National Arbitration Forum

 

DECISION

 

Alain-Martin Pierret d/b/a Bordeaux West v. Sierra Technology Group, LLC

Claim Number: FA0505000472135

 

PARTIES

 

Complainant is Alain-Martin Pierret d/b/a Bordeaux West (“Complainant”), represented by Richard Keenan, of Folger Levin & Kahn, 275 Battery Street, 23rd Floor, San Francisco, CA 94111.  Respondent is Sierra Technology Group, LLC (“Respondent”), represented by Bruce McArthur, 59 Damonte Ranch Pkwy., Suite B #186, Reno, NV 89521.

 

REGISTRAR AND DISPUTED DOMAIN NAME

 

The domain name at issue is <bordeauxwest.com>, registered with Wild West Domains, Inc.

 

PANEL

 

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

David H. Bernstein as Panelist.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 5, 2005; the National Arbitration Forum received a hard copy of the Complaint on May 9, 2005.  An Amended Complaint was filed on May 12, 2005 correcting certain technical deficiencies; the National Arbitration Forum received a hard copy of the Amended Complaint on May 16, 2005.

 

In the meantime, on May 5, 2005, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <bordeauxwest.com> is registered with Wild West Domains, Inc. and that the Respondent is the current registrant of the name.  Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 May 13, 2005, the National Arbitration Forum sent Respondent a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 2, 2005 by which Respondent could file a Response to the Complaint.  This Notice 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@bordeauxwest.com by e-mail.

 

A Response was received by fax on June 1, 2005.  Respondent did not, however, send the Response in electronic format by the June 2, 2005 deadline as required by Rule 5(b).  Respondent claims that he was unable to submit the electronic version because of technical difficulties.  Complainant claims that Respondent also failed to send Complainant a copy of the Response in a timely fashion, and thus Complainant did not receive an actual copy of the Response until June 6, 2005. 

 

On June 7, Complainant requested an extension of time to file a supplemental submission.  Complainant requested five days to respond, from the June 6 date that it received the Response in the mail

 

On June 8, the National Arbitration Forum denied Complainant’s request on the ground that Supplemental Rule 7 allows filing of supplemental submissions within five days of the date the Response was due.  In this case, the Response was due June 2 and thus any supplemental submissions would have been due June 7; the National Arbitration Forum noted that there is no discretion in the rule for extensions.

 

Later that day, Complainant sought relief from the National Arbitration Forum’s ruling.  It asked that the Panel either strike the Response because it was not timely served, or that Complainant be granted an extension of time to reply.  On June 10, Complainant submitted its additional materials, subject to the Panel’s consideration of its request for leave to file a reply.

 

Meanwhile, on June 9, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David H. Bernstein as Panelist.

 

On June 18, Respondent submitted a sur-reply.  Respondent alleged that it received Complainant’s reply on June 13, and thus that its sur-reply was timely because it was filed within five days of receipt of the reply.  Complainant promptly submitted an email objecting to the late-filed sur-reply; the next day, Respondent sent a follow-up email objecting to Complainant’s objection.

 

Mercifully, the parties did not file any additional documents after that date.  On account of all of these additional submissions, the Panel, pursuant to Rule 10(c), extended the deadline for a decision to July 1, 2005.

 

RELIEF SOUGHT

 

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

 

A. Complainant

 

Complainant alleges that, in 2002, he began using the Bordeaux West name in conjunction with his business endeavors.  Since then, he has used that trade name to provide consulting services in California; to advertise two gift stores in Nevada; for business cards and identification badges for gift store employees; to register with the Storey County, Nevada county clerk; to promote his gift stores through the local Chamber of Commerce; to be billed by vendors; and for a local television appearance.

 

In April 2004 Complainant had his bookkeeper contact Bruce McArthur of Respondent to register the <bordeauxwest.com> domain name.  Respondent agreed to do so, without billing for its time spent setting up the domain name; Respondent stated that it only would ask to be reimbursed for the actual registration fee.  Complainant states that, at that time, he did not realize that Respondent was in the business of buying and selling domain names.  Thereafter, Respondent provided computer-related services to Complainant, and Complainant paid for those services with checks drawn on a Bordeaux West bank account.  Shortly thereafter, Respondent sent a proposal to Complaint for a $100,000 upgrade of Complainant’s computer system.  Complainant did not accept that proposal and, by mid-summer 2004, Complainant terminated his business relationship with Respondent. 

           

Complainant then sought transfer of the <bordeauxwest.com> domain name.  He submitted evidence contending the following:  In January 2005, he asked Respondent for information regarding the domain registration in order to transfer the domain to a new host site.  He repeated his request on March 10, 2005, this time attaching a change of account form.  By March 11, 2005, Complainant learned that <bordeauxwest.com> was available for sale on the <sedo.com> website for $3,000.  Respondent then contacted Complainant and indicated that its legal department had researched the issue and determined that Complainant had no legal rights to the domain name.  Furthermore, Respondent indicated that it had no intention of removing <bordeauxwest.com> from sale on the <sedo.com> website as its business included the buying and selling of domains.

 

B. Respondent

 

Although Respondent admits he registered the domain name for Complainant, he claims that the registration was meant to be part of a package deal.  In fact, Respondent says he built a website at this domain name and hosted it on his servers for over a year.  In support of that assertion, Respondent submitted a June 2004 quote it prepared and sent to Complainant to provide web hosting and other services.  Respondent claims that it  ultimately took down the site because it could not reach an agreed contact with Complainant.  

 

Respondent refutes Complainant’s statement that Complainant continued to contact Respondent for transfer of the domain name and instead argues that Complainant did not contact Respondent for eighteen months.  However, Respondent does not refute that Complainant’s bookkeeper originally contacted Respondent in March 2004 nor does he refute the accuracy of Complainant’s evidence of an email correspondence in January 2005. 

 

Furthermore, Respondent argues that the <bordeauxwest.com> domain name has never been used for business purposes.  While Respondent concedes that the domain was for sale for a short period of time, it explains that it has since removed it from sale and donated it to Mr. McArthur’s daughter’s French class.  The class is currently using the website to study the history of French wines.

 

FINDINGS

 

For the reasons discussed below, the Panel finds that the domain name is identical to a trademark in which Complainant has rights, that Respondent lacks a legitimate interest in the domain name, and that Respondent registered and used the domain name in bad faith.

 

DISCUSSION

 

Under paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), the Panel must “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.”  Under paragraph 4(a) of the Policy, to prevail in this case, Complainant must prove each of the following three elements:

 

(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.

 

Procedural Rulings

 

Before addressing the merits, the Panel must first address the procedural dispute between the parties concerning the various late and supplemental submissions. 

 

This Panel has previously criticized the National Arbitration Forum’s Supplemental Rule 7 as being inconsistent with the Rules, as promulgated by ICANN.  Under Rule 12, only the Panel may decide whether to request or accept supplemental submissions.  See Elec. Commerce Media, Inc. v. Taos Mountain, FA 95344 (Nat. Arb. Forum Oct. 11, 2000).  To the extent Supplemental Rule 7 seeks to force a Panel to accept supplemental submissions, it is inconsistent with ICANN’s Rules, and it creates a false expectation among parties that their supplemental materials, prepared on a tight five-day deadline, will be accepted by the Panel.

 

This case highlights yet another flaw with Supplemental Rule 7:  its five-day deadline, measured from the date when the Response would have been due regardless of whether the Response was timely served, is arbitrary and capricious.  As this case shows, when the Response is submitted or served late, strict application of the rule would deprive Complainant of the full five-days for preparation of a reply; in this case, Complainant had only a single day to prepare its reply, which is a patently unreasonable deadline.

 

This arbitrarily short and inflexible deadline is inconsistent with the Policy.  ICANN has granted the Panel the right to “conduct the administrative proceeding in such manner as it considers appropriate,” and has directed the Panel to “ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.”  Rule 10(a)(b).  Consistent with those dictates, the Panel rules as follows:

 

1.            The Panel accepts Respondent’s Response.  It was faxed to the National Arbitration Forum prior to the deadline, and Respondent states that its electronic copy was delayed because of technical difficulties.  Although Respondent failed properly to serve the Response on Complainant, there is no question but that the Response was completed and submitted in a timely fashion.  In light of the additional rulings listed below, Complainant is not prejudiced by the fact that Respondent failed properly to serve the Response.

 

2.            To ensure that the parties are treated fairly and with equality, the Panel interprets Supplemental Rule 7 to allow Complainant five days from actual receipt of the Response to file its supplemental materials.  Complainant should not be penalized on account of Respondent’s failure to properly serve the Response.  Thus, for purposes of Supplemental Rule 7, the Panel rules that Complainant’s reply was timely submitted.

 

3.            The Panel also accepts, for purposes of Supplemental Rule 7, Respondent’s sur reply.  That sur reply was filed within five days of its receipt of Complainant’s sur-reply. To the extent Supplemental Rule 7 operates to grant only Complainant a right of reply, the Panel rules that it is inconsistent with Rule 10(b), which requires the Panel to treat the parties with equality.  Moreover, the Rules as promulgated by ICANN, contemplate a procedure whereby Respondent gets the final word, Pac. Fence & Wire v. Pac. Fence, D2001-0237 (WIPO June 11, 2001) (granting the respondent the right to respond to the complainant’s additional submission); to the extent Supplemental Rule 7 changes that procedure, it is yet another way in which it is inconsistent with the ICANN Rules.

 

4.             Although the Panel rules that the various supplemental submissions were timely submitted for purposes of Supplemental Rule 7, the Panel nevertheless declines to consider the supplemental submissions.  Most of the additional materials submitted by the parties reflects an attempt to simply respond to the other side’s arguments.  Yet, the Rules do not contemplate replies and sur-replies, which generally do little other than drive up the costs of these proceedings for both sides and delay the final resolution.  Rather, supplemental submissions generally are accepted only in the rare cases where new evidence is discovered that was not reasonably available to the party at the time of its initial submission.  See generally Intermap Techs. Corp. v. Salvage Elec. Inc., FA 203130 (Nat. Arb. Forum Dec. 12, 2003).  Because the parties’ supplemental submissions do not contain any new evidence or arguments that could not reasonably have been anticipated by the parties and included in their initial submissions, the Panel, pursuant to Rule 12, declines to allow any supplemental briefing in this case.

 

Identical and/or Confusingly Similar

 

Respondent argues that Complainant cannot prevail under the first factor because Complainant’s trademark is not registered and “Common law Trademark claims do not apply . . . [a]s the name is not ‘famous’” [sic].

 

This is a plain misstatement of the law.  To establish common law trademark rights, Complainant’s mark need not be famous; rather, Complainant need only show that it uses the mark in commerce and that the mark is either inherently descriptive or has acquired secondary meaning.  See generally WIPO Overview of WIPO Panel Views on Selected UDRP Questions, §1.7, at http://arbiter.wipo.int/domains/search/overview/index.html (stating that a complainant can seek domain name transfer based on common-law trademark rights).[1]

 

Although the evidence submitted is admittedly slim, Complainant has submitted sufficient evidence to show that he uses the BORDEAUX WEST mark in commerce and that the mark is not generic or descriptive of Complainant’s retail gift shop services.  As such, for purposes of this proceeding, Complainant has established common law trademark rights.

 

Equally without merit is Respondent’s argument that “Complainant and respondent are not in the same type of business so no confusion would be caused.”  For purposes of this first factor under the Policy, the issue is not whether confusion would be caused in the trademark infringement sense; rather, the issue is whether the domain name and the trademark are similar when physically compared.  See Wal-Mart Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000).  Here, the domain name is identical to Complainant’s trademark.  Accordingly, Complainant has sustained his burden of proving that the domain name is identical to a mark in which he has rights.

 

Rights or Legitimate Interests

 

Respondent concedes that he initially registered the domain name on Complainant’s behalf.  Thus, Respondent cannot claim that this was a domain name that it registered for its own business interests.

 

Nor can Respondent credibly claim that it has been known by the Bordeaux West name.  Respondent hints at such a claim with the following allegation:  “Respondent has owned bordeauxwest.com for one and a half years, and may be known by such name.”  Mere ownership of a domain name is not sufficient to show that a respondent has been “commonly known by the domain name;” if it were, every domain name registrant automatically could claim protection under paragraph 4(c)(ii) of the Policy.  Moreover, Respondent submits no evidence that it was “known by this domain name”, to the contrary, it alleges only that it “may be known by such name.”  Such an indefinite allegation cannot possibly support a claimed legitimate interest under paragraph 4(c)(ii) of the Policy.

 

Respondent’s next claim of legitimate interest is that it has donated the domain name to Mr. McArthur’s daughter’s French class, and that they are using the domain name in connection with their studies of France.  That website, though, appears to be little more than a single webpage with minimal information provided about Bordeaux.  In any event, regardless of whether the class’ alleged use of the domain name for these studies would constitute a legitimate interest, it is clear that this use started only after the dispute arose.  Under the Policy , the relevant time period is the period “before any notice . . . of the dispute.”  ¶ 4(c)(i).  The school was not using the domain name before the dispute began; rather, in that time period, Respondent’s only use was to offer the name for sale through the <sedo.com> website.

 

Finally, the Panel rejects Respondent’s assertion that it has a legitimate interest because Complainant’s use of the Bordeaux West name would infringe the trademark rights of an allegedly “famous” hotel in Bordeaux .  Regardless of whether the Relais Akena Bordeaux West hotel is famous, and whether the use of “Bordeaux West” in its name is as part of a trademark or merely a geographic reference, it is clear that Respondent has no rights or interest in the Bordeaux West name by virtue of a third party’s use of that name.  The issue under the this second factor of the Policy is whether Respondent has a legitimate interest, not whether Respondent can identify someone else who might have a legitimate interest.

 

Registration and Use in Bad Faith

 

In light of the finding that Respondent lacked a legitimate interest in the domain name, its offer to sell the domain name for $3,000 through the <sedo.com> website is classic bad faith cybersquatting.[2]  It reflects an attempt to profit from Complainant’s trademark under pargraph 4(b)(i) of the Policy, which provides that it is bad faith if a respondent registers a 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 . . . for valuable consideration in excess of [its] documents out-of –pocket costs directly related to the domain name.” 

 

The bad faith is exacerbated in this case by the fact that Respondent admits that it initially registered the domain name on behalf of Complainant.  See Bootie Brewing Co. v. Ward & Grabebootie Inc., D2003-0185 (WIPO May 28, 2003) (finding bad faith where agent registered domain names in her own name and subsequently transferred them to her company).  For Respondent to have acted as Complainant’s agent in the registration of the name, and then to refuse to transfer the name to Complainant, reflects a bad faith breach of the agent’s duties to its principal.

 

DECISION

 

Having established all three elements required under the Policy, the Panel concludes that relief shall be GRANTED.

 

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

 

 

 

David Bernstein, Panelist
Dated: July 1, 2005

 

 

 

 

 

Click Here to return to the main Domain Decisions Page.

 

Click Here to return to our Home Page

 

National Arbitration Forum