William J. Mayer, III v. Elton Marks
d/b/a EHNet, Inc.
Claim Number: FA0311000208630
PARTIES
Complainant
is William J. Mayer (“Complainant”),
represented by David K. Brock, of Neumiller & Beardslee, 509 West Weber Ave., Stockton, CA 95201. Respondent is Elton Marks d/b/a EHNet, Inc. (“Respondent”), 2542
Waterford Ct., San Bernardino, CA 92408.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <mayersaddles.com>
and <rickmayersaddles.com>, registered with The Name It Corporation d/b/a aitdomains.com.
PANEL
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
David
E. Sorkin as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on November 7, 2003; the Forum received a hard copy of the
Complaint on November 7, 2003.
On
November 7, 2003, The Name It Corporation d/b/a aitdomains.com confirmed by
e-mail to the Forum that the domain names <mayersaddles.com>
and <rickmayersaddles.com> are registered with The Name It
Corporation d/b/a aitdomains.com and that the Respondent is the current
registrant of the names. The Name It Corporation
d/b/a aitdomains.com has verified that Respondent is bound by the The Name It
Corporation d/b/a aitdomains.com registration agreement and has thereby agreed
to resolve domain-name disputes brought by third parties in accordance with
ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On
November 18, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of December 8, 2003 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent’s registration as technical, administrative and
billing contacts, and to postmaster@mayersaddles.com and postmaster@rickmayersaddles.com
by e-mail.
A
timely Response was received and determined to be complete on December 5, 2003.
On December 16, 2003, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed David E. Sorkin as
Panelist.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
owns and operates Bill Mayer Saddles, a business engaged in the production and
sale of custom motorcycle seats. The
business has used the trademark MAYER SADDLES since 1975, and Complainant is in
the process of seeking federal trademark registration for the mark.
The
business previously was owned and operated by Complainant’s father, William J.
Mayer, Jr., until his death in May 2000.
Shortly after Mr. Mayer’s death, a dispute arose between Complainant and
his brother Rick Mayer. The brothers
settled this dispute in February 2002, executing a settlement agreement
acknowledging Complainant’s sole ownership of Bill Mayer Saddles and its
trademarks. The settlement agreement
also included the following provisions:
Rick Mayer acknowledges and
covenants, from the date of the execution of this Agreement and in the future,
that in the operation of his motorcycle seat making business, presently known
as Rick Mayer Cycle, or in any other motorcycle seat making business that he
may operate or participate in in the future, he will not do or permit any of
the following:
. . .
2.
Use as a business name, or use to describe any item produced by him, any
name that combines or uses in any way both “Mayer” and “Saddle” or
“Saddles”; . . .
The
domain names <mayersaddles.com> and <rickmayersaddles.com> are registered in the name of
Respondent, a website developer and administrator, on behalf of Rick
Mayer. Respondent renewed the domain
name registrations in June 2003. Until
recently the domain names were used for Rick Mayer’s online motorcycle seat
store, allegedly for the purpose of intentionally confusing and misdirecting
consumers seeking Complainant’s store.
Complainant
alleges that the disputed domain names are confusingly similar to the MAYER
SADDLES mark; that Respondent lacks rights or legitimate interests in respect
of the disputed domain names, based upon the settlement agreement; and that the
domain names were registered and used in bad faith.
B.
Respondent
Respondent
states that neither he nor Rick Mayer intend to violate the settlement
agreement, and argues that Rick Mayer is entitled to retain the disputed domain
names because they incorporate his own name, Mayer, and the generic term
“saddles.” He also notes that the
disputed domain names were registered “way before this became an issue here.”
FINDINGS
The
disputed domain names are identical or confusingly similar to a mark in which
Complainant has rights. Respondent
lacks rights or legitimate interests in respect of the domain names. However, Complainant has failed to sustain
his burden of proving that the disputed domain names were registered in bad
faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a
complaint on the basis of the statements and documents submitted in accordance
with the Policy, these Rules and any rules and principles of law that it deems
applicable.”
Paragraph
4(a) of the Policy requires that the Complainant must prove each of the
following three elements to obtain an order that a domain name should be
cancelled or transferred:
(1)
the domain
name registered by the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights;
(2)
the
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.
The
domain name <mayersaddles.com>
is identical to Complainant’s mark MAYER SADDLES, disregarding the generic
top-level domain suffix “.com”.
The
domain name <rickmayersaddles.com>
merely appends the first name “Rick” to Complainant’s mark. This addition fails to distinguish the
domain name from the mark, and the Panel finds the domain name confusingly
similar to the mark.
Under
the February 2002 settlement agreement, Rick Mayer appears to have relinquished
any rights to use the word “Mayer” with the word “saddles.” Respondent holds the disputed domain names
on Rick Mayer’s behalf, and the Panel concludes that he lacks rights or
legitimate interests therein.
The
disputed domain names were registered in September 2001, apparently for the
purpose of promoting the sale of motorcycle “saddles” by Respondent’s client,
Rick Mayer Cycle. As indicated above,
Rick Mayer has agreed not to use the words “Mayer” and “saddles” together. However, that agreement was undertaken in
February 2002, and its effect is only prospective—“from the date of the
execution of this Agreement and in the future.” Complainant has not proved that such use prior to February 2002
was unlawful or infringing; indeed, Rick Mayer’s surname and the nature of his
business seem to dictate precisely the opposite conclusion. In any event, it seems quite plausible that
Respondent registered the disputed domain names in order to describe Rick
Mayer’s business, rather than to exploit the value of Complainant’s marks. Even if Respondent did subsequently use and
renew the disputed domain names in bad faith, those acts would not transform
the original registration into an act of bad faith. See Viz Communications,
Inc., v. Redsun, No. D2000-0905 (WIPO Dec. 22, 2000) (registration for a
permissible purpose cannot be transformed into bad faith registration by
subsequent knowledge and conduct).
The
Policy requires proof of both registration and
use in bad faith. See, e.g., Passion Group, Inc. v. Usearch, Inc.,
No. AF-0250 (eResolution Aug. 8, 2000).
Complainant has failed to discharge his burden of proving that the
disputed domain names were registered in bad faith, and the Complaint fails on
this ground.
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be DENIED.
David E. Sorkin, Panelist
Dated: December 30, 2003
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