Complainant is Hawke & Company Outfitters LLC, United States of America (“United States”), represented by Sills Cummis & Gross P.C., United States.
Respondent is Perfect Privacy, LLC, United States / Michael Rosenberg, United States / Zee Co. Apparel Corp., United States, represented by Ferdinand IP, LLC, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with R (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 8, 2019. On August 9, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 11, 2019, the Registrar transmitted by email to the Center its verification response confirming that Respondent, Michael Rosenberg, is listed as the registrant and providing the contact details. The Center sent an email communication to Complainant on August 19, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 23, 2019.
The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on August 29, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 18, 2019. Upon request of Respondent, the due date for the Response was extended to September 22, 2019, in accordance with the Rules, paragraph 5(b). The Response was filed with the Center on September 22, 2019.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on October 3, 2019. 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
Complainant, Hawke & Company Outfitters LLC, is a seller of apparel and accessories in the United States. Complainant is primarily owned by an individual by the name of Aron Rosenberg. Complainant owns and has used the marks HAWKE & CO and HAWKE & CO NEW YORK in connection with its activities and also owns a trademark registration in the United States for the HAWKE & CO NEW YORK mark (Registration No. 4,625,853) that issued to registration on October 21, 2014.
Respondent Zee Co. Apparel Corp. (“Zee Co.”) is likewise a seller of apparel and accessories in the United States. Respondent Michael Rosenberg is the owner of Respondent Zee Co. and the brother of Complainant’s principal Aron Rosenberg. Respondents Zee Co. and Michael Rosenberg are hereinafter collectively referred to as Respondent.
Respondent registered the disputed domain name on October 30, 2008. At that time Respondent Michael Rosenberg was a shareholder of Complainant. In 2009, Michael and Aron Rosenberg agreed to separate their business interests. Michael Rosenberg relinquished his ownership interest in Complainant and in another related company and started a new company under the name Zee Co. As part of that transaction, Complainant retained ownership of the HAWKE & CO trademark and Michael Rosenberg’s company Zee Co. was granted an exclusive royalty free license to utilize the HAWKE & CO mark (along with some other trademarks not relevant to this proceeding) with men’s apparel and menswear of all types (the “License Agreement”). The License Agreement was executed on September 30, 2009.
The parties have been embroiled in a number of legal disputes for the past several years that relate to the parties’ respective businesses and their activities. There is currently a pending arbitration before The American Arbitration Association between Complainant and Zee Co. (the “Arbitration Proceeding”). In the Arbitration Proceeding, Complainant has asserted that Respondent breached the License Agreement by using the HAWKE & CO mark in connection with products other than men’s apparel and menswear products. Complainant is also seeking a termination of the License Agreement. Respondent has filed counterclaims in the Arbitration Proceeding in which Respondent asserts that it owns the HAWKE & CO trademark based on certain claimed agreements between the parties. Complainant has opposed Respondent’s filing of a counterclaim in the Arbitration Proceeding by filing a petition in the Supreme Court of the State of New York to challenge Respondent’s filing of additional demands (counterclaims) in the Arbitration Proceeding. Respondent has opposed Complainant’s petition. Complainant’s petition in the Supreme Court of the State of New York is currently pending.
On January 23, 2019, Complainant’s attorney wrote to Respondent regarding the disputed domain name and demanding a transfer of the disputed domain name. Respondent’s attorneys responded to the letter and rejected Complainant’s demands. The parties thereafter had several further communications regarding the disputed domain name. These communications appear to have ended in July 2019. The disputed domain name currently resolves to a website that offers various clothing products under the HAWKE & CO mark. 5. Parties’ Contentions A. Complainant
Complainant asserts that it owns all rights in the mark HAWKE & CO trademark which it has used in commerce since 2004. Complainant also asserts that its rights are based on its United States trademark registration for the HAWKE & CO NEW YORK mark.
Complainant contends that the disputed domain is confusingly similar to Complainant’s HAWKE & CO and HAWKE & CO NEW YORK marks, as it fully and solely consists of the HAWKE & CO mark.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name as Respondent (i) had no right or authorization to register the disputed domain name based on Complainant’s HAWKE & CO mark under its own name, and (ii) registered the disputed domain name for Respondent’s sole profit.
Lastly, Complainant contends that Respondent has registered and used the disputed domain name in bad faith given that Respondent was fully aware, as a licensee, that Complainant was the owner of the HAWKE & CO trademark and that, as such, Respondent had no authorization to register the disputed domain name under its own name. Complainant also maintains that Respondent has acted in bad faith by refusing to transfer the disputed domain name to Complainant upon Complainant’s request and by using the disputed domain name to sell without authorization women’s and children’s products under the HAWKE & CO mark and to promote another clothing label known as “Outdoor United.” B. Respondent
Respondent rejects Complainant’s contentions. Respondent requests that the instant proceeding be suspended or terminated pursuant to Rule 18 in view of the pending Arbitration Proceeding between the parties in which Respondent has filed a counterclaim that it is the rightful owner of the HAWKE & CO trademark.
Respondent does not contest that the disputed domain name is identical or confusingly similar to the HAWKE & CO mark, but argues that Respondent is the rightful owner of the HAWKE & CO mark.
Respondent maintains that it has rights and a legitimate interest in the disputed domain name by virtue of the License Agreement between the parties that granted Respondent the right to use the HAWKE & CO trademark in a domain name. Respondent also maintains that because it is the rightful owner of the HAWKE & CO mark, as it claims in the pending Arbitration Proceeding, its actions with regard to the disputed domain name are legitimate.
Lastly, Respondent rejects the contention that its registered or has used the disputed domain name in bad faith given Respondent’s claim to be the rightful owner of the HAWKE & CO mark and given that the License Agreement granted Respondent the right to use the HAWKE & CO mark in a domain name. 6. Respondent’s Request to Suspend or Terminate the Proceeding
Respondent has requested that this proceeding be suspended or terminated on account of the pending Arbitration Proceeding.
Paragraph 18(a) of the Rules gives the Panel discretion to suspend, terminate or continue a UDRP proceeding where the disputed domain name is also the subject of a concurrent court or other proceeding. In general, appointed panels have been reluctant to suspend or terminate proceedings, except where exceptional circumstances have warranted such. See paragraph 4.14 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The reluctance to grant a suspension is grounded in the potential that a suspension could result in a matter languishing for an indeterminate amount of time without there ever being a resolution. With regard to termination, the Panel is mindful that an arbitration panel is not bound by a decision rendered by a UDRP panelist. Nevertheless, terminating a proceeding, even without prejudice, may not further the underlying benefit of the UDRP in providing an expeditious resolution of a domain name dispute where a complainant has filed a valid complaint, paid its filing fee, and is thus entitled to a decision on the merits without delay.
In the view of this Panel, there are no exceptional circumstances in this matter warranting a termination or suspension of this proceeding simply based on the existence of the concurrent Arbitration Proceeding.
Based on the foregoing, the Panel denies Respondent's Request to Suspend or Terminate Proceedings – particularly where, as here, Complainant has not sought or consented to a termination of the proceeding. 7. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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. A. Identical or Confusingly Similar
Respondent does not contest that the disputed domain name is identical or confusingly similar to Complainant’s HAWKE & CO or HAWKE & CO NEW YORK marks. Respondent’s position is that it is the rightful owner of the HAWKE & CO mark, a claim that is beyond the scope of this proceeding. Accordingly, the Panel finds for Complainant on the first element B. Rights or Legitimate Interests
Given that Complainant’s Complaint fails on the third element, as discussed below, the Panel does not address whether Respondent has rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Under Paragraph 4(a)(iii) of the Policy, a complainant must establish that the respondent registered and used the disputed domain name in bad faith. The assessment of whether a disputed domain name was registered in bad faith has to be considered at the time of the registration of the disputed domain name.
Here, Respondent registered the disputed domain name on October 30, 2008. At that time, Respondent Michael Rosenberg was apparently still a shareholder of Complainant. At some point thereafter, Respondent Michael Rosenberg separated from Complainant and Zee Co. was granted a license to use the HAWKE & CO mark with certain products pursuant to the September 30, 2009 License Agreement. Paragraph 2.1 of the License Agreement specifically granted Zee Co. the right to use the HAWKE & CO mark in or as part of domain names in connection with the advertising, promotion or sale of the products authorized under the License Agreement. On its face, it thus appears to the Panel that Respondent registered the disputed domain name with implicit, if not explicit, consent or ratification from Complainant.
Complainant argues that Respondent registered the disputed domain name in bad faith, as Respondent did so without authorization under its own name, and not under the name of Complainant, and thereafter refused to transfer the disputed domain name to Complainant when requested to do so in 2019. While these arguments could have some merit in a contractual dispute between the Parties under the terms of the License Agreement, these go beyond the scope of the instant proceeding. The License Agreement expressly provides Respondent the right to use the HAWKE & CO mark in a domain name but is completely silent as to how such a domain should be registered. Put another way, the License Agreement does not specify how the domain name should be registered or how it would be administered, but simply grants Respondent the right to use the HAWKE & CO mark in a domain name (which arguably may include the right to register a domain name). It is thus open to debate whether Respondent’s actions were in bad faith in 2008 or 2009 when Respondent was given the express right to use the HAWKE & CO mark in a domain name. The failure to transfer title of the disputed domain name to Complainant in 2019 is likely an act of bad faith under the License Agreement, given that the License Agreement vests all rights in the HAWKE & CO mark in Complainant and specifies that Respondent will not challenge Complainant’s rights in such. However, what happened in 2019 does not by itself taint the 2008 registration of the disputed domain name as being in bad faith. While it remains an open question as to why Respondent registered the disputed domain name in Respondent’s name, and not in the corporate name of Complainant, it is not clear that Respondent’s intent in so doing was to establish an opportunity to exert leverage over Complainant.
Notably, Complainant has provided no evidence that establishes or shows that Respondent registered the disputed domain name in bad faith in 2008 while Respondent Michael Rosenberg was still a shareholder of Complainant. Indeed, Complainant makes no mention of the Parties’ prior business relationship (or that the principals of the respective companies are related), and makes no mention regarding the circumstances that led to the License Agreement in 2009 or what happened between the Parties in 2008 and 2009. Complainant’s entire argument of bad faith is based on the fact that the disputed domain name is registered under Respondent’s name, the actions of Respondent in 2019, the use of the disputed domain name in 2019 and Respondent’s refusal to transfer the disputed domain name in 2019. Again, while these actions might establish Respondent’s bad faith use of the disputed domain name in 2019, they do not establish that in 2008, in view of the terms in License Agreement granting Respondent the right to use a domain name that consists of the HAWKE & CO mark, Respondent registered the disputed domain name in bad faith and without the implicit or explicit consent of Complainant.
In sum, based on the evidence that is before the Panel, Complainant has failed to establish that it is more likely than not that Respondent registered the disputed domain name in bad faith. Consequently, Complainant has failed to establish the third element under the Policy and the Complaint must be dismissed. 7. Decision
For the foregoing reasons, the Complaint is denied.
Georges Nahitchevansky
Sole Panelist
Date: October 17, 2019
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