WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION NA PALI SAS v. BWI Domains, Domain Manager Case No. D2008-1859 1. The Parties
The Complainant is NA PALI SAS, Saint Jean de Luz, France, internally represented.
The Respondent is BWI Domains, Domain Manager, West Bay, Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of United Kingdom. 2. The Domain Name and Registrar
The disputed domain name is registered with R Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2008. On December 3, 2008, the Center transmitted by email to R Corp. a request for registrar verification in connection with the disputed domain name. On December 4, 2008, R Corp. 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 December 10, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 30, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 5, 2009.
The Center appointed Petter Rindforth as the sole panelist in this matter on January 13, 2009. 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.
On January 19, 2009, the Panel issued an Administrative Panel Procedural Order No. 1, referring to the fact that the trademarks referred to by the Complainant are registered in the names of two third-party companies. The Panel Order requested the Complainant to provide the Panel with documentation supporting Complainant's statement that it has rights in the referred trademarks. The Complainant was given until January 23, 2009, to provide the Center with the said documentation. Complainant's reply to the Panel Order was timely received by the Center on January 20, 2009.
The Panel shall issue its Decision based on the Complaint, the reply to the Administrative Panel Procedural Order No.1, the Policy, the Rules, the Supplemental Rules, and without the benefit of any Response from the Respondent. The case before the Panel was conducted in the English language. 4. Factual Background
The Complainant, a simplified joint stock company under French law, is a licensee of the QUIKSILVER trademarks in Europe.
QUIKSILVER is registered as a trademark in the name of QS Holdings Sarl in France (Nos. 1585515, 1559827, 1515539), as a Community Trademark (Nos. 7057144, 3479045, 2038552) and as International Registration (Nos. 861099, 815264, 905125).
The Respondent registered the domain name on March 6, 2007. No detailed information is provided about the Respondent's activities, apart from what is mentioned below by the Complainant. 5. Parties' Contentions A. Complainant
The Complainant argues that the disputed domain name is confusingly similar to the QUIKSILVER trademark “registered by the company NA PALI SAS / Quiksilver Europe” and further informs that the Complainant distributes and commercializes products under the QUIKSILVER trademark. The Complainant states that confuses the consumers to believe that this is the URL to the official European QUIKSILVER web site.
According to the Complainant, the Respondent has no legitimate rights to the domain name, as Respondent is not commonly known under the same and is only used for a web site with commercial links.
The Complainant suggests that the Respondent registered and used the domain name in bad faith, in an attempt to attract, for commercial gain, Internet users to its web site, by creating a likelihood of confusion with the QUIKSILVER trademark. The Complainant states that the Respondent is the owner of more than 37, 449 domain names, concluding that Respondent may also have registered for the intention to sell the same to the Complainant.
The Complainant requests that the Panel issue a decision that the domain name be transferred to the Complainant.
As a reply to the Administrative Panel Procedural Order No. 1, the Complainant has presented two Certificates from (i) the previous and (ii) the current registered owners of the QUIKSILVER trademark, confirming the Complainant's status as the exclusive European licensee. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the Respondent's domain name is identical or confusingly similar to a trademark or service mark 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
Paragraph 4(a)(i) of the Policy requires two elements to be proved, namely that (i) the Respondent's domain name is identical or confusingly similar to a trademark or service mark, (ii) in which the Complainant has rights.
The relevant part of the disputed domain name is “quiksilverstore”, as it is well established in previous UDRP cases that the added top-level domain being a required element of every domain name is dispositive when establishing whether or not a mark is identical or confusingly similar.
Accordingly, the domain name consists of the trademark QUIKSILVER, with the addition of the generic term “store”. As also stated in many UDRP cases, the addition of a generic term does not necessarily distinguish a domain name from a trademark. The generic word may even add to the confusing similarity. See Scholastic Inc. v. 366 Publications,WIPO Case No. D2000-1627 (February 21, 2001), holding that “[t]he addition of the generic term ‘online' is not a distinguishing feature. In fact, in this case it seems to increase the likelihood of confusion because it is an apt term for [the] Complainant's online business”), see also Experian Information Solutions, Inc. v. Credit Research, Inc.,WIPO Case No. D2002-0095 (May 7, 2002) (finding that several domain names incorporating the complainant's entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant's mark).
In this case, the general and generic term “store” would just make the consumers to believe that the domain name leads to an online store for goods marked with the trademark QUIKSILVER.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the trademark QUIKSILVER.
The other element to prove is that Complainant has rights in the trademark. The wording of paragraph 4(a)(i) does not specify the kind of rights, and it is established that beside registered trademark rights, also unregistered common law rights may apply, as well as at least under certain circumstances other similar rights in a trademark such as the rights of a licensee.
The Complainant's only reference to its alleged trademark rights is the statement that the disputed domain name is confusingly similar to “the QUIKSILVER trademark registered by the company NA PALI SAS / Quicksilver Europe”. Complainant has provided printouts (in French) from the ICIMarques database, showing details of QUIKSILVER trademark registrations in France, as community Trademarks as well as International Registrations. Although the said printouts are not translated into the language of the proceeding, it was clear to the Panel that none of the registrations were in the name of the Complainant, but either registered in the name of Quiksilver International Pty Ltd and assigned to QS Holdings Sarl, or registered directly in the name of QS Holdings Sarl.
In order to give the Complainant a fair opportunity to clarify its statement that it has rights in the trademark QUIKSILVER and provide supporting documentation, the Panel issued a Panel Order.
In its reply to the Panel Order, the Complainant stated that it is the exclusive licensee of the QUIKSILVER trademark in Europe, and further that the former owner Quiksilver International PTY Ltd has assigned its ownership of QUIKSILVER to QS Holdings Sarl. The Complainant also provided two documents described as “Certificates”.
The first Certificate, dated February 26, 2002 and signed by the Company Secretary of Quiksilver International PTY Ltd, confirms that the Complainant is “exclusively licensed to use the Quiksilver trade marks and associated trade marks in Europe in respect of all products other than wetsuits, lycra vests, body boards and leashes, swim fins, sunglasses and videos”.
The other Certificate, dated July 31, 2008, is signed by the Director of QS Holdings Sarl, and confirms that it “was granting an exclusive operating and manufacturing licence in respect of the QUIKSILVER trademarks and brand names for creating, manufacturing and distributing products bearing the trademarks within a territory which includes the European Union”.
Together with the fact that the QS Holding Sarl is registered as one of the licensee's of the QUIKSILVER trademarks in the French trademarks Registry, the Panel concludes that the Complainant has proved to have an exclusive but partial license for the QUIKSILVER trademarks within the European Union.
The question remains whether such license gives to Complainant “rights”, within the language of the Policy, to have the disputed domain name transferred to the licensee Complainant.
The matter has been considered in a number of UDRP decisions, such as DigiPoll Ltd. v. Raj Kumar,WIPO Case No. D2004-0939; Applegate Directory Ltd. v. Interlution a/k/a Matthew Bessette, WIPO Case No. D2004-0181; HQUK Limited v. Head Quarters,WIPO Case No. D2003-0942; Grupo Televisa, S.A., Televisa, S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v. Party Night Inc., a/k/a Peter Carrington, WIPO Case No. D2003-0796; Sunlane Media, d/b/a Literotica Free Adult Community v. Lucien de Cassan, WIPO Case No. D2002-0093, and SK Energy Sales Co., Ltd. v. Superkay Comdomain,WIPO Case No. D2000-0380.
The Panel concludes, from these and other cases, that a licensee may be regarded to have “rights” in a trademark, but that the contractual text of the license agreement as well as the further relationship between the licensor and licensee are crucial in determining the scope of such rights.
In DigiPoll Ltd. v. Raj Kumar, supra, the registered trademark owner, who was also the founder of the Complainant Company, issued a statement that the Complainant had been given “full authority and license” and that the Complainant was “the de facto owner of the trademark”. In HQUK Limited v. Head Quarters, supra, the Complainant and the trade mark owner were “sister companies” and the latter had consented to the UDRP proceeding. In the Miele, Inc. v. Absolute Air Cleaners and Purifiers,WIPO Case No. D2000-0756, the Panel found that the complainant had rights in and duties concerning the trademark “through its affiliation with its grandparent corporation which owns the trade-mark registration”.
The panel in HQUK Limited v. Head Quarters, supra compared with the Article 22(3) of the Community Trade Marks Regulation (40/94/EEC), providing that a licensee may bring proceedings for infringement of a community trade mark only if its proprietor consents thereto, but that the holder of an exclusive licence may bring such proceedings if the proprietor of the trade mark, after formal notice, does not bring infringement proceedings within an appropriate period. Based on this comparison, the said distinguished panel raised a number of questions: “Does the grant of a licence either alone or in conjunction with the rights afforded by Article 22 grant the licensee sufficient rights for the Policy? If the rights under Article 22 are significant here, must the licensee also show that it has been granted the right to pursue infringement claims (or perhaps by analogy UDRP proceedings) or alternatively that it is an exclusive licensee who has given ‘formal notice' to the trade mark owner and that an ‘appropriate period' has now passed?”
None of the above situations applies to the present case. The Complainant is not affiliated with the trademark owner other than by the license. There is no evidence that the trademark owner has consented to the Complaint or is even aware of that the Complaint is filed. Further, the Complainant has not provided a copy of, or even the URL to, the official web site for the QUIKSILVER trademarks and accordingly the Panel must draw the conclusion that such web site and domain name are operated and held by the trademark owner and not by the Complainant.
The Certificates of License provided by the Complainant state that the trademark owners are licensing to the Complainant the “right to use” the trademarks and that the Complainant is given an exclusive “operating and manufacturing license” for some of the goods covered by the trademark registrations. The Panel cannot, based only from the documentation and the Complainant's statements, draw the conclusion that the license as such has placed the Complainant in a position that it has the power to have assigned and to hold a domain name which is confusingly similar to a trademark belonging to a third party (namely, the licensor). See NBA Properties, Inc. v. Adirondack Software Corporation, WIPO Case No. D2000-1211: “Complainant's request for an order transferring the disputed name to Complainant in this case would place ownership of the domain name in an entity other than the trademark owner without consent from the trademark owner.”
The Panel concludes that the Complainant has not in the present proceedings proved that it has rights in the QUIKSILVER trademark for the purposes of the Policy.
Since the Complainant does not fulfill the first condition of paragraph 4(a) of the Policy, there is no need to enter into a discussion whether: (ii) the Respondent has rights or legitimate interests in respect of the domain name; or (iii) whether the domain name has been registered and is being used in bad faith.
The present decision does not establish Respondent rights to the disputed domain name, nor prevent proceedings being brought in future by a party able to prove rights in the QUICKSILVER mark (including, if a licensee, the consent of the principal rights holder). 7. Decision
For all the foregoing reasons, the Complaint is denied.
Petter Rindforth
Sole Panelist
Dated: January 27, 2009
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