Generic Top Level Domain Name (gTLD) Decisions

1.1 The Complainant is Magic Marine, a Dutch corporation, whose headquarters are in Katwijk with contact details of Interfield Sports, CA Katwijk, The Netherlands. The Complainant is represented by Ruden McClosky Smith Schuster & Russell, P.A., Fort Lauderdale, Florida 33301, USA.

1.2 The Respondents are Randall Ames and Aquata USA, LLC ("Aquata"), Miami, FL 33136, USA. Mr. Ames is the principal of Aquata but it is unclear to the Panel whether he registered the domain name in dispute on behalf of Aquata or in a personal capacity. The Panel therefore regards Mr. Ames and Aquata as joint Respondents, distinguishing between them as necessary in this decision. The Respondents are represented by Kluger, Peretz, Kaplan & Berlin, P.A., Miami FL 33131, USA.

2.1 The disputed domain name is <magicmarine.com> (the "Domain Name"), which is registered with Network Solutions, Inc., Virginia, USA. (the "Registrar").

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 24, 2002. On October 25, 2002, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 25, 2002, the Registrar transmitted by email to the Center its verification response confirming that Randall Ames of Aquata USA is listed as the registrant and providing the details of the administrative, billing, and technical contacts.

3.2 The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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").

3.3 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced, on October 29, 2002. In accordance with the Rules, paragraph 5(a), the due date for the Response was November 18, 2002. The Response was duly filed with the Center on November 18, 2002.

3.4 The Complainant submitted a Supplemental Filing on November 28, 2002, entitled "Answer to Respondents’ Response". The Respondents on December 2, 2002, filed a brief Supplemental Filing entitled "Respondents’ Objection to Complainant’s Supplemental Pleading". The Panel has elected to admit these supplemental filings and has taken them into account in reaching its decision.

3.5 The Panel notes that there is reference to a Supplemental Filling by the Respondents dated November 27, 2002. The Panel has not been provided with a document of this date filed by the Respondents. However, the Panel understands this document to be merely the later forwarding of a document referred to in the Respondents’ Response which may have been inadvertently omitted from their filing.

3.6 The Center appointed Nick Gardner as the sole panelist in this matter on November 29, 2002. 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.

3.7 The due date for the Panel’s decision is December 13, 2002.

4.1 The Complainant manufactures and sells products related to the sailboat and sailing industries in many countries throughout the world. The Complainant is the registered owner of trade marks for MAGIC MARINE. The Complainant is also the owner of the domain names <MagicMarineSailingGear.com> and <magicmarine.nl>.

4.2 The Respondents have been in the business of distributing products for the sailboat, sailing and water sports industries since 1985.

4.3 In late 1996, a number of communications took place between the Complainant and Mr. Ames concerning the possibility of establishing Aquata as distributor for the Complainant’s products in the USA. In 1997, the Respondents first ordered products from the Complainant and from that point Aquata operated as exclusive distributor for the Complainant in the USA. In certain of the Complainant’s business catalogues, Aquata was the only distributor listed for the USA.

4.4 The Respondents became the owners of the Domain Name on February 2, 2000.

4.5 The Complainant has requested that the Respondents transfer the Domain Name to it.

5.1 These may be summarized as follows below.

5.2 The Complainant contends that:

a) The Complainant is the owner of registered and unregistered trade mark rights in MAGIC MARINE internationally, including in the USA.

b) The Domain Name is identical or confusingly similar to the trade mark MAGIC MARINE owned by the Complainant:

(i) The Domain Name fully incorporates the Magic Marine trade mark.

(ii) The Respondents offer goods and services similar to those offered by the Complainant.

c) The Respondents purchased the Domain Name through a commercial registration company knowing that the Claimant owned the right to use MAGIC MARINE and possessed trade mark and trade name rights in these words. The Claimant also asserts that the third party registration company was registering the Domain Name for the purpose of transferring the Domain Name to the Complainant but that before the Complainant had the opportunity to buy it, the Respondents wrongfully interceded and purchased the Domain Name. (It is unclear whether the Complainant is asserting that the registration company registered the Domain Name in response to a request by the Complainant.)

d) Customers of the Complainant throughout the world who desire access to information about the Complainant through the internet are misdirected to the Respondents’ website because the Respondents have misappropriated the Complainant’s name by registering the Domain Name.

5.3 The Respondents have no rights or legitimate interests in respect of the Domain Name as:

a) The Domain Name contains, in full, the Complainant’s trading name of 10 years.

b) The Respondents’ use of the Domain Name is a scheme intended to confuse the public and bring potential customers of the Complainant to the Respondents.

c) All use of the Domain Name by the Respondents is for commercial gain with the intent to misleadingly tarnish or dilute the Complainant’s trade marks.

5.4 The Domain Name was registered and is being used in bad faith as:

a) The Respondents purchased the Domain Name with the intention of confusing the public, attracting Internet visitors to the Respondents’ own website thereby pressurizing the Complainant to maintain a business relationship with the Respondents where it otherwise might not wish to do so.

b) The Respondents purchased the Domain Name primarily to attract and confuse customers by making their website appear to be the source of the Complainant’s goods. Such use was an intentional attempt to attract for commercial gain Internet users to the Respondents’ website by creating a likelihood of confusion with the MAGIC MARINE trade mark of the Complainant as to source, sponsorship, affiliation or endorsement of the Respondents’ website or of products offered on it not originating from the Complainant.

c) Mere performance of a distributorship agreement does not give the Respondents rights in the Domain Name.

d) In or about September 2002 the Complainant terminated its business relationship with the Respondents. A meeting between representative of the parties confirmed this in October 2002.

e) The Respondents are no longer authorized distributors of the Complainant.

f) The Complainant has made numerous requests to the Respondents for the transfer of the Domain Name.

5.1 These contentions are summarized below.

5.2 The Respondents do not dispute that the Domain Name is virtually identical to a trade mark of the Complainant but contend that it is normal in a manufacturer-distributor relationship of the type in question that the Respondents have a legitimate right to use the Complainant’s MAGIC MARINE marks.

5.3 In 1996, in the course of establishing the distribution arrangement, the Complainant told the Respondents that it wanted to appoint a distributor "who wants to build up the brand on "longterms [sic]" and take it as his own baby."

5.4 In accordance with one of several ways enumerated by the Policy the Respondents can demonstrate rights or legitimate interest in the Domain Name. The Respondents contend that in the current matter before any dispute arose they were engaged in a "bona fide offering of goods or services" in selling the Complainant’s sailing related products in the USA.

5.5 The Complainant did not object to the registration until long after it was registered by the Respondents and after the Respondents’ website became known by the Domain Name. This means that the Respondents had been commonly known by the Domain Name, even if they had acquired no trade mark or service right marks.

5.6 In any event, the Respondents can demonstrate a legitimate interest in the Domain Name: Aquata was a de facto exclusive distributor of the Complainant’s products, so it was making fair use of the Domain Name.

5.7 The Respondents did not acquire the Domain Name for the purposes of selling, renting or transferring to the Complainant nor have they tried to block the Complainant registering "Magic Marine" in relevant domain names e.g. <magicmarine.nl> belongs to the Complainant.

5.8 The Respondents did not register the Domain Name to disrupt the business of the Complainant but rather to promote it. Further, their use of the Domain Name did not create confusion as to source, sponsorship or affiliation as Aquata was the Complainant’s distributor and was identified as such by the Complainant.

5.9 The Respondents could not be acting in bad faith as they have only ever sold genuine Magic Marine products from their website which is accessible via the Domain Name and no products other than Magic Marine products have been sold from this site. In the course of acting as the Complainant’s US distributor Aquata has sold more than $1.5 million of Magic Marine products. Aquata continues to sell various Magic Marine products.

6.1 Paragraph 4(a) of the Policy requires the Complainant to prove each of the following:

(1) that the Domain Name registered by the Respondents is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

(2) that the Respondents have no legitimate interests in respect of the Domain Name; and,

(3) the Domain Name has been registered and used in bad faith.

6.2 The Panel considers that the Domain Name is identical to the Complainant’s trade mark, MAGIC MARINE, for the purposes of paragraph 4(a)(i) the Policy.

6.3 Regarding paragraph 4(a)(ii), on the evidence before it the Panel finds that the Complainant has failed to prove on the balance of probability that the Respondents have no "rights or legitimate interest" in the Domain Name. This case clearly involves a dispute between a supplier/manufacturer of goods located in one country and its distributor or former distributor located in another country. Resolution of the question of the parties’ respective rights involves questions such as the terms of the distribution agreement, the relevant applicable law and various factual matters, all of which are outside the scope of this administrative proceeding. In particular, the question of whether, as the Complainant claims, the Respondents are no longer authorized distributors and hence they are not entitled to retain ownership of the Domain Name is a question which cannot properly be determined under this administrative procedure.

6.4 The Panel’s view is, therefore, that it is unable to determine whether or not there is a lack of legitimate interest by the Respondents.

6.5 In any event the Complainant must also show that the Respondents ‘registered and used’ the Domain Name in bad faith. There are here some outstanding factual issues, the resolution of which are again beyond the scope of this Panel’s jurisdiction. However, on the evidence before the Panel it appears doubtful that, even on the Complainant’s case, the registration can be said to have been in bad faith. Indeed the Complainant’s ‘Answer to Respondent’s Response’ states "Respondents have overstepped their rights in retaining the registration for and using the domain name magicmarine.com" [emphasis added].

6.6 The Complainant attempts to address this issue by alleging that, at the time of registration that the "Respondents registered the Domain Name to disrupt the business of the Complainant, even as Complainant’s United States distributor". The Panel does not accept that submission in circumstances where it is not disputed that, at that time, the Respondent was the authorized distributor of the Complainant’s products.

7.1 For all the foregoing reasons, the Panel finds that the Complainant has not met its burden of proof under paragraphs 4a(ii) and (iii) of the Policy. Accordingly the Domain Name should not be transferred to the Complainant. The Panel’s decision is not in any way an indication as to the respective rights of the parties arising out of their trade mark rights or their contractual dealings, which are matters that this proceeding cannot determine and which would need to be resolved by proceedings in an appropriate forum.