William J.
Mayer, III v. Elton Marks d/b/a EHNet, Inc.
Claim Number: FA0311000208630
PARTIES
Complainant is William J. Mayer (“Complainant”), represented by David K. Brock, of Neumiller & Beardslee, 509 West Weber Ave., Stockton, CA 95201. Respondent is Elton Marks d/b/a EHNet, Inc. (“Respondent”), 2542 Waterford Ct., San Bernardino, CA 92408.
REGISTRAR AND
DISPUTED DOMAIN NAMES
The domain names at issue are <mayersaddles.com> and <rickmayersaddles.com>, registered with The Name It Corporation d/b/a aitdomains.com.
PANEL
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
David E. Sorkin as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 7, 2003; the Forum received a hard copy of the Complaint on November 7, 2003.
On November 7, 2003, The Name It Corporation d/b/a aitdomains.com confirmed by e-mail to the Forum that the domain names <mayersaddles.com> and <rickmayersaddles.com> are registered with The Name It Corporation d/b/a aitdomains.com and that the Respondent is the current registrant of the names. The Name It Corporation d/b/a aitdomains.com has verified that Respondent is bound by the The Name It Corporation d/b/a aitdomains.com 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 November 18, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 8, 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@mayersaddles.com and postmaster@rickmayersaddles.com by e-mail.
A timely Response was received and determined to be complete on December 5, 2003.
On
December 16, 2003, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel,
the Forum appointed David E. Sorkin as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant owns and operates Bill Mayer Saddles, a business engaged in the production and sale of custom motorcycle seats. The business has used the trademark MAYER SADDLES since 1975, and Complainant is in the process of seeking federal trademark registration for the mark.
The business previously was owned and operated by Complainant’s father, William J. Mayer, Jr., until his death in May 2000. Shortly after Mr. Mayer’s death, a dispute arose between Complainant and his brother Rick Mayer. The brothers settled this dispute in February 2002, executing a settlement agreement acknowledging Complainant’s sole ownership of Bill Mayer Saddles and its trademarks. The settlement agreement also included the following provisions:
Rick Mayer acknowledges and covenants, from the date of the execution of this Agreement and in the future, that in the operation of his motorcycle seat making business, presently known as Rick Mayer Cycle, or in any other motorcycle seat making business that he may operate or participate in in the future, he will not do or permit any of the following:
. . .
2. Use as a business name, or use to describe any item produced by him, any name that combines or uses in any way both “Mayer” and “Saddle” or “Saddles”; . . .
The domain names <mayersaddles.com> and <rickmayersaddles.com> are registered in the name of Respondent, a website developer and administrator, on behalf of Rick Mayer. Respondent renewed the domain name registrations in June 2003. Until recently the domain names were used for Rick Mayer’s online motorcycle seat store, allegedly for the purpose of intentionally confusing and misdirecting consumers seeking Complainant’s store.
Complainant alleges that the disputed domain names are confusingly similar to the MAYER SADDLES mark; that Respondent lacks rights or legitimate interests in respect of the disputed domain names, based upon the settlement agreement; and that the domain names were registered and used in bad faith.
B. Respondent
Respondent states that neither he nor Rick Mayer intend to violate the settlement agreement, and argues that Rick Mayer is entitled to retain the disputed domain names because they incorporate his own name, Mayer, and the generic term “saddles.” He also notes that the disputed domain names were registered “way before this became an issue here.”
FINDINGS
The disputed domain names are identical or confusingly similar to a mark in which Complainant has rights. Respondent lacks rights or legitimate interests in respect of the domain names. However, Complainant has failed to sustain his burden of proving that the disputed domain names were registered in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The domain name <mayersaddles.com> is identical
to Complainant’s mark MAYER SADDLES, disregarding the generic top-level domain
suffix “.com”.
The domain name <rickmayersaddles.com> merely appends the first name “Rick” to Complainant’s mark. This addition fails to distinguish the domain name from the mark, and the Panel finds the domain name confusingly similar to the mark.
Under the February 2002 settlement agreement, Rick Mayer appears to have relinquished any rights to use the word “Mayer” with the word “saddles.” Respondent holds the disputed domain names on Rick Mayer’s behalf, and the Panel concludes that he lacks rights or legitimate interests therein.
The disputed domain names were registered in September 2001, apparently for the purpose of promoting the sale of motorcycle “saddles” by Respondent’s client, Rick Mayer Cycle. As indicated above, Rick Mayer has agreed not to use the words “Mayer” and “saddles” together. However, that agreement was undertaken in February 2002, and its effect is only prospective—“from the date of the execution of this Agreement and in the future.” Complainant has not proved that such use prior to February 2002 was unlawful or infringing; indeed, Rick Mayer’s surname and the nature of his business seem to dictate precisely the opposite conclusion. In any event, it seems quite plausible that Respondent registered the disputed domain names in order to describe Rick Mayer’s business, rather than to exploit the value of Complainant’s marks. Even if Respondent did subsequently use and renew the disputed domain names in bad faith, those acts would not transform the original registration into an act of bad faith. See Viz Communications, Inc., v. Redsun, No. D2000-0905 (WIPO Dec. 22, 2000) (registration for a permissible purpose cannot be transformed into bad faith registration by subsequent knowledge and conduct).
The Policy requires proof of both registration and use in bad faith. See, e.g., Passion Group, Inc. v. Usearch, Inc., No. AF-0250 (eResolution Aug. 8, 2000). Complainant has failed to discharge his burden of proving that the disputed domain names were registered in bad faith, and the Complaint fails on this ground.
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
David E. Sorkin,
Panelist
Dated: December 30, 2003
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