WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Celebrity Signatures International, Inc. v. Hera’s Incorporated Iris Linder
Case No. D2002-0936
1. The Parties
The Complainant is Celebrity Signatures International, Inc. of Kansas City, United States of America, represented by Armstrong Teasdale, LLP of United States of America.
The Respondent is Hera’s Incorporated Iris Linder, of Owings Mills, United States of America.
2. The Domain Name and Registrar
The disputed domain name <putonpieces.com> is registered with CSL Computer Service Langenbach GmbH dba Joker.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 9, 2002. On October 10, 2002, the Center transmitted by email to CSL Computer Service Langenbach GmbH dba Joker.com a request for registrar verification in connection with the domain name at issue. The verification was received on October 11, 2002.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 15, 2002. The Response was received on October 29, 2002.
The Center appointed Mark V.B. Partridge as the sole panelist in this matter on November 6, 2002. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Additional submissions were filed and received. On November 20, 2002, the Panel issued an order asking each party to submit authority on the following question: Whether a distributor's unauthorized use of a manufacturer's trademark as the domain name for a website selling the manufacturer's product constitutes a violation of the ICANN Uniform Dispute Resolution Policy. The Panel received a response from Complainant on December 6, 2002, stating that the question was moot because Complainant terminated its relationship with Respondent on November 21, 2002. The Panel received cases and authorities relevant to the question from Respondent on December 11, 2002.
4. Factual Background
Complainant has used the trademark PUT ON PIECES since August of 2000 in connection with the sale of wigs, hair pieces, and add-in and add-on hair accessories constructed primarily of synthetic and/or human hair. PUT ON PIECES was federally registered on September 10, 2002, (Reg. No. 2,616,906). Complainant sells PUT ON PIECES products through retailers and salon professionals.
Respondent registered the domain name <putonpieces.com> July 15, 2001. Respondent distributes products from Complainant’s PUT ON PIECES collection through Respondent's website. In July 2001, she inquired about the requirements to become a distributor and was told she needed to place a $300.00 order. No contract was required at that time. Respondent only sells Complainant's products at its website. Respondent first ordered product from Complainant in August 2001. Respondent operated its site as a distributor of Complainant for about one year before receiving an objection from Complainant.
Complainant sent Respondent a letter objecting to the domain name on July 22, 2002. That letter included a proposed Distributor Agreement with terms that were unacceptable to Respondent. In that letter, Complainant also advised Respondent that it was not authorized to use its PUT ON PIECES trademark as its domain name and that Respondent's use of Complainant's trademark in this matter constituted infringement of its trademark. Further, Complainant requested that Respondent immediately cease use of the domain name and transfer the domain name to Complainant, who was willing to pay the costs of the transfer.
In November, 2002, Respondent received a message from Amanda Howery, a representative of Complainant, stating that she forwards customers calling the company 800 number to Respondent's Internet site at "www.putonpieces.com".
5. Parties’ Contentions
Complainant contends that Respondent's use of the domain name is an unauthorized use of its mark in violation of its rights.
Respondent contends that it registered and uses the domain name in good faith as a distributor of Complainant's products.
6. Discussion and Findings
The principal issue in this case is whether Respondent registered and used the domain name in good faith. The record shows that Respondent operated a website selling Complainant's products using Complainant's mark as a domain name. It appears that Complainant was aware of the use for about a year before objecting. Even before and after the objection, Complainant's representatives appear to have encouraged that use before informing Respondent that they were referring customers to her site and that the web page looked great.
A variety of cases under the Policy deal with use of marks as domain names for sites operated by dealers. In some instances, the Panel has found a violation of the Policy. For example, this Panel found a violation of the Policy in Herbalife International of America, Inc. v. myherbalife.com, Case No. D2002-0101 (WIPO April 13, 2002). In that case, the respondent's use was contrary to the Complainant's published guidelines for independent distributors. The decision states:
"Respondent lacks any rights or legitimate interest in the Domain Name. It is not authorized or licensed to use Complainant's mark as a domain name. In fact, Complainant's Internet Guidelines for independent distributors prohibit such use. . . I also find that Respondent registered and used the Domain Name in bad faith. Registration of the Domain Name was contrary to Respondent's obligations as an independent distributor of Complainant's products. . . . Bad faith registration is shown here by the registration of a domain name in contravention of an undisputed agreement between the parties."
That case is distinguishable from the circumstances here. The evidence shows that when Respondent registered the domain name and began initial use, there was no contractual prohibition on Respondent's conduct. When respondent inquired about distributor requirements, she was told no form or agreement was required. That fact has not been contradicted by Complainant. Thus, there is no violation of a contract or published guidelines to support a finding of bad faith here.
Complainant is correct in noting that a distributor's use of a manufacturer's mark as a domain name may constitute an infringement of trademark rights. However, such use may be permissible if there is license or consent. Here, respondent was not prohibited by contract from using the Complainant's mark as her domain name, and in fact it appears that Complainant's representatives encouraged such use on at least two occasions. Whether that contact rises to the level of a license or consent involves a contractual issues that seems beyond the scope of the Policy. In Adaptive Molecular Technologies, Inc. v. Priscilla Woodward, Case No. D2000-0006, the respondent claimed that it was permitted to use the mark as its domain as a distributor of the complainant's products. The Panel concluded this legal dispute precluded the Complainant from meeting its burden of establishing bad faith registration and use.
Applying those principles here, I recognize without deciding the issue the possibility that Respondent's current use after objection might be an infringement of Complainant's rights and that Respondent may no longer be justified in believing its use is permitted after receiving Complainant's objections. Nevertheless, that possibility involves a dispute that is beyond the scope of this proceeding. Here, the Policy requires proof of bad faith registration and use. Based on the record presented, I find at the time of registration that Complainant had no distribution agreement or policy in place to prevent Respondent from registering and using the domain name. Further, Complainant's representatives appear to have known of Respondent's conduct and encouraged her in her use. She intended to use the domain name for a website selling Complainant's products, she was encouraged to do so by Complainant's representatives, she did so for over a year without objection. These facts have not been rebutted by Complainant. It does not appear that she did so with the intent to be a cybersquatter or to unfairly trade on Complainant's good will. To a significant degree, Complainant's own actions created the circumstances in which Respondent could reasonably concluded that her conduct was permitted. Thus, I conclude within the circumstances of this record that Complainant has not met its burden of proving that Respondent registered the domain name in bad faith.
For all the foregoing reasons, the Complaint is denied.
Mark V. B. Partridge
Date: December 16, 2002