Thebellstore.com, Genuineaccessories.com

The timeline behind thebellstore.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

How each disputed name was decided in this proceeding.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Bell Helmets, Inc. v. 4X Development Claim Number: FA0602000651064 PARTIES Complainant is Bell Helmets, Inc. (“Complainant”), represented by Benjamin D Weston, of MCBREEN & SENIOR, 1880 Century Park East, Suite 1450, Los Angeles, CA 90067. Respondent is 4X Development (“Respondent”), represented by Todd A. Green, of Turner Green Afrasiabi & Arledge LLP, 535 Anton Blvd, Suite 850, Costa Mesa, CA 92626. REGISTRAR AND DISPUTED DOMAIN NAMES The domain names at issue are <thebellstore.com> and <genuineaccessories.com>, registered with Go Daddy Software, Inc. PANEL The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding. Dennis A. Foster as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on February 27, 2006; the National Arbitration Forum received a hard copy of the Complaint on March 2, 2006. On February 27, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <thebellstore.com> and <genuineaccessories.com> domain names are registered with Go Daddy Software, Inc. and that the Respondent is the current registrant of the names. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”). On March 6, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 27, 2006 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@thebellstore.com and postmaster@genuineaccessories.com by e-mail. A timely Response was received and determined to be complete on March 22, 2006. On March 28, 2006, the Complainant submitted an Additional Submission in accordance with NAF Supplemental Rule 7. Although the Complainant was late paying the Additional Submission filing fee, the Complainant immediately complied when this omission was pointed out. The Panel believes the Complainant’s omission was inadvertent, and thus has taken Complainant’s Additional Submission into account in preparing this Decision. The Respondent in turn filed a Response to the Complainant’s Additional Submission on March 28, 2006. The Panel also took the Respondent’s Additional Response into account in preparing this Decision. On March 28, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dennis A. Foster as Panelist. RELIEF SOUGHT Complainant requests that the disputed domain names be transferred from Respondent to Complainant. PARTIES’ CONTENTIONS A. Complainant Complainant has been an authorized distributor selling Bell helmets under various licenses and agreements since 1991. On or before January 1, 2001, Complainant began selling helmets and accessories directly to consumers through the Internet on the domain names <bellhelmets.com>, <the bellstore.com>, and <genuineaccessories.com>. These domain names were purchased at the direction of Complainant The Respondent was formerly an independent contractor hired by Complainant for assistance with web site maintenance and operations. While Respondent’s periodic income from Bell Helmets was tied to the company’s net profits, and while Complainant often paid a third of Respondent’s business-related expenses, Respondent had no ownership interest in Complainant and the company was operated (as it is now) as a sole proprietorship. Complainant paid all company expenses and overhead, and exercised its judgement as regards all operations of Complainant company. Effective January 1, 2006, Complainant terminated its relationship with Respondent. Respondent immediately configured <thebellstore.com> and <genuineaccessories.com> sites to operate as portals for its own neophyte motorcycle helmet retail business, selling products under the names of “the Bell Store” and “Genuine Accessories”. (Complaint Exhibits A and B) By using the domain names <thebellstore.com> and <genuineaccessories.com>, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web sites by creating a likelihood of confusion as to the source, sponsorship, affiliation and endorsement of the sites by Bell Helmets, as well as to the availability of Bell Helmets products and services. The Complainant sold motorcycle helmets and related accessories through the subject domain names for five (5) calendar years. Complainant thereby developed substantial goodwill for the domain names as well as an enduring association of the domain names with Complainant. The Respondent now sells identical products to the Complainant’s customers with no indication on the web sites’ home pages that the domain names are no longer associated with or operated by the Complainant. In fact, the current web sites are almost identical to the sites previously operated by the Complainant. (Complaint Exhibits C and F) Respondent’s bad faith use of the disputed domain names is further evidenced by the “meta-data” associated with <thebellstore.com> (Exhibit G). The meta description for the site was “Bell Helmets and Bell Motorcycle Helmet-Welcome to the premier Bell Helmets outlets for Bell Helmets auto and motorcycle helmets and accessories.” The domain name’s meta keywords were “bell helmets auto helmets, bell helmets motorcycle helmets, bell helmet, bell racing helmets”. This information is used to attract consumers and Internet users to web sites through search engines. Respondent’s repeated use of Complainant’s trade name to attract Internet commerce to its site clearly evidences its bad faith intent in using the subject domain names. Respondent’s efforts to misleadingly divert Complainant’s customers have been successful. Exhibit H is an e-mail sent by a customer who ordered a helmet from <thebellstore.com> under the mistaken impression that Complainant continued to operate the site. Respondent has no rights in the BELL HELMETS trademarks, nor in the good will and consumer loyalty associated with Complainant’s retail operations. Respondent may contend that he owns a partnership share in Bell Helmets and the disputed domain names, and produce “e-mails” in support of his allegations. Neither of these allegations is true. The “e-mails” are simply notes Complainant made to itself regarding negotiations with another independent contractor, Scott Dudek, regarding the dissolution of the business relationship. B. Respondent This is a business dispute relating to the dissolution of a seven (7) year partnership. Since 1998, Complainant, Respondent and Scott Dudek have been partners in a business that was engaged in the on-line sale, through several websites, of motorcycle helmets and related accessories. This was a partnership in every sense of the word. (Exhibit A is a document prepared by Complainant showing the partnership draw from April of 2005). On or about February 21, 2001, Respondent registered the disputed domain names, <thebellstore.com> and <genuineaccessories.com>. Respondent registered these domain names to use them for the sale of Bell helmets in his partnership with Complainant and Scott Dudek. Complainant does not allege, or even suggest, that Respondent registered these domain names in bad faith. Complainant voiced no objection about the domain name registrations for five (5) years—until the dissolution of the partnership. Sometime in 2005, Complainant decided that it wanted to dissolve the partnership (Response Exhibit B). Respondent and Scott Dudek never consented to Complainant’s proposed dissolution because Complainant was taking for himself more than one third of the partnership assets. Whether Complainant’s proposed partnership dissolution terms are fair is not a matter for this Panel. What is relevant is that this is not a cybersquatting case but a dispute concerning the dissolution of a partnership, among whose assets are the domain names <thebellstore.com> and <genuineaccessories.com>. The issue of who has rights in the trademarks THE BELL STORE and GENUINE ACCESSORIES is beyond the scope of this proceeding. Resolution of whether the Respondent has rights and legitimate interests in the disputed domain name also is beyond the scope of a UDRP proceeding. The Complainant does not even allege bad faith registration. To the contrary, Complainant alleges the Respondent registered the disputed domain names at Complainant’s request. Complainant knew the disputed domain names were registered in the Respondent’s name and the Complainant did not find this objectionable. Respondent is an authorized distributor of Bell helmets and is the rightful owner of the domain names that are the subject of this dispute. For these reasons, Respondent’s use of the domain names to sell Bell helmets and related accessories is not in bad faith. C. Additional Submissions Complainant’s Additional Submission Contrary to Respondent’s assertions, this dispute is within the scope of ICANN dispute resolution arbitration proceedings, and in fact goes to the very heart of ICANN Policy. Contrary to the assertions set forth by Respondent, the fact that Complainant formerly had a business relationship with Respondent, and that the present dispute arose after Complainant’s termination of that relationship, does not preclude this tribunal from applying the plain language of the ICANN Policy and transferring the disputed domain names to Complainant. Pursuant to its continuous and extensive use of these marks in commerce, Complainant acquired substantial common law trademark rights in the disputed domain names. Respondent’s Additional Submission In its Additional Submission, Complainant does not dispute that for seven (7) years Complainant, the Respondent and Scott Dudek engaged in the on-line sale of motorcycle helmets and related accessories. The Complainant does not dispute that Response Exhibit A shows the April, 2005 draw in equal shares among the three partners. The Complainant does not dispute that Response Exhibit B is an email in which the Complainant proposed an equal division of the partnership assets into three (3) parts.. The disputed domain names, <thebellstore.com> and <genuineaccessories.com> do not belong just to the Complainant but to the three member partnership that includes the Complainant. Resolution of this issue is beyond the scope of a UDRP proceeding. FINDINGS The Complainant does not have a registered trademark in any of the names found in the disputed domain names <thebellstore.com> and <genuineaccessories.com>. However, the Claimant has used these names for some years in the business it conducted with the Respondent. The Claimant and the Respondent have been involved in a business together with one other party, Scott Dudek, to sell motorcycle helmets and related accessories. The Complainant and Respondent no longer wish to continue their business relationship, but they can not agree on how to divide the property they used to conduct their business, including the disputed domain names, <thebellstore.com> and <genuineaccessories.com>. DISCUSSION Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “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 requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (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; (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. Identical and/or Confusingly Similar By its own admission, Complainant does not have a registered trademark for any of the words in the two disputed domain names: <thebellstore.com> and <genuineaccessories.com>. However, Complainant has shown that it has used these names in a business for some years. The Panel believes this is enough to establish common law trademark rights in the expression “The Bell Store.” See, e.g., Great Plains Metromall, LLC v. Creach, FA 97044, (Nat. Arb. Forum May 18, 2001) (”The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”); see also Seek Am. Networks Inc. v. Masood, D2000-0131 (WIPO April 13, 2000). The expression “genuine accessories” is a different matter. It is utterly descriptive, and the Panel is skeptical Complainant would ever acquire trademark rights in it. For this reason, and in the absence of any registration, the Panel finds Complainant has not shown it has trademark rights in “genuine accessories”. The Panel decides Complainant has satisfied the requirements of Policy ¶ 4(a)(i) for the name “The Bell Store,” but has failed to do so for the expression “genuine accessories”. Pro tanto, the rest of this Decision only pertains to the domain name <thebellstore.com>. Rights or Legitimate Interests Complainant contends Respondent does not have rights or legitimate interests in the disputed domain names. According to Complainant, Respondent was an independent contractor who was tasked to register the disputed domain name, <thebellstore.com>, on behalf of Complainant. Respondent has sought to avail itself of the provisions of Policy ¶ 4(c)(i) and to show that, before any notice of this dispute, it was using the disputed domain name for a bona fide offering of goods and services. In fact, Complainant and Respondent agree that for some years they were collaborators, although they disagree about Respondent’s employment status: Complainant states Respondent was an independent contractor, while Respondent contends he and Complainant were partners and that there was also a third partner, one Mr. Scott Dudek. The Panel finds the evidence strongly tilts in Respondent’s favor. The written evidence of the partnership’s division of profits (Response Exhibit A) plus Complainant’s own written proposal for winding up the partnership (Response Exhibit B) convince the Panel that Respondent’s version is correct, and that Complainant was attempting to mislead the Panel when it termed Respondent an “independent contractor’. For years before this dispute, Respondent was using the disputed domain name to sell motorcycle helmets and other accessories. The Panel is aware Respondent was doing this with Complainant and a 3rd party, but the Panel believes this still satisfies Policy ¶ 4(c)(i). The Panel finds Respondent has satisfied the requirements of Policy ¶ 4(c)(i) to come forward and show it was using the disputed domain to make a bona fide offering of goods and services. Conversely, and ineluctably, the Panel finds Complainant has failed to carry its burden of proof to show Respondent has no rights or legitimate interests in the disputed domain name per Policy ¶ 4(a)(ii). Since Complainant is required to prove Policy ¶ 4(a)(i) – (iii) inclusively, the Panel does not need to reach the issue of Bad Faith. Is This Dispute Beyond the Scope of the UDRP? Both Complainant and Respondent have made extensive arguments for and against this Case being decided under the UDRP. The Panel is aware that, in some instances, Panels have decided that some domain name cases involving a contractual relationship of some standing between the parties were outside the scope of the UDRP and thus should be left to a different forum. See Western Point, Inc. v. ENIVA, Inc., FA440091 (Nat. Arb. Forum April 29, 2005) (“[F]acts that remain in dispute include the basis upon which that registration occurred.”); see also Everingham Bros. Bait Co. v. Contigo Visual, FA 440219 (Nat. Arb. Forum April 27, 2005) (finding there was dispute on “[w]hat was agreed, and what obligations they had or still have to each other”). The Panel is not in disagreement with those cases. However, the Panel does not believe that a contractual relationship between a complainant and a respondent per se renders the case irresolvable under the UDRP. In this Case, both Complainant and Respondent filed supplemental filings and their business was a small one involving just a few individuals. The Panel believes the parties have submitted materials sufficient for it to form a clear opinion of what transpired between the parties and how the UDRP could in fact decide where to place the disputed domain names. See Barbara Black d/b/a Black and White Consulting v. T1 Commc’ns Co. a/k/a Collectionproof.com LLC, FA 154144 (Nat. Arb. Forum June 17, 2003) (proceeding to hear case, which involved a respondent independent contractor); see also Ward Burton v. Athlete Direct, FA 100652 (Nat. Arb. Forum December 7, 2001) (proceeding with case despite the facts involving a broken business relationship between complainant and respondent). DECISION The Complainant failed to show it had trademark rights in the disputed domain name <genuineaccessories.com> per Policy ¶ 4(a)(i). Complainant failed to show Respondent had no rights or legitimate interests in the disputed domain name <thebellstore.com> per Policy ¶ 4(a)(ii). Therefore, the Panel concludes that relief shall be DENIED. Dennis A. Foster Panelist Dated: April 11, 2006 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.