WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Bite, LLC v. Back9, Inc.

Case No. D2001-0852

 

1. The Parties

The Complainant is Bite, LLC, a Washington Limited Liability Corporation, with its principal place of business in Preston, Washington 98050-9999, United States of America ("Complainant"). The Complainant is represented by Perkins Coie, LLP of 1201 Third Avenue, 48th Floor, Seattle, Washington, 98101-3099, United States of America.

The Respondent is Back9, Inc., an entity with a mailing address of 14 Woodbury Lane, Rockport, Massachusetts 01966, United States of America ("Respondent"). The administrative contact for Respondent is John Arnold of the same address as Respondent.

 

2. The Domain Name and Registrar

The Domain Name subject to this Complaint is <bitegolf.com> (the "Disputed Domain Name"). The Registrar of the Domain Name is Network Solutions, Inc., of 505 Huntmar Park Drive, Herndon, Virginia 20170, United States of America (the "Registrar").

 

3. Procedural History

Complainant filed a complaint (the "Complaint") with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on July 4, 2001.

The Center verified that the Complaint satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Uniform Policy"), the ICANN Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules"), and the WIPO Center Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), in accordance with paragraph 4(a) of the Rules, and paragraph 5 of the Supplemental Rules. The Administrative Panelist (the "Panel") is satisfied that the Complaint satisfied the Rules and Supplemental Rules.

A request for registrar verification was issued by the Center to the Registrar on July 5, 2001, and a response by the Registrar was received by the Center on July 10, 2001.

A Formal Notification of the Complaint and Commencement of the Administrative Proceeding (the "Commencement Notification") was communicated by the Center to the Respondent by email, facsimile, and courier on July 11, 2001. The deadline for submission of a Response was set as July 30, 2001. On July 31, 2001, a Response was received from the Respondent by certified mail dated July 30, 2001, at the Center. On August 7, 2001, the Center contacted the Respondent by email acknowledging the hard copy but requesting an electronic version of the Response to continue processing the Response. On August 8, 2001, the Complainant emailed the Center and Respondent stating that they had not received a copy of the response and requested the Panel find Respondent in default because of violation of the Rules. On August 10, 2001, the Center emailed Respondent again acknowledging receipt of the Response in hard copy, stating a copy would be mailed to Complainant and failure to submit the Response in electronic copy and to serve Complainantís representative were deficiencies, which would be noted in the record.

Based on a Statement of Acceptance and Declaration of Impartiality and Independence, duly signed by the Panel and dated August 20, 2001, the Panel was duly appointed by the Center on August 22, 2001. A notification of appointment of the Panel was communicated by the Center to both Complainant and Respondent on August 22, 2001.

On August 24, 2001, Respondent notified the Center and the Panel stating that his computer crashed and he was unable to submit the Response by electronic copy. The Panel gave Respondent until September 12, 2001, to get an electronic version of the Response to the Center and Complainant.

The Panel has not received any additional requests from Complainant or Respondent regarding further submissions, waivers, or extensions of deadlines. The Panel has not found it necessary to request any further information from the parties. The date scheduled for the issuance of the Panelís decision was September 5, 2001. The Panel has requested additional time to review the information received and the new decision date is September 26, 2001.

 

4. Factual Background

The Complainant is Bite, LLC ("Bite"). Bite designs and manufactures golf shoes and related products under its various trademarks, including BITE and BITE GOLF. The Complainant has produced evidence of United States Patent and Trademark Office ("USPTO") Registrations for BITE, U.S. Reg. 2,177,149, and 2,177,168 (See Annex 7). Both registrations show that Bite first used its BITE marks in commerce in 1996, and both marks were registered on July 28, 1998. Complainantís mark BITE GOLF, Serial Number 75-151044 is listed as abandoned and the last non-final action was mailed on May 21, 1999 (See Annex 8). Bite has owned the domain name <bite-golf.com> since August 2, 1997 (See Annex 10)

Both parties agree that Bite advertises and distributes its products nationally and internationally, and has received considerable and sustained media attention for its innovative and fun footwear.

The Respondent is Back9, Inc ("Back9"). The Respondent is a direct competitor of Bite. It manufactures and markets golf merchandise using the BACK9 and GOLF WITH ATTITUDE marks (See Annex 11). On March 9, 1997, Respondent registered the domain name <bitegolf.com> (See Annex 1) in furtherance of its purported plan to acquire Bite. Back9 has not made any attempts to use the domain name <bitegolf.com>.

 

5. Partiesí Contentions

Complainant asserts:

(i) The disputed domain name is identical and confusingly similar to Complainantís name and registered trademarks because it incorporates those marks in their entirety. The dominant and distinctive portion of Respondentís domain name "BITE" is identical to Complainantís registered BITE marks, thus Respondentís addition of "GOLF" to its domain name does nothing to reduce its confusing similarity with Complainantís registered marks.

Complainant also owns enforceable common law rights in the mark BITE GOLF. Since 1996, Complainant claims to have been using the BITE GOLF mark in commerce continually and without interruption. Although Complainant has not received a registration for the mark from the USPTO, nothing in the policy requires that a mark be registered in order to bring a complaint. Because of Complainantís extensive marketing and advertising using the BITE GOLF mark and the wide recognition that the BITE GOLF mark has achieved, Complainant owns common law trademark rights in the mark BITE GOLF. Complainant quotes 15 U.S.C. ß 1125(d), the Anti-Cybersquatting Consumer Protection Act, which states ".. and cyberpiracy prevention does not require that a mark be registered to enjoy protection." Complainant states it therefore owns enforceable common law rights to the mark BITE GOLF under federal law.

Finally, Complainant asserts that Respondent admitted that it registered the Disputed Domain Name because it is confusingly similar to Complainantís marks. The Domain Name would enable Respondent to capitalize, at some future time, on Complainantís marks and the goodwill associated with them.

(ii) On information and belief, Respondent is not commonly known by the name or nickname of the domain name or any of Complainantís marks and Respondent is not making a legitimate noncommercial or fair use of the domain name.

(iii) Respondentsí registration and use of a domain name primarily for the purpose of disrupting Complainantís business indicates bad faith. Both companies design and manufacture golf sandals, going head-to-head in a category with just a handful of significant players. Respondent claims to have registered the domain name as part of a strategy to acquire Complainant, but never approached Complainant with such a deal. More than four years have passed since Respondent devised his alleged scheme. After acknowledging its lack of rights in the domain name, Respondent conditioned the transfer of the domain name on Complainant changing its advertising. Respondent has used its wrongful registration of the domain name to attempt to leverage its competitive position against Complainant.

Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainantís marks as to the source, sponsorship or affiliation of the website. Respondent registered the Disputed Domain Name shortly after Complainant launched its business at the 1996 PGA Merchandise Show. Respondent cannot now argue mere coincidence; he registered the domain name with the intent of trading on the goodwill associated with Complainantís marks.

Finally, an inference of bad faith is supported by the Respondentís "failure for a substantial period of time to make good faith use of the domain name for its business." Although Respondent has owned the domain name for over four years, he has yet to use it for any legitimate purpose.

Respondent asserts:

(i) The Complainant does not have a trademark on the mark BITE GOLF. It was abandoned due to an administrative oversight. Respondent became aware of BITE GOLFíS trademark information upon receipt of a letter from another Bite legal firm in August of 1997. Respondent requested that they provide documentation to back up their claim and received information relative to an application, but no proof of registration. BITE GOLF is still not a registered trademark.

(ii) Respondent cannot develop the site until they acquire Complainant. Respondent has never and will never compromise its ethical posture in this regard. Respondent has developed a proprietary method to generate traffic and have plans to implement the domain when they do in fact acquire Complainant. Respondent made a prudent business move in the course of their ultimate goal of being the #1 alternative golf company. The Internet plays a significant role in those plans, and Respondent had the ability to put a piece of their game plan on the board in March, 1997, and exercised that option. Complainant had the ability prior to Respondentís registration and did not exercise it.

(iii) Respondent has always shown good faith in their efforts and business strategy. The good faith is evidenced by the fact that when business difficulties made it appear they may have trouble attaining their goal of acquiring Complainant, Respondent extended their hand to Complainant. Respondent has always and still does plan on acquiring Complainant. The first step of its plan was initiated when it acquired the domain name <bitegolf.com> in March, 1997. This was done to protect a domain that Respondent viewed as a valuable piece of the puzzle in their overall plans, especially with regard to Respondentís ultimate Internet developments. In mid-1998, Respondent faced a period of difficult circumstances from a number of fronts, both personal and business in nature. At this point, chances of being in position to make an acquisition appeared remote. Respondentís officers met and decided to turn over the <bitegolf.com> domain name to Complainant provided they agreed to three conditions: 1) Bite stops using the word "original" when discussing or promoting its golf sandal; 2) Back9 retains the first option to acquire, at the transferred price of $100.00, the <bitegolf.com> domain name should Bite be sold (the domain name would not be part of the sale unless said sale is to Back9 or approved by Back9); and 3) Back9 be reimbursed $100.00 for the initial cost of registering the domain name. Complainant refused. Respondent stated that when it is properly positioned, they intend to compensate Complainant for their efforts in developing a distribution channel, namely the stores that Respondent did not have the resources to properly address. Respondent has been flying under the radar screen learning everything that they can about the market segment and people they intend to service.

Respondent is now committed more than ever to follow through with their plan to acquire Bite when the right set of circumstances and timing allow. Respondent has dedicated significant resources and energies to that goal and hope that Complainant will be open to talk when Respondent is in a position to make such a move.

Respondent has never sold, or formulated a specific plan to sell any of their domain names for a profit. They have not engaged in any wrongdoing or utilization of Complainantís marks to gain business. Respondent will not use the mark until it has successfully acquired Complainant. Respondent has registered only names that it has serious and concrete plans to implement into viable business solutions with respect to its golf business model.

 

6. Discussion and Findings

(i) The Disputed Domain Name is identical to the trademark in which Complainant has rights.

The Disputed Domain Name is identical or confusingly similar in its functional part to Complainantís registered trademark BITE and the mark BITE GOLF, to which Complainant has common law rights. Complainant has used the mark BITE GOLF in commerce since 1996 and has shown sufficient use to create trademark rights. Respondent acknowledges the fact that they do not have any rights to use the Disputed Domain Name by stating that they "intended their domain name only to be used when they have full authority to do so." The Respondent states that the "Internet plays a significant role in those plans [acquiring Bite], and Back9, Inc. had the ability to put a piece of their game plan on the board in March of 1997 [when Respondent registered <bitegolf.com>] and exercised that option."

The Disputed Domain Name at issue suggest a website that an ordinary consumer would likely believe was operated or sponsored by Complainant or otherwise affiliated with Complainant. Although Respondent currently is not using the Disputed Domain Name other than maintaining it, the Panel finds that Respondent may take advantage of Complainantís goodwill and cause confusion to Complainantís present and potential customers if it starts using the Disputed Domain Name to promote the same or similar services as currently provided by Complainant under the trademark of BITE GOLF.

The Panel finds that Complainant has proved that the Disputed Domain Name is identical or confusingly similar to Complainantís trademark under Paragraph 4(a)(i) of the Uniform Policy.

(ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

Except for having registered and maintained the Disputed Domain Name, Respondent has never used, or demonstrated preparations to use, the Disputed Domain Name, or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods and services. There is no evidence that Respondent operates a business, has a corporate name, company, product, or services under the Disputed Domain Name. Respondentís intent to acquire Complainantís company and put the domain name to use does not create a currently existing legitimate claim of rights to the name. If Respondent acquires Complainantís company, it will obtain Complainantís trademark rights and will then have a legitimate right to use the Disputed Domain Name. For now, however, Respondent merely appears to be holding the Disputed Domain Name in an attempt to increase its leverage over Complainant.

By refusing to transfer the domain names knowing that he has no rights to it, Respondent knowingly prolongs a situation, which is at odds with the legal rights of the parties involved and knowingly obstructs the registration of the domain name in the name of Complainant and its subsequent use by Complainant.

Based on the above, the Panel concludes that Respondent fails the tests set out in Paragraph 4(c) of the Uniform Policy and cannot claim rights or legitimate interests in the Disputed Domain Name.

The Panel therefore concludes that Complainant has proved that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name under Paragraph 4(a)(ii) of the Uniform Policy.

(iii) The Disputed Domain Name has been registered and is being used in bad faith.

The Panel finds untenable Complainantís contention that under Paragraph 4(b)(iii) of the Uniform Policy, Respondent registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor. Although Respondent had no legitimate rights to register the confusingly similar domain name, Respondent has not tried to disrupt the business of Complainant in any way.

The Panel finds untenable Complainantís contention that under Paragraph 4(b)(iv), by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Biteís marks as to the source, sponsorship or affiliation of the website. The Disputed Domain Name does not resolve to a website or other on-line presence. There is no evidence that a website or other on-line presence is in the process of being established, which will use the Disputed Domain Name. There is no evidence of advertising, promotion or display to the public of the Disputed Domain Name.

Although not specifically asserted by Complainant as a factor in finding Respondentís bad faith, under Paragraph 4(b)(ii) of the Uniform Policy Complainantís asserted facts prove that Respondent registered the Disputed Domain Name in order to prevent Complainant from reflecting its trademark in a corresponding domain name. The direct effect of Respondentís registration of the Disputed Domain Name is to prevent Complainant from using the Disputed Domain Name to reflect Complainantís trademark.

The Panel also finds suspect the fact that Respondent agreed to transfer the Disputed Domain Name only under three conditions: 1) Bite stops using the word "original" when discussing or promoting its golf sandal; 2) Back9 retains the first option to reacquire the Disputed Domain Name; and 3) Back9 be reimbursed $100.00 for the initial cost of registering the Domain Name. Placing these conditions on Complainant may also meet the bad faith element under Paragraph 4(b)(i) which requires Respondent to register or acquire 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 to a competitor of that Complainant, for valuable consideration in excess of its out-of-pocket costs directly related to the domain name. Although, Respondent only asked for its out-of-pocket costs in cash, it also asked for two other valuable forms of consideration - 1) that Complainant abandon the right to use "original" and 2) grant Respondent the ability to potentially block Complainantís sale of a valuable asset and possibly the sale of its business. Collectively, such consideration far exceeds Respondents out-of-pocket cost related to the Disputed Domain Name.

In accordance with paragraph 4(b)(i) of the Uniform Policy, the Panel finds that the evidence above shows that the Respondent has registered the domain name for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant for a price in excess of the registration cost.

Complainant alleges that Respondent is not making legitimate noncommercial or fair use of the Disputed Domain Name. The Respondent has stated that it will not utilize the Disputed Domain Name before acquiring Complainant. In Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, it was established that in certain circumstances, registration together with inactivity (inactive website) by the Respondent can constitute bad faith, and the Telstra decision has since been cited for that proposition and followed by subsequent Panels. In the present case, the Disputed Domain Name was registered on March 9, 1997, and has not been used for any legitimate purpose. The lack of use can suggest bad faith.

The Panel therefore finds that Complainant has proved Respondentís bad faith in registering and using the Disputed Domain Name under Paragraph 4(b)(ii) and Paragraph 4(b)(i) of the Uniform Policy.

 

7. Decision

In light of the foregoing, the Panel hereby determines that the Disputed Domain Name is identical or confusingly similar to the trademark of Complainant, that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and that the Disputed Domain Name was registered and has been used (as a result of its business dealings with Complainant) by Respondent in bad faith.

Accordingly, pursuant to Paragraph 4(i) of the Policy, and 15 of the Rules, the Panel hereby orders that the Disputed Domain Name < bitegolf.com> be transferred to Complainant.

 


 

Timothy D. Casey
Panelist

Dated: September 26, 2001