Halliburton Energy Services, Inc. v. M2 Polymer Technologies, Inc.
Claim Number: FA0806001212731
Complainant is Halliburton Energy Services, Inc. (“Complainant”), represented by Kristin
Jordan Harkins, of Conley Rose, P.C.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <baraclear.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.
Linda M. Byrne as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 25, 2008; the National Arbitration Forum received a hard copy of the Complaint on June 30, 2008.
On June 26, 2008, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <baraclear.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 July 8, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 28, 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 July 22, 2008.
On July 28, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Linda M. Byrne as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends that Respondent’s domain name <baraclear.com> is confusingly similar to its trademark BARACLEAR; that Respondent does not have any rights or legitimate interests with respect to the domain name; and that the domain name was registered and used by Respondent in bad faith. Complainant argues that Respondent’s bad faith is demonstrated by the “blatant use of the registered mark, BARACLEAR, to sell a directly competing product, PHOSCLEAR.”
Respondent does not dispute that <baraclear.com> is confusingly similar to the BARACLEAR mark, but questions whether Complainant has ongoing, valid rights in the BARACLEAR mark. Respondent contends that it registered and used the domain name <baraclear.com> consistent with Respondent’s efforts to distribute Complainant’s BARACLEAR product, and that Respondent did not register and use the domain name in bad faith. Respondent argues that “the acquisition of the baraclear.com domain name was done with the full knowledge and approval of key executives at the Haliburton BPM subsidiary” and that Respondent “ran the product website for four (4) years with the full knowledge, consent and support of key BPM executives.”
C. Additional Submissions
On July 29, 2008, Complainant filed an Additional Submission, stating that “Complainant has continuously used the BARACLEAR trademark in connection with the described products since the mark was originally adopted in 2002…One example of Complainant’s more recent uses of the mark is with respect of one of its several trademark licensees, AquaBlok, Ltd. of Toledo, Ohio.” Complainant argued that Respondent’s registration of the <baraclear.com> domain name was “shockingly opportunistic” and contrary to a provision of the Distributor Agreement, which states that “Distributor [Respondent] agrees that it does not have and shall not acquire any rights in the trademarks or trade names of Company [Complainant], its parent, or its affiliates or subsidiaries.” Complainant maintains that Respondent’s bad faith is evidenced by Respondent using “the domain name to redirect Internet users from the baraclear.com website to its own phosclear.com website.”
On July 29, 2008, Respondent filed an Additional Submission, which stated that BPM has not continuously used the BARACLEAR trademark, and that Respondent is the only company offering a pellet product (called PHOSCLEAR) that has the same potency as the original BARACLEAR product. Respondent also stated that the BARACLEAR name is not “famous” because of the product’s low sales, and that Respondent was “fully responsible for all field testing, data development, logos, photo images and everything that was used to create the BARACLEAR brand.” Respondent asserts a legitimate interest in the domain name because of its usefulness for return customers, i.e., customers that previously bought BARACLEAR product and now need the PHOSCLEAR product.
Complainant is the
recorded owner of a
On May 22, 2002, Respondent and BPM entered into a “Distributor Agreement” giving Respondent the exclusive right to sell a buffered alum pellet to the “golf course and country club water treatment market.” This agreement provided that Respondent would promote, sell and distribute BPM’s product under the name BARACLEAR. Respondent conducted field trials of the BARACLEAR pellet, and gathered samples and support data. Respondent developed the BARACLEAR logo, website and packaging.
On June 24, 2002, Respondent acquired the domain name <baraclear.com>. Respondent informed BPM of this fact and the BPM executive responded that “it would have taken Halliburton/BPM two years and $20,000 to do this.” During the subsequent relationship between Respondent and BPM, BPM indicated an awareness of the <baraclear.com> website. BPM supplied product to Respondent for several years.
BPM suspended production of the BARACLEAR product in December 2005. On December 29, 2005, BPM sent an e-mail to Respondent saying that there were product integrity issues, and that “at this point the product is not being offered for sale by BPM.”
Because of BPM’s discontinued production of the original formulation of the BARACLEAR pellet, Respondent elected to continue selling the originally formulated product under the name PHOSCLEAR. The PHOSCLEAR product has a similar potency to the product that was previously marketed under the BARACLEAR trademark. Respondent began to link the <baraclear.com> domain name (through automatic re-direction) to Respondent’s website, <phosclear.com>, using a redirect message that says, “You are being automatically redirected to a new website for a new product.”
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 is the recorded owner
Respondent contends that Complainant has abandoned use of the BARACLEAR mark. In view of the fact that Complainant submitted some evidence of its use of the mark (a declaration of an executive and evidence of a license arrangement with a third party), this Panel concludes that such abandonment has not been sufficiently proven to overcome the registration’s indication of Complainant’s valid rights in the BARACLEAR trademark.
Respondent’s <baraclear.com> domain name is identical to Complainant’s BARACLEAR mark. The disputed domain name differs from Complainant’s mark only in that the generic top-level domain, (“gTLD”) “.com” has been added to the end of the mark. The “.com” fails to distinguish Respondent’s domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Daedong-USA, Inc. v. O’Bryan Implement Sales, FA 210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>, is identical to Complainant's KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”); see also Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to the complainant’s TERMQUOTE mark).
This Panel therefore rules in favor of Complainant with respect to the “identical or confusingly similar” factor.
During the years 2002 through 2005, Respondent was the “Master Distributor” of the BARACLEAR products for BPM, a division of Complainant. This case therefore involves issues of contract interpretation and possible trademark infringement. These issues are beyond the scope of this proceeding. The existence of Respondent’s rights or legitimate interests, and the existence of Respondent’s bad faith, may depend upon the above issues, which are inappropriate for resolution through an ICANN proceeding. See AutoNational Holding Corp. v. Alawneh, D2002-0581 (WIPO May 2, 2002) (holding that the scope of an ICANN proceeding is extremely narrow: “it only targets abusive cybersquatting, nothing else.”).
The primary questions before the
Panel are whether Respondent has rights in the <baraclear.com> domain name, and whether
Respondent registered and used <baraclear.com>
in bad faith. This Panel
concludes that this is a contractual interpretation question which falls
outside the scope of the Policy. The
Panel defers to the reasoning stated by the majority panel in Love v. Barnett, FA 944826 (Nat. Arb.
A dispute, such as the present one, between parties who each have at least a prima facie case for rights in the disputed domain names is outside the scope of the Policy . . . the present case appears to hinge mostly on a business or civil dispute between the parties, with possible causes of action for breach of contract or fiduciary duty. Thus, the majority holds that the subject matter is outside the scope of the UDRP and dismisses the Complaint.
In Frazier Winery LLC v. Hernandez, FA 841081 (Nat. Arb. Forum
The Complaint does not raise issues of abusive registration of the <frazierwinery.com> domain name, because the disputed domain name was registered and hosted by Respondent pursuant to a business relationship with Complainant . . . . The Complaint alleges issues regarding the rightful possession of the domain name registration for the <frazierwinery.com> domain name pursuant to the parties’ agreement. Consequently, this dispute is properly one that arises under state law or common law, but in any event is outside of the scope of the UDRP.
In the case of Luvilon Industries NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005), the facts were that the complainant came to a verbal agreement with the respondent that the respondent would become its Australian distributor of sporting goods. The relationship broke down and the respondent refused to transfer the relevant domain name to the complainant before compensatory claims against the complainant were met. The panelist noted that the purpose of the Policy:
[I]s to combat abusive domain name registrations and not to provide a prescriptive code for resolving more complex trade mark disputes . . . . The issues between the parties are not limited to the law of trade marks. There are other intellectual property issues. There are serious contractual issues. There are questions of governing law and proper forum if the matter were litigated. Were all the issues fully ventilated before a Court of competent jurisdiction, there may be findings of implied contractual terms, minimum termination period, breach of contract, estoppels or other equitable defenses. So far as the facts fit within trade mark law, there may be arguments of infringement, validity of the registrations, ownership of goodwill, local reputation, consent, acquiescence, and so on.
In the <baraclear.com> situation, the enforceability and interpretation of the 2002 Distributor Agreement appears to be relevant in determining the relative rights of Complainant and Respondent. The parties to the agreement (Complainant’s division and Respondent) are in privity with Complainant and Respondent respectively. In view of the fact that this dispute involves a contractual dispute, this dispute is not appropriate for determination by this Panel.
Based upon the reasoning outlined in the aforementioned cases and the
similar circumstances alleged in the Complaint, this Panel concludes that the
Complaint contains a question of contractual interpretation, and thus falls
outside the scope of the UDRP. It is
therefore appropriate for this Complaint to be dismissed. See
Everingham Bros. Bait Co. v. Contigo Visual, FA 440219 (Nat. Arb. Forum
In view of the ruling that all three elements required under the ICANN Policy have not been established and that this dispute falls outside of the scope of the UDRP, the Panel concludes that relief shall be DENIED.
Linda M. Byrne, Panelist
Dated: August 11, 2008
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