Domain name - Domain name dispute resolution policy - U.S. Service mark - U.S. Trademark - Identical - Confusingly similar - Bad faith registration - Bad faith use – Reverse Hijacking – Jurisdiction of the Panel – Authorized Dealer – Proper Forum -Cybersquatting.

Complainant is the owner of several U.S. Trademark Registrations for several variations of the mark WEBER, as detailed in Attachment A hereto.  Complainant is the manufacturer of “Weber” grills and related products and services. 

Respondent registered numerous domain names with the trademarked name "weber" in some form or combination.  Respondent is a hardware store which owns or operates websites under the domain names in dispute to promote sales of Complainant’s product.  Respondent is an authorized reseller of Complainant’s products. 

Respondent objects to the jurisdiction of WIPO and ICANN, asserting that parallel proceedings in the U.S. District Court are the proper forum. 

Held, Names Not Transferred to Complainant.

While the domain names are not identical to Complainant’s registered trademarks, the subject domain names are confusingly similar to the Complainant’s registered trademarks.  The addition of extra words is an insubstantial difference.  In addition, 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. 

Respondent has presented competent proof that it has a “right or legitimate interest in respect of the domain name.”  Respondent has proved that it has used the domain name in connection with the bona fide offering of Complainant’s goods or services. 

Complainant has failed to prove that Respondent’s registration and use of the domain names was in “bad faith.”  Complainant does not rebut that Complainant was aware of, and repeatedly approved, Respondent’s web site over a period of several years (1996-1999).

Finally, the Panel decides that Respondent has failed to support a claim for reverse domain name hijacking.  Both sides had grievances with the other, which are currently the subject of a parallel District Court action. 

The jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names,” or “Cybersquatting.”  This Panel can determine whether it has jurisdiction only from the facts and arguments presented to it.  By virtue of its contract with NSI, 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.

(Concurring Opinion of Jordan S. Weinstein)

The proper course is to stay these proceedings pending the outcome of the copending district court proceeding.  In addition to the ability to provide the same remedies as the Panel, the District Court can resolve larger issues between the parties.  There are also numerous procedural advantages available in the District Court.  Finally, the decision of this panel is neither binding on the District Court, nor entitled to any precedential weight. Considerations of judicial economy call for us to defer rendering our decision, and to allow the District Court to make its own, independent judgment based upon the full record to be presented before it. 
 

Policies referred to

Rules for Uniform Domain Name Dispute Resolution Policy
Supplemental Rules for Uniform Domain Name Dispute Resolution Policy
Uniform Domain Name Dispute Resolution Policy

Cases referred to
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Panel Decision referred to
Draw-Tite, Inc. v. Plattsburgh Spring, Inc., Case No. D2000-0017
 

Powers, Panelist: -

1. Parties

The Complainant is Weber-Stephen Products Co., an Illinois corporation located at 200 East Daniels Road, Palatine, Illinois 60067-6266, U.S.A.  The Respondent is Armitage Hardware, 925 West Armitage Avenue, Chicago, Illinois 60614, U.S.A.
 

2. The Domain Names and Registrar

The domain names at issue in this proceeding are:  WEBERGRILLS.COM, WEBERGRILL.COM, WEBER-GRILLS.COM, WEBER-GRILL.COM, WEBERGRILLSOURCE.COM, WEBERGRILLSTORE.COM, WEBERGRILLSHOWROOM.COM, WEBERGRILLS-AH.COM, WEBGRILLS.COM and WEB-GRILLS.COM.  The Registrar is Network Solutions, Inc. of 505 Huntmar Park Drive, Herndon, Virginia 20170, U.S.A.
 

3. Procedural History

On March 20, 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”).  On April 10, 2000, Respondent’s representative served a Response to the Complaint.

On April 28, 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 May 11, 2000. 
 

4. Factual Background

Complainant is the owner of several U.S. Trademark Registrations for several variations of the mark WEBER, as detailed in Attachment A hereto.  Complainant is the manufacturer of “Weber” grills and related products and services. 

Respondent is an Illinois hardware store which owns or operates websites under the domain names in dispute.  These websites promote sales of Complainant’s product.  Respondent is an authorized reseller of Complainant’s products.
 

5. Parties’ Contentions

 A. Complainant

Complainant contends that Respondent’s domain names are “identical and/or confusingly similar to trademarks and service marks” listed in Attachment A.  Complaint, Par. 11(a).  Complainant asserts that “Respondent has no rights or legitimate interests” in these marks.  Complaint, Par. 11(b).  Complainant asserts that “Respondent registered and is using the [disputed domain names] in bad faith.”  Complaint, Par. 11(c).

B. Respondent

Respondent objects to the jurisdiction of WIPO and ICANN, asserting that parallel proceedings in the U.S. District Court are the proper forum.  Response, Sec. 1.  Respondent denies that its registration or use of the domain names at issue was in bad faith, because Respondent is an authorized sales representative for Complainant and is duly licensed by Complainant to use the WEBER trademark in advertising and sales of Complainant’s products.  Respondent further asserts that Complainant was fully aware of and approved Respondent’s use of the domain names at issue.  Response, Sec. 2. 

Respondent further asserts that the domain names at issue are not identical or confusingly similar to the WEBER trademarks and that Respondent has a legitimate interest in the domain names.  Finally, Respondent asserts that Complainant's Complaint amounts to reverse domain name hijacking. 
 

6. 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.

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 names are not identical to Complainant’s registered trademarks, this Panel finds that the subject domain names are confusingly similar to the Complainant’s registered trademarks.  The addition of the word “grills” to “Weber,” for example, is an insubstantial difference.

In addition, Respondent’s own web page at WEBERGRILLS.COM repeatedly reproduces Complainant’s registered WEBER trademark.  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 additional reason, Respondent’s argument that the marks are not confusingly similar is not well taken. 

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.  It is apparent from the Respondent’s web page that Respondent is selling Complainant’s goods under Complainant’s registered trademark.  Although it appears that Respondent has also used its web page to sell (directly or indirectly) products other than Complainant’s, these instances appear to be minor and Complainant has not controverted Respondent’s alleged removal of these items.  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 primarily in connection with the bona fide offering of goods or services. 

 This Panel concludes that Complainant has failed to prove that Respondent’s registration and use of the domain names was in “bad faith.”  Complainant does not rebut (or even substantively address) the substantial showing made by Respondent that Complainant was aware of, and repeatedly approved, Respondent’s web site over a period of several years (1996-1999).

 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 of Complainant. 

 Finally, the Panel decides that Respondent has failed to support a claim for reverse domain name hijacking.  It appears clear from the limited record before the Panel that both sides had grievances with the other, which are currently the subject of a parallel District Court action.  In light of this record, the Panel rejects the claim of reverse domain name hijacking. 

 C. Jurisdictional Challenges

 Respondent asserts that this Panel is not the proper forum to decide this dispute.  Response, Sec. 1.

 The jurisdiction of this Panel 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.  Draw-Tite, Inc. v. Plattsburgh Spring, Inc., Case No. D2000-0017.  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, 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. 
 

7. Decision

For the reasons set forth hereinabove, the Complaint is denied.  The domain names shall remain registered to Respondent. 
 
 
 
 

Matthew D. Powers
Presiding Panelist
 
 
 
 

Jordan S. Weinstein
Panelist
 
 
 
 

Richard W. Page
Panelist
 

May 11, 2000
 
 
 
 

Concurring Opinion

While I concur in the decision of my fellow panelists, I believe the proper course is to stay these proceedings pending the outcome of the copending district court proceeding.  The District Court case includes a count under the Anticybersquatting Consumer Protection Act (“ACPA”), which would permit transfer or cancellation of the subject domain name upon a showing that the domain name was registered in bad faith.  In addition to providing this relief ~ identical to that available here ~ the District Court case includes counts of trademark infringement and unfair competition which, once addressed by the Court, would appear to resolve larger issues between the parties which this Panel cannot decide.

In addition, the District Court proceedings permit the exchange of discovery, examination of witnesses, presentation of reply arguments, and examination and cross-examination of live witnesses, all of which are unavailable in a proceeding under the UDRP.  The ability to resolve the entire breadth of the parties’ dispute, in a forum which allows detailed consideration of all the parties’ grievances, calls for stay of the present proceedings in favor of the District Court.

Finally, while we hope the District Court will find our decision helpful in its deliberations, our decision is neither binding on the District Court, nor entitled to any precedential weight.  Report of the WIPO Internet Domain Name Process, Par. 196(ii).  Considerations of judicial economy call for us to defer rendering our decision, and to allow the District Court to make its own, independent judgment based upon the full record to be presented before it. 
 
 
 
 

Jordan S. Weinstein
Panelist
 

May 11, 2000