The Complainant is ARN Industries, Inc. d/b/a Halco Lighting Technologies of United States of America (“U.S.A”), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, U.S.A.
The Respondent is CFM Holdings Limited (on behalf of Just Raw Pte Ltd) of Singapore, represented by David Ong & Company, Singapore. 2. The Domain Name and Registrar
The disputed domain name is registered with Instra Corporation Pty Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2011. On June 29, 2011, the Center transmitted by email to Instra Corporation Pty Ltd. a request for registrar verification in connection with the disputed domain name. On July 8, 2011, Instra Corporation Pty Ltd. transmitted by email to the Center its verification response confirming that the Respondent, Just Raw Pte Ltd., 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 July 13, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 2, 2011. The Response was filed with the Center on August 2, 2011. On August 5, 2011, the Complainant submitted a Supplemental Filing to the Center.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on August 8, 2011. 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 August 17, 2011, having considered the case file, the Panel formed a preliminary view that the Complainant’s Supplemental Filing dated August 5, 2011 should be accepted. Accordingly, on August 18, 2011, the Panel issued Administrative Panel Procedural Order No. 1 informing the Parties that the Panel was minded to accept the Complainant’s Supplemental Filing and providing the Respondent with a corresponding opportunity if so advised to file a reply thereto no later than August 24, 2011. Accordingly, the Panel extended the due date for its Decision to August 29, 2011. Having been informed that the Procedural Order No. 1 had not been transmitted to the Respondent’s representative, the Panel extended the deadline for the Respondent’s reply to the Complainant’s Supplemental Filing to August 31, 2011. On August 31, 2011, the Respondent filed a Supplemental Filing. 4. Factual Background
The Complainant is a Georgia company with a principal place of business in Norcross, Georgia, United States of America (“U.S.A.”). The Complainant was founded in 1974 and manufactures ballasts and lamp types designed for residential, industrial/commercial and special lighting applications. The Complainant operates distribution centers in Atlanta, Georgia; Cleveland, Ohio; Houston, Texas; and Phoenix, Arizona (all U.S.A.).
The Complainant is the owner of U.S.A. federal registered trademark no. 3528061 for the word mark PROLED registered on November 4, 2008 in international class 11 (lamps). The Complainant sells various high performance lamps designed to be halogen and incandescent replacements under the PROLED trademark.
The Respondent registered the disputed domain name on October 19, 2010. The Respondent, CFM Holdings Limited, is a publicly listed company in Singapore. The Respondent has been trading for 32 years and has carried on its LED business with effect from October 2008. The Respondent uses the disputed domain name to market its LED products on the Internet and has sold these in Singapore, Indonesia, Malaysia, Bangladesh and Uzbekistan. 5. Parties’ Contentions A. Complainant
In the Complaint, the Complainant contends as follows:
The disputed domain name is confusingly similar to a trademark in which the Complainant owns rights; the Respondent has no rights or legitimate interests in the disputed domain name; and the disputed domain name was registered and is being used in bad faith.
The disputed domain name contains the Complainant’s PROLED trademark in its entirety, preceded by the characters “cfm-”. Inclusion of the characters “cfm-” in addition to the Complainant’s PROLED trademark is insufficient to eliminate confusing similarity, because panels have usually found the incorporated trademark to constitute the dominant or principal component of the domain name. Even if the Respondent (or CFM Holdings Limited) owns trademark rights in the characters “cfm”, the inclusion of another trademark in a disputed domain name also is insufficient to eliminate confusing similarity. With respect to the hyphen that appears in the disputed domain name in addition to the Complainant’s PROLED trademark and the letters “cfm”, punctuation marks such as hyphens cannot on their own avoid a finding of confusing similarity.
The Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the PROLED trademark in any manner. There is no evidence of any commercial relationship between the Complainant and the Respondent which would entitle the Respondent to use the mark. The Respondent has never used, or made preparations to use, the disputed domain name or any name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. The Respondent is using the disputed domain name (without permission or consent from the Complainant) in connection with a website about light bulbs, the same product covered by the Complainant’s PROLED trademark. The Respondent prominently uses the Complainant’s PROLED trademark on its website as the primary logo at the top of the page. Internet users who view the Respondent’s website are likely to be misled about the source of the Respondent’s services. Such use of the disputed domain name in connection with competitive services is not bona fide, noncommercial or not misleading under the Policy.
To the Complainant’s knowledge, the Respondent has never been commonly known by the disputed domain name and has never acquired any trademark or service mark rights in the disputed domain name. According to the WhoIs record the registrant of the disputed domain name is “JUST RAW PTE. LTD. / just raw” – not “cfm-proled” or “proled.” This fact, combined with the lack of evidence in the record to suggest otherwise, allows the Panel to rule that the Respondent is not commonly known by the disputed domain name or any variation thereof pursuant to Policy. Prior to filing this Complaint, counsel for the Complainant conducted a trademark search which did not identify any trademarks containing “proled” or “cfm proled” owned by the Respondent or CFM Holdings Limited.
The use of a domain name that is confusingly similar to a complainant’s trademark, in the absence of rights or legitimate interests, in connection with a website offering competing goods or services constitutes bad faith under paragraph 4(b)(iv) of the Policy.
The Respondent’s motive in registering and using the disputed domain name seems to be simply to disrupt the Complainant’s relationship with its customers or potential customers or an attempt to attract Internet users for potential gain. The practice of registering a domain name and using it to redirect a user to a website which is used for the sale of competing services constitutes evidence of registering and using a trademark in bad faith.
The Respondent is a competitor of the Complainant, as it sells similar products, and has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor, in violation of paragraph 4(b)(iii) of the Policy. The confusion created by the disputed domain name makes potential customers choose other services than the Complainant’s. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the Complainant’s PROLED trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites or of a product or service on the Respondent’s website in violation of paragraph 4(b)(iv) of the Policy.
Neither the Respondent nor the addressee of the Complainant’s demand letter to CFM Holdings Limited has ever responded to the letter. Such failure to positively respond provides strong support for a determination of bad faith registration and use. B. Respondent
In the Response, the Respondent contends as follows:
The Respondent is CFM Holdings Limited (on behalf of Just Raw Pte Ltd). Just Raw Pte Ltd was appointed by the Respondent to register the disputed domain name on behalf of the Respondent.
There is no material similarity between the Complainant’s trademark and the disputed domain name and as such there is no confusion between them. The Complainant's trademark, although registered in U.S.A., is not distinctive. The word, “proled”, is used commonly and generally in the LED industry to simply mean that the LED products are of a “professional” standard. The Complainant’s trademark is also used by a German company, MBN GmbH, as a registered trademark. Though the disputed domain name incorporates the Complainant’s entire trademark, there is no confusion caused as the trademark is not distinctive. The disputed domain name is prominent on the part “cfm” and not on “proled.” The main part of the Respondent’s logo is a moon crescent and not the part “proled”, and that part is typed as “proLED”, a script that is visually different from the mark PROLED.
The Respondent genuinely uses the disputed domain name to market its LED products on the Internet, offering a wide range of products for sale and has genuinely carried on its LED business with effect from October 2008. To date, the Respondent has sold SGD 214,432 worth of LED products in Singapore. The Respondent also sells LED products in Indonesia, Malaysia, Bangladesh and Uzbekistan.
The Respondent maintains that its intention in registering the disputed domain name has always been bona fide. When the Respondent first sought to register the disputed domain name in October 2010, it had not received any notice from any party, including and especially the Complainant. Until the receipt of the notice in these proceedings, the Respondent had no knowledge that PROLED is a registered trademark.
The Respondent’s understanding at all relevant times is that the term “proled” is used generally by businessmen in the LED products industry to describe a certain “professional” quality and standard of their LED products just as the word “pro” sounds and suggests. For this reason, the Respondent has also used the word “pro” to coin the term “proEnergy” to market its range of products. The term “proled” is therefore a fair use of the disputed domain name in a descriptive sense rather than in a trademark sense.
At no time does the Respondent have any intention or wish to identify or associate its LED products with those of the Complainant. The Complainant and the Complainant’s trademark are not well-known, if at all, in Southeast Asia where the Respondent’s products are mainly marketed and sold. The Respondent did not receive the Complainant’s solicitor’s emails and faxed letter and had no knowledge of them till they were received together with the notification of these proceedings. In any event a domain name registrant has no obligation to respond to or even receive demand letters. C. Complainant’s Supplemental Filing
In its Supplemental Filing, the Complainant contends as follows:
Although the Response states that “Just Raw Pte Ltd was appointed by the Respondent to register the Domain Name on behalf of the Respondent,” this statement is unsupported by any evidence or documentation in the Response and, therefore, should be disregarded by the Panel as an insufficient conclusory statement unsupported by evidence. The only documentation of the Respondent’s identity in the record is the Whois data which clearly shows that the Respondent is “JUST RAW PTE. LTD.”
The Policy requires that a complainant prove “no rights or legitimate interests” and “bad faith” only with respect to the registrant of a domain name – not with respect to a third party that may have appointed the registrant of a domain name. Accordingly, there is nothing in the record to indicate that Just Raw Pte Ltd (as opposed to CFM Holdings Limited) has any rights or legitimate interests in the disputed domain name or did not act in bad faith.
The Complainant’s PROLED trademark is registered on the Principal Register at the United States Patent and Trademark Office. Such registrations are only available for marks that have acquired some degree of distinctiveness. If the Complainant’s trademark had lacked distinctiveness it would have been denied registration. In any event, a proceeding under the Policy is not the proper forum in which to challenge the validity of a federal trademark registration.
The Policy does not blankly grant “rights or legitimate interests” to any registrant that “genuinely” uses a domain name containing a complainant’s trademark in its entirety. The Respondent’s use of the disputed domain name is not “in connection with a bona fide offering of goods or services” and, therefore, the Respondent has not acquired rights or legitimate interests in the disputed domain name. This is true even where a disputed domain name contains a trademark with what some might consider to be a “descriptive character.” It is significant that the Respondent is not using the disputed domain name that merely contains the characters “led” but that it is using a domain name that contains the Complainant’s PROLED trademark in its entirety. The relevant comparison for purposes of the Policy is between the Complainant’s trademark PROLED and the disputed domain name ; not between the Complainant’s trademark and the Respondent’s logo. Further, any capitalization utilized by the Respondent is irrelevant in a proceeding under the Policy.
The Response states that the Respondent’s understanding is that “the term “proled” is used generally by businessmen in the LED products industry to describe a certain “professional” quality and standard of their LED products” yet in support of this statement, the Respondent cites its own use of a phrase that includes the characters “pro,” namely “proEnergy,” and not any such uses “generally by businessmen in the LED products industry.” Accordingly, such a self-serving statement, unsupported by any evidence, should be disregarded by the Panel. D. Respondent’s Supplemental Filing
In its Supplemental Filing, the Respondent contends as follows:
There is nothing inaccurate or misleading about who is the holder or actual owner of the disputed domain name as alleged by the Complainant. It is obvious and clear that the web pages at the disputed domain name describe and contain details of CFM Holdings Limited, its subsidiaries and their products. The web pages make it clear, though in very tiny letters, that Just Raw Pte Ltd is the entity that “powers” the website. The reliability and usefulness of the WhoIs database is limited. The registration agreement for the disputed domain name states that “Entry of a domain name in the WhoIs database will not be taken as evidence of anything other than the registration of the Domain Name.” Owner registered name change can be effected easily, at any time and online. In all Commonwealth jurisdictions there is a recognized legal concept of “equitable ownership” in a property and this also applies to domain names. The Respondent produces documents evidencing the appointment of Just Raw Pte Ltd by Cheong Fatt Metal Factory Pte Ltd, a fully owned subsidiary of CFM Holdings Limited, to register the disputed domain name on their behalf. An owner search by the Complainant could only show the legal and not the equitable owner of the disputed domain name. If the Complainant had carried out a WhoIs search at any time on or after July 15, 2011 this would show that CFM Holdings Limited and not Just Raw Pte Ltd was the legal owner of the disputed domain name.
The Complainant had all along in its actions and throughout the Complaint given the Respondent the impression that it treated and regarded CFM Holdings Limited and its subsidiaries, and not Just Raw Pte Ltd, as the user, owner and holder of the disputed domain name. More importantly, the Complainant had also focused and directed its Complaint at CFM Holdings Limited. The Complainant wrote to CFM Holdings Limited and its subsidiary CFM (US) Inc., and not Just Raw Pte Ltd, on January 31, February 2 and February 17, 2011 and demanded the removal of all content from the website and abandonment of the disputed domain name.
The logo on the website to which the Complainant refers belongs to CFM Holdings Limited and not Just Raw Pte Ltd. The Complainant’s objection on grounds of confusing similarity refers to the Respondent’s initials, “CFM.” The Complainant refers to the fact that the website associated with the disputed domain name sells light bulbs. This is a product that only CFM Holdings Limited deals in and not Just Raw Pte Ltd. The Complainant also refers to the fact that searches did not identify certain trademarks owned by CFM Holdings Limited.
It is misleading for the Complainant to claim that the Policy requires it to show bad faith and lack of legitimate interests against the registrant only. The Policy refers to “the registrar and its customer (the domain name holder or registrant).”. The burden under the Policy is therefore on a Complainant vis à vis a domain name holder and not just against a registrant. A registrant, as in this case, may just be an ordinary registration agent who has yet to login to transfer its name and legal ownership to its employer or principal. The equitable interest and actual ownership of the disputed domain name belongs to another party, the domain name holder, who is the actual party using the disputed domain name and operating the website.
The Complainant states that its trademark must be accepted by the Panel as distinctive because of U.S.A. trademark law. This is not necessarily correct as what may be distinctive under U.S.A. trademark law may not necessarily be distinctive under the trademark law of another country, or under the Policy. There are various areas where trademark law provides protection and the Policy does not. Panels have decided on various occasions that domain names which incorporate another’s trademark may be allowed in certain cases and circumstances. The issue of distinctiveness for the Panel is to be determined under the Policy and not U.S.A. trademark law. The Respondent does not question the validity of the Complainant’s trademark under U.S.A. trademark law and this is not required by the Policy.
The Complainant’s trademark is not distinctive in the LED lights industry and not so much in the sense that it is not distinctive for trademark registration. The Respondent has provided Google search results to show that there are many websites with the word “proled” in their titles and evidence that the same mark has been registered by a German company as their registered trademark.
The Policy does grant recognition to a domain name holder as being the party with “rights and legitimate interests” in the domain name if the holder does genuinely use the domain name to market its products and offer its services on the website of the domain name. This can be seen from the Model Response provided by the Center. This recognition is also granted to the domain name holder even if the domain name contains the full trademark of another entity, see for example Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903.
The Respondent has used the word “proled” in its descriptive meaning, selling ordinary LED lights of a professional quality, rather than the Complainant’s brand of LED lights. There is no mention that the range of LED lights that the Respondent is selling is a registered trademark. Hence, there is no evidence to show that the Respondent is trading off third party rights in such word or phrase. The Respondent has chosen the disputed domain name because of its attraction as a descriptive phrase. The Respondent’s website and brochure are not targeting the Complainant. The Respondent has not stated anywhere that “proled” is a trademark. Further, the addition of the Respondent’s company name “CFM” in front of the word “proled” in the disputed domain name is good evidence that “proled” is merely used as a descriptive phrase for the type of products that are being advertised through the website. The Complainant’s mark is not well-known or distinctive enough as seen from the Google search results hence there is no reason for the Respondent to seek to trade off the goodwill that the Complainant might have established in its trademark.
A comparison between the Complainant’s trademark and the Respondent’s logo is helpful to show how the mark “proled” can be used in different circumstances without causing any confusion. In any event, the question of the Respondent’s logo was first raised by the Complainant in the Complaint. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Preliminary Issue: Respondent Identity
The Response in the present case has been filed by CFM Holdings Limited “on behalf of Just Raw Pte Ltd.” The Complainant’s Supplemental Filing raises the question as to whether CFM Holdings Limited is entitled to file this Response and to seek to rely upon its own alleged rights and legitimate interests in the disputed domain name when it is not the named registrant thereof in the WhoIs data. The WhoIs data discloses that the registrant is Just Raw Pte Ltd and this has been verified to the Center by the registrar for the disputed domain name. Accordingly, this is not the more typical situation of a privacy service or proxy registration where, at the point of registrar verification, the registrar discloses an “underlying registrant”, as described in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) paragraph 4.9. For its part, CFM Holdings Limited asserts and provides evidence that it appointed Just Raw Pte Ltd to register the disputed domain name on its behalf. CFM Holdings Limited has also asserted that it is the holder of the disputed domain name and that it has beneficial interests therein.
Paragraph 4.9 of the WIPO Overview 2.0 notes that the Rules define the respondent as the holder of a domain name registration against which a complaint is initiated. The UDRP Rules also give the panel power to conduct proceedings in such manner as it considers appropriate in accordance with such Rules and the UDRP. As such, the Panel has discretion to determine the appropriate Respondent. The Panel notes that a similar situation arose recently in the case of Akris Prêt-à-Porter AG v. Fresh Enterprise Limited and Andrew Kris,WIPO Case No. D2011-0366. In that case, the first respondent was a company engaged in web development to whom the domain name had been transferred by the second respondent. The second respondent alleged that it was the beneficial owner of the domain name. In deciding that the second respondent should be permitted to join in the response and was entitled to rely on its own alleged rights and legitimate interests in the domain name, the panel considered the following factors: first, the complainant had made contact with the second respondent many times regarding the acquisition of the domain name including after the domain name had been transferred to the first respondent (and thus the complainant evidently felt confident that the second respondent was the beneficial owner of the domain name); secondly, the evidence established an unbroken chain of underlying ownership by the second respondent; and thirdly, the use of the domain name, which was exclusively referable to the second respondent, had not significantly changed since it was first registered.
In the present case, while the Panel does not have as much information as was available to the panel in Akris, supra, there is clear evidence that the Complainant’s counsel (albeit not the firm representing the Complainant in the present Complaint) wrote to CFM Holdings Limited by email of January 31 and letter of February 2, 2011 (with a brief follow-up email of February 17, 2011) complaining about the latter’s use of the term “proled” and in particular referring to the website at, and seeking the Respondent’s abandonment of, the disputed domain name. Furthermore, all of the evidence before the Panel points to the fact that the disputed domain name is being used by CFM Holdings Limited for a business website and is not used by Just Raw Pte Ltd for any purpose and indeed this was entirely apparent to the Complainant before the date of filing of the Complaint. There is no suggestion by the Complainant that Just Raw Pte Ltd ever used the disputed domain name at any point during the period from registration to date. As such, it seems to the Panel to be disingenuous of the Complainant to argue that CFM Holdings Limited has no locus standi in the present proceedings and/or that the Complaint may be properly and exclusively directed at Just Raw Pte Ltd alone. Accordingly, the Panel determines in its discretion that notwithstanding the identity of the registrant on the WhoIs, CFM Holdings Limited is a proper Respondent in this case. B. Identical or Confusingly Similar
The Parties’ respective positions on this point may be summarized as follows: the Complainant considers that the disputed domain name incorporates its registered trademark in its entirety and that the additional letters “cfm” and the dash or hyphen do not adequately distinguish the disputed domain name from that trademark. However, the Respondent contends that the Complainant’s trademark is not distinctive as the term “proled” is used commonly and generally within the LED industry.
This Panel takes the generally accepted view that the test in paragraph 4(a)(i) of the Policy is “a relatively low threshold test for a complainant, the object of which is to establish that there is a bona fide basis for the complaint” (The Perfect Potion v. Domain Administrator,WIPO Case No. D2004-0743). Whatever the Respondent’s position may be as to the non-distinctiveness of the term “proled” on a global basis, it cannot deny that the Complainant’s trademark is registered on the Principal Register at the United States Patent and Trademark Office. As such, the Panel accepts the Complainant’s contention that the mark may be considered to have acquired some degree of distinctiveness, at least as far as the territory of the U.S.A. is concerned. The Panel does not consider that the addition of the letters “cfm” and the dash or hyphen are sufficient to distinguish the disputed domain name from the Complainant’s trademark.
In the Panel’s view, the Complainant has demonstrated a bona fide basis for the Complaint and the Panel considers that there is at least some scope for confusion, if only among the U.S.A. based consumers of the products marketed by the Complainant under the Proled brand. In these circumstances, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and thus that the first element under the Policy has been established. C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
As far as paragraph 4(c)(i) of the Policy is concerned, the Respondent asserts that it has been trading in LED products since October 24, 2008. The evidence supporting this assertion is the Respondent’s accounts which were produced with the Response. However, this does not demonstrate the date at which the Respondent adopted the trading name corresponding to the disputed domain name, namely “cfm-proled” in connection with its offering of those goods. As far as the Panel can determine, the only evidence pointing to the date of adoption of the name corresponding to the disputed domain name is the disputed domain name’s registration date of October 19, 2010. Since that date, the Respondent appears to have used the disputed domain name in connection with its LED product range. Although considerably more recent than the date on which the Respondent began to trade in such products, this nevertheless pre-dates any notice to the Respondent of the dispute. Accordingly, this does constitute evidence of the Respondent’s use of a name corresponding to the disputed domain name in connection with an offering of goods. The issue for the Panel however is whether or not such offering may considered to be in bona fide. In the Panel’s opinion, this is dependent upon the Respondent’s motivation at the time when the disputed domain name was registered.
As far as paragraph 4(c)(ii) of the Policy is concerned, the extract from the Respondent’s website at the disputed domain name (a page entitled “About Us”) clearly shows that the Respondent is using the name “CFM-Proled” as a trading name. This page states inter alia “CFM-Proled is the subsidiary of CFM Holdings Ltd focusing on development and distribution of quality LED products.” Clearly, therefore, the Respondent does appear to have been known by the disputed domain name. While paragraph 4(c)(ii) of the Policy does not expressly require that the prior adoption of a name by a respondent must have been in bona fide, the Panel believes that this is implied and that no respondent could avail itself of this paragraph if it had adopted a name corresponding to a disputed domain name with bad faith intent to take advantage of its trademark value. Again, therefore, the Panel’s analysis indicates that this issue turns on the question of the Respondent’s motivation at the date of registration of the disputed domain name.
What was the Respondent’s motivation? Was the Respondent acting in good faith when it registered the disputed domain name and when it adopted the trading name “CFM-Proled”? Was the Respondent fully aware of the Complainant and intent upon capitalizing upon the value of the Complainant’s trademark? Was the Respondent merely selecting a term which it believed to be descriptive of its professional LED products? These are difficult questions to determine based upon the evidence before the Panel.
When the Respondent began to sell LED products in October 2008, the Complainant’s PROLED trademark had yet to be granted. Nevertheless, by the time the Respondent registered the disputed domain name and adopted the trading name “CFM-Proled” the Complainant’s trademark had been in force for some two years. Clearly it is possible that the Respondent could have known of the Complainant’s trademark when it registered the disputed domain name since it maintains what it describes as a “marketing office” in the U.S.A. and might be deemed to be aware of its competitors and their trademarks within that jurisdiction. The question for the Panel however is whether it is more probable than not that the Respondent was so aware. The Respondent professes to have had no knowledge of the Complainant or its trademark and states that the reason for its adoption of the name is that the word “proled” is used commonly and generally in the LED industry to mean LED products of a “professional” standard. The Respondent explains that it makes a similar use of the term “proEnergy” in connection with power efficient lighting. By way of further explanation, the Respondent also states that it is based in Singapore and notes that its LED products have only ever been sold within certain Asian markets.
Although the Complainant attacks the Respondent’s “proEnergy” explanation as self-serving, this is not the sole foundation of the Respondent’s case. The Respondent also produces a copy of the first three pages of a Google search for the term “proled” which appears to have produced total results of 1.2 million uses of the term. The Respondent asserts that this search is evidence both that there is another owner of a PROLED trademark besides the Complainant and also that the term “proled” is a descriptive phrase in general use in the LED products industry.
It is clear from the search results and from a copy trademark registration also produced by the Respondent that a German company named MBN GmbH owns an international trademark registered in March 2007 for the stylized word “proled” extending to the territories of Switzerland, China, European Union and Ukraine. The Panel does not consider that this fact is of particular assistance to the Respondent; it simply means that a third party has similar rights to those of the Complainant in different territories.
In the Panel’s view, the real question is whether there is any support for the Respondent’s contention that while two parties may own trademarks for the word “proled” the term “proled” is in widespread use in industry as a way in which to describe certain LED products and that this was the reason for the selection of the disputed domain name by the Respondent. The search results do appear to be supportive of that contention. Apparently descriptive uses in the search results include “Pro LED Screens”, the “Pro LED Grow Light”, a “Pro LED Otoscope”, a “Pro-Led Beam” scuba diving torch and multiple similar entries from manufacturers of various types of lighting. Many of these, but by no means all, place a space between the words “pro” and “LED.” The Panel does not consider that this latter observation is of major significance since spaces cannot be used in domain names for technical reasons and thus if the Respondent is to be believed that it selected the name for its descriptive value it would either have had to use no space in the disputed domain name, as it did, or perhaps to have separated it with a hyphen. Accordingly, the Respondent’s assertion that it chose the term “cfm-proled” to refer to it’s (i.e. CFM’s) professional LED products does appear to be reasonably credible.
The Complainant does not directly address the issue of the search results in its Supplemental Filing, choosing instead to rely upon the fact that distinctiveness is demonstrated by virtue of the federal status of the Complainant’s PROLED trademark registration. The Complainant also states that the Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services in light of the fact that the disputed domain name contains the Complainant’s trademark in its entirety and, therefore, that the Respondent has not acquired rights or legitimate interests in the disputed domain name. The Complainant adds that this applies even where a disputed domain name contains a trademark with what some might consider to be a “descriptive character,” citing the case of Tractor Supply Co. of Texas, LP, and Tractor Supply Company v. A Domain Privacy / Transure Enterprise Ltd.,WIPO Case No. D2011-0487 in support of that contention. The Panel is not persuaded by that argument. Tractor Supply Co. deals with a parking page generating pay-per-click revenue and this weighed heavily against the respondent on the question of rights and legitimate interests. It was a case in which the respondent did not reply to the complaint and thus gave no explanation as to its motivation for registering the domain name concerned. On the contrary, in the present case, in a fulsome Response and Supplementary Filing, the Respondent contends that it is using the phrase “proled” in the disputed domain name in the same descriptive manner as the uses by others which it has demonstrated in the search results.
As the panel in Tractor Supply Co. found, paragraph 2.2 of the WIPO Overview 2.0 is instructive on this question. That paragraph provides as follows:
“Does a respondent automatically have rights or legitimate interests in a domain name comprised of a dictionary word(s)?
Consensus view: If the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under paragraph 4(c) of the UDRP, or any other basis for rights or legitimate interests, then the respondent may lack a legitimate interest in the domain name, even if it is a domain name comprised of a dictionary word or phrase. Factors a panel tends to look for when assessing whether there may be rights or legitimate interests would include the status and fame of the trademark, whether the respondent has registered other domain names containing dictionary words or phrases, and whether the domain name is used in connection with a purpose relating to its generic or descriptive meaning (e.g., a respondent may well have a right to a domain name "apple" if it uses it for a genuine site for apples but not if the site is aimed at selling computers or MP3 players, for example, or an inappropriate other purpose). Panels have recognized that mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase (which may be generic with respect to certain goods or services), may not of itself confer rights or legitimate interests in the domain name. Normally, in order to find rights or legitimate interests in a domain name based on the generic or dictionary meaning of a word or phrase contained therein, the domain name would need to be genuinely used or at least demonstrably intended for such use in connection with the relied-upon meaning (and not, for example, to trade off third-party rights in such word or phrase).”
The Panel respectfully adopts the consensus view. In the Panel’s opinion, the key points for the present case are first that the consensus view anticipates that the Respondent has failed to show one of the three circumstances under paragraph 4(c) of the Policy. That is not necessarily the case here. Secondly, in the present case the Respondent contends that the disputed domain name is being used in connection with the “relied-upon meaning of the phrase” in the same manner as the other non-trademark and descriptive uses identified in the search results. As noted above, in the Panel’s opinion, the search results do provide some support for the Respondent’s contention. It appears that a variety of organizations are making descriptive uses of the term “proled” in connection with LED lighting and other products, possibly in markets and territories to which the Complainant’s registered trademark does not extend. As noted above, the Complainant itself does not expressly address the terms of the search results in its Supplementary Filing and thus has provided no comment to the Panel on its terms.
Returning to the question of paragraphs 4(c)(i) and (ii) of the Policy, and the Respondent’s motivation in registering the disputed domain name, it is clear that the Respondent possibly had the opportunity and potential knowledge to target the Complainant’s trademark by virtue of its registration of the disputed domain name. The problem for the Complainant is that this is as far as the evidence goes. This is not a case in which there are clear textbook indicia of cybersquatting or in which the respondent appears disinterested in the matter, or has a lengthy record of prior cybersquatting findings against them. On the other hand, the Panel has been presented with a reasonably credible explanation for the Respondent’s selection of the disputed domain name by virtue of its use as a descriptive term. In the Panel’s opinion, that explanation is consistent with the Respondent having acted on a bona fide basis with regard to the registration and use of the disputed domain name, in accordance with the terms of paragraph 4(c)(i) and (ii) of the Policy.
Accordingly, the conclusion that the Panel has reached on the provided record in this case is that the Complainant has not proved on the balance of probabilities that the Respondent’s intent was to target the Complainant’s trademark. This does not mean that the Complainant might not be entitled to seek other remedies based upon its rights in its registered trademark. It simply means that in the opinion of the Panel the Complainant has not demonstrated that it has a remedy under the Policy in this matter. As the panel noted in Palm, Inc. -v- South China House of Technology Consultants Ltd.,WIPO Case No. D2000-1492, “The stated objective of the Policy is very narrow. It is concerned to deal with cybersquatting and not commonplace trademark infringement issues and/or unfair competition issues, however flagrant.” The present dispute between the Parties appears to the Panel to be one or other of these types of issue. It is therefore a matter more appropriately addressed to a court of competent jurisdiction which will engage in a fuller enquiry than that available to a panel under the Policy.
The Panel finds that the Complainant has not proved on the record in these Policy proceedings that the Respondent has no rights or legitimate interests in respect of the disputed domain name and thus that the second element under the Policy has not been established. D. Registered and Used in Bad Faith
For the same reasons as the Panel noted in the preceding section, concerning the evidence as to the Respondent’s intent in registering and using the disputed domain name, the Panel finds that the Complainant has failed to prove on the balance of probabilities that the disputed domain name has been registered and is being used in bad faith. As was stated in Palm, supra, this does not mean that the Panel in the present case is expressing the view that the Respondent is not infringing the Complainant’s rights but merely that the dispute between the Parties does not appear to be a case of cybersquatting within the scope of Paragraph 4(a) of the Policy.
Accordingly, the Panel finds that the Complainant has not proved that the Respondent has registered and is using the disputed domain name in bad faith and thus that the third element under the Policy has not been established. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Andrew D. S. Lothian
Sole Panelist
Dated: September 6, 2011
Full & Egal Universal Law Academy