WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Evolution USA, Inc. v. Alexei Doicev
Case No. D2006-0086
1. The Parties
1.1 The Complainant is Evolution USA, Inc. d/b/a TechnoMarine, Miami, Florida, United States of America, represented by Tucker & Latifi, LLP, United States of America.
1.2 The Respondent is Alexei Doicev, Chisinau, Republic of Moldova.
2. The Domain Name and Registrar
2.1 The disputed domain name (the “Disputed Domain”) is registered with Go Daddy Software (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 19, 2006. On January 20, 2006, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue. On January 20, 2006, the Registrar 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.
3.2 In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 2, 2006.
3.3 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”).
3.4 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 February 13, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was March 5, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 6, 2006.
3.5 The Center appointed Matthew S. Harris as the sole panelist in this matter on March 10, 2006. 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
4.1 The Disputed Domain is .
4.2 The Complainant is a United States of America company incorporated in the state of Florida with an office and principal place of business located at 2915 Biscayne Boulevard, Miami, Florida 33137, USA.
4.3 Pomair Trading Inc., a company incorporated in the British Virgin Islands, is the owner of US trademark registration 2363580 for the mark “TECHNOMARINE”, registered on July 4, 2000, and with a filing date of January 12, 1998.
4.4 By virtue of a trademark licence agreement dated May 15, 1998, Pomair Trading Inc. granted a worldwide exclusive licence to Linear Trading Ltd, a company incorporated in Hong Kong, SAR of China, to use its TECHNOMARINE trademark registrations, as well as the trade names, logos, symbols or other distinctive signs bearing or including the words of the mark, for the manufacture, distribution and sale of watches and such other products as may be agreed by the parties.
4.5 On October 1, 2001, Linear Ltd1 entered into a distribution contract with the Complainant, under which the Complainant was granted the exclusive right to distribute watches and watch accessories carrying the brand name “TechnoMarine” in, inter alia, North America and the Caribbean. This agreement has been successively renewed, most recently on January 2, 2006, and is due to expire on December 31, 2006.
4.6 TechnoMarine has been designing, manufacturing, distributing and selling luxury diving watches since early 1997, and since then, the Complainant has developed a product line including more than 110 different styles and has generated retail sales of over five hundred million dollars ($500,000,000).
4.7 TechnoMarine watches are sold in department stores throughout the USA, including Bergdorf Goodman, Torneau, Fortunoff and Saks Fifth Avenue in New York; Maxfield, Fred Segal and Barneys in Los Angeles; and Nordstrom in Virginia and Washington DC. TechnoMarine watches are also sold through distributors in South America, Europe, Asia, Africa and the Middle East and are advertised globally on the Internet. TechnoMarine watches are also advertised nationally in the USA in consumer magazines as well as in international publications worldwide.
4.8 The Respondent is based in Chisinau, Moldova.
4.9 The Respondent registered the Disputed Domain on or around August 4, 2005.
5. Parties’ Contentions
5.1 The Complainant’s factual and legal contentions can be summarized as follows.
A. Complainant
Identical or Confusingly Similar
5.2 The Complainant contends that, by virtue of the licensing and distribution agreements referred to at paragraphs 4.4 and 4.5 above, it is an exclusive licensee of, and therefore has rights in, the TECHNOMARINE marks.
5.3 In particular, the Complainant asserts that it has the exclusive rights to use, exploit and enforce the US Trademark and Service Mark registrations for the following:
(i) TECHNOMARINE plus Design Registration Number 2363580 for jewelry and watches in International Class 14; and
(ii) TECHNOMARINE plus TM Design 76/582009 for jewelry and watches in International Class 14.
5.4 The Complainant contends that the Disputed Domain consists of the Complainant’s TECHNOMARINE name merely in plural form and with the addition of “obvious words” (by which the Complainant is presumed to mean “.net”).
5.5 Therefore, the Disputed Domain is confusingly similar to a trademark in which the Complainant has rights.
Rights or Legitimate Interests/Registered and Used in Bad Faith
5.6 The Complainant submits that the Respondent does not own any trademarks or service marks which correspond with the Disputed Domain and asserts that the Disputed Domain was registered without the consent or permission of the Complainant.
5.7 According to the Complainant, the Respondent registered the Disputed Domain over eight years after the Complainant’s first use and adoption of the TECHNOMARINE name.
5.8 The Complainant contends that the Respondent registered the Disputed Domain with full knowledge of the fame and reputation of the TECHNOMARINE name and has thereby intentionally, knowingly and wilfully infringed upon the TECHNOMARINE marks. This was done for the purpose of confusing and luring online customers to the Disputed Domain.
5.9 The Complainant alleges that the Respondent is using the Disputed Domain, and the Complainant’s trademarks, in connection with the sale of counterfeit TechnoMarine watches with the intention of luring potential customers away from the Complainant by offering a cheaper, and seemingly identical, alternative product. According to the Complainant, this, along with the Respondent’s “obvious attempt to mislead consumers who may have simply mis-heard a domain name adding obvious words” is a prime example of the Respondent’s bad faith.
5.10 As a result, the Respondent has no rights or legitimate interests in respect of the Disputed Domain, which has been registered and is being used in bad faith.
5.11 The Complainant cites no previous panel decisions in support of its contentions.
5.12 The Complainant requests that the Panel issue a decision requiring the Respondent to transfer the Disputed Domain to the Complainant.
B. Respondent
5.13 The Respondent did not file a Response and is therefore in default pursuant to Paragraph 5(e) and Paragraph 14 of the Rules.
6. Discussion and Findings
6.1 Under Paragraph 5(e) of the Rules, if the Respondent does not submit a Response and in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. In addition, under Paragraph 14 of the Rules, where a party fails to comply with any provision or requirement of the Rules, the Panel shall draw such inferences therefrom as it considers appropriate.
6.2 This Panel does not find there to be any exceptional circumstances within Paragraph 5(e) of the Rules which would prevent the Panel from determining the dispute.
6.3 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to establish its case in accordance with Paragraph 4(a) of the Policy and prove that:
(i) the Disputed Domain is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain; and
(iii) the Disputed Domain has been registered and is being used in bad faith.
6.4 The Panel has reviewed the Complaint together with annexures and its findings are set out below.
A. Identical or Confusingly Similar
6.5 Paragraph 4(a)(i) of the Policy raises two issues. Firstly, does the Complainant have rights in a trademark or service mark? Secondly, is the Disputed Domain identical or confusingly similar to the trade or service mark in which the Complainant has rights?
Rights in a trademark
6.6 As to the first question, the Complainant submits that “through an exclusive license from Pomair Trading Inc., the worldwide owner of the TECHNOMARINE trademarks, [it] has the exclusive right to use, enforce and benefit from the TECHNOMARINE trademarks”. The details of the relevant agreements are set out at paragraphs 4.4 and 4.5 above and the Complainant has provided evidence of Pomair Trading Inc.’s US trademark registration number 2363580 (although no evidence of registration number 76/582009 referred to in the Complaint has been adduced). The Panel accepts, in the absence of evidence or submissions to the contrary, that these trademark registration fall within the scope of the licensing arrangements.
6.7 The issue that arises from this is therefore whether a licence is sufficient to confer “rights in a trademark”, within Paragraph 4(a)(i) of the Policy. A number of previous panel decisions have considered this point (See NBA Properties, Inc. v. Adirondack Software Corporation, WIPO Case No. D2000-1211; Toyota Motor Sales U.S.A. Inc. v . J. Alexis Productions, WIPO Case No. D2003-0624; Grupo Televisa, S.A., Televisa, S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v. Party Night Inc., a/k/a Peter Carrington, WIPO Case No. D2003-0796; DigiPoll Ltd. v. Raj Kumar, WIPO Case No. D2004-0939; Intermedia Film Equities USA Inc. and AGV Productions, Inc. v. V, WIPO Case No. D2004-0065). The question was also considered by this Panel in HQUK Limited v. Head Quarters, WIPO Case No. D2003-0942.
6.8 The situations addressed in these cases have been diverse and it is difficult to fully reconcile these decisions. Paragraph 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions states that from these decisions “the majority view” can be drawn that “in most circumstances a licensee of a trademark, or a related company such as a subsidiary or parent to the registered holder of a mark, is considered to have rights in a trademark under the Policy”. However, there is a “minority view” that a complainant that holds a non-exclusive trademark licence cannot be said to have rights in a trademark.
6.9 The implication from this is that in most cases if a complainant has shown that it is an exclusive licensee of the relevant trademark (regardless of the relationship between the parties), the complainant has been held to have rights in a trademark.
6.10 Unfortunately, in many of the cases there is limited analysis as to why the panel reached the decision in any particular case that the licence in question constituted “rights in a trademark”.
6.11 Nevertheless, the Panel would suggest that from those cases where reasoning is provided there can be discerned two main, yet conflicting, streams of thought. These are as follows:
(a) That a licence provides contractual rights in relation to a trademark and that these are sufficient to constitute rights in a trademark for the purposes of the Policy; and
(b) A licence is sufficient but only if as a matter of the law of the territory of the relevant mark that licence provides rights in the trademark over and above the contractual rights granted in that licence.
6.12 The decision Grupo Televisa S.A. and Miele, Inc. v. Absolute Air Cleaners and Purifiers, WIPO Case No. D2000-0756, appears to fall into category (a) above. In Grupo Televisa S.A. the panel stated that the words of paragraph 4(a)(i) of the Policy “do not require that Complainant be the owner of the mark and would include, for example, a licensee of the mark”. It then goes on to quote the following passage from Smart Design LLC v. Carolyn Hughes, WIPO Case No. D2000-0993 with approval:
“In this Panel’s view the test under paragraph 4(a)(i) of the Policy, which makes no mention of “exclusive rights” is or ought to be a relatively easy test for a Complainant to satisfy, its purpose simply being to ensure that Complainant has a bona fide basis for making the Complaint in the first place”.
6.13 Therefore if approach (a) above is correct and contractual rights are sufficient, then it should not matter if the licence in question is exclusive or non-exclusive. It is an approach that would justify the “majority” view expressed Paragraph 1.8 of the WIPO Overview. It is however, an approach that appears to be expressly rejected in NBA Properties Inc., v. Adirondack Software Corporation, WIPO Case No. D2000-1211. Here the panel stated:
“The record fails to make clear what rights in the trademark Complainant claims to have. The rights of a licensee are contract rights with respect to, not in, the licensed marks. So it is also in the case of a licensing and merchandising agent.”
6.14 The stricter approach (b) requires an examination of whether in a particular jurisdiction the licence in question grants rights in addition to contractual rights particularly vis � vis third parties. Since many systems of trademark law do accord exclusive licensees such rights, it would then be unsurprising that exclusive licenses would frequently be found to be sufficient to provide rights in a trademark under the Policy. However, it does not necessarily follow from this that an exclusive licence is sufficient or that a non-exclusive licence is not sufficient. It will depend on each case.
6.15 Intermedia Film Equities USA, Inc. perhaps2 provides an example of this stricter approach. In that case the panel mentions that:
“under United States trademark law, a trademark licensee generally has the right to sue for registered trademark infringement without joining the trademark owner only when it possesses an exclusive license, or other rights analogous to full ownership rights in the trademark.” See Quabaug Rubber Co. v. Fabiano Shoe Co., 567 f. “d 154, 159-160 (1st Cit. 1977).
6.16 Another possible example, is Toyota Motor Sales U.S.A. Inc. v . J. Alexis Productions, WIPO Case No. D2003-0624. In that case the complainant was a non-exclusive licensee but was held to have rights:
“As a matter of U.S. law, which governs these proceedings, even a non-exclusive licensee has the right to assert trademark rights in a licensed mark and to take action to protect the licensed mark. Accordingly, Complainant has satisfied the first element of the Policy.”
6.17 Toyota and Intermedia might be said to be inconsistent so far as their characterisations of US trademark law are concerned. But even if this is so, this is not important for the purposes of this analysis. What is important is that in assessing whether the licence grants sufficient rights for the purposes of the Policy both take local law into account.
6.18 If these are the two possible approaches to be adopted, which is correct? There are clearly arguments both ways. What is and is not a trademark for the purposes of the Policy is something that can only be determined by reference to local law (see the Panel’s comments in this respect in Antonio de Felipe v. R, WIPO Case No. D2005-0969). Given that the existence of a trademark has to be decided by reference to local law, why should what amounts to “rights in” that trademark be approached differently? The alternative that any licensee of a mark, no matter how minor that licence, has rights in a trademark for the purposes of the Policy may also be unattractive to some.
6.19 However, this strict approach is likely to add a significant complication for licensee complainants under the Policy. If correct, a complainant may feel compelled to explain why under the law of the relevant mark the nature of his rights was sufficient for the purposes of the Policy. Is the addition of this technical requirement really in keeping with the aims of the Policy which are intended to provide a cost efficient dispute resolution mechanism for domain name disputes with a minimum of legal formalities? It certainly would appear to run counter to those cases that treat Paragraph 4(a)(i) of the Policy as “a relatively easy test for a Complainant to satisfy”. Also it may result in different treatment of different licensees under the Policy dependant upon the geographical accident of where the licensee has rights. The Panel finds this inherently unattractive and is an outcome that should generally be avoided. Lastly, consistency between Policy decisions is to be encouraged and the contractual approach at present appears to represent the majority view.
6.20 It would be unfortunate if the Panel felt compelled to decide these issues in a case such as this where neither party has addressed these issues in submissions. Fortunately, the Panel thinks that this is not necessary here. The evidence put forward by the Complainant is sufficient to show that it has an exclusive licence of the TECHNOMARINE US registered trademarks, by virtue of the agreements mentioned in paragraphs 4.4 and 4.5 above. The Complainant contends that this provides it with rights under the Policy. If contractual rights are sufficient under the Policy then the Complainant has made out his case. If they are not, the Panel is prepared to accept (as a non-US lawyer), following the decision in Intermedia Film Equities USA described above and absent any argument from the Respondent to the contrary, that the Complainant as an exclusive licensee has rights in the trademark for the purposes of US trademark law. Therefore the Panel finds that this aspect of Paragraph 4(a)(i) of the Policy has been made out by the Complainant in this case.
Confusingly similar
6.21 In relation to the second question, the Complainant contends that the Disputed Domain consists of its TECHNOMARINE name merely in plural form and with the addition of “obvious words”. For the purposes of Paragraph 4(a)(i), “.net” can be disregarded. The Panel notes however that the trademark registrations on which the Complainant relies are logo marks, consisting of the word “TechnoMarine” with the addition of a small device.
6.22 A number of previous panel decisions have considered the application of the test set out in Paragraph 4(a)(i) of the Policy in respect of a device trademark and these were discussed by this Panel in Minibar North America Inc. v. Ian Musk & GEMS Global Electronic Minibar Systems AS, WIPO Case No. D2005-0035. In that decision, the Panel identified two approaches: (i) when applying the test set out in Paragraph 4(a)(i) of the Policy in respect of a device trademark, the graphical elements of the mark need not be considered in any assessment of identity or confusing similarity (EFG Bank European Financial Group SA v. Jacob Foundation, WIPO Case No. D2000-0036). This is primarily because graphic elements cannot be reproduced in a domain name; and (ii) since a domain name cannot incorporate design elements, it cannot be identical to the stylised version of a trademark; however, confusing similarity could still be made out where the word elements of the device mark were a “prominent feature” (Mentor ADI Recruitment Ltd (trading as Mentor Group) v. Teaching Driving Ltd, WIPO Case No. D2003-0654).
6.23 This Panel did not have to reach a decision on this issue in Minibar North America Inc., but expressed the view that the second approach is to be preferred. This remains the Panel’s view but again it is not necessary to decide the issue. Either way the Complainant succeeds in this case. If the device element of the TECHNOMARINE marks is disregarded, apart from the letter “s”, and the suffix “.net”, the marks and the Disputed Domain are the same. However, the Complainant still succeeds even if the non-textual elements of the device are taken into account. The predominant feature of each of the TECHNOMARINE marks is the word “TECHNOMARINE”.
6.24 The Panel therefore concludes that the Complainant has established both elements of Paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.25 In the absence of a Response, the Panel accepts that the Respondent registered the Disputed Domain and used the TECHNOMARINE marks without the consent or permission of the Complainant.
6.26 There is no evidence to suggest that the Respondent owns any trademarks or service marks which correspond with the Disputed Domain. Nor is there any suggestion that the Respondent has ever been known by a name incorporating the word “TechnoMarine” or “TechnoMarines”.
6.27 As discussed under section C below, the Panel finds that the Respondent has not adduced evidence to show that it chose as a domain name for any reason other than to trade on the fame and reputation of the Complainant’s name.
6.28 In the circumstances, the Panel finds that the Complainant has shown a prima facie case of the lack of rights or legitimate interests of the Respondent in respect of the Disputed Domain.
6.29 In the absence of any argument to the contrary from the Respondent, the Panel therefore finds that the Complainant has made out the requirements of Paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.30 It is clear that the Respondent was and is aware of the Complainant and its use of the TECHNOMARINE name. The evidence provided by the Complainant shows that the Respondent’s web pages set out details of the Complainant’s business and watch collections, information which it could only have gleaned through its awareness of the Complainant and its activities. The Respondent expressly invites Internet users to “visit [the] latest collection of Technomarine replica watches”. The Respondent’s choice of a domain name incorporating the TECHNOMARINE name was clearly deliberate.
6.31 Although the relevant paragraphs of the Policy are not referred to in the Complaint, it is clear that the Complainant relies on Paragraph 4(b)(iv) of the Policy in asserting that the Respondent has registered and is using the Disputed Domain in bad faith. The Complainant contends that the Respondent is using the TECHNOMARINE mark to attract potential consumers to its website, and away from the Complainant, where it offers counterfeit TechnoMarine watches for sale.
6.32 To successfully make out Paragraph 4(b)(iv) of the Policy, the Complainant must show that the Respondent, by using the Disputed Domain, has intentionally attempted to attract, for commercial gain, Internet users to its website. The Respondent purports to offer for sale replica TechnoMarine watches on its web pages. Although these web pages do not currently offer an online purchase facility, it is clear that this was previously the case or is at least envisaged, given the statement on one of the web pages that “our online store offers you superb replica Technomarine watch collection”. The Panel agrees with the Complainant’s contention that the Respondent’s use of the Disputed Domain is an attempt to confuse and lure online customers away from the Complainant for the purposes of selling its own “replica” products.
6.33 In the circumstances, the Panel has little difficulty in inferring that the Respondent has attempted to attract users to its website for the purposes of making a commercial gain. In doing so it notes that a number of previous panel decisions have found that using a domain for the purposes of selling counterfeit goods amounts to bad faith (see Wellquest International, Inc. v. Nicholas Clark, WIPO Case No. D2005-0552 and Prada S.A. v. Domains for Life, WIPO Case No.�D2004-1019).
6.34 The Panel also finds that the fact that the Respondent has registered a domain name which only differs from the predominant aspect of the Complainant’s TECHNOMARINE marks by the addition of the letter “s” is a strong indication that the Disputed Domain was registered in bad faith. This is (amongst other things) a case of “typosquatting” and a number of previous panel decisions have held that “typosquatting”, in itself, is an indication of registration in bad faith (see Google, Inc. v. N and Leonard Bensonoff, WIPO Case No. D2001-0060 and AltaVista Company v. Saeid Yomtobian, WIPO Case No. D2000-0937). This is another factor which, in this case, supports the finding of bad faith made above.
6.35 For the reasons set out above, the Panel finds that the Disputed Domain was registered and is being used in bad faith by the Respondent. Therefore, Paragraph 4(a)(iii) of the Policy has been established.
7. Decision
7.1 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 name, be transferred to the Complainant.
Matthew S. Harris
Sole Panelist
Dated: March 24, 2006
1 The Panel notes that there is a discrepancy between the names of the parties to the trademark licence agreement and the distribution contract i.e. Linear Trading Ltd and Linear Ltd. However, absent any submission to the contrary the Panel is prepared to proceed on the assumption that this discrepancy is not significant and that these companies are the same entity.
2 The Panel says “perhaps” because in Intermedia the panel stated that the laws of the United States were “relevant to these proceedings, because both the Complainants and the Respondent are citizens of the United States”. If this case is an example of approach (b) then the citizenship of the parties would be strictly irrelevant. What would be relevant would be the law of the trademark in question, which indeed was US trademark law in that case. Intermedia also refers to NBA as a case where a “non-exclusive licensee” was not held to have rights in a trademark. The Panel does not think this is correct. In NBA the Complainant was an “exclusive licensee” (see for example the first and sixth paragraphs of section 4 of the decision in that case) but still failed under the Policy.
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