WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sports Saddle Inc. v. Johnson Enterprises
Case No. D2006-0705
1. The Parties
The Complainant is Sports Saddle Inc., Salem, Kentucky, United States of America, represented by the law firm Middleton Reutlinger, United States of America.
The Respondent is Johnson Enterprises, Brawley, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 6, 2006. On June 7, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On June 8, 2006, Go Daddy Software transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing and technical contacts. The Center subsequently verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 13, 2006. In accordance with the Rules, paragraph 5(a), the due date for the Response was July�3,�2006. Due to a technical problem with multiple email addresses, and as the hard copies of the Notification of Commencement and the Complaint apparently failed to reach the Respondent, the Center granted an Extension of Response until July 25, 2006. The Respondent filed a Response with the Center on July 14, 2006.
The Center appointed D. Brian King as the sole panelist in this matter on July 19, 2006. The Panel finds that it was properly constituted. The sole panelist 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.
On July 20, 2006, the Complainant transmitted an unsolicited Supplemental Filing to the Center by email, noting in the cover email that the Supplemental Filing had also been sent in hard copy to the Respondent’s address as indicated in the Response. The Center issued an Acknowledgement of Receipt of the Supplemental Filing on July�21,�2006, and then forwarded it to the Panel on July 24, 2006.
The Rules do not contain any express provision for Supplemental Filings by either party, except in response to a deficiency notification or if requested by the Center or Administrative Panel (see Paragraph 12 of the Rules). Nonetheless, prior Panels have concluded that discretion exists to accept an unsolicited supplemental filing by a party where good cause for the filing is shown, always of course bearing in mind the obligation to treat the parties equally and to provide each party with a fair opportunity to present its case (see, e.g., Viz Communications, Inc., v. Redsun dba David Penava, WIPO Case No. D2000-0905 (December 29, 2000)).
In this case, the Respondent raised a potentially important issue in its Response – alleging to have been authorized by the Complainant not only to sell the Complainant’s products, but also to register the disputed domain name. These appeared to be new allegations that were not raised by the Respondent in pre-dispute correspondence and thus could not necessarily have been anticipated by the Complainant at the time it submitted the Complaint. Accordingly, the Panel exercised its discretion to accept the Complainant’s Supplemental Filing. The Panel did this in a Procedural Order dated August 2, 2006, which Order likewise allowed the Respondent the possibility to respond in writing to the Supplemental Filing, with any such response to be submitted on or before August 9, 2006.
On August 10, 2006, the Center received a further submission from the Respondent and sent an Acknowledgement of Receipt on the same day. The Panel hereby decides to accept and consider that submission. Although it was received one day late, this delay is brief and in no way prejudicial to the Complainant.
4. Factual Background
The facts relevant to current dispute are set out in the Complaint and the Response. Considering the evidence submitted, the Panel finds the following facts to have been established.
The Complainant in this dispute is Sports Saddle, Inc., a Kentucky-based corporation owed by an individual named Bob Marshall. Sports Saddle, Inc. engages in the horse saddle products and maintenance business, and it has been using the trade mark SPORTS SADDLE in connection therewith since 1990. The Complainant holds both a service mark and a trademark for the mark SPORTS SADDLE, which were registered by the U.S. Patent and Trademark Office on July 16 and 30, 1996, respectively.
The Respondent is Johnson Enterprises, apparently a sole proprietorship owned by Ms.�Dolly Johnson. On January 27, 2000, the Respondent registered the domain name through InviteD. On July 26, 2002, the Respondent registered the same domain name with GoD, apparently after the first registration had been allowed to lapse.
On February 13, 2006, the Complainant’s counsel sent a cease and desist letter to the Respondent, which the Respondent answered on February 24, 2006. In the Respondent’s letter, Ms. Johnson claimed that she intended to use the domain name in the future to set up a web site “like Ms. Rini’s” – an apparent reference to a person identified by both parties as being an authorized dealer of the Complainant. The Complainant’s counsel replied on March 7, 2006, stating that the Respondent, unlike Ms. Rini, was not an authorized dealer and again requesting the transfer of the disputed domain name. This letter went unanswered, as did a follow-up letter sent by the Complainant’s counsel on May 2, 2006.
5. Parties’ Contentions
A. Complainant
The Complainant claims to have designed and sold horse saddles for over thirty years, and to have used the mark SPORTS SADDLE in connection with saddle products and the maintenance thereof since at least September 1990. The Complainant states that it has extensively advertised and promoted its mark, all of which have, according to the Complainant, achieved widespread recognition for the mark from the trade and purchasing public at great expense to the Complainant. One of the horse saddles designed by the Complainant’s principal (Mr. Marshall) is the so-called ‘treeless’ horse saddle, which has been sold for over fifteen years. According to the Complainant, it is this type of saddle that makes the SPORTS SADDLE trademark best known in the saddle business.
The Complainant has obtained trademark and service mark registrations with the US Patent and Trademark Office for the mark SPORTS SADDLE, these being granted in 1996 with respect to “leather goods, namely for endurance saddles” and for “saddlery maintenance and repair services” (Exhibits D and E to the Complaint; see also Exhibit F thereto). Both registrations were granted prior to the date on which the Respondent registered the disputed domain name. In addition to its trademark and service mark rights, the Complainant also invokes the common law rights that it asserts it has acquired in the SPORTS SADDLE mark through use in commerce since 1990.
In February 2006, the Complainant’s counsel sent a cease and desist letter to the Respondent requesting transfer of the domain name to the Complainant. This initiated the sequence of correspondence already described above.
The Complainant asserts in support of the Complaint that the Respondent’s domain name is identical or confusingly similar to a mark in which the Complainant has had rights since at least 1990, noting that fully incorporates the Complainant’s registered SPORTS SADDLE mark.
Next, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the domain name. According to the Complainant, the Respondent has never used, nor made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. Rather, the webpage is simply “parked free, courtesy of GoD.” The webpage contains a link to an authorized dealer of SPORTS SADDLE products (Ms. Rini), but the Respondent is not related to this dealer. Apart from that, the webpage contains links to various websites unrelated to the Complainant’s products, along with other paid advertising and search services in connection with the purchase and sale of domain names (Exhibit G to the Complaint).
Furthermore, according to the Complainant, the Respondent has never been commonly known by SPORTS SADDLE or ; nor does it own any trademark or service mark for this term; nor is the Respondent a licensee of the Complainant or otherwise affiliated or associated with the Complainant. The Complainant asserts that the Respondent has never been an authorized dealer of its products, nor has the Complainant given the Respondent permission to use the mark, or to register or use the disputed domain name. Furthermore, the Complainant asserts that, since there is no indication that the Respondent has done anything but to hold a parked domain name since the date of registration, the Respondent has not been making a legitimate noncommercial or fair use of the domain name. In this regard, the Complainant emphasizes that there is no evidence of any demonstrable preparations to use the website on the Respondent’s part.
Thirdly, the Complainant asserts that the disputed domain name was registered and is being used in bad faith. According to the Complainant, “parked” websites can constitute bad faith use in contravention of the UDRP. The Complainant argues that the Respondent’s alleged intent to use the domain name for the purpose of setting up a website similar to that of an authorized dealer is not a good faith use, as the Respondent would not be able to sell the Complainant’s products without the Complainant’s authorization. Consequently, the Respondent would never actually be able to use the domain name without infringing the Complainant’s trademark rights, because, so argues the Complainant, such use would necessarily constitute a violation of paragraph 4(b)(iv) of the Policy. The Complainant points out that the Respondent was on at least constructive notice of the Complainant’s trademark and service mark registrations, which predated the registration of the disputed domain name. Indeed, in the Complainant’s view, the Respondent’s answer to the Complainant’s cease and desist letter confirms that the Respondent was fully aware of the Complainant and its horse saddle business. According to the Complainant, the registration of a domain name that wholly incorporates the Complainant’s trademark, in the knowledge of the Complainant’s existence and business activities, suggests “opportunistic bad faith.”
In its Supplemental Filing, the Complainant has contested the allegations contained in the Response regarding the Respondent’s alleged status as an authorized dealer with permission to register the domain name at issue here. To that end, the Complainant has submitted a sworn affidavit of Mrs. Bob Marshall – the wife of the Complainant’s principal and, per the Respondent’s allegations, the person who orally agreed to make the Respondent an authorized dealer and granted permission to register the disputed domain name. In her affidavit, Mrs. Marshall denies both allegations, stating that “she never gave Ms. Johnson, or anyone else on Respondent’s behalf, permission to register or use the domain name or advised them that Respondent was an authorized dealer” (Complainant’s Exhibit M). Mrs. Marshall goes on to state that authorized dealers have minimum annual sales quotas, which the Respondent would have known if it was indeed an authorized dealer (id.).
Based on the foregoing, the Complainant requests the Panel to issue a decision that the disputed domain name be transferred to the Complainant.
B. Respondent
The Respondent argues that the Complainant’s saddles are widely known under many names, and that “Sports Saddle” is a generic term used by saddle manufacturers other than the Complainant, and, for that matter, also by bicycle manufacturers.
Furthermore, the Respondent alleges that it has made preparations to open a website using the domain name , in order to sell sports saddles manufactured by the Complainant. The Respondent states that its original plan (in 2000 or 2002) to begin selling the saddles was delayed by financial problems. The domain name currently remains “parked” with God for economic reasons, though the Respondent states that a functioning web site will be ready shortly. Free parking comes with advertising, which is, according to the Respondent, beyond its control.
The Respondent claims to be an authorized dealer of the Complainant’s products. According to the Respondent, Ms. Johnson telephoned the Complainant in 2000 and spoke with Mrs. Bob Marshall, who told her that there was no formal application for becoming a dealer and that all the Respondent needed to do was to place an order. The Respondent would then become an authorized dealer and receive the associated dealer discount. On January 25, 2000, the Respondent placed an order for 10 saddles with the Complainant (as evidenced by receipts produced by the Respondent with the Response); the Respondent claims to have ordered “a few more saddles” subsequently and into 2001. After that, the Respondent did not make any further orders due to financial constraints, but did plan to do so in the future. According to the Respondent, the fact that it did not place any further orders after 2001 does not mean that the dealership was terminated.
The Respondent also alleges that it obtained permission from the Complainant to register the disputed domain name . According to the Respondent, Mrs. Marshall orally stated that she did not see any reason why the Respondent could not open a website, such as the one operated by Ms. Rini (at “ ”), since the Complainant company was not on the Internet and had no plans to be. Subsequently, so alleges the Respondent, it registered the disputed domain name. The Respondent further alleges that the Complainant was very informal in its dealings; unlike most businesses, the Complainant did not offer contracts or applications to become a dealer.
The Respondent claims to be financially committed to , as it has renewed the registration yearly with the intention to use this domain name in the future. The fact that financial problems have prevented this from occurring for about six years should not, in the Respondent’s view, be held against it. It also queries why the Complainant waited so long to demand transfer of the domain name, if its current complaints are justified.
On the basis of the foregoing, the Respondent argues that it has a legitimate interest in the disputed domain name, and it denies having registered or used it in bad faith. The Respondent’s good faith is shown, it submits, primarily by its intention to open in the near future a website selling saddles manufactured by the Complainant.
In its reaction to the Complainant’s Supplemental Filing, the Respondent has repeated the allegation that it was an authorized dealer, and that its principal, Ms. Johnson, had obtained permission to register the disputed domain name. These allegations are contained in the written response to the Supplemental Filing; no sworn statement or other direct evidence of authorization has been supplied.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following elements:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The Respondent has registered and is using the disputed domain name in bad faith.
The Complainant carries the ultimate burden of proof on each of these elements (see Do the Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 (August 21, 2000)). They will be examined in turn below.
A. Identical or Confusingly Similar
The Panel finds that the Complainant holds rights in the mark SPORTS SADDLE, based upon its ownership of two registrations for this mark with the US Patent and Trademark Office. Notably, both of these registrations pre-date by at least four years the Respondent’s registration of the disputed domain name.
The Respondent’s defense that SPORTS SADDLE is a generic term is unavailing. Even assuming that the term could arguably be characterized as generic, the fact remains that it was registered as a trademark with respect to a limited class of goods and services; such registration creates a presumption of the registrant’s exclusive right to use the mark in commerce with respect to that class of goods and services (see Echelon Corporation v. RN WebReg, a.k.a. Rarenames, LLC, WIPO Case No. D2003-0790 (December 15, 2003)). Moreover, the Respondent admits that it intended to use the domain name to sell the Complainant’s products, i.e. horse saddles, thereby implicitly acknowledging that the term SPORTS SADDLE has acquired a special meaning to consumers – a meaning associated with the Complainant’s products.
Apart from the suffix “.com,” the disputed domain name is identical to the Complainant’s mark. The Panel therefore finds the first element to have been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists three non-exhaustive circumstances that, if found by the Panel to be present, demonstrate the Respondent’s rights or legitimate interests in the disputed domain name.
The crux of this case boils down to the applicability of subsections (i) and (ii) of paragraph 4(c) – i.e., whether the Respondent made demonstrable preparations prior to the dispute to use the disputed domain name in connection with a bona fide offering of goods or services, and/or has been “commonly known” by the domain name. Here, the Respondent alleges that it was made an authorized dealer of the Complainant in 2000 and received express authorization from the wife of the Complainant’s principal to register the disputed domain name. If correct, these circumstances would potentially establish the Respondent’s legitimate rights and interests in the disputed domain name, in accordance with subsections (i) and (ii) of paragraph 4(c), and indeed more generally.
The Complainant denies ever having made the Respondent an authorized dealer or having approved the registration of the disputed domain name. In this regard, the Complainant has submitted a sworn affidavit of Mrs. Bob Marshall, in which she attests to that state of facts. The Respondent, for its part, asserts in its written filings that such authorization was orally given by Mrs. Marshall. Other than that allegation, the only evidence submitted by the Respondent in relation to this point consists of invoices for the order of several saddles in 2000. No written evidence showing authorization to act as a dealer or to register the disputed domain name, or indeed establishing any sort of relationship with the Complainant company, has been presented.
Naturally, it is difficult on a paper record to resolve questions of credibility. On balance, however, the Panel finds that the Complainant has sufficiently established that the Respondent was not made an authorized dealer in 2000 or given consent to register the disputed domain name. In the first place, there is Mrs. Marshall’s sworn statement, which can properly be given greater weight than the unsworn assertions of the Respondent. Second, the Respondent’s conduct at the time the dispute arose lends credence to the Complainant’s position. Had the Respondent genuinely believed it was an authorized dealer, one would have expected the Respondent to say so when challenged on this precise point in the letter sent by the Complainant’s attorneys on March 7, 2006; instead the Respondent remained silent. Finally, the Respondent’s conduct prior to the time the dispute arose is more consistent with the Complainant’s version of events than its own. There is no indication that the Respondent took any action to use the domain name, or otherwise to engage in the sale of the Complainant’s products, from 2000 to 2006. Again, one would expect different behavior from a company that had been named an authorized dealer, and the Respondent’s conclusory references to financial problems do not, in the Panel’s view, undermine the inference of non-authorization resulting from such an extended period of inactivity.
The foregoing conclusion disposes of subsections (i) and (ii) of paragraph 4(c). Subsection (iii) is likewise of no avail to the Respondent, since on its own case its intent was to use the disputed domain name for commercial purposes.
In the light of the above, the Panel finds that none of the circumstances specified in paragraph 4(c) of the Policy, as evincing legitimate rights and interests, is present in this case. Nor, in the Panel’s, view are there other circumstances capable of establishing the existence of such rights or interests. Accordingly, the Panel finds the second element of the Complainant’s case to be established.
C. Registered and Used in Bad Faith
The Panel’s analysis with respect to the third element of the test under the Policy flows naturally from what has been said above. Based upon the temporally-prior trademark and service mark registrations of the mark SPORTS SADDLE, the Respondent was on at least constructive notice of the Complainant’s rights in the mark at the time of registration of the disputed domain name. In fact, it is likely that the Respondent was on actual notice, since it concedes being familiar with the Complainant and its well-known line of saddles at that time. Having found as a factual matter that the Respondent was not authorized to use the mark, it follows that the registration of the disputed domain name was not bona fide. Indeed, in these circumstances, the activity that the Respondent says it intended (and still intends) to undertake – selling the Complainant’s products using a domain name wholly incorporating the Complainant’s mark – would almost inevitably have resulted in a violation of Paragraph 4(b)(iv) of the Policy, i.e., attempting to attract Internet users for commercial gain by trading off of the Complainant’s good will in its mark.
With respect to the requirement of bad faith use, the fact here is that the disputed domain name has been and remains “parked” and, thus, has never actually been used. Prior Panels have recognized, however, that passive holding of a domain name can constitute bad faith use (see Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574 (August 10, 2000); Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131 (April 10, 2002)). The Panel finds that in this case, such passive holding by the Respondent can indeed be considered as bad faith use. The Panel has already found that the Complainant has rights in the mark wholly incorporated in the disputed domain name; that the Respondent was or should have been aware of this; and that the Respondent has been effectively “blocking” the disputed domain name for some six years without taking any demonstrable action at all in respect of it. Furthermore, and perhaps most importantly, good faith use appears precluded in the circumstances here (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000)). As was considered above, there seems to be no plausible use that the Respondent could make of the domain name that would not be illegitimate, i.e., would not constitute an act of passing off or an infringement of the Complainant’s rights under the Policy or trademark law.
On these grounds, the Panel finds that the domain name was registered and used in bad faith, and thus that the third element of the Complainant’s case has been sufficiently established.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
D. Brian King
Sole Panelist
Dated: August 18, 2006
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