WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Bechstein Pianofortefabrik AG v. Courtney Pianos Case No. D2008-1529 1. The Parties
Complainant is C. Bechstein Pianofortefabrik AG, Berlin, Germany, represented by the law firm Ruschke Hartmann Madgwick & Seide, Germany.
Respondent is Courtney Pianos, Oxford, England, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 6, 2008. On October 8, 2008, the Center transmitted by email to Tucows a request for registrar verification in connection with the disputed domain name. On October 8, 2008, Tucows transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. Further communication between the Center and Tucows clarified the apparent discrepancy.
In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on October 21, 2008. The Center verified that the Complaint as amended 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 October 29, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 18, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on November 19, 2008.
The Center appointed Richard G. Lyon as the sole panelist in this matter on November 26, 2008. The Panel finds that it was properly constituted and has jurisdiction1 over this proceeding. The Panel has submitted his 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
Complainant makes and sells musical instruments, including pianos. Complainant owns registered trademarks for BECHSTEIN or C. BECHSTEIN in at least twenty countries, including the United Kingdom of Great Britain and Northern Ireland. Some of these trademarks were registered more than fifty years ago and indicate use in commerce for pianos since the nineteenth century.
Respondent owns and operates a business based in Oxford, England, for repair and restoration of “Traditional and Antique” pianos. According to the website at the disputed domain name, Respondent also sells such pianos and newer pianos and provides various valuation and consulting services related to pianos. It is unclear when Respondent first registered the disputed domain name. Tucows' registration information indicates that its latest registration occurred in April 2008; the “Wayback Machine” at “” indicates similar content from March 2004 through February 2005, with no use after the latter date. The first page an Internet user receives when entering the disputed domain name into her browser is entitled “A Brief History” and consists of summary information about Bechstein pianos from the birth of Carl Bechstein in 1826 through the present. Elsewhere at this website Respondent offers for sale vintage pianos, including those made by Complainant and other famous makers such as Bosendorfer.
Complainant's counsel sent a letter to Respondent on July 31, 2008, demanding transfer of the disputed domain name, to which no reply was received. 5. Parties' Contentions A Complainant
Complainant contends as follows:
The disputed domain name has as its principal feature the word “Bechstein”, which either by itself or with the initial “C” is a trademark registered by Complainant in many countries for musical instruments, in particular pianos. The disputed domain name is thus confusingly similar to Complainant's mark.
Complainant has used its marks for pianos for over a century and has registered marks incorporating the word “Bechstein” for over fifty years. The marks are famous all over the world among musicians. Complainant has not licensed Respondent to use its marks; Respondent uses the disputed domain name in connection with the sale of pianos, indicating Respondent's knowledge of Complainant and its marks; Respondent has not been commonly known by the disputed domain name; and Respondent's use of the disputed domain name is clearly commercial. Respondent thus cannot meet any of the defenses listed in paragraph 4(c) of the Policy.
Respondent, a piano dealer, registered and has used the disputed domain name intentionally to attract Internet users to its own website by creating confusion with Complainant's marks, misleadingly suggesting endorsement by Complainant of Respondent's website and business. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings A Identical or Confusingly Similar
The disputed domain name consists of Complainant's registered mark and the word “pianos,” Complainant's principal product. The Panel finds it is therefore confusingly similar to Complainant's mark, satisfying the requirements of paragraph 4(a)(i) of the Policy. B Rights or Legitimate Interests
From its website it appears that the pianos sold by Respondent as Bechsteins are the genuine article, perhaps refurbished by Respondent. Complainant does not argue otherwise. Separate from the registration and use of the disputed domain name, Respondent's business has the appearance of legitimacy in the everyday sense of the word, as it operates under its own name, provides services not dependent upon the disputed domain name, pays its taxes, and otherwise appears to operate according to law.
Under well-established Policy precedent, however, Respondent's use of the disputed domain name is not legitimate for purposes of paragraph 4(a)(ii) of the Policy. Complainant has not licensed Respondent to use its marks. Respondent's business is not known by the word “Bechstein” independently of the disputed domain name; to the contrary, to reach a description of Respondent's services, an Internet user must click on links to Respondent's registered name, Courtney Pianos. Respondent's site is undeniably commercial.
Under certain circumstances a reseller may hold a legitimate interest in a domain name incorporating the manufacturer's mark. The most comprehensive explication of a reseller's rights in this regard is the oft-cited Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903.2 The panel in the Oki Data case required an authorized reseller “at the minimum” to show (among other things) that it was using the site “to sell only the trademarked goods” and that “[t]he site must accurately disclose the registrant's relationship with the trademark owner.” None of these conditions obtains in the present proceeding: Respondent is an unauthorized reseller that sells both Bechstein and other model pianos. Not only does Respondent fail to identify expressly its relationship with Complainant, much of its web site's text (such as the history of C. Bechstein, described above) implies some affiliation with or authority from Complainant. At the very least this text illustrates Respondent's use of Complainant's marks to attract Internet users to its own site, conduct cited as an example of bad faith in paragraph 4(b)(iv) of the Policy.
According to the Wayback Machine, the disputed domain name has been used in much the same manner as today as early as March 2004. There is, however, no laches or estoppel defense available in Policy proceedings.3 In limited circumstances lengthy continuous use might entitle a respondent to invoke the safe harbors of paragraphs 4(c)(i) or 4(c)(ii) of the Policy, but nothing in the record indicates that those provisions should apply in this proceeding. The Wayback Machine indicates no use at all after 2005.4 There is no suggestion that Complainant approved or acquiesced in Respondent's use; rather Complainant wrote its cease-and-desist letter very shortly after Respondent's 2008 renewal of the disputed domain name.
Complainant has met its burden of proof under paragraph 4(a)(ii) of the Policy. C Registered and Used in Bad Faith
For the reasons set out in the preceding section, Respondent's use of the disputed domain name illustrates classic cybersquatting: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.” Policy, paragraph 4(b)(iv). The text on Respondent's web pages reveals knowledge of Complainant's marks, establishing that its registration as well as use was in bad faith. Complainant has satisfied paragraph 4(a)(iii) 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.
Richard G. Lyon
Sole Panelist
Dated: December 3, 2008
1 The Center's records indicate that both electronic mail and hard copy versions of the Complaint were delivered to Respondent, so there is no question that Respondent duly received notice of this proceeding.
2 Oki Data represents only the majority view on the question of when a reseller's use of the manufacturer's mark is “legitimate” under paragraph 4(a)(ii), but the minority view is even stricter: WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.3. “Without the express permission of the trademark holder the right to resell the trademark holder's products does not create a right to use the trademark as the basis for a domain name.” There is no showing here to indicate any such permission.
3 E.g., HRB Royalty, Inc. v. Asif Vadaria,WIPO Case No. D2007-1658 (“The fundamental difficulty for a respondent claiming laches or the like is that there is nothing either in the Policy or the Rules that suggests that such a doctrine should apply.”).
4 Normally the Wayback Machine does not collect its archived pages until several months after posting, so archives for 2008 would likely not be available.
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