jardineperformance.com

WIPO Arbitration and Mediation Center

1.1 The Complainant is Summit Industries, Inc., a corporation organized under the laws of the State of California, United States of America, having its principal place of business at 1220 W. Railroad Street, Corona, California, United States of America.

1.2 The Respondent is Jardine Performance Exhaust, Inc., an entity having an address at 3577 US Highway 26 West, Dubois, Wyoming, United States of America.

The domain name at issue is <jardineperformance.com>, which domain name is registered with Network Solutions, Inc., based in Herndon, Virginia, United States of America.

3.1 A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on August 7, 2001, and the signed original together with four copies was received on August 10, 2001. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated August 7, 2001.

3.2 On August 7, 2001, a Request for Registrar Verification was transmitted to the Registrar, Network Solutions, Inc. ("NSI") requesting it to: (1) confirm that the domain name at in issue is registered with NSI; (2) confirm that the entity identified as the Respondent is the current Registrant of the domain name; (3) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the Registrar’s Whois database for the Registrant of the disputed domain name, the Technical Contact, the Administrative Contact and the Billing Contact; (4) confirm that the Uniform Domain Name Dispute Resolution Policy (the "Policy") is in effect; (5) indicate the current status of the domain name.

3.3 On August 8, 2001, NSI confirmed by reply e-mail that the domain name is registered with NSI, is currently in active status, that an individual by the name of Jerry Jardine was both Billing and Administrative Contact, and that the Respondent is the current Registrant of the name. The Registrar also forwarded the requested Whois details, and confirmed that the Policy is in effect.

3.4 The WIPO Center determined that the Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"), the Uniform Rules, and the Supplemental Rules. The required fees for a Sole Panelist were paid on time and in the required amount by the Complainant.

3.5 No formal deficiencies having been recorded, on August 14, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, NSI and ICANN), setting a deadline of September 3, 2001, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by e-mail to the e-mail addresses indicated in the Complaint and specified in NSI’s confirmation. In addition, the Complaint was sent by express courier to the postal address given. Having reviewed the communications records in the case file, the Administrative Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent".

3.6 On September 4, 2001, not having received any Response, the WIPO Center sent the parties a formal Notification of Respondent Default.

3.7 On September 4, 2001, the WIPO Center received a request from Complainant's counsel to suspend the proceedings pending settlement negotiations. The WIPO Center advised Complainant's counsel that in order to suspend the proceedings it required a formal request for such suspension.

3.8 On September 13, 2001, the WIPO Center received a formal request from Complainant's counsel to suspend the proceedings for a period of 10 days.

3.9 On September 19, 2001, the WIPO Center issued its notification of Suspension of Proceedings, suspending the proceeding until September 24, 2001. The Suspension provided that the proceedings would be automatically terminated upon the expiration of the suspension unless Complainant notified the WIPO Center that it wished the proceedings to be re-instituted.

3.10 On September 25, 2001, Complainant's counsel requested the WIPO Center to re-institute the proceedings, appoint a Panelist, and "to proceed until a decision is reached".

3.11 On October 11, 2001, in view of the Complainant's designation of a single Panelist, the WIPO Center appointed M. Scott Donahey to serve as Sole Panelist.

3.12 On October 11, 2001, Complainant's counsel requested another 10-day suspension of the proceedings.

3.13 On October 12, 2001, the WIPO Center communicated the Panel's decision not to grant a further extension absent agreement by the Respondent to such a procedure.

4.1 Complainant has used the marks JARDINE, JARDINE PERFORMANCE, JARDINE EXHAUST, and JARDINE PRODUCTS since December 1985. Complainant owns no federally registered trademarks for any of the above, although Complainant filed a trademark application with the United States Patent and Trademark Office ("USPTO") for registration of the mark JARDINE on April 10, 2000, in connection with automobile, truck, and motorcycle exhaust pipes. Complaint, Annex F. A review of the online trademark records of the USPTO shows that on June 3, 1998, Complainant applied for a trademark for JARDINE PERFORMANCE PRODUCTS, which application was abandoned on June 18, 2000.

4.2 On December 24, 1985, pursuant to a written Agreement of Purchase and Sale, Complainant purchased the stock held by Jerry Jardine and Sara Jardine (collectively defined in the agreement as "shareholder") in Jardine Header Company, a California corporation. Complaint, Annex D.

4.3 Paragraph 10 of the Agreement of Purchase and Sale provides: "Shareholder represents warrants and covenants [sic] that shareholder has granted to corporation the exclusive right inperpetutity [sic] to use shareholder's name as part of corporation's name for and in conjunction with all business of whatever kind and character conducted previously or in the future by corporation, and that shareholder has not granted and will not grant to any other person, firm or corporation the right to use, and that shareholder will not himself use (except in connection with corporation) shareholder's name as part of the corporate or firm name of any other firm, entity, corporation or business or as part of any tradename [sic] or trademark not belonging to corporation."

4.4 Since the acquisition of the stock, Complainant has used the JARDINE name and marks in association with Complainant's goods and services. Complaint, Annex E. A review of the materials assembled in Annex E shows the products to be intended for use with motorcycles, automobiles, all terrain vehicles, and sport utility vehicles.

4.5 On March 25, 1995, Respondent registered the domain name <jardineperformance.com>. Complainant believes that the Jerry Jardine listed as the Administrative and Billing Contact for Respondent is one of the former owners of the shares acquired by Complainant in December 1985, and presumes that he is an owner of Respondent.

4.6 Respondent has used the domain name at issue to resolve to a website for Pinnacle Performance Exhaust having the same address as Respondent. The website shows pictures of Recreational Vehicles and features advertisements for exhaust systems for Recreational Vehicles.

4.7. Apparently, Complainant has not sent Respondent a letter requesting transfer of the domain name at issue, as there is no reference to such a letter in the Complaint.

5.1 Complainant contends that Respondent has registered a domain name which is confusingly similar to common law marks used by Complainant and in which Complainant claims rights, that Respondent has no rights or legitimate interests in respect to the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.

5.2 Respondent has not contested the allegations of the Complainant.

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall 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."

Since both the Complainant and Respondent are domiciled in the United States, and since United States’ courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,

2) that the 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.

The claim brought by Complainant relies on contract rights to the trademarks at issue. The contract provision on which Complainant relies is less than clear. It contains no reference to the transfer of trademarks. It contains no prohibition against the use of the name "Jardine", which Complainant acknowledges is the legitimate surname of Respondent's presumed owner, as part of a domain name. It is less than clear whether Respondent would be contractually prohibited from use of the name in conjunction with products offered for use with motor vehicles (RVs) for which Complainant's products are apparently not currently offered.

The UDRP is designed to deal with simple cases of cybersquatting. As it was stated in The Management of Internet Names and Addresses: Intellectual Property Issues, the Final Report of the WIPO Internet Domain Name Process, dated April 30, 1999, at paragraph 169, "It is recommended that the scope of the administrative procedure be limited to the abusive registration of domain names . . . ." This is not such a case. This case involves contractual interpretation issues, and really depends on a determination of precisely which rights were conveyed in a written stock transfer agreement, and which acts were prohibited under the written transfer agreement. It is not an appropriate situation for the application of the UDRP.

For all of the foregoing reasons, the Panel decides that the question presented is outside the purview of the UDRP, in that it involves questions of the extent of rights transferred and retained under a stock purchase agreement. Such questions should be determined in an arbitration conducted by agreement of the parties or by a court of law. Accordingly, the Complaint must be dismissed.

M. Scott Donahey
Panelist

Dated: October 15, 2001