Rita and Vernon Habighorst, Blue Ribbon Custom Tack, Inc. v. Christine Saltmarsh/Blue Ribbon Tack
Claim Number: FA1210001466996
Complainant is Rita and Vernon Habighorst, Blue Ribbon Custom Tack, Inc. (“Complainant”), represented by Adam Stephenson of Adam R. Stephenson, LTD., Arizona, USA. Respondent is Christine Saltmarsh/Blue Ribbon Tack (“Respondent”), Maine, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <blueribbonconsignment.com>, registered with WILD WEST DOMAINS, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 11, 2012; the National Arbitration Forum received payment on October 11, 2012.
On October 15, 2012, WILD WEST DOMAINS, LLC confirmed by e-mail to the National Arbitration Forum that the <blueribbonconsignment.com> domain name is registered with WILD WEST DOMAINS, LLC and that Respondent is the current registrant of the name. WILD WEST DOMAINS, LLC has verified that Respondent is bound by the WILD WEST DOMAINS, LLC 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 October 22, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 13, 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@blueribbonconsignment.com. Also on October 22, 2012, 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 November 13, 2012.
On November 27, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), as Panelist.
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 Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainants Rita and Vernon Habighorst are directors of and the Vice President/Secretary and President/CEO, respectively, of Complainant Blue Ribbon Custom Tack, Inc., which is an Arizona Corporation. The Habighorsts are bringing this action on behalf of the corporation.
Policy ¶ 4(a)(i)
1. Complainant owns the following trademark registrations with the United States Patent and Trademark Office ("USPTO"):
i. BLUE RIBBON (Reg. No. 2,437,749 registered Mar. 27, 2001).
1. The Panel notes that the identified owners are Vernon Habighorst and Rita Habighorst.
ii. BLUE RIBBON (Reg. No. 4,193,055 filed June 26, 2011; registered Aug. 21, 2012).
1. The Panel notes that the identified owners are Rita Habighorst and Vernon Habighorst.
iii. BLUE RIBBON TACK (Reg. No. 2,437,748 registered Mar. 27, 2001).
1. The Panel notes that the identified owners are Vernon Habighorst and Rita Habighorst.
2. Respondent’s <blueribbonconsignment.com> domain name is confusingly similar to Complainant’s BLUE RIBBON mark. The domain name contains the entire mark in addition to the generic/descriptive term “consignment.” The space being removed from the BLUE RIBBON mark is not enough to remove confusion and adding the generic top-level domain (“gTLD”) “.com,” or another gTLD, is necessary in order for a website to function.
Policy ¶ 4(a)(ii)
1. Respondent registered the <blueribbonconsignment.com> domain name on July 23, 2009. The disputed domain name was done in the name of “Blue Ribbon Tack,” with the administrative contact listed as “Christine Saltmarsh.” After taking over the shop Ms. Saltmarsh changed the name from “Blue Ribbon Tack” to “Blue Ribbon Consignment and Tack.” Complainant’s research did not show any formally organized business entity known as “Blue Ribbon Tack,” “Blue Ribbon Consignment & Tack,” or “Blue Ribbon Consignment and Tack,” in Maine. Complainant does not know when Respondent began using the mark, but believes that it was after Complainant’s 2001 trademark registration of the BLUE RIBBON mark.
2. Respondent is using the disputed domain name to sell goods and services related to horse and tack for commercial gain. Complainant’s trademark registrations cover the class of goods in western saddles and other horse related products. Respondent has no rights or legitimate interests in the disputed domain name.
Policy ¶ 4(a)(iii)
1. Respondent’s registration cannot have been done in good faith because Respondent had constructive notice of Complainant’s prior rights in the BLUE RIBBON and BLUE RIBBON TACK marks.
a. When Respondent registered the disputed domain name in 2009, Respondent had notice of the marks that were registered on March 27, 2001.
2. Respondent registered the disputed domain name primarily for the purpose of disrupting the business of Complainant.
a. Respondent’s competing website actually disrupts Complainant’s business. A Google search for “blue ribbon tack” indicates that the first listed return is for Complainant’s official website, and that the third and fourth listings are for Respondent’s website, thus creating the chance for Internet users to click on Respondent’s link rather than Complainant’s.
3. Respondent’s disputed domain name and competing use creates confusion as to Complainant’s involvement or ownership of the disputed domain name. Respondent may, in addition to selling products, benefit from receiving “hits” on its website when confused Internet users click on Respondent’s link when searching through Google for Complainant because Respondent’s website also appears to contain advertisements to other businesses. Confusion also exists when Internet users arrive at the website as the BLUE RIBBON and BLUE RIBBON TACK marks are used throughout the website, and the services provided through Respondent’s website are identical to those offered by Complainant.
Respondent operates a small consignment shop in southern Maine, USA. Respondent has a reseller’s certificate from the state of Maine and is known by its business name of Blue Ribbon Consignment & Tack. Respondent had purchased the business from the prior owner and retained the same web designer that the prior owner had used and the web designer incorrectly placed “Blue Ribbon Tack” as the registrant for Respondent’s website.
Policy ¶ 4(a)(i)
Policy ¶ 4(a)(ii)
1. Respondent has been known as Blue Ribbon Consignment & Tack since July of 2009 when Respondent took over “Blue Ribbon Tack” from the prior owner. Respondent immediately changed the business name to Blue Ribbon Consignment & Tack, and got a reseller’s certificate from the state of Maine. Respondent has subsequently fired the web designer for mistakes that were not brought to light until the Complaint was received, including the registrant information for the domain name at issue.
2. Respondent does not provide identical services to Complainant. Complainant offers high-end custom-made tack and saddle products, while Respondent offers others’ used goods for sale ranging from household goods to saddles. Respondent’s website was not supposed to contain an online store and was supposed to be removed by the web designer, but was only “hidden.” Respondent is merely operating a small, “mom and pop” store in southern Maine and has not tried to compete with Complainant, and no Internet confusion between the two could ever happen. As for the links that Complainant discusses, Respondent had links to local businesses that it dealt with on the website for consumers who were looking for such things, and has never been paid for providing those links.
Policy ¶ 4(a)(iii)
1. Respondent did not intend to, and is not actually, disrupting Complainant’s business. Respondent operates a small consignment shop in southern Maine, and Complainant operates in Arizona. Respondent sells others’ used goods through its small store, and does not have an online store nor does Respondent ship items around the country. In contrast, Complainant operates a high-end custom-made saddle and tack shop so there is no disruption to Complainant’s business through Respondent’s website.
2. Respondent has never received any revenue from the advertisements for local businesses placed on the website. Respondent placed those advertisements there so that it could refer customers who were looking for such things to those businesses that Respondent knew carried the products being searched for. Due to the differences in business models and product offerings there is no likelihood of confusion between Complainant and Respondent.
For the reasons set forth below, the Panel finds Complainant in not entitled to the relief requested.
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.
Preliminary Issue: Multiple Complainants
There are three Complainants in this matter: Rita and Vernon Habighorst, and Blue Ribbon Custom Tack, Inc. Complainants claim that Rita and Vernon Habighorst are directors of and the Vice President/Secretary and President/CEO, respectively, of Complainant Blue Ribbon Custom Tack, Inc., which is an Arizona Corporation. The Habighorsts contend that they are bringing this action on behalf of the corporation.
Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Investments, Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Servs. Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Nat. Arb. Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and will treat them all as a single entity in this proceeding. In this decision Complainants will be collectively referred to as “Complainant.”
For Complainant to prevail, it must prove all three elements. Because of the Panel’s ruling on the issue of Rights or Legitimate Interests, the Panel makes no ruling on this issue. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the Complainant must prove all three elements under the Policy, the Complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into [two UDRP factors] where the Complainant could not satisfy the requirements of [the third UDRP factor]).
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.”).
The Panel holds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
Respondent asserts that it has been known as Blue Ribbon Consignment & Tack since July of 2009 when Respondent took over “Blue Ribbon Tack” from the prior owner. Respondent contends that it immediately changed the business name to Blue Ribbon Consignment & Tack, and got a reseller’s certificate from the state of Maine. The Panel notes that the “Resale Certificate” that Respondent has presented identifies the business name as “Saltmarsh Christine M D/B/A BLUE RIBBON CONSIGNMENT & TACK” and was valid on July 1, 2009. Respondent further argues that it has never done business as “Blue Ribbon Tack,” and that Respondent has subsequently fired the web designer for mistakes that were not brought to light until the Complaint was received, including the registrant information for the domain name at issue. Further, the Panel notes that Complainant also states that Respondent has been operating under the Blue Ribbon Consignment & Tack name. Policy ¶ 4(c)(ii) may be satisfied if it can be shown that, “Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if Respondent has not acquired trademark or service mark rights.” The Panel finds that Respondent has been commonly known by the Blue Ribbon Consignment & Tack name since July of 2009, and therefore the Panel finds that Respondent has demonstrated its rights in the disputed domain name under Policy ¶ 4(c)(ii). See Always On UPS Sys. Inc. v. Always-On, Inc., FA 114467 (Nat. Arb. Forum Aug. 22, 2002) (finding that because the respondent submitted evidence—press release and product information—that demonstrated that it was commonly known as “always-on” since April of 2000, and it used <alwayson.com> and <always-on.com> to provide software applications to its customers, it had rights or legitimate interests in the disputed domain names).
Further, Respondent argues that it does not provide identical services to Complainant. Respondent states that Complainant offers high-end custom-made tack and saddle products, while Respondent offers others’ used goods for sale ranging from household goods to saddles. Respondent also argues that its website was not supposed to contain an online store and was supposed to be removed by the web designer, but was only “hidden.” Respondent claims that it is merely operating a small, “mom and pop” store in southern Maine and has not tried to compete with Complainant, and no Internet confusion between the two could ever happen. As for the links that Complainant discusses, Respondent notes that it had links to local businesses that it dealt with on the website for consumers who were looking for such things, and has never been paid for providing those links. Further, Respondent notes that upon being fired, Respondent’s web designer has deleted the website entirely. The Panel agrees with Respondent’s assertions, and the Panel finds that Respondent was using the disputed domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i). See Scholastic Inc. v. Master Games Int’l, Inc., D2001-1208 (WIPO Jan. 3, 2002) (finding that the respondent’s use of the disputed domain name for a website regarding chess tournaments, particularly because the domain name appropriately described both the target users of the respondent’s services and the nature of the respondent’s services, was a bona fide use of the domain name).
Complainant has not proven this element.
For Complainant to prevail, it must prove all three elements. Because of the Panel’s ruling on the issue of Rights or Legitimate Interests, the Panel makes no ruling on this issue.
Complainant having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is ORDERED that the <blueribbonconsignment.com> domain name REMAIN WITH Respondent.
Hon. Karl V. Fink (Ret.), Panelist
Dated: November 29, 2012
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