Lineweight LLC v DURO TEXTILES LLC
Claim Number: FA1410001584882
Complainant is Lineweight LLC (“Complainant”), represented by Merchant & Gould, Minneapolis, USA. Respondent is DURO TEXTILES LLC (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <multicamfabric.com>, registered with Network Solutions, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Carol Stoner, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 15, 2014; the National Arbitration Forum received payment on October 15, 2014.
On October 15, 2014, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <multicamfabric.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 16, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 5, 2014 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@multicamfabric.com. Also on October 16, 2014, 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 5, 2014.
Complainant’s Additional Submission was received on November 10, 2014 and complies with Supplemental Rule 7.
On November 12, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Carol Stoner, Esq., 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 <multicamfabric.com> be transferred from Respondent to Complainant.
Preliminary Issue
Panel has discretion to determine whether or not it has jurisdiction over this dispute. After a review of the facts and arguments presented to it regarding Respondent’s contested bad faith registration and use of a domain name, allegedly belonging to Complainant, Panel has found that there is sufficient evidence for it to properly decide the dispute under the UDRP, and therefore proceeds with the case and considers 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 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. 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 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.”).
A. Complainant’s Contention’s
Complainant uses MULTICAM for printing camouflage patterns onto fabrics and products. The MULTICAM mark is registered with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,443,275, registered Dec. 3, 2013, filed Apr. 12, 2013). The <multicamfabric.com> domain name takes the mark, adds the descriptive term “fabric,” and the generic top-level domain (“gTLD”) “.com.” Complainant believes this makes the domain name confusingly similar to the MULTICAM mark.
Respondent has no rights or legitimate interests in the <multicamfabric.com> domain name. Respondent has no license from Complainant to use the mark MULTICAM in trade or commerce.
Respondent registered and is using the domain name in bad faith. Respondent is seeking to attract consumers that seek legitimate MULTICAM products to Respondent’s own website, for Respondent’s own benefit.
B. Respondent’s Contentions
Respondent’s rights in the <multicamfabric.com> domain name are superior to Complainant’s alleged rights. Respondent registered the domain name on August 25, 2011, more than two years prior to the registration of the MULTICAM mark’s registration. Respondent is also one of the country’s largest dyers, printers, and distributors of textile products. Complainant deals in military equipment and apparel, and Respondent deals with Complainant as a business partner dating back to 2008. See Response, Schedule B.
Respondent could not have registered the <multicamfabric.com> domain name when it was an exclusive licensee at the time of registration, acting at behest of Complainant. Both Complainant and Respondent enjoyed profits from the sales made on the <multicamfabric.com> domain name for many years. Even though the parties arrangement ended on April 12, 2014, Respondent has not continued to make commercial transactions through the domain name’s website.
Nonetheless, the dissolution of the agreement does not retroactively change the original good faith registration to “bad faith.” Further, no USPTO trademark was registered at the time of domain name registration—further invalidating the claim that Respondent registered the domain name in bad faith.
This dispute is ultimately a business disagreement between the parties, which is
not the type of dispute the UDRP was designed to resolve. Respondent incurred substantial expenses in developing and maintaining the website on its own. The lack of bad faith on part of Respondent in registering the domain name provides sufficient warning that Complainant’s true dispute is not with bad faith registration and use of domain names, but merely a dispute with Respondent that transcends domain names.
C. Complainant’s Additional Submissions
Complainant submits that it has changed legal counsel, in that the firm submitting the Additional Submission is not the same individual representative who submitted the Amended Complaint.
Complainant has common law rights in the mark dating back to the 2003 first use of the mark.
Complainant’s contentions fall squarely within the UDRP—the dispute is not one primarily relating to business, property, or contract rights that extend beyond the UDRP.
The licensing agreement between the parties did not permit Respondent to register infringing domain names, and as such, Respondent had no rights or legitimate interests in the registration and use of this domain name.
(1) The domain name <multicamfabric.com> 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 <multicamfabric.com>; and
(3) the domain name <multicamfabric.com> has been registered and is being used 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:
(4) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(5) Respondent has no rights or legitimate interests in respect of the domain name; and
(6) the domain name has been registered and is being used in bad faith.
Complainant’s Sched. A evidences that it uses MULTICAM for printing camouflage patterns onto fabrics and products and that the MULTICAM mark is registered with the USPTO (e.g., Reg. No. 4,443,275, registered Dec. 3, 2013, filed Apr. 12, 2013). The Panel holds that this USPTO registration is sufficient evidence of Policy ¶ 4(a)(i) rights, with the date of priority marshalling back to the April 12, 2013 filing date. See, e.g., 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”).
A dimension of this dispute involves the priority of Complainant’s trademark rights, and when those rights accrued. Sched. D of Complainant’s Additional Submission, Copy of Trademark Registration 3,084,726, dated April 25, 2006, provides prior evidence of usage, through its sworn statement and accompanying evidence required in initial filing, that the mark’s first use in commerce was September 30, 2003 and its first use in interstate commerce was also September 30, 2003. This actual evidence of usage is not extinguished by the formal failure to file a Section 8 Affidavit.
Complainant also provides evidence in its Additional Submission Sched. E of the presence of the MULTICAM mark in advertising as far back as 2005, through a show of the Crye Precision 2005 Equipment Catalogue, and through Sched. F of the Crye Precision 2010 Equipment Catalogue.
Complainant has shown that it has rights in the MULTICAM mark going back to the 2003 first usage of the mark, thus achieving secondary meaning in the minds of consumers and garnering common law rights thereby. See AOL LLC v. DiMarco, FA 1275978 (Nat. Arb. Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”).
Complainant claims that the <multicamfabric.com> domain name takes the mark, adds the descriptive term “fabric,” and the generic top-level domain (“gTLD”) “.com.” Complainant believes this makes the domain name confusingly similar to the MULTICAM mark. The Panel agrees that the addition of the gTLD is not relevant to this analysis. See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). Further, the affixing of the descriptive term “fabric” to the mark, contributes to the confusing similarity of the disputed domain name, and Complainant’s mark, because it refers to the mark holder’s primary product in trade. See, e.g., Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). Therefore, the Panel finds the <multicamfabric.com> domain name to be confusingly similar to the MULTICAM mark 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.”).
As even during the term of the licensor/licensee relationship, Respondent was not authorized to use the MULTICAM trademark, Respondent was most certainly not authorized to use MULTICAM or a formation thereof, following the termination of the license in April of 2014. Thus, there is no factual basis for finding that Respondent was “commonly known as” MULTICAM or a formation thereof, under Policy ¶ 4(c)(ii). See, e.g., 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).
In the Additional Submission, Complainant argues that Respondent never had the right—even under the license—to register any Internet domain names that traded upon the MULTICAM mark. Panel notes that the introduction to this non-exclusive license agreement (Schedule H of 4/16/10 Distribution Agreement with Lineweight LLC) recites that CRYE is the trademark, copyright and patent owner of all proprietary interest in the camouflage pattern and technology called MULTICAM.
Paragraph 7 (c) of this same Agreement states that the licensee does not acquire proprietary rights and Paragraph 3 states that licensee must receive approval of all marketing material.
This Panel finds that the license arrangement does not afford Policy ¶ 4(a)(ii) rights or legitimate interests in the domain name. See AAA Employment, Inc. v. Ahearn and Associates, FA520670 (Nat. Arb. Forum, Sept. 6, 2005) (holding franchise agreement between complainant and respondent did not give respondent right to register the domain name; holding such action constituted bad faith).
Complainant has thus made its prima facie case that Respondent lacks rights
and legitimate interests in the disputed domain name under Policy ¶ 4(a) 2. Respondent then attempts to assert its legitimate interests by both attacking the legitimacy of Complainant’s mark, and by citing little more than a longstanding business relationship, but fails on both accounts. Respondent has clearly not shouldered its resultant burden of evidence to prove its rights or legitimate interests in the disputed domain name.
Despite Respondent’s cited cover of a long standing business relationship dating back to 2008, Respondent was never authorized to register a domain name, incorporating the licensor’s MULTICAM mark. Respondent was denominated as a non-exclusive licensee. Consistent with this limited license, Respondent contractually agreed that it did not acquire any proprietary rights in connection with Complainant’s trademarks. Section 7 (d) of this Agreement states that:
Licensee has paid no consideration for the ownership of CRYE’s or its affiliates trademarks, trade names, logos, designations or copyrights, and nothing contained in this Agreement will give Licensee any right title or interest in any of them.
Section 3 of this Agreement requires the licensee to obtain approval of all marketing materials prior to use. Respondent offers no evidence that it did so.
Complainant’s Schedule J, consisting of a termination letter dated April 10, 2014, requires Respondent to cease using any CRYE trademark upon termination of agreement.
Complainant makes a convincing argument that Respondent was seeking to attract consumers that seek legitimate MULTICAM products to Respondent’s own website, for Respondent’s own benefit. In its Additional Submission, Complainant shows through the WayBackMachine, a print of <multicamfabric.com> from September 02, 2014, that the disputed website was not operating within the parameters of the license and was therefore, not authorized. Rather, Respondent usurped an opportunity to expand its more general business offerings, beyond those of MULTICAM, and thus profited from this association with Complainant’s mark. See Compl. Addt’l Sub., at Attached
Sched. N–O. The fact that Respondent’s resolving page following the termination of the license, claims that Respondent is a licensee of Complainant, is a cause of a likelihood of confusion, through which Respondent is actually profiting. This likelihood of confusion triggers Policy ¶ 4(b)(iv) bad faith. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
In summary, Respondent acted in bad faith through the registration and use of Complainant’s mark MULTICAM for the purpose of trading upon the goodwill surrounding Complainant’s mark. This intrusion created a likelihood of confusion as to the source of the website <multicamfabric.com>. Although the License Agreement required Respondent, as Licensee, to receive prior approval for use of marketing materials, Respondent never did so. Instead, Respondent registered the disputed domain name in 2011, well after he became a party to license contract in 2008 and used the domain name to pass itself off as Complainant, in an attempt to profit thereby. This passing off continued after the license termination in April of 2014, until at least September 02 2014.This evidence of Respondent’s bad faith registration and usage is in contravention of Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <multicamfabric.com> domain name be TRANSFERRED from Respondent to Complainant.
Carol Stoner, Esq., Panelist
Dated: November 26, 2014
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