The Chamberlain Group, Inc. v. Martial Maitam (Liftmaster garage opener parts online); Martial Maitam (marwest transmitters)

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Chamberlain Group, Inc. v. Martial Maitam

Case No. D2002-0338

1. The Parties

The Complainant is The Chamberlain Group, Inc, a Connecticut (USA) corporation

with its principal place of business in Elmhurst, Illinois, United States of

America, represented by Joseph T. Nabor of the law firm Fitch, Even,

Tabin & Flannery, Chicago, Illinois, United States of America.

The Respondent is Martial Maitam, an individual who resides in Chatsworth,

California, United States of America and who purports to do business as "Liftmaster Garage

Opener Parts Online" and as "Marwest Transmitters." The Respondent is represented

by Anthony M. Solis, Los Angeles, California, United States of America.

2. Domain Names and Registrars

The domain names at issue are:

<liftmastergarageopener.com>

<liftmaster-garage-opener.com>

They are referred to as the Domain Names. According to the "whois" database

of Network Solutions, Inc. ("NSI"), the registrar for the first of

these Domain Names, Respondent registered the Domain Name on January 6, 2000.

According to the "whois" database of Melbourne IT Ltd. ("Melbourne IT"),

the registrar for the second of these Domain Names, Respondent registered the

Domain Name on June 4, 2001.

3. Procedural History and Jurisdiction

The WIPO Arbitration and Mediation Center ("the Center") received

Complainant's Complaint on April 9, 2002 (hard copy), and April 11, 2002

(email). The Center verified that the Complaint satisfied the formal requirement

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"). Complainant made the required payment

to the Center. The formal date of the commencement of this administrative proceeding

is April 25, 2002.

On April 15, 2002, the Center transmitted via email to each of NSI and Melbourne

IT, the registrars, a request for registrar verification in connection with

this case. On April 16, 2002, the Center received verification via

email from Melbourne IT, confirming that Liftmaster Garage Opener Parts Online

is the registrant of the Domain Name <liftmaster-garage-opener.com> and

that Martial Maitam is the administrative contact. YahooDomains Techcontact

of Sunnyvale, California, United States of America is given as the technical

contact. On April 25, 2002, the Center received verification via email

from NSI, confirming that Martial Maitam is the registrant and the administrative

and billing contact for the Domain Name <liftmastergarageopener.com>.

AutoNIC-Yahoo! Store of Sunnyvale, California, United States of America is given

as the technical contact.

Having verified that the Complaint satisfied the formal requirements of the

Policy and the Rules, on April 25, 2002, the Center transmitted to

the Respondent, via post/courier, facsimile, and e-mail, a Notification of Complaint

and Commencement of the Administrative Proceeding.

The Center received a Response from Respondent on May 14, 2002 (facsimile),

and on May 16, 2002 (email and hardcopy). On May 22, 2002,

the Center transmitted an acknowledgement of receipt of a supplemental filing

from Complainant, dated May 21, 2002 (email), and May 23, 2002

(hardcopy), requesting leave to file a reply. Complainant offered no reason

for submitting a reply, and the proposed reply contains only a summary of arguments

that it presented in the Complaint. I therefore deny leave to file the reply

and take no account of the matters submitted in the May 21, 2002,

filing. See Rule 12.

In view of the Complainant's designation of a single panelist and Respondent's

election of the same format, the Center invited Mr. Richard G. Lyon to serve

as a Panelist.

After receiving Mr. Lyon's Statement of Acceptance and Declaration of Impartiality

and Independence, the Center transmitted via email to the parties a Notification

of Appointment of Administrative Panel on May 29, 2002. The projected

decision date is June 12, 2002.

I find that the Administrative Panel was properly constituted and appointed

in accordance with the Rules and Supplemental Rules, and that the Panel has

jurisdiction over this dispute.

The Administrative Panel shall issue its decision based on the Complaint, the

Response, the evidence presented, the Policy, the Rules, and Supplemental Rules.

4. Factual Background

Complainant is a well-known manufacturer of garage door openers for residential

and commercial applications. Complainant owns the registered trademark LIFTMASTER

in class 9 for electric garage door openers and has used the mark continuously

since May 1967. Complainant has earned the Good Housekeeping Seal of Approval

for its products.

Complainant has not licensed Respondent to use its name or marks. While Respondent

contends otherwise, there is no evidence in the record of any such authority.

Respondent registered the Domain Name <liftmastergarageopener.com> ("the

first Domain Name") on January 6, 2000. On the corresponding website,

Respondent purports to serve as an authorized nationwide dealer for "Liftmaster

Chamberlain" and to "carry all their available parts." The site includes a logo

with the term "Lift Master" presented in large red letters. The logo is similar

in color and style to that used in Complainant's registered trademark. The website

invites customers to click on listed items for the purpose of purchasing them.

Complainant's counsel transmitted a letter via facsimile to the Respondent

on April 2, 2001, requesting that the Respondent cease and desist

from use of the first Domain Name and transfer it to the Complainant. Respondent's

counsel transmitted a letter via facsimile to Complainant's counsel on April 12, 2001,

noting its representation of the Respondent. Respondent's counsel transmitted

another letter via facsimile to Complainant's counsel on April 19, 2001,

claiming that Respondent had authorization to resell Complainant's products

and suggesting the possible resolution of paying a licensing fee for a specific

license to sell Complainant's products on the internet. Complainant apparently

did not respond to these letters until February 28, 2002.

Respondent registered the Domain Name <liftmaster-garage-opener.com>

("the second Domain Name") on June 4, 2001. The website corresponding

to this Domain Name appears identical to that corresponding to the first Domain

Name. On February 28, 2002, Complainant's counsel sent a cease and

desist letter via overnight courier to the Respondent demanding that Respondent

discontinue use of the second Domain Name and transfer it to the Complainant.

Respondent to date has not complied with these requests.

5. Parties' Contentions

The Complainant's contentions may be summarized as follows:

The Domain Names incorporate Complainant's principal trademark and a variant

of its trademarked logo and are therefore confusingly similar or identical to

its marks. Consumers locating Respondent's websites would tend to believe that

an affiliation existed between Complainant and Respondent in light of the Domain

Names themselves and in light of the logos and claims contained within the sites.

Respondent has no rights or legitimate interests in respect to the Domain Names,

since he has received no authorization to use the Complainant's marks. Respondent's

use of the Domain Names to market products manufactured by the Complainant constitutes

bad faith, since Respondent is passing himself off as Complainant or Complainant's

authorized representative. Respondent has engaged in similar behavior in respect

to other garage door manufacturers, registering domain names with slight variants

of the manufacturers' trademarks and trade names for the purpose of attracting

customers for those manufacturers' garage door parts[1].

The Respondent's contentions may be summarized as follows:

The Respondent is authorized to resell Liftmaster products as a wholesaler,

which he does by using the sites corresponding to the Domain Names. His use

thus benefits the Complainant by promoting its product and increasing sales

of that product. No element of bad faith exists, since the Respondent only uses

the Liftmaster mark to communicate the authenticity of the products sold. Furthermore,

the Respondent made efforts to resolve the matter with the Complainant that

were ignored for almost a year. Respondent's purported use of other manufacturers'

marks for similar purposes is irrelevant to this proceeding.

6. Discussion and Findings

The Complainant must prove the elements set out in paragraph 4(a) of the Policy.

These elements are as follows:

(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 to the Domain

Name; and

(iii) Respondent's Domain Name has been registered and is being used in bad

faith.

Complainant bears the burden of proof on each of these elements.

Identity and Confusion

Both Domain Names incorporate verbatim the Complainant's Liftmaster trademark

and trademarked logo. The Domain Names are therefore identical to the Complainant's

mark and are likely to cause confusion among Complainant's customers. Respondent

reinforces this confusion with his explicit references to the Complainant on

his websites and with his use of the Complainant's mark in logos within the

website.

Legitimate Interest

The only evidence submitted by Respondent to support his assertion that he

is an authorized reseller or distributor of Complainant's products is a one-paragraph

credit authorization from Complainant's assistant corporate credit manager.

Even an authorized distributor needs explicit permission to use his manufacturer's

trademarks, both as a matter of trademark law and to establish legitimate use

under the Policy[2]. Respondent

has provided no evidence of distributorship, much less of authority to use Complainant's

marks. Respondent has no right to use Complainant's marks and therefore no legitimate

interest in the Domain Names.

Bad Faith

Respondent's conduct falls squarely into Paragraph 4(b)(iv) of the Policy:

[B]y using the domain name, you [Respondent] have intentionally attempted

to attract, for commercial gain, Internet users to your web site or other on-line

location, by creating a likelihood of confusion with the complainant's mark

as to the source, sponsorship, affiliation, or endorsement of your web site

or of a product or service on your web site or location.

Respondent does not claim any use for the Domain Names unrelated to Complainant's

products; he bases his denial of bad faith solely on his reselling of Complainant's

products, which he asserts is authorized. Given my finding that Respondent's

interest in and use of Complainant's marks is not legitimate, it follows that

his use of the Domain Names to attract Complainant's customers and prospective

customers is bad faith[3].

Respondent's claim that his activities benefited the Complainant does not

change this analysis. Complainant notified him that his use of its mark was

unauthorized and unwelcome. He continued to use it in the face of these objections.

As the mark owner Complainant, not Respondent, is entitled to determine what

uses of the mark "benefit" the mark owner and the goodwill in the mark, grant

licenses accordingly, and exclude other uses.

While it is true that the Complainant delayed in pursuing action after exchanging

correspondence with the Respondent in April 2001, Respondent does not allege

that he made any significant investment or took (or refrained from taking) any

other action to his detriment, in reliance on Complainant's initial silence

or subsequent delay. His registration of the second Domain Name came only two

months after the correspondence between counsel, too short a time to be in reasonable

reliance on any alleged acquiescence. While this delay might affect the measure

of damages for trademark infringement, it does not, as Respondent may be suggesting,

constitute Complainant's acknowledgement of the validity of Respondent's arguments,

or somehow purge the bad faith in registration and use of the Domain Names that

Complainant has proven.

7. Decision

For the foregoing reasons, the Panel orders that the registration of the Domain

Names be transferred to the Complainant.

Richard G. Lyon

Sole Panelist

Dated: June 11, 2002

1. Copies of Respondent's comparable use

of other garage door manufacturers' names and marks are annexed to the Complaint.

As noted below, Respondent does not deny engaging in such conduct.

2. E.g., The Stanley Works and Stanley Logistics,

Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113 (April 13, 2000) (holding

that an authorized reseller of a manufacturer's products does not thereby gain

proprietary rights in the manufacturer's trademarks and certainly does not gain

the right to incorporate those trademarks into domain names); Star-Kist Foods,

Inc. v. P.J. Rhodes & Co., 769 F.2d 1393, 1396-97 (9th Cir. 1985) (holding that

a distributor with only an informal agreement with the manufacturer does not

thereby gain status as a licensee or any vested interest in the trademarks of

that manufacturer). Respondent's counsel's suggestion in his letter of April

19, 2001, that Respondent pay Complainant for a license to sell Complainant's

products on the Internet demonstrates that Respondent was aware that he needed

such a license.

3. This finding is sufficient to establish

bad faith, so I need not base my decision on Respondent's comparable use of

other manufacturers' marks on other websites. I do note that such conduct -

which Complainant has supported with evidence from the public record - bears

directly on the conduct alleged in this proceeding.