The Complainant is Leineweber GmbH & Co. KG. of Herford, Germany, represented by Brandi Dröge Piltz Heuer & Gronemeyer, Germany.
The Respondent is Braxton Manufacturing Co., Inc. of Watertown, Connecticut, United States of America, represented by the law firm of St. Onge Steward Johnston & Reens, LLC, United States.
The disputed domain name <brax.com> is registered with Network Solutions, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2008. On July 14, 2008, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On July 14, 2008, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the 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 July 18, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response of August 7, 2008 was extended to August 14, 2008. The Response was filed with the Center August 12, 2008.
The Center appointed James A. Barker, David H. Bernstein and Thomas Hoeren as panelists in this matter on August 28, 2008. 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.
The Panel proceeded to a decision in this case following its repeated suspension to allow the parties to negotiate a settlement. In total, these proceedings were suspended for more than 3 months. That should in the ordinary course of things be more than sufficient time to enable a settlement to be reached and implemented. After that period, the Complainant made a further request for the Panel to suspend this case for one year. Taking into account that the Policy is intended to be an expedited process, and that the parties did not indicate that any settlement had been reached, the Panel declined the Complainant's request and proceeded to a decision.
The Complainant is a manufacturer of fashion garments for men and women. The Complainant is the owner of marks registered in Germany for BRAX. The earliest of those marks was registered in 1994. The Complainant is also the owner of a European Community mark registered in November 2005 (although direct evidence of that particular mark was not provided), and has registered an international mark based on the Community mark.
The Respondent was founded in 1964 under the corporate name “Braxton Manufacturing Company, Inc.” That name corresponds to the name of the company's founder: Braxton T. Nelson. The Respondent is a manufacturer of precision parts for medical, communications, aerospace, automobile and electronics industries. It has approximately 170 employees and an annual turnover in excess of USD $20 million.
The disputed domain name was registered by the Respondent in July 1997, as one of a group of domain names it also registered at that time. Those domains included: <braxmfgco.com>, <braxtonmfgcal.com>, <braxtonmfgco.com>, <braxtonnelson.com>, <braxtoncal.com>, <braxtonco.com>, <bm-c.com>, <bmcmfg.com>, and <bmcmanufacturing.com>.
The Respondent maintains its main website at “www.braxton.com”. Between January 2000 and May 2001 the disputed domain name reverted to that website. At the date of this Decision, the disputed domain name does not refer to an active website.
The Respondent is also the owner of a trademark registered in the United States for BRAXTON. That mark was registered in January 1975.
The following is summarized from the Complaint.
The disputed domain name is relevantly identical to the Complainant's registered mark for BRAX. The Complainant provided evidence of its registered rights in Germany.
The Respondent has no legitimate interest in the disputed domain name. The Respondent has no trademark comparable to the Complainant. The Respondent does not use “brax” as a shortened form for its own name anywhere else than in the domain name. The disputed domain name does not appear to have been used by the Respondent since mid 2001. This demonstrates that the Respondent has a “lack of necessity” for the registration of the disputed domain name.
The Respondent registered and has used the disputed domain name in bad faith. The evidence of this, the Complainant claims, is an offer by the Respondent to sell the disputed domain name to it for USD $1 million.
The Respondent was more than likely aware of the Complainant's mark when it registered the disputed domain name. At that time, the Complainant's mark “had a considerable level of awareness”. The Respondent's legal counsel stated that the President of the Respondent owns some “BRAX” t-shirts and “presumably acquired them in the run up to the registration”.
The following in summarized from the Response.
The Respondent does not deny that the disputed domain name is identical or confusingly similar to the Complainant's mark.
The Respondent otherwise denies the Complainant's case against it. The Complainant does not have exclusive rights to its mark, and that mark is not famous. There are various other third party rights in the mark BRAX, including in Germany.
The Respondent has rights in the name BRAX. The Respondent registered the disputed domain name, along with others relating its business, for use in commerce. The Respondent has always intended to use the disputed domain name to revert to its main webpage and had instructed its ISP accordingly. The Respondent claims to have been unaware that the disputed domain name was not linking to its main webpage.
The Respondent registered the disputed domain name in good faith. It had no prior knowledge of the Complainant's mark. The disputed domain name was purchased, along with others, in connection with the Respondent's business.
The Respondent never offered the disputed domain name for sale. The Complainant offered to purchase it, and the Respondent's reply was that it would not sell it for less than USD $1 million. Because of its legitimate interest, the disputed domain name is the Respondent's asset, and negotiations to sell it are not demonstrative of bad faith.
The Respondent points to a number of cases decided under the Policy which it claims are analogous to this case, decided in the respondents' favor.
To succeed under paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
These issues are discussed in turn as follows.
There is no dispute between the parties that the Complainant's mark is relevantly identical to the disputed domain name, and the Panel so finds.
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has “no rights or legitimate interests” in the disputed domain name (emphasis added). That is, paragraph 4(c) requires a finding of an absence of the Respondent's rights or legitimate interests in the disputed domain name for the Complainant to succeed. It does not require a Panel to weigh up whether the Respondent's rights are better (however defined) than the Complainant's. If the Respondent has some rights or legitimate interests, that is enough for it to succeed. For the reasons that follow, the Respondent has demonstrated that it has such rights or legitimate interests.
The Policy is not prescriptive about the nature of the rights or legitimate interests that a respondent must demonstrate to rebut a case against it. Whether a respondent has such rights or legitimate interests will depend on the facts of each case. Paragraph 4(c) of the Policy sets out some illustrative circumstances which, if found by a panel, are taken to be evidence of a respondent's rights or legitimate interests. Those include, under paragraph 4(c)(i) and (ii), which provides that a respondent may have a right or legitimate interest by demonstrating:
(i) “before any notice to you [the Respondent] 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.
(ii) you [the Respondent] (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;
(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.”
There is no argument that paragraph 4(c)(iii) does not apply in this case. However the Respondent provides evidence which relates to both paragraphs 4(c)(i) and (ii).
In relation to paragraph 4(c)(i), well before notification to it of this dispute, the Respondent used the disputed domain name between 2000 and 2001 to refer to its main website at “www.braxton.com”. The Respondent also provides affidavit evidence that in 2004 it instructed its ISP and DNS consultant to refer the disputed domain to its website at “www.brantonmfg.com”. The Respondent's contends that its consultant had not carried out its instructions in that respect.
There is no dispute that the Complainant carries on a legitimate business in relation to the manufacture of precision parts under the name “Braxton Manufacturing”. It may be that, despite its business, the Respondent's use of the disputed domain name was not bona fide if it was seeking unfairly to exploit the Complainant's mark. But there is no evidence of this. The Complainant did not present any. Despite the claims in the Complaint, is no evidence that the Respondent should have been aware of the Complainant or its mark when the Respondent registered the disputed domain name in 1997. The Complainant and Respondent trade in different fields. There is no evidence presented that the Complainant's mark is famous, and the Respondent provides evidence that the Complainant is not exclusively associated with the mark BRAX. There is no evidence that the Complainant had any trading presence in the United States, where the Complainant is based, in 1997. There is no evidence that the Complainant had an on-line presence in 1997 of which the Respondent should have been aware.
Even if the Respondent had been aware of the Complainant, this would not necessarily demonstrate that the Respondent had sought to exploit the value of the Complainant's mark. Rather, the evidence of record suggests that the Respondent simply registered the disputed domain name in connection with the name of its business, alongside other domain names with a similar association.
The disputed domain name is self-evidently a shortened version of the Respondent's company name. The Respondent also provides various evidence, including affidavit evidence, that its founder Braxton T. Nelson went by the nickname of “Brax”. The Respondent provides photographic evidence of various personalized number plates of its vehicles incorporating the name “Brax”.
It may be that this evidence is not enough to suggest, strictly, that the Respondent company (rather than individuals associated with it) is commonly known by the name “Brax” per se. However, paragraph 4(c) is illustrative, rather than exclusive of the circumstances in which a right or legitimate interest might be demonstrated. The Panel considers that, in the circumstances of this case, the Respondent presented a reasonable case that it has a legitimate interest in an obvious abbreviation of its corporate name and registered trademark.
In the face of this evidence, some of which should have been self-evident, the Complainant essentially makes two arguments.
Firstly, the Complainant says that the Respondent does not use “Brax” as a shortened form for its own name anywhere other than in the disputed domain name, and that “Brax” is not the Respondent's legal name. Neither of these grounds, by themselves, suggest that the Respondent lacks a right or legitimate interest. It is no requirement of the Policy that a domain name exactly correspond to a respondent's trading or legal name for a respondent to establish a right or legitimate interest. The very existence of paragraphs 4(c)(i) and (iii), and the inclusive nature of the circumstances set out in that paragraph, clearly suggests otherwise. That is, paragraph 4(c)(ii) deals with a situation where a respondent is “commonly known by” a domain name (which might obviously include a person or entity's legal name even if that person or entity has not acquired trademark or service mark rights in the relevant domain name, see, for example, Gerolsteiner Brunnen GmbH & Co., KG v. R4L Privacy Advocate / Gero Leon Steiner, WIPO Case No. D2008-1450). Paragraph 4(c) allows for other circumstances to be demonstrated: which may include circumstances where a respondent is not commonly known by a disputed domain name. As noted above, such other circumstances are present in this case – that is, evidence that the Respondent registered the disputed domain name as a shortened version of its corporate name.
Secondly, the Complainant says that the Respondent only used the disputed domain name for a short period between 2000 and 2001. This, says the Complainant, taken together with the Respondent's other domain name registrations, indicates the Respondent's “lack of necessity” in using the disputed domain name. However, a mere lack of necessity (however defined) is no argument against the Respondent under paragraph 4(a)(ii) or otherwise. It is common for domain name registrants to register any number of domain names, including variations or abbreviations of a mark or name. The Respondent's lack of use of the disputed domain name for a number of years is not relevant in the circumstances of this case, where the Respondent has otherwise established a legitimate interest.
For these reasons, the Panel finds that the Complainant has failed to establish its case under paragraph 4(a)(ii).
The Panel's finding in relation to paragraph 4(a)(ii) means that it is strictly unnecessary for it to make a finding on this ground. However, the Panel briefly notes that it would also find against the Complainant under this element also.
Fundamentally, bad faith could be found if the Respondent knew or, in appropriate cases, ought to have known of the Complainant. (See, for example, Moari Television Service v. Damien Sampat, WIPO Case No. D2005-0524.) In this case there is no evidence, nor any reasonable inference, which could establish that the Respondent knew of the Complainant or intended to exploit the Complainant's mark.
The Complainant makes a number of arguments in this respect, but the Panel finds them unpersuasive. It is not credible, as stated by the Respondent, that it registered the disputed domain name, as an abbreviation of its corporate name, more than 10 years ago “awaiting a convenient opportunity to sell the domain name to the real trademark owner”. An offer for sale is not by itself evidence of bad faith where the Respondent has a legitimate interest. (See e.g. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525: “an offer to sell is of no moment if a registrant has a right or legitimate interest in the domain name”. For more recent statements to this effect, see e.g. CeWe Color AG & Co. OHG v. Shenbun Limited, WIPO Case No. D2008-0810: “The buying and selling of domain names is, of itself, a perfectly legitimate trading activity. There is nothing before the Panel to demonstrate that the Respondent registered the Domain Name with a view to profiting out of it on the back of the Complainant's goodwill/trade marks.”)
It was the Complainant who approached the Respondent regarding sale of the disputed domain name. The Respondent's reply was that it would not sell the domain name for less than USD $1 million. For the reasons set out above, such a counter offer is no evidence of bad faith in the circumstances of this case. Given the Respondent's legitimate interest, it would be surprising if the Respondent had offered the domain name for a token sum in reply to such an approach. Regardless, having established a legitimate interest, it is not relevant for the Panel to opine on the quantum of the Respondent's counter offer.
For all the foregoing reasons, the Complaint is denied.
James A. Barker
David H. Bernstein
Dated: December 28, 2008