WIPO Domain Name Decision D2009-1400 for soda-brand.com

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Scotch & Soda B.V. v. “S & S” Piotr Szlegiel, Jacek Szlegiel i Robert Wisniewski S.J. Case No. D2009-1400 1. The Parties

The Complainant is Scotch & Soda B.V., of Hoofddorp, The Netherlands, represented by LDS Lazewski Depo & Partners, Poland.

The Respondent is “S & S” Piotr Szlegiel, Jacek Szlegiel i Robert Wisniewski S.J., of Gorzow Wielkopolski, Poland. 2. The Domain Name and Registrar

The disputed domain name (the “Domain Name”) is registered with Tucows Inc. (the “Registrar”). 3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 20, 2009. The Center transmitted its request for registrar verification to the Registrar on October 21, 2009. The Registrar replied the same day, confirming that it was the registrar and the Respondent was the current registrant of the Domain Name, that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applied to the Domain Name, that the Domain Name had been placed on Registrar Lock and would remain locked during this proceeding save for scheduled expiry on June 4, 2010, and that the registration agreement was in English. The Registrar also provided the full contact details on its WhoIs database in respect of the Domain Name and noted that it had not yet received a copy of the Complaint.

The Center verified that the Complaint satisfied the formal requirements of the 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 29, 2009. The courier confirmed delivery of the notification to the Respondent's address as stated in the Registrar's WhoIs database. In accordance with paragraph 5(a) of the Rules, the due date for Response was November 18, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 20, 2009.

The Center appointed Jonathan Turner as the sole panelist in this matter on

December 2, 2009. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules. 4. Factual Background

The Complainant manufactures and sells clothes under the brand name “SCOTCH & SODA” which it has registered as a trademark in a number of jurisdictions, including as a Community mark in the European Union.

The Complainant appointed Piotr Szlegiel, one of the partners of the Respondent, as its exclusive distributor in Poland in or about 1994. Piotr Szlegiel registered a logo of “SCOTCH & SODA” in Poland in 1995 without the Complainant's knowledge or consent. Rights in that mark were subsequently transferred to a partnership of Piotr Szlegiel and Jadwiga Szlegiel.

The Complainant learned of this registration and sought to recover its rights relating to it. This resulted in a contract in 2002 under which Piotr Szlegiel signed an assignment of the rights in this mark to the Complainant. However, the Respondent subsequently claimed in May 2003 that he was not bound by this assignment on the grounds that it was induced by illegal threats and done without his free will. He complained that he was presented with it in German without having participated in drafting it.

The Complainant terminated Piotr Szlegiel's distributorship and appointed a new distributor in Poland. Piotr Szlegiel threatened proceedings against the new distributor for infringement of the “SCOTCH & SODA” mark, resulting in the withdrawal of the Complainant's “SCOTCH & SODA” products from sale in Poland.

The Complainant applied in 2005 to the Polish Patent Office for revocation of the Respondent's registration of the “SCOTCH & SODA” logo. Revocation was granted by a decision of the Patent Office in 2007 which was upheld on appeal by the Administrative Court of Warsaw and the Supreme Administrative Court of Poland.

Piotr Szlegiel also registered “SODA” as a trademark in a Poland in 2002 and this mark was subsequently assigned to the Respondent. The Respondent applied in 2008 to register “SODA” as a Community mark.

The Complainant has applied to the Polish Patent Office for revocation of the “SODA” mark and has entered an opposition to the application to register “SODA” as a Community mark. These proceedings have not yet been determined.

The Respondent has continued to sell clothing and related products using the marks “SCOTCH & SODA” and “SODA” and to grant franchises under these marks. As well as the Domain Name, the Respondent also registered various other domain names containing the words “Scotch” and “Soda” or just “Soda” in the .pl and .eu ccTLDs, which it has used to promote its business. 5. Parties' Contentions A. Complainant

The Complainant contends that it has registered rights in the mark “SCOTCH & SODA” and that the mark is widely recognised as a result of its use over 20 years.

The Complainant submits that the Domain Name is confusingly similar to this mark. Having set out the factual background, the Complainant alleges that the Respondent must have chosen the Domain Name in order to associate its business with the Complainant's mark and that this intent should be taken into account in assessing confusing similarity. The Complainant also draws attention to the Respondent's side-by-side use of the marks “SODA” and “SCOTCH & SODA” as creating an association between them.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant affirms that it has never given the Respondent or any related person any consent to use its mark otherwise than for the purpose of distributing and promoting the Complainant's goods. The Complainant submits that the Domain Name was registered unlawfully and that its use by the Respondent to sell goods bearing all or part of the Complainant's “SCOTCH & SODA” mark cannot be regarded as a bona fide offering.

The Complainant alleges that the Domain Name was registered and is being used in bad faith, as part of a strategy to make it difficult or impossible for the Complainant to conduct its business in Poland, and/or with intent to attract Internet users to the Respondent's website for commercial gain, by creating a likelihood of confusion with the Complainant's mark as to the source of the Respondent's products. In this regard, the Complainant provides evidence of actual confusion on the part of consumers between the Respondent's goods and business and those of the Complainant.

The Complainant seeks a decision that the Domain Name be transferred to it. B. Respondent

As stated above, the Respondent did not reply to the Complainant's contentions. 6. Procedural ruling

The Panel notes that there are pending proceedings between the parties relating to trademarks registered or applied for by the Respondent which correspond to the Domain Name. The Panel may therefore have a discretion to suspend or terminate this proceeding under paragraph 18(a) of the Rules.

However, this paragraph may not apply here since the other proceedings relate to a registration and application to register trademarks, not the Domain Name, and furthermore the proceedings in the respective offices may not be “legal proceedings” within the meaning of this paragraph.

In any case, even if this paragraph does apply, the Panel considers that in the circumstances, the desirability of a prompt decision as to whether the Respondent should be permitted to retain the Domain Name outweighs the undesirable risk that conflicting decisions might be reached in the separate proceedings. The Panel therefore exercises any discretion which it might have in favour of continuing this proceeding. 7. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (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.

In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from the Respondent's default as it considers appropriate. This includes the acceptance of plausible evidence of the Complainant which has not been disputed. A. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in the mark SCOTCH & SODA by virtue of its registrations and its longstanding use of this mark.

As many Panels have held in decisions under the UDRP, the first requirement involves a comparison of the disputed domain name with the complainant's mark. A finding of confusing similarity cannot be avoided by explanations on the respondent's website if the disputed domain name is confusingly similar with the complainant's mark. Equally, a finding of confusing similarity cannot be based on deceptive content of a respondent's website if the disputed domain name is not itself confusingly similar to the Complainant's mark: See e.g. General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM,WIPO Case No. D2006-0334.

However, the way in which the complainant's mark and a name contained in the disputed domain name have been used by the complainant and/or by the respondent may affect how they are perceived by the public and hence whether they are confusingly similar. In this case, the Panel finds on the evidence that the Respondent's use of the marks SODA and SCOTCH & SODA has been such as to create an association between them on the part of the public in Poland and perhaps elsewhere.

Indeed, the Panel has no doubt that the Respondent has adopted the mark SODA with the intention of transfering the goodwill in the mark SCOTCH & SODA to the mark SODA in the hope of securing the benefit of this goodwill for itself at least temporarily and perhaps permanently.

Taking these matters and all other circumstances of the case into consideration, the Panel finds that the Domain Name is confusingly similar to the Complainant's mark. The first requirement of the UDRP is satisfied. B. Rights or Legitimate Interests

The Panel notes that the Supreme Administrative Court of Poland upheld the decision of the Polish Patent Office that the mark SCOTCH & SODAwas registered by Piotr Szlegiel in bad faith and in violation of article 6 septies of the Paris Convention and article 8(1) of the Polish Trademarks Act. The Panel is satisfied that the Respondent cannot claim any right or legitimate interest in respect of the Domain Name arising out of its use or registration of the mark SCOTCH & SODA.

The Panel further finds on the undisputed evidence that the Respondent adopted the mark SODA in bad faith as part of a strategy of seeking to transfer goodwill in the mark SCOTCH & SODA to the mark SODA in the hope of securing the benefit of this goodwill for itself at least temporarily and perhaps permanently. The Panel considers that the use of this mark by the Respondent does not constitute a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the UDRP.

The Panel is satisfied on the evidence that the Respondent is not commonly known by the Domain Name. It is also clear that the Respondent is not making legitimate non-commercial or fair use of the Domain Name without intent for commercial gain to divert consumers by misleading them. On the contrary, the Respondent is making commercial use of the Domain Name with intent for commercial gain by diverting consumers to its website through confusion with the Complainant's mark.

In all the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name within the meaning of paragraph 4(a)(ii) of the UDRP. The second requirement of the UDRP is satisfied. C. Registered and Used in Bad Faith

The Panel finds on the undisputed evidence that the Respondent registered and is using the Domain Name as part of a strategy of transfering the goodwill in the mark SCOTCH & SODA to the mark SODA in the hope of securing the benefit of this goodwill for itself.

The Panel is therefore satisfied that by registering and using the Domain Name, the Respondent has intentionally sought to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant's mark as the source of the Respondent's website and the goods promoted on it.

In accordance with paragraph 4(b)(iv) of the UDRP, this constitutes evidence of registration and use of the Domain Name in bad faith.

Nothing in the file displaces this presumption. On the contrary, the circumstances reinforce the finding that the Respondent has acted and is acting in bad faith in its registration and use of the Domain Name. The third requirement for the UDRP is satisfied. 8. 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 the Complainant.

Jonathan Turner
Sole Panelist

Dated: December 16, 2009

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