F. Korbel & Bros. v. Richie Ann Anderson d/b/a Triple Ranch d/b/a TBR Quarter Horses
Claim Number: FA0709001080253
Complainant is F. Korbel & Bros. (“Complainant”), represented by Blake
R. Bertagna, of Arent Fox LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <korbelranch.com>, registered with Enom, Inc. and <korbelkennel.com>, registered with Tucows Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 19, 2007; the National Arbitration Forum received a hard copy of the Complaint on September 19, 2007.
On September 19, 2007, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <korbelranch.com> domain name is registered with Enom, Inc. and that the Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 19, 2007, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <korbelkennel.com> domain name is registered with Tucows Inc. and that the Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 2, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 22, 2007 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com and firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on October 22, 2007.
On October 25, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco as Panelist.
On October 31, 2007, Complainant additionally submitted a rebuttal to the Response.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant contends as follows:
Korbel champagne is the number one selling
premium methode champenoise produced champagne in
Korbel has invested substantial sums of money in developing and marketing its KORBEL marks and products. As a result of Korbel's longstanding and extensive use, advertising, and marketing of the KORBEL Marks through a wide variety of media, including the Internet, its marks have acquired tremendous commercial strength and goodwill and have come to immediately identify the source of Korbel's products.
Respondent registered the at-issue domain name <korbelranch.com>
on November 18, 2003, many years after Korbel's adoption and first use of the
KORBEL Marks. Respondent is using the domain name <korbelranch.com>
with a commercial website that provides links to third-party websites that
compete directly with the products offered by Korbel under the KORBEL
Marks. Some of these links specifically
provide goods and services related to wine and champagne in the identical
geographic region of
Respondent registered the domain name <korbelkennel.com> on October 30, 2006, many years after Korbel's adoption and first use of the KORBEL Marks. Respondent is using the domain name <korbelkennel.com> with a commercial website that provides services related to the training and breeding of animals, such as horses and dogs.
On December 14, 2006, Korbel's outside counsel sent a letter to Respondent, asserting Korbel's rights in the KORBEL mark and expressing concern over the likelihood of confusion caused by Respondent's unauthorized commercial use of the KORBEL mark. At the time of the initial letter, Respondent referred to its kennel on its website as "Korbel Kennels," and its website <korbelkennel.com> made prominent use of the KORBEL mark. In response to Korbel's letter, Respondent ceased using the infringing name "Korbel Kennels" and began using "Samii Kennels." Respondent agreed to stop all unauthorized and infringing uses of the mark KORBEL. In connection with Respondent's proposition to stop using the KORBEL mark, Respondent offered to sell the <korbelranch.com> and <korbelkennel.com> domain names to Korbel.
Despite Korbel's efforts to reach an amicable resolution to Respondent's ownership and use of the at-issue domain names, Respondent has failed to cooperate. Respondent continues to use the domain names to trade on Korbel's goodwill by making bad faith use of the KORBEL marks for commercial purposes.
Korbel's federal registrations establish its rights in the KORBEL mark. The at-issue domain names are confusingly similar and nearly identical to the KORBEL mark. The domain names contain the KORBEL mark in its entirety and simply add the generic or descriptive terms "ranch" and "kennel," which is insufficient to distinguish Respondent's domains from Korbel's mark under Policy 4(a)(i). The mere addition of the generic top-level domain ".com" is irrelevant when establishing whether a complainant's mark is identical or confusingly similar. By merely adding the generic top-level domain “.com" to the KORBEL mark, Respondent has not negated the confusing similarity between Respondent's domain name and Korbel's mark.
Respondent has no rights or legitimate interests in the Domain Name. Respondent is not authorized or licensed to use the KORBEL mark. Respondent is using the domain name <korbelranch.com> in connection with a website that promotes and provides links to third-party websites, some of which directly compete with the products offered by Korbel under the KORBEL mark. The use of a confusingly similar domain name in connection with a website that provides links to third-party websites does not constitute a bona fide offering of goods or services as contemplated by Policy 4(c)(i) or a legitimate noncommercial or fair use as contemplated by Policy 4(c)(iii).
Respondent is using the domain name <korbelkennel.com> in connection with a website that promotes services related to the training and breeding of animals. However, Respondent's service provides no basis for Respondent's use of the mark KORBEL. Respondent's kennel is called "Samii Kennels," and Respondent was never authorized or licensed to use the mark KORBEL in connection with its kennels. By changing its name upon receipt of Korbel's cease and desist letter, Respondent clearly has acknowledged Korbel's exclusive rights to use the KORBEL Marks and conceded that Respondent does not have rights in the KORBEL mark.
Respondent is directing Internet users to Respondent's site in an effort to promote and sell Respondent's own goods and services. Such conduct does not constitute a bona fide offering of goods or services under Policy 4(c)(i) or a legitimate noncommercial or fair use under Policy 4(c)(iii).
The WHOIS records for Domain Names list "Richie Ann Anderson," "Triple Ranch," and “TBR Quarter Horses" as the registrant. There is no evidence that Respondent is commonly known by the domain name <korbelranch.com> or <korbelkennel.com>. Accordingly, Policy 4(a)(ii) has been satisfied.
Respondent has registered and used the domain name in bad faith. In view of: (i) Korbel's registered and common law rights in the KORBEL Marks; (ii) the use of these marks by Korbel for many years prior to Respondent's registration of the domain names; (iii) Korbel's prior use of the KORBEL Marks on the Internet and in other domain names; (iv) the tremendous goodwill and reputation associated with these marks; (v) the content of Respondent's websites and the nature of Respondent's conduct in response to Korbel's claims; and (vi) Respondent's offer to sell the domain names to Korbel, it is difficult to conceive of any circumstance in which the Respondent could have registered the domain names in good faith or without knowledge of Korbel's rights.
Respondent's conduct demonstrates that it registered or acquired the domain Names primarily for the purpose of selling, renting, or otherwise transferring the domain names. Respondent offered to sell the at-issue domain names to Korbel. Respondent's efforts to sell the domain names demonstrate bad faith registration and use pursuant to Policy 4(b)(i).
Respondent has attempted to attract, for commercial gain, Internet users to its Website or other online locations, by creating a likelihood of confusion with Korbel's marks as to the source, sponsorship, affiliation, or endorsement. Respondent has registered and used the domain names in bad faith pursuant to Policy 4(b)(iv) because Respondent has attempted to divert Internet users seeking Korbel's goods under the KORBEL marks to a deceptive commercial website. Respondent is using <korbelranch.com> to redirect Internet users to a website containing links to websites in direct competition with Korbel. There is a presumption that "Respondent benefits commercially through the accrual of click-through fees when Internet users click on the links featured on the websites that resolve from" the <korbelranch.com> domain name. Respondent is therefore profiting from the likelihood that Internet users who are seeking Korbel's products will confuse the source of the disputed domain name as being affiliated with Korbel. This is further evidence that Respondent registered and is using the disputed domain name <korbelranch.com> in bad faith under Policy 4(b)(iv).
Responding is using <korbelkennel.com> in connection with a website that provides animal breeding and training services. Respondent is taking advantage of the confusing similarity between the disputed domain name and Korbel's mark and likely profiting from the goodwill associated with Korbel's mark. The Respondent's redirection of Internet users to its own website for commercial gain indicates bad faith registration and use pursuant to Policy 4(b)(iv).
Furthermore, use of Korbel's mark in the at-issue domain names creates a likelihood of confusion as to the possibility of Korbel's sponsorship, endorsement or affiliation with the disputed domain names and resulting websites. Such conduct is further evidence of bad faith registration and use under Policy 4(b)(iv).
Respondent registered the domain names primarily for the purpose of disrupting the business of a competitor. Respondent is using <korbelranch.com> to redirect Internet users to a website containing links to websites in direct competition with Korbel. This conduct constitutes a disruption of Korbel's business and qualifies as bad faith registration and use of the disputed domain names under Policy 4(b)(iii).
Respondent registered the domain names with knowledge of Korbel's rights. The Panel can infer Respondent's knowledge of Korbel's rights based on its federal registrations and the wide degree of recognition of Korbel's mark existing at the time that Respondent registered the domain names.
Respondent contends as follows:
During the past 10 years, Respondent obtained and used the at-issue domain names. Specifically, the domain names were registered and used with the knowledge, consent and assistance of Respondent’s father, Gary Heck, the President, Chairman and majority shareholder of Korbel. In 2006, Mr. Heck and his daughter, the Respondent, had a falling out, and Mr. Heck subsequently cut off all means of support to Respondent, including her Korbel salary and distributions from a trust which owns shares in Korbel, and directed Korbel to evict her from land adjacent to Korbel and which Mr. Heck previously gifted to Respondent.
Mr. Heck and Korbel are aware that Respondent no longer uses the disputed domain names on her website. Mr. Heck directed this arbitration Complaint to be filed purely as a pressure tactic to leverage other pending litigation and to cause Respondent to incur unnecessary legal fees at a time when he has cut off all other means of support to Respondent and his three grandchildren. As further evidence of Korbel’s bad faith, the Complaint failed to include the relevant circumstances and the fact that Respondent currently does not use either domain name on her website.
In December 2006 Respondent petitioned the Sonoma County Superior Court for instructions regarding distributions from a trust, of which Mr. Heck was the trustee and Respondent was the sole beneficiary. In the nine months following, Mr. Heck has brought or directed Korbel to bring nine separate complaints against his daughter. Respondent believes that Mr. Heck directed Korbel to allege bad faith in this arbitration solely in an attempt to mislead the arbitrator and shoehorn a “basis” for another spurious lawsuit against his daughter.
The following facts demonstrate that Respondent obtained and used “Korbel” in connection with her ranch and kennel business from 1997 through 2006 with the full knowledge, consent and assistance of Mr. Heck and Korbel.
TBR Ranch and Korbel Kennels (now known as “Samii Kennels”) were established in 1997 on land Mr. Heck gifted to Respondent for that purpose. The land is adjacent to Korbel. Korbel has remained on the title to the property.
Ownership of the property is currently in dispute in Sonoma County Superior Court, Mr. Heck, as trustee, paid Respondent’s trust monies for the creation of a “Korbel Kennels” sign, which has hung on the gate to her kennel and residence on Highway 116 in Santa Rosa for many years with Mr. Heck’s and Korbel’s knowledge and approval.
When Respondent established the websites for her businesses, Mr. Heck assisted her and directed other Korbel employees to assist her. For example, the domain name registration was prepared under the direction of Mr. Faris. Fees for the registration and ISP were paid at Mr. Heck’s request. A Korbel marketing department employee prepared marketing materials. Korbel also donated champagne on behalf of the Kennel for American Kennel Club events, also at the direction of Mr. Heck. Mr. Faris retained the relevant documents.
In 2006, Mr. Heck had a falling out with his daughter, Respondent, and subsequently cut off all her known means of support. He terminated her employment at Korbel (which was unrelated to her ranch and kennel businesses), he attempted to evict her and his grandchildren from the disputed property where they made their home and built the ranch and kennel business the past 10 years, and he refused to distribute income from her trust for her support.
On December 8, 2006, Respondent petitioned the Sonoma County Probate Court for instructions regarding, among other things, income distribution from the trust. In the nine months following, Mr. Heck filed or directed to be filed no less than nine complaints in Superior Court against Respondent.
As an accommodation to Mr. Heck, Respondent agreed to remove “korbelkennel” and “korbelranch” from all of her web content earlier this year. She also re-posted her website under the domain name <www.samiiranch.com>.
Respondent offered to sell the domain names solely in response to Mr. Heck/Korbel counsel’s further demand that even though she was not using them, and Korbel had no business purpose for them, she surrender the domain names outright.
The domain name <korbelranch.com> expires November 18, 2007. Respondent does not intend to renew it.
The only remaining use of ”Korbel” on Respondent’s website is to identify previously named animals in accord with the rules of the American Kennel Club, which do not permit re-naming.
Because Respondent’s kennel business was known as “Korbel Kennels” for ten years, she wishes to have the option to redirect Internet traffic to her re-named kennel business until the <korbelkennel.com> until the domain name expires in a few months. She does not intend to renew it.
Korbel offers no evidence that Respondent is presently using the domain name <korbelkennel.com> for any purpose other than to re-direct traffic for the business it took her 10 years to establish under the name “Korbel Kennels.”
Dogs and horse are not “Confusingly Similar” to
Korbel admits that it has “no business use” for either of the disputed domain names. In his July 25 letter, counsel for Korbel states: “Korbel is not willing to pay for the domain names “korbelkennel” and “korbelranch” as it has no business use for them.”
Since the ranch and kennel businesses were re-named Samii Ranch and Samii Kennels earlier this year, Respondent no longer uses <korbelranch.com> and the only use made of <korbelkennel.com> appears on re-direct from a search engine in the browser field.
The domain names were used in connection with Respondent’s bona fide
ranch and kennel business, establish in 1997 with the full knowledge, consent
and assistance of Korbel and Mr. Heck.
Respondent’s use of the Korbel Ranch and Korbel Kennel business names
was commonly known for almost a decade. Mr. Heck as trustee paid for a “Korbel
Kennels” sign that was posted on the kennel’s gate on Highway 116 in
Respondent is making no use of <korbelranch.com> and a legitimate, fair use of <korbelkennel.com> purely in connection with a search re-direct to her re-named kennel business. Korbel offers no evidence that Respondent is attempting to mislead or divert Korbel champagne consumers to her kennel business, nor to tarnish the trademark or service mark at issue.
Respondent is not using <korbelranch.com> for any purpose. Respondent does not intend to renew the name; therefore the issue will be moot November 18, when her renewal fee is due.
The domain names were not registered or used in
bad faith. The Respondent registered the domain names in connection with her legitimate
businesses. Respondent established her ranch and kennel businesses in 1997, on
property gifted to her by her father, Mr. Heck, on behalf of Korbel. She
acquired the domain names in connection with these businesses, with the
assistance of Korbel. Respondent did not register the at-issue domain names in
order to sell, rent, or otherwise transfer them to Complainant. Complainant
Korbel helped Respondent acquire the names, and her father, the principal
shareholder of Korbel, directed that the connected fees and other business
expenses be paid either out of her trust or paid by Korbel and then reimbursed
later. For many years, a “Korbel Kennels” sign hung on the gate of Respondent’s
residence on Highway 116 in
Respondent never offered to sell the domain names to anyone other than Korbel, and only then as an accommodation to Korbel’s demand that she surrender them outright and in connection with settlement negotiations.
Korbel agreed to support Respondent’s businesses. To the extent that in the past Respondent benefited from the goodwill associated with the Korbel-related domain names, it was used with the knowledge and assistance of Korbel.
Respondent has never and is not currently attempting to attract champagne customers away from Korbel and to her dog-breeding business instead.
Korbel’s claim is an attempt to shoehorn yet another lawsuit against its chief executive’s daughter. The pending trust and equitable claims have been subject to a “scorched earth” approach by Mr. Heck, as evinced by the fact that he has initiated or directed nine other actions to be initiated against his daughter and three grandchildren. This “bad faith” claim is made in bad faith, with total disregard for the facts.
Although no other legal proceedings have been commenced yet in connection with or relating to the disputed domain names that are the subject of this Complaint, numerous lawsuits are pending between Korbel and/or Mr. Heck and Mr. Faris on one side and Respondent on the other.
C. Additional Submissions
In its additional submission Complainant contends as follows:
Respondent's defense is based upon self-serving, unsupported, and false allegations that Korbel consented to and knowingly assisted with Respondent's use of Korbel's name and mark in connection with the disputed domain names <korbelranch.com> and <korbelkennel.com>. These allegations are false and, because Respondent has not provided any photographs, evidence, documents or declarations to support these claims, she has not met her burden of proof in this proceeding.
In stark contrast to Respondent's unsupported claims, Korbel has provided screen shots, documents, and the attached declaration to support its claims and refute Respondent's false allegations. Contrary to her unsubstantiated claims, Respondent ran a business by the name of Triple B Ranch or TBR Quaterhorses. Contrary to her unsupported statements, Respondent never had a sign created for her business displaying "Korbel Kennel," and Korbel never paid for such a sign. Korbel has fully supported its allegations with documents, evidence and the attached declaration, while Respondent has not provided, and cannot provide, such supporting documentation.
Respondent has implicitly conceded that she has no legitimate right to use the disputed domain names. Her prior unsolicited offer to sell the domain names is nothing more than an attempt to extort money from Korbel, and an admission that Respondent does not have a legitimate, bona fide right to, or use for, the domain names. Her recent deactivation of the domain names and her expressed intent to abandon the domain names further demonstrate that she does not have a legitimate, bona fide right to the domain names.
Respondent also has acted in bad faith by requiring Korbel to incur legal fees and expenses initiating this action to rightfully obtain the at-issue domain names that Respondent now says she will abandon.
Because Respondent has stated she will abandon the domain names, the Panel should infer that she has no legitimate rights to them and order the transfer of the domain names to Korbel to ensure that they are not re-registered by Respondent or registered by another cybersquatter upon their abandonment.
Respondent falsely claims that she has no control over and is not responsible for the content at <korbelranch.com>. Even if this were true - and it is not - the mere passive holding of an infringing domain name, along with her knowledge of Korbel's rights in the KORBEL mark, constitutes bad faith. More important, Respondent cannot avoid liability for an improper use of an infringing domain name by placing the blame on a host or other third party.
Complainant holds registered federal trademarks for the mark KORBEL and related marks.
The at-issue domain names contain Complainant’s KORBEL trademark.
At all times relevant, Respondent was aware of Respondent’s trademark rights in the mark KORBEL and related marks.
The at-issue domain names were registered with the knowledge and acquiescence of Complainant.
Respondent and her father had a “falling out” and thereafter Complainant and Respondent’s father commenced litigation against Respondent on matters that are not related to Complainant’s trademarks.
The first demand letter from Complainant’s counsel to Respondent’s counsel regarding the use of Complainant’s trademark was sent at approximately the same time as the Respondent and her father had a “falling out” and litigation was commenced by Complainant against Respondent.
In or around December 2006, Complainant revoked any and all rights that it may have granted Respondent to use its trademark.
The parties agreed in principal that Respondent would stop using Complainant’s mark in conjunction with her businesses.
Respondent continued to use Complainant’s mark in conjunction with the <korbelranch.com> and <korbelkennel.com> domain names after the parties reached agreement that she would stop using the domain names.
The <korbelranch.com> domain name resolves to a website supporting links to third party commercial websites.
The <korbelkennel.com> domain name does not resolve to any web object. However, it is an asset of Respondent’s business and as such it is “used.”
Upon expiration of the current registration period, the Respondent does not intend to renew either at-issue domain name.
The parties are engaged in multiple litigations that do not directly concern the at-issue domain names or Complainant’s trademark rights.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant demonstrates that it has registered its KORBEL mark with the United States Patent and Trademark Office (USPTO). The Panel finds that this registration with the USPTO sufficiently establishes Complainant’s rights in the mark for the purposes of Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”).
The <korbelranch.com> and <korbelkennel.com> domain names are confusingly similar to Complainant’s KORBEL mark, as they both incorporate the exact mark and merely add the generic terms “ranch” and “kennel” to the mark, along with the generic top-level domain (“gTLD”) “.com.” As a top-level domain is required of all domain names, the addition of the gTLD “.com” is irrelevant to Policy ¶ 4(a)(i) analysis. Therefore, the Panel finds that the <korbelranch.com> and <korbelkennel.com> domain names are confusingly similar to Complainant’s KORBEL mark under Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . .").
Under paragraph 4(a)(ii) of the Policy, Complainant must first make out a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain names. The threshold for such showing is low. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005). Once a prima facie case is established, the burden then shifts to Respondent who must demonstrate that Respondent nevertheless has rights or legitimate interests in an at-issue domain name.
Complainant contends that it did not authorize Respondent to use either at-issue domain name and further that Respondent is neither affiliated with, nor commonly known as, either KORBEL KENNEL or KORBEL RANCH. Complainant additionally contends that the Respondent does not use the <korbelranch.com> and <korbelkennel.com> domain names to engage in any bona fide business since the domain name resolves to a website linking to some of Complainant’s competitors. Therefore, Complainant has satisfied its light initial burden.
Respondent asserts that she registered each at-issue domain names to respectively support her Kennel and Horse Ranch business. She claims that her father, who is Complainant’s Chief Executive Officer and majority stockholder, authorized her to use the KORBEL mark in connection with each of those endeavors and gave her indirect financial support for her businesses.
Within the instant Complaint, Complainant denies that it ever authorized Respondent to use its mark. However, Complainant failed to specifically deny that it had given such permission when Respondent’s counsel suggested such in a letter to Complainant’s counsel. The absence of Complainant’s reply challenging Respondent’s counsel’s remarks acts as an admission by silence and tends to prove the veracity of Respondent’s counsel’s statements concerning Complainant’s granting permission to use its KORBEL mark. But even if Complainant granted Respondent the right to use its KORBEL mark in connection with her business, it is clear from the parties’ submissions that any such right to use Complainant’s mark have since been revoked.
Respondent acknowledges that she has no intention of renewing the at-issue domain names when they expire. The fact that Respondent is willing to abandon the domain names by failing to renew their registration, or has voluntarily stopped using the domain names is not dispositive of a prior express grant or implied license from Complainant to use its trademark. If Respondent has rights in the domain names, then she likewise has the right to stop using them, or to not renew the domain names. The fact that Respondent filed a Response indicates that Respondent does not concede that she lacks rights in the domain names and that she has not yet abandon them, although her intention may be to do so in the future.
On the other hand, in a letter from her attorney to attorney for Complainant, and elsewhere in her submissions, Respondent unequivocally acknowledges that she does not intend to use the at-issue domain names in connection with either her Ranch or Kennel business, except with regard to previously named animals. Within the underlying correspondence between opposing counsels, Respondent accepts a payment of $2,000 from Complainant to remove the Korbel Ranch sign on the gate to her business location. (Curiously, in its supplemental submission Complainant seems to assert that this sign never existed). There was a settlement between the parties as to the continued use of the KORBEL mark. Therefore, by her agreement, Respondent divested herself of any and all right to use the at-issue domain names.
For the forgoing reasons, the Panel finds that Respondent has no current rights or interest in the domain names.
For relief to be granted Complainant must, inter alia, show that the Respondent both registered and used the at-issue domain names in bad faith. Having asserted, through counsel, that she would stop using the KORBEL mark and then continuing to use the mark by holding the <korbelkennel.com> domain name and allowing the <korbelranch.com> domain name to reference a website with commercial links to third party businesses, Respondent is using the at-issue domain names in bad faith.
However, even though the at-issue domain names are currently being used in bad faith, it is not apparent that they were registered in bad faith. As discussed above regarding rights and interests, and for the reasons set out below, at the time Respondent registered the at-issue domain names, it appears more probable than not that Respondent believed that she was acting with the knowledge and consent of Complainant. If Complainant consented, or even impliedly consented to the at-issue domain name registrations, then Respondent cannot be held to have registered the domain names in bad faith.
Respondent’s original use for the at-issue domain names was to direct traffic to Respondent’s Ranch and Kennel websites. She had no hidden agenda. The fact that Respondent registered and initially used the at-issue domain names was because of the KORBEL mark, its notoriety, and/or Respondent’s relation to the family owned and controlled KORBEL business. It is not beyond the pale that her father, the majority stock holder in complainant Korbel, would allow his daughter, Respondent, to use the KORBEL mark in her non-competing businesses. Furthermore, in light of the physical proximity of Respondent’s business to Complainant’s business, the fact that Respondent was at one time employed by Complainant, the litigation between the parties, and the father-daughter relationship between Respondent and Complainant’s principal, it is almost inconceivable to think that Complainant wasn’t at least aware of the domain name registrations from the outset. The <korbelranch.com> domain name was registered in 2003.
Complainant is legally sophisticated. Yet years passed after the first at-issue domain name was registered before any complaint was filed in this forum or threatened in any other forum. The implication is that the dispute between the parties regarding the domain names and the use of Complainant’s marks occurred sometime after the at-issue domain names were registered; after Complainant had a change of heart. This conclusion is consistent with Respondent’s claims that a falling-out developed between her and her father in or around December 2006, the demand letter from Complainant’s counsel at about that time, and the wealth of pending litigation between the parties since then.
Finally, we consider the conduct of Complainant in this proceeding. Complainant filed a copy of Respondent’s tax return as an attachment to its supplemental submission to the Panel. The submission was in reply to the Response. The tax return was attached ostensibly to show that Respondent ran a business by the name of Triple B Ranch. However, Respondent admits throughout her papers that she operates TBR / Triple B Ranch. There does not seem to be any need for additional documentary evidence on this point. Even if documentary support were called for as evidence of Respondent’s business identity, the Panel can think of numerous public documents that might serve well for that purpose, yet would not compromise Respondent’s private data.
Complainant did not redact the clearly irrelevant, yet sensitive, personal and financial information contained within Respondent’s annexed federal tax returns. The returns were proffered as filed, in the clear, without the benefit of any security safeguards. There is no indication that Respondent was consulted or gave permission for the disclosure of her private personal and financial information. Likewise, there is no indication of how Complainant’s counsel came by Respondent’s tax returns in the first place. To make matters worse, Complainant’s citation to the tax return pinpoints but one schedule of the entire return. The submission is thus unnecessarily overbroad.
In light of the foregoing, Complainant’s submission of Respondent’s tax return appears to be purely gratuitous. Without more, Respondent’s tax return emerges as being proffered primarily to vex or embarrass the Respondent. Complainant’s motives in submitting the tax return are thus ethically and legally suspect. However, whether or not Complainant’s conduct amounts to sufficient bad faith to equitably vitiate a finding against Respondent under Policy ¶ 4(a)(iii) is not considered herein. The Panel’s conclusion on the merits regarding Policy ¶4(a)(iii) renders such a determination moot.
Because the evidence does not support that the at-issue domain names were registered in bad faith, but rather were registered with the consent of Complainant, the Panel finds that Respondent did not register and use the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Thread.com, LLC v. Poploff, D2000-1470 (WIPO Jan. 5, 2001) (finding that the respondent did not register the disputed domain name in bad faith where it “registered the Domain Name with the full consent and knowledge of Complainant” and therefore “did not have the requisite bad faith when he registered the Domain Name, which is an express requirement of the Policy”); see also Creative Paradox LLC v. Talk Am. , FA 155175 (Nat. Arb. Forum June 23, 2003) (finding no bad faith registration of the domain name where the panel found evidence that the respondent was authorized to register the disputed domain name by the complainant).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Paul M. DeCicco, Panelist
Dated: November 8, 2007
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