WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Magma Products Inc. v. Herb Halling

Case No. D2007-0995

 

1. The Parties

The Complainant is Magma Products, Inc., Lakewood, California, United States of America, represented by Fulwider Patton LLP, United States of America.

The Respondent is Herb Halling, d/b/a Halling Enterprises, Los Alamitos, California, United States of America.

 

2. The Domain Names and Registrar

The disputed Domain Names <delmarbarbeque.com>, <magmabarbeque.com> and <magmabbq.com> are registered with eNom, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July  6, 2007. On July 11, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names at issue. On July 13, 2007, the Registrar transmitted by email to the Center its verification response confirming that the Respondent Herb Halling is listed as the registrant and referring to the Registrar’s WHOIS database for contact details. The Center verified that 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”).

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 July 19, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 8, 2007. The Response was filed with the Center on July 30, 2007.

The Complainant submitted a Supplemental Filing on August 8, 2007. The Respondent replied with a supplemental filing in the form of an email to the Center dated August 9, 2007.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on August 21, 2007. 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

The Plaintiff Magma Products, Inc. is a California business corporation based in Lakewood, California. The Plaintiff has manufactured barbeque grills for use on boats and sold them under the MAGMA mark since the corporation was established in 1976. Since 1999, the Plaintiff has also manufactured and sold residential barbeques under both the DEL MAR mark and the MAGMA mark. In addition, the Plaintiff sells a variety of “marine cuisine” products such as cookware, food preparation tables, boat umbrellas, and boat stabilizers, using the MAGMA mark.

The Plaintiff’s products are sold internationally under the MAGMA and DEL MAR marks and have received media attention and industry awards, including gold medals from the American Culinary Institute (2002 and 2003). The Plaintiff advertises and promotes its products internationally and on its websites at “www.magmaproducts.com” (since 1998) and “www.magmabbqs.com” (since 2005). The websites feature grills under both the MAGMA and DEL MAR marks.

The Plaintiff obtained United States Trademark Registration No. 2101945 for the MAGMA mark on October 7, 1997, showing first use in commerce in September 1978. The Plaintiff obtained United States Trademark Registration No. 2381053 for the DEL MAR mark on August 29, 2000, giving the date of first use in commerce as March 27, 1999. Both registered trademarks are current and incontestable.

The Respondent Herb Halling is an individual who gives his postal address at “Halling Enterprises” in Los Alamitos, California. Halling Enterprises appears to be a trade name; it is not listed as a registered corporation, limited partnership, or limited liability company on the business search database operated by the California Secretary of State. The Respondent did not object to the Plaintiff’s characterization of the Respondent as “Herb Halling d/b/a Halling Enterprises,” and the Respondent submitted a copy of a California Seller’s Permit issued in the names of Halling Enterprises and Herb Halling.

The Respondent, using the trade name Halling Enterprises with contact details identical to those provided in this proceeding, is in the business of retailing a variety of marine and other products. This business is conducted largely online through several websites, including those associated with the Domain Names.

The Respondent acknowledges that he and the Complainant’s principals “live and socialize in the local boating community and have known each other for years.”

The Respondent registered the Domain Names on the following dates:

<magmabbq.com> May 3, 2001

<magmabarbeque.com> May 5, 2001

<delmarbarbeque.com> February 6, 2002.

The website to which all three of the disputed Domain Names currently resolve (“the Respondent’s website”) is headed “MagmaBarbeque.com.” Beneath this title are the tag lines, “Your online source for Magma Barbeques and Magma BBQ Supplies,” and “Order Replacement parts for Magma BBQs.” It is undisputed that the Respondent’s website includes product photographs and descriptive text copied from the Complainant’s website.

At the bottom of the home page is the following statement:

“MagmaBarbeque.com is a division of Halling Enterprises and your online source for Magma barbeque products.  Most Magma products are available on this website from new BBQs to replacement parts.  Only Magma's OEM products are sold on this website.”

Despite this statement, the home page includes a link for “Boat Safe COBB Barbeques” as well as various MAGMA products and replacement parts.

Although the Respondent’s website identifies “MagmaBarbeque.com” as a “division of Halling Enterprises,” there is no evidence that either is a legal entity. Like “Halling Enterprises,” “MagmaBarbeque.com” does not appear on California’s online business search database. The Respondent asserts that he is “commonly known as MagmaBarbeque.com and has been conducting business as this entity since 2002.” The Response attaches a copy of a “MagmaBarbeque.com” packing slip and receipt dated June 14, 2002, a form which the Respondent says he has used continuously for more than five years.

The Response also attaches copies of invoices showing that the Respondent has ordered DEL MAR and MAGMA barbeques from at least three distributors and also directly from the Complainants, for shipment either to the Respondent or to his customers in several different states.

The Respondent asserts, without contradiction, that he has on several occasions asked the Complainant to recognize him as a distributor of the Complainant’s products. The Respondent submitted a copy of his letter to the Complainant dated September 20, 2004 on this subject. Among other things, the Respondent’s letter argues as follows:

The Respondent owns the Domain Names and intends to use them to operate an e-commerce website at “selling your products in good taste for the purpose of earning a profit.”

The Respondent is a “dealer of your products selling close to $75,000 a year in Magma barbeques and replacement parts.”

The Respondent and two of the Complainant’s employees “strongly dislike” each other because of “yacht club politics.” Those employees have blocked the Respondent from dealing directly with the Complainant as an “approved stocking dealer.” As a result, the Respondent has trouble getting access to the Complainant’s full product line, pays a higher price for its products, and experiences difficulties with customer service, returns, and warranty service.

There is “customer confusion” when customers contact the Respondent with service problems and the Respondent’s employees have to explain they are not associated with the Complainant and must refer the callers to the Complainant’s customer service telephone number.

The Complainant’s employees have threatened litigation over the Domain Names and have cited the Respondent’s refusal to relinquish them as the reason for denying him recognition as an approved stocking dealer. The Respondent’s letter argues that he has a right to use those names because he is “filling a need that was previously ignored” and selling the Complainant’s products with no “malicious code”; also, the Respondent is “not targeting Magma Products in a malicious manor [sic].”

The Respondent has several online and brick-and-mortar businesses and is not a cybersquatter. “We may entertain an offer for our businesses, but not for the domain name alone.”

Apart from this letter, no copies of any communications between the parties have been provided.

 

5. Parties’ Contentions

A. Complainant

The Complainant argues that the Domain Names are confusingly similar to its registered MAGMA and DEL MAR trademarks, and that the Respondent has no rights or legitimate interests in the Domain Names.

The Complainant infers bad-faith registration and use of the Domain Names as described in the Policy, paragraph 4(b)(iv) (misleading Internet users for commercial gain). The Complainant’s Supplemental Filing also cites paragraph 4(b)(i) of the Policy (intent to sell the Domain Names to the Complainant for an excessive price).

B. Respondent

The Respondent argues that the Domain Names are not confusingly similar to the Complainant’s MAGMA mark because others use “Magma” in their names and marks. He also suggests that the Complainant’s claims are time-barred.

The Respondent contends that in any event he has the right as a reseller to incorporate the Complainant’s marks in Domain Names associated with a website where he does, in fact, sell the Complainant’s products. He argues that he originally registered two of the Domain Names to protect the Complainant’s interests and to give to the Complainant, and that he has since used the Domain Names for bona fide commercial purposes that do not harm the Complainant.

The Respondent states his belief that there are “other issues” between the Complainant and himself driving the Complaint, and he asks for a finding of Reverse Domain Name Hijacking.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest a Respondent of a disputed domain name, a Complainant must demonstrate each of the following:

(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.

Under paragraph 15(a) of the Rules,

“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

A. Supplemental Filings

The Rules do not explicitly provide for supplemental filings in a Policy proceeding, except at the request of the Panel (see Rules, paragraph 12). Paragraph 10 of the Rules enjoins the Panel to conduct the proceeding “with due expedition” and empowers the Panel to “determine the admissibility, relevance, materiality and weight of the evidence”. Therefore, UDRP Panels are reluctant to countenance delay through additional rounds of pleading and typically accept supplemental filings only to consider new evidence or provide a fair opportunity to respond to new arguments.

The Complainant’s Supplemental Filing offers no new evidence. It replies to the Respondent’s claim of Reverse Domain Name Hijacking, and the Panel accepts the Supplemental Filing for this limited purpose.

The Complainant’s Supplemental Filing also adds a legal argument based on Policy, paragraph 4(b)(i) (based on certain of the Respondent’s factual assertions) and otherwise adduces support for its legal arguments in the materials presented by the Respondent. The Respondent’s reply denies the Complainant’s inferences and asks for “equal time” to respond to its arguments if the Panel accepts the Complainant’s Supplemental Filing.

In the absence of new facts, the Panel does not find it necessary or prudent to permit additional pleading and rejects the supplemental filings of both parties except to the limited extent noted above. The Panel will evaluate the strength of the Complainant’s and the Respondent’s arguments on the issue of bad faith on the basis of the facts as presented in the Complaint and Response.

B. Timeliness of the Complaint

The Respondent argues that the Complaint should be barred by a “statu[t]e of limitations” with respect to the Domain Names <magmabarbeque.com> and <magmabbq.com>, since they were registered more than six years before the Complaint was filed and the “subsequent lack of action on Complainant[’]s behalf can be interpreted as acceptance of Respondent[’]s marketing activities.”

The Policy does not include a time limitation on claims, and disputes under the Policy are not subject to any statute of limitations.

The parties are both located in the United States, where courts recognize the doctrine of laches, which can result in the dismissal of a complaint for undue delay in asserting legal claims. However, the Panel concludes that the equitable defense of laches does not properly apply to this Policy proceeding. The remedies under the Policy are injunctive rather than compensatory in nature, and the focus is on avoiding confusion in the future as to the source of communications, goods, or services. See, e.g., The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447 (the Policy does not contemplate a defense of laches, which is inimical to the Policy’s purposes). See also 5 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition (4th ed. 2005) 31:10, p. 31-35 and cases cited therein (in common law, the defense of laches bars the recovery of damages incurred before the filing of a lawsuit; this does not apply to injunctive relief in a trademark action that seeks to avoid future confusion in the marketplace).

The Panel also finds it unnecessary to speculate as to the reasons why the Complainant failed to bring a Policy Complaint until six years after the first two of the Domain Names were registered. The Complaint will be evaluated on its merits.

C. Identical or Confusingly Similar

The Complainant unquestionably owns the registered trademarks MAGMA and DEL MAR. The Domain Names <magmabarbeque.com> and <magmabbq.com> incorporate the MAGMA mark in its entirety and add a nondistinctive, descriptive word (“barbeque”) or its common abbreviation (“bbq”).

Similarly, the Domain Name <delmarbarbeque.com> incorporates the Complainant’s DEL MAR mark in its entirety (the space between DEL and MAR is nondistinctive in the context of DNS addresses, which cannot include a space) and adds the descriptive word “barbeque.”

The record shows that the Complainant’s marks are chiefly associated with barbeque (or “bbq”) grills, so the addition of this relevant descriptive word or abbreviation actually increases the likelihood of confusion with the Complainant and its marks. See, e.g., United Parcel Service of America, Inc. v. Shipping Administration, WIPO Case No. D2002-1162 (the generic addition in the domain name <upsovernight.com> increased the likelihood of confusion with the complainant’s UPS mark because UPS offers overnight courier services). Thus, while “magma” (an English word for molten rock) and “del mar” (Spanish for “of the sea”) may appear in other names and marks, the Domain Names chosen by the Respondent are particularly likely to lead Internet users to associate them with the Complainant’s MAGMA and DEL MAR barbeque products. The Complainant furnished copies of correspondence showing that customers have indeed been confused as to the source and affiliation of the Respondent’s website. Although such evidence is not necessary to establish the first element of a UDRP complaint, it supports the objective conclusion that the Domain Names are “confusingly” similar to the Complainant’s marks.

The Panel concludes that the Complainant has satisfied this requirement for a claim under the Policy.

D. Rights or Legitimate Interests

The Policy, paragraph 4(c), advises respondents as follows:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your 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; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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.”

It is not disputed that the Respondent uses the Domain Names for a website that sells goods, mostly those produced by the Complainant. This does not of itself necessarily constitute a bona fide offering of goods or services under the Policy, however, given the likelihood of confusion as to source or affiliation. That is frequently an issue when a reseller uses a manufacturer’s mark in a domain name.

And it is clear that the Respondent has effectively acted as a reseller of the Complainant’s products, even if he does not have a contractual distributorship arrangement with the Complainant. He takes orders and payment from customers, purchases the Complainant’s products (usually from a distributor and not with the benefit of a distributor’s discount or support services), and arranges for the product to be shipped either to him or directly to the ultimate customer. The Respondent claims he is an “approved dealer” for the Complainant’s products, based on these transactions, but at the same time he bemoans the Complainant’s “refusal to grant the Respondent distributor status.” The Complainant, for its part, does not deny selling products directly or indirectly to the Respondent, but it denies ever entering into a distributorship or other ongoing relationship with the Respondent.

It appears that the Respondent is an unauthorized reseller, not enjoying the benefits of a contractual dealer or distributor relationship, which would typically include trademark licensing provisions. There is certainly no evidence that the Complainant licensed the Respondent at any time to use the Complainant’s marks in advertising or in the Domain Names.

Several panel decisions under the Policy address the question of whether a reseller of branded goods is making a bona fide offering that should be viewed as conferring a “legitimate interest” in a domain name, where the reseller has not been authorized (contractually or otherwise) to use the mark in a domain name. These decisions were reviewed in Volvo Trademark Holding AB v. Auto Shivuk, WIPO Case No. D2005-0447) (respondent used the complainant’s VOLVO mark in the domain name <volvo-auto-body-parts-online.com>). The panel in that proceeding noted that some UDRP decisions treat unauthorized use of a mark in a domain name as generally illegitimate. Such a case is Volvo Trademark Holding AB v. Peter Lambe, WIPO Case No. D2001-1292, which held that “[i]t is a well-known principle of trademark law that the manufacturer of ‘unoriginal’ spare parts is entitled to a certain limited use of the trademark of the manufacturer of the original products in connection with the bona fide offering of these goods, but this principle does not entitle the said manufacturer to incorporate the trademark in his business name or in any other type of business identifier such as a domain name”.

Other panels have more readily recognized a right to use a mark to describe a respondent’s business, even in a domain name. An example is Daimler Chrysler A.G. v. Donald Drummonds, WIPO Case No. D2001-0160 (with dissent), where the operator of a site marketing Mercedes automotive parts and accessories was deemed to have a legitimate interest in using the MERCEDES mark descriptively in its domain name (and with appropriate disclaimers in the text of the website).

Judging from the subsequent decisions, however, this Panel agrees with the conclusion of the panel in Volvo Trademark Holding AB v. Auto Shivuk that the most influential view is the one articulated in 2001 in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, where the reseller’s domain name <okidataparts.com> incorporated the complainant manufacturer’s OKIDATA trademark. The Panel in Oki Data concluded that the use of a manufacturer’s trademark as a domain name by a dealer or reseller (an authorized dealer in that case) should be regarded as a bona fide offering of goods or services” within the meaning of paragraph 4(c)(iii) of the Policy if the following conditions are satisfied:

- the respondent must actually be offering the goods or services at issue;

- the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods);

- the site itself must accurately disclose the respondent’s relationship with the trademark owner; and

- the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.

The Oki Data criteria are relevant to the spirit and the letter of the Policy. Moreover, this Panel agrees with the Panel in Volvo Trademark Holding AB v. Auto Shivuk that those criteria may well be appropriate not only in cases determining the rights or legitimate interests of authorized dealers or resellers but also in cases, such as this one, where the respondent is not an authorized dealer and has no ongoing contractual relationship with the mark holder. The Panel is also aware that there have been decisions in which WIPO Panels, while accepting the general relevance of the Oki Data criteria to resale or distributor situations, have nevertheless declined to apply them in certain circumstances - where for example the respondent was not an authorized reseller or distributor of complainants products and the domain name was identical to the complainants mark or marks. See, e.g., General Electric Company, GE Osmonics Inc. v. Optima di Federico Papi, WIPO Case No. D2007-0645. But that is not the case in the current proceedings.

Applying the Oki Data criteria to the current proceeding, the Panel finds that the Respondent’s use of the Complainant’s marks in the Domain Names is not associated with a bona fide offering of goods and services, because it fails the second and third tests.

The Respondent has prominently featured on its website not only the Complainant’s trademarked goods but the competing COBB barbeque products. These are named, with a page link, on the home page of the Respondent’s website. The Respondent acknowledges this fact, with an explanation that does not particularly advance his cause:

“a competitive BBQ (Cobb) was offered on the website (Annex 7) for a short time with the intention of motivating the Complainant to the negotiating table. All prior attempts to resolve distribution problems have been ignored by Complainant and desperate measures were justified. Said product has been removed from website upon filing of complaint, Annex 8. During this period, flavor of the website was 99% representative of Complainant[’]s products.”

Annex 7 shows a version of the home page of the Respondent’s website (dated June 11, 2007) on which a photograph of the COBB BBQ appears above all other products, with the tag lines, “Introducing the new COBB BBQ” and “Boat Safe”. Later versions of the page (such as one printed on July 28, 2007 and attached at Annex 8 to the Response) do not picture a COBB BBQ – but the home page still includes a link to a page on “Boat Safe COBB Barbeques,” just as it does to categories of MAGMA products. Indeed, the home page of the Respondent’s website currently displays the text “Click HERE for Boat Safe COBB Barbeques.” These may represent a relatively small portion of the Respondent’s sales (although no figures were offered in evidence), but they still raise the potential of “bait and switch” tactics that could hurt the Complainant’s sales and reputation.

The third Oki Data condition requires that the website accurately disclose the Respondent’s relationship with the trademark owner. This is not evident from the current wording on the website. It refers to MagmaBarbeque.com as “a division of Halling Enterprises,” but it does not say who is behind these apparently fictitious names and how he or it is related to Magma Products, Inc. The website text also states that only “Magma’s OEM products are sold on this website.” This is inaccurate and confusing because COBB products are also sold on the website (which could lead consumers to believe that the Complainant manufactures the COBB products), and it does not describe the Respondent’s relationship with the Complainant. The Panel notes that “OEM” commonly denotes an “original equipment manufacturer” whose product is incorporated as a part of another manufacturer’s product (see, e.g., the Wikipedia article, “Original equipment manufacturer”). It is not clear how the Respondent’s simple resale of the Complainant’s products fits the OEM model; it does not appear that the Respondent incorporates the Complainant’s parts into products manufactured by the Respondent. What the website does not disclose is that the Respondent has no relation to the Complainant, that the Complainant owns the MAGMA and DEL MAR trademarks, and that the Complainant manufactures the products branded with those marks and sold on the Respondent’s website.

Thus, the Respondent’s website fails the Oki Data test on two counts. His use of the Complainant’s marks in the Domain Names should not, therefore, be deemed to be in connection with a bona fide offering of goods and services within the meaning of the Policy, paragraph 4(a)(i).

The Respondent also relies on paragraph 4(a)(ii) of the Policy with respect to one of the Domain Names by claiming that he is “commonly known as MagmaBarbeque.com and has been conducting business as this entity since 2002.” There is not sufficient evidence in the record to support this claim. The Respondent’s website refers to “MagmaBarbeque.com” as a “division” of Halling Enterprises, but there is no evidence that either is anything more than a fictitious name. The only documentary evidence submitted as to the use of the name MagmaBarbeque.com, apart from the Respondent’s website, is an example of letterhead for a packing slip / receipt dated June 14, 2002. This shows “MagmaBarbeque.com” at the top, but immediately over the name Halling Enterprises. The record shows that Halling Enterprises is the trade name routinely used by the Respondent, and it is the name that appears on all of the other transactional documents furnished by the Respondent.

The Respondent has also not furnished persuasive evidence that he has established MagmaBarbeque.com as a common law trademark. A domain name normally functions as an address, not a brand. See, e.g., 1 J. McCarthy, Trademarks and Unfair Competition 7:17.1 (4th ed. 1998). A trademark must indicate the origin of goods or services. A domain name might serve that purpose if, for example, it were the only or most prominent name that appeared on product labeling, signage, and advertising for particular goods or services. That is not the case here.

The Panel concludes that the Complainant has established the second element of a UDRP complaint.

E. Registered and Used in Bad Faith

The Policy, paragraph 4(b), gives non-exhaustive illustrations of bad faith registration and use, including the following:

“(i) circumstances indicating that you have registered or you have acquired 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 service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”

The Complainant cites both of these provisions in inferring bad faith on the part of the Respondent.

The following facts relevant to the issue of bad faith are evident from the record in this proceeding:

The Complainant’s MAGMA mark has been associated with successful products since 1976, and the DEL MAR mark since 1999.

The Respondent was well aware of the Complainant, its products, and its marks in 2001 and 2002 when he registered the confusingly similar Domain Names and when he started using them shortly thereafter to sell the Complainant’s products.

The Domain Names are likely to create confusion as to source and affiliation, as evidenced by customer correspondence submitted by the Complainant and the Respondent’s statement that his staff must repeatedly explain to callers that they are not affiliated with the Complainant and cannot resolve all of their customer service issues.

The Respondent has profited from sales of the Complainant’s products through his website (and possibly from sales of the competing COBB BBQ products).

These facts warrant the Complainant’s inference that the Domain Names were registered and used in a bad-faith attempt either to extort disproportionate benefits in exchange for transferring the Domain Names to the Complainant or to create a likelihood of confusion and attract Internet users to the Respondent’s website for commercial gain.

The Respondent’s explanation for his conduct in registering and using Domain Names incorporating the Complainant’s trademarks is not entirely persuasive. He says that he was “in discussions” with the Complainant to become its webmaster when he registered the Domain Names <magmabbq.com> and <magmabarbeque.com> in May 2001. He claims that he “registered the Domain Names with the intent of protecting Complainant’s intellectual property and to give the Domain Names as gifts when hired.” He then decided not to pursue employment with the Complainant and kept the Domain Names for himself. There is no evidence to support his claimed intention to “give” the Domain Names to the Respondent, but it does seem that this plan was contingent on the Complainant hiring the Respondent. Neither party indicates whether the Respondent communicated this intention to the Complainant.

The Respondent then started a business selling marine burgees (flags) online at “www.burgees.com” and “www.burgeeshoppe.com.” He later extended his online sales operations, retailing products through “www.marineelectronicshoppe.com” and “www.bullionshoppe.com.” In conducting this business, he developed relationships with marine distributors that also sold the Complainant’s products. The Respondent says he decided to market the Complainant’s products, obtained through these distributors, using the Domain Names <magmabarbeque.com> and <magmabbq.com>, which he had registered in May 2001 and still held. He later decided to register the Domain Name <delmarbarbeque.com> for the same purpose, along with another domain name, <delmarbbq.com>, “which has apparently been hijacked by questionable sources” (it is now registered to a domain privacy service).

The Respondent acknowledges that he selected the Domain Names precisely because they would attract consumers interested in the Complainant’s products. He said he did this in the case of the first two Domain Names with the intention of giving them to the Complainant – if the Complainant hired him. There is insufficient evidence to establish that his “primary” reason for registering those Domain Names was to extract an excessive price from the Complainant, in the form of a salaried position. But using those Domain Names in any way as leverage for a position with the Complainant would not reflect good faith.

In any event, at the time he registered each of the Domain Names, the Respondent was not a distributor or even a reseller of the Complainant’s products. He knew the Domain Names were likely to be associated with the Complainant, and he had no relationship with the Complainant. What good-faith reason could the Respondent have had for obtaining and holding these Domain Names, incorporating marks that he did not own and had no right to use? By his own account, the Respondent’s motives were not entirely altruistic. He was willing to “protect” the Complainant’s “intellectual property” and “give” the Domain Names to the Complainant, but only if the Complainant hired him. And after deciding not to pursue employment with the Complainant, the Respondent ultimately determined to use the Domain Names himself to attract consumers to his own website and resell the Complainant’s products.

This activity might have been conducted in such a manner as to support the Respondent’s claims of good faith. But the Respondent fails the Oki Data test for operating a website legitimately as a reseller making minimal use of a manufacturer’s marks and taking effective steps to avoid confusion as to source and affiliation. The Respondent’s website does not accurately disclose his relationship with the Complainant. Moreover, he has used the website, associated with Domain Names incorporating the Complainant’s marks, to sell the products of a competitor. The Respondent says that this was done as a “desperate measure” to force the Complainant to the “negotiating table.” But this reflects a willingness to abuse the legal rights of a trademark owner in the interest of commercial gain.

The Panel does not find the Respondent’s conduct and rationale indicative of good faith, either in the registration or in the use of the Domain Names. He was careless of the Complainant’s trademark rights and knowingly took commercial advantage of the Complainant’s reputation, thereby putting it at risk. The Panel concludes that the balance of the evidence supports the Complainant’s allegation of bad-faith registration and use of the Domain Names.

F. Reverse Domain Name Hijacking

The Respondent requests a finding of reverse domain name hijacking. This is defined in the Definitions section of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”.

Paragraph 15(e) of the Rules provides as follows:

“If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”

The Rules do not provide for monetary remedies or specific relief in such a case.

In any event, the Panel finds that the Complaint is well grounded. There is no evidence in the record to support the Respondent’s suggestions that “other issues” motivated the Complaint. The Respondent has not established that the Complaint was brought “primarily to harass” him.

The Panel, therefore, declines to characterize the Complaint as an instance of reverse domain name hijacking.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <magmabarbeque.com>, <magmabbq.com>, and <delmarbarbeque.com>, be transferred to the Complainant.


W. Scott Blackmer
Sole Panelist

Dated: September 5, 2007