WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swissbike Vertriebs GmbH v. Executive Standard Limited
Case No. D2008-0498
1. The Parties
The Complainant is Swissbike Vertriebs GmbH of Switzerland, represented by Wilson Gunn, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Executive Standard Limited of Chelmsford, Essex, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name, (the “Domain Name”), is registered with ZigZ LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2008 (electronic copy). On April 2, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 18, 2008, Manage.SnapN, a company providing registration services for the Registrar, transmitted by email to the Center its verification response confirming that the Respondent was listed as the registrant of the Domain Name and providing the contact details.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 2, 2008 (electronic copy) and May 5, 2008 (hardcopy). 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 May 9, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 29, 2008. The Respondent submitted a Response on May 22, 2008.
The Center appointed Tony Willoughby as panelist in this matter on June 6, 2008. 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 Complainant is the proprietor of a large number of trade mark registrations for marks comprising or including the name RALEIGH, the earliest of which, a UK device mark, dates back to 1913. The majority of the registrations are for bicycles and bicycle accessories.
For the purposes of this decision it is sufficient to cite one registration, namely CTM 3,815,883 dated April 29, 2004 (registered September 27, 2005) RALEIGH (word) in class 12 for “cycles; parts, fittings and accessories therefore”.
The Respondent registered the Domain Name on December 24, 2007 and connected it to a website the homepage of which is headed prominently with the name “Raleigh Bicycles”. The homepage features a paragraph of text explaining that the website is a forum for fans of Raleigh Bicycles. It also contains a legend reading “This forum is independently owned and is not in any way connected with Raleigh UK Limited”.
On March 31, 2008, the Complainant’s representatives wrote to the Respondent drawing the Respondent’s attention to the Complainant’s rights and complaining not only about the Domain Name, but also about the use on the site of one of the Complainant’s logos. The letter sought transfer of the Domain Name.
On April 7, 2008, a director of the Respondent emailed the Complainant’s representatives referring to a telephone conversation between them earlier that day and offering to transfer the Domain Name if the Complainant was prepared to reimburse the Respondent its costs of acquiring the Domain Name and developing the website totalling �4,102.92.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the Domain Name is “identical and therefore confusingly similar to a trade mark or service mark in which the Complainant has rights.”
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. It points to the fact that the Complainant’s RALEIGH trade mark is well-known and that the Respondent has not been known by the Domain Name and has not been authorized by the Complainant to use its trade mark.
Finally, the Complainant contends that the Domain Name was registered and is being used in bad faith.
The Complainant contends that the Respondent “uses the Domain Name as though it has some kind of commercial connection to the Complainant or as if the Complainant has provided consent for them to do so.” The Complainant refers to a use by the Respondent of “the Raleigh bike logo” on the website and contends that this false indication of the Complainant’s endorsement of the Respondent’s website is a clear indication of bad faith.
The Complainant further contends that the Respondent’s demand for payment of its costs incurred in acquiring the Domain Name and developing the website in return for transfer of the Domain Name “is a clear indication of cybersquatting for commercial gain and in turn a clear indication of bad faith.”
B. Respondent
The Respondent claims to have purchased the Domain Name in an auction for �2,012.92 having previously contacted the Complainant in relation to the Domain Name.
The Respondent asserts that it acquired the Domain Name for the purpose for which it is currently being used, namely to connect to a forum site for fans of the Complainant’s bicyles. The site is sponsored by NationalC, but the site itself is a non-commercial site.
The Respondent contends that all the trade mark registrations put in evidence by the Complainant are device registrations and that the Domain Name is not confusingly similar to any of them.
The Respondent contends that it has a legitimate interest in the Domain Name. The Domain Name describes the nature of the bicycles covered by the website.
The Respondent denies that it registered the Domain Name in bad faith and denies that the Domain Name is being used in bad faith. The Respondent admits that initially it used the Respondent’s logo on the site, but only to underline the brand of bicycle covered by the site. There was no intention to cause confusion. The logo was removed as soon as the complaint was received.
The Respondent objects to the use which the Complainant’s representatives have made of the Respondent’s offer to transfer the Domain Name in return for reimbursement of its costs of acquiring the Domain Name and developing the website. The Respondent contends that it was the Complainant’s representatives who suggested that the Respondent should put a figure to them for consideration by the Complainant.
6. Discussion and Findings
A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove that:
(i) The Domain Name 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 Domain Name; and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith.
B. Identical or Confusingly Similar
The Domain Name comprises the Complainant’s registered trade mark, RALEIGH, the word ‘bikes’ and the generic domain suffix. ‘Bikes’ describes the products for which the Complainant’s trade mark is very well-known in the United Kingdom and the domain suffix is normally to be ignored for the purposes of assessing identity/confusing similarity.
The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.
The Panel needs to address the Respondent’s assertion that all the Complainant’s trade mark registrations in evidence in this proceeding are device marks. This is not the case. The registration cited at section 4 above is a word mark registration. Even if the Respondent had been correct, the Panel’s decision would have been the same. The name, RALEIGH, is a prominent feature of all the device registrations.
C. Rights or Legitimate Interests
In light of the Panel’s finding under the next head, it is unnecessary for the Panel to address the issue as to whether or not the Respondent has rights or legitimate interests in respect of the Domain Name and the Panel does not do so.
Nonetheless, it is convenient here to relate the Respondent’s use of the Domain Name. The Respondent has been using the Domain Name to connect it to a website, which is described as and which appears to the Panel to be a forum site intended for use by fans of the Complainant’s Raleigh bicycles to discuss issues and seek/provide information relating to those bicycles. The Respondent contends that the site is a non-commercial site and there is nothing of any substance before the Panel to indicate otherwise.
D. Registered and Used in Bad Faith
The Complainant contends that the Domain Name was registered and is being used in bad faith.
To succeed under this head it is necessary for the Complainant to establish both that the Domain Name was registered in bad faith and that it is being used in bad faith.
In support of the contention that the Domain Name was registered in bad faith, the Complainant refers to the demand by the Respondent for reimbursement of its costs in acquiring the Domain Name (�2,012.92 in an auction) and developing the website (�2,090).
The classic form of cybersquatting is the registration of a domain name for the purpose of selling it at a profit to the trade mark owner or a competitor of the trade mark owner. Here, the Complainant approached the Respondent, who was known to be using the Domain Name for its forum site, and demanded transfer of the Domain Name. The sum the Respondent sought was the �4,102.92 identified above. Significantly, there is no evidence before the Panel to suggest that the Respondent’s website is anything other than it purports to be.
This seems to the Panel to be a very reasonable sum to demand in these circumstances, assuming in the Respondent’s favour (as the Panel must in the absence of anything to suggest the contrary) that the figures the Respondent has provided as to the costs incurred are accurate. Certainly, there is nothing about the exchange to indicate to the Panel that the Respondent registered the Domain Name with the intention of profiting out of its sale.
Is there anything else to support the contention that the Domain Name was registered in bad faith? The Panel cannot find anything. The evidence, such as it is, is that the Respondent, wishing to launch a non-commercial forum site targeted at fans of Raleigh bikes, picked the Domain Name believing it to be peculiarly apt for the purpose and has used it for that purpose.
The Complainant has asserted that what the Respondent is doing constitutes violation of the Complainant’s trade mark rights. If that is so, the Complainant will have to demonstrate that the Respondent’s use of the mark is in the course of trade, which is not something that the Complainant has established in this administrative proceeding. Even so, there is a significant difference between trade mark infringement proceedings and proceedings under the Policy. In the former there is no requirement to prove bad faith, whereas in the latter there is such a requirement and on two fronts, namely registration and use.
Having found that the Complainant has failed to satisfy the Panel that the Domain Name was registered in bad faith, it is strictly unnecessary for the Panel to deal with the question of use. However, the Panel is also not persuaded that the Respondent has used the Domain Name in bad faith. It was a mistake for the Respondent to have used the Complainant’s logo on the website, but it was removed as soon as the Complainant complained and there is nothing before the Panel to indicate that the Respondent intended to cause confusion thereby.
A form of confusion that is bound to arise is initial interest confusion among Internet users expecting to find at the Respondent’s site a site of or authorized by the Complainant. However, if, as the Respondent contends, the site in question is a non-commercial site, it is not as if that confusion is going to lead to any commercial gain within the meaning of paragraph 4(b)(iv) of the Policy.
Had there been anything before the Panel to establish that the Respondent’s site had a commercial element to it, the Panel might well have come to a different conclusion. The Panel was somewhat troubled by the fact that the site is sponsored by a commercial organization engaged in the bicycle industry, a fact which is disclosed on the website. However, the Complainant was evidently unable to make anything out of that fact (there is no reference to it in the Complaint) and it would therefore be inappropriate for the Panel to draw any inferences adverse to the Respondent.
The Panel is not satisfied that the Domain Name was registered and is being used in bad faith.
7. Decision
The Complaint is denied.
Tony Willoughby
Sole Panelist
Dated: June 19, 2008
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