WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
EnviroTech Pumpsystems, Inc. v. Environmental Pumping Solutions, Ltd. and Berkshire Computers Limited
Case No. D2003-0610
1. The Parties
The Complainant is EnviroTech Pumpsystems, Inc., Salt Lake City, Utah, United States of America, represented by Julie K. Morriss Esq., Morriss O�Bryant Compagni, P.C., Salt Lake City.
The Respondents are Environmental Pumping Solutions, Ltd. ("EPS") and Berkshire Computers Limited ("BCL"), both of Ascot, Berkshire, United Kingdom of Great Britain and Northern Ireland. EPS is represented by Mr. Peter Wright of the same address.
2. The Domain Names and Registrar
The disputed domain names are and , both of which are registered with Melbourne IT Ltd., trading as Internet Names Worldwide.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 2, 2003. On August 4, 2003, the Center transmitted by email to Melbourne IT Ltd. a request for registrar verification in connection with the domain names at issue. On August 5, 2003, Melbourne IT Ltd. transmitted by email to the Center its verification response confirming that the domain names are registered with it; that "the respondents are the current registrant" [sic] and specifically that "Environmental Pumping" is listed as the registrant of and that BCL is listed as the registrant of . The registrar also confirmed that both registrants� addresses are the same.
The registrar also provided for each domain name the contact details for the administrative, billing, and technical contacts, which are also the same in each case.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 Respondents of the Complaint, and the proceedings commenced on August 7, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was August 27, 2003. On August 28, 2003, a formal request for a 14-day extension of time was sought on behalf of EPS. On August 28, 2003, the Center, having considered the Complainant�s comments on the request, granted an extension of time for the filing of the Response until September 5, 2003. The Response of EPS was filed with the Center on September 3, 2003. No separate Response was filed by BCL.
The Center appointed Alan L. Limbury as the sole panelist in this matter on October 2, 2003. 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.
The language of the proceeding is English.
4. Factual Background
The Complainant is the registered proprietor in 33 countries (including the United Kingdom) of the trademark ROTO-JET, which it has used since 1970, in connection with pitot pumps, parts and fittings therefor and pump repair services.
EPS is engaged in the business of supplying pumps and devising solutions to pump problems.
On June 17, 2000, EPS registered the domain name and on June 21, 2000, the domain name . On June 26, 2000, EPS registered the domain name and on the same day Mr. Peter Wright registered the disputed domain name . Mr. Wright�s organization was stated to be EPS. J was the registrar. Since November 14 or 15, 2002, the disputed domain name has been registered in the name of EPS with Melbourne IT.
By letter dated November 19, 2001, addressed to EPS, counsel for the Complainant drew attention to the Complainant�s trademark rights in the mark ROTO-JET and sought transfer of the domain name . By letter dated December 13, 2001, counsel for the Complainant noted that EPS had registered at least five domain names incorporating the ROTO-JET mark and sought disclosure of all such domain names and their transfer.
Negotiations by correspondence ensued, during which EPS expressed its willingness to transfer the five domain names to the Complainant for the sum of �350. At one stage a deadline of May 31, 2002, was set by EPS for the receipt of that sum, which it subsequently claimed had not been met by the Complainant. The negotiations did not result in transfer of the disputed domain names to the Complainant.
On May 31, 2002, the domain name and the disputed domain name were registered in the name BCL, which was stated to have the same address as EPS.
5. Parties� Contentions
A. Complainant
The Complaint was filed on the footing that both EPS and BCL are business entities organized under the laws of the United Kingdom, although the Complainant�s extensive investigations have failed to substantiate that BCL is a bona fide and existing company.
Identity/confusing similarity
The domain name is essentially identical and is confusingly similar to the Complainant�s mark. The Complainant�s products are known as Roto-Jet® pumps. In ITT Industries, Inc. v. Katherine Kliszcz, WIPO Case No. D2000-1431, the domain name was held confusingly similar to the trademark MARLOW.
The domain name is indisputably identical to the Complainant�s mark.
Legitimacy
The Respondents have no rights or legitimate interests in the disputed domain names. The domain name is linked to the EPS website at "", which advertises for sale the pitot pumps of the Complainant�s foremost competitor and does not refer to any of the Complainant�s Roto-Jet® products. EPS is not an authorized dealer of Roto-Jet® pumps, nor a licensee of the Complainant.
Neither is BCL, whose name does not denote anything to do with pumps. The domain names registered in the name BCL were registered after the Complainant had provided proof to EPS of its trademark rights and after negotiations with EPS faltered. The domain name is not currently linked to any website. BCL has been used as a ruse for EPS�s bad faith registration.
Bad faith
The domain names were registered and are being used in bad faith. EPS probably knew of the Complainant�s mark, given its website�s claimed experience and expertise with pumps and the use by the Complainant of its mark in many countries. Further, the Complainant believes former employees of the Complainant or of its U.K. parent, who were involved with Roto-Jet® products, are owners or employees of EPS.
The domain names registered in the name of BCL were so registered to obfuscate the fact that EPS is the actual registrant. The timing of their registration also shows bad faith.
EPS�s purpose has been to divert business from the Complainant by obtaining multiple domain name registrations, which are essentially identical or confusingly similar to the Complainant�s mark. Those registrations also prevent the Complainant from reflecting its mark in corresponding domain names.
B. Respondents
The only Response was filed by Mr. Wright on behalf of EPS, and was written as if EPS were the only Respondent. EPS says it has no "direct control" over the dispute and that the Complaint against BCL is not responded to as neither EPS nor Mr. Peter Wright have "any responsibilities in this company". EPS says that registered companies can be identified at "".
Identity/confusing similarity
EPS makes no case for the relationship of "the disputed domain names" [sic] and does not challenge the Complainant�s assertions.
Legitimacy
The information in relation to the pitot pump was provided as part of a series of web pages providing information about different types of pumps. The extrapolation towards the connection with a main competitor is irrelevant to the complaint and seeks to discredit EPS. The ownership of the domain name has not provided EPS with any material benefit and transfer for material gain has never been in dispute.
EPS was not aware at the time of purchase that the names [sic] were [sic] trade marked.
EPS has no interest in the use of these domain names [sic]. EPS had no active use of the domain name [sic] prior to the Complaint. EPS has not been or is not commonly known by the domain name(s) in issue, even if EPS has acquired no trademark or service mark rights. EPS is not making a legitimate non-commercial or fair use of the domain name(s), without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark(s) or service mark(s) at issue.
Bad faith
The Complainants case for bad faith is based on incorrect assumptions and is not supported by any confirmed transaction/ business by EPS at any time. The Panel may wish to consider who has demonstrated the full extent of bad faith in the present circumstances.
At no time has EPS made excessive claims for expenses. During the period of negotiation figures and an agreed level of costs were provided. The Complainant should realize that in the present circumstances this is not the case and full recovery of the costs of preparing this response will be sought by EPS.
EPS has not deliberately registered the domain names [sic] in question in order to prevent the Complainant from reflecting the mark. The registration was simply to prevent misuse of the domain by others who may have actually sought to prevent the Complainant from reflecting the mark.
The Complainant and EPS are not competitors in the Pitot Tube Pump market and EPS has not sold a single Pitot Tube Pump or Pitot Tube Pump spare of any manufacturer and/or the domain name(s) (was/were) not registered by EPS primarily to disrupt the Complainant�s business.
EPS is a small trader with a turnover of less than �200k with limited financial resources. The Complainant is a part of a Giant Pump group and turns over close to $1 billion US Dollars. The fact that both trade in the pitot market is simply not true. EPS has not sold a single pitot tube pump or pitot tube spare part in this business. It would be ridiculous to suggest that EPS Limited could disrupt the business of the Complainant who operates in the scale of the Global market.
EPS has developed an unrelated Internet based business for the supply of new Peristaltic Pumps and replacement hose for a range of peristaltic pumps both large and small. The hose and the techniques of use are operational factors, upon which EPS focuses to help users and to develop the capability of the business. The supply of hose manufactured to EPS specifications is a key part of the business strength. This Peristaltic Market has no overlap in the Rotojet Pitot Tube Pump market whatsoever. At no time has the domain names [sic] in question been used to confuse customers as to the identity of the EPS company. No affiliation with the Complainant has been claimed or would be claimed as part of EPS business.
Reverse Domain Name Hijacking
EPS wishes the Panel to exercise a degree of common sense in this matter and to protect EPS from the effects of this heavy-handed approach by the Complainant.
6. Discussion and Findings
Whether these proceedings have been properly brought against BCL
Each of the two disputed domain names is registered in the name of a different registrant.
Rule 3(c) provides that a Complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. Paragraphs 4(f) of the Policy and 10(e) of the Rules give the Panel a general power to consolidate multiple domain name disputes between the same parties, provided they are governed by the Policy or a later version of the Policy adopted by ICANN.
In Archipelago Holdings LLC, v. Creative Genius Domain Sales and Robert Aragon d/b/a/ Creative Genius Domain Name Sales, WIPO Case No. D2001-0729, consolidation was allowed where there were "technically two distinct respondents" both of which were controlled by the same person, who submitted materials regarding all of the 14 domain names in dispute.
In Gateway, Inc. v. James Cadieux, WIPO Case No. D2000-0198, a case in which, as here, two domain names were registered in different names, the Complaint was dismissed insofar as it related to one of them, the registrant of which had not been named as a Respondent in the Complaint. The learned Panelist noted that paragraph 3(c) of the Policy assures the holder of a domain name that a decision of an Administrative Panel will result in transfer only if made in a "proceeding to which you were a party". Thus, the entity from which transfer is sought must be named as a Respondent.
In ISL Marketing AG, and The Federation Internationale de Football Association v. J.Y. Chung, W, W Co., and Worldcup 2002, WIPO Case No. D2000-0034, there were 15 domain names, not all of which were registered by the same domain name holder. The registrants of some of the domain names were not named as Respondents but their precise legal status was not clear (including whether they in fact existed). The First Respondent was not the registrant of any of them but was the administrative contact for all of them. He claimed to be "the virtual owner" of some of them and did not challenge the validity of any aspect of the formalities of the Complaint. In light of those facts, it appeared to the learned Panelist in that case that the First Respondent was the person responsible for and beneficially entitled to the registration of each of the domain names in issue. Taking into account the general principles underlying the Policy and the Rules, the learned Panelist found that "in substance the appropriate Respondents have been named in relation to all of the domain names the subject of the Complaint".
Other cases involving multiple domain names and multiple parties (such as Fondation Le Corbusier v. Monsieur Bernard Weber, Madame Heidi Weber, WIPO Case No. D2003-0251) are of no assistance since the issue was not raised.
Here BCL has been named as a Respondent in relation to the disputed domain name , has been duly served with the Complaint and has had an opportunity to file a Response. EPS has sought to distance itself from BCL. There is doubt as to the legal personality of BCL and as to its existence.
Even assuming that BCL exists as an entity separate from EPS, it is impossible to accept as mere coincidence that, on the very day upon which expired a deadline set by EPS in its negotiations with the Complainant about domain names that incorporate the ROTO-JET trademark, BCL registered two domain names which incorporate that trademark.
The inference is inescapable that BCL was an instrument of or was acting at the behest of EPS or of Mr. Wright on behalf of EPS. In this sense, whether or not BCL exists as an entity separate from EPS, the Panel is of the view that the two domain names here in dispute are registered by the same domain name holder, within the meaning of Rules, paragraph 3(c).
The Panel is fortified in reaching this conclusion by the frequent references to the domain names (plural) in the Response filed by EPS, despite its purporting to respond only in relation to the domain name. Further, in a letter on EPS letterhead, which accompanied the Response, Mr. Wright said:
"�we have and intend to provide Envirotech Inc with the domain names they require and to complete the transaction immediately."
Given that this proceeding relates to the domain name, registered in the name of EPS, and the domain name, registered in the name of BCL, the Panel takes this as an assertion that EPS has control over both names.
Accordingly the Panel is of the view that these proceedings have been properly brought against BCL. Henceforth the Panel will use the term "the Respondent" to refer to both Respondents, since the Panel has found they are, effectively, one and the same.
Substantive issues
Paragraph 15(a) of the Rules instructs the Panel to decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The burden for the Complainant, under paragraph 4(a) of the Policy, is to show that the domain names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; that the Respondent has no rights or legitimate interests in respect of the domain names; and that the domain names have been registered and are being used by the Respondent in bad faith.
A. Identical or Confusingly Similar
The Respondent does not dispute that each of the domain names is identical to or confusingly similar to the Complainant�s mark and the Panel so finds.
The Complainant has established this element.
B. Rights or Legitimate Interests
The Respondent admits that it has no interest in the disputed domain names. It claims simply to seek from the Complainant its legal and other costs associated with the correspondence and transfer of the names to the Complainant.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.
The Complainant has established this element.
C. Registered and Used in Bad Faith
It should be noted that the circumstances of bad faith specified in paragraph 4(b) of the Policy are not exhaustive.
In SportSoft Golf, Inc. v. Hale Irwin�s Golfers� Passport, NAF Case No. FA94956, a finding of bad faith was made where the respondent "knew or should have known" of the registration and use of the trademark prior to registering the domain name. Likewise Marriott International, Inc. v. John Marriot, NAF Case No. FA94737; Canada Inc. v. Sandro Ursino, eResolution Case No. AF-0211 and Centeon L.L.C./Aventis Behring L.L.C. v. E, NAF Case No. FA95037.
The Respondent has said in the Response:
"The Respondent has not deliberately registered the domain names [sic] in question in order to prevent the Complainant from reflecting the mark. The registration was simply to prevent misuse of the domain by others who may have actually sought to prevent the Complainant from reflecting the mark".
Despite the Respondent�s denial of knowledge of the Complainant�s trademark prior to registration of the disputed domain names, the Panel finds that the Respondent�s stated purpose in registering the domain names (plural) is consistent only with such prior knowledge. Further, in order that this purpose might be effective, registration of the domain names must have been intended to create the impression that the Respondent was authorized to protect the Complainant�s mark and thus to give the false impression of an authorized association between the Complainant and the Respondent which the Respondent knew did not exist. See Sydney Opera House Trust v. Trilynx Pty. Limited, WIPO Case No. D2000-1224.
The Panel finds that both domain names were registered in bad faith, having regard to the Respondent�s prior knowledge of the Complainant�s trademark and intent to create a false impression of association with the Complainant.
The domain name has not been used. However, having regard to the timing and circumstances of its registration, described above, the Panel finds that this domain name was registered in order to prevent the Complainant from reflecting its mark in a corresponding domain name and that the Respondent has engaged in a pattern of such conduct. Under paragraph 4(b)(ii) of the Policy, this is evidence of both bad faith registration and bad faith use.
The domain name has been used to lead Internauts to the EPS website, where, among other things, the products of the Complainant�s principal competitor and none of the Complainant�s Roto-Jet® products are advertised. The Panel finds that, in so using that domain name, EPS has intentionally attempted to attract, for commercial gain, Internauts to its website, by creating a likelihood of confusion with the Complainant�s mark as to the source, sponsorship, affiliation or endorsement of its web site and of the products and services on its web site. Under paragraph 4(b)(iv) of the Policy such use is evidence of both bad faith use and bad faith registration.
Accordingly, the Panel finds that both domain names were registered and are being used in bad faith.
The Complainant has established this element.
Reverse Domain Name Hijacking
Rules, paragraph 1, 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". See also Rules, paragraph 15(e). Since the Complainant succeeds, no question of reverse domain name hijacking can arise.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names and be transferred to the Complainant.
Alan L. Limbury
Sole Panelist
Dated: October 12, 2003
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