BRIO Corporation v. Spruce Caboose a/k/a Brio is Overpriced and Arrogant Fascists
Claim Number: FA0205000114419
Complainant is BRIO Corporation, Germantown, WI (“Complainant”) represented by David R Cross, of Quarles & Brady LLP. Respondent is Spruce Caboose, Davis, CA (“Respondent”) represented by Daniel Sobottka.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <brio-train.com>, <brio-toy.com>, <brio-sucks.com>, <briosucks.com>, and <brioexposed.com>, ("Domain Names") registered with DotRegistrar.com.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Clive Elliott as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 28, 2002; the Forum received a hard copy of the Complaint on May 28, 2002.
On June 3, 2002 , DotRegistrar.com confirmed by e-mail to the Forum that the domain names <brio-train.com>, <brio-toy.com>, <brio-sucks.com>, <briosucks.com>, and <brioexposed.com> are registered with DotRegistrar.com and that the Respondent is the current registrant of the names. DotRegistrar.com has verified that Respondent is bound by the DotRegistrar.com 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 June 19, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 9, 2002 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 firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, and firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on July 9, 2002.
Complainant submitted a timely Additional Submission on July 12, 2002.
On July 23, 2002 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Clive Elliott as Panelist.
Complainant requests that the Domain Names be transferred from Respondent to Complainant.
BRIO AB, a corporation organized under the laws of Sweden, owns U.S. Trademark Registration No. 1,277,165, issued May 8, 1984, for BRIO for use in connection with toys and games. BRIO AB owns additional U.S. trademark registrations and applications for the BRIO mark for different goods. The BRIO trademark is also registered in other countries, including Australia, Canada, Sweden, Switzerland and the United Kingdom. Complainant BRIO Corporation is BRIO AB’s exclusive licensee for use and enforcement of the BRIO mark in the United States.
The BRIO name is well-known for the high quality and durability of the toys. The BRIO trademark was first used internationally at least as early as 1932, with formal introduction to the United States in 1953. BRIO toys include its world-renowned tabletop wooden labyrinth, a growing line of plush toys for younger children, the BRIO Waterway system of boats and water-filled channels, and the goods at issue in this Complaint, the BRIO wooden railway system.
The Domain Names all incorporate the registered BRIO trademark along with generic or descriptive terms. Furthermore, two of the domain names incorporate terms commonly associated with the BRIO trademark: “toy” and “train.” These references reinforce the connection between the domain names and the famous BRIO trademark.
Through its <sprucecaboose.com> and <woodtrain.com> web sites, Respondent is a retailer of wooden trains allegedly compatible with BRIO wooden trains. Respondent does not sell authentic BRIO trains, nor has it been an authorized BRIO retailer in the past.
BRIO Corporation takes no issue with Respondent’s current textual use of the BRIO mark on its <sprucecaboose.com> site to note the compatibility of its wooden trains and track with BRIO’s wooden train play sets, to the extent that such statements are accurate and not misleading.
Similar to <brio-train.com>, the <brio-toy.com> domain name implies the same kind of connection to BRIO Corporation and its official <briotoy.com> domain name and web site. This name is currently used to display an advertisement for a domain name registration service called “Dyno Domains”. BRIO Corporation alleges that Dyno Domains is in fact another business owned by Respondent, based on the identity between the contact information in the WHOIS pages for <dyno-domains.com> and the registrations at issue here.
The other three domain names at issue in this case do not imply the same connection to BRIO Corporation’s commercial activities.
In addition to this Respondent also uses its “criticism” domain names and <brio-toy.com> to feature a series of links titled “Fun With Brio.” The three separate links at the bottom of each site all lead to the <brio-train.com> web site, as revealed by the HTML source code of each site, and then to Spruce Caboose’s site via the prominent, hyperlinked advertisement for Spruce Caboose on the <brio-train.com> site. It is asserted that these domain names are diverting Internet traffic intended for BRIO Corporation’s web sites to Respondent’s businesses.
The Complainant asserts the Respondent has engaged in repeated acts of bad faith with respect to the <brio-train.com> domain name. It states that as early as September 2000, Spruce Caboose used the <brio-train.com> and <brio-compatible.com> names to mirror the content of its <sprucecaboose.com> and <woodtrain.com> web sites, using the BRIO trademark to attract consumers to a directly competitive product. Complainant submits that in addition to this “initial interest confusion,” Respondent’s sites each contained misleading links labeled “Brio Train Home Page” and “Brio Train Questions and Comments”
Complainant states that it contacted Respondent in May 2001 regarding its registration and use of the <brio-train.com> domain name and the misleading content on its web sites and demanded that Respondent correct the misleading content of its web sites and transfer the <brio-train.com> registration.
In response to these demands Respondent amended the links on its web sites by adding the word “compatible” after the word BRIO. Respondent also claimed that it had transferred the <brio-train.com> domain name to Brio Technology, Inc., a computer software design company and that it no longer had the capacity to transfer the <brio-train.com> domain name to BRIO Corporation.
BRIO Corporation then found out that Respondent had not transferred the <brio-train.com> domain name to Brio Technology. It is asserted that in discussions with BRIO Corporation’s counsel, Brio Technology disclaimed any knowledge of or control over <brio-train.com> and agreed to cooperate with BRIO Corporation in resolving this matter. It is also asserted that BRIO Corporation learned that Respondent falsified the WHOIS data for the <brio-train.com> registration, showing Brio Technology as registrant and copying certain elements of Brio Technology’s own WHOIS data into the <brio-train.com> record. On closer inspection, however, it is evident that the e-mail addresses and DNS hosts in this false WHOIS data were all located at <woodtrain.com>, one of Respondent’s domains.
BRIO Corporation again wrote to Respondent demanding an immediate transfer of the <brio-train.com> registration. Respondent again modified the WHOIS data for <brio-train.com>, this time adopting the name “Brio Is Overpriced and Arrogant Fascists” (sic). Respondent then updated the content of the <brio-train.com> web site to recount its correspondence with and opinion of BRIO Corporation. Respondent registered the additional domain names at issue, each incorporating the BRIO mark.
Finally, it is stated that the Respondent has recently revised the <brio-train.com> site to feature a large graphical advertisement for its Spruce Caboose web site. The graphic is also a hyperlink to the <sprucecaboose.com> web site. It is said that this change re-establishes the commercial use of the <brio-train.com> site to divert traffic to a direct competitor of BRIO Corporation.
Respondent is a retailer of wooden trains.
Respondent states it originally registered just one of the domain names in dispute at the time that Complainant's lawyers first contacted Respondent on June 11, 2001. That is, the domain name <brio-train.com>. Respondent claims that before being contacted it had used this domain name, and many others, to point to its main site, <sprucecaboose.com>, which it used to market wooden trains. Respondent states that domain names such as <brio-train.com> etc. were useful in keyword weighting for search engines. Respondent says it ceased this after receiving a letter from Complainant. At this time Respondent claims to have changed ownership of this domain name to that of Brio Technology.
The Respondent states that after the Complainant’s next letter on July10, 2001, it became clear that nothing would satisfy them except to hand over the domain name <brio-train.com>. At this point, Respondent says it began pointing the domain name to a protest website, as it still remains today. Respondent says, all names in dispute point to the same page and threatens the page will be updated if the Complainant's abuse continues.
The Respondent also accepts that upon receiving the letter from the Complainant and changing its first Domain Name to a so called protest/free-speech site, Respondent registered the following domains:<brioexposed.com>, <brio-toy.com>, <brio-sucks.com>, <briosucks.com>. It states that these were automatically parked for a few months, as is typical for a new domain name before they can be developed.
The Respondent alleges the Complainant has delayed unacceptably long before bringing its Complaint, that the word "Brio" is not unique to the Complainant, and that this is a case of reverse hijacking and bad faith harassment. Finally, it contends that its sites are "strictly non-commercial" and the key issue is not about domain names but "free speech".
C. Additional Submissions
Complainant’s Additional Submission deals with the allegation of delay/laches. It is argued that these issues are not applicable as the Respondent altered its sites from time to time and conduct that the Complainant could live with became unacceptable later.
The second issue involves the Respondent’s reliance on the findings in Victoria’s Secret v. Nat’l Rag, FA 96492 (Nat. Arb. Forum Apr. 3, 2001). This is discussed below, under the bad faith head.
For the reasons given below the Complainant succeeds in its action.
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.
Identical and/or Confusingly Similar
Complainant asserts rights in the BRIO mark and provides evidence of a registered trademark with the United States Patent and Trademark Office for the mark (Reg. No. 1,277,165). Complainant also provides evidence of worldwide trademark registration for its BRIO mark in countries such as Australia, Canada, Sweden, Switzerland and the United States.
Complainant uses its mark in connection with toys and games and claims that the BRIO mark is “exceptionally well-known for the high quality and durability of the toys.” Complainant notes that the BRIO mark was first used internationally around 1932 and was introduced to the United States in 1953.
Complainant asserts that Respondent’s <brio-train.com> and <brio-toy.com> domain names are confusingly similar to Complainant’s BRIO mark. Complainant contends that the addition of the words “train” and “toy” do not create a distinct domain name because the words have a relation to Complainant’s business. Complainant claims that these two words are “commonly associated with the BRIO trademark.” See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the Respondent’s domain name combines the Complainant’s mark with a generic term that has an obvious relationship to the Complainant’s business); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity); see also Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT mark).
Furthermore, the Panel may find that Respondent’s use of Complainant’s BRIO mark in the <brio-sucks.com>, <briosucks.com>, and <brioexposed.com> domain names renders the names confusingly similar to Complainant’s mark. The words “sucks” and “exposed” in the domain name fail to detract from the dominating presence of Complainant’s BRIO mark. See Vivendi Universal v. Sallen, D2001-1121 (WIPO Nov. 7, 2001) (finding the domain name <vivendiuniversalsucks.com> was confusingly similar to Complainant's VIVENDI UNIVERSAL mark, because non-english speakers would associate the domain name with the owner of the trademark); see also ADT Services AG v. ADT Sucks.com, D2001-0213 (WIPO Apr. 23, 2001) (exploring the difference of opinion among Panels on "Sucks" domain name disputes and concluding that use of the "sucks" suffix does not defeat Complainant's confusing similarity argument).
The Panel acknowledges the existence of a line of decisions that differ on the question of whether “sucks” domains are confusing, whether inherently or otherwise. This Panel prefers the view that each case turns on its facts and for reasons given below it finds that Respondent (a small but direct competitor in the wooden toy market) has gone beyond mere criticism and complaint and that its conduct is likely to create confusion in the minds of at least some consumers.
Accordingly, this ground is made out.
Rights or Legitimate Interests
As noted above, Respondent is a direct competitor in the wooden toy market and makes wooden trains that are compatible with BRIO wooden trains. Complainant asserts that it currently allows Respondent to use the BRIO mark to notify consumers that Respondent’s products are compatible with Complainant’s goods. However, Complainant never authorized Respondent to use the BRIO mark in any of the domain names, especially the <brio-train.com> domain name. Complainant claims that Respondent, as a competitor, has no rights to the <brio-train.com> domain name because it is so closely connected to Complainant.
Complainant claims that Respondent uses the Domain Names in connection with a website that advertises for “Dyno Domains.” Complainant claims that “Dyno Domains” is a business owned by Respondent, which provides domain name registration services. Therefore, the Panel may find that Respondent’s use of the disputed domain names to advertise its own unrelated business is not an offering of bona fide goods and services pursuant to Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where Respondent attempted to profit using the Complainant’s mark by redirecting Internet traffic to its own website).
There is no evidence on the record that suggests Respondent is commonly known by any of the disputed domain names or any variation thereof in connection with the BRIO mark. Therefore, Respondent does not have any rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).
Previous Panels have commented at some length on the legal implications of "Sucks" sites. An example is Leonard Cheshire Found. v. Darke, D2001-0131 (WIPO), which related to a rather virulent criticism site run by a disenchanted ex-employee. The decision states:
“The situation with regard to "Sucks" sites is instructive. It is now well accepted that "Sucks" has entered the vernacular as a word loaded with criticism. There is reference to this in the "wallmartcanadasucks.com" case (Wall-Mart Stores, Inc, v. "wallmartcandasucks.com" and Kenneth J Harvey (Case no D2000-1104) There was also the Panelist's comment, when looking at the legitimacy of the Respondent’s site:
"Thus whether wallmartcanadasucks is effective criticism of Wall-Mart, whether it is in good taste, whether it focuses on the right issues, all are immaterial; the only question is whether it is criticism or parody rather than free-riding on another’s trademark".
The American Restatement (Third - Unfair Competition) recognizes the balance that needs to be struck between the right of criticism and the rights of a trademark owner:
"One who uses a designation that resembles the trademark, trade name, collective mark or certification mark of another, not in a manner that is likely to associate the other’s mark with the goods, services, or business of the actor, but rather to comment on, criticize, ridicule, parody, or disparage the other or the other’s goods, services business, or mark, is subject to liability without proof of the likelihood of confusion only if the actor’s conduct meets the requirements of a cause of action for defamation, invasion of privacy, or injurious falsehood".
The Respondent is entitled to a degree of personal freedom of expression, provided it is otherwise lawful and subject of course to the Complainant’s legal right to seek to restrain such expression by other means. Once again however, we have to focus on the domain name issue and the wording of the Policy. As stated in the Wal-Mart case (supra) "In domain name disputes it is critical whether the accused domain itself signifies parodic or critical purposes, as opposed to imitation of trademark."
As noted above, Respondent is a competitor of Complainant. What is significant in this case is that the Respondent goes further than merely criticizing the Complainant (which is not per se objectionable at law). Respondent takes the criticism one step further. It uses, in conjunction with the said “Sucks” sites, its name and logo accompanied by the prominent statement “Don’t waste your money on Brio when there ARE better choices out there”.
The purpose seems clear – criticize the competition and get consumers to switch to the Respondent's product. In the Panel’s view such conduct is not saved by any of the exemptions in the Policy and is not indicative of a legitimate interest or right.
Accordingly, this ground is made out.
Registration and Use in Bad Faith
Complainant asserts that Respondent has a history of frustrating its business. Complainant contends that Respondent registered <brio-train.com> and <brio-compatible.com> as early as September 2000. Complainant notes that Respondent used these domain names to link to its <sprucecaboose.com> website, where Respondent sold products in competition with Complainant. After Complainant repeatedly contacted Respondent about the infringing use of the Domain Names, Respondent stopped this specific diversionary use. Complainant contends that Respondent failed to transfer the <brio-train.com> domain name following notification that it was going to transfer the domain name to Complainant.
The Panel may find that Respondent’s aforementioned behavior and current registration/use of the disputed domain names constitute an opportunistic attempt to trade on the goodwill of the BRIO mark. Therefore, Respondent registered and used the disputed domain names in bad faith. See Chanel, Inc. AG v. Designer Exposure, D2000-1832 (WIPO Feb. 15, 2001) (finding that Respondent's registration and use of the famous CHANEL mark suggests opportunistic bad faith).
Since Complainant and Respondent are in direct competition with one another, the Panel may find that Respondent registered the disputed domain names primarily for the purpose of disrupting Complainant’s business. Such a finding warrants a conclusion of bad faith registration and use under Policy ¶ 4(b)(iii). See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion); see also Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that domain names were registered and used in bad faith where Respondent and Complainant were in the same line of business in the same market area); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the Complainant's marks suggests that Respondent, Complainant’s competitor, registered the names primarily for the purpose of disrupting Complainant's business).
Due to Respondent’s competitive relationship with Complainant and the fact that Respondent manufactures and distributes BRIO compatible products, the Panel may find that Respondent had knowledge of Complainant’s rights in the BRIO mark. Therefore, a determination of bad faith registration is warranted because Respondent registered the disputed domain names despite knowledge of Complainant’s rights. See Vivendi Universal v. Sallen and GO247.COM, INC., D2001-1121 (WIPO Nov. 7, 2001) (finding bad faith because Respondents had prior knowledge of Complainant's VIVENDI UNIVERSAL mark and deliberately chose to register a domain name that incorporated that mark in its entirety with the word "sucks"); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding bad faith where Respondent knowingly chose a domain name, identical to Complainant’s mark, to voice its concerns, opinions, and criticism about the Complainant); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse").
Furthermore, Respondent’s use of <brio-sucks.com>, <briosucks.com>, and <brioexposed.com> may cause some level of initial interest confusion among the consuming public. Therefore, the Panel may find that Respondent’s registration and use of those domain names constitute bad faith under Policy ¶ 4(a)(iii). See Cabela’s Inc. v. Cupcake Patrol, FA 95080 (Nat. Arb. Forum Aug. 29, 2000) (finding that Complainant, owner of the Federally registered trademark CABELA’S and user of the domain name <cabelas.com>, was entitled to relief under UDRP against Respondent for the bad faith registration and use of the domain name <cabelassucks.com> because “by using Complainant’s marks in its domain names, Respondent makes it likely that Internet users entering CABELA’S into a search engine will find <cabelassucks.com> in addition to the Complainant’s site <cabelas.com>).
Respondent claims that its conduct is sanctioned by the findings in Victoria’s Secret v. Nat’l Rag, FA 96492 (Nat. Arb. Forum Apr. 3, 2001). “National Rag,” the Respondent in Victoria’s Secret was a private citizen who had registered the domain name <victoriassecretexposed.com>. At some point, National Rag used the domain name to host a web site with various content described by National Rag as criticism of Victoria’s Secret, a well-known retailer of intimate apparel, and its corporate policies. National Rag did not propose any commercial transactions through its web site, and did not own or participate in a business that had any connection to Victoria’s Secret.
The Panel found that Victoria’s Secret had failed to prove bad faith in the registration and use of the domain name. As the Complainant points out, there was no evidence that National Rag stood to profit from the resale or commercial use of <victoriassecretexposed.com>, no pattern of warehousing domain names corresponding to well-known trademarks, and no indication that National Rag was a competitor of Victoria’s Secret.
It its Reply Brief the Complainant argues that the facts leading to the Victoria’s Secret result is distinguishable from the current dispute. It submits:
· Respondent is a direct competitor of BRIO Corporation, selling wooden trains and accessories designed to be used with authentic BRIO wooden train sets.
· Respondent admits that it registered four of the five domain names at issue after being placed on notice of BRIO Corporation’s trademark rights and after fraudulently claiming that the <brio-train.com> domain name was transferred to a third party.
· Respondent continues to use the BRIO name and mark in these domain names to promote its own commercial enterprises through the prominent advertisement of its Spruce Caboose business at the top of each web site
This contention has merit and distinguishes this case from not just the Victoria’s Secret case, but certain others, where non-commercial activities were involved.
Accordingly, this ground is made out
Given the above findings, the Domain Names should all be transferred to the Complainant.
Clive Elliott, Panelist
Dated: 5 August, 2002
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