Samson Rope Technologies, Inc. v. Emil Bjornsson / Master Pull LLC
Claim Number: FA1510001644348
Complainant is Samson Rope Technologies, Inc. (“Complainant”), represented by Jacqueline M. Lesser of Baker & Hostetler LLP, Pennsylvania, USA. Respondent is Emil Bjornsson / Master Pull LLC (“Respondent”), represented by Shawn Alexander, Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amsteelblue.com>, registered with Wild West Domains, LLC.
The undersigned certifies that 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.
Mrs. Prathiba M. Singh as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 28, 2015; the Forum received payment on October 28, 2015.
On October 28, 2015, Wild West Domains, LLC confirmed by e-mail to the Forum that the <amsteelblue.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 November 2, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 23, 2015 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@amsteelblue.com. Also on November 2, 2015, 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, 2015. The Complainant had the opportunity to file a submission to the response filed by the respondent by the 18th Nov. 2015. However, the Complainant has not availed of the same.
On 19th November, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Mrs. Prathiba M. Singh as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant claims rights in the marks AMSTEEL and AMSTEEL-BLUE, both on the basis of registered trade mark and common law rights. The Complainant states that it has used the mark since 1990, if not earlier, by itself or through its predecessors-in-interest. In support of its use of the marks AMSTEEL and AMSTEEL-BLUE, the Complainant has filed Exhibit A-1 which is a printout from its website www.samsonrope.com. A perusal of the website reveals that the Complainant claims to have developed the mark AMSTEEL-BLUE in 1996. The Complainant alleges that the Respondent’s domain name <amsteelblue.com> is identical to the Complainant’s marks AMSTEEL and AMSTEEL-BLUE and that the registration of the said domain name is confusingly similar and in bad faith. The Complainant specifically alleges that the Respondent adopted the <amsteelblue.com> domain name with the knowledge of the Complainant. The Complainant filed on record copies of trade mark registrations - issued by the USPTO, by the WIPO (Madrid Protocol) and by the Canadian Intellectual Property Office.
The Complainant thereafter relies upon the WHOIS search to allege that the Respondent has registered its domain name in 2003 after the adoption of the mark AMSTEEL by the Complainant and that the same is in bad faith. Thus, the Complainant prays for transfer of the domain name in its favour.
CONTENTIONS OF THE RESPONDENT
The Respondent has contested the complaint and has alleged that he is in the field of Rope Technologies since 2000. The Respondent has placed on record couple of magazines dating back to the year 2000 which establish use of the mark AMSTEEL-BLUE by him. The Respondent argues that its adoption of AMSTEEL-BLUE in 2003 was without bad faith and that the said adoption was well within knowledge of the Complainant as is evidenced from correspondence written by the earlier attorney of the Complainant to the Respondent. The Respondent also claims that every inch of AMSTEELBLUE was purchased through the Complainant’s dealer network and that the use of the mark AMSTEELBLUE for products originating from the Complainant is legitimate. The Respondent also argues that since he purchases products from the Complainant’s authorized distributors, there is no loss of income of business to the Complainant. The Respondent further argues that the registrations of the trademarks were subsequent to the registration of the impugned domain name by him. It is alleged by the Respondent that this is a case of `reverse domain name hijacking’ as the domain name was registered five years prior to the registration of the Complainant’s trademark. The Respondent ,thus, disputes that the registration of the domain name was in bad faith.
FINDINGS
In the present case, the record reveals that the complaint does not contain any disclosure as to the past correspondence with the Respondent and knowledge of the Respondent’s existence. It is evident from a reading of Exhibit B-1 filed by the Complainant that the Respondent’s domain name was registered as of 2003 and all the trademark registrations of the Complainant are subsequent to 2003. Further, Exhibit-1 filed by the Respondent reveals that as of May 7 2007, the Complainant had full knowledge of the Respondent’s domain name <amsteelblue.com>. However, this fact has not been disclosed in the complaint. The Complainant has also not availed of its opportunity to rebut the response or the Exhibits filed by the Respondent. In fact, a perusal of the letter dated 7th May 2007 (Exhibit-1) as also Exhibits 4-5 establish that there was continuous correspondence going on between the parties and that the Complainant had knowledge of the existence of the Respondent and the use of the impugned domain name.The use of the domain name <amsteelblue.com> appears to have been with the express consent of the Complainant by using a disclaimer. These facts ought to have been disclosed by the Complainant in its complaint. The Complainant has neither disclosed all the relevant facts nor has it chosen to rebut the pleas and the exhibits filed by the Respondent. Since the same are unrebutted, the exhibits filed by the Respondent are taken to be correct.
Exhibit-1 of the Respondent which is a letter addressed by the Complainant’s lawyers, states that the addition of the disclaimer by the Respondent addresses the primary concern of the Complainant. The relevant portion of the letter dated 7th May 2007 is extracted herein below:-
“….The addition of the new prominent disclaimer on your home page addresses our primary concern, namely, that consumers were likely to assume AMSTEELBLUE.COM is associated or affiliated with Samson….”
The Complainant’s counsel goes on to say that the Complainant would continue to monitor the website and that if there are any instances of confusion, it would contact the Respondent. There is a specific statement to the effect that the Respondent ought to reference the AMSTEEL and AMSTEELBLUE marks as the marks of Samson Rope Technologies, Inc. The only condition under which the amsteel-blue.com is liable to be transferred to the Complainant is, in case, the Respondent ceases its operations. Thus, the Complainant appears to have expressly consented to the use of the domain name <amsteelblue.com> by the Respondent. The Complainant had knowledge of the domain name registration of the Respondent as far back as in 2007 but chose to file the present complaint only in October, 2015. This time lag and delay has not been explained by the Complainant nor is there anything on record in the complaint to suggest that the Complainant had negotiated with the Respondent. The facts relating to the correspondence bear relevance in the decision of the present complaint.
In the light of the statements made by the Respondent and the averments filed therein and in the absence of any explanation to Exhibit-1, it appears that the Complainant has not revealed the true and correct facts in its complaint. The panel is unable to conclude that the adoption is in bad faith though the domain name is identical to the registered marks of the Complainant. The peculiar facts of this case and the omission by the Complainant to state complete facts regarding its relationship with the Respondent, leave no option to the panel but to rule in favour of the Respondent and relegate the parties to a civil court, if they choose to avail of any remedies available to them. Needless to add, that since the findings in the present Complaint are based only on the documents available on record, the same may not be held as impacting the rights and liabilities of either party.
There are several disputed facts in the present case which are outside the scope of decision under the UDRP.
In Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007), the panel stated that cases that “hinge mostly on a business or civil dispute between the parties, with possible causes of action for breach of contract or fiduciary duty” are outside the scope of the Policy. The Panel further said that the present case appeared 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 held that the subject matter is outside the scope of the UDRP and dismissed the Complaint.
In Redox Power Systems, LLC. v. Paul Faulkner Claim Number FA 1504001615480, it was observed that this case involves many other legal issues that are already under consideration in a court, issues that go well beyond the scope of the Policy.
The panel in Luvilon Indus. NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005) concurred with this reasoning and held that [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.
In Everingham Bros. Bait Co. v. Contigo Visual, FA 440219 (Nat. Arb. Forum Apr. 27, 2005 it was held that 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.”)
In Fuze Beverage, LLC v. CGEYE, Inc., FA 844252 (Nat. Arb. Forum Jan. 8, 2007) it was held that the Complaint 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.
In Frazier Winery LLC v. Hernandez, FA 841081 (Nat. Arb. Forum Dec. 27, 2006) it was held that 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
For the reasons presented above, the Panel concludes that relief shall be DENIED.
Accordingly, the Complaint is DISMISSED and the Panel declares that the <amsteelblue.com> domain REMAIN WITH the Respondent.
Mrs. Prathiba M. Singh , Panelist
Dated: 3rd December, 2015.
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