Dakota Alert, Inc. v.
WinterHaven, Inc
Claim Number: FA0812001236721
PARTIES
Complainant is Dakota Alert, Inc. (“Complainant”), represented by Troy
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dakota-alert.com>, registered with Wild West
Domains, Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Michael Albert as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on December 3, 2008; the
National Arbitration Forum received a hard copy of the Complaint on December 5, 2008.
On December 3, 2008, Wild West Domains, Inc. confirmed by e-mail to
the National Arbitration Forum that the <dakota-alert.com> domain name is
registered with Wild West Domains, Inc. and
that the Respondent is the current registrant of the name. Wild West
Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 December 9, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of December 29, 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@dakota-alert.com by
e-mail.
A timely Response was received and determined to be complete on December 23, 2008.
An Additional Submission was received from Complainant on December 26,
2008, which was determined to be timely and complete under the National
Arbitration Forum’s Supplemental Rule 7.
On January 5, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Michael Albert as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that:
·
Complainant
is the owner of registered mark Dakota Alert, which has been registered with
the United States Patent and Trademark Office since July 9, 2002.
·
Complainant
has been using the mark in the sale of Dakota Alert brand security systems
since at least 1991.
·
Complainant
has used the mark in the internet domain <dakotaalert.com> since at least
as early as February of 1999.
·
Respondent
registered the disputed domain name, <dakota-alert.com> and visitors to
the disputed domain name were redirected to the domain
<sellcom.com/dakota.html>.
Respondent used the disputed domain name to sell Complainant’s products
and, as of March 19, 2008, was claiming to be an “authorized reseller of Dakota
Alert Products with full
·
The
disputed domain name included a hyperlink to Respondent’s homepage
<sellcom.com>, which sold products competitive with Dakota Alert security
systems.
·
Complainant
has never expressly or impliedly indicated to Respondent that it is an
authorized reseller of Dakota Alert products.
·
Complainant’s
counsel sent Respondent a cease-and-desist letter dated July 9, 2008.
·
After
Respondent received Complainant’s cease-and-desist letter, Respondent added
language to its website disclaiming any relationship with Complainant. “SellCom is a reseller of new Dakota Alert
products with full
·
Respondent
has registered websites included the registered trademarks of other companies:
<ingridsecurity.biz>, <claritycordless.com>, <polycom.biz>,
<lingotranslate.com>, <ergochair.biz>, and
<panasoniccamera.com>. Each of
these sites redirects consumers to <sellcom.com> websites where
Respondent resells the products referred to in the domain name. Each of these sites also has a
<sellcom.com> hyperlink leading consumers to Respondent’s homepage where
all the products are offered for sale.
B. Respondent
Respondent contends that:
·
Complainant
solicited Respondent to be a reseller of Dakota Alert products.
·
Respondent
only registered the disputed domain name in relation with its sale of Dakota
Alert products.
·
Respondent
only used the disputed domain name as an advertising tool to market Dakota
Alert products.
·
Respondents
addition of the above mentioned disclaimer on its website after receiving
Complainant’s cease-and-desist letter was implemented in good faith to
eliminate all risk of consumer confusion.
FINDINGS
The Panel finds that:
·
Complainant
has established that it owns a distinctive, protected, and
federally-registered mark DAKOTA ALERT.
·
The disputed domain name
<dakota-alert.com> is confusingly similar to Complainant’s valid mark.
·
Complainant has not made a prima facie showing that the Respondent does not have a legitimate
interest in the disputed domain name.
·
Respondent has not registered and is not using
the disputed domain name 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.
The Panel concludes
that the disputed domain is identical or confusingly similar to Complainant’s
mark. The only difference between
Complainant’s trademark “Dakota Alert” and Respondent’s disputed domain name
<dakota-alert.com> is the substitution of a hyphen in place of a space
and the addition of the generic top-level domain “.com”. The Panel concludes that neither of these
differences prevents the disputed domain name from being identical or
confusingly similar. See Chernow
Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that
the use or absence of punctuation marks, such as hyphens, does not alter the
fact that a name is identical to a mark"); see also Jerry
Damson, Inc. v.
The Panel concludes that the Complainant has
not met its prima facie burden of
showing that Respondent has no rights or legitimate interests in the use of the
disputed domain name. Though Complainant
has shown that (1) Respondent was not making a non-commercial, fair use of the
mark at the time the action was filed and (2) that the Respondent was not and
has never been commonly known by the mark, it has not successfully shown that
Respondent was not using the mark for a bona
fide offering of goods and services.
In Oki Data, Inc. v. ASD, Inc.,
D2001-0903 (WIPO, November 6, 2001), the Panel described four requirements that
must be met for a Respondent’s offering to be considered bona fide:
“-Respondent must actually be offering the goods or services at issue. E.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, Case No. D2000-1306 (WIPO Jan. 24, 2001) (respondent failed to show demonstrable preparations to use the domain name in connection with a bona fide offering).
- Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods. Nikon, Inc. v. Technilab, Case No. D2000-1774 (WIPO Feb. 26, 2001) (use of Nikon-related domain names to sell Nikon and competitive cameras not a legitimate use); Kanao v. J.W. Roberts Co., Case No. 0109 (CPR July 25, 2001) (bait and switch is not legitimate use).
- The site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents. E.g., Houghton Mifflin Co. v. Weatherman, Inc., Case No. D2001-0211 (WIPO April 25, 2001) (no bona fide offering where website’s use of Complainant’s logo, and lack of any disclaimer, suggested that website was the official Curious George website); R.T. Quaife Engineering v. Luton, Case No. D2000-1201 (WIPO Nov. 14, 2000) (no bona fide offering because domain name <quaifeusa.com> improperly suggested that the reflected site was the official U.S. website for Quaife, an English company; moreover, respondent’s deceptive communications with inquiring consumers supported a finding of no legitimate interest); Easy Heat, Inc. v. Shelter Prods., Case No. D2001-0344 (WIPO June 14, 2001) (no bona fide use when respondent suggested that it was the manufacturer of complainant’s products).
- The Respondent must not try to corner the market
in all domain names that use the mark, thus depriving the trademark owner of
reflecting its own mark in a domain name. Magnum Piering, Inc. v. Mudjackers,
Case No. D2000-1525 (WIPO Jan. 29, 2001) ("a single distributor is
extremely unlikely to have a legitimate interest in precluding others from
using numerous variants on a mark").”
Complainant’s own submissions show that Respondent substantially conformed to these requirements:
(1) Complainant makes no allegations that consumers could not in fact purchase legitimate Dakota Alert at the disputed domain. It appears to the Panel that Respondent was in fact reselling genuine Dakota Alert products.
(2) When the
Complaint was filed, Respondent’s website represented that “SellCom is an
authorized reseller of Dakota Alert with full
In addition, after receiving the cease and desist
letter, Respondent placed a disclaimer on its website that clearly indicated
that it was not a part of Dakota Alert and that Dakota Alert is a valid
trademark. The inclusion of a disclaimer
on a Respondent’s website is indicative that an offering of goods or services
is bona fide. See
(3)
Respondent’s site only offered products manufactured
by Complainant – i.e, Dakota Alert and MURS ALERT products. Although consumers could follow a single
hyper-link on the website to SellCom’s homepage, where other competing products
are for sale, SellCom is not using the disputed domain itself to market or sell
any other competing products. On the
facts of this case, the Panel does not find Respondent’s limited inclusion of a
hyperlink to pages which sell competing products to undermine its otherwise bona fide offering. See The Mark Travel Corporations v.
ATHS d/b/a
(4) Finally, Respondent has registered only one version of the Dakota Alert mark, and arguably has not even registered the domain name most likely to be selected by consumers searching for the product. Indeed, the domain name <dakotaalert.com> is already registered and used by Complainant.
Complainant has pointed to several Panel decisions
that stand for the proposition that “without a specific agreement between the
parties, the reseller does not have the right to use the licensor’s trademark
as a domain name.” Genzyme Corp. v.
Robert Brown d/b/a BladSpray, Inc., FA 902965 (Nat. Arb. For., March 9,
2007). The approach taken in OkiData,
however, is the prevailing one in Panel decisions. See ITT Manufacturing Enterprises,
Inc., ITT Corporation v. Douglas Nicoll, Differential Pressure Instruments,
Inc., D2008-0936 (WIPO, November 7, 2008).
Indeed, “the issues of legitimate reseller
interests in accurately describing a lawful business, on the one hand, and of
potential abuses of trademark, on the other, are similar whether or not there
is a contractual relationship between
the parties. Therefore…the Oki Data criteria are appropriate here to
assess the rights or legitimate interests of the unauthorized reseller for
purposes of this element of the Policy.”
Based on the above analysis, the Panel finds that, at the time the claim was filed, the Respondent was using the disputed domain name for what appears to have been a bona fide offering of Complainant’s goods. Complainant therefore has failed to establish that Respondent lacked a legitimate interest in the mark.
As the Panel has decided that the Respondent
did have a legitimate interest in the disputed domain name, the issue of
whether respondent registered and used the mark in bad faith is moot. See Lockheed
Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005).
However, the Panel will briefly address the issue of registration and
use in bad faith, and concludes that Complainant has not established that
Respondent registered and use the disputed domain name in bad faith.
A Panel may find that Respondent has
not registered or used a disputed domain name in bad faith if it finds that
Respondent has not violated any of the factors listed in Policy ¶ 4(b) or
engaged in any other conduct that would constitute bad faith registration and
use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG,
D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not
attempted to sell the domain name for profit, has not engaged in a pattern of
conduct depriving others of the ability to obtain domain names corresponding to
their trademarks, is not a competitor of the complainant seeking to disrupt the
complainant's business, and is not using the domain name to divert Internet
users for commercial gain, lack of bona fide use on its own is
insufficient to establish bad faith). In
addition, the inclusion of a disclaimer on a Respondent’s website can in
appropriate circumstances be further evidence of good faith use of a domain
name. See
In the present case, there is no evidence that Respondent registered the disputed domain name for any reason other than to advertise its resale of Complainant’s products. Complainant has not presented any evidence that (a) Respondent registered the mark primarily for the purpose of selling or transferring it to Complainant, (b) that Respondent is a competitor using the mark to disrupt Complainant’s business, or (c) that Respondent is using the disputed domain name to attract customers to its website by deliberately causing confusion and benefiting from the good will associated with Complainant’s mark.
Complainant has presented some evidence that purports to show that Respondent has “registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name,” after “[engaging] in a pattern of such conduct.” Uniform Dispute Resolution Policy, ¶ 4(b)(ii). Complainant points out that Respondent has registered several domain names that, as in this case, incorporate trademarks and resolve to SellCom websites reselling those products. Respondent does not dispute having done so. Complainant has presented no evidence, however, that Respondent’s use of these domain names is not just as bona fide as its sale of the products at issue in this proceeding. In fact, a cursory examination of these websites suggests that Respondent is in fact using them to sell the products referred to in the domain names.
Finally, although
not every disclaimer will suffice to rebut a showing of bad faith, on the facts
of this case, Respondent’s inclusion of a disclaimer disavowing all
relationship with Dakota Alert and acknowledging the trademarks of Dakota Alert
and MURS ALERT provides further evidence of good faith.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be DENIED.
Michael Albert, Panelist
Dated: January 21, 2009
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