The Biro Manufacturing Company v. Eric Biro
Claim Number: FA2104001943384
Complainant is The Biro Manufacturing Company (“Complainant”), represented by Mark D. Schneider of Dinsmore & Shohl, LLP, Ohio, USA. Respondent is Eric Biro (“Respondent”), represented by Roetzel & Andress P.C., Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <biroservice.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 29, 2021; the Forum received payment on April 29, 2021.
On April 29, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <biroservice.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 May 3, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 28, 2021 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@biroservice.com. Also on May 3, 2021, 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 May 28, 2021.
On June 2, 2021, an Additional Written Submission of Complainant was received by the Forum.
On June 3, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, The Biro Manufacturing Company, manufactures, sells, and services meat, poultry, and fish processing machines. Complainant has rights in the trademark BIRO mark through its registration with the trademark offices of the United States of America, Canada, Mexico, the European Union, and Australia, the earliest of which dates back to 1987. Complainant also claims common law rights in the BIRO mark through over 100 years of use in the meat processing industry, and maintaining a business presence on the Internet at its <birosaw.com> website for over twenty-five years. Respondent’s <biroservice.com> domain name is identical or confusingly similar to Complainant’s BIRO mark, only differing by the addition of the generic term “service” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <biroservice.com> domain name as it is not commonly known by the disputed domain name and is neither an authorized user or license of the BIRO mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Respondent instead uses the disputed domain name to pass itself off as Complainant and offer goods and services which, in some instances, compete directly with Complainant’s business. One page of Respondent’s website contains an image of Complainant’s product, other pages show the logos and products of Complainant’s direct competitors, and a page titled “About Us” contains the following statement: “In 1930, Paul E. Biro established the first Biro Manufacturing distributor in Cleveland, Ohio. For over 90 years, the Biro Family created, fostered, and helped revolutionize the food equipment industry in the greater Northeast Ohio area. In 2020, the fourth generation of the family, Eric and David Biro, formulated a new vision with the creation of Biro Service, Inc., to engage, help grow, and train the food equipment industry from coast-to-coast in the USA.” This statement also conveys Respondent’s intention to circumvent Complainant’s structure of geographically-limited authorized distributors.
Respondent registered and uses the <biroservice.com> domain name in bad faith. On the website of the disputed domain name Respondent purports to sell products of Complainant and its direct competitors thus displaying bad faith disruption and attraction for commercial gain based on a likelihood of trademark confusion. Additionally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the BIRO mark.
B. Respondent
The family of Respondent, Eric Biro, has operated a food processing equipment business in Northeast Ohio for sixty years. Complainant should not be deemed to have United States trademark rights in the BIRO mark, as at the time of US registration for the BIRO mark, Complainant was not yet a legal entity in the state of Ohio. Beyond the invalidity of the trademark, Complainant alleges that it obtained rights in the mark through its predecessor but fails to adequately identify the name, state of formation, or entity type of its predecessor in interest. Complainant also fails to prove its claimed common law rights in the BIRO mark as no evidence was submitted with regard to BIRO being used as a trademark related to any goods or services. Rather, Complainant’s evidence shows that it is a legal entity using the trade name “Biro” but it shows no connection to any goods or services.
Respondent has rights in the <biroservice.com> domain name through offering bona fide goods and services through the domain name prior to any notice from Complainant of this dispute. Respondent is a shareholder and officer of Biro Services, Inc., an Ohio Corporation. Respondent asserts that it is commonly known by “Biro” or “Biro Service” as it has done business under this name. Through the disputed domain name, Respondent and its business offers maintenance and repair services and replacement parts for various meat processing products from several manufacturers, including Complainant. The disputed domain name was registered on December 31, 2019 and a website at this address was launched in April of 2020, prior to receiving from Complainant any notice of a dispute regarding the BIRO mark. Respondent’s family name is also Biro and his family has done business under this name since as early as 1959.
Respondent is making a fair use of the BIRO mark as it is part of the Biro family and claims to be a distributor of Complainant’s goods, not the manufacturer thereof. Respondent’s <biroservice.com> domain name should qualify as a nominative fair use of the BIRO mark as Respondent merely identifies Complainant and its business as one of the various companies whose products it services and sells parts for. Complainant’s contention that the parties have no relationship is false as Respondent purchases BIRO products from one of Complainant’s authorized distributors named Biro Sales, Inc. which is operated by Respondent’s father and uncles. Due to the longstanding coexistence of both Complainant and Respondent within the industry, Complainant manufacturing meat processing products, and Respondent repairing related products, Complainant should be barred by laches from arguing any trademark infringement.
C. Additional Submission by Complainant
Respondent’s laches argument is misleading and is a red herring. Although Complainant has authorized another company named Biro Sales, Inc. as a distributor for its products, Respondent has commenced a wholly new and separate venture called Biro Services, Inc. using the BIRO mark without Complainant’s authorization. Additionally, Complainant reasserts the validity of its registration for the BIRO mark and restates its common law rights in the mark.
The Panel declines to make any specific findings in this case as the dispute between the parties appears to exceed the proper scope of the Policy.
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.
Dispute Exceeds the Scope of the Policy
Respondent asserts that, due to the history of the word BIRO as both a family name and a trademark used by different branches of the Biro family, there are issues in dispute which are outside the scope of the Policy. Panels have recognized that “[t]he Policy’s purpose is to combat abusive domain name registrations and not to provide a prescriptive code for resolving more complex trade mark disputes”. Luvilon Industries NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005). Also see Courtney Love v. Brooke Barnett, FA 944826 (Forum May 14, 2007) (“the purpose of the Policy is not to resolve disputes between parties who might each have legitimate rights in a domain name. The purpose of the Policy is to protect trademark owners from cybersquatters, that is, from people who abuse the domain name system in a very specific way, which specific way is outlined in Paragraph 4(a) of the Policy.”)
Respondent asserts that “[t]his matter involves a trademark dispute between different family branches of the Biro family that operate independent businesses and use the ‘Biro’ family surname. Respondent’s family has used the word ‘Biro’ in connection with food processing equipment businesses in Northeast Ohio for the last sixty years, with the knowledge of Complainant. * * * The trademark issues involved in this dispute, namely – fraud committed upon the United States Patent and Trademark Office, acquiescence, laches, and fair use … are outside of the scope of the Policy.”
In contrast, Complainant replies that Respondent “appears to have adopted a strategy of sowing legal confusion such that the Panel may feel compelled to dismiss the dispute. Rather, the gist of this dispute, and the problem for Respondent, is that we are not talking about the status quo. Complainant’s chief problem with Respondent and his ‘new vision’ is that Respondent commenced a wholly new and separate venture, using the BIRO Mark, without authorization. That is not laches. Or acquiescence. It is a new bad faith use that Respondent admits it undertook with full knowledge of Complainant’s mark, and that is likely to cause confusion.”
In reviewing the screenshots of Respondent’s website that have been submitted by Complainant, the Panel notes that this clearly does not satisfy the test for resellers set out in the seminal case of Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001). Respondent appears to be selling and servicing the products of third-parties that compete with Complainant and its website does not adequately disclose the nature of its relationship with Complainant as lacking the status of an authorized dealer or service provider.
Further, Complainant has clearly stated that “[t]he disputed domain, <BiroService.Com>, was set up by Eric Biro absent license or authorization from Biro Manufacturing” and this has not been disputed by Respondent. Complainant also states that “Biro Sales, Inc. [the entity operated by Respondent’s father and Uncles] is an authorized distributor of Complainant.” Against the backdrop of these facts, the Panel notes that neither party has submitted a copy of Complainant’s distributor agreement with Biro Sales, Inc. or any other evidence to suggest that Respondent, himself, holds any position in this entity or is entitled to benefit from any authorization that Complainant may have granted to the company.
What is also of interest to the Panel is the fact that the website for Biro Sales, Inc. at <birosalesinc.com>, a screenshot of which was submitted by Complainant with its Additional Submission, shows use of the BIRO mark in another domain name and whose website shows promotion of BIRO products as well as some of the same third-party competitors mentioned in Respondent’s <biroservice.com> site under the head of “Brands we work with”.
While the Panel is cognizant of Complainant’s statement that Respondent is undertaking a “wholly new and separate venture”, this cannot be considered in a vacuum and must viewed in the full context of all of the circumstances of this case. There remain open questions of whether Respondent is infringing upon Complainant’s trademark rights under applicable law, whether any trademark rights from Respondent’s and Complainant’s common ancestor may be imputed to Respondent, whether Respondent or Biro Sales, Inc. have violated any terms of Complainant’s distributorship agreement with the latter, whether Respondent is entitled to use his own surname as the name of a business which is in the same field of endeavor as that of Complainant, and whether Complainant has somehow acquiesced in Respondent’s domain name use by virtue of the <birosalesinc.com> website and its content.[i] In fact, according to Respondent, “Complainant and Biro Service, Inc., through their respective counsel, subsequently exchanged a series of letters outlining their respective positions with respect to the use of the BIRO trademark and related matters.”
The above-mentioned issues, as well as others raised by Respondent, are not appropriate to the very narrow scope of the Policy and would best be dealt with in a forum with more robust evidentiary tools (e.g., exchange of documents in discovery, depositions, cross-examination, questions addressed to the parties by a judge, etc.) As such, the Panel finds it to be more likely than not that the present dispute is outside the scope of the Policy and that the status quo of the disputed domain name should be maintained until the parties can have its fate adjudicated through an appropriate process.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <biroservice.com> domain name REMAIN WITH Respondent.
Steven M. Levy, Esq., Panelist
Dated: June 9, 2021
[i] Respondent also questions the validity of Complainant’s claim to registered and common law trademark rights. While this could be addressed by a court or tribunal with appropriate jurisdiction, the Panel feels that Respondent’s arguments on this point are undercut by the very fact that it promotes BIRO-marked products which it purchases from one of Complainant’s authorized distributors.
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