amended Complaint should be summarily dismissed; denies improperly manipulating the Domain Names either before or after the filing of the Amended Complaint and says domains Nos. 60-66 are not “dormant”, they are simply temporarily “parked” and remain active.
55. DPR has an inventory of GROEN scraper blades in excess of $4,000 which are indeed sold to users of the <groenscraperblades.net> domain, showing past and present legitimate use of this domain and that accordingly bad faith cannot be shown to have occurred.
56. The reason why the “Unauthorized” CMI site continues to display Complainant’s brands following the filing of the Complaint is because the websites have been “locked down” by Go Daddy as a result of Complainant’s filing. Respondent has not had a reasonable opportunity to access and modify these websites.
57. Complainant incorrectly states that analysis of a Policy violation is to be examined “at the time that Complainant first initiated this proceeding.” A policy violation of bad faith is to be examined at the time the domains were first registered and used. See Bully Dog Technologies, LLC v Concours Direct, Inc., FA 1428542 (Nat. Arb. Forum Mar. 20, 2012), finding no bad faith registration because at the time of registration a business relationship existed and the registration and use occurred in the context of an authorized distributor relationship, exactly like the case before this Panel. Also, if a Policy violation examination were limited solely to the time when a Complaint is filed, the numerous cases denying Complaints on grounds of laches would not be reported. Complainant’s proposition is unsupported and incorrect.
58. Complainant would like to avoid a proper analysis since it now knows that since the time Respondent registered most of the domains over 5 years ago he is shown to have a legitimate interest in the use of the Domain Names.
59. Complainant’s last minute attempt to concoct a case of bad faith by first unilaterally and wrongfully terminating the parties’ 9 year long term business relationship in anticipation of this litigation, with intent to disrupt Respondent’s past and present legitimate uses of the domains, should not go unnoticed and, as fully discussed in the Response, Complainant is now estopped to argue its Policy violations on grounds of waiver, estoppel and laches.
60. Further, because the facts now show that at the time the Domain Names were registered, a business relationship existed and because the registration and use occurred in the context of an authorized distributor relationship, bad faith under the Policy cannot be shown and the issue of legitimate use therefore becomes moot, Bully Dog Technologies, LLC, supra.
61. Respondent says its estoppel, laches and “constructive approval” theories are meritorious; that Respondent has rights and interest in the Domain Names and that Respondent continues to offer his business services.
62. Respondent also casts doubt on Complainant’s evidence of confusion (Ex. 7 to Complainant’s Additional Submission).
63. Respondent repeats his contentions that his websites do appropriately disclose the parties’ relationship; that Respondent has not endeavored to corner the market; that Respondent has not acted in bad faith; and that Complainant has engaged in Reverse Domain Name Hijacking.
FINDINGS
64. Complainant has established all the elements entitling it to relief.
DISCUSSION
Preliminary issues
65. Complainant’s court proceeding against DPR, claiming breach of contract in relation to allegedly unpaid invoices, is irrelevant to the issues in this Administrative Proceeding.
66. Respondent seeks summary dismissal of this Administrative Proceeding on the ground that this is a business dispute which raises multiple legal and equitable claims and defenses which go well beyond the scope of what the Panel may properly adjudicate under the Policy, and which are matters which only the courts can properly adjudicate. Complainant has raised for determination whether, under the Policy, the Domain Names should be transferred to it and has addressed submissions and evidence to the issues identified in the Policy.
67. There is sufficient evidence before the Panel within the scope of the Policy to enable the Panel to decide this dispute over the Domain Names. Accordingly, it chooses to proceed with the case and to consider the contentions of Complainant and Respondent. See Weber-Stephen Prod. Co. v. Armitage Hardware, D2000-0187 (WIPO May 11, 2000) (“Like any other tribunal, however, this Panel can determine whether it has jurisdiction only from the facts and arguments presented to it. In this case, Complainant did allege bad-faith use and registration of the domain name at issue. Had Complainant proved those allegations, there would be no proper question as to this Panel’s jurisdiction.”); see also Draw-Tite, Inc. v. Plattsburgh Spring Inc., D2000-0017 (WIPO Mar. 14, 2000).
68. Respondent’s claim of constructive approval and/or acquiescence by Complainant in Respondent’s registration and use of the Domain Names may properly be considered by the Panel, since that claim is relevant to the issue of rights or legitimate interests.
69. Respondent’s claims of breach of contract, breach of the implied duty of good faith and fair dealing, breach of fiduciary duty, unfair competition and tortious interference with business relations are for a court to determine, since these are irrelevant to any issue under the Policy.
70. Despite some decisions to the contrary, this Panel takes the view that equitable defenses such as laches, waiver and estoppel have no application under the Policy, although delay in bringing proceedings may make it harder for a Complainant to establish the absence of rights or legitimate interests or the presence of bad faith registration and use. See, in addition to the cases cited by Complainant, City Bank v. Domain Admin / Inavit, Inc. FA1564337 (Nat. Arb. Forum, July 21, 2014), citing with approval Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011, <lionsden.com>:
“The parties in the current proceeding are both located in the United States, where courts recognize the equitable doctrine of laches, which can result in the dismissal of a complaint for undue delay in asserting legal claims. However, in the United States, the defense of laches typically bars the recovery of damages incurred before the filing of a lawsuit, and courts have concluded that the rationale behind the doctrine of laches does not militate against injunctive relief in a trademark action that seeks to avoid future confusion in the marketplace. See 5 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition (4th ed. 2005) §31:10, p. 31-35 and cases cited therein. The remedies under the Policy are similarly injunctive rather than compensatory in nature, and the focus is on avoiding confusion in the future as to the source of goods or services. Thus, UDRP panels have generally declined to apply the doctrine of laches. See, e.g., Progman Consulting Oy v. Whois Watchdog, WIPO Case No. D2010-1393 (“It is by now well established that trademark doctrines of laches or estoppel have not been incorporated into the Policy”); The E.W. Scripps Company, supra (the Policy does not contemplate a defense of laches, which is inimical to the Policy’s purposes); see also cases cited in the Index of WIPO UDRP Panel Decisions, sec. III(G)(1)(c)”.
Substantive issues
80. 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."
81. 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:
(a) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(b) Respondent has no rights or legitimate interests in respect of the domain name; and
(c) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
82. In this proceeding, there is no dispute that Complainant is the registered proprietor of the United States federally registered trademarks GROEN, RANDELL and CAP KOLD and that each of the Domain Names is confusingly similar to a trademark in which Complainant has rights. The Panel so finds.
83. Complainant has established this element.
Rights or Legitimate Interests
84. Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights to or legitimate interests in a disputed domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the respondent of the dispute, the use by the respondent 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) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
85. Complainant has alleged and supported with evidence that Respondent is not known by the Domain Names; Complainant gave no permission to Respondent to register the Domain Names; and the Domain Names (including those merely parked) were used in a manner that did not accord with the Oki Data test of fair use (insufficient disclosure of registrant’s relationship with the trademark owner; promoting competing goods on Respondent’s websites; attempting to corner the market by registering so many Domain Names incorporating Complainant’s trademarks).
86. There is some evidence to show that Respondent intentionally passed itself off as Complainant through its websites and in making its contacts and sales pitches. One of Respondent’s websites presents at the top: “GROEN By Chef Mart Inc.” This is a far cry from the clarity of relationship that is acceptable. It indicates that Respondent intended to mislead consumers by representing that Respondent’s CMI company owned the GROEN brand and is the manufacturer of GROEN products.
87. Complainant has also presented evidence of actual confusion. These types of facts (and the sheer number of Domain Names registered) distinguish this case, at least in so far as use is concerned, from Adaptive Molecular Technologies v. Priscilla Woodward, WIPO Case No. D2000-0006 (“While Respondent does not own MILITEC as a trademark, questions remain as to whether Complainant legally acquiesced in Respondent’s registration and use of the domain, at least initially, or whether Respondent’s use is a nominative fair use. Acquiescence and fair use are principles of trademark law, each requiring full analysis of the underlying facts. These are issues for the courts.”).
88. The Panel finds that Complainant has thus presented a sufficient prima facie case to show the absence of rights or legitimate interests on the part of Respondent. Accordingly the burden is on Respondent to provide evidence of its right or legitimate interests under paragraph 4(c) of the Policy: See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
89. Respondent has relied on two key points to attempt to establish rights or legitimate interests in the Domain Names: (i) Respondent was an authorized distributor of Complainant, thereby providing some form of express or implied consent, or acquiescence, to the registration and use of the Domain Names, and (ii) claims of Complainant’s participation in or approval of a joint marketing plan. Both of these points go to the issue of “consent”.
90. Complainant does not dispute that Respondent was an authorized dealer in Complainant’s products. However, a review of all the exhibits to the Amended Complaint, the Response, and the Additional Submissions of both parties reveals nothing in the documentary evidence to show that Complainant ever provided any express consent to the registration and use of Complainant’s trademarks in any of the Domain Names. All of the contractual documents and documentary evidence (as compared with declarations) relate to particular products, engineering proposals on specific orders and pricing, with no mention at all of any form of intellectual property. Further, there is no documentary evidence of a joint marketing plan, as repeatedly asserted by Respondent.
91. In Respondent’s Exhibit 26 (dating from June 2013), Complainant sought suggestions from Respondent on improvements to and updating of Complainant’s website. This is the only documentary evidence indicating cooperation in marketing. There is no mention of Respondent’s own websites nor of Respondent’s Domain Names, merely advice provided by Respondent on how Complainant could update its own site. From these communications, it is not shown that Complainant knew anything about the large holding of domain names by Respondent. Respondent uses the email address xxxx@designprocessinc.com in his communications referenced in this exhibit, and not an email address anchored by any of the Domain Names. Accordingly, this Exhibit does not support express or implied consent or even acquiescence.
92. Apart from the lack of any documentary evidence, there is no evidence of any kind of a framework/distribution/reseller agreement between Respondent and Complainant. Contrary to Respondent’s submission, the multiple registrations of the Domain Names have not been shown to have been done pursuant to a marketing plan known and approved by Complainant to increase Complainant’s e-commerce presence and sales.
93. Respondent asserts that following the implementation of such a shared business and marketing plan in 2009, sales of Complainant’s products increased. However, the first two Domain Names (<groenkettles.com> and <groenkettle.com>) were registered in 2006, before any claimed cooperation in marketing.
94. Respondent further asserts that his associated company, CMI, is an express authorized dealer of Complainant’s products (including products marketed under the GROEN and RANDELL brands) under a written agreement dated March 15, 2012 (Exhibit 27). That document makes no mention of anything that could expressly or impliedly support Respondent’s contention that either he or CMI were authorized to use Complainant’s trademarks in the Domain Names. By then, Respondent had already registered 55 of the 66 Domain Names.
95. Without Complainant’s consent in some form, it is difficult to understand how Respondent could assume he could register so many Domain Names incorporating someone else’s trademark, particularly in light of the Policy, paragraph 2, in which Respondent represented and warranted that “to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party” and “[i]t is your responsibility to determine whether your domain name registration infringes or violates someone else's rights.”
96. Respondent’s mere status as an authorised dealer in Complainant’s goods does not legitimize Respondent’s use of Complainant’s trademarks in the large collection of Domain Names. See, e.g., Carlon Meter Co. v. Jerman, WIPO Case No. D2002-0553:
“Respondent may well be an important distributor of Complainant’s products, but its right to use the trademarks of Complainant do not necessarily extend to a right to use the globally extensive domain name system by incorporating these trademarks in the Domain Names in a manner which links them to Respondent’s web site”.
97. The sheer number of domain names in this case also serves to distinguish this case from Bully Dog Technologies, LLC v Concours Direct, Inc., FA 1428542 (Nat. Arb. Forum Mar. 20, 2012), (dismissing Complaint finding at the time the Respondent registered the disputed domain names it was an authorized distributor of Complainant’s products).
98. Further, the way in which Respondent used the Domain Names goes beyond what any implied consent might have reasonably covered.
99. In seeking to show knowledge and/or acquiescence on the part of Complainant, Respondent points to his use of the email address <xxxx@groenkettle.com>, incorporating one of the Domain Names, in certain communications with Complainant. The Panel does not find this to establish acquiescence or consent, especially in light of the declarations of Kevin Wood and Pam Holmes mentioned below.
100. On July 3, 2014, the day after the Response was filed, with its claim that “…when an Internet user clicks on domain names Nos. 1-54 the user is directed to the CMI website. This is part of the approved marketing program Respondent planned with Complainant”, Complainant’s attorney emailed Respondent’s attorney, requesting the identity of “any and all UB representatives who allegedly worked with your clients in designing your client’s websites (as opposed to requesting changes to your client’s websites)”.
101. No substantive response was received before Complainant filed its Additional Submission, which attached the declarations of Kevin Wood (Complainant’s Regional Sales Director from about July, 2011 until October 2012) and Pam Holmes (Complainant’s Director of Marketing from October 2012 to the present) (Ex. 5 and 6 to Complainant’s Additional Submission), both of whom had dealings with Respondent and claimed that they were aware of approximately 10 but not all of the Domain Names; that these Domain Names were a constant source of friction; and that they raised objections.
102. Kevin Wood said:
“At no point did Mr. Paul ever suggest that anyone affiliated with UB had authorized him to use the Domain Names or helped plan content for websites he operated from the Domain Names. I did not, could not and would not have authorized Mr. Paul to register for any domain names that incorporated UB's trademarks, and I am unaware of anyone with UB doing so. To the contrary, UB was concerned about Mr. Paul's use of the Domain Names”.
103. Pam Holmes said:
“During my tenure with UB, UB has never collaborated with Mr. Paul or engaged in any type of joint marketing plan with him as it relates to his use of any domain names containing UB's trademarks. To the contrary, UB felt that Mr. Paul's use of the Domain Names was disruptive to UB's marketing plans, and UB has taken measures against Mr. Paul's use of the Domain Names. Mr. Paul's use of the Domain Names has been a source of friction between UB and Mr. Paul during the entire time that I have been employed by UB given that it conflicts with UB's branding strategies and brand equity in the foodservice equipment market place.”
104. Respondent’s Additional Submission, filed on July 11, 2014, includes a signed declaration by Respondent, under penalty of perjury, stating:
“Beginning in 2009, and on a number of occasions thereafter, I met and discussed with staff members of Unified Brands, Inc. (UB) a business plan which included marketing UB's brand products through the use of the Internet by using domain names designed to capture Internet users in search of the UB brands of food processing equipment.”
105. Respondent names Kevin Wood, Pam Holmes and 13 other representatives of Complainant as persons with whom he discussed these matters between 2009 and 2011 but his declaration does not state that his registration or use of any of the Domain Names was specifically authorized by any representative of Complainant.
106. Because Respondent did not identify in his Response all persons with whom he held the claimed discussions and failed to provide the information requested by Complainant’s attorney on July 3, 2014 in time for Complainant to file statements from all 15 of the representatives named in Respondent’s declaration, Complainant was deprived of the opportunity to address Respondent’s claims regarding the other 13 representatives. The Panel is not persuaded that it should reject the statements of Kevin Wood and Pam Holmes that they were aware of around 10 of the Domain Names and objected to Respondent’s use of them.
107. In sum, the Panel has no evidence of any consent on the part of Complainant. Accordingly, the record does not support acquiescence. As mentioned above, it also appears that (i) while Complainant’s representatives were aware of around 10 of the Domain Names, they was not aware of all of them until searches were performed shortly before the filing of the Complaint, and (ii) the way in which Respondent used the Domain Names goes beyond what would have been reasonable even under an implied consent theory and undercuts Respondent’s claim of rights or legitimate interests in them.
108. Last, even if, while acting as an authorised dealer in Complainant’s goods, Respondent had rights and/or legitimate interests in the Domain Names, the Panel finds that any such rights and/or legitimate interests were lost upon termination of the dealership by Complainant on June 3, 2014. For this reason also, Respondent has no rights or legitimate interests in the Domain Names. See MTD Products Inc v. Roger Smith / Smith Equipment and Kevin Smith / Smith Equipment, FA1552064, Nat. Arb. Forum (May 10, 2014), (following UVA Solar GmbH & Co. K.G. v. Kragh, D2001-0373 (WIPO May 7, 2001), in which the panel refused to grant the respondent any Policy ¶ 4(a)(ii) rights when the pre-existing distribution agreement between the parties had been ended and the respondent had no independent basis for retaining the domain name).
109. The Panel finds that Respondent has not met its burden to rebut the prima facie case of Complainant. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in any of the Domain Names. Complainant has established this element.
110. Under Policy ¶ 4(b), the following non-exclusive factors may demonstrate a respondent’s bad faith registration and use:
(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 web site 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 web site or location or of a product or service on your web site or location.
111. As to registration, all of the Domain Names were chosen and registered by Respondent with knowledge of Complainant’s trademark rights. Respondent does not contest that it targeted Complainant in this way. The Panel accepts that Complainant was not aware of the large number of Domain Names registered until its lawyers conducted searches prior to filing this Complaint.
112. In the absence of persuasive evidence of Complainant’s consent, the Panel finds that Respondent registered all 66 of the Domain Names in order to prevent the trademark owner from reflecting its marks in corresponding domain names, and that the sheer number of domain names so registered constitutes a pattern of such conduct. This constitutes evidence of both bad faith registration and bad faith use under Policy ¶ 4(b)(ii). The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113:
“Respondent, which states it was a retail seller of Complainant’s products using the trademarks Stanley and Bostitch since 1991, undoubtedly was well aware of Complainant’s ownership of these trademarks at all times relevant to this dispute, including during the times Respondent registered the trademarks as domain names. It necessarily follows that Respondent was in bad faith when it registered these ten (10) domain names with NSI beginning in February, 1999. To register so many domain names using so many combinations of Complainant’s trademarks is a pattern and a calculated attempt by Respondent to foreclose Complainant from using its own trademarks in cyberspace (the Policy 4 (b)(ii). This is classic cybersquatting”.
113. Further, the Panel notes that the last to be registered of the Domain Names, <groenkettles.net> (No. 37), was registered on March 28, 2014, the very day on which Respondent offered to sell all the Domain Names to Complainant for $2,500,000 (Amended Complaint Ex. 2). The Panel finds that this domain name was registered primarily for the purpose specified in Policy ¶ 4(b)(i), as well as for the purpose specified in Policy ¶ 4(b)(ii).
114. As to use, contrary to Respondent’s assertion that all of the Domain Names are active and linked to <groenkettles.com>, domain names Nos. 60-66, which were registered between August 9, 2011 and March 12, 2012, were all parked with GoDaddy.com when the Amended Complaint was filed. Given the purpose for which the Panel has already found all the Domain Names to have been registered, the passive use of domain names Nos. 60-66 for more than 2 years constitutes bad faith use.
115. As for the remaining domain names (Nos. 1-59), the Panel also finds that Respondent used them in bad faith prior to the termination of his dealership, by linking them to websites that also list competing brands. Although the specific products of the competitors may not be fungible in the ways enumerated by Respondent, the systems which incorporate those products serve the same purpose, namely food processing, and are thus competitive with those of Complainant.
116. Even if Respondent was impliedly authorized to use Complainant’s trademarks in the Domain Names during the term of the manufacturer-dealer relationship, the Panel does not accept that any such implied authorisation would have extended to the promotion of brands that compete with those of Complainant. The use of multiple domain names incorporating Complainant’s trademarks to resolve to websites which display the names of Complainant’s competitors, even absent links to those competitors’ websites, is clearly use in bad faith. In this respect, Respondent’s websites differ from those other Complainant authorized dealer websites identified by Respondent which also depict the logos of manufacturers other than Complainant, namely <trimarkusa.com>; <wasserstrom.com>; <katom.com>; <atlantafixture.com>, since none of the domain names leading to those websites incorporate Complainant’s trademarks.
117. The Panel also finds that Respondent has used domain names Nos.1-59 intentionally to attempt to attract, for commercial gain, Internet users to his websites, by creating a likelihood of confusion with Complainant's marks as to the source, sponsorship, affiliation, or endorsement of his websites or of the products on those websites. This constitutes evidence of both bad faith registration and bad faith use under Policy ¶ 4(b)(iv).
118. Complainant has established this element.
Reverse Domain Name Hijacking
119. Since the Complaint succeeds, no issue of Reverse Domain Name Hijacking arises.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <groenbraisingpan.com>, <groenbraisingpan.net>, <groencombiovens.com>, <groencommercialequipment.com>, <groencommercialequipment.net>, <groenintek.com>, <groenkettle.asia>, <groenkettle.net>, <groenkettles.co>, <groenpartsdirect.com>, <groensteamers.com>, <groensteamers.net>, <groenkettle.com>, <groenkettles.com>, <groenbrandproducts.com>, <groenahkettles.com>, <randellfoodpreptables.com>, <randellpizzapreptables.com>, <randellrefrigeration.com>, <groencook-chill.com>, <groencookchill.com>, <groendeekettles.com>, <groendhkettles.com>, <groendirectorder.com>, <groenee.com>, <groeneekettles.com>, <groenfoodserviceequipment.com>, <groenhy-3.com>, <groenhy-6.com>, <groenhypersteam.com>, <groenhypersteamer.com>, <groeninakettles.com>, <groeninteksteamers.com>, <groenkettle.biz>, <groenkettle.info>, <groenkettles.biz>, <groenkettles.net>, <groenkettles.org>, <groenkettlesdirect.com>, <groenkitchenequipment.net>, <groenmilitary.com>, <groenmilitarykettles.com>, <groenmilitaryproducts.com>, <groennavykettles.com>, <groenproducts.com>, <groenrestaurantequipment.com>, <groenrestaurantequipment.net>, <groenscraperblades.com>, <groensmartsteam.com>, <groenssb.com>, <groentdb.com>, <groentdbkettles.com>, <usedgroenkettles.com>, <usedgroenkettles.net>, <groenscraperblades.net>, <groenmanuals.com>, <groenbraisingpans.com>, <groenkitchenequipment.com>, <groensteamer.com>, <capkoldkettle.com>, <capkoldkettles.com>, <groencapkold.com>, <groenprocess.com>, <groenprocessequipment.com>, <groenprocessingkettles.com>, and <groentanks.com> domain names be TRANSFERRED from Respondent to Complainant .
__________________________________________________________________
Alan L. Limbury, Esq.
Chair of the Panel
|
Mark McCormick Esq. Co-Panelist |
Christopher Gibson, Esq. Co-Panelist |
Dated: July 30, 2014
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