The Complainant is Esturiones del Rio Negro S.A., Uruguay, represented by Neugeboren O’Dowd PC, United States of America (the “United States”).
The Respondent is Graham Gaspard (“First Respondent”), Black River Caviar (“Second Respondent”), United States, represented by BRADFORD, LTD, United States. 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 7, 2021. On April 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 9, 2021, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 9, 2021. In accordance with the Rules, paragraph 5, the due date for the Response was April 29, which was extended until May 3, 2021. The Response was filed with the Center on May 3, 2021. The Complainant submitted a supplemental filing on May 10, 2021 and the Respondent submitted a response to it on May 12, 2021. The Center appointed Adam Taylor as the sole panelist in this matter on May 11, 2021. 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 For over 30 years, the Complainant has produced caviar farmed on the Rio Negro in Uruguay under the name “Black River Caviar”. The Complainant owns a number of registered trade marks for BLACK RIVER CAVIAR including Uruguay trade mark No. 366571, filed October 28, 2005, registered December 15, 2006, in class 31, and Uruguay trade mark No. 426699, filed August 29, 2011, registered August 6, 2012, in class 29. The Panel understands that the Second Respondent, Black River Caviar, is a United States corporation that was originally called Southern Star Imports Inc., but changed its name in 2012 to Black River Caviar, Inc. The Second Respondent is controlled by the First Respondent. References to “the Respondent” hereafter include both Respondents unless otherwise stated. A few months before the Respondent registered the disputed domain name in September 2008, the parties started doing business together whereby the Respondent purchased caviar from the Complainant and distributed it in the United States. The Respondent registered the disputed domain name on September 22, 2008. At around that time the Respondent began to use the disputed domain name for a website promoting the Complainant’s products in the United States, as well as for email. On October 31, 2008, the Complainant and the Respondent entered into an “Exclusive Import/Distribution Agreement, in which the Respondent was described as d/b/a ‘Black River Caviar’” and defined as “the Distributor”. Section 8 of the 2008 contract, entitled “Intellectual Property”, stated that the Complainant granted to the Respondent the “nonexclusive, revocable right and license” to use the trade mark “Black River Caviar” in connection with the marketing and distribution of the Complainant’s products pursuant to the agreement. The Respondent acknowledged that the Complainant was the owner of all right, title, and interest in and to the mark, that the Respondent would not directly or indirectly apply for or attempt to acquire any rights, patents or copyrights relating to the mark and that the Respondent had no rights or interests with respect to the mark. The Respondent further agreed that all uses of the mark by the Respondent or any of its affiliates or subcontractors would inure to the benefit of the Complainant. Section 9 of the 2008 contract stated that the Complainant agreed “to include a web banner with hyperlink on the website (www.caviaruruguay.com) that redirects visitors to only Distributor’s website (www.southerncaviar.com or www.blackrivercaviar.com)”. In 2010 the parties cancelled the 2008 contract but expressly preserved the intellectual property provisions. The parties entered into a new distribution agreement in 2015 with similar intellectual property provisions to those in the 2008 contract. In an exchange of emails on May 30, 2018, between the old and new owner of the Complainant, the old owner stated: “Yes, [the Respondent] registered .com BUT www.blackrivercaviar.com belong to [the Complainant]” and “we need to ask [the Respondent] to transfer the ownership”. The new owner asked if the old owner had any documents showing that the Respondent was acting on the Complainant’s behalf and that the Respondent had agreed that the Complainant was the owner. The old owner replied: “Yes, I will need to check on our files but yes! And also [the Respondent] is fully aware.” At some point in 2018, the Respondent enabled the Complainant to use the disputed domain name for website and email, but the Respondent retained ownership and ultimate control of the disputed domain name. On December 2, 2019, the Respondent applied, under serial No. 88/711,654, for a United States trade mark for BLACK RIVER CAVIAR in class 29. The Complainant opposed that application. The Complainant sent a legal letter to the Respondent on September 29, 2020, purporting to terminate the Respondent’s exclusive distribution rights in the United States and demanding transfer of the disputed domain name, amongst other things. The Respondent withdrew its United States trade mark application for BLACK RIVER CAVIAR on October 27, 2020. On April 2, 2021, the Complainant’s United States subsidiary filed a lawsuit against the Respondent in the Summit County Colorado District Court seeking to enforce a loan agreement between the subsidiary and the Respondent (“the US Case”). 5. Parties’ Contentions A. Complainant The following is a summary of the Complainant’s contentions. The disputed domain name is identical to the Complainant’s trade mark. The Respondent lacks rights or legitimate interests in the disputed domain name because the Complainant has long-superior rights, which the Respondent has acknowledged in multiple contracts, whereby the Respondent agreed that it had no rights or interest in the mark and would not apply for or attempt to acquire any such rights. The Complainant’s products, which undergo stringent certification and authenticity controls, have been highlighted in countless international press articles and have a well-earned reputation for quality. As a result of the Complainant’s long-term investment, the Complainant has generated substantial goodwill it its mark, which is uniquely associated with the Complainant. In 2018, when the Respondent provided the Complainant with login details to enable it to use the website at the disputed domain name, the Complainant first became aware that the Respondent had registered the disputed domain name in its own name before entering into the 2008 contract, rather than registering the disputed domain name on behalf of Complainant. Under that contract, the Respondent should have immediately transferred ownership of the disputed domain name to the Complainant because the Respondent had disclaimed all rights to the mark – including the disputed domain name, which is identical to the mark. The Respondent’s United States trade mark application for BLACK RIVER CAVIAR breached the contracts between the Respondent and the Complainant. The Respondent cannot establish rights or legitimate interests as it possesses no relevant trade mark rights and, without the authority of the Complainant, has registered and used the disputed domain name, which is identical to the Complainant’s trade mark. Domain names identical to a complainant’s trade mark carry a high risk of implied affiliation. The disputed domain name was registered and is being used in bad faith. The Respondent registered the disputed domain name for itself while simultaneously acknowledging the Complainant’s rights in the mark and agreeing that the Respondent would not seek to acquire any rights relating to the mark, undertakings that were repeated in later contracts. The Complainant believed that the Respondent had registered the disputed domain name on behalf of the Complainant. The Respondent previously used the disputed domain name to sell the Complainant’s products, but the Complainant discovered in 2019 that the Respondent was using the mark to fraudulently relabel third party caviar as the Complainant’s caviar. The Respondent is retaining ownership of the disputed domain name in bad faith, despite the fact that the Complainant is now maintaining the disputed domain name and associated website. Panels have found that the subsequent refusal by a distributor with full knowledge of a trade mark owner’s rights to transfer a domain name to a trade mark owner constitutes registration and use in bad faith. B. Respondent The following is a summary of the Respondent’s contentions. The Respondent does not dispute that the Complainant has rights in the mark “Black River Caviar”. Based on the 2008 contract, and the subsequent agreements between the parties, the Respondent was, and remains, a licensee with the legitimate right to use the mark in connection with the Complainant’s products, which is how the Respondent has used the disputed domain name to the knowledge of the Complainant. The relevant parts of the various contracts remain in effect. The Complainant has not validly terminated the 2015 contract. The Complainant’s arguments that the Respondent lacks rights and legitimate interests fail largely because they ignore the plain language of the various agreements, whereby the Respondent retains rights sufficient to meet the test under the second element. The Respondent acted in good faith in registering the disputed domain name because the Respondent had the right to do so in the context of the parties’ informal arrangements. Even before the 2008 contract, the Complainant knew that the disputed domain name had been registered and was being used by the Respondent in support of its marketing and distribution efforts in the United States. The Respondent extensively discussed, and agreed, its plans to create a website at the disputed domain name with the then-owner of the Complainant. All parties understood that the Respondent was taking such steps in support of a nascent distribution relationship, whereby the website would create an additional storefront for Complainant’s products amongst United States customers. Emails between the parties from June 2009 show that the Complainant was well aware of the Respondent’s registration and use of the disputed domain name, because the Respondent was using an “@blackrivercaviar.com” email address that appeared openly in the signature block. By 2012, the Respondent was using this email address for all business emails, including with the Complainant. Originally, the Complainant did not use a domain name comprising its mark for email addresses. When it did so, it used The Complainant does not specifically assert that the Respondent lacked explicit authority to register and use the disputed domain name as set out above. The Complainant cannot, and does not, claim that it was unaware the Respondent had registered the disputed domain name and was using it to market the Complainant’s products over the period of more than a decade when the website was run by the Respondent. The Complainant’s unsupported assertion that it believed the disputed domain name was registered in its name is false. The Complainant’s assertion coincides with the time when the new owners of the Complainant began their efforts to supplant the Respondent with a wholly-owned subsidiary as its United States distributor. In any case, these recent events have little bearing on whether the disputed domain name was originally registered in bad faith. The contracts between the parties grant the Respondent the right to register and use the disputed domain name along with a broad right to use the mark in support of its marketing. These rights, which formalised the Respondent’s previous authority to act as the Complainant’s distributor, show that the Respondent’s use of the disputed domain name to promote the sale of the Complainant’s products was in good faith. The Complainant is wrong to claim that the contracts contain a general prohibition on acquiring rights in anything that embodies the trade mark or is related to the trade mark. The Respondent must have been able to acquire some such rights in order to exercise its other rights to market and distribute the Complainant’s products. At most, the contracts restrict the Respondent from acquiring additional related intellectual property rights and this part of the contract is relevant only to the Respondent’s trade mark application, which was promptly withdrawn following notice from the Complainant. The Respondent denies the unsupported assertion by the Complainant that it fraudulently relabelled third party products as those of the Complainant. No such allegation was made in the Complainant’s legal letter. The Respondent’s acquiescence with the Complainant’s pre-action demand in allowing the Complainant to maintain and manage the disputed domain name while the parties resolve their contractual disputes should not be taken as evidence of bad faith but is instead done in good faith. The Respondent retains rights under the various contracts to distribute the Complainant’s products in the United States and its refusal to transfer the disputed domain name in those circumstances is not bad faith. The Complainant identifies no harm or potential confusion resulting from the present circumstances whereby the Complainant is allowed to control all content that is made available through the disputed domain name. It would be appropriate for the Panel to terminate this proceeding under paragraph 18 of the Rules in light of the US Case. The contractual dispute between the parties exceeds the relatively limited cybersquatting scope of the UDRP and would be best resolved in the United States court in accordance with the jurisdiction clauses in the contracts between the parties. C. Complainant’s supplemental filing (insofar as admitted) The emails of May 30, 2018, support the Complainant’s position that the Complainant expected the Respondent to register the disputed domain name on the Complainant’s behalf – in compliance with the Respondent’s obligations in the various agreements between the Complainant and the Respondent – and that the Complainant owned the disputed domain name. They disprove the Respondent’s representations that the Complainant’s prior owners were well aware that the disputed domain name was registered for the Respondent. The Respondent’s failure to comply with the terms of the parties’ agreements when registering the disputed domain name in its own name, in combination with the Complainant’s expectation and understanding that the disputed domain name had been registered for the Complainant and on the Complainant’s behalf, together with the Respondent’s refusal to transfer ownership to Complainant, constitutes bad faith registration and use of the disputed domain name. D. Respondent’s supplemental filing (insofar as admitted) The May 30, 2018, emails show that the Complainant’s claim that it believed that the Respondent had registered the disputed domain name on behalf of the Complainant was false. The new owner asked the old owner for “documentation” to support its claims but this has not been provided because it does not exist. 6. Discussion and Findings Under the Policy, the Complainant is required to prove on the balance of probabilities that: - the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights; - the Respondent has no rights or legitimate interests in respect of the disputed domain name; and - the disputed domain name has been registered and is being used in bad faith. A. Supplemental Filings Both parties have made unsolicited supplemental filings. Section 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that UDRP panels have repeatedly affirmed that the party submitting an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response, e.g., owing to some “exceptional” circumstance. The Panel had decided not to admit the first part of the Complainant’s filing, which consists of an objection to termination of this proceeding in light of the US Case, because the Panel has in any event decided to reject the Respondent’s request for termination for reasons explained below. The purpose of the second part of the filing is to introduce a 2018 email from the old to the new owner of the Complainant stating that the Respondent had registered the disputed domain name on behalf of the Complainant and that the Respondent should be asked to transfer it to the Complainant. Although this information could have been provided with the Complaint, the Panel has nonetheless decided to admit it as it adds to the Panel’s understanding of the background to the case and neither party would be prejudiced by its introduction. The Panel also admits the Respondent’s supplemental filing insofar as it responds to the second part of the Complainant’s filing. B. Court Proceedings As mentioned above, the Respondent has asked the Panel to terminate this proceeding in light of the US Case. Paragraph 18(a) of the Rules gives the panel discretion to suspend, terminate or continue a UDRP proceeding where the disputed domain name is the subject of other pending legal proceedings. However, panels are generally reluctant to terminate UDRP cases due to concurrent court proceedings, for reasons explained in section 4.14 of WIPO Overview 3.0. Here, the Panel declines to terminate the proceeding because, not only has the Respondent has failed to establish that the disputed domain name is the subject of the US Case, the parties to the US Case are not the same as those in this proceeding. C. Identical or Confusingly Similar The Complainant has established rights in the mark “Black River Caviar” by virtue of its registered trade marks. Disregarding the generic top-level domain (“gTLD”) suffix, the trade mark is identical to the disputed domain name. The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy. D. Rights or Legitimate Interests It is unnecessary to consider this element in light of the Panel’s conclusion under the third element below. E. Registered and Used in Bad Faith In order to succeed under this element, the Complainant must establish that, on the balance of probabilities, the Respondent both registered and used the disputed domain name in bad faith. As regards registration in bad faith, the Panel notes the following: 1. The Respondent began acting as the Complainant’s distributor a few months before the September 2008 registration of the disputed domain name. 2. It is not in dispute that the Complainant was aware, and approved, of the Respondent’s registration of the disputed domain name in connection with the Respondent’s role as distributor of the Complainant’s products in the United States. 3. The exclusive distribution agreement between the parties, signed a month or so after registration of the disputed domain name, described the Respondent as “’d/b/a ‘Black River Caviar’” and referred to “www.blackrivercaviar.com” as “Distributor’s website”. 4. So far as the Panel is aware, the Respondent duly used the disputed domain name for a website promoting the Complainant’s products and offering them for sale, as well as for emails (including with the Complainant), for around a decade without any objection until the Complainant was acquired by new owners in 2018. In the Panel’s view, the above circumstances point to the Respondent having registered the disputed domain name for the purposes of the distribution relationship between the parties and with the knowledge and approval of the Complainant. The Complainant nonetheless argues that the fact that the Respondent registered the disputed domain name “for itself”, i.e., in its own name rather than in the Complainant’s name, is sufficient to constitute bad faith. If the parties had indeed agreed that the Respondent should register the disputed domain name in the Complainant’s name, but the Respondent instead registered it in the Respondent’s own name, that could potentially constitute registration in bad faith. However, the Respondent denies that it agreed to register the disputed domain name on behalf of the Complainant – and the Complainant has produced no contemporaneous evidence that suggests otherwise. The earliest relevant document produced to the Panel is the 2008 contract, which was signed around a month after the disputed domain name was registered. This contract contains the type of intellectual property provisions that one would expect in a licensing agreement of this kind, for example prohibiting the Respondent from applying for any “rights, patents or copyrights” in the mark. While the Complainant places much weight on these provisions, the Panel does not consider that they clearly signify the existence of a prior agreement relating to the ultimate ownership of the already-registered disputed domain name. In fact, the Panel has the impression that, as often happens in this kind of scenario, the Complainant probably gave no thought to the question of ownership of the disputed domain name at this point. Otherwise, the Complainant would surely have addressed this issue specifically in the 2008 contract, which does indeed mention the disputed domain name but only to describe “www.blackrivercaviar.com” as the Respondent’s website. The Complainant also relies on the correspondence on May 30, 2018, when the old owner of the Complainant said to the new owner that, while the Respondent had originally registered the disputed domain name, it “belonged” to the Complainant and that the new owner should ask for ownership to be transferred. However, these internal Complainant communications occurred a decade later and while the old owner stated within the same thread that documents existed that showed that the Respondent registered the disputed domain name on the Complainant’s behalf and that the Respondent had agreed that the Complainant was the owner thereof, no supporting documents to substantiate this claim have been provided to the Panel. Accordingly, the May 2018 exchange of emails is not sufficient to convince the Panel that there was an agreement in 2008 to register the disputed domain name in the Complainant’s name. The Complainant also asserts that the refusal of the Respondent to transfer the disputed domain name to the Complainant in circumstances whereby the Respondent allegedly registered the disputed domain name while “simultaneously” acknowledging the Complainant’s rights in the mark and agreeing not to acquire any rights in the mark (i.e., presumably meaning the 2008 contract), and is no longer using or maintaining the disputed domain name, constitutes registration and use in bad faith. However, as mentioned above, the Panel does not consider that the Complainant has established that the Respondent’s previous registration of the disputed domain name was in bad faith. And so, even if the Respondent’s refusal to transfer the disputed domain name to the Complainant in the current circumstances constitutes use in bad faith, as to which the Panel makes no finding, the Complainant would still have failed to establish the third element which requires both use and registration in bad faith. The Complainant invokes two UDRP cases where panels found that distributors who refused to transfer the relevant domain names to the trade mark owner after termination of their respective distribution contracts had registered and used the domain names in bad faith. Here, the Respondent in fact denies that the Complainant has validly terminated the distribution agreement between the parties. In any event, the facts in the first case, Village Candle, Inc. v. Paul Dupre, Dupre Inc.,WIPO Case No. D2018-0834, differ from this one in a number of material respects. For example, there is no indication in that case that, as at the date of registration of the domain name, the parties had actually started their distribution relationship, even on an informal basis, or that the complainant was aware of, let alone approved, the registration of the domain name. Furthermore, the subsequent distribution agreement lasted for only “a short period”. These circumstances raise at least the possibility that the respondent in that case possessed a bad faith motive as of the date of registration of the disputed domain name. The Panel also notes that the respondent did not file a response to defend its position. However, if it is suggested that this case be read as holding that a respondent distributor’s later refusal to transfer a domain name is sufficient to establish the third element under the Policy even if the original registration was in good faith, the Panel respectfully disagrees for reasons explained below. In the second case, UVA Solar GmbH & CO. K.G. v. Mads Kragh,WIPO Case No. D2001-0373, the Panel found that the respondent’s actions were in breach of its contractual obligations and concluded that “[i]n the circumstances, the Panel finds that registration of a domain name can lose its bona fides if the registrant subsequently breaches one of the terms upon which he was authorized to register it”. This Panel respectfully disagrees with that analysis and is of the view that, while subsequent events may certainly have a bearing on whether a registration was made in bad faith (in that they may show evidence of intent), they cannot retrospectively convert a good faith registration to a bad faith one. A number of other panels have expressed similar disagreement with this decision. See, e.g., Downstream Technologies, LLC v. Bartels System GmbH,WIPO Case No. D2003-0088 and Hadise Açıkgöz v. Hulya Acikgoz,WIPO Case No. D2019-2952. This Panel concurs with the reasoning of those UDRP panels that have closely examined the conjunctive requirement in the context of terminated distributors and concluded that a complainant must establish bad faith at the time of registration as well in the later use of the domain name. See, e.g., APT Advanced Polymer Technology Corp. v. Matt Arnold, Majestic Capital,WIPO Case No. D2019-0824, where the panel concluded: “Here, the Complainant does not dispute that the Respondent registered the Domain Name in contemplation of a distributorship that was formally executed two weeks later and then used the Domain Name appropriately and with permission during the term of the distributorship agreement. The Respondent acted as a distributor for two years, built two local companies around the Complainant’s products, and expressed surprise and distress at being terminated as a distributor. The Complainant’s argument for bad faith requires an inference that the Respondent harbored a malign intent from the outset around the time of the registration of the Domain Name to violate its limited license, retain the Domain Name, and then use it in bad faith, to disrupt the Complainant’s business and mislead Internet users for commercial gain or otherwise. The Panel finds no persuasive evidence to make such a leap of inference and accordingly does not find bad faith in the registration of the Domain Name.” The facts recounted in this passage are not dissimilar to the present case, except that here the distribution relationship has lasted longer, a factor that tends to favour the Respondent. While the Complainant has invoked alleged misconduct by the Respondent in 2019 in the form of alleged fraudulent relabelling by the Respondent of third-party products as those of the Complainant, the Panel does not consider this matter of relevance to the Respondent’s state of mind when registering the disputed domain name 11 years earlier. In any case, the Respondent strongly denies this assertion and points out that the Complainant has provided no detail or supporting evidence. The Panel would add that the Complainant has not taken advantage of its supplemental filing to back up its claim in response to the Respondent’s denial. Likewise, the Panel has not taken account of the Respondent’s ultimately withdrawn 2019 application for a United States trade mark for BLACK RIVER CAVIAR, which again occurred many years after registration of the disputed domain name. Nor has the Panel placed any weight on the fact that the Respondent gave the Complainant access to the disputed domain name for website and email in 2018. Neither party has provided any relevant prior correspondence or clearly explained the circumstances in which it came about. The Panel is therefore not in a position to treat this development as an admission that the Respondent registered the disputed domain name in bad faith in 2008, which is what the Complainant appears to claim. The Panel would add that, although the parties have debated the various aspects of their longstanding contractual relationship in great detail, this proceeding is not a suitable forum for the Complainant to enforce any contractual right to transfer of the disputed domain name. That would be a matter for a court. For the above reasons, the Complainant has not satisfied the Panel on the balance of probabilities that, in 2008, the Respondent possessed the necessary bad faith intent to constitute registration of the disputed domain name in bad faith for the purposes of the UDRP. The Panel therefore finds that the Complainant has failed to establish the third element of paragraph 4(a) of the Policy. 7. Decision For the foregoing reasons, the Complaint is denied. Adam Taylor
Sole Panelist
Date: June 1, 2021
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