WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Briggs & Stratton, Corporation v. Suresource
Case No. D2000-1582
1. The Parties
The Complainant is Briggs & Stratton, Corporation, a corporation of Wisconsin having its principal place of business at 12301 West Wirth Street, Wauwatosa, Wisconsin 53222.
The Complainant presents the name of the Respondent as Suresource. Other versions appear in the case file as well. A December 8, 2000, facsimile from the Registrar (R) to the WIPO Arbitration and Mediation Center (the "Center") says "Simone Upsey is the current registrant" but attaches a Whois printout identifying the domain name registrant by the two words "Sure Source" immediately above "Domain Registration." These variations appear to be of no consequence, however, because the same address is always given. It is 50 Commerce Drive, Trumbull Connecticut 06611, and in transmitting the Complaint to the Respondent, the Center named the intended addressee(s) as "Upsey, Simone", "Sure Source" and "Domain Registration".
2. The Domain Name and Registrar
The domain name at issue is: .
The Registrar is R of 575 8th Avenue, New York, New York 10018.
3. Procedural History
The original Complaint was received by the Center by e-mail on November 16, 2000, and in hard copy on December 1, 2000.
It is not clear whether the Complainant sent a copy of the Complaint to the Registrar. The Registrar�s December 8, 2000, letter to the Center said, "We did not receive a copy of the Complaint regarding , as required by WIPO Supplemental Rules for Uniform Dispute Resolution Policy. Paragraph 4(b)."
Paragraph 2 of the Complaint alleged that the disputed domain name was registered with "R (the �registrar�)." On November 29, 2000, Complainant�s attorney sent to the Center a communication entitled "Letter of Amendment to the Complaint." It alleged that the disputed domain name is registered with "R not R." This Letter indicates that copies were sent to Ms. Simone Upsey and to Mr. Todd Holson. The Panel notes that the first of these names corresponds to the name initially given by R as the name of the registrant of the disputed domain name. After its receipt of the Letter of Amendment, the Center has treated the Complaint as having been amended to name R as the Registrar of the disputed domain name.
It appears that there were further contacts between the Center and the attorney for the Complainant concerning who was the owner of the disputed domain name at the time the Complaint was filed. On January 26, 2001, Complainant sent to the Center a "Letter of Evidence to Complaint," allegedly confirming "that Sure Source was the owner�" and attaching some printouts allegedly supporting this conclusion.
Althoug the Complaint included a paragraph 11 that appears to have intended to address the requirement of paragraph 3(b)(xiii) of Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") that a Complainant submit to a suitable "Mutual Jurisdiction" as defined in the Rules, para. 1, it is insufficient in this respect. Paragraph 11 reads "BRIGGS will submit to a decision in the administrative proceeding canceling or transferring , to the jusrisdiction of the courts in Milwaukee, Wisconsin." Although it is possible that the deficiency might be correctable through an amendment to the Complaint, the Panel believes that the decision in this particular case properly can be rendered without requiring such correction.
Otherwise, the Panel confirms the Center�s findings that there has been compliance with the formal requirements of ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
A Notification of Complaint and Commencement of Administrative Proceeding was sent by the Center on February 2, 2001, to the Respondent along with a copy of the Complaint. This action was carried out as required by section 2(a) of the Rules. The Notification stated that the "last day for sending your Response to the Complainant and to us is February 21, 2001.
The formal commencement date of this administrative proceeding is February 2, 2001.
No response from the Respondent has been received by the Center.
On February 23, 2001, the Center sent to Respondent a Notification of Respondent Default.
On March 1, 2001, the Center invited William L. Mathis to serve as panelist for this case. He accepted and provided the Center with his Declaration of Impartiality and Independence.
On March 8, 2001, the Center notified the parties of the appointment in this case of an Administrative Panel consisting of a single member, William L. Mathis.
4. Factual Background
The Panel accepts as true the uncontested allegations of paragraphs 12-14 of the Complaint, wherein "BRIGGS" is to be read as meaning the Complainant "Briggs & Stratton, Corporation", a Wisconsin corporation. These paragraphs say:
"12. BRIGGS is famous around the world for the production of air-cooled gasoline engines for outdoor power equipment provided under its BRIGGS & STRATTON name and mark. Among the many endeavors BRIGGS undertakes under its BRIGGS & STRATTON trademark, service mark and business name are the multiple design, manufacture, and marketing of its engines and engines parts, as well as the general services related to the maintenance of its engines and engine parts.
13. In addition, BRIGGS & STRATTON maintains a significant presence on the Internet. BRIGGS� web site located at the domain name is a popular, well-visited web site on the Internet. BRIGGS also maintains around fifty (50) other web sites for its related goods and services.
14. Respondent Suresource is not an authorized distributor or licensee of BRIGGS, nor is it otherwise authorized by BRIGGS to use any BRIGGS & STRATTON mark, including Briggsandstratton-Store.Com."
The Panel also accepts for purposes of this decision, the uncontested allegation that Complainant owns United States Trademark Registration No. 1,765,564, even though the copy furnished as Annex B to the Complaint identifies the registrant as "Briggs & Stratton Corporation (Delaware Corporation)". This Principal Register registration was issued by the United States Patent and Trademark Office on April 20, 1993, with respect to the word trademark BRIGGS & STRATTON for internal combustion engines and parts therefor.
Other trademark and service mark registrations relied upon by Complainant apparently relate to a mark in which the words BRIGGS & STRATTON appear in a design. One such United States registration is Principal Register Registration No. 1,203,864 issued on August 3, 1982, with respect to the mark as used in connection with services identified as "rendering technical and marketing assistance in the establishment and/or operation of internal combustion engine maintenance and repair businesses."
The Complaint does not describe any use that is now being made of the disputed domain name by the Respondent.
5. Parties� Contentions
A. Complainant
The Complainant asserts that the disputed domain name is identical or confusingly similar to Complainant�s BRIGGS & STRATTON mark.
The Complaint also contends in paragraph 21 of the Complaint that Respondent "has no rights or legitimate interests in respect to the domain name" and asserts in paragraph 22 of the Complaint that Respondent "is not (either as an individual, business, or other organization) commonly known by the name Briggs & Stratton or ."
In support of a contention that Respondent has registered and is using the domain name in bad faith, the Complaint alleges several bases:
(1) Respondent registered the domain name "with knowledge that BRIGGS&STRATTON was a famous� mark." Complaint, para. 24.
(2) Correspondence with Respondent led Complainant to an understanding that Respondent had an intention to link the disputed domain name to Respondent�s Suresource web site "at some time in the unknown future." Complaint, para. 24.
(3) Respondent has yet to activate the link mentioned above in (2) and has refused to grant Complainant�s request to transfer the domain name to Complainant. Complaint, para. 25.
(4) Respondent�s only response to further correspondence and telephone requests for a transfer of the domain name "is there in (sic) no incentive for them to transfer the domain name and while they are not sure of whether they will use the �[disputed] domain name to sell legitimate products, they do intend not to transfer it back to" Complainant. Complaint, para. 26.
Complainant also argues that Respondent�s actions in acquiring the disputed domain name and not using it to sell legitimate products of Complainant should be "deemed to be bad faith," citing Hewlett-Packard Company v. High Performance Networks, Inc., FA 0006000095083 (ICANN July 31, 2000). Complaint, para. 27.
Finally, Complainant purports to distinguish this case from another administrative panel decision (cited as Weber-Stephen Products Co. v. Armitage Hardware, May 11, 2000) which Complainant says was cited by Respondent when Complainant spoke to Respondent. According to Complaint, para. 28, Respondent believes the cited case "gives it the right to register and hold the domain name."
Complainant seeks in the Administrative Proceeding a transfer of the disputed domain name to Complainant.
B. Respondent
No communication from the Respondent has been received in this case. That is, no contentions have been advanced on behalf of the Respondent.
6. Discussion and Findings
This Administrative Proceeding is being conducted pursuant to the Uniform Domain Name Dispute Resolution Policy (the "Policy"). The December 8, 2000 letter from the Registrar of the disputed domain name confirmed that the Policy is applicable to this domain name.
Under paragraph 4.a. of the Policy, a complainant must "prove" that each of the following three elements are present in order to be entitled to a transfer:
The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
Respondent has no rights or legitimate interests in respect of the domain name.
Respondent�s domain name has been registered and is being used in bad faith.
Confusing Similarity
The Panel finds that Complainant has proved it has rights in the trademark BRIGGS & STRATTON and that the disputed domain name is confusingly similar thereto. The combination of the two surnames Briggs and Stratton dominates both, while the differences are minor in their impact on the overall impressions created.
Respondents Rights and Interests
Paragraph 4.c. of the Policy describes without limitation three circumstances which, if proved by the evidence, would demonstrate a respondent�s rights or legitimate interests for purposes of Section 4.a.(ii) of the Policy.
The Panel finds that none of the circumstances described in Policy paragraph 4.c. has been proved to exist in the present case. There is no evidence that Respondent made any preparations to use the disputed domain name in connection with a bona fide offering of goods or services at a time before Respondent knew of the Complainant�s rights. Nor is there evidence that Respondent has ever been known by the disputed domain name or is making any noncommercial or fair use of the name.
Nevertheless, the Panel is aware that the description in paragraph 4.c. of the Policy of three circumstances is not intended to exhaust the possibilities for proofs of good faith. In this connection, the Panel has considered also the possible relevance of the Complainant�s report that Respondent told Complainant that the Respondent believed the cited Weber-Stephen decision "gives it the right to register and hold the domain name."
The Panel finds that Respondent�s alleged assertion to Complainant of Respondent�s legal conclusion as to its rights is not sufficient to establish good faith. Thus, the failure of Respondent to come forward in this proceeding with facts and explanations as to the pertinence of the Weber-Stephen decision is definitive. Specifically, the Panel finds the present record insufficient to establish that the Respondent has rights or legitimate interests in respect of the disputed domain name.
Registration and Use in Bad Faith
Paragraph 4.b. of the Policy describes some circumstances which, if found to be present, will be evidence of the registration and use of the domain name in bad faith. Four descriptions are presented in passages (i), (ii), (iii) and (iv). They are presented in the alternative. That is, a finding of the existence of the circumstances in any one of the four descriptions will qualify such circumstances as evidence that a disputed name has been registered and is being used in bad faith.
The Complaint does not attempt to relate the facts alleged therein to any of the four circumstances described in paragraph 4.b. of the Policy. Nor does the Panel recognize that any of these descriptions is applicable to the alleged facts. Accordingly, the Panel finds that none of the circumstances described in paragraph 4.b. of the Policy have been proved to be present in this case.
Since the Policy does not preclude the possibility that still other circumstances could serve to prove that a disputed domain name "has been registered and is being used in bad faith" (Policy, 4.a. (iii)), consideration has been given also to the various allegations referred to above in describing Complainant�s contentions.
The Complaint does not explain why registration of a domain name that is known to be similar to a famous mark is proof of bad faith registration and use. Such knowledge might be pertinent in some contexts, but the present Complaint does not include particular proofs that might make knowledge of the famous character of Complainant�s mark a significant factor.
Similarly, the Complaint fails to explain why an intention on Respondent�s part to link the disputed domain name to Respondent�s web site "at some time in the unknown future" is pertinent to the issue of whether the disputed domain name has been registered and is being used in bad faith. Complainant�s position in this respect becomes even more problematic in view of the Complaint�s allegations in paragraphs 25 and 26 asserting that Respondent "has yet to activate the link" and that Respondent[s] "are not sure whether they will use the � domain name to sell legitimate products." The Panel does not find that these allegations prove bad faith registration and use.
The Complaint�s reference in paragraph 27 to the Hewlett-Packard Company case is not believed to be justified. The case does not say that anything is "deemed to be bad faith." It cites another case for the proposition that "passive holding of a domain name, without any attempts to develop the website raises the inference of use in bad faith." Of course, this expression was offered in the context of different facts and it is not appropriate to view the comment as establishing a general proposition of sweeping scope. Still another ICANN proceeding also was mentioned in paragraph 27 of the Complaint but it was not identified with the particularity necessary to enable ready access to it. In all, the Panel is satisfied that, if the Policy had intended that a Respondent�s non-use would be sufficient to establish that the domain name has been registered and is being used in bad faith, it would have said so.
Accordingly, the Panel finds that Complainant has failed to prove bad faith registration and use.
7. Decision
The Panel concludes that the disputed domain name should NOT be transferred or canceled.
William Lowrey MATHIS
Sole Panelist
Dated: March 29, 2001
Full & Egal Universal Law Academy