WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Airbak Tech, LLC v. Blazon Marketing, Inc.
Case No. D2012-1000
1. The Parties
The Complainant is Airbak Tech, LLC of San Diego, California, United States of America (“United States” or “U.S.”), represented by Law Offices of Richard Mark Blank, United States.
The Respondent is Blazon Marketing, Inc. of Lagrangeville, New York, United States, represented by Ahsan & Associates, PLLC, United States.
2. The Domain Name and Registrar
The disputed domain name <airbak.com> is registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 10, 2012. On May 11, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On May 11, 2012, GoDaddy.com, 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” 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 the Respondent of the Complaint, and the proceedings commenced on June 21, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 11, 2012. The Center received an email communication on July 10 and 11, 2012, from the Respondent’s authorized representative regarding a request to extend the date to file a Response. On July 10 and 11, 2012, the Center sent an email communication to the Complainant asking it to provide its comments regarding the request. The Complainant provided its comments on the request on July 11, 2012. On July 11, 2102, the Response was filed with the Center.
The Center appointed William R. Towns as the sole panelist in this matter on July 19, 2012. 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.
The Panel on July 24, 2012 issued Administrative Panel Procedural Order No. 1, requesting both Parties on or before July 30, 2012 to make supplemental filings providing certain information and documentation as specified therein. Both Parties timely submitted their supplemental filings. The date for the Panel to forward its decision to the Center was extended to August 13, 2012.
On August 9, 2012, the Respondent without leave of the Panel or the Center forwarded to the Center an unsolicited second supplemental submission. The Panel, noting the absence of any showing of exceptional circumstances for this unsolicited supplemental submission and the late date of the submission, issued Administrative Panel Procedural Order No. 2, advising the Parties that the Respondent’s unsolicited supplemental submission would not be accepted or considered by the Panel in reaching its decision in this case.
On August 14, 2012, the Respondent again without leave of the Panel forwarded an unsolicited third supplemental submission. This concerns a dispute between two original members of the Complainant with respect to which the domain name dispute brought under the Policy is at best tangential. As such the Panel does not consider the unsolicited submission to present new and relevant information with respect to the disputed domain name under the Policy. Accordingly, the Panel will not accept or consider in reaching its Decision the Respondent’s unsolicited third supplemental filing.
4. Factual Background
The Complainant is a limited liability company initially organized under Delaware law on November 23, 2009, as Air Bak Technologies, LLC, for purposes of commercially exploiting certain patents and patent applications for which it appears Philip Troy Christy, one of the three original members of the Complainant, was the inventor.1 The principal invention was a backpack air bladder system, which was licensed to the Complainant pursuant to a Limited Liability Company Agreement entered into by and between the Complainant’s three original members on December 16, 2009.2
The Complainant filed with the United States Patent and Trademark Office (USPTO) on April 12, 2010 an intent-to-use application for the trademark AIRBAK with backpacks, sport bags and other bags, armbands, and cell phone carrying cases.3 The AIRBAK application presently is opposed before the Trademark Trial and Appeal Board (TTAB) by the owner of the U.S. registered trademark for CAMELBAK, which is used for backpacks and related goods. The Complainant has submitted documentation in this case reflecting the use of the AIRBAK mark in connection with the sales of backpacks and related goods beginning in mid- 2010 and continuing in 2011.
The Respondent registered the disputed domain name on November 2, 2009, according to the relevant records of the concerned Registrar. The record in this proceeding reflects that the Respondent was hired by the Complainant in early November 2009 to provide marketing and website services, which included the acquisition of the disputed domain name.
Subsequently, in 2011 disputes developed between the original three members of the Complainant in connection with the management of the company,4 the rights to market and sell the products incorporating the patented invention, and control of the disputed domain name and associated website at “www.airbakcom”. These disputes remain contentious and are the subject of litigation.
At some time after these disputes had arisen, the Respondent, apparently acting upon instructions from Mr. Christy, repositioned the website. The Respondent’s President, Keith Axelrod, in an email to Gery Sampere dated July 29, 2011, stated categorically that “Blazon Marketing, Inc. is the owner of the URL domain name” and that the Complainant had no legal right to direct how the disputed domain name and website were used. After asserting that Respondent had not been paid for a significant amount of services provided to the Complainant, Mr. Axelrod offered to sell the disputed domain name to the Complainant for $50,000, once the Respondent’s services were paid in full. Mr. Axelrod further indicated that the Respondent would undertake no further marketing or website services for the Complainant except upon Mr. Christy’s instructions.
5. Parties’ Contentions
The Complainant asserts that the Respondents in this case are Blazon Marketing, Inc., and its President, Keith Axelrod. Parenthetically, the Panel notes that according to the WhoIs database the registrant of the disputed domain name is Blazon Marketing, Inc. The Complainant asserts common law trademark rights in AIRBAK mark, which according to the Complainant has been used as a designation of source for the backpacks and other product sold by the Complainant since shortly after the April 12, 2010 filing date of the U.S. trademark application for AIRBAK.
The Complainant submits that the disputed domain name is identical to the AIRBAK mark, and the Complainant maintains that the Respondent has no rights or legitimate interests in the disputed domain name. According to the Complainant, the Respondent was employed by the Complainant on a work for hire basis to develop, design and implement the Complainant’s website, which included the acquisition of the disputed domain name, for which the Complainant asserts the Respondent was paid. The Complainant asserts that is was clearly understood that the disputed domain name was being acquired on behalf of the Complainant for use in advertising and promoting the sale of the Complainant’s product line, including backpacks.
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. According to the Complainant, the Respondent has never used the disputed domain name in connection with any bona fide offering of the Respondent’s own goods or services, but instead has repositioned the Complainant’s website based on the wrongful assertion of rights in the disputed domain name, and is using the disputed domain name and the website as collateral for the payment of fees that either have already been paid, do not exist, or else are disputed.
Further, the Complainant alleges that the Respondent in an email dated July 29, 2011, attempted to sell the disputed domain name to the Complainant for $50,000, an amount greatly in excess of any out-of-pocket expenses directly incurred by the Respondent directly related to the disputed domain name. The Complainant contends that the Respondent’s conduct in this regard clearly evidences bad faith intent.
The Response is submitted on behalf of Blazon Marketing, Inc., Keith Axelrod, and Philip Troy Christy, and the position is taken therein that all three should be considered as Respondents. According to the Response, Mr. Christy coined the term “AirBak” for use with his patented backpack air bladder system (U.S. Patent No. 7631792). It is further asserted that Mr. Christy is the owner, applicant, or otherwise holds an interest in issued or pending U.S. or International trademark relating to “AirBak”.
It is submitted in the Response that AirBak Technologies Corp. and AirBak Technologies, LLC currently operate under the direction of “President, Shareholder, Inventor Mr. Philip Troy Christy”, and that the Respondents are operating the website “www.airbak.com”. According to the Response, the aforementioned companies will be ”permanently harmed” if the disputed domain name is transferred from the “Respondents, namely, Blazon Marketing, Inc., Mr. Keith Axelrod, and/or AIRBAK TECHNOLOGIES, LLC and/or AirBak Technologies Corp.” to the Complainant.
The Response submits that as Mr. Christy is the owner of the trademark applications for AIRBAK, the disputed domain name is not identical or confusingly similar to any trademark in which the Complainant may have any rights or potential rights. Further, the Response submits that the Complainant cannot market or sell backpacks that incorporate Mr. Christy’s patented technology without Mr. Christy’s express permission, which according to the Response has been revoked. In view of the foregoing, it is submitted that the Respondents have rights and legitimate interests in the disputed domain name, and that the disputed domain name was registered in good faith and has not been used in bad faith as alleged in the Complaint.
6. Preliminary Issues: Respondent Identity
Blazon Marketing, Inc. is identified in the relevant WhoIs records as the registrant of the disputed domain name. The Response, however, asserts Philip Troy Christy, an original member of Air Bak Technologies, LLC, who is currently engaged in contentious litigation with the other members of that company, should be recognized as a Respondent.
The Panel disagrees with this contention. There is no evidence in the record that Blazon Marketing, Inc. has transferred ownership of the disputed domain name in whole or in part either to Mr. Christy or to any company which Mr. Christy currently claims to control. As recently as Mr. Axlerod’s email of July 29, 2011 to the Complainant, Mr. Axelrod stated without equivocation that Blazon Marketing, Inc. is the owner of the disputed domain name. Given the foregoing, the Panel does not consider Mr. Christy to be a properly named Respondent. Further, in the Panel’s view the allegations asserted in the Response on behalf of Mr. Christy for the most part involve disputes that are beyond the scope of the Policy, and which in addition have been the subject of litigation between the Complainant and Mr. Christy.
In view of the foregoing, the Panel concludes that the correctly named Respondent is Blazon Marketing, Inc., the entity identified in the relevant WhoIs records as the registrant of the disputed domain name. Unless otherwise indicated, the use of the term “Respondent” herein refers to Blazon Marketing, Inc.
7. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 -177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The disputed domain name registered 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 with respect to the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name are the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The disputed domain name is identical to AIRBAK, in which the Complainant asserts common law rights. The Panel therefore addresses whether the Complainant has established trademark or service mark rights in AIRBAK. The term “trademark or service mark” as used in paragraph 4(a)(i) of the Policy encompasses both registered marks and common law marks. See, e.g., The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; United Artists Theatre Circuit, Inc. v. Domains for Sale Inc., WIPO Case No. D2002-0005; The Professional Golfers’ Association of America v. Golf Fitness Inc., a/k/a Golf Fitness Association, WIPO Case No. D2001-0218.
In the United States, common law rights in a trademark or service mark may be established by extensive or continuous use sufficient to identify particular goods or services as those of the trademark owner. See United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918). That is to say, the mark must be used such that a relevant segment of the public comes to recognize it as a symbol that distinguishes the Complainant’s goods and services from those of others. Evidence generally looked to as relevant in determining common law rights includes (1) the length and continuity of a mark’s use, (2) sales and revenues, (3) advertising and promotional activities, and (4) unsolicited media coverage. See First Brands Corp. v. Fred Meyer, Inc., 809 F.2d 1378, 1383 (9th Cir.1987). See also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.7.
In this case, the Complainant has offered evidence of the use of the AIRBAK mark with backpacks and related goods, including sales and revenues records and advertising and promotional materials. The information provided on sales and revenues encompasses a period from approximately mid-2010 and continuing through 2011. Advertising and promotional materials provided include pictures of goods offered under the AIRBAK mark, with the backpacks and other goods clearly bearing the AIRBAK mark.
After careful consideration of the facts and circumstances in the record, the Panel concludes that the Complainant has satisfied its burden of demonstrating trademark or service mark rights in AIRBAK in the United States sufficient for purposes of paragraph 4(a)(i) of the Policy. The jurisdiction of the TTAB in connection with the pending opposition extends only to the question of registration, which is not an issue before this Panel.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the Complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the Respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made. The disputed domain name is identical to the Complainant’s mark. It is undisputed that the Respondent was hired to by the Complainant to provide marketing and website services. It is also undisputed that the Respondent acquired the disputed domain name in connection with these services, but that the Respondent registered the disputed domain name in its own name, and has refused to transfer the disputed domain name to the Complainant unless paid the sum of $50,000.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the disputed domain names by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no indication in the record that the Respondent has been commonly known by the disputed domain name, or that the Respondent has made any legitimate noncommercial or fair use of the disputed domain name. Nor is there any evidence of the Respondent’s use of the disputed domain name in connection with any bona fide offering of its own goods or services.
There is some suggestion in the record that the Respondent may have retained the registration of the disputed domain name to use as security for payment of the Respondent’s fees. Whether the Respondent is owed fees is a disputed issue in this case, but the Panel notes that panels in several prior UDRP decisions have contemplated that such a dispute, if properly documented and supported by applicable law, could give rise to a legitimate interest in the domain name as a lien to secure payment. See Trade Pals Inc. c/o Tino Buntic v. Natour Global / Sam Natur, WIPO Case No. D2005-0144; Clinomics Biosciences, Inc. v. Simplicity Software, Inc., WIPO Case No. D2001-0823; Map Supply Inc. v. On-line Colour Graphics, NAF Claim No. FA0012000096332.
Notwithstanding this recognition, the panels in these prior cases all came to the conclusion that a genuine dispute over a respondent’s contractual or legal right to retain the domain name in dispute as security for payment would require further evidence and an evaluation of the commercial law of liens. As a result, the panels in these prior cases held that as such the dispute was outside the scope of proceedings under the Policy and properly decided by traditional means.
The Panel is inclined to agree with these prior decisions in the circumstances of this case, but in view of the Panel’s findings under the following heading it is unnecessary for the Panel to decide the issue regarding the Respondent’s rights or legitimate interests under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is “to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another”. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230. Nevertheless, it is paramount that panels decide cases based on the very limited scope of the Policy. Match.com, LP v. Bill Zag and NWLAWS.ORG, supra. The Policy provides a remedy only in cases where a complainant proves that the disputed domain name has been registered and is being used in bad faith.
In light of the foregoing, this Panel subscribes to the view that paragraph 4(a)(iii) of the Policy requires proof that the Respondent registered the disputed domain name in bad faith and is using the disputed domain name in bad faith. SeeTelstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Consequently, the issue of bad faith registration generally is to be determined with reference to the time the Respondent took possession of the disputed domain name. HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062. Such considerations have led UDRP panelists to conclude that the Policy was not designed to prevent situations of good faith registration followed by bad faith use. See Substance Abuse Management, Inc. v. Screen Actors Modesl [sic] International, Inc. (SAMI), WIPO Case No. D2001-0782; Teradyne Inc. Teradyne, Inc. v. 4tel Technology, WIPO Case No. D2000-0026.
After careful consideration of the totality of facts and circumstances in the record, the Panel concludes that the Complainant has not satisfied its burden of demonstrating that the Respondent registered the disputed domain name in bad faith in November 2009. That is to say, the Panel is not persuaded from the record before it that the Respondent’s registration of the disputed domain name was motivated by bad faith intent to exploit or profit from the Complainant’s prospective trademark rights.
Although the Respondent’s more recent behavior, and in particular the refusal to transfer the disputed domain name to the Complainant unless paid the sum of $50,000, could be viewed as opportunistic bad faith use of the disputed domain name, the Panel is mindful that the circumstances in which the Respondent recently has found itself (namely drawn into what has become a contentious dispute between the original members of Air Bak Technologies, LLC) appear to bear little resemblance to the more collegial circumstances in which the Respondent agreed in November 2009 to provide marketing and website services for the newly formed company.
The Policy by its own terms simply is not applicable to any and all disputes that involve or touch upon domain names. Panels must decide cases based on the limited scope of the Policy, and the jurisdiction of this Panel necessarily is limited to cases of abusive domain name registration in which the registrant is seeking to profit from and exploit the trademark of another, also known as “cybersquatting”. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230. Some disputes are more properly resolved by traditional means. For the reasons set forth above, the Complaint is denied.
William R. Towns
Dated: August 15, 2012
1 The Complainant changed its corporate name to AirBak Tech, LLC on February 6, 2012, according to a Certificate of Revival filed with the Delaware Secretary of State, because the original name chosen for the Complainant was no longer available at that time. Other records maintained by the Delaware Secretary of State reflect the incorporation of AirBak Technology Corp. on June 8, 2011, and AirBak Technology, LLC on January 8, 2011. The Response avers that Philip Troy Christy is a partner or shareholder in these entities.
2 The three original members of the Complainant are Philip Troy Christy, Frederick Terry Glynn, and Gery Sampere. Mr. Christy granted the license of the patents and patent applications in question to the Complainant concurrent with the execution of the Limited Liability Company Agreement of Dec. 16, 2009.
3 The record in this proceeding also reflects a trademark application for AIRBAK filed in China on October 29, 2010, and a CTM application for AIRBAK filed on June 3, 2011, which was published on Sept. 5, 2011. The applicant of record for the CTM filing is Philip Troy Christy.
4 The record in this proceeding reflects that both Mr. Christy and Mr. Glenn on separate occasions attempted to have the other removed from the management of the Complainant.