WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION C. Crane Company Inc. v. Robbie Crossley Case No. D2009-0815 1. The Parties
Complainant is C. Crane Company Inc. of Fortuna, California, United States of America, internally represented.
Respondent is Robbie Crossley of Bridgeville, California, United States, appearing pro se. 2. The Domain Name and Registrar
The disputed domain name is registered with Blueberry Hill Communications, Inc. dba . 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 19, 2009. On June 19, 2009, the Center transmitted by email to Blueberry Hill Communications, Inc. dba a request for registrar verification in connection with the disputed domain name, and Blueberry Hill Communications, Inc. dba 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 July 2, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 22, 2009. The Response was filed with the Center on July 22, 2009.
The Center appointed Richard G. Lyon as the sole panelist in this matter on July 28, 2009. The Panel finds that it was properly constituted and has jurisdiction over this proceeding. The Panel has submitted his 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 sells radios, radio accessories, and several types of light-emitting diode (LED) lighting products. The latter category includes a line of LED light bulbs branded as “Geobulb”. In April 2008 Complainant applied to the United States Patent and Trademark Office (USPTO) for registration of GEOBULB for LED light bulbs, claiming a first use in commerce of January 30, 2008. Complainant's application was published for opposition in February 2009 and the mark was registered on the principal register of the USPTO on May 12, 2009.
Respondent is an individual who at one time was employed or engaged by Complainant.1 As discussed in Section 6-C below, it is not entirely clear when Respondent first registered the disputed domain name; registration by someone first occurred in February 2008, and Respondent either modified his earlier registration in February 2009 or at that time acquired the disputed domain name from a third party.
In June 2009 the disputed domain name resolved to a website that included comparisons of various types of LED light bulbs, with links to information about LED lighting generally, various lighting products, and tabs to pages entitled “news/press”, “contact us”, and “become a distributor”. Earlier Respondent had automatically redirected Internet users who accessed the disputed domain name to Complainant's principal web site. When the Panel attempted to access the disputed domain name he received a standard error message: “This website cannot be found”.
On February 12, 2009, Respondent wrote to Complainant, advising that the disputed domain name would be “transfer[red] to [Respondent's] account” shortly. Respondent stated: “I've considered some ideas on what to do with the domain, but I would like to do something beneficial for both C.Crane and myself. Let me know if you have any suggestions on what would be most beneficial for your company”.
Complainant replied by email on June 1, 2009, advising Respondent that its use of the disputed domain name was “unauthorized and contrary to [Complainant's] trademark and fair use of ‘GeoBulb'”. Complainant requested that Respondent end any use of the disputed domain name, in particular redirection to Complainant's website.
Respondent replied the following day, June 2, stating that he was “in the process of selling” the disputed domain name. Respondent further stated that “if you are interested in purchasing this domain, please let us know”. Respondent referred to the bulb comparisons then on the site, stating that “this will allow you to use your decrease in geo sales this month (if any) to determine how much you are willing to pay for this domain”. Complainant replied the same day, again requesting termination of any use of the disputed domain name. 5. Parties' Contentions A. Complainant
Complainant contends as follows:
1. Complainant has rights in the word “Geobulb” by reason of its USPTO-registered trademark. The disputed domain name is confusingly similar to this mark, the only difference being Respondent's use of the plural (Geobulbs) rather than the singular.
2. Complainant has never authorized Respondent to use its mark. Respondent's use, for a commercial site is therefore not bona fide and does not confer on Respondent any right or legitimate interest in the disputed domain name. Respondent has never been commonly known by the disputed domain name and its use of it has been for commercial gain by misleading and diverting consumers by use of Complainant's trademark.
3. Respondent registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring it to Complainant, the mark owner, for valuable consideration in excess of Respondent's out of pocket costs, as evidenced by the email correspondence quoted in the preceding section. Respondent's short-lived use of the disputed domain name was intended misleadingly to divert Internet users seeking Complainant to Respondent's website. Respondent had full knowledge of Complainant's trademark and business practices, including Complainant's “intent to use such trademark” while in Complainant's employ. B. Respondent
Respondent contends as follows:
1. Though noting that the disputed domain name is not identical to Complainant's mark, Respondent does not seriously contend that it is not confusingly similar.
2. Respondent's use of the disputed domain name has been entirely noncommercial. He has used it only as a “product comparison site with no offering of any products for sale”. Respondent owns other domain names and has never prevented use of any domain name by the corresponding trademark owner. Respondent did not register the disputed domain name for the purpose of selling it to Complainant or a competitor of Complainant. In fact, Respondent registered it “to help promote the Complainant's products via the Complainant's ‘affiliate program'”, as the quoted email communications describe.
3. The disputed domain name was originally registered in February 2008, before Complainant even applied for its trademark, and therefore could not have been registered in bad faith. As stated in the preceding paragraph, all Respondent's use of the disputed domain name has been legitimate and therefore not in bad faith. 6. Discussion and Findings A. Identical or Confusingly Similar
Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. Complainant's trademark rights are measured as of the date the Complaint is filed, not the date on which the disputed domain name was registered. WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview”), paragraph 1.4; Michelman, Inc v. Internet Design,WIPO Case No. D2007-1369; Valve Corporation v. ValveNET, Inc., ValveNET, Inc., Charles Morrin, WIPO Case No. D2005-0038. When it filed its Complaint on June 19, 2009, Complainant's mark had been registered on the principal register of the USPTO. As the plural is obviously similar to the singular, the disputed domain name is confusingly similar to Complainant's mark. B. Rights or Legitimate Interests
Complainant has made its prima facie case that Respondent lacks rights or legitimate interest in the disputed domain name, as it is uncontested that Complainant never authorized Respondent to use its mark and Respondent has not been commonly known by the word “Geobulb”. The burden of proof therefore shifts to Respondent to provide evidence of a right or legitimate interest.
Respondent used the disputed domain name in two different ways. The first was an immediate redirection to Complainant's website. Without Complainant's permission Respondent's use in this manner is not bona fide or legitimate. The fact that such use was intended by Respondent only to be temporary pending Complainant's reply to Respondent's first email about Complainant's desire to acquire or use the disputed domain name only underscores this impropriety.
Respondent's second use, as a “comparison site”, fares no better, for slightly different reasons. As with the original redirection, Respondent's emails make it clear that this was also simply a temporary use pending Complainant's response to Respondent's inquiries about joint use or Complainant's possible purchase of the disputed domain name from Respondent – an illustration of how the disputed domain name might be put to use as a means of diverting sales from Complainant. Respondent's suggestion that Complainant factor into a possible purchase price of the disputed domain name “any decrease in [Geobulb] sales” caused by the so-called “comparison site” betrays his intention and the principal purpose of this page. In this context, even if no products were actually sold through the disputed domain name, the “comparison site” was commercial – a means to get a higher price from sale of the disputed domain name or otherwise acquire (to use Respondent's phrase) “something beneficial for . . . myself” – and not legitimate for purposes of paragraph 4(a)(ii) of the Policy.
The Panel may quickly dispose of Respondent's contention that he registered and used the disputed domain name for Complainant's benefit, thus rendering its use legitimate. Absent an express contractual right to do so or a similar right implied by reason of a contractual relationship,2 a third party has no right to use another's mark, in a domain name or indeed for any other commercial purpose (notwithstanding perhaps conceivable fair uses). Stated differently, the third party may not unilaterally determine whether use of another's mark is appropriate or “beneficial” to the mark owner.
Paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith
Respondent is correct in arguing that ordinarily a disputed domain name that is registered prior to a complainant's accruing trademark rights could not have been made in bad faith: “Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant's non-existent right.” (WIPO Overview, paragraph 3.1). Respondent neglects to mention, however, that this Consensus view has an exception:
“However: In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. This often occurs after a merger between two companies, before the new trademark rights can arise, or when the respondent is aware of the complainant's potential rights, and registers the domain name to take advantage of any rights that may arise from the complainant's enterprises.” (Ibid.)
The record demonstrates that Respondent fits foursquare within this proviso.
It is not entirely clear whether Respondent first registered the disputed domain name in February 2008, the date the WhoIs record indicates it was first created, or acquired it from an unrelated third party in February 2009, the date the WhoIs record indicates the registration was modified. Compare Respondent's statements: “Can the renewal of a domain name registration made in bad faith convert a name originally registered in good faith to a name registered in bad faith for the purpose of the Policy?” and “the domain transfer to my account should be complete within the next 24 hours” (dated February 12, 2009). If Respondent first acquired the disputed domain name on the latter date, that is the date for determining bad faith in registration under the Policy. That is usually true even if the new registration was by an entity related to the earlier registrant. BME, LLC. v. Gregory Ricks / Gee Whiz Domains Privacy Service,WIPO Case No. D2008-0882.3 At that date Complainant was actively selling its Geobulb products and Respondent knew this very well, as evidenced by its inquiry about joint use of the disputed domain name and his prior status as an employee or contractor who helped devise Complainant's affiliate program. Those facts make it clear that Respondent knew of Complainant, its mark, and its Geobulb products and registered the disputed domain name with them in mind. Without Complainant's authority to do so, this meets well-established criteria for registration in bad faith.
If on the other hand Respondent first registered the disputed domain name in February 2008, that date is determinative, as renewal of a current registration absent extraordinary circumstances is not deemed “registration” for purposes of paragraph 4(a)(iii) of the Policy. WIPO Overview, paragraph 3.7, Consensus view. In February 2008 Respondent similarly would have had knowledge of Complainant, its mark, and its products, by reason of his employment status and participation in developing the affiliate program. In such circumstances Respondent still registered the disputed domain name in bad faith even though Complainant did not file its trademark application for another three months. As Respondent knew of Complainant, its products, and its intention to use Geobulb for a product, Complainant need not provide evidence of particular association of the word “Geobulb” with Complainant, and in the present circumstances the mark would give Complainant enforcement rights under the Policy against Respondent if it never matured to registered status or even was proven incapable of registration. Salt River Community Gaming Enterprises (d/b/a Casino Arizona) v. Fort McDowell Casino,WIPO Case No. D2007-0416, and cases there cited.
The panel's statement in ExecuJet Holdings Ltd. v. Air Alpha America, Inc.,WIPO Case No. D2002-0669,4 is particularly apt here (emphasis supplied): “Another example [of finding bad faith in registration when the disputed domain name is registered before a trademark is registered] concerns the situation where a registrant based its registration of the domain name on its insider knowledge of the intentions of a (former) business partner or employer in relation to the latter's development of a new trademark. From the intent of the Policy, it is clearly irrelevant whether a registrant intended to abuse an existing trademark right or one which that registrant specifically knew would arise.”
Immediately after acquiring or modifying its registration of the disputed domain name in February 2009 Respondent proposed to Complainant either joint use or a possible sale of the disputed domain name. Either of these indicates an attempt at profit for Respondent from its registration of a domain name to which it has demonstrated no right or legitimate interest and which incorporates Complainant's mark. See Freddy Adu v. Frank Fushille,WIPO Case No. D2004-0682 (proposed joint use of the disputed domain name for profit held use of bad faith and a reason for inferring registration in bad faith); see also Policy, paragraph 4(b)(i), giving as an example of bad faith “circumstances indicating that you [Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name”. Either use is classic bad faith.
Complainant has met the requirements of paragraph 4(a)(iii) of the Policy. 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 Complainant.
Richard G. Lyon
Sole Panelist
Dated: August 10, 2009
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