DECISION
Baja Marine Corporation v Wheeler Technologies, Inc.
File Number: FA0103000096954
PARTIES
The Complainant is Baja Marine Corporation, Bucyrus, OH, USA (Complainant) represented by Mark V.B. Partridge, of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson. The Respondent is Wheeler Technologies, Inc., Fort Lauderdale, FL, USA (Respondent) represented by Jay Sanchelima, of Sanchelima & Associates, P.A.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is "bajaboats.com" registered with Network Solutions.
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.
Honorable William H. Andrews, Arbitrator
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (the Forum) electronically on March 28, 2001; the Forum received a hard copy of the Complaint on March 30, 2001.
On April 2, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name "bajaboats.com" is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 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 10, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the Commencement Notification), setting a deadline of April 30, 2001 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@bajaboats.com by e-mail.
A timely response was received and determined to be complete on April 30, 2001.
On May 9, 2001, Complainant’s Additional Submission was received.
On May 10, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable William H. Andrews, as Panelist.
On May 10, 2001, Respondent objected to consideration of Complainant’s Additional Submission by the Panel.
RELIEF SOUGHT
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1) Complainant contends that Respondent’s domain name BAJABOATS.COM is identical to Complainant’s BAJA trademark.
2) Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name.
3) Complainant contends that Respondent’s registration and use of the disputed domain name is in bad faith on the part of Respondent.
B. Respondent
1) Respondent contests that the domain name BAJABOATS.COM is identical to Complainant’s BAJA trademark.
2) Respondent contends that Respondent does have rights or legitimate interests in the disputed domain name.
3) Respondent contests that Respondent acted in bad faith by registering and using the disputed domain name.
THE ADDITIONAL SUBMISSION
The Panel has decided to consider Complainant’s Additional Submission (May 9, 2001) in reaching its decision. The Panel takes note of Respondent’s objection (May 10, 2001) that the Additional Submission is outside the rules. However, Respondent’s objection is denied, because the Additional Submission provides information to the Panel relevant to reaching a decision on this matter. In addition, the Additional Submission addresses new issues raised by the Respondent’s Response, that in fairness should be addressed by both parties.
FINDINGS
The weight of the evidence establishes that:
1. Baja Marine Corporation and its predecessor-in-interest has sold boats with the BAJA mark continuously from 1972.
2. Baja Marine Corporation has generated over Eight Hundred Thirty Million Dollars ($830,000,000.00) selling BAJA marked boats and has spent over Eleven Million Seven Hundred Thousand Dollars ($11,700,000.00) advertising BAJA marked boats.
3. Complainant owns the BAJA mark and has a properly registered trademark, as of December 25, 1973, with the U.S. Patent and Trademark Office. (Registration No. 975,381).
4. Complainant continues to own and promote its trademark presently.
5. The registration of the BAJA mark enjoyed by Complainant is incontestable and not geographically limited.
6. Complainant owns the goodwill associated with the BAJA mark.
7. Respondent registered the domain name BAJABOATS.COM on October 28, 1997.
8. The domain name is confusingly similar to Complainant’s trademark in BAJA boats.
9. Respondent develops Internet web sites and owns several web sites over which it claims trademark rights, including INFOEXPLOSION (Reg. Number 2,327,767).
10. Respondent has no trademark rights in the BAJA mark.
11. Respondent has operated BAJABOATS.COM, one of its web sites, since 1997.
12. Respondent does not charge any person for the use of the BAJABOATS.COM site. Respondent’s use of BAJABOATS.COM is non-commercial.
13. Respondent’s BAJABOATS.COM site offers services to Complainant’s customers, including Event Information, a Chat Room, a BAJA Owners Satisfaction Survey and an Owners Gallery of Photographs. Users of the site may place classified ads to sell or buy boats, including Baja boats. The site allows owners to discuss Baja boat safety features and contains related photos of Baja boats.
14. Respondent is not affiliated with Complainant and BAJABOATS.COM has a prominent disclaimer on the page’s front that states this.
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 canceled 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.
Identical and/or Confusingly Similar
The domain name registered by Respondent is confusingly similar to the registered trademark owned by Complainant. While the word BAJA is used by multiple groups as a prefix or part of a trademark, BAJABOATS clearly refers to Complainant’s business and its trademark of BAJA used for its boats. An Internet user seeing the words "BAJABOATS.COM" could quite naturally believe that it referred to Complainant. Therefore, the Panel finds Complainant has shown the Respondent’s registered domain name is confusingly similar to a trademark in which Complainant has rights.
Rights or Legitimate Interests
Under 4(c) of the Policy, evidence of a registrant’s rights or legitimate interest in the domain name includes:
(i) demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to the dispute; or
(ii) An indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights; or
(iii) Legitimate noncommercial or fair use of the domain name without intention to misleadingly divert consumers or to tarnish the trademark.
The Panel recognizes that Complainant holds the trademark for Baja marked boats. However, Respondent makes a non-commercial use of BAJABOATS.COM as it receives no funds from users of the site. Furthermore, BAJABOATS.COM serves as a neutral forum for discussion by consumers of Baja boat products, with both the possibility of positive and negative commentary. This is a fair use of the domain name since the evidence demonstrates that, while an Internet user might become confused by the name BAJABOATS.COM, no intention by Respondent to intentionally mislead and divert consumers or to tarnish the Baja trademark held by Complainant is shown. Respondent’s prominent disclaimer that the manufacturer should be sought elsewhere when the BAJABOATS.COM site is entered reinforces this conclusion. Therefore, the Panel finds Respondent has a legitimate interest in the domain name BAJABOATS.COM.
Registration and Use in Bad Faith
Under Paragraph 4(b) of the Policy, evidence of a respondent’s bad faith registration and use include, but are not limited, to:
(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 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.
Based on the evidence submitted, the Panel finds no bad faith on the part of Respondent in its registration and use of BAJABOATS.COM for the following reasons:
(i) There is no showing that Respondent intends to sell, rent or otherwise transfer the domain name registration to Complainant.
(ii) There is no evidence that Respondent has engaged in a pattern of registering domain names for the purpose of preventing trademark owners from reflecting their mark in a corresponding domain name. In fact, Complainant has not alleged that it even wishes to use the domain name BAJABOATS.COM.
(iii) Complainant sells boats and Respondent is a web designer and boat consumer. Complainant and Respondent are not competitors. It is likely that, at least to some limited extent, Respondent’s site generates commercial interest in Complainant’s boats even though third-party consumers report safety problems with (or criticize) Baja products.
(iv) While Respondent’s use of BAJABOATS.COM could cause an Internet user to be mistaken about who owns and operates the BAJABOATS.COM website, this alone is insufficient to show bad faith on Respondent’s part. Respondent, by making a fair, non- commercial use, with an adequate and prominent disclaimer on the site’s front, does not intentionally confuse Internet users about the source, sponsorship, affiliation or endorsement of the web site or the Baja mark.
DECISION
Based on the foregoing findings and conclusions, and pursuant to Rule 4(i), it is decided as follows:
THE UNDERSIGNED ARBITRATOR DIRECTS THAT THE REGISTRATION OF THE DOMAIN NAME BAJABOATS.COM REMAIN IN THE OWNERSHIP OF THE RESPONDENT, WHEELER TECHNOLOGIES, INC. THE CLAIMANT’S REQUEST FOR RELIEF IS DENIED.
Honorable William H. Andrews, Panelist
Dated: May 17, 2001
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