Complainants are William P. Thomas, III and Carolyn Thomas Walters, United States of America (“United States”), represented by Knobbe, Martens, Olson & Bear, LLP, United States.
Respondent is Robert Auxier, BTM LLC, United States, self-represented. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 29, 2020. On April 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 30, 2020, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainants filed an amended Complaint on May 19, 2020. 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 May 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 19, 2020. The Response was filed with the Center on June 18, 2020. The Center appointed Georges Nahitchevansky as the sole panelist in this matter on June 26, 2020. 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 Complainants are the children of William (Bill) Thomas, II (“Bill Thomas”), the designer of a well-known race car developed in the 1960s by the name of “Cheetah.” Complainants own and use the mark BILL THOMAS CHEETAH in connection with race cars, race car parts, restoration of race cars and clothing. Complainants owns trademark registrations in the United States for the BILL THOMAS CHEETAH mark (Registration No. 5,105,313) which issued to registration on December 20, 2016, as well as a registration for BILL THOMAS MOTORS (Registration No. 5,392,213), which issued to registration on January 30, 2018. Complainant also owns and uses the domain name Respondent BTM LLC manufactures and sells replicas of the Cheetah car. Respondent Robert Auxier is a principal and owner of BTM LLC (BTM LLC and Robert Auxier are hereinafter referred to collectively as “Respondent”). Respondent registered the disputed domain name on November 15, 2007. Respondent has used, and continues to use, the disputed domain name with a website that provides information about Respondent’s services and its Cheetah replica cars. Respondent entered into an Authorization Agreement with Bill Thomas in 2002. Pursuant to that agreement Respondent was allowed to create and sell a defined number of replicas of the original Cheetah car, which were referred to as Continuation Cheetahs. In return, Bill Thomas agreed to execute authentication letters for each Continuation Cheetah built by Respondent for which Bill Thomas would be paid USD 3,000 for each letter. From 2002 through 2009, Respondent built and sold 30 Continuation Cheetahs. On October 9, 2009, Bill Thomas passed away. Respondent and Complainants thereafter had a falling out and litigation between the Parties eventually ensued regarding the Authorization Agreement and its continued validity, as well as a dispute concerning certain trademark filings made by Respondent for logo marks that consisted of the words “Cheetah BTM” and “Bill Thomas Race Cars” (the “Logo Mark Applications”). On September 4, 2015, a United States District Court judge ordered that the Authorization Agreement had terminated upon the death of Bill Thomas on October 9, 2009. On September 27, 2019, Complainants obtained a judgment from the United States Trademark and Appeal Board sustaining Complainants’ opposition to the Logo Mark Applications. On January 15, 2017, Complainant contacted Hostgator.com, the company hosting Respondent’s website at the disputed domain name, to have website taken down. On January 19, 2017, Hostgator.com took down Respondent’s website. Respondent’s website at the disputed domain name subsequently reappeared and is currently accessible. 5. Parties’ Contentions A. Complainant Complainants contend that they own longstanding common law rights in the BILL THOMAS CHEETAH mark and that the BILL THOMAS CHEETAH mark has been carefully marketed and managed for many years prior to the registration of the disputed domain name. Complainant also asserts that it has strong rights in the BILL THOMAS CHEETAH mark on account of the extensive use of the BILL THOMAS CHEETAH mark and on account of Complainants’ trademark registrations for the BILL THOMAS CHEETAH and BILL THOMAS MOTORS marks. Complainants argue that the disputed domain name is identical to Complainants’ BILL THOMAS CHEETAH mark as it fully and solely consists of the BILL THOMAS CHEETAH mark. Complainants assert that Respondent does not have rights or legitimate interests in the disputed domain name as Respondent is not making a legitimate noncommercial or fair use of the disputed domain name and is using such, without authorization, to promote Respondent’s services and products. In that regard, Complainants argue that Respondent is no longer a licensee of Complainants in light of the United States District Court order in September 2015. Complainants also argue that “Respondent had previously registered the disputed domain name through a different host, which the host disabled after learning of the trademark violation” and that “Respondent renewed the disputed domain name in 2017, knowing it violated Complainants’ trademarks.” Based on the termination of the license and the renewal in 2017, Complainants contend that Respondent has no rights to use the disputed domain name. Lastly, Complainants argue that Respondent has registered and used the disputed domain name in bad faith. Complainants maintain that Respondent registered the disputed domain name in bad faith given that Respondent re-created the website at the disputed domain name after Complainant had deactivated it in 2017. Complainants further argue that Respondent has knowingly used the disputed domain name in bad faith, which solely consists of the BILL THOMAS CHEETAH mark, to mislead and direct web users to Respondent’s website. Complainants also maintain that Respondent has engaged in fraudulent dealings through the website at the disputed domain name by failing to deliver orders and deceiving customers about products that Respondent has available. B. Respondent Respondent rejects Complainants’ contentions. Respondent contends that it first created a “Bill Thomas Cheetah” replica in 1992 and that Respondent became known for its “Bill Thomas Cheetah” replicas. Respondent maintains that in 2001 it approached Bill Thomas about going into business together and that in 2002 Respondent and Bill Thomas executed an Authorization Agreement that gave Respondent the right to make a certain number of replicas of the Cheetah racing car, known as Continuation Cheetahs. Respondent asserts that Respondent manufactured 30 Continuation Cheetahs and that after Bill Thomas died in 2009, Complainants refused to honor the agreement. Respondent contends that while a District Court ordered the Authorization Agreement terminated in 2015, the order did not rule on the ownership of intellectual property rights claimed by the Parties. Respondent avers that Respondent has the right to produce Tribute Cheetah replicas and restore original Cheetah race cars, and can legitimately do so through the website at the disputed domain name. Respondent argues that there is no evidence to show that Respondent has caused any consumer confusion. Respondent contends that it registered the disputed domain name on November 17, 2007 and posted a website at the disputed domain name in December 2007. Respondent maintains that it has continuously owned the disputed domain name and used such for Respondent’s website since December 2007. Respondent contends that Respondent’s website at the disputed domain name is commonly known to consumers and the trade as a source for Cheetah replicas and for information on the original Cheetah racing car. Respondent notes that while Complainant successfully took down Respondent’s website at the disputed domain name in 2017 based on its December 20, 2016 BILL THOMAS CHEETAH trademark registration. Respondent reactivated the website through a private server and continued to own the disputed domain name and website. Respondent rejects Complainants’ assertions of consumer confusion and that Respondent has engaged in fraudulent activities. Respondent argues that these claims are meritless and are being asserted by Complainants to cast aspersions on Respondent’s character and reputation. Lastly, Respondent reiterates that it has legitimately owned the disputed domain name since 2007 and asks the Panel to make a finding of reverse domain name hijacking. 6. 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 to Complainant’s BILL THOMAS CHEETAH mark. The Panel therefore concludes that since the disputed domain name is identical to Complainant’s registered BILL THOMAS CHEETAH mark, Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. 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 the conjunctive requirement that the respondent registered and used a disputed domain name in bad faith. The assessment of whether a disputed domain name was registered in bad faith has to be assessed at the time of the registration of the disputed domain name, which in this case is November 17, 2007. Complainant maintains that the disputed domain name was deactivated in January in 2017 and then renewed thereafter by Respondent using a privacy service. The problem in Complainant’s argument is that the disputed domain name was not deactivated in January 2017. What was deactivated was the website at the disputed domain name. Complainant’s representative wrote to the company hosting Respondent’s website at the disputed domain name. The hosting company then took the website down at the disputed domain name (i.e., it stopped hosting the website). That action, though, is not a deactivation or change of ownership of the disputed domain name. Respondent appears to have simply changed hosting companies in order to put the website back up at the disputed domain name. The use of a privacy service in 2017, while on its face could suggest a change of ownership in the disputed domain name, is not in and of itself a confirmation of a change of ownership of a domain name if in fact the party behind the privacy service being used is the same party that owned and controlled the domain name at issue prior to the change to a privacy service. The evidence before the Panel, which includes evidence that Respondent continued to operate the same website at the disputed domain name after the January 2017 takedown, establishes that Respondent continued to own the disputed domain name after 2017 and that Respondent has continuously owned and controlled the disputed domain name since November 17, 2007. Given the 2007 registration date in question, it was incumbent on Complainant to establish that Respondent’s registration of the disputed domain name on November 17, 2007 was in bad faith. Here, Complainant has failed to do so. Complainant does not argue that Respondent’s registration of the disputed domain name was in bad faith in 2007. Indeed, while the 2000 Authorization Agreement is silent about domain names and the Internet, the Parties do not disagree that Respondent was given some rights through the Authorization Agreement to use the BILL THOMAS name and mark as well as some logos that showed the words “Cheetah BTM” and “Bill Thomas Racing.” It is also notable that when Respondent registered the disputed domain name and used such for a website promoting Cheetah replicas, Bill Thomas was still alive. This further suggests that there may have been some sort of consent for Respondent to register and use the disputed domain name in light of the relationship that then existed between Respondent and Bill Thomas. Further confirmation that there was some form of consent is found in the District Court order in September 2015, which ordered the Authorization Agreement terminated and which made clear that any intellectual property rights that had been granted to Respondent, whatever their scope, were terminated. As there is nothing before the Panel that establishes that Respondent’s actions were in bad faith in 2007 when Respondent registered the disputed domain name, Complainant has not established the third element of bad faith registration and use. The Panel wants to make clear that while Complainant has failed to prove bad faith registration of the disputed domain name, the Panel is not ruling as to whether Respondent is now using the disputed domain name in bad faith. Complainant certainly has arguments in light of the termination of the Authorization Agreement that Respondent has no rights to use the BILL THOMAS CHEETAH mark. By the same token, Respondent has made assertions that it has a legitimate right to use the disputed domain name based on its long standing use of “Bill Thomas Cheetah” in connection with its Cheetah replicas. These claims properly belong in another forum, such as in a court action, where the parties assertions can be more properly assessed with witnesses, cross-examination and a full evidentiary record. D. Reverse Domain Name Hijacking Respondent has requested that the Panel make a finding of Reverse Domain Name Hijacking in this proceeding. Section 15(e) of the Rules give instruction to panels in this regard: 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. In this case, while the Panel has concluded that Complainants did not establish bad faith registration of the disputed domain name by Respondent, the question is whether it was objectively unreasonable for Complainants to bring this proceeding by claiming a new registration of the disputed domain name in 2017 based on a takedown of the website at the disputed domain name and the switch to a Privacy Service for the registration of the disputed domain name. On one level, Complainants’ claim seems unreasonable given that a website that is taken down and then which reappears is not a change of ownership of a domain name. However, the registration of the disputed domain name did move to a privacy service in 2017 and the true owner of the disputed domain name was not altogether clear. Given that the same website reappeared at the disputed domain name at some point, there was reason to believe that Respondent still owned the disputed domain name. However, if Respondent had transferred the disputed domain name to another party (that could have licensed it back to Respondent), then Complainant would have a possible claim of a change of ownership that would support a UDRP proceeding. Given that Complainants own rights in the BILL THOMAS CHEETAH mark and that Respondent has continued use of the disputed domain name after the termination of the Authorization Agreement and Complainants’ successful opposition to trademark applications filed by Respondent, it does not appear unreasonable that Complainant would seek to take action against the disputed domain name based on a belief that there had been a change of ownership. The effort through a UDRP proceeding may have been misguided, but what is before the Panel does not make it a complaint brought in bad faith and with no objective basis. As such, the Panel declines to make a finding of reverse domain name hijacking. 7. Decision For the foregoing reasons, the Complaint is denied. Georges Nahitchevansky
Sole Panelist
Date: June 28, 2020
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