WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Beemak Plastics, Inc. v. WestRep Group
Case No. D2001-1023
1. The Parties
1.1 The Complainant is Beemak Plastics, Inc., a corporation organized under the laws of the State of Delaware, United States of America, having its principal place of business at 18554 Susana Road, Rancho Dominguez, California, United States of America.
1.2 The Respondent is WestRep Group, an entity having a place of business at 8401 NW 53 Terr., Suite 114, Miami, Florida, United States of America.
2. The Domain Name and Registrar
The domain name at issue is , which domain name is registered with BulkR, Inc., ("BulkRegister"), based in Baltimore, Maryland, United States of America.
3. Procedural History
3.1 A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on August 17, 2001, and the signed original together with four copies was received on August 14, 2001. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated August 15, 2001.
3.2 On August 16, 2001, a Request for Registrar Verification was transmitted to the registrar, BulkRegister, requesting it to: (1) confirm that the domain name at in issue is registered with BulkRegister; (2) confirm that the entity identified as the Respondent is the current registrant of the domain name; (3) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the registrar�s Whois database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact; (4) confirm that the Uniform Domain Name Dispute Resolution Policy (the "Policy") is in effect; (5) indicate the current status of the domain name.
3.3 On August 17, 2001, BulkR confirmed by reply e-mail that the domain name is registered with BulkR, is currently in Registrar lock, and that the Respondent is the current registrant of the name. The registrar also forwarded the requested Whois details, and confirmed that the Policy is in effect.
3.4 The WIPO Center determined that the Complaint satisfies the formal requirements of the Uniform Domain Name Dispute Resolution Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"), the Uniform Rules, and the Supplemental Rules. The required fees for a sole Panelist were paid on time and in the required amount by the Complainant.
3.5 No formal deficiencies having been recorded, on August 20, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, BulkRegister, and ICANN), setting a deadline of September 9, 2001, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by e-mail to the e-mail addresses indicated in the Complaint and specified in BulkRegister�s confirmation. In addition, the complaint was sent by express courier to the postal address given. Having reviewed the communications records in the case file, the Administrative Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."
3.6 On September 12, 2001, not having received any response, the WIPO Center sent the parties a formal Notification of Respondent Default.
3.7 On September 12, 2001, the WIPO Center received an email from the Technical and Administrative Contact designated by Respondent, indicating that the email address listed in the Whois was not the contact email for the owner of the domain. On September 14, 2001, the Center sent an email to the Technical and Administrative Contact, requesting that all documents be forwarded to the respondent and requesting the correct email address of Respondent. The WIPO Center received no response to this email.
3.8 On September 26, 2001, in view of the Complainant's designation of a single Panelist, the WIPO Center appointed M. Scott Donahey to serve as sole Panelist.
4. Factual Background
4.1 Complainant's assignor registered the trademark and design TILTBIN in connection with modular multi-purpose storage containers made of plastic, with the representation that "No claim is made to the exclusive right to use 'bin,' apart from the mark as shown." The registration issued from the United States Patent Office ("USPTO") on April 22, 1997. Complaint, Annex B. The mark was assigned to Complainant. Complaint, Annex C.
4.2 Complainant and its predecessors have used the stylized mark in connection with the promotion of plastic storage systems since at least July 1995.
4.3 Complainant or its affiliate registered the domain name on June 25, 1997 and the domain names and on January 4, 2000. Complaint, Annexes D, E, and F. These domain names resolve to a web site which promotes and offers for sale Complainant's trademarked plastic storage containers. Complaint, Annex G.
4.4 Phillip Thielen, an individual, founded and did business as WestRep Group. On June 26, 1997, the day after Complainant registered the domain name , Complainant and Phillip Thielen d.b.a. WestRep Group entered into an agreement pursuant to which Respondent was to act as an independent sales representative for Complainant's products, including the trademarked plastic containers.
4.5 In July 1998, Complainant and Respondent negotiated a new agreement that superceded the prior agreement. Complaint, Annex I. On July 29, 1998, Complainant executed the new agreement and forwarded it to Respondent. Respondent did not return an executed copy to Complainant. However Complainant and Respondent subsequently performed pursuant to the new agreement.
4.6. The new agreement provided that Respondent could not use Complainant's trademarks without prior written approval from Complainant.
4.7 On November 30, 1998, Complainant gave Respondent a thirty-day notice of termination, terminating the new agreement. Complaint, Annex J.
4.8 On April 5, 1999, Respondent registered the domain name . Complaint, Annex A.
4.9 At the time of the filing of the Complaint, Respondent's domain name resolved to a web site maintained by one of Complainant's direct competitors at which products directly competitive with the trademarked plastic storage bins of Complainant were offered for sale. Complaint, Annex K.
4.10 Complainant's competitor had at one time been using Complainant's trademark in metatags designed to attract search engines when a search for "tilt bin" was entered by a user. Complaint, Annex M.
4.11 Complainant sent this competitor a letter requesting that the competitor cease using Complainant's trademark and cease using the domain name at issue. Complaint, Exhibit L. In a subsequent conversation, the President of Complainant's competitor denied that it was violating any of Complainant's rights, but invited Complainant to make an offer for the domain name at issue.
4.12 Complainant also sent a letter to Respondent demanding that Respondent transfer the rights to the domain name at issue to Complainant. Complaint, Exhibit N.
4.13 On July 6, 2001, Complainant's attorney received a copy of an email from Respondent, indicating that the domain name had ceased to resolve to the web site maintained by Complainant's competitor. Complaint, Annex O.
4.14 On July 9, 2001, Complainant again demanded that the rights to the domain name at issue be transferred to Complainant. Complaint, Annex P. Respondent did not respond to this communication.
5. Parties� Contentions
5.1 Complainant contends that Respondent has registered a domain name which is identical to the trademark registered and used by Complainant, that Respondent has no rights or legitimate interests in respect to the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.
5.2 Respondent has not contested the allegations of the Complaint.
6. Discussion and Findings
6.1 Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall 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."
6.2 Since both the Complainant and Respondent are domiciled in the United States, and since United States� courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.
6.3 Paragraph 4(a) of the Policy directs that the 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; and,
2) that the Respondent has no rights or legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and is being used in bad faith.
6.4 The domain name at issue is identical to the trademark in which the Complainant has rights. Eveready Battery Company Inc. v. Michael Behrens, WIPO Case No. D2000-1261; Women on Waves Foundation v. Chris Hoffman, WIPO Case No. D2000-1608.
6.5 Complainant has alleged and Respondent has failed to deny that Respondent has no legitimate interests in respect of the domain name at issue. This entitles the Panel to conclude, under the facts presented, that Respondent has no rights or legitimate interests in respect of the domain name at issue. Alcoholics Anonymous World Services, Inc. v. Lauren Raymond, WIPO Case No. D2000-0007; Bronson Plc v. Unimetal Sanayai ve Tic. A.S., WIPO Case No. D2000-0011.
6.6 Paragraph 4(b)(i) of the Policy provides that circumstances indicating that the Respondent registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to a competitor of the complainant constitute bad faith registration and use. In this case, use of the domain name at issue was provided to a competitor of Complainant who used the name to resolve to the competitor's web site at which products were offered for sale that directly competed with the trademarked products of Complainant. The Panel believes that such circumstances come within paragraph 4(b)(i) and constitute bad faith registration and use.
6.7 The exact connection between Complainant's competitor and Respondent is not clear. However, it is clear from the annexes to the complaint that the domain name at issue was controlled by Respondent. Complaint, Annex O. It is also clear from the annexes that the domain name at issue had resolved to Complainant's competitor's web site at which products were offered for sale that directly competed with Complainant's trademarked products and at which Complainant's trademark was used in metatags in order to attract search engines when a user entered Complainant's trademark in the search request. Complaint, Annexes K and M. The Panel believes that such conduct constitutes the registration of a domain name primarily for the purpose of disrupting the business of a competitor. Such conduct constitutes bad faith registration and use under paragraph 4(b)(iii) of the policy.
7. Decision
For all of the foregoing reasons, the Panel decides that the domain name registered by Respondent is identical to the trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name at issue, and that the Respondent's domain name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name be transferred to the Complainant.
M. Scott Donahey
Sole Panelist
Dated: October 5, 2001
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