DBAT, Inc. v. DOMAIN ADMINISTRATOR / NAME ADMINISTRATION INC. (BVI)
Claim Number: FA1501001598023
Complainant is DBAT, Inc. (“Complainant”), represented by Steven L. Rinehart, Utah, USA. Respondent is DOMAIN ADMINISTRATOR / NAME ADMINISTRATION INC. (BVI) (“Respondent”), represented by John Berryhill, Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dbat.com>, registered with UNIREGISTRAR CORP.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as a Panelist in this proceeding.
Jeffrey M. Samuels, Hon. Carolyn Marks Johnson, and David H. Bernstein, as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 2, 2015; the National Arbitration Forum received payment on January 2, 2015.
On January 5, 2015, UNIREGISTRAR CORP confirmed by e-mail to the National Arbitration Forum that the <dbat.com> domain name is registered with UNIREGISTRAR CORP and that Respondent is the current registrant of the name. UNIREGISTRAR CORP has verified that Respondent is bound by the UNIREGISTRAR CORP registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 6, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 26, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@dbat.com. Also on January 6, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on January 26, 2015.
An Additional Submission was received from Complainant on February 2, 2015.[1]
Respondent submitted a timely Additional Submission on February 9, 2015.
On February 5, 2015, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Jeffrey M. Samuels, Hon. Carolyn Marks Johnson, and David H. Bernstein, as Panelists.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant DBAT, Inc. makes and sells sporting goods through its distributor network across the U.S., Canada, and Europe. Complainant began making sporting goods equipment in 2000 and, over the past 15 years, has become one of the largest makers in the U.S. of baseball and other sporting goods products. Complainant incorporated with the Texas Secretary of State on April 5, 2001.
Complainant owns four U.S. trademark registrations (Nos. 3170787; 4554243; 2739839; and 4550060) for versions of the D-BAT mark. The registrations claim dates of first use in commerce for certain of the marks of October 1, 2001 and January 5, 2002. Complainant owns also the domain name dbat.net.
Complainant asserts that it has expended millions of dollars since 2000 marketing its family of products and has sold hundreds of thousands of D-BAT products.
Complainant maintains that, in addition to its registered marks, it also accrued common law rights in the D-BAT mark dating back to June 2001. In support of such assertion, Complainant submitted a copy of a cashier’s check from Complainant bearing the D-BAT mark, dated May 17, 2001, for $169,929, an invoice from May 16, 2001, evidencing sales using the D-BAT mark, an October 23, 2001, price list email by Complainant to a distributor making use of Complainant’s D-BAT mark, an invoice summary statement from Complainant bearing the mark dated December 17, 2001, miscellaneous invoices from 2001 bearing the D-BAT mark, and a photograph of Complainant’s warehouse in early 2001, prominently bearing the D-BAT mark. According to Complainant, the D-BAT mark is distinctive and well-known in the U.S.
Complainant asserts that the disputed domain name is confusingly similar to the D-BAT mark. It points out that the domain name wholly incorporates the D-BAT mark and that the addition of the .com gTLD “has long been held to be irrelevant for the purposes of the Policy.”
Complainant also argues that Respondent has no rights or legitimate interest in the disputed domain name. Complainant notes that the disputed domain name was registered on December 12, 2001, and asserts that it resolves to a landing page containing click-through ads for products of Complainant’s competitors.
Complainant contends that the registration of the domain name was for the purpose of depriving Complainant of use of the name and for the purpose of promoting products that compete with Complainant, tarnishing the Complainant’s mark and creating initial interest confusion. Complainant further contends that Respondent has offered the domain name for sale to Complainant.
With respect to the issue of “bad faith” registration and use, Complainant asserts that, by using the domain name, Respondent is intentionally attempting to attract for commercial gain Internet users to a website that generates revenue for Respondent vis-à-vis initial interest confusion. “In short, Respondent has sought to unjustly enrich itself by misappropriating Complainant’s goodwill and by creating a likelihood of confusion with Complainant.”
B. Respondent
Respondent first contends that the term “DB” is a standard acronym in the field of data processing. Respondent indicates that it monetizes the domain name in connection with subjects relating to databases.
Respondent accepts arguendo that Complainant has rights in the D-BAT mark for the manufacture and sale of baseball bats but contends that Complainant’s rights are not relevant to the subject matter with which the domain name has been associated by Respondent for nearly a decade and a half.
Respondent asserts that it is making a legitimate commercial use of the generic or descriptive meaning of the term “dbat.” It points the Panel to a number of generic and non-distinctive uses in the field of database administration and programming for the term “dbat” and notes that the disputed domain name resolves to a pay-per click lander showing pre-loaded search inquiries for access programmers, ASP databases, business databases, data processing, etc. According to Respondent, it “is perfectly within its rights to use a non-distinctive acronym in connection with subject matter connoted by the acronym in the field of databases.”
Respondent further indicates that its use of a non-distinctive acronym in association with subject matter to which it refers constitutes neither bad faith registration nor use of the domain name.
Respondent accuses Complainant of bad faith and requests the Panel, pursuant to Rule 15(e) to declare the Complaint abusive. Respondent alleges that Complainant, through counsel, has been willfully dishonest with Respondent and the Panel. Respondent presents evidence that Complainant threatened Respondent with a UDRP proceeding in 2009, and that on or about May 3, 2012, Respondent was contacted by an attorney from the Akin Gump law firm stating that he represented a client “who may be interested in purchasing the domain www.dbat.com.” In response, Complainant’s counsel was told that the domain name “is utilized in connection with advertising in the field of database technology.” In response to Respondent’s inquiry as to whether the attorney’s client possessed relevant trademark rights, Complainant’s counsel indicated that Complainant owned no rights to the dbat mark as associated with database services. Complainant’s then-counsel concluded his conversation with Respondent by indicating that if Respondent is not interested in selling, “case closed.”
Respondent maintains that it is classic laches to assert a claim and do nothing about it for six years and that this case presents facts that go well beyond laches in that Complainant expressly disclaimed any rights in connection with Respondent’s use of the domain name and indicated that the case was “closed.” Respondent asserts that “[t]here is no excuse to have brought [this complaint], and it is the capstone of unfounded harassment of the Respondent which the Complainant has been carrying on for far too long now.” Respondent claims that the Complaint is far from “complete and accurate,” as required by the Policy, and omits an express denial of the claim made by Complainant’s prior authorized representative.
C. Additional Submissions
In its Additional Submission, Complainant asserts that a complainant’s offer to buy a disputed domain is immaterial to an analysis under the Policy. Complainant also refers to a declaration, set forth in Exhibit A, from the Akin Gump attorney contradicting Respondent’s characterization of his talk with Respondent. According to the Akin Gump attorney, his sole intent and purpose in contacting Respondent was to determine its willingness to negotiate the sale of the disputed domain name. “At no point during the inquiry process was the intent to process a claim against Name Administrator.”
Complainant also takes issue with Respondent’s contention that the DBAT mark comprises only a commonly-known acronym and points to a number of reference materials in an effort to debunk Respondent’s claim.
Respondent’s Additional Submission contains evidence of a Google search for the terms “dbat” and “database,” which returned some 141,000 results that have nothing to do with Complainant, and reiterates that the character string “dbat” is and has been used as an acronym in connection with databases. The fact that the character string does not appear in the places noted by Complainant does not negate its presence and demonstrated use elsewhere, Respondent asserts.
Respondent notes that the UDRP “was intended as a lightweight administrative procedure and that “[t]his purpose is frustrated by failure of complainants to disclose what are highly material facts in its possession….”
Respondent indicates that had it sought to exploit Complainant’s D-BAT mark, the dbat.com website would be advertising baseball bats instead of a demonstrably used acronym in the database field.
The Panel finds that: (1) the disputed domain name is confusingly similar to the D-BAT mark; (2) Complainant has rights in the D-BAT mark; (3) the disputed domain name was not registered in bad faith; and (4) the complaint was not brought in bad faith and does not constitute an abuse of the administrative proceeding under Rule 15(e).
Paragraph 15(a) of 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; and
(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 concludes that the disputed domain name is confusingly similar to the D-BAT mark. The domain name incorporates in full the letters that comprise the D-BAT mark. The absence of a hyphen in the domain name and the inclusion of the “com” top-level domain do not support a contrary conclusion.
Given its finding with respect to the issue of bad faith registration, the Panel declines to address this element of the Policy.
The Panel concludes that Complainant has not met its burden of establishing that the disputed domain name was registered in bad faith. While the Panel finds that Complainant has rights in the D-BAT mark, the evidence does not support a determination that Respondent was aware of such rights at the time it registered the disputed domain name on December 12, 2001. Complainant’s U.S. trademark registrations (all of which were issued after 2001[2]) claim a date of first use in commerce no earlier than October 1, 2001, and Complainant asserts in its Complaint that it acquired common law rights in the D-BAT mark only as early as June 2001, which was only six months prior to the registration of the domain name. In the Panel’s opinion, the evidence relating to sales and advertising of the D-BAT mark by Complainant falls far short of that necessary to establish that, as of the date of registration of the dbat.com domain name, Respondent was likely aware of Complainant’s common law rights in the D-BAT mark.
In sum, the Panel finds that, at the time Respondent registered the disputed domain name, it is highly unlikely that Respondent had ever heard of, or was trying to profit from, Complainant’s then-young trademark. Further, Complainant has presented no evidence that Respondent’s site (including the pay-per-click links appearing thereon) has ever contained content related to the sporting goods industry or even to sports in general, nor is there any evidence that any of the links advertised products sold by Complainant’s competitors, which further undermines any assertion that the domain name was registered in bad faith in order to take advantage of Complainant’s trademark rights.
Bad Faith/Abuse of Administrative Proceeding
The Panel declines to find that the facts support a determination that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. While the Panel is sympathetic to Respondent’s objection that the Complaint was incomplete in its failure to refer to the prior communications between the parties, in view of the declaration submitted by Complainant’s former counsel, it does not believe that such failure was willfully dishonest and, in any case, does not find such correspondence particularly relevant.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <dbat.com> domain name REMAIN WITH Respondent.
Jeffrey M. Samuels (Chair)
Hon. Carolyn Marks Johnson
David H. Bernstein
Panelists
Dated: February 19, 2015
[1] Complainant’s Additional Response referenced various annexes but the text of such annexes did not appear with the Response. In an Order dated February 13, 2015, the Panel requested Complainant to re-submit the annexes to the Additional Submission no later than February 20, 2015. Complainant complied with such request.
[2] The complaint alleges that Registration No. 2739839 was issued on September 3, 1985 but the records of the United States Patent and Trademark Office indicate that such registration was issued on July 22, 2003.
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