The Complainant is Nitesite Limited of York, the United Kingdom of Great Britain and Northern Ireland, represented by Appleyard Lees, the United Kingdom of Great Britain and Northern Ireland.
The Respondents are Dan Cox of Utah, United States of America, represented by Clyde Snow & Sessions, United States of America; Nitesite LLC of Utah, United States of America, represented by Marshall Olson & Hull, P.C. United States of America; and, Justin Larsen of Utah, United States of America, represented by Mitchell Barlow & Mansfield, PC. As discussed below, the three Respondents will hereafter be referred to collectively as the "Respondent". 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 5, 2015. On August 6, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 6, 2015, the Registrar transmitted by email to the Center its verification response confirming that Dan Cox, one of the listed Respondents, is listed as the registrant and providing the contact details and contact information for the disputed domain name.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 14, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 3, 2015. On September 3, 2015, the Center received the Respondent's request for an extension to submit its Response. The Center granted the extension until September 8, 2015. On September 8, 2015, the Center received the Respondent's motion to suspend or terminate the proceedings and grant extension to submit response. The Response was filed with the Center on September 9, 2015.
The Center appointed Alistair Payne as the sole panelist in this matter on September 28, 2015. 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
The Complainant, based in the United Kingdom is the manufacturer of the patented NITESITE optical vision products. It was incorporated in January 2011 and is the registered proprietor of the combined word and logo NITESITE mark being Community trade mark registration number 012271169, filed on October 31, 2013 and of United States trade mark registration number 4746014, filed on November 1, 2013. It has controlled the domain name since July 2011 and the domain name since November 5, 2013. These domain names resolve to a website at which it operates a website for its products and business.
The Respondent is based in Utah in the United States. It signed a letter of intent with the Complainant on October 3, 2013 and subsequently an exclusive distributorship agreement for distribution in the United States of its NITESITE optical vision products on January 16, 2014. The disputed domain name was registered on July 30, 2013. 5. Parties' Contentions A. Complainant
The Complainant submits that it owns two combined logo and word marks that incorporate its NITESITE mark as noted above. It further says that the dominant and distinctive element of this combined word and logo mark is the NITESITE word mark which is a coined word that is not in common use in the English language and is distinctive as a consequence. The Complainant submits that the addition of the geographic descriptor "USA" in the disputed domain name merely refers to the United States and would indicate to Internet users that the disputed domain name relates to a geographically specific website for NITESITE products. As a result it says that this additional term does not distinguish the disputed domain name from the Complainant's NITESITE trade mark and is therefore confusingly similar to it.
The Complainant says that it has not authorised or endorsed the Respondent's use of the disputed domain name or its use of the NITESITE mark and images of NITESITE products on the website to which the disputed domain name resolves. It says that the Respondent is passing-off the disputed domain name and its website at the disputed domain name, as either having some association or affiliation with the Complainant, or as being the Complainant, when this is not the case. The Complainant says that the Respondent's use of the disputed domain name is a calculated scheme to trade off the goodwill attaching to the Complainant's NITESITE mark and to confuse customers into thinking that there is some association between it and the Respondent when this is not the case. As says the Complainant, the Respondent is not supplied with any NITESITE products the Complainant is in effect using the disputed domain name for a "bait and switch" plan in which Internet users thinking that they are going to be shown NITESITE products on the website are in fact then shown the Respondent's "Dark Widow" products and the Complainant has provided some customer correspondence to this effect. This conduct is not legitimate according to the Complainant and amounts to use of the disputed domain name in bad faith.
The Complainant submits that the Respondent registered the disputed domain name with knowledge of the Complainant's business and marks, in the course of pre-contractual negotiations for the Respondent to become its United States distributor and without seeking permission from the Complainant or even mentioning the registration to the Complainant. The Complainant also alleges that the Respondent acted in bad faith in the course of setting up its United States distributorship company by not doing so in accordance with the contractual agreement between the parties. The Complainant further asserts that the Respondent is a serial cyber squatter having registered 623 domain names in his name including at least 11 incorporating well known or reputed marks with typographical errors.
In addition the Complainant says that the Respondent's sole purpose in registering the disputed domain name was to profit at the Complainant's expense or, in the alternative, to disrupt the Complainant's business in order to gain leverage and thus offer to sell the disputed domain name to the Complainant for a sum in excess of its cost. It says that the Respondent has intentionally sought to take unfair advantage of the Complainant's rights and their actions serve only to confuse and deceive consumers which is indicative of the Respondent's bad faith.
The Complainant says in its supplementary filing following receipt of the Response that, as raised by the Respondent, it did not mention the Utah litigation because in its view this litigation concerns a contractual dispute that is not relevant to these proceedings which concern whether the registration and use of the disputed domain name are in accordance with the registration agreement. It submits that there is no allegation relating to trade mark rights in the Utah proceedings, copies of which have been filed in these proceedings and that the causes of action and the relief sought in those proceedings and these ones are therefore different and that the Utah litigation does not relate to the ownership of the disputed domain name. In essence the Complainant submits that it is within the Panel's discretion to decide these proceedings even though the Utah litigation is in train and in view of the fact that the Utah litigation concerns different issues then the Panel should exercise its discretion not to suspend or terminate these proceedings. B. Respondent
The Respondent asserts that this Complaint arises out of a dispute concerning a negotiated exclusive distributorship agreement including an exclusive licence of the NITESITE mark in the United States. They say that under the distributorship agreement they were granted the exclusive distribution rights for NITESITE products in the United States together with an exclusive licence to use the NITESITE mark in that jurisdiction. They assert that in order to protect their rights and to prevent a third party from registering the disputed domain name, that they did so early on and subsequently used it to create a website to promote NITESITE products in order to fulfil their contractual obligations under the distributorship agreement. They say that as the distributorship agreement grants exclusive rights in the United States, the Complainant cannot sell its products or use its marks there and therefore there can be no diversion of custom away from the Complainant's products.
The Respondent submits that this is not a case of cybersquatting. They say that they have rights or legitimate interests in the disputed domain name as a consequence of the distribution agreement and that they used the website at the disputed domain name for the sale of genuine NITESITE products. The Respondent goes on to assert that it was only after a dispute arose between the parties that the Complainant refused to supply further products to the Respondent so that it could not continue to fulfill its obligations under the distributorship agreement. The Respondent says that this matter relates to a genuine contractual dispute concerning the distributorship agreement which is already the subject of legal proceedings in the State of Utah and is the Complainant's chosen forum for the dispute.
The Respondent further says that the registration of the disputed domain name was not effected for the purpose of selling, renting or otherwise transferring the disputed domain name for a sum in excess of the out of pocket costs attributable to the disputed domain name. In addition they assert that the Respondent Dan Cox is not the registrant of the 11 domain names referenced at paragraph 73 of the Complaint and that the Dan Cox who is the registrant of those domain names resides at Calgary, Alberta, Canada T3J4X5 and not in the State of Utah, USA. 6. Discussion and Findings
The Complaint has been filed against three respondents of which one, Dan Cox is the registrant of the disputed domain name. The Panel is satisfied with the Complainant's explanation that the Respondents are inter-related corporate or individual parties in this dispute and accordingly permits the Complaint to proceed on this basis.
The Respondent's representatives filed by email on the date on which the Response was due being September 3, 2015 a request for an automatic four day extension to file its Response under Rules, paragraph 5(b) and 5(e) and a further extension under Rules, paragraph 5 and/or 18. The Respondent subsequently filed what it describes as a "Motion to Suspend or Terminate Proceedings and Grant Extension to Submit Response to the Complaint" on September 8, 2015 and then the Response was subsequently filed on September 9, 2015. The Complainant filed a supplemental filing in response on September 17, 2015 explaining in particular why it had not alluded to the court proceedings extant between the parties in the State of Utah. Both the Respondent's purported "Motion to Suspend or Terminate" and its Response were filed out of time and under Rules, paragraph 5(e) it is within the Panel's discretion to accept the Response or additional filings if there are exceptional circumstances supporting such admission and to accept or reject the Complainant's supplemental filings on a similar basis.
This is not a standard or simple case of cybersquatting. It involves complex issues of fact and law between the parties, in particular concerning distributorship rights and the Respondent's right to use the Complainant's trade marks. The Panel considers that these proceedings, to the extent that they concern the respective rights to use the Complainant's trade marks under the distributorship arrangements in the United States, are most likely to determine rights concerning ownership of the disputed domain name, even if the pleadings in that Case do not appear expressly to address ownership of the disputed domain name.
In these circumstances and considering that the Complainant omitted to mention the Utah legal proceedings in its Complaint and the obvious bearing that these proceedings will have on the Respondent's right to use the Complainant's trade mark rights in the United States, the Panel considers that the Response and supplemental filing by the Respondent should be admitted to the record. In this event the Panel, in the interests of fairness, will also accept the Complainant's supplemental filing in reply. The circumstances are sufficiently exceptional here that this exercise of the Panel's discretion under Rules, paragraph 10(b) is justified.
Under Rules, paragraph 18 the Panel has the discretion to suspend or to terminate or to proceed to a decision where legal proceedings to resolve the domain name dispute are initiated prior to or during the administrative proceedings. While the pleadings in the Utah litigation do not expressly address domain name ownership they do concern the Respondent's right to use the Complainant's trade mark in the United States. Although in the Panel's view these proceedings are very likely to determine the Respondent's right to use the disputed domain name as a consequence of the incorporation of the Complainant's trade mark in the disputed domain name, the Panel is reluctant, in circumstances that they do not expressly refer to ownership of the disputed domain name to refuse to issue a decision in these proceedings. Accordingly, the Panel will proceed to a decision. A. Identical or Confusingly Similar
The Complainant has demonstrated that it is the registered proprietor of the combined word and logo NITESITE mark registered as Community trade mark registration number 012271169, filed on October 31, 2013 and registered in the United States under trade mark registration number 4746014, filed on November 1, 2013. Although this is a combined word and logo mark the Panel finds that the dominant element of the mark is the word "Nitesite". This word mark is wholly contained within the disputed domain name together with the term "USA". The Panel finds that the latter term is purely a geographical indicator and does not function as a distinguisher of the disputed domain name from the Complainant's NITESITE trade mark. Accordingly the Panel finds that the disputed domain name is confusingly similar to the mark in which the Complainant has demonstrated trade mark rights and the Complaint therefore succeeds under this element of the Policy. B. Rights or Legitimate Interests / Registered and Used in Bad Faith
Under the second element of the Policy the Complainant is required to make out at least a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. However it is important to keep in mind that the dominant purpose of the Policy is to prevent cybersquatting. By including a test in which the Complainant has to demonstrate that the Respondent does not have any rights or interests in the disputed domain name (instead of the inverse position that it has legitimate rights or interests) the Policy's scope is effectively restricted to cases of third party cybersquatting in which a respondent has, on the balance of probabilities, no right at all to register or use a domain name. Typically, it will not apply in cases in which the parties have a complex contractual relationship that involves their trade mark rights such that the respondent can point to a basis on which it may have a legitimate right in the disputed domain name. This is also consistent with the position, as endorsed by past panels, that the Policy was intended to provide an efficient, expedited and cost effective means of resolving cybersquatting disputes. It was never intended as a forum to resolve disputes concerning hotly disputed contractual rights and trade mark interests involving the lengthy determination of factual and legal issues. Clearly, disputes of this nature should be adjudicated by an appropriate court or tribunal.
Numerous UDRP panels have considered cases in the context of formal distributorships and many of these cases have been decided by reference to a set of principles that were developed very soon after the development of the UDRP. These principles have generally been treated as a guide in determining whether a respondent has no rights or legitimate interests under this element of the Policy and applied judiciously with regard to the overall circumstances of the case.
In Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 the panel set out four minimum factor requirements in helping to decide whether a respondent was possibly making a bona fide use of the disputed domain name, or not:
"Respondent must actually be offering the goods or services at issue. E.g. World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306 (January 24, 2001) (respondent failed to show demonstrable preparations to use the domain name in connection with a bona fide offering);
- Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods. Nikon, Inc. v. Technilab,WIPO Case No. D2000-1774 (February 26, 2001) (use of Nikon-related domain names to sell Nikon and competitive cameras not a legitimate use); Kanao v. J.W. Roberts Co., Case No. 0109 (CPR July 25, 2001) (bait and switch is not legitimate);
- The site must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents. E.g., Houghton Mifflin Co. v. Weatherman, Inc.,WIPO Case No. D2001-0211 (April 25, 2001) (no bona fide offering where website's use of Complainant's logo, and lack of any disclaimer, suggested that website was the official Curious George website); R.T. Quaife Engineering v. Luton,WIPO Case No. D2000-1201 (November 14, 2000) (no bona fide offering because domain name improperly suggested that the reflected site was the official U.S. website for Quaife, an English company; moreover, respondent's deceptive communications with inquiring consumers supported a finding of no legitimate interest); Easy Heat, Inc. v. Shelter Prods.,WIPO Case No. D2001-0344 (June 14, 2001) (no bona fide use when respondent suggested that it was the manufacturer of complainant's products);
- The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name. Magnum Piering, Inc. v. Mudjackers,WIPO Case No. D2000-1525 (January 29, 2001) ("a single distributor is extremely unlikely to have a legitimate interest in precluding others from using numerous variants on a mark")."
In the case at issue both the Complainant and the Respondent have acknowledged that they entered into lengthy and involved discussions prior to executing an exclusive distributorship and trade mark licence agreement in respect of the United States. Although the validity of this agreement is in dispute, the Respondent appears to have distributed goods under the agreement for some time. During this period it appears that the Respondent only distributed the Complainant's goods from its website as the disclosed distributor of the Complainant and only started selling alternative goods from this website after the relationship between the parties had broken down and as a consequence of the Complainant refusing to supply it with further goods. There is nothing to indicate that the Respondent is otherwise attempting to corner the market in domain names incorporating the Complainant's trade mark and the Respondent has rebutted the Complainant's allegations in this regard.
Although the Complainant argues that the Respondent's current conduct amounts to "bait advertising", the circumstances here are much more complex and involved than those in a classic bait advertising scenario and overall the Panel does not find that the disputed domain name was registered in bad faith. To the extent that the Respondent's current conduct may amount to trade mark infringement in the United States then justice will be done in course of the Utah Court proceedings. It is not for this administrative procedure to usurp the role of national courts that are effectively seized with what amounts to an extremely closely related, if not the same, issue.
The Panel finds that the disputed domain name was registered by the Respondent during initial discussions with the Complainant and approximately two months prior to it signing a binding letter of intent to enter into an exclusive distributorship arrangement in the United States. The subsequent distributorship agreement between the parties gave the Respondent exclusive rights to use the Complainant's trade mark and trade name rights in the United States in order to market and sell the Complainant's products and fulfill its obligations under the distributorship agreement. The rights granted could very well encompass the right to register an appropriate domain name that incorporates the licensed mark. As noted above the disputed domain name includes the Complainant's NITESITE mark and the descriptive geographical abbreviation "USA" and therefore by its nature it indicates to Internet users that it operates in relation to the United States which is the exclusively licensed region subsequently authorised under the distributorship agreement.
In these circumstances the Panel is not prepared to infer that the disputed domain name was registered in bad faith. Such a finding is part of the conjunctive requirement for bad faith under this element of the Policy and as a result the Complaint fails under this head. 7. Decision
For the foregoing reasons, the Complaint is denied. Should the Utah Court proceedings for some reason not determine the Respondent's rights to use the Complainant's trade mark and consequently the disputed domain name, then the Complainant should be afforded the right to refile a Complaint under the Policy in relation to the disputed domain name.
Alistair Payne
Sole Panelist
Date: October 18, 2015
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