WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Maree Gaye Miller v. Peter Horner Case No. D2008-1492 1. The Parties
The Complainant is Maree Gaye Miller, of Australia, represented by Cullen & Co., Australia.
The Respondent is Peter Horner, of Spain. 2. The Domain Name and Registrar
The disputed domain name is registered with Easyspace. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 1, 2008. On October 3, 2008, the Center transmitted by email to Easyspace a request for registrar verification in connection with the disputed domain name. On October 6, 2008, Easyspace 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” or “UDRP”), 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 October 13, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 2, 2008. The Proceedings were suspended on October 22, 2008 until November 21, 2008. The Proceedings were reinstituted on November 21, 2008. The due date for Response was December 2, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 4, 2008.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on December 15, 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.
Under paragraph 12 of the Rules, the Panel has the discretion to call for additional documents from the parties. On reviewing the file, the Panel found that an email communication, referred to by the Complainant had not been filed in original. Upon request by the Panel to submit the original email, the Complainant filed the said email on December 21, 2008. 4. Factual Background
The Complainant, Maree Gaye Miller, is the owner of the community trademark registration 005038716 for the EZY TAPER mark in international classes 7, 8 and 9 for following products:
Class 7: Machines and making signs
Class 8: Manual sign writing equipment; manual cutting equipment for sign writing media including vinyl; manual dispensing equipment for sign writing media, including vinyl and application media; manual applicators for applying tape to sign writing media such as vinyls, including presses, squeegees, rollers, nip rollers, all included in class 8; equipment for manual removal of protective backings of sign writing media.
Class 9: Sign writing equipment, such as printing devices, hardcopy of output devices and computer output devices, in particular printers, plotters, copier and printing hardware components.
The community trademark registration 005038716, shows the application claims priority from an Australian filing dated October 25, 2005.
The Respondent, Peter Horner registered the disputed domain name on November 16, 2005. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its registered trademark EZY TAPER, as it consists of its mark and the word “europe”. According to the Complainant, the disputed domain name would indicate to users that it is the Complainant's European domain name affiliated with the Complainant's European EZY TAPER trademark.
The Complainant states the Respondent is the principal of “Ezy Taper Europe”, the former European distributor of the Complainant. The Complainant admits that the Respondent in his capacity as a former distributor had the legitimate right to register the domain name. The Complainant alleges the distribution agreement was terminated, and the Respondent presently has no rights or legitimate interest in the trademark. Upon termination of the agreement the Respondent was required to return the domain name to the Complainant. The alleged agreement has not been filed to support the Complainant's statements.
The Complainant contends that since the termination of the distribution agreement, the disputed domain name is not being used for a bona fide offering of goods or services. According to the Complainant, three goods are being offered by the Respondent's website and these goods are closely related to the European EZY TAPER trade mark. The Complainant states the Respondent is not known by the domain name, but as a former distributor of the Complainant; consumers are likely to associate the domain name with the Complainant and its goods rather than with the Respondent and its goods.
The Complainant states that the Respondent does not use the domain name for non commercial or fair use purposes, but uses it to mislead consumers for commercial gain and to tarnish the Complainant's trademark. The evidence, according to the Complainant is, firstly, an email received by the Complainant which had confused the Respondent's website for the Complainant's business, and secondly, disparaging remarks about the Complainant's products in a chat site were allegedly made by the Respondent under his wife's maiden name. The Complainant has filed no documents to substantiate these claims.
The Complainant states the domain name was registered and is being used in bad faith by the Respondent for the reason that, it is being used to attract Internet uses through a false association with its mark. The Complainant goes on to state that one of the three products being offered on the Respondent's website is a patented product. The Complainant claims it has a pending European patent application for that product, and this is an additional reason for consumers to believe that goods sold through the site are those of the Complainant.
The Complainant requests the transfer of the domain name to it. B. Respondent
The Respondent did not file a response in these proceedings, but on October 16, 2008, the Complainant informed the Center that there was a possibility of settling the dispute based on an email received from the Respondent. In that email, the Respondent states the website was set up by Warrick Pye and Maree Miller in 2005 and further mentions that, the Respondent stopped being the distributor in December 2007, due to the high failure rate (40 percent) of the Complainant's products. The email goes on to state:
“Warrick Pye was quite happy to do nothing about the website as we were always and still to date received complaints about machines not functioning or breaking. We have asked for the website to be closed by easyspace but they say it must be done by the originator being Warrick as we don't have the software or know how to stop it.”
The user name and password for the domain name were provided by the Respondent to the Complainant along with the remark – “We are happy to not have to deal with the high rate of complaints from machines sold before December 2007 ….. The company has stopped trading in January 2008”.
The Complainant contacted the Respondent by email on October 22, 2008, November 6, 2008 and November 20, 2008, and requested the Respondent to sign a formal undertaking for filing with the registrar to effectuate the transfer of the domain name. The Respondent replied on November 27, 2008 stating that due to the death of a close family member he was not in office and was unable to send the signed document as requested by the Complainant. Being unable to get the signed document from the Respondent within the stipulated period, the Complainant requested for reinstitution of the present dispute. 6. Discussion and Findings
The Policy apart from providing trademark owners a remedy for recovering of domain names which bear their mark, also serves a basic underlying public policy purpose; which is to prevent deception and confusion to users, regarding the source of the trademark.
The Policy requires the Complainant in a domain name dispute to establish the three elements under paragraph 4(a) of the Policy to obtain the remedy of transfer or cancellation of the domain name. These three elements are:
(i) The domain name registered by the Respondent is identical or confusingly similar to a 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 was registered and is being used in bad faith by the Respondent. A. Identical or Confusingly Similar
The first element under paragraph 4(a), requires the Complainant to establish that the domain name registered by the Respondent is identical or confusingly similar to a mark in which it has rights.
The Complainant has provided evidence of its Community trademark registration for its mark EZY TAPER, which establishes its ownership of the said mark. It is evident that the disputed domain name consists of the Complainant's EZY TAPER trademark with the geographic term “Europe”.
The Panel finds the domain name is confusingly similar to the Complainant's mark as it was admittedly registered by the parties to reflect the Complainant's mark for the European market. In any event, it is well established that adding a geographic suffix or prefix, such as “europe”, to a mark has little significance while comparing the domain name to the trademark, and it generally does not eliminate the likelihood of confusion. See Nike Inc. v. Jaiek Jung,WIPO Case No. D2000-1471, regarding the domain names , , and and Inter-IKEA v. Polanski,WIPO Case No. D2000-1614, regarding domain name .
The Panel finds that the Complainant has satisfied the requirement under the first element of the Policy paragraph 4(a). B. Rights or Legitimate Interests
The second element under paragraph 4 (a) of the Policy, requires the Complainant to present a case that shows the Respondent lacks rights and legitimate interests in the domain name.
The Complainant's case is that the Respondent has registered the disputed domain name in his capacity as its European distributor. The initial registration was legitimate, but as the distributorship agreement has been revoked, the Respondent no longer has legitimate rights or interests to use the domain name and ought to have transferred it to the Complainant after the termination of the distributorship agreement. The present use of the domain name by the Respondent is not an authorized or legitimate use.
The Complainant alleges that the Respondent is offering goods which are “closely related to the European EZY TAPER trade mark”. The Panel finds the Complainant has not substantiated its allegations with any evidence. Furthermore, the Complainant's statements are contradictory: while on the one hand the Complainant has stated that the Respondent is trying to unfairly gain by a false affiliation with the Complainant's goods and mark; on the other hand the Complainant states the Respondent is making disparaging remarks about the Complainant's goods. If the Respondent was indeed seeking to gain from the Complainant's mark, there seems to be no logical reason why he should be making disparaging remarks about the Complainant's goods.
The Panel finds the arguments made by the Complainant regarding the alleged disparaging remarks made in a chat site about the Complainant's product by the Respondent, does not help the Complainant's case. This allegation has no relevance to these proceedings, and the Panel shall disregard such irrelevant arguments advanced by the Complainant.
The single email alluded to by the Complainant, where a customer had confused the Respondent's website for the Complainant's business, again does not convince the Panel of Respondent's lack of rights or legitimate interests in the disputed domain name. The Respondent being none other than the Complainant's erstwhile authorized distributor it is bound to be confused with the Complainant's business.
In short, the Panel finds the Complainant has not put forward convincing arguments or supporting evidence to persuade the Panel of its case; nonetheless the Panel finds that the case is not completely devoid of merits.
The Panel finds the domain name was registered when the parties were admittedly in a business relationship and the Complainant had knowledge of the registration and had approved the registration. Although the Complainant has not filed a copy of the distributor agreement, the email correspondence between the parties clearly shows the existence of such a relationship between the parties and the subsequent termination of the relationship.
Panels in prior cases have provided some guidelines for assessing domain name disputes with similar fact patterns. It was observed by the panel in R&M Italia SpA , Tycon Technoglass Srl v. EnQuip Technologies Group, Inc., WIPO Case No. D2007-1477, that three aspects are generally found present in such disputes: first, the parties were in a contractual relationship such as a distributorship agreement, second, the distributorship agreement or contract is not filed in the proceedings, third, the Complainant's contentions are not denied by the Respondent.
In such situations, the panel in R&M Italia SpA, supra, observed that in resolving such domain name disputes, the following ought to be considered:
Firstly, the respondent's authority to register and use the domain name is given under certain terms and conditions; breach of those conditions would amount to withdrawing the bona fide characteristics of the registration.
Secondly, the evidence of breach of such conditions is the registrant refusing (or neglecting) to transfer the domain name to the trademark owner upon the termination of the agreement.
Thirdly, any claims, set-offs or cancellations, such as marketing expenses have to be resolved in another appropriate forum.
In the present case, as in R&M Italia SpA, supra, no distributor or agency agreement has been filed in the proceedings, there is the failure on the part of the registrant to transfer the domain name back to the trademark owner and the submissions of the Complainant have not been denied by the Respondent.
Rights or legitimate interest may be found for sales or service agents on the fulfillment of certain requirements described in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; which is not found here. Unlike the facts in Oki Data id., the present case relates to the holding of the domain name by a terminated authorized distributor. The facts here are therefore akin to the facts in R&M Italia SpA supra, rather than to Oki data supra.
Having considered the facts and circumstances, the Panel finds, the Respondent has indicated his willingness to transfer the domain name to the Complainant (although having failed to do so within the given time), which amounts to a tacit admission by the Respondent of his lack of rights or interests in the domain name.
The Panel finds that, under paragraph 4(a)(ii) of the Policy, the Respondent lacks rights and legitimate interests in the domain name. C. Registered and Used in Bad Faith
The third element under paragraph 4(a) of the Policy requires the Complainant to establish that the domain name was registered and used in bad faith.
The Panel has carefully considered the submissions of the Complainant made under the third element of the Policy. The Panel finds the domain name appears to be parked with the registrar, Easy Space, and is not being used by the Respondent to offer its products, as asserted by the Complainant. The Complainant's next allegation that the Respondent uses the domain name to offer the Complainant's patent pending products are unsupported and the Panel finds these allegations are not relevant, particularly in the light of the above finding that the Respondent does not appear to be using the domain name for selling goods.
The Panel however finds that it is about one year since the agreement has been admittedly terminated. The Respondent had sufficient time to return the domain name back to the trademark owner, but has failed to do so. In R&M Italia SpA, supra, discussed above, it was held that the non return of the domain name by the distributor to the trademark owner in a breach of the agreement is bad faith under the Policy therefore bad faith can be found when there is an omission to transfer the domain name back to the Complainant. The only difference in the present case is the tacit assent by the Respondent to transfer the domain name. However, the fact remains that the Respondent has not acted on his intentions to transfer the domain name back to the Complainant, the owner of the trademark.
If a former distributor fails to hand over the domain name to trademark owner, bad faith registration and use can be found. The reason being that when the distributorship arrangement is terminated there is no good faith reason for the Respondent to retain the domain name. The registration of the domain name can lose its bona fide if the registrant subsequently breaches the terms on which he registered the domain name. See UVA Solar GmbH & Co K.G v. Mads Kragh,WIPO Case No. D2001-0373, and R&M Italia SpA, supra,. Under the present circumstances, as discussed above, the Panel finds there are grounds to find such bad faith, as the Respondent is not authorized to use the domain name and any future use by the Respondent would constitutes a false association with the mark.
Finally, the Parties to the dispute are not in disagreement regarding the transfer of the domain name to the Complainant. It is appropriate to transfer the domain name to the Complainant if the Respondent consents to transfer the domain name, and the requirements under paragraph 4(a) of the Policy are fulfilled. See Lonely Planet Publications Pty Ltd v. Hoang Anh Minh and , WIPO Case No. D2003-0355; eM, Inc.v. Mp3DownLoadCity,WIPO Case No. D2004-0967 and Sanofi-Aventis v. Day Corporation,WIPO Case No. D2004-1075.
The Complainant has put forward a rather slipshod case and the submissions made by the Complainant were, for the most part unsupported. The Panel's decision is predominantly based on the facts and circumstances in the present case that the parties were not in disagreement regarding the transfer of the domain name to the Complainant.
Accordingly, it is found that the requirement under paragraph 4(a)(iii) of the Policy have been fulfilled. 7. Decision
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.
Harini Narayanswamy
Sole Panelist
Dated: December 29, 2008
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