The domain BikeSource.com, a 1996 registration, was lost via a UDRP complaint that the Respondent didn’t respond to formally.
Instead of involving an attorney, such as ESQwire (note: advertisers on our publication,) the BikeSource.com registrant sent an email:
Complainant is Midwest Merchandising Inc. d/b/a BikeSource, with the Respondent being Clay Akey, CambriaBike.com, Inc.
The lack of a formal response by the Respondent, gave the opportunity to the Complainant to solidify their claims; the sole WIPO panelist argued that when the Respondent acquired the domain in 2007 they were allegedly aware of the Complainant’s BIKESOURCE mark, which was registered in 2006.
Such arguments, with the assistance of an attorney, would be deflected, in our opinion.
Final decision: Transfer BikeSource.com to the Complainant.
Midwest Merchandising Inc. d/b/a BikeSource v. Clay Akey, CambriaBike.com, Inc.
Case No. D2021-1482
1. The Parties
Complainant is Midwest Merchandising Inc. d/b/a BikeSource, United States of America (“United States”), represented by Bradley Davis, United States..
Respondent is Clay Akey, CambriaBike.com, Inc., United States..
2. The Domain Name and Registrar
The disputed domain name
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 12, 2021. On May 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 13, 2021, the Registrar transmitted by email to the Center its verification response, disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 20, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 20, 2021. On May 22 (see below) the Respondent emailed the Center providing certain information and arguments.
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 Respondent of the Complaint, and the proceedings commenced on May 31, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 20, 2021. Respondent did not submit any response.
The Center appointed Robert A. Badgley as the sole panelist in this matter on July 1, 2021. 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.
On July 12, 2021, the Panel issued Procedural Order No. 1, which stated:
“The Panel orders that Respondent provide the information and documentation requested below on or before July 23, 2021.
1. Provide evidence to support the statement in the Clay Akey May 22, 2021 email to the WIPO Arbitration and Mediation Center (the “Center”) that Respondent “bought the assets of company Bikesource.com who had operated as such since the 80’s.”
2. Provide evidence to support the statement in the Clay Akey May 22, 2021 email to the Center that “these guys [Complainant] try to demand this domain every 5 years or so.”
3. If Respondent possesses communications to or from Complainant (or its representatives) prior to the July 2018 communication referred to in the Complaint, provide same.
4. Indicate when Respondent or its principal first became aware of Complainant or its trademark (whether registered at the time or not) BIKESOURCE.
Complainant may reply to Respondent’s response to this Procedural Order No. 1 on or before July 30, 2021.
The Panel reserves the right to raise further questions or issue further orders. The due date for decision in this proceeding shall be changed to August 9, 2021.”
Respondent did not respond to Procedural Order No. 1 in any manner.
4. Factual Background
Complainant sells bicycles and bicycle accessories and parts. Since March 15, 1991, Complainant has operated under the trademark BIKESOURCE. On April 4, 1995, the BIKESOURCE mark was registered with the United States Patent and Trademark Office under Reg. No. 1,887,592.
The Domain Name was registered on January 23, 1996. The Domain Name resolves to a website where Respondent, who trades under the name “Cambria Bike” or “Cambria Bicycle,” sells bicycles and bicycle accessories and parts. According to Complainant, Respondent began using the Domain Name for this purpose in August 2017.
In July 2018, Complainant sent Respondent a cease-and-desist letter asserting its trademark rights and demanding that Respondent transfer the Domain Name to Complainant. Respondent did not reply to this cease-and-desist letter.
Respondent did not formally respond to the Complaint, but sent an email to the Center on May 22, 2021, in which Respondent stated:
“What is this complaint exactly[?] We bought the assets of company Bikesource.com who had operated as such since the 80’s in the 90’s roughly. [W]e also operated bikesource.com and we have been in business since 1985! Not sure what this is about, but these guys try to demand this domain name every 5 years or so. It is ours and was used for online bicycle business, long before that chain of bike store’s [sic] had any desire to be online!!”
As noted above, Respondent did not respond to the Panel’s Procedural Order No. 1.
5. Parties’ Contentions
Complainant asserts that it has satisfied all three elements required under the Policy for a transfer of the Domain Name.
Respondent did formally not reply to Complainant’s contentions and did not respond to the Panel’s Procedural Order No. 1. The entirety of Respondent’s position is quoted above in the “Factual Background” section.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights in the trademark BIKESOURCE through registration demonstrated in the record. The Domain Name is identical to that trademark.
Complainant has established Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or 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; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel concludes that Respondent lacks rights or legitimate interests in connection with the Domain Name. Respondent sells bicycles and related accessories under the trade name Cambria Bikes or Cambria Bicycles. There is no evidence that Respondent is commonly known by the Domain Name. There is also no evidence that Respondent is making a legitimate noncommercial or fair use of the Domain Name. Respondent’s competing website is commercial, and that website is accessible via the Domain Name, which is identical to Complainant’s registered trademark BIKESOURCE.
In addition, there is no evidence that Respondent has used the Domain Name in connection with a bona fide offering of goods or services. Respondent’s principal could have provided some evidence of his bona fides in response to the pointed questions in Procedural Order No. 1, but he chose not to reply to that order. Respondent’s principal also had the chance to prove his bona fides in response to the Complaint and, indeed, in response to the July 2018 cease-and-desist letter, but he chose not to do so. The Panel is left with little choice but to conclude that Respondent cannot prove its legitimacy vis-à-vis the Domain Name.
Complainant has established Policy paragraph 4(a)(ii).
C. Registered or Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes, on a balance of probabilities, that Respondent has registered and used the Domain Name in bad faith. It is undisputed that the Parties are in the same business of selling bicycles and related accessories, and that Respondent somehow acquired the Domain Name after Complainant had been trading under the BIKESOURCE mark for five years and had registered that mark nine months earlier.
The Panel cannot credit Respondent’s account of how Respondent acquired the Domain Name. In the Panel’s view, it should not have been difficult for Respondent to corroborate the claim that Respondent acquired the assets of a company called Bikesource.com in the 1990s. Rather, the Panel finds it more likely than not that Respondent, in the same line of business as Complainant, was aware of Complainant’s BIKESOURCE trademark at the time Respondent acquired the Domain Name. In addition, the Panel finds that Respondent’s use of the Domain Name to direct users to a competing commercial website selling bicycles and related accessories constitutes bad faith use within the meaning of the above-quoted Policy paragraph 4(b)(iv).
Complainant has established Policy paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name
Robert A. Badgley
Date: August 9, 2021
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