The Braun Corporation v. Wayne Loney
Claim Number: FA0605000699652
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.
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.
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 firstname.lastname@example.org, email@example.com, firstname.lastname@example.org and email@example.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.
Complainant requests that the domain names <imsminivan.com>, <braunvan.com>, <braunvans.com> and <braunminivans.com> be transferred from Respondent to 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
all of which are collectively referred to as the “Braun marks”, and has applications pending or common law claims to the following:
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.
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.
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>.
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).
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.
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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