Sabine Ullmann d/b/a Barefoot Saddles v. Black Forest Stables, Inc.
Claim Number: FA0803001164380
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.
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.
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 firstname.lastname@example.org 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.
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.
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.
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.
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.
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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