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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Assembled Products Corporation v. Uppgroup Inc.

Case No. D2009 1223

1. The Parties

The Complainant is Assembled Products Corporation of Arkansas, United States of America, represented by Boyd D. Cox, United States of America.

The Respondent is Uppgroup Inc. of Alberta, Canada, represented by Merv Carlson, Canada.

2. The Domain Names and Registrar

The disputed domain names <chev-jotto-desk.com>, <chevjottodesk.com>, <dodge-jotto-desk.com>, <dodgejottodesk.com>, <ford-jotto-desk.com>, <fordjottodesk.com>, <ford-jotto-desk.info>, <ford-jotto-desk.net>, <gmc-jotto-desk.com>, <gmcjottodesk.com>, <honda-jotto-desk.com>, <hondajottodesk.com>, <jotto-desks.com>, <jotto-desk-search.com>, <jotto-desks.net>, <jottodesks.net>, <nissan-jotto-desk.com>, <nissanjottodesk.com>, <police-jotto-desk.com> and <policejottodesk.com> are registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 15, 2009. On September 16, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On September 16, 2009, GoDaddy.com, Inc. transmitted by email to the Center its verification response providing the name of the Registrant and contact details. The Complainant filed an amendment to the Complaint on September 16, 2009. 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 September 30, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 20, 2009. The Response was filed with the Center on October 16, 2009.

The Center appointed James A. Barker as the sole panelist in this matter on October 28, 2009. 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.

On October 28, 2009, the Complainant asked the Center to provide the means by which Complainant could submit a reply to the Response, if available. The Panel considered that communication and, on October 30, 2009, the Center notified the parties that the Panel declined to make a request under paragraph 12 of the Rules (to allow further submissions) in response to the Complainant`s communication.

On November 13, 2009, the Panel requested the parties to provide further submissions on a particular issue raised by the Response – being the issue of whether there had been prior business dealings between the Complainant and the Respondent, and/or between the Respondent and the Complainant`s distributors. In accordance with that Panel Order, the Complainant submitted a reply on November 17, 2009, and the Respondent submitted a reply on November 19, 2009. The due date for the decision was accordingly extended until November 27, 2009.

4. Factual Background

The Complainant`s business concerns clip boards for use in automobiles, which provide a portable writing surface and a means to attach notebooks, writing instruments, two way radios, cellular phones, and other devices.

The Complainant is the owner of a registered mark for JOTTO DESK, on the principal register of the United States Patent and Trademark Office (USPTO). The Complainant also registered the domain name <jottodesk.com> in 1997, and uses it in connection with a website for its business.

The Respondent provided evidence that it was first incorporated in Canada (under a previous name) in November 2002. Its name was changed to Uppgroup Inc. in February 2003.

The disputed domain names were registered by the Respondent in October 2006.

As evidenced in the case file, as at September 30, 2009, the disputed domain names resolved to websites advertising and providing photographs of the Complainant`s products. Websites at domain names incorporating the names of particular models of vehicles (e.g. <ford jotto desk.com>) contain information primarily relating to ‘jotto desks` for that particular model.

5. Parties` Contentions

A. Complainant

The Complainant claims that its registered JOTTO DESK mark is well known, and that the disputed domain names are identical or confusingly similar to that mark. All the disputed domain names include only minor modifications to the Complainant`s mark, and all include the critical JOTTO DESK element.

The Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain names, as the Respondent is using them to redirect Internet traffic to the Respondent`s websites, where the Respondent advertises products that compete with the Complainant`s. The websites at the disputed domain names also refer to authentic JOTTO DESK products, falsely indicating an authorization or commercial relationship with the Complainant. The Complainant points to the examples of an "Accessories" link and an invitation to use a toll free number in connection with an offering of the Complainant`s products, however the link does not work and the toll free number is not provided. Such practices thwart efforts of potential customers to find JOTTO DESK products.

The Complainant also claims that the Respondent has registered and used the disputed domain names in bad faith, since they were registered to disrupt the Complainant`s business.

B. Respondent

The Respondent denied the Complainant`s case against it. The Respondent stated that the Complainant was well aware of the Respondent`s use of the disputed domain names and involvement with the Complainant for many years. The Respondent says that it has been assisting the Complainant, directly and indirectly, in the marketing, selling and promotion of the Complainant`s products, dating back to 2000 and perhaps even earlier.

The Respondent, firstly, denies that the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights. In this connection, the Respondent notes that the Complainant does not have a mark registered in Canada, where the Respondent has its address. The Respondent also points out that the Complainant`s trademark registration disclaims any rights in the word "desk", which is a generic term in which the Complainant does not have rights; the Complainant has provided no evidence of its <jottodesk.com> website; the Complainant has provided no evidence of its business reputation. The Respondent notes that the term "jotto" was the subject of a previous registration in 1957 to a third party – Jotto Corporation. The only way the Complainant can use its mark is exactly as it is registered. None of the disputed domain names use the trademark as it is registered. The Respondent refers to other domain names (not the subject of this dispute) that contain the term "jottodesk", which are registered to third parties, and which contain no reference to the Complainant.

In relation to its rights or legitimate interests, the Respondent claims that the Complainant was fully aware that the Respondent has "provided a valuable service for [the Complainant] and its network of dealers and distributors throughout Canada for the last 10 years." The Respondent claims that the Complainant`s representatives have traveled to Canada and were involved with discussions with the Respondent. The Respondent says that it has provided "bid management and position placement to Jotto Dealers as far back as 2000." Among other things, as evidence the Respondent refers to an email it sent to a distributor of the Complainant`s products in Canada in 2003 from an email address at "jottodesk.net".

For somewhat similar reasons, the Respondent denies that it has registered or used the disputed domain names in bad faith. Rather, the Respondent says that it registered the disputed domain names for the purpose of legitimately advertising the Complainant`s products.

The Respondent requests a finding of reverse domain name hijacking against the Complainant.

C. Panel Order and Parties` Responses

Panel Order

As noted above, both parties made submissions in response to the Panel Order concerning any prior business relationship between the Complainant (including its distributors) and Respondent. The Complaint made no mention of such a relationship. The Response mentioned both a previous business contact with the Complainant and relationships with distributors of the Complainant`s products, under which the Respondent was to advertise those products.

The Panel considers that supplementary filings should not be admitted as a general rule. Neither the Policy nor the Rules explicitly provide for supplemental filings to be made by either party. A Panel has the discretion to admit or invite further filings under paragraphs 10(a), (b), (d), and 12 of the Rules. This Panel considers that this discretion might be exercised, for example, where there is insufficient evidence for the Panel to make an informed decision and where the Response raises issues that could not reasonably have been addressed in the Complaint as first filed.

In this case, and after carefully reviewing both the Complaint and Response, it was not clear to the Panel whether the issues raised by the Respondent were ones that the Complainant might have addressed in its original Complaint. Accordingly, the Panel sought further submissions from the parties. In particular, the Order requested the Complainant to provide details of any direct business relationship between it and the Respondent, and any indirect business relationship between the Complainant`s distributors and the Respondent, including the nature of any relevant contractual arrangements between the Complainant and its distributors. The Respondent was also requested to respond to the further submission made by the Complainant on this point.

Complainant`s Response to Panel Order

In response to the Panel Order, the Complainant reiterated that it had never authorized the Respondent to use its mark. The Complainant referred to one of its authorized distributors, 842937 Alberta Ltd d/b/a Diversified Products.net (‘Diversified`). The Complainant stated that Diversified hired the Respondent as an independent contractor to assist Diversified in promoting JOTTO DESK products on the Internet. The Complainant says that that relationship was terminated in May of 2007, because the Respondent had registered the disputed domain name <jotto desk search.com> and would not relinquish it. The Complainant said it never had any relationship with the Respondent, direct or otherwise. The Complainant provided no further evidence than that attached to the original Complaint.

Respondent`s Response to Panel Order

The Respondent claims to represent multiple distributors of the Complainant, and notes that the Complainant only mentions one (Diversified) in its response to the Panel Order. The Respondent referred again to business plans and emails exchanged as recently as May 2009 with:

- Diversified Products (which the Respondent describes as the "Master Distributor"),

- Integra Marketing (which the Respondent claims is another distributor of the Complainant in Canada);

- the Vice President of the Complainant, a Mr. Hatton.

Otherwise, the Respondent states that the Complainant failed to provide various evidence in response to the Panel Order. In relation to the Complainant`s restatement that it never had any relationship with the Respondent, the Respondent refers to the emails mentioned above. The Respondent strongly denies that it behaved improperly or engaged in conduct not authorized by the Complainant or its distributors. The Respondent states that the Complainant approved or, at least, acquiesced in the Respondent`s registration of the disputed domain names.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed the Complainant must prove all of the following:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names were registered and are being used in bad faith.

Because of the Panel`s findings in relation to paragraph 4(a)(ii), it is unnecessary for the Panel to address the Complainant`s case under paragraph 4(a)(i) or (iii) of the Policy. Accordingly, the following discussion addresses only the question of whether the Complainant has established its case that the Respondent has no rights or legitimate interests in the disputed domain names, and the issues raised by the Respondent`s request for a finding of reverse domain name hijacking.

A. Rights or legitimate interests

The objective of the Policy is to provide a remedy against the abusive registration of domain names in circumstances where the registrant is seeking to profit from and unfairly exploit the trademark of another. See e.g. Paul Plumadore, James Tindell, River Road Antiques, Ltd v. William Kilgore, WIPO Case No. D2007-1922 citing Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230. Relevant to that end, paragraph 4(a)(ii) of the Policy provides that a complaint can only succeed if it is established that the respondent has no rights or legitimate interests at all.

The Respondent provided extensive evidence which, it claims, demonstrates that it has rights or legitimate interests. The Respondent says that it has been providing services to the Complainant`s distributors in Canada for many years, and has itself been acting as a distributor of or shopfront for the Complainant`s products for a number of years. The Respondent`s supporting evidence includes:

- Records of the Complainant`s products which the Respondent claims to have sold since 2006, as well as other evidence (including queries from and quotations to potential customers) of the Respondent marketing the Complainant`s products in 2003 and 2006;

- Email correspondence, dated July 2003, from the Respondent (then describing itself as "Jotto Desk Canada", and with a letterhead prominently displaying the address "JottoDesk.Net", a domain name which is not the subject of this dispute and for which there is no evidence of it being registered by the Respondent). That email was sent to a Mr. Stevens, who the Respondent describes as the then "Master Distributor of Assembled Products Corporation in Canada". The email describes work which the Respondent was doing on websites relating to the Complainant`s products. The Respondent also attaches a copy of an email from it in August 2003 (then described as Uppgroup Inc.) to Mr. Stevens;

- Copies of archived webpages from 2003, at domain names registered to the Respondent, which related to the advertising of the Complainant`s products by "Laptop Mount Store". The site described Laptop Mount Store as a division of Uppgroup Inc.;

- Copies of sales quotations the Respondent provided, between 2003 and 2006, to various entities for the potential sale of the Complainant`s products;

- A (undated) business plan for the incorporation of a new company, "Triocom", from what is described as a "division" of the Respondent. The business plan describes one of the aims of the company to "become the Number #1 distributor of JottoDeskâ„¢ Products...". The Respondent claims that the Complainant was in receipt of this business plan, although no evidence is provided to that effect or about whether the plan was ever implemented;

- Emails in May 2009 between a Mr. Sage (who the Respondent describes as an employee of one of the Complainant`s distributors, Diversified Products), Integra Marketing, Inc. (another distributor), and Mr. Hatton (who the Respondent describes as the Vice President of the Complainant) relating to the development of websites. That email chain was on-sent from Mr. Sage to the Respondent including the statement: "They want a conference call Friday morning at 8am. Maybe we can Skype in the next few days so I`m properly prepared for questions." Earlier in that email chain, a representative of the Respondent is referred to as "the contact for Jotto Desk purchases".

To the Panel`s mind, this evidence, and the parties broader submissions, suggest two things, either of which work against a finding that the Complainant has established its case.

Respondent`s legitimate interests as a distributor

The Respondent has, for some time been, a distributor or reseller of the Complainant`s products. Respondent`s evidence indicates that the Respondent was promoting and offering the Complainant`s products for sale since at least 2003, as well as dealing with a number of the Complainant`s distributors in a similar endeavor. Whether a distributor or reseller has rights or legitimate interests in a domain name has been extensively addressed in prior panel decisions. As summarized in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.3, on this point, the majority view is that:

"A reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements. These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site accurately disclosing the registrant`s relationship with the trademark owner. The respondent must also not try to corner the market in domain names that reflect the trademark."

The Respondent arguably meets these criteria. The Respondent provides various evidence to support its claim that it has been actually offering the Complainant`s goods for sale. The Respondent`s websites, despite the Complainant`s claims to the contrary, appear to relate only to the Complainant`s products.¹ While those webpages do not contain an explicit statement of the Respondent`s relationship with the Complainant, they do not, in the Panel`s view, obviously mislead. They do not suggest, for example, that the Respondent is the trademark owner or that it is the Complainant`s official website.

Following the majority view set out above, it might be thought that the Respondent`s conduct verges close to ‘cornering the market`, and that this fact alone may weigh against a finding that the Respondent has a right or legitimate interest in the disputed domain names. That is, the Respondent has registered 20 variants of the Complainant`s mark. As stated by the Panel in Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525 referring to Nabisco Brands Company v. The Patron Group, Inc., WIPO Case No. D2000-0032 "a single distributor is extremely unlikely to have a legitimate interest in precluding others from using numerous variants on a mark". However, in the Nabisco Brands case it was also relevant that the domains did not resolve to active websites. In the Magnum Piering case, the domains resolved to the same website. In both of those cases, the variants on the marks in question involved minor differences, without adornment, to the whole of the complainants` marks. The circumstances of this case are different. In this case, the majority of the disputed domain names (excluding <jotto desks.net>, <jotto desks.com>, <jottodesks.net>, and <jotto desk search.com>) add additional terms which relate to differing websites. So, for example as noted above, the disputed domain name <ford jotto desk.com> resolves to a website containing information more prominently relating to ‘jotto desks` for Ford vehicles. In this way, the ‘variants` relate to a functional difference between the Respondent`s various websites. Taking into account the other circumstances of this case, the Panel finds that the registration of various disputed domain names is not indicative of an attempt to merely ‘corner the market` in domain names reflecting the Complainant`s mark. Rather, it appears to reflect an intent to register different domain names to connect them to correspondingly different websites.

The Complainant says that it has never had any relationship with the Respondent, direct or otherwise, and that the Respondent never had a right to offer or accept orders for the Complainant`s products. This statement is difficult to reconcile with the evidence provided by the Respondent, which is not directly addressed by the Complainant. That evidence indicates that the Respondent has in fact been offering and accepting orders for the Complainant`s products over a number of years, developing websites for the Complainant`s distributors, describing itself by reference to domain names including the Complainant`s mark (see above), and using domain names incorporating the Complainant`s mark (i.e. ending in "jottodesk.net") at least in letterheads and in connection with email.

Even so, the majority approach outlined above has been applied in certain cases where the complainant has not authorized the respondent to act as its distributor or where there is no contractual relationship between the complainant and the respondent. See e.g. Volvo Trademark Holding AB v. Auto Shivuk, WIPO Case No. D2005-0447; Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent, WIPO Case No. D2004-0481. This Panel takes a similar approach in the circumstances of this case. As such, it is not necessary for the Panel to reach a conclusion about whether the Respondent was in fact an authorized distributor. Not being an authorized distributor does not, by itself, mean that the Respondent lacks rights or legitimate interests in the disputed domain names.

Authorization to register the disputed domain names

The evidence raises a second, separate, issue concerning the Respondent`s possible rights or legitimate interests. Did the Complainant or its distributors authorize, or at least acquiesce in, the Respondent`s registration of the disputed domain names? The evidence on this point is inconsistent and unclear. There is no claim made or evidence provided that the Respondent was explicitly granted a right to register the disputed domain names by the Complainant or its authorized distributors.

The evidence of whether, as the Respondent argues, the Complainant or its authorized distributor implicitly acquiesced to the registration of the disputed domain names is less clear. There is no evidence of the Complainant doing so. There is no evidence of the Complainant`s authorized distributor doing so, nor the distributor referred to by the Respondent (not referred to by the Complainant), Integra Marketing Inc.

The best that can be said for the Respondent is that there is some circumstantial evidence which suggests that the Complainant`s distributors may have been aware of the Respondent`s registration of the disputed domain names, and use of the Complainant`s mark. The Respondent has been offering the Complainant`s products over a substantial period of time, as well as working closely with the Complainant`s distributors in marketing the Complainant`s products. The disputed domain names themselves have been registered for a period of more than three years. The market for the Complainant`s products appears specialized. It might be expected that, in these circumstances, either the Complainant or one of its distributors would be aware of the Internet marketing activities of the Respondent. The Respondent also provides evidence that the Complainant`s distributors at least acquiesced to the Respondent using the Complainant`s trademark in letterhead and an email address ("jottodesk.net").

This evidence does not strongly support a finding that the Complainant`s distributors acquiesced to the Respondent`s registration of the disputed domain names. But then the contrary case is not strongly made by the Complainant. The Complainant provided no evidence of its distribution agreements to demonstrate a clear prohibition on authorized distributors licensing the Complainant`s mark, in a domain name or otherwise. Inconsistently with its response to the Panel Order disclosing the relationship between the Respondent and the Complainant`s distributor Diversified Products, the Complaint as first filed made no mention of that relationship. The Complaint made only brief, boilerplate assertions against the Respondent. Neither the Complaint nor the Complainant`s response to the Panel Order, address many of the detailed claims made by the Respondent of e.g. direct contact with the Complainant and other distributors (e.g. Integra Marketing Inc.). Where the Complainant did address issues going to the relationship between the Respondent and Diversified Products, the Complainant provided no supporting evidence. The Complainant provided no evidence of the contractual relationship between the Respondent and its distributor, even though the Complainant says that the termination of that relationship lead to the filing of the Complaint. Neither did the Complainant provide evidence of any communications it had with the Respondent in relation to the disputed domain names.²

Ultimately, the burden to establish each of the elements of paragraph 4(a) of the Policy remains on the Complainant. The Complaint provides little concrete evidence for any of the statements it makes against the Respondent. On the basis of the circumstantial evidence provided by the Respondent, and the limited evidence and argument by the Complainant, the Panel would also find that the Complainant has not rebutted the Respondent`s argument that the Complainant`s distributor, Diversified Products, acquiesced to the registration of the disputed domain names. This provides a second basis for a finding that the Complainant has not established its case.

B. Reverse domain name hijacking

The Respondent seeks a finding of reverse domain name hijacking against the Complainant. 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". Paragraph 15(e) of the Rules makes it clear that such a finding is declaratory in nature. As noted by previous panels: "Allegations of reverse domain name hijacking have been upheld in circumstances where a respondent`s use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy." Rohl, LLC v. ROHL SA, WIPO Case No. D2006-0645.

It is true that there are evident weaknesses in the Complainant`s case. The Complainant provided little concrete evidence. In some areas, the Complainant has been less than frank about matters which this Panel would expect it to have disclosed. In particular, the Complaint as filed did not disclose the relationship between the Respondent and one of the Complainant`s distributors.

However, on balance, the Panel does not make a finding of reverse domain name hijacking. There is evidence that the Complainant was not unreasonably motivated. As noted above, there was no evidence that the Respondent ever had explicit permission from either the Complainant or its distributors, to register the disputed domain names. Neither is the circumstantial evidence of an implicit permission strong.

7. Decision

For all the foregoing reasons, the Complaint is denied.

 

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James A. Barker
Sole Panelist

Dated: November 28, 2009