WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION X-ONE B.V. v. Robert Modic Case No. D2010-0207 1. The Parties
The Complainant is X-ONE B.V. of Amstelveen, the Netherlands, represented by Banning N.V., the Netherlands.
The Respondent is Robert Modic of Portorož, Slovenia. 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 February 12, 2010. On February 12, 2010, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On the same date Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 18, 2010. 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” 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 February 18, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 10, 2010. The Response was filed with the Center on March 8, 2010.
The Center appointed David Perkins as the sole panelist in this matter on March 17, 2010. 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 4.A The Complainant
4.A.1 Gaastra International Sportswear B.V. (“Gaastra”) is a Dutch company, which designs, produces and sells outdoor and sports clothing, with the emphasis on clothing for sailing. Those clothes are sold under the registered trademark GAASTRA and are featured in websites maintained by Gaastra. Those websites resolve from domain names including ; ; ; ; ; ; and .
4.A.2 The origins of Gaastra can be traced back to 1897 as a sail making company. It is now a part of the McGregor Fashion Group BV, which was established in 1993. Apart from the Netherlands, Gaastra also has offices in Belgium, France and Germany. The GAASTRA Trademarks
4.A.3 Gaastra is exclusively licensed by the Complainant to use the GAASTRA trademark. The Complainant is the proprietor of, inter alia, the following registered trademarks:
Territory
Reg. No.
Mark
Class(es)
Dates of Application and Registration
European Community
CTM 3058807
Device Mark
25
Filed: February 18, 2003
Registered: April 5, 2004
European Community
CTM 3058799
GAASTRA
25
Filed: February 18, 2003
Registered: January 17, 2005
Benelux
704201
Device Mark
25
Filed: March 20, 1996
Benelux
748790
GAASTRA and Device
25
Filed: April 16, 2001
Benelux
704202
GAASTRA
25
Filed: March 22, 1996 Correspondence between the Parties
4.A.4 A cease and desist letter was sent to the Respondent on behalf of the Complainant and Gaastra on December 23, 2009. It transpires from the subsequent correspondence that, with a view to avoiding litigation, the Complainant had offered to pay the Respondent Euros 2,500.00 for transfer of the disputed domain name but that this offer was rejected by the Respondent. 4.B The Respondent
4.B.1 The disputed domain name was registered on January 24, 2005. It resolves to a website at “www.” which is operated by the Respondent.
4.B.2 The Respondent states that he operates a small shop in Piran on the coast of Slovenia which sells GAASTRA branded sportswear. He states that when he registered the disputed domain name in January 2005 he was aware of the GAASTRA trademark and that Gaastra’s official distributor, Britton d.o.o, located in Zagreb was also aware of this and, indeed, supported him with the provision of promotional material. The Respondent’s shop, displays prominently both the GAASTRA word mark and the device mark.
4.B.3 The Respondent says that the suffix “shop” in the disputed domain name was added to the GAASTRA trademark to indicate what his business is, namely selling GAASTRA branded sportswear from a shop.
4.B.4 The Respondent explains that he does not sell GAASTRA sportswear online. The website to which the disputed domain name resolves serves only as a catalogue of the GAASTRA sportswear stocked and to advertise that they can be purchased from his shop. It is only in the Slovenian language and, as such, is directed only to his local Slovenian market. Furthermore, the Respondent says that it is clearly indicated on the website that it is trading only as a reseller of GAASTRA branded sportswear.
4.B.5 The Respondent says that the disputed domain name was originally registered in the name of Pro-Monte Modic k.d., which was subsequently re-organised and is now known as Pro-Monte d.o.o. The Respondent is the owner of that company. When the Complaint was received, he transferred the disputed domain name into his own personal name, since he is the owner of the Company and the Respondent felt it would simplify matters if he was to deal personally with Gaastra and the Complainant.
4.B.6 The Response exhibits invoices from Gaastra’s local distributor, DEROX, addressed to Pro-Monte Modic k.d.d. over the period 2004 to 2006; from McGregor Fashion Group BV to Pro-Monte d.o.o. over the period 2007 to 2009; from Gaastra to Pro-Monte d.o.o. over the period 2008 to 2009; and from Footex International BV to Pro-Monte d.o.o. also in 2009.
4.B.7 As to the correspondence with the Complainant, the Respondent says that he never asked for a greater sum than the Euros 2,500.00 offered. As his email of December 30, 2009 states, if the Complainant could show good cause as to why he is not entitled to the disputed domain name, he will donate it to the Complainant. 5. Parties’ Contentions 5.A. Complainant Identical or Confusingly Similar
5.A.1 The Complainant says that it has rights in the GAASTRA word mark which predate (1996 Benelux filing) registration of the disputed domain name in January 2005. Furthermore, the CTM for GAASTRA was both applied for and registered before registration of the disputed domain name.
5.A.2 The Complainant’s case is that the dominant element of the disputed domain name is the well known GAASTRA trademark, the suffix “shop” being descriptive only. Accordingly, the Complainant says that the disputed domain name is confusingly similar to its GAASTRA trademark.
5.A.3 Additionally, the Complainant says that use of the disputed domain name infringes its CTM for the GAASTRA word mark. In that respect, the Complainant relies upon a number of decisions of the European Court of Justice, namely BMW v. Deenik [Case C 63/97]; Sabel v. Puma [Case C 251/95]; Lloyd Schufabrik v. Klijsen Handel [Case C 342/97]; Canon v. MGM [Case C 39/97] and L’Oreal v. Bellure [Case C 487/07].
5.A.4 The Complainant also points to the use by the Respondent of the registered device mark and that the Respondent’s website to which the disputed domain name resolves reproduces – without license or other permission – 19 pictures from Gaastra’s Summer 2004 and 2005 Catalogues. Rights or Legitimate Interest
5.A.5 The Complainant’s case is that the Respondent is not making a bona fide, legitimate noncommercial or fair use of the disputed domain name under paragraphs 4(c)(i) and (iii) of the Policy. This is because the Respondent is not authorized to use the GAASTRA trademark. Indeed, the Complainant says that the Respondent is enjoying a “free ride” on its GAASTRA trademark and is profiting by such use of the disputed domain name.
5.A.6 Nor, clearly, the Complainant says, can the Respondent bring himself within paragraph 4(c)(ii) of the Policy. Registered and Used in Bad Faith
5.A.7 Because there is no official relationship between the Parties and in the light of the correspondence between the parties, the Complainant asserts that its case falls within paragraph 4(b)(iv) of the Policy.
5.A.8 The Complainant says that the transfer of the disputed domain name to Vinko Raus and the subsequent transfer back into the Respondent’s name at the time of the Complaint is an indication of a bad faith attempt by the Respondent to avoid the legal action threatened in its cease and desist letter [paragraph 4.A.4 above]. 5.B Respondent Identical or Confusingly Similar
5.B.1 The Respondent acknowledges that the disputed domain name contains the Complainant’s GAASTRA registered trademark. However, he says that the suffix “shop” is intended to convey that it is used and relates only to his shop in Piran, Slovenia which shop sells only GAASTRA branded products. Accordingly, the Respondent’s case is that the disputed domain name is not confusingly similar to the Complainant’s GAASTRA trademark. Rights or Legitimate Interests
5.B.2 The Respondent says that the disputed domain name was registered with the knowledge of Gaastra’s official distributor, Mr. R. Rogič of Britton d.o.o., Zagreb who also supplied artwork and promotional material to assist the Respondent establish his shop.
5.B.3 The Respondent says that similar support was provided to him by Gaastra’s local dealer, Derox d.o.o. of Obrežje, Slovenia.
5.B.4 As to the photographs used on the website to which the disputed domain name resolves, in relation to which the Complainant claims its copyright has been infringed, the Respondent says that they were supplied to him by Britton and by Derox.
5.B.5 The Respondent denies that is use of the disputed domain name will misleadingly divert consumers, since the website to which it resolves is only in the Slovenian language and hence addressed to local consumers and, furthermore, clearly identifies his company as only a retailer of GAASTRA sportswear. Registered and Used in Bad Faith
5.B.6 In addition to the explanation contained in paragraphs 5.B.1 to 5 above, the Respondent refers to the fact that it has been supplied with GAASTRA sportswear since 2004 by not only Gaastra’s local distributor [Derox] but also from 2007 to 2009 by both Gaastra itself and its parent company, McGregor Fashion Group – see, paragraph 4.B.6 above.
5.B.7 Additionally, Respondent points to the fact that the website is used only to advertise the GAASTRA products stocked in his shop. Nor is it used to sell online in competition with Gaastra – see, paragraph 4.B.4 above.
5.B.8 Still further, the website clearly states that the shop is only a reseller of Gasstra’s sportswear and it only sells genuine GAASTRA branded goods.
5.B.9 The Respondent denies that he has demanded more than Euros 2,500.00 as the price for transfer of the disputed domain name – see, paragraph 4.B.7 above.
5.B.10. As to the allegation that the Respondent assigned the disputed domain to avoid due legal process [paragraph 5.A.8 above], the Respondent’s explanation is set out in paragraph 4.B.5 above. Vinko Raus is, the Respondent says, “the system administrator of the server on which the domain is hosted on”. He was not an assignee of the disputed domain name. 6. Discussion and Findings
6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:
(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 disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interest in the disputed domain name.
6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy. Identical or Confusingly Similar
6.5 The Complainant clearly has rights in the GAASTRA mark and those registered rights in that mark predate creation by the Respondent of the disputed domain name.
6.6 The GAASTRA trademark is the dominant element of the disputed domain name and the suffix “shop” is merely descriptive. As such, for the purposes of the Policy the disputed domain name is confusingly similar to the Complainant’s trademark and the Complaint satisfies the requirements of paragraph 4(a)(i) of the Policy. Rights or Legitimate Interests
6.7 Here, there is a conflict of evidence. The Complainant says that it has not licensed or otherwise authorized the Respondent to use the GAASTRA trademark for the purposes of registering and using the disputed domain name. On the other hand, the Respondent says that he was approved by both Gaastra’s Main Distributor, Britton (Zagreb), and its Local distributor, Derox (Obrežje). Not only did they approve his use of the disputed domain name, but they also provided him with artwork and promotional assistance to establish his shop.
6.8 In that respect, the Panel notes that providing artwork and promotional material to assist a retailer does not, of itself, indicate approval to registration and use of a domain name including the manufacturer’s brand name. The Respondent has provided no written evidence of such approval, nor a signed Statement from Mr. Rogič of Britton which, presumably, should have been obtainable from Mr. Rogič to confirm the truth of the Respondent’s assertion.
6.9 On the other hand, it seems somewhat strange that Gaastra and its parent company, McGregor, should have supplied their GAASTRA Sportswear products to the Respondent for at least 3 years without making objection. As to that, the cease and desist letter from the Complainant’s attorneys of December 23, 2009 says:
“My clients have recently noticed that you have registered the domain name “www.” and have demanded you by letter of 1 October 2009 to transfer the domain name to X-One …”
That letter has not been produced nor has the Complainant produced evidence that it “… has informed [the] Respondent several times that it has never given permission for the use of its GAASTRA mark in any way”. Consequently, there is no explanation as to why it has taken so long for the Complainant to take issue in relation to the disputed domain name. The answer may be that it is only now – as the Complaint explains – that the “… Complainant is establishing a worldwide web shop with an official partner” and is concerned to avoid any confusion between that official web shop and the Respondents unofficial shop.
6.10 Whatever the explanation may be, there is as stated above a dispute of fact as to whether the Respondent’s use of the GAASTRA trademark for a domain name was expressly approved by Gaastra’s Official Distributor in Zagreb or implicitly tolerated by Gaastra and McGregor in supplying products to the Respondent which he was advertising on the website to which the disputed domain name resolves. However, in the absence of documented evidence of approval from Britton and in the light of the Complainant’s statement that it has given no such authorization, the Panel can only decide this issue in the Complainant’s favour.
6.11 However, regardless of that question, there is also the question as to whether a reseller can have rights or legitimate interests in the disputed domain name. The majority view follows the test as to what constitutes a bona fide offering of goods set out in Oki Data Americas, Inc v. ASD, Inc, WIPO Case No. D2001-0903. That is:
- The Respondent must actually be offering the goods or services at issue;
- The Respondent must use the site itself to sell only the trademarked goods;
- The site must accurately disclose the registrant’s relationship with the trademark owner; and
- The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
6.12 In this case, based on the Complaint and the Response, the Respondent’s conduct in this case would seem to meet all those factors.
6.13 There is, however, as the WIPO Overview of WIPO Panel Views on Selected UDRP Questions notes in paragraph 2.3, a contrary so-called minority view. That is that, 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 a basis for a domain name. The European Court of Justice decision in BMW v. Deenik [paragraph 5.A.3 above] would indicate that that approach is appropriate under European trademark law and, indeed, it is an approach which – generally – this Panelist prefers.
6.14 Accordingly, on balance, this Panel finds that the unauthorized use of the disputed domain name wholly incorporating the Complainant’s GAASTRA trademark does not constitute bona fide use within paragraph 4(c)(i) of the Policy. There is, in the Panel’s view, a significant difference between use of the Complainant’s trademark as a domain name and use of that trademark in signage at a shop which sells only the trademark owner’s goods. Such signage is illustrated in photographs exhibited to the Response. Registered and Used in Bad Faith
6.15 On the facts, the Complainant cannot demonstrate that any of the circumstances set out in paragraphs 4(b)(i) to (iii) are present in this case. As to the Complainant’s proposition that the Respondent has held it to ransom on the price for transfer of the disputed domain name, there is no evidence to support such a finding. The Complainant’s December 23, 2009 cease and desist letter states:
“You have only offered to sell the domain name for an ‘appropriate’ price”
This is not consistent with the Respondent asking “large amounts of money for the transfer of the domain name” as asserted in the Complaint. Nor is it consistent with the Respondent offering to “donate” the disputed domain name to the Complainant if the Complainant could show good cause why it is entitled to such transfer [see, paragraph 5.A.8 above].
6.16 The remaining issue is, therefore, whether the Complainant can establish bad faith registration and use under paragraph 4(b)(iv) of Policy, or otherwise. In terms of historical use, by using the disputed domain name to resolve to a Slovenian language website advertising the GAASTRA goods stocked by the Respondent’s shop, it cannot be said that the Respondent has thus far demonstrated an intention to cause a likelihood of confusion with the Complainant’s mark “as to the source” of the products advertised of his website. Furthermore, the Respondent’s website apparently accurately discloses the relationship between his Company and Gaastra, the Complainant’s exclusive licensee, namely that he is a reseller only of GAASTRA sportswear.
6.17 However, does the position change now that, five years after registration of the disputed domain name and supply to the Respondent throughout that period of GAASTRA sportswear by the Complainant’s exclusive licensee (Gaastra), that Licensee’s parent company (McGregor) and its Local Distributor (Derox), the trademark owner and its exclusive licensee want to establish a worldwide web shop and the existence of the disputed domain name in the Respondent’s name is quite likely to create confusion as to the Respondent’s affiliation to Gaastra? In this Panel’s opinion, this is a real possibility with the result that what may once have been good faith use could become bad faith use in the future. Accordingly, now that the Respondent is “on notice” of this intended use by the Complainant of its GAASTRA trademark, continued unauthorized use by the Respondent of the trademark in the disputed domain name will in this Panel’s opinion likely constitute mala fide use of the disputed domain name. Indeed, in the face of both a lack of license from the Complainant and notice of objection by the Complainant, eventual renewal of the disputed domain name would, in the Panel’s view, also amount to bad faith use.
6.18 The Complainant must, however, demonstrate evidence of not only bad faith use but also registration in bad faith. Here, there is – as stated above – a conflict of evidence as to whether the support provided to the Respondent by Gaastra’s Distributor in Zagreb and the Local Distributor in Obrežje can be said to extend to approving registration of a domain name incorporating the GAASTRA trademark. The Complainant says that it has never provided the Respondent with a license or equivalent authority in that respect. The Respondent, while asserting that Gaastra’s Distributors gave their approval, has not provided any evidence to support that assertion. For example, a letter from Britton or perhaps a signed Statement from Mr. Rogič of Britton.
6.19 In the absence of such evidence of authorization and given the Respondent’s total honesty that he was well aware of the GAASTRA trademark in January 2005 when the disputed domain name was registered, together with the Panel’s finding of a likelihood of confusion under paragraph 4(a)(i), a finding of registration in bad faith can in this Panel’s assessment be inferred. The Respondent cannot claim bona fide registration through ignorance of the requirements of the Policy. The maxim ignorantia legis haud excusat applies: ignorance of the law is no excuse. Furthermore, as paragraph 2 of the Policy states, in the Respondent’s application to register the disputed domain name he warranted that to his knowledge the registration of that domain name would not infringe upon the rights of any third party. In that respect, as stated in the Response, the Respondent was well aware of the GAASTRA trademark in January 2005 but (at least on the present record) had no license from the proprietor of that trademark to use it as a domain name.
6.20 Accordingly, although this is not the usual case of bad faith so commonly seen in disputes brought under the Policy, in all the circumstances this Panel considers that the Complaint meets the twin requirements of 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 the Complainant.
David Perkins
Sole Panelist
Dated: April 28, 2010
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