WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bob Avila v. B&B Productions
Case No. D2004-0013
1. The Parties
1.1 The Complainant is Bob Avila, of Temecula, California, United States of America, represented by Law Offices of Sanford Kinzer, United States of America.
1.2 The Respondent is "B&B Productions," of Lindell Beach, British Columbia, Canada, represented by Ms. Brigitte Mackenzie.
2. The Domain Name and Registrar
2.1 The disputed domain name <bobavila.com> (the "Domain Name") is registered with Tucows Inc., Toronto, Canada (the "Registrar").
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 8, 2004. On January 9, 2004, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 12, 2004, the Registrar transmitted by email to the Center its verification response confirming that the Respondent 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 by email on January 16, 2004, and in hard copy on January 19, 2004. Such amended Complaint included a new Annex 18. The Center verified that the Complaint together with the amendment to the Complaint 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").
3.2 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 January 20, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was February 9, 2004. A hard copy of the Response was filed with the Center on February 6, 2004. On February 16, 2004, and again on March 3, 2004, the Center requested an electronic version of the Response and further hard copies. The Center received an electronic copy of the Response on March 9, 2004. The Center received two additional hard copies of the Response and two hard copies of an addendum to the Response on March 10, 2004.
3.3 On March 11, 2004, the Complainant objected to the late filing of the additional two hard copies of the Response and the addendum to the Response. On March 11, 2004, the Center communicated to the parties that it would take the Response into account when submitting the Case File to the Panel, but that it would be at the Panelís discretion, in accordance with UDRP Rules, paragraph 10(d), whether to accept the addendum to the Response.
3.4 The Center appointed Matthew S. Harris as the Sole Panelist in this matter on March 11, 2004. 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.
4. Factual Background
4.1 Many of the facts are contested. However, certain undisputed facts can be discerned from the partiesí submissions.
4.2 The Complainant is a horse trainer and showman of American Quarter Horses. He has successfully competed in Quarter Horse Association, National Reigning Horse Association and National Reined Cow Horse Association events. The Complainant has also marketed and sold books and video tapes demonstrating his techniques in training and showing American Quarter Horses. He has also commercially sponsored products used in the horse industry.
4.3 The Respondent and the registrant of the Domain Name is "B&B Productions." However, a Ms. Brigitte Mackenzie ("Ms. Mackenzie") is listed as the administrative contact for the Domain Name. It is Ms. Mackenzie who has filed a Response in these proceedings.
4.4 Ms. Mackenzie is a self-employed publicist and producer. The Complainant and the Respondent (i.e. Ms. Mackenzie) met during the mid 1990s. Ms. Mackenzie became involved in the promotion of horse training clinics featuring the Complainant and the sale of the Complainantís training video tapes.
4.5 At some point in late 1997 or early 1998, a decision was made to develop and register a website using the Domain Name with a view to marketing the Complainantís books, videotapes and training clinics thereon (the "Website"). The Respondent subsequently developed the Website and, on December 22, 1997, registered the Domain Name with the Registrar under the name of "B&B Productions." The Domain Name was last updated on March 15, 2002, and expires on December 21, 2006.
4.6 In 2003, the Complainant attempted to amend the information on the Website. It was at this point that the Complainant realised that the Domain Name had been registered under the name "B&B Productions" with Ms. Mackenzie as the administrative contact. As a result the Complainant is unable to make unilateral amendments to the content of the Website without the permission of the Respondent.
4.7 The Complainant subsequently contacted Ms. Mackenzie and requested the transfer of the Domain Name to him. The Respondent agreed to do so but only upon payment by the Complainant to the Respondent of US$10,000.
4.8 As at the date of this decision the Domain Name, when accessed, resolves to a black and blue screen containing text, under the heading "B&B Productions," which informs the user that the site is currently under construction and setting out what appears to be the contact postal address and telephone number for B&B Productions.
5. Procedural Arguments
5.1 Before dealing with the respective partiesí contentions it is convenient first to deal with the procedural arguments raised by the Complainant in this case.
5.2 Firstly, the Complainant maintains that the Response in this matter should be disregarded because when Ms. Mackenzie when filed a copy of her Response on February 6, 2004, she failed to file an electronic copy and three other hard copies as required by the Supplemental Rules.
5.3 It is important that parties to the UDRP follow the rules laid down as to the provision of copies. If they do not, the smooth running of the UDRP process can be impaired. Nevertheless, they are primarily there for the administrative convenience of the Center. In this case the Center has not suggested that the Response was invalid as a result of the Respondentís failure. Indeed, quite the contrary is the case. By means of an email to the parties dated March 3, 2004, the Center noted that it had received one hard copy of the Response and informed the parties that they should disregard an earlier Notification of Respondent Default.
5.4 Further, it would appear that at the same time as the Response was initially filed with the Center a copy was also forwarded direct to the Complainant. At no point has the Complainant suggested that it has been prejudiced by the Respondentís failure to provide additional copies. In the circumstances, the Panel rejects the Complainantís contention that the Response be disregarded.
5.5 The Complainantís second contention is that the Panel should disregard the supplemental documents filed with the additional hard copies of the Response. These supplemental documents appear to constitute colour copies of the Website.
5.6 It is now well established that a supplemental filing will rarely be considered. In DK Bellevue, Inc. d/b/a Digital Kitchen v. Sam Landers, (WIPO Case No. D2003-0780), the panel stated as follows:
"As is by now well-established, the Rules do not provide any right of reply. Parfums Christian Dior S.A. v. Jadore, WIPO Case No. D2000-0938 (November 3, 2000). Although supplemental submissions may be accepted to address new legal developments, see, e.g., Pet Warehouse v. Pets.Com, Inc., WIPO Case No. D2000-0105 (April 13, 2000), or to rebut unexpected factual assertions, see, e.g., Pacific Fence & Wire Co. v. Pacific Fence and Jim Paradise, WIPO Case No. D2001-0237 (June 11, 2001), they should be allowed sparingly."
5.7 In that case, the issue was whether the complainant should be allowed to file a Reply but in the Panelís opinion the same principles apply in relation to additional submissions by a respondent. In this case, the Respondent has not explained why the additional filing should be admitted and the Panel having looked at the material sees no reason why the Respondent should be allowed to do so. In the circumstances, the Panel has taken no account of the contents of this additional material in coming to its decision in this case.
6. Partiesí Contentions
6.1 The Complainant contends as follows:
6.2 The Complainant has gained worldwide notoriety and recognition as one of the top trainers and exhibitors of American Quarter Horses, and is regularly featured in related magazines. He has won dozens of champion and reserve world champion events at the World Quarter Horse Association Finals held each year in Oklahoma City, Oklahoma, the $100,000.00 Open Championship of the National Reigning Association Futurity, and on three occasions has won the $100,000.00 Open Championship of the National Reined Cow Horse Association Futurity, including the most recent event in October 2003. The Complainant was awarded the First Professional Horseman of the Year award to be given by the American Quarter Horse Association and, in 2000, won the title "Worldís Greatest Horseman," in a National Reined Cow Horse Association competition.
6.3 In addition to his accomplishments as a competitor and showman of American Quarter Horses, the Complainant has, for over ten years, marketed and sold books and video tapes demonstrating his techniques in training and showing American Quarter Horses. He has also commercially sponsored products used in the horse industry. The books outlining the Complainantís training and showing techniques are widely distributed and sold at Target and Wal-Mart stores, and on the World Wide Web at Amazon.com. All of the Complainantís sponsorships, training clinics and videotapes are marketed under his name - "Bob Avila." The Complainant uses his name in all aspects of his horse training and showing, marketing of products, clinics, books and videotapes.
6.4 During the mid to late 1990s, Ms. Mackenzie assisted the Complainant on a limited basis in promoting certain of his horse training clinics and selling of his videotapes. Ms. Mackenzie was never an employee of the Complainant and was never authorised to use the Complainantís name except with his express permission.
6.5 In 1997, the Complainant chose to develop a website using the Domain Name to market his books, videotapes, and training clinics. The Complainant had "little experience working with the World Wide Web." Nevertheless he claims that it was "understood" between the Complainant and Ms. Mackenzie that she would register the Domain Name for the Complainant in his name which would make the Complainant the designated Whois Administrative Contact person and holder of the Domain Name, and the one who had control over the Domain Name. Based on what the Complainant refers to as Ďthis unambiguous directiveí, the Complainant assumed, from the time of the Domain Nameís registration in 1997, until the Complainant stopped working with Ms. Mackenzie in 2003, that the Domain Name was registered in his name. It was not until the Complainant attempted to make changes to the Website that the web host, SearchBC.com, informed the Complainant that the Respondent, rather than he, was the named Registrant, and that Ms. Mackenzie actually had control of the site.
6.6 The Complainant contacted Ms. Mackenzie shortly thereafter and requested that she take the necessary steps to transfer control of the Domain Name to him. Ms. Mackenzie refused to do so, and "demanded" that the Complainant pay her US$10,000 to transfer the Domain Name to his name. The Complainant contends that as he "owed [Ms. Mackenzie] no such funds," and chose to file a complaint pursuant to the Policy instead.
The Complainantís Trademark
6.7 The Complainantís name and reputation are among the most recognisable in the world of American Quarter Horses.
6.8 An <msn.com> search using the query "Bob Avila" and "horse" produces approximately 2893 results, with fifteen of the top fifteen hits referencing the Complainant. A Google search using the same terms produces 6,040 hits, with twenty of the top twenty items referencing the Complainant.
6.9 Although the Complainant does not hold a statutory trademark in the name "Bob Avila," the Complainant contends that he is, "based on his fame, notoriety, and long-term use of his name in his business, nonetheless entitled to a common law trademark or service mark without registering the mark with the appropriate authority." In support of this contention, the Complainant cites Bill Withers v. Robert Dominico et al, (WIPO Case No. D2000-1621); Jeanette Winterson v. Mark Hogarth, (WIPO Case No. D2000-0235); and Julia Fiona Roberts v. Russell Boyd, (WIPO Case No. D2000-0210).
6.10 The Complainant cites Dr Michael Crichton v. Alberta Hot Rods (WIPO Case No. D2002-0872) as the basis for the requirement that, in order to establish common law rights in a personal name, the Complainant must show that his name has achieved significant "secondary meaning" within a particular area or channel of trade. The Complainant contends that, although his name is not recognisable for all purposes throughout the world, there can be no doubt that he has achieved significant fame and secondary meaning within the world of American Quarter Horses. In support of this contention the Complainant cites Monty and Pat Roberts, Inc. v. Bill Keith, (WIPO Case No. D2000-0299) and Jeff Davies Bank and Trust Company v. Frank Small (NAF 157310).
6.11 The Complainant contends that he has won the "race to the market place" and thus established a common law trademark in his name by virtue of the fact that he has for over 30 years had significant secondary meaning attached to his name.
Identical or confusingly similar (Policy, paragraph 4(a)(i), Rules paragraphs 3(b(viii), (ix)(1))
6.12 The Complainant contends that the Respondent cannot rely as its defence on the fact that it has altered the name "Bob Avila" by adding a ".com." In support of this, the Complainant cites McCarthy on Trademarks and Unfair Competition ß23:50 (4th Ed. 1998) which states that a user of a mark "may not avoid likely confusion by appointing anotherís entire mark and adding descriptive or non-descriptive matter to it." The addition of a ".com" is required for registration of a domain name and is non-descriptive and when the disputed domain name differs from the Complainantís mark only by the addition of ".com," such addition is of no consequence. The Complainant cites Dr Michael Crichton v. Alberta Hot Rods, (WIPO Case No. D2002-0872).
No Rights or Legitimate Interests (Policy, paragraph 4(a)(ii), Rules paragraph 3(b)(ix)(2))
6.13 The Complainant refers to paragraph 4(c) of the Policy and the non-exclusive circumstances which, if proved by the Respondent, shall demonstrate the Respondentís legitimate interests to the Domain Name. The Complainant contends that the Respondent cannot prove it has a legitimate interest in the Domain Name under any of the factors set out in that paragraph.
6.14 The Complainant contends that so far as paragraph 4(c)(i) is concerned (i.e. "bona fide offering of goods or services"), the Policy specifically states that the offering of goods or services must be bona fide, which means it must be "in or with good faith." In support of this the Complainant cites Universal City Studios Inc. v. G.A.B. Enterprises, (WIPO Case No. D2000-0416). The Complainant contends that the Respondent can make no such showing and, according to the Complainant, the following extract from Scania CV v. Leif Westlye (WIPO Case No. D2000-0169) further supports this contention:
"[t]he use of the expression bona fide in Paragraph 4(c)(i) is sufficient to prevent a respondent who knowingly adopted anotherís well known mark as a Domain Name from claiming the benefit of mere use of or demonstrable preparations to use the Domain Name in connection with the offering of goods or services prior to notice of a dispute."
The Complainant contends that his mark "Bob Avila" is well-known within the American Quarter Horse Industry, and that the Respondent has "adopted" the mark by its unauthorised hijacking of the Domain Name. Thus in light of Scania CV AB v. Leif Westlye, (WIPO Case No. D2000-0169), the Complainant contends that he has successfully rebutted any assertion by the Respondent that it is using the Domain Name for a legitimate or bona fide offering of goods or services.
6.15 The Complainant contends further that, although it may be the Respondentís position that the Domain Name has been used to sell certain goods, in particular videotapes depicting the Complainantís training techniques, such offering has not been in good faith. Where the Respondent may be in possession of such videotapes and may be showing the same on the Website, the Complainant contends that he has never given nor sold to the Respondent these videotapes and has not authorised the Respondent to sell or distribute them on his behalf in any manner. Complainant further contends that the Respondent has in the past listed information on the Website regarding a purported training clinic that the Complainant was to hold in 2004 but has not yet been confirmed. The Complainant contends that this information was incorrect, and was placed on the Website without the Complainantís authorisation.
6.16 As to paragraph 4(c)(ii) of the Policy (i.e. "or commonly known by"), the Complainant contends that the Respondent is not, nor has ever been commonly known as "Bob Avila," and has no legal or equitable rights in the name. The only relationship that existed between the Complainant and the Respondent involved some previous work done by the Respondent for the Complainant in the late 1990s. This work includes his asking the Respondent to register the Domain Name in the Complainantís name. The Complainant contends that he never agreed, either orally or in writing, to become part of an organisation called B&B Productions. The Complainant therefore contends that the Respondent has never been commonly known by the Complainantís mark, "Bob Avila."
6.17 The Complainant contends that consumers visiting the Website are undoubtedly confused into believing that the site is somehow affiliated with the Complainant, when in fact it is the Respondent who controls the site, and the Complainant has no affiliation therewith. The Complainant asserts that finding that consumers are likely to be confused by a respondentís site mandates a conclusion that the site infringes on the complainantís trademark, and thus that the respondent lacks any right to or legitimate interest in the disputed Domain Name. In support of this, the Complainant cites Universal City Studios, Inc. v. G.A.B. Enterprises, (WIPO Case No. D2000-0416). The Complainant contends that the Respondentís mere use of the Domain Name alone cannot itself be cited by the Respondent as proof that the Respondent is known by the Domain Name, otherwise this factor always would be met for any Domain Name that is used for an active website. Again, in support of this, the Complainant cites Universal City Studios, Inc. v. G.A.B. Enterprises (WIPO Case No. D2000-0416).
6.18 As to paragraph 4(c)(iii) of the Policy (i.e. "legitimate non-commercial or fair use of the Domain Name(s), without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."), the Complainant contends that any sales of goods or services made by the Respondent on the Website are without the Complainantís authorisation. Additionally, the Complainant contends that because he has demonstrated that the Respondent has infringed on a trademark in which he has clear rights, the Respondent is precluded from making such an argument. The Complainant again cites Universal City Studios, Inc. v. G.A.B. Enterprises (WIPO Case No. D2000-0416).
6.19 The Complainant further contends that once he has made a prima facie showing that a respondent lacks rights in the domain name, "the burden of production shifts to the respondent to come forward with demonstrable evidence proving a legitimate interest in the domain name" by one of the three methods under paragraph 4(c) of the Policy (Universal City Studios, Inc. v. G.A.B. Enterprises. (WIPO Case No. D2000-0416)). Because the Respondent cannot make such a showing under one of the examples listed above, the Complainant contends that he has carried his burden showing that the Respondent has no legitimate rights in the Domain Name.
Bad Faith (Policy, paragraphs 4(a)(iii), 4(b), Rules, paragraph 3(b)(ix)(3))
6.20 The Complainant relies on paragraph 4(a)(iii) of the Policy:
"by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] website 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 [the Respondentís] website or location or of a product or service on [its] website or location."
6.21 The Complainant contends that despite requesting that the Domain Name be registered in his name, the Domain Name was instead registered in the name of the Respondent and thus according to the Complainant, further evidencing the Respondentís bad faith registration and use.
6.22 The Complainant contends that by intentionally using his well-known mark without his permission, the Respondent is attempting to attract consumers to the Website. Consumers visiting the Website undoubtedly believe that the Domain Name is affiliated with the Complainant, given that the Website bears his name, offers for sale videotapes demonstrating his American Quarter Horse training techniques, and claims that it is "Your Source for Bob Avila Merchandise." By continuing to use the Website to sell merchandise (videotapes) without the Complainantís permission, the Respondent uses the Domain Name in bad faith for the Respondentís own commercial gain.
6.23 The Complainant asserts that the Policy was drafted in clear recognition of the fact that in many cases a so-called "smoking gun" evidencing a respondentís bad faith will not exist. Instead, the Policy contemplates a finding of bad faith registration and use based on looking at all of the circumstances involved in a particular case. Establishment of the first two prongs of paragraph 4(a) of the Policy "on their own are generally not enough to constitute bad faith." When, however, as according to the Complainant in the instant case, the third element of paragraph 4(a) of the Policy in combination with the other two is established, the result is a "powerful argument in favour of bad faith registration and use under paragraph 4(a)(iii) of the Policy" (Newman/Haas Racing v. Virtual Agents, Inc., (WIPO Case No. D2000-1688)). The Complainant therefore contends that based on the foregoing he has "carried his burden as to the bad faith prong of the Policy."
B. The Respondent
6.24 The Respondent sets out its contentions in a declaration of Ms. Mackenzie and documents headed "Reply to Bob Avilaís Points" and "Regarding #18 - Supplementation Declaration of Bob Avila." None of these documents directly address the legal contentions of the Complainant, but instead set out certain factual grounds which reply in a general manner to the factual contentions of the Complainant. These can be summarised as follows:
(a) Ms. Mackenzie has been actively involved in production and marketing since 1980;
(b) Ms. Mackenzie and the Complainant met in 1993 at which point Ms. Mackenzie was interested in hiring the Complainant to "instruct a conference in 1994";
(c) Ms. Mackenzieís relationship with the Complainant "has always been committed verbally and agreements had never been finalized in writing as Bob Avila always had other priorities when it came to finalizing deals";
(d) B&B Productions constituted "a verbal agreement between Brigitte Mackenzie and Bob Avila";
(e) Ms. Mackenzie and the Complainant have been "in a verbal deal as business partners";
(f) The Complainant participated in the business of the Respondent to a significant degree;
(g) The Complainant "never asked [Ms. Mackenzie] to register the web page in his name, at any time";
(h) The "web page Ďwww.bobavila.comí was planned as a mutual benefit for [the Complainant] and [Ms. Mackenzie] in the name of B&B Productions";
(i) The purpose of the Website was to sell videos and conferences produced by the Respondent and any expenses or income related thereto was shared equally between the Complainant and Ms. Mackenzie;
(j) The idea, design, management and communication of the Website was entirely under the management of "B&B Productions -Brigitte Mackenzie";
(k) The Complainant signed documents in agreement with the sale of his videotapes over the Website;
(l) Until May 2003 there was no reason for any consumer to be confused about the Website as the business was always handled in accordance with the Complainantís wishes;
(m) The Complainant gave Ms. Mackenzie verbal authorisation to conduct negotiations with regard to the Website and the Complainant "has carried business cards from B&B Productions and has negotiated on behalf of B&B Productions on several occasions";
(n) Contrary to the Complainantís assertions, Ms. Mackenzie "did present him with organizational documents for the store front on the web page. As the logistical designer, production co-coordinator, and marketing manager/producer/distributor of the videos and educational conferences [she] requested the web page and he authorized this in Cloverdale, BC on February 8, 1998, in the event office at approximately 5.00 pm";
(o) The Complainant asked Ms. Mackenzie "to trademark his name" but she "hesitated because of the legal financial costs to the business of B&B Productions as the trademark should only benefit Mr Avila as an individual and not the business [she] was involved with him"; and
(p) Ms. Mackenzie does not deny that she asked for a payment of $10,000 in relation to the Domain Name but appears to contend that this represents "fair value for fair work/contribution."
7. Discussion and Findings
7.1 The Panel has reviewed the Complaint and the documents annexed thereto and the Response and the documents annexed thereto. In light of the material the Panel sets out its findings below.
7.2 The Panel does not find there are any exceptional circumstances within paragraph 5(e) of the Rules so as to prevent it from determining the Complaint. Details of these proceedings have therefore been served in accordance with the relevant requirements set out in the Rules.
7.3 The Complainant must "prove" each of the following elements of the Rules, which are set out in paragraph 4(a) of the Policy as follows:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
Identical or confusingly similar
7.4 To succeed under this head, the Complainant first has to prove that he has rights in the trademark or service mark. Secondly, he must prove that the Domain Name is identical or confusingly similar to the trademark or service mark.
7.5 The second element is straightforward in this case. In common with the facts of Louis de Bernieres v. Old Barn Studios Limited, (WIPO Case No. D2001-0122) the alleged mark is the Complainantís name with the addition of the generic ".com" suffix. On the same basis, the Panel accepts the contentions of the Complainant and finds that for the purposes of paragraph 4(a)(i) of the Policy, the Domain Name is identical to the Complainantís name ĎBob Avilaí. There is no need to consider or take into account US trademark law in coming to this decision.
7.6 The remaining element of paragraph 4(a)(i) that the Complainant must prove, is whether ĎBob Avilaí is a "trademark or service mark in which the Complainant has rights."
7.7 The Complainant has not registered his name as a trademark in any jurisdiction, therefore he cannot claim registered trademark rights in the mark "BOB AVILA". Instead, the Complainant relies on common law trademark rights in the mark "Bob Avila." The position under the Policy of so called "common law trademarks" is considered at some length in the decision of this Panel in Sybil Avery Jackson v. Jan Teluch (WIPO Case No. D2002-1180). In summary, if a Complainant is able to show in a relevant jurisdiction that he has common law trademark rights recognized by that jurisdiction, then this is sufficient for the purposes of paragraph 4(a)(i) of the Policy.
7.8 The relevant law here is the law of California, and the Complainant contends that he is in the same position as the complainant in Monty and Pat Roberts, Inc v. Bill Keith (WIPO Case No. D2000-0299) i.e. "under California common law he [has] by virtue of his fame achieved notoriety significant enough to have trademark rights in this name."
7.9 The Complainant asserts that his name and reputation are among the most recognisable in the world of performance Quarter Horses. As has already been described earlier in this decision, the Complainant has put forward extensive evidence of his fame and reputation.
7.10 The Complainant contends further that all the Complainantís commercial activities are carried out under his name "Bob Avila" and that name identifies the Complainantís commercial endeavors to customers.
7.11 Although the Respondent refers at one stage to the Complainantís "Ďso-called trademark," Ms. Mackenzie does not substantively contest these assertions. In the circumstances, the Panel accepts the Complainantís contentions in this respect.
7.12 The Panel, therefore, concludes that the Complainant has proved the relevant elements of paragraph 4(a)(i).
Rights or legitimate interests
7.13 Under this head the Complainant must prove that the Respondent has no legitimate interest in the Domain Name and has no rights in respect of the Domain Name. The difficulty in this particular case is that whether or not the Respondent has legitimate rights in the Domain Name is intimately bound up with, and dependant upon, the circumstances surrounding the registration of the Domain Name and the discussions and agreements (if any) reached between the Complainant and Ms. Mackenzie at and around this time. These factors are all discussed in greater detail in this decision in the context of the question of bad faith.
Registered and Used in Bad Faith
7.14 Paragraph 4(a)(iii) of the Policy requires that the Domain Name has been registered by the Respondent in bad faith and that it is being used by the Respondent in bad faith. The evidence put forward by both parties as to the circumstances surrounding the registration of the Domain Name is vague.
7.15 In particular, the Complainant alleges "[He] had little experience working with the World Wide Web" but that:
"It was understood between he and Ms. Mackenzie that she would register the subject domain for him in his name, Bob Avila, [in support of which assertion reference is made to a declaration from the Complainant], which would make him the designated Whois Administrator Contact person and holder of the domain BobAvila.com."
7.16 This is curious wording. How did this "understanding" arise? Also, what exactly is meant by the words "in his name"? Does this mean simply registration of the Domain Name <bobavila.com> or does it mean that Bob Avila should be recorded as the Registrant? At first sight the wording as a whole suggests the latter, but this would involve knowledge on the part of the Complainant as to the domain name registration processes that sits uneasily with the Complainantís self confessed lack of experience as to the workings of the Internet.
7.17 In fact, the exact words of the declaration of Mr. Avila upon which this assertion is based are as follows:
"I asked Ms. Mackenzie to set up this website and to register it in my name."
It is noticeable that the Complainant here does not refer to the Domain Name but simply "the website."
7.18 In a separate Supplemental Declaration the Complainant then asserts:
"I asked Ms. Mackenzie to set up a website for me called "Bobavila.com," in my name "Bob Avila."
However, this explanation takes matters little further. In short, it is unclear what instructions, if any, the Complainant contends he gave Ms. Mackenzie as to the name in which the Domain Name was to be registered.
7.19 Ms. Mackenzieís contentions in relation to the Domain Name are even more problematic. She talks at length about the "web page - bobavila.com" and provides extensive evidence as to the Complainantís knowledge of the existence of the web page and the advantage that the Complainant gained from its operation. However, web pages and domain names are different things. It does not necessarily follow from the fact that someone has agreed with or acquiesced in the operation of a website from a certain domain name that that person has agreed with or acquiesced in the registrant of that domain name being entitled to be recorded as the registrant. Ms. Mackenzie does not explain what instructions were given or agreement reached (if any) regarding the identity of the registrant in this case. Perhaps the most detailed explanation of what occurred is to be found in the document titled "Regarding #18 - Supplementation Declaration of Bob Avila." In this Ms. Mackenzie asserts:
"Contrary to Bob Avilaís statement I did present him with organizational documents for the storefront on the web page. As the logistical designer, production coordinator and marketing and manager/producer/distributor of the videos and educational conferences I requested the web page and he authorized this in Cloverdale, B.C. on February 8, 1998, in the event office at approximately 5.00 p.m. I never did or have ever discussed anything other than my request for the web page. I planned, designed and completed the entire concept. When, I did discuss with Bob Avila at his home in Yamhill, Oregon in March 1998 completing organization documents he told me he did not have the time. Nor was he interested."
7.20 No mention is made of the Domain Name in this passage and what exactly is meant by "organizational documents" and the assertion that the Complainant "authorized" Ms. Mackenzieís "request" for the "web page" are not explained.
7.21 How then is the Panel to come to terms with this ambiguous and possibly conflicting set of assertions? The Panelís conclusions are as follows:
(i) That the Complainant fails in his allegation (insofar as he makes such an allegation at all) that he directed Ms. Mackenzie to register the Domain Name in such a manner that Bob Avila would be recorded as the Registrant. If the Panel were forced to come to a conclusion of fact on this narrow issue, it would prefer the evidence of Ms. Mackenzie. However, no such finding is necessary. The Complainant bears the burden of proof in relation to this question and in the Panelís view has failed to carry that burden.
(ii) Notwithstanding this finding, the Panel notes that the Respondent does not expressly allege that the Complainant agreed to registration of the Domain Name with "B&B Productions" as the Registrant, and the Panel finds as a matter of fact that the Complainant did not so agree.
7.22 Where does this leave the question of bad faith? A non-exhaustive list of what constitutes bad faith for the purposes of paragraph 4(a)(iii) of the Policy is set out in paragraph 4(b) of the Policy. The Complainant refers to paragraph 4(b)(iv) of the Policy which provides that the following constitutes evidence of bad faith:
"by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondentís] website or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of [the Respondentís] website or location or of a product or service on [the Respondentís] website or location."
7.23 However, the Panel is unconvinced that this is made out by the Complainant in this case. Bad faith registration and use is required by the Policy. The evidence brought before the Panel simply does not support the conclusion that the Domain Name was registered for the purpose of creating a likelihood of confusion with the Complainantís mark. Whilst the Panel accepts that the Complainant did not agree to the registration of the Domain Name with "B&B Productions" as the Registrant, it nevertheless seems clear that the Website did operate with the Complainantís agreement. To all intents and purposes it operated as the Complainantís "official" website. Indeed, in his first declaration in these proceedings the Complainant refers to the Website as "my website." It was only when the relationship between the Complainant and Ms. Mackenzie broke down that any question of confusion could arise but by that time the Domain Name had already been registered.
7.24 However, the fact that the Complainantís allegation under paragraph 4(b)(iv) fails is not the end of the matter. The factors set out in paragraphs 4(b) of the Policy are non-exclusive and it is reasonably clear that the Complainant does not rely upon paragraph 4(b)(iv) alone. Could there be other reasons for concluding bad faith in this case?
7.25 This is not an easy question. In short, if the Domain Name had been registered in the name Brigitte Mackenzie, the Panel is likely to have concluded that in the specific circumstances of this case such registration would indeed have been in bad faith. Had such a fact been disclosed to the Complainant, the Panel is highly doubtful that the Complainant would have permitted the project to proceed on this basis, and not to disclose this fact to the Complainant in such circumstances suggests bad faith registration.
7.26 However, this is not what happened in this case. As has already been described above, the Domain Name was not registered in the name of Brigitte Mackenzie, but instead in the name of "B&B Productions."
7.27 What then is the status and nature of "B&B Productions"? The Complainant alleges that "B&B Productions" is "the name by which Ms. Mackenzie does business". In a Supplemental Declaration filed in support of the Complaint, the Complainant declared:
"To the best of my knowledge and belief, Ms. Mackenzie never presented me with any organizational documents to form an entity called "B&B Productions" and I never agreed either orally or in writing to become part of such an entity with Ms. Mackenzie for any purpose."
7.28 Ms. Mackenzie appears to dispute this. She claims that "B&B Productions" is an "agreement" between her and Mr. Avila and that both she and Mr. Avila were "in a verbal deal as business partners."
7.29 Obviously, if a partnership could be said to exist between Ms. Mackenzie and the Complainant, in relation to the operation of the Website and of which the Domain Name was an asset, this would have significant impact on the question of bad faith.
7.30 At first sight, Ms. Mackenzieís assertions in this respect are vague and unimpressive. Her case is not helped by references in the Response to "B&B Productions - Brigitte Mackenzie" as if they are one and the same thing and the fact that the Response is headed "Bob Avila v. Brigitte MacKenzie." The Panel is also not convinced that when she talks of the parties being "business partners" that she truly appreciates the legal consequences that flow from an allegation that some sort of partnership might exist between the parties.
7.31 Therefore, were such assertions the sole extent of the evidence brought forward by Ms. Mackenzie as to the existence of a partnership recognized by law, and bearing in mind the unqualified assertions of the Complainant in this respect, the Panel would have had little difficulty in preferring the Complainantís position. But, this is not the only evidence on which Ms. Mackenzie relies. In particular, Ms. Mackenzie refers to the following:
(a) The fact that the parties "invested equally in the interests of B&B Productions including monthly costs of the web page";
(b) Copyright certificates in the name of "B&B Productions" dated 1997 and 1999. These copyright certificates describe "B&B Productions" as "a partnership of Brigitte Mackenzie & Bob Avila";
(c) Correspondence with credit card processor, Cardservice International, in connection with B&B Productions addressed to Mr. Avila. In this context, Mr. Avila appears to have signed a credit card Conversion Authorization Form in relation to the business "B&B Productions"; and
(d) A copy of a letter from the Complainant forwarded by email to Ms. Mackenzie on June 19, 2003 that begins:
"Let me start by saying that I think WE as B&B Productions have had a tremendous amount of success that neither of us can dispute."
7.32 It may be that all of this evidence can be explained away. To pay part of the expenses of another does not necessarily mean that a partnership exists. Perhaps Mr. Avila had not previously seen the copyright certificates. Perhaps when Mr. Avila talks of "WE as B&B Productions," he merely uses B&B Productions (does B&B stand for Bob and Brigitte?) as imprecise shorthand for their working relationship. Perhaps there could have been no legal partnership here because there are formalities that must be complied with under Californian law (assuming that Californian law is applicable) in relation to such a partnership that have not been complied with in this case. However, these issues are not addressed by the Complainant. More importantly, these are issues that are not well suited for determination under the Policy.
7.33 In ITMetrixx, Inc v. Kuzma Productions, (WIPO Case No. D2001-0668), the panel commented as follows:
"This matter appears to be a dispute between business partners over the ownership of the business and its assets. This is not a case limited to cybersquatting, which is the problem that the Policy was designed to address. As the Panel stated in the case of Latent Technology Group Inc v. Bryan Fitchie, Case No. FA95 285, ĎTo attempt to shoehorn what is essentially a business dispute between former partners into a proceeding to adjudicate cybersquatting is, at its core, misguided, if not a misuse of the Policyí."
This Panel agrees with this reasoning and believes they apply equally to a case where, as here, there is a serious and real dispute between the parties as to the nature of the business relationship between them and whether or not a partnership ever existed. A national court, with the advantages of an oral hearing and examination of parties and witnesses, is better equipped to deal with such a dispute.
7.34 In the circumstances, the Panel concludes that the Complainant has failed to show bad faith in this case. It is a conclusion that this Panel comes to with reluctance but which the Panel believes to be unavoidable.
For these reasons, the Panel concludes that the Complainant is denied.
Matthew S. Harris
Dated: March 24, 2004