WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Bootie Brewing Company v. Deanna D. Ward and Grabebootie Inc.

Case No. D2003-0185

 

1. The Parties

The Complainant is Bootie Brewing Company of Winter Park, Florida, United States of America, represented by Lowndes, Drosdick, Doster, Kantor & Reed, P.A. of United States of America.

The Respondents are Deanna D. Ward and Grabebootie, Inc., both of Orlando, Florida United States of America, represented by Allen, Dyer, Doppelt, Milbrath & Gilchrist, P.A. of United States of America.

 

2. The Domain Names and Registrar

The disputed domain names <bootiebar.com>, <bootiebeer.com>, <bootiebeerinc.com>, <bootiebrewing.com>, <bootiebrewingcompany.com>, <bootiebrewpub.com>, <bootiewear.com>, <grabebootie.com> and <justgrabebootie.com> all are registered with Go Daddy Software.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 6, 2003. That same day, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue, and Go Daddy Software transmitted by return email to the Center its verification response confirming that Respondent Deanna Ward is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 17, 2003. The Center verified that the Complaint, as amended, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced as of March 18, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was set as April 7, 2003.

Having received no response by April 7, 2003, the Center sent Respondents a Notification of Default on April 9, 2003. Respondents replied by e-mail on April 9, 2003, that they had submitted the Response on April 7, 2003, by e-mail and courier. The Center subsequently received the hardcopy of the Response and confirmed that it had been sent on the April 7, 2003, due date (the Center apparently had not received the emailed version of the Response because Respondents had a typographical error in the email address; Respondents subsequently resent the email to the Centerís correct email address). On April 10, 2003, the Center confirmed that it was in receipt of the Response and that the Notification of Respondent Default dated April 9, 2003, should be disregarded.

The Center appointed David H. Bernstein, Michelle Brownlee and Kenneth A. Genoni as Panelists in this matter on April 22, 2003. The Panel finds that it was properly constituted. Each member of 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. Pursuant to the Rules, paragraph 10(c), the Panel set May 30, 2003, as the date for decision.

One procedural issue that needs to be addressed at the outset is that Complainant has named two Respondents in its Complaint. Generally, only the registrant of the domain name or names at issue should be listed as a Respondent. AFMA, Inc. v. Globemedia, WIPO Case No. D2001-0558 (August 23, 2001). Although Respondents have not objected, the more appropriate course is to treat only Deanna Ward as the proper Respondent because the registrar has confirmed that she is the registrant of all nine domain names at issue. Dismissal of the second Respondent, Wardís company, Grabebootie, Inc., will not prejudice Complainant because all remedies available in this proceeding (cancellation or transfer of the domain names) are available against Ward as the registrant. Top Driver, Inc. v. Benefits Benefits, WIPO Case No. D2002-0972 (January 7, 2003). Accordingly, the Panel hereby dismisses Respondent Grabebootie, Inc.

 

4. Factual Background

Although a number of facts are hotly contested, certain undisputed facts can be discerned from the partiesí submissions. Tania Torruella (President of Complainant) and Respondent Deanna Ward conferred in September 2001 about a new venture, to be known as Bootie Brewing Co., that would sell beer and clothing under the trademarks "Bootie" and "Grabebootie". Torruella thereafter retained a law firm to conduct a trademark availability search on the mark "Bootie Beer" and incorporated the Complainant with the State of Florida on October 23, 2001. Respondent, meanwhile, registered the domain names at issue starting on September 29, 2001; the final domain names were registered on October 31, 2001. The domain names were registered in the name of Deanna Ward, though, in the registration documents, she listed her affiliation as "Bootie Brewing, Inc."

During this time, the parties had no written agreement setting forth the terms of their relationship. Complainant asserts that Respondent acted as her agent; Respondent characterizes the parties as joint venturers. When the parties later tried to formalize their relationship, they were unable to reach agreement; accordingly, in December 2001, they went their separate ways.

After the partiesí separation, Complainant continued to develop the Bootie Brewing Co. business and product line. In February 2002, Complainant started work on a marketing video for Bootie-branded beer. On March 21, 2002, Complainant filed with the U.S. Patent and Trademark Office ("PTO") applications to register "Bootie," "Bootie Lager," "Bootie Light," "Grabebootie," and "Bootie Call" as trademarks in classes 16 (paper products) and 32 (beer); those applications all alleged first use on or before March 15, 2002[1]. The PTO issued Complainant U.S. Registration No. 2,702,676 for "Bootie Lager" on April 1, 2003, and U.S. Registration No. 2,704,741 for "Bootie Light" on April 8, 2003. The PTOís TARR database indicates that the application for "Grabebootie" (Serial No. 78/116,686) was published in the Official Gazette on May 13, 2003, "Bootie" (Serial No. 78/116,641) was published on May 20, 2003, and "Bootie Call" (Serial No. 78/116,651) will be published on June 3, 2003. More recently, Complainant has filed applications for "Bootie Beer," "Bootie Bar," and "Bootie Online"; those applications still are pending.

Meanwhile, Respondent pursued her own plans for a Bootie-related business. After learning on January 15, 2002, that Torruella incorporated Booting Brewing Co., Respondent incorporated her own company, Grabebootie, Inc., on February 4, 2002, with an effective date of January 28, 2002. Starting on January 29, 2002, Grabebootie, Inc. began to sell clothing and related items under the "Grabebootie" trademark (with five dots above the first "e"), including through an Internet web site located at <www.justbootie.com>.[2]

Respondent also has pursued her own trademark application campaign. On February 11, 2002, Grabebootie, Inc. applied to register "Grabebootie" in class 25 (clothing), alleging first use on or before January 29, 2002; on March 11, 2002, Grabebootie, Inc. filed a second application for a related design mark. The PTO registered the word mark on December 17, 2002 (Registration No. 2,662,922); the TARR database indicates that the design mark will be published for opposition on June 24, 2003. Grabebootie, Inc. also has registered "Please Grab Responsibly" for clothing (Registration No. 2,713,251) and owns pending applications for "Got Bootie?" (Serial No. 76/432,692, filed July 22, 2002; claimed date of first use of June 1, 2002; office action pending), and "Bootie Crew" (Serial No. 78/172,459, filed October 9, 2002; claimed date of first use of June 1, 2002; published May 13, 2003).

On April 2, 2002, Respondent executed documents to effectuate transfer of the domain names from Deanna Ward, Bootie Brewing, Inc. to Deanna Ward, Grabebootie, Inc. On the transfer documents filed with the Registrar, Respondent listed the current registrant as "Bootie Brewing Co." and listed the new registrant as "Grabebootie, Inc." In explaining the reason for the transfer, Respondent wrote that Bootie Brewing Co. "was never started." After the transfer, visitors to the sites at these domain names were automatically forwarded to Respondentís "www.grabebootie.com" web site; today, some of the domain names forward Internet users to Respondentís "www.justbootie.com" web site.

 

5. Partiesí Contentions

A. Complainant

Complainant contends that the domain names at issue are confusingly similar to its registered trademarks for Bootie Lager and Bootie Light and its common law rights in Bootie, Bootie Call and Grabebootie. Complainant further contends that Respondent has no rights or legitimate interests in the domain names because Respondent never legitimately owned the domain names at issue, had no right to transfer the domain names owned by Complainant, and has no right to their use. Rather, Complainant contends that its President, Tania Torruella, created the mark "Bootie" and "Grabebootie" and asked Respondent to register the domain names, as her agent, as part of a business plan to develop a line of beer under the trade names Bootie Lager and Bootie Light. Finally, Complainant argues that Respondent acted in bad faith when she transferred the domain names from Bootie Brewing Co. to Grabebootie, Inc. Complainant claims that Respondent executed the transfer documents without Complainantís knowledge or authority, and falsely stated on the transfer agreement that Complainant was never started.

B. Respondent

Respondent argues that this proceeding is not the proper forum to resolve general business disputes like this one; rather, it is meant only for cases of abusive cybersquatting. She further argues that, in any event, Complainant has failed to meet its burden of establishing the three requirements necessary to have the domains at issue transferred.

First, Respondent asserts that Complainant has no rights in any trademarks that are identical or confusingly similar to the domain names at issue. Respondent contends that there is no evidence that Complainant has ever made any actual use of any of the names at issue.

Second, Respondent asserts that she has a legitimate interest in the domain names at issue because, through her company Grabebootie, Inc., she has sold Grabebootie-branded apparel since January 2002, and Bootie-branded apparel since June 2002. Moreover, she has obtained a federal registration for the "Grabebootie" trademark, and her registered trademark rights in that mark precede any rights owned by Complainant.

Finally, Respondent contends that there is no evidence of bad faith. Rather, she argues, she was acting as Torruellaís partner or co-venturer when she registered the domain names at issue, that the names were registered in her name individually and paid for by her, and that she received no compensation for her services and no reimbursement for the registration fees. Thus, she did not register the domain names in bad faith. Nor is she using the domain names in bad faith Ė rather, she is using them to conduct a bona fide business and has never tried to sell the domain names, disrupt Complainantís business, or offer them to competitors of Complainant.

 

6. Discussion and Findings

At the outset, the Panel notes that this is an atypical UDRP case. Unlike many cases that concern traditional allegations of cybersquatting, this case instead concerns a business dispute between two parties who started with the best of intentions, but regrettably found their relationship in tatters. As is the norm in such business disputes, the facts are hotly contested, which creates a challenge for the trier of fact given the expedited nature of these proceedings and the limited record presented to the Panel.

That does not mean, however, that the Panel should abdicate its responsibility to analyze the record as best it can to determine whether cybersquatting has occurred. Just as cybersquatting can occur between strangers, so can it occur between business partners. Top Driver, Inc., supra; cf. The Thread.com, LLC v. Poploff, WIPO Case No. D2000-1470 (January 5, 2001). Similarly, just because the record is complex does not mean that the Panel should decline to review it. Rather, the Panelís obligation when faced with such disputed facts is to make the best findings it can, by a preponderance of the evidence, based on the record submitted. Magnum Piering, Inc. v. Mudjackers, WIPO Case No. D2000-1525 (January 29, 2001); Electronic Commerce Media, Inc. v. Taos Mountain, NAF Claim No. FA95344 (October 11, 2000).

The Panel recognizes that it may make erroneous findings given the limited nature of the record. That, however, is a necessary risk of the Policy, which provides for a relatively quick and inexpensive method of resolving alleged cybersquatting disputes. If either party disagrees with the Panelís findings, the Rules specifically encourage the parties to litigate their dispute in a forum that allows for discovery, live testimony and cross-examination, all of which facilitates the trier of factís ability to make credibility determinations. Policy paragraph 4(k).

With these principles in mind, the Panel turns to the merits of this dispute. To prevail, Complainant must sustain its burden of proving all three of the elements enumerated in Paragraph 4(a) of the Policy:

1. the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
2. Respondent has no rights or legitimate interests with respect to the Domain Names; and
3. the Domain Names have been registered and used in bad faith.

As discussed in detail below, the Panel finds that Complainant has satisfied this burden with respect to the six "Bootie" beer-related domain names: <bootiebar.com>, <bootiebeer.com>, <bootiebeerinc.com>, <bootiebrewing.com>, <bootiebrewingcompany.com>, and <bootiebrewpub.com> (the "Bootie Beer Domain Names"). The Complainant has not, though, sustained its burden with respect to the <bootiewear.com> domain name and with respect to the <grabebootie.com> and <justgrabebootie.com> domain names (the "Grabebootie Domain Names").

A. Identical or Confusingly Similar

The first factor contains two elements: (i) whether Complainant has rights in a relevant mark, and (ii) whether the domain names are identical or confusingly similar to that mark. Respondent primarily contests the first of these elements, arguing that Complainant has failed to prove use of any of these trademarks.

In light of the truncated nature of these proceedings, it is fully appropriate for the Panel to defer to other fora that may already have considered the same issue. In connection with the consideration of this first factor, it thus is common for panels to defer to the PTO when the PTO has made relevant findings, including through the issuance of registrations or denial of applications. E.g., EAuto L.L.C. v. Triple S. Auto Parts, WIPO Case No. D2000-0047 (March 24, 2000) (deferring to PTO registration of "EAuto"); Rodale, Inc. v. Cambridge, WIPO Case No. DBIZ2002-00153 (June 28, 2002) (deferring to PTOís refusal to register "Scuba Diving").

Here, the PTO has registered two of Complainantís marks: "Bootie Lager" and "Bootie Light." In connection with those registrations, Complainant affirmed that it first used these marks in commerce as of March 15, 2002, and it submitted specimens of use to the PTO. Neither Respondent nor any other party opposed the registration of these marks. These registrations thus constitute prima facie proof of Complainantís ownership of these trademarks. Universal City Studios, Inc. v. G.A.B. Enters., WIPO Case No. D2000-0416 (June 29, 2000). Absent compelling evidence that the PTOís determination was erroneous, a UDRP panel should be extremely reluctant to reach a different finding. Electronic Commerce Media, supra.

Here, Respondent offers no Ė let alone compelling Ė evidence of non-use. Rather, Respondent merely offers the conclusory statement that Complainant has not proven use. In the face of these registrations, that contention is wholly without merit. Accordingly, the Panel finds that, at the minimum, Complainant has established trademark rights in the terms "Bootie Lager" and "Bootie Light."

The Panel need not go further to consider whether Complainant also has established trademark rights in the other marks because each of the domain names is confusingly similar to these two registered marks. The dominant portion of Complainantís marks is the word "Bootie", and that word is reproduced in its entirety in all nine of the domain names at issue. Moreover, the Bootie Beer Domain Names (the only names the Panel has concluded should be transferred) expressly include beer-related terms, making traditional trademark confusion with Complainantís marks virtually inevitable. These facts alone are sufficient to establish confusing similarity, especially in the more expansive way that "confusingly similar" is used in the Policy. See EAuto, supra; Wal-Mart Stores, Inc. v. MacLeod, WIPO Case No. D2000-0662 (September 19, 2000).

In sum, the Panel finds that Complainant has satisfied its burden with respect to all nine domain names under the first factor.

B. Rights or Legitimate Interests

The second factor creates an evidentiary challenge for complainants because they must prove a negative: That the respondent lacks a legitimate interest in the domain name. In recognition of this difficulty, most panels have concluded that, once a complainant makes a prima facie showing that the respondent lacks a legitimate interest, the burden of production shifts to the respondent to come forward with demonstrable evidence proving a legitimate interest in the domain name. Document Techs., Inc. v. International Elec. Communications, Inc., WIPO Case No. D2000-0270 (June 6, 2000). Of course, the burden of proof always remains on the complainant.

To help panels determine whether a respondentís interest is legitimate, the Policy offers three non-exclusive examples of how a respondent can demonstrate legitimate interest:

(i) Before any notice to [respondent] of the dispute, [respondentís] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
(ii) [respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [respondent has] acquired no trademark or service mark rights; or
(iii) [respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. (Policy, paragraph 4(c)).

Here, Complainant has made a prima facie showing that Respondent has no rights to or legitimate interests in any of the disputed domain names. Complainant alleged that it developed the marks and that Respondent was acting solely as its agent in registering the domain names. That Respondent registered the domain names in the name of "Deanna Ward, Bootie Brewing Co.," provides powerful evidence that Complainantís assertions are correct. Similarly, Complainant provided evidence that Respondent misappropriated the domain names from Complainant when she transferred the domain names from "Deanna Ward, Bootie Brewing Co." to "Deanna Ward, Grabebootie, Inc." Here, too, Complainantís documentary evidence is compelling: Respondent misled the Registrar when she stated (in April 2002) on the transfer documents that "Bootie Brewing Co." was never started; to the contrary, as Respondent has admitted, she knew in January 2002, that Complainant had incorporated that company.

Respondent attempts to rebut this evidence with assertions that she and Ms. Torruella were co-venturers, and that Respondent was not Torruellaís agent. Respondent thus argues that, at the time the marks were created, neither party had exclusive rights in them. If true, this would be a compelling rejoinder. On this record, though, given the documentary evidence discussed above, the Panel cannot accept Respondentís claim. Rather, though it is a close issue, the Panel finds by a preponderance of the evidence that Respondent registered the names as agent of Bootie Brewing Co. That is true even though the corporate entity did not yet exist. The documents evidence an intention to found such an entity, and Respondentís registration of the domain names appears to have been done for the benefit of that entity.

Respondentís second claim of a legitimate interest is more persuasive. Respondent asserts that, before receiving notice of this dispute, she used the domain names in connection with a bona fide offering of clothing.

With respect to the Grabebootie Domain Names, the Panel agrees with Respondent. Respondentís evidence shows that she was using those names in commerce as of January 2002, prior to the creation of any trademark rights in those names by the Complainant. Moreover, the PTO has granted Respondent a trademark registration in "Grabebootie". Just as the Panel should defer to Complainantís trademark registrations in connection with the first factor, so should the Panel defer to Respondentís ownership of a registration in connection with this second factor. Respondentís registration is thus prima facie evidence of her ownership of the "Grabebootie" trademark; it would be inappropriate for this Panel to conclude that Respondent has no legitimate interest in a mark she registered with the PTO. The Panel thus concludes that Respondent has legitimate interest in its registered mark.

Similarly, the Panel finds that Respondent has shown a legitimate interest in the <bootiewear.com> domain name. Respondent alleges that she was selling "Bootie Crew" branded clothing since June 2002, long before the commencement of this dispute. That alone is sufficient to establish a legitimate interest under paragraph 4(c)(i) of the Policy.

Complainant nevertheless argues that Respondentís interests are not legitimate because Complainant sold Bootie-branded clothing three months earlier, in March 2002. That assertion is undermined by Complainantís withdrawal of its application to register its marks in class 25, and by its lack of candor with the Panel on that point. Accordingly, and solely for purposes of these proceedings, the Panel determines that Complainant has failed to show that Respondent lacks a legitimate interest in the <bootiewear.com> domain name.

Respondentís argument, however, does not extend to the six Bootie Beer Domain Names. Respondent has failed to articulate how her use and registration of these domain names, which contain beer-, brewing-, and bar-related terms, can constitute a legitimate interest given that her business is focused solely on the sale of clothing. Thus, the Panel concludes that, with respect to <bootiebar.com>, <bootiebeer.com>, <bootiebeerinc.com>, <bootiebrewing.com>, <bootiebrewingcompany.com>, and <bootiebrewpub.com>, Respondent has failed to rebut Complainantís prima facie showing that Respondent lacks a legitimate interest.

C. Registered and Used in Bad Faith

The final factor is whether Respondent acted in bad faith in registering and using the six Bootie Beer Domain Names. The Panel finds, again on a preponderance of the evidence, that Complainant has satisfied this burden.

Respondent admits that she registered the domain names at Complainantís request. Nevertheless, she registered them in her own name and subsequently transferred them from "Bootie Brewing Co." to "Grabebootie, Inc." on false pretenses Ė that is, under the misrepresentation that "Bootie Brewing Co." was "never started." That conduct alone is sufficient to support a finding of bad faith registration and use. See Top Driver, supra (bad faith found at time employee changed registration data to transfer control of domain name from employer to employee).

Further evidence of bad faith use is Respondentís appropriation of the beer-related domain names despite her knowledge of Complainantís intended use and her own lack of intent to develop a beer- or bar-related business.

Finally, bad faith can be found based on Respondentís registration of so many variations of the "Bootie" trademark. See Policy, paragraph 4(b)(iii) (providing examples of bad faith registration and use, including where respondent has "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 [respondent has] engaged in a pattern of such conduct").

 

7. Decision

For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the domain names <bootiebar.com>, <bootiebeer.com>, <bootiebeerinc.com>, <bootiebrewing.com>, <bootiebrewingcompany.com> and <bootiebrewpub.com> be transferred to the Complainant. The Panel denies, however, Complainantís request for transfer of the domain names <bootiewear.com>, <grabebootie.com> and <justgrabebootie.com>.

 


 

David H. Bernstein
Presiding Panelist

Michelle Brownlee
Panelist

Kenneth A. Genoni
Panelist

Dated: May 28, 2002

 


 

CONCURRING OPINION

I write separately to express my concern that granting relief to the Complainant in this case is probably not what the drafters of the Policy envisioned. The ICANN Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy ("Second Staff Report"), Paragraph 4.1.c (Oct. 24, 1999), states that the Policy "calls for administrative resolution for only a small, special class of disputes," namely, "abusive registrations," i.e., cases of cybersquatting and cyberpiracy. The Second Staff Report further states:

Except in cases involving "abusive registrations" made with bad-faith intent to profit commercially from others' trademarks (e.g., cybersquatting and cyberpiracy), the adopted policy leaves the resolution of disputes to the courts (or arbitrators where agreed by the parties) and calls for registrars not to disturb a registration until those courts decide. The adopted policy establishes a streamlined, inexpensive administrative dispute-resolution procedure intended only for the relatively narrow class of cases of "abusive registrations." Thus, the fact that the policy's administrative dispute-resolution procedure does not extend to cases where a registered domain name is subject to a legitimate dispute (and may ultimately be found to violate the challenger's trademark) is a feature of the policy, not a flaw. The policy relegates all "legitimate" disputes--such as those where both disputants had longstanding trademark rights in the name when it was registered as a domain name--to the courts; only cases of abusive registrations are intended to be subject to the streamlined administrative dispute-resolution procedure.

Second Staff Report, paragraph 4.1.c.

I note that a number of Panels have relied on the Second Staff Report in refusing to grant relief in "close cases" such as this one, on the ground that such cases do not lie within the purview of the policy. See, e.g., Quarterview v. Quarterview Co. Ltd., eResolution Case Nos. AF-0209a and AF-0209b (July 6, 2000) (a case with facts very similar to this one); Miele, Inc. v. Absolute Air Cleaners and Purifiers, WIPO Case No. D2000-0756 (September 11, 2000); America Online, Inc. v. Cucamonga Electric Corp. aka Paul Oshideri, NAF Case No. FA0112000103364 (February 26, 2002).

I acknowledge that most panels have taken the approach that the majority proposes here and have found themselves obligated to decide such difficult cases the best they can, using a preponderance of evidence standard of proof. Accordingly, I will reluctantly follow the majorityís approach for the sake of striving for uniformity in the dispute resolution process. See Koninklijke Philips Electronics NV v. Relson Ltd, WIPO Case No. DWS2002-0001 (June 14, 2002).

I write separately to suggest that I believe that the prevailing standard of proof is at odds with the stated goals of the Second Staff Report, and to urge ICANN to clarify this issue when it next considers amendments to the Policy. The Policy is silent on the standard of proof that should be applied in proceedings. This silence leads to confusion as to which standard to apply, particularly where panelists may have widely varying ideas about the standard to be applied based on their countriesí differing legal systems. See A. Michael Froomkin, ICANN's Uniform Dispute Resolution Policy -- Causes and Partial Cures, 67 Brooklyn Law Rev. 605, 696 (2002).

If the Policy is truly intended to apply to clear cases of cybersquatting or cyberpiracy where a streamlined dispute resolution procedure is appropriate, then it would seem that a higher standard than mere preponderance should be applied. That is, relief should not be awarded in close cases with many disputed facts such as this one. I believe that in order to achieve the draftersí objective, it would be more appropriate to apply a "clear and convincing" standard. Panels should only grant relief when they believe that it is highly probable that abusive registration has occurred, not simply when they think that it is more likely than not that it has occurred. See A Study by the Max Planck Institute for Foreign and International Patent, Copyright and Competition Law, Munich (2002), at 67 ("If it is strictly observed as a general principle that the UDRP only serves the purpose of granting relief in clear piracy cases, the complaint must be rejected whenever any of the three elements in Art. 4.a cannot be established by clear and convincing proof Ö").

I urge ICANN to clarify the standard of proof to be applied in these proceedings at the earliest opportunity. In absence of such clarification, I will follow the majority rule.

 


 

Michelle Brownlee
Panelist

Dated: May 28, 2003

 


1. Complainant asserted in the Complaint that the applications for "GrabŽbootie" and "Bootie Call" also covered clothing in class 25. A review of the PTO's Trademark Applications and Registrations Retrieval ("TARR") database, though, shows that Complainant has apparently dropped the request to include class 25 in these applications. (It is well accepted that panels may consult and rely on publicly available databases such as PTO and WHOIS records. Bass Hotels & Resorts, Inc. v. Rodgerall, WIPO Case No. D2000-0568 (August 7, 2000).) According to TARR, Complainant's last submission to the PTO was on or about February 7, 2003; it is thus a virtual certainty that the application for class 25 had been withdrawn at the time this Complaint was submitted (March 6, 2003).
The Panel is troubled by this misrepresentation, which is material given the close question of which party has prior trademark rights for each class of goods. Given the withdrawal of the class 25 application, and as a sanction for Complainant's lack of candor, for purposes of this proceeding alone, the Panel treats Complainant as having no clothing-related trademark rights in the "Bootie" marks. Cf. Britannia Building Soc'y v. Britannia Fraud Prevention, WIPO Case No. D2001-0505 (July 6, 2001).
2. The Panel notes that, as of the date that Respondent claims it first began use of the "Grabebootie" mark for the sale of clothing (January 29, 2002), Complainant had not yet established any trademark rights in any of its various marks, either through use (which Complainant claims did not begin until March 15, 2002) or through the priority afforded by registration (Complainant filed its first applications on March 21, 2002). On this record, it thus appears that Respondent has priority for clothing sales.