Complainant is Alimak Hek, Inc. of Houston, Texas, United States of America, represented by the law firm Middleton Reutlinger, United States of America.
Resondent is Richard Wheat of Louisville, Kentucky, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 5, 2011. On August 8, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On August 8, 2011, GoD, Inc. transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on August 10, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 30, 2011. Respondent did not submit any response. The Center accordingly notified Respondent’s default on August 31, 2011.
The Center appointed Richard G. Lyon as the sole panelist in this matter on September 5, 2011. The Panel finds that it was properly constituted and has jurisdiction to decide this administrative proceeding. The Panel has submitted his 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 Panel finds the following facts to be supported by evidence accompanying the Complaint.1
Alimak Hek Group AB is a Swedish corporation that manufactures, sells, rents, and services construction hoists, industrial elevators, mast climbing platforms, transport platforms, and material hoists in many companies around the world. Alimak Hek Group AB holds trademarks for ALIMACK and ALIMACK HEK that are registered on the primary register of the United States Patent & Trademark Office (USPTO). The earliest such registration occurred in 1992, with a first use in commerce of 1960. Alimak Hek Group AB’s exclusive licensee for these trademarks in the United States and Canada is its United States subsidiary Alimak Hek, Inc., a Connecticut-chartered company that is Complainant in this proceeding. Complainant’s license rights include “the sole and exclusive right” in the United States to “institute and prosecute [. . .] proceedings [. . .] for violation” of Alimak Hek Group AB’s trademark rights. (Complaint, Annex G, paragraph 11)
Respondent is an individual residing in Louisville, Kentucky, United States. He is or was the sole officer of a company named American Construction Hoist, Inc., also located in Louisville. American Construction Hoist, Inc. is a competitor of Complainant. The disputed domain name was registered in July 2001. At present an Internet user entering the disputed domain name into her browser is automatically redirected to a website at , at which this latter company’s products and services are described. 5. Parties’ Contentions A. Complainant
As the mark owner’s exclusive licensee Complainant has the right to bring this proceeding. The disputed domain name is confusingly similar to the registered ALIMAK and ALIMAK HEK marks because it incorporates the principal feature of them and then adds the name of one of Complainant’s products.
Neither Complainant nor its parent company has authorized Respondent to use the ALIMAK marks. Neither Respondent nor his company has ever been commonly known by the word ALIMAK. Respondent’s use of the disputed domain name is commercial, and not legitimate for purposes of the Policy.
Respondent’s use of the disputed domain name serves to divert Internet users seeking Complainant to Respondent’s website, and is thus proscribed under paragraph 4(b)(iv) of the Policy as an “intentional[] attempt[] to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
Alimak Hek Group AB’s trademark rights, licensed to Complainant, predate registration of the disputed domain name by many years. Respondent may be attributed knowledge of Complainant and Alimak Hek Group AB’s trademark rights because he is a competitor, and by his use of the word elevator, one of Complainant’s products, in the disputed domain name. In these circumstances the registration was made in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
A. Identical or Confusingly Similar. The disputed domain name consists of the word Alimak (identical to the USPTO-registered ALIMAK mark) and one of Complainant’s principal products. Confusing similarity is obvious. It is well established under the Policy that an exclusive licensee has rights in a mark sufficient to invoke the Policy;2 here the mark owner has expressly ceded that right to Complainant by contract. Paragraph 4(a)(i) of the Policy is thus satisfied.
B. Rights or Legitimate Interests. Complainant has not licensed Respondent to use its marks and nothing in the record indicates that Respondent or his company has ever been commonly known by the word ALIMAK, the dominant feature of the disputed domain name. Respondent has never sold Complainant’s products. Complainant has made out its prima facie case that Respondent lacks rights or a legitimate interest in the disputed domain name. Respondent has not come forward with any evidence to overcome this showing. Paragraph 4(a)(iii) has been satisfied.
C. Registered and Used in Bad Faith. Respondent’s only demonstrated use of the disputed domain name, re-direction of Internet users to a competitor’s website, is classic bad faith under the Policy. See, e.g., Policy, paragraph 4(b)(iv).
According to the Internet archive at the Wayback Machine, Respondent’s use of the disputed domain name commenced in 2004. From the record in this case the Panel may infer bad faith in registration three years earlier. Complainant’s mark is distinctive, and a competitor’s registration of it almost certainly was intentional and with full knowledge of the mark and its owner, as its subsequent use makes clear. Adding the name of one of Complainant’s products (also a product sold by Respondent) rules out any possibility of coincidence.
Complainant has carried its burden of proof under paragraph 4(a)(iii) of the Policy.
D. Delay. The only circumstance in this case that might alter the rather perfunctory resolution of the merits above is that Complainant commenced this proceeding more than ten years after Respondent’s registration of the disputed domain name, and seven years after Respondent’s first use of it. Under settled Policy precedent, however, this delay avails Respondent naught. The WIPO Overview 2.0, paragraph 4.10, makes clear:
“Panels have recognized that the doctrine or defense of laches as such does not generally apply under the UDRP, and that delay (by reference to the time of the relevant registration of the disputed domain name) in bringing a complaint does not of itself prevent a complainant from filing under the UDRP, or from being able to succeed under the UDRP, where a complainant can establish a case on the merits under the requisite three elements. Panels have noted that the remedies under the UDRP are injunctive rather than compensatory in nature, and that a principal concern is to avoid ongoing or future confusion as to the source of communications, goods, or services.
However: Panels have also noted that a delay in bringing a complaint under the UDRP may make it more difficult for a complainant to establish its case on the merits, particularly in relation to the second and third elements requiring the complainant to establish that the respondent lacks rights and legitimate interests and that the respondent registered and used the domain name in bad faith. A small number of panels have also begun to acknowledge the possible applicability, in appropriate and limited circumstances, of a defense of laches under the UDRP where the facts so warrant.”
This Panel is aware of only one decision that would allow a defense of laches without significant qualification: The New York Times Company v. Name Administration Inc. (BVI), NAF Claim Number 1349045 (2010), in which the three-member panel stated:
“The Panel believes that the doctrine of laches should be expressly recognized as a valid defense in any domain dispute where the facts so warrant. Prior decisions rejecting the applicability of the doctrine due to the failure of its express recognition in the UDRP Policies appear to be an unsound basis for ignoring the potential defense.”
Though perhaps not strictly necessary to resolution of this case, the Panel sets out his views on laches in UDRP proceedings in the hope of advancing uniformity of decision on this subject, which, in his view, is faithfully summarized in the WIPO Overview 2.0.
All panelists owe each other, and the entire UDRP process, deference to the consensus views that have developed over the twelve years since this process began. As the WIPO Overview 2.0, paragraph 4.1, recognizes, the Policy’s “operat[ion] in a fair, effective and predictable manner for all parties” promotes the Policy’s use in proper cases as an alternative to litigation and discourages its misuse merely in the hopes of drawing a panel whose members might sympathize with an argument that the consensus has declined to follow.
Nevertheless it can be wise from time to time to re-evaluate even settled rules of decision.3 Particularly is that so if circumstances change in the domain name world. For example, increased use of proxy registrations and privacy services, a circumstance not in existence when the Policy was adopted, has generated a number of rules of decision that have developed somewhat from the single respondent recognized in the Policy and Rules. See WIPO Overview 2.0, paragraph 4.9. Those consensus changes, as is true of most changes in precedent-based systems, were developed through case-by-case determinations made in appropriate factual settings, until they garnered general acceptance among UDRP panelists.
The proper approach to delay-based defenses, now reflected in paragraph 4.10 of the Overview, has come about in this way. Quite appropriately it is not a bright line rule; rather it turns on the circumstances of the particular case. Procedurally it is sound, rejecting a standalone equitable defense based only upon the passage of time in favor of considering delay in light of the Policy’s latter two express requirements. As aptly stated by the three-member panel in Mile, Inc. v. Michael Burg,WIPO Case No. D2010-2011: “the Panel observes that lengthy delays in seeking legal or administrative remedies can often have the effect of eroding or undermining the complainant’s arguments with respect to the respondent’s rights or legitimate interests in the disputed domain name, or the respondent's alleged bad faith in registering and using the domain name. The Panel considers it more appropriate to address such issues squarely within the terms of paragraphs 4(a)(ii) and (iii) of the Policy, rather than analyzing them under the equitable doctrine of laches.”
This proceeding well illustrates the advantages of this approach. No facts in the record here indicate any basis for altering the Panel’s analysis simply because of the time that elapsed between registration of the disputed domain name and commencement of this proceeding. Respondent here never used the disputed domain on its own at all. Any business value or association with Respondent accrued not to the disputed domain name, which Internet users never saw, but to the Internet address of Respondent’s website to which Internet users were automatically redirected.4 All use of the disputed domain name was intended to mislead Internet users.
In this Panel’s opinion, the New York Times panel gives no sound reason for its holding quoted above; its only apparent rationale is its members’ contrary opinion. As reported in that proceeding there was no extraordinary factual setting justifying departure from the established rule of decision, and application of laches was unnecessary to that panel’s decision, as the complaint was denied on other grounds. This Panel will therefore treat the New York Times case as an aberration and continue to follow the Overview’s consensus approach on time-based defenses. 7. Decision
For 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 Alimak Hek, Inc. as requested in the Complaint.
Richard G. Lyon
Sole Panelist
Dated: September 8, 2011
1 In fact the Complaint is a model of clarity and economy, containing evidence to support each essential allegation without overwhelming the record with unnecessary duplication.
2 WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.8, and cases there cited.
3 For a famous example in American law, see Alibaba Group Holding Limited v. Digital Domains MEPE, Asian Domain Name Dispute Resolution Centre case No. HK-1100361, dissenting opinion, section C. The entire dissenting opinion, section A in particular, is a good example of circumstances justifying a new look at old rules.
4 In The First Baptist Church of Glenarden v. Melvin Jones,WIPO Case No. D2009-0022, this Panel noted that in such circumstances a respondent could not show any prejudice from delay, which is ordinarily a requirement to establish a laches defense in an infringement action.
Full & Egal Universal Law Academy