DECISION

 

Clear Blue Waters, Inc. v. Frank Becker / Cubby Lures

Claim Number: FA2402002086236

 

PARTIES

Complainant is Clear Blue Waters, Inc. ("Complainant"), represented by Jaime Rich Vining of Friedland Vining, P.A., Florida, USA. Respondent is Frank Becker / Cubby Lures ("Respondent"), represented by Nicholas Caralis, Illinois, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <cubbylure.com>, registered with DNC Holdings, Inc.

 

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 Panelist in this proceeding.

 

Ho-Hyun Nahm and Kendall C. Reed as Panelists, and Eduardo Magalhães Machado as Chair.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 29, 2024; Forum received payment on February 29, 2024.

 

On March 4, 2024, DNC Holdings, Inc. confirmed by e-mail to Forum that the <cubbylure.com> domain name is registered with DNC Holdings, Inc. and that Respondent is the current registrant of the name. DNC Holdings, Inc. has verified that Respondent is bound by the DNC Holdings, Inc. 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 March 5, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 25, 2024 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 to postmaster@cubbylure.com. Also on March 5, 2024, 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 March 22, 2024.

 

On March 26, 2024, the Complainant submitted a written Additional Submission.

 

On March 29, 2024, the Respondent submitted a written Additional Submission.

 

On April 3, 2024, pursuant to Respondent's request to have the dispute decided by a three-member Panel, Forum appointed Ho-Hyun Nahm and Kendall C. Reed as Panelists, and Eduardo Magalhães Machado as Chair.

 

On April 15, 2024, an Additional Submission Order was issued, in view of the Panel's understanding of the Registrar's contradictory information about the current registrant of the domain name, to which the Registrar, on the same day, identified Mr. Nicholas Caralis as the account holder, although the domain name contact information is listed as Frank Becker for the name and the organization/company is Cubby Lures.

 

On April 17, 2024, the Complainant submitted a second written Additional Submission. On April 17 and April 18, 2024, the Respondent submitted a number of Additional Submissions.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

 

The Complainant argues that it owns and operates Clear Blue Waters, a manufacturer of innovative fishing tackle, and, through its predecessor, has used the trademark CUBBY in connection with its fishing lures, fishing tackle and fishing spinners. In addition, the Complainant states that it is the current owner of the U.S. Registration No. 1,979,775, issued by the United States Patent and Trademark Office ("USPTO"), for the CUBBY trademark, filed in 1995 and registered on June 11, 1996.

 

Further, it states that the domain name in dispute is undoubtedly confusingly similar to Complainant's CUBBY trademark, as it fully incorporates such trademark, including the generic term "lure", which would be insufficient to differentiate the domain name, as well as the addition of a generic top level domain such as ".com".

 

Moreover, the Complainant affirms that the Respondent has no rights or legitimate interests in the disputed domain name, as the Respondent would not be commonly known by the domain name (and would not own any form of legitimate business enterprise under that name), and Respondent's use of the domain would not be in connection with a bona fide offering of authorized good or services, nor would be fair.

 

According to the Complainant, the Respondent would be using the domain to falsely suggest an association or affiliation with Complainant, as it would be using the Complainant's CUBBY trademark throughout its website and trying to divert Internet users to promote Respondent's competitive "Panfishpro NEXTALGX" fishing products for its own commercial gain.

 

Thus, the Complainant argues that the Respondent's registration of the domain name, and the use thereof, should be considered to be in bad faith, given that Respondent would have registered the domain name primarily for purposes of pecuniary gain and to suggest to consumers that it is associated with the Complainant and its fishing goods.

 

B. Respondent

 

The Respondent argues that it has maintained top level domain names with an effective date of January 1, 1998, for the Complainant by direction of the Complainant's predecessor, all these domain names directly associated with the CUBBY trademark. It affirms that the Complainant has acquired the CUBBY trademark through a Trademark Assignment Agreement, registered with the United States Patent and Trademark Office (USPTO) on June 27th, 2023.

 

Further, the Respondent claims that, in 2012, it would have given a financial support to the predecessor of the Complainant, in exchange for limited use of the CUBBY trademarks and domain names. In addition, it claims that the Complainant, through its predecessor, has given to the Respondent the use of Complainant's domain names, including <cubbylure.com>, and trademarks, including the CUBBY trademark, with evidence pointing to a commencing date of June 14th, 2013.

 

Moreover, the Respondent alleges that it was commissioned by the predecessor of the Complainant to act as a representative of its products using the CUBBY trademark in replies to consumers of the Complainant's goods. It also claims that it began development, manufacturing, packaging and distribution of the goods associated with said trademark starting from August 23, 1983, being deeply involved with the CUBBY trademark for more than 35 years, and being the responsible for elevating the goods to the glory in which it revels today.

 

According to the Respondent, prior to the Complaint, Respondent would have informed Complainant of the declarations made in its response, to which the Complainant would have understood and acknowledged the rights given to the Respondent, by predecessor, concerning the CUBBY trademark and associated domain names, and requested modifications to these rights. The Respondent claims that negotiations between the Parties commenced on March 10, 2022, and ended on September 18, 2023, in which it was discussed the transfer of the domain names in custody of the Respondent.

 

Further, the Respondent affirms that the disputed domain name points to a website which would be consistent with the Complainant's predecessor's instructions and permissions regarding the CUBBY trademark and goods. It alleges that the Complainant's predecessor would have expressly allowed Respondent exclusive use of its trademarks, including its domain names, to which the Complainant would have acknowledged such use by its attempt to renegotiate the arrangement with the predecessor.

 

C. Additional Submissions

 

In its additional submission, the Complainant requests that the Response be dismissed by the Panel, as Panfishpro or Nicholas Caralis would not be authorized by the Respondent "Frank Becker / Cubby Lures" to submit any response on behalf of the Respondent. Further, the Complainant reiterates its initial arguments, i.e. (i) the disputed domain name would be confusingly similar to Complainant's trademark, (ii) Respondent would have no rights or legitimate interests in or to <cubbylure.com>, and (iii) Respondent registered and would be using <cubbylure.com> in bad faith.

 

In response, the Respondent filed its additional submission, in which it claims that it is the true owner of the domain name in dispute, and the account holder of the Registrar which keeps the record for the domain name <cubbylure.com>. In addition, it alleges that the Complainant was aware of the disposition of the domain name <cubbylure.com>, prior to acquiring CUBBY assets, having demonstrated knowledge in Respondent's authorized rights in the use of the domain name <cubbylure.com>. It reiterates its initial arguments, emphasizing that the Complainant initiated negotiations with the Respondent concerning domain names, including the disputed domain name, which would show Complainant's written acknowledgment that the disputed domain name was not part of its purchase trademark agreement with the predecessor.

 

In its second additional submission, the Complainant stated that the Registrant Frank Becker of Cubby Lures is deceased, submitting a declaration of his widow Dianne Brzycki, in which she authorizes the transfer of the domain name.

 

Following the Panel's order directed to the Registrant of the Disputed Domain Name, as noted above, the parties have filed a number of supplemental additional submissions. These supplemental additional submissions were not requested by the Panel, and they are not accepted into the record.

 

FINDINGS

The Registrar initially stated Frank Becker / Cubby Lures as the current Registrant of the disputed domain name. Afterwards, in response to the Panel's Additional Submission Order, the Registrar confirmed that, although the domain name contact is listed as Frank Becker for the name and the organization/company is Cubby Lures, Mr. Nicholas Caralis is the account holder. Therefore, the Panel finds that Mr. Nicholas Caralis is the legitimate Respondent to this Complaint.

 

The Panel declines to make any further specific findings in this case as the dispute between the parties presents evidentiary and legal issues that are beyond the scope of the Policy.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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; and

(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.

 

PRELIMINARY ISSUE: BUSINESS OR CONTRACTUAL DISPUTE OUTSIDE THE SCOPE OF THE UDRP

 

Panels have recognized that "the purpose of the Policy is not to resolve disputes between parties who might each have legitimate rights in a domain name. The purpose of the Policy is to protect trademark owners from cybersquatters, that is, from people who abuse the domain name system in a very specific way, which specific way is outlined in Paragraph 4(a) of the Policy." See Courtney Love v. Brooke Barnett, FA0703000944826 (Forum May 14, 2007). Also see Swisher International, Inc. v. Hempire State Smoke Shop, FA2106001952939 (Forum July 27, 2021) ("In certain cases Panels may not equipped to make fine judgements on the veracity of conflicting statements and such disputes are better suited to resolution through the courts with their more robust evidentiary rules and procedures").

 

The Complainant has submitted a copy of the USPTO registration certificate for the CUBBY trademark for fishing lures, fishing tackle and fishing spinners, in class 28 (U.S. classes 22, 23, 38 and 50), registered in the name of DiMac Corporation, on June 11, 1996. In Respondent's response and in Complainant's additional submission, both have submitted a Trademark Assignment Agreement between DiMac Corporation, Cubby Fishing Lures and Shadow Products of Crete Illinois as the seller, and Clear Blue Waters, Inc. as the buyer, which included the CUBBY trademark, recorded with the USPTO on June 27, 2023.

 

Complainant claims that, because of the amount of resources, time, and effort spent on marketing and promoting the CUBBY trademark in the fishing industry, as well as its extensive and exclusive use of said trademark, Complainant has built up consumer recognition and developed substantial goodwill in the CUBBY trademark. According to the Complainant, it has been successful in educating the public to associate the mentioned trademark with Complainant's goods. In addition, it claims that the Respondent is not commonly known by the disputed domain name, nor conducts a legitimate business through it.

 

On the other hand, Respondent claims that it had a prior relationship to the Complainant's predecessor, in which, in exchange of financial support, it gained the right to use the CUBBY trademark, as well as the disputed domain name. Respondent has even submitted evidence of (i) a packaging label affixed to Respondent's goods, bearing the CUBBY trademark (annex J of the Response), (ii) a screenshot of a post from the Respondent's company Panfishpro LLC's Facebook page, dated May 27, 2014, relating Respondent's goods to the CUBBY trademark (annex L of the Response), and (iii) a screenshot of the website redirected by the domain name <cubbylures.com>, dated May 31, 2013, which shows the already existing connection at that time of the CUBBY trademark with the company Panfishpro, LLC (annex H of the Response).

 

From all the evidence submitted by the Respondent, Respondent has created reasonable doubt that, although the Complainant is the current owner of the CUBBY trademark, the Respondent has been connected to the CUBBY trademark and its goods since at least 2013, and has been known by the public also through that mark or name.

 

It is also important to note that the "Trademark Coordination Agreement" and exchange of e-mails between Patrick Kavanaugh, the owner of Clean Blue Waters (annex B of the Complaint) (referred to in said Agreement as "Licensor"), and Nicholas Caralis, the owner of Panfishpro, LLC (referred to in said Agreement as "Licensee"), submitted by the Respondent (annex P of the Response), evidence that the Complainant, prior to the Complaint, was aware of the Respondent's rights and ownership over the disputed domain name. According to clause 2 of said Agreement (Licence Grant and Other Conditions), subclause 2.4 "Business Names and Domain Names", it states that "[a]s part of this Agreement, Licensee agrees to transfer to Licensor ownership and control of domain names, social media identifiers, and any other commercial identifiers of the legacy CUBBY or MINI-MITE brands, specifically to include cubbybaits.com, cubbyjig.com, cubbyjigs.com, cubbylure.com, cubbylures.com, fishcubby.com, mini-mite.com, and any other similar properties or social media identifiers.".

 

Lastly, regarding the second additional submission of the Complainant and the declaration of Mr. Frank Becker's widow, given that Mr. Nicholas Caralis is the current account holder according to the Registrar, this Panel considers that Ms. Dianne Brzycki does not have the power of disposal over the domain name to authorize its transfer.

 

In this sense, the Panel concludes that the Complainant has failed to prove that the Respondent registered and is using the disputed domain name in bad faith, nor that the Respondent is not commonly known by the disputed domain name, given the Respondent's relationship with the Complainant's predecessor, the analysis of which is beyond the scope of the UDRP and needs to be further analyzed in an appropriate forum, since it is essential for the correct judgment of the ownership of the disputed domain name.

 

The Panel finds that the above-mentioned evidentiary and legal issues, as well as others raised by this dispute, are not appropriate to the very narrow scope of the Policy and would best be dealt with in a forum with more robust evidentiary tools (see Swisher International, Inc. v. Hempire State Smoke Shop, FA2106001952939 (Forum July 27, 2021)). Therefore, the Panel finds that the disputed domain name ought to be maintained under the ownership of the Respondent until the parties can have its destiny resolved in a suitable forum.

 

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <cubbylure.com> domain name REMAIN WITH Respondent.

 

 

 

Ho-Hyun Nahm and Kendall C. Reed as Panelists

Eduardo Magalhães Machado as Chair

Dated: April 19, 2024