WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Marathon Enterprises, Inc. v. William I Bauer

Case No. D2007-1036

1. The Parties

The Complainant is Marathon Enterprises, Inc., a New Jersey corporation having its principal place of business in Englewood, New Jersey, United States of America, represented by Notaro & Michalos P.C., United States of America.

The Respondent is William I Bauer of Clifton, New Jersey, United States of America, appearing pro se.

2. The Domain Name and Registrar

The disputed domain name, <sabrett.net>, is registered with Melbourne IT trading as Internet Names Worldwide.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2007, in electronic form and on July 16, 2007, in hard copy. On July 18, 2007, the Center transmitted by email to Melbourne IT a request for registrar verification in connection with the domain name at issue. On July 19, 2007, Melbourne IT transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and that the Uniform Domain Name Dispute Resolution Policy (the “Policy”) applies to the domain name, and providing the registrant’s contact details. The Center verified that the Complaint satisfied the formal requirements of 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 July 24, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 13, 2007. The Response was dated August 13, 2007; the Center received it on August 17, 2007.

The Center appointed Seth M. Reiss as the sole panelist in this matter on August 23, 2007. 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

Complainant is a New Jersey corporation engaged in the business of manufacturing, marketing and selling food products. Complainant sells its food products under the SABRETT mark, and has done since 1932. Complainant is best known for its all beef frankfurters sold from New York City pushcarts that sport umbrellas displaying the word “Sabrett” in stylized format. Complainant also sells other SABRETT branded products including bread and rolls, hamburgers, mustard, sauerkraut, onions in sauces, sausages, corned beef briskets, pastrami and relish. Complainant sells its products through brokers and distributors throughout the United States.

Complainant holds United States Patent and Trademark Office registrations for the SABRETT mark for food products that date from 1934, and for umbrellas since 2005. Complainant does not sell its SABRETT branded umbrellas but provides them to its retailers to promote Complainant’s food products. “Sabrett” is an invented word, without meaning, adopted by Complainant to distinguish its goods from the goods manufactured by others. Complainant claims a marketing budget of approximately $1 million per year, a sizeable portion of which is expended through New York City’s Madison Square Garden sports venue endowing Complainant with the right to proclaim its sausage the “official frankfurter of Madison Square Garden.” Complainant sells more than 450 million SABRETT branded frankfurters per year, and boasts revenues from all its SABRETT branded products of more than $50 million per year.

Respondent is an individual operating a business under the fictitious name “Pascack Tent & Party Rentals,” also from a base in New Jersey. Respondent’s business offers, for sale and for rent, a wide variety of products with which to host parties and related activities. All products offered by Respondent are manufactured by third parties. Chief among these products are Complainant’s SABRETT branded foods and pushcarts displaying SABRETT branded umbrellas.

Respondent does some of its business through a website located at “www.pascackpartyrentals.com”. Displayed on Respondent’s “www.pascackpartyrentals.com” webpages is the phrase “Sabrett Authorized Dealer.” Respondent appears to be reselling genuine SABRETT branded products.

On January 28, 2007, Respondent registered the disputed domain name <sabrett.net>. Respondent appears to use the <sabrett.net> domain name to point to a page within its “www.pascackpartyrentals.com” website.¹ This internal page offers for sale only SABRETT branded products and links prominently to other pages offering for sale solely or primarily SABRETT branded food products. These internal pages link less prominently to other pages within the “www.pascackpartyrentals.com” website which describe and offer for sale SABRETT branded products together with other, primarily non-competing products, such as cooking equipment, chairs, tableware and lighting.² A relatively minor portion of Respondent’s “www.pascackpartyrentals.com” website offers arguably competitive (or perhaps complementary) food products, namely pretzels, knishes, popcorn, nachos, churros, and funnel cakes.

Like Respondent, Complainant also markets online via its website located at <sabrett.com>, a domain name Complainant registered in May 1998. Complainant’s website’s “Ordering” page describes and links to “distributors that accept online orders [for SABRETT branded products] and ship right to your door!” Until very recently,³ Respondent was among the three identified online distributors of SABRETT branded products and Complainant’s webpage linked through to Respondent’s “www.pascackpartyrentals.com” homepage.

On May 21, 2007, Complainant wrote Respondent demanding that Respondent cease its use of the <sabrett.net> domain name and transfer the domain name to Complainant. Respondent did not respond to Complainant’s demand. Respondent continues to use the <sabrett.net> domain name to point to an internal page of his “www.pascackpartyrentals.com” website that emphasizes SABRETT branded goods and that links to other portions of Respondent’s website.

5. Parties’ Contentions

A. Complainant

Complainant contends that the domain name at issue is identical to or confusing similar to Complainant’s registered and common law mark SABRETT, that Complainant has not authorized nor consented to Respondent’s registration or use of the <sabrett.net> domain name, that Respondent has no rights nor legitimate interests in the domain name particularly because Respondent is using the disputed domain name to sell a wide variety of products in addition to Complainant’s SABRETT branded food products, and that Respondent registered and is using the disputed domain name in bad faith. Complainant asks that the disputed domain name be transferred to it.

B. Respondent

Respondent contends that he is “an authorized dealer” of Complainant’s SABRETT branded products, that he registered and is using the <sabrett.net> domain name solely for the purpose of promoting Complainant and its products, that Complainant had substantial opportunity to register the disputed domain name for its own use but did not, and that others beside Respondent have registered domain names that include the word “Sabrett”.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs that: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy directs that a complainant has the burden with respect to each of the following:

1) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,

2) the respondent has no rights or legitimate interests in respect of the domain name; and,

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

A. Identical or Confusingly Similar

Complainant has amply demonstrated, through registration and use, rights in the fanciful mark SABRETT. Inasmuch as the addition of the gTLD suffix (in this case “.net”) is immaterial to an examination under paragraph 4(a)(i) of the Policy, Credit Management Solutions, Inc. v. Collex Resource Management, WIPO Case No. D2000-0029, the Panel concludes that the domain name at issue is identical to Complainant’s mark and that the first element of the Policy has been established.

B. Rights or Legitimate Interests

It is by now well established that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 2.1 and cases cited therein. Complainant alleges the Respondent was without authority to register or use the <sabrett.net> domain name and sets out a prima facie case on the second element of the Policy.

But Respondent claims to have registered and be using the <sabrett.net> domain name to promote and distribute genuine SABRETT branded goods. According to Paragraph 4(c)(i) of the Policy, a respondent demonstrates a right or legitimate interest to the disputed domain name if, before any notice to the respondent of the dispute, respondent uses, or makes 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. Respondent’s registration and use of the <sabrett.net> domain name to promote and sell SABRETT branded goods occurred before any notice to Respondent that Respondent’s right to do so was disputed.

There are two broad views among WIPO UDRP panels as to the circumstances under which a reseller of genuine branded goods or services can establish a right or legitimate interest in a domain name that incorporates the brand. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 2.3 and cases cited therein. According to what is described as the majority view,

[a] reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements. These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site accurately disclosing the registrant’s relationship with the trademark owner. The respondent must also not try to corner the market in domain names that reflect the trademark.

See, in particular, Oki Data Americas, Inc. v. ASD, Inc. WIPO Case No. D2001-0903 (denying transfer) and Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095 (according transfer).

According to what is described as the minority view, “[w]ithout the express permission of the trademark holder the right to resell the trademark holder’s products does not create a right to use the trademark as the basis for a domain name.” See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 2.3 and cases cited therein, e.g., Motorola, Inc. v. NewGate Internet, Inc., WIPO Case No. D2000-0079 (ordering transfer with dissenting opinion).

Complainant disputes that Respondent is Complainant’s “authorized dealer” and characterizes Respondent instead as “one of multiple vendors who resell Complaint’s SABRETT products.” Complainant claims Respondent’s use of the disputed domain name goes further than what is required to merely resell SABRETT branded products in particular, because Respondent uses the <sabrett.net> domain name to point to webpages that also offer for sale non-SABRETT branded goods. Complainant cites for support to Avon Products, Inc. v. Jongsoo Lee, WIPO Case No. D2001-0272, in which the respondent, claiming to be an authorized Avon reseller, was found to be without any right or legitimate interest to the <avonkorea.com> domain name.

Although the record leaves unclear the precise parameters of Respondent’s relationship with Complainant, Respondent does not dispute Complainant’s contention that it did not authorize him (the Respondent) to register or use the <sabrett.net> domain name. Under the panels’ minority view, in such circumstances, Respondent may very well lack a right or legitimate interest to the domain name.

Under the panels’ majority view, however, Respondent may be able to demonstrate a right or legitimate interest in the <sabrett.net> domain name. In order to do so, the Panel must be satisfied on balance as a threshold matter that Respondent is an authorized dealer or reseller of Complainant’s products. While Complainant disputes that Respondent is Complainant’s authorized dealer, and prefers to characterize Respondent as one of multiple vendors who resell Complainant’s products, Complainant, until very recently, actively promoted Respondent on Complainant’s own website as one of three distributors making available Complainant’s SABRETT branded products online. Under these circumstances this Panel cannot in these proceedings on the available record, conclude that Respondent’s characterizing itself as a SABRETT authorized dealer is unfair or misleading. Respondent registered and is using the <sabrett.net> domain name to promote and sell genuine SABRETT branded products.⁴ The site appears to fairly disclose Respondent’s relationship with Complainant, the trademark owner. And there is no evidence before the Panel that Respondent has attempted to corner the market in domain names reflecting the SABRETT mark.

The minority view appears to reflect a concern that, even where a disputed domain name is used solely to promote and offer for sale genuine goods and services, the registrant is commercially benefited through the use of the complainant mark’s fame and name recognition, and the initial interest confusion created in the respondent’s website. See, e.g., DaimlerChrysler A.G. v. Donald Drummonds, WIPO Case No. D2001-0160 (complaint denied with dissenting opinion). The majority view reflects the thinking expressed by the Oki Data panel that “the Policy was designed to prevent the extortionate behavior commonly known as cybersquatting,” and not all instances involving encroachment or misappropriation of trademark rights and goodwill.

While the webpage pointed to by the <sabrett.net> domain name offers exclusively SABRETT branded products, webpages that link from the pointed to webpage also promote and offer for sale or rent other, for the most part non-competing, products. Should this Panel adopt the majority panel view, which is its inclination, the question becomes whether linking off the webpage pointed to by the disputed domain name, in order to also promote and sell primarily non-competing goods of others, precludes Respondent from establishing a right or legitimate interest to the disputed domain name.

Guidance here may be found in the case of Dr. Ing. h.c. F. Forsche AG v. Del Fabbro Laurent, WIPO Case No. D2004-0481. The panel there concluded that the respondent had a legitimate interest in the disputed <porche-buy.com> and <porchebuy.com> domain names being used by the respondent to point to websites comprising a market place for used Porche cars only. Although respondent’s website also linked to websites that offered, under different domain names, competing car brands, this did not, in that panel’s estimation, constitute an offering of goods under the disputed domain such that the respondent’s legitimate interest in the disputed domains was negated. Compare Freni Brembo S.p.A. v. Webs We Weave, WIPO Case No. D2000-1717, where an authorized distributor of complainant’s trademarked brakes who registered and used a domain name incorporating the trademark to point to a website that marketed primarily complainant’s brakes, and only occasionally products manufactured by complainant’s competitors, was allowed to retain the domain name.

This Panel agrees with the majority of panels concluding that resellers meeting the Oki Data criteria establish a right or legitimate interests to a domain name incorporating the resold brand. The further circumstances of this case fail to make out a convincing case for relief under the Policy. Among other things, the manner in which Respondent links off the pointed to webpage, and the non-competitive and complementary nature of the goods offered on the linked-to web pages, persuade this Panel that on balance in this particular case, the criteria of the majority rule have been satisfied here.⁵

That Complainant’s own website promoted, until very recently, Respondent as one of three distributors from which its SABRETT branded products could be purchased online, even linking Internet users through to Respondent’s “www.pascackpartyrentals.com” website, distinguishes this case from the Avon Products case relied upon by Complainant where the issue of whether the respondent was even authorized to resell the trademarked Avon products was disputed. Accordingly, this Panel finds that the record in this case establishes in Respondent a right or legitimate interest to the <sabrett.net> domain name within the meaning of paragraph 4(a)(ii) of the Policy and that Complainant has failed to meet its burden with respect to this second element.

Complainant remains at liberty to negotiate contractual restrictions with its distributors that would preclude resellers like Respondent from registering and using domain names that incorporate Complainant’s SABRETT mark. See Oki Data, supra. To the extent Respondent’s use of the <sabrett.net> domain name infringes Complainant’s rights or misappropriates its goodwill, Complainant may seek remedies available through conventional litigation. The remedies afforded by the UDRP are narrow compared with those afforded by domestic trademark law, and intentionally so.

C. Registered and Used in Bad Faith

In light of the finding that Respondent has on balance demonstrated a right or legitimate interest to the disputed domain name, it is unnecessary for the Panel to consider the Policy’s third element as to whether or not the domain name has been registered and used in bad faith.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Seth M. Reiss
Sole Panelist

Dated: September 5, 2007

¹ As explained in note 2 below, Respondent appears to be pointing the <sabrett.net> domain name to pages within its “www.pascackpartyrentals.com” site through technology known as framing.

² If one enters Respondent’s “www.pascackpartyrentals.com” website through the <sabrett.net> domain name, the URL displayed on the user’s web browser is <sabrett.net>; whereas if one enters through the “www.pascackpartyrentals.com” homepage, the URL displayed on the web browser is “www.pascackpartyrentals.com”. Respondent appears to reach this result by having his <sabrett.net> site frame the pages of his “www.pascackpartyrentals.com” site rather providing it with its own content.

³ After this case was fully briefed, and shortly before this Panel issued this decision, Complainant appears to have deleted from its “Ordering” page any reference to Respondent and the link to Respondent’s “www.pascackpartyrentals.com” webpage.

⁴ Complainant appears to have removed from its website during the pendency of this case the reference to Respondent as one of Complainant’s three online distributors as well as the link to Respondent’s “www.pascackpartyrentals.com” website, raising the possibility that the relationship between Complainant and Respondent may no longer be the same as it was when this case was filed. However, the issue of right or legitimate interest is determined on the basis of facts and circumstances that existed at the time the dispute arose, or at best when the case was brought. See Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774 and Yamaha Motor Corporation, USA v. Powers Motor Sports, WIPO Case No. D2007-0396.

⁵ For instance, the prominent internal links link to pages featuring SABRETT branded goods or SABRETT branded goods together with what appear to be for the most part non-competing goods.