WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Personal Water Craft Product v. ATTN FLYBOARD.COM / Flyboard, Inc / Kim Robinson
Case No. D2012-2166
1. The Parties
The Complainant is Personal Water Craft Product of Le Rove, France, represented by Inlex IP Expertise, France.
The Respondent is ATTN FLYBOARD.COM / Flyboard, Inc / Kim Robinson of Florida, United States of America (USA), represented by Fischer Law Firm P.C., USA.
2. The Domain Name and Registrar
The disputed domain name <flyboard.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on October 31, 2012. On November 1, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 5, 2012, the Registrar transmitted by email to the Center its verification response confirming that ATTN FLYBOARD.COM is listed as the registrant and providing the contact details.
On November 12 and 16, 2012 Kim Robinson emailed the Center enquiring about the present proceeding, explaining his relationship with ATTN FLYBOARD.COM and Flyboard, Inc, and providing further contact details. On November 20, 2012, the Respondent informed the Center that legal proceedings regarding the domain name had been filed against the Complainant in the United States District Court for the Southern District of Florida (the “District Court”) and requested suspension of the administrative proceeding. The Center informed the Respondent that in the event of legal proceedings over a domain name where an administrative proceeding has already been commenced through the filing of a Complaint with the Center, it will be the Panel which shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or proceed to a decision.
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 November 23, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 13, 2012. The Response was filed with the Center on December 13, 2012.
The Center appointed Dr Clive Trotman as the sole panelist in this matter on December 21, 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.
4. Factual Background
The Complainant is the manufacturer of a recreational powered device that it has named “Flyboard”, operated in conjunction with a jet ski, for levitating a person and propelling them across open water. The Complainant has registered the trademark FLYBOARD internationally, for example:
FLYBOARD, Community trademark No. 010786135, filed April 4, 2012, registered August 15, 2012, under priority of French trademark No. 11 3865414 filed October 10, 2011, classes 12, 28, 41;
FLYBOARD, International trademark No. 1115465, registered April 5, 2012, under priority of French trademark No. 11 3865414 filed October 10, 2011, classes 12, 28, 41.
On February 29, 2012 the Complainant and the Respondent entered into a Master License and Distribution Agreement (the “Agreement”) under which the Respondent would market and sell the Flyboard device in the North American Continent and certain other territories. The Respondent acquired the disputed domain name <flyboard.com> on the market. According to the record provided by “http://www.whois.internic.net”, the disputed domain name was originally created on April 25, 1999, and appears to have been acquired by the Respondent on May 14, 2012 under the registrant name ATTN FLYBOARD.COM.
The Respondent as Lowell Kim Robinson has submitted the following trademark application:
FLYBOARD, United States Patent and Trademark Office (USPTO) principal register, filed April 11, 2012, No. 85594217.
In a proceeding filed at the District Court dated November 15, 2012, the Respondent, in the name of Flyboard Inc., is named as a Defendant, together with two other entities of which nothing is known by the Panel; in turn the Respondent, in the name of Flyboard Inc., as Third-Party Plaintiff, names Franky Zapata, Personal Water Craft Products, as Third-Party Defendants. In the proceeding before the District Court, the Respondent seeks, among other things, a “Declaratory judgment as to Ownership of Trademark and Internet Domain” (being the disputed domain name).
It emerges from the court documents attached to the Response that at some time whilst the Complainant and the Respondent were doing business together, the Respondent was served with notice by another individual and associated corporation alleging that the Flyboard infringed certain patents (the “JetLev patents”). According to the court documents the Respondent says it had been assured by the Complainant, with the support of a qualified Opinion, before entering into the Agreement to market and sell Flyboard, that such a claim against the Respondent would not succeed. The Respondent alleges in the court documents that the Complainant indemnified the Respondent against certain consequences of any such claim. It appears, however, that in October 2012, after some litigation involving the JetLev patents, the business relationship between the Complainant and the Respondent broke down and the Complainant initiated the present proceeding.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical to the trademark FLYBOARD in which it has rights.
The Complainant further contends that the Respondent does not have rights or legitimate interests in the disputed domain name. The Complainant is the owner of the FLYBOARD trademarks internationally. The Respondent, being in partnership with the Complainant, knew this when acquiring the disputed domain name. The Respondent’s registration of FLYBOARD with the extension “.com” as the disputed domain name suggests that it is the “official Flyboard website” and the Respondent’s use of the name “Flyboard, Inc.” suggests that it is the head office.
The Complainant says that the Respondent’s choice of a “.com” domain, rather than another domain name extension such as “.us” or another domain name such as “flyboard-america”, was done to cause confusion with the Complainant’s trademarks.
The Complainant contends that the Respondent does not have any rights in the trademark FLYBOARD, which is a non-generic term that applies solely to the Complainant’s product. No other entity holds a similar trademark. The Respondent’s right to use the trademark FLYBOARD is limited to the terms of the Agreement with the Complainant, which prohibits the Respondent from filing FLYBOARD as a trademark or domain name.
The Complainant says the Respondent is not commonly known by the disputed domain name or making a legitimate or fair use of it.
The Complainant says that the Respondent’s website, to which the disputed domain name resolves, substantially presents the Complainant and its proprietor. The text is copied from the Complainant’s website, which is marked as copyright.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith. The Agreement between the Complainant and the Respondent provided that the Respondent would not file FLYBOARD as a trademark or domain name. The Respondent by registering the disputed domain name and creating a website has created confusion between the Parties with commercial and financial prejudice to the Complainant. The disputed domain name is suggestive of being the “Official Flyboard website”. The Respondent knew of the notoriety of the Complainant and its trademarks and tried to make a commercial gain with the disputed domain name.
The Complainant requests the transfer to itself of the disputed domain name.
The Respondent denies the Complaint.
The Respondent says that the Complaint was filed by the Complainant in retaliation for the lawsuit filed in the District Court, whereby the Respondent claims among other things indemnification, breach of contract, declaratory relief for contract and trademark rights, injunctive relief, damages, and attorneys' fees and costs from the Complainant.
The Respondent’s account of the facts, and its contentions, are that the Respondent was to be the North and South American distributor for the Flyboard. Under the Agreement, the Complainant granted the Respondent the right to use the FLYBOARD trademark for the purposes of importation, promotion, distribution, marketing and sale. Business between the Complainant and the Respondent has since been substantial.
In order to protect the FLYBOARD trademark within the USA, the Respondent submitted the USPTO application for the registration of the trademark FLYBOARD as specified in section 4 above. The Respondent contends that Federal registration is not required to establish rights in a trademark and that the Respondent acquired common law rights in the FLYBOARD trademark through actual use. Under the Agreement, the Complainant granted the Respondent the right to use the FLYBOARD trademark on the Respondent's website and in any other communication or business or commercial documentation.
The Respondent says that before purchasing the disputed domain name, it consulted with, and offered it to, the Complainant. The Respondent says that the Complainant declined to purchase the disputed domain name and the Complainant said that the Respondent could own it because others of the Complainant’s distributors did likewise. The Respondent says that the Complainant acknowledged that the disputed domain name was the Respondent's, and furthermore, the Complainant was willing to make changes to its own website to ensure that the Respondent's information and domain name were correctly stated. The Complainant did other helpful things and supplied material for the Respondent’s website.
The Respondent says it has used and made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods and services. The Respondent has spent much time developing the website and has been or is commonly known by the disputed domain name, through which it has sold many Flyboards.
The Respondent further contends that the disputed domain name was not registered in bad faith and is not being used in bad faith. The Complainant and the Respondent are not competitors. The disputed domain name was not registered primarily to disrupt the Complainant’s business. It was not registered or acquired primarily for the purpose of transfer to the Complainant or to a competitor of the Complainant for commercial gain. It was not registered in order to prevent the Complainant from reflecting its trademark in a corresponding domain name and the Respondent has not engaged in a pattern of such conduct.
The Respondent says that a TESS search has revealed the existence of the following USPTO trademark, of which the owner, in preference to the Complainant, should be the rightful owner of the disputed domain name if it is not to be the Respondent:
FLYBOARD, registered July 10, 2012, registration number 4172372, registered in the name of Dynamic Motion Rides Gmbh of Austria, class 28, for amusement park rides, first use November 16, 2012.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
A. Effect of Court Proceedings
In an email to the Center dated November 20, 2012, the Respondent notified the Center of its proceeding in the District Court and said that “Under section 4k of the [UDRP] ... proceedings should be suspended on the domain name Flyboard.com”.
Paragraph 4(k) of the Policy acknowledges the rights of the Parties to engage in alternative court action. The Panel’s discretion in the event that either party engages in court action is set out in paragraph 18(a) of the Rules, as follows:
“Effect of Court Proceedings
(a) In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.”
A proceeding under the Policy is intended to provide the Complainant and the Respondent with a timely decision upon the evidence produced, as interpreted against the specific provisions of the Policy and the Rules. Panels are concerned that additional proceedings in another forum may introduce such delay as to defeat the intentions of the UDRP. As the relevant Panelist said after deliberating on this matter in BD Real Hoteles, SA de C.V. v. Media Insights aka Media Insight, WIPO Case No. D2009-0958, “The Panel’s view is that the Policy generally obliges a Panel to make a decision on a complaint”.
The Complainant has not requested a termination of the present proceeding under the Policy in the light of the District Court proceeding, and the Parties are entitled to have the Complaint heard. The rights of the Parties to proceed with court action are not impeded by any issuance by this Panel of a decision under the UDRP, and any administrative decision issued by this Panel under the UDRP will not be binding on a court. It is also possible that the court proceeding may take some time to resolve, during which period an administrative determination on the merits under the Policy in not inappropriate. In any event, this Panel finds the appropriate course to be the exercise of the discretion granted to it under the UDRP Rules, and to proceed to issue a decision on the merits under the Policy, as set out below. Any regard that may be had to the present decision under the Policy in the course of the District Court proceedings would quite properly be a matter for the court itself to determine.
B. Identical or Confusingly Similar
The Complainant has produced satisfactory evidence of its rights in the trademark FLYBOARD. The disputed domain name <flyboard.com> is found to be identical to the Complainant’s registered trademark and the Panel finds for the Complainant in the terms of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Complainant relies in part upon the terms of the Agreement signed by the Complainant and the Respondent and dated February 29, 2012, a copy of which has been produced in evidence. The Agreement is a comprehensive document comprising 25 articles. The “Distributor” referred to in the Agreement is in effect the Respondent. It will be informative here to quote certain terms of the Agreement, which will be referred to when considering rights or legitimate interests, and also bad faith:
WHEREAS, PWC [Personal Water Craft] PRODUCT is the sole owner of different trademarks, such as FLYBOARD ...
WHEREAS, DISTRIBUTOR is especially interested in possibly distributing and marketing PWC PRODUCT’s products in UNITED STATES OF AMERICA AND CANADA ...
Article 1. Definitions
Trademarks Mean any and all distinctive signs appertaining to PWC PRODUCTS such as FLYBOARD and ZR ZAPATA RACING, used either as Trademarks, domain names or commercial names.
Article 9 Intellectual Property Rights.
9.1 General Rules
Except as otherwise provided in this Agreement, PWC PRODUCT shall not transfer any intellectual property rights to DISTRIBUTOR.
DISTRIBUTOR shall not, directly or indirectly,
(i) take any action that could jeopardize, limit or interfere in any manner with PWC PRODUCT’s ownership or rights with respects to its Patents and Know-How and Trademarks
PWC PRODUCT shall procure the grant to DISTRIBUTOR of an exclusive and non-transferable license to use the Trademarks for the duration of this Agreement in the Territory and in the Domain solely for the importation, promotion, distribution, marketing and sale of the Products on the conditions set out in this Agreement.
For this purpose, DISTRIBUTOR shall use the Trademarks as they are registered without modification. If DISTRIBUTOR wishes to use the Trademarks on its website and in any other communication and/or business and/or commercial documentation, it shall demand to PWC PRODUCT a specific prior and written authorization to do so.”
Under Article 25 of the Agreement the applicable law in the event of a dispute is French law. The Panel recognises that it is not determining a dispute arising out of the Agreement but treats the terms of the Agreement as indicative of the agreed intentions of the Parties, for the purposes of the present dispute under the UDRP.
The Complainant must prove that the Respondent does not have rights or legitimate interests in the disputed domain name. The Complainant has asserted prima facie that the Respondent has no right to the name FLYBOARD. Paragraph 4(c) of the Policy provides for the Respondent to rebut the Complainant’s prima facie case in any way that may satisfy the Panel, of which the following are illustrative examples:
“(i) before any notice to you of the dispute, your [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) you (as an individual, business, or other organization) have been commonly known by the disputed 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 disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
The Respondent’s use of the disputed domain name was not noncommercial in the terms of paragraph 4(c)(iii) of the Policy.
Prior to about February 2012 the Respondent was evidently known as Kim Robinson, Lowell Kim Robinson, or variations thereof or by business names. The Panel is not persuaded that the ordinary meaning of paragraph 4(c)(ii) of the Policy can extend, in the present case, to a contemporaneous formation of a corporation, purchase of a corresponding domain name, and a claim to be commonly known by that domain name as an individual, business, or other organization.
The Respondent did substantial business in relation to the distribution and marketing of the Complainant’s products over a period from about February 2012 to October, 2012, and seeks to establish that the accompanying use of the disputed domain name for a bona fide offering of goods or services has created a legitimate interest in the terms of paragraph 4(c)(i) of the Policy.
The Panel has no reason to doubt that the Respondent’s business was legitimate in other respects than those concerned with the disputed domain name, and it might appear prima facie that the use of the disputed domain name was “in connection with” that business. The interpretation of paragraphs 4(a)(ii) and 4(c)(i) of the Policy has, however, been the subject of developing jurisprudence.
Whilst the UDRP is non-precedential, a number of previous cases have dealt with disputes involving the use of a trademark in the domain name of a reseller of goods or services. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”) at paragraph 2.3 provides some analysis of certain relevant previous cases, and the consensus view (which is not binding on panels) is stated in part as follows:
“Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant's relationship with the trademark holder.”
A Respondent’s obligation to disclose its relationship with the trademark holder accurately and prominently was stated more expansively in the decision of the three-member Panel in Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095:
“The site must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents.”
The Respondent is one of many of the Complainant’s sales agents world-wide. The Complainant has produced screenshots of the website to which the disputed domain name resolves. The page “http://flyboard.com” displays the page name “FlyBoard Official | Official Site of the Flyboard in the US, Canada, Ca...”, and the page “http://flyboard.com/about/” displays the page name “About | FlyBoard Official”.
The Respondent claims common law rights in the trademark FLYBOARD (gifted to the Respondent corporation by its guiding mind), deriving from its usage through the distribution and marketing of the Flyboard. The Respondent in the court documents dated November 15, 2012, states at paragraph 13 that “The Flyboard™ is a registered U.S. trademark created by and owned by Flyboard, Inc.” (i.e., by the Respondent). The Response, bearing the later date of December 13, 2012, refers only to a trademark application at the USPTO, as is evidenced by the copy of the application produced, and concedes that the application is opposed by the Complainant.
The Panel is persuaded on balance that Respondent’s website pages, particularly when viewed in the context of the adoption of the popular top-level domain “.com”, do project an image of the disputed domain name and its website as being the official international Internet presence of the Complainant, and a general impression that the Respondent is the trademark owner. In the light of the terms of the Agreement, the Panel cannot find sufficient justification for the Respondent’s use of the term “FlyBoard Official”. The Panel does not accept that the Respondent’s application for the trademark FLYBOARD, which is opposed by the Complainant, is sufficient on balance for the Respondent to establish common law rights in the trademark for the purposes of the Policy.
The Respondent does not succeed in establishing to the satisfaction of the Panel that, within the meaning of paragraph 4(c)(i) of the Policy, it is using “a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services” because its manner of use of the trademark FLYBOARD in the associated website has fallen short of being bona fide. The Panel finds for the Complainant in the terms of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name “has been registered and is being used in bad faith”. The Respondent seeks to establish that it acted with the permission of the Complainant and therefore in good faith.
The Respondent contracted at Article 9.1 of the Agreement that it would not “directly or indirectly, (i) take any action that could jeopardize, limit or interfere in any manner with PWC PRODUCT’s ownership or rights with respects to its ... Trademarks”. The Agreement at Article 9.2, however, grants to the Respondent certain rights to use the trademark FLYBOARD for the duration of the Agreement. The Agreement qualifies that grant of rights by imposing a condition, at Article 9.2, that the Respondent, before using the Complainant’s trademark on a website, is obliged to obtain the specific prior written approval of the Complainant. The Panel interprets the use of a trademark on a website as inclusive of the incorporation of the trademark in the domain name.
The Respondent has asserted in some detail that the Complainant gave permission for the disputed domain name to be registered by the Respondent. The Respondent says that prior to the purchase of the disputed domain name, the Respondent offered it to the Complainant. The Respondent says the Complainant declined to purchase the disputed domain name and had no objection to the Respondent owning it, since other distributors for the Complainant own their domain names. The Respondent states specifically that on May 26, 2012, the Complainant acknowledged that the disputed domain name was the Respondent's, and the Complainant was willing to make changes to its own website to ensure information relating to the Respondent was correct. The claims related in this paragraph are important and need to be supported by evidence on the balance of probabilities.
The Respondent refers to Annexes 5, 6 and 7 of the Response as containing the relevant communications referred to above. The Panel notes, however, that emails from the Respondent to the Complainant in February and March 2012 were in general terms, and for instance the email dated February 24, 2012, begins “I am building a website, could I get you to send some pictures...” These emails would have been before the Respondent appears to have acquired the disputed domain name on May 14, 2012.
Emails in a later group with dates in May and June 2012 refer only incidentally to the disputed domain name. Absent is any email that meets the Respondent’s claim to have offered the disputed domain name to the Complainant, or in which the Respondent specifically seeks prior permission to register any domain name under its own name, or the Complainant formally grants such permission. An email dated May 25, 2012, from the Respondent to a presumed employee or associate of the Complainant, reads (salutations omitted): “I need Zapata-Racing Website change our contact information. Our contact information is Website: “Flyboard.com” Please do not put www in front of our website address, Phone [ ... ]. Please also, change the website address when you click on North, Central and South America” (emphasis as it appeared in the print produced in evidence).
The reply on behalf of the Complainant, dated May 26, 2012 and assumed therefore to be the crucial evidence acknowledging that the disputed domain name was the Respondent’s, reads: “Ok I make the change [thursday] because monday is holiday in France yet!!!! Thank you and if you have an other change please let me know.” An email from the Respondent on May 27, 2012, includes a reference to the disputed domain name as follows: “...your Distributors are more than welcome to visit our Website flyboard.com and use our training material ...” (emphasis as above).
Paragraph 10(d) of the Rules entreats the Panel to base its decision upon the admissibility, relevance, materiality and weight of the evidence. The Complainant’s material evidence includes the Agreement whereby the Complainant is the sole owner of the relevant trademark FLYBOARD (in the context of this dispute) and the Respondent requires specific prior written authorisation to use it on a website.
The Panel has seen no satisfactory evidence that the Respondent specifically sought the required prior written authorisation to register the disputed domain name and is not persuaded that any exchange of emails it has seen, including those around May 26, 2012, amounted to specific prior written authorisation to incorporate the trademark FLYBOARD in the disputed domain name in terms that could satisfy the requirements of Article 9.2 of the Agreement. If better evidence existed, the Respondent was obligated to produce it in the first instance (Grove Broadcasting Co. Ltd v. Telesystems Communications Limited, WIPO Case No. D2000-0703).
Thus the Panel finds, on the evidence presented and on the balance of probabilities, that the disputed domain name was registered and used in terms contrary to the Agreement and thereby in bad faith.
Furthermore, paragraph 4(b) of the Policy provides examples, without limitation, of the use of a disputed domain name in bad faith. Paragraph 4(b)(iv) reads:
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 Panel finds, on the balance of probabilities, that a significant proportion of visitors to the Respondent’s website would be confused at least initially into thinking they had arrived at the Complainant’s official main website world-wide, taking into account the address <flyboard.com> and the use of the words “Flyboard Official” on two pages. On this ground the Panel finds bad faith use additionally.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <flyboard.com> be transferred to the Complainant.
Dr. Clive Trotman
Date: January 7, 2013