Norcold, Inc. and Thetford Corporation v. Brian Currier / Pick A Slip LLC / NORCOLD PARTS / Seek Adventure LLC
Claim Number: FA1604001668815
Complainant is Norcold, Inc. and Thetford Corporation (collectively, “Complainant”), represented by Elizabeth K. Brock of Harness, Dickey & Pierce, P.L.C., Michigan, USA. Respondents are Brian Currier, Pick A Slip LLC, NORCOLD PARTS, and Seek Adventure LLC (collectively, “Respondent”), represented by John Di Giacomo of Revision Legal PLLC, Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <norcoldinc.com>, <norcold.co>, <norcold.guru>, <norcold.org>, <norcoldboards.com>, <norcoldcoolingunits.com>, <norcoldparts.com>, <norcoldparts.net>, <norcoldpowerboards.com>, <norcoldrepairparts.com>, <norcoldsale.com>, <norcoldshop.com>, <norcoldstore.com>, <norcoldtechs.com>, <norcoldthermistors.com>, <mynorcold.com>, <fixmynorcold.com>, <thetford-parts.com>, and <thetfordparts.co>, registered with Godaddy.Com, LLC and eNom, Inc.
The undersigned certify they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist and chair.
Honorable Charles K. McCotter Jr., (Ret.) as Panelist.
David H. Bernstein as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 4, 2016; the Forum received payment on April 4, 2016.
On April 5, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <norcoldparts.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 April 5, 2016, Godaddy.Com, LLC confirmed by e-mail to the Forum that the <norcoldinc.com>, <norcold.co>, <norcold.guru>, <norcold.org>, <norcoldboards.com>, <norcoldcoolingunits.com>, <norcoldparts.net>, <norcoldpowerboards.com>, <norcoldrepairparts.com>, <norcoldsale.com>, <norcoldshop.com>, <norcoldstore.com>, <norcoldtechs.com>, <norcoldthermistors.com>, <mynorcold.com>, <fixmynorcold.com>, <thetford-parts.com>, and <thetfordparts.co> domain names are registered with Godaddy.Com, LLC and that Respondent is the current registrant of the names. Godaddy.Com, LLC has verified that Respondent is bound by the Godaddy.Com, 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”) (including the .co ccTLD domain name and the .guru new gTLD domain names).
On April 7, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 2, 2016 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@norcoldinc.com, postmaster@norcold.co, postmaster@norcold.guru, postmaster@norcold.org, postmaster@norcoldboards.com, postmaster@norcoldcoolingunits.com, postmaster@norcoldparts.com, postmaster@norcoldparts.net, postmaster@norcoldpowerboards.com, postmaster@norcoldrepairparts.com, postmaster@norcoldsale.com, postmaster@norcoldshop.com, postmaster@norcoldstore.com, postmaster@norcoldtechs.com, postmaster@norcoldthermistors.com, postmaster@mynorcold.com, postmaster@fixmynorcold.com, postmaster@thetford-parts.com, postmaster@thetfordparts.co. Also on April 7, 2016, 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 April 26, 2016.
Complainant submitted an Additional Submission, which was received by the Forum on May 2, 2016.
On May 4, 2016, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator (chair), Honorable Charles K. McCotter Jr., (Ret.) and David H. Bernstein as Panelist.
Respondent submitted an Additional Submission, which was received by the Forum on May 4, 2016.
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 names be transferred from Respondent to Complainant.
A. Complainant
The following section reproduces verbatim the contentions of the Complainant, taken from its Complaint:
Norcold, Inc. owns the following U.S. Trademark registration:
· NORCOLD, Reg. No. 1457331 for “refrigerators,” first use 1953, issued September 15, 1987;
referred to as “the NORCOLD Mark.”
Thetford Corporation owns the following U.S. Trademark registrations:
· THETFORD, Reg. No. 1661379 for “chemical preparations used to deodorize toilets,” first use 1989, issued October 22, 1991;
· THETFORD, Reg. No. 4393111 for chemicals, toilets, and related goods, first use 1974, issued August 27, 2013;
· THETFORD MARINE, Reg. No. 3763975 for chemicals, first use 2006, issued March 23, 2010;
collectively, the “THETFORD Marks.”
The NORCOLD Mark and the THETFORD Marks will be referred to collectively, as Complainant’s Marks.
FACTUAL AND LEGAL GROUNDS
Initially, there are two listed Complainants, which should be permitted in the instant case, under UDRP Rule 3(a) and the Forum’s Supplemental Rule 1(e). Complainant Norcold Inc. is owned by Complainant Thetford Corporation. Both companies operate in the recreational vehicle (“RV”) and marine markets; Thetford sells toilets and related sanitation products, and Norcold sells refrigerators. Complainants and their products are closely related.
Multiple complainants should be permitted under UDRP Rule 3(a) and the Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” 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.” In the instant case, multiple parties can proceed as one party where they can show a sufficient link to each other. See Vancouver Organizing Comm. for the 2010 Olympic & Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006) (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.); see also Tasty Baking, Co. & Tastykake Investments, Inc. v. Quality Hosting, FA 208854 (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.)
As Complainants have a substantial link with each other and will be treated as a single entity in this Complaint, they will be referred to collectively as “the Complainant.”
This Complaint is based on the following factual and legal grounds: UDRP Rule 3(b)(ix).
Norcold is a leading manufacturer in the United States of gas/electric absorption refrigerators for the recreational vehicle (RV), marine and mobile markets. Norcold has used the NORCOLD Mark since at least as early as 1953, and its NORCOLD mark, Reg. No. 1457331, issued on September 15, 1987. Thetford is the world’s leading manufacturer of toilets and related sanitation products for the RV, marine, camping and truck markets. Thetford has used the THETFORD Marks since at least as early as 1974, and its THETFORD & Design mark, Reg. No. 1661379, issued on October 22, 1991. Complainant maintains websites at www.norcold.com and www.thetford.com.
Complainant’s products are sold and serviced in the United States via a network of authorized dealers and service centers. Complainant provides a searchable database of authorized THETFORD and NORCOLD retail outlets on its website at http://www.thetford.com/customer-support/dealer-and-service-center-locator/. Complainant’s database informs customers that a given location is an “authorized service center,” that it “sell[s] Norcold,” “sell[s] Thetford,” and handles product recalls. Complainant’s website also provides products and parts information and photographs. These parts include power board and cooling units.
Complainant learned of at least some of the Offending Domain Names in 2015. Screenshots of the websites http://norcoldparts.com/ and http://thetford-parts.com/ (together, the “Offending Websites”) as they appeared on or before this time are attached. Complainant contacted Respondent, demanding that Respondent stop using Complainant’s Marks, stop using copyrighted images, stop holding itself out as an authorized technician, and transfer the Offending Domain Names to Complainant. Respondent has refused to comply with all of these requirements including the transfer request; thus, Complainant has filed the instant action. Complainant’s contact prompted Respondent to reconsider and revise some of its infringing activity, so copies of both Respondent’s prior and current websites are attached and dated accordingly.
[a.] Manner in Which the Domain Names are Identical to a Trademark or Service Mark in Which the Complainant Has Rights. UDRP Rule 3(b)(ix)(1); UDRP Policy ¶4(a)(i).
Respondent’s Offending Domain Names are identical and/or confusingly similar to Complainant’s Marks. Specifically, the “Norcold” portion of Respondent’s Offending Domain Names are identical the NORCOLD Marks, while the “Thetford” portion of Respondent’s Offending Domain Names are identical to the THETFORD Marks.
The Offending Domains were registered on or after February 13, 2012; most of the Offending Domains were registered in 2015. Complainant’s first registration for the NORCOLD Mark issued in 1987, and its first registration for the THETFORD Mark issued in 1991; both trademark registrations predate the registration of the Offending Domain Names by at least 21 years.
Initially, regardless of the domain extension – .co, .com, .org, .net or .guru – the presence of a gTLD or ccTLD in a domain is not a relevant consideration when conducting a confusing similarity analysis under Policy ¶4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); and see Bottega Veneta SA v. Arianna Bureau, DCO2016-0003 (WIPO March 8, 2016) (finding <bottega-veneta.co> identical to the complainant’s mark in full with the mere addition of the hyphen and of the Top-Level Domain suffix ".co".)
1) norcold.co, norcold.guru, and norcold.org
In the case of norcold.co, norcold.guru, and norcold.org, Respondent has misappropriated the entirety of Complainant’s NORCOLD Mark. Accordingly, these domains are confusingly similar to Complainant’s NORCOLD Mark.
2) norcoldinc.com
In the case of norcoldinc.com, Respondent has again misappropriated the entirety of Complainant’s NORCOLD Mark and merely added the generic term “Inc.” Moreover, Respondent has misappropriated the entirety of Complainant’s Norcold, Inc. registered business name. Accordingly, this domain is confusingly similar to both Complainant’s NORCOLD Mark and Norcold, Inc. business name.
The registration of the domains norcoldinc.com, in combination with norcold.co and norcold.org above (collectively, the “Impersonating Offending Domain Names”), are particularly egregious because Respondent has registered as a domain name the entirety of Complainant’s NORCOLD Mark, and in one case, adding “Inc.” as in Complainant’s business name. Using only Complainant’s Mark or its name in a domain, coupled with two of the most common gTLDs - .COM and .ORG – is calculated to give the impression that Respondent is Complainant. This is true of the .CO registration as well, which is calculated to the give the impression of being Complainant’s social media or mobile website, as .CO is used by many established brands for social and mobile media, including Twitter (t.co), Google Inc. (g.co), Amazon.com (a.co), American Express (amex.co) and Starbucks (sbux.co).
3) norcoldboards.com, norcoldcoolingunits.com, norcoldparts.com, norcoldparts.net, norcoldpowerboards.com, norcoldrepairparts.com, norcoldsale.com, norcoldshop.com, norcoldstore.com, norcoldtechs.com, norcoldthermistors.com
In these domains, Respondent has again misappropriated the entirety of Complainant’s NORCOLD Mark and merely added generic terms that describe the products and services offered by Complainant on its website. Specifically, Complainant’s offerings under its NORCOLD Mark and THETFORD Marks include replacement parts, technical repair services, and sales services. Respondent has simply added these generic terms to Complainant’s Marks: “boards,” “cooling units,” “parts,” “powerboards,” “repair parts,” “sale,” “shop,” “store,” “thermistors,” “techs,” “my,” and “fix my.”
It is well established that combining a mark with terms that describe Complainant’s business is an inadequate change to prevent confusing similarity. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the [d]omain [n]ames, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”); see also Gillette Co. v. RFK Assocs., FA 492867 (Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). Accordingly, these domains are confusingly similar to Complainant’s NORCOLD Mark.
4) thetford-parts.com, thetfordparts.co
In the case of thetford-parts.com and thetfordparts.co, Respondent has misappropriated the entirety of Complainant’s THETFORD Marks and merely added the generic term “parts,” which is not a distinguishing feature. Accordingly, these domains are confusingly similar to Complainant’s THETFORD Marks.
[b.] Respondent Has No Rights or Legitimate Interests in the Offending Domain Names. UDRP Rule 3(b)(ix)(2); UDRP Policy ¶4(a)(ii).
[i.] No bona fide use.
To Complainant’s knowledge, Respondent is making no legitimate use of the Offending Domain Names. Respondent is using the Offending Domain Names, which are confusingly similar to Complainant’s NORCOLD Mark and THETFORD Marks, to: (1) hold itself out as Norcold, as in the Impersonating Offending Domain Names; (2) hold itself out as Norcold or Thetford, or an authorized dealer or service center, as in all other Offending Domain Names; (3) route potential customers to Respondent’s own websites at http://norcoldparts.com/ and http://thetford-parts.com/, and/or (4) deprive Complainant of the opportunity to register its NORCOLD Mark and THETFORD Marks as domain names.
Initially, although nineteen (19) domains are at issue, due to URL forwarding, the Offending Domain Names forward to only two (2) websites.
Respondent is a former employee of Complaint, and is an unauthorized servicer and reseller of NORCOLD and THETFORD products. According to the UDRP decision in Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001), a reseller has a limited right to use the trademarks of others so long as all of certain criteria are met. In the current situation, Respondent fails to meet all of these criteria. Thus, Respondent’s use of the NORCOLD Mark and THETFORD Marks is not bona fide.
Under the Oki Data decision, to be “bona fide,” the offering must meet several requirements including, at a minimum, the following:
· Respondent must actually be offering the goods or services at issue; AND
· Respondent must use the site to sell only the trademarked goods; AND
· The site must accurately disclose the registrant's relationship with the trademark owner; it may not, f or example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents; AND
· The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
Id. (internal citations omitted) (emphasis added). Respondent’s use fails not just one but two of these minimum requirements.
1) Respondent did not sell only the trademark goods.
Respondent did not use the sites to sell only the trademark goods identified in the Offending Domain Names, as required by Oki Data. Rather, Respondent used the websites associated with the Offending Domain Names to advertise and offer for sale the goods of Complainant’s competitors.
Specifically, on the historical www.thetford-parts.com website, “Dometic Parts” appears alongside “Norcold Parts.” Dometic is a competitor of Complainant and is in no way related to Complainant. In this manner, consumers seeking THETFORD and NORCOLD brand products were misled into thinking they have reached an authorized THETFORD or NORCOLD website. Instead, they were directed without their knowledge or input to the products of Complainant’s competitors using Complainant’s own Marks.
Links to the goods of others still appear on the current Offending Websites. The “Affiliate Stores” tab at the top right of the Offending Websites lists third party brands, and directs Internet users to Respondent’s websites for other brands. On http://norcoldparts.com/, links at the bottom left direct to still more third party brands. The goods advertised for Valterra, for example, at http://norcoldparts.com/brands/Valterra.html, are directly competitive with goods offered by Complainant under Complainant’s Marks.
Respondent’s use of the Offending Domain Names is not a bona fide offering of goods or services because Respondent sold the goods of others; it did not sell only the trademark goods. Thus, Respondent did/does not sell only the trademarked goods on the associated websites and fails the second prong of the Oki Data test.
2) Respondent’s sites do not accurately disclose its relationship with the trademark owner.
Using the websites associated with the Offending Domain Names, Respondent held itself out to be Thetford, Norcold, or an authorized dealer or technician of Complainant, when of course it is not. Respondent is not an authorized distributor, reseller or dealer of NORCOLD or THETFORD products, nor is Respondent authorized or certified by Complainant as a technician. The Offending Websites did not accurately, clearly, and conspicuously disclose Respondent’s status as being wholly unrelated to Complainant. In contrast, the websites falsely held Respondent out to be Complainant or give the false impression that Respondent is an authorized or certified reseller or technician of Complainant.
First, and as noted above, the Impersonating Domain Names and Offending Domain Names all direct to Respondent’s websites http://norcoldparts.com/ and http://thetford-parts.com/ - both of which are confusingly similar to both Complainant’s Marks and Complainant’s official websites at www.norcold.com and www.thetford.com. On the official NORCOLD and THETFORD websites, customers can view NORCOLD and THETFORD products and catalogs, replacement parts, and locate authorized dealers and service centers. When customers are mistakenly routed to Respondent’s Offending Websites, depending on the Impersonating Domain Name or Offending Domain Name, customers are likely to conclude that they have reached an official or authorized NORCOLD or THETFORD website, or Complainant itself. Chanel, D2000-1809. In this manner, Respondent is holding itself out as Complainant or an authorized dealer or service center.
Second, at the top of the Offending Websites, the following owner information appeared:
www.norcoldparts.com: www.thetford-parts.com:
Norcold Thetford Parts (note use of registered
Parts Store design mark)
We, here at NorcoldParts.com… Lowest possible prices available on brand new Thetford parts sold by knowledgeable, certified RV technicians!
At the bottom of http://thetford-parts.com/, copyright was claimed in the name of “Thetford Parts.”
Thus, Respondent is holding itself out to be “NorcoldParts.com,” “Thetford Parts,” and a certified Thetford technician. Moreover, Respondent used the registered design or logo form of Complainant’s THETFORD Mark. In the current version of the Offending Websites, Respondent has created its own logo versions of Complainant’s Marks.
Third, directly below the misleading owner names, Respondent displays copyright protected images of Complainant’s products, with Respondent’s own watermark superimposed over Complainant’s images. By using copyrighted materials from Complainant, Respondent gives the impression that it is Complainant or an authorized dealer or technician who would have permission to use these images.
Fourth, Respondent deliberately hides its actual name and contact information on the Offending Websites, again giving the false impression that it is Complainant. On each website, Complainant’s Marks – NORCOLD and THETFORD – are the largest and most predominant. Respondent’s name Seek Adventures LLC appears in small print (notably smaller than Complainant’s Marks). Nor does the “Contact Us” tab clearly name Respondent or provide any indication that Respondent is not Complainant; on both websites, only hours of operations and email addresses are provided (no names): customerservice@thetford-parts.com and CustomerService@NorcoldParts.com.
Lastly, Respondent’s Offending Websites stated that Respondent “are certified Norcold Technicians,” when this was not true. Respondent also implied that it was an authorized distributor of THETFORD products in Google.com search result titles and descriptions (or “snippets”): “Norcold parts and products sold by knowledgeable Norcold Technicians!” This statement appeared in the metadata for the website at www.norcoldparts.com. Respondent was not and is not an authorized Thetford or Norcold distributor or technician, as he well knew.
After being contacted by Complainant, Respondent updated its Offending Websites to add its company name – Seek Adventure LLC – in small type relative to the size of Complainant’s Marks at the top of the websites. On one page of the norcoldparts.com website, http://norcoldparts.com/norcold-technical-service-repair-fix-my-refrigerator/, Respondent modified its prior claim of being a “Norcold Technician” to state “Seek Adventure LLC is not a certified Norcold distributor or dealership. Our technical support services are supplied by a retired Norcold technician who no longer has any affiliation with the company.” It is true that “Seek Adventure LLC is not a certified Norcold distributor or dealership,” however, Respondent has mischaracterized the termination of his relationship with Complainant. This continued, deliberate mischaracterization of his relationship with Complainant is evident even when Respondent attempts to curb its bad faith actions.
This weak disclaimer appears buried in text on one page only of the Norcoldparts.com website and does nothing to dispel the confusion resulting from the Offending Domain Names themselves, misleading trade name banner, and prominent use of Complainant’s Marks in design form, especially after Respondent has already identified itself as “Norcold Parts” and “Thetford Parts.” The disclaimer is hidden. Importantly, all of the factors that Panels look to when assessing the effectiveness of a disclaimer are notably missing here. In IVECO S.p.A. v. Zeppelin Trading Co. Ltd., D2008-1725 (WIPO February 3, 2009), the Panel denied Complainant IVECO’s request to transfer the disputed domain name Cheapivecoparts.com based in part on Respondent’s clear disclosure of its relationship to IVECO as an independent dealer. According to the IVECO Panel,
[the] website clearly states that the Respondent is an independent dealer … [and this] disclosure is not buried in some obscure part of the website. It appears very early and, as already noted, clearly on the website. The website states ‘We are an independent Iveco parts and spares specialist based in London dealing in genuine and new parts only.’ The use of the description of the business as ‘independent’ is both accurate and clear.
None of those facts are present in the current case.
Accordingly, when viewing the Offending Domain Names and the front pages of the associated Offending Websites as a whole, it is clear that Respondent is falsely representing itself as Complainant, or an authorized dealer, or certified technician. Respondent has variously and falsely held and holds itself out to be “NorcoldParts.com,” “Thetford-Parts.com,” “Thetford Parts” and a certified “Norcold Technician.” Respondent compounds this confusion by displaying prominently the design forms of the THETFORD Marks, and displaying prominently copyright protected images owned by Complainant. Crucially, Respondent then “buried” its ineffective disclaimer “in some obscure part of the website.” Id. Finally, in substance, the disclaimer language itself is neither “accurate” nor “clear” enough to dispel this confusion. Thus, the “buried” disclaimer is ineffective under IVECO.
Accordingly, Respondent fails the third prong of the Oki Data test.
3) Respondent has tried to corner the market by registering multiple variations of the domain names.
Finally, a reseller must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name. Oki Data, D2001-0903. By registering nineteen (19) domains appropriating the entirety of Complainant’s Marks, Respondent is trying “to corner the market” and deprive Complainant of the ability to use and register its own marks in domain names. Respondent registered and is using the Offending Domain Names only to trade on the goodwill and reputation associated with Complainant’s Marks and not in connection with any bona fide offering of goods or services. Thus, Respondent fails the fourth prong of the Oki Data test.
4) Other reseller cases support a finding of no bona fide use.
While Oki Data has been the leading reseller case for several years, many recent Panels have considered the issue and found that a reseller has no bona fide use of another’s trademark. Similarly, Respondent has no rights or legitimate interest in the Offending Domain Names.
In Kohler Co. v. Milaca Lawn & Garden, LLC, FA 0972339, (Forum June 7, 2007), the Panel transferred two (2) domain names incorporating the complainant’s KOHLER mark from the respondent, an authorized reseller. In that case, the respondent sold Complainant Kohler’s products as well as those of Kohler’s competitors. The Panel found that the respondent lacked any legitimate rights or interest in the domain names because it used the KOHLER mark without authorization and its websites sold the products of Kohler’s competitors alongside the Kohler products. This decision was despite the fact that the respondent was an authorized dealer of Kohler products. The Panel relied on these same facts – that the respondent used the website to sell the goods of others as well as Kohler’s – to also find that the respondent registered and used the domain names in bad faith. Consequently, the domain names were transferred.
The facts presented in the instant case are highly analogous to those in the Kohler decision: Respondent is not authorized to use Complainant’s Marks, it uses the Offending Domain Names to route users to its own websites, and it sold Complainant’s products alongside those of Complainant’s competitors. Notably, the instant case is even more egregious than Kohler because Respondent is not even an authorized dealer, as was the case in Kohler. Therefore, the Offending Domain Names should be transferred to Complainant.
[ii] Respondent not known by the domain names.
Upon information and belief, Respondent has never traded under and is not known by the names in the Offending Domain Names:
norcoldinc.com
norcold.co
norcold.guru
norcold.org
norcoldboards.com
norcoldcoolingunits.com
norcoldparts.com
norcoldparts.net
norcoldpowerboards.com
norcoldrepairparts.com
norcoldsale.com
norcoldshop.com
norcoldstore.com
norcoldtechs.com
norcoldthermistors.com
mynorcold.com
fixmynorcold.com
thetford-parts.com
thetfordparts.co
Respondent registered the Offending Domain Names under the name Brian Currier, although the Registrant Organization is listed as Norcold Parts (for norcoldparts.com), Pick A Slip LLC, or Seek Adventure LLC. Whois printouts and a chart showing the Whois details for each of the Offending Domain Names, as well as the URL redirects for each is attached. Respondent Brian Currier is not equivalent to any of the Offending Domains, and only one even lists “norcoldparts.com” as the Registrant Organization; most list the Registrant Organization as Pick A Slip LLC or Seek Adventure LLC. Accordingly, Registrant is not known by the names in the Offending Domain Names.
Moreover, Respondent did not use its alleged names until 58 years after Complainant first used at least some of Complainants Marks and 21 years after Complainant first registered at least some of Complainant’s Marks.
While Respondent is a former employee of Complainant, Respondent has no connection or affiliation with Complainant, nor has Complainant granted Respondent a license or consent, express or implied, to use Complainant’s Marks in domain names or in any other matter. Consequently, Complainant is not aware of any legitimate rights or interests of Respondent in the Offending Domain Names.
Only Complainant can authorize the use of Complainant’s Marks, and it has not done so with respect to Respondent’s use. See Kohler Co., FA 0972339 (finding that an authorized dealer of Complainant’s products had no rights and interest in the domain names, and such use does not represent a bona fide offering of goods) citing Jaccard Corp. v. GDC, FA 152463 (Forum June 19, 2003) (as there was “no evidence of an agreement between Complainant and Respondent whereby Respondent has either or both of a privilege to have registered, and a privilege to use, the mark that is the subject of one or more of Complainant’s trademarks as a domain name” the respondent had no rights or legitimate interests in the disputed domain name); see also Nike, Inc. v. Dias, FA 135016 (Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors).
Even if Respondent were an authorized distributor, which it is not, Respondent lacks rights and legitimate interests in the Offending Domain Names under Policy ¶4(a)(ii). See McCarthy on Trademarks and Unfair Competition, § 18:52 (4th Ed. rev. 2011) (“A licensee’s use [of a mark] inures to the benefit of the licensor-owner of the mark and the licensee acquires no ownership rights in the mark itself.”); see also Allen-Edmonds Shoe Corp. v. Takin’ Care of Bus., D2002-0799 (WIPO Oct. 10, 2002) (holding that, “without a specific agreement between the parties, the reseller does not have the right use the licensor’s trademark as a domain name”).
In cases in which the respondent has claimed that it is commonly known by a particular name, it has been held that the respondent “must provide adequate extrinsic proof that a corresponding group of consumers, e.g. Internet users, who are likely to access that party’s web site, associates that domain name with that party rather than with the trademark owner….” See Peter Frampton s Frampton Enters., Inc., WIPO D2002-0141 (April 17, 2002) and cases cited therein. Respondent cannot prove that customers associate the Offending Domain Names with Respondent rather than with Complainant. Respondent is not known by the Offending Domain Names.
[iii] No legitimate or fair use of the domain names.
The granting of Principal Register registrations by the U.S. Patent and Trademark Office to Complainant for Complainant’s Marks the NORCOLD Mark and THETFORD Marks is prima facie evidence of the validity of Complainant’s Marks, of Complainant’s ownership of Complainant’s Marks, and of Complainant’s exclusive right to use Complainant’s Marks in commerce on or in connection with the goods and/or services specified in the registration certificates. Respondent is not affiliated with or authorized by Complainant.
[c.] Respondent Registered and Used the Domain Names in Bad Faith. UDRP Rule 3(b)(ix)(3); UDRP Policy ¶4(a)(iii).
Upon information and belief, Respondent registered and used the Offending Domain Names in order to deprive Complainant of access to domain names using Complainant’s Marks, and to hold itself out as Complainant itself or as an authorized or certified dealer or technician of Complaint’s products. Respondent’s token and ineffective efforts to ameliorate confusion after being contacted by Complainant do not cure its past bad faith or obviate the current continuing bad faith. See Branson Ultrasonic Corp. v. Marc Hofius, FA 1356200 (Forum, December 13, 2010) (finding that as “Respondent’s first use of the domain was to employ it to resolve to a website offering for sale goods in competition with the business of Complainant. … it is evident that Respondent has sought commercial gain from these uses of the domain, neither of which evidences a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use of the domain pursuant to Policy ¶4(c)(iii).” (emphasis added)) and cases cited therein.
Respondent registered the Offending Domain Names beginning on February 13, 2012 (as to norcoldparts.com), with constructive and actual knowledge of Complainant’s rights in Complainant’s Marks. Respondent had constructive knowledge based upon the registrations for Complainant’s Marks in the United States. Respondent had actual knowledge of Complainant’s rights based on his former employment with Complainant, his use of Complainant’s Marks, and the detailed product information (including Complainant’s copyright protected work) provided by Respondent on the Offending Websites.
Respondent’s Offending Websites create the false and misleading suggestion that Respondent is associated with, authorized by, or even is Complainant. This is not the case. As stated above, Respondent holds itself out to be Complainant or an authorized dealer – as Norcold Parts, NorcoldParts.com, and Thetford Parts. A small byline added after Complainant’s request on only some of the websites – “by Seek Adventure LLC” – does not obviate the intentional confusion caused by use of the Offending Domain Names. Although the Offending Domain Names contain Complainant’s Marks and Complainant’s company name and not the marks of any other company, Respondent nevertheless offered to sell the products of Complainant’s competitors under Complainant’s own marks. Moreover, after Complainant contacted Respondent and the most egregious tabs were removed, numerous links on the websites to “Affiliate Stores” or in embedded social media posts, continue to route customers to websites where competitive products are sold. This is evidence of bad faith. Branson Ultrasonic Corp., FA 1356200.
Respondent’s use of Complainant’s Marks to direct consumers to Respondent’s Offending Websites where it falsely holds itself out as an authorized or certified dealer or service center to appear to sell Complainant’s brand products alongside competitive products disrupts Complainant’s business and the business of its authorized and certified dealers and service centers by intentionally diverting consumers to Respondent’s Offending Websites, rather than Complainant’s legitimate websites for NORCOLD and THETFORD brand products and certified service centers.
At best, Respondent is attempting to create a false association with Complainant and its authorized and certified dealers and service centers, and, at worst, is attempting to pass itself off as Complainant or is using its Offending Domain Names to prevent Complainant from using its own marks. This intent to disrupt Complainant’s business is evidence of bad faith under Policy ¶4(b)(iii). See Tuxedos By Rose v. Hector Nunez, FA 95248 (Forum August 17, 2000) (“Respondent is not commonly known by Complainant’s mark … Respondent registered the domain names primarily for the purpose of disrupting the business of a competitor. … Respondent registered and used the domain names in bad faith.”).
Thus, Respondent has acted in bad faith.
B. Respondent
The following section reproduces verbatim the contentions of the Respondent, taken from its Response:
This Response specifically responds to the statements and allegations contained in the Complaint and includes any and all bases for the Respondent to retain registration and use of the disputed domain name. Rule 5(b)(i).
[a.] Introduction
In full reserve of its rights and in good faith, Respondent agrees to the transfer of the <norcold.org>, <norcold.co>, <norcoldinc.com>, and <norcold.guru> domain names to Complainant. Respondent hereby responds to Complainant’s Complaint with respect to all other domain names listed in the Complaint.
Respondent Brian Currier is a resident of the State of Michigan and the sole owner of Respondents Norcold Parts, Pick a Slip, LLC, and Seek Adventure, LLC. Complainant Norcold, Inc. (“Norcold”) is a manufacturer of cooling products for recreational vehicles, including RV refrigerators. Complainant Thetford Corporation (“Thetford”) is a manufacturer of recreational vehicle toilets and associated accessories. For the purposes of Respondents’ response, all Respondents will be referred to in the singular form, “Respondent,” and all Complainants will be referred to in the singular form, “Complainant.”
Prior to April 2011, Respondent Currier was employed by Complainant Norcold, Inc. in the position of head technician. As a component of his job duties, Respondent corresponded with dealers and service centers to help them troubleshoot and repair Norcold refrigerators. Respondent was also responsible for training new hires in how to repair Norcold’s products. On approximately April 30, 2011, Norcold terminated Respondent Currier’s employment for reasons unrelated to this proceeding.
Subsequent to Respondent’s termination, Respondent recognized the market for repair parts for Norcold and Thetford products and decided to go into business selling those parts. In support of this business, Respondent registered several domain names:
Domain Date Created
norcoldparts.com 2/13/12
thetfordparts.co 12/31/12
thetford-parts.com 12/31/12
norcoldboards.com 6/2/13
norcoldthermistors.com 6/2/13
norcoldcoolingunits.com 8/18/15
norcoldparts.net 8/18/15
norcoldpowerboards.com 8/18/15
norcoldrepairparts.com 8/18/15
norcoldsale.com 8/18/15
norcoldshop.com 8/18/15
norcoldstore.com 8/18/15
norcoldtechs.com 8/18/15
mynorcold.com 8/18/15
fixmynorcold.com 8/18/15
The first of these domain names, <norcoldparts.com>, was registered on February 13, 2012, four years and one month prior to the initiation of Complainant’s Complaint. See norcoldparts.com WHOIS. On December 31, 2012, Respondent registered the <thetford- parts.com> and <thetforparts.co> domain names for the same purpose. On June 2, 2013, Respondent registered <norcoldboards.com> and <norcoldthermistors.com>. And on August 18, 2015, Respondent registered <norcoldcoolingunits.com>, <norcoldparts.net>, <norcoldpowerboards.com>, <norcoldrepairparts.com>, <norcoldsale.com>, <norcoldshop.com>, <norcoldstore.com>, <norcoldtechs.com>, <mynorcold.com>, and <fixmynorcold.com> (collectively “Domain Names”).
Since the beginning of Respondent’s registration of the <norcoldparts.com> domain name on February 13, 2012, Respondent has offered a website, titled Norcold Parts Store, at that domain name. All domain names containing the term “Norcold” direct users to this website. Since as early as February 7, 2013, visitors who arrive at this website are presented with a prominent header that makes clear that Respondent’s website is a “Norcold Parts Store” that carries “Anything & Everything Norcold.” Complainant contends that Respondent has falsely held itself out as a certified Norcold technician without providing any basis for its criticism, which is a curious criticism in light of Respondent’s prior employment as a head technician with Complainant. Regardless, by January of 2014, this language was removed from Respondent’s website.
While <norcoldparts.com>, <norcoldparts.net>, <norcoldsale.com>, <norcoldshop.com>, <norcoldstore.com>, <norcoldtechs.com>, <mynorcold.com>, and <fixmynorcold.com> direct users to the homepage of the website, <norcoldboards.com>, <norcoldthermistors.com>, <norcoldcoolingunits.com>, and <norcoldpowerboards.com> direct users to subcategories of the website, specifically, those subcategories relating to power boards, thermistors, cooling units, and power boards.
Similar to Respondent’s use of the Norcold-related domain names, Respondent has used the <thetford-parts.com> and <thetfordparts.co> domain names since as early as December 2012 in the same manner. Respondent has continuously and prominently displayed the terms “Thetford Parts” in the header of his website since that time. In January of 2016, the Thetford-related website was modified to prominently display “Thetford Toilets and Parts by Seek Adventure, LLC” in its header.
On October 6, 2015, Respondent filed an application to become an official dealer with Complainant, which, if approved, would have allowed Respondent to perform warranty work for Complainant’s products directly through Complainant. In his application, Respondent selected that he serviced RV and marine vehicles, that he stocked Thetford and Norcold parts and accessories, that he offered RV mobile service, and that he services RV refrigeration systems. Further, Respondent selected that he has six years of technical experience and that he, in 2014, attended the Recreation Vehicle Industry Association’s 8-hour class to become certified by that organization.
On October 12, 2015, presumably in response to Respondent’s application, Respondent received a demand letter from Complainant’s counsel, which asserted that Respondent was liable for both trademark and copyright infringement. In response, and on November 8, 2015, Respondent’s counsel responded to Complainant’s demand letter. In his response, Respondent made clear that his actions were not in bad faith and that the terms “Thetford” and “Norcold” have been used in a nominative manner to describe the products offered at Respondent’s website. Further, at this time, Respondent offered to transfer the <norcold.org>, <norcold.co>, <norcoldinc.com>, and <norcold.guru> domain names to Complainant in good faith and prior to the initiation of this proceeding. Complainant did not accept this offer and, instead, filed this proceeding.
[b] Respondent has rights and legitimate interests in and to the Domain Names. Rule 3(b)(ix)(2); UDRP ¶4(a)(ii).
Respondent has rights and legitimate interests in and to the Domain Names. Since as early as February 2012, Respondent has made use of the Domain Names in connection with a bona fide offering of goods or services, specifically, in association with the sale and offering for sale of both Norcold and Thetford repair and replacement parts. Such a use has been found to be a bona fide offering of goods or services under ¶4(c) on numerous occasions.
Most panels examining this issue apply the factors set forth in Oki Data Americas, Inc. v. ASD, Inc. See Oki Data Americas, Inc. v. ASD, Case No. D2001-0903 (WIPO Nov. 6, 2001). Though stare decisis or precedent does not bind panels, many have found the Oki Data factors instructive.
Oki Data, in similar fashion to this case, concerned the <okidataparts.com> domain name. The respondent in that case sold and repaired Oki Data products and parts. The respondent chose to service and sell Oki Data products because those products were prominent in the world market for printers. And the respondent did not use the Oki Data name to promote or sell products manufactured by the complainant. In examining whether the respondent had made a bona fide offering of goods or services, the Oki Data panel laid out four factors that must, at a minimum, be met to establish that a use is bona fide:
1. Respondent must actually be offering the goods or services at issue;
2. Respondent must use the site to sell only the trademark goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods;
3. The site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site; and
4. The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
See Oki Data Americas, Inc. v. ASD, Inc. See Oki Data Americas, Inc. v. ASD, Case No. D2001- 0903 (WIPO Nov. 6, 2001). The panel identified the following facts as supporting the conclusion that the respondent had made a bona fide offering: (1) the respondent was an authorized seller and repair center; (2) the respondent was using the okidataparts.com domain name to promote only Oki Data goods; (3) respondent prominently disclosed that it was merely a repair center; (4) the respondent had not registered numerous Oki Data-related domain names; and (5) the respondent has not improperly communicated with Oki Data customers.
Subsequent cases have expanded on this doctrine. In ITT Manufacturing Enterprises, Inc. v. Douglas Nicoll, the panel found that the Oki Data rationale should apply to unauthorized resellers equally as it applies to authorized resellers. See ITT Manufacturing Enterprises, Inc. v. Douglas Nicoll, Case No. D2008-0936 (WIPO Nov. 7, 2008) (“The Panel concludes, however, that the issues of legitimate reseller interests in accurately describing a lawful business, on the one hand, and of potential abuses of trademark, on the other, are similar whether or not there is a contractual relationship between the parties.”). The ITT Manufacturing panel also determined that, even where the domain names were used to sell more than the trademark goods, if those sales were minimal or not prominently displayed, no “bait and switch” tactics exist. See ITT Manufacturing Enterprises, Inc. v. Douglas Nicoll, Case No. D2008-0936 (WIPO Nov. 7, 2008) (“The link is not prominent, however; it is listed on a ‘Link Directory’ page within the Respondents’ website. Moreover, the Complainants have not demonstrated that Detroit Switches are products that compete with the ITT Barton devices, or, indeed, with any products now sold by the Complainants. Thus, the Complainants have not established the risk of ‘bait and switch’ tactics.”). The NASCAR panel also confirmed that the sale of other, related products, is not a “bait and switch.” See National Association for Stock Car Auto Racing, Inc. v. Racing Connection, Case No. D2007-1524 (WIPO Jan. 28, 2008) (“While these packages include some services, such as hotel accommodations (and perhaps even race tickets), that are not offered directly by the Complainant itself, they all relate to attendance at NASCAR racing events and not, for example, other travel opportunities. The Respondent’s business is NASCAR tours, just as the Domain Name implies; this is not merely a ‘bait and switch’ use of the Domain Name.”).
Subsequent cases have also found that one need not display a prominent disclaimer to ensure that consumers will be confused into believing that the reseller is not the manufacturer. In Le Creuset SA v. Vineyards Direct Limited, the panel stated,
With regard to the Respondent’s website and trading style, the Panel does not find the Complainant’s case to be persuasive. It is contended that the original appearance of the Respondent’s website was intended to resemble the Complainant’s official sites, but on examination of the materials exhibited by the Complainant the Panel does not consider this to be established. In addition, the Panel has regard to the fact that the Respondent took steps to change the appearance of its site after receiving a letter of complaint from the Complainant’s solicitors: the Complainant makes not specific comment upon the appearance and effect of the Respondent’s website following these changes.
Le Creuset SA v. Vineyards Direct Limited, Case No. D2004-0551 (WIPO Sept. 6, 2004). Later, the And, where the respondent used the logo of the complainant to market the complainant’s goods, the Le Creuset panel declined to find no rights and legitimate interests. Le Creuset SA v. Vineyards Direct Limited, Case No. D2004-0551 (WIPO Sept. 6, 2004) (Objection is also taken to the use of a ‘bulls-eye’ logo which resembled the Complainant’s own logo (which is also a registered trademark). However, the Panel does not consider this to be a point of particular significance, since the underlying question is whether or not the Respondent is entitled to use the Complainant’s trademark to market the Complainant’s goods. If so, it is also entitled to use its logo. In any event, the offending logo also appears to have been removed by the Respondent following the Complainant’s letter of complaint.”). Finally, registering multiple descriptive domain names does not constitute an attempt to “try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.” Instead, panels have found that, where a trademark owner “operates a website associated with the domain name most closely resembling its marks,” the respondent has not attempted to corner the market in all domain names. See National Association for Stock Car Auto Racing, Inc. v. Racing Connection, Case No. D2007-1524 (WIPO Jan. 28, 2008) (“The Complainant itself operates a website associated with the domain name most clearly resembling its marks, ‘www.nascar.com.’ Therefore, the Panel finds that the Respondent in this proceeding has satisfied the Oki Data standard.”); see also Volvo Trademark Holding AB v. Auto Shivuk, Case No. D2005-0447 (WIPO June 8, 2005) (“There are plenty of other variations [sic] the trademark for others and Complainant is not deprived in the use of its own trademark.”).
In this case, Respondent is actually offering the goods at issue. With respect to the Norcold-related domain names, Respondent is providing Norcold parts, including Norcold power boards, optical boards, board kits, thermistors, ice makers, ice maker parts, AC heaters, doors, door panel inserts, cooling units, and outdoor vents. With respect to the Thetford-related domain name, Respondent is providing Thetford RV toilet parts, including water valves, keypads, control panels, seats, and repair kids.
Complainant asserts that Respondent’s actions do not qualify for the reseller defense because Respondent previously sold Dometic parts and Valterra products on his websites. But Dometic parts were never sold on any Norcold or Thetford-related website. In fact, the only reference to Dometic parts is within the “Affiliate Store” link located at the top of Respondent’s website. That link refers to another of Respondent’s websites, which sells Dometic parts, which is not prohibited under the Oki Data test. See Porsche AG v. Del Fabbro Laurent, Case No. D2004-0481 (WIPO Aug. 20, 2004) (“The links to similar websites used for Jaguar cars, used Ferrari cars and used racecars lead to websites that do indeed offer such expected products (i.e. Ferrari, Jaguar and other race cars respectively) under different domain names. Clearly designated links to websites, under which other brands or products are offered, cannot be considered as the offering of other brands or products under the Domain Name, provided they take up only a minor part of the site and the overall impression of that site remains that of a site offering corresponding goods.”). Further, though Respondent at one time sold Valterra toilet paper as an accessory and under a category named “camping essentials,” Respondent never actually sold any Valterra toilet paper and removed the product from the website. Respondent’s sale of toilet paper in a “camping essentials” section of the website cannot reasonably be described as a “bait and switch” tactic. See National Association for Stock Car Auto Racing, Inc. v. Racing Connection, Case No. D2007-1524 (WIPO Jan. 28, 2008).
Respondent’s website also accurately discloses his relationship with the trademark owner. Respondent in no way suggests that it is Complainant. On both the Norcold and Thetford-related websites, Respondent describes himself as an independent… dealer based in Michigan dealing in genuine and new parts only.” The Norcold-related website prominently displays that Respondent is “Seek Adventure, LLC… an independent Norcold parts retailer dealing in genuine and new parts only.” And the Thetford-related website prominently displays that it is “proudly brought to you by Seek Adventure LLC.”
Complainant asserts that Respondent’s use is in bad faith because he uses Thetford’s “registered design logo” and has used “copyright protected images of Complainant’s products.” Though Respondent’s Thetford-related website previously used Thetford imagery in association with his descriptive use of the term “Thetford parts,” Respondent removed that imagery upon notice from Complainant that it believed that such a use was infringing. Currently, Respondent’s Thetford-related website displays a wholly unique logo. Current Websites. See Le Creuset SA v. Vineyards Direct Limited, Case No. D2004- 0551 (WIPO Sept. 6, 2004) (finding rights and legitimate interests after complained-of logo was removed by respondent). And Complainant’s assertion that Respondent has used its copyright protected images is simply false. Respondent is the author of all of his product photography and has not taken product photographs from Complainant.
Finally, Respondent has not attempted to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name. Complainant reflects its trademarks directly in its principal domain names <norcold.com> and <theftford.com>. Complainant also owns numerous domain names reflecting its marks, including, but not limited to, <thethetfordcorporation.com>, <norcoldrecall.com>, <norcold-recall.com>, <thetfordtitan.com>, <thetfordrvhose.com>, <thetfordsewerhose.com>, <thetforddealerdirect.com>, <thetfordresidential.com>, and <norcold.info>. Complainant’s registration of numerous domain names containing its trademarks, and its ability to register more, evidence that Respondent has not undertaken a plan to prevent Complainant from reflecting its trademark in a domain name.
Based on Respondent’s actions, which have been in good faith and evidence an intent to make a nominative fair use of Complainant’s marks, it is clear that Respondent has rights and legitimate interests in and to the Domain Names. Respondent has made use of the Domain Names in connection with a bona fide offering of goods and services and, therefore, Complainant’s Complaint should be denied.
[c.] Registrant has not registered and used the Domain Names in bad faith. Rule 3(b)(ix)(3); UDRP ¶4(a)(iii).
Since Registrant has made a nominative fair use of Complainant’s marks in its domain name in association with a bona fide offering of goods and services, Registrant has not registered and used the Domain Names in bad faith. Registrant has not registered the Domain Names primarily for the purpose of selling the Domain Names to Complainant. As stated above, Registrant has not registered the Domain Names in order to prevent the Complainant from reflecting its marks in a corresponding domain name—in fact, Complainant has reflected its marks in corresponding domain names. Respondent is not a competitor of Complainant and has not registered the Domain Names primarily for the purpose of disrupting Complainant’s business, and Respondent has undertaken substantial efforts, as mentioned above, to ensure that it did not attract Internet users to its websites by creating a likelihood of confusion with the Complainant’s marks. Respondent’s stated reasons for registering his domain names are credible and consistent with his established business of reselling Norcold and Thetford products. See ITT Manufacturing Enterprises, Inc. v. Douglas Nicoll, Case No. D2008-0936 (WIPO Nov. 7, 2008) (“Rather, their stated reasons for registering additional domain names referring to ‘ITT Barton’ are credible and consistent with their established business of reselling surplus ITT Barton devices.”). Consequently, Registrant has not registered and used the Domain Names in bad faith and Complainant’s Complaint must be denied.
C. Additional Submissions
Complainant submitted the following additional submission (quoted verbatim below):
Respondent’s Websites Do Not “accurately disclose the respondent’s relationship with the trademark owner” Under Oki Data
Respondent has and continues to impermissibly hold itself out as Complainant, or as authorized by or affiliated with Complainant, to the detriment of Complainant’s business, as evidenced by continued, actual customer confusion. Every contact with Respondent – from demand letters and offers, to the Complaint in the instant case – engenders some new-but-incremental change to Respondent’s Offending Websites, and continued telephone calls from disgruntled customers. The Offending Domain Names were registered and used in bad faith, and to date, Respondent’s meager efforts to ameliorate this confusion have not been effective and the harm to Complainant continues. Respondent has no incentive to minimize this deliberate confusion with Complainant because he profits from it and/or intends to harm Complainant’s business, as explained herein.
Respondent’s History with Complainant – Pattern of Bad Faith Behavior
Like the content of the Offending Websites, Respondent’s story is also a moving target. Complainant indicated briefly in its Complaint that Respondent is a former employee – only to establish that Respondent has actual knowledge of Complainant’s prior trademark rights. In the Response, however, Respondent has attested to facts that are untrue. First, as to Complainant’s allegation of copyright infringement and Respondent’s attestation to the contrary, the Panel’s attention is respectfully directed to several photographs and layout that were copied from Complaint’s website onto Respondent’s; no other explanation is plausible. This image remains on Respondent’s Offending Website. Second, Respondent indicates that he was employed with Complainant until April 30, 2011; his employment with Complainant ended eight months earlier, on July 30, 2010. In fact, several months after Respondent’s termination, on October 25, 2010, Respondent used the email address “Thetford Blows” <thetfordsucks@gmail.com>, to send a mass email to 46 of Complainant’s employees, titled “The Mad Rantings of a Persecuted Ex-Employee.” The thrust of this message can be surmised from the subject line, and it includes personal details regarding Respondent’s termination (this is evidence that the sender was Respondent, but this is also why Complainant will not include it in its entirety). About a year after the “Mad Rantings of a Persecuted Ex-Employee” incident, Respondent started buying domain names, yet he attests that he “did not register the domain names primarily for the purpose of disrupting the Complainant’s business.”
Complainant became aware of Respondent’s activities several years later, when he began disrupting Complainant’s business during the summer of 2015, leading up to the filing of this UDRP action. The RV market is busiest during camping season, which starts around the Memorial Day holiday and extends to around the Labor Day holiday (“Peak Season”). That summer, Complainant’s customer service representatives began receiving phone calls from angry customers. Around September 30, 2015, one customer was angry enough that a call was escalated to a customer service manager, who reported a string of incidents to management for Complainant. Customers seeking Complainant’s goods had instead found Respondent’s Offending Websites, believed the Offending Websites were Complainant’s, had purchased goods from Respondent via the Offending Websites while believing the seller to be Complainant, had initially complained to Respondent while still believing him to be Complainant, then found Complainant’s actual call center to seek further assistance. A customer service manager for Complainant explained:
I want to make you aware of a situation regarding a website called norcoldparts.com[.] Consumers go to this website to purchase parts for their Thetford or Norcold units unaware that this website is not Thetford or Norcold. Consumers are very unhappy with the customer service and the return policies, therefore, they contact [Complainant’s own] customer service in Ann Arbor to seek help.
To reiterate, Complainant’s customers thought Respondent was Complainant, ordered goods from Respondent via the Offending Websites, were dissatisfied with service provided by Respondent, and further believed this bad service was provided by Complainant. This actual confusion and harm to Complainant’s business reputation and goodwill prompted it to contact Respondent and to later file the instant action under the UDRP.
Respondent has made further changes to the Offending Websites, but they are still not enough to offset customer confusion and harm to Complainant. After the Complaint was filed, Respondent changed the Offending Websites again. The website at www.norcoldparts.com now appears as:
[image not available]
This website is now called “The Norcold Guy,” but the first sentence names itself “We, here at norcoldparts.com,” and finally in the next sentence, Respondent notes that “Seek Adventure LLC is an independent Norcold parts retailer.” As evident from the above, the most dominant visual aspect of the top of the website is Respondent’s use, of a stylized NORCOLD mark. Despite the changes to the Offending Websites discussed in the Response and this further change, Complainant perhaps unsurprisingly continues to receive calls from angry customers who have dealt with Respondent, believing Respondent was Complainant. As Peak Season for RV-related goods approaches, just last week one agent for Complainant received three phone calls from customers who had mistakenly dealt with Respondent believing him to be Complainant. This is evidence of continued, actual confusion, despite Respondent’s further changes to the Offending Websites, made in response to the instant Complaint. The changes to the Offending Websites are ineffective and clearly do not “accurately disclose the respondent’s relationship with the trademark owner.” Oki Data, Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001). The harm to Complainant is actual, ongoing, and will increase as RV Peak Season starts next month, driving more customers to Respondent’s Offending Websites, and causing more confusion and damage to Complainant’s Marks.
Decisions of Prior Panels – Technical Tests Designed to Assess Whether Confusion Will Occur and/or If Confusion Caused by Domain Name Will be Remedied by Website Contents
The decisions cited by both Complainant and Respondent assess whether confusion is likely when a third party reseller uses a complainant’s marks, and set out criteria to aid in this assessment. Complainant and Respondent agree that Oki Data, Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001), is the leading decision regarding resellers (it addressed an authorized reseller), yet Respondent fails three of the four prongs, when it must pass all four of them. The decisions that follow Oki Data all elaborate on the third prong of the Oki Data test, whether the website “accurately disclose[s] the registrant's relationship with the trademark owner.”
After Oki Data, Respondent relies on the ITT decision, ITT Manufacturing Enterprises, Inc., ITT Corporation v. Douglas Nicoll, D2008-0936 (WIPO November 7, 2008), in which an unauthorized reseller’s “website accurately discloses in its heading the name of the company offering those products (DPI) and includes a home-page disclaimer of affiliation with the Complainants.” Respondent’s statement that it “is an independent Norcold parts retailer” is not a disclaimer of affiliation; the term “independent” is insufficient on its face, and as shown by Complainant’s evidence of actual confusion.
The Porsche decision cited by Respondent is also instructive on the point of whether the website “accurately disclose[s] the registrant's relationship with the trademark owner” under Oki Data:
Respondent does disclose on the entry websites by a disclaimer that he is neither affiliated to nor authorized by the Complainant itself. No evidence has been produced that the disclaimer was posted after receipt of Complainant’s objection only or that the Respondent has improperly communicated with Internet users in any other way. After receipt of Complainant’s objections, Respondent has placed the disclaimer more prominently. The Panel expects the Respondent to maintain the disclaimer posted in the websites, at least as it currently is.
Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent, D 2004-0481 (WIPO August 20, 2004). Despite Complainant’s letters to Respondent and the instant UDRP action, Respondent’s Offending Websites still do not “disclose on the entry websites by a disclaimer that he is neither affiliated to nor authorized by the Complainant itself.” Thus Respondent cannot satisfy the requirements set forth in the decisions Respondent cited itself.
The panelists in these decisions focus on technical points – which Respondent consistently fails to meet, even with repeated changes and despite Complainant’s protestations – in order to assess whether the websites in question “accurately disclose the registrant's relationship with the trademark owner.” Oki Data. Although this is the third prong of the Oki Data test, it is arguably the most important here, as it tends to show Respondent’s intentions and/or whether or not customers will be misled. These are the current headers of Respondent’s Offending Websites:
[image not available]
[image not available]
(screenshots taken May 2, 2016)
On www.norcoldparts.com and www.thetford-parts.com, beneath dominant NORCOLD and THETFORD logos, Respondent holds itself out variously as “The Norcold Guy,” “norcoldparts.com,” “THETFORD toilets & parts by Seek Adventure LLC,” and “thetford-parts.com,” before a brief mention that “Seek Adventure LLC is an independent Nocold/Thetford parts retailer.” Who is the owner? Is it The Norcold Guy, norcoldparts.com, Thetford toilets and parts, thetford-parts.com, or Seek Adventure LLC? Should a customer check Whois records, this will not assist either, as the domains that direct to the Offending Websites name Registrant Organizations variously as Pick A Slip LLC (never mentioned on the Offending Websites), NORCOLD PARTS, and Seek Adventure LLC. The owner is unclear. Moreover, the term “independent” does not sufficiently indicate that Respondent is unauthorized and unaffiliated with Complainant.
The owner of the Offending Websites is unclear to the consumer, based on the Offending Websites themselves, when viewed in connection with Whois records, and actual evidence of confusion. Moreover, despite making changes to the Offending Websites, there is still no “disclaimer that he is neither affiliated to nor authorized by the Complainant itself.” Dr. Ing. h.c. F. Porsche AG. These decisions to use multiple owner names and not to add a clear disclaimer are deliberate. Respondent has intended and continued to intend to disrupt Complainant’s business and hold himself out as Complainant, and Respondent has been successful. Complainant’s customers have been confused, and continue to be confused, and Complainant’s reputation has been damaged.
Respondent fails to meet either the Oki Data test or those of its progeny, or even the underlying purpose of these tests. The Offending Websites do not “accurately disclose the registrant's relationship with the trademark owner” under Oki Data, as evidenced by the Offending Websites themselves, and the evidence of actual confusion. Accordingly, Respondent has registered and used the Offending Domains in bad faith, and they should be transferred to Complainant.
Respondent submitted the following additional submission (quoted verbatim below):
1. Respondent’s actions have been in good faith.
Complainant makes several arguments intended to portray that Respondent has acted in bad faith. Specifically, Complainant asserts that it has received “continued telephone calls from disgruntled customers,” that Respondent falsely listed his termination date, that Respondent, after the termination of his employment, sent an email to several of Complainant’s employees titled “Thetford Blows,” and that Respondent has infringed upon Complainant’s copyright rights. Complainant’s allegations are both self-serving and unsupported by the evidence.
Complainant’s allegation that it has received “continued telephone calls from disgruntled customers” is supported by two pieces of evidence: (1) an email, dated September 30, 2015, three years after Respondent first began providing goods at the <norcoldparts.com> domain name, and (2) the declaration of Bruce Minor, a Supervisor of Customer Service at Complainant’s company.
The email, which is missing any indicator of reliability, such as an email header, and which is unauthenticated by the declaration of Mr. Minor, purports to be a conversation between two Thetford employees in which one employee complains to the other that customers of Respondent have complained to Complainant about Respondent’s return policy. Not only does this email constitute hearsay within hearsay, but it does not even evidence that consumers are confused into believing that Respondent is Complainant. See Airpet Animal Transport, Inc. v. Marchex Sales, Inc./Brendhan Hight, FA1211001470056 (Nat. Arb. Forum Jan. 2, 2013) (“Furthermore, the alleged evidence of long use submitted is mostly scribbled, handwritten third party invoices from suppliers, which are not authenticated, by those third parties who ‘presumably’ have issued these handwritten Shoe Mart invoices. This type of hearsay evidence is highly susceptible of being fabricated; its probative value is suspect as to proof of long use of the name ‘shoe mart.’”). Complainant does not sell directly to consumers and sells only through distributors. If the content of this email is accepted as true, this email merely stands for the proposition that Complainant is recognized as the manufacturer of Respondent’s products and consumers are not confused into believing that Complainant is Respondent. Consumers first purchased a product from Respondent, attempted to return it, were denied, and then called the manufacturer of the product to complain that they could not return it to a distributor. This is the very same issue that manufacturers around the country deal with on a daily basis.
The declaration of Mr. Minor is equally suspect. First, though Mr. Minor’s declaration states that he is the Supervisor of Customer Service for Thetford Corporation, that he manages customer service representatives in a call center, and that “customers have mistakenly purchased NORCOLD and THETFORD brand products from websites at www.norcoldparts.com and www.thetfordparts.com,” Mr. Minor’s declaration does not specify whether he has ever taken a call from such a customer or that he has personal knowledge of the purported confusion that is implied by his declaration. In fact, Mr. Minor’s declaration states that these purported calls “are reported [to him], as a supervisor.” His declaration makes clear that his only knowledge of these purported calls is gained through his customer service representatives, who themselves have only second hand knowledge of the alleged confusion. Mr. Minor’s declaration is akin to the reliability gained through the child’s game of telephone. See Rick Beckham d/b/a PatioKits v. Vertical Axis, Inc. / Domain Administrator, FA1109001406293 (Nat. Arb. Forum Oct. 28, 2011) (“Complainant’s only evidence supporting secondary meaning are self-serving statements of the Complainant’s founder and advertorials from Small Business Opportunities magazine from the Spring and Summer of 2005.”).
Though Mr. Minor states that Complainant “documented three telephone calls received by one CSR… from customers who had interacted with [Respondent]… [and] were unhappy with their experiences,” these documents are notably missing as evidence. Mr. Minor’s declaration states that these customers “are surprised to learn that www.norcoldparts.com and www.thetford-parts.com are not operated by Norcold and Thetford,” but it does not provide any means by which this information could be confirmed or denied. There is no evidence of the time period in which this purported confusion occurred. There is no indication as to what the <norcoldparts.com> and <thetford-parts.com> domains looked like at this time. And there is no evidence of the specific reasoning given by these purported confused consumers for their rage. These conclusory statements have no epistemological value, are incapable of being rebutted, and should be disregarded. This is especially true where Respondent maintains a 4.7 out of 5 stars average on Shopper Approved, which is an average of 326 reviews from confirmed customers.
Interestingly, Complainant’s allegations regarding consumer confusion are logically impossible. Complainant alleges that consumers, who are confused into believing that Respondent has an association with Complainant, have contacted Complainant after they have purchased goods from Respondent. With every order, however, Respondent includes an invoice that bears a prominent header. This header states, “Seek Adventure, LLC, Proudly selling Dometic, Atwood, Thetford, & Norcold Products.” It is overwhelmingly difficult to believe that a consumer would believe that Respondent is, or is associated with, Complainant when they receive an invoice showing exactly the opposite.
Complainant also asserts that Respondent’s purported copyright infringement evidences its bad faith. Complainant directs the Panel to its exhibit in support of this claim, which purports to show a single image of a refrigerator that Complainant asserts was stolen from its website. Even assuming, arguendo, Complainant’s claim of copyright infringement was accurate, such a claim would be outside of the purview of the Policy and is irrelevant to this proceeding. See CafePress v. Michael Fragomele, FA0502000428848 (Nat. Arb. Forum April 27, 2005) (“As a general matter, the pleadings are rife with allegations of general trademark infringement, copyright infringement, unfair competition and other allegations all outside the purview of the Policy.”). Regardless, it would defy logic to believe that consumers are confused into believing that Respondent is Complainant because a single, similar photograph of a refrigerator is located on both websites.
Finally, Complainant asserts that Respondent has acted in bad faith because he mistakenly listed the wrong termination date and because Respondent sent an email to several of Complainant’s employees titled “Thetford Blows.” Respondent’s termination date is irrelevant to this proceeding, but it is unclear how the fact that Respondent’s employment relationship with Complainant ended eight months earlier than the date listed in Respondent’s Response has a material effect on this proceeding. And Complainant’s allegation that Respondent sent the “Thetford Blows” email to the employees of Complainant is unequivocally false.
2. Respondent’s website sufficiently discloses that it is independent from Complainant.
Complainant again asserts that Respondent’s websites do not sufficiently disclose that Respondent is independent from Complainant. Specifically, Complainant contends that, though Respondent’s website admittedly is called “The Norcold Guy,” the first sentence of the site describes it as “norcoldparts.com,” and Respondent discloses that the website is owned by “Seek Adventure LLC” which is “an independent Norcold parts retailer,” Respondent’s website causes confusion because the most “dominant visual aspect of the top of the website is Respondent’s use, [sic] of a stylized NORCOLD mark.” But Complainant is careful not to state that this is Complainant’s stylized NORCOLD mark, as the stylized design adopted by Complainant, which consists of a thin black font, a blue bar, and a polar bear logo, bears no resemblance to the frozen blue stylized font featured on Respondent’s website. This logo is featured on Complainant’s products, and it is unlikely that any reasonable person familiar with Complainant’s products would believe, upon viewing Respondent’s website, that the two parties are related. And though Complainant claims that Respondent’s use is of a stylized mark, Respondent, in describing itself as “the Norcold guy,” is using that term in a nominative sense. See New Kids on the Block v. News Am. Pub., Inc., 971 F.2d 302, 308 (9th Cir. 1992).
Complainant states that Respondent’s disclosure that it “is an independent Norcold parts retailer” is insufficient to put users on notice that Respondent is not affiliated with Complainant. Such a disclaimer is not a requirement of the Oki Data test. See Oki Data Americas, Inc. v. ASD, Inc. See Oki Data Americas, Inc. v. ASD, Case No. D2001-0903 (WIPO Nov. 6, 2001) (“[I]t may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents.”). In Oki Data, the panel found that the respondent had rights and legitimate interests in the <okidataparts.com> domain name where it “prominently discloses that it is merely a repair center, not Oki Data itself.” In Le Creuset SA, where the respondent simply listed its own identity on its website, the panel found that the respondent had made a bona fide use. See Le Creuset SA v. Vineyards Direct Limited, Case No. D2004-0551 (WIPO Sept. 6, 2004). And the Volvo panel found that no disclaimer was necessary were the respondent’s website accurately disclosed that it was a distributor of Volvo parts. Volvo Trademark Holding AB v. Auto Shivuk, Case No. D2005-0447 (WIPO June 8, 2005) (“Although Respondent’s website does not contain a disclaimer which states that it is not affiliated with Complainant, Respondent on its website accurately discloses that it is a mere distributor of VOLVO auto parts.”). Here, Respondent’s clear statement that it is an independent retailer is sufficient to meet the requirements Oki Data test and to ensure consumers are not confused into believing that Respondent is associated with Complainant.
Complainant’s final argument questions of the websites, “Who is the owner?” Complainant’s question is very clearly answered by the header of each respective website. In the case of <norcoldparts.com>, the website states that “Seek Adventure LLC is an independent Norcold parts retailer dealing in genuine and new parts only.” With respect to <thetford-parts.com>, the header of the website states that the website is “Thetford Toilets & Parts by Seek Adventure LLC.” Below the header, the website states, “We are an independent Thetford parts dealer based in Michigan dealing in genuine and new parts only” and “Thetford-Parts.com is proudly brought to you by Seek Adventure LLC.” Complainant’s statement, that “[t]he owner of the Offending Websites is unclear to the consumer,” is simply false.
(1) the domain names registered by Respondent are identical or confusingly similar to trademarks in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain names; and
(3) the domain names have been registered and are 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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 – Consent to Transfer
Respondent consents to transfer the <norcold.org>, <norcold.co>, <norcoldinc.com>, and <norcold.guru> domain names to Complainant. Respondent intends to defend its rights in the remaining names.
In cases where Respondent has not contested the transfer of the disputed domain names but instead agrees to transfer the domain names in question to Complainant, the Panel may forego the traditional UDRP analysis and order an immediate transfer of the <norcold.org>, <norcold.co>, <norcoldinc.com>, and <norcold.guru> domain names. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
Under the circumstances of this case, the Panel will not agree to allow a transfer by consent. Transfer on consent is not appropriate where the Respondent is trying to manipulate the result by agreeing to transfer only the most egregiously-registered domain names (which are in fact identical to one of Complaint’s trademarks) while still attempting to contest ownership of others of the domain names. See Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Nat. Arb. Forum July 17, 2008) (panel determined that the transfer of the domain name should be decided on the merits despite Respondent’s consent to transfer). Considering that there are nineteen challenged domain names and one of the relevant considerations is the extent to which Respondent has tried to corner the market in domain names containing Complainant’s trademarks, it is relevant to consider all the domain names – including these four which consist of the trademarks without other additional words or elements. The Panel will consider the challenge to all nineteen domain names on the merits.
Preliminary Issue: Multiple Complainants
The relevant rules governing multiple complainants are UDRP Rule 3(a) and Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” 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.”
There are two Complainants in this matter: Norcold, Inc. and Thetford Corporation. Complainant Norcold Inc. is owned by Complainant Thetford Corporation. Both companies operate in the recreational vehicle and marine markets. Complainants and their products are closely related. Thetford and Norcold have a sufficient substantial link with each other and ask to be treated as a single entity in this complaint.
Previous panels have interpreted Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
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 Invs., 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 Srvs. 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.”).
There is a sufficient nexus or link between the Complainants and this Panel elects to treat them all as a single entity in this Proceeding.
Preliminary Issue: Multiple Respondents
The nineteen domain names in this matter are registered to the following different listed registrants: Brian Currier, Pick A Slip LLC, NORCOLD PARTS, and Seek Adventure LLC. Complainant asserts they are all different names for the same one registrant and that this proceeding should be permitted to proceed as a single matter against all the domain names. Respondent does not contest Complainant’s claim the registrants are controlled by a single entity and the same Respondent owns all of these domain names. Therefore, this Panel elects to treat them all as a single entity in this Proceeding and permits this matter to proceed as a single proceeding involving all nineteen domain names.
Preliminary Issue: Supplemental Submissions
As noted above, Complainant submitted a supplemental submission in this matter, and Respondent has responded with a supplemental submission of its own. A majority of the Panel has found the supplemental submissions to be helpful in considering the parties’ positions and reaching a decision in this matter.
Panelist Bernstein would not accept the supplemental submissions. The UDRP Rules contemplates a single complaint and a single response. Although a panel may request supplemental submissions to have the parties address any new issues, the Rules do permit the submission of replies and sur-replies as a matter of course. It is true that Forum’s Supplemental Rules provide a mechanism for submitting supplemental submissions, but that mechanism does not trump the Rules nor does it obligate the panel to consider the supplemental submissions on the merits. Rather, the decision to accept supplemental submissions rests in the firm discretion of the Panel. See, e.g., Denver Newspaper Agency v. Jobing.com LLC, Claim Number: FA0908001282148 (Nat. Arb. Forum Oct. 16, 2009) (“The Rules (unlike the Forum’s Supplemental Rules) do not provide for the right to submit a Supplemental Submission; rather, whether to request and or accept a Supplemental Submission is left to the discretion of the Panel. Rule 12. Here, because the second part of Complainant’s Supplemental Submission did not address any new legal principles or facts that could not have been anticipated in the Complaint, a majority of the Panel disregards the responsive portions of Complainant’s Supplemental Submission”); Eskimo, Inc. v. Phillips, File No. 105950 (Nat. Arb. Forum May 13, 2002) (even though the Forum’s "supplemental rules . . . may permit the filing of such [supplemental] pleadings, they cannot mandate that the Panel consider such submissions").
To respect the provisions in the Rules and to maintain the speed and efficiency of UDRP proceedings, many Panels refuse to accept supplemental submissions unless the submission is addressing a new fact or argument that arose after the prior submission or that could not have been anticipated in the Complaint or Response. See, e.g., Id.; Bar Products.com, Inc. v. RegisterFly.com, File No. 829161 (Nat. Arb. Forum Jan. 9, 2007) (declining to consider Complainant's reply because it adds nothing of substance to the record, and does not address any arguments of Respondent that could not have been anticipated by the Complainant); Electronic Commerce Media, Inc. v. Taos Mountain, File No. 95344 (Nat. Arb. Forum Oct. 11, 2000) (panel refused to accept supplemental submission, as the Forum’s Supplemental Rules cannot trump ICANN's UDRP Rule 12 which vests the discretion to request and accept supplemental materials solely with the Panel; no new information or arguments were supplied within the supplemental filings; and the Panel had no questions for the parties to address in supplemental materials). That is not the case here. In these proceeding, the parties have each submitted supplemental submissions that merely reply to the other party’s submission, without raising any new law or fact that could not have been included previously. Because the supplemental submissions did not raise new issues but instead simply reargued points that were already made or could have been anticipated, Panelist Bernstein would disregard them.
Complainant is a manufacturer of gas/electric refrigerators for the recreational vehicle (RV), marine, and mobile markets. Complainant’s products are sold and serviced throughout the United States at dealers, service centers, and retail outlets authorized to use the NORCOLD and/or THETFORD marks. Complainant registered the NORCOLD mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,457,331, Reg. date Sep. 15, 1987) and the THETFORD mark (Reg. No. 1,661,379, Reg. date Oct. 22, 1991). Registration with the USPTO (or any other governmental authority) establishes a complainant’s rights in a mark. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶4(a)(i).”). Complainant has established rights in the NORCOLD and THETFORD marks under Policy ¶4(a)(i).
Complainant claims the disputed domain names are identical and/or confusingly similar to the NORCOLD and THETFORD marks, respectively. In the case of norcold.co, norcold.guru, and norcold.org, these domain names are identical to Complainant’s NORCOLD mark. In registering the remaining disputed domain names, Respondent has added descriptive terms such as “sale,” “parts,” “repairparts,” “my,” and “fixmy” in the domain names, to name a few. In all cases, either a gTLD such as “.com” or “.net”, the ccTLD “.co”, or the new gTLD “.guru”, is affixed to the end. Adding a descriptive term to a complainant’s mark does not prevent a finding that the domain names are identical or confusing similarly to a complainant’s mark under a Policy ¶4(a)(i) analysis. Since domain name syntax requires a TLD (either a gTLD or a ccTLD), it must be disregarded while doing a Policy ¶4(a)(i) analysis. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pometallo.com> identical to the complainant’s mark because the necessary use of a gTLD, in this case “.com”, after the name was not relevant); see also Abbott Laboratories v. Miles White, FA 1646590 (Nat. Arb. Forum Dec. 10, 2015) (holding that the addition of descriptive terms, particularly terms that pertain to complainant’s business, do not adequately distinguish a disputed domain name from complainant’s mark under Policy ¶4(a)(i).); see also BILD Gmbh & Co. KG v. James Cousin, FA 1641283 (Nat. Arb. Forum November 11, 2015) (determining that ccTLDs and gTLDs must be ignored while determining whether a domain is confusingly similar to a mark under Policy ¶4(a)(i)). Furthermore, the addition of a hyphen between a mark and a descriptive term has been held not to distinguish a disputed domain name any more than if the hyphen was not present. See Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change); see also Bottega Veneta SA v. Arianna Bureau, DCO2016-0003 (WIPO March 8, 2016) (finding <bottega.com> identical to the complainant’s mark in full with the mere addition of the hyphen and of the ccTLD, “.co”). Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen. Therefore, this Panel finds Respondent’s domain names are confusingly similar to Complainant’s NORCOLD and THETFORD marks, respectively, under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden of production shifts to Respondent to come forward with evidence it has rights or legitimate interests.
Complainant claims Respondent has never been commonly known by the disputed domain names. Respondent does not refute that it is not commonly known by any of the disputed domain names (though one of its aliases is Norcold Parts – which, as described below, is actually a confusing and infringing alias). Respondent is not authorized or licensed to use the NORCOLD or THETFORD marks in any capacity. The Panel finds Respondent is not commonly known by the disputed domain names pursuant to Policy ¶4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
Complainant cites and analyses the factors laid out in Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) to support its argument that Respondent is making neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). Respondent agrees the Oki Data factors apply (and the Panel agrees that they apply to both authorized and unauthorized distributors and resellers), but the evidence establishes that Respondent has failed to satisfy a number of the Oki Data factors. Because Respondent must satisfy all of the factors in order to have a legitimate interest in or right to use the domain names, Respondent’s failure to meet any one of the factors (let alone multiple factors) is fatal to its defense.
Under Oki Data, a respondent must actually be offering the goods or services at issue. It is not contested Respondent meets this prong of the Oki Data test.
Second, Respondent must use the site to sell only the trademarked goods. Complainant asserts that Respondent fails to meet this factor because it used the disputed domain names to provide links under the “Affiliate Stores” tab to third party brands and stores that directly compete with Complainant. Although it is a close question, on this record, the Panel finds that Complainant has not established that Respondent has sold third party brands at the websites to which the domain names resolve. Although it is true that Respondent provides a link to its Affiliate Stores, clicking on that link takes the web user to a new website, at which those other products are sold. This practice does not appear to violate the principal underlying this factor of the Oki Data test, which is to prevent bait-and-switch advertising. In context, it is clear here that the websites using the NORCOLD and THETFORD trademarks only sell NORCOLD and THETFORD products, respectively; that Respondent essentially advertises its affiliate stores that sell other brands does not appear deceptive or confusing, in the context of these websites.
Third, the site must accurately disclose the registrant's relationship with the trademark owner. The site may not falsely suggest it is the trademark owner, or that the website is the official site, especially if it is only one of many sales agents. Respondent presented itself as an authorized dealer and/or certified technician of Complainant when it is not. Indeed, in some cases, Respondent held itself out as being “Norcold Parts”, apparently impersonating the Complainant. Respondent did not clearly and accurately disclose Respondent’s status as being unrelated to Complainant. It also appears Respondent uses Complainant’s copyrighted materials and trademark. Such use is likely to confuse an internet user as to the identity of or relationship between the parties. Accordingly, Respondent also failed to meet the requirements of the third prong of the Oki Data test.
Finally, Respondent must not try to corner the market in all domain names. Respondent registered nineteen domain names appropriating Complainant’s marks. All of these domain names actually forward to only two web sites, which further reinforces that having nineteen separate domain names was unnecessary. Respondent has not suggested any rationale for these actions. Whether or not Complainant was able to register domain names reflecting its NORCOLD and THERFORD marks in domain names, Respondent did not acquire rights to the nineteen disputed domain names.
Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”). As discussed above, because Respondent’s offering was deceptive in the way in which the products were offered and the websites were displayed, Respondent’s activities cannot be considered bona fide or legitimate for purposes of the Policy.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant argues Respondent has registered the disputed domain names in bad faith. Respondent registered nineteen domain names incorporating two marks owned by Complainant. Panels have held the registration of just two marks is sufficient to constitute a bad faith pattern of preventing a Complainant from asserting its rights in a mark. See Albertson's, Inc. v. Bennett, FA 117013 (Nat. Arb. Forum Sept. 5, 2002) (finding bad faith registration and use pursuant to Policy ¶4(b)(ii) in the respondent’s registration of the <albertsonscoupons.com> and <albertsons-coupons.com> domain names because the respondent “registered the domain names in order to prevent Complainant from registering its common law ALBERTSON’S COUPON mark in a corresponding domain name”). Here, Respondent registered nineteen different domain names. The domain names did not resolve to different websites (e.g., one for sales, one for parts, one for service, etc.), so there was no legitimate reason for registering so many domain names. Although it is true that it did not prevent Complainant from reflecting its marks in domain names, it is the Respondent’s intent that is relevant in the bad faith analysis, and here the intent was to register multiple domain names to interfere with Complainant’s rights. Among other things, the registration of so many different domain names could interfere with Complainant’s ability to have its website clearly displayed in response to searches on internet search engines. By a majority vote, the Panel finds Respondent has acted in bad faith under Policy ¶4(b)(ii).
Panelist Lowry would dissent on this finding because Complainant could (and did) reflect its marks in a domain name.
Complainant claims Respondent is using the confusingly similar disputed domains name to attract confused Internet users to Respondent’s own website where Respondent offers Complainant’s products. Respondent’s websites suggests they are officially sponsored websites (or Complainant’s websites) when they are not. This is classic trademark infringement because it diverts consumers looking for Complaint and confuses consumers as to whom they are dealing with; it also constitutes bad faith under Policy ¶4(b)(iv). See Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant). Respondent has acted in bad faith under Policy ¶4(b)(iv).
Complainant claims Respondent had actual knowledge of Complainant's rights in the NORCOLD and THETFORD marks. There is no doubt of this because Respondent worked from Complainant for a number of years. Respondent offered Complainant’s products so Respondent had to know about Complainant’s marks. Respondent registered nineteen domain names (and never explained why nineteen domain names was reasonable). All of this evidence makes it clear Respondent actually knew about Complainant's mark and rights. Respondent registered the disputed domain names in bad faith under Policy ¶4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name"). Further supporting a finding of bad faith is the fact Respondent is a former employee of Complainant, which shows he had knowledge of Complainant's trademarks, and Respondent purposefully targeted Complainant's trademarks with these websites which infringed Complainant's trademark rights and deceived Complainant's customers. See MBS Computers Ltd. v. Workman, FA 96632 (Nat. Arb. Forum Mar. 16, 2001) (finding bad faith use and registration where a disgruntled former employee registered an infringing domain name to open an online business that competed with the complainant).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy (or Respondent consented), the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <norcoldinc.com>, <norcold.co>, <norcold.guru>, <norcold.org>, <norcoldboards.com>, <norcoldcoolingunits.com>, <norcoldparts.com>, <norcoldparts.net>, <norcoldpowerboards.com>, <norcoldrepairparts.com>, <norcoldsale.com>, <norcoldshop.com>, <norcoldstore.com>, <norcoldtechs.com>, <norcoldthermistors.com>, <mynorcold.com>, <fixmynorcold.com>, <thetford-parts.com>, and <thetfordparts.co> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator (chair),
Honorable Charles K. McCotter Jr., (Ret.) and David H. Bernstein
Dated: Monday, May 16, 2016
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