Fitter International Inc. v. Balance Designs, Inc.; Ron Hausthor, Eenable Inc.

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fitter International Inc. v. Eenable Inc. and Balance Designs,

Inc.

Case No. D2001-0979

1. The Parties

The Complainant is Fitter International Inc. of 4519 1st Street

S.E., Calgary, AB, Canada T2G 2L2

The Respondents are Eenable Inc. of P.O. Box 309 N. Bennington, Vermont, 05257,

U.S.A. and Balance Designs, Inc. of 311 Old Airport Road, Manchester Center,

Vermont 05257, U.S.A.

2. The Domain Name and Registrar

The domain name at issue is: <bongoboard.com> and the Registrar is: Register.com

3. Procedural History

The WIPO Arbitration and Mediation Center [the Center] received the Complaint

on August 1, 2001, [electronic version] and August 2, 2001, [hard copy]. The

Center verified that the Complaint satisfies the formal requirements of the

ICANN 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]. The Complainant made the required payment to the Center.

The formal date of the commencement of this administrative proceeding is August 8, 2001.

On August 3, 2001, the Center transmitted via email to Register.Com a request

for registrar verification in connection with this case and on August 6, 2001,

Register.Com transmitted by email to the Center a verification response confirming

that the registrant is Eenable Inc. and that the contact for both administrative

and billing purposes is also Eenable Inc.

Having verified that the Complaint satisfied the formal requirements of the

Policy and the Rules, the Center transmitted on August 8, 2001, to the e-mail

address supplied by the registrar and to postmaster@bongoboard.com this Notification

of Complaint and Commencement of the Administrative Proceeding. The Center advised

that the Response was due by August 27, 2001. On the same day the Center transmitted

by fax and by mail copies of the foregoing documents.

A request for an extension of the term for filing a Response was received by

the Center on August 16, 2001, and on the same date an extension was granted

until September 6, 2001. On September 6, 2001, a Response was received

from the second Respondent, Balance Designs Limited. The Complainant was sent

a copy of the Response using the same contact details and methods.

Having received on September 17, 2001, Mr. David Perkins' Declaration of Impartiality

and Independence and his Statement of Acceptance, the Center transmitted to

the parties a Notification of Appointment of Administrative Panel and Projected

Decision Date, in which Mr. David Perkins was formally appointed as the Sole

Panelist. The Projected Decision Date was October 8, 2001. The Sole Panelist

finds that the Administrative Panel was properly constituted and appointed in

accordance with the Rules and the Supplemental Rules.

Having reviewed the communication records in the case file, the Administrative

Panel finds that the Center has discharged its responsibility under para. 2(a)

of the Rules "to employ reasonably available means calculated to achieve actual

notice to Respondents". Therefore, the Administrative Panel shall issue its

Decision based upon the Complaint, the Response, the Policy, the Rules and the

Supplemental Rules.

4. Factual background

4.1 The Complainant

4.1.1 The Complainant's Business

The Complainant designs, manufactures and sells fitness products. Its products

have been sold since 1985 in Canada, the United States, Europe and Asia. The

Complainant's product line includes balance boards, flat pieces of wood of circular

or rectangular shape attached to a roller device underneath. The boards are

unstable when stood upon and are used to improve balance in fitness training

and rehabilitation. One of the Complainant's balance boards is sold under the

name BONGO BOARD.

4.1.2 The BONGO Trademark

The original designer, manufacturer and supplier of the BONGO BOARD was KZT Sports

USA LLC [KZT]. KZT was the applicant in respect of United States Trademark Application

75/256786 BONGO in Class 28 for "balancing boards for improving balance

and co-ordination" filed on March 13, 1997. On January 4, 2001, the Complainant

entered into an Asset Purchase Agreement with KZT, which was followed on January

17, 2001, by a formal written Assignment of all rights in the BONGO trademark,

including common law rights and KZT's federal trademark application. This Assignment

was notified to the U.S. Patent and Trademark Office on February 12, 2001.

On March 13, 2001, the Complainant's federal trademark application for BONGO

was registered. Since the Complainant began selling the BONGO BOARD product

in June or July 1998, approximately 3,500 units have been sold.

4.1.3 The Complainant's Domain Names

The Complainant is the owner of the following domain names

<bongoboard.org> registered December 6, 2000

<bongoboard.net> registered December 6, 2000

<bongoboard.ca> registered December 7, 2000

4.2 The Respondents

4.2.1 The relationship between the First and Second Respondents

The First Respondent, Eenable Inc., has not filed a Response and has taken

no part in this administrative proceeding. The Complaint asserts that the Second

Respondent, Balance Designs, Inc., is in fact the beneficial owner of the domain

name, and this is confirmed by Balance Designs, Inc. in its Response. The Second

Respondent has filed an affidavit by its legal representative stating that Eenable

Inc. has agreed to transfer the domain name to the prevailing party in this

administrative proceeding.

4.2.2 The Second Respondent's Business

Like the Complainant, the Second Respondent also designs, manufactures and

sells fitness equipment, including balance boards. It also has a BONGO BOARD

balance board in its range, which it first exhibited and demonstrated in March

1999 at the Ski Industry Association tradeshow in Las Vegas, Nevada. By February

2001, it had sold 99 BONGO BOARD balance boards, although it claims to

have "ramped down" production to avoid litigation following receipt of a cease

and desist letter from the Complainant's lawyers dated January 8, 2001. On April

21, 1999 the Second Respondent registered, through Eenable Inc., the domain

name in issue, <bongoboard.com>. To date that domain name has only

been used to display content identical to that displayed on the Second Respondent's

site at <vewdo.com>, which does not include the BONGO BOARD product.

4.2.3 On May 26, 1999 the Second Respondent filed U.S. Trademark Application

75/713594 BONGO BOARD in Class 28 for "balance boards". This application

has, however, been suspended due to conflict with the Complainant’s earlier

registration for BONGO.

4.3 The History of the BONGO BOARD

4.3.1 Stanley Washburn 1953 to 1985

The history of the BONGO BOARD product is a matter of dispute between the parties.

The Second Respondent's version is as follows. The trademark BONGO BOARD was

first used in respect of balance boards in 1953 by Stanley Washburn. He made

the first balance boards for commercial sale in the United States based on his

recollection of a crude toy used by native children on the Gold Coast and in

India during his travels in the early 1940s. The product was patented by Washburn

in 1953. It became a success particularly among skiers and surfers and was sold

through Washburn’s company until the mid-1980s. The Second Respondent has filed

extensive copies of business materials, advertising copy and press clippings

spanning the period from 1953 until 1985 evidencing this. There is also a supporting

affirmation from Stanley Washburn himself.

4.3.2 The Stanley Washburn Original BONGO BOARD : March 1999 to date

The Second Respondent states that its President, Bruce Moscarello, sought out

and struck up a friendship with Washburn in the mid-1990s, and that a plan to

reintroduce the original BONGO BOARD balance board as a collector's item was

devised in 1998. The board was to be called the "Stanley Washburn Original"

BONGO BOARD, and on February 5, 2000, Washburn assigned all common law rights

he had in the trademark to the Second Respondent in consideration for a royalty

agreement.

5. The Parties’ Contentions

The Complainant's lawyers sent a cease and desist letter dated January

8, 2001, to the Second Respondent notifying them of the Complainant's rights

in the BONGO BOARD trademark, demanding that the Second Respondent cease all

marketing of balance boards under the identical trademark, and immediately transfer

the domain name in issue to the Complainant. By its lawyers' reply dated January

31, 2001, the Second Respondent rejected those demand and set out its understanding

of the history of the BONGO BOARD product and trademark and of the common law

rights it had acquired from Washburn which, in its view, rendered the Complainant's

trademark application invalid. Six months later, on July 31, 2001, the present

Complaint was filed.

5.1 The Complainant's Case

5.1.1 Identical or confusingly similar

The Complainant contends that the domain name in issue is identical to its

BONGO BOARD trademark which has been in continuous use by the Complainant or

its predecessor-in-interest, KZT, since June or July 1998. The Complainant further

contends that the domain name is identical or confusingly similar to the Complainant’s

registered federal trademark BONGO, the suffix board a mere non-distinctive

descriptor.

5.1.2 Rights or legitimate interests

The Complainant further contends that the Second Respondent has no rights or

legitimate interest in the domain name or in a trademark corresponding to it,

because it has not at any time designed, made or sold any balance boards under

the trademark BONGO BOARD either through the domain name or otherwise. Further,

the Second Respondent has not brought any cancellation proceedings against the

Complainant’s federal trademark registration for BONGO.

5.1.3. Registered and used in bad faith

The brunt of the Complainant's arguments are focussed on this issue. In particular,

the Complainant contends that the Second Respondent registered the domain name

on April 21, 1999 in bad faith because at that time the Second Respondent had

constructive knowledge of KZT's pending federal trademark application, filed

two years earlier in March 1997. The Complainant's case is that the Second Respondent

should have conducted a federal trademark search before applying to register

the domain name in issue. If such a search had been conducted the Second Respondent

would have discovered KZT's application. Against that constructive knowledge,

which the Second Respondent is deemed to have had in April 1999, the Second

Respondent’s perseverance in registering the domain name in issue was in bad

faith. The Second Respondent cites in this respect WIPO decision in D2000-0119

Chernow Communications, Inc. v. Jonathan D. Kimball.

As to use by the Second Respondent of the domain name in bad faith, the Complainant

points to its use by the Second Respondent to host content which was already

displayed at another site owned by the Second Respondent, which does not refer

to any BONGO BOARD products. This occurred when the Second Respondent was deemed

to have constructive notice of the Complainant's US trademark application and

continued after the Second Complainant was put on actual notice of that application.

This was by letter to the Second Respondent from the US Patent and Trademark

Office dated September 10, 1999, informing the Second Respondent that its trademark

application for BONGO BOARD could not proceed in the face of the earlier application

for BONGO of KZT.

The Complainant dismisses the Respondent's and Stanley Washburn's account of

the history of the BONGO BOARD product and trademark as fictional, taking

the position that the Second Respondent has produced no documentation or evidence

of Washburn’s involvement or of his assignment of rights to the Second Respondent.

The Complainant also asserts that the Second Respondent intentionally registered

the domain name to prevent the Complainant from reflecting its trademark rights

in a corresponding domain name, to disrupt the Complainant’s business and intentionally

to attract Internet users to the site for commercial gain by creating a likelihood

of confusion with the Complainant’s trademark. Although the Complainant contends

that the Second Respondent's domain name has caused and continues to cause confusion,

no evidence of any actual confusion has been filed.

5.2 The Second Respondent's case

The Second Respondent denies that the Complaint meets any of the three elements

required under paragraph 4a of the Policy.

5.2.1 Identical or confusingly similar

In particular, although the Second Respondent admits that the domain name in

issue is identical or confusingly similar to a trademark in which the Complainant

has rights, the Second Respondent contends that it is the holder of earlier

use rights by virtue of the assignment of common law rights from Stanley Washburn

which renders the Complainant's federal trademark registration invalid. It states

that it has only refrained from bringing a cancellation action due to the costs

involved.

5.2.2 Rights or legitimate interest

The Second Respondent asserts that it has a right or legitimate interest in

the domain name, having made demonstrable preparations to use a trademark corresponding

to the domain name in connection with a bona fide commercial offering

of goods prior to receiving notice of the Complainant's claim in its cease and

desist letter of January 8, 2001, and indeed before the domain name

was even registered on April 19, 1999. The Second Respondent claims

that the domain name was registered with the intent that it be used to pay tribute

to Washburn as the man who introduced the balance board into the United States,

and to offer for sale a version of Washburn's original BONGO BOARD balance board.

The Second Respondent accepts that the domain name was not actually used for

this purpose before production of the "Stanley Washburn Original" BONGO BOARD

balance board was "ramped down" following receipt of the Complainant's cease

and desist letter. The Second Respondent explains that this was due to delay

in the satisfactory completion of the work by a web page design company.

5.2.3 Registered and used in bad faith

The Second Respondent denies registration and use of the domain name in bad

faith, pointing to its connection with Washburn and the common law rights in

the BONGO BOARD trademark acquired from him in good faith. The Second Respondent

suggests that the only bad faith evidenced is that of the Complainant itself,

who brought this administrative proceeding despite having been put on notice

to the Second Respondent's version of events relating to the history of the

BONGO BOARD product and trademark, and of the assignment of rights from Washburn

to the Second Respondent.

6. Discussion and Findings

6.1 The Policy paragraph 4a provides that the Complainant must prove each

of the following in order to succeed in an administrative proceeding:

- that the Respondent's domain name is identical or confusingly similar to

a trademark or service mark in which the Complainant has rights; and

- the Respondent has no rights or legitimate interest in respect of the domain

name; and

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

6.2 The Policy paragraph 4c sets out circumstances which, in particular but

without limitation, if found by the Panel to be proved shall demonstrate the

Respondent's rights or legitimate interest in the domain name in issue.

6.3 The Policy paragraph 4b sets out circumstances which, again in particular

but without limitation, if found by the Panel to be present shall be evidence

of the registration and use of a domain name in bad faith.

6.4 As stated, the circumstances set out in paragraphs 4b and c of the Policy

are not exclusionary. They are without limitation. That is, the Policy

expressly recognises that other circumstances can be evidence relevant

to the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.

Identical or Confusingly Similar

6.5 The Second Respondent admits that the domain name in issue is identical

or confusingly similar to a trademark in which the Complainant has rights.

6.6 The Panel agrees. Through the assignment of rights from KZT on January 17, 2001,

the Complainant became the proprietor of common law rights dating from June

or July 1998 in BONGO BOARD and of a U.S. federal trademark application filed

March 13, 1997 for BONGO, which matured into a registration in March 2001. The

domain name in issue is identical to the trademark used by the Complainant or

its predecessor-in-title since June or July 1998, and contains the whole

of the Complainant's registered trademark, BONGO. The domain name in issue adds

only a noun describing the nature of the goods, which is not in the Panel's

view enough to avoid a likelihood of confusion with the Complainant's registered

trademark which is used in respect of balance boards.

6.7 The Panel appreciates the Second Respondent's argument that it may have

acquired senior user rights in the BONGO BOARD mark through the assignment of

common law rights from Stanley Washburn. But, an administrative proceeding under

the Policy is not an appropriate forum for evaluating the validity of national

trademark registrations.

Rights or Legitimate Interest

6.8 To succeed, the Complainant must also prove that the Second Respondent

has no rights or legitimate interest in the domain name in issue.

6.9 The Complainant's case, in this respect, is as follows. The Complainant

says that the Second Respondent has not designed, produced, manufactured or

sold any balance boards, either at the site corresponding to the domain name

in issue or otherwise, under the trademark BONGO BOARD. The inference is that

the Second Respondent made no bona fide use of or preparations to use

the domain name before notice of the claim against it.

6.10 But, the Complainant itself provides evidence to the contrary. The cease

and desist letter from the Complainant's counsel dated January 31, 2001,

states:

Furthermore, it has come to our client's attention that Balance Designs, Inc.

has been selling balance boards labelled BONGO BOARD.

The Second Respondent has produced evidence that it introduced its Stanley

Washburn Original board at the Ski Industry Association tradeshow in March

1999 accompanied by marketing material stating:

Balance Designs has teamed up with Stanley Washburn, the original creator of

the BONGO BOARD …

Between March 1999, and February 2001, the Second Respondent sold 99 of its

Stanley Washburn Original boards. Further the Second Respondent applied to register

the domain name in issue in April 1999, and the corresponding trademark BONGO

BOARD before the U.S. Patent and Trademark Office in May 1999, all nearly two

years before it received the Complainant's cease and desist letter dated

January 8, 2001.

6.11 The Complainant's case, however, is that notice of the dispute

occurred on either of the dates when the Second Respondent had actual or constructive

notice of the Complainant's trademark rights. It asserts constructive notice

in March 1997 [the date when its US Trademark application was filed] and actual

notice in September 1999 [see paragraph 5.1.3 above].

6.12 The Panel rejects the proposition that knowledge of a prior trademark

application is "notice of any claim" for the purpose of Paragraph 4c(i) of the

Policy. As to actual notice, the official letter to the Second Respondent from

US Patent and Trademark Office in September 1999 of notification was six

months after the Second Respondent had exhibited its "Stanley Washburn Original"

BONGO BOARD balance board at the Las Vegas tradeshow and registered the domain

name [respectively in March and April 1999]. There was, therefore, no notice

of this dispute until after the Second Respondent had begun to make actual use

of, and demonstrable preparations to expand the use of, a trademark corresponding

to the domain name in issue in connection with a bona fide commercial

offering of goods.

6.13 The Complainant also asserts that the Second Respondent had constructive

notice of a claim against it as early as 1998 when its President, Mr. Bruce Moscarello,

began discussions with Stanley Washburn with a view to re-introducing the original

BONGO BOARD product. The basis for this contention is that since the Complainant's

trademark application was filed on March 13, 1997, the Second Respondent could

have located it in a trademark search in 1999 before it registered the domain

name in issue. The Panel also rejects this proposition. Even if the Second Respondent

had conducted such a search, the result would not have been notice of any

claim within the meaning of paragraph 4c of the Policy if the other elements

of bad faith and absence of rights or legitimate interest were not present.

On the evidence before it, the Panel is satisfied that the Second Respondent

genuinely believes that it acquired superior common law rights from Stanley

Washburn and that it has brought itself within paragraph 4c(i) of the Policy.

6.14 The Complainant cites Chernow Communications Inc. v Jonathan D. Kimball

[WIPO Case D2000-0119]. There the domain

name in issue was <ccom.com>. The Complainant was in the business

of communications services in connection with telephone calling and Internet

access services. It had registered the trademark C-COM in Colorado and also

had a US Federal Trademark which issued on January 21, 1997. The Respondent

registered the domain name in issue on August 14, 1997. The Respondent stated

that his purpose in registering that domain name was to reserve for himself

a generic domain name combining the letter 'C' [which is commonly known

among Internet users as a shorthand description for relating to computers]

and the TLD<.com> as an abbreviation for communication and commercial.

6.15 The Complainant's case was that registration of its service mark in January

1997, preceded the Respondent's registration of the domain name in issue in

August 1997, so that the Respondent had by that time constructive notice

of the Complainant's trademark. Held by the Panel that it was both realistic

and practical for a Respondent to carry out an online trademark search. Had

the Respondent done this before registering the domain name in August 1997,

and had he been acting in good faith, he might have registered an entirely

different domain name. The Respondent's failure to make such an online search

combined with other reasons led the Panel to decide that the domain name had

been registered in bad faith.

6.16 Here, however, the facts are totally different to those in the C-COM case.

This Panel does not believe that, taken on its own, a Respondent's failure to

make use of available online trademark searching is sufficient to amount to

registration in bad faith, where such search would have revealed the existence

of the Complainant's existing registered trademark. Further, even if such a

search would put the would-be registrant on notice of the Complainant's

trademark, it does not necessarily follow that bad faith should be found where

the domain name and an earlier registered trademark are identical or confusingly

similar. A domain name registrant may, for example, have good cause for

believing that the earlier trademark registration is invalid or was itself obtained

in bad faith. In this case, the Panel is satisfied that the Second Respondent

believed in good faith that its partner in the BONGO BOARD project, Stanley

Washburn, had common law rights which would invalidate any registration resulting

from KZT’s trademark application. Consequently, even if the Second Respondent

should be deemed to have constructive knowledge, the Panel on the facts of this

case would decline to find registration in bad faith.

6.17 This Panel finds that the Second Respondent had begun using and making

demonstrable preparations to expand the use of the BONGO BOARD trademark, which

is reflected in the domain name in issue, before it had notice of any claim

against it. The Complaint therefore fails under paragraph 4c(i) of the Policy.

Registered and Used in Bad Faith

6.18 The Complainant has failed to meet the requirement of paragraph 4a(ii)

of the Policy and so it is not strictly necessary to address the issue of bad

faith arising under paragraph 4a(iii) of the Policy. But, for the following

reasons, the Panel finds that the Complaint also fails under that head of the

Policy.

6.19 The Complainant's case is that the Second Respondent's registration of

the domain name in issue after having received constructive notice of

KZT's pending trademark application was registration in bad faith, and

that its use of the domain name to host content relating to balance boards in

general following constructive and actual notice of KZT's application and after

receipt of the cease and desist letter is evidence of use in bad faith.

The Complainant rejects the Second Respondent's account of Stanley Washburn,

the history of the BONGO BOARD balance board and the assignment of superior

common law rights as fictional.

6.20 The Panel rejects the Complainant's contention that the Second Respondent

registered the domain name in bad faith in April 1999. As explained in

paragraph 6.16 above, the Panel does not accept that a mere failure to

conduct a trademark availability search for a domain name before registration

necessitates a finding of bad faith registration where the domain name is identical

to an earlier trademark registration. Likewise, the Panel rejects the Complainant's

contention that the Second Respondent has used the domain name in bad

faith. The Respondent's explanation that it understood Washburn to own superior

common law rights in the BONGO BOARD trademark before it registered the domain

name in connection with its joint project, and the evidence that it subsequently

acquired these rights from Washburn, adequately rebut the Complainant's allegation

of use in bad faith.

6.21 Neither party filed any evidence addressing the question of whether the

Second Respondent had actual knowledge of the Complainant's sales of balance

boards under the BONGO BOARD trademark when it registered the domain name in

April 1999. But, even if the Second Respondent had been shown to have such knowledge,

this would still leave potentially complex issues of trademark ownership, which

could well have taken this Complaint out of the ambit of cases suitable for

determination under the Policy.

6.22 The Panel does not accept the Complainant's dismissal of the Respondent's

account of the history of the BONGO BOARD product and trademark as fictional.

The Second Respondent filed in evidence an example of one of the Complainant's

own advertisements which states that,

"Bongo Boards were King for surfers and skiers in the 60's and 70's. Now it's

back and faster, more fun and safer than ever."

The Complainant appears from this to recognise that the BONGO BOARD mark had

a history which extended further back than KZT's first use in 1998, and yet

its Complaint casts no light on this history whatsoever, despite categorically

denying the version related by the Second Respondent. In this case, the Panel

is satisfied from the considerable evidence filed by the Second Respondent that

the Second Respondent's account of the history and development of the BONGO

BOARD balance board is credible.

6.23 The Second Respondent submits that this Complaint has been brought in

bad faith. The Complainant was made aware of the Second Respondent’s claim to

legitimate rights in BONGO BOARD in January 2001 but apparently made no effort

to investigate that claim before the Complaint was filed. The Panel notes that

the Complaint is also misleading, in that the Complainant’s claim that the Second

Respondent had never used BONGO BOARD in respect of balance boards is, without

any explanation, contradicted by the Complainant’s own evidence. If the Complainant

had asked for and obtained sight of the documents filed as evidence by the Second

Respondent before bringing this Complaint, the Panel believes that it would

have become clear that the complex and disputed issues of fact involved are

not suitable for determination under the Policy. In the Panel's view, the Complainant's

conduct in bringing this administrative proceeding comes close to reverse domain

name hijacking.

7. Decision

For all the foregoing reasons, the Panel decides that although the Complainant

has proved that the domain name is identical to a trademark in which it has

rights, it has failed to prove the absence of rights or legitimate interest

or registration and use in bad faith on the part of the Second Respondent under

paragraph 4 of the Policy. Accordingly, the Complaint is dismissed.

David Perkins

Sole Panelist

Dated: October 12, 2001