National Arbitration Forum
DECISION
Bell Helmets, Inc. v. 4X Development
Claim Number: FA0602000651064
PARTIES
Complainant is Bell Helmets, Inc. (“Complainant”), represented by Benjamin D Weston, of MCBREEN & SENIOR, 1880 Century Park East, Suite 1450, Los Angeles, CA 90067. Respondent is 4X Development (“Respondent”), represented by Todd A. Green, of Turner Green Afrasiabi & Arledge LLP, 535 Anton Blvd, Suite 850, Costa Mesa, CA 92626.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <thebellstore.com> and <genuineaccessories.com>, registered with Go Daddy Software, Inc.
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.
Dennis A. Foster as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on February 27, 2006; the National Arbitration Forum received a
hard copy of the Complaint on March 2, 2006.
On February 27, 2006, Go Daddy Software, Inc. confirmed by e-mail to
the National Arbitration Forum that the <thebellstore.com> and <genuineaccessories.com> domain names are registered with Go
Daddy Software, Inc. and that the Respondent is the current registrant of the
names. Go Daddy Software, Inc. has
verified that Respondent is bound by the Go Daddy Software, Inc. 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 March 6, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of March 27, 2006 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@thebellstore.com and postmaster@genuineaccessories.com
by e-mail.
A timely Response was received and determined to be complete on March
22, 2006.
On March 28, 2006, the Complainant submitted an Additional Submission
in accordance with NAF Supplemental Rule 7.
Although the Complainant was late paying the Additional Submission
filing fee, the Complainant immediately complied when this omission was pointed
out. The Panel believes the
Complainant’s omission was inadvertent, and thus has taken Complainant’s
Additional Submission into account in preparing this Decision.
The Respondent in turn filed a Response to the
Complainant’s Additional Submission on March 28, 2006. The Panel also took the Respondent’s
Additional Response into account in preparing this Decision.
On March 28, 2006, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed
Dennis A. Foster as Panelist.
RELIEF SOUGHT
Complainant requests that the disputed domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant has been an authorized distributor selling Bell helmets
under various licenses and agreements since 1991.
On or before January 1, 2001, Complainant began selling helmets and
accessories directly to consumers through the Internet on the domain names
<bellhelmets.com>, <the bellstore.com>, and
<genuineaccessories.com>. These
domain names were purchased at the direction of Complainant
The Respondent was formerly an independent contractor hired by
Complainant for assistance with web site maintenance and operations.
While Respondent’s periodic income from Bell Helmets was tied to the
company’s net profits, and while Complainant often paid a third of Respondent’s
business-related expenses, Respondent had no ownership interest in Complainant
and the company was operated (as it is now) as a sole proprietorship. Complainant paid all company expenses and
overhead, and exercised its judgement as regards all operations of Complainant
company.
Effective January 1, 2006, Complainant terminated its relationship with
Respondent. Respondent immediately
configured <thebellstore.com> and <genuineaccessories.com> sites to
operate as portals for its own neophyte motorcycle helmet retail business,
selling products under the names of “the Bell Store” and “Genuine
Accessories”. (Complaint Exhibits A and
B)
By using the domain names <thebellstore.com> and
<genuineaccessories.com>, the Respondent has intentionally attempted to
attract, for commercial gain, Internet users to its web sites by creating a
likelihood of confusion as to the source, sponsorship, affiliation and
endorsement of the sites by Bell Helmets, as well as to the availability of
Bell Helmets products and services.
The Complainant sold motorcycle helmets and related accessories through
the subject domain names for five (5) calendar years. Complainant thereby developed substantial goodwill for the domain
names as well as an enduring association of the domain names with Complainant. The Respondent now sells identical products
to the Complainant’s customers with no indication on the web sites’ home pages
that the domain names are no longer associated with or operated by the
Complainant. In fact, the current web
sites are almost identical to the sites previously operated by the Complainant.
(Complaint Exhibits C and F)
Respondent’s bad faith use of the disputed domain names is further
evidenced by the “meta-data” associated with <thebellstore.com> (Exhibit
G). The meta description for the site
was “Bell Helmets and Bell Motorcycle Helmet-Welcome to the premier Bell
Helmets outlets for Bell Helmets auto and motorcycle helmets and
accessories.” The domain name’s meta
keywords were “bell helmets auto helmets, bell helmets motorcycle helmets, bell
helmet, bell racing helmets”. This
information is used to attract consumers and Internet users to web sites
through search engines.
Respondent’s repeated use of Complainant’s trade name to attract
Internet commerce to its site clearly evidences its bad faith intent in using
the subject domain names.
Respondent’s efforts to misleadingly divert Complainant’s customers
have been successful. Exhibit H is an
e-mail sent by a customer who ordered a helmet from <thebellstore.com>
under the mistaken impression that Complainant continued to operate the site.
Respondent has no rights in the BELL HELMETS trademarks, nor in the good will and consumer loyalty associated
with Complainant’s retail operations.
Respondent may contend that he owns a partnership share in Bell Helmets
and the disputed domain names, and produce “e-mails” in support of his
allegations. Neither of these
allegations is true. The “e-mails” are
simply notes Complainant made to itself regarding negotiations with another
independent contractor, Scott Dudek, regarding the dissolution of the business
relationship.
B. Respondent
This is a business dispute relating to the dissolution of a seven (7)
year partnership.
Since 1998, Complainant, Respondent and Scott Dudek have been partners
in a business that was engaged in the on-line sale, through several websites,
of motorcycle helmets and related accessories.
This was a partnership in every sense of the word. (Exhibit A is a
document prepared by Complainant showing the partnership draw from April of
2005).
On or about February 21, 2001, Respondent registered the disputed
domain names, <thebellstore.com> and <genuineaccessories.com>. Respondent registered these domain names to
use them for the sale of Bell helmets in his partnership with Complainant and
Scott Dudek.
Complainant does not allege, or even suggest, that Respondent
registered these domain names in bad faith.
Complainant voiced no objection about the domain name registrations for
five (5) years—until the dissolution of the partnership.
Sometime in 2005, Complainant decided that it wanted to dissolve the
partnership (Response Exhibit B).
Respondent and Scott Dudek never consented to Complainant’s proposed
dissolution because Complainant was taking for himself more than one third of
the partnership assets.
Whether Complainant’s proposed partnership dissolution terms are fair
is not a matter for this Panel. What is
relevant is that this is not a cybersquatting case but a dispute concerning the
dissolution of a partnership, among whose assets are the domain names
<thebellstore.com> and <genuineaccessories.com>.
The issue of who has rights in the trademarks THE BELL STORE and
GENUINE ACCESSORIES is beyond the scope of this proceeding.
Resolution of whether the Respondent has rights and legitimate
interests in the disputed domain name also is beyond the scope of a UDRP
proceeding.
The Complainant does not even allege bad faith registration. To the contrary, Complainant alleges the
Respondent registered the disputed domain names at Complainant’s request. Complainant knew the disputed domain names
were registered in the Respondent’s name and the Complainant did not find this
objectionable.
Respondent is an authorized distributor of Bell helmets and is the
rightful owner of the domain names that are the subject of this dispute. For these reasons, Respondent’s use of the
domain names to sell Bell helmets and related accessories is not in bad faith.
C. Additional Submissions
Complainant’s Additional
Submission
Contrary to Respondent’s assertions, this dispute is within the scope
of ICANN dispute resolution arbitration proceedings, and in fact goes to the
very heart of ICANN Policy.
Contrary to the assertions set forth by Respondent, the fact that
Complainant formerly had a business relationship with Respondent, and that the
present dispute arose after Complainant’s termination of that relationship,
does not preclude this tribunal from applying the plain language of the ICANN
Policy and transferring the disputed domain names to Complainant.
Pursuant to its continuous and extensive use of these marks in
commerce, Complainant acquired substantial common law trademark rights in the
disputed domain names.
Respondent’s Additional Submission
In its Additional Submission, Complainant does not dispute that for
seven (7) years Complainant, the Respondent and Scott Dudek engaged in the
on-line sale of motorcycle helmets and related accessories.
The Complainant does not dispute that Response Exhibit A shows the
April, 2005 draw in equal shares among the three partners.
The Complainant does not dispute that Response Exhibit B is an email in
which the Complainant proposed an equal division of the partnership assets into
three (3) parts..
The disputed domain names, <thebellstore.com> and <genuineaccessories.com> do not belong
just to the Complainant but to the three member partnership that includes the
Complainant. Resolution of this issue
is beyond the scope of a UDRP proceeding.
FINDINGS
The Complainant does not have a registered
trademark in any of the names found in the disputed domain names
<thebellstore.com> and <genuineaccessories.com>. However, the Claimant has used these names
for some years in the business it conducted with the Respondent.
The Claimant and the Respondent have been
involved in a business together with one other party, Scott Dudek, to sell
motorcycle helmets and related accessories.
The Complainant and Respondent no longer wish to continue their business
relationship, but they can not agree on how to divide the property they used to
conduct their business, including the disputed domain names,
<thebellstore.com> and <genuineaccessories.com>.
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.
Identical and/or Confusingly
Similar
By its own admission, Complainant does not
have a registered trademark for any of the words in the two disputed domain
names: <thebellstore.com> and <genuineaccessories.com>. However, Complainant has shown that it has
used these names in a business for some years.
The Panel believes this is enough to establish common law trademark
rights in the expression “The Bell Store.”
See, e.g., Great
Plains Metromall, LLC v. Creach, FA 97044, (Nat. Arb. Forum May 18, 2001)
(”The Policy does not require that a trademark be registered by a governmental
authority for such rights to exist.”); see also Seek Am. Networks Inc. v. Masood, D2000-0131 (WIPO April 13, 2000).
The expression “genuine accessories” is a
different matter. It is utterly
descriptive, and the Panel is skeptical Complainant would ever acquire
trademark rights in it. For this
reason, and in the absence of any registration, the Panel finds Complainant has
not shown it has trademark rights in “genuine accessories”.
The Panel decides Complainant has satisfied
the requirements of Policy ¶ 4(a)(i) for the name “The Bell Store,” but has
failed to do so for the expression “genuine accessories”. Pro tanto, the rest of this Decision only
pertains to the domain name <thebellstore.com>.
Rights or Legitimate Interests
Complainant contends Respondent does not have
rights or legitimate interests in the disputed domain names. According to Complainant, Respondent was an independent
contractor who was tasked to register the disputed domain name, <thebellstore.com>,
on behalf of Complainant.
Respondent has sought to avail itself of the
provisions of Policy ¶ 4(c)(i) and to show that, before any notice of this
dispute, it was using the disputed domain name for a bona fide offering
of goods and services. In fact,
Complainant and Respondent agree that for some years they were collaborators,
although they disagree about Respondent’s employment status: Complainant states
Respondent was an independent contractor, while Respondent contends he and
Complainant were partners and that there was also a third partner, one Mr.
Scott Dudek.
The Panel finds the evidence strongly tilts
in Respondent’s favor. The written
evidence of the partnership’s division of profits (Response Exhibit A) plus
Complainant’s own written proposal for winding up the partnership (Response
Exhibit B) convince the Panel that Respondent’s version is correct, and that
Complainant was attempting to mislead the Panel when it termed Respondent an
“independent contractor’.
For years before this dispute, Respondent was
using the disputed domain name to sell motorcycle helmets and other
accessories. The Panel is aware
Respondent was doing this with Complainant and a 3rd party, but the
Panel believes this still satisfies Policy ¶ 4(c)(i).
The Panel finds Respondent has satisfied the
requirements of Policy ¶ 4(c)(i) to
come forward and show it was using the disputed domain to make a bona fide
offering of goods and services.
Conversely, and ineluctably, the Panel finds Complainant has failed to
carry its burden of proof to show Respondent has no rights or legitimate
interests in the disputed domain name per Policy ¶ 4(a)(ii). Since Complainant is required to prove
Policy ¶ 4(a)(i) – (iii) inclusively, the Panel does not need to reach the
issue of Bad Faith.
Is
This Dispute Beyond the Scope of the UDRP?
Both Complainant and Respondent have made
extensive arguments for and against this Case being decided under the UDRP. The Panel is aware that, in some instances,
Panels have decided that some domain name cases involving a contractual
relationship of some standing between the parties were outside the scope of the
UDRP and thus should be left to a different forum. See Western Point,
Inc. v. ENIVA, Inc., FA440091 (Nat. Arb. Forum April 29, 2005) (“[F]acts
that remain in dispute include the basis upon which that registration
occurred.”); see also Everingham
Bros. Bait Co. v. Contigo Visual, FA 440219 (Nat. Arb. Forum April 27,
2005) (finding there was dispute on “[w]hat was agreed, and what obligations
they had or still have to each other”).
The Panel is not in disagreement with those
cases. However, the Panel does not
believe that a contractual relationship between a complainant and a respondent
per se renders the case irresolvable under the UDRP. In this Case, both Complainant and Respondent filed supplemental
filings and their business was a small one involving just a few individuals. The Panel believes the parties have
submitted materials sufficient for it to form a clear opinion of what
transpired between the parties and how the UDRP could in fact decide where to
place the disputed domain names. See
Barbara Black d/b/a Black and White
Consulting v. T1 Commc’ns Co. a/k/a Collectionproof.com LLC, FA 154144
(Nat. Arb. Forum June 17, 2003) (proceeding to hear case, which involved a
respondent independent contractor); see also Ward Burton v. Athlete Direct, FA 100652 (Nat. Arb. Forum December
7, 2001) (proceeding with case despite the facts involving a broken business
relationship between complainant and respondent).
DECISION
The Complainant failed to show it had trademark rights in the disputed
domain name <genuineaccessories.com> per Policy ¶ 4(a)(i). Complainant failed to show Respondent had no
rights or legitimate interests in the disputed domain name <thebellstore.com>
per Policy ¶ 4(a)(ii). Therefore, the
Panel concludes that relief shall be DENIED.
___________________________________________________
Dennis A. Foster Panelist
Dated: April 11, 2006
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