WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kurt Garmaker d/b/a “Repitition Miniature Schnauzers” v. Hilde Haakensen, Axcium Design
Case No. D2015-0993
1. The Parties
Complainant is Kurt Garmaker d/b/a “Repitition Miniature Schnauzers” of Marietta, Georgia, United States of America, represented by Phil Nicolosi Law, P.C., United States of America.
Respondent is Hilde Haakensen, Axcium Design of Atlanta, Georgia, United States of America, self-represented.
2. The Domain Name and Registrar
The disputed domain name <repititionms.com> (the “Domain Name”) is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 10, 2015. On June 12, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 15, 2015, the Registrar 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 June 19, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 9, 2015. The Response was filed with the Center on July 9, 2015.
The Center appointed Robert A. Badgley as the sole panelist in this matter on July 23, 2015. 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
Complainant and Respondent were once husband and wife, and are now divorced. They both reside in the state of Georgia, United States of America. They were married in November 2007, separated in 2008, and divorced in 2013 (Respondent’s contention) or 2014 (Complainant’s contention).
Complainant provides dog grooming, handling, and breeding services, and did so during the marriage. Since 1977, Complainant’s business has provided such services under the alleged mark REPITITION MINIATURE SCHNAUZERS. Complainant has bred and trained multiple kennel club champion dogs. Complainant has advertised the REPITITION MINIATURE SCHNAUZERS services in the periodical “Schnauzer Shorts,” and displays the mark on business cards and printed marketing literature (pamphlets, brochures, etc.).
For several years, Complainant marketed his business at a website to which the Domain Name resolved. Currently, because Respondent owns the Domain Name, Complainant markets his services at the domain name <repititionminiatureschnazers.com>.
The alleged mark REPITITION MINIATURE SCHNAUZERS is not a registered service mark. Rather, Complainant asserts common law trademark rights.
The Domain Name was registered on July 20, 2006. For several years, it resolved to a website promoting Complainant’s business. This fact is demonstrated by an undated screenshot submitted with the Complaint. Currently, the Domain Name does not resolve to an active website.
According to Complainant, at the time of registration Respondent was Complainant’s “trainee and assistant,” and Respondent registered the Domain Name at a time when Complainant was “medically incapacitated.” Complainant alleges that he did not realize until recently that the Domain Name had actually been registered in Respondent’s name, rather than his.
According to Respondent, she played a larger role in Complainant’s business than a mere trainee and assistant. Respondent contends that she handled much of the day-to-day business and, because she had some computer design acumen, she designed the business logo, registered the Domain Name, and set up and operated the website to which the Domain Name resolved.
Respondent alleges that she had registered another domain name, <axcium.com>, two years before registering the Domain Name, and this domain name resolved to a website which “generated the majority of the puppy requests which generated sales for [Complainant’s business].” Respondent asserts that Complainant never asked her to register the Domain Name, but she did so on her own initiative in “a desperate attempt to save [Complainant] from bankruptcy.” According to Respondent, Complainant was in the hospital “and about to lose everything.” She asserts that two champion dogs were sold for USD 20,000, and these sales were generated via the ‘www.axcium.com” site, not the site to which the Domain Name resolved. Respondent asserts that she registered the Domain Name with her own money and was never compensated by Complainant for her website services.
The divorce agreement between Complainant and Respondent made no mention of the Domain Name.
Respondent currently operates a grooming and breeding service for Miniature Schnauzer dogs at her website “www.axcium.com”. At this website, Respondent notes that she had been trained by “world renowned professional handler, breeder, and Miniature Schnauzer expert Kurt Garmaker (Repitition Miniature Schnauzers).”
As noted above, today the Domain Name does not resolve to an active website.
5. Parties’ Contentions
Complainant asserts that he has satisfied the three elements required by the Policy to secure a transfer of the Domain Name.
Respondent denies that REPITITION MINIATURE SCHNAUZERS is a service mark worthy of legal protection, and she asserts that other participants in the Schnauzer breeding world have used the term “Repitition.” She also claims to have a legitimate interest in the Domain Name, and denies having registered it in bad faith.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name at issue in this case:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Whether Complainant has presented sufficient evidence of common law trademark rights in REPITITION MINIATURE SCHNAUZERS is not an easy question. The Panel need not tackle this issue, however, in view of its decision below regarding the “bad faith” issue.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in a Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [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; or
(ii) you [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; or
(iii) you [Respondent] 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.
Again, the Panel sidesteps this issue, because its resolution is rendered moot by the Panel’s conclusion under the “bad faith” head below.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of a Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Complainant has not carried his burden of proving that Respondent registered the Domain Name in bad faith and is using it in bad faith. Complainant may or may not have a remedy in a court of law, but he has no remedy under the Policy. The Policy is designed to address clear cases of cybersquatting; it was not designed to address every type of dispute that happens to involve a domain name.
The record here is rather undeveloped, and laden with conclusory statements on both sides. It suffices for the Panel’s purposes to note that there is no evidence in the record to support the contention that, at the time the Domain Name was registered, Respondent did so in bad faith. Therefore, this Complaint must fail.
For the foregoing reasons, the Complaint is denied.
Robert A. Badgley
Date: August 2, 2015