national arbitration forum

 

DECISION

 

Porta-Bote International v. - / Raoul Rosendaal

Claim Number: FA1109001408872

 

PARTIES

Complainant is Porta-Bote International (“Complainant”), represented by Ryan Bricker of Kilpatrick Townsend & Stockston LLP, California, USA.  Respondent is - / Raoul Rosendaal (“Respondent”), Republic of Suriname.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <portabotesam.com>, registered with GoDaddy.com, 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.

 

Luiz Edgard Montaury Pimenta as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 23, 2011; the National Arbitration Forum received payment on September 23, 2011.

 

On September 26, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <portabotesam.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name.  GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third-parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On September 28, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 18, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@portabotesam.com.  Also on September 28, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

A timely Response was received and determined to be complete on October 17, 2011.

 

An Additional Submission was sent by the Complainant on October, 24, 2010.

 

On October 24, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Luiz Edgard Montaury Pimenta as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

 

Complainant informs it is a specialty retailer of unique collapsible boats, and sells worldwide exclusively through licensed distributors and the internet. Complainant claims that its brands, including its “PORTA-BOTE” brand collapsible boat, are among the most successful and most-trusted brands in the industry.

 

Complainant informs it is the exclusive owner of U.S. Trademark Registrations for the PORTA-BOTE mark. Complainant informs it also maintains various registrations for PORTA- and BOTE-formative marks in the U.S..

 

Complainant  alleges that Respondent Raoul Rosendaal unlawfully appropriated Complainant’s well-known trademark, and has unlawfully maintained a registration for the <portabotesam.com> disputed domain name without any legitimate interest or right in the domain name at issue. Complainant  alleges the <portabotesam.com> disputed domain name reproduces Complainant’s valid, enforceable trademark in its entirety, adding only the “sam” term and the .com TLD. Moreover, Complainant also contends that Respondent uses the “sam” term as a geographic descriptor in the domain name, indicating the site’s relationship with South America, and that as consumers are likely to view it as a geographical descriptor, it does little to distinguish the disputed domain name from a simple reproduction of Complainant’s PORTA-BOTE Mark.

 

Complainant informs that on August 17, 2011, Complainant terminated its licensed distributor agreement with Respondent, revoking Respondent’s right to sell or advertise Porta-Bote products or any related accessories. Complainant informs it also terminated Respondent’s right to use Complainant’s intellectual property, including the PORTA-BOTE mark. Prior to such termination, Respondent distributed Porta-Bote products in South America and the Caribbean through its “South America Boat Company” name. Complainant  argues that, on information and belief, on or before the day Respondent learned that his licensed distributor agreement would be terminated, Respondent renewed the <portabotesam.com> domain name and revised the content associated with the website to include a promotion for forthcoming goods intended to compete with Complainant’s PORTA-BOTE collapsible boats, and a link to Respondent’s main website, where he sells a variety of boats produced by Complainant’s competitors.

 

Complainant  argues that even before the termination discussed above, Respondent had no rights or legitimate interests in the PORTA-BOTE mark or in the domain name that reproduces that mark. While Complainant says at one time authorized Respondent to use its marks, Complainant explicitly retracted that authorization along with the licensed distributor agreement. Accordingly, during the time that Respondent was renewing the <portabotesam.com> domain name and revising its content to direct visitors to competing goods, Respondent was not authorized to use Complainant’s marks in any way.

 

Complainant argues that the mere fact that Respondent unlawfully used Complainant’s Mark on its web site and in its domain name does not, and as a matter of law cannot, establish that it is rightfully “known by” such name. Complainant argues that Respondent also cannot credibly argue that he uses the domain name for any bona fide offering of goods or services, or that he is making a “legitimate, noncommercial, or fair” use of the domain name. Indeed, while the content at <portabotesam.com> seems to express a single, incomplete critical assessment of Complainant’s product (it reads “Due to the lack of reliability of the Portable boat (and the manufacturer . . . we have decided to stop representing the brand”, ostensibly referring to the Complainant), the website is not aimed at criticism. Instead, it advertises a forthcoming competing product, and directs

visitors to Respondent’s <samboats.com> site where he sells only boats manufactured by Complainant’s competitors. Because the <portabotesam.com> site advertises competing products, Complainant  argues it is clearly commercial and cannot be protected by the “noncommercial or fair use” safe harbor of Policy ¶ 4(c)(iii).

 

Complainant states that even if considered some portion of the website under the disputed domain name as “noncommercial”, its registration and use in bad faith by the Respondent cannot qualify for the safe harbor of Policy ¶ 4(c)(iii).

 

Finally, Complainant informs it has notified Respondent of its violation of Complainant’s intellectual property rights.

 

Complainant also alleges Respondent’s conduct constitutes bad faith registration and use of a domain name. First, Complainant states that even when Respondent acted as a licensed distributor of Complainant’s collapsible boats, Complainant states it did not authorize Respondent to register a domain name reproducing its trademark and that such registration was made in bad faith, and it is clear today that Respondent has used and continues to use the disputed domain name in bad faith.

 

Complainant argues that Respondent is deliberately using the disputed domain name to attract Internet users to its web site for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to source.

Complainant  argues that Respondent has also incorporated several of Complainant’s trademarks into the “Keyword meta data” content in the source code of his <samboats.com> website, including “PortaBote”, “portabote”, “porta-bote”, “potabote”, and “portabote caribbean”, which would be further indication of bad faith.

 

B. Respondent

 

Respondent informs the <portabotesam.com> website is a website for portable boats and not specifically build for the brand Porta-Bote. Respondent states Samboats is a boat company with South America as an exclusive region.

 

Respondent claims that’s why they used a Spanish abbreviation for their domain name. Respondent claims “Portabotesam” stands for: Porta(til) = portable / bote = boat / sam = South America. Respondent contends this is not a name of a product or company, but rather a description of their products in a (mostly) Spanish region. Respondent asserts that in case of the complainants brand, the expression “porta” refers to the Spanish name for “watertight gate/door” and that this would be because of how the boat hinges are built and has nothing to do with the name Portatil as used in the disputed domain name.

 

Respondent argues that an USA based company claiming international exclusivity for a general Spanish name Porta and Bote would be impossible. Respondent claims to have the rights and freedom to use a Spanish description of a boat type they are selling. Respondent also contends that Complainant uses two separate words in his brand name: porta and bote (with a score between them) and that the disputed domain name uses one word: portabotesam. Respondent also claims that the PORTA-BOTE trademark registration is not valid for another country than the USA.

 

Respondent informs he invested a lot of time and money in the promotion of Complainant’s brand. He alleges having business conflicts with Complainant deriving from the distribution agreement.

 

Respondent alleges he has put the website under the disputed domain name “under construction” because he has plans to continue with another “portable

boat” brand. Respondent claims this has nothing to do with the PORTA-BOTE brand. Respondent claims at this moment he only needs to inform my customers where they can find him.

 

Respondent argues that when starting his business, the manufacturer of Porta-Bote (Mr. Sandy Kaye) advised him with choosing a domain name for the website and he agreed to the use of the disputed domain name.

 

Respondent alleges the complainant knew about the other boat brands represented by Samboats and he didn’t complain at the time because these brands/boat types don’t compete with his brand. Respondent alleges he is not using the disputed domain name in bad faith.

 

Respondent contends there is also no criticism to the complainant on his websites and that at this moment the website is not used for commercial purpose because there are no products being advertised.

 

Respondent alleges the Complainant has agreed to the use of this domain name.

 

C. Additional Submissions

 

Complainant argues that Respondent’s arguments against transfer of the <portabotesam.com> domain name do not carry the day. In fact, they make clear that he knowingly, and in bad faith, maintained the <portabotesam.com> domain name to divert internet consumers who are looking for Complainant’s products and began using the <portabotesam.com> site to drive those diverted consumers toward his own website which sells products made by Complainant’s competitors.

 

Complainant argues that Respondent mischaracterizes the sufficiency and scope of Complainant’s trademark rights in the PORTA-BOTE Mark and brand as those rights apply to ICANN’s UDRP Policy (the “Policy”). Complainant argues that

Respondent’s argument that the disputed domain name should not be transferred because Complainant does not hold a unique registration that

“applies around the world” misses the point of the first prong of ICANN’s UDRP

Policy. Complainant  argues that not only is Complainant’s United States Registration for the PORTA-BOTE Mark a sufficient and compelling basis for its UDRP Complaint seeking transfer of the <portabotesam.com> domain name, but Complainant’s rights in the PORTA-BOTE Mark certainly do not stop at the United States border: The PORTABOTE brand has sold thousands of products throughout the world, including in Suriname where Respondent is located; the PORTA-BOTE Mark is well known and has accumulated goodwill worldwide, thereby conferring broad rights to Complainant in the PORTA-BOTE Mark.

 

Complainant argues that Respondent’s argument that the disputed domain name is comprised of descriptive Spanish words, is strained and unpersuasive. First, arguing that a registered, incontestable trademark – like the PORTA-BOTE Mark – contains elements that would otherwise be understandable words when used outside of the trademark context does not nullify the owner’s rights in the mark. Respondent cannot mask the fact that he is using in bad faith a domain name that is essentially identical to Complainant’s PORTA-BOTE Mark. Second, cursory Google.es2 searches for “portabote” and “porta bote” return only references to Complainant’s product and brand, rather than any results using those terms in a descriptive manner (see Exhibit A). Third, the primary English translation of “bote” is “jar” or “container”; “boat” is second, and qualified by a note that “barco” is the proper Spanish word for “boat”.

 

Complainant argues that the PORTA-BOTE Mark is neither descriptive nor generic. It is known among the nautical community as a mark associated

with the Complainant’s business and products.

 

Complainant argues that Respondent cannot convert the domain name he used while an authorized distributor into a website offering competing goods, where that website contains the Complainant’s trademark. That is exactly what the Respondent has done here, using the disputed domain name to divert Complainant’s customers to his own website where he sells competitors’ goods.

 

DISCUSSION

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."

 

Respondent submits information to show that it has had an agreement with Complainant to be a distributor for Complainant’s boating products in South America, specifically Brazil and the Republic of Suriname.  Respondent, while not providing any documentation of such an agreement, does state that it has been conducting business with Complainant for five years.  Further, Respondent submits an e-mail string from August of 2007 which it proclaims to show that Complainant approved of the registration of the domain name in question in furtherance of Respondent’s business relationship with Complainant. 

 

Complainant contends that on August 17, 2011, Complainant terminated its licensed distributor agreement with Respondent, thereby revoking Respondent’s rights to sell or advertise PORTA-BOTE products and accessories.  Complainant further argues that the termination also ended Respondent’s right to use Complainant’s intellectual property rights, such as the PORTA-BOTE mark.  Complainant contends that on or before the day that the distributor agreement was terminated, that Respondent renewed the disputed domain name, and revised the content of the domain name. 

 

In this instance, the Panel finds that this is a business and/or contractual dispute between two companies that falls outside the scope of the UDRP.  In Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007), the panel stated:

 

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 Love, the panel was concerned with possible causes of action for breach of contract.  According to the panel in Love, complex cases such as the one presented here may be better decided by the courts than by a UDRP panel:

 

When the parties differ markedly with respect to the basic facts, and there is no clear and conclusive written evidence, it is difficult for a Panel operating under the Rules to determine which presentation of the facts is more credible.  National courts are better equipped to take evidence and to evaluate its credibility.

 

The panel in Luvilon Industries NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005) concurred with this reasoning:

 

[The Policy’s purpose is 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.

 

Based upon the reasoning outlined in the aforementioned cases and the record, the Panel concludes that the instant dispute contains a question of contractual interpretation, and thus falls outside the scope of the UDRP.  If the Panel makes such a finding, the Panel may dismiss the Complaint.  See Everingham Bros. Bait Co. v. Contigo Visual, FA 440219 (Nat. Arb. Forum Apr. 27, 2005) (“The Panel finds that this matter is outside the scope of the Policy because it involves a business dispute between two parties.  The UDRP was implemented to address abusive cybersquatting, not contractual or legitimate business disputes.”); see also Fuze Beverage, LLC v. CGEYE, Inc., FA 844252 (Nat. Arb. Forum Jan. 8, 2007) (“The Complaint before us describes what appears to be a common-form claim of breach of contract or breach of fiduciary duty.  It is not the kind of controversy, grounded exclusively in abusive cyber-squatting, that the Policy was designed to address.”); see also Frazier Winery LLC v. Hernandez, FA 841081 (Nat. Arb. Forum Dec. 27, 2006) (holding that disputes arising out of a business relationship between the complainant and respondent regarding control over the domain name registration are outside the scope of the UDRP Policy).

 

DECISION

Having established a contractual dispute outside the scope of the UDRP, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <portabotesam.com> domain name REMAIN WITH Respondent.

 

 

Luiz Edgard Montaury Pimenta, Panelist

Dated:  November 07, 2011.

 

 

 

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