Bob Vandergriff, Jr. and
Vandergriff Motorsports, Ltd. v. Ken Sklute and Racers Edge Photography
Claim Number: FA0704000959691
PARTIES
Complainants are Bob
Vandergriff, Jr. and Vandergriff Motorsports, Ltd. (collectively,
“Complainant”), represented by W. Scott Creasman, of Powell Goldstein LLP, 1201 West
Peachtree Street, Atlanta, GA 30309. Respondents
are Ken Sklute and Racers Edge Photography (collectively,
“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bobvandergiff.com> and <vandergriffmotorsports.com>,
registered with Schlund+Partner Ag.
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.
Hon. Sir
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on April 11, 2007; the
National Arbitration Forum received a hard copy of the Complaint on April 12, 2007.
On April 12, 2007, Schlund+Partner
Ag confirmed by e-mail to the National Arbitration Forum that the <bobvandergriff.com>
and <vandergriffmotorsports.com>
domain names are registered with Schlund+Partner Ag and that the Respondent is
the current registrant of the names. Schlund+Partner
Ag has verified that Respondent is bound by the Schlund+Partner Ag registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution
Policy (the “Policy”).
On April 19, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of May 9, 2007 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@bobvandergriff.com
and postmaster@vandergriffmotorsports.com by e-mail.
The Response was received after the deadline for response. It was also not submitted in hard copy
format. The Forum has therefore
determined it to be deficient according to Supplemental Rule 5(a).
An Additional Submission was submitted by
Complainant on May 16, 2007. Payment for
the filing fee on this submission was received by National Arbitration Forum
after the deadline for additional submissions.
In the interests of justice, the Panel has
decided to admit both the Response and the Additional Submission, despite the above
deficiencies. Both documents were
essential to the Panel’s understanding of the issues in this case.
RELIEF SOUGHT
Complainant requests that the disputed domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainants filed signed declarations made under penalty in support of
the Complaint.
Complainant, Bob Vandergriff, Jr. (“BVJ”), is a professional drag-car
racer in the National Hot Rod Association.
This body is the largest organiser of drag auto racing and promotes drag
racing events throughout the
Complainant, Vandergriff Motorsports Ltd (“VMS”),
is the company formed by BVJ to operate his business as a professional racing
driver and market merchandise relating to his activities. BVJ began his professional racing career in
1994 and since then has enjoyed considerable success in that career.
In connection with BVJ’s racing career, both Complainants have
developed an official line of products using the mark of VANDERGRIFF. These include uniform and other jackets,
t-shirts, other items of apparel, blankets, seat cushions and other items of
merchandise.
There is no registered trade mark for VANDERGRIFF or VANDERGRIFF
MOTORSPORTS but Complainants allege that the marks have achieved sufficient
notoriety as to qualify as common law trade marks. Complainants refer to UDRP cases which have found
that professional racing drivers can have trade marks in their personal names, where
there has been merchandising under that name.
See Danica Racing Inc and Danica
Patrick v. Webmaster, FA 629203 (Nat. Arb. Forum Mar. 3, 2006). Complainants refer to other cases such as
Complainant hired Respondent, Mr. Sklute, as a public relations manager
in February 2006. They also employed Respondent,
Racers Edge Photography (“REP”), to create a website focused on Complainant,
which would offer for sale Complainant’s products. REP created the website and was paid $4,500. The disputed domain names were registered on
February 14, 2006 in the name of Respondent.
It is not clear whether this was a joint registration or whether REP is
a corporate entity or just a trading name for Mr. Sklute.
Complainant claims that it did not know that Mr. Sklute had registered
the disputed domain names thus. BVJ says
so as part of a signed declaration made under penalty. Mr. Sklute, in an unsigned, unsworn
declaration, says that Complainants knew he had registered the name. However, Mr. Sklute does not say why the
disputed domain names were registered in his and/or REP’s name(s).
In September 2006, Complainant dismissed Mr. Sklute as public relations
manager. Respondents refused to turn
over the disputed domain names and continued to operate the website without
Complainants’ approval.
From September 2006 until recently, Respondent operated the same
website at both disputed domain names.
The website shows it was intended to be the official website of
Complainants. It offered information
about Complainant and those associated with them in motor racing. There was also a link to Complainant’s
products, as well as to photography products offered by Respondent.
More recently, Respondent blocked access to the website at these domain
names. Respondent has no rights or
legitimate interest in the domain names.
Respondent REP has been paid $4,500 for developing the website. Although Respondent Sklute claims that other
monies are owed to him by Complainant for other matters, Respondent has no
right to claim a common law lien over the disputed domain names. Accordingly, Respondent has no rights or
legitimate interests in the disputed domain names.
This case is similar to that of Ward
Burton v. Athlete Direct, FA 100652
(Nat. Arb. Forum Dec. 7, 2001). There, a
professional race car driver had engaged the respondent to perform marketing
services on his behalf, including developing a website to promote the driver’s
racing-related activities and the sale of merchandise bearing his name. When the business relationship terminated, the
respondent, who had registered the domain names in his own name, refused to
transfer the domain names to the driver.
The panel found that the driver held common law trade marks in respect
of his professional racing activities and that the domain names were identical
to those marks. The panel found that the
respondent had knowledge of the trade mark rights when registering the names
based on his business relationship and that the failure to transfer the
registrations after termination of the business relationship established bad
faith registration and use. Complainants
submit that this case is identical with the present case.
Complainant submits that Respondent has registered or used the disputed
domain names in bad faith:
(a) by intentionally attempting to attract internet users to the
websites by creating the likelihood of confusion with the Complainants’ marks
as to the source, sponsorship, affiliation or endorsement of Respondent’s
website or a product or service thereof;
(b) by
registering the disputed domain names to prevent the trade mark owner from
using the mark in a corresponding domain name.
Respondent, Sklute, should not have registered the disputed domain names
in his own name and/or that of REP and this failure constitutes bad faith. Respondent is intentionally preventing Complainant
from using the disputed domain names. The
websites now have been changed to block access by means of a message stating
“Error 403-forbidden. You tried to
access a document for which you don’t have privileges.”
Complainant sent a “cease and desist” letter to Respondent on January
18, 2007. No reply was made by Respondent.
B. Respondent
Respondent concedes that the domain names in question are identical or
confusingly similar to trade marks or service marks in which Complainant has
rights. Respondent claims legitimate
interests in the disputed domain names in that Mr. Sklute is an unpaid web designer,
retaining the domain name registrations as security for payment, under a kind
of lien. Further, Respondent claims that
the matter involves a commercial dispute outside the scope of the Policy.
In support of his claim, Respondent exhibited an unsigned and
unattested declaration. There are also
exhibited a number of unauthenticated e-mails.
The unsigned declaration recounts a number of alleged debts which
Respondent Sklute says Complainant owes him.
In particular, he claims that he has not been paid for photographs in
which he owns the copyright or for traveling expenses. He claims that he is owed money by BVJ, not
just for unrelated matters but for the website as well.
He says that he registered the disputed domain names in February 2006,
with BVJ being aware of the registration without any objection. He claims to know nothing of any relationship
with a website parking company.
C. Complainant’s
Additional Submissions
Complainant alleges that Respondent has attempted to “cloud the issue”
by trying to create a dispute involving Respondent’s claim for photographic
services and breach of copyright in the hope of bringing the dispute outside
the scope of the Policy. Complainant
asserts that REP has been paid in full for creating the website and exhibited a
paid cheque for $4,500. In any event, any
claims for photographic services and copyright are irrelevant to the ownership
of the disputed domain names.
Moreover, Mr. Sklute has virtually conceded, not only the first element
of the Policy, namely that the disputed domain names are identical to and
confusingly similar to Complainants’ marks, but also bad faith. Complainant discussed a number of UDRP cases
concerning alleged claims for liens over domain names for payment for web
design services.
FINDINGS
(a) Complainants
have common law trade marks in respect of the expressions “Bob Vandergriff” and
“Vandergriff Motorsports.”
(b) Mr.
Sklute was engaged by Complainant in February 2006 as a public relations
consultant. REP was engaged by
Complainant to create a website. REP was
paid $4,500 for preparing the website for Complainant. It is unclear whether REP is a separate legal
entity from Mr. Sklute or merely his trading name.
(c) Respondent
registered the website in the names of Mr. Sklute and REP and not those of
Complainants. Since then, until
recently, Respondent used the website to attract internet users to the website which
clearly refers to Complainant and Complainant’s range of products.
(d) Mr.
Sklute may have claims in respect of breach of copyright and for traveling and
other expenses, for which he has not received payment from Complainants. No finding is made in that regard.
(e) The
disputed domain names were registered in October 2006. Respondents have refused to transfer the
disputed domain names to Complainants, claiming a lien.
(f) Complainants sent a “cease and desist” letter to Respondent on January 17, 2007 but no reply was made thereto.
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 Complainant must prove each
of the following three elements to obtain an order that a domain name should be
cancelled or transferred:
(1)
the
domain name registered by Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has rights;
(2)
Respondent
has no rights or legitimate interests in respect of the domain name; and
(3)
the
domain name has been registered and is being used in bad faith.
Identical and/or Confusingly
Similar
Complainants have satisfied the first criterion under Paragraph
4(a). There are numerous cases under the
Policy concerning what is required to prove a common law trade mark, especially
in the case of a sportsperson, pop star, author or other celebrity who markets
merchandise under his or her name. The
cases are conveniently summarised in Asper
v. Communication X Inc., D2001-0540 (WIPO June 21, 2001) and in R.E. (Ted) Turner v. Fahmi, D2002-0251
(WIPO July 4, 2002).
Respondent concedes that the disputed domain names are identical or
confusingly similar to Complainants’ unregistered trade marks. Accordingly, the Panel has no hesitation in
concluding that the first limb of Paragraph 4(a) of the Policy has been proved.
Rights or Legitimate
Interests
The Panel finds that this case is very
similar to that cited by Complainants of Ward
Burton v. Athlete Direct, supra, in
that the parties had a previous business relationship, including a requirement
for Respondent to develop a website for Complainants. When the business relationship terminated,
Respondent, who had registered the disputed domain names in his own name,
refused to transfer the disputed domain names to Complainants. In particular, the Panel found that the
failure to transfer the registrations after termination of the business
relationship established bad faith registration and use and could not find any
legitimate right under Paragraph 4(c).
The situation really comes down to
Respondents’ claim which, unlike Complainants, is unsupported by a signed (let
alone sworn) statement. The claim is
that there is a right to a common law lien vested in the creator of a website
over the domain names pertinent to the website.
This is a novel but, possibly legitimate, extension of the common law
doctrine of “mechanics lien” to the modern circumstances of the internet. This Panel is unaware whether such an
assertion of a lien has yet been tested in a superior court in a common law
jurisdiction.
However, even assuming for the purposes of
the present argument, that a common law lien can exist in favour of the
developer of a website over the domain names pertinent to the website, the common
law on “mechanics liens” indicates such that the “mechanic” (using that word in
a broad sense) can claim a lien only for the amount of the work done on the
item on which the “mechanic” worked.
Thus, an automobile mechanic could claim a lien only for the amount of
the cost of repairing the automobile. In
this case, the Panel is satisfied from the evidence that REP has been paid
$4,500, which appears to have been the agreed cost of creating the website.
A lien cannot be used as general security for
any other debts that the website developer may have against his former
client. Accordingly, Respondent’s claims
for unpaid travel expenses and for breach of copyright will have to be
litigated in the normal way through the courts.
In the Panel’s view, this is not a case where
it is inappropriate to invoke the UDRP on the grounds that there is a
commercial dispute between the parties.
The Panel agrees with the submissions from counsel for Complainant that
there is no basis for refusing to deal with this case under the Policy merely
because Respondent claims that he has been unpaid by Complainants in respect of
a range of matters.
Accordingly, the Panel concludes that
Respondent has not proved that he comes within any part of Paragraph 4(c) and
Complainants have therefore proved the second limb of Paragraph 4(a) of the
Policy.
Registration
and Use in Bad Faith
As the previous case involving a motor racing
driver and a website developer shows, the Panel may infer bad faith
registration and use in circumstances such as the present. Respondent clearly knew at the time of
registration of Complainants’ rights in respect of the disputed domain names as
reflecting its marks. Moreover, diverting
traffic from Complainant in the way described, clearly indicates bad faith. This was intended to be Complainant’s official website and Respondent
well knew that.
One would have thought that, if Mr. Sklute
had a legitimate claim, he would have responded to the “cease and desist”
letter sent by the attorneys for Complainant.
Moreover, Respondent has offered no explanation as to why, when REP was
engaged (and paid) to create a website for Complainant, he registered the
disputed domain names in his own name or names.
The Panel prefers to accept the evidence of BVJ
that he did not know that the disputed domain names were being registered in
Respondent’s names at the time. His
evidence is by signed statement made under penalty, whereas Mr. Sklute has
merely made an assertion in an unsigned statement.
Accordingly, the third limb of Paragraph 4(a)
of the Policy has been proved.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the domain
name <bobvandergriff.com> be
transferred by Respondents to Complainant Bob Vandergriff, Jr., and that the
domain name <vandergriffmotorsports.com>
be transferred by Respondent(s) to Vandergriff Motorsports Ltd.
Hon. Sir
Dated:
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