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BL Flame, Inc., v. LVH Holdings, Inc. [2001] GENDND 303 (12 February 2001)

Under the ICANN Uniform Domain Name Dispute Resolution Policy

366 Madison Avenue P New York, NY 10017-3122 P Tel. (212) 949-6490 P Fax (212) 949-8859 P cprneutrals@cpradr.org P www.cpradr.org

Before The Honorable Nelson A. Diaz, Arbitrator

The Complaint was filed with CPR on December 20, 2000 and, after review for administrative compliance, was served on the Respondent. The Respondent filed a timely Response on or about January 15, 2001. I was appointed Arbitrator pursuant to the Uniform Domain Name Dispute Resolution Policy ("UDRP") and Rules promulgated by the Internet Corporation for Domain Names and Numbers ("ICANN"). Upon the written submitted record including the Complaint, the Joint Response and Complainant's Reply to the Joint Response, I find as follows:

Respondent's registered domain name, <blacklabelskateboards.com>, was registered with Register.com, the "Registrar" on February 6, 2000. In registering the domain name, Respondent agreed to resolve any dispute concerning the domain name pursuant to the UDRP.

The UDRP provides, at Paragraph 4(a), that each of three findings must be made in order for a Complainant to prevail:

i. Respondent's domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and

ii. Respondent has no rights or legitimate interests in respect of the domain name; and

iii. Respondent's domain name has been registered and is being used in bad faith.

IDENTITY/CONFUSING SIMILARITY:

Complainant alleges that <blacklabelskateboards.com> is confusingly similar to Complainant's trademark, BLACK LABEL (the "BLACK LABEL Mark" or "Mark"). Complainant, or its predecessors in interest, have used the BLACK LABEL Mark since at least as early as January 1991, in connection with the sale of skateboards, skateboard accessories and clothing. On June 29, 2000, Complainant filed a trademark application with the United States Patent and Trademark Office for the BLACK LABEL Mark. Complainant seeks to register the Mark for use on the following goods: clothing in International Class 25; and skateboard accessories in International Class 28.

While the domain name in question is not identical to the BLACK LABEL Mark, the Panel finds that the domain name and the Mark create a similar, overall commercial impression. The addition of the term "skateboards" does nothing to reduce confusing similarity since Complainant uses the Mark on skateboard accessories. Moreover, it is well-established that the addition of the generic TLD ".com" is not significant in determining similarity. Further, Respondent does not challenge Complainant's contention that the domain name and the Mark are confusingly similar. The Panel therefore concludes that the registered domain name is confusingly similar to Complainant's Mark.

RIGHTS AND LEGITIMATE INTERESTS:

UDRP Paragraph 4(c) provides that Respondent's rights or legitimate interests in a domain

name may be demonstrated, without limitation, by a finding of any of the following circumstances:

(i) before notice to Respondent of the dispute, Respondent has used, or made 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) Respondent has been commonly known by the domain name; or

(iii) Respondent is making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Complainant alleges that Respondent has no rights or legitimate interests with respect to the domain name at issue. Complainant does admit, however, that Respondent has been a wholesale customer of and authorized retailer of BLACK LABEL branded products since at least as early as 1991. In support of its allegation, Complainant avers that, on February 6, 2000, Respondent "secretly" registered the domain name <blacklabelskateboards.com> without its permission. Complaint at 5. Complainant further avers Respondent subsequently used the domain name <blacklabelskateboards.com> to misdirect and divert Internet users searching for Black Label Skateboards to Respondent's own web site www.lomavistahardware.com. Complaint at 9. Complainant argues that Respondent's use of the domain name trades on Complainant's goodwill and misleads and deceives customers. Id. Complainant further avers that "Respondent is not, and has never been, commonly known as 'blacklabelskateboards.com.'" Complaint at 9.

Respondent asserts that it has been an authorized distributor of BLACK LABEL branded products since at least as early as 1994 and, thus, has rights or legitimate interests with respect to the domain name at issue. At the time of the Response, Respondent continued to be an authorized retailer of Complainant's trademarked goods. Respondent avers that prior to this dispute, Respondent had

informed Complainant of its plans to develop a web site to promote Respondent's sales of Complainant's trademarked goods. Respondent does not deny that it failed to simultaneously inform Complainant that it had registered the <blacklabelskateboards.com> and <newdealskateboards> domain names (see CPR 017) in connection with its Internet plans.

Respondent cites the following as evidence that Complainant had consented to its Internet plans and use of the domain names: Complainant continued to ship its branded goods to Respondent for sale on the Internet even after it had learned that Respondent had registered the domain names <newdealskateboards> and <blacklabelskateboards.com>; Complainant's provision of a 10% discount to Respondent for all Internet sales; and Complainant's provision to Respondent of a CD-ROM of artwork of the trademarked goods for use on Respondent's web site.

In its Joint Reply, Complainant challenges or contradicts several of Respondent's representations. Complainant. First, Complainant asserts that, on January 17, 2001, the date its Joint Reply was filed, it terminated its long-standing business relationship with Respondent and would no longer be allowing Respondent to sell its NEW DEAL and BLACK LABEL products. Joint Reply at 2. Complainant asserts that this termination "wholly eliminates any right or legitimate interest Respondent may now or ever in the future assert for using the disputed domain names." Id.

Complainant further asserts that Respondent's "secret registration of the domain names was not for a 'legitimate' purpose." Id. at 3. Complainant vehemently denies that it ever consented Respondent's Internet plans and expressly states that it never consented to the domain name registrations. Complainant also contradicts Respondent's purported evidence of consent.

While the Complainant may be correct that the very recent termination of Respondent's status as a seller of Complainant's goods eliminates any right or legitimate interest Respondent "may now or ever in the future assert" in the disputed domain names, the Panel is unable to find, on the limited and contested evidence before it, that Respondent had no such rights or legitimate interest at the time the domain names were registered.

Based on the evidence of record, the Panel is persuaded that Complainant has failed to establish the second element necessary for a finding that Respondent engaged in abusive domain name registration. Specifically, I find that Respondent's status as an authorized distributor of Complainant's trademarked goods conferred upon it a legitimate interest in the disputed domain name within the meaning of paragraphs 4(a)(ii) and 4(c)(i) of the Policy. In particular, I find that, before Respondent had received notice of this dispute, Respondent had made demonstrable preparations to use the <blacklabelskateboards.com> domain name in connection with a bona fide offering of Complainant's genuine goods. See Paragraph 4(c)(i) of the Policy. As a longtime seller of Complainant's skateboarding products, Respondent had a legitimate interest in the domain names that are the subject of this dispute. See, e.g.,The New Piper Aircraft, Inc. v. Piper.com, FA 94367 (holding that a seller of aircraft, including Piper brand aircraft, was entitled to use the domain name "piper.com" and that such use was a fair use). Moreover, Respondent's use of the domain names to sell and promote Complainant's genuine goods is arguably a legitimate, fair use. See id.

In light of my findings that Respondent does have a legitimate interest with respect to the domain name <blacklabelskateboards.com>, I find in favor of the Respondent.

Complainant's request to transfer the domain name, <blacklabelskateboards.com> is hereby DENIED.

__Honorable Nelson A. Diaz__ __February 12, 2001_____________________________
Signature of Arbitrator Date