DECISION

 

Super Fun Sports v. Superfun Hendrik Niefeld

Claim Number: FA0207000117022

 

 

1. DECISION

 

Super Fun Sports v. Superfun Hendrik Niefeld

Claim Number: FA0207000117022

 

2. PARTIES

 

Complainant is Super Fun Sports, Chiliwack, BC, CANADA ("Complainant") represented by Ari Goldberger, ESQ.  Respondent is Superfun Hendrik Niefeld, 71638 Ludwigsburg, GERMANY ("Respondent").

 

3. REGISTRAR AND DISPUTED DOMAIN NAME

 

The domain name at issue is <superfun.net>, registered with Network Solutions, Inc.

 

4. PANEL

 

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.

 

Tom Arnold serves as Panelist.

 

5. PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on July 23, 2002; the Forum received a hard copy of the Complaint on July 23, 2002.

 

On July 26, 2002, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <superfun.net> is registered with Network Solutions, Inc. and that 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 July 31, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 20, 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 postmaster@superfun.net by e-mail.

 

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

 

On about August 22, 2002, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Tom Arnold as sole Panelist.

 

Having reviewed the communications data provided by the Forum in this ¶5 above, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

 

Respondent filed a Response which is dated August 6, 2002, but the Panelist has no knowledge or record reflecting when it was received by the Forum. The Forum forwarded it on to the Panel.  The Panel has elected to give that Response full consideration as reflected in the following Decision.

 

The Forum has also received and forwarded to the Panel on about August 12, 2002, its "Complainant's Additional Written Statement in Reply to Respondent's Response."  The Panel has given full consideration to that paper as well.

 

6. RELIEF SOUGHT

 

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

7. KEY UDRP POLICY SEGMENT 4(a)

 

I quote here the UDRP Policy 4(a) which binds the panel.

 

"a. Applicable Disputes. You [Domain name registrant, Respondent, Superfun Hendrik Niefeld] are required to submit to a mandatory administrative proceeding in the event that a third party [Complainant, Superfun Sports] asserts to the applicable Provider, in compliance with the Rules of Procedure, that

 

"(i) your [Respondent's] domain name is identical or confusingly

similar to a trademark or service mark in which the complainant has rights; and

 

            (ii) you [Respondent] have no rights or legitimate interests in respect of

                        the domain name; and

 

(iii) your [Respondent's] domain name has been registered and is being

                        used in  bad faith.

 

In this administrative proceeding, the Complainant [Super Fun Sports] must

prove that each of these three elements are present.

 

I read the contentions of the parties in light of those requirements, noting

that  Complainant has the burden of proof on all of them or its cause fails.

 

 

8. PARTIES CONTENTIONS

 

            A. Complainant's

 

Super Fun Sports, Complainant, has presented its case with much of it supported by an affidavit of its President, Mr. Brunia, with specific details of dollars, years or dates, etc.--a much more persuasive and meaningful format for evidence than merely a set of conclusionary allegations, often as to facts a party obviously does not know or does not know first hand. Conclusionary allegations or pleadings without support by well proven basic elemental supporting facts, particularly when obviously based on hearsay or when about the acts or intent of another party about which the author does not appear to have first hand knowledge, are

extremely low on the scale of effective persuasion, so much so as to be inadmissible in many courts around the world. On this point (that evidence as distinguished from mere conclusionary allegations and hopes is important) my compliments to Complainant's counsel.

 

Unfortunately the mostly benign focus of this administrative process upon low cost and fast track disposition, precluded Complainant from having discovery by which to develop first hand knowledge he could swear to, as to some of the acts of Respondent concerning which Complainant has the burden of proof.  The unfairness of the bias thereby sometimes created, is one of the reasons that this process is not final and binding upon either party; rather, this dispute is subject to a court trial if that process is timely initiated following the rendering of this decision.

 

Included in Complaint's contentions are these.

 

Complainant is a Canadian corporation of Chiliwack, British Columbia, one of the best-known manufacturers of trampolines in the world. It has four employees, has sold about 5,000 trampolines in Canada and about 1,000 in the United States, over about 20 years.  Annual sales run about $700,000 Canadian.

 

As to Germany: The Brunia affidavit states in ¶10, "We market trampolines to customers in Germany and our products and brand name are known there. [--To which I interpolate as I study the submissions critically, but to what extent and in what parts of Germany?] Counsel's brief is more specific in reciting "Complainant has also sold over $12,000 worth of trampolines in Germany.

 

[In the low-cost-fast-track process of the ICANN Policy, an unchallenged specific statement consistent with the pattern of other evidence and allegations, is accepted as adequately proved. In a nation the size of Germany, such a small sales volume as $12,000 over several years is de minimis for our purposes here.  In a market so unrelated to Respondent's art (whether or not objectionable to many tastes), $12,000 in total sales is much more likely not  to have provided to Respondent any awareness of Complainant's rights, than to have provided such awareness.]

 

Complainant has been using the trademarks Super-Fun and Super Fun in connection with the manufacture and sale of high-quality trampolines since l983,  now for nearly twenty years, and on the company web site since September l997.

 

On June 14, l985, Complainant obtained a Canadian trademark registration No. TMA303796 of  SUPER FUN, but on February 7, 2001, the registration was inactivated, or using the idiom of the Canadian law was "expunged", for failure to renew. Why was it not renewed?  --Because the company trademark lawyer failed to renew the registration through no fault of Complainant.  As soon as Complainant learned that the registration had been inactivated, it re-applied for a Canadian trademark registration for SUPER FUN on June 21, 2001 (No. 1104155). This application, again in the Canadian idiom, was "formalized" June 28, 2001.  Exhibit 14 shows a large amount of continuous ongoing use of the company name, Super Fun Sports,  in many countries called the "trade name", and several ongoing trade mark (product brand name) uses of  "Super Fun Trampoline" on invoices, clearly evidencing a lack of abandonment of the trade name (company name) and also of the trademark (product brand name), even though most of exhibit four fails to exhibit trademark use of the term as we know those terms in the United States.

 

Complainant also has registrations of many domain names that are highly similar to SUPER FUN, ranging from <super-fun.com>, and <superfun.com> through <super-fun.org>,  a  .biz,  a  .us,  and .info, again evidencing ongoing interest and use in the different formats of "SUPER FUN" with or without the space or hyphen in the middle.

 

Complainant has operated a web site utilizing its SUPER FUN trademark since

September 1997, now five years ago; its homepage was attached as Exhibit 6 Complainant's submission.

 

On May 17, 1999, long after Complainant's 1985 trademark registration and

before it was inactivated,  Respondent registered the disputed domain <superfun.net>. That registration occurred:

(i) more than 15 years after Complainant began international use of

its SUPER FUN trademark [I have no date of first use in Germany];

(ii) more than 14 years after the first registration of Complainant's 

Canadian trademark;

            (iii) almost two years after the registration of Complainant's

domain name <superfun.com>; and,

            (iv) before Complainant's Canadian trademark registration

was expunged or inactivated, i.e., while that registration

was in full force and effect, whereby the Canadian public had constructive knowledge of the mark under Canadian trademark law. 

 

[A routine computer search to determine whether a confusingly similar domain name was already registered, makes it very simple for a person using reasonable caution, to learn of prior uses before (s)he selects a confusingly similar name. But query:  does mere facility for such a search itself give rise to a legal duty for such a search under the UDRP? To say there is such a "duty" would be quite a stretch of any law that has been presented to me or known to me on this particular point.]

 

Complainant asserts in counsel's conclusionary pleading style [there was no reasonable facility contemplated by the low-cost fast-track UDRP Policy for him to discovery and check this recitation],  "Respondent also had actual knowledge of Complainant's trademark rights at the time it registered the Disputed Domain because of Complainant's active registration and use of <superfun.com>". Complainant's submission continues with a recitation of more basic elemental evidence as to why Complainant believes that:  "Prior to attempting a registration of <superfun.net>, Complainant logically sought  to register the preferred "Dot Com" version and, thus, would have seen Complainant's registration.

 

[That is a good bet. But the expression is ambiguous as to whether there is certain knowledge of Respondent's knowledge, or just speculation because the circumstance makes it a logical good bet at least some indeterminate odds. There is no hard evidence supporting Complainant's conclusion. In context of  the ambiguity of expression and all else including Respondent’s specific denial of such knowledge and statement of his reason for using ".net",  I must read "logically sought" to mean, "if logically careful, reasonably should have sought . . ."  In any event I must conclude that Complainant has failed to carry its burden of proof on this vital point. Did Respondent have actual knowledge of Complainant's mark when Respondent registered? Good advocacy, using a sentence structure and word "logically" in a fashion calculated to mislead, is not a preponderance of the evidence.]

 

Complainant's brief continues, "Respondent would also have learned of Complainant's widespread use of the term SUPER FUN by conducting a simple search engine inquiry for ‘SUPER FUN.’”

 

[I read the word "would" (which I emphasized just above) as "could"; there is no explicit evidence recitation that such a search was ever made, and I don't know how Complainant could have truly known of that fact, one way or the other.  My experience in this area of practice is to the effect that experienced trademark lawyers when timely consulted almost always perform searches before they let their clients invest much in any new mark or domain name, but that pro se folks and non-trademark-experienced lawyers much more commonly do not.  And I do not believe I can here legislate a duty to do a search, like a Google search, to find prior similar domain names or marks on different registers, even though were I a legislator or Supreme Court Justice I would vote for that duty to be recited in instructions to all registrants, whereby the performance of such a search could be a duty imposed upon applicants to register.]

 

Complainant next presents its contentions with respect to SUPERFUN being a

distinctive, coined work. I can skip that discussion here, because that subject matter is not really material to the basis of my conclusion.

 

Complainant advocates in conclusionary pleading type sentences, unsupported by hard evidence other than as discussed above, that Respondent "was aware" and hence that his domain registration was in bad faith. Since I have concluded that  Complainant has not carried its burden of proof of Respondent's awareness at the time of the registration,  I need not go further into that portion of Complainant's submission.

 

Complainant further advocates what when Respondent registered his domain name:

 

(i) that Respondent had knowledge of the existence of Complainant's

business and its marks at the time of his domain name

registration, whereby the registration was in bad faith;

 

(ii) that having that knowledge, his use was also in bad faith;

 

(iii) that trampolines are sold primarily to a children's market

[I would interpolate, but are not nevertheless sold primarily TO

adults? ? ];

(iv) that Respondent's art is hard-core pornography totally inappropriate

for a children's  market [I so find];

(v) that Respondent's art shown on its web pages reached with

Complainant's             domain name is destructive of Complainant's good name and market

[If there was any realistic substantial overlap of market channels of trade and class of customers, which I question, I would concur];

(vi) that Respondent has intentionally sought to attract for commercial

gain, Internet users to its web site by creating a likelihood of confusion  with the complainant's mark as to the source, sponsorship, etc.[I'll discuss why I disagree with that, in a moment];

            (vii) that Respondent's association of pornography with Complainant's

trademark establishes bad faith [also discussed below].

 

Wherefore, Complainant asks for transfer of the Respondent's domain to Complainant.

 

            B. Respondent

 

Respondent appears pro se, in English whereas his native language is German.

 

He offers to Complainant a link to a domain of his choice on the top left position of Respondent's page, with notice that the page is not related to Complainant's page.  There is an ambiguity on this next point, but I think his sentence means that this offer will continue (at least for a short while) after "any decision which will [be] made in the [this] proceeding."

 

As he expresses it in his First Person: 

 

"I am an artist. I  practice for over six years diverse non-commercial art projects that concentrate on Internet, video illustrations and animated media.  Since five years I've been using the artist synonym which is always shown in the run-up of my projects. [The absence of any supportive dated examples of those earlier uses, as evidence, is noted.]

 

"I decided to register the domain name over 3 years ago [i.e., before the Canadian trademark was expunged] because I had collected adequate programming knowledge to run a homepage by myself.

 

 "Concerning my non-commercial intentions I registered a  .net domain name because as far as I know .net domains shall not represent commercial interests.

 

"I have never had the intention to sell or trade domain name.  Also when the

Complainant offered me $800 for the domain name in April 2002, I declined.

 

"When I registered the domain name I had no knowledge of the Complainants

company or trademark.  The Complainants Company Super-Fun is not represented in Europe or Germany.  Further on the Super-Fun trademark is not known by European customers.  First time I heard of Super-Fun was when the

Complainant was threaten me with legal action after I declined his offer for

sale domain.

 

"I strongly have to defend against the Complainants accusation of seducing

children to ‘hardcore pornography.’” The relevant picture cannot be seen as

"hardcore pornographic" because it is shown in an inexplicit way and have a

clear artistic context.  The relevant picture does not appear under superfun but superfancy.com link is clicked the browser opens a complete new page and then it takes estimated 15 minutes and over twenty clicks to go there.[That considerably debilitates the idea of "intent" specifically to attract children seeking trampolines to his pornography.] My artwork in generally and the way I represent myself on the Internet does not appeal to children. So it must be clear than there is not any relation to Complainants offers.

 

"Several international link pages regarding audiovisual sites link my homepage.  A lot of crosslink projects and presentations of my work on other domains are using URL's with superfun.net in the beginning.  A change of my domain would take me weeks of reprogramming and informing other sites webmasters.

 

"My homepage superfun.net contains links to different projects; several work examples and contact information.  Over the years my homepage superfun.net has become the most important representation for my artist identity.

 

"I request that the Panel issue a decision that the domain-name registration not be transferred to the Complainant."

 

            C. Reply by Complainant

 

Complainant by way of Reply asserts:

 

1. Respondent does not dispute that "superfun" is a coined term that is not

             in the dictionary.

 

            2. Respondent does not deny the existence of the offensive

pornographic material identified in the Complaint.  He merely

defends it as an artistic expression.  Complainant has attached a printout of the page, and the Panel can decide for itself whether or not it would be offensive and harmful to children seeking out Complainant's trampolines.

 

            3. Although Respondent alleges that Complainant's brand is not well

known in Germany, it has not contradicted the evidence

provided by Complainant demonstrating sales in Germany.

 

            4. Respondent has not challenged Complainant's trademark rights

which pre-existed the date it registered the Disputed Domain.

 

            5.  Respondent has not refuted the argument that it could have

learned about Complainant's mark and products associated

with children by conducting a simple WHOIS search for the

domain name <superfun.com>.

 

6. Respondent has tacitly recognized Complainant's right to the domain

name, offering a link to Complainant's site on its site.

 

It is clear that the Response adds nothing to alter the inevitable finding

of facts that must be reached.  Respondent registered a domain name

containing Complainant's unique well known trademark and associated it with

pornography. Such nefarious use of Complainant's mark cannot establish

Respondent's legitimate interest and, such use occurring after Respondent

established its exclusive rights to the trademark SUPERFUN can only lead to

the conclusion that the Dispute Domain was registered and used in bad faith.

 

9. DISCUSSION, FINDINGS

 

Paragraph 15(a) of 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." I do not construe this to mean that every recitation of a party, no matter how self-servingly far fetched and outside the knowledge of party reciting the statement, must be taken as true. And in many instances the swearing match tie goes to Respondent because Complainant has the burden of proof.

 

These low-cost-fast-track process cases take place without discovery that often is needed, as here.   In them very many of Complainant's or counsel's statements are made in the nature of a hope without complete knowledge. Complainant’s statements are often drafted as an equivalent to, as a sort of, a U.S. discovery style request for admission. If Respondent admits, great, the point is made; if Respondent denies, the decision of course need not be based upon an assumption that it is true even when the circumstances make the alleged truth incredible.

 

That is the nature of Complainant's evidence that Respondent knew of Complainant and its products, trademarks and/or trade name. Complainant did not have discovery of Respondent's knowledge or lack of it. That fact is critical to Complainant's case in this UDRP process, and Complainant recited or implied the alleged fact several ways and several times. But Complainant did not get the admission he could hope for, but rather got an explicit denial in a context where the circumstantial evidence makes the denial quite credible.

 

It is my career-experience that conflicting operations even in the same industry and the same home geography of the same nation, are more often than not unknown to actual competitors for years after an operation as small as Complainant's German operation gets underway. But here we have totally different industries, with a very modest ($150,000 CA) total worldwide promotional advertising over what amounts to decades of operation, and only $12,000 in sales over nearly a two decades in one of the non-Asian world's larger-population countries, Germany.  It would be a rare fluke--a clearly less than 10% chance--if Respondent really was aware of Complainant's operations via the natural flow of information in commerce.  To conclude Respondent had knowledge at the time of his domain registration would be a completely "stretch" of what the circumstance and evidence here really is about natural flow of information with commerce.

 

Surely it is correct to observe that a careful, rational and logical person would run a quick computer check before selecting a new trademark or domain name, and experienced trademark lawyers very often do that. --Likely do it in a substantial majority of cases for corporate clients. But my impression is that less than 10% of  small businesses, particularly when operating essentially pro se and alone as Respondent here, ever have performed such searches before registering their domain name. The domain name is cheap to register, requires no prior use or commitment, and that is what these folks are focused upon, getting the domain name registered without legal expense.

 

So both of these realistic possibilities of a source of knowledge prior to Respondent's registration, must be seen as what lawyers and judges commonly call a "stretch". Even if you add those two less-than-10% chances together and get a <20% chance, and  then double it to 40%,  you still don't get a preponderance of the persuasion as against an explicit denial.

 

I don't like the sleaze and pornographic aspects of Respondent's operations, but the porn aspect of them appear not to be flagrantly promoted up front as you would expect from somebody really focusing on attracting children or Complainant's potential customer base.

 

Further, it is an irresponsible stretch to say there is a likelihood of trademark-style confusion as to source, origin or sponsorship between these two operations as far apart as trampolines and the art of paintings, as far apart as Germany and British Columbia Canada, as far apart as English and German.  So far as has been shown the activities which Complainant complains of as pornography is lawful.

 

The ICANN process is a very narrow process adapted for an administration disposal of many low-value cases, rather than to creative law making.  It is in the making of laws on that topic rather than in this tribunal that the legal appropriateness of this Respondent's product should be judged as dangerous to children, in context of the significant likelihood that those children who are interested and equipped to search the web will find much more flagrant porno sites on the web than Respondent's, and will find them more easily.

 

The constructive notice of the Canadian trademark registration is a teaser, but doesn't add any weight to Complainant's position, because it is inherently constructive notice to Canadians.  It simply cannot be extraterritorially constructive notice to Germans who, so far as we know, have never been to Canada nor paid any attention to what is registered among trademark registers in the U.S., France or Britain, much less the industrially smaller and distant country of Canada. Even constructive notice has some bounds of practical reality and geographical extent of duty, and constructive notice does not come close in this case to reaching a German resident, a sole operator, in a different language, in a different industry or commercial activity, 5,000 or so miles away  on a different continent, from the trademark registrant.

 

It is much too far of a stretch, to assert any actual likelihood of any substantial amount of confusion as to source, origin or sponsorship, begot by Respondent's domain name.

 

It hardly seems worthwhile to write another several developments to the same end conclusion.

 

This finding of failure of Complainant to prove knowledge in Respondent is completely independent of any application of the factor of temporary lapse of the subject trademark's registration--the common law mark was still viable.

 

Without having to decide any other premise factor, let me assume the correctness of that one fact, lack of Respondent's awareness of Complainant and its product, trademark and email addresses, and let us then apply UDRP 4(a).

 

Paragraph 4(a) of the Policy requires that the Complainant must prove all of three  elements in order to obtain the sought order that a domain name should be cancelled  or transferred. The first of those elements is,

 

            "(i) the domain name registered by the Respondent is identical

or confusingly similar to a trademark or service mark in

which the Complainant has rights; and"

 

I so find. Super fun, Super-fun and Superfun, are all confusingly similar.

 

The second one is

 

            "(ii) the Respondent has no rights or legitimate interests

in respect of the domain name; and"

 

Respondent had an activity on or linked to his web site which many of us would think inappropriate, but so far as has been presented it is not illegal. Respondent's activity was not sponsored by an intent to attack Complainant or profit from cybersquatting, but by an intent to do his own thing unrelated to Complainant.

 

My conclusion is not really contrary to some of the authorities Complainant has cited where either an attack upon Complainant or a cybersquatter's desire to sell his domain name to a trademark owner for an obscene profit, was involved.  If an activity conceived for the Respondent's own personal interests unrelated to Complainant and Complainant's activities, has had extensive legislative and other legal attention and still remains lawful, it has as much legitimacy under the UDRP Policy as should be required or is required for Respondent in this case.

 

An artist of pornographic works is not likely to be focused on taking business from a trampoline company, or soliciting its customers, or obstructing its use of such names as it needs to conduct its business. Respondent refused to sell his domain name for $800, but I find no evidence that he has been interested in selling his domain name in issue to Complainant for any other price, exorbitant or not.

 

For all the reluctance of judges and persons in business to conclude any activity that is pornographic is "legitimate",  and without officially deciding whether Respondent's work is or is not pornographic (though I think the sample Complainant provided as evidence, clearly is), I can not find that for this domain name title purpose that the Respondent's lawful activity is not "legitimate". 

 

Third,  "the domain name has been registered and is being used in bad faith."

 

The "and" in that clause has a legislative history behind it that precludes me from construing it to mean "or" under UDRP. So this "one-liner" has two separate requirements, and one of them is "was it registered in bad faith." Whereas Complainant may disagree as to whether Respondent was aware, I have no doubt that if Complainant can accept the premise I find, that Respondent was totally unaware of Complainant or his trademarks or activities, then that obliterates bad faith in the act of registration standing alone.

 

And indeed I recall no evidence of changes in his practices that would evidence a new bad faith upon learning of Complainant's claim.

 

10. DECISION

 

Complainant's Complaint is DISMISSED.  Respondent need NOT TRANSFER its domain name to Complainant by order in this Administrative proceeding.

 

This decision is without prejudice to Complainant timely bringing an appropriate action in a court of competent jurisdiction.

 

 

Tom Arnold, Panelist

Dated: September 6, 2002

 

 

 

 

 

 

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