WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION BRB Brandenburger Vermarktungs und Dienstleistungsgesellschaft MBH v. Helds Discount Knives Case No. D2009-1337 1. The Parties
The Complainant is BRB Brandenburger Vermarktungs und Dienstleistungsgesellschaft MBH, Nauen / Ot Lietzow (hereafter, BRB), Germany, represented by Erickson, Kernell, Derusseau & Kleypas, LLC, United States of America.
The Respondent is Helds Discount Knives, Colton, Oregeon, United States of America, represented by Bullivant Houser Bailey, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2009. On October 9, 2009, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On October 9, 2009, Network Solutions, LLC 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 October 20, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 9, 2009. The Response was filed with the Center on November 10, 2009.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on November 19, 2009. 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.
On November 19, 2009, the Complainant, through the Center, sent to the Panel for reference a PDF file of the decision inWIPO Case No. D2004-0466, which the Complainant said had been inadvertently omitted during the initial filing of the Complaint. 4. Factual Background
The factual background is taken from information provided in the Complaint and in the Response.
The Complainant manufactures, among other things, knives, including hunting knives. It is the owner of trademark Reg. No. 870,843, PUMA, for knives, registered at the United States Patent and Trademark Office (USPTO). The chain of title between the original registration of the trademark and its present ownership is as follows.
Reg. No. 870,843 for hunting and sporting knives and sheaths was initially registered to Puma-Werk Lauterjung Sohn (Puma-Werk), a partnership organized under the laws of the Federal Republic of Germany, on June 10, 1969.
On October 21, 1983, Puma-Werk assigned Reg. No. 870,843 to Puma-Werk Lauterjung & Sohn Gmbh & Co. KG, a limited partnership organized under the laws of the Federal Republic of Germany (Puma-Werk KG)
On March 4, 1992, Puma-Werk KG assigned Reg. No. 870,843 to Puma-Werk Lauterjung & Sohn Gmbh & Co. KG Schneidwarenmanufactur, a limited partnership organized under the laws of the Federal Republic of Germany (Puma-Werk Schneidwarenmanufactur).
On June 18, 2001, Puma-Werk Schneidwarenmanufactur assigned Reg. No. 870,843 to Lagos GMBH (Lagos), a limited liability company organized under the laws of the Federal Republic of Germany.
On June 5,2009, Lagos assigned Reg. No. 870,843 to the present Complainant, BRB.
Thus, reference to relevant actions taken by the Complainant in this complaint encompass those of its predecessor companies.
The Respondent has, for nearly 10 years, retailed knives including the products of the Complainant, over the Internet through the disputed domain name. The Complainant's product was supplied to the Respondent through the Complainant's then exclusive distributor in the United States, Coast Cutlery Company Inc. (Coast Cutlery).
The Complainant terminated the Exclusive Distribution Agreement with Coast Cutlery on August 2, 2008, and subsequently appointed Puma Knife Company USA its exclusive distributor in the United States. The essence of the dispute is that the Complainant wants the disputed domain name now to be transferred to Puma Knife Company USA, which the Respondent has declined to do.
The disputed domain name was registered on June 23, 1999. 5. Parties' Contentions A. Complainant
Declarations executed by the attorney of record for the Complainant in this matter and by the General Manager of, in effect, the Complainant, attested to the authenticity of copies of key documents submitted in evidence.
The Complainant contends that it is the legal owner of the trademark PUMA for knives and has submitted documentary evidence to that effect. The Complainant says that the disputed domain name is confusing similar to its trademark PUMA, the additional word “knives” not detracting from but enhancing the confusion with its trademark in the field of knives.
The Complainant further contends that the Respondent has no right or legitimate interest in the disputed domain name. The Respondent is not authorized or licensed by the Complainant to use the PUMA trademark and the Respondent is not an authorized dealer or distributor of Puma knives.
The Complainant says it granted the exclusive distributorship rights for PUMA knives in the United States to Coast Cutlery beginning January 1, 1991 and renewed the same on January 31, 1998. The exclusive distributorship granted to Coast Cutlery included the right to use the PUMA trademark for the purpose of distribution and marketing. The agreement did not grant Coast Cutlery the right to sublicense. The agreement specified that “the Distributor is not an agent of Puma-Werk” and that the Distributor “is not granted any express or implied right or authority to create or confirm any obligation on behalf of or in the name of Puma-Werk or to bind Puma-Werk in any manner whatsoever”.
The Complainant further contends that the disputed domain name was registered and is used in bad faith. Because the Respondent registered the disputed domain name without the Complainant's permission and because the Respondent has no rights in the PUMA trademark and did not have any rights when the disputed domain name was registered, the registration was in bad faith.
The Complainant says it become aware of the Respondent's use of the disputed domain name after the website became active. The Complainant tolerated the Respondent's use of the disputed domain name in association with the sale of knives as it appeared such use was also tolerated by Coast Cutlery, which was supplying knives to the Respondent. Now that Puma Knife Company USA is the Complainant's distributor, the Respondent was given seven days in which to transfer the disputed domain name, otherwise the Respondent would no longer be considered an authorized Puma dealer. No such transfer took place and the Respondent therefore is no longer authorized or licensed by the Claimant to use the PUMA trademark or the disputed domain name.
It is contended that the Respondent's refusal to transfer the disputed domain name to the Complainant is likely to lead to consumer confusion. Furthermore the Respondent has demanded $500,000 for the disputed domain name to be transferred, which further demonstrates bad faith.
The Complainant has cited certain WIPO UDRP decisions that it wishes the Panel to consider as precedent.
The Complainant requests by way of remedy that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent denies the Complaint and asks that the disputed domain name not be transferred.
Declarations executed by the attorney of record for the Respondent in this matter, and by the President and co-owner of the Respondent company, attested to the authenticity of copies of key documents and the correctness of certain facts stated in evidence.
The Respondent does not contest the Complainant's ownership of the trademark PUMA, but contends that the disputed domain name is neither identical nor confusingly similar to the trademark. The term PUMA is at best descriptive of hunting knives (PUMA in German means cougar or mountain lion), but is more likely generic. It is neither fanciful nor famous. Moreover, when the terms “puma” and “knives” are typed into a Google search, “Puma Knives & Coast LED Lighting Products” (the Respondent) and “Puma Knife Company USA - Official Online Store for Hunting, Sport ” both appear, therefore, there would be no consumer confusion as to which is the official Puma Knife site.
It is contended that the website of the disputed domain name is clearly that of the reseller, Held's Discount Knives (Respondent), not the manufacturer (Complainant). There is no attempt to confuse the consumer into believing that there is some association between Held's Discount Knives and the Complainant and the consumer is not likely to believe there is any such association. The Respondent's website now contains the disclaimer: “Please be advised that there is no association between Held's Discount Knives and PUMA GmbH IP Solingen or PUMA Knife Company USA (together, “PUMA”) and that Held's Discount Knives claims no right, title or interest in or to any PUMA trademark, service mark or other intellectual property. Held's Discount Knives acts solely as a reseller of Puma knives.”
Numerous other unrelated websites contain references to or metadata for Puma knives.
The Respondent further contends that it has used the disputed domain name in connection with a bona fide offering of goods and therefore has rights and legitimate interests. The Complainant submits documentation showing that at least until March 2, 2009, the Respondent was an authorized Puma dealer. Furthermore the Complainant has impliedly or expressly consented to the use of the disputed domain name for nearly 10 years and has engaged in bad faith tactics in filing the Complaint.
For nearly 10 years prior to the February 19, 2009 letter from Complainant demanding transfer of the disputed domain name, the Respondent made uninterrupted use of the disputed domain name to market and to sell the Complainant's branded products, along with the branded products of other knife and sporting goods companies, investing substantial sums of money building its on-line presence. The Respondent has no brick and mortar presence and, in 1997, when George and Susan Held launched the Respondent's business, they both met Mr. Harald Lauer, the General Manager of Puma GmbH IP Solingen and discussed their plans to sell Puma knives. In 2005, Mr. Lauer gave them a personal tour of Puma's German facility. Between 2005 and January 2009, Mr. Lauer sent the Respondent a White Hunter knife each month (an approximate $500 retail value) for delivery to any of the Respondent's customers that had purchased over $250 worth of Puma products that month.
During that entire period, the Complainant never advised the Respondent that it took issue with the Respondent's use of the disputed domain name, which it was aware of and consented to. Furthermore, between November, 2002 and March 2009, the Puma Knife Company web site listed Held's Discount Knives as its primary USA dealer in the “on line dealer” portion of its German website, along with a direct link to the Respondent's website under the disputed domain name.
The Respondent says that the Complainant's inaction over a 10 year period was not negligence on the Complainant's part, but was overt consent. Now, the Complainant seeks to obtain the disputed domain name and benefit from the goodwill it allowed the Respondent to build. By discontinuing to supply the Respondent with product, the Complainant has harmed the Respondent's business and acted in bad faith. The Respondent has always acted in good faith.
The Respondent further contends that the disputed domain name was neither registered nor used bad faith, but that its use was ratified or authorized by the Complainant. The Complainant admits that it “did become aware of Respondent's use of the domain name after the website became active [in 1999],” but took no action then. The Complainant further admits that it “tolerated” the Respondent's use of the disputed domain name for the next 10 years.
The Respondent says it is clear that the disputed domain name was not registered or acquired primarily for the purpose of selling, renting, or otherwise transferring to the Complainant or to a competitor of the Complainant for valuable consideration. It is clear that the domain name was not registered in order to prevent the Complainant from reflecting the mark in a corresponding domain name, and the Respondent did not engage in a pattern of such conduct. The Complainant and the Respondent are not competitors, they were in a manufacturer/dealer/distributor/reseller relationship, and the disputed domain name was not registered in order to capture consumers through confusion or to disrupt the Complainant's business. The Respondent helped the Complainant to sell more knives, a fact that was recognized when the Complainant set up the direct link from its German website to the Respondent's website.
The Respondent contends that the Complainant has engaged in reverse domain name hijacking and asks the Panel so to find. The Respondent submits citations and definitions related to reverse domain name hijacking from previous WIPO UDRP cases. 6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required:
“…to submit to a mandatory administrative proceeding in the event that a third party (a ‘complainant') asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute. A. Identical or Confusingly Similar
The Complainant must prove that it has rights in a trademark, whether registered or otherwise. The Respondent has conceded the Complainant's rights in the trademark PUMA.
The Complainant must then prove that the disputed domain name is identical or confusingly similar to that trademark. The Respondent asserts that it is not. The disputed domain name is , of which the gTLD component “.com” may be disregarded in the assessment of confusing similarity. Clearly the disputed domain name reproduces prominently the Complainant's trademark, and the additional descriptive word “knives” does nothing to detract from the confusing similarity, particularly given that the trademark is used in the context of knives. The Panel finds for the Complainant in the terms of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must prove that the Respondent does not have a right or legitimate interest in the disputed domain name. The Complainant has asserted that the Respondent has no such right on the grounds that the trademark owner has never expressly granted to the Respondent any licence or authority to use the trademark or to register a domain name into which it is incorporated.
The Complainant has also explained its position to the effect that any authority to use the trademark PUMA that may have been granted to its United States exclusive distributor Coast Cutlery, did not make Coast Cutlery an agent of the Complainant, and that Coast Cutlery had no authority to create or confirm any obligation on the Complainant's behalf. Thus, in effect, the Complainant's position is that neither it nor Coast Cutlery (the Respondent's immediate supplier) granted the Respondent any authority to incorporate the trademark into a domain name.
The Respondent relates a version of events that is not in conflict with the foregoing, and is not directly contradicted by the Complainant, but presents a picture of a harmonious relationship in which the Respondent's original intention to sell Puma knives in 1999 was responded to positively with a tour of the Complainant's production facility, a steady supply of product through the United States Distributor, and promotional rewards from the Complainant to the Respondent. Neither the Complainant nor the Respondent has expressed underlying discontent with a business relationship that endured for nearly 10 years.
Paragraph 4(c)(i) of the Policy recognizes that the Respondent may be able to establish rights or legitimate interests in a disputed domain name by proving:
- before any notice to you 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
On the face of the matter, the Respondent has for nearly 10 years been operating an Internet business offering PUMA branded knives and other goods for sale. There is no evidence to suggest that the business has ever been other than genuine. It is not in dispute that the disputed domain name has, for all that time, been used “in connection with” that business, and that it has been so since well before - in fact about nine years before - any notice of the dispute.
In order to succeed with a defence in the terms of paragraph 4(c)(i) of the Policy, the Respondent must satisfy the Panel that the offering of goods or services was bona fide, that is to say, done honestly, genuinely, and without intention to deceive. This might be negated if the Respondent were to have appropriated another's trademark deliberately without authority. The present decision in this respect hinges on whether the Respondent had reason to believe it had a right to register the disputed domain name.
The Respondent has explained in evidence how it invested effort in the disputed domain name in order to sell the Complainant's product with the evident acquiescence of the Complainant. To the Complainant's credit, it says itself:
“Complainant did become aware of Respondent's use of the domain name “www.” after the website became active. Complainant tolerated Respondent's use of the domain name in association with the sale of knives as it appeared such use was also tolerated by Complainant's then United States distributor, Coast Cutlery, which was supplying knives to Respondent for resale.”
Whilst the convention under paragraph 4(a)(ii) of the Policy is for the Complainant to state a prima facie case that the Respondent may answer in the terms of paragraph 4(c) of the Policy, nevertheless the onus of proving that the Respondent does not have a right or legitimate interest remains with the Complainant. The Panel is also conscious of the fact that the disputed domain name was registered on June 23, 1999, which pre-dated the promulgation of the UDRP, in other words, before the development of the now-extensive jurisprudence over rights to a domain name. The Panel notes the Complainant's claim that the Respondent did not have actual rights in the disputed domain name, and equally notes that the Respondent appears to have used the disputed domain name in a genuine, honest and non-deceptive manner. Having regard to all the evidence presented and to the circumstances of the time, the Panel finds the arguments advanced by the Complainant and the Respondent respectively to be finely balanced, which by convention, means the Complainant has failed to tip the balance in its favour and the benefit of the doubt must be given to the Respondent.
Thus, the Panel finds for the Respondent in the terms of paragraph 4(a)(ii) of the Policy. Whilst it is not strictly necessary to proceed to consider bad faith, this will be done, partly because the finding in that respect is not finely balanced but rather clearly in favour of the Respondent. C. Registered and Used in Bad Faith
The Complainant is required to prove that the disputed domain name was registered and is being used in bad faith. The wording of paragraph 4(a)(iii) of the Policy clearly requires the Complainant to establish two different things in order to succeed, namely that the past act of registration of the disputed domain name was committed in bad faith, and that there is (or has been in the period to which the Complaint refers) use of the disputed domain name in bad faith. For present purposes it will be sufficient to focus on bad faith registration, which will require the Complainant to prove bad faith on the part of the Respondent on June 23, 1999.
The facts, scarcely in contention, are that the Respondent contemporaneously set up in business to sell knives including Puma knives, met the manufacturer amicably, established a supply of product through the United States distributor, and instituted the disputed domain name. Within the context of those actions, the Complainant has offered no tangible evidence that could establish bad faith by the Respondent at the time of registration of the disputed domain name, and the Panel can see no hint of bad faith.
Whilst the actions of the Respondent in registering the disputed domain name on June 23, 1999, are uninfluenced by what may have happened over the succeeding 9 years, it has to be observed that the Complainant says it knew about the registration and use, yet took no action. The Exclusive Distribution Agreement stated under article 7 (Marketing/Advertising): “1.The parties shall closely cooperate in all questions concerning marketing and advertising and give each other all necessary information, counsel and advice.” Thus it may reasonably be concluded that the Complainant, when it became aware of the registration and use of the disputed domain name, which by inference was some years ago, did not consider there to have been an act of bad faith registration or use sufficient to motivate any action on its part.
From the facts, the inescapable inference is that the Complainant has recently made business decisions leading it to regret that it did not register or acquire the disputed domain name initially. The Complainant's retrospective view is stated as follows:
“Because Respondent registered the domain name without seeking or obtaining Complainant's permission and because Respondent has no rights in the PUMA trademark and did not have any rights in the PUMA trademark when the domain name was registered, Respondent registered the “www.” domain name in bad faith.”
The Panel is unable to accept that line of reasoning. It may be that the disputed domain name was registered without permission, and that the Respondent does not have rights in the trademark PUMA, but it does not follow that “because” of those things, the registration was in bad faith. On the contrary the evidence convinces the Panel that the registration was made in good faith, if based upon an erroneous understanding. Error does not necessarily equate with bad faith.
A letter dated August 11, 2009 from the Complainant's representative to the Respondent's representative sets out the Complainant's position succinctly and helpfully. The letter says at point 11:
“To the extent Helds [Respondent] were previously authorized by Coast Cutlery to use the “www.” domain name, Coast Cutlery no longer has the authority to grant such authorization, and Puma-Werk has withdrawn its consent to continued use of the domain name. Puma-Werk also requested that Helds transfer the “www.” domain name to Puma Knife Company USA and Helds has refused to do so.”
That letter does much to confirm a chain of de facto authorization or consent flowing from the Complainant through Coast Cutlery to the Respondent, allowing or acquiescing in the use of the disputed domain name, until such consent was recently withdrawn. It does much to confirm a climate of understandable belief by the Respondent that its registration and use of the disputed domain name were at the least acquiesced in by the Complainant through Coast Cutlery, if not positively endorsed.
It would appear that until recently the Complainant and the Respondent were in a productive business relationship and were not in dispute. The UDRP is in place to deal with what amounts to abusive registration of a domain name, but does not extend to trademark disputes as such. In so far as the true basis of the present dispute appears to revolve around the current usage of a trademark, it may properly belong in another forum. 7. Reverse Domain Name Hijacking
The Respondent claims that the actions of the Complainant in bringing this dispute amount to an attempt at reverse domain name hijacking and requests the Panel to make such a finding.
Reverse domain name hijacking is defined in paragraph 1 of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Paragraph 15(e) of the Rules states in part: “If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”.
Reverse domain name hijacking does not equate with a decision in favour of the Respondent, and such serious findings of abuse of process are found to be warranted by panels in a comparatively small number of cases under the Policy. Such findings, where they do occur, may be reserved for cases where, for instance, the Panel finds strong evidence to suggest that an unsophisticated domain name holder was hit with a mighty and intimidating complaint in the hope of dislodging a sought-after domain name without justification.
Although in the present case, having considered all the evidence the Panel considers that the Complainant had little prospect of establishing bad faith registration, it cannot be concluded that a good try amounted to bad faith on the Complainant's part. The Complaint was as least arguable. The Panel read the relevant citations submitted but distinguished them. Furthermore a finding of reverse domain name hijacking might not be helpful to any future restoration of dispassionate negotiations between the Parties. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Dr. Clive N.A. Trotman
Sole Panelist
Dated: December 3, 2009
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