WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Jeffrey Lewis v. Joel Wheeler, West Productions, Ltd Case No. D2010-0360 1. The Parties
The Complainant is Jeffrey Lewis of United Kingdom Great Britain and Northern Ireland, represented by Jean-Francois Labrecque of Canada.
The Respondent is Joel Wheeler1 of 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 March 9, 2010. On March 10, 2010, the Center transmitted by email to Network Solutions, LLC. a request for registrar verification in connection with the disputed domain name. On March 10, 2010, 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 March 16, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 5, 2010. The Response was filed with the Center on March 30, 2010. On April 5, 2010, the Complainant submitted a supplemental filing. The Respondent responded to this filing on April 5, 2010. A number of additional email exchanges took place between the Complainant and Respondent, via the Center, on April 5, 2010 and subsequently. The Panel has considered the information provided in these exchanges where it was of relevance to the proceedings and assisted in providing context to the dispute.
The Center appointed John Swinson as the sole panelist in this matter on April 12, 2010. 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
There is significant disagreement between the parties as to the factual circumstances surrounding this dispute.
The parties appear to be agreed that “Matamp” amplifiers were first designed in England by a man named Mat Mathias. After his death, the “Matamp” business (or at least the store and factory from which the amplifiers had been produced) was sold to the Complainant. Whether the Complainant had been associated with the original designer prior to the purchase is a matter of some debate, but is not relevant to this dispute.
The relationship between the Complainant and the Respondent is unclear.
The Complainant submits that the Respondent was a representative in the United States of its “Matamp” business, located in the United Kingdom, from 1997 until 2004.
The Respondent's version of events, as gleaned from its submissions and the information available on its website, is that the Respondent had been a customer of Matamp since 1994 and was informed in 1997 by the Complainant that he would be giving up the production of amplifiers. The Respondent agreed to purchase all of the remaining products and to become the sole distributor for Matamp products. The Respondent submits that he is the legal owner of the business “Matamp Distribution USA” which, from 1997 until 2005, paid the Complainant to make its Matamp USA products. The Complainant's services were terminated in 2005.
The evidence adduced by the parties does not make it clear which of these versions of events is accurate. It is apparent that between around 1998 and 2005 the parties had some kind of arrangement whereby the Respondent distributed Matamp amplifiers in the United States. It appears that there has since been a falling out between the parties and that there are a myriad of ongoing disputes between them.
Relevantly for the purposes of this dispute, the following facts appear to be established:
- The disputed domain name was registered by the Respondent on August 18, 1998.
- The Complainant registered the domain name in 2000.
- The Respondent obtained a licence to engage in business in the city of Spokane, Washington, under the name “Matamp Distribution USA” in 1999.
- The MATAMP trademark in the United States was held from 1977 until 1984 by Radio Craft (Huddersfield) Limited, which appears to have been the predecessor to the Complainant's business in England.
- The Complainant registered the MATAMP trademark in the United Kingdom in 1993 (No. 1482684).
- An application for the MATAMP trademark in the United States was filed by the Respondent in 2003 but later abandoned (allegedly as a result of pressure from the Complainant).
- The Complainant registered the MATAMP trade mark in the United States in 2008 (No. 3545080). That registration is currently the subject of a cancellation proceeding by the Respondent. 5. Parties' Contentions A. Complainant
The Complainant submits that it (namely the Matamp business) has been designing and selling sound amplifiers since 1969 under the Matamp name. It holds the registration for the MATAMP trademark in the United States. The Complainant submits that the Respondent was a representative of Matamp from 1997 until 2004, at which time he was discovered attempting to register the MATAMP trademark in the United States. The Complainant submits that the company owned by the Respondent sells the same products as Matamp, under the name “Electric amps”. The Complainant submits that the Respondent uses the disputed domain name to link to his own websites where he is in direct competition with Matamp. Finally, the Complainant submits that the Respondent has registered and used the disputed domain name in bad faith as he registered it when representing Matamp but did not return it upon that association coming to an end. The Respondent has continued to use the disputed domain name to advertise his own brand of sound amplifiers. B. Respondent
As noted above, the Respondent submits that he is the legal owner of Matamp Distribution USA. The Respondent submits that the Complainant has never had any legal ownership over the disputed domain name, did not pay for the creation of the website at the disputed domain name and did not provide the intellectual content contained on it. It is submitted that there was never any agreement to return the disputed domain name to the Complainant. The Respondent makes various allegations of bad faith on the part of the Complainant related to the registration of domain names using the name “Electric Amp” which belongs to the Respondent.
The Respondent submits that since the termination in 2005 of the agreement between the Complainant and Respondent to produce Matamp amplifiers, the disputed domain name has been used to sell used Matamp products. It no longer contains any sale information regarding new Matamp products. The Respondent submits that his business “Electric Amp, USA” does not sell the same products as Matamp. Rather, it sells new designs of amplifiers created in the United States. 6. Discussion and Findings
The Complainant bears the onus of demonstrating that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trade mark 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 has been registered and is being used in bad faith.
In the Panel's view, the Complainant is unable to meet this onus in the circumstances of this case. This decision should not be taken as determinative of the merits of the other disputes in which the parties appear to be involved regarding MATAMP. It is simply the case that the evidence presented by the Complainant in this case is not sufficient to discharge its burden of proof. A. Identical or Confusingly Similar
The Panel accepts that the Complainant currently owns the registrations for the MATAMP trade mark in the United States and the United Kingdom.
Ignoring the generic top level domain identifier “.com”, the disputed domain name reproduces the MATAMP trade mark in its entirety. The disputed domain name is therefore identical to the trade mark in which the Complainant has rights.
The Complainant has established the first element of the Policy. B. Rights or Legitimate Interests
Under paragraph 4(a) of the Policy, the Complainant has the burden of proving, prima facie, that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Once the Complainant has done so, the evidential onus shifts to the Respondent to rebut the presumption of an absence of rights or legitimate interests (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1).
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in the disputed domain name:
“(i) 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”
In the Panel's view, based on the available evidence, the Respondent is able to demonstrate the existence of a right or legitimate interest in the disputed domain name in this case.
Although the factual circumstances are far from clear, it appears as though the Respondent registered the disputed domain name pursuant to an arrangement with the Complainant to sell Matamp amplifiers in the United States. It is not apparent whether the Respondent:
(a) was an authorised reseller of the amplifiers for the Complainant; or
(b) had engaged the Complainant to make amplifiers under the MATAMP brand after the Complainant had, in essence, abandoned the brand.
If the latter, the Respondent would have a demonstrable legitimate interest in the disputed domain name under paragraph 4(c)(i) of the Policy.
In the case of the former, one would generally enquire whether the Respondent has used the domain name in order to engage in a bona fide offering of goods or services. Previous Panel decisions have established that to be bona fide in this context, a Respondent's offering must meet certain minimum requirements:
- The Respondent must actually be offering the goods or services at issue;
- The Respondent must use the disputed domain name to sell only the trademarked goods;
- The website at the disputed domain name must accurately disclose the relationship between the Respondent and the trademark owner; and
- The Respondent must not try to corner the market in all domain names reflecting the trademark in issue.
(See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903).
In this case, the Respondent is offering MATAMP products for sale through the disputed domain name. However, it appears, as the Complainant submits, that the disputed domain name links to other websites operated by the Respondent which sell amplifier products. The Respondent is thereby, albeit indirectly, offering other goods for sale through the disputed domain name. Additionally, there is no acknowledgement on the website at the disputed domain name that the Complainant currently owns the registered trademarks for MATAMP in the United States and the United Kingdom. For these reasons, the Respondent's use of the disputed domain name strictly speaking cannot be described as a bona fide offering of goods and services in accordance with the Oki Data principles.
Despite this, it would seem, at the least, that registration of the disputed domain name occurred with the Complainant's knowledge, either at the time of registration or at some point thereafter. The Respondent submits, and the Complainant does not appear to dispute, that the intellectual content of the website at the disputed domain name was created wholly by the Respondent. Depending on the precise nature of the relationship between the parties at the time of registration, these circumstances might be sufficient to give the Respondent a legitimate interest in the disputed domain name due to the Respondent having over ten years of uncontested use of the disputed domain name to sell MATAMP products.
In any event, the Respondent obtained a licence to do business under the name “Matamp Distribution USA” in 1999. The Respondent appears to have conducted business under that name for the past ten years or so, initially distributing new Matamp amplifiers and later becoming engaged in the sale of used Matamp products. The Panel is prepared to accept that these circumstances fall within paragraph 4(c)(ii) of the Policy, namely that the Respondent has become commonly known by the “Matamp” name.
The Complainant has not established the second element of the Policy. C. Registered and Used in Bad Faith
Given the Panel's finding regarding the second element of the Policy, it is unnecessary to consider whether or not the Respondent has acted in bad faith in the circumstances of this case.
However, given the Complainant's admission that the Respondent was acting in some kind of representative capacity for it when the disputed domain name was registered, it seems difficult for the Complainant to establish that the disputed domain name was registered otherwise than in good faith. If, as the Complainant submits, the Respondent was acting for the Complainant at the time the disputed domain name was registered, then it seems likely that the Respondent undertook the registration with the Complainant's consent, or at least with the Complainant's knowledge. The fact that the disagreement between the parties over ownership of the disputed domain name appears to have developed only fairly recently, despite the fact that the Complainant would likely have known about the registration for some time, supports this view.
The Policy requires that the disputed domain name is not only being used in bad faith but also that it was registered in bad faith (see Trade Me Limited v. Vertical Axis Inc,WIPO Case No. D2009-0093). Whether or not it was subsequently used in bad faith, the Complainant would find it difficult, in the circumstances of this case, and based on the evidence presented to the Panel, to establish that the disputed domain name was registered in bad faith. 7. Decision
For all the foregoing reasons, the Complaint is denied.
John Swinson
Sole Panelist
Dated: May 14, 2010
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