National Arbitration Forum

 

DECISION

 

Suspensions, LLC v. The LBC Group, Inc. d/b/a Creative Associates

Claim Number: FA0603000662305

 

PARTIES

Complainant is Suspensions, LLC (“Complainant”), represented by Amanda A. Neidert, of Miles & Stockbridge, 10 Light Street, Baltimore, MD 21202-1487.  Respondent is The LBC Group, Inc., d/b/a Creative Associates (“Respondent”), represented by Scott S. Christie, of McCarter & English, LLP, Four Gateway Center, 100 Mulberry Street, Newark, NJ 07102.

 

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <justsuspension.com> and <just-suspension.com>, registered with Go Daddy Software, Inc.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Jeffrey M. Samuels, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 17, 2006; the National Arbitration Forum received a hard copy of the Complaint on March 20, 2006.

 

On March 20, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <justsuspension.com> and <just-suspension.com> domain names are registered with Go Daddy Software, Inc. and that the Respondent is the current registrant of the name.  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 23, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 12, 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@justsuspension.com and postmaster@just-suspension.com by e-mail.

 

A timely Response was received and determined to be complete on April 12, 2006.

 

On April 17, 2006, Complainant timely filed an “Additional Written Statement by Complainant” under the Forum’s Supplemental Rule #7(a).  Thereafter, on April 21, 2006, Respondent, pursuant to Supplemental Rule #7(c), timely filed an “Additional Written Statement of Respondent.”[1]  An “Additional Statement of Complainant” was submitted by Complainant on April 27, 2006 and was determined by the Forum to be deficient.  The Panel has chosen not to consider this Additional Submission in its decision.

 

On April 21, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jeffrey M. Samuels as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

According to the Complaint, Complainant Suspensions LLC is the current owner of the common law mark JUST SUSPENSION, which was first used by Just Suspension Inc. in 1986 in connection with the sale and distribution of automobile parts for classic American vehicles. Complainant purchased Just Suspension, Inc. on or about March 24, 2005.  As part of the purchase agreement, Complainant purchased all right, title, and interest in and to all intellectual property related to Just Suspension, Inc. and the goodwill associated therewith, including the trade name “Just Suspension,” all logos and service marks, the website, and all registered domain names, including, but not limited to, <justsuspension.com> and <just-suspension.com>.

 

Complainant alleges that it has continued to do business under the JUST SUSPENSION mark and has invested substantial sums to promote continued recognition of the mark, including nationwide magazine ads, website ads and sales, and catalogs and business cards. 

 

Complainant maintains that it owns common law rights in the JUST SUSPENSION mark and that the domain names in dispute are identical and confusingly similar to the JUST SUSPENSION mark.

 

Complainant further contends that Respondent has no rights or legitimate interests in the disputed domain names.  According to Complainant, Respondent was hired to set up and design a website for Just Suspension Inc. but instead of registering the domain name <justsuspension.com> in the name of Just Suspensions Inc., Respondent, on September 27, 1999, registered the domain name in Respondent’s name.  On or about March 30, 2005, Harrison Feather, Respondent’s president, advised Complainant that Respondent owned the domain name <justsuspension.com> but would transfer it to Complainant.  On August 2, 2005, without Complainant’s knowledge, Respondent registered the domain name <just-suspension.com>.  Respondent then invoiced Complainant for lease of <justsuspension.com> and the next day demanded $10,000 for the sale of <justsuspension.com>.  Complainant’s counsel, on September 19, 2005, sent a “cease and desist” letter to Respondent.  A week later, Respondent renewed its registration of the <justsuspension.com> domain name

 

Complainant urges that Respondent is not making a legitimate noncommercial or fair use of either of the disputed domain names.  It notes that Respondent’s only current use of the domain name <justsuspension.com> is to lease the domain name to Complainant so that Complainant can maintain its information on the web site.  Complainant further observes that Respondent has not made any use of the domain name <just-suspension.com>. The webpage found at this site currently is “parked free, courtesy of GoDaddy.com” and contains sponsored links where consumers can be diverted to websites for Complainant’s competitors.  See Exhibit J.

 

Complainant alleges that Respondent has registered and used both disputed domain names in bad faith.  With respect to the <justsuspension.com> domain name, Complainant argues that this name was registered in bad faith when Respondent listed its own name as the registrant despite knowing that it was hired as an agent to register the domain name. Complainant indicates that such bad faith is further evidenced by the fact that Respondent apparently never told Complainant’s predecessor that the domain name was registered in favor of Respondent.  Complainant also contends that Respondent, following Complainant’s request to do so, agreed to transfer the domain name to Complainant and that such acquiescence “is not indicative of someone with a legitimate interest that had registered the domain name in good faith.” According to Complainant, Respondent’s breach of its agreement to transfer ownership of the domain name, followed by its demand for $10,000 for the transfer of the registration, indicates that Respondent registered <justsuspension.com> primarily for the purpose of selling it to Complainant.

 

With respect to the “bad faith” registration of the <just-suspension.com> domain name, Complainant notes that Complainant had requested, and Respondent had agreed to, transfer of the <justsuspension.com> name when Respondent registered <just-suspension.com> in August 2005.  At this point, Complainant declares, Respondent was well aware of Complainant’s rights in the JUST SUSPENSION mark.  Noting that the web page at the <just-suspension.com> site contains sponsored links to competitor sites, Complainant argues that it may be inferred that Respondent registered <just-suspension.com> in a deliberate attempt to attract internet users to other online locations by creating confusion and denied Complainant the ability to reflect its own mark in the corresponding domain name.

 

B. Respondent

In its Response, Respondent launches a multi-pronged attack against the assertion that Complainant possesses trademark rights in JUST SUSPENSION.  It argues that: (1) the Complaint is predicated solely upon alleged trademark rights in JUST SUSPENSION and that the asset purchase agreement does not mention trademarks, as opposed to service marks; (2) that such agreement did not transfer rights in JUST SUSPENSION to Complainant; (3) that Complainant’s rights in JUST SUSPENSION go only as far back as the date of the asset sale, March 18, 2005, well after the date of registration of the <justsuspension.com> domain name; (4) Complainant has established that its rights (if any) in JUST SUSPENSION commenced no earlier than November 2005; and (5) since JUST SUSPENSION is descriptive, Complainant must establish that the mark possessed secondary meaning before it may be protected.

 

Respondent further argues that it has rights and legitimate interests in respect of the disputed domain names.  According to Respondent, it provides technology business consulting, products and services and, at the request of seven of its clients, has registered domain names to facilitate and protect the internet presence of these clients. The Response contends that, on or about September 27, 1999, Respondent registered the domain names with the authorization of the owner of Just Suspension Inc. and that up until September 26, 2002, Just Suspension, Inc. was invoiced by Respondent for licensing of the domain names and paid a nominal license fee of $35 for each domain name. 

 

On or about September 26, 2002, the registration for <just-suspension.com> lapsed.  Thereafter, up until the asset purchase by the Complainant on March 18, 2005, Respondent invoiced Just Suspension Inc for licensing of the <justsuspension.com> domain name and Just Suspension Inc. continued to pay an annual license fee of $35.

 

The Response maintains that, on or about August 2005, Respondent learned that the domain name <just-suspension.com> remain unregistered.  Hoping to keep Complainant as a client, Respondent re-registered the <just-suspension.com> domain name on or about August 2, 2005.  Later that month, Respondent invoiced Complainant the $35 annual license fee for <justsuspension.com> and Complainant paid the invoice. 

 

Respondent further argues that it never volunteered to transfer the domain names in dispute to Complainant and that Complainant’s unsworn statements to the contrary are not probative.[2]

 

In sum, Respondent urges that it has demonstrated that, before notice of the instant dispute, it used the domain names in connection with the bona fide offering of its domain name licensing service to Just Suspension Inc. and that it was making fair use of the domain names.

 

Respondent also argues that, in view of the above, the domain names were not registered, and are not being used, in bad faith.  It also takes issue with Complainant’s assertion that Respondent demanded $10,000 for the transfer of the <justsuspension.com name>.  According to the facts as set forth in Mr. Feather’s sworn affidavit, on or about August 30, 2005, Complainant inquired of Mr. Feather about purchasing the <justsuspension.com> name.  Mr. Feather invited an offer, and Complainant offered $200.  Mr. Feather rejected the offer, advising that $10,000 was closer to a fair offer.

 

The Response also includes a claim that Complainant engaged in reverse domain name hijacking.  The bases of such a claim are that: (1) Complainant submitted an incomplete asset purchase agreement and misrepresented its terms; (2) Complainant failed to contact its predecessor in interest to learn that it authorized Respondent to register the domain names; and (3) Complainant falsely claimed that Respondent agreed to transfer the domain name <justsuspension.com> to Complainant.

 

C. Additional Submissions

In its “Additional Submission,” Complainant argues that its common law rights in the JUST SUSPENSION mark consist of both trademark and service mark rights and that the mark was used by Just Suspension Inc. to promote its goods and services as early as 1989 and has been used by Complainant continuously ever since.[3]  According to Complainant, Just Suspension Inc. spent approximately $400,000 in advertising between 2001 and 2004.[4]  Moreover, Complainant contends, the Complaint’s reference to “trademark” and “mark” were meant to encompass Complainant’s trademark and service mark rights.

 

Complainant also takes issue with Respondent’s contention that it was authorized by Just Suspension Inc. to register the disputed domain names.  Such contention, according to Complainant, directly contradicts the Asset Purchase Agreement in which Just Suspension Inc. represented and warranted that it owned the disputed domain names.  Complainant notes that Respondent’s contention is supported solely by Mr. Feather’s affidavit and that there is no evidence of any written agreement between Just Suspension Inc. and Respondent.

 

The Additional Submission of Respondent observes that Complainant failed to produce any evidence of use of the JUST SUSPENSION mark for the entire decade of the 1990’s and, thus, at best, Complainant’s common law rights in the mark commenced no earlier than January 2001.

 

On the issue of “rights and legitimate interests,” Respondent notes that the parties’ respective affidavits create a factual issue on this question and Complainant carries the burden of persuasion on this issue.  Respondent also contends that Complainant has failed to satisfy its burden of persuasion on the issue of “bad faith” registration and use.

 

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.

 

DECISION

The Panel has carefully reviewed the record in this case and determines that this dispute is not amenable to resolution through the UDRP. A critical issue governs the outcome of this proceeding:  Was Respondent authorized by Just Suspensions Inc. to not only register the domain names in dispute but to do so in its own name?  However, the evidence presented by the parties with respect to this issue is equivocal at best.  While Respondent offers a sworn affidavit from its president that he registered the domain names in the name of the Respondent “with the authorization of the owner of Just Suspensions Inc.,” a review of the invoices submitted by Respondent does not directly support such assertion. The invoices relate to work for registering and renewing the domain names.  Contrary to Respondent’s assertion, in the Panel’s opinion, the invoices cannot be interpreted to reflect the existence of a licensing agreement between Respondent and Just Suspension Inc. and Complainant under which the latter two entities were authorized to use domain names owned by Respondent. 

 

On the other hand, the Panel finds less than compelling Complainant’s arguments in support of its claim that Respondent was hired as an agent to register the domain names in the name of Just Suspension Inc.  The fact that the Asset Purchase Agreement assigned to Complainant rights in “all registered domain names” does not necessarily mean that Complainant, in fact, owned such domain names.  Moreover, while Complainant contends that Respondent voluntarily agreed to transfer the <justsuspension.com> domain name, and asserts that such fact (if true) supports a determination that Respondent did not register the domain names in good faith, Respondent has submitted evidence that no such voluntary offer to transfer took place.

 

It is significant, in the Panel’s view, that neither party presented evidence from Just Suspensions Inc. as to its understanding of whether it or Respondent would own the domain name registrations.  It seems to the Panel that such evidence is critical to determining if Respondent has rights or legitimate interests in the domain names and whether the domain names were registered and are being used in bad faith.  Absent such evidence, the Panel would just be flipping a coin in deciding this matter.  Far better for the parties to have the opportunity to present a more complete record to a court of law that could also assess credibility.[5]

 

Complainant’s request for transfer to it of the domain names <justsuspension.com> and <just-suspension.com> is DENIED without prejudice and Respondent’s request to find that Complainant committed reverse domain name hijacking is DENIED without prejudice.

                 

 

 

Jeffrey M. Samuels, Panelist
Dated: May 5, 2006

 

 

 

 

 

 

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