The Duck Group, LLC v. Rubba Ducks / PERFECT PRIVACY, LLC
Claim Number: FA1410001585860
Complainant is The Duck Group, LLC (“Complainant”), Minnesota, USA. Respondent is Rubba Ducks / PERFECT PRIVACY, LLC (“Respondent”), represented by Morgan Smith of Smith & Raver LLP, Minnesota, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <rubbaduck.com>, <rubbaducks.com>, <rubbashop.com>, registered with Network Solutions, 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 20, 2014; the National Arbitration Forum received payment on October 21, 2014.
On October 21, 2014, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <rubbaduck.com>, <rubbaducks.com>, and <rubbashop.com> domain names are registered with Network Solutions, LLC and that Respondent is the current registrant of the names. 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 22, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 12, 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@rubbaduck.com, postmaster@rubbaducks.com, postmaster@rubbashop.com. Also on October 22, 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 7, 2014.
Complainant submitted an Additional Submission which was determined to be compliant on November 10, 2014.
Respondent submitted an Additional Submission which was determined to be compliant on November 17, 2014.
Complainant submitted correspondence it claimed as a second additional submission on November 17, 2014. The Panel agrees that UDRP Supplemental Rule 7(e) grants the parties only one additional submission to any given proceeding.
On November 17, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson 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 names be transferred from Respondent to Complainant.
A. Complainant
a. Complainant’s mark:
i. Complainant owns the RUBBA DUCKS mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 76102755, registered August 3, 2000).
ii. Complainant uses the RUBBA DUCKS mark in connection with its business in the toy industry.
b. Respondent’s infringing activities:
i. Policy ¶ 4(a)(i)
1. The disputed domain names are confusingly similar to Complainant’s RUBBA DUCKS mark because Respondent has simply removed a letter or term from the mark and added a generic term to the mark.
ii. Policy ¶ 4(a)(ii)
1. Respondent lacks rights or legitimate interests in the disputed domain names.
2. Respondent does not provide any bona fide offering of goods or services, or make a legitimate noncommercial or fair use of the disputed domain names.
3. Respondent has made no demonstrable preparations to use the disputed domain names.
4. Complainant previously owned the disputed domain names.
iii. Policy ¶ 4(a)(iii)
1. Respondent will use the disputed domain names for only the purpose of selling, renting, or transferring the disputed domain names.
2. Respondent uses the disputed domain names to disrupt Complainant’s business.
3. Respondent will use the disputed domain names to attract Internet users to its own website for commercial gain.
B. Respondent
a. Respondent Rubba Ducks submitted the following Response
i. Preliminary Issue
1. Respondent believes that this issue has already been decided in a previous UDRP decision. It was resolved in favor of Respondent, because the dispute between the parties hinged upon questions of contractual interpretation and was outside the scope of the UDRP.
ii. Policy ¶ 4(a)(i)
1. Complainant has no rights to the RUBBA DUCKS marks, because through a sequence of transactions, the disputed marks were acquired exclusively by Respondent.
iii. Policy ¶ 4(a)(ii)
1. Respondent is commonly known as the disputed domain names by fundraising literature, email messages, and packaging materials.
2. Respondent is making a bona fide offering of goods and services and making a noncommercial or fair use of the disputed domain name because it is actually the owner of the disputed marks.
iv. Policy ¶ 4(a)(iii)
1. Respondent’s rights and legitimate interests in the disputed domain names demonstrate that they were registered in good faith.
C. Complainant provided the following additional submission
a. Complainant is the owner of the disputed marks. Respondent’s claims rest on an erroneous chain of title.
b. The previous UDRP decision was based on false claims that were stated in the Response and not supported by any actual evidence.
c. Respondent has not provided any evidence that it is using the registered marks on literature, email messages and packaging materials so that it is commonly known as the disputed domain names.
D. Respondent Rubba Ducks provided the following additional submission
a. Respondent provided a Summons and Complaint drafted by Respondent and directed towards Complainant regarding their contractual dispute over ownership of assets including trademark rights to RUBBA DUCKS. Respondent also provided a copy of the prior UDRP case between the parties in an effort to show that it has rights in the RUBBA DUCKS mark.
Complainant is The Duck Group, LLC, of Minneapolis, MN, USA. Complainant has domestically and internationally registered the mark RUBBA DUCKS which it has continuously used since at least as early as 2000 in connection with the manufacture and distribution of toys and related items. Complainant has registered numerous domain names incorporating it’s registered mark or parts thereof in connection with words that are similar in sight or sound. None of Complainant’s domains are or include the mark RUBBA SHOP.
Respondent is Rubba Ducks a/k/a Rubba Ducks Ventures Inc of Burnsville, MN, USA. Respondent and Complainant engaged in business dealings that centered around the transfer of Complainants assets to Respondent including but not limited to Complainants trademark rights in the mark RUBBA DUCKS. Respondent and Complainant disagree over the nature and effect of the agreements executed between them and the ownership of the RUBBA DUCKS trademark. Respondent has generated pleadings directed at claims of Breach of Contract and Conversion regarding the assets subject to the agreement.
Respondent PERFECT PRIVACY, LLC of Jacksonville, FL, USA did not respond and is not specifically addressed by the Complainant beyond being identified as a Respondent and alleged as being the same entity as Respondent Rubba Ducks. Complainant provides no support for that contention.
Preliminary Issues: Res Judicata
Respondent claims that this matter has already been decided in a previous UDRP decision. More specifically, Respondent claims that the previous UDRP decision was resolved in Respondent’s favor, because the panel decided that the dispute was outside the scope of UDRP and could not be resolved under the ICANN policy.
Complainant argues that the previous UDRP decision was based on false claims that were stated in the Response and not based off of any factual evidence. Thus, Complainant argues that the Panel should ignore the previous UDRP decision between the parties.
Previous panels have found that it is inappropriate to reopen a panel decision, unless there has been a material change in the evidence that was not introduced at the first decision. See Grove Broad. Co. Ltd. v. Telesystems Commc’ns Ltd., D2000-0703 (WIPO Nov. 10, 2000) (noting, and subsequently applying to the UDRP, the four common-law grounds for the rehearing or reconsideration of a previously filed decision as (1) serious misconduct on the part of a judge, juror, witness or lawyer; (2) perjured evidence having been offered to the court; (3) the discovery of credible and material evidence which could not have been reasonably foreseen or known at trial; or (4) a breach of natural justice).
Complainant argues that the prior decision was based on an alleged ongoing lawsuit however no documentation was provided to indicate any active litigation between the parties. In the instant case Respondent provided drafted pleadings but nothing to support the claim that they had been filed or that the parties were engaged in any current judicial proceedings. However pleadings between the parties were expressly considered in the parties prior UDRP case.
Respondent also provided Asset Purchase Agreement documents executed by officers of Complainant’s company and Respondent Rubba Duck Ventures Inc. regarding the transfer of assets between the companies, including but not limited to all,…”intellectual property assets, trademarks and copyrights….” The documents included exhibits indicating that various RUBBA DUCKS trademarks were part of the transaction. While both Complainant’s and Respondent Rubba Duck Ventures companies have used different variations of their names when attached to various documents the signatories and subject matter have remained consistent overall. Purchase agreements executed between the parties were also considered in the prior UDRP matter.
The Panel agrees with the prior Panel decision that the instant dispute is a business or contractual dispute, and thus falls outside the scope of the UDRP. 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).
The Panel here finds that Complainant has not provided information to support nor proven the existence of any material change in evidence between that considered in the prior UDRP matter between the parties and the assertions underlying the instant case. The Panel declines to reconsider the dispute regarding the <rubbaduck.com> and <rubbaducks.com> domain names which were the disputed domains in the prior UDRP proceeding between the parties and finds that the instant Complaint should be dismissed as to those domain names.
Preliminary Issue: Multiple Respondents
Complainant has alleged that the entities that control the disputed domain names are effectively controlled by the same person and/or entity, which is operating under several aliases. Respondent Rubba Duck Ventures Inc. disputes Complainant’s assertion and states that it lacks knowledge of and finds no reference to Respondent Perfect Privacy, LLC among Complainant’s materials. Respondent Rubba Duck states that it and Respondent Perfect Privacy, LLC are “obviously not the same”. Complainant provides no arguments in support of its premise that the two Respondents are the same or effectively controlled by a single entity. The Panel finds that Complainant has not presented sufficient evidence that the disputed domain name is controlled by the same entity. The Panel therefore cannot proceed against the Respondents in the present case.
Preliminary Issue: Dismissal as to the <rubbashop.com> Domain Name
The Panel notes that the <rubbashop> domain name does not contain any of Complainant’s trademarks that it has identified. Within the Complaint, Complainant states that RUBBASHOP is “what the Complainant had used for 14 years and still uses on all his marketing literature as a direct link on where to buy RUBBA DUCKS products online.” It appears Complainant would have the Panel read into that statement some common law rights on Complainant’s behalf. Complainant never expressly asserts rights to RUBBA SHOP beyond the statement noted. For common law rights to exist more than a positive inference or even an unsupported express assertion is required. The Complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such "secondary meaning" includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. See Mancini's Sleepworld v. LAKSH INTERNET SOLUTIONS PRIVATE LIMITED, D2008-1036 (WIPO Sept. 30, 2008). Complainant has provided no such information and thus fails to show any rights to RUBBA SHOP. The Policy requires that the domain name be confusingly similar to, or identical to, a mark in which Complainant has rights. Therefore, the Panel dismisses the Complaint as to the <rubbashop> domain name.
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.
Based on the Preliminary Issue findings in favor of Respondent it is unnecessary to address this element.
Based on the Preliminary Issue findings in favor of Respondent it is unnecessary to address this element.
Based on the Preliminary Issue findings in favor of Respondent it is unnecessary to address this element.
Because this matter addresses multiple Respondents that are not the same or controlled by the same entity the case is dismissed. Furthermore dismissal is warranted as to the domain names <rubbaduck.com> and <rubbaducks.com> because a prior case involving Complainant and Respondent Rubba Ducks decided that the dispute between the parties was outside the scope of the UDRP proceedings and Complainant has provided no proof of any new evidence that justifies reviewing the prior decision. Additionally, dismissal is warranted regarding the domain name <rubbashop.com> because the Complainant fails to provide any evidence that it has protected rights in the mark RUBBA SHOP. For all the reasons noted above the Panel concludes that Complainant’s requested relief is DENIED.
Accordingly, it is Ordered that the <rubbaduck.com>, <rubbaducks.com>, and <rubbashop.com> domain names REMAIN WITH Respondent.
Darryl C. Wilson, Panelist
Dated: December 1, 2014
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