WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
K & K Promotions Inc. v. Route 44 Leathers
Case No. D2011-0088
1. The Parties
Complainant is K & K Promotions Inc. of Las Vegas, Nevada, United States of America represented by Weide & Miller, Ltd., United States of America.
Respondent is Route 44 Leathers of Pawtucket, Rhode Island, United States of America represented by Barlow, Josephs & Holmes, Ltd, United States of America.
2. The Domain Names and Registrars
The disputed domain names <eveloneclothing.com>, <evelwear.com>, and <evel1.com> (“Disputed Domain Names”) are registered with Register.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 14, 2011. On January 17, 2011, the Center transmitted by email to Register.com a request for registrar verification in connection with the Disputed Domain Names. On January 18, 2011, Register.com transmitted by email to the Center its verification response confirming that 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” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on January 20, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 9, 2011. The Response was filed with the Center on February 8, 2011. On February 11, 2011, Complainant filed a Supplemental filing with the Center. On February 14, 2011, Respondent filed a Supplemental filing with the Center.
The Center appointed Michael Albert as the sole panelist in this matter on February 24, 2011. 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
Robert C. Knievel a/k/a Evel Knievel, a world famous motorcycle stuntman, has obtained trademark registrations to his name and portions of his name in countries throughout the world. For example, Knievel obtained the following registrations of the mark EVEL KNIEVEL in the United States for use in connection with a variety of media, clothing and entertainment featuring Knievel:
U.S. Reg. No. 2,450,740, registered May 15, 2001
U.S. Reg. No. 2,481,629, registered August 28, 2001
U.S. Reg. No. 2,864,119, registered on July 20, 2004
Knievel’s son, Kelly Knievel, is President of Complainant, which is the successor in interest to the elder Knievel. On April 1, 2007, Knievel assigned the ‘740, ‘629, and ‘119 marks to Complainant.
In addition to the marks described above, Complainant also owns other registrations of the EVEL KNIEVEL, TRUE EVEL and EVEL marks in the United States as well as other countries. For example, Complainant owns the mark EVEL (U.S. Reg. 3,897,224; registered Dec. 28, 2010; first use December 1967) for use in connection with entertainment relating to motorcycle stunts and providing an online website featuring information and memorabilia about motorcycle stunts. The Panel will refer to all of the above-described marks as the “Evel Knievel Marks”.
The domain names <evelwear.com> and <eveloneclothing> were created on June 12, 2002. The domain name <evel1.com> was created on May 25, 1999. The record is unclear as to whether Respondent initially registered the Disputed Domain Names on their dates of creation or had them transferred to himself at a later date.
5. Parties’ Contentions
Complainant contends that it is the owner of the trademark, copyright, rights of publicity and other proprietary rights relating to the life and works of Evel Knievel, and that these trademarks are famous worldwide due to Evel Knievel’s daredevil motorcycle feats performed from the late 1960s to the early 1980s.
As to the first element of the Policy (confusing similarity), Complainant contends that the Disputed Domain Names are confusingly similar to Complainant’s trademarks because the substantive portion (“Evel”) of the Disputed Domain Names is identical to Complainant’s EVEL mark, to the first portion of the EVEL KNIEVEL mark and to the second portion of the TRUE EVEL mark. Complainant further contends that the additional portions of the Disputed Domain Names (i.e., “1”, “OneClothing” and “True”) are generic, non-source-identifying words. Complainant further contends that Respondent’s channels of trade on the Internet, goods (DVDs, framed photographs and posters), and services (providing entertainment and information related to motorcylce stunts) are identical.
As to the second element of the Policy (no rights in the mark), Complainant contends that <evil1.com> was registered to Respondent in 2006 after originally being registered to “Evel One” in 2001. Complainant further contends that the other two disputed domain names, <eveloneclothing.com> and <evelwear.com>, were registered by Respondent sometime between 2002 and 2007. Complainant contends that Respondent is not licensed by Complainant nor otherwise authorized to use Complainant’s Marks. Complainant further contends that the Disputed Domain Names resolve to a website that is designed to intentionally mislead consumers by creating a false impression that there is an association between Respondent’s website and Complainant; that Complainant has repeatedly notified Respondent that it is not authorized to use the Marks; and that Respondent is using the website to sell “knockoff” Evel Knievel merchandise. Finally, Complainant contends that Respondent lacks rights in and is not making a legitimate noncommercial or fair use of the Disputed Domain Names.
As to the third element of the Policy (bad faith), Complainant contends that Respondent has knowledge of the late Evel Knievel as evidenced by Respondent’s offering for sale Evel Knievel memorabilia through the Disputed Domain Names. Complainant further contends that Respondent selected the Disputed Domain Names because of their confusing similarity to Complainant’s Marks; that Respondent registered the Disputed Domain Names for the sole purpose of trading off the fame of Complainant’s Marks; and that this is causing public confusion as evidenced by messages posted on Respondent’s website indicating that customers believe the website is affiliated with Complainant. Finally, Complainant contends that the combination of Respondent’s knowledge of Evel Knievel’s fame at the time of registration and Respondent’s use of the website for commercial gain demonstrates bad faith registration and use.
As to the first element of the Policy, Respondent does not dispute Complainant’s ownership rights in the Evel Knievel Marks. However, Respondent contends that the addition of “1”, “OneClothing” and “Wear” after “Evel” prevents the Disputed Domain Names from being confusingly similar because Internet users would only reach Respondent’s websites by knowingly adding these additional words and therefore would not be confused.
As to the second element of the Policy, Respondent contends that he and Robert C. Knievel were close personal friends. Respondent further contends that he and Knievel entered into an agreement as early as 1997 which authorized Respondent to be the sole designer, producer and supplier of Evel Knievel branded merchandise. Respondent contends that he registered the Disputed Domain Names in connection with this merchandising business. Respondent contends that the merchandise offered on his website does not consist of “knockoffs”; instead, Respondent provides photographs of two handwritten notes, one of which is dated March 7, 2003, allegedly drafted and signed by Evel Knievel himself, which attest to the authenticity of Respondent’s Evel Knievel merchandise. As a result, Respondent contends that he posseses legitimate rights with respect to the Disputed Domain Names.
As to the third element of the Policy, Respondent contends that Evel Knievel’s close personal friendship with Respondent, his business relationship with Respondent, and his authorization of Respondent’s sales of merchandise preclude a finding of bad faith. Respondent further contends that his merchandising efforts on behalf of Evel Knievel led to a “marketing comeback” in the 1990s.
C. Supplemental Contentions
In Complainant’s Supplemental Affidavit, Complainant contends that the first of two handwritten notes submitted by Respondent which purportedly show the elder Knievel’s authorization of Respondent’s sales is not Knievel’s handwriting.
In Respondent’s Supplemental Affidavit, Respondent contends that the first note was drafted by Knievel’s wife and signed by Knievel, but the second note was drafted and signed by Knievel.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the Disputed Domain Names should be cancelled or transferred:
(i) the Disputed Domain Names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
Complainant has provided sufficient evidence showing that it is the owner of the Evel Knievel Marks. The Disputed Domain Names and Complainant’s trademark are not identical. Therefore, the issue is whether the Disputed Domain Names and Complainant’s Marks are confusingly similar.
The Disputed Domain Names combine three elements: (1) Complainant’s EVEL trademark; (2) the suffixes “1”, “OneClothing” or “Wear”; and (3) the suffix “.com.” The relevant comparison to be made is with the second-level portion of the domain name only (i.e., “EvelOneClothing”, “EvelWear”, and “Evel1”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose. Playboy Enterprises International, Inc. v. John Taxiarchos, WIPO Case No. D2006-0561.
Prior UDRP panels have recognized that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to a complainant’s registered mark. AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758 (finding <attelephone.com> confusingly similar to ATT); Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (finding <quixtarmortgage.com> legally identical to QUIXTAR).
Moreover, the addition of the terms “1”, “OneClothing” or “Wear” as suffixes to the EVEL mark does not sufficiently mitigate the confusing similarity between the Disputed Domain Names and Complainant’s Marks. The suffixes “OneClothing” and “Wear” are ordinary descriptive words which exploit the trademark signification of EVEL (which is registered for use in connection with websites offering motorcycle stunt memorabilia) by leading customers to understand the Disputed Domain Names to offer for sale the Complainant’s product. In addition, adding the suffix “1” to the EVEL Mark does not sufficiently distinguish <evel1.com> from the EVEL Mark, given the fame associated with the Mark and the actual confusion demonstrated by messages posted on Respondent’s website.
For all of the foregoing reasons, this Panel finds that the Disputed Domain Names are confusingly similar to Complainant’s EVEL mark, in which Complainant has established rights. Therefore, the Panel finds that Complainant has proven the first element of the Policy.
B. Rights or Legitimate Interests
Under the Policy, paragraph 4(c), legitimate interests in domain names may be demonstrated by showing that:
(i) before any notice of this dispute, Respondent used, or demonstrably prepared to use, the Disputed Domain Names or a name corresponding to the Disputed Domain Names in connection with a bona fide offering of goods or services;
(ii) Respondent has been commonly known by the Disputed Domain Names, even if no trademark or service mark rights have been acquired; or
(iii) Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue.
Complainant has failed to provide sufficient evidence showing that Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because Respondent used the Disputed Domain Names in connection with a bona fide offering of goods.
Although Complainant contends that Respondent is not licensed by Complainant nor otherwise authorized to use Complainant’s Marks, Respondent has furnished written evidence, that Complainant’s predecessor in interest, Robert C. Knievel, authorized Respondent as early as 2003 to engage in the online sale of Evel Knievel merchandise. Complainant challenges the authenticity of the first note, but does not address the second. In light of the evidence of Knievel and Respondent’s close personal friendship and merchandising agreement, the Panel also finds plausible Respondent’s claim that authorization existed as early as 1997. In addition, Complainant admits that Respondent originally registered one of the Disputed Domain Names by 2006 and the other two between 2002 and 2007. Combining Complainant’s admission with Respondent’s contention that he registered the Disputed Domain Names in connection with his merchandising agreement with Knievel, the Panel finds that Respondent used the Disputed Domain Names in connection with a bona fide offering of goods before the April 1, 2007 transfer of the Evel Knievel Marks to Complainant. In any event, Respondent’s bona fide offering of goods occurred well before Respondent had any notice of this dispute.
In addition, Respondent’s evidence that Knievel authorized Respondent to sell Evel Knievel merchandise for many years prior to Complainant’s taking ownership of the Evel Knievel Marks suggests that this case involves a business dispute that is not appropriate for a proceeding under the Policy but rather is more appropriately handled in a national court. See e.g., Pelikan Vertriebsgesellschaft mbH & Co. KG. v. Pelikan Iran, WIPO Case No. DIR2010-0005 (denying transfer where respondent was a former licensee of complainant and thus involved a business dispute beyond scope of UDRP); Luvilon Industries NV v. Top Serve Tennis Pty Ltd., WIPO Case No. DAU2005-0004 (denying transfer where respondent had previously been distributor for complainant’s goods and noting that the UDRP’s purpose “is to combat abusive domain name registrations and not to provide a prescriptive code for resolving more complex trade mark disputes”); The Thread.com, LLC v. Jeffrey S. Poploff, WIPO Case No. D2000-1470 (denying transfer because parties were former business partners); Int. Lasy Ltd. v. Cameleon Informatique et Robotique Inc., WIPO Case No. D2003-0701 (denying transfer because respondent was former distributor for complainant); Miele, Inc. v. Absolute Air Cleaners and Purifiers, WIPO Case No. D2000-0756 (same); Urbani Tartufi s.n.c. v. Urbani U.S.A., WIPO Case No. D2003-0090 (same); Magic Marine v. Randall Ames and Aquata USA, LLC, WIPO Case No. D2002-0991 (same); Celebrity Signatures International, Inc. v. Hera’s Incorporated Iris Linder, WIPO Case No. D2002-0936 (same); Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774 (same).
For the all of the foregoing reasons, the Panel finds that Complainant has not shown that Respondent lacks rights or legitimate interests in respect of the Disputed Domain Names. Therefore, the Panel finds that Complainant has failed to prove the second element of the Policy.
C. Registered and Used in Bad Faith
Although Complainant has failed to meet the second element of paragraph 4(a), this Panel analyzes the third element, bad faith, for completeness.
The third element of paragraph 4(a) requires proof of two facts: (1) that Respondent registered the Disputed Domain Names in bad faith; and (2) that Respondent is using the Disputed Domain Names in bad faith. Guildline Instruments Limited v. Anthony Anderson, WIPO Case No. D2006-0157.
Determining whether Complainant can satisfy the first factual predicate, registration in bad faith, is challenging in this case because the exact date on which Respondent registered the Disputed Domain Names is uncertain. However, as discussed above, Respondent very likely registered the Disputed Domain Names while Knievel had ownership of the Evel Knievel Marks – that is, prior to April 1, 2007. During this time, Respondent has offered evidence that Respondent and Knievel were in a contractual relationship authorizing Respondent to make a bona fide offering of goods in connection with the Disputed Domain Names. As Schneider Electronics GmbH v. Schneider UK Ltd., WIPO Case No. D2006-1039, recognized:
[W]here the parties have entered into and maintained a long-standing commercial relationship, Panels tend to impose on the Complainant a heavier burden of proof for bad faith, generally requiring more comprehensive evidence than that which may be necessary in the typical dispute between unrelated adversaries. At a minimum, the Complainant must provide full disclosure of the history of the relationship, and in particular, the relevant agreements and contractual terms which have governed their joint enterprise. Allegations of bad faith aimed at a former distributor or licensee can only be properly understood in the full context of their prior history.
Here, Complainant contends that Respondent is not authorized to use Complainant’s Evel Knievel Marks. However, Complainant does not address whether, prior to Complainant’s taking ownership of the Marks, Respondent may have had such authorization and provides no information about Respondent’s prior relationship with Knievel. Taking all of the above evidence into consideration, this Panel finds that the Complainant has failed to establish that the Respondent acted in bad faith between 2001 and 2007, when he apparently registered the Disputed Domain Names. Even if Complainant could establish that Respondent’s current use of the Disputed Domain Names were unauthorized and in bad faith, this alone is insufficient to satisfy the third element under paragraph 4(a).
Therefore, this Panel concludes that Complainant has failed to establish either the second or third elements under paragraph 4(a).
For the foregoing reasons, Complainant’s request to transfer the Disputed Domain Names is denied.
Michael A. Albert
Dated: March 10, 2011