The Braun Corporation v. Wayne Loney
Claim Number: FA0605000699652
PARTIES
Complainant is The Braun Corporation (“Complainant”), represented by Gretchen Hosty Kotleba, of Michael Best & Friedrich LLP, Two Prudential Plaza, 180 N. Stetson, Suite 2000, Chicago, IL 60601. Respondent is Wayne Loney (“Respondent”), 320 Civic Center Drive, National City, CA 91950.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <imsminivan.com>, <braunvan.com>, <braunvans.com> and <braunminivans.com>, registered with Names4Ever, http://www.Names4Ever.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 P. Miranda, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on May 2, 2006; the National Arbitration Forum received a hard
copy of the Complaint on May 8, 2006.
On May 3, 2006, Names4Ever, http://www.Names4Ever.com confirmed by
e-mail to the National Arbitration Forum that the <imsminivan.com>, <braunvan.com>, <braunvans.com> and <braunminivans.com> domain names are registered with Names4Ever,
http://www.Names4Ever.com and that the Respondent is the current registrant of
the names. Names4Ever,
http://www.Names4Ever.com has verified that Respondent is bound by the Names4Ever,
http://www.Names4Ever.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 May 17, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of June 6, 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@imsminivan.com, postmaster@braunvan.com, postmaster@braunvans.com
and postmaster@braunminivans.com by e-mail.
A timely Response was received and determined to be complete on June 6,
2006.
On June 13, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed David P. Miranda, as Panelist.
Complainant’s additional submission of June 19, 2006 and Respondent’s
additional submission of June 8, 2006 were received and considered.
RELIEF SOUGHT
Complainant requests that the domain names <imsminivan.com>, <braunvan.com>, <braunvans.com> and <braunminivans.com> be transferred from Respondent to
Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant The Braun Corporation (“Complainant”) seeks the transfer of
the following domain names: <imsminivan.com>, <braunvan.com>, <braunvans.com> and <braunminivans.com>.
Complainant is the owner of federally registered trademarks for the following:
THE BRAUN CORPORATION
EV BRAUN ENTERVAN
BRAUNLIFT.COM
all of which are collectively referred to as the “Braun marks”, and has applications pending or common law claims to the following:
BRAUN
BRAUNMOBILITY.COM
IMS
Complainant has been operating under the name The Braun Corporation
since 1972, and has engaged in the business of selling goods under one or more
of the Braun marks since 1973.
Complainant maintains and does business at multiple websites that
include the use of the Braun marks, which provide information about Braun’s
various products and services.
Complainant contends that the subject domain names are identical or
confusingly similar to Complainant’s marks.
Complainant further contends that Respondent does not have any rights or
legitimate interest in the domain names, and that Complainant’s marks are not
descriptive terms to which Respondent might have an interest, but rather are
fanciful marks used to be known to identify Complainant’s goods and services.
Complainant contends that it has not consented to Respondent’s use of
the domain names, and that Respondent has used the names without Complainant’s
permission or authority. On March 10,
2005, Complainant sent a letter to Respondent regarding the domain names to which
Respondent did not provide any response.
Complainant contends that the domain names at issue were registered and
are being used in bad faith by virtue of Complainant’s widespread use of the
marks and cease-and-desist letters sent to Respondent, and that Respondent is
aware of Complainant’s ownership of the marks, but has refused to cancel its
registrations, or transfer the domain names.
Complainant contends that Respondent’s use of the domain names are
purely commercial in nature, and for the purpose of disrupting the business of
Complainant, and that Complainant cannot use its marks to register various
domain names indicative of Complainant’s business, goods and services.
B. Respondent
Respondent Wayne Loney (hereinafter “Respondent”) is doing business as
Creative Mobility. Respondent contends
that his business Creative Mobility is a Braun-certified dealer with a right to
sell Complainant’s products, and must use Complainant’s corporate name in any
form of advertising. Respondent
contends that Complainant was aware of Respondent’s selection of the domain
names for the purpose of promotion and sale of IMS and Braun Minivans. Respondent contends they have hundreds of
customers that know them to be an IMS dealer, and use the <imsminivan.com>
website to contact them and review Braun products, and sell as a Braun dealer
since the purchase of IMS by Complainant.
Respondent contends that they are in business of selling IMS and Braun
Minivans as a dealer of Complainant, and are not competitive with Complainant.
C. Complainant’s Additional Submissions
Complainant contends that Mr. Loney is not an authorized Braun dealer,
however, he is an IMS dealer, but the terms of his dealer agreement
specifically preclude any objectionable use of the IMS marks.
Complainant contends that The Braun Corporation terminated its
dealership with Mr. Loney, and his company Creative Mobility on September 24,
2002, specifically representing that Respondent did not have the authority to
advertise, represent or hold itself as a company authorized to sell/service
Braun products.
Complainant contends that Respondent was not an IMS dealer at the time
he registered the <imsminivan.com> domain name, but rather entered
into a dealer agreement with IMS on May 30, 2003, and that this agreement
clearly establishes that IMS and Braun retains the right to grant a privilege
of using the name IMS, and the IMS marks.
D. Respondent’s Additional Submissions
Respondent’s additional submission shows an advertisement for an
unrelated third party using the IMS mark.
FINDINGS
The panel finds that Complainant has
established a violation of the UDRP Policy warranting transfer of domain names <braunvan.com>,
<braunvans.com> and <braunminivans.com>, but not <imsminivan.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.
The Panel finds that the domain names <braunvan.com>,
<braunvans.com> and <braunminivans.com> are
identified as domain names that are identical to, or are confusingly similar to
Complainant’s federal registered trademarks.
Complainant does not have a federally registered trademark related to <imsminivan.com>.
Complainant claims it has registered the THE BRAUN CORPORATION mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,524,387 issued February 14, 1989) in connection with mobility products and related accessories for the handicapped. Complainant’s federal trademark registration demonstrates its rights in the THE BRAUN CORPORATION mark under Policy ¶ 4(a)(i). See Intel Corporation v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Morgan Stanley v. Fitz-James (CT2341-RSC) Cititrust Group Ltd., FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (“The Panel finds from a preponderance of the evidence that Complainant has registered its mark with national trademark authorities. The Panel has determined that such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).
Complainant also claims that the <braunvan.com>,
<braunvans.com> and <braunminivans.com> domain names
are confusingly similar to Complainant’s THE BRAUN CORPORATION mark, because
each contains the predominant portion of Complainant’s registered mark, omits
the terms “the” and “corporation,” and merely adds a term that describes
Complainant’s mobility products business.
The mere addition of common terms to Complainant’s marks in the disputed
domain names, as well as the omission of terms from Complainant’s registered
THE BRAUN CORPORATION mark, renders the domain names confusingly similar to
Complainant’s marks under Policy ¶ 4(a)(i).
See Amer. Express Co. v. MustNeed.com, FA 257901
(Nat. Arb. Forum Jun. 7, 2004) (finding the respondent’s <amextravel.com>
domain name confusingly similar to Complainant’s AMEX mark because the “mere
addition of a generic or descriptive word to a registered mark does not negate”
a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Space
Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding
confusing similarity where the respondent’s domain name combines the
complainant’s mark with a generic term that has an obvious relationship to the
complainant’s business); see also Am. Eagle Outfitters, Inc. v. Admin,
FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the
<americaneaglestores.com> domain name to be confusingly similar to the
complainant’s AMERICAN EAGLE OUTFITTERS mark).
Complainant has not established
that its unregistered IMS mark has generated secondary meaning sufficient for
it to establish common law rights in the mark under Policy ¶ 4(a)(i). See Molecular
Nutrition, Inc. v. Network News & Publ’ns, FA 156715 (Nat. Arb. Forum June 24, 2003) (finding that the
complainant failed to establish common law rights in its mark because mere
assertions of such rights are insufficient without accompanying evidence to
demonstrate that the public identifies the complainant’s mark exclusively or
primarily with the complainant’s products); see also Weatherford
Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (“Although
Complainant asserts common law rights in the WELLSERV mark, it failed to submit
any evidence indicating extensive use or that its claimed mark has achieved
secondary source identity . . . [Complainant’s claim that
it is well known] is a finding that must be supported by evidence and not
self-serving assertions.”).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant contends that because
the WHOIS information lists the registrant of the domain names as “Wayne
Loney,” and there is no other evidence in the record indicating that Respondent
is commonly known by any of the disputed domain names, Respondent is not
commonly known by any of the disputed domain names. Complainant also asserts that it has not authorized or licensed
Respondent to register or use domain names incorporating a variation of
Complainant’s THE BRAUN CORPORATION mark.
Respondent is not commonly known by the disputed domain names, and the
Panel finds that as to those disputed domain names, Respondent does not have
rights or legitimate interests in the domain names pursuant to Policy ¶
4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA
96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests
because the respondent is not commonly known by the disputed domain name or
using the domain name in connection with a legitimate or fair use); see also
Wells Fargo & Co. v. Onlyne Corp. Services11,
Inc., FA 198969 (Nat. Arb. Forum Nov. 17,
2003) (“Given the WHOIS contact information for the disputed domain [name], one
can infer that Respondent, Onlyne Corporate Services11, is not commonly known
by the name ‘welsfargo’ in any derivation.”).
Moreover, Complainant claims that Respondent has not actively used or
made demonstrable preparations to use the <braunvan.com>, <braunvans.com>,
and <braunminivans.com> domain names for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), because
the disputed domain names have not resolved to any content since Respondent
registered the domain names on October 21, 2002. Therefore, Respondent is passively holding the <braunvan.com>,
<braunvans.com>, and <braunminivans.com> domain names
and Respondent’s non-use of these domain names provides evidence that it lacks
rights or legitimate interests pursuant to Policy ¶ 4(c)(i) and Policy ¶
4(c)(iii). See Am. Home Prods. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19,
2001) (finding no rights or legitimate interests in the domain name
<solgarvitamins.com> where the respondent merely passively held the
domain name); see also TMP Int’l, Inc. v. Baker
Enters., FA 204112 (Nat. Arb. Forum Dec.
6, 2003) (“[T]he Panel concludes that Respondent's passive holding of the
domain name does not establish rights or legitimate interests pursuant to
Policy ¶ 4(a)(ii).”).
With respect to the Braun domain names, <braunvan.com>, <braunvans.com>,
and <braunminivans.com>, Respondent has not come forward with any
agreement with respect to those names, and those are within the UDRP policy,
and subject to jurisdiction of UDRP policy, ICANN Rules, and this panel. The panel finds that Complainant has established
that Respondent has no rights or legitimate interests in the Braun domain
names.
Respondent contends
that it is an authorized IMS and Braun dealer, and thus has rights or
legitimate interests in the domain names.
Complainant concedes that there is an agreement with Respondent regarding
IMS products. However, there is a
dispute over the authority pursuant to that agreement for Respondents to use
the domains in question. The panel
finds that with respect to the IMS domain name, <imsminivan.com>,
that the dispute between the parties appears to be contractual in nature, and
not within the jurisdiction of the UDRP.
The dispute between the parties thus also includes an issue based in
contract which is beyond the scope of the UDRP and cannot be the basis for the
transfer of the disputed domain names. See
Discover New England v. The Avanti Group, Inc. FA 123886 (Nat. Arb. Forum
Nov. 6, 2002) (finding the dispute outside the scope of the UDRP because the
dispute centered on interpretation of contract language and whether or not a
breach existed); see also
Thread.com, LLC v. Poploff, D2000-1470 (WIPO Jan. 5, 2001) (refusing to
transfer the domain name and stating that the ICANN Policy does not apply
because attempting “to shoehorn what is essentially a business dispute between
former partners into a proceeding to adjudicate cybersquatting is, at its core,
misguided, if not a misuse of the Policy”).
The Panel finds that it need not make a
determination on this issue regarding the domain name <imsminivan.com>
because the Complainant has not met its burden with respect to the first two
issues. With respect to the Braun
related domain names, <braunvan.com>, <braunvans.com>
and <braunminivans.com> the Panel finds that these domain names
were registered and are being used in bad faith.
Complainant alleges that Respondent has not used or made demonstrable preparations to use the <braunvan.com>, <braunvans.com> and <braunminivans.com> domain names for any purpose since Respondent registered them in 2002. The Panel finds that Respondent has been passively holding the disputed domain names for almost four years and that such conduct is indicative of bad faith registration and use under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Mondich v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith).
CONCLUSION
The panel finds that Complainant has established its rights to <braunvan.com>, <braunvans.com> and <braunminivans.com>, and directs that those domain names be transferred to Complainant.
The panel finds
that the <imsminivan.com> name is not subject to these
proceedings, and no order is made with respect to that domain name.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that relief shall be GRANTED
in part and it is Ordered that the <braunvan.com>, <braunvans.com>
and <braunminivans.com> domain names be TRANSFERRED
from Respondent to Complainant; no action is taken on the <imsminivan.com>
domain name and that domain name is not transferred.
David P. Miranda, Esq., Panelist
Dated: July 7, 2006
National
Arbitration Forum
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