WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Budge Industries, LLC v. Joe Carrero Case No. D2010-0392 1. The Parties
Complainant is Budge Industries, LLC of Lansdale, Pennsylvania, United States of America, represented by the law firm Mendelsohn, Drucker& Associates P.C., United States of America.
Respondent is Joe Carrero of Brooklyn, New York, United States of America represented by Crawford & Bringslid Attorneys at Law P.C., United States of America. 2. The Domain Names and Registrar
The disputed domain names and are registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 12, 2010. On March 15, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain names. On March 16, 2010, GoD, Inc. 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 18, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 7, 2010, and the Response was filed with the Center on that date.
The Center appointed Richard G. Lyon as the sole panelist in this matter on April 14, 2010. The Panel finds that it was properly constituted and has jurisdiction over this administrative 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.
On April 16, 2010, the Panel issued Procedural Order No. 1, discussed below. 4. Factual Background
Complainant manufactures and sells a proprietary line of automotive vehicle covers. It holds a trademark registered on the principal register of the United States Patent and Trademark Office (USPTO) for BUDGE in international classes 9 and 12, for automotive accessory items. This mark was registered in 1993 based upon a claimed first use in commerce of 1953.
Respondent, an individual residing in Brooklyn, New York, registered the disputed domain names in January and May 2005. In April 2007 Respondent formed a company named CarCoverUSA, Inc. that he used to sell car covers and other automotive accessories, among them products manufactured by Complainant. Initially these were sold by mail order, but at some point Respondent also sold them through the website maintained one of the disputed names.1
The disputed domain names currently resolve to a page containing hyperlinks to companies selling tire covers, truck covers, and other automotive related products. According to screen shots submitted with the Response, in 2008 Respondent maintained an active website at which he sold Complainant's products. The Panel was unable to verify any prior content of the website maintained at the disputed domain name because an inquiry through the Wayback Machine at was returned with the notation “We are sorry, access to [disputed domain name] has been blocked by the site owner via robots.txt.” The screen shots indicate that Respondent's website included a disclaimer that read “CarCover USA is not to be confused with the manufacturer of Budge Car Covers and bridge truck covers Budge Industries.” Though in the final paragraph that otherwise contains small print on a four-page site, this disclaimer is in a larger type font and underscored, rendering it somewhat prominent.
The parties communicated by electronic mail some point; the earliest communication submitted with the initial pleadings is dated February 25, 2010. These communications address a number of subjects, among them Respondent's website at the disputed domain names, Complainant's supplying products to Respondent for resale, and transfer of the disputed domain names from the Respondent to Complainant. At one point Respondent proposed a transfer of the disputed domain names to Complainant for a USD 20,000 payment. Attached to communications in April 2010 are various drafts of a proposed document, entitled “Settlement Agreement,” that address these and other subjects. In each of these drafts one of the provisions requires that Respondent transfer the disputed domain names to Complainant. In an email to Respondent's counsel Complainant's counsel refers to this transfer as “not negotiable” and a requirement of the deal. 5. Parties' Contentions
It will become apparent that each party's contentions depend on disputed factual issues. A. Complainant
Complainant holds rights in BUDGE by reason of its USPTO-registered marks. The disputed domain names incorporate that mark as their dominant feature, and the addition of Complainant's principal product exacerbates the likelihood of confusion with the marks.
Respondent has never been known by either of the disputed domain names, and Complainant has never authorized Respondent to use its marks. Respondent “has no affiliation with Complainant.”
The placeholder or parking page at the disputed domain names is described by the Complainant as “non use,” and as such brings Respondent's conduct within the “warehousing” doctrine of the Telstra case.2 This use and Respondent's offer to sell the disputed domain names to Complainant for USD 20,000 US are classic examples of bad faith under the Policy. B. Respondent
Complainant has not shown ownership of any registered trademark, and has provided no support for its contention that adding “Car Cover” does not serve to distinguish the disputed domain names from Complainant's mark. That phrase was incorporated to reflect the name of Respondent's company, CarCoverUSA, Inc.
Respondent has a right and legitimate interest in the disputed domain names by reason of his use of them for legitimate business from 2008 through early 2010. He only took down the site content at Complainant's request made in connection with the discussions between the parties. Respondent initially registered the disputed domain names with the oral permission from Complainant's president given prior to registration. Respondent has always used a disclaimer of affiliation with Complainant.
The same facts, particularly Complainant's knowledge of Respondent's prior use of the disputed domain names and consent to register them, disprove any notion of registration or use in bad faith. Respondent made a number of changes to the disputed domain names, including disconnecting a forward to Complainant's website, at Complainant's request, further countering any showing of bad faith. Respondent's prior legitimate use makes the Telstra doctrine inapplicable. Respondent's offer to sell the disputed domain name came in response to Complainants request, as part of the negotiations between the parties earlier this year. The current placeholder page with hyperlinks resulted from Respondent's acceding to Complainant's request to discontinue web content; following that action software employed by the registrar automatically generated the links.
Respondent accuses Complainant of bad faith in commencing this proceeding, with knowledge of Respondent's prior use of the disputed domain names and consent to register them. Respondent contends that Complainant staged the negotiations to obtain deactivation of the disputed domain names and to provide a pretext for commencing this proceeding. 6. Discussion and Findings A. Identical or Confusingly Similar.
Complainant has demonstrated rights in its BUDGE marks, and “Budge” is the dominant feature of both the disputed domain names. The addition of Complainant's principal products to the disputed domain names makes consumer confusion even more likely than a simple copying. Paragraph 4(a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests.
Resolution of the remaining other two Policy elements in this case is complicated considerably by each party's failure to provide evidence to support factual contentions upon which it bases its contentions. “The Policy requires the Complainant to prove each of the three [Policy] elements,” Western Research 3000, Inc. v. NEP Products, Inc.,WIPO Case No. D2004-0755 (emphasis in original); Kabushiki Kaisha ASTY and Kabushiki Kaisha F.D.C. PRODUCTS v. LiHai,WIPO Case No. D2003-0963; see Rules, paragraphs 3(b)(xv) and 4(b)(ix).
Respondent's contention that he gained a right or legitimate interest by subsequently incorporating a company named CarCoverUSA, Inc. misses the point. The issue is rather Respondent's right or legitimate interest in using a term that relates to Complainant's mark as the dominant feature of the disputed domain names.
Respondent has alleged that Complainant expressly consented to Respondent's registration and use of the disputed domain name. Such consent would likely provide a defense, as a registration with the mark owner's permission can rarely be in bad faith. See, e.g., Greyson International, Inc. v. William Loncar,WIPO Case No. D2003-0805. If as Respondent alleges Complainant knew of Respondent's earlier use of the disputed domain name to sell Complainant's products as a reseller, Complainant's case would probably fail for not establishing registration or use in bad faith, and because Respondent would fall within the safe harbor of paragraph 4(c)(i) of the Policy. SAP AG v. SAP User List,WIPO Case No. D2009-1285; Authorize.Net LLC v. Cardservice High Sierra,WIPO Case No. D2008-0760.
The Complainant makes no mention of any communication or dealings between the parties until a few months prior to the filing of the Complaint. Respondent pleads earlier dealings, but includes no evidence of them in the Response. The first email message between the parties included with the Response corresponds to those included with the Complaint, from early 2010.
For this reason the Panel issued Procedural Order No. 1, requesting each party separately to identify the initial communication between Complainant (or one of its agents) on the one hand and Respondent (or one of its agents) on the other.3 This was done reluctantly, as the Policy and Rules call for prompt resolution of proceedings, normally on the Complaint and Response alone. Here though, where the Order called for a single, discrete document that by itself might provide a basis for resolving the proceeding, a Panel Order appeared to be appropriate. See Randan Corp. v. Rappazzini Winery,WIPO Case No. D2003-0353.
Complainant's president submitted his affidavit stating that to his knowledge the first communication between the parties came at his direction in August 2008. Complainant had received a letter from an automobile manufacturer complaining of an unauthorized display of the manufacturer's trademark in an advertisement on the disputed domain name. Complainant's president directed the company's counsel to write a cease-and-desist letter to Respondent. This letter (a copy of which was annexed to the affidavit) was the first written communication between the parties, and Complainant's first notice of Respondent's use of the disputed domain names.
Respondent submitted an affidavit identifying a telephone conversation he had with an employee of Complainant in late 2004 or early 2005. Respondent initiated the call to “obtain information from Complainant in furtherance of doing business with same.” Subjects discussed included “product information, deliveries, shipping, sizing applications, warranties, orders, and related information.” Date and content were sworn to “upon information and belief.”
Complainant's president's affidavit is consistent with the 2010 email negotiations described above, to which both parties refer in their initial pleadings. The draft agreements and correspondence indicate that the negotiations focused on Respondent's becoming a dealer for Complainant, not modification of existing arrangements. For example, the handling of warranty claims is discussed, with Respondent frequently inquiring about how various types of claims would be handled – something a current dealer would be expected to know. Both parties emphasize that transfer of the disputed domain names was an important part of the discussions. There is no mention in the correspondence of any earlier consent to resell Complainant's products or consent to use Complainant's marks. The only reference in the case file to either is the unsworn statement of Respondent's counsel in the Response.
So far as evidence (as opposed to allegations) is concerned all Respondent has shown is use of the disputed domain name to sell Complainant's products. There is no evidence that Respondent bought products from Complainant, and more importantly no evidence of permission to resell them or to use Complainant's mark. While an authorized reseller may under certain circumstances use its supplier's mark in a domain name under certain circumstances without consent,4 an unauthorized reseller has a much more difficult task of demonstrating a right or legitimate interest in a domain name incorporating the supplier's mark. A disclaimer of affiliation, standing alone, is insufficient.
Unsupported factual allegations, even if not denied, are of no moment, and unsworn “statements of counsel as to factual matters easily verifiable with documentary evidence or of which counsel has no personal knowledge are not evidence and carry little or no weight in a Policy proceeding.” Align Technology, Inc v. Web Reg/ Rarenames/ Aligntechnology.Com,WIPO Case No. D2008-0103). Consent, if it existed, was a matter within Respondent's control, yet he submitted no evidence (not even an “information and belief” statement in an affidavit) to support this critical element of his case. Respondent has not overcome Complainant's prima facie showing of no authorization, and Complainant has carried its burden of proof under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For similar reasons Complainant has proven bad faith in registration and use. Respondent sold Complainant's branded products and thus can hardly deny awareness of both Complainant and its mark at any time. Respondent's use of the disputed domain names for (so far as the record indicates) unauthorized resale of Complainant's products is an “intentional[] attempt[] to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location.” Policy, paragraph 4(b)(iv). 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 names and be transferred to the Complainant.
Richard G. Lyon
Sole Panelist
Dated: April 22, 2010
1 Respondent notes that one of the disputed domain names automatically diverts Internet users to the other, so the Panel's analysis applies equally to both.
2 Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. See also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 3.2 (“The lack of active use of the domain name does not as such prevent a finding of bad faith.”).
3 The operative portion of the Order requested “each party to furnish to the WIPO Arbitration and Mediation Center (the ‘Center') the first direct communication of any nature between Complainant, on the one hand, and Respondent, on the other. If the communication was written and not dated, the party shall indicate its date by sworn statement or affirmation under penalty of perjury made by a person with personal knowledge of the communication. If the communication was oral, the party shall indicate by sworn statement or affirmation under penalty of perjury made by a person with personal knowledge of the communication setting forth (a) the date of the communication, (b) the nature of the communication (e.g., face-to-face meeting, telephone conversation), (c) the name of each person who participated for each party, and (d) a brief summary of the communication.
Each party shall submit the requested material to the Center, without commentary or argument, by electronic mail no later than 5 pm Geneva time, on Thursday, April 22, 2010, and simultaneously to the other party as required by the Rules, but shall not transmit a copy directly to the Panel. Neither party shall make any further submission to the Center without the Panel's further express order.
As used in this Procedural Order, ‘written' communications include electronic mail, and each party includes that party's officers, directors, employees, and agents (including counsel).”
4 WIPO Overview, paragraph 2; Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. One of those circumstances is that the domain name be used for the supplier's products exclusively, a condition Respondent in this case cannot meet.
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