ADMINISTRATIVE PANEL DECISION

Under the ICANN Uniform Domain Name Dispute Resolution


 
Complainant: PHIL MARTIN
Respondent: MDD, INC
Case Number: AF-0310
Contested Domain Name: blueridgeknife.com
Panel Member: Mauricio Jaramillo C.
 

 

1. Parties and Contested Domain Name

The Complainant is Phil Martin, having an address at Blue Ridge Knives, Rt. 6 Box 185, Marion, Virginia USA 24354-9351

The Respondent is MDD, Inc., having an address at 581 Lancaster SE # 7, Salem, OR 97301, USA

The Domain Name in dispute is " blueridgeknife.com"

2. Procedural History

The electronic version of the Complaint form was filed on-line through eResolution's Website on August 8, 2000. The hardcopy of the Complaint Form was received on August 21, 2000. Payment was received on the same date.

Upon receiving all the required information, eResolution's clerk proceeded to:

- Confirm the identity of the Registrar for the contested Domain Name;

- Verify the Registrar's Whois Database and confirm all the required contact information for Respondent;

- Verify if the contested Domain Name resolved to an active Web page;

- Verify if the Complaint was administratively compliant.

The inquiry leads the Clerk's Office of eResolution to the following conclusions: the Registrar is Enom Inc, the Whois database contains all the required contact information but the billing contact, the contested Domain Name resolves to an active Web page and the Complaint is administratively compliant.

An email was sent to the Registrar by eResolution Clerk's Office to confirm the name of the billing contact and to obtain a copy of the Registration Agreement on August 7, 2000. The requested information was received August 17, 2000.

The Clerk's Office then proceeded to send a copy of the Complaint Form and the required Cover Sheet in accordance with paragraph 2 (a) of the ICANN's Rules for Uniform Domain Name Dispute Resolution Policy.

The Clerk's Office fulfilled all its responsibilities under Paragraph 2(a) in connection with forwarding the Complaint to the Respondent on August 21, 2000. That date is the commencement date of the administrative proceeding.

On August 21, 2000, the Clerk's Office notified the Complainant, the Respondent, the concerned Registrar, and ICANN of the date of commencement of the administrative proceeding.

On September 11, 2000, the Respondent submitted, via eResolution internet site, his response. The signed version of the response was received on September 20, 2000.

On September 22, 2000, the Clerk's Office contacted Mr. Mauricio Jaramillo, and requested that he acts as panelist in this case.

On September 22, 2000, Mr. Mauricio Jaramillo accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.

On September 22, 2000, the Clerk's Office forwarded a user name and a password to Mr. Mauricio Jaramillo, allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.

On September 22, 2000, the parties were notified that Mr. Mauricio Jaramillo had been appointed and that a decision was to be, save exceptional circumstances, handed down on October 5, 2000.

3. Factual Background

3.1. The complainant is the owner of the following U.S. registered service marks

- BLUE RIDGE KNIVES Reg. No. 1766415, covering "Wholesale distributorship services in the field of cutlery; namely, pocket, hunting, boot and commemorative knives, knife sharp eners, knife pouches and accessories and flash lights, in class 42 (U.s. CL. 101)", filed 8-10-1992 and registered on April 20, 1993, First use in 1979 and first use in commerce in 1980.

- BLUE RIDGE KNIVES & Design, Reg. No. 1766414, covering "Wholesale distributorship services in the field of cutlery; namely, pocket, hunting, boot and commemorative knives, knife sharp eners, knife pouches and accessories and flash lights, in class 42 (U.s. CL. 101)", filed 8-10-1992 and registered on April 20, 1993, First use in commerce in 1980.

3.2. The complainant d/b/a BLUE RIDGE KNIVES is the owner of the domain names blueridgeknives.com, blueridgekineves.org and blueridgeknives.net

3.3. In a Previous Decision dated on April 25, 2000, issued by Honorable James A. Carmody, Municipal Judge (Ret.), acting as Arbitrator for The National Arbitration Center, File No. FA0002000094311, the domain name "bluerifgeknife.com" owned by Deon W. Carpenter was cancelled in an administrative procedure according to ICANNīs Rules for Uniform Domain Name Dispute Resolution Policy (UDRP). The complainant in the referenced case was Philip S. Martin, d/b/a Blue Ridge Knives ((hereinafter "Complainant")

3.4. After the cancellation of the domain name "bluerifgeknife.com" owned by Deon W. Carpentier, MDD, INC, (hereinafter "Respondent") obtained the registration of the domain name "bluerifgeknife.com" (hereinafter "The Domain Name")

3.5. The Respondent has not established a Web site corresponding to The Domain Name, but it is linked to the web address www.nokiagirls.com

4. Parties' Contentions

4.1. Complainant

The Complainant requests the Transfer of The Domain Name to the Complainant.

The Complainant contends that The Domain Name is virtually identical to his registered marks BLUE RIDGE KNIVES, BLUE RIDGE KNIVES & Design, to his trade name BLUE RIDGE KNIVES and to his domain names blueridgeknives.com, blueridgeknives.org and blueridgekives.net.

The Complainant contends that Respondent has no legitimate interest in The Domain Name, because it is used to "interfere its business, to tarnish its reputation, to divert legitimate business inquiries and to seek to profit by selling the domain name to the complainant"

The Complainant also contends, based on the same facts, that The Domain Name was registered and is used in bad faith

4.2. Respondent

The Respondent do not disputes that the service marks owned by Complainant are similar to The domain Name.

The Respondent contends that it has legitimate interest in The Domain Name, it was not registered in bad faith and has not used it in bad faith because it is interested in using it in a public forum for commentary and debate primarily in the area of UDRP decisions.

The Respondent asserts that it has not registered The Domain Name in order to harm or interfere with Complainant and it has not attempted to tarnish his reputation or goodwill.

The Respondent also contends that it has never made an offer for sale and has no interest in making a profit from the sale of The Domain Name.

5. Discussion and Findings

Section 4(a) of the ICANNīs UDRP provides that in order to obtain the transfer a domain name, the Complainant must prove the following elements:

- the domain names I identical or confusingly similar to a trademark or service mark in which the complainant has rights;

- the respondent has no rights or legitimate interests in respect of the domain name; and

- the domain name has been registered and is being used in bad faith.

5.1. Identity or confusingly similarity

The panel finds that, as decided in case FA0002000094311, and as it is accepted by Respondent, it is clear that the domain name blueridgeknife.com is identical in use to the registered service marks owned by Complainant.

5.2. Rights or legitimate interests of the Respondent

The Respondent has not proved any actual use of The Domain Name, other than linking it to an other web page and has not proved any kind of preparations to use it in connection a bona fide offerings of goods or services; the word "Blueridgeknife" does not form any part of the Respondentīs name and has not proven any trademark or service mark right acquired of the mentioned word; the respondent has not proven any legitimate noncommercial or fair use of The Domain Name.

The Complainant has clearly proven rights on the service marks BLUE RIDGE KNIVES and BLUE RIDGE KNIVES & Design, and The Domain Name is confusingly similar to them.

The fact that in a previous dispute the same domain name was cancelled does not grants the Respondent any right or legitimate interest in The Domain Name. It is clear for the Panel that the Respondent has the right to establish a forum to debate about the UDRP decisions but this right has no relation to the cancelled or transferred domain names. If the Respondent does not agree with the procedures or the decisions based on UDRP has the right to express it and to establish web page to discuss about it, but this right is totally different to any kind of right or legitimate interest in a domain name cancelled.

Consequently, the Respondent has not proven rights or legitimate interest in The Domain Name.

5.3. Registration and use in bad faith

Section 4(a) (iii) of the ICANNīs UDRP provides that the Complainant has to prove that the domain name has been registered and is being used in bad faith.

The Complainant asserts that Respondent has registered The Domain Name in order to seek profit by selling it to the complainant, but has not proved any kind of offer of sale or request of any kind of payment for its transfer.

It is clear that Respondent had knowledge of the previous decision of cancellation of The Domain Name requested by Complainant. It is also proved that at the moment of the registration of The Domain Name, the Respondent had knowledge of the service marks owned by Complainant and had knowledge that the National Arbitration Forum recognized Complainant legitimate interests and rights in The Domain Name. It also proved that Respondent at the moment of the registration had no legitimate interest in The Domain Name.

Despite this knowledge and lack of interests, Respondent obtained the registration of The Domain Name, and it is considered by the Panel as bad faith in the registration.

The Domain Name is currently linked to the web page nokiagirls.com, dedicated to criticize the WIPO and in general all the decisions of cancellation of domain names. This use has no relation to the services offered by Complainant. Despite this situation, considering the similarity and almost identity of The Domain Name and the service marks, and specially considering that Respondent has knowledge about this situation, it is clear that it disrupts the Complainantīs business or diverts users looking for Complainantīs services, who are not interested or related to domain name disputes.

The Respondent has the right to criticize the legal procedures initiated by complainant, and the public has the right to know the consequences of the decisions adopted by Administrative Panels, but this rights are not related to the right to the domain names disputed; the use of a disputed domain name by a third party with no relation to the parties involved in the dispute, tarnishing the parties, its lawyers and the Administrative Panel, is considered as a use in bad faith.

6. Conclusions

The Complainant has proved the three elements required in the ICANNīs UDRP.

For the reasons set forth above, the Complainantīs request to transfer the domain name blueridgeknife.com to the Complainant is granted.

7. Signature

Dated October 4, 2000 at Bogotá D.C., Colombia.

(s) Mauricio Jaramillo C.

Presiding Panelist