DeLorme Publishing Company, Inc. v. BlueCosmo Satellite Communications / Jonathan Saad
Claim Number: FA1205001443195
Complainant is DeLorme Publishing Company, Inc. (“Complainant”), represented by Kevin Haley of Brann & Isaacson, LLP, Maine, USA. Respondent is BlueCosmo Satellite Communications / Jonathan Saad (“Respondent”), represented by Scott Warner of Garvey Schubert Barer, Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <delormeinreach.com>, registered with eNom.com.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on May 9, 2012; the National Arbitration Forum received payment on May 9, 2012.
On May 10, 2012, eNom.com confirmed by e-mail message addressed to the National Arbitration Forum that the <delormeinreach.com> domain name is registered with eNom.com and that Respondent is the current registrant of the name. eNom.com has verified that Respondent is bound by the eNom.com 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 May 15, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 4, 2012 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@delormeinreach.com. Also on May 15, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail address-es 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 from Respondent and was determined to be complete on June 5, 2012.
Complainant has timely filed an Additional Submission, and Respondent has likewise timely filed a response to that Additional Submission.
On June 6, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notic-es, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant, in its Complaint and Additional Submission, has made the fol-lowing assertions, among others:
Complainant markets mapping and GPS products for consumers, professionals and government markets under the DELORME trademark;
Complainant has registered the DELORME mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,966,264, registered April 9, 1996);
Complainant filed an intent-to-use (“ITU”) trademark application for the INREACH mark with the USPTO on May 25, 2011 (Serial No. 85,329,534);
Complainant announced plans for a new product called “inReach” on June 22, 2011, and, just two days later, on June 24, 2011 Respondent registered the dis-puted domain name;
Respondent’s <delormeinreach.com> domain name is comprised of a combin-ation of the entirety of these two marks;
Respondent has no rights to or legitimate interests in the disputed domain name;
Respondent is a retail dealer of satellite phones, data communications, and satellite services;
Respondent has never been known by the disputed domain name;
Until about April 19, 2012, Respondent resolved the disputed domain name to a website offering links to unrelated third-party businesses;
After Complainant contacted Respondent, on April 19, 2012, Respondent re-solved the disputed domain name to a website offering information about Complainant’s INREACH product and an e-mail address where Internet users could request information about the product;
Respondent does not actually sell Complainant’s goods, and is not authorized to do so;
Respondent most recently resolved the disputed domain name to a website of-fering advertisements for BGANSatellite, one of Complainant’s competitors;
Respondent has offered to sell the disputed domain name to Complainant for the sum of $10,000, and Respondent also listed the domain name for sale with a domain name broker;
Respondent has admitted to registering the disputed domain name because “he thought it would generate traffic from people who were looking for [Complain-ant’s] product”;
Respondent is using the disputed domain name for commercial gain and to mislead Internet users;
Internet users searching for the website of Complainant may inadvertently be diverted to the website of Respondent, which offers products competing with the business of Complainant, thus disrupting Complainant’s business.
B. Respondent, in its Response and Additional Submission, has made the fol-lowing assertions, among others:
Respondent is an authorized reseller of Complainant’s inReach product, and, therefore, has legitimate rights in the <delormeinreach.com> domain name;
Respondent registered the disputed domain name months before the inReach product was launched, and it did so in preparation to make a bona fide effort to market the product to customers;
Complainant approached Respondent and initiated negotiations about acquiring the disputed domain name;
Complainant has not shown that it has rights exclusive in the INREACH mark;
Respondent’s use of the inReach product name in its domain evidences good faith rather than bad faith as asserted by Complainant;
Respondent resolved the disputed domain name to a placeholder website while it was negotiating the terms of its distributor/reseller agreement with Complainant;
The disputed domain name was inadvertently redirected to a website of Re-spondent that offered for sale the products of other companies;
Complainant has failed to demonstrate that Respondent registered the disputed domain name in bad faith.
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 and is being used in bad faith.
In the ordinary course, we would address the elements of Policy ¶ 4(a) in the order in which they are presented in the Policy. In this instance, however, we find it best to consider first, and exclusively, the question of bad faith registration of the contested domain name arising under Policy ¶ 4(a)(iii), because, in the particular circumstances of this proceeding, resolution of that issue resolves the entire controversy.
The reason for this is that the Policy requires Complainant to prevail on each and every element of Policy ¶ 4(a) in order to prevail in the proceeding as a whole. If, therefore, Complainant fails to prevail as to any one of them, it fails altogether. And, in that event, consideration of the Complaint may begin and end with exam-ination of the element of Policy ¶ 4(a)(iii), as to which Complainant has failed to provide proof upon which it can prevail. See, e.g., Post.Com Limited v. Peter Neilson, D2002-0690 (WIPO Sept. 17, 2002):
In this Panel’s view, the Complainant has not established … that the Domain Name was registered by the Respondent in bad faith [as contemplated under Policy paragraph 4(a)(iii)].... In the light of this finding the Panel does not need to consider paragraphs 4(a)(i) and (ii) of the Policy.
To the same effect, see also Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd., D2010-0470 (WIPO May 19, 2010).
The pivotal facts presented by the parties bear on Respondent’s assertion that it is an authorized reseller of Complainant’s products. The record contains a copy of a contract between the parties which appears to name Respondent as a re-seller of Complainant’s products. The same contract appears to encompass rights with regard to selling Complainant’s products online. Complainant at-tempts to interpret the relationship between the parties so as to negate the ap-parent effect of the contract. However, Complainant does not deny the fact of the contract, nor does Complainant assert that the contract has been rescinded. We conclude therefore that Respondent is, in fact, an authorized reseller of Complainant’s products, and that the disputed domain name was registered in anticipation of fulfillment of the contractual relationship reflected in the record. Because this is so, we further conclude that Respondent did not register the disputed domain name in bad faith within the meaning of Policy ¶ 4(a)(iii). See, e.g., Tech Int'l, Inc. v. ClearChoiceofny, FA 379875 (Nat. Arb. Forum Feb. 17, 2005) (finding that a respondent, who had a distribution and licensing agreement with a UDRP complainant, did not register a disputed domain name in bad faith as contemplated by Policy ¶ 4(a)(iii)).
See also Western Holdings, LLC v. JPC Enterprise, LLC, WIPO Case No.
D2004-0427:
Respondent, at a minimum, had oral permission to use Complain-ant’s marks in advertising and … there was no express restriction informing Respondent that the permission granted did not include registration and use of the marks by Respondent as domain names…. These circumstances are sufficient to rebut Complain-ant’s allegation of bad faith registration.
Further, see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903:
If trademark owners wish to prevent the use of their marks by auth-orized sales and repair agents in domain names, they should neg-otiate such protections through appropriate contractual language or, when permitted under the relevant law, seek recovery in classic trademark infringement or dilution litigations. In the absence, how-ever, of some element of illegitimacy, they should not use the Pol-icy to prevent uses that ICANN deemed to be legitimate, including the use of domain names in connection with the bona fide offering of goods and services.
Complainant thus having failed to establish an essential element required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, DENIED.
Accordingly, it is ordered that the <delormeinreach.com> domain name shall remain with Respondent.
Terry F. Peppard, Panelist
Dated: June 15, 2012
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