DrayTek Corporation v. Vogel, Steve, Vogel, Steve / Strowger, Inc.
Claim Number: FA1109001407669
Complainant is DrayTek Corporation (“Complainant”), Taiwan. Respondent is Vogel, Steve, Vogel, Steve / Strowger, Inc. (“Respondent”), represented by Jacqueline M. Sussman, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <draytek.us>, registered with Tierra Net Inc. d/b/a Domain Discover.
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.
Linda M. Byrne, G. Gervaise Davis III, and David P. Miranda, (chair) as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 16, 2011; the National Arbitration Forum received a hard copy of the Complaint on September 20, 2011.
On September 21, 2011, Tierra Net Inc. d/b/a Domain Discover confirmed by e-mail to the National Arbitration Forum that the <draytek.us> domain name is registered with Tierra Net Inc. d/b/a Domain Discover and that Respondent is the current registrant of the name. Tierra Net Inc. d/b/a Domain Discover has verified that Respondent is bound by the Tierra Net Inc. d/b/a Domain Discover registration agreement and has thereby agreed to resolve domain disputes brought by third-parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On September 23, 2011, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 13, 2011 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
A timely Response was received and determined to be complete on October 12, 2011.
Complainant’s Additional Submission was received on October 17, 2011, Respondent’s on October 20, 2011 and deemed compliant with Supplemental Rule 7.
On October 21, 2011, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Linda M. Byrne, G. Gervaise Davis III, and David P. Miranda, (chair) as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant's DrayTek Corporation of Hshinchu, Taiwan (“Complainant”) is the owner of the trademark DRAYTEK registered with the USPTO, Registration No. 2,930,314 for ISDN adapters, routers and related digital subscriber lines, with a first use of January 31, 1998, first use in commerce of November 30, 2001, and U.S. Registration date of March 8, 2005. Complainant seeks transfer of the domain name <draytek.us> from Respondent Steve Vogel / Strowger, Inc. of Lees Summit, Missouri (“Respondent”).
Complainant contends it uses the mark in its business as a global provider of computer networking products. The Respondent is a former manufacturer’s representative that had a business relationship with Complainant pursuant to a distribution agreement. Complainant contends that Respondent registered the domain name <draytek.us> on behalf of Complainant to establish a website to carry on the distribution activities of Complainant DRAYTEK branded products in the United States. Pursuant to an agreement, the <draytek.us> website was to be utilized exclusively for the sale and marketing of DRAYTEK branded products in the U.S., and eventually re-registered in Complainant’s name. The business relationship agreement between the parties ended on July 31, 2011.
Complainant contends that Respondent has no rights or legitimate interests with respect to the domain name because its registration and use were solely pursuant to an agreement to sell Complainant’s products. Complainant contends that the domain name should be considered as having been registered or used in bad faith because the domain name was registered by Respondent on behalf of Complainant pursuant to an agreement between the parties and that Respondent has retained and continued to use the domain name in bad faith. Complainant further contends that Respondent has refused to transfer the domain name until Complainant agrees to pay $1.39 million dollars to Respondent.
B. Respondent
Respondent contends that the domain name is not identical to Complainant’s trademark because Respondent is not using the domain name in any manner related to the same class of goods as Complainant and therefore, should not be deemed identical or confusingly similar to a trademark in which the Complainant has rights. In addition, Respondent contends that Complainant did not file a trademark registration for the name DRAYTEK until several months after Respondent registered the domain name. Respondent contends that prior to notice of the dispute, Respondent’s use of the domain name was in connection with a bona fide offering of goods or services with the permission of Complainant. Respondent contends that as a business, it has been commonly known by the domain name even though Respondent has not acquired trademark or service mark rights in the name. Respondent contends that it has not registered or used the domain in bad faith, that during the course of the relationship between the Respondent and Complainant, Respondent expended significant sums and improvements to the domain name in order to facilitate technical support of Complainant’s products, that Complainant did not have any presence in the United States prior to its contract with Respondent and Respondent thus created any value that inured to Complainant via Respondent’s use of the domain name. Respondent contends that the domain name was registered and the website was maintained for many years with the approval of Complainant as the domain name and website created the name recognition for Complainant in the U.S.
C. Additional Submissions
Complainant submitted additional submissions pursuant to Supplemental Rule 7(a) on October 17, 2011, and Respondent submitted an additional submission pursuant to Supplemental Rule 7(c) in Response dated October 20, 2011, all submissions were considered by the Panel.
The Panel finds that the domain name <draytek.us> is identical or confusingly similar to a trademark or service mark in which Complainant has rights; Respondent has no rights or legitimate interests with respect to the domain name and the domain name is being used in bad faith. The Panel finds, Complainant having established all three elements of the policy, the domain name <drayek.us> should be transferred to Complainant.
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."
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Jurisdiction of Panel
Complainant asserts that Respondent and Complainant were parties to a distribution agreement. According to Complainant, Respondent registered the disputed domain name prior to the distribution agreement, but Complainant and Respondent had prior agreements and understandings that covered Respondent’s duties as Complainant’s representative. Complainant claims that Respondent registered the <draytek.us> domain name on behalf of Complainant and that Respondent was supposed to register the disputed domain name in Complainant’s name. Complainant argues that it allowed the registration because the agreement required the domain name to be used exclusively for Complainant’s business and that there was an understanding that <draytek.us> domain name would be re-registered in Complainant’s name in the future. Complainant alleges that the distribution agreement ended on July 31, 2011 and Respondent refused to transfer the disputed domain name after repeated requests from Complainant.
Respondent claims that it registered the <draytek.us> domain name as part of its role as Complainant’s representative in the United States. Respondent contends that it actually registered the disputed domain name before Respondent and Complainant entered into the distribution agreement.
The Panel has discretion to determine whether or not it has jurisdiction over this dispute. Neither party questions the Panel’s jurisdiction over this dispute. The Panel finds that there is sufficient evidence for it to properly decide the dispute under the usTLD Policy, to proceed with the case and consider the contentions of Complainant and Respondent as outlined below. See Weber-Stephen Prod. Co. v. Armitage Hardware, D2000-0187 (WIPO May 11, 2000) (“Like any other tribunal, however, this Panel can determine whether it has jurisdiction only from the facts and arguments presented to it. In this case, Complainant did allege bad-faith use and registration of the domain name at issue. Had Complainant proved those allegations, there would be no proper question as to this Panel’s jurisdiction.”); see also Draw-Tite, Inc. v. Plattsburgh Spring Inc., D2000-0017 (WIPO Mar. 14, 2000) (“This Panel well recognizes that its jurisdiction is limited to providing a remedy in cases of ‘the abusive registration of domain names,’ or ‘Cybersquatting’ ... Like any other tribunal, however, this Panel can determine whether it has jurisdiction only from the facts and arguments presented to it.)
Complainant provides evidence of its trademark registration with the United States Patent and Trademark Office (“USPTO”) for its DRAYTEK mark (Reg. No. 2,930,314 filed December 24, 2003; registered March 8, 2005). The Panel finds that Complainant has established Policy ¶ 4(a)(i) rights in the DRAYTEK mark, dating back to at least as early as December 24, 2003. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
Complainant further alleges that its rights in the DRAYTEK mark began on January 1, 1998 and that it has continuously used the DRAYTEK mark in connection with computer networking products. Complainant claims it owns common law rights in the United States prior to the registration of the <draytek.us> domain name on July 31, 2003, based on allegations that Complainant and Respondent had a business relationship using the mark, prior to the registration of the disputed domain name. Based on the evidence in the record, the Panel finds that Complainant owns common law rights in the DRAYTEK mark under Policy ¶ 4(a)(i). See Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five years); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (finding that the complainant had common law rights in the JERRY DAMSON ACURA mark because it provided sufficient evidence of its continuous use of the mark since 1989 in connection with a car dealership).
The Panel notes that the disputed domain name contains Complainant’s DRAYTEK mark and the country-code top-level domain (“ccTLD”) “.us.” The Panel concludes that Respondent’s <draytek.us> domain name is identical to Complainant’s DRAYTEK mark pursuant to Policy ¶ 4(a)(i). See Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to the complainant’s TROPAR mark); see also Basic Trademark S.A. v. Antares S.p.A, FA 1130680 (Nat. Arb. Forum Mar. 4, 2008) (“The <robedikappa.us> domain name is identical to the ROBE DI KAPPA mark. The only difference is the omission of the space between the words and the addition of the ccTLD “.us,” which does not significantly distinguish the domain name from the mark.”).
Respondent argues that its registration of the <draytek.us> domain name predates Complainant’s alleged rights in the mark, the Panel finds that such a determination is not dispositive under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).
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 claims that Respondent is no longer authorized to use Complainant’s DRAYTEK mark in a domain name. Complainant argues that “Respondent has never been known as anything other than an authorized manufacturer’s representative that goes by the trade name ‘Strowger, Inc.’” The WHOIS information identifies the domain name registrant as “Vogel, Steve , Vogel, Steve / Strowger, Inc.,” which the Panel determines is not similar to the <draytek.us> domain name. The Panel concludes that Respondent is not commonly known by the <draytek.us> domain name under Policy ¶ 4(c)(iii). See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding that the respondent was not commonly known by the disputed domain names where it maintained the domain name registrations on the complainant’s behalf and then appropriated the disputed domain names for itself, without permission from the complainant); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under UDRP ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
The Panel finds there is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the <draytek.us> domain name. Respondent has not established rights and legitimate interests pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002 (finding that there was no evidence that Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sep. 3, 2002) (holding that because Respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Complainant contends that Respondent provides a hyperlink on the resolving website, labeled “Buy Draytek,” that resolves to a website that states that Respondent “specializes in taking telecom product requirements and finding a low cost resource to manufacture it.” Complainant argues that it is in the business of manufacturing and marketing telecommunication products and that this is evidence that Respondent is using the <draytek.us> domain name to compete with Complainant. The Panel finds that Respondent’s competing use is not a Policy ¶ 4(c)(ii) bona fide offering of goods or services or a Policy ¶ 4(c)(iv) legitimate noncommercial or fair use of the <draytek.us> domain name. See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name); see also Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that the respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with the complainant, was not a bona fide offering of goods or services).
The usTLD Policy differs from the UDRP as a complainant is only required to establish bad faith registration or use. See Educ. Testing Serv. v. Pitchumani, FA 267504 (Nat. Arb. Forum July 6, 2004) (“[U]nlike a proceeding governed by the UDRP, under the policy which governs the instant proceeding, the usTLD Dispute Resolution Policy, the element of “bad faith” may be satisfied through proof of either bad faith registration or use.”); see also Circuit City Stores, Inc. v. Leeds, FA 139662 (Nat. Arb. Forum Feb. 2, 2003) (“The Complaint addresses both registration and use in bad faith, using arguments that indicate a conjunctive “and” instead of the Policy’s disjunctive “or.” Under the usTLD Policy it is only necessary to illustrate and prove bad faith registration or use.”). In this case, Complainant claims that Respondent registered the disputed domain name prior to the distribution agreement, but while Respondent was a party to previous agreements with Complainant. Respondent asserts that it registered the disputed domain name with the permission of Complainant. Complainant admits that it allowed Respondent’s registration of the domain name because Respondent was using the domain name to promote Complainant’s products.
The Panel makes no determination regarding registration of the disputed domain name in bad faith under Policy ¶ 4(a)(iii), but the Panel finds bad faith use under the elements of Policy ¶ 4(b). Complainant contends that Respondent is competing with Complainant by offering the manufacturing and marketing of telecommunication products at the website resolving from the <draytek.us> domain name. Complainant argues that it also manufactures and markets telecommunication products, and the Panel concludes that Respondent uses the <draytek.us> domain name in bad faith pursuant to 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 DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to [UDRP] ¶ 4(b)(iii).”).
Complainant claims that Respondent uses the <draytek.us> domain name to market medical devices and health services that are unrelated to Complainant. Complainant argues that Respondent commercially benefits from this use by attracting Internet users interested in Complainant’s products. Complainant alleges that Respondent also uses the disputed domain name to market competing services and that Respondent is attempting to profit by attracting Complainant’s potential customers. The Panel determines that Respondent is using the <draytek.us> domain name to commercially benefit by creating confusion as to Complainant’s affiliation with the disputed domain name, the Panel holds that Respondent uses the <draytek.us> domain name in bad faith under Policy ¶ 4(b)(iv). See Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) because the respondent admittedly used the complainant’s well-known mark to attract users to the respondent's website); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <draytek.us> domain name be TRANSFERRED from Respondent to Complainant.
Linda M. Byrne, G. Gervaise
Davis III, and
David P. Miranda, (chair), as Panelists
Dated: November 8, 2011
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