WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Di-El Industrie-Electronic GmbH and TR Electronic v. E-Orderdesk
Case No. D2007-0961
1. The Parties
Complainants are Di-El Industrie-Electronic GmbH (“Di-El”) of Urbach, Federal Republic of Germany; and TR Electronic (“TR”) of London, Ontario, Canada; represented by McCarthy T�trault LLP of Toronto, Ontario, Canada.
Respondent is E-Orderdesk of Ontario, Canada.
2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Gandi SARL.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2007, naming as the Respondent Nick Goncz Cable Protection Systems Inc. On July 3, 2007, the Center transmitted by e-mail to Gandi SARL a request for registrar verification in connection with the domain name at issue. On July 4, 2007, Gandi SARL transmitted by e-mail to the Center its verification response indicating that Nick Goncz Cable Protection Systems Inc. is listed as the “person” in the Whois record for the Disputed Domain Name, that “E-Orderdesk” is listed as the “owner-name” in the Whois record for the Disputed Domain Name and providing contact details for the Disputed Domain Name. On July 11, 2007, the Center contacted the registrar to clarify the registrant of the Disputed Domain Name. On July 16, 2007, the Center issued a Complaint Deficiency Notice asking Complainant to amend the Complaint because the confirmed registrant is E-Orderdesk. Complainant so amended the Complaint on July 16, 2007. 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 Respondent of the Complaint, and the proceedings commenced on August 3, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 23, 2007. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 29, 2007. On September 3, 2007, the Center re-notified the Respondent because a hard copy of the Complaint, annexes and amendment had not been sent to Respondent, giving Respondent until September 23, 2007, to submit a response. Again, Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 26, 2007.
The Center appointed Douglas M. Isenberg, Torsten Bettinger and Christopher J. Pibus as panelists in this matter on October 23, 2007. The Panel finds that it was properly constituted. Each member of 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
Complainants state that Di-El is “a world leading manufacturer and innovator of optical, laser, ultra-sonic, capacitive sensors and inductive proximity switches”.
Complainants state that TR is “a world leading manufacturer of position sensing devices for a wide variety of industries including automotive, stamping, packaging, machine tool, robotics, and automated warehousing”.
Complainants state that D-El is the owner of the trademark DI-SORIC in numerous countries, including Canada, the Federal Republic of Germany and the United States of America. In support thereof, Complainants provide evidence of ownership by Di-El of the following trademark registrations:
- U.S. Reg. No. 1,494,020 for DI-SORIC, registered June 28, 1988;
- German Reg. No. 1,104,049 for DI-SORIC, registered March 23, 1987; and
- Canadian Reg. No. TMA345,162 for DI-SORIC, registered September 23, 1988.
These trademarks are referred to hereafter as the DI-SORIC Trademarks.
Complainants state that TR is “an authorized user” of the DI-SORIC Trademarks.
The Disputed Domain Name was registered on June 21, 2000.
5. Parties’ Contentions
A. Complainant
Complainants state that Respondent, “with permission from Di-El”, was a distributor in Canada of products using the DI-SORIC Trademarks until 1998-99 and that it has since “terminated any and all business relationships that it had with the Respondent”.
Complainants state that “Respondent and its affiliated companies are in the business of selling electrical components that are similar to or identical to the di-soric goods manufactured by Di-El, distributed by TR Electronic, and have the same industrial application”.
Complainants contend, inter alia, the following:
- The Disputed Domain Name is identical or confusingly similar to the DI-SORIC Trademarks because “the omission of the hyphen, a punctuation mark, does not significantly affect the visual impression made by the Domain Name or its pronunciation…”.
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because Respondent is not authorized by Complainant to use the DI-SORIC Trademarks; Respondent is not generally known by the DI-SORIC Trademarks; Respondent’s business relationship with Complainant was terminated more than seven years ago; “[t]he right to resell products” bearing the DI-SORIC Trademarks – as Respondent apparently has done via a website using the Disputed Domain Name – “does not create the right to use a trade-mark more extensively than required to advertise and sell the product”; and Respondent is making a commercial use of the Disputed Domain Name by selling “numerous goods and not solely the trade-marked goods” via a website using the Disputed Domain Name.
- The Disputed Domain Name has been registered and is being used in bad faith because Respondent has used the Disputed Domain Name in connection with a website advertising various electrical components for sale and later redirected the website to another website apparently operated by Respondent for an entity called “Cable Protection”; and Respondent offered to sell registration of the Disputed Domain Name to Complainant for amounts varying from CA$17,000 to CA$75,000 (such amounts also to include transfer of certain inventory).
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, Paragraph 4(a).
A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainants, it is obvious that Complainants have rights in and to the DI-SORIC Trademarks.
As to whether the Disputed Domain Name is identical or confusingly similar to the DI-SORIC Trademarks, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “disoric”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose.
The Disputed Domain Name differs from the DI-SORIC Trademarks only by the absence of the dash or hyphen in the Disputed Domain Name. However, “[t]he use or absence of punctuation marks such as hyphens does not alter the fact that the domain name at issue is identical or confusingly similar to the trademark at issue”. The Coca-Cola Company v. Bernard Peters,WIPO Case No. D2007-0478. See also Diamonique Corporation v. Foley Services,WIPO Case No. D2007-0893 (“the presence of the dash [in the Disputed Domain Name] is irrelevant…. [and] ‘add[s] no distinctiveness whatsoever’” (citing Dr. Grandel GmbH v. West End Internet Services,WIPO Case No. D2005-0853)).
Therefore, the Panel finds that Complainants have proven the first element of the Policy.
B. Rights or Legitimate Interests
Complainant alleges, inter alia, that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because Respondent is not authorized by Complainant to use the DI-SORIC Trademarks; Respondent is not generally known by the DI-SORIC Trademarks; Respondent’s business relationship with Complainants was terminated more than seven years ago; “[t]he right to resell products” bearing the DI-SORIC Trademarks – as Respondent apparently has done via a website using the Disputed Domain Name – “does not create the right to use a trade-mark more extensively than required to advertise and sell the product”; and Respondent is making a commercial use of the Disputed Domain Name by selling “numerous goods and not solely the trade-marked goods” via a website using the Disputed Domain Name.
Under the Policy, “a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP”. “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, paragraph 2.1, (visited November 1, 2007).
Accordingly, as a result of Complainants’ allegations and without any evidence of Respondent’s rights or legitimate interests in the Disputed Domain Name, the Panel is satisfied that the Complainants have proven the second element of the Policy.
C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
In this case, Complainants allege with specificity that bad faith exists pursuant to paragraph 4(b)(iv) of the Policy. In support thereof, Complainants allege that Respondent has used the Disputed Domain Name in connection with a website advertising various electrical components for sale and later redirected the website to another website apparently operated by Respondent for an entity called “Cable Protection”. Where a Respondent “has used [a] website, associated with Domain Names incorporating the Complainant’s marks, to sell the products of a competitor” and where “[t]he Respondent’s website does not accurately disclose his relationship with the Complainant”, bad faith exists under the Policy. Magma Products Inc. v. Herb Halling,WIPO Case No. D2007-0995 (citing Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, as “the most influential view” on domain name disputes involving resellers).
Therefore, the Panel finds that Complainants have proven the third element of the Policy.
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 name be transferred to Complainant Di-El Industrie-Electronic GmbH, the owner of the DI-SORIC Trademarks.
Douglas M. Isenberg
Presiding Panelist
Torsten Bettinger
Panelist
Christopher J. Pibus
Panelist
Dated: November 2, 2007
Full & Egal Universal Law Academy