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Champion Innovations, Ltd. v. Udo Dussling (45FHH) [2005] GENDND 2103 (16 December 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Champion Innovations, Ltd. v. Udo Dussling (45FHH)

Case No. D2005-1094

1. The Parties

The Complainant is Champion Innovations, Ltd., United States of America, represented by Storm, L.L.P., United States of America.

The Respondent is Udo Dussling (45FHH), United States of America.

2. The Domain Name and Registrar

The disputed domain name <championinnovation.com> (the “Domain Name”) is registered with Abacus America Inc. dba Names4Ever (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 19, 2005. On October 21, 2005, the Center transmitted by email to the Registrar the first request for registrar verification in connection with the domain name at issue. On October 28, 2005, 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 for the administrative, billing, and technical contact.

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”).

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 October 31, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was November 20, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 21, 2005.

The Center appointed Mr. David H Bernstein as the sole panelist in this matter on December 2, 2005. 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.

4. Factual Background

Because Respondent has failed to file a response in this case, the Panel accepts as true all statements of fact made by the Complainant in its submission. Top Driver, Inc. v. Benefits Benefits, WIPO Case No. D2002-0972; Eauto, L.L.C. v. Eauto Parts, WIPO Case No. D2000-0096.

The Complainant, a limited partnership of the State of Texas, was created in August 2004, for the purpose of developing management and regulatory compliance software for ranching operations. The Complainant’s majority owner, Jack Wallrath, has used the CHAMPION mark since 1974, for various businesses, including Champion Window, Inc. and Champion Ranch.

In 2003, Wallrath hired Respondent to help develop a software program to keep track of livestock. When Complainant was created as a limited partnership, Respondent was given a ten percent interest in the partnership. Complainant also paid Respondent a salary.

In November 2004, Wallrath asked Respondent to register the Domain Name. Respondent did so on or about November 4, 2004, but, without Wallrath’s knowledge, registered the Domain Name under Respondent’s own name, rather than under Complainant’s name.

In June 2005, Complainant terminated Respondent’s employment because Respondent had not produced functioning software. By virtue of his termination, Respondent no longer holds a partnership interest in Complainant.

After terminating the Respondent’s employment, Complainant requested that Respondent provide login and password information for the website associated with the Domain Name. On June 30, 2005, Respondent asserted by email in response to this request that he had paid for the registration and owned the Domain Name.

It is not clear from the Complaint whether the Domain Name was ever actually functional. At this point, it is disabled, and Complainant has been forced to use an alternate domain name.

5. Parties’ Contentions

A. Complainant

Complainant asserts that CHAMPION INNOVATIONS is a trademark of Complainant. Complainant contends that the Domain Name is identical or confusingly similar to the CHAMPION INNOVATIONS mark because the Domain Name merely removes the space between “champion” and “innovations” and drops the letter “s” at the end of “innovation.”

Complainant contends that Respondent lacks any rights or legitimate interests in the Domain Name. Complainant alleges that Respondent only registered the Domain Name as part of his duties as an employee of Complainant and that Respondent is no longer involved with Complainant in any way. Complainant further alleges that Respondent has never been known by the Domain Name and has not acquired any trademark rights in the name. Complainant also states that Respondent is not currently using the Domain Name in any manner, non-commercial or otherwise.

Complainant contends that Respondent registered and is now using the Domain Name in bad faith. Complainant alleges that Respondent registered the Domain Name in his own name so that Respondent, rather than Complainant, would control the Domain Name. Complainant further alleges that Respondent’s sole reason for refusing to provide the login and password information to Complainant is to prevent Complainant from reflecting its trademark in a corresponding domain name. Complainant argues that these actions constitute bad faith under paragraph 4(b) of the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.¹

6. Discussion and Findings

The burden for the Complainant under paragraph 4(a) of the Policy is to prove:

(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

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

(iii) that the domain name has been registered and is being used in bad faith.

As discussed below, Complainant has met that burden in this case.

A. Identical or Confusingly Similar

The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights.

Complainant asserts in a conclusory fashion that CHAMPION INNOVATIONS is its trademark, but does not allege or provide any evidence that it has used the mark in commerce in connection with any goods or services. Complainant also alleges that related companies have used the CHAMPION mark in commerce for more than thirty years in connection with the manufacture and sale of windows and the sale of cattle.

Although the Complaint does not provide sufficient factual allegations to support the conclusion that Complainant has established trademark rights in CHAMPION INNOVATIONS, it does appear that Complainant’s affiliates have established rights in the CHAMPION mark. Given that Mr. Walrath is the majority owner of both Complainant and its affiliates, the Panel accepts Complainant’s assertion that it has trademark rights in the CHAMPION mark. Because the Domain Name wholly incorporates the CHAMPION mark, the Panel concludes that the Domain Name is confusingly similar to Complainant’s mark for purposes of the Policy. Eauto, L.L.C.v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.

B. Rights or Legitimate Interests

The Panel finds that Respondent has no rights or legitimate interests in the Domain Name.

Complainant alleges (a) that Respondent registered the Domain Name on Complainant’s behalf, (b) that Respondent registered the Domain Name under his own name without Complainant’s knowledge or permission, (c) that Respondent’s only association with the CHAMPION INNOVATIONS mark was his tenure as a partner and employee of Complainant, and (d) that Respondent is not now making use of the Domain Name for any purpose other than to prevent Complainant from using the Domain Name.

Complainant has made a prima facie showing that Respondent has no right or legitimate interest in the Domain Name. Respondent, having submitted no Response, has failed to rebut this showing, Accordingly, the Panel finds that Complainant has satisfied the second element of the policy.

C. Registered and Used in Bad Faith

The Panel finds that the Domain Name was registered and is being used in bad faith.

When Respondent registered the Domain Name, he clearly was doing so at the behest of Complainant. In other cases arising out of similar facts, Panels have refused to find bad faith registration because the registration was made with the consent or at the request of the trademark owner. See, e.g., ITMetrixx, Inc. v. Kuzma Productions, WIPO Case No. D2001-0668; The Thread.com, LLC v. Jeffrey S. Poploff, WIPO Case No. D2000-1470. In those cases, though, the Respondent was expected to register the Domain Name under its own name.

In this case, the Complaint suggests that Respondent was expected to register the Domain Name in the name of Complainant. In that circumstance, the Respondent’s refusal to follow his employer’s instruction and his registration of the Domain Name in his own name constitutes bad faith registration.

As for bad faith use, Complainant has established that Respondent is now using, or rather sitting on, the Domain Name in order to prevent Complainant from reflecting its trademark in a corresponding domain name. Although Complainant has not alleged that Respondent has engaged in a pattern of such conduct, see Policy, paragraph 4(b)(ii), in the circumstances of this case, it appears that Respondent’s refusal to return the Domain Name to Complainant is being done out of malice or spite. This is sufficient under the present circumstances to demonstrate that Respondent is using the Domain Name in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the domain name <championinnovation.com> be transferred to the Complainant.

David H. Bernstein
Sole Panelist

Date: December 16, 2005

¹ Given the absence of a Response, the Panel has carefully reviewed the record to ensure that the Center gave Respondent fair notice of the Complaint. See Nicole Kidman v. John Zuccarin, d/b/a Cupcake Party, WIPO Case No. D2000-1415. The Center mailed the notification of the Complaint to Respondent by courier to both of Respondent's mailing addresses: the Bryan, Texas address listed in the Registrar Verification, and the College Station, Texas address listed in the Complaint as the Respondent’s current residence. The notification sent to the Bryan address was undeliverable; the notification sent to the College Station address was delivered and was accepted by a third party named “B. Koenig.” The Center also sent the notification by email to the postmaster@championinnovations.com address and to the email address listed in the Registrar Verification. Although the notification sent to the postmaster address was returned as undeliverable, the other email did not bounce back (which supports the inference that it was actually delivered). It thus appears that the Respondent received actual notice of the Complaint, but even if did not, the Panel finds that the Center has discharged its obligation to provide fair notice to Respondent under paragraph 2(a) of the Rules.