Domain name - Domain Name Dispute Resolution Policy - US Trademark - Identical - Confusingly similar - Legitimate interests - Legitimate rights - Bad faith registration - Bad faith use

Complainant is registered owner of trademarks, DRAW TITE and DRAW-TITE and Design. Respondent registered the domain name, DRAWTITE.COM. Complainant alleged that Respondent’s name is identical and confusingly similar to its own trademarks and the variations on its trademarks, and that Respondent registered and used the name in bad faith.

Held, Name Not Transferred to Complainant

Complainant must establish that the domain name is identical or confusingly similar to its trademark; that the respondent has no rights or legitimate interests in respect of the domain name; and that the domain name has been registered and used in bad faith.

The domain name at issue is confusingly similar to the Complainant’s registered trademarks. Respondent’s web page at DRAWTITE.COM reproduces Complainant’s registered trademarks DRAW-TITE and Design, and DRAW TITE. The Respondent’s web page makes an effort to associate itself with the Complainant by using Complainant’s trademarks and by stating that Respondent is Complainant’s distributor.

However, Respondent showed that it has legitimate interests and rights in the domain name. It has used the name in connection with the bona fide offering of Complainant’s goods or services. Respondent has used the domain name at issue since 1997 without complaint from Complainant until June 1999.

Complainant, thus, fails to prove bad faith registration and bad faith use of the domain name.

Policies referred to

Uniform Domain Name Dispute Resolution Policy

Weinstein, Panelist: -

1. The Parties
The Complainant is Draw-Tite, Inc., a Delaware corporation located at 40500 Van Born Road, Canton, Michigan 48188, U.S.A.. The Respondent is listed as Plattsburgh Spring Inc. of 9 South Peru Street, Plattsburgh, New York 12901, U.S.A.

2. The Domain Name(s) and Registrar(s)
The domain name is DRAWTITE.COM. The Registrar is Network Solutions, Inc. of 505 Huntmar Park Drive, Herndon, Virginia 20170-5139, U.S.A.

3. Procedural History
On January 25, 2000, Complainant submitted a complaint pursuant to the Uniform Domain Name Dispute Resolution Policy ("UDRP Policy") implemented by the Internet Corporation of Assigned Names and Numbers ("ICANN") on October 24, 1999, under the rules for the UDRP Policy implemented by ICANN on the same date ("UDRP Rules"). The Complaint was submitted to the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on January 25, 2000, in a hard copy transmitted by post. The Complaint and Exhibits were received by the Center on February 8, 2000. The Center acknowledged receipt of the Complaint by e-mail and post, both sent on February 1, 2000. In the e-mail, the Center confirmed its request that the Complainant’s representative provide it with four copies of the Complaint; that it indicate that the Complaint has been submitted to the Registrar; and that the Complainant specify the jurisdiction to which the Complainant will submit.
In an e-mail to the Center dated January 28, 2000, Network Solutions, Inc. ("NSI") confirmed that it is the Registrar for the domain name DRAWTITE.COM, and that Plattsburgh Spring Inc., the Respondent in this proceeding, is the current Registrant for the domain name DRAWTITE.COM.

The Complainant submitted an Amended Complaint on February 2, 2000, which was received by the Center on February 8, 2000. In its amended Complaint, Complainant submitted itself to the jurisdiction of the Courts of Virginia, where Registrar NSI is located.

That same day, February 8, 2000, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to Complainant’s authorized representative by facsimile and e-mail; to Respondent by post, facsimile and e-mail; to Respondent’s representative by post and facsimile; and to ICANN and Network Solutions, Inc. A response to the Complaint was due on February 27, 2000.

On February 22, 2000, Respondent’s representative sent to the Center a Response to the Complaint, which was received by the Center on February 25, 2000.

On February 25, 2000, the Center issued to this Panel a Request for Declaration of Impartiality and Independence. This Panel provided its Declaration of Impartiality and Independence to the Center on February 28, 2000.

On February 27, 2000, the Center acknowledged receipt of the Respondent’s Response, by e-mail on February 24, 2000 and in hard copy on February 25, 2000. On February 29, 2000, the Center issued a Notification of Appointment of Administrative Panel and projected a decision date, setting this Panel’s deadline for issuing a decision as March 13, 2000.

The Center transmitted the case file herein to this Panel on February 29, 2000. The case file was received by the Panel on March 2, 2000.

On March 5, 2000, the Panel made a request for further information pursuant to §12 of the UDRP Rules. See infra, Section 5.C. The panel requested that this information be forwarded to the Center by 12:00 noon E.S.T. on March 10, 2000.

Submissions by Respondent responding to the Panel’s inquiry of March 5, 2000 were received by the Center on March 10, 2000. In addition, Respondent’s authorized representative requested a further extension of time to provide more information responsive to the Panel’s inquiries. Because Respondent and its authorized representative provided all the information sought by the Panel with the exception of the license agreement asserted between the parties, this Panel provided an extension of time through March 13, 2000 only, to provide a copy of the license agreement. Both disputants provided additional materials to the Center on March 13th.

In order to accommodate Respondent’s request to submit additional information, this Panel has delayed issuing this decision by one day, or until March 14, 2000.

4. Factual Background
Complainant is the owner of U.S. Trademark Registration No. 896,780 for the mark DRAW TITE, in connection with trailer accessories. The mark was registered on August 18, 1970 and claims first use of the mark commencing in November, 1947.

Complainant is also the owner of U.S. Trademark Registration No. 1,250,935 for the mark DRAW-TITE and Design. This registration covers towing equipment and other automobile, truck and trailer accessories. This mark was registered in September, 1983, and claims first use of the mark commencing in 1978.

Complainant also claims use of variations of these marks "including the conjoined DRAWTITE" to identify towing and trailer accessories. Complaint, Par. 7. Complainant does not specify how long it has been using the conjoined mark DRAWTITE in connection with these products.
Respondent is a New York corporation which operates a website under the domain name in dispute. This website promotes sales of Complainant’s product. It reproduces Complainant’s registered DRAW-TITE and Design mark and the mark DRAW TITE, with the ® symbol, on the home page of the website.

5. Parties’ Contentions
A. Complainant
Complainant contends that Respondent’s domain name DRAWTITE.COM "is identical to Complainant’s well-known trademark DRAWTITE and confusingly similar to the variations of the trademark DRAW TITE and DRAW-TITE so as to be likely to cause consumer confusion." Complaint, Par. 8(a). Complainant asserts it has superior rights in these marks, as their "original user," and particularly as they relate to towing products. Complaint, Par. 8(b). Complainant asserts that "consumers will be led to believe that Respondent is in some way associated with Complainant and that products sold by Respondent are being supplied directly by Complainant." Id. Finally, Complainant asserts that "Respondent is well aware of Complainant’s earlier rights in the marks and is merely attempting to divert potential customers of Complainant to Respondent’s website by using the confusingly similar mark." Complaint, Par. 8(c).

B. Respondent
Respondent asserts it has "insufficient information to either admit or deny" that Complainant owns and uses the marks DRAW TITE and DRAW-TITE and Design, in connection with towing and trailer accessories. Response, Par. 7. Respondent admits that the domain name DRAWTITE.COM "is similar to the trademark DRAW-TITE® but denies that it is confusingly similar to them" since Respondent is an authorized sales representative for Complainant, is duly licensed by Complainant to use the trademark in advertising and sales of Complainant’s products, and was "duly authorized to register Draw-Tite as a domain name and conduct sales of Draw-Tite, Inc.’s products through the site identified by that domain name." Response, Par. 8(a).

Respondent attached to its Response the affidavit of its President, Kevin Broderick, asserting that Respondent has been licensed to use the DRAW-TITE trademark, and its variations, in Respondent’s advertising and sales efforts since becoming a sales representative of Complainant some time in late 1994 to early 1995. Broderick Affidavit, Par. 2. Respondent asserts that Complainant has never objected to Respondent’s use of the trademark until the present dispute, and has encouraged Respondent to use the trademark in its advertising and sales efforts. Id.

Respondent asserts that on several occasions late in 1996 or early 1997, Respondent’s President discussed with Complainant setting up a website for sales of Complainant’s products. Broderick Affidavit, Par. 3. Respondent asserts that Complainant encouraged me to set up a website and to register the domain name of ‘DRAWTITE.COM.’ After obtaining assurances that registering the domain name of ‘DRAWTITE.COM’ by [Respondent] was authorized by [Complainant] and in fact encouraged by [Complainant], [Respondent] registered it in early 1997. Id.

Respondent asserts that from the time it launched its website under the domain name DRAWTITE.COM to the present, only Complainant’s products have been advertised and sold on the website. Those products either came directly from Complainant, or from Respondent’s inventory of Complainant’s products, ordered directly from Complainant. Broderick Affidavit, Par. 4.

Respondent asserts that some of Complainant’s employees have discussed with Respondent the possibility of turning over Respondent’s website to Complainant. They were told that "given the substantial investment [Respondent] made in setting up, advertising and developing the site [,] loss of the site would result in substantial loss to [Respondent] but that it would entertain any reasonable offer for sale of the site." Broderick Affidavit, Par. 5.

Respondent admits that Complainant "has a superior right to the marks in question as a trademark but not as a domain name." Response, Par. 8(b).

C. Additional Information Requested by the Panel
As is apparent from the parties’ contentions, there is a dispute as to whether Respondent was and is authorized by Complainant to use the trademark DRAW-TITE and its variations, and to operate the website it currently operates under the domain name DRAWTITE.COM. In an effort to resolve this factual dispute, this Panel requested further information from the Disputants, pursuant to its authority under Section 12 of the UDRP Rules. The information requested was:
Evidence and documents concerning the license agreement asserted in Pars. 8(a) and 15 of the Response;

Evidence and documents concerning Respondent’s status as an authorized distributor/sales representative of Complainant’s products, as asserted in Pars. 8(a) and 15 of the Response;

Evidence concerning the website connected to the disputed domain name (or consent for the Panel to review the same independently); and

Evidence concerning Complainant’s consent to Respondent’s request to set up its website at www.drawtite.com, as asserted in Par. 3 of the Broderick Affidavit.

Respondent’s representative provided answers and documents to this Panel’s inquiries, by facsimile and courier sent to the Center on March 10, 2000. Respondent could not locate, and did not submit, a copy of the original signed License Agreement. Instead, it submitted copies of further invoices and canceled checks, as well as "copies of bills from the Complainant which the Respondent paid for supplies received by Respondent from Complainant." Respondent’s authorized representative’s letter of March 10, 2000.

Respondent also provided its consent for the Panel to log on to and review Respondent’s website, at www.drawtite.com. This Panel has reviewed Respondent’s website, and attached a printout from the same as Exhibit A to the hard copy of this decision. The Panel’s findings herein regarding the website are based upon that review.

Respondent advised that all communications regarding Complainant’s consent to Respondent’s website were made orally between the parties.

On March 13, 2000, Respondent’s authorized representative submitted a Supplemental Affidavit of Kevin Broderick (the "Broderick Supplemental Affidavit"). In the Affidavit, Mr. Broderick asserted that he believed there "was a sales representative or other dealer agreement which included a trademark license agreement" with Complainant. He was unable to locate a copy of this agreement. Mr. Broderick contacted Complainant, who likewise could not locate it. Broderick Supplemental Affidavit, Par. 3. Mr. Broderick recalled the terms of the license agreement

were that it was nonexclusive and had certain quality control provisions which I had to abide by. One of those provisions was obtaining approval from [Complainant] of my use of their Trademark in my advertising and sales. The license agreement was coextensive with my Sales Representative or Dealer Agreement which is still in force and effect. Id.

In his Supplemental Affidavit, Mr. Broderick recounts additional conversations he had with representatives of Complainant, regarding setting up the website using the domain name at issue herein. Specifically, Mr. Broderick asserts that a Mr. Todd Radar (referred to as Mr. Raider in Mr. Broderick’s first affidavit) and others at Complainant reviewed the website on the Internet and gave approval of same:

In fact, I had asked [Complainant] for final approval on the set up of the Web Site and the use of the domain name DrawTite for the Web Site pursuant to the License Agreement. Such approval was given by Mr. Todd Radar an executive with the company and was confirmed by Mr. John Tiger, the Northeast Regional Sales Representative at the time.

Broderick Supplemental Affidavit, Par. 5.

Complainant’s authorized representative also submitted information pursuant to this Panel’s request. In an unsworn letter of March 13, 2000, Complainant’s representative states no license agreement, written or otherwise, exists between the parties granting Respondent the right to market under Complainant’s trademark or allowing Respondent to represent itself as an agent of Complainant.

Complainant asserts that "Respondent is merely a purchaser of Draw-Tite products which it could continue to sell under its company name Plattsburgh Spring, Inc."

4. Discussion and Findings

A. Applicable Policy Provisions
The UDRP Policy requires the Complainant to prove each of the following three elements, in order to prevail in this proceeding: 1. That the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
2. That Respondent has no rights or legitimate interests in respect of the domain name; and
3. That the domain name has been registered and is being used in bad faith. UDRP Policy, Section 4.a.
As has been pointed out by previous Panels, it is not sufficient to prevail that a Complainant prove only registration in bad faith; rather, the Complainant must prove both registration and use in bad faith. See World Wrestling Federation Entertainment, Inc. v. Michael Bossman, Dispute No. D99-0001; Robert Ellenbogen v. Mike Pearson, Dispute No. D00-0001.

B. Opinion of the Panel
The Panel finds that Complainant has proved (1) above, but has not proved (2) and (3). Therefore, this Panel must deny the relief sought by Complainant.

While the domain name DRAWTITE.COM is not identical to Complainant’s registered trademarks DRAW TITE and DRAW-TITE and Design, this Panel finds that the subject domain name is confusingly similar to the Complainant’s registered trademarks. Addition or deletion of a hyphen or space between the two words of the mark makes an insubstantial difference to the appearance, pronunciation and meaning of the terms.

More important, however, is that Respondent’s own web page at DRAWTITE.COM reproduces Complainant’s registered trademarks DRAW-TITE and Design, and DRAW TITE with the ® symbol. Respondent’s web page makes an effort to show Respondent is associated with Complainant; not just by using Complainant’s exact trademarks, but also by stating that Respondent is Complainant’s distributor. For this reason, Respondent’s argument that the marks are not confusingly similar is not well taken. Similarly, Respondent’s assertion that it has insufficient information to admit or deny the existence of Complainant’s trademarks cannot be reconciled with Respondent’s use on its web page of Complainant’s marks.

Nevertheless, Respondent has presented competent proof that it has a "right or legitimate interest in respect of the domain name." Under the UDRP Policy,

[a]ny of the following circumstances, in particular but without limitation, if found by the Panel to be proved based upon its evaluation of all evidence presented, shall demonstrate [the domain name holder’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) Before any notice to you of the dispute, your use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) You, as an individual, business, or other organization have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) You are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.

This Panel is satisfied that Respondent has presented sufficient evidence to prove that it has used the domain name in connection with the bona fide offering of Complainant’s goods or services. Respondent has submitted copies of several invoices for goods purchased from Complainant under the DRAW TITE trademark. It is apparent from the Respondent’s web page that Respondent is selling Complainant’s goods under Complainant’s registered trademark. Respondent alleges, and Complainant has not controverted, that Respondent sells only Complainant’s authorized products on Respondent’s web page. Complainant has failed to disprove that Respondent’s use of the domain name in connection with Respondent’s sales of Complainant’s goods was made in connection with the bona fide offering of goods or services.

Probably the most difficult issue raised in considering this factor, is determining whether Respondent’s offering of Complainant’s goods or services under the DRAW TITE trademarks and DRAWTITE.COM domain name is "bona fide." This Panel resolves that issue in favor of Respondent because, as Respondent points out, Respondent has been operating its website under the disputed domain name since 1997, but never received any complaint from Complainant until June 1999. Exhibit 1 to Response. Even after its complaint to Respondent, Complainant continued to sell Respondent products under the DRAW TITE trademarks, as evidenced by invoices dated January 7, 2000 and January 26, 2000, Exhibits 6 and 7 to the Response.

This Panel finds it significant that this latter invoice was dated January 26, 2000, one day after Complainant filed its Complaint which commenced this proceeding. Complainant has not produced any evidence to controvert Respondent’s assertions or evidence regarding the bona fides of Respondent’s sales of products under the DRAW TITE name and mark.

Furthermore, Complainant’s additional submission of March 13, 2000 fails to controvert Respondent’s sworn affidavit that Respondent received consent from Complainant itself to create and launch a website using the domain name at issue. Combined with Complainant’s failure to explain why it did not take action prior to June of last year to stop Respondent’s use of Complainant’s trademarks on Respondent’s web page, these events show Complainant’s acquiescence to Respondent’s actions.

Respondent asserts that as a duly authorized representative of Complainant, it has a license to use Complainant’s trademarks, and by agreement, to reflect the same in Respondent’s domain name. Complainant denies any relationship with Respondent. The disputants have not presented evidence sufficient for the Panel to resolve the question whether there is a formal license between the parties, or whether such license was overstated, or terminated. Whether or not a formal license agreement exists, the evidence submitted to this Panel, coupled with Complainant’s failure to take action against Respondent’s website prior to July 1999, indicate Complainant’s acquiescence to Respondent’s use of the domain name. This is sufficient foundation for this Panel’s finding that Respondent is using the domain name in connection with the bona fide offering of Complainant’s goods.

If Complainant desires to obtain relief based upon some allegations that Respondent overstepped or overstated the bounds of its arrangement with Complainant, or that no such arrangement exists, that argument is better addressed to a court, which is equipped to resolve such complicated factual issues. On the record presented herein, this Panel must draw the conclusion that Respondent’s use of its domain name was in connection with the bona fide offering of goods and services, albeit the goods and services of Complainant.

C. Jurisdictional Challenges
Respondent raises what is apparently an issue of first impression under the UDRP Policy: that this Panel is not the proper forum to decide this dispute. Response, Par. 12. Specifically, Respondent asserts that "the dispute herein, if one truly exists[s], is in the nature of a contract dispute... . Apparently, [Complainant]’s parent company...is dissatisfied with that contract and is now trying to terminate it. Accordingly, it would be an abuse of the dispute resolution process to allow the matter to continue and it should be dismissed outright." Id.

This Panel well recognizes that its jurisdiction is limited to providing a remedy in cases of "the abusive registration of domain names," or "Cybersquatting." Report of the WIPO Internet Domain Name Process, Pars. 169, 170. Like any other tribunal, however, this Panel can determine whether it has jurisdiction only from the facts and arguments presented to it. In this case, Complainant did allege bad-faith use and registration of the domain name at issue. Had Complainant proved those allegations, there would be no proper question as to this Panel’s jurisdiction. Complainant also complied with all of the other technical requirements of the UDRP Policy. See Section 3 above. This Panel agrees that Complainant has not proved that Respondent used or registered its domain name in bad faith. This does not mean, however, that this Panel is deprived of jurisdiction to make that decision.

By virtue of its contract with NSI in 1997, Respondent agreed to be bound by NSI’s then-current domain name dispute policy, and any changes made to that policy made by NSI in the future. Respondent assented to changes in that policy by maintaining its domain name registration with NSI, even after NSI’s adoption of the UDRP Policy. This Panel has carried out its mandate to decide the issue of abusive registration, brought before it by Complainant. This Panel has not, and as stated above will not, exceed the scope of that inquiry. Challenges to this Panel’s authority to hear disputes asserting the bad faith use and registration of domain names, which may be part of a larger dispute between the parties, should be addressed to the applicable courts.

Respondent further objects to the fact that Complainant submitted itself to the jurisdiction of Herndon, Virginia, where Registrar NSI is located, under Par. 3(b)(xiii) of the UDRP Rules. Respondent asserts that "pursuant to the policy, rules and the registration agreement filed by Respondent the Mutual Jurisdiction must be the jurisdiction in which the offices of Respondent are located, i.e. Plattsburgh, New York, U.S.A." Response, Par. 19. Respondent’s argument is not well taken. First, the registration agreement filed by Respondent binds Respondent, not Complainant, to submit to the UDRP Policy. UDRP Policy, Section 4(a). Second, both the UDRP Policy and the UDRP Rules permit a Complainant to submit itself to a Mutual Jurisdiction at one of two locations:

either (a) the principal office of the Registrar (provided the domain-name holder has submitted in its Registration Agreement to that jurisdiction for court adjudication of disputes concerning or arising from the use of the domain name) or (b) the domain-name holder’s address as shown for the registration of the domain name in Registrar’s WHOIS database at the time the Complaint is submitted to the Provider.

UDRP Rules, Section 1 (definition of "Mutual Jurisdiction"). See also UDRP Policy, Section 3(b)(xiii); UDRP Policy, Section 4.k.

As noted above, Respondent has submitted to the UDRP Policy by virtue of maintaining its domain name registration with NSI after NSI’s adoption of the UDRP Policy. This includes submission to jurisdiction at the location of the principal office of the Registrar. This contractual issue is beyond the scope of this Panel’s review.

Furthermore, Complainant’s submission to a Mutual Jurisdiction under the UDRP Rules only comes into play where Respondent seeks to appeal this Panel’s decision. Since this Panel has ruled in Respondent’s favor, it is unlikely such an appeal will be filed. Nevertheless, Complainant’s submission to a Mutual Jurisdiction benefits Respondent, not Complainant: had Respondent brought this dispute to a court, where Respondent suggests it belongs, Respondent might only have been able to obtain jurisdiction over Complainant at the location where Complainant resides. By submitting to a Mutual Jurisdiction, Complainant has provided Respondent with an additional forum where Respondent is amenable to suit. This additional forum is provided not by operation of law, but by contract between Complainant and the Center, and Respondent is a third-party beneficiary of that contract.

The question whether a Complainant should be permitted to elect a Mutual Jurisdiction other than Respondent’s stated address is one this Panel is not empowered to decide.

5. Decision
For the reasons set forth hereinabove, the Complaint is denied. The domain name shall remain the property of Respondent.