National Arbitration Forum




Dakota Alert, Inc. v. WinterHaven, Inc

Claim Number: FA0812001236721



Complainant is Dakota Alert, Inc. (“Complainant”), represented by Troy Leonard, South Dakota, USA.  Respondent is WinterHaven, Inc (“Respondent”), Wyoming, USA.



The domain name at issue is <>, registered with Wild West Domains, Inc.



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.



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 <> 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 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.



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



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 <> since at least as early as February of 1999.

·        Respondent registered the disputed domain name, <> and visitors to the disputed domain name were redirected to the domain <>.  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 U.S. warranty.”

·        The disputed domain name included a hyperlink to Respondent’s homepage <>, 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 U.S. warranty and is not a part of Dakota Alert, Inc. Dakota Alert and MURS ALERT are registered trademarks of Dakota Alert, Inc.  SellCom uses the domain for advertising purposes only.”

·        Respondent has registered websites included the registered trademarks of other companies: <>, <>, <>, <>, <>, and <>.  Each of these sites redirects consumers to <> websites where Respondent resells the products referred to in the domain name.  Each of these sites also has a <> 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.



The Panel finds that:


·        Complainant has established that it owns a distinctive, protected, and federally-registered mark DAKOTA ALERT.

·        The disputed domain name <> 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.



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.




Identical and/or Confusingly Similar


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 <> 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. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).


Rights or Legitimate Interests


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 <> 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").”  Id.

            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 US warranty.”  It is a hotly contested issue in this case whether or not SellCom was an authorized reseller of Dakota Alert products, but the Panel need not reach a conclusion on this issue.  Respondent was not holding itself out as being Complainant and was not representing itself in a way that would lead consumers to believe that they were purchasing these products directly from Complainant.  There is no evidence before this Panel that Respondent engaged in any bait-and-switch.  Further, at least some panels have held that even unauthorized resellers of a product may use the trademark of the product in a domain name, as long as it is not intended to cause confusion.  Koninklijke Philips Electronics N.V. v. Cun Siang Wang, D2000-1778 (WIPO, March 15, 2001).

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 America Online, Inc. v. Anytime Online Traffic School, FA146930 (Nat. Arb. For., April 11, 2003).

(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 Snug Harbor Travel, FA154644 (Nat. Arb. For., May 29, 2003) (“Respondent is selling only Complainant’s travel products on the disputed domain name, although it is possible to eventually click through to Respondent’s other site where competing products are sold.”)  See also ITT Manufacturing Enterprises, Inc., ITT Corporation v. Douglas Nicoll, Differential Pressure Instruments, Inc., D2008-0936 (WIPO, November 7, 2008).  (“The Respondents’ use of the Domain Names for the Respondents’ website is consistent with their stated purpose of reselling ITT Barton devices and related testing and warranty services. The single link to the [allegedly competitive domain] is…insufficient to change the character of the Respondents’ website.”).

(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 <> 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.”  Id. (internal citations omitted).

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.


Registration and Use in Bad Faith


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 America Online, Inc. v. Anytime Online Traffic School, FA 146930 (Nat. Arb. For., April 11, 2003).


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.



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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