WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Durst Phototechnik AG v. Jens Jensen Case No. D2010-0373 1. The Parties
The Complainant is Durst Phototechnik AG of Brixen, Italy, represented by Tucker & Latifi, LLP of United States of America.
The Respondent is Jens Jensen of Hillsboro, Oregon, United States of America, represented by Bullivant Houser Bailey of United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Network Solutions, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 11, 2010. On March 12, 2010, the Center transmitted by email to Network Solutions, LLC. a request for registrar verification in connection with the Disputed Domain Name. On March 12, 2010, Network Solutions, LLC 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 March 19, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 8, 2010. The Response was filed with the Center on April 8, 2010.
The Center appointed Alistair Payne as the sole panelist in this matter on April 15, 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
The Complainant owns numerous trade mark registrations including 4 specified registered trade marks (2,907,834, 2,907,835, 2,991,030, 3,140,835) for the word mark DURST in the United States of America of which the first registrations dates from December 7, 2004. The Complainant asserts that it has developed considerable goodwill in relation to its mark as it has been manufacturing distributing and selling photographic equipment under the DURST mark for 50 years and accordingly owns common law trade mark rights in its DURST mark. The Complainant also owns the domain names , and .
The Respondent registered the Disputed Domain Name on February 6, 2001 and traded under the corporate name. Durst-Pro-USA, Inc. as an exclusive distributor of the Complainant's optical enlarger products in the United States of America. 5. Parties' Contentions A. Complainant
The Complainant submits that on the basis of its registered trade marks and the goodwill attaching to its DURST trade mark, that it owns trade mark rights for the purposes of the Policy. It further submits that the Disputed Domain name is confusingly similar to its DURST trade mark and other domain names incorporating the DURST mark and that people seeing the Disputed Domain Name would assume that there was some association between the businesses.
As far as the second element of the Policy is concerned the Complainant says that it is the worldwide owner of the DURST trade mark in relation to photographic equipment with sales exceeding hundreds of millions of dollars and a value in excess of USD 50 million dollars.
The Complainant says in relation to the third element of the Policy and that it owned trade mark rights in the DURST mark well before the Respondent's registration of the Disputed Domain Name, that there can be no legitimate reason for the Respondent's use of the Disputed Domain Name and that the Respondent has sought to intentionally attract Internet users to its website in bad faith under paragraph 4(b)(iv) of the Policy and has accordingly registered and used the Disputed Domain Name in bad faith. B. Respondent
The Respondent says overall that it commenced using the Disputed Domain Name with the knowledge and consent of the Complainant and as its exclusive distributor of optical enlargement parts in the United States of America.
Specifically, the Respondent says that it commenced using the Disputed Domain Name in 2001 several years prior to the Complainant's trade mark registration in the United States of America. Further the Disputed Domain Name is distinguished from the Complainant's DURST trade mark by the addition of the words “pro” and “usa” together with hyphens, the Respondent's site clearly indicates that it is not associated with the Complainant and in any event there are other users of marks incorporating the word or mark DURST.
The Respondent says that it is a bona fide reseller of DURST parts and that it registered and used the Disputed Domain Name with the Complainant's knowledge and consent as its exclusive distributor of optical enlargement parts in the United States of America. It says that it does not compete with the Complainant who opted many years ago to remove itself from the optical enlargement parts business in order to enter the high end digital printing business.
The Respondent says that in the decade that it has used the Disputed Domain Name it has devoted thousands of hours to development of its business and that people have come to know and recognize the Disputed Domain Name for his business and the business now amounts to USD 1,000,000 in annual revenue. Since resolving a payment dispute with the Complainant in 2005 the Respondent says that it has continued to operate its business using the Disputed Domain Name and knew nothing of the Complainant's dispute until receiving the Complaint.
The Respondent says that when it registered the Disputed Domain Name it did so in good faith and with the Complainant's knowledge and consent in order to act as the exclusive distributor of certain of the Complainant's products in the United States of America and therefore there was no registration in bad faith. It says that it has only used the Disputed Domain Name for bona fide business purposes and in order to sell products that do not compete with the Complainant's products. Accordingly, it has not sought to attract customers away from the Complainant and there is nothing to suggest that it registered the Disputed Domain Name in order to prevent the Complainant from using that name. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has demonstrated that it has various trade mark registrations for its DURST mark at the date of the Complaint and it is irrelevant for the purposes of this element of the Policy whether those registrations pre-date the date of registration of the Disputed Domain Name or not (Madrid 2012, S.A. v. Scott Martin-MadridMan Websites,WIPO Case No. D2003-0598). The Panel finds that the Disputed Domain Name incorporates the Complainant's mark and that the additional words “pro” and “usa” are not prima facie sufficiently distinctive to distinguish the Disputed Domain Name and as a result the Disputed Domain Name is confusingly similar to the Complainant's DURST mark.
The Complaint therefore succeeds in relation to the first element of the Policy. B. Rights or Legitimate Interests
Under the Policy the Complainant is required to make out at least a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and it is then for the Respondent to rebut this case.
The Complainant asserts that it owns various registered DURST marks and has made very substantial use of the mark, but offers no other argument in support of a case that the Respondent has no legitimate interests in the Disputed Domain Name.
The Panel accepts the evidence submitted by the Respondent that it obtained rights to be the Complainant's exclusive distributor for certain products and that the Complainant clearly consented to this arrangement. As a consequence the Respondent was at all times undertaking a commercial activity with the Complainant's knowledge and in circumstances that the parties were not in direct competition.
From the correspondence presented in evidence it appears that the Respondent wrote to the Complainant as early as 2002 with the Disputed Domain Name and the corporate name Durst-Pro USA, Inc. printed on its letterhead. There was nothing underhand in the Respondent's use of the Disputed Domain Name and the Complainant had every opportunity to object at this stage. However there is nothing before the Panel to suggest that it did so, rather it acquiesced to the use at least for a number of years until the parties ended up in dispute on other matters. Even then it seems that the Complainant did not pursue the Respondent in relation to its Complaint concerning use of the Disputed Domain Name and the Respondent carried on using the Disputed Domain Name for another 5 years before receiving this Complaint.
In the circumstances that the Complainant does not expand on this issue and merely says that the Respondent can have no legitimate business reasons for using the Disputed Domain Name, the Panel is inclined to accept the Respondent's evidence. It seems to the Panel reasonable to infer that after the Complainant agreed to the Respondent acting as the exclusive distributor for certain products in the United States of America, it acquiesced in the Respondent's registration and use of the Disputed Domain Name.
Further, the Respondent submits and this is supported by the correspondence provided in evidence, that it only used the website at the Disputed Domain Name to market the Complainant's optical enlarger products and not for any other products, such as for example, the products of one of the Complainant's competitors. There appears to the Panel to be no evidence of bait advertising and the Complainant has made no such allegation.
Finally, there appears to the Panel to be no statement or misrepresentation on the Respondent's website at the Disputed Domain Name that the Respondent is associated with the Complainant, other than that it distributes the Respondent's optical enlarger products. Neither has the Complainant made any such allegation.
In this Panel's view, these circumstances are consistent with the spirit of the Oki Data factors identified in the Oki Data Americas, Inc v. ASD, INC.,WIPO Case No. D2001-0903, case concerning the circumstances in which a distributor may have a legitimate interest. Accordingly the Panel finds that the Complainant has failed to make out its case that the Respondent had no legitimate interest in the Disputed Domain Name. As a result the Complaint fails in relation to the second element and it is not necessary for the Panel to consider the third element under the Policy. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Alistair Payne
Sole Panelist
Dated: April 19, 2010
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