Reilly, Inc. d/b/a Sturdybilt v. Bartz Distributing, Inc. / John Bartz
Claim Number: FA1106001394172
Complainant is Reilly, Inc. d/b/a Sturdybilt (“Complainant”), represented by Greg Friedman of Sturdybilt, California, USA. Respondent is Bartz Distributing, Inc. / John Bartz (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bobbybilt.com> and <bobbybuilt.com>, registered with Tierranet Inc. d/b/a Domaindiscover and <bobbybiltwagons.com>, <bobbywagon.com>, <bobbyswagon.com>, <bobbywagons.com>, and <bobbybiltwagon.com>, registered with Godaddy.Com, Inc.
(collectively referred to as the “Domain Names”)
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.
Clive Elliott as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 17, 2011; the National Arbitration Forum received payment on June 20, 2011.
On Jun 17, 2011, Tierranet Inc. d/b/a Domaindiscover confirmed by e-mail to the National Arbitration Forum that the <bobbybilt.com> and <bobbybuilt.com> domain names are registered with Tierranet Inc. d/b/a Domaindiscover and that Respondent is the current registrant of the names. Tierranet Inc. d/b/a Domaindiscover has verified that Respondent is bound by the Tierranet Inc. d/b/a Domaindiscover 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 Jun 20, 2011, Godaddy.Com, Inc. confirmed by e-mail to the National Arbitration Forum that the <bobbybiltwagons.com>, <bobbywagon.com>, <bobbyswagon.com>, <bobbywagons.com>, and <bobbybiltwagon.com> domain names are registered with Godaddy.Com, Inc. and that Respondent is the current registrant of the names. Godaddy.Com, Inc. has verified that Respondent is bound by the Godaddy.Com, Inc. 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 June 23, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 13, 2011 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@bobbybilt.com, postmaster@bobbybuilt.com, postmaster@bobbybiltwagons.com, postmaster@bobbywagon.com, postmaster@bobbyswagon.com, postmaster@bobbywagons.com, and postmaster@bobbybiltwagon.com. Also on June 23, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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 July 13, 2011.
Additional submissions from Complainant were received on July 18, 2011.
On July 20, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Clive Elliott as Panelist.
Complainant requests that the Domain Names be transferred from Respondent to Complainant.
A. Complainant
Complainant submits that the Domain Names are identical or confusingly similar to its trademark or service mark in which it has rights. Complainant states that it is in the business of manufacturing and marketing non-motorized trikes, scooters, and wagons, and that it and its predecessors have used the BOBBYBILT mark on its wagon and other products since at least 1985. Complainant also states that all of its wagon products bear the BOBBYBILT mark and that it operates its website at www.sturdybilt.com.
Complainant submits that Respondent should be considered as having no rights or legitimate interests with respect to the Domain Names that are the subject of the Complaint. Complainant advises that Respondent was at one time a dealer for, and sold the wagon products of Complainant’s predecessors; whereby, Respondent registered the Domain Names to use with Respondent’s website. Complainant contends that since at least 2006 Respondent has manufactured and marketed their own, nearly identical wagons using the “Phantom” mark, and at that time Respondent ceased reselling BOBBYBILT wagons. Complainant asserts that Respondent has therefore not had a bona-fide use for the Domain Names since at least 2006, and that Respondent has falsely claimed on its homepage that the BOBBYBILT mark had been retired.
Complainant submits that the Domain Names should be considered as having been registered and being used in bad faith. Complainant contends that whilst it makes no judgment regarding Respondent’s bad or good faith with regards to the initial registration of the Domain Names, it contends that since at least 2006 Respondent has used, and continues to use the Domain Names in bad faith. Complainant asserts that Respondent’s only purpose in using the Domain Names is to misleadingly divert consumers looking for “BOBBYBILT” products to Respondent’s “Phantom” wagon website for commercial gain. Complainant further asserts that Respondent’s intentions are to further confuse and deceive customers into thinking “Phantom” is the official website and factory for BOBBYBILT products.
Complainant submits that further evidence of Respondent’s bad faith is that Respondent wishes to sell Complainant the Domain Names for $50,000.
B. Respondent
Respondent states that it is a dealer and manufacturer of wagons and is a business competitor of Complainant. Respondent asserts that it registered the bobbybilt.com domain name in 1999, the bobbybuilt.com domain name in 2000 and the five other domain names comprising the Domain Names in 2005.
Respondent contends that in 1999 Robert North, the founder of the “Bobbybilt” wagon, gave Respondent an irrevocable Internet license to sell “Bobbybilt” wagons on the Internet and provide after sales services to “Bobbybilt” wagon customers. Respondent also advises that it has been doing so continuously since then. Respondent advises that when Mr. North sold his company to the Bobbybilt Corp, Respondent then became a dealer for that company and Bobbybilt Corp honoured the license the Respondent had for Internet sales. Respondent asserts that evidence of this dealer relationship is confirmed in correspondence from Bobbybilt Corp in 2001 together with invoices and order forms.
Respondent states that Bobbybilt Corp owned the BOBBYBILT trademark until it was cancelled in 2009 and further states that although Bobbybilt Corp has claimed a date of first use as 1985, that was the date that Respondent’s predecessor Mr. North first used the mark in commerce, and Complainant was not a successor in interest to Bobbybilt Corp. nor had any business connection with Bobbybilt Corp. Respondent submits that Complainant was not an active corporation until 2007 so could not have been using the "BOBBYBILT" trademark since 1985 as the company was not in existence at that time. Respondent states that Complainant obtained the trademark registration for "BOBBYBILT" in 2011, only after that trademark owned by the Bobbybilt Corp. had been cancelled.
Respondent advises that Mr. North started a new wagon company named BobCo, which he then sold in 2004 to Fasching Enterprises, Inc. as BobCo/ Rhino. Respondent asserts that it was Fasching Enterprises' Internet dealer and it continued to use the Domain Names to provide repairs, accessories and parts to its customers. Respondent contends that in 2005, Fasching Enterprises asked Respondent to also be its dealer for swap meets, trade shows and county fairs.
Respondent states that in 2005, it purchased a wagon company known as "Phantom Wagons" from a former employee of the Bobbybilt Corp. Phantom Wagons built their wagons in the same manner using the same specifications as the wagons produced by the Bobbybilt Corp. Respondent asserts that it built and branded these wagons under the brand "Phantom" and sold them through the Domain Names.
Respondent contends that the Bobbybilt brand was retired when Fasching Enterprises stopped selling "BOBBYBILT" branded wagons and sold only "BobCo" wagons. Respondent points out that its statement regarding the Domain Names, namely that the "Bobbybilt" mark for wagons was "retired" was correct as at that stage no company was manufacturing wagons with the "Bobbybilt" mark. Respondent also asserts that it did not want to infringe the "BOBBYBILT" trademark by branding its wagons "Bobbybilt", but at the same time it wanted customers who had purchased "Bobbybilt" wagons to know where to obtain parts and/or after sales service.
Respondent advises that it continues to use the Domain Names as it provides after sales service, accessories and parts to its customers, and others who have purchased "Bobbybilt" wagons.
Respondent contends that it was Complainant's dealer until Complainant challenged Respondent's right to use the Domain Names and, that after Complainant had raised the issue in conversations with Respondent several times, Respondent offered to sell the company to Complainant.
Respondent contends that the Domain Names have been used in conjunction with a long established and respected Internet operation for more than a decade and that it continues to use the Domain Names for providing after sales service, selling accessories and parts and offering repairs to "Bobbybilt" wagon customers.
Respondent disputes that there has ever been any confusion by purchasers and asserts that as it has been the only company selling these wagons on the Internet and providing the after sales services, it has an established following. Respondent asserts that it is commonly known by the Domain Names due to its length of time in business, the amount of time, money and effort that Respondent has spent on its websites including marketing and advertising and as a stable source of wagons and after sales services.
Respondent also asserts that there are several other wagon companies that sell wagons through the Internet and there have been no complaints in 12 years that Respondent has been using the Domain Names so as to disrupt any competitor's business.
Respondent submits that it is relevant that it registered the Domain Names 8 years before Complainant was registered as a company and 12 years before Complainant obtained the trademark registration for the "BOBBYBILT" mark.
Accordingly, Respondent submits that Complainant has acted in bad faith by the reverse hijacking of Respondent's Domain Names.
Respondent alleges that Complainant had no objections to the Domain Names until after business discussions between Complainant and Respondent took place for the sale of Respondent's Domain Names and business to Respondent. Not long after those discussions took place, Respondent received Complainant's letter of April 12, 2011 advising that Complainant had registered "BOBBYBILT" on March 15, 2011.
Respondent alleges that after receiving Complainant's letter Respondent removed the "BOBBYBILT" trademark from all their "bobbybilt.com" domain names, as well as Respondent's “wagonworld.com” website and also deleted the trademark as an Internet search term on all the Domain Names. Respondent states that if it missed any "Bobbybilt" marks in the HTML, it is an oversight and will be removed.
Respondent notes that on May 5, 2011, Complainant emailed Respondent warning that if Complainant had to take legal action Respondent would be unhappy. Respondent points out that it is a small company compared to Complainant. It says it saw the email warning of legal action to be of a threatening nature. It submits that this is further evidence of Complainant's bad faith.
Respondents asserts that in a good faith attempt to settle this dispute with Complainant, it replied to Complainant's letter and offered to sell the 7 Domain Names for $50,000. Rather than replying to Respondent's June 15, 2011 settlement discussion letter, Complainant filed the Complaint in this action.
Respondent believes the $50,000 offered for the sale of the Domain Names is a reasonable and fair amount, taking into account the expenses Respondent has incurred over the past 12 years including start up costs, website development costs, marketing and advertising and related costs, as well as Respondent's stable reputation and track record in an industry with high turnover of companies.
In conclusion, Respondent submits that it is impossible to conclude that it registered the Domain Names to disrupt Complainant's business since the Domain Names were registered before Complainant was incorporated and 12 years before Complainant obtained a trademark registration for "BOBBYBILT".
C. Additional Submissions
By way of reply in its additional submissions, Complainant states that whilst Respondent claims to have an "irrevocable internet license" allegedly granted by:
a) Complainant; then
b) Fasching Enterprises, Inc.(which is Complainant's immediate predecessor in interest); then
c) Mr. Robert North (who as BobCo was Fasching Enterprises, Inc.'s immediate predecessor in interest); then
d) Bobbybilt Corp. (who was North's immediate predecessor in interest); and finally
e) North again (who was Bobbybilt Corp.'s immediate predecessor in interest)
Respondent has failed to provide any evidence that an irrevocable internet license was granted by anyone.
Complainant denies having granted Respondent any rights with respect to the Bobbybilt mark or related domains. Complainant advises that it purchased the company from Fasching Enterprises, Inc. in April, 2009 which was years after Respondent began competing against Bobbybilt products with Respondents Phantom line of wagons. Respondent's only dealer relationship with Complainant was with respect to Rhino and Sturdybilt tricycles and never with Bobbybilt products. Complainant therefore submits that Respondent's claim that Complainant granted an irrevocable Internet license to use the Domain Names is untrue.
Complainant argues that although Respondent claims that it is commonly known by the Domain Names, the claim has no merit and is unsupported by any evidence. Complainant further asserts that any association in the marketplace between Respondent and the Domain Names, could only have been the result of Respondent's dealer relationships while selling Bobbybilt products and any residual association between Respondent and the Domain Names is only related to the fact that the Domain Names and Complainant's trademark are identical, which Complainant submits is further evidence of the potential for confusion.
Complainant submits that whatever rights Respondent alleges may have been granted to it over the years, those rights have been superseded by the fact there have been four trademark applications and two registrations of the Bobbybilt mark during the time Respondent claims to have had rights. Complainant also argues that when Respondent became a competitor, with respect to Bobbybilt products in 2005, and no longer sold Bobbybilt products, that was the end of any bona fide use Respondent may have had with respect to the Domain Names. At that point, use of the offending domains by Respondent only served to redirect Internet traffic to Respondent's website to sell Respondent's own Phantom wagons.
Complainant claims that Respondent’s assertion that Fasching Enterprises, Inc. only sold BobCo wagons is incorrect. Complainant points out that Fasching Enterprises, Inc., according to the dealer price list and catalogue, sold wagons using the Bobbybilt mark for approximately four years up until the time the business was sold to Complainant, which Complainant contends illustrates that Fasching Enterprises, Inc. did in fact manufacture and sell Bobbybilt wagons.
Complainant acknowledges that whilst some of Respondent's parts and accessories may fit Bobbybilt wagons, they are not Bobbybilt parts and therefore Respondent has no bona fide use of the Domain Names and is infringing the Bobbybilt trademark.
Complainant denies Respondent’s allegations that Complainant's registered trademark was obtained fraudulently and can be cancelled through a petition for cancellation because Complainant claimed to have predecessors in interest dating back to 1985.
Complainant submits that it made that claim in good faith and is based on the chain of ownership described above. Bobbybilt Corp.'s trademark application also stated first use in commerce of 1985 and correlates with other historical facts that are believed by Complainant to be true pertaining to when the Bobbybilt mark was first used. It also raises a number of issues to do with the purchase of its business, none of which are relevant to the matters before the Panelist.
For the reasons set out below the Complaint is dismissed and relief denied.
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.
However, before being able to satisfy itself that the above three elements have been established the Panel needs to satisfy itself that it has jurisdiction.
Trademark Dispute Within or Outside the Scope of the UDRP
An important threshold question that needs to be determined is whether this dispute falls within or outside the scope of the UDRP.
Respondent argues that it was a former Internet licensee of the original rights holder, Mr. Robert North. Respondent asserts that the scope of the license agreement, entered into in 1999, gave Respondent the irrevocable right to sell Bobby Bilt wagons online. Respondent claims the original rights holder sold the company, along with it the rights to the mark, to “Bobbybilt Corp.” who registered the mark on February 18, 2003. Respondent submits the trademark registration history, which indicates that the trademark registration abovementioned was cancelled on September 26, 2009, still in the hands of Bobbybilt Corp. which never relinquished its rights to said mark.
Respondent argues that Bobbybilt Corp. maintained the license agreement it had entered into with the previous owner. Bobbybilt Corp. then defaulted and returned the company to the original owner. Respondent contends that at that point the original owner sold the company to a different third party, Fasching Enterprises/ BobCo, who then sold the company to Complainant.
Complainant contends that Respondent’s allegations as to the existence of a licence are untrue. Complainant in turn asserts that it is the rightful successor in interest to the original rights holder. Contrary to Respondent’s claims that the business succession limited Complainant’s rights to the most recent transfer, Complainant claims that its rights in the mark take priority over Respondent’s license agreement (if any) and extend back to the first use in commerce listed on the trademark registration held by Bobbybilt Corp.
Thus, Complainant’s additional submissions include arguments detailing the chain of custody of the BOBBYBILT mark. Complainant contends that the succession of ownership shows that the rights did duly and properly pass to it and have a lineage extending back to the first use in commerce, 1985.
The Panel is driven to the conclusion that a determination regarding whether the transfer of the license agreement between Respondent and Complainant’s predecessor-in-interest is essential to the issue in this matter and as such, may put the central legal question of this action outside the scope of the UDRP. In sum, Complainant and Respondent both assert rights to the BOBBYBILT mark.
Having carefully considered both parties contentions, the Panel is of the view that this dispute raises heavily contested questions of fact that take this dispute outside the legitimate scope of the Policy. In Commercial Publishing Co. v. EarthComm, Inc., FA 95013 (Nat. Arb. Forum July 20, 2000), the panel indicated that legitimate disputes should be decided by the courts:
The adopted policy establishes a streamlined, inexpensive administrative-dispute resolution procedure intended only for the relatively narrow class of cases of “abusive registrations.” Thus, the fact that the policy’s administrative dispute-resolution procedure does not extend to cases where a registered domain name is subject to a legitimate dispute is a feature of the policy, not a flaw. The policy relegates all “legitimate disputes” to the courts. Only cases of abusive registrations are intended to be subject to the streamline [sic] administrative dispute-resolution procedure.
Previous panels have chosen to dismiss UDRP complaints which centered upon legitimate trademark disputes. Reference is made to Abbott Labs. v. Patel, FA 740337 (Nat. Arb. Forum Aug. 15, 2006) (holding that assertions of trademark infringement are “entirely misplaced and totally inappropriate for resolution” in a domain name dispute proceeding because the UDRP Policy applies only to abusive cybersquatting and nothing else). Further, reference can also be made to Stevenson Indus., Inc. v. CPAP-PRO Online, FA 105778 (Nat. Arb. Forum Apr. 25, 2002) (“If the existence of [rights or legitimate interests] turns on resolution of a legitimate trademark dispute, then Respondent must prevail, because such disputes are beyond the scope of this proceeding.”).
On the basis of the principles enunciated in these decisions the Panel dismisses the instant Complaint. The Panel accepts that the parties clearly have unresolved issues between them. That however does not bring this dispute within the purview of the UDRP.
On the basis outlined above the Panel concludes that relief shall be denied
Clive Elliott, Panelist
Dated: August 2, 2011
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