WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Bel-Ray Company Inc. v. Belray Caribe, S.A., Angel Pons Roura Case No. D2008-1365 1. The Parties
The Complainant is Bel-Ray Company Inc., Farmingdale, New Jersey, United States of America represented by Novagraaf Nederland B.V., Netherlands.
The Respondent is Belray Caribe, S.A., Angel Pons Roura, Barcelona, Spain. 2. The Domain Name and Registrar
The disputed domain name (the “disputed domain name”) [throughout] is registered with Direct Information Pvt Ltd d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 5, 2008. On September 9, 2008, the Center transmitted by email to Direct Information Pvt Ltd d/b/a PublicDomainR a request for registrar verification in connection with the disputed domain name at issue. On September 10, 2008, Direct Information Pvt Ltd d/b/a PublicDomainR transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 Respondent of the Complaint, and the proceedings commenced on September 23, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 13, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 15, 2008.
The Center appointed Luca Barbero as the sole panelist in this matter on October 27, 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 an international, United States-based specialty lubricant manufacturing company providing lubricants for the food and general manufacturing industries, the mining industry and the consumer motorcycle market.
The Complainant is the owner of several trademark registrations consisting of the sign BEL-RAY for, inter alia, oils and lubricants in class 4, including in particular spray oils, shock absorber oils, industrial oils and greases such as the Spanish trademark n. 1641358 MX, registered on March 4, 1994.
The Complainant is furthermore the registrant of the disputed domain name .
The Respondent registered the disputed domain name on November 7, 2005. 5. Parties' Contentions A. Complainant
The Complainant informs the Panel that the BEL-RAY trademarks have been intensively used in commerce for many years, in over more than one hundred countries. The Complainant contends that the term “BEL-RAY” has no descriptive meaning in any language in connection with oils and lubricants products.
The Complainant states to have invested considerable time, effort and money in advertising, promoting and offering the highest standards of quality for the products offered under the BEL-RAY trademarks from Asia to Africa, North America to Europe and South America to Australia, for over sixty years.
The Complainant asserts that the BEL-RAY trademarks have become therefore a very strong global brand and that they are famous with substantial goodwill.
The Complainant contends that the disputed domain name is visually, phonetically and conceptually confusingly similar “if not almost identical to the Complainant's trademarks”.
The Complainant points out that as the website is in the Spanish language the element “SA” can be seen as merely an indication to the legal form of a Spanish company (“BELRAY” being the dominant portion of the disputed domain dame) and that consumers may very well confuse “BelraySA” as a Spanish subsidiary of the Complainant.
The Complainant points out that a cease and desist letter was sent to the Respondent on June 23, 2008 requesting the transfer of the disputed domain name to the Complainant and to cease and desist use of the name BEL-RAY or any similar sign. The Respondent was also notified that, failing such cooperation, a Complaint was to be filed. The Complainant underlines that no response has been received by the Complainant from or on behalf of the Respondent.
With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that the Complainant did not consent to the Respondent's use of the BEL-RAY mark, and that the Respondent is not commonly known by such a name.
The Complainant contends that the disputed domain links to a website on which the Respondent offers prima facie the same products that are offered by the Complainant under its BEL-RAY trademarks.
According to the Complainant, the Respondent has the intention to take unfair advantage of the reputation of the Complainant's BEL-RAY trademarks, also creating a risk of confusion among the relevant public on the market.
The Complainant asserts that the use of a domain name incorporating the Complainant's famous trademark BEL-RAY to offer identical and/or similar services “cannot be bona fide as it is misleading, confusing and tarnishing.”
With reference to the circumstances evidencing bad faith the Complainant informs that the Respondent is a former distributor of the Complainant. The Complainant underlines though that already in 1997 a Judgment of the Superior Court of New Jersey was issued against the Respondent for unauthorized use of the BEL-RAY trademarks, use of labels and manufacturing counterfeit products, awarding a total of USD 14 million as compensatory and punitive damages.
The Complainant informs that pursuant to this judgment the Respondent was amongst others ordered not to sell any products from the Complainant throughout the world, and from holding itself out as distributor of Bel-Ray products. The Respondent was also enjoined from manufacturing and/or distributing products having the Bel-Ray name, labeling and/or packaging, as well as from claiming that they have any rights to the trademarks of the Complainant throughout the world.
The Complainant alleges that the registration and use of the disputed domain name by the Respondent is as well in conflict with the verdict.
The Complainant indicates that the disputed domain name was registered and is being used primarily for the purpose of offering oils and lubricants and products related thereto, which are identical with and/or similar to the products offered under the Complainant's famous BEL-RAY trademarks.
The Complainant states that the Respondent intentionally takes unfair advantage of the reputation of the Complainant's BEL-RAY trademarks in an attempt to attract for commercial gain Internet users to the Respondent's website, by creating a likelihood of confusion with the Complainant's famous trademark BEL-RAY, all for Respondents own profits.
According to the Complainant, the Respondent is knowingly and intentionally disrupting the Complainant's business.
The Complainant contends that even if a visitor to the Respondent's site was to realize that he or she had been re-directed to another company unconnected with the Complainant, nonetheless the initial interest confusion that lured the visitor in would also support a finding of bad faith.
The Complainant concludes with reference to the issue of bad faith that the deliberate creation of initial interest confusion and the consequent diversion of Internet traffic is sufficient to establish bad faith on the Respondent's part. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A panel shall 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.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has provided evidence of ownership of a number of trademark registrations for BEL-RAY.
The Panel finds that the disputed domain name is confusingly similar to the trademarks owned by the Complainant. Pursuant to a number of prior decisions rendered under the Policy the addition of descriptive terms to a trademark is not a distinguishing feature.
Therefore, the mere addition of the word “sa”, which corresponds to the legal form “sociedad anonima” in Spain where the Respondent is located, does not exclude the likelihood of confusion between the disputed domain name and the Complainant's trade mark.
As stated in Aventis, Aventis Pharma SA. v. Dac Hung Nguyen,WIPO Case No. D2004-0252 “adding letters to the domain name is not sufficient to avoid a likelihood of confusion when [these] letters represent [the] acronym of a legal type of company […]. Therefore ‘srl', which is an abbreviation of the Italian legal form ‘Società a Responsabilità Limitata', is merely descriptive and is not distinctive enough. It is important to state that, as the Complainant mentioned, there is a risk that the Internet users may think that the disputed Domain Names belong to the Complainant or are controlled by the Complainant.”
In comparing the Complainant's marks to the disputed domain name it should also be taken into account the well established principle that the suffixes, including the generic top level domains here “.com”, may be excluded from consideration as being merely a functional component of the disputed domain name. See Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429 “the specific top level of the domain name such as ‘.net' or ‘.com' does not affect the domain name for the purpose of determining whether it is identical or confusingly similar”; Chevy Chase Bank, F.S.B. v. Peter Ojo,WIPO Case No. D2000-1770 “the accused domain name is legally identical to Complainant's trade name CHEVY CHASE BANK”).
In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademarks in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(a) before any notice to the Respondent of the dispute, its use for demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(b) that it is (as an individual, business, or other organization) has been commonly known by the domain name, even if he has not acquired any trademark or service mark rights; or
(c) that it is making a legitimate, noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent's rights or legitimate interests in respect of the domain name according to paragraph 4(a) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, it is sufficient that the Complainant shows a prima facie case in order to shift the burden of proof on to the Respondent. If a respondent fails to demonstrate rights or legitimate interests in the domain name in accordance with paragraph 4(c) of the Policy or on any other basis, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110; MetAmerica Mortgage Bankers v. Whois ID Theft Protection, c/o Domain Admin, NAF Claim No. 852581).
In the case at hand, by not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.
The Panel observes that from the record, the Respondent appears to be a former distributor of the Complainant. The Respondent is not now, and was not at the time of the registration of the disputed domain name, a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant's trademarks; indeed the Complaint and annexed judgement of Superior Court of New Jersey confirm that Respondent has no authority to use the Complainants marks.
Furthermore, there is no indication before the Panel that the Respondent is commonly known by the disputed domain name has made preparations to use the disputed domain name in connection with a bona fide offering of goods or services, or that it intends to make a legitimate, non-commercial or fair use of the disputed domain name.
The Panel shares the view of the panel in Volvo Trademark Holding AB v. Auto Shivuk,WIPO Case No. D2005-0447 where it was stated that “the Oki Data criteria are appropriate to be applied in cases, as the present case, where the complainant has not authorized the respondent to act as its distributor or and there is no contractual relationship between the complainant and the respondent”. See also Le Creuset SA v. Vineyards Direct Limited,WIPO Case No. D2004-0551 where the Panel recognized that being an authorized distributor of the complainant's goods was not a precondition of bona fide use.
The Oki Data case (Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903) sets the following conditions to be satisfied in order to find a bona fide offering of goods or services:
- The Respondent must actually be offering the goods or services at issue.
- The Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods.
- The site must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents.
- The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
In the present case, the Respondent appears to be offering prima facie BEL RAY products on the website corresponding to the contested domain name. However the Panel notes that the Respondent states on the website that it is a distributor of the Shell Company.
The Panel finds that such conduct of the Respondent is not consistent with a bona fide offering of goods or services, the shell company is a competitor of the Complainant and it cannot be excluded that Internet users were not baited and switched to other goods. See Nikon, Inc. and Nikon Corporation v. Technilab Inc.,WIPO Case No. D2000-1774 (use of Nikon-related domain names to sell Nikon and competitive cameras not a legitimate use); Kanao v. J.W. Roberts Co., CPR Case No. 0109 (July 25, 2001) (bait and switch is not legitimate).
As to the issue that the Respondent must accurately disclose the registrant's relationship with the trademark owner; and that it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official website, the Panel notes that the BEL-RAY trademark and logo was reproduced inter alia in the top left corner of the website corresponding to the disputed domain name.
The Panel also notes that the Complainant's slogan “Total Performance Lubricants” is reproduced on such website.
Again the Panel finds such a conduct is not consistent with a bona fide offering of goods since it does not accurately disclose the registrant's relationship (or lack thereof) with the trademark owner nor can the Panel consider such use a legitimate, noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark as decided. Houghton Mifflin Co. v. Weathermen, Inc.,WIPO Case No. D2001-0211 (no bona fide offering where website's use of Complainant's logo, and lack of any disclaimer, suggested that website was the official Curious George website).
Furthermore the Panel observes that pursuant to the decision of the Superior Court of New Jersey, the Respondent is enjoined from selling any products from the Complainant throughout the world, and from holding itself out as distributor of Bel-Ray products. The Respondent is also enjoined from manufacturing and/or distributing products having the Bel-Ray name, labeling and/or packaging, as well as from claiming that they have any rights to the trademarks of the Complainant throughout the world.
Thus, on balance, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the holder has registered or 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 holder's documented out-of-pocket costs directly related to the domain name; or
(ii) the holder 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 holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder'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 holder's website or location or of a product or service on the holder's website or location.
As to bad faith at the time of the registration the Panel notes that in light of the fact that the Respondent was a former distributor of the Complaint, the Respondent was certainly aware of the Complainant's trademark (Herbalife International, Inc. v. Surinder S. FarmahaWIPO Case No. D2005-0765).
The Panel notes that in view of the judgement of the Superior Court of New Jersey dated January 3, 1997, the Respondent was certainly well aware of the Complainant's trademarks at the time of the registration of the disputed domain name on November 7, 2005. See Ideenhaus Kommunikationsagentur GmbH v. Ideenhaus GmbHWIPO Case No. D2004-0016 where the Panel found that “The Respondent had active knowledge of the Complainant's trademark rights when he acquired the Domain Name because the action against him before the German regional court was at least pending, if not decided. Therefore, the Panel finds that this acquisition (registration) occurred in bad faith.”
As to the use in bad faith, the Panel finds paragraph 4(b)(iv) of the Policy to be applicable in this case since the Internet users, in light of the contents of the web page containing the reproduction of the BEL-RAY registered figurative trademark together with the motto “Total Perfomance Lubricants” , may be misled on the source, sponsorship, affiliation, or endorsement of the Respondent's website.
In accordance with prior decisions, the Panel also finds that a failure to respond to a cease and desist letter can be evidence of bad faith. See, e.g., Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787. Any such bad faith is compounded when the domain name owner upon receipt of notice that the domain name is identical or confusingly similar to a registered trade mark, refuses to respond. Such conduct is not consistent with what one reasonably would expect from a good faith registrant accused of cybersquatting.”
As a last remark in connection with bad faith use, the Panel concurs with the views expressed in Ideenhaus Kommunikationsagentur GmbH supra where the Panel stated that “where (1) a domain name cannot be used by the Respondent according to a final judgment against such Respondent, […] the Domain Name is used in bad faith.”
In the circumstances, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith. 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 the Complainant.
Luca Barbero
Sole Panelist
Dated: November 11, 2008
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