DECISION

 

Julius-K9 Bt. V. Deborah DeFosses / Sky Dog Press

Claim Number: FA1507001628195

 

PARTIES

Complainant is Julius-K9 Bt. (“Complainant”), represented by Alexander S. Lazouski of Lazouski IP LLC, Florida, USA.  Respondent is Deborah DeFosses / Sky Dog Press (“Respondent”), represented by Carlos A. Leyva, Rhode Island, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <julius-k9.us> and <juliusk9.us>, registered with FastDomain Inc.

 

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.

 

Michael Albert as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on July 9, 2015; the Forum received payment on July 9, 2015.

 

On July 10, 2015, FastDomain Inc. confirmed by e-mail to the Forum that the <julius-k9.us> and <juliusk9.us> domain names are registered with FastDomain Inc. and that Respondent is the current registrant of the names.  FastDomain Inc. has verified that Respondent is bound by the FastDomain Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On July 14, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 13, 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@julius-k9.us, postmaster@juliusk9.us.  Also on July 14, 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 August 12, 2015.

 

On August 17, 2015, an Additional Submission was received from Complainant.  On August 22, 2015, an Additional Submission was received from Respondent.

 

On August 14, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Michael Albert as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

 

Complainant owns U.S. Trademark Registration No. 4231932 for JULIUS K9  (the “JULIUS K9 Mark”), registered for goods that include clothing for animals; harness fittings; dog collars and muzzles; and other pet-related gear and related sports gear.

 

Complainant alleges that it is a manufacturer of harnesses for dogs and dog training accessories; that it was formed in 1997 and has a presence in the United States, regularly engages in sales of goods in the United States, and maintains an office and a subsidiary US-based company Julius K9 LLC in Tampa, Florida.

 

Respondent has not been known by the domain name or by the “JULIUS K9” name or mark.

 

On February 16, 2010, Respondent registered the disputed domain names and began selling Complainant’s dog harnesses and dog training accessories, using the disputed domain names.

 

The domain name <juliusk9.us> is being redirected to a website located at <julius-k9.us>.

 

On May 14, 2010, Respondent entered into a Dealer’s Agreement (“Agreement”) with Complainant’s subsidiary K9-Sport Kft, which provided (inter alia) that the Dealer could not use trademarks, domains, or brands “that injure K9-Sport Kft’s interests,” specifically defined to include domain names that contain the phrases “K9” or “K-9” and that Complainant could claim to have any such domains transferred to itself or a third party.

 

Complainant did not authorize Respondent to operate, maintain, or register the

Disputed Domain Names in Registrant’s name.

 

On September 30, 2014, Complainant contacted Respondent, informing her that she has no rights or legitimate interests in respect of the Domain Names and requesting their transfer.  She refused to comply.  On January 5, 2015, Complainant officially notified Respondent’s registrar and hosting service provider Bluehost Inc. (“Bluehost”) that Respondent’s website contained materials that are direct copies of Complainant’s works protected by

Copyright.  Bluehost suspended access to Respondent’s web sites.

 

Complainant has learned that Respondent has registered several other domain names containing the terms “Julius” and “k9” or “k-9”.

 

Complainant alleges that Respondent registered and has used these domain names in bad faith and in an attempt to “corner the market” on domain names that reflect the JULIUS K9 mark, and has attempted to pass herself off as Complainant on several web sites including on an Amazon.com-based store on which she identifies herself by the handle “Julius-K9.”

 

 

 

 

B. Respondent

 

Respondent alleges that she was, and indeed still is, a duly-authorized distributor of Complainant’s products and licensee of Complainant’s trademarks, who registered the disputed domain names pursuant to authorization provided by Complainant (as reflected in the Dealer’s Agreement).  She alleges that Complainant now seeks to shut down her business in order to sell directly into the U.S. market, in violation of the Agreement.

 

Respondent alleges that Complainant does not own rights in the Julius K9 mark, which was not registered until after the business relationship between the parties began in May 2010 and after expressly authorizing and encouraging Respondent to register the disputed domain names.  Respondent submits extensive evidence regarding the formation of the relationship between the parties in 2010, during the course of which Respondent appears to have become a U.S.-based dealer of Complainant’s products and to have registered domain names for that purpose.

 

Respondent alleges that she was authorized by Complainant both to sell its products online and to register domain names toward that end; and that Complainant, by its conduct, has waived any contrary contractual language.

 

Respondent further alleges that this dispute is not a matter appropriate for resolution under the Policy, but rather is a contract dispute appropriate for resolution by a court of competent jurisdiction.

 

Lastly, she alleges that Complainant has engaged in reverse domain-name hijacking (“RDNH”).

 

 

 

C. Additional Submissions

Complainant’s additional submission contends that the UDRP[1] is an appropriate forum for resolution of this dispute because there is no request for resolution of a contract dispute, but simply of the question whether the domain names were registered and used improperly.  Complainant further contends that it “effectively” terminated the Distributorship Agreement on October 27, 2014.

 

Complainant admits Respondent was a reseller but argues that a reseller does not acquire legitimate rights or interests in a manufacturer’s mark merely because  it moves the goods in trade.  As to whether the distributor can own a domain name containing the mark, Complainant points to the three-part test set forth in Oki Data Americas, Inc v. ASD, Inc., WIPO Case No. D2001-0903, i.e.:

- The Respondent must actually be offering the goods or services at issue;

- The Respondent must use the site itself to sell only the trademarked goods;

- The site must accurately disclose the registrant’s relationship with the trademark owner; and

- The Respondent must not try to corner the market in all domain names,

thus depriving the trademark owner of reflecting its own mark in a domain name.

 

Complainant argues Respondent does not meet this test because she made false statements about her relationship with Complainant, and tried to corner the market in domain names containing Complainant’s mark.

Complainant further argues that, while its U.S. trademark registration post-dates the relationship between the parties, its first use in commerce goes back far earlier, to 2005, and therefore it owned trademark rights in the Julius K9 mark long before Respondent began using it.

 

Lastly, Respondent suggests that the requirement to show both registration and use in bad faith is not “binary” and that in some cases bad faith can be found based solely on bad faith “use,” subsequent to a good-faith registration.

 

Respondent’s additional submission argues, first, that there has been no clear and unambiguous termination of the Dealer Agreement.  The referenced document states only: “we hereby interrupt our business operations with your company with immediate effect.”  Whether that language was intended to, and effectively accomplished, termination of the Dealer Agreement to which it did not expressly refer, Respondent argues, is a matter of contract interpretation to be left to a court of competent jurisdiction, not one that can be resolved under the relatively streamlined procedure of the UDRP that lacks provisions for discovery, resolution of ambiguous contractual language, and the like.

 

Respondent next argues that Complainant did not have rights in the mark prior to registration, because Complainant has not established that it engaged in any U.S. based commerce in connection with the mark prior to the date that the parties entered into the Dealer Agreement.

 

Next, Respondent takes issue with Complainant’s Oki Data analysis, contending that, under that test, use is legitimate if, prior to commencement of a dispute, Respondent used the domain name in connection with a bona fide offering of goods or services; and that here it is undisputed that Complainant authorized Respondent to distribute its products starting in May 2010.  Such use was bona fide because: (1) Respondent sold Complainant’s goods on the Internet for four years prior to notification of a dispute; (2) Respondent sold only Complainant’s goods and not those of any other competitor; (3) Respondent did not claim to be the manufacturer. Although she used the Julius K9 mark, she did so either (a) prior to Complainant’s acquiring its trademark rights and/or (b) with Complainant’s acquiescence; and (4) she did not attempt to “corner the market” in all domain names but simply sought to incorporate the mark in a handful of domain names to reflect the parties’ joint venture.

 

Finally, Respondent argues that she has been “known by” the domain names for many years, with Complainant’s knowledge and acquiescence.

 

FINDINGS

Commercial disputes of this nature and complexity are not well-suited to the streamlined UDRP process provided for under the Policy, which is largely devoted to clear-cut cases of cybersquatting.

 

That said, this Panel will not simply rest on the above generalization to conclude, ipso facto, that no relief can be awarded.  A closer examination of the issues in question is necessary before a conclusion can be reached as to whether the Policy mandates relief.

 

A few basic issues are in dispute that underlie much of the analysis.  First, Respondent suggests that Complainant never obtained any trademark rights until it sought and obtained federal registrations for its mark.  That contention is incorrect.  It is well established that, in the United States, trademark rights accrue to the first commercial user of a mark in connection with the goods and services as to which trademark rights are claimed, regardless of whether those rights are registered with the United States Patent and Trademark Office.  Here, Complainant has proffered evidence sufficient to indicate that it has been making commercial use of the mark since 2005.  The evidence is not overwhelming, but it meets the minimal threshold for such a showing and has not been rebutted by Respondent. 

 

Complainant, on the other hand, places undue weight in its argument on the Dealer Agreement to establish Respondent’s alleged lack of right, interests, or good faith in registering and using the disputed domain names.  While it is true that the Agreement purports to preclude Respondent from using domain names that injure Complainant’s interests, the factual history outlined by both parties above suggests that it is far from clear that Respondent’s usage injured those interests; and indeed, it appears that there was a considerable period of acquiescence by Complainant – and presumably business value to Complainant – arising from such usage, inasmuch as it appears to have enabled Complainant to obtain a toehold for its products in the U.S. market. 

 

Complainant now, apparently, wishes to enter that market directly rather than through its distribution agreement with Respondent. Whether it has the right to do so is a matter far beyond the purview of this Panel, and one which a court may ultimately need to resolve based on the terms of the contractual relationship between the parties and other applicable rights and obligations of law.  The Parties cannot agree on whether the Dealer Agreement is even still in effect, let alone what rights and obligations it creates.  The facts and circumstances surrounding contract formation and termination, intent, meeting-of-the-minds, modification, breach, acquiescence, and other like issues are simply not (at least in this case) amenable to resolution by the Panel on the present record to the degree necessary to rely upon them in determining whether the three Policy elements are met.

 

For purposes of the present proceeding, in any event, Complainant has not made out a sufficient case to establish that Respondent lacked rights and interests in the disputed domain names both at the time they were registered and in subsequent usage.  While Complainant has a plausible argument that Respondent jumped the gun by registering domain names containing Complainant’s mark prior to entering into an agreement authorizing her to do so, the Panel cannot ignore the subsequent multi-year relationship between the parties during which Respondent openly used the domain names to resell Complainants’ goods – presumably to the commercial benefit of both parties.  Complainant’s acquiescence in this conduct leaves it at best murky, if not outright implausible, to contend that Respondent lacked any rights or interests in the domain names or used them in bad faith.

 

DISCUSSION

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.

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

Identical and/or Confusingly Similar

 

Respondent’s <julius-k9.us> and <juliusk9.us> domain names incorporate the JULIUS K9 mark entirely while merely eliminating spacing between words or adding a hyphen, and by appending the “.us” country-code top-level domain (“ccTLD”) suffix, thus evincing confusing similarity with Complainant’s registered JULIUS K9 trademark.

 

Rights or Legitimate Interests

 

Respondent was undisputedly licensed to use the <julius-k9.us> and <juliusk9.us> domain names, and therefore has rights and legitimate interests in the names. Respondent has also been commonly known by the disputed domain names since she began referring to herself by those marks in or about 2010.  Whether she had the right to do so is a disputed contractual issue; but for purposes of this proceeding the Panel does not find the Dealer Agreement and its associated history sufficiently clear and unambiguous so as to undermine the prima facie showing Respondent has made on this point.

 

Additionally, Respondent’s use appears to have been, at relevant times, bona fide as she has been (and possibly still is, depending upon whether the Dealer Agreement has been properly terminated) an authorized reseller of Complainant’s products.

 

Additionally, applying the Oki Data test discussed above, Respondent appears to have the better of the argument in that she sold Complainant’s products online, with Complainant’s express knowledge and permission, for several years; she did not sell any other (let alone any competing) products; she did not misrepresent her identity or relationship to the Complainant[2]; and although she registered a few other domain names that likewise used Complainant’s mark, doing so does not amount to her having “cornered the market” in such domain names.

 

In sum, the Panel finds that Respondent had rights or legitimate interests in the disputed domain names, at least based on the evidence currently in the record before this Panel.  Nothing herein is intended to prejudge any determination that a court of competent jurisdiction may make, however, upon fuller discovery and disclosure of relevant facts.

 

Registration or Use in Bad Faith

 

When Respondent registered the domain names, she did not (yet) have any commercial relationship with, or authorization from, Complainant.  At that time, therefore, it is plausible to conclude that she may have done so in bad faith.  However, she does not appear to have thereafter used them in bad faith during the course of her extensive commercial relationship with Complainant, at least based on the evidence of record before this Panel. 

 

Complainant suggests that, based on the “non-binary” approach to the bad-faith analysis suggested above, a finding of bad faith can still be made on a record such as this one.  The Panel need not reach this question here as the issue is moot, inasmuch as the Complaint fails as a result of the second factor (legitimate rights or interests), as discussed above.

 

Reverse Domain-Name Hijacking

 

While Complainant fails to meet the three-part test set forth above and in the Policy for an award transferring the disputed domain names, Respondent for her part likewise fails to meet the test for establishing RDNH.  Respondent appears to have registered the disputed domain names (not to mention several others) at a time when she as-yet had no established commercial relationship with Complainant, and no basis to believe that she owned any trademark rights in Complainant’s mark, which it had been using in commerce for some five years.  That alone could well give Complainant reason to believe that a proceeding under the Policy was justified.  The provision in the Dealer Agreement that Complainant could seek recovery of any domain names containing “K9” is a further basis warranting Complainant’s belief that this proceeding was justified.

 

Additionally, Respondent’s position that the Dealer Agreement has not been terminated is, at best, in some tension with the letter indicating that the relationship was being “interrupted.”  Likewise, she has not at all times made entirely clear to consumers what relationship (if any) she had with Complainant.  All in all, the history of these parties’ relationship, while insufficient to find a violation of the Policy, likewise fails to establish RDNH. 

 

DECISION

Complainant not having established the three elements required under the usTLD Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <julius-k9.us> and <juliusk9.us> domain REMAIN WITH Respondent.

 

 

Michael Albert, Panelist

Dated:  August 28, 2015