WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Eddy Merckx Rijwielen Cycles NV vs. Irfan Khalil Case No. D2009-0074 1. The Parties
The Complainant is Eddy Merckx Rijwielen-Cycles NV of Belgium, represented by Crowell & Moring of Brussels, Belgium.
The Respondent is Irfan Khalil of Reston Virginia, United States of America. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with Go Daddy. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 19, 2009. On January 21, 2009, the Center transmitted by email to Go Daddy a request for registrar verification in connection with the domain name at issue. On January 21, 2009, Go Daddy transmitted by email to the Center its verification response and provided the contact details for the Respondent and confirmed that the Respondent is listed as the Registrant. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 26, 2009. The Center verified that the Complaint together with the amendment to 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 February 2, 2009. In accordance with the Rules, paragraph 5(a), the due date for a response was February 22, 2009. The Response was filed with the Center on February 15, 2009.
The Center appointed Charné Le Roux as the sole panelist in this matter on February 24, 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. 4. Factual Background
The Complainant is a Belgium corporation and owner of the trade mark EDDY MERCKX. The Complainant provided evidence of an International registration for the trade mark dated December 7, 1981 and December 27, 1972. It also provided evidence of the registration of the trade mark in Benelux on June 16, 1981 and a Community Trade Mark registration dated January 9, 2007.
The Complainant has used the EDDY MERCKX trade mark for over 27 years in connection with various goods but bicycles in particular. It is the owner of the domain name . EDDY MERCKX refers to a famous cyclist i.e. Mr. Eddy Merckx. The trade mark appears to be very widely known as supported by the results of a Google search for EDDY MERCKX provided by the Complainant.
The owner of the Disputed Domain Name is Irfan Khalil. The Disputed Domain Name was registered on March 23, 2000. The website attached to the Disputed Domain Name appears to be a parking page. 5. Parties' Allegations A. Complainant
The Complainant contends that it is the proprietor of the registered trade mark EDDY MERCKX. It also claims proprietorship of the domain name from which it conducts its business. The EDDY MERCKX trade mark was registered throughout Europe in various forms since 1972 and although the Complainant indicates that the trade mark is also registered more broadly, evidence of an International registration, a Community Trade Mark registration and a Benelux registration only were provided.
The Complainant states that it has been trading under the name EDDY MERCKX for approximately 27 years and that the trade mark is famous and well known. It supported this contention with the results of a Google search. The Complainant contends that it has used the trade mark in its external communications and branding, for example on its Belgium website “www.”, and that is sells its bikes and merchandise all over the world.
The Complainant contends that the Disputed Domain Name is identical to its EDDY MERCKX trade mark, the only difference being the absence of a space between EDDY and MERCKX in the Disputed Domain Name.
The Complainant contends that the Respondent lacks rights or legitimate interest in the Disputed Domain Name in that:
a) the website attached to the Disputed Domain Name is parked on a landing page which only contains advertisements and sponsored links to websites offering goods and products that are likely to compete with the goods of the Complainant
b) the Respondent has not been commonly known by the Disputed Domain Name and has not acquired any trade mark or service mark rights in the Disputed Domain Name
c) the Respondent is not making a legitimate non-commercial or fair use of the Disputed Domain Name
d) the Respondent has made use of a corresponding domain name by the Complainant impossible
e) the Respondent has misleadingly diverted consumers and damaged the trade mark at issue.
The Complainant furthermore contends that the Respondent acquired and used the Disputed Domain Name in bad faith in that:
a) the trade mark EDDY MERCKX is very broadly known and that given this broad reputation and the Complainant's numerous trade mark registrations for it, that it would be impossible to conceive of a circumstance in which the Respondent could potentially use the Disputed Domain Name without the consent of Complainant. The Respondent could also not have been unaware of the fame and reputation attached to the trade mark
b) the Respondent is parking the domain name and/or passively holding it
c) the Respondent has concealed his identity
d) the Respondent received commercial benefit from the activities on the website attached to the Disputed Domain Name which benefit is based on the goodwill that the Complainant owns in its trade mark.
The Complainant requests that the Disputed Domain Name be transferred to it. B. Respondent
The Respondent does not deny the Complainant's rights in the EDDY MERCKX trade mark nor that the Disputed Domain Name is identical to the trade mark owned by the Complainant. The Respondent also seems to acknowledge that the EDDY MERCKX trade mark is famous.
The Respondent contends that he has not made any attempt to conceal his identity and that he has been clearly indicated as the address and contact information.
The Respondent denies any knowledge of the parking page or its contents and states that when the Disputed Domain Name was moved from the previous Registrar to the current Registrar in September 2008, an automated parking page was implemented by the current Registrar. The existence of the parking page apparently only became
known to the Respondent when the Complainant was brought to his attention. The Respondent in any event denies that he has received any monetary gains for the approximately 3 months during which the parking page was used.
The Respondent contends that the links on the parking page are, with the exception of one link, non-competing items and services such as tours, collectable memorabilia or mountain bikes.
The Respondent contends that the Disputed Domain Name is to be used for a legitimate non-commercial website documenting the legendary history of the cyclist Eddy Merckx. The Respondent advises that he has not had the time and the money to create the website but that it is still in the planning process.
The Respondent advises that he has been interested in the domain name because he is a fan and owner of memorabilia of the cyclist Eddy Merckx. He provided photographs of a custom made EDDY MERCKX frame that he owns as well as other memorabilia.
The Respondent contends that the fact that no monetary gains have ever been made through the Disputed Domain Name and that he is a fan of the cyclist are proof of good faith.
The Respondent claims that since the Complainant failed to take any steps in connection with the Disputed Domain Name in 9 years, under a doctrine of laches, the Complainant has lost its rights to claim the Disputed Domain Name. 6. Discussion and Findings
Paragraph 4 of the Policy requires that the Complainant proves each of the following elements in order for the Disputed Domain Name to be transferred:
a. that the Disputed Domain Name registered by the Respondent is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights and
b. that the Respondent has no rights or legitimate interest with respect to the Disputed Domain Name and
c. that the Disputed Domain Name has been registered and is being used in bad faith. A. The Disputed Domain Name is identical or confusingly similar to the Complainant's mark 1. Complainant has rights in a registered trade mark
The Panel finds that the Complainant has proven that it owns rights in the registered EDDY MERCKX trade mark.
Furthermore, the Complainant's evidence in support of its use of the EDDY MERCKX trade mark and that it is well known was not contested by the Respondent. The
Respondent's own evidence also seems to support the Complainant's case by his acknowledgement that EDDY MERCKX is a famous cyclist. Even though not a requirement under this light of the Policy, the Panel also finds that the Complainant has established that the EDDY MERCKX trade mark is well known. 2. The Domain Name is identical or confusingly similar to the Complainant's mark
The Panel finds that the Disputed Domain Name is identical to the Complainant' trade mark EDDY MERCKX. The only difference between the Disputed Domain Name and the Complainant's trade mark is the generic indicator .com and the absence of a space in the Disputed Domain Name, which are to be ignored for purposes of this analysis. B. Rights or Legitimate Interests
A number of panels have found that the use of a domain name that incorporates a registered trade mark to establish a genuine non-commercial fan club may constitute legitimate, non-commercial or fair use of that name. The circumstances indicated above persuaded this Panel that a finding of such use is not warranted in this instance.
See also the panel decision in Helen Fielding vs. Anthony Corbett aka Anthony CorbettWIPO Case No. D2000-1000.
The factual circumstances in this matter are that the website attached to the Disputed Domain Name points to a parking site which largely does offer goods and services that compete with those of the Complainant. The panel in Do The Hustle LLC v Tropic WebWIPO Case No. D2000-0624 summarised the burden of proof in respect of paragraph 4(a)(ii) of the Policy, namely that once the Complainant has asserted that the Respondent has no rights or legitimate interest, the burden of proof shifts to the Respondent. The Respondent must then make more than an assertion that it has rights or legitimate interests and must provide factual evidence in support of its claim. Paragraph 4(c) of the Policy provides circumstances whereby the Respondent may demonstrate his rights or legitimate interest in a domain name.
Here, the Panel finds that the Complainant has discharged its onus in proving prima facie that the Respondent does not have rights or legitimate interests in the Disputed Domain Name. It is thus incumbent on the Respondent to provide factual evidence in support of its claims.
The circumstances relevant to this matter relate to the use of or demonstrable preparations to use the Disputed Domain Name in connection with the bona fide offering of goods and services and the legitimate, non commercial or fair use of the Disputed Domain Name.
The express language of the Policy as regards bona fide offering requires a demonstrable preparation to use or actual use. On the facts of this matter the Respondent has not used the Disputed Domain Name for a period of about 8 years and since September 2008, the Disputed Domain Name was used as a parking page which does not constitute a bona fide offering of goods and services. See, e.g., Martha Stewart Living Omnimedia, Inc. v. Domain Deals,WIPO Case No. D2007-0289. The express language of the Policy as regards a legitimate non-commercial fair use requires actual use; mere claimed potential use is not enough. While the Respondent claims that he intends to establish a fan site for the famous Eddy Merckx cyclist, he is currently not doing so. Moreover, he has not provided any evidence of any work done in connection of the establishment of such a site.
The Panel finds that the Respondent does not have rights or legitimate interests in the Disputed Domain Name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith.
While there is Respondent's claim that the sponsored and other links are for non- competing items, the Respondent also denies that the parking site was connected to the said website with his knowledge. Previous panels have on numerous occasions found that respondents are ultimately responsible for automatically generated content on their disputed domain names. See, e.g., Grundfos A/S v. Texas International Property Associates,WIPO Case No. D2007-1448, NVT Birmingham, LLC d/b/a CBS 42 WIAT-TV v. ZJ,WIPO Case No. D2007-1079 and Grisoft, s.r.o. v. Original Web Ventures Inc.,WIPO Case No. D2006-1381. Even if the Panel would accept the Respondent's lack of knowledge of and responsibility for the parking page, then the alternative would be that the Respondent is passively holding the Disputed Domain Name. Previous panels have not hesitated to hold that the lack of active use of a disputed domain name or the use of the disputed domain name as a parking site, coupled with factors which include that the trade mark is well known, may constitute bad faith.
While the Panel is not prepared to find that the Respondent in this matter has deliberately concealed his identity or that it is impossible to conceive a circumstance in which good faith use could be made of the Disputed Domain Name for example as a fan site, the Respondent's inactive use of the Disputed Domain Name, which is identical to a well known trade mark, for 9 years, have persuaded the Panel that the requirements of paragraph 4(b) of the Policy have been met.
It is necessary to comment on the Respondent's contention that the Complainant has lost its rights to claim the Disputed Domain Name under a doctrine of laches. In a similar case involving the domain name (Tom Cruise v. Network Operations Centre/Alberta Hod Rods,WIPO Case No. D2006-0560), the complainant had taken 10 years to file a complaint in connection with the domain name. A three member panel held that there is no meaningful precedent under the Policy for refusing to enforce trade mark rights on the basis of a delay in bringing a claim, and a transfer was ordered. In that case, as is the case here, the Respondent also made no argument that he has or will suffer injury because of the Complainant's delay in initiating this proceeding. The Respondent has made no claim that he has invested any monies towards his EDDY MERCKX website. The Complainant has also not provided any firm indication, express or tacit, in connection with any consent that it may have provided to the Respondent to use its trade mark in the Disputed Domain Name. In these circumstances, the Panel is not prepared to find that the delay of the Complainant constitutes a bar against its cause of action. 7. Decision
For all the aforegoing reasons in accordance with paragraph 4(ii) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Charné Le Roux
Sole Panelist
Dated: March 12, 2009
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