AA Portable Power Corp. v.
Kevin Li
Claim Number: FA0703000931648
PARTIES
Complainant is AA Portable Power Corp. (“Complainant”), represented by Raymond
G. Areaux, of Carver, Darden, Koretzky, Tessier, Finn,
Blossman & Areaux, LLC,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <batteryspace.com>, registered with Intercosmos
Media Group, Inc. d/b/a Directnic.com.
PANEL
The undersigned Panelists certify 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.
James Bridgeman, Chairman;
Diane Cabell, Panelist;
Hon. Carolyn Marks Johnson, Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint under the ICANN Uniform Domain Name
Dispute Resolution Policy (the “Policy”) to the National Arbitration Forum
electronically on March 2, 2007; the
National Arbitration Forum received a hard copy of the Complaint on March 5, 2007.
On March 6, 2007, Intercosmos Media Group, Inc. d/b/a Directnic.com
confirmed by e-mail to the National Arbitration Forum that the <batteryspace.com>
domain name is registered with Intercosmos Media
Group, Inc. d/b/a Directnic.com and that Respondent is the current
registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.com
has verified that Respondent is bound by the Intercosmos
Media Group, Inc. d/b/a Directnic.com registration agreement and has
thereby agreed to resolve domain-name disputes brought by third parties in
accordance with the Policy.
On March 8, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of March 28, 2007 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@batteryspace.com by e-mail.
A timely Response was received and determined to be complete on March 28, 2007.
Timely Additional Submissions were received from Complainant on April
2, 2007.
On April 4, 2007, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed a three-member Panel as follows:
James Bridgeman, Chairman;
Diane Cabell, Panelist;
Hon. Carolyn Marks Johnson, Panelist.
Subsequently timely Additional Submissions were received from
Respondent on April 10, 2007.
The Panel being unable to agree on an important issue of interpretation
of the Policy hereby makes a majority decision and the dissenting Opinion of
panelist Diane Cabell is annexed hereto.
RELIEF SOUGHT
Complainant requests that the domain name <batteryspace.com> be
transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
In the Complaint, Complainant states that in August of 2002,
Complainant hired Respondent as an online marketing manager responsible inter alia for the development of an
e-commerce business for Complainant. On
December 6, 2002, Respondent registered the domain name <batteryspace.com>
on behalf of Complainant for use in its planned e-commerce business. Unbeknownst to Complainant and without
Complainant’s authorization, however, Respondent listed himself, rather than
Complainant, as the registrant of <batteryspace.com>.
In December of 2005 when Respondent left Complainant’s employment,
Complainant realized for the first time that Respondent had registered the
domain name <batteryspace.com> in his own personal name rather
than in Complainant’s name.
When Complainant requested Respondent to transfer the registration of
the domain name <batteryspace.com> to Complainant, Respondent
initially agreed to transfer the registration.
Respondent also demanded payment of an additional bonus for his contribution
to set up Complaint’s e-commerce business, which bonus Complainant agreed to
pay. Complainant then requested
Respondent to transfer the registration.
At this point, Respondent demanded even more bonus money and, holding
the registration hostage, refused to transfer the registration. Complainant refused to pay the additional
money. Respondent has still failed to transfer the registration of <batteryspace.com>
to Complainant.
Complainant submits that the
domain name is identical or confusingly similar to a trademark or service mark
in which Complainant has rights. Complainant enjoys extensive common-law
trademark rights in the marks BATTERY SPACE, BATTERYSPACE, and BATTERYSPACE.COM
by virtue of Complainant’s use of these marks in connection with online retail
sales of batteries and electronic devices, including battery chargers, battery
analyzers, cases, bags, converters, connectors, wires, DC motors, flashlights,
halogen lamps, Universal Power Supply systems, binoculars, and telescopes on Complainant’s
website located at <batteryspace.com> since 2002. Complainant
displays said trademarks in a prominent manner on the web pages and also in the
title bar of the web browser. In this
fashion, Complainant uses said trademarks to identify the source of its online
retail services and to distinguish its services from online retail services
offered by others, thus creating common-law trademark rights.
In addition to the rights acquired by use of
said marks in connection with online retail sales, Complainant has further
acquired common-law trademark rights to the mark BATTERYSPACE.COM through its
use of the domain name <batteryspace.com> for more than four years
to display a website offering its batteries and various electronic devices for
sale. Complainant cites Gorstew Limited v. Superman, D2001-1103
(WIPO Nov. 5, 2001) in support of the proposition that “if a domain name has
accumulated a great deal of goodwill via
a popular website, and is used to sell products or services and identify their
source or advertise these products and services, then the domain name would at
least have achieved the status of a common law trademark.”
Complainant claims to have acquired a substantial goodwill through extensive promotion and advertising of its online retail services under said trademarks. Said trademarks have become famous and distinctive and are assets of incalculable value to Complainant.
In addition, Complainant owns and actively uses the domain name <batteryspace.com>
as its primary domain name and claims to be entitled to ownership of the domain
name registration.
Complainant claims that the <batteryspace.com> domain name
is identical to Complainant’s BATTERYSPACE.COM mark and is confusingly similar
to Complainant’s BATTERY SPACE and BATTERYSPACE marks. The slight differences between the <batteryspace.com>
domain name and Complainant’s BATTERY SPACE and BATTERYSPACE marks (to-wit: the
addition of a generic top-level domain (“gTLD”) and the elimination of the
space between the words
Complainant submits that Respondent has no rights or legitimate
interests in respect of the domain name that is the subject of the Complaint. Complainant submits that Respondent registered the domain name <batteryspace.com>
while he was an employee of Complainant for the sole purpose of developing
an e-commerce business for Complainant.
Respondent was not authorized by Complainant to register the domain name
<batteryspace.com> in his own name and therefore never possessed
any rights or legitimate interests in respect of the domain name <batteryspace.com>.
Complainant cites the decisions of the
panels in Sonic-Crest Cadillac, LLC v. Neil Hayes, FA 212652 (Nat. Arb. Forum Jan. 14,
2004) (“As an employee or agent of Complainant, Respondent knew that it had no
right to register the disputed domain names . . . and knew that any use of
these domain names would be illegitimate.”); Vinidex Pty. Ltd. v. Auinger,
AF-0402 (eResolution Oct. 18, 2000) (finding that the respondent, a former
employee of the complainant, lacked any rights or legitimate interests in the
disputed domain name because the respondent had constructive knowledge of the
complainant’s superior rights).
The domain name <batteryspace.com> has been used for more
than four years by Complainant – not by Respondent – to display a website
offering for sale Complainant’s batteries and various electronic devices. Accordingly, Respondent neither uses, nor has
made demonstrable preparations to use, the <batteryspace.com>
domain name in connection with a bona
fide offering of goods or services. Inasmuch as the website associated with <batteryspace.com>
is owned and operated by Complainant and has been so owned and operated for the
past four years, it is impossible for Respondent to have used or made
preparations to use <batteryspace.com> in connection with a bona fide offering of goods or services.
Furthermore, Complainant asserts that Respondent is not commonly known
by the <batteryspace.com> domain name. Complainant further asserts that on
information and belief, Respondent is known only by the name on the WHOIS
record for <batteryspace.com> viz. Kevin Li.
Complainant asserts that Respondent’s sole purpose for registering the domain name <batteryspace.com> in his personal name and thereafter refusing to transfer the registration to Complainant was, and continues to be, to use the domain name as leverage against Complainant. Such use is not legitimate commercial, noncommercial, or fair use under Policy ¶ 4(c)(iii). In support of this argument Complainant cites the decision of the panel in Pristine International Traders v. Pristine Financial Services LLC, FA 882258 (Nat. Arb. Forum Feb. 22, 2007) (finding that Respondent’s “holding the disputed domain name ‘hostage’ in order to lower the amount it owes to Complainant” was not a legitimate use under Policy ¶ 4(c)(iii)).
Complainant asserts that Complainant has never licensed nor otherwise authorized Respondent to use any of its trademarks or service marks for any purpose whatsoever.
Complainant submits that Respondent registered and is using the domain
name in bad faith. Respondent has no rights or legitimate
interests in <batteryspace.com>.
Respondent was employed by Complainant at the time that he registered
the domain name at issue and had full knowledge of Complainant’s intention to
use the domain name in connection with Complainant’s e-commerce business. In fact, Respondent was given the specific
task of registering <batteryspace.com> on behalf of Complainant,
not in his own name.
As a result,
Respondent plainly registered the domain name at issue in bad faith. See Policy ¶ 4(b)(iv); see
also Robilant & Associati SRL v.
Powerlab SNC, D2006-0991 (WIPO Oct. 5, 2006) (finding that Respondent’s
act of registering domain names in its own name, rather than in its client’s
name, was evidence of bad faith registration); Champion Innovation, Ltd. v.
Udo Dussling, D2005-1094 (WIPO Dec. 16, 2005) (stating that where
“Respondent was expected to register the Domain Name in the name of Complainant
[his employer]…the Respondent’s refusal to follow his employer’s instruction
and his registration of the Domain Name in his own name constitutes bad faith
registration.”); Cricket Techs., L.L.C. v. Martin, FA 311353 (Nat. Arb.
Forum Sept. 27, 2004) (“Since Respondent registered [the domain name in
dispute] within the scope of employment with Complainant, Respondent’s act of
registering the domain name in his individual name and providing his personal
contact information … is evidence that Respondent registered and used the
domain name in bad faith.”); Sonic-Crest Cadillac, LLC v. Hayes, FA
212652 (Nat. Arb. Forum Jan. 14, 2004) (holding that where Respondent
“registered the disputed domain names on behalf of and with instructions from
Complainant, but registered them in the name of Respondent’s entity . . .
Respondent’s registration of the disputed domain names for any entity other
than Complainant is evidence of bad faith.”).
Further evidence
that Respondent has used <batteryspace.com> in bad faith is found
in Respondent’s demand for monetary compensation in exchange for the transfer
of the domain name to Complainant’s control.
See Robilant, & Associati SRL v. Powerlab SNC,
D2006-0991 (WIPO Oct. 5, 2006) (“preparedness to sell the disputed names … to
the Complainant … at an excessive price…[is] sufficient to satisfy the
circumstances of paragraph 4(b)(i) [of the Policy]); Dynojet
Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that
respondent demonstrated bad faith when he requested monetary compensation
beyond out-of-pocket costs in exchange for the registered domain name); Sonic-Crest,
Cadillac, LLC v. Hayes, FA 212652 (Nat. Arb. Forum Jan. 14, 2004).
Complainant argues
that the fact that Respondent has not yet used the domain name in a manner
adverse to Complainant does not absolve Respondent. See Aloe
Vera of Am., Inc. v. Norins, FA 97291 (Nat. Arb. Forum July 3, 2001); see
also
Phat Fashions, LLC v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000); Blemain Group v. Frost,
D2006-0871 (WIPO Aug. 29, 2006).
In the present
case, the “unspoken threat of future misuse” is plain. With his control of the domain name,
Respondent has the ability at any time to, inter alia, change the DNS
name server information and disrupt the operation of Complainant’s website.
As in Champion
Innovation, Robilant, Sonic-Crest and the other cases cited above,
Respondent herein is nothing more than a recalcitrant ex-employee who
registered a domain name in his own name without the knowledge, consent, or
authorization of his employer.
Complainant
submits that for all the reasons discussed above, Respondent’s failure to
transfer control of <batteryspace.com> to Complainant is clear
proof of Respondent’s bad faith registration and use of the domain name.
Respondent’s Preliminary
Submissions as to Jurisdiction of Panel
In his Response,
Respondent submits that this is not a cybersquatting case at all. Rather, this is a breach of contract and breach
of fiduciary duty dispute between former partners. Respondent submits that Complainant’s grounds
for relief are beyond the purview of the Policy and should be addressed to a
court. Respondent cites Latent Technology Group v. Fritchie, FA 95285 (Nat. Arb. Forum Sept. 1,
2000).
Respondent claims that
the contractual relationship between the Parties is markedly different in
nature from those represented in the Complaint. Respondent is an e-commerce developer and when
Complainant sought to expand its business to the online world, the parties
entered into an oral agreement, which provided that Respondent would: register
in his name, a domain name; develop an e-commerce website; promote it and
license the site’s use by the Complainant for the duration of the contract. Accordingly, the domain name was registered in
Respondent’s name, but was configured in a way that the domain has pointed, and
still points, to Complainant’s DNS servers.
Respondent states that
at all times Complainant alone has determined and continues to determine the
contents displayed on the website established at the <batteryspace.com> domain
name address.
Complainant has paid
Respondent only a fraction of the amount owed for his work. Although Respondent, being the registrant, is
able to change the domain’s DNS settings, he has not done so despite
Complainant’s breach of their contract. In
so doing, Respondent has shown willingness to allow Complainant additional time
and opportunities to keep its end of the bargain. In so doing, Respondent has demonstrated good,
not bad, faith.
In addition to direct
monetary compensation, the parties also agreed that Complainant will issue
Respondent options for 10% of its shares. Complainant, however, did not deliver, and
also refused to reduce the oral understandings to writing. That is another reason why Complainant cannot
support any of its claims with written documents shedding light on the scope
and content of the parties’ business relations.
The only arguable reason
that Complainant is seeking relief in this forum is that the property at issue
is a domain name citing Thread.com, LLC
v. Poploff, D2000-1470
(WIPO Jan. 11, 2001); Discover New
England v. Avanti Group, Inc. FA 123886 (Nat. Arb. Forum Nov. 6, 2002)
(finding the dispute outside the scope of the Policy because the dispute
centered on the interpretation of contractual language and whether or not a
breach occurred); Sadoun v. Shoham,
FA 206314 (Nat. Arb. Forum Jan. 6, 2004) (finding that the case’s issues
“exceed the scope of the […]
Policy. The parties admit a prior relationship in the
business but disagree as to that relationship. Respondent [Shoham] may
have engaged in fraudulent conduct in its dealings with the registrar to the
domain name. Respondent stated an intent to bring
suit over the ownership issues. These issues are breach of contract and
breach of fiduciary issues between the parties and they are matters to be
determined in a court of law and not by a UDRP Panel”).
Even had Respondent been
contractually required to transfer the disputed domain name to Complainant
(which is not the case), he would still have a right to hold the domain name
registration as security until he is paid in full for the services performed. See Clinomics
Biosciences, Inc. v. Simplicity Software, Inc., D2001-0823 (WIPO Aug. 28,
2001) (declining to rule on the merits after finding that the dispute centered
on whether Respondent could retain control of a domain name as security for
payment for web design work, a subject matter within the law of liens, and
outside the scope of the UDRP Policy). UDRP panels have declined to intervene even in
cases where respondents did not contest complainants’ claim of domain name
ownership. See CMM, LLC v. Seckinger FA 340359 (Nat.
Arb. Forum Dec. 6, 2004) (“[T]he dispute involves contractual issues. The
dispute is not over who is entitled to the domain name. Respondent agrees
that Complainant is entitled to it. The only issues are whether
Complainant owes Respondent money for registering and holding this domain name
for Complainant and whether holding the domain name as security is appropriate.
Both questions are contractual agreement issues”).
Respondents Submissions
on Substantive Issues
Addressing the tests set
out in the Policy, Respondent submits that Complainant has absolutely no
trademark rights in any of the three terms mentioned in the Complaint. Complainant admits its purported mark is not
registered anywhere in the world, but contends that it acquired common law
rights.
Respondent refers to the
WIPO Overview of WIPO Panel Views on
Selected UDRP Questions and in particular to the consensus view of what is
required of a complainant to successfully assert common-law or unregistered
trademark rights. Respondent refers to
the consensus view that “complainant must show that the name has become a
distinctive identifier associated with the complainant or its goods or
services. Relevant evidence of such
‘secondary meaning’ includes length and amount of sales under the mark, the
nature and extent of advertising, consumer surveys and media recognition.”
Respondent submits that
Complainant has not provided any evidence of the volume of sales associated
with its purported mark or its advertising expenditure. Complainant did not sell under the term “BatterySpace”
on the site’s main page and marketing pages. The disputed domain name was just one of three
mirror sites Complainant used in business: <batteryspace.com>,
<bydusa.com> and <powerizer-usa.com>.
Complainant no longer
uses either <bydusa.com> or <powerizer-usa.com>. Printouts submitted by Complainant as annexes
to the Complaint focus on the site’s forum pages, rather than the marketing
pages, because its purported mark can’t be found there. The “discussions” on the forum pages are by
unidentified individuals using pseudonyms, who may or
may not be authentic customers or would-be customers. Complainant offers no evidence of
distinctiveness or secondary meaning.
The evidence supplied by
Complainant is not sufficient to establish Complainant’s claimed common law
rights in the marks, citing Prime
Connections, LLC v. Covanta Corp.,
FA 817103 (Nat. Arb. Forum Dec. 18, 2006) and Molecular Nutrition, Inc. v. Network News
& Publications, FA
156725 (Nat. Arb. Forum June 24, 2003)
Complainant’s failure to
demonstrate that an unregistered putative mark has acquired the necessary
distinctiveness and secondary meaning is fatal to its case citing Rivkin v. American European Marketing, FA 849015 (Nat. Arb. Forum Jan. 11,
2007).
Complainant does not
(and cannot) allege any commercial use of the mark which predates Respondent’s
registration. On the contrary, it
claimed that it had gained trademark rights as a result of the term being
displayed on the website. But no term
could have been displayed on that website until after the registration of the
disputed domain name. And the Complaint
does not allege any offline use of the term in commerce, before or after the
registration. Since Complainant’s
alleged trademark rights did not commence prior to Respondent’s registration of
the disputed domain name, the Panel may find that Complainant cannot establish
Policy ¶ 4(a)(i) under the holdings of prior decisions
under the Policy. YourTurf, Inc. v. Gowan, FA 462460 (Nat.
Arb. Forum May 30, 2005).
Respondent claims to
have rights and legitimate interests in respect of the domain name,
specifically, under ¶ 4(c)(i). Before any notice to Respondent of the
dispute, Respondent’s use of the domain name is in connection with a bona fide offering of goods. Pursuant to the contract between the parties,
Respondent has been using the domain name to direct visitors to Complainant’s
DNS servers, which Complainant in turn uses to sell its own merchandise. The goods offered on the site are
Complainant’s goods and are offered by Complainant. As long as the domain name’s DNS settings
point to Complainant’s website, Complainant alone is responsible for the
content it displays. This use of the
domain began as part of the agreement and the Complaint acknowledges that. The time to issue a ¶ 4(c)(i)
notice is prior to the beginning of use, not after relations between the
parties soured. Mirama Enters. Inc v. Gorman, FA 588486 (Nat. Arb. Forum Jan. 16, 2006).
Respondent asserts that
for there to be a violation of Policy ¶ 4(a)(iii), a
respondent must register and use a domain name in bad faith. Since
Complainant concedes Respondent registered the disputed domain name pursuant to
an agreement between the parties it follows that Respondent did not register
the domain name in bad faith.
Since Complainant’s
alleged trademark rights post-date the disputed domain name registration, panels
have found that “the trademark must predate the domain name” pursuant to Policy
¶ 4(a)(iii) for the domain name to have been registered and used in bad faith.
See Ode v. Intership Ltd.,
D2001-0074 (WIPO May 1, 2001); see also Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc.,
D2000-0174 (WIPO May 26, 2000) (finding no bad faith where Respondent
registered the domain prior to Complainant’s use of the mark); see also Open Sys. Computing AS v. degli Alessandri,
D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith where Respondent
registered the domain name in question before application and commencement of
use of the trademark by Complainant); see
also YourTurf, Inc. v. Gowan FA 462460 (Nat. Arb. Forum May 30, 2005); see
also Creative Paradox LLC v. Talk Am.,
FA 155175 (Nat. Arb. Forum June 23, 2003) (finding no bad faith registration of
the domain name where the Panel found evidence that Respondent was authorized
to register the disputed domain name by Complainant).
C. Complainant’s Additional
Submissions
In its Additional
Submissions, Complainant submits that this dispute falls within the purview of
the Policy.
In addition to the
above-cited problems with Respondent’s allegations, the decisions cited by
Respondent are taken out of context and should be given no weight. Respondent goes to great lengths to trumpet
the number of times Latent Technology
Group v. Fritchie, FA 95285 (Nat. Arb. Forum Sept. 1, 2000) and The Thread.com LLC v. Poploff, D2001-1470
(WIPO Jan. 5, 2001) have been cited.
However, neither of these decisions is applicable to the dispute at hand
because they did not involve the employer-employee relationship found in the
present case. Complainant made detailed
submissions distinguishing the decisions in said cases. In Latent Technology Group v. Fritchie, FA 95285 (Nat. Arb.
Forum Sept. 1, 2000), the respondent owned the domain name <sooiee.com>
prior to his employment with the complainant, and respondent had already
developed <sooiee.com> into a commercial venture prior to his employment
by the complainant; in The Thread.com,
the respondent was a co-founder of the complainant and was the President of the
complainant at the time the domain name in question was registered; Discover New England v. Avanti Group, Inc.,
FA 123886 (Nat. Arb. Forum Nov. 6, 2002) involved a licensing agreement between
the complainant and the respondent for the trademark at issue, the resolution
of which would have been dispositive of the domain name dispute; in Sadoun v. Shoham, FA 206314 (Nat. Arb.
Forum Jan. 6, 2004), the parties admitted to a “prior business relationship,”
the nature of which was apparently in dispute and which, importantly, involved a
question of ownership of the complainant.
Complainant submits the
cases related to security rights are inapposite as it is well settled that,
barring some contractual provisions to the contrary, the actions of an employee
inure to the benefit of his employer if performed during the course and scope
of his employment. In the present
dispute, Respondent has provided no evidence of any agreement warranting the
attachment of security rights to the domain name and is not entitled to hold
his former employer’s property ransom as security for the payment of wages.
The only relationship
that has ever existed between Complainant and Respondent was that of Employer
and Employee. Complainant has submitted
copies of Respondent’s W-2 forms from 2002 through 2005; a document evidencing
Respondent’s H1B1 non-immigrant professional work visa; an exemplary pay stub
showing Complainant withholding taxes from Respondent’s wages; and a copy of
the W-4 form filled out by Respondent as evidence of the nature of the relationship.
Complainant submits that
it is simply beyond belief that Complainant would give Respondent – a temporary
non-immigrant employee – the authority to register in Respondent’s name the
very domain name upon which Complainant’s business depends, and Respondent has
provided no proof supporting this outlandish claim.
Moreover, it should be
noted that Respondent has not explicitly disputed Complainant’s description of
Respondent as being an employee at the time the domain name was
registered. Rather, Respondent has
alluded to a relationship between Complainant and Respondent of a more equal
nature than that of employer and employee – i.e., that of vendor and vendee;
however, for the reasons just stated, any such allusion is nothing more than a
self-serving characterization on the part of Respondent in an attempt to escape
the jurisdiction of this panel.
Further evidence that
Respondent has never “licensed” the domain name to Complainant is found in the
simple fact that Complainant not only paid the registration fee for the Domain
Name, but also paid all advertising costs. Complainant submitted a copy of the record of
payment of registration fee and record of promotional costs all paid with
Complainant’s credit card as an annex to the Complaint. It is simply unfathomable that Complainant
would enter into this alleged “licensing” scheme to use a domain name that it
paid for and promoted.
Complainant has spent
over $97,000 on advertising said marks incorporating the words “battery” and
“space” on Yahoo and over $202,000 on advertising said marks incorporating the
words “battery” and “space” on Google and has submitted evidence of expenditure
as an annex to the Additional Submissions.
Moreover, from December of 2002 through the end of 2005, Complainant generated
over $6.2 million in revenue via the
website associated with <batteryspace.com>. Complainant submitted a sales report setting
out said sales as an annex to the Additional Submission.
Furthermore, Complainant
submitted a printout illustrating that a simple search on Google using the
terms “rechargeable battery,” returns a result page with a sponsored link for
WWW.BATTERYSPACE.COM at the top of the page.
Complainant submits that these simple facts, in combination with the
assertions made in Complainant’s original Complaint, are more than sufficient
to show that Complainant has developed an extraordinary amount of goodwill, and
consequently valuable trademark rights, in said marks incorporating the words
“battery” and “space.”
Complainant denies that
it has only used the term “Powerizer” on its main page and marketing pages, not
only on the home page, but also on many other pages associated with
Complainant’s business. The service mark BatterySpace.com is prominently
displayed in the title bar of the viewer’s web browser and as Respondent
correctly notes, the service mark BATTERYSPACE is also displayed on
Complainant’s forum pages
Complainant submits that
the decision in YourTurf, Inc. v. Your Turf c/o Bill Gowan, FA 462460 (Nat. Arb. Forum May 30, 2005) along with other
decisions employing similar reasoning, has arguably read requirements into ¶
4(a)(i) that were never intended to be there.
Specifically, the panel in YourTurf found that a complainant’s
trademark rights must exist prior to a respondent’s registration of a disputed
domain name to satisfy ¶ 4(a)(i). However, ¶ 4(a)(i)
requires only that a “domain name [be] identical or confusingly similar to a
trademark or service mark in which the complainant has rights….”
Nowhere does the Policy
state when the complainant’s rights in the mark must attach. Complainant relies on the reasoning applied
by the panel in Consejo de Promocion
Turistica de Mexico, S.A. de C.V. v. Latin America Telecom, Inc.,
D2004-0242 (WIPO July 19, 2004) and articulated in Cole v. Skipper, D2003-0843 (WIPO Jan. 20, 2004). ExecuJet Holdings Ltd. v. Air Alpha Am., Inc., D2002-0669 (WIPO
Oct. 7, 2002); Travant Solutions, Inc. v.
Cole, FA 203177 (Nat. Arb. Forum Dec. 6, 2003).
Complainant has provided
ample proof that its rights in said marks incorporating the words “battery” and
“space” existed at the time the Complaint in this dispute was filed, thereby
satisfying ¶ 4(a)(i) of the Policy.
D. Respondent’s Additional
Submissions
In additional submissions, Respondent inter alia challenged the admissibility
of Complainant’s additional submissions as he asserts that Complainant took the
opportunity to supplement the Complaint rather than limiting itself to
addressing the issues raised in the Response.
Furthermore Respondent asserted the principle
that Complainant should not succeed because it had no established trademark
rights at the time the domain name was registered citing Ode v. Intership,
D2001-0074 (WIPO May 1, 2001), where it was held that there are ample authorities
supporting the view that a trademark that did not exist at the time the
disputed domain name was registered cannot serve as the basis for a claim under
the Policy and that Complainant must prove that its rights pre-date
Respondent’s registration of the domain name in dispute.
FINDINGS
Having considered the submissions of the parties
and the evidence adduced, the majority of the Panel finds:
That Complainant has established common law trademark rights in the
marks BATTERY SPACE, BATTERYSPACE, and BATTERYSPACE.COM through use of said
marks in online retail sales of batteries and electronic devices, including
battery chargers, battery analyzers, cases, bags, converters, connectors,
wires, DC motors, flashlights, halogen lamps, Universal Power Supply systems,
binoculars, and telescopes on Complainant’s website located at <batteryspace.com>
since 2002;
That the domain name in dispute is identical to Complainant’s common law trademarks BATTERY SPACE, BATTERYSPACE, and BATTERYSPACE.COM;
That
Respondent was engaged by Complainant in a contract of employment to develop
its online sales business;
That Respondent registered said domain name at the request of
Complainant;
That it was always the intention of Complainant that it should be the
owner of the domain name <batteryspace.com> but Respondent
registered said domain name in his own personal name without the knowledge or
authority of Complainant;
That Respondent has no rights or legitimate interest in said domain name and Respondent registered and is using said domain name in bad faith.
DISCUSSION
Preliminary Issue relating to
Jurisdiction of the Panel
Regarding the preliminary issue the Panel rejected Respondent’s
submissions that the dispute was outside the jurisdiction of the Panel. It was accepted that the Policy is not a
general domain name dispute resolution process and many disputes relating to
domain names are more appropriately dealt with in a court of competent
jurisdiction. The Panel however is of
the view that it is not sufficient for a respondent merely to set up a contract
issue to oust the jurisdiction of a panel established under the Policy.
In casu there is a discrete issue relating to the
ownership of the registration of the domain name in dispute that is within the
jurisdiction of this Panel.
Preliminary Issue relating to
Admissibility of Complainant’s Additional Submissions
The Panel has considered the submissions made by Respondent that the
Panel should not consider the content of the Additional Submissions filed by
Complainant, as Complainant should not be entitled to bring additional evidence
in Additional Submissions.
In the view of the Panel, the Additional Submissions may be admitted
and considered as there is no prejudice to Respondent and Respondent
subsequently had the last word by filing Additional Submissions that were
admitted.
Substantive
Issues
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 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 Respondent is
identical or confusingly similar to a trademark or service mark in which
Complainant has rights;
(2) 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 failed to agree on the substantive issues and the dissenting
Opinion of Panelist Diane Cabell is annexed hereto
The majority of the Panel accepts that Complainant had provided
sufficient evidence to establish that it has common law rights in the
trademarks and service marks relied upon.
The majority takes the view that the domain name in dispute is
identical to Complainant’s common law trademarks BATTERY SPACE, BATTERYSPACE,
and BATTERYSPACE.COM.
The majority of the Panel takes the view that the first element of the
Policy only requires Complainant to establish that the domain name in issue is
identical or confusingly similar to a trademark or service mark in which
Complainant has rights and it not necessary that such rights should have been
acquired at the time of registration of the domain name.
This is a view accepted by the majority of panelists according to ¶ 1.4 of the WIPO Overview of Panel Decisions
referred to by Respondent.
In the circumstances the majority of the Panel accepts that Complainant
has satisfied the first element of the test in Policy ¶ 4(a).
Respondent claims to have rights or a legitimate interest in the domain
name. In particular he asserts under ¶
4(c)(i) that before any notice to Respondent of the
dispute, Respondent has used the domain name in connection with a bona fide offering of goods. Respondent claims that pursuant to the
contract between the parties, Respondent has been using the domain name to
direct visitors to Complainant’s DNS servers, which Complainant in turn uses to
sell its own merchandise. Such use of
the domain began pursuant to an agreement between Complainant and Respondent.
On the evidence Respondent has no rights or legitimate interests in the
domain name. There is a clear conflict
of evidence as to the nature of the relationship that existed between the parties
at the time the domain name was registered and subsequently, and as to what was
agreed between the parties in relation to payments and remuneration of
Respondent.
The majority of this Panel takes the view that at all
material times Respondent was an employee of Complainant. This was initially denied by Respondent but
Complainant provided compelling evidence of Respondent’s status as an employee
in copy documentation annexed to its Additional Submissions viz. copies of Respondent’s W-2 forms
from 2002 through 2005; document evidencing Respondent’s H1B1 non-immigrant
professional work visa; an exemplary pay stub showing Complainant withholding
taxes from Respondent’s wages; and a copy of the W-4 form filled out by
Respondent.
The majority of this Panel accepts Complainant’s submissions that it is
most unlikely that Complainant would have agreed to have the domain name
registered in the name of one of its employees. Furthermore the majority of this Panel accepts
Complainant’s submissions that Respondent could not acquire any rights in the
domain name in such circumstances. Respondent had no reason to use the domain
name himself. He registered the domain
name in his own name without the knowledge of his employer and used
Complainant’s credit card to pay for the registration.
The majority of this Panel is satisfied that Respondent registered the
domain name in bad faith by registering the domain name in his own name rather
than that of his employer. He was
requested to register the domain name by his employer. He was aware that his employer intended to use
the domain name for its Internet business. He used his employer’s credit card to pay for
the registration. In the view of the
majority of this Panel Respondent would have been well aware that Complainant
did not intend that such an important registration should be registered in the
name of an employee.
On the balance of probabilities the majority of the Panel is of the
view that Respondent registered the domain name primarily for the purpose of
selling, renting, or otherwise transferring the domain name registration to Complainant
for valuable consideration in excess of his documented out-of-pocket costs
directly related to the domain name.
The majority of this Panel is satisfied that Respondent’s claim to be
entitled to hold onto the registration as security for a debt, in the
circumstances outlined above, amounts to a use of the domain name in bad faith.
Respondent is using the domain name in
bad faith by his continued refusal to transfer the domain name to Complainant.
In the view of the majority of this Panel therefore Complainant has
satisfied all elements of the test in the Policy and is entitled to succeed.
DECISION
The majority of the Panel concludes that having established all three
elements required under the ICANN Policy, relief shall be GRANTED.
Accordingly, it is Ordered that the <batteryspace.com> domain name be TRANSFERRED
from Respondent to Complainant.
James Bridgeman,
Chairman
_________________________
Hon. Carolyn Marks Johnson, Panelist.
Dissenting Opinion of Diane Cabell
This Panelist is of the
opinion that trademark rights must pre-exist the domain registration if a mark
owner's claim is to be successful. This
domain was registered by an employee in his own name, a fact that the majority
holds to be bad faith, but I do not. In
my opinion, bad faith registration only exists when there is some attempt to
unfairly trade on a mark, in a fashion that parallels trademark infringement as
closely as possible. As Complainant had
no trademark rights at the time of registration, I cannot find that the
employee intended to target the employer in any manner suggested by Policy ¶ 4(b).
Diane Cabell, Panelist
Dated: April 23, 2007
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