Sabine Ullmann d/b/a Barefoot Saddles
v. Black Forest Stables, Inc.
Claim Number: FA0803001164380
PARTIES
Complainant is Sabine
Ullmann d/b/a Barefoot Saddles (“Complainant”), represented by Alfred C. Frawley, of Preti,
Flaherty, Beliveau, Pachios and Haley, LLC, Maine, USA. Respondent is Black Forest Stables, Inc. (“Respondent”), represented by David L. Tingey, Washington,
USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <barefootsaddle.com>, registered with Network Solutions, Inc.
PANEL
The undersigned certifies that she has acted
independently and impartially and to the best of her knowledge has no known
conflict in serving as Panelist in this proceeding.
Carol M. Stoner, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National
Arbitration Forum (hereinafter, “NAF”) electronically on March 20, 2008; the National Arbitration Forum
received a hard copy of the Complaint on March
20, 2008.
On March 20, 2008,
Network Solutions, Inc. confirmed by
e-mail to the National Arbitration Forum that the <barefootsaddle.com> domain name is registered with Network Solutions, Inc. and that the Respondent
is the current registrant of the name. Network Solutions, Inc. has verified that
Respondent is bound by the Network Solutions,
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 March 31, 2008, Complainant tendered an amended
Complaint to NAF, so as to correct those deficiencies stated in NAF’s March 26,
208 letter to Complainant.
On April 1, 2008,
a Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of April 21, 2008 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 postmaster@barefootsaddle.com by
e-mail.
A timely Response was received and determined to be
complete on April 18, 2008.
On April 30, 2008, pursuant to Complainant’s request
to have the dispute decided by a single-member Panel, the National Arbitration
Forum appointed Carol M. Stoner, Esq., as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name <barefootsaddle.com>
be transferred from Respondent to Complainant. Respondent requests that the Panel make a
determination of reverse domain name hijacking, as against Complainant.
PARTIES’ CONTENTIONS
A. Complainant contends as follows:
The domain name <barefootsaddle.com> was
registered in April 2004, by a non-existent company, that is, the registrant,
Barefoot Saddles, Inc. No such corporate
name has been found to exist in Washington State. The domain name is identical to the common
law trademark that Complainant and its predecessor have used for six years
throughout the world to designate the source of high quality, treeless
saddles. The subject domain name
resolves to a web page that lists treeless saddles, similar to those sold by
Complainant. The parties have severed
their informal relationship. Respondent,
in the course of discussions ending the relationship, declared: “[Respondent] will cease using ‘Barefoot’
mark on their product....”
Complainant has filed a cancellation proceeding before
the United States Trademark Office (hereinafter, “USPTO”) based upon
Respondent’s fraud on the USPTO, as well as Complainant’s priority. Subsequent to the filing of the cancellation
proceeding, Respondent has disclaimed any usage of, or right to, the mark.
While Respondent has abandoned the use of the BAREFOOT
brand on saddles competing with those sold by Complainant, it has continued to
use a “feather” logo and “BF” as marks.
These are marks identical to marks used by Complainant. Aside from being further evidence of bad faith
by Respondent, Complainant’s infringing use of these devices is beyond the
scope of these proceedings.
B. Respondent contends as follows:
Respondent is the owner of the trademark, BAREFOOT,
(stylized) registered at the USPTO under registration number 3,389,545. Respondent’s description of goods under this
registration includes saddles. Hence, his domain name <barefootsaddles.com>
is consistent and appropriate.
Beginning in 2004, Respondent used the mark in the United States and Canada, that was used by Complainant elsewhere in the
world. Respondent has developed a
reputation in the United States and is known in the buying community by that
mark. Evidence of Respondent’s use of
the mark in the United States and Canada are provided in the attached Exhibits.
Complainant does not have a registered trademark in
the United States and lacks sufficient evidence of common law usage.
Respondent registered his domain name on April 13,
2004.
Respondent Black Forest Stables Inc. has done
business, since 2004, under the trade name of Barefoot Saddles, Inc., which was
registered with the State of Washington. Respondent has also, since 2007,
conducted business under the mark BAREFOOT (stylized). Mr. Sivitilli, in his
capacity as an officer of the corporation, filed for registration of the
subject trademark under the trade name of his corporation. The trademark
registration is being amended to correct ownership, to the corporation Black
Forest Stables, Inc., instead of the trade name.
Respondent claims that Complainant has done no
marketing in the United States and has sold only an isolated very few saddles
to persons in the United States and Canada, except to Respondent. Complainant, in fact, purchases saddles from
a saddle manufacturer and adds her mark to the saddles before shipping.
Respondent contends that he has not operated as a
licensed distributor, but rather purchases product from more than one provider
and then resells the product under his own business name, which business name
is also the domain name at issue.
Respondent states that he will continue to sell
treeless saddles under his mark, but not new saddles from Complainant.
Respondent respectfully submits that all criteria for
a finding of Reverse Domain Name Hijacking are more than amply met in the facts
of this case, and therefore, requests that the Panelist make such a finding.
Respondent stated that he has answered Complainant’s
USPTO petition to cancel Respondent’s trademark registration.
FINDINGS
1. The domain name <barefootsaddle.com> registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
2. 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.
DISCUSSION
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 does not hold a registered trademark with
any governmental authority for the BAREFOOT or BAREFOOT SADDLE marks. However, a trademark registration is
unnecessary to establish rights in the mark under Policy ¶ 4(a)(i). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb.
Forum July 18, 2006) (finding that the complainant need not own a valid
trademark registration for the ZEE CINEMA mark in order to demonstrate its
rights in the mark under Policy ¶ 4(a)(i)); see also Hiatt v. Pers.
Fan & Official Site Builders : we build great sites, FA 881460 (Nat.
Arb. Forum Feb. 21, 2007) (“Registration with a trademark authority is
unnecessary under Policy ¶ 4(a)(i) in instances where
a mark has gained secondary meaning through extensive commercial use and common
law rights have been established ….”).
Complainant states that is has conducted business in the United States
since November 2003, and in Canada since April 2006. Complainant asserts that
it conducts business under the BAREFOOT SADDLE mark to sell treeless saddles
and that it has used the BAREFOOT mark as an identifier of its products, such
as in the advertising of the BAREFOOT mark in Covallo magazine in 2003.
Complainant has not definitively established extensive
commercial use of the disputed marks, solely through its own efforts. However,
Complainant is entitled to the cumulative effects of consumer name recognition
of its mark due to Respondent’s piggyback marketing efforts, albeit under the
guise of “implied authority.” That is,
Respondent has, in a wily fashion, assumed the mantle or shibboleth of
Complainant’s marks by registering his corporation for a series of trade names,
including Barefoot Saddles, Inc, and even more boldly, by filing a federal
trademark under this assumed corporate name.
Thus, Respondent’s extensive commercial use has inured
to the benefit of Complainant sufficient to confer secondary meaning upon the
common law marks.
Based upon this evidence, the Panel finds that
Complainant has established common law rights in the BAREFOOT SADDLE and/or
BAREFOOT marks pursuant to Policy ¶ 4(a)(i). See Tuxedos By
Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law
rights in a mark where its use was continuous and ongoing, and secondary
meaning was established); see also Nat’l Ass’n of Prof’l Baseball Leagues v.
Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (finding that the complainant
had provided evidence that it had valuable goodwill in the
<minorleaguebaseball.com> domain name, establishing common law rights in
the MINOR LEAGUE BASEBALL mark)
The Panel finds Respondent’s <barefootsaddle.com>
domain name to be identical to Complainant’s alleged BAREFOOT SADDLE mark
pursuant to Policy ¶ 4(a)(i) since the removal of the space and addition of the
generic top-level domain (“gTLD”) “.com” are both irrelevant under the Policy. See Hannover Ruckversicherungs-AG v. Ryu,
FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be
identical to HANNOVER RE, “as spaces are impermissible in domain names and a
generic top-level domain such as ‘.com’ or ‘.net’ is required in domain
names”); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum
Mar. 31, 2001) (finding that the <bodybyvictoria.com> domain name is
identical to the complainant’s BODY BY VICTORIA mark).
The Panel also
finds Respondent’s <barefootsaddle.com> domain name to be
confusingly similar to Complainant’s alleged BAREFOOT mark pursuant to Policy ¶
4(a)(i) since the addition of the descriptive word “saddle” describes
Complainant’s business. See Space
Imaging LLC v. Brownell, 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 Marriott Int’l, Inc. 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 the
complainant’s MARRIOTT mark)."
Rights or Legitimate Interests
Complainant must first make a prima facie case
that Respondent lacks rights and legitimate interests in the disputed domain
name under Policy ¶ 4(a)(ii), and then the burden
shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t
Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the
complainant must first make a prima facie case that the respondent lacks
rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show
that it does have rights or legitimate interests in a domain name); see also
AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006)
(“Complainant must first make a prima facie showing that Respondent does not
have rights or legitimate interest in the subject domain names, which burden is
light. If Complainant satisfies its
burden, then the burden shifts to Respondent to show that it does have rights
or legitimate interests in the subject domain names.”).
Complainant has shown, through its Exhibit A-1 and
A-2, that WHOIS information previously identified Respondent as “Barefoot
Saddles, Inc.”and currently identifies Respondent as
“Black Forest Stables, Inc.”
“Barefoot Saddles, Inc.” is not a corporation, but is,
rather, one of several filed assumed names for the corporation, “Black Forest
Stables, Inc.” Respondent has not
evidenced any permission to use or operate under the “Barefoot Saddles”
moniker. However, Exhibit F of Respondent’s
Response is a letter from Respondent’s attorney which attempts to tie up this
dilemma in the pretty package of an “implied license.”
“Mr. and Mrs.
Sivitilli have been selling saddles under the mark since June 01, 2004 with the
knowledge of Mrs. Ullman. Throughout
these years, she has made no attempt to claim or enforce a trademark right
preventing resale. If in fact it were
found that Mrs. Ullman did have a legitimate claim to a trademark in the U.S.
which is not apparent from your letter or the USPTO record, Mrs. Ullman sold
her product to Mr. And Mrs. Sivitilli knowing that the product would be resold
by Mr. and Mrs. Sivitilli.. This is an implied license to do so.” (Emphasis
added.)
The Panel does not conclude that an implied license to
resell a product is also an implied license to usurp the applicable trademarks
of the imported products.
Complainant’s Exhibit E is an article captioned “Who
is Barefoot Saddle, Inc.?” pulled from <barefootsaddle.com/about>. “Barefoot Saddle Inc is owned and operated by
Ursula and Victor Sivitilli, of Black Diamond, Washington....We are proud to
say that we are responsible for making the Barefoot brand name a household
(er...barn-hold) name in this country.” Just as the jockey does not own the
horse, unless there is a contract to the contrary, a self-described importer/distributor
does not own the brand name of a product, unless there is an explicit contract
to the contrary. Black’s Law Dictionary defines “implied authority” as
being that which is necessary, usual and proper to accomplish or perform the
main authority expressly delegated to an agent. See Clark v. Gneiting,
95 Idaho 10, 501 P.2d 278, 280 (Idaho 1972). Here, there is no express duty incumbent upon
an importer/distributor, which mandates
it to be reasonable and necessary for it to don the trademarks and tradenames
of the owner. Thus, the Respondent lacks
rights and legitimate interests in the disputed domain name of <barefootsaddle.com>,
pursuant to Policy ¶ 4(c)(ii).
Even during the term of its informal distributorship,
Respondent lacked authorization to use the BAREFOOT or BAREFOOT SADDLE marks in
a domain name. Thus, Respondent cannot establish rights or legitimate interests
pursuant to Policy ¶ 4(a)(ii). See Vapor Blast Mfg. Co.
v. R & S Techs., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001)
(finding that the respondent, an unauthorized reseller of the complainant’s
products, did not have rights or legitimate interests in a domain name that was
confusingly similar to the complainant’s mark); see also Carlon Meter Co. v.
Jerman, D2002-0553 (WIPO July 30, 2002) (“Respondent may well be an
important distributor of Complainant's products, but its right to use the
trademarks of Complainant do not necessarily extend to a right to use the
globally extensive domain name system by incorporating these trademarks in the
Domain Names in a manner which links them to Respondent's web site.”); see
also UVA Solar GmbH & Co. K.G. v. Kragh, D2001-0373 (WIPO May 7, 2001)
(finding that a former distributor of the complainant’s products maintained
rights and legitimate interests in respect to a domain name during the duration
of its distributorship agreement, but such rights and interests ceased upon
termination of the agreement)
Complainant has offered credible evidence that
Respondent is a direct competitor, and is using the <barefootsaddle.com>
domain name to advertise its competing products and profit from its sales.
Complainant’s Exhibit G, which is a pull-up of <barefootsaddle.com>, states in relevant part that, “We were the
original USA importers and distributor of the Barefoot saddles since
2004...Coming this Spring, we will be introducing our new line of treeless
saddles, with our exclusive design and improvements, handmade by our top
manufacturers.” This illicit
siphoning-off, of profits 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). See
Clear Channel Commc’ns, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan.
2, 2003) (finding that the respondent, as a competitor of the complainant, had
no rights or legitimate interests in a domain name that utilized the
complainant’s mark for its competing website); see also Coryn Group, Inc. v.
Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the
respondent was not using the domain names for a bona fide offering of
goods or services nor a legitimate noncommercial or fair use because the
respondent used the names to divert Internet users to a website that offered
services that competed with those offered by the complainant under its
marks).
As discussed above, in reference to Complainant’s
Exhibit G, this Panel finds that Respondent is using the <barefootsaddle.com>
domain name to market goods in direct competition with Complainant, and as a
result, is disrupting Complainant’s business.
Such use is evidence 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 the complainant and
the respondent, the respondent likely registered the contested domain name with
the intent to disrupt the complainant's business and create user confusion); see
also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000) (finding that the respondent registered the domain name in
question to disrupt the business of the complainant, a competitor of the
respondent).
Additionally, the Panel has determined, from an
examination of Complainant’s Exhibits E & G from Respondent’s website as
well as from Exhibits B, C, & D (invoices) that the <barefootsaddle.com>
domain name and resulting website are capable of causing confusion as to
Complainant’s sponsorship or affiliation with the disputed domain name and
resolving website. This likelihood, as
well as the likelihood that Complainant is commercially benefitting from this
confusion, constitutes evidence of bad faith registration and use under Policy
¶ 4(b)(iv). See
Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that
the respondent’s use of the <arizonashuttle.net> domain name, which
contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic
to Respondent’s website offering competing travel services violated Policy ¶
4(b)(iv)); see also BPI Commc’ns, Inc. v. Boogie TV LLC, FA 105755 (Nat.
Arb. Foum Apr. 30, 2002) (“Complainants are in the music and entertainment
business. The links associated with
<billboard.tv> and <boogie.tv> appear to be in competition for the
same Internet users, which Complainants are trying to attract with the <billboard.com>
web site. There is clearly a likelihood of
confusion between <billboard.tv> and BILLBOARD as to the source,
sponsorship, affiliation, or endorsement of the web site or of a product or
service on the web site.”).
Respondent’s statements that “Respondent has had no
business relation with Complainant except as a purchaser of her product” and “Specifically,
Respondent has not operated as a licensed distributor” are disengenuous at
best, in light of Respondent’s commencement of business in 2004. Rather, this conduct serves as evidence that Respondent had actual knowledge of
Complainant and Complainant’s marks at the time at which the <barefootsaddle.com>
domain name was registered. Thus, registration and use in bad faith under
Policy ¶ 4(a)(iii) is extant. See Yahoo! Inc. v.
Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding
bad faith where the respondent was “well-aware” of the complainant’s YAHOO!
mark at the time of registration and had even contacted the complainant about
entering into a business partnership); see also Bluegreen Corp. v. eGo,
FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the
method by which the respondent acquired the disputed domain names indicated
that the respondent was well aware that the domain names incorporated marks in
which the complainant had rights).
Reverse Domain Name Hijacking
Respondent has alleged that Complainant has engaged in
reverse domain name hijacking through the filing of the instant Complaint, as
Respondent contends that Complainant knew or should have known that it could
not satisfy either or both Policy ¶ 4(a)(ii) and
Policy ¶ 4(a)(iii). While Respondent’s conjecture as to what Complainant knew
or should have known at the time of the filing of the Complainant’s is mere
speculation, Complainant’s Complaint is replete with credible evidence of the
merit of its allegations. Said credible
evidence explicated not only a good faith belief in its rights to the <barefootsaddle.com> domain name, but
also satisfied Complainant’s burden under the Policy. Therefore, the Panel finds that Respondent’s
assertion of reverse domain name hijacking is without merit and is denied.
DECISION
Having established all three elements required under
the ICANN Policy, the Panel concludes that Complainant’s request for relief
shall be GRANTED.
Accordingly, it is Ordered that the <barefootsaddle.com> domain name be TRANSFERRED
from Respondent to Complainant.
Respondent’s request that Complainant be charged with reverse domain
name hijacking is denied.
Carol M. Stoner, Esq., Panelist
Dated: May 14, 2008
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