The Complainant is Walbro Engine Management, LLC, United States of America (“United States”), represented by Reising Ethington P.C., United States.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Shahrokh Gabbaypour, Express Fuel Pumps, United States, represented by ESQwire.com PC, United States.
The disputed domain name <walbrofuelpumps.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2021. On July 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 26, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 3, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 3, 2021.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 30, 2021. The Response was filed with the Center September 5, 2021.
The Center appointed Evan D. Brown, John C. McElwaine, and Gerald M. Levine as panelists in this matter on October 8, 2021. 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.
The Complainant provides engine management systems and fuel systems for the outdoor power equipment, recreational, marine, and personal transportation markets. It has used the trademark WALBRO since at least as early as September 22, 1955, and the Complainant enjoys the benefits of registration in a number of jurisdictions for that mark. For example, the Complainant owns United States Reg. No. 938745, registered on July 25, 1972.
The Respondent registered the disputed domain name on June 14, 2003. It has used the disputed domain name to publish a website offering for sale various products of the Complainant.
The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademark; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
More specifically, the Complainant asserts that the Respondent’s website published at the disputed domain name implies that it is the Complainant’s website, though the Respondent and the Complainant are not affiliated. The Complainant alleges that this activity of the Respondent has caused actual confusion in the marketplace.
The Complainant puts forth a number of reasons to support the Respondent’s bad faith registration and use of the disputed domain name. It asserts that the WALBRO mark was first used and was registered long prior to the registration of the disputed domain name, and that therefore the Respondent should have been aware of the Complainant’s trademark rights. The Complainant further claims the Respondent continued to use the disputed domain name even after having been put on notice by the Complainant of the allegedly improper use of the WALBRO mark. The Complainant asserts that the Respondent benefitted from the resulting confusion and unauthorized association with the Complainant’s mark.
The Respondent argues that it is not a cybersquatter but rather has been, for the past 18 years, running a respectable and successful business of reselling the Complainant’s products, while the Complainant has been aware of – and indeed profited from – the Respondent’s existence. Additionally, the Respondent argues that it would be inappropriate to use the UDRP to shut down the Respondent’s business because the Complainant has acquiesced to the Respondent’s activities by taking no action for 18 years. Moreover, the Respondent asserts that there is no bad faith in this situation where the Respondent has not targeted the Complainant, has not sought to sell the disputed domain name, and has not engaged in any counterfeiting or “bait and switch” schemes. The Respondent claims there is no evidence that the Respondent has intended to mislead consumers. The Respondent asserts that if anything, this case is about the Complainant’s efforts to take an extremely valuable domain name and the accompanying website traffic without compensation.
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel finds that not all three of these elements have been met in this case.
The Complainant clearly has rights in the mark WALBRO, evidenced by the registration certificates for that mark. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.
The disputed domain name, for purposes of this first UDRP element, is confusingly similar to the Complainant’s mark. The addition of the words “fuel” and “pumps” within the disputed domain name does not prevent a finding of confusing similarity.
Accordingly, the Complainant has succeeded under this first element of the Policy.
The Respondent invokes paragraph 4(c)(i) of the Policy in defense of its right or legitimate interest in registering and using <walbrofuelpumps.com>. Paragraph 4(c)(i) of the Policy provides, among other things, that a respondent’s use of a disputed domain name in connection with a bona fide offering of goods or services, before the respondent is notified of the dispute, “shall demonstrate [the respondent’s] rights or legitimate interests in the disputed domain name”.
The Respondent contends that it registered the disputed domain name in 2003 and that from that date to the present it has been a reseller of authentic WALBRO fuel pumps which it purchases through one of the Complainant’s authorized distributors, V.E. Peterson. The Complainant did not make any supplemental filing to contest this contention. The historical captures of the Respondent’s website on The Wayback Machine at <archive.org> (which the Respondent invited the Panel to examine, and which the Panel is within bounds to do (see WIPO Overview 3.0, section 2.8)) are consistent with the Respondent’s assertions that it is a reseller of authentic items.
The Complainant stated in a letter to the Respondent dated March 15, 2021 that the Respondent’s website falsely represented itself as a “‘Walbro Authorized Store’ or ‘Authorized seller of Walbro fuel pumps.’” The Complainant’s letter also pointed out certain other issues, including the absence of a disclaimer on the website. The Respondent states that it corrected the website at the request of the Complainant to prevent possible confusion. The website currently reads “WalbroFuelPumps.com is not affiliated, or officially connected with Walbro® or TI Automotive®.” It also contains the following statement: *WalbroFuelPumps.com, A reseller of genuine Walbro® parts since 2003.” The Panel notes that some historical captures from the Wayback Machine of the website found at the disputed domain name contain similar disclaimer language, although the capture submitted by the Complainant does not.
The Complainant contends that purchasers have experienced actual confusion and that “it has received written and telephone communications from customers who purchased their products on the website to which the disputed domain resolves”. However, as the Complainant submits no evidence as to the nature of these communications, the Panel declines drawing any negative inference from them.
The Respondent presents three arguments in rebuttal to the assertion that it lacks rights or legitimate interests in the disputed domain name, namely (1) nominative fair use, (2) acquiescence, and (3) laches. It also presents a further argument that the Panel finds dubious and rejects outright, namely, reliance on the first sale or exhaustion doctrine. While the reselling of a complainant’s product under that doctrine may be lawful in some circumstances, absent evidence to the contrary (e.g., a license), it is problematic to market products through a domain name if that domain name implies a formal contractual relationship with the mark owner when indeed there is no such relationship.
However, the incorporation of a complainant’s trademark in a domain name can be legitimate – even if unauthorized – if used fairly and nominatively, that is, using the trademark as one part of a broader string to describe the nature of a registrant’s goods or services; the specific nature of the use of the mark on the corresponding site must also be fair (as to which, see below). The disputed domain name comprises the trademark WALBRO plus “fuel” and “pumps”. While for purposes of the first element under the Policy, the added words are terms that do not eliminate confusing similarity, the assessment under the second element takes into account a different set of considerations whether the combination of such words (coupled, ultimately, with the conduct on the corresponding website) qualifies as nominative fair use.
Here, the disputed domain name describes one specific product manufactured by the Complainant. It does not by itself categorically send the message that the Respondent is or is not pretending to be the Complainant; rather a conclusive determination on this requires a further look at the corresponding website. The Respondent points out that the concept of nominative fair use developed under United States trademark law has been adopted as a principle in the UDRP under Oki Data Americas, Inc. v. ASD, Inc, WIPO Case No. D2001-0903. In a later decision, the same panel that decided Oki Data observed that “[a]lthough [the Oki Data] decision does not reference the trademark law principle of ‘nominative fair use,’ the standards are functionally equivalent, and the four part test articulated in Oki Data is shaped by the same underlying policy concerns.” YETI Coolers, LLC v. Ryley Lyon / Ditec Solutions LLC, FA1605001675141.
The four part Oki Data test provides that a respondent (i) must actually be offering the goods or services at issue; (ii) must use the site to sell only the trademarked goods, otherwise it could be using the trademark to bait Internet users and then switch them to other goods; (iii) must accurately disclose the relationship between the registrant and the trademark owner; and (iv) must not try to corner the market in all domain names, thus depriving the owner of the trademark from reflecting its own mark in a domain name.
The panel in Yeti Coolers continued with the pertinent observation that:
“[t]he Oki Data test was developed in the context of an authorized retailer, and as Complainant points out in its Complaint, Respondent was never authorized to sell Complainant’s products. Nevertheless, the Oki Data standard has repeatedly been applied in the context of unauthorized resellers as well. See, e.g., National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc., WIPO Case No. D2007-1524; Volvo Trademark Holding AB v. Peter Lambe, WIPO Case No. D2001-1292. Indeed, there is no reason to distinguish between nominative fair use principles whether the user is authorized or unauthorized. Either way, if the use is fair and non-confusing, it should be permitted.”
In the matter before this Panel, the Respondent has demonstrated compliance with three of the Oki Data factors. Whether the Respondent has met the standard of item (iii) – at least insofar as the factors are applied to the version of the website captured by the Complainant and submitted with the Complaint – is less clear. The Complainant states in its letter of March 15, 2021 that the website did not contain a disclaimer. But the Wayback Machine results that the Respondent referred the Panel to examine show the Respondent previously used a disclaimer that read: “Welcome to WalbroFuelPumps.com, an independent seller of Walbro fuel pumps and accessories.” The Respondent does not explain the reason it omitted the disclaimer in subsequent iterations of the website. But that omission is not enough to support a negative inference against the Respondent’s past web design practices, particularly in light of the Respondent’s arguments, which the Complainant has not addressed in any supplemental filing.
The Respondent explains:
Originally [that is, before receiving the Complainant’s letter], Respondent held the good faith belief that as a reseller of genuine parts from an ‘Authorized Distributor’ that he could use the words ‘authorized seller’ or ‘authorized store’ as he is reselling ‘authorized’ products. This was an honest mistake (certainly not one that should jeopardize an 18 year old business) and one that was immediately remedied. If anything, Respondent’s prior use of ‘authorized seller or store’ was an effort to properly convey that he is not the trademark owner. It is not the action of someone looking to trick consumers into thinking he is the trademark owner as Complainant alleges.”
(Emphasis included).
Does the lack of clarity on the extent of past use of a disclaimer condemn the Respondent as a cybersquatter? Panels have found that the presence or absence of a disclaimer may not be determinative in and of itself, and that the panel must consider the respondent’s website as a whole to examine whether the website accurately discloses or demonstrates the registrant’s relationship with the trademark owner. See e.g., LINBIT Information Technologies GmbH v. Technical Support, D2014-1528; Volvo Trademark Holding AB v. Volvospares / Keith White, WIPO Case No. D2008-1860.
Nothing in the record, especially as the record is illuminated by the Respondent’s arguments about its good faith belief concerning the sale of genuine parts, shows that the Respondent blatantly misrepresented itself as being connected in a business sense with the Complainant. A reasonable panel could end the analysis there and say that the Oki Data test has been met in all four of its elements.
Moreover, the application of principles of equity bolster the notion that the Respondent’s use is fair under the larger doctrines underlying nominative fair use and the Oki Data test. Here it is appropriate to discuss acquiescence and laches. While Panels have generally declined to specifically adopt concepts such as laches or its equivalent in UDRP cases, indeed any equitable defenses, WIPO Overview 3.0, Section 4.17 states that “in specific cases, certain delays in filing a UDRP complaint may make it more difficult for a complainant to establish its case on the merits, particularly where the respondent can show detrimental reliance on the delay.”
The standard set forth in Oki Data may in the specific case circumstances be supplemented by other factors and other considerations. While acquiescence and laches are separate concepts, they can be considered together in that both are based here on duration in using a domain name incorporating the Complainant’s trademark for nominative purposes. Here, the Complainant waited some 9 years to commence this proceeding. Respondent states in a Declaration of Yousef Gabbaypour “[u]pon information and belief Complainant’s knowledge of our site and operations dates back to at least 2012, when V.E. Peterson (our supplier) advised us that Walbro was aware of and inquired into our business and website.” The Complainant does not deny knowledge of the Respondent’s website.
Where a complainant does not act for a lengthy period with open knowledge by an impacted third party of the registration and use of a domain name incorporating its trademark, it may not be unreasonable for a respondent to believe that the complainant has acquiesced in its use of the disputed domain name for the purpose of reselling a complainant’s authentic product as is the case here. Draw-Tite Inc. v. Plattsburg Spring Inc., WIPO Case No. D2000-0017 (“Whether or not a formal license agreement exists, the evidence submitted to this Panel, coupled with Complainant’s failure to take action against Respondent’s website prior to July 1999, indicate Complainant’s acquiescence to Respondent’s use of the domain name.”). See also, Oracle International Corporation v. Contractors Network Limited, WIPO Case No. D2008-1493.
The Panel is of the view that the registration of <walbrofuelpumps.com> and the publication of its website there accurately describes the Respondent’s business which it has carried on for at least 9 years prior to the Complainant’s letter criticizing its use. The Respondent does not use the Complainant’s mark in a trademark sense; but rather to identify the specific product it is offering on its website. The Respondent points out that this is consistent with the practice in the market for reselling the Complainant’s products in particular and auto-parts products generally. It makes reference to a 2012 communication from V.E. Peterson (the Complainant’s authorized distributor). The Respondent provides in the Response its assessment that the 2012 communication “is clear that Walbro is aware of the vast network of sellers and resellers of its products. Indeed, the structure of distributors, sellers, and resellers, by nature encompass both so called ‘authorized’ and ‘unauthorized’ in trademark parlance, yet the network of third-party online affiliates and otherwise is, by design, an integral part of the auto parts marketplace.” There is not sufficient evidence to draw negative inferences against the Respondent and the Panel declines doing so.
For these reasons, the Panel finds that the Complainant has not succeeded in establishing that the Respondent lacks rights or legitimate interests in <walbrofuelpumps.com>.
As the Panel has found that Complainant does not succeed under paragraph 4(a)(ii) of the Policy, it is unnecessary to assess in detail the issue of registration and use of the disputed domain name in bad faith. The evidence establishes that Respondent has carried on a retail business reselling genuine Walbro fuel pumps, which is precisely what consumers will find by going to the website. If consumers were met with other products or the product offered was counterfeit the outcome would be different. There is no evidence of either here. See LINBIT Information Technologies GmbH v. Technical Support, WIPO Case No. D2014-1528 (holding that “[w]hile there can be no doubt that the Respondent was aware of the Complainant’s trademark when it registered the Domain Name, and that it did so specifically with the Complainant’s trademark in mind, these matters are not conclusive of bad faith in a case of a party which operates a business genuinely revolving around the trademark owner’s goods or services, which falls to be considered under the Oki Data principles.”). Also, Karen Millen Fashions Limited v. Danny Cullen, D2011-1134 (WIPO September 24, 2011) (“Had the Complainant provided evidence to substantiate its claim in this case that the goods offered on the website were counterfeit (because, for example, they had been obtained and validated by an appropriate person as such), the Panel would have had little hesitation in concluding that the offering on the website was not bona fide for the purposes of the Policy.”).
Finally, the Respondent submits another argument that deserves attention. It asserts that “it would be inappropriate for the UDRP to be used [to] shut down a successful business that Respondent has operated since 2003 – this is not the type of behavior the UDRP was intended to address.” ICANN Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy states, Paragraph 4.1(c) that “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 . . . and calls for registrars not to disturb a registration until those courts decide.” The Panel is of the view that the matter before us is such a dispute. See e.g., Board of Trustees of the University of Arkansas v. FanMail.com, LLC, WIPO Case No. D2009-1139 (“this case illustrates well the widely recognized principle that the Policy is designed to deal with clear cases of cybersquatting”, citing, Clockwork IP LLC, One Hour Air Conditioning Franchising, LLC v. Elena Wallace, WIPO Case No. D2009-0485 (“UDRP proceedings are for clear cases of cybersquatting, not for resolving trademark infringement and/or trademark dilution disputes or other matters more appropriately dealt with through the courts”).
For these reasons, the Panel finds that the Complainant has not established this third element under the Policy.
For the foregoing reasons, the Complaint is denied.
Evan D. Brown
Presiding Panelist
John C McElwaine
Panelist
Gerald M. Levine
Panelist
Date: October 29, 2021