WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BREAD & Butter GmbH & Co. v. Paul E. Grindle
Case No. D2013-1195
1. The Parties
The Complainant is BREAD & Butter GmbH & Co. of Berlin, Germany, represented by Härting Rechtsanwälte, Germany.
The Respondent is Paul E. Grindle of Colorado, United States of America.
2. The Domain Name and Registrar
The disputed domain name <14oz.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 July 3, 2013. On July 4, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 4, 2013, the Registrar 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 July 11, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 31, 2013. An informal email communication was received from the Respondent on July 15, 2013.
The Center appointed James A. Barker as the sole panelist in this matter on August 12, 2013. 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
In the year 1999 the Complainant established a retail and wholesale business under the brand “14oz”. The business mainly focusses on the design, production and retailing of high quality apparel. Until 2004 the Complainant maintained its business in the city of Cologne and then moved to Berlin. In October 2012 the Complainant opened a second retail-facility on Berlin-Kurfürstendamm.
The Complainant operates a website at “www.14oz.net”.
The business was once operated by the company “Fourteen Ounce GmbH” until the company’s became BREAD & butter GmbH & Co. KG in December 2007. The main shareholder (and founder) of Fourteen Ounce GmbH and BREAD & butter GmbH & Co. KG was and still is Mr. Karl-Heinz Müller.
The Complainant has a registered mark for 14OZ, filed on July 15, 1999 at the German Trademark Office and registered on January 19, 2000 (Registration No.: 39941480) inter alia for goods such as clothing, footwear and fashion accessories of any kind, perfumes and paper goods. The Complainant also has, among others, a Community mark since 2007, and marks in other jurisdictions, including on the principal register of the United States Patent and Trademark Office.
The disputed domain name was first created on March 28, 2000. As confirmed by the Registrar, the disputed domain name was registered by the Respondent on December 31, 2003 (the day the disputed domain name was transferred to the Registrar, Go Daddy). However, according to information attached to the Complaint (past WhoIs reports from “Domain Tools”) the Respondent was the registrant of the disputed domain name in 2001, before the 2003 date when the Registrar confirmed first registration by the Respondent. On its face, this evidence appears inconsistent, although in each case sourced from a third party.
5. Parties’ Contentions
The Complainant says that the disputed domain name was last used by a company called Teneo Technology, LLC, of San Diego, California, United States of America. According to information at the website “www.teneotechnology.com”, the business of Teneo Technology, LLC seems to be a so called “iPad-assisted learning” for teaching disabled children. With a tailor-made adaptation of the iPad-interface combined with special education-software, learning shall be made more comfortable for those children. It does not appear that there is any relation between the disputed domain name <14oz.com> and the business.
Currently, the disputed domain name is used to place so called “sponsored links”. A sponsored link is a paid advertisement in the form of a hyperlink that shows up on search results pages. The ads are typically for products and services that are generally or very specifically related to the keywords in the search query.
A Domain Report of the company Domain Tools, LLC of March 28, 2013 as well information at the Internet Archive Wayback Machine (archive.org) show that there was no permanent use of the disputed domain name by the Respondent but use has been made in various ways by various companies during the years. The Complainant outlines the following uses that have occurred since the creation of the disputed domain name:
- in 2002 advertising web design services.
- from June 2002 until 2005 the disputed domain name was used in connection with offering satellite pictures of the earth for use as interior design.
- in 2007 and 2008 the disputed domain name was used for advertising and selling stones such as marble, granite and travertine.
- in June and August 2008 the disputed domain name was used for parking and to publish sponsored links.
- in 2010 the dispute domain name was redirected to a website at “rentalfinder.info” where services related to real estate rental were advertised.
- In 2011 and 2012 the disputed domain name was used by a business called “Grizzlyfloors” for promoting services related to hardwood floors.
The Complainant says that it does not appear that there is a relationship between the disputed domain name and the different businesses which have used it. Neither one of the companies nor one of the brands of the businesses was identical with or contained the term “14oz”.
On March 27, 2013 the Complainant contacted the Respondent, and demanded transfer of the disputed domain name, with reference to the Complainant’s trademark rights. Various communications followed between the parties, in which the Complainant negotiated to purchase the disputed domain name for USD 3,000, however the Respondent failed to complete the transfer.
In relation to paragraph 4(a)(i) of the Policy, the Complainant claims that the disputed domain name is identical to its mark.
In relation to paragraph 4(a)(ii) of the Policy, the Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant notes that the disputed domain name has been used in connection with various websites. The business advertised on those websites did not make use of the term “14oz”. The Complainant also queries whether any of those companies in fact were aware that the Respondent’s website was advertising their products, in view of the fact that some of those companies operate via separate websites, and there is no good reason why a company would want to operate a website from an domain name that has no relationship to the company. There is otherwise no evidence that the Respondent has any rights or legitimate interests in the disputed domain name.
In relation to paragraph 4(a)(iii) of the Policy, the Complainant says that the Respondent registered and has used the disputed domain name in bad faith. The Complainant claims that the Respondent had a duty to investigate potentially competing trademark rights. Even if the Respondent is not found to have acted in bad faith when the disputed domain was registered, the Complainant says that bad faith can be deemed to have occurred in the years after the registration of the disputed domain name.
The Respondent did not file a formal reply to the Complaint. However, in communications between the parties, the Respondent stated that “I currently use the domain name to show what their website would look like before I transfer it to their domain.” From this, the Panel has inferred that the Respondent uses the disputed domain name in connection with the business of constructing websites, and has used the disputed domain name in that connection.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed 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.
In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the 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. These elements are discussed in turn below, immediately following a procedural issue.
A. Delay in bringing the Complaint (“Laches”)
As noted above, the disputed domain name was first registered in 2000, and first registered to the Respondent in 2003 (or earlier, according the Complaint). This means that the disputed domain name was registered around 13 years before the Complainant filed the Complaint. The Complainant provides no explanation as to why it took so long to file the Complaint.
However, as this Panel has discussed in other cases, a delay in bringing a complaint does not provide a defense per se under the Policy: Chocolaterie Guylian, Naamloze Vennootschap (N.V.) v. Zeugma, WIPO Case No. D2010-2256. While a complainant’s delay may make it more difficult to prove its case, particularly under paragraphs 4(a)(ii) and (iii) of the Policy, delay itself is not a matter that relates directly to any of the issues which a complainant must prove under paragraph 4(a) of the Policy. In these circumstances, the Panel has not drawn adverse implications against the Complainant on this issue alone.
The non-applicability of the defense of laches (i.e. undue delay) in UDRP proceedings has long been recognized by UDRP panels, over many years and a large body of jurisprudence. See e.g., in addition to this panel’s earlier-mentioned decision in Chocolaterie Guylian, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.10, and cases cited therein. While this Panel is aware that a small number of UDRP panelists have, on occasion, sought to put this question in issue (see e.g. Laminex, Inc. v. Yan Smith, NAF Claim No. FA1470990), this Panel sees no compelling reason to disrupt or depart from years of well settled UDRP jurisprudence on this point.
This does not mean that a delay may not be relevant in this proceeding, to the extent that it may relate particularly to the matters the Complainant must provide under paragraph 4(a)(ii) or (iii) of the Policy. To the extent issue of delay is relevant in these respects, the Panel has addressed it below.
B. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, the first thing a complainant must show is that it “has rights” in a trademark. The Complainant has provided copies of registration certificates for its mark, including a mark registered on the principal register of the USPTO, on which it relies and so meets this aspect of the Policy.
The next issue is whether the disputed domain name is identical or confusingly similar to that mark. The Complainant’s mark comprises the term “14oz.” in white text on a red, rectangular background. The disputed domain name is self-evidently identical to the textual element of the Complainant’s mark. For these reasons, the Panel finds that the disputed domain name is identical to the Complainant’s registered mark. As such, the Complainant has established this first element under paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
For the reasons set out below, it is not necessary for the Panel to address this element.
D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) requires that the Complainant show that the Respondent both registered and has used the disputed domain name in bad faith.
What is not clear, from the case file in this case, is the date at which the Respondent first registered the disputed domain name. According to evidence in the Complaint, based on a search of WhoIs records in Domain Tools, the disputed domain name was registered by the Respondent at least in 2001. According to the Registrar’s confirmation to the Center, the disputed domain name was first registered to the Respondent in 2003. It is possible to interpret from this that the ownership of the disputed domain name changed over the period since it was created, and was then re-registered by the Respondent in 2003. The alternative is that the evidence is inconsistent and that the Respondent has either been the continuous registrant since 2000 or 2001, or first registered the disputed domain name in 2003.
Ultimately, the Panel has not issued a panel order for further information to seek to clarify this issue. This is because, even on the most favorable case to the Complainant, the Panel finds on the balance of probabilities that the disputed domain name was not registered or has not been used in bad faith, for the purpose of paragraph 4(a)(iii) of the Policy.
The most favorable case to the Complainant is that the disputed domain name was first registered by the Respondent (as confirmed by the Registrar) in 2003. However, even if this were the case, the Panel does not consider that the evidence sufficiently supports a finding that the disputed domain name was registered, or has been used in bad faith. Bad faith may be demonstrated where the evidence indicates that the Respondent registered and used the disputed domain name primarily with a view to taking unfair advantage of the Complainant’s trade mark rights and reputation. The factors against such a finding are, in the Panel’s view, as follows.
- Firstly, the Complainant’s mark is comprised of a term that has a common meaning – relating to a unit of measurement. It is also, notably a unit of measurement (Imperial) that is in common use in the USA, where the Respondent has its address.
- Secondly, while the Complainant’s use of its mark began in 1999, and has marks registered in a number of jurisdictions, the Complainant’s evidence indicates that it conducts its business primarily from two retain outlets in Berlin. The Complainant’s evidence does not suggest that its reputation was so strong that it is likely the Respondent was aware of it in 2003.
- Thirdly, there is little evidence that the Respondent has, in fact, sought to use the disputed domain name to trade on the Complainant’s goodwill in its mark. None of the specific businesses which have used the disputed domain name (whether directly or via services provided by the Respondent) relate to the Complainant’s area of business of clothing and footwear. This does not strongly suggest that the Respondent was motivated, in registering or using the disputed domain name, to unfairly exploit the Complainant’s goodwill in its mark.
- Fourthly, the Respondent has his address in the USA. Apart from its mark registered with the USPTO, the Complainant did not provide strong evidence of its reputation in that jurisdiction. Some panels have found constructive bad faith, based on a Complainant’s registered mark with the USPTO and in cases where both are resident in the USA. However, as noted in the WIPO Overview 2.0, panels have mostly declined to introduce the US concept of constructive (deemed) notice per se into the UDRP. Consistent with the majority of panel opinion, this Panel has also not previously applied a concept of constructive notice.
- Fifthly, the Panel declines to follow the Complainant’s suggestion, based on the ‘Octogen’ line of cases, that bad faith may be found if the Respondent can be said to have only used the disputed domain name in bad faith. As previously discussed by this Panel, the majority of panel opinion has found that the requirement under paragraph 4(a)(iii) of the Policy is a conjunctive requirement – requiring both bad faith registration and use. Tata Communications International Pte Ltd (f/k/a VSNL International Pte Ltd) v. Portmedia Inc. / TRUEROOTS.COM c/o Nameview Inc., WIPO Case No. D2010-0217.
The alternative case is less favorable to the Complainant – on this alternative, the Respondent first registered the disputed domain name in 2000 (when it was first created). This is the alternative that is consistent with evidence (based on the Domain Tools WhoIs record) presented in the Complaint itself. Had the Respondent registered the disputed domain name in 2000, the evidence set out (as the second factor) above would be stronger in the Respondent’s favor. The natural inference is that the Complainant’s reputation would not have been as well established in 2000 as it was in 2003 (the alternative finding of when the disputed domain name was first registered to the Respondent). As such, it is even less likely that the Respondent would have been aware of the Complainant’s mark when the disputed domain name was registered.
The Panel acknowledges that there is at least one countervailing factor. The term “14oz” seems an unlikely domain name to choose by accident, and there is no self-evident reason in the case file for the Respondent to have chosen it. However, ultimately the burden is on the Complainant to prove its case. Having regard to the more numerous factors set out above, the Panel does not consider that the alternative inference (that the Respondent has acted in bad faith) to be sufficiently strong.
For these reasons, the Panel finds that the Complainant has not established its case under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, the Complaint is denied.
James A. Barker
Date: September 5, 2013