Bootie Brewing Company v. Deanna D. Ward; Grabebootie, Inc.,

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bootie Brewing Company v. Deanna D. Ward and Grabebootie Inc.

Case No. D2003-0185

1. The Parties

The Complainant is Bootie Brewing Company of Winter Park, Florida, United States

of America, represented by Lowndes, Drosdick, Doster, Kantor & Reed, P.A.

of United States of America.

The Respondents are Deanna D. Ward and Grabebootie, Inc., both of Orlando,

Florida United States of America, represented by Allen, Dyer, Doppelt,

Milbrath & Gilchrist, P.A. of United States of America.

2. The Domain Names and Registrar

The disputed domain names <bootiebar.com>, <bootiebeer.com>, <bootiebeerinc.com>,

<bootiebrewing.com>, <bootiebrewingcompany.com>, <bootiebrewpub.com>,

<bootiewear.com>, <grabebootie.com> and <justgrabebootie.com>

all are registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center")

on March 6, 2003. That same day, the Center transmitted by email to

Go Daddy Software a request for registrar verification in connection with the

domain names at issue, and Go Daddy Software transmitted by return email to

the Center its verification response confirming that Respondent Deanna Ward

is listed as the registrant and providing the contact details for the administrative,

billing, and technical contact. In response to a notification by the Center

that the Complaint was administratively deficient, the Complainant filed an

amendment to the Complaint on March 17, 2003. The Center verified

that the Complaint, as amended, 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 Respondents of the Complaint, and the proceedings commenced as

of March 18, 2003. In accordance with the Rules, paragraph 5(a), the

due date for Response was set as April 7, 2003.

Having received no response by April 7, 2003, the Center sent Respondents

a Notification of Default on April 9, 2003. Respondents replied by

e-mail on April 9, 2003, that they had submitted the Response on April 7, 2003,

by e-mail and courier. The Center subsequently received the hardcopy of the

Response and confirmed that it had been sent on the April 7, 2003,

due date (the Center apparently had not received the emailed version of the

Response because Respondents had a typographical error in the email address;

Respondents subsequently resent the email to the Center’s correct email address).

On April 10, 2003, the Center confirmed that it was in receipt of

the Response and that the Notification of Respondent Default dated April 9, 2003,

should be disregarded.

The Center appointed David H. Bernstein, Michelle Brownlee and Kenneth A. Genoni

as Panelists in this matter on April 22, 2003. The Panel finds that

it was properly constituted. Each member of 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. Pursuant to

the Rules, paragraph 10(c), the Panel set May 30, 2003, as the date

for decision.

One procedural issue that needs to be addressed at the outset is that Complainant

has named two Respondents in its Complaint. Generally, only the registrant of

the domain name or names at issue should be listed as a Respondent. AFMA,

Inc. v. Globemedia, WIPO Case No. D2001-0558

(August 23, 2001). Although Respondents have not objected, the more

appropriate course is to treat only Deanna Ward as the proper Respondent because

the registrar has confirmed that she is the registrant of all nine domain names

at issue. Dismissal of the second Respondent, Ward’s company, Grabebootie, Inc.,

will not prejudice Complainant because all remedies available in this proceeding

(cancellation or transfer of the domain names) are available against Ward as

the registrant. Top Driver, Inc. v. Benefits Benefits, WIPO

Case No. D2002-0972 (January 7, 2003). Accordingly, the Panel

hereby dismisses Respondent Grabebootie, Inc.

4. Factual Background

Although a number of facts are hotly contested, certain undisputed facts can

be discerned from the parties’ submissions. Tania Torruella (President of Complainant)

and Respondent Deanna Ward conferred in September 2001 about a new venture,

to be known as Bootie Brewing Co., that would sell beer and clothing under the

trademarks "Bootie" and "Grabebootie". Torruella thereafter

retained a law firm to conduct a trademark availability search on the mark "Bootie

Beer" and incorporated the Complainant with the State of Florida on October 23, 2001.

Respondent, meanwhile, registered the domain names at issue starting on September 29, 2001;

the final domain names were registered on October 31, 2001. The domain

names were registered in the name of Deanna Ward, though, in the registration

documents, she listed her affiliation as "Bootie Brewing, Inc."

During this time, the parties had no written agreement setting forth the terms

of their relationship. Complainant asserts that Respondent acted as her agent;

Respondent characterizes the parties as joint venturers. When the parties later

tried to formalize their relationship, they were unable to reach agreement;

accordingly, in December 2001, they went their separate ways.

After the parties’ separation, Complainant continued to develop the Bootie

Brewing Co. business and product line. In February 2002, Complainant started

work on a marketing video for Bootie-branded beer. On March 21, 2002,

Complainant filed with the U.S. Patent and Trademark Office ("PTO")

applications to register "Bootie," "Bootie Lager,"

"Bootie Light," "Grabebootie," and "Bootie Call"

as trademarks in classes 16 (paper products) and 32 (beer); those applications

all alleged first use on or before March 15, 2002[1].

The PTO issued Complainant U.S. Registration No. 2,702,676 for "Bootie

Lager" on April 1, 2003, and U.S. Registration No. 2,704,741

for "Bootie Light" on April 8, 2003. The PTO’s TARR database

indicates that the application for "Grabebootie" (Serial No. 78/116,686)

was published in the Official Gazette on May 13, 2003, "Bootie"

(Serial No. 78/116,641) was published on May 20, 2003, and "Bootie

Call" (Serial No. 78/116,651) will be published on June 3, 2003.

More recently, Complainant has filed applications for "Bootie Beer,"

"Bootie Bar," and "Bootie Online"; those applications

still are pending.

Meanwhile, Respondent pursued her own plans for a Bootie-related business.

After learning on January 15, 2002, that Torruella incorporated Booting

Brewing Co., Respondent incorporated her own company, Grabebootie, Inc., on

February 4, 2002, with an effective date of January 28, 2002.

Starting on January 29, 2002, Grabebootie, Inc. began to sell clothing

and related items under the "Grabebootie" trademark (with five dots

above the first "e"), including through an Internet web site located

at <www.justbootie.com>.[2]

Respondent also has pursued her own trademark application campaign. On February 11, 2002,

Grabebootie, Inc. applied to register "Grabebootie" in class 25 (clothing),

alleging first use on or before January 29, 2002; on March 11, 2002,

Grabebootie, Inc. filed a second application for a related design mark. The

PTO registered the word mark on December 17, 2002 (Registration No.

2,662,922); the TARR database indicates that the design mark will be published

for opposition on June 24, 2003. Grabebootie, Inc. also has registered

"Please Grab Responsibly" for clothing (Registration No. 2,713,251)

and owns pending applications for "Got Bootie?" (Serial No. 76/432,692,

filed July 22, 2002; claimed date of first use of June 1, 2002;

office action pending), and "Bootie Crew" (Serial No. 78/172,459,

filed October 9, 2002; claimed date of first use of June 1, 2002;

published May 13, 2003).

On April 2, 2002, Respondent executed documents to effectuate transfer of the

domain names from Deanna Ward, Bootie Brewing, Inc. to Deanna Ward, Grabebootie,

Inc. On the transfer documents filed with the Registrar, Respondent listed the

current registrant as "Bootie Brewing Co." and listed the new registrant

as "Grabebootie, Inc." In explaining the reason for the transfer,

Respondent wrote that Bootie Brewing Co. "was never started." After

the transfer, visitors to the sites at these domain names were automatically

forwarded to Respondent’s "www.grabebootie.com" web site; today, some

of the domain names forward Internet users to Respondent’s "www.justbootie.com"

web site.

5. Parties’ Contentions

A. Complainant

Complainant contends that the domain names at issue are confusingly similar

to its registered trademarks for Bootie Lager and Bootie Light and its common

law rights in Bootie, Bootie Call and Grabebootie. Complainant further contends

that Respondent has no rights or legitimate interests in the domain names because

Respondent never legitimately owned the domain names at issue, had no right

to transfer the domain names owned by Complainant, and has no right to their

use. Rather, Complainant contends that its President, Tania Torruella, created

the mark "Bootie" and "Grabebootie" and asked Respondent

to register the domain names, as her agent, as part of a business plan to develop

a line of beer under the trade names Bootie Lager and Bootie Light. Finally,

Complainant argues that Respondent acted in bad faith when she transferred the

domain names from Bootie Brewing Co. to Grabebootie, Inc. Complainant claims

that Respondent executed the transfer documents without Complainant’s knowledge

or authority, and falsely stated on the transfer agreement that Complainant

was never started.

B. Respondent

Respondent argues that this proceeding is not the proper forum to resolve general

business disputes like this one; rather, it is meant only for cases of abusive

cybersquatting. She further argues that, in any event, Complainant has failed

to meet its burden of establishing the three requirements necessary to have

the domains at issue transferred.

First, Respondent asserts that Complainant has no rights in any trademarks

that are identical or confusingly similar to the domain names at issue. Respondent

contends that there is no evidence that Complainant has ever made any actual

use of any of the names at issue.

Second, Respondent asserts that she has a legitimate interest in the domain

names at issue because, through her company Grabebootie, Inc., she has sold

Grabebootie-branded apparel since January 2002, and Bootie-branded apparel since

June 2002. Moreover, she has obtained a federal registration for the "Grabebootie"

trademark, and her registered trademark rights in that mark precede any rights

owned by Complainant.

Finally, Respondent contends that there is no evidence of bad faith. Rather,

she argues, she was acting as Torruella’s partner or co-venturer when she registered

the domain names at issue, that the names were registered in her name individually

and paid for by her, and that she received no compensation for her services

and no reimbursement for the registration fees. Thus, she did not register the

domain names in bad faith. Nor is she using the domain names in bad faith –

rather, she is using them to conduct a bona fide business and has never

tried to sell the domain names, disrupt Complainant’s business, or offer them

to competitors of Complainant.

6. Discussion and Findings

At the outset, the Panel notes that this is an atypical UDRP case. Unlike many

cases that concern traditional allegations of cybersquatting, this case instead

concerns a business dispute between two parties who started with the best of

intentions, but regrettably found their relationship in tatters. As is the norm

in such business disputes, the facts are hotly contested, which creates a challenge

for the trier of fact given the expedited nature of these proceedings and the

limited record presented to the Panel.

That does not mean, however, that the Panel should abdicate its responsibility

to analyze the record as best it can to determine whether cybersquatting has

occurred. Just as cybersquatting can occur between strangers, so can it occur

between business partners. Top Driver, Inc., supra; cf. The Thread.com,

LLC v. Poploff, WIPO Case No. D2000-1470

(January 5, 2001). Similarly, just because the record is complex does

not mean that the Panel should decline to review it. Rather, the Panel’s obligation

when faced with such disputed facts is to make the best findings it can, by

a preponderance of the evidence, based on the record submitted. Magnum Piering,

Inc. v. Mudjackers, WIPO Case No. D2000-1525

(January 29, 2001); Electronic Commerce Media, Inc. v. Taos Mountain,

NAF Claim No. FA95344 (October 11, 2000).

The Panel recognizes that it may make erroneous findings given the limited

nature of the record. That, however, is a necessary risk of the Policy, which

provides for a relatively quick and inexpensive method of resolving alleged

cybersquatting disputes. If either party disagrees with the Panel’s findings,

the Rules specifically encourage the parties to litigate their dispute in a

forum that allows for discovery, live testimony and cross-examination, all of

which facilitates the trier of fact’s ability to make credibility determinations.

Policy paragraph 4(k).

With these principles in mind, the Panel turns to the merits of this dispute.

To prevail, Complainant must sustain its burden of proving all three of the

elements enumerated in Paragraph 4(a) of the Policy:

1. the Domain Names are identical or confusingly similar to a trademark or

service mark in which the Complainant has rights;

2. Respondent has no rights or legitimate interests with respect to the Domain

Names; and

3. the Domain Names have been registered and used in bad faith.

As discussed in detail below, the Panel finds that Complainant has satisfied

this burden with respect to the six "Bootie" beer-related domain names:

<bootiebar.com>, <bootiebeer.com>, <bootiebeerinc.com>, <bootiebrewing.com>,

<bootiebrewingcompany.com>, and <bootiebrewpub.com> (the "Bootie

Beer Domain Names"). The Complainant has not, though, sustained its burden

with respect to the <bootiewear.com> domain name and with respect to the

<grabebootie.com> and <justgrabebootie.com> domain names (the "Grabebootie

Domain Names").

A. Identical or Confusingly Similar

The first factor contains two elements: (i) whether Complainant has rights

in a relevant mark, and (ii) whether the domain names are identical or confusingly

similar to that mark. Respondent primarily contests the first of these elements,

arguing that Complainant has failed to prove use of any of these trademarks.

In light of the truncated nature of these proceedings, it is fully appropriate

for the Panel to defer to other fora that may already have considered the same

issue. In connection with the consideration of this first factor, it thus is

common for panels to defer to the PTO when the PTO has made relevant findings,

including through the issuance of registrations or denial of applications. E.g.,

EAuto L.L.C. v. Triple S. Auto Parts, WIPO

Case No. D2000-0047 (March 24, 2000) (deferring to PTO registration

of "EAuto"); Rodale, Inc. v. Cambridge, WIPO

Case No. DBIZ2002-00153 (June 28, 2002) (deferring to PTO’s refusal

to register "Scuba Diving").

Here, the PTO has registered two of Complainant’s marks: "Bootie Lager"

and "Bootie Light." In connection with those registrations, Complainant

affirmed that it first used these marks in commerce as of March 15, 2002,

and it submitted specimens of use to the PTO. Neither Respondent nor any other

party opposed the registration of these marks. These registrations thus constitute

prima facie proof of Complainant’s ownership of these trademarks. Universal

City Studios, Inc. v. G.A.B. Enters., WIPO

Case No. D2000-0416 (June 29, 2000). Absent compelling evidence

that the PTO’s determination was erroneous, a UDRP panel should be extremely

reluctant to reach a different finding. Electronic Commerce Media, supra.

Here, Respondent offers no – let alone compelling – evidence of non-use. Rather,

Respondent merely offers the conclusory statement that Complainant has not proven

use. In the face of these registrations, that contention is wholly without merit.

Accordingly, the Panel finds that, at the minimum, Complainant has established

trademark rights in the terms "Bootie Lager" and "Bootie Light."

The Panel need not go further to consider whether Complainant also has established

trademark rights in the other marks because each of the domain names is confusingly

similar to these two registered marks. The dominant portion of Complainant’s

marks is the word "Bootie", and that word is reproduced in its entirety

in all nine of the domain names at issue. Moreover, the Bootie Beer Domain Names

(the only names the Panel has concluded should be transferred) expressly include

beer-related terms, making traditional trademark confusion with Complainant’s

marks virtually inevitable. These facts alone are sufficient to establish confusing

similarity, especially in the more expansive way that "confusingly similar"

is used in the Policy. See EAuto, supra; Wal-Mart Stores, Inc. v. MacLeod,

WIPO Case No. D2000-0662 (September 19, 2000).

In sum, the Panel finds that Complainant has satisfied its burden with respect

to all nine domain names under the first factor.

B. Rights or Legitimate Interests

The second factor creates an evidentiary challenge for complainants because

they must prove a negative: That the respondent lacks a legitimate interest

in the domain name. In recognition of this difficulty, most panels have concluded

that, once a complainant makes a prima facie showing that the respondent

lacks a legitimate interest, the burden of production shifts to the respondent

to come forward with demonstrable evidence proving a legitimate interest in

the domain name. Document Techs., Inc. v. International Elec. Communications,

Inc., WIPO Case No. D2000-0270 (June 6, 2000).

Of course, the burden of proof always remains on the complainant.

To help panels determine whether a respondent’s interest is legitimate, the

Policy offers three non-exclusive examples of how a respondent can demonstrate

legitimate interest:

(i) Before any notice to [respondent] of the dispute, [respondent’s] use of,

or demonstrable preparations to use, the domain name or a name corresponding

to the domain name in connection with a bona fide offering of goods or services;

(ii) [respondent] (as an individual, business, or other organization) [has]

been commonly known by the domain name, even if [respondent has] acquired no

trademark or service mark rights; or

(iii) [respondent is] making a legitimate noncommercial or fair use of the domain

name, without intent for commercial gain to misleadingly divert consumers or

to tarnish the trademark or service mark at issue. (Policy, paragraph 4(c)).

Here, Complainant has made a prima facie showing that Respondent has

no rights to or legitimate interests in any of the disputed domain names. Complainant

alleged that it developed the marks and that Respondent was acting solely as

its agent in registering the domain names. That Respondent registered the domain

names in the name of "Deanna Ward, Bootie Brewing Co.," provides powerful

evidence that Complainant’s assertions are correct. Similarly, Complainant provided

evidence that Respondent misappropriated the domain names from Complainant when

she transferred the domain names from "Deanna Ward, Bootie Brewing Co."

to "Deanna Ward, Grabebootie, Inc." Here, too, Complainant’s documentary

evidence is compelling: Respondent misled the Registrar when she stated (in

April 2002) on the transfer documents that "Bootie Brewing Co."

was never started; to the contrary, as Respondent has admitted, she knew in

January 2002, that Complainant had incorporated that company.

Respondent attempts to rebut this evidence with assertions that she and Ms.

Torruella were co-venturers, and that Respondent was not Torruella’s agent.

Respondent thus argues that, at the time the marks were created, neither party

had exclusive rights in them. If true, this would be a compelling rejoinder.

On this record, though, given the documentary evidence discussed above, the

Panel cannot accept Respondent’s claim. Rather, though it is a close issue,

the Panel finds by a preponderance of the evidence that Respondent registered

the names as agent of Bootie Brewing Co. That is true even though the corporate

entity did not yet exist. The documents evidence an intention to found such

an entity, and Respondent’s registration of the domain names appears to have

been done for the benefit of that entity.

Respondent’s second claim of a legitimate interest is more persuasive. Respondent

asserts that, before receiving notice of this dispute, she used the domain names

in connection with a bona fide offering of clothing.

With respect to the Grabebootie Domain Names, the Panel agrees with Respondent.

Respondent’s evidence shows that she was using those names in commerce as of

January 2002, prior to the creation of any trademark rights in those names by

the Complainant. Moreover, the PTO has granted Respondent a trademark registration

in "Grabebootie". Just as the Panel should defer to Complainant’s

trademark registrations in connection with the first factor, so should the Panel

defer to Respondent’s ownership of a registration in connection with this second

factor. Respondent’s registration is thus prima facie evidence of her

ownership of the "Grabebootie" trademark; it would be inappropriate

for this Panel to conclude that Respondent has no legitimate interest in a mark

she registered with the PTO. The Panel thus concludes that Respondent has legitimate

interest in its registered mark.

Similarly, the Panel finds that Respondent has shown a legitimate interest

in the <bootiewear.com> domain name. Respondent alleges that she was selling

"Bootie Crew" branded clothing since June 2002, long before the

commencement of this dispute. That alone is sufficient to establish a legitimate

interest under paragraph 4(c)(i) of the Policy.

Complainant nevertheless argues that Respondent’s interests are not legitimate

because Complainant sold Bootie-branded clothing three months earlier, in March

2002. That assertion is undermined by Complainant’s withdrawal of its application

to register its marks in class 25, and by its lack of candor with the Panel

on that point. Accordingly, and solely for purposes of these proceedings, the

Panel determines that Complainant has failed to show that Respondent lacks a

legitimate interest in the <bootiewear.com> domain name.

Respondent’s argument, however, does not extend to the six Bootie Beer Domain

Names. Respondent has failed to articulate how her use and registration of these

domain names, which contain beer-, brewing-, and bar-related terms, can constitute

a legitimate interest given that her business is focused solely on the sale

of clothing. Thus, the Panel concludes that, with respect to <bootiebar.com>,

<bootiebeer.com>, <bootiebeerinc.com>, <bootiebrewing.com>,

<bootiebrewingcompany.com>, and <bootiebrewpub.com>, Respondent

has failed to rebut Complainant’s prima facie showing that Respondent

lacks a legitimate interest.

C. Registered and Used in Bad Faith

The final factor is whether Respondent acted in bad faith in registering and

using the six Bootie Beer Domain Names. The Panel finds, again on a preponderance

of the evidence, that Complainant has satisfied this burden.

Respondent admits that she registered the domain names at Complainant’s request.

Nevertheless, she registered them in her own name and subsequently transferred

them from "Bootie Brewing Co." to "Grabebootie, Inc." on

false pretenses – that is, under the misrepresentation that "Bootie Brewing

Co." was "never started." That conduct alone is sufficient to

support a finding of bad faith registration and use. See Top Driver, supra

(bad faith found at time employee changed registration data to transfer

control of domain name from employer to employee).

Further evidence of bad faith use is Respondent’s appropriation of the beer-related

domain names despite her knowledge of Complainant’s intended use and her own

lack of intent to develop a beer- or bar-related business.

Finally, bad faith can be found based on Respondent’s registration of so many

variations of the "Bootie" trademark. See Policy, paragraph

4(b)(iii) (providing examples of bad faith registration and use, including where

respondent has "registered the domain name in order to prevent the owner

of the trademark or service mark from reflecting the mark in a corresponding

domain name, provided that [respondent has] engaged in a pattern of such conduct").

7. Decision

For the foregoing reasons, in accordance with paragraph 4(i) of the Policy

and paragraph 15 of the Rules, the Panel orders that the domain names <bootiebar.com>,

<bootiebeer.com>, <bootiebeerinc.com>, <bootiebrewing.com>,

<bootiebrewingcompany.com> and <bootiebrewpub.com> be transferred

to the Complainant. The Panel denies, however, Complainant’s request for transfer

of the domain names <bootiewear.com>, <grabebootie.com> and <justgrabebootie.com>.

David H. Bernstein

Presiding Panelist

Michelle Brownlee

Panelist

Kenneth A. Genoni

Panelist

Dated: May 28, 2002

CONCURRING OPINION

I write separately to express my concern that granting relief to the Complainant

in this case is probably not what the drafters of the Policy envisioned. The

ICANN Second Staff Report on Implementation Documents for the Uniform Dispute

Resolution Policy ("Second Staff Report"), Paragraph 4.1.c (Oct. 24, 1999),

states that the Policy "calls for administrative resolution for only a

small, special class of disputes," namely, "abusive registrations,"

i.e., cases of cybersquatting and cyberpiracy. The Second Staff Report

further states:

Except in cases involving "abusive registrations" made with bad-faith intent

to profit commercially from others' trademarks (e.g., cybersquatting and cyberpiracy),

the adopted policy leaves the resolution of disputes to the courts (or arbitrators

where agreed by the parties) and calls for registrars not to disturb a registration

until those courts decide. The adopted policy establishes a streamlined, inexpensive

administrative dispute-resolution procedure intended only for the relatively

narrow class of cases of "abusive registrations." Thus, the fact that the policy's

administrative dispute-resolution procedure does not extend to cases where a

registered domain name is subject to a legitimate dispute (and may ultimately

be found to violate the challenger's trademark) is a feature of the policy,

not a flaw. The policy relegates all "legitimate" disputes--such as those where

both disputants had longstanding trademark rights in the name when it was registered

as a domain name--to the courts; only cases of abusive registrations are intended

to be subject to the streamlined administrative dispute-resolution procedure.

Second Staff Report, paragraph 4.1.c.

I note that a number of Panels have relied on the Second Staff Report in refusing

to grant relief in "close cases" such as this one, on the ground that

such cases do not lie within the purview of the policy. See, e.g., Quarterview

v. Quarterview Co. Ltd., eResolution Case Nos. AF-0209a and AF-0209b (July 6, 2000)

(a case with facts very similar to this one); Miele, Inc. v. Absolute Air

Cleaners and Purifiers, WIPO Case No.

D2000-0756 (September 11, 2000); America Online, Inc. v. Cucamonga

Electric Corp. aka Paul Oshideri, NAF Case No. FA0112000103364 (February 26, 2002).

I acknowledge that most panels have taken the approach that the majority proposes

here and have found themselves obligated to decide such difficult cases the

best they can, using a preponderance of evidence standard of proof. Accordingly,

I will reluctantly follow the majority’s approach for the sake of striving for

uniformity in the dispute resolution process. See Koninklijke Philips Electronics

NV v. Relson Ltd, WIPO Case No. DWS2002-0001

(June 14, 2002).

I write separately to suggest that I believe that the prevailing standard of

proof is at odds with the stated goals of the Second Staff Report, and to urge

ICANN to clarify this issue when it next considers amendments to the Policy.

The Policy is silent on the standard of proof that should be applied in proceedings.

This silence leads to confusion as to which standard to apply, particularly

where panelists may have widely varying ideas about the standard to be applied

based on their countries’ differing legal systems. See A. Michael Froomkin,

ICANN's Uniform Dispute Resolution Policy -- Causes and Partial Cures,

67 Brooklyn Law Rev. 605, 696 (2002).

If the Policy is truly intended to apply to clear cases of cybersquatting or

cyberpiracy where a streamlined dispute resolution procedure is appropriate,

then it would seem that a higher standard than mere preponderance should be

applied. That is, relief should not be awarded in close cases with many disputed

facts such as this one. I believe that in order to achieve the drafters’ objective,

it would be more appropriate to apply a "clear and convincing" standard.

Panels should only grant relief when they believe that it is highly probable

that abusive registration has occurred, not simply when they think that it is

more likely than not that it has occurred. See A Study by the Max Planck

Institute for Foreign and International Patent, Copyright and Competition Law,

Munich (2002), at 67 ("If it is strictly observed as a general principle

that the UDRP only serves the purpose of granting relief in clear piracy cases,

the complaint must be rejected whenever any of the three elements in Art. 4.a

cannot be established by clear and convincing proof …").

I urge ICANN to clarify the standard of proof to be applied in these proceedings

at the earliest opportunity. In absence of such clarification, I will follow

the majority rule.

Michelle Brownlee

Panelist

Dated: May 28, 2003

1. Complainant asserted in the Complaint

that the applications for "Grabëbootie" and "Bootie Call" also covered clothing

in class 25. A review of the PTO's Trademark Applications and Registrations

Retrieval ("TARR") database, though, shows that Complainant has apparently dropped

the request to include class 25 in these applications. (It is well accepted

that panels may consult and rely on publicly available databases such as PTO

and WHOIS records. Bass Hotels & Resorts, Inc. v. Rodgerall, WIPO Case No. D2000-0568

(August 7, 2000).) According to TARR, Complainant's last submission to the PTO

was on or about February 7, 2003; it is thus a virtual certainty that the application

for class 25 had been withdrawn at the time this Complaint was submitted (March

6, 2003).

The Panel is troubled by this misrepresentation, which is material given the

close question of which party has prior trademark rights for each class of goods.

Given the withdrawal of the class 25 application, and as a sanction for Complainant's

lack of candor, for purposes of this proceeding alone, the Panel treats Complainant

as having no clothing-related trademark rights in the "Bootie" marks. Cf. Britannia

Building Soc'y v. Britannia Fraud Prevention, WIPO Case No. D2001-0505 (July

6, 2001).

2. The Panel notes that, as of the date that

Respondent claims it first began use of the "Grabebootie" mark for the sale

of clothing (January 29, 2002), Complainant had not yet established any trademark

rights in any of its various marks, either through use (which Complainant claims

did not begin until March 15, 2002) or through the priority afforded by registration

(Complainant filed its first applications on March 21, 2002). On this record,

it thus appears that Respondent has priority for clothing sales.