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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Oystar USA, Inc. v. Domain Administrator info@heavylifting.com HeavyLifting, LLC

Case No. D2009-0025

1. The Parties

The Complainant is Oystar USA, Inc., New Jersey, United States of America, represented by Bodman LLP, United States of America.

The Respondent is Domain, Administrator info@heavylifting.com HeavyLifting, LLC, California, United States of America, represented by John Berryhill, United States of America.

2. The Domain Name and Registrar

The disputed domain name <oystar.com> is registered with Moniker Online Services, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 9, 2009. On January 12, 2009, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On January 13, 2009, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 16, 2009. The Center verified that the Complaint together with the amendment to the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 20, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 9, 2009. The Response was filed with the Center on February 9, 2009.

The Center appointed William R. Towns as the sole panelist in this matter on February 19, 2009. 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

The Complainant, with headquarters in New Jersey, is a wholly owned United States subsidiary of the German company Oystar Verwaltungs GmbH. According to information made available on the Complainant`s website, the Complainant is one of a number of affiliated Oystar companies (the "Oystar Group") operating in the United States and elsewhere, which include Oystar IWK, Oystar Manesty, Oystar Aerofill, and Oystar Fabrima.

The Complainant`s German parent owns trademark registrations for OYSTAR and OYSTAR THE PROCESS & PACKAGING GROUP (the "OYSTAR marks"), issued by the German Patent and Trade Mark Office (DPMA) in October 2007¹, and has sought extension of protection for the OYSTAR marks in United States under the Madrid Protocol.² The main business of the Complainant and its affiliated companies appears to be packaging and packing processes related to food, dairy and pharmaceutical products. The Complainant has submitted marketing materials that it claims document its continuous use of the OYSTAR marks in commerce in the United States since June 2007.

The Respondent is the current registrant of the disputed domain name <oystar.com>. The domain name was first registered in 2000; however, the Respondent makes no claim to have been the initial or sole registrant of the disputed domain name. According the Respondent, the domain name was acquired on April 19, 2006 by Charles Mason.

At some point thereafter, the registrar`s WhoIs records were revised to reflect the Respondent as the registrant of the disputed domain name. The record reflects Charles Mason to be registered agent for Heavy Lifting LLC, a Missouri Limited Liability Company formed on May 9, 2006, and Heavy Lifting LLC, a California Limited Liability company formed on February 29, 2008. The WhoIs records for the disputed domain name indicate that the Respondent is located in California.

The disputed domain name resolves to a parked website at "www.oystar.com", which contains multiple links under the heading "Related Searches". Internet visitors clicking on any of these links are directed to secondary web pages that contain advertising links ("sponsored results") and "related links".

The record reflects that the content of the Respondent`s website has changed since the filing of the Complainant. The Complainant submitted a screen shot of the Respondent`s landing page as it appeared on January 5, 2009, four days prior to the filing of the original Complaint. As of that date, the Respondent`s website was populated with the following links: "Iwka", "Oystar", "Manesty Accuspray", "Packiging And Wrapping", "Aerofi", "Food Technolog", and "Fabrim".

With the exception of "Oystar", all of these links have since been removed from the Respondent`s website. The links presently appearing on the Respondent`s landing page consist primarily of generic or descriptive words and phrases such as "Shopping", "Oysters", "Sea life", and "Job Search". The advertising links on the secondary web page corresponding to the "Oystar" search include websites advertising OSTER branded products, but no links to the Complainant or its products and services.

5. Parties` Contentions

A. Complainant

The Complainant asserts that it is the owner of the OYSTAR and OYSTAR THE PROCESS & PACKAGING GROUP in the United States, and that is has continuously used the OYSTAR marks in commerce since June 2007. The Complainant asserts that the disputed domain name is identical or confusingly similar to the OYSTAR marks.

The Complainant contends that the Respondent lacks rights or legitimate interests in the domain name, even if registered by the Respondent before the Complainant established rights in the OYSTAR marks, because the Respondent prior to receiving notice of this dispute had not used nor made demonstrable preparations to use the disputed domain name in connection with any bona fide offering of goods or services. According to the Complainant, even after receiving notice of the dispute, the Respondent has used the disputed domain name only with a "typo site" or "stealth URL", which is not a bona fide use of the mark. Further, the Complainant asserts that the Respondent has not been commonly known by the disputed domain name.

According to the Complainant, the Respondent registered the disputed domain name in bad faith order to trade on its value at a later time. The Complainant maintains that the Respondent owns thousands of domain names, hundreds of which incorporate the trademarks of companies and businesses around the world. Thus, the Complainant argues that the Respondent has engaged in a bad faith pattern or registering domain names incorporating third party marks in order to profit from the marks and to prevent the owners of such marks, including the Complainant, from reflecting their marks in corresponding domain names.

B. Respondent

The Respondent contends that the Complainant has not demonstrated that it has rights in the OYSTAR marks. According to the Respondent, the Complainant is not the owner of the German national registrations for the OYSTAR marks, which the Respondent argues in any event, are of no legal effect in the United States. Even assuming that the Complainant`s German parent has granted its subsidiary the right to use the OYSTAR marks in the United States, the Respondent points out that there are no United States registrations for the marks, and that the USPTO has provisionally refused to extend protection to the OYSTAR marks. Nor, according to the Respondent, has the Complainant demonstrated enforceable rights based on use of the OYSTAR marks in the United States.

The Respondent alleges that it acquired rights in the disputed domain name in the spring of 2006, following Charles Mason`s acquisition of the domain name in April of that year. According to the Respondent, the Respondent relative to the Complainant or even the Complainant`s German parent had an absolute right to register the domain name for any purpose whatsoever to use or not use as the Respondent pleased.

Regardless, the Respondent maintains that it registered the disputed domain name as an eventual name for a Ukrainian expedition vessel that Mr. Mason and his father have been attempting for several years to purchase for conversion to a recreational yacht (the Respondent also observes that it operates the Internet Guide to Freighter Travel). The Respondent acknowledges that the disputed domain name has been parked while the Respondent continues to pursue its plans.

According to the Respondent, the earliest date of any registration for the OYSTAR marks is a German registration in June 2008 obtained by the Complainant`s German parent, based on an application not filed until late 2007. The Respondent maintains that it acquired the disputed domain name in the spring of 2006. Even assuming arguendo that the Complainant had used the OYSTAR marks in commerce in the United States since June 2007, the Respondent asserts there is no conceivable basis to conclude that the Respondent registered the disputed domain name with the aim of exploiting the Complainant`s then non-existent rights in the marks.

The Respondent acknowledges trading in domain names, but responds that most of them are generic or descriptive terms, including those cited by the Complainant as implicating third-party rights. Further, the Respondent asserts that it has never been subject to a proceeding under the Policy. The Respondent concludes that the Complainant was not brought in good faith under Rule 15(e) of the Policy, and urges the Panel to find reverse domain name hijacking.

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of "the abusive registration of domain names", also known as "cybersquatting". Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170.

Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) 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

(ii) The respondent has no rights or legitimate interests with respect to the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Cancellation or transfer of the domain name is the sole remedy provided to the Complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel initially addresses the question of whether the Complainant has established rights in the OYSTAR marks. The term "trademark or service mark" as used in paragraph 4(a)(i) encompasses both registered marks and common law marks. See e.g., The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; United Artists Theatre Circuit, Inc. v. Domains for Sale Inc., WIPO Case No. D2002-0005; The Professional Golfers` Association of America v. Golf Fitness Inc., a/k/a Golf Fitness Association, WIPO Case No. D2001-0218. In the United States, common law rights in a trademark or service mark may be established by extensive or continuous use sufficient to identify particular goods or services as those of the trademark owner. See United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918).

As noted earlier, the record before the Panel indicates that the Complainant`s parent company (which is not a named party in these proceedings) is the owner of German registrations for the OYSTAR marks. The Complainant asserts that it is the owner of the OYSTAR marks in the United States, from which the Panel infers that the German parent may well have authorized its United States subsidiary to use the OYSTAR marks. There is no dispositive basis in the provided record, however, upon which the Panel can conclude that the Complainant is the owner or exclusive licensee of the German registrations, and the United States applications for the OYSTAR marks (also held by the German parent company) are still in examination, and have not achieved the status of registered marks. Hence, the Complainant`s assertion of rights in the OYSTAR marks cannot on the present record be based on registration rights.

In view of the foregoing, the Complainant necessarily must rely on common law rights for purposes of paragraph 4(a)(i) of the Policy. While the Complainant asserts that is has continuously used the OYSTAR marks in the United States since June 2007, the Complainant has not submitted any evidence to substantiate this claim. The marketing brochures submitted by the Complainant upon examination appear to have been prepared by the German parent for general use by its various subsidiaries. Portions of the materials reflect a creation date of February 2008.

In any event, the marketing brochures in and of themselves do not demonstrate that the Complainant`s use of the OYSTAR marks has been sufficiently extensive or continuous to have become a distinctive identifier associated with the Complainant or its goods and services. The Complainant has offered no evidence of the length and amount of sales under the marks, the nature and extent of advertising, or other relevant information such as consumer surveys or media recognition. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions 1.7 and UDRP decisions cited therein.

Accordingly, the Panel concludes in the circumstances of this case that the Complainant has failed on the record before this Panel to establish that is has rights in the OYSTAR marks. Accordingly, the Panel finds that the Complainant has in this case failed to satisfy the requirements of paragraph 4(a)(i) of the Policy. Because the Complainant bears the burden of proving each of the elements under paragraph 4(a) of the Policy, it is unnecessary for the Panel to consider the Complainant`s arguments under paragraphs 4(a)(ii) and 4(a)(iii) for purposes of its decision For the reasons discussed below, it would in any event have been difficult for the Complainant in the present case to have established registration of the disputed domain name in bad faith.

C. Reverse Domain Name Hijacking

Paragraph 1 of the Rules defines reverse domain name hijacking as "using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name". To prevail on such a claim, a respondent must show that the complainant knew of the respondent`s strong rights or legitimate interests in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the complaint in bad faith. Sydney Opera House Trust v. Trilynx Pty. Limited., WIPO Case No. D2000-1224; Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151.

The Panel is not persuaded by the Respondent`s argument, which consists largely of an ad hominem attack on Complainant`s counsel, that reverse domain name hijacking has been demonstrated. In the Panel`s opinion, the record is indicative of the Respondent`s bad faith use of the disputed domain name. As noted earlier, there is evidence that the domain name was used with a "typo site" that included the following search links: "Iwka", "Oystar", "Manesty Accuspray", "Packiging And Wrapping", "Aerofi", "Food Technolog", and "Fabrim". The Complainant`s business involves the packaging and packing of food, dairy, and pharmaceutical products, and the following companies are clearly identified in the record as being members of the Oystar Group: Oystar IWK, Oystar Manesty, Oystar Aerofill, and Oystar Fabrima.

The point in time when the Respondent begin using the disputed domain name with this "typo site` cannot be reliably determined from the record before this Panel, and the only evidence of such use is a screen shot of the Respondent`s website taken on January 5, 2009, shortly before the Complaint was filed. While the Panel considers this as evidence of bad faith use which the Respondent discontinued only after the Complaint was filed, paragraph 4(a) (iii) requires the Complainant to demonstrate both bad faith registration and use of the disputed domain name. While the Panel is persuaded by this evidence that the Respondent at some point became aware of the Complainant, the Panel could not conclude from the overall circumstances reflected in the record that the Respondent registered the disputed domain name with the Complainant in mind, even if the Complainant were to have established rights in the OYSTAR marks for purposes of paragraph 4(a)(i) of the Policy. In the absence of proof that the disputed domain name was registered in bad faith, the Complainant is unable to meet its burden under paragraph 4(a)(iii).

Nevertheless, given evidence of bad faith use, and the lack of any indication in the record of the Respondent`s use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or service or to make a legitimate noncommercial use of the domain name, the Panel considers the Respondent`s claim of reverse domain name hijacking to be without merit.

7. Decision

For all the foregoing reasons, the Complaint is denied.

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William R. Towns
Sole Panelist

Dated: March 6, 2009

¹ The DPMA issued registrations for OYSTAR THE PROCESS & PACKAGING GROUP and OYSTAR on October 10 and 26, 2007, respectively. These are the basic registrations that constitute the basis for the applications for the international registrations of the marks. Certificates of registration issued under the Madrid Agreement and Protocol reflect international registration dates of November 28, 2007 and June 27, 2008, respectively.

² The request for extension of protection has been provisionally refused by the United States Patent and Trademark Office (USPTO) based on issues relating to the identification of the goods and services. This is a provisional refusal, and not a final refusal of registration.