The Complainant is Cobb International (Pty) Limited of Wynberg, Sandton, South Africa, represented by DM Kisch Inc., South Africa.
The Respondent is Chris Holloway, Cobb Depot, Inc., Advanced Outdoor Concepts, Inc. of Florida, United States of America (“US”).
The disputed domain names, <cobbamerica.com> and <cobbq.com> (the “Domain Names”), are registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 22, 2013. On November 22, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On November 25, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. However, the Registrar indicated that in relation to the Domain Name, <cobbamerica.com>, the Registrar regards the Respondent’s named company, Advanced Outdoor Concepts, Inc. to be the registrant and that in relation to the Domain Name, <cobbq.com>, the Registrar regards the Respondent’s named company, Cobb Depot, Inc. to be the registrant.
On December 4, 2013, the Center sent an email communication to the Complainant inviting it to amend the Complaint, namely the paragraphs relating to the bad faith registration and use of the Domain Names, insofar as registration in bad faith is concerned, and the remedies sought, as required by Rules, paragraph 3(b)(ix) and 3(b)(x). The Complainant filed an amendment to the Complaint on December 9, 2013.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 9, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 29, 2013. The Response was filed with the Center on December 27, 2013.
The Center received a Supplemental Filing from the Complainant on January 7, 2014. The Center received another Supplemental Filing from the Respondent on January 7, 2014.
The Center appointed Tony Willoughby as the sole panelist in this matter on January 9, 2014. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Complainant is the proprietor of numerous trade mark registrations of the name COBB, word marks and device marks. For present purposes it is sufficient to name but one, namely United States Registration No. 2719958 dated October 1, 2001 (registered May 27, 2003) COBB (design plus words) in class 11 for portable barbecue apparatus.
The Domain Names were registered on April 22, 2002 (<cobbamerica.com>) and October 15, 2003 (<cobbq.com>).
On the evidence of the Complainant, which the Panel accepts as fact for the purposes of this administrative proceeding:
(a) “The relationship between the Complainant and Respondent commenced towards the latter half of 2003. The earliest offering of Cobb products from the domain name <cobbq.com> is April 4, 2004”;
(b) “The Respondent clearly registered the domain name [<cobbq.com] for the sole purpose of distributing the Complainant’s products ….”
Towards the end of 2013 the distributorship was terminated.
The Complainant contends that the Domain Names are identical or confusingly similar to the Complainant’s registered trade marks, that the Respondent has no rights or legitimate interests in respect of the Domain Names and that the Domain Names are being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Panel notes that in the original Complaint the heading of the section relating to paragraph 4(a)(iii) of the Policy is headed “The domain name is being used in bad faith” whereas the heading in the model form from which the Complaint was derived reads “The domain name(s) was/were registered and is/are being used in bad faith”.
Neither the Complaint nor the amendment to the Complaint contains any allegation that the Domain Names were registered in bad faith. Instead it is asserted that paragraph 4(b)(iv) of the Policy enables a finding of bad faith registration and use on the basis of bad faith use alone. The amendment to the Complaint introduces paragraph 4(b)(iv) as follows:
“Per rule 4(b)(iv) a domain may be considered to be registered or (sic) being used in bad faith if by “using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to their website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your web site or location””
The bad faith allegations concern the continuing use of the Domain Names by the Respondent and the Respondent’s attempts to sell the Domain Names to the Complainant and others for USD 50,000 upon termination of the distribution agreement.
The Respondent contends that the Domain Names are not identical to the Complainant’s trade mark and cannot be confusingly similar to the Complainant’s trade mark because the Complainant’s trade mark is not a famous mark.
The Respondent contends that he registered the Domain Names before the Complainant’s first trade mark registration came through and that he has consistently used the Domain Names for the sale of the Complainant’s products and other products.
The Respondent denies that he registered the Domain Names in bad faith and denies that he has ever used the Domain Names in bad faith; nor does he intend to use them in bad faith in the future. He contends that he stopped using the Domain Names on November 22, 2013.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:
(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names were registered and are being used in bad faith.
In writing his Decision, the Panel has to have regard to paragraph 15(e) of the Rules and in particular the following sentence namely:
“If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at reverse domain name hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its Decision that the Complaint was brought in bad faith and constitutes an abuse of the Administrative Proceeding.”
Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”.
This issue is discussed further in paragraph G below.
The Panel has read the further submissions of the parties, but save for one matter raised in the Complainant’s further submission, they fail to address the fundamental issue discussed in paragraph F below and are not therefore material to this Decision.
The matter raised by the Complainant in its further submission, which is material to the Panel’s Decision, is the citation of Cobb International Limited v. Cobb Australia & New Zealand (Pty) Ltd. WIPO Case No. DAU2013-0005 (<cobb.com.au>), which is said by the Complainant to be “a similar complaint against an Australian distributor”. The Panel deals with this case in paragraphs F and G below.
The Domain Names comprise the Complainant’s trade mark, COBB, the generic Top-Level Domain identifier “.com” and between those elements “america” and “q” respectively. In the view of the Panel neither of those intervening terms is sufficient to affect the distinctiveness of the Complainant’s trade mark.
The Panel finds that the Domain Names are confusingly similar to a trade mark in which the Complainant has rights. For completeness, the Panel adds that the Respondent’s contention that for this purpose the Complainant’s trade mark must be a famous mark is misconceived.
In light of the Panel’s finding under paragraph F below it is unnecessary for the Panel to address this issue.
As indicated at paragraph A above, for the Complaint to succeed under the Policy the Complainant must satisfy the Panel that the Domain Names were registered in bad faith as well as being used in bad faith. However, as indicated in Section 5A above, the Complainant does not allege that the Respondent registered the Domain Names in bad faith. Indeed, the Complainant acknowledges that for most of the last nine years the Respondent has been distributing the Complainant’s products online in the United States of America and there is no dispute between the parties that the Respondent has been an authorized distributor of the Complainant’s products.
As appears from paragraph C above the Complainant sees the circumstances of this case to be similar to the circumstances of Cobb International Limited v. Cobb Australia & New Zealand (Pty) Ltd. WIPO Case No. DAU2013-0005 (<cobb.com.au>), a case in which the Complainant succeeded in securing transfer of the domain name in issue from a former distributor. However, that case was decided under the .au Dispute Resolution Policy, a policy, which, unlike the UDRP, enables a complainant to succeed on the basis of bad faith use alone. The distinction is dealt with in Poundland Limited v. Dealz.com WIPO Case No. D2012-0918 (<dealz.com>): “The objective of the Policy was to combat the undue and abusive registration of domain names in “cybersquatting” cases. By definition, registration occurred in bad faith. If it was intended that “registration” and “use” be considered in the alternative, this would have been reflected in the wording of the Policy. For example, dispute resolution policies for other domains (e.g. “.au”, “.uk”, “.eu”) provide that the third element can be satisfied through either bad faith registration or use.”
In the Australian decision cited above the panel expressly found that the domain name in issue had been registered in good faith, but that it was the subsequent bad faith use which resulted in the decision going the way of the Complainant.
The Complainant’s contention that paragraph 4(b)(iv) of the Policy enables a finding of bad faith registration and use within the meaning of paragraph 4(a)(iii) of the Policy is supported by no cited authority save for the above Australian decision. Some years ago a few panels made findings under the Policy to similar effect, but they have not been followed by the vast majority of panels and, in any event, the Complainant’s bad faith use allegations (concerning the continuing use of the Domain Names by the Respondent and the Respondent’s attempts to sell the Domain Names to the Complainant and others for USD 50,000 upon termination of distribution agreement) are not suitable for resolution under the Policy involving as they do disputed facts and an interpretation of the distributorship agreement under what is likely to be either South African law or United States law. The exhibited extracts do not identify the law of the contract.
Moreover, the Complainant’s allegations in relation to the Respondent’s alleged demand of USD 50,000 for the Domain Names stem largely from an email from the Respondent to the Complainant dated October 30, 2013 (not exhibited to the original Complaint) in which the Respondent mentions the figure of USD 50,000 and also refers to offers received from other companies. He adds that he is confident that he can get a lot more on domain auction. So stated the Respondent’s behaviour has all the hallmarks of bad faith use. However, the email is written in the context of termination of the distributorship agreement and it comes across clearly to the Panel that all the Respondent is doing is communicating to the Complainant his perception of what he could reasonably obtain from a new distributor taking over from the Respondent all those “assets” of the Respondent relevant to the Complainant’s brand. The figure of USD 50,000 was not solely for the Domain Names. In that email the Respondent says:
“The websites, mailing list, Facebook, Vendor agreements etc. have a real tangible value to a potential new Cobb distributor. I have put a minimum price tag on the whole lot of USD 50,000. That said, I’m not expecting You or Cobb International to buy any of this, although you are welcome to purchase it all for USD 50,000. […]. My hopes are that you sign a new distributor that sees the value of the business that can be up and running with an existing client base in days instead of years. I am also talking to 2 potential new distributors that will be contacting you soon and they are (sic) have been presented with the offer for my business as laid out above and any other dealings would be directly with you and hopefully I get the distributor commission.”
It may be that the Respondent’s price tags and expectations run counter to the terms of the distributorship agreement, but the Panel is not in a position to determine the point and in any event based on the available record there appears to be no dispute that the Domain Names were in fact registered in good faith.
The Complaint fails because the Complainant has failed to establish that the Domain Names were registered in bad faith.
The Rules require the panel to consider in each case whether the complaint was brought in bad faith or otherwise constitutes an abuse of the proceeding and on finding such to so state in the decision. The fact that the Respondent may not have sought such a finding is of no moment. See Goway Travel Limited v. Tourism Australia, WIPO Case No. D2006-0344 (“The Rules specifically put the burden on the Panel to determine whether a complainant has tried to use ‘the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.”).
In two recent decisions (Timbermate Products Pty Ltd v. Domains by Proxy, LLC/Barry Gork, WIPO Case No. D2013-1603 and Aero Club v. Domain Admin - DomainGrabber.com WIPO Case No. D2013-1656)
this Panel has had occasion to make findings of Reverse Domain Name Hijacking in circumstances where the complainant was legally represented and where the complaint was based solely on bad faith use. In both those cases the complainants’ representatives had demonstrated knowledge of the UDRP and the need to establish what is known as the conjunctive requirement (bad faith registration and bad faith use).
Generally, in the view of the Panel, where a complainant is professionally represented, the complainant should be taken to have the knowledge of its representative. In both the above cases the case papers demonstrated relevant expertise in the hands of the complainants’ representatives. In this case the Complainant’s representative is well-known in the field of intellectual property and might, in the view of the Panel, be presumed to have the relevant expertise, but it appears to have taken the view that bad faith use on its own is sufficient to merit transfer of a domain name under the Policy. Was this an intentional “mistake” or ignorance?
The Panel doubts that a firm as distinguished as the Complainant’s representative would intentionally seek to abuse this administrative proceeding, but it is nonetheless the fact that the person responsible for drafting the Complaint worked from the online form available at the Center’s website and went to the trouble of changing the template heading as described in Section 5A above to omit any reference to bad faith registration. Why?
Moreover, after the Center’s email communication of December 4, 2013 (see section 3 above), the Panel would have expected the Complainant to have focused on the issue of bad faith registration and come forward with express, relevant and clear arguments, but the Complainant did not do so.
Misconceived complaints of this kind put respondents minded to respond (many are not so minded) to significant and unnecessary expense. If the Respondent is making abusive use of the Domain Names (the Panel is insufficiently informed to make a finding one way or the other), there are other means available to the Complainant to seek redress.
In this Panel’s view, the strongest method available to panels to register their objection to fundamentally flawed complaints of this kind is to make findings under paragraph 15(e) of the Rules.
The Panel finds that the Complaint constitutes an abuse of the Administrative Proceeding.
For the foregoing reasons, the Complaint is denied.
Tony Willoughby
Sole Panelist
Date: January 21, 2014
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