WIPO Arbitration and Mediation Center

Complainant is Magnum Piering, Inc., an Ohio corporation, U.S.A.

Respondents are The Mudjackers, a Wisconsin business, and Garwood S. Wilson, Sr., the proprietor of The Mudjackers, U.S.A.

The domain names at issue are:

<magnumpiering.com>

<magnumpieringinc.com>

<magnumpiering.net>

<magnumpieringinc.net>

<magnumpier.net>

<magnumpiers.com>

<magnumpiers.net>

<magnum-piering.com>

<magnum-piering.net>

<magnum-pier.com>

<magnum-pier.net>

<magnumpier.com>

<magnum-piers.com>

<magnum-piers.net>

The Registrar of nine of the domain names at issue is Network Solutions, Inc.; the Registrar of the remaining five is Melbourne IT Limited d/b/a Internet Names WorldWide.

Registration of the domain names at issue is also divided, in a slightly different configuration, between The Mudjackers and Mr. Wilson. Because neither the identities of the particular Registrar nor the registrants are at issue in this proceeding, the Panel will generally deal with the domain names and the Respondents together. The Panel expressly notes that this treatment is for purposes of this proceeding only and has no bearing on possible future litigation between the parties, as the domain names are registered under agreements that vary in their provisions for jurisdiction in case of suit.

The WIPO Arbitration and Mediation Center (the "Center") received Magnum Pierings complaint (the "Complaint") in hardcopy on November 6, 2000 and by email on November 7, 2000. The Center undertook to verify that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Center requested that Magnum Piering amend its Complaint with respect to certain of the domain names on November 22, 2000, and Magnum Piering complied on November 22, 2000 via email and November 30, 2000 via hardcopy. The formal date of the commencement of this administrative proceeding was December 5, 2000, and the due date for a Response was set at December 24, 2000.

On December 21, 2000, Respondent requested an extension of time, which the Center granted the next day, setting December 29, 2000 as the new due date. The Response was received by the Center via fax on December 29, 2000, via email on December 30, 2000, and via hardcopy on January 3, 2001. On January 17, 2001, after clearing for potential conflicts, the Center appointed David H. Bernstein as the Sole Panelist in this matter.

On January 19, 2001, the Panel received the case file in hardcopy. The case file included a post-Response exchange of emails by the parties concerning Complainants (1) objection to the timeliness of Respondents Response, and (2) request for leave to file a Reply. That same day, the Panel issued an interim order, the relevant portions of which are reprinted below:

"The Panel finds that the Response was timely submitted. WIPO recorded receipt of the Response via fax on December 29, 2000, the stated deadline for a Response, and subsequently received identical copies of the Response via email and hardcopy on December 30, 2000, and January 3, 2001, respectively. It also appears that a copy of the Response was served by fax on Complainant sometime during the evening of December 29, 2000. Although the fax may have been received by Complainant (at its counsels Cincinnati, Ohio law offices) after 6 oclock in the evening (which was after midnight in Geneva), there is nothing in the Policy that requires documents to be submitted and served by the deadline with reference to any particular time zone.

More importantly, Respondents submission of its Response was timely under the intent and spirit of the Policy. The time limitations for submission of a Response are designed to give the Respondent a fair period of time within which to submit argument and evidence, while also assuring expeditious resolution of the dispute to avoid prejudice to a Complainant who is later shown to be entitled to transfer or cancellation of the domain name at issue. Here, both purposes were met. Respondent had the time it needed to collect its evidence and submit a complete Response, and the matter is moving forward expeditiously, with the Panel now appointed and a target date of January 30, 2001 for decision. In these circumstances, there is no prejudice to Complainant and no basis for treating the Response as if it were untimely. Cf. Talk City, Inc. v. Robertson, Case No. D2000-0009 (WIPO, Feb. 29, 2000) (accepting late submission that resulted in no prejudice to the parties). Accordingly, the Panel agrees with WIPOs determination that the Response was timely submitted.

Second, Complainant seeks permission to file a Reply. Initially, the Panel notes with approval that Complainant sought permission to file a Reply rather than forcing one upon the Panel. See Plaza Operating Partners, Ltd. v. Pop Data Technologies, Inc., Case No. D2000-0166 (WIPO June 1, 2000) (best practice for party who wants to file a reply is to seek leave from the Panel, with an explanation of why a supplemental submission is warranted); The Thread.com, LLC v. Poploff, Case No. D2000-1470 (WIPO Jan. 5, 2001) (noting with disapproval the practice of many complainants who submit uninvited replies). Complainant states that a Reply is warranted in order to "correct the many misleading, if not untrue, statements made in the . . . Response."

The Policy demonstrates a strong preference for single submissions by the parties. This truncated process, specifically adopted by ICANN notwithstanding the availability of other litigation models, helps promote rapid, cost effective dispute resolution. See CRS Technology Corp. v. CondeNet, Inc., File No. 0002000093547 (NAF, Mar. 27, 2000). Although there are limited times when a supplemental submission may be appropriate (such as to present new facts or authority not available at the time of the initial submission, see Pet Warehouse v. Pets.Com, Inc., Case No. D2000-0105 (WIPO, Apr. 13, 2000); Investissement Marius Saradar S.A.L. v. John Naffah, Case No. D2000-0853 (WIPO Nov. 22, 2000)), supplemental submissions should be the rare exception, and not the rule.

Complainants argument, if accepted, would flip that rule on its head. If the desire to rebut a statement in a response were a sufficient basis for the filing of a reply, replies (and sur-replies) would be commonplace. Accordingly, the Panel concludes that supplemental submissions are not warranted in this case. Moreover, although there appear to be some disputed facts between the parties, there also is substantial documentary evidence in the case file that helps to clarify the issues. The Panel thus believes that it presently has sufficient information in the record in order to issue its ruling. Of course, to the extent either party disagrees with the Panels decision, it will be free to file a lawsuit where it not only can obtain review of the Panels ruling, Policy 4(k), but also will be able to engage in discovery and offer the court live testimony in order to allow credibility findings to be made on the disputed facts. See Inter-Continental Hotels Corp. v. Soussi, Case No. D2000-0252 (WIPO July 5, 2000)."

Complainant is the successor in interest to an earlier company, also known as Magnum Piering, Inc., and has been assigned the U.S. trademark registration and goodwill of the incontestable mark MAGNUM for shoring and stabilizing services in the field of building foundations and concrete paving and slabs (also known as "piering" services). Complainant also uses the common law mark MAGNUM PIERING for its products and services.

Respondents, operating as The Mudjackers, offer piering products and services. Respondents are party to a Dealership Agreement with Complainant, entered into on April 7, 1999. The Dealership Agreement licensed Respondents to practice certain of Complainants patented methods and to purchase various products from Complainant. Slightly over two weeks after this agreement was signed, Respondents registered seven of the domain names at issue; in April 2000, Respondents registered five more of the domain names at issue. The Dealership Agreement includes the following provisions:

"7. Use of Trademarks

a. Dealer acknowledges that Magnum is the owner of all right, title and interest in and to the tradenames and trademarks of, and all intellectual property with respect to, the Magnum Piering System. Dealer agrees that at no time, either while this Agreement is in effect or thereafter, will it claim any rights in any of said tradenames and trademarks.

b. Magnum, in its sole discretion, will make available to Dealer, at such prices as shall [be] mutually agreed upon, . . . brochures and other informational materials regarding the Magnum Piering System for dissemination to Dealers customers. Dealer shall not use the Magnum tradenames or trademarks used or registered by Magnum in any manner other than distribution of such materials. . . .

c. In the event this Agreement is terminated by either party for any reason whatsoever, Dealer will immediately cease to use advertising materials indicating the tradenames or trademarks used or registered by Magnum and will refrain from using any tradenames and/or trademarks whose near resemblance to any of Magnums tradenames or trademarks might be likely to deceive customers or prospective customers."

Complaint, Annex 6. The Dealership Agreement provided that either party could terminate it without cause upon ninety days written notice. Complainant provided what appears to be such notice by letter dated August 11, 2000. On September 14, 2000, Respondents registered the remaining two domain names at issue.

Complainant contends that the domain names at issue are identical or confusingly similar to Complainants marks.

Complainant further alleges that Respondents lack any rights or legitimate interests in the domain names, which were registered without Complainants permission or authority. Complainant states that Respondents never requested Complainants permission or approval to register the domain names at issue and, when confronted with those registrations, demanded an ownership interest in Complainants predecessor in interest. Complainant alleges that, even after Complainant notified Respondents of its objections to Respondents first seven registrations, Respondents registered five more domain names with a different Registrar. Then, after Complainant gave notice that it was terminating the Dealership Agreement, Respondents registered two more domain names with the initial Registrar, this time using a different contact name. Thus, Complainant contends, Respondents registered seven domain names after Complainant specifically objected, taking steps to conceal their actions.

Complainant alleges that, as of October 30, 2000, Respondents used all of the domain names at issue to advertise The Mudjackers piering products and services, whether by redirecting users to mudjackers.com or by mirroring the contents of the mudjackers.com site using the other domain names. Therefore, Complainant contends, Respondents use is intended to confuse consumers as to the source or affiliation of Respondents goods and services. In addition, Complainant alleges that Respondents websites, whether mudjackers.com or the mirror sites, do not mention Complainant or use its mark, demonstrating that Respondents do not offer Complainants products or services and have no legitimate reason to use the domain names.

Complainant further alleges that the multiple registrations at issue are designed to "corner the market" on acceptable reflections of Complainants mark in a domain name, and that this constitutes a pattern of conduct aimed at preventing Complainant from reflecting its marks in corresponding domain names.

Complainant also claims that Respondents registered the domain names for the purpose of selling, renting or otherwise transferring the registrations to Complainant for consideration in excess of Respondents out-of-pocket costs. Complainant alleges that Respondents first demanded an ownership interest in Complainants predecessor in interest as compensation for the domain names; later, Respondents demanded $2,500 per year for leases of each domain name, and suggested that they would sell the domain names to third parties if they could not reach agreement with Complainant.

As negotiations between the parties proceeded, Respondents counsel sent Complainant a letter dated September 14, 2000, indicating that Respondents were willing to cease using the domain names and would allow Complainant to use them for reimbursement for the cost of "registration and upkeep." However, Complainant alleges, on that same day Respondents registered two more domain names. Moreover, by letter dated September 25, 2000, Respondents counsel confirmed that Respondents refused to transfer ownership of the registrations to Complainant. Complainant alleges that these actions indicate a bad-faith attempt to profit from the domain names at issue.

In their defense, Respondents allege that the domain names at issue are neither identical nor confusingly similar to Complainants mark. Respondents argue that the domain names are not identical to Complainants mark because Complainants only registration is for "MAGNUM," not "MAGNUM PIERING," and piering is a common English word. Further, Respondents argue that there is no likelihood of confusion, because (1) each of the domain names includes a prominent element (PIER or PIERING) in which Complainant has no rights; (2) Complainant uses its mark as part of a design, which Respondents do not reproduce; and (3) the relevant customers exercise a high degree of care.

Respondents contend that this dispute involves interpretation of the Dealership Agreement, as well as oral agreements involving the disputed domain names. As a result, Respondents suggest, arbitration is not the proper forum for resolving these issues. Specifically, Respondents allege that they negotiated with Complainant (actually, its predecessor in interest) about a possible business relationship, beginning in early 1999. Respondents believed, and allege that they informed Complainant, that a Magnum Piering web presence was important in order to support a dealership relationship between the parties. Respondents state that Complainants representative told them that Complainant would soon have an active web site. Respondents informed Complainant that its web site would feature Complainant, and that this should be part of the parties agreement.

Respondents allege that, during April 1999, they had several conversations with Complainant regarding the development of a web site to market and distribute information concerning the new business relationship between the parties. The discussions included possible domain names for the new site and linking the sites together for an optimal web presence. Respondents state that Complainant promised to provide the necessary artwork so that Respondents could display Complainants logos on its web site, brochures, and other marketing materials.

Respondents further allege that, on April 22, 1999, they discovered for the first time that Complainant had not registered the agreed-upon domain names. Because the parties had agreed that a significant Internet presence was important to the success of their new business relationship, Respondents were concerned that any third party could register those domain names at any time. Respondents then registered four domain names. The next day, Respondents allege, Respondent Wilson spoke to Complainants representative, who admitted that Complainant had not made any effort to register the domain names or develop a web site, and that Complainant did not have the capability to accomplish these tasks. The parties then agreed that Respondents should register the domain names and develop a web site for the new business. Respondents contend that Complainant never requested that Respondents not register any domain names, and that Respondent Wilson understood that he was supposed to do whatever was necessary to register those domain names. As a result, a few days later, he registered three more domain names, and for the same reasons, registered seven more in April and September 2000.

Respondents contend that, after April 1999, they began redesigning their web site to feature the new business relationship between the parties. Because Complainant did not register any domain names or establish any web sites, Respondents redirected the domain names at issue to its revised web site, which featured the business relationship with Complainant. Prior versions of the web site displayed Complainants mark in conjunction with Respondents mark, to illustrate the business relationship between the parties.

Respondents state that, when Complainant underwent a change in ownership in February 2000, the relationship between the parties began to change. According to Respondents, Complainants attempted termination of the Dealership Agreement was ineffective, and Respondents maintain an inventory of Complainants products and legitimately use those products in daily business operations. Respondents allege that, pursuant to the Dealership Agreement, they have the right to use Complainants marks in the distribution of brochures on the Internet, and that the oral agreements between the parties also justify their registration of the domain names at issue.

Because The Mudjackers is an authorized dealer, Respondents allege, they have an interest in activities by third parties that might damage or interfere with their business interests, justifying their protective registration of the domain names at issue. Thus, Respondents allege that they have a legitimate interest in the domain names, and registered them in a good-faith attempt to protect the relationship between the parties.

In addition, Respondents object to Complainants use of letters from Respondents attorney about Respondents offers to lease the domain names to Complainant. Respondents argue that settlement discussions between parties should be disregarded by the Panel by operation of Rule 408 of the United States Federal Rules of Evidence.

Paragraph 4(a) of the Policy provides that, to justify transfer of a domain name, a Complainant must prove each of the following:

(1) that 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) that the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) that the Respondent has registered and used the domain name in bad faith.

Respondent disputes that the domain names are identical or confusingly similar to Complainants trademark. This position is indefensible. (Footnote 1) As numerous prior panels have held, when a domain name wholly incorporates a complainants registered mark, that is sufficient to establish identity or confusing similarity for purposes of the Policy. E.g., eAuto, LLC v. Triple S Auto Parts, Case No. 02000-0047 (WIPO Mar. 24, 2000). Here, there is no dispute as to Complainants ownership of the distinctive, federally-registered trademark MAGNUM. The addition in the domain names of the terms "PIER," "PIERS," or "PIERING," and, in two cases, the generic term "INC," does not change the confusing similarity. CUX, Inc. v. DomainNamesAvailable, Case No. D2000-0972 (WIPO Sept. 27, 2000) (deletion of "Inc."); Canon Kabushiki Kaisha v. Price-Less Inkjet Cartridge Co., Case No. D2000-0878 (WIPO Sept. 21, 2000) (addition of generic term for complainants product); Inter-IKEA Systems B.V v. Technology Education Center, Case No D2000-0522 (WIPO Aug. 7, 2000) (addition of descriptive or generic prefix "e-"). In fact, the additions increase the likelihood of confusion, as Complainants mark is in the field of piering services and Complainant has also used "Magnum Piering" as a common-law mark. See Canon, supra.

Respondents nevertheless argue that there is no consumer confusion as that concept is defined in U.S. trademark law principles. First, that argument is unworthy of credence. As applied to domain names incorporating both Complainants registered mark and "pier," a generic name for the products and related services Complainant offers, the likelihood of consumer confusion is obvious. In any event, the Panel rejects Respondents arguments as inapplicable in the domain name context. Under the Policy, the question of identity and confusing similarity is evaluated based solely on a comparison between a complainants word mark and the alphanumeric string constituting the domain name at issue. Other considerations taken into account by U.S. trademark law may properly be addressed at other stages of the analysis (such as factors that bear on a registrants legitimate interest or bad faith), but they are not dispositive with respect to the analysis of the first UDRP factor. Cf. Wal-Mart Stores, Inc. v. MacLeod, Case No. D2000-0662 (WIPO Sept. 19, 2000) (first element of Policy is satisfied where domain name wholly incorporates complainants mark).

The extent to which a purveyor of legitimate goods can reflect that fact by using the manufacturers or licensors name as part of a domain name is a difficult issue. Some such uses may be legitimate, others not, depending on the extent to which they accurately reflect the users connection with the mark owner. See, e.g., R.T. Quaife Engineering, Ltd., supra.

For purposes of this decision, the Panel need not opine on whether the Dealership Agreement remains in effect (a matter far beyond this Panels jurisdiction) or whether Respondents may legitimately sell Complainants products. Even were Respondents claims as to these matters true, the Panel is convinced that Respondents lack a legitimate interest in the domain names at issue.

The mere fact that Respondents registered fourteen variations on Complainants name is telling; a single distributor is extremely unlikely to have a legitimate interest in precluding others from using numerous variants on a mark. Cf. Nabisco Brands Co. v. Patron Gp., Inc., No. D2000-0032 (WIPO Feb. 23, 2000) (Panel may infer that it is highly unlikely that a registrant holding a large number of domain names could legitimately use each of them).

The parties disagree about whether Complainant orally granted permission to register the domain names. That the parties have a factual dispute about this point does not defeat the Panels ability to resolve the dispute. Instead, a panel should make a determination based on the submissions, bearing in mind the complainants burden of proof and the necessarily truncated record. Electronic Commerce Media, Inc. v. Taos Mountain, File No. FA0008000095344 (NAF Oct. 11, 2000); cf. Do The Hustle, LLC v. Tropic Web, Case No. D2000-0624 (WIPO Aug. 21, 2000) (noting importance of testing credibility of parties submissions rather than accepting assertions). If a panel determines that a complainant has satisfied its burden by a preponderance of the evidence, the existence of conflicting accounts is no barrier to ordering a domain name transfer. If parties do not agree with the panels evaluation of the evidence, they have the option to pursue the matter in a forum that allows for full discovery and live testimony.

In this case, the Panels evaluation of the evidence leads it to credit Complainants version of events. First, Respondents interpretation of the sequence of events is unreasonable. Respondent Wilsons declaration indicates that he registered the first four sites before speaking with any representative of Complainant, and his declaration does not explicitly state that he was ever actually authorized to register web sites; instead, it was his "understanding" that he should secure further addresses, based, in part, on the fact that Complainant "did not express to me that I should not register any web addresses incorporating the Magnum Piering name." Response, Wilson Decl. para 16. His purported understanding is insufficient to secure a legitimate interest in fourteen domain names in the context of the explicit limitations set forth in the Dealership Agreement. The Dealership Agreement is clear: Respondents lack any rights in Complainants marks, and agreed to use them only in connection with brochures provided by Complainant.

Second, Respondents explanation of their conduct is simply inconsistent with their actual behavior. Assuming that it was important to Respondents that Complainant operate a web site in order for the business relationship to succeed, Respondents registration of fourteen separate domain names goes far beyond what was required. Moreover, there is no reason that ownership in the registered domains had to reside in Respondents; Respondents easily could have registered the domain names in Complainants name if the goal was to ensure that Complainant had a website that could be used jointly to promote the parties relationship. Furthermore, as is apparent from Respondents resounding success in registering fourteen logical domain names for Complainant, Complainant was in no danger of "losing" a logical domain name to anyone other than Respondents.

To the extent that Respondents argue that their multiple registrations were designed to "protect" Complainant from cybersquatters, the Panel expressly finds that Respondents lacked a legitimate interest in so doing. Complainant may engage in self-protection if it so desires, but Respondents were mere officious interlopers. Respondents suggest no reason why they would be entitled to challenge other registrants of similar "magnum" domain names; without a legitimate interest in the "MAGNUM" mark, they have no legitimate interest in preventing others from squatting on that mark.

Respondents conduct establishes bad faith. Not only did Respondents attempt to occupy the field of rational domain names for Complainants business, they then offered to lease the domain names to Complainant for sums exceeding the reasonable cost of registration and maintenance. This is classic cybersquatting.

Respondents claim that the Panel should disregard its offers to lease because, pursuant to Rule 408 of the Federal Rules of Evidence, settlement negotiations are not admissible in evidence in U.S. courts. This is true, but it does not bind this Panel. Under paragraph 10(d) of the Rules, the panel "shall determine the admissibility of evidence." Thus, as a technical matter, Rule 408 is not binding on this Panel.

The Panel recognizes that there is a split in authority on this point. Several Panels have adopted the dictates of Rule 408, which excludes evidence of offers of compromise after the dispute has begun. See LifePlan v. Life Plan, Case No. FA0005000094826 (NAF July 13, 2000); Milwaukee Radio Alliance, L.L.C. v. WLZR-FM LAZER 103, Case No. D2000-0209 (WIPO June 5, 2000). Other Panels have not applied Rule 408, and have looked to evidence of offers to sell the domain name (one of the express bad faith elements, Policy para 4(b)(i)), regardless of who initiated the discussion. CBS Broadcasting, Inc. v. Saidi, Case No. D2000-0243 (June 2, 2000) (noting different aims of Policy and Rule 408); Motorola, Inc. v. NewGate Internet, Inc., Case No. D2000-0079 (WIPO Apr. 20, 2000) (3-member Panel; one Panelist in dissent on this point); Netvault Ltd v. SV Computers, Case No. D2000-0095 (WIPO July 19, 2000) (same).

The Panel is of the opinion that the Policys goal of preventing cybersquatting would not be furthered by excluding evidence of a registrants offer to sell or otherwise transfer the domain name for consideration in excess of out-of-pocket costs, even if the offer is made after the registrant is on notice of the dispute. Cybersquatters often wait until a trademark owner comes calling; they should not be able to avoid the Policy by being the second to speak. It is true that canny complainants might attempt to entice innocent registrants into making offers they would not otherwise have made. However, an offer to sell is of no moment if a registrant has a right or legitimate interest in the domain name at issue, and so this scenario is not threatening to legitimate registrants. Nor does an offer to sell automatically mandate a finding of bad faith; the Panel is still obligated to review the entire record to determine if bad faith exists. But the history leading up to the adoption of the Policy suggests that an offer to sell, absent a legitimate interest and absent contrasting evidence of good faith, is so likely to be evidence of bad faith registration and use that its exclusion is likely to result in injustice. By contrast, Rule 408 covers an enormous range of situations, and reflects a policy judgment that, on average, an offer to compromise is not reliable evidence of responsibility or intent. Moreover, parties in federal court litigations have other tools including discovery and cross-examination to help bring the true facts to the surface, thus making submission of settlement offers less important; UDRP Panels, in contrast, can rely only on a truncated paper record, and this Panel agrees with those that have held that Rule 408 should not operate to further limit the information available to Panels.

Moreover, Panels are fully capable of assessing whether an offer of sale reflects a good faith effort to compromise or part of a bad faith effort to extort. Here, the evidence supports the conclusion that Respondents lease offers were part of an overall pattern of abuse. As noted above, Respondents multiple domain name registrations have no real purpose other than to prevent Complainant from reflecting its marks in corresponding domain names. This is precisely the kind of abusive behavior the Policy was designed to address. Policy para 4(b)(ii). Particularly telling is Respondents conduct in registering the final two domain names. Those registrations occurred a month after Complainant provided notice that it was terminating the Dealership Agreement. Perhaps Respondents believe that the notice was ineffective; even so, they could not have been unaware that the parties were increasingly in conflict. See Quaife, supra (ordering transfer under similar circumstances). Respondents activity can only be explained as a bad-faith attempt to increase the pressure on Complainant by sealing off even more domain names. This conduct casts a harsh light on Respondents prior registrations and justifies an inference that they, too, were tainted with bad faith.

For all of the foregoing reasons, the Panel decides that Complainant has met its burden of proof under paragraph four of the Policy: all fourteen domain names at issue are confusingly similar to trademarks in which Complainant has rights, Respondents lack a legitimate interest in those domain names, and Respondents registered and used the domain names in bad faith. Accordingly, this Panel concludes that the domain names at issue should be transferred to the Complainant.

David H. Bernstein
Sole Panelist

Dated: January 29, 2001

Footnote:

1. When parties advance such patently frivolous arguments, it harms their credibility before the Panel. R.T. Quaife Engineering, Ltd. v. Luton, Case No. D2000-1201 (WIPO Nov. 14, 2000).