WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION IVECO S.p.A. v. Zeppelin Trading Company Limited Case No. D2008-1725 1. The Parties
The Complainant is IVECO S.p.A. of Torino, Italy, represented by Garibaldi Giani Associati, Italy.
The Respondent is Zeppelin Trading Company Limited of Northwood, Middlesex, United Kingdom of Great Britain and Northern Ireland, represented by Sprecher Grier Halberstam LLP, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 10, 2008. On November 11, 2008, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On November 11, 2008, Tucows Inc. transmitted by email to the Center its verification response, confirming that:
(a) the disputed domain name was registered with Tucows, Inc.;
(b) the Respondent is listed as the registrant of the disputed domain name;
(c) the contact details for the Respondent set out in the Complaint (apart from the Administrative Contact's fax) are correct;
(d) the disputed domain name is subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”);
(e) the domain name had been placed on registrar lock; and
(f) the registration agreement for the domain name was in English.
The Center verified that the Complaint satisfied the formal requirements of 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 November 14, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 4, 2008. The Response was filed with the Center on December 3, 2008, requesting that the dispute be determined by a three member Panel; the necessary additional fee having been paid on or about that date.
The Center appointed Warwick A. Rothnie, Nicolas Ulmer, and Torsten Bettinger as panelists in this matter on January 20, 2009. 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
According to the Complaint, the Complainant is the leading company of the Iveco group. It is an international manufacturer and supplier of commercial trucks, parts, and diesel engines. It employs over 24,500 people and has 28 production units in 16 countries. Apart from Europe, it operates in the People's Republic of China, the Russian Federation, Australia, Argentina, Brazil, and South Africa.
The Respondent deals in IVECO spare parts. It is not, however, an authorized dealer. According to the Response, the Respondent buys genuine parts placed on the market in the European Union by or with the consent of the Complainant and resells them from its premises located near London in the United Kingdom at cheaper prices than many members of the Complainant's official dealer network. It has been carrying on this business for 14 years.
The Respondent registered the domain name on May 22, 2006. The registration is current until 2012.
The domain name resolves to a website. The heading banner states the Respondent's name prominently and clearly:
“Zeppelin Trading Co. Ltd
IVECO PARTS SPECIALISTS”
The company name is in significantly larger type than any other words on the home page.
Immediately under this banner are some “tabs” or “links” headed, respectively, “Home”, “Mail Order”, “Products”, “Trade”, and “Contact Us”.
Then, underneath the tabs are some text and several photographs of vehicle parts, some in what appears to be IVECO brand packaging. The opening paragraphs of the text read as follows: “Iveco Parts and Spares
Welcome to Zeppelin Trading - Cheap Iveco Parts Website!
We are an independent Iveco parts and spares specialist based in London dealing in genuine and new parts only.
One of our greatest strengths is our comprehensive range of iveco truck parts, iveco van parts and iveco car parts. We hold over 4000 lines of Iveco parts and spares …” (emphasis in original).” 5. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant has the burden of proof in respect of the following three elements:
(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 and is being used in bad faith. A. Identical or Confusingly Similar
There are two parts to this inquiry: does the Complainant have trademark rights in a sign and, if so, is the disputed domain name identical or confusingly similar to that mark?
The Complaint includes details of the Complainant's ownership of a number of registered trademarks for IVECO or IVECO PARTS for goods and services in International Classes 7, 9, 12, and 37. The details of the registrations for IVECO PARTS included in the Complaint show it to be a figurative mark with the word PARTS represented on a diagonal along the hypotenuse of a triangle underneath the word IVECO. The registrations for IVECO alone are for a word mark only.
The Complainant also contends that its IVECO marks are widely known, pointing out that the Complainant operates directly in 16 countries and through an extensive network of 4,600 service outlets in a further 100 countries.
The Complaint does not include illustrations of either of the registered trademarks in use. However, the Respondent's website contains a number of illustrations of the IVECO word mark, at least, in use on packaging.
In these circumstances, the Panel finds that the Complainant clearly has trademark rights in at least the registered trademarks IVECO and IVECO PARTS. It also appears highly likely that the Complainant has rights in at least IVECO as an unregistered trademark. In the event, nothing turns on whether or not the unregistered rights are sufficiently proved since, as appears from the discussion below, it is not in dispute between the parties that the domain name was registered with knowledge of the Complainant's rights.
Turning to the second part of the inquiry whether or not the domain name is confusingly similar to the Complainant's trademarks, the Complainant relies on those cases which have held that a domain name incorporating the whole of a trademark is confusingly similar to the trademark and, further, contends that the Complainant's trademarks are the distinctive component of the disputed domain name. The Complainant also relies on the potential for “initial interest confusion”.
On the other hand, the Respondent contends that the domain name accurately describes what it offers for sale and so no-one is or could be confused. In this connection, the Respondent also points out that there is no evidence of actual confusion although the domain name has been in use since 2006. The Respondent also points out that other decisions about particular domain names being confusingly similar to other trademarks are decisions on their facts and are of no assistance in other cases on different facts.
The Panel acknowledges that a decision that a domain name different to the one in suit was confusingly similar to another trademark is not determinative of the outcome in this dispute. The question under the Policy is whether or not the Respondent's domain name is confusingly similar to the Complainant's proved trademark rights. The question of identity or confusing similarity for the purposes of the Policy requires a comparison of the domain name to the trademark rights which have been proved. This is a different test to that involved in trademark law where questions of the goods or services covered by the trademark rights can be relevant to the likelihood of confusion: see for example Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol,WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin,WIPO Case No. D2002-0420. That is, the question is simply one of comparison of the domain name in suit to the proved trademark or trademarks.
The Panel finds that the distinctive component of the domain name is the term “Iveco”. So far as the Panel is aware, and neither party to the dispute contended otherwise, it is an invented or coined term. The other terms in the domain name are purely descriptive or, in the case of the gTLD “.com”, functional. The presence of IVECO in the domain name, which appears to be a coined or invented word, communicates or suggests some association with or relationship to the particular trade source lying behind or associated with the trademarks.
The inclusion of the term “cheap” in the domain name does not dispel that communication or suggestion. The term “cheap” does not necessarily connote independence from the Complainant. Moreover, just as the question of what goods or services are covered by the Complainant's trademark(s) is not relevant at this stage of the inquiry, so also is the fact (if it be established as a fact) that the Respondent sells only genuine goods. Even on the Respondent's case, the domain name is intended to communicate to potential viewers some sort of association with the Complainant – on the Respondent's case, that it is dealing in genuine goods. At this stage of the inquiry, that is sufficient to give rise to a finding of confusing similarity.
Accordingly, the Panel finds that the domain name is confusingly similar to the Complainant's trademarks. B. Rights or Legitimate Interests
The second factor that the Complainant is required to establish is that the Respondent has no rights or legitimate interests in respect of the domain name.
Paragraph 4(c) of the Policy sets out three non-exhaustive examples of rights or legitimate interests for the purposes of the Policy. They are:
“(i) before any notice to you of the dispute, your use of, or 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
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.”
In view of the difficulty in disproving a negative, the Complainant must adduce sufficient material to raise a prima facie case under this factor and then an evidential burden shifts to the Respondent to rebut that prima facie case. For convenience the Panel refers only to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview”), paragraph 2.1.
First, the circumstances indicated in paragraph 4(c)(ii) and (iii) are not applicable in this case. The Respondent is unabashedly using the domain name for commercial purposes to resell genuine products of the Complainant. The domain name is not derived from the Respondent's name, and the Respondent does not make any claim that it is or has been commonly known by the domain name.
It is also not in dispute between the parties that the Respondent knew of the Complainant's trademark rights (whether registered or unregistered) before registering the domain name. As already noted, the Respondent claims to have been selling genuine IVECO parts and spares for 14 years. Its business model is predicated on people recognizing the brand name or trademark IVECO.
Rather, the dispute between the parties is focused on the Respondent's status as an unauthorized or unofficial dealer in the Complainant's products.
The Complainant contends that the Respondent is not using the domain name in connection with a bona fide offering of goods or services. The Complainant's primary arguments contend that the Respondent's use of the Complainant's trademarks in the domain name is not bona fide because the Respondent's activities are unauthorized, going beyond any kind of legitimate descriptive use. The lack of bona fides is said to be further evidenced by the Respondent's clear intention to set up “a parallel network of unauthorized Iveco parts dealers”. The Complainant appears to contend that the lack of authorization by the Complainant is fatal to the Respondent's bona fides. The Complainant further contends that the use of the domain name is not necessary for the Respondent's activities which the Complainant characterizes as “the sale of ‘Commercial Vehicle Accessories & Parts'” or “Motor Parts and Accessories” or “Commercial Vehicle Servicing, Repairs, Parts & Accessories” by reference to the trade directories which the Respondent advertises in.
As summarized in the WIPO Overview at paragraph 2.3, UDRP panels have been split on this question. A minority have taken a position similar to that advocated by the Complainant and required the respondents to have express permission from the trademark holder. However, the majority view (represented for example by the decision in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903) is that:
“A reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements. These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site accurately disclosing the registrant's relationship with the trademark owner. The respondent must also not try to corner the market in domain names that reflect the trademark.”
WIPO Overview, paragraph 2.3. As the Respondent points out, the principles laid down in Oki Data Americas, Inc., supra, have been held equally applicable to unauthorized dealers: e.g., Volvo Trademark Holding AB v. Auto Shivuk,WIPO Case No. D2005-0447; Magma Products Inc. v. Herb Halling,WIPO Case No. D2007-0995; and ITT Manufacturing Enterprises, Inc., ITT Corporation v. Douglas Nicoll, Differential Pressure Instruments, Inc.,WIPO Case No. D2008-0936.
In the present case, the Respondent is actually offering the goods in issue, namely, genuine IVECO brand parts.
The Respondent admits that it sells some Bosch brand parts as part of its business. It says, however, that 98% of its business is the sale of genuine IVECO products. The Panel would on balance in this particular case find this sufficient for compliance with the Oki Data criteria. In any event, the Respondent claims also that it does not offer to sell the Bosch brand parts from the website to which the domain name resolves. The Complainant does not contend to the contrary. Review of the materials for the Respondent's website at the disputed domain name included in the Complaint do not disclose any dealing in brands of products other than IVECO products.
As noted above, the Respondent's website clearly states that the Respondent is an independent dealer in genuine IVECO products. The Complainant argues that this is insufficiently clear to qualify as adequate disclosure of the relationship between the parties. The Panel is unable to agree. The website is not misleading on this point. The disclosure is not buried in some obscure part of the website. It appears very early and, as already noted, clearly on the website. The website states “We are an independent Iveco parts and spares specialist based in London dealing in genuine and new parts only.” The use of the description of the business as “independent” is both accurate and clear.
The suggestion that the Respondent does not “need” the name, based on the categories it advertises under in a trade directory, is in the Panel's view unduly restrictive and unrealistic all the more so as it cannot be credibly contended that the Respondent has attempted to corner the market in domain names that reflect the trademark. The Complainant has not presented evidence that Respondent has registered numerous IVECO-related domain names. The Complainant itself has in fact registered what may be regarded as the primary domain name . Further, no evidence was produced by the Complainant that the Respondent has registered domain names consisting of famous trademarks to corner the market for such products or to deprive the trademark owner of reflecting its own mark in a domain name. The evidence before the Panel is that the Respondent has registered a single domain name. On the evidence before the Panel, that domain name accurately describes the business operated by the Respondent which the domain name is used in. The Respondent is not using the domain name in a manner consistent with a typical case of cybersquatting, such as to simply post pay-per-click links to competitors of the Complainant.
The Complainant does not contend that the use of the domain name by the Respondent in connection with the Respondent's business violates any law applicable in the United Kingdom or the European Economic Area.
Accordingly, while the Complainant raised a prima facie case, it has been successfully rebutted by the Respondent which has on the record in the present case demonstrated to the Panel's satisfaction that it has rights or legitimate interests in the domain name. C. Registered and Used in Bad Faith
As the Respondent has been found by the Panel to have rights or legitimate interests in the domain name and is using it consistently with those rights or interests, there is no basis for finding that the Respondent has registered or used the domain name in bad faith. 6. Decision
For all the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Presiding Panelist
Nicolas Ulmer
Panelist
Torsten Bettinger
Panelist
Date: February 3, 2009
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