WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mine Safety Appliances Company, MSA (Aust.) Pty. Ltd. v. Trish Boswell/Pacific Helmets (NZ) Ltd.
Case No. D2003-0842
1. The Parties
The Complainants are Mine Safety Appliances Company, Pennsylvania, United States of America, and MSA (Aust.) Pty. Ltd., New South Wales, Australia.
The Complainants are represented by Colucci & Umans, United States of America.
The Respondent is Trish Boswell/Pacific Helmets (NZ) Ltd, Whanganui, New Zealand.
2. The Domain Names and Registrar
The disputed domain names are , .
The disputed domain names are registered with TLDs, Inc. dba SRSplus.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 24, 2003. On October 24, 2003, the Center transmitted by email to TLDs, Inc. dba SRSplus a request for registrar verification in connection with the domain names at issue. On November 5, 2003, TLDs, Inc. dba SRSplus transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainants filed an amendment to the Complaint on November 7, 2003. The Center verified that the Complaint, together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on November 11, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was December 1, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent�s default on December 5, 2003.
The Respondent sent an e-mail to the Center on December 7, 2003, which has been notified to the Complainants on December 8, 2003. The Complainants filed a response to this e-mail, on December 10, 2003.
Since the Respondent�s e-mail did not comply with the requirements that are described in the Rules, paragraph 5 and the Supplemental Rules, and in any case, was received by the Center after the due date, this e-mail may not be considered as a formal Response and shall be disregarded by the Panel.
The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on December 15, 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.
4. Factual Background
The Complainants asserted and provided evidence in support of the following facts, which the Panel finds well established.
The Complainant Mine Safety Appliances Company is a well-known manufacturer of safety equipment throughout the world.
The Complainant Mine Safety Appliances Company is the owner of a number of trademark and service mark registrations including the word MSA throughout the world, in particular for covering protective headwear such as fire helmets, among which:
- several United States trademark and service mark registrations including the word MSA (Exhibit 3 of the Complaint) and in particular Registration N�0404551, registered on July 7, 1943, and last renewed on August 19, 2003, for twenty years;
- several trademark registrations in different countries (Exhibit 4 of the Complaint) and in particular in New Zealand, Registration N�139060, registered on September 24, 1981, and last renewed up to September 24, 2016.
The Complainant Mine Safety Appliances Company has also been granted a right, under an exclusive trademark license agreement with Cairns & Brother Inc. of July 12, 2000 (Exhibit 6 of the Complaint) to use the mark CAIRNSHELMETS in connection with protective helmets and helmet accessories.
The Complainant Mine Safety Appliances Company is using its MSA and CAIRNSHELMETS marks in its advertisement and sale of products for many years.
The Complainant Mine Safety Appliances Company has also registered the domain name on September 17, 2002 (Exhibit 8 of the Complaint) and operates a website displaying the MSA trademark, where the Complainants offer for sale their products and provide information.
There is little doubt that the Complainant Mine Safety Appliances Company is and has been for many years the owner of the trademarks MSA associated with its products.
The Complainant MSA is an Australian wholly owned subsidiary of the Complainant Mine Safety Appliances Company. The word "MSA" is the distinctive part of its trade name.
The disputed domain names and have been registered by the Respondent on March 18, 2003.
The Panel notes that the vast majority of trademark registrations containing the word "MSA" listed in the Complainant�s attachment to the Complaint, the exclusive trademark license agreement to use the mark CAIRNSHELMETS, and the registration of the domain name by the Complainant Mine Safety Appliances Company, predate the date of registration of the disputed domain names by the Respondent.
On April 23, 2003, the Complainants sent the Respondent a cease and desist letter and requested that the Respondent surrenders the disputed domain names and assists in their transfer to the Complainants. By letter of May 14, 2003, the solicitor of the Respondent responded that the disputed domain names would only be transferred if the Respondent was reimbursed of costs involved with this matter, including legal costs, estimated to be NZ $ 5,469.
5. Parties� Contentions
A. Complainant
The Complainants claim that the disputed domain names and are confusingly similar to the MSA trademarks owned by the Complainant Mine Safety Appliances Company and, to CAIRNSHELMETS trademark licensed to the Complainant Mine Safety Appliances Company.
In addition, the Complainants claim that the Respondent does not have any rights of, or legitimate interests in the and domain names. In particular, the Complainants asserts that:
(i) the disputed domain names were used by the Respondent to display its own website also found at "", so that the Respondent is seeking to capitalize on the Complainants� reputation;
(ii) the Respondent�s registration and use of the disputed domain names demonstrate that the Respondent is acting in bad faith and is attempting to confuse the public so as to benefit from the goodwill and fame associated to the Complainants� mark and licensed mark.
(iii) the amount requested by the Respondent for the transfer of the disputed domain names to the Complainants demonstrates the Respondent�s bad faith.
Finally, the Complainants assert that Respondent registered and is using the disputed domain names and in bad faith, in particular in the light of the following circumstances:
(i) since the MSA mark and the Cairns mark are famous and well-known in the safety products field, the Respondent, which is a direct competitor of the Complainants in this field was certainly aware of these marks when it registered the disputed domain names;
(ii) the Respondent has failed to comply with paragraph 2 of the Policy incorporated by reference into the Registration Agreement which provides in particular that registrant represents and warrants that, to its knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party;
(iii) the use of the disputed domain names by the Respondent and the link established with its own website proves that the Respondent intents to attract Internet users by creating a likelihood of confusion with the Complainants� mark and licensed mark.
Based on the foregoing, the Complainants request the transfer of the disputed domain names and to the Complainant MSA.
B. Respondent
The Respondent did not reply to the Complainants� contentions.
6. Discussion and Findings
The Panel�s findings under each heading with reference to the parties� contentions, the Policy, Rules, Supplemental Rules and applicable substantive law are the following:
A. Identical or Confusingly Similar
The Complainants have proven that the Complainant Mine Safety Appliances Company owns the trademark MSA throughout the world and has an exclusive right to use the mark CAIRNSHELMETS in connection with protective helmets and helmet accessories.
Such trademarks are included in the disputed domain names. The suffix ".com" is incidental to domain names and cannot serve to distinguish them.
The Panel therefore finds that the disputed domain names and are confusingly similar to the Complainants� trademarks, licensed mark and trade name and as a consequence, the action brought by the Complainants meets the requirement of the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
According to the Policy, paragraph 4(b)(ii), the Complainants must demonstrate that the Respondent has no rights or legitimate interests in the disputed domain names.
Evidence produced by the Complainants shows that the disputed domain names were used by the Respondent to display its own website also found at "", which offers to sale products of the same products field as the Complainants, so that the Respondent is seeking to capitalize on the Complainants� reputation and intents for commercial gain in order to misleadingly divert consumers.
However, the Respondent did not provide any Response and any evidence, as required by the Policy, paragraph 4(c), that it has any rights or legitimate interests in the disputed domain names and and more specifically, the Respondent did not demonstrate that:
- before any notice to the Respondent of the current dispute, its use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services; or,
- the Respondent has ever been commonly known by the disputed domain name or by the disputed domain name ; or,
- the Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark MSA or CAIRNSHELMETS.
In addition, it appears that the Respondent is neither affiliated to the Complainants nor is an official dealer. There has never been any legal or business relationship between the parties.
As a consequence, such as in the decision Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, it can be stated that: "Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Uniform Policy, or of any other circumstances giving rise to a right to or legitimate interest in the domain name. In light of (i) the fact that the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to apply for or use any domain name incorporating any of those marks, and (ii) the fact that the word "TELSTRA" appears to be an invented word, and as such is not one traders would legitimately choose unless seeking to create an impression of an association with the Complainant, the Administrative Panel finds that the Respondent has no rights or legitimate interests in the domain name."
The Panel therefore infers from the Respondent�s silence and the Complainants evidence that the Respondent has no rights or legitimate interests in the disputed domain names and .
The Panel therefore considers that the requirements of the Policy, paragraph 4(a)(ii) are fulfilled.
C. Registered and Used in Bad Faith
The Complainants are well-known manufacturers of safety equipment throughout the world. The Complainant MSA operates in particular in Australia and New-Zealand, which are the countries of the Respondent and sales in particular safety products, which are the products field of the Respondent.
Therefore, and in the absence of contrary evidence submitted by the Respondent, the Panel finds that the Respondent knew of, or should have known of, the Complainants� trademarks, licensed marks and trade name at the time it registered the disputed domain names and , and that such registration occurred in infringement of the Complainants� trademarks and trade name rights.
In addition, the Respondent did not file any Response that would have proven it had the right to carry out such registration.
As a consequence, the Panel finds that the registration by the Respondent of the disputed domain names and was performed in bad faith.
The use of the disputed domain names by the Respondent to display its own website, which offers to sale concurrent products of the products of the Complainants, demonstrate that the Respondent intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainants� trademarks, licensed mark and trade name as to the source or affiliation of its web site or of a product on its web site.
As a result, the Panel finds that the disputed domain names and were registered and are used by the Respondent in bad faith and considers the requirements of the Policy, paragraph 4(a)(iii) to be fulfilled.
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 MSA.
Christiane Féral-Schuhl
Sole Panelist
Date: December 27, 2003
Full & Egal Universal Law Academy