Complainant is Archer Company USA, Inc. of Santa Teresa, New Mexico, United States of America, represented by Kemp Smith LLP, United States of America.
Respondent is Tomas Breen of Tramore, Waterford, Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with Register.IT SPA (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 13, 2012. On August 14, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 16, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to an email from the Center requesting confirmation regarding the remedy requested, Complainant confirmed by return email that the remedy requested is transfer.
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 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 13, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 3, 2012.
The Center appointed Ross Carson as the sole panelist in this matter on October 3, 2012. 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
Complainant, a United States Corporation, is a leader in the non-explosive demolition industry. It manufactures and sells a non-explosive demolition agent under the trade mark DEXPAN. Dexpan non-explosive demolition agent is a powdered product with tremendous expansive strength which when mixed with common water can break reinforced concrete and rock safely by silent cracking as opposed to explosive activity or blasting. Complainant began selling Dexpan non-explosive demolition agent at least as early as February 15, 2002.
Complainant advertises and sells its Dexpan product via the Internet and through authorized resellers. Complainant has authorized resellers in the United States of America, Canada, Mexico, Paraguay, Venezuela, and the United Kingdom of Great Britain and Northern Ireland. Complainant sells its Dexpan product globally.
Complainant is the owner of trademark registrations for the trademark DEXPAN in the United States of America, the European Economic Community, Canada and other countries. Particulars of some of the registrations are as follows:
DEXPAN, United States Trademark Registration No. 3019866, for goods in International Class 001 for non-explosive chemical agents for concrete culling, rock breaking, marble and granite quarrying and mining, registered with the United States Patent and Trademark Office on November 29, 2005. The DEXPAN trademark was first used in commerce on February 15, 2002.
A stylized word mark containing the word "Dexpan", United States Trademark Registration No. 3771312. The registered trademark consists of the stylized word "Dexpan" with a stylized letter "p" that resembles a rock drill with a three-line drill bit. Below the wording is a rectangle, resembling a concrete block. Four holes are drilled in the concrete block and the concrete block has the appearance of being cracked. The stylized DEXPAN trademark was registered on April 6, 2010 for goods in International Class 1 for chemicals used in industry and first used in commerce on February 15, 2002.
DEXPAN registered under the Madrid Protocol for the European Community and Australia for goods described as non-explosive chemical agents for concrete cutting, rock breaking, marble and granite quarrying and mining. The registration number for DEXPAN under the Madrid Protocol is 967853 and the date of registration was February 6, 2008.
Complainant is the registrant of the domain name created November 24, 2001.
Respondent is the registrant of the disputed domain name created February 14, 2005 and updated February 14, 2012. Annex 1 to the Complaint is a copy of the results of a WhoIs search for the disputed domain name conducted on WhoIs-S. The page shows a creation date of January 22, 2009 for the disputed domain name, the date relied on by Complainant as the creation date in the Complaint. However, lower on the same page are the results of a WhoIs search on I which show a creation date of February 14, 2005 for the disputed domain name. A search on the Internet Archive Wayback Machine for the website featuring the disputed domain name showed relevant webpages dated as far back as March 8, 2005 which support a creation date of February 14, 2005 as the creation date of the disputed domain name. 5. Parties’ Contentions A. Complainant A.1. Identical or Confusingly Similar
Complainant states that it is the owner of national and Madrid Protocol trademarks designating the European Union and Australia for trademark DEXPAN as set out in Section 4 immediately above.
Complainant submits that the disputed domain name is identical and confusingly similar to Complainant's trademark DEXPAN. The disputed domain name incorporates Complainant's DEXPAN trademark in its entirety; adding the word "international." The addition of the word "international" does not avoid confusing similarity because the term "international" implies that Dexpan non-explosive chemical agent is being sold internationally by an authorized distributor of Complainant, when it is not. The inclusion of such wording does not serve to differentiate Respondent's or Construction Products Innovation Ltd (hereinafter “CPI”) activities from those of Complainant. Moreover, the addition of the term "international" does not negate the confusion created by Respondent's complete inclusion of the DEXPAN trademark in the disputed domain name. See, Accor v. Eren Atesmen, WIPO Case No. D2009-0701; Chanel, Inc. v. Estco Technology Group, WIPO Case No. D2000-0413.
Complainant further submits that the use of the word "international" in the disputed domain name is evidence that Respondent intends to mislead and confuse Internet users by suggesting that Respondent's web site is authorized or sponsored by Complainant. As a result, the disputed domain name is identical or confusingly similar to Complainant’s DEXPAN trademark. A.2. No Rights or Legitimate Interests in Respect of the Disputed Domain Name
Complainant states that Respondent was never an authorized reseller of Complainant for Complainant's Dexpan product or any other product.
Complainant further states that Respondent, an individual located in Ireland is not commonly known by the disputed domain name: Respondent's name appears only as the registrant of the disputed domain name in the registrant’s record, so there is no basis for finding rights or legitimate interests under paragraph 4(c)(ii) of the Policy.
Complainant states that commencing in 2004 it authorized “CPI”, a corporation located in Ireland, to be an authorized reseller for Complainant’s Dexpan product. Complainant further states that in 2011 it terminated the reseller agreement with CPI: Complainant states that Complainant and CPI agreed that CPI would purchase Dexpan product from Complainant and that CPI was allowed to use the DEXPAN trademarks in order to market and to resell Dexpan product to others: CPI last purchased Dexpan product from Complainant in 2007: Complainant allowed CPI to use Complainant's trademarks and Complaint gave CPI copyrighted materials such as photographs and marketing material in order to market and resell Dexpan product to others. CPI, however, did not fully pay Complainant for the Dexpan product it received from Complainant. Complainant was hopeful that CPI would meet its financial obligations to Complainant, but CPI never fully paid for the Dexpan product it received. Since then Complainant continued to demand payment from CPI and in the absence of payment demanded that CPI cease and desist from any further use of the disputed domain name and Complainant's trademarks and copyrighted material. Finally, in 2011 Complainant terminated its agreement with CPI and advised CPI it was no longer authorized to make any further use of Complainant's trademarks and copyrighted materials. Complainant also requested that CPI discontinue the use of the disputed domain name and website, which incorporated Complainant's trademarks. Since the termination of the agreement with CPI, CPI has continued using Complainant's trademarks in commerce and as an Internet domain name without Complainant's authorization or permission.
Complainant further states that Respondent registered the disputed domain name on January 26, 2009, which was more than 7 years after Complainant first used its trademarks in commerce, 4 years after Complainant first registered its trademark in the United States on November 29, 2005, and six months after Complainant received its Madrid protocol registrations on February 6, 2008.
Complainant further states that Respondent updated the disputed domain name on February 14, 2012, well after Complainant's agreement with CPI terminated and well after Respondent and CPI were put on notice that they were not authorized to use Complainant's trademarks and copyright material.
Complainant submits that Respondent knowingly adopted and continues to use the disputed domain name incorporating Complainant’s DEXPAN trademarks in an effort to trade on and benefit from the fame of Complainant's trademark and product name and such use by CPI cannot give rise to a bona fide offering of goods capable of conferring a right or legitimate interest in the disputed domain name. Complainant submits that there are no circumstances under which CPI's use of the disputed domain name can give rise to a bona fide offering of goods capable of conferring a right or legitimate interest in the disputed domain name. CPI is selling Dexpan product, regardless of how it was acquired.
Complainant states that in order for a reseller's use of a trademark in a domain name for the resale of branded goods to be a bona fide offering that should be viewed as conferring a “legitimate interest” the reseller must satisfy the test established in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. In Oki Data, the panel concluded that a reseller using the manufacturer's mark in a domain name must actually offer goods or services associated with the mark, use the domain name to sell only goods and services associated with the mark, accurately disclose the reseller's relationship with the mark holder, and refrain from "cornering the market" on relevant domain names. Complainant states that CPI does not satisfy the Oki Data test because nowhere on the web site associated with the disputed domain name does CPI disclose the relationship between Respondent and CPI and Complainant. On the other hand, if CPI is using the disputed domain name and its website to sell other products than Dexpan, including competing products, such activity is misleading consumers and amounts to a false designation, a passing off of counterfeit goods, or a "bait and switch," that cannot constitute a bona fide offering of goods or services that can give rise to a right or legitimate interest in the disputed domain name. As a result, there are no circumstances under which Respondent's or CPI's actions can give rise to a bona fide offering of goods capable of conferring a right or legitimate interest in the disputed domain name.
Complainant states that it has been unable to find any evidence that Respondent or CPI is making a legitimate noncommercial or fair use of the disputed domain name, without the intent for commercial gain to misleadingly divert consumers. Respondent does not appear to be making any use of the disputed domain name. CPI is using the disputed domain name to purposefully mislead consumers that CPI is an authorized reseller of Complainant’s Dexpan products and that it is legitimately selling Complainant's Dexpan product. CPI is using the disputed domain name for commercial purposes. CPI's website solicits information from consumers to get quotes on a purported Dexpan product. CPI's website also displays Complainant's DEXPAN trademarks and copyrighted materials, thereby confusing visitors as to Complainant's affiliation with or sponsorship of the website and the products advertised therein. In addition, CPI is seeking distributors for the purported Dexpan product. CPI's use of Complainant's trademarks and copyrighted materials on website associated with the disputed domain name is evidence that Respondent or CPI knowingly registered and then updated the disputed domain name with the intent of misleading and diverting Internet users to the CPI's website, and trading on the goodwill established in Complainant’s trademarks and copyrighted materials, for Respondent's or CPI’s commercial gain. As a result, Respondent and CPI are not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers. A.3. Registration and Use in Bad Faith
Complainant states that Respondent Tomas Breen was never an authorized reseller of Complainant or for Complainant's Dexpan product.
Complainant further states that “CPI” used to be an authorized reseller for Complainant and for Dexpan non-explosive demolition agent beginning in 2004.
Complainant and CPI agreed that CPI would purchase Dexpan product from Complainant and that CPI was allowed to use the DEXPAN trademarks in order to market and to resell Dexpan product to others. CPI last purchased Dexpan non-explosive demolition agent from Complainant in 2007. Complainant allowed CPI to use Complainant's trademarks and Complainant gave CPI copyrighted materials such as photographs and marketing material in order to market and resell Dexpan non-explosive demolition agent to others.
Complainant states that in 2011 Complainant terminated its agreement with CPI and advised CPI it was no longer authorized to make any further use of Complainant's DEXPAN trademarks and copyrighted materials. Complainant also requested that CPI discontinue the use of the disputed domain name and website, which incorporated Complainant's trademarks. Since the termination of the agreement with CPI, CPI has continued using Complainant's DEXPAN trademarks in commerce and as an Internet domain name without Complainant's authorization or permission.
Complainant states that Respondent registered the disputed domain name on January 26, 2009, which was more than 7 years after Complainant first used its DEXPAN trademarks in commerce, 4 years after Complainant first registered its DEXPAN trademark in the United States on November 29, 2005, and six months after Complainant received its Madrid protocol registrations on February 6, 2008. Respondent updated the disputed domain name on February 14, 2012, well after Complainant's agreement with CPI terminated and well after Respondent and CPI were put on notice that they were not authorized to use Complainant's trademarks and copyrighted material. A.4. Use in Bad Faith
Complainant states that Respondent is not an authorized reseller of Complainant or for Complainant's Dexpan non-explosive demolition agent and never purchased Dexpan product from Complainant.
Complainant further states that CPI bought Dexpan non-explosive demolition agent from Complainant from 2004 to 2007 with the last sale to CPI was in 2007. Since that time Complainant has sold no product to CPI and CPI's reseller agreement terminated in 2011 after CPI refused to pay Complainant for the Dexpan product it received from Complainant until 2007. In 2009 Respondent registered its disputed domain name incorporating the DEXPAN trademark into its disputed domain name by adding the word "international". CPI has purported to sell Dexpan non-explosive demolition compound on the website associated with the disputed domain name from 2009 to date when in fact Complainant has sold no product to Respondent (or to CPI for re-sale since 2007). In addition, Respondent's website advertises that CPI seeks distributors for Dexpan non-explosive demolition agent. Since 2009 Complainant has attempted to collect the past due amounts owed to it from CPI. CPI has refused to pay the amount owed causing Complainant to discontinue selling product to CPI and to demand that CPI no longer use Complainant's trademarks and copyrighted materials in the disputed domain name and on the website.
Complainant states that in 2012 Complainant sent cease and desist notices to CPI demanding that CPI cease and desist using the Complainant's trademarks, in addition to using information and photos from Complainant's website. CPI did not respond to those notices and in fact has continued to use Complainant's DEXPAN trademarks, information and photos on Respondent's website. In addition, CPI continues to purport to sell Complainant's Dexpan product on Respondent's website. It is unlikely that CPI selected the disputed domain name for any reason other than to trade on Complainant's reputation and to attract consumers aware of Complainant's brand. Moreover, because of the way CPI advertises on Respondent’s website, CPI is creating confusion as to the sponsorship, affiliation, and endorsement because it appears that CPI is sponsored, affiliated, or endorsed by Complainant when CPI is not. All of these actions are done by Respondent and CPI for Respondent's or CPI’s commercial gain. As a result, Respondent and CPI have acted in bad faith by intentionally seeking to capitalize on consumer confusion, and the goodwill associated with Complainant's trademarks. See Lilly ICOS v. Dan Eccles, WIPO Case No. D2004-0750. B. Respondent
Respondent did not reply to Complainant’s contentions. CPI t/a Dexpan International did not reply. 6. Discussion and Findings Procedural Matters
Have all the persons or entities having an obvious interest in the disputed domain name been served with the Complaint and other related documents?
Pursuant to Section 1 of the Rules, the Definition Section, Respondent means “the holder of a domain-name registration against which a complaint is initiated.” According to WhoIs S (Annex 1 to the Complaint), the disputed domain name was created on February 14, 2005 and Tomas Breen is named as the Registrant of the disputed domain name. According to the WhoIs information the Registrant is located in Tramore, Ireland.
As part of its search to determine any possible conflicts before accepting this case, the Panel conducted a Google search for Tomas Breen, Ireland. The search disclosed a link to Tomas Breen on Linkedin. On the link Tomas Breen is described as a Web Application and UX Developer. He is said to have been educated at University of Limerick, CBS Tramore.
Complainant contends that Respondent is an individual located in Ireland who is not commonly known by the disputed domain name and who was never an authorized reseller of Complainant’s Dexpan Products. Complainant’s evidence is that Respondent appears only as the Registrant of the disputed domain name.
Complainant filed as Annexes to the Complaint a number of webpages which appeared on the “www.” website. None of the webpages contain any mention of Respondent in this proceeding.
The Panel accepts that naming the Registrant of the disputed domain name as Respondent conforms with the requirements of the Rules.
The allegations and evidence of Complainant in the Complaint primarily relate to Construction Products Innovation Ltd., an Irish Company, retained by Complainant in 2004 as a reseller or distributor of Complainant’s Dexpan non-explosive controlled demolition agent in Europe and the Middle East. Complainant did not file a written Agreement between Complainant and CPI relating to the sale of Complainant’s Dexpan Product.
Complainant permitted CPI to use its DEXPAN and stylized DEXPAN trademarks in advertising and promoting the sale of Dexpan Products. In addition Complainant provided CPI with Complainant’s copyrighted materials such as photographs, artwork, technical information, etc. for use in promoting and selling Dexpan Products.
Complainant filed as Annexes to the Complaint webpages from the website “www.” which shows that CPI carried on business relating to Dexpan Products as Dexpan International.
In the Complaint, Complainant contended the disputed domain name was registered on January 22, 2009 according to Annex1 and Annex1.1, a date well after Complainant registered its DEXPAN trademarks. However, a close look at Annex1 and Annex1.1 showed that an earlier creation date of February 14, 2005 was also shown as the creation date of the disputed domain name. A search on the Internet Archive Wayback Machine for the website “www.” showed that CPI t/a Dexpan International began posting webpages promoting, advertising for sale and providing technical information relating to Dexpan non-explosive controlled demolition agent in March 2005 and continues doing so. Nothing from the evidence indicates that Respondent or CPI t/a Dexpan Energy were prohibited from registering a domain name containing Complainant’s trademark DEXPAN. Copies of Dexpan International webpages posted by CPI on the “www.dexpaninternational .com” website were attached as Annexes to the Complaint. The content of the copies of the webpages attached as Annexes to the Complaint correspond to the content of the webpages appearing on the Internet Archive Wayback Machine.
Complainant filed copies of emails between it and two principals of CPI t/a Dexpan International, namely Kevin Heery and Niall Duffy. The Dexpan International webpages posted on the website “www.” name Kevin or Niall as contacts for Dexpan International.
Previous UDRP panels have considered situations in which a person or entity other than a named registrant in the WhoIs details may be treated as the holder of the disputed domain name in fact. In PHE, Inc. v. Aisha Haider, WIPO Case No. D2007-0992 the panel found: “A threshold issue arises as to who is the Respondent in fact. Paragraph 1 of the Rules defines the “Respondent” as the holder of the domain name registration against which a complaint is initiated”. Neither this definition, nor other provisions of the Policy and Rules, prevents a finding that a person or entity, other than the named registrant in the Whois details for the domain name, may be treated as the holder of the domain name registration in fact. This is particularly the case where it appears to the Panel that the named registrant may not exist in fact and that there may in fact be a beneficial or underlying owner of the disputed domain name. This is also supported by the findings of previous panels, in which another person or entity is treated as a respondent in fact, or the beneficial owner of the disputed domain name. (See e.g. British Broadcasting Corporation v. Data Art Corporation / Stoneybrook,WIPO Case No. D2000-0683).”
Based on the above evidence and findings of previous UDRP panels, this Panel finds that CPI t/a Dexpan International is the underlying owner of the disputed domain name in fact. The Panel infers from the evidence that Respondent is an Internet specialist who registered the disputed domain name on behalf of CPI t/a Dexpan International.
Complainant’s contentions and evidence are substantially all directed against CPI and in considering the three elements of the UDRP Policy the Panel will consider the three elements as they relate to Complainant and CPI t/a Dexpan International.
The Panel is satisfied that all the persons or entities having an obvious interest in the disputed domain name have been served with the Complaint and other relevant document conforming to the UDRP and the Rules. Substantive Matters
As CPI t/a Dexpan International has been found by the Panel to be the underlying owner of the disputed domain name the term Respondent when used in Section 6 under the heading Substantive Matters shall refer exclusively to CPI t/a Dexpan International. CPI t/a Dexpan International is referred to as CPI t/a Dexpan International or Respondent in Section 6 under the heading Substantive Matters.
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain names should be cancelled or transferred:
(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
The fact that Respondent did not submit a Response does not automatically result in a decision in favor of Complainant. The failure of Respondent to file a Response results in the Panel drawing certain inferences from Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following there from in the Complaint as true. See Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, Complainant must establish rights in a trademark and secondly that the disputed domain name is identical to or confusingly similar to the trademark in which Complainant has rights.
Complainant is the owners of numerous trademark registrations for the trademark DEXPAN registered in relation to the goods non-explosive controlled demolition agents some of which are recited in Section 4 above. Complainant’s DEXPAN trademarks were in use prior to the creation date of the disputed domain name on February 14, 2005. Complainant’s earliest application for the trademark DEXPAN did not proceed to registration until November 29, 2005 slightly after the creation date of the disputed domain name. Complainant’s earliest registration for the trademark DEXPAN shows a first use in commerce date of February 15, 2002.
The consensus view of UDRP panelists on the interpretation of paragraph 4(a)(i) of the Policy expressed in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, (the “WIPO Overview 2.0”) is that if a Complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights. The location of the trademark, its date of registration (or first use), and the goods or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP. However such factors may bear on a panel’s determination whether the respondent has registered and used the domain name in bad faith under the third element of the UDRP.
The disputed domain name incorporates the entirety of Complainant’s trademark DEXPAN. Many UDRP decisions have found that domain names are confusingly similar to trademarks when the disputed domain name incorporates the trademark in its entirety. See eBay, Inc v. Progressive Life Awareness Network,WIPO Case No. D2001-0068 (finding that the domain name incorporated the complainant’s mark in its entirety and holding it to be confusingly similar to complainant’s EBAY mark). See also, Auxilium Pharmaceuticals, Inc. v. Kumar Patel, NAF Claim No. 642141 (finding confusingly similar to complainant’s AUXILIUM name and mark).
The disputed domain name also includes the descriptive word “international” which describes goods promoted and distributed beyond national boundaries. Numerous UDRP panels have found that domain names comprised of a well-known trademark as the distinctive element in conjunction with descriptive or generic terms are confusingly similar to a registered trademark. See, Swarovski Aktiengesellschaft v. Swarovsk.AG,WIPO Case No. D2010-2139 (“Furthermore, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s trademark SWAROVSKI despite the additional word “line” followed by the generic top-level domain “.com”. The distinctive feature of the disputed domain name is “Swarovski”, being the sole and distinctive feature of the Complainant’s trademark. The generic word “line” is indistinctive. The fact that understandably a line or range of goods is sold by the Complainant and marketed under their mark SWAROVSKI will make actual confusion among consumers likely”).
The inclusion of the top level domain descriptor “.com” in the disputed domain name does not affect a finding of confusing similarity. WIPO UDRP administrative panels have repeatedly held that the specific top level of the domain name such as “.org”, “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (see Magnum Piering, Inc., v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525, holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name; and Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429, finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Complainant has proven that the disputed domain name is confusingly similar to Complainant’s trademark DEXPAN. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the disputed domain name.
CPI was retained by Complainant as a reseller of Dexpan products in Europe and the Middle East in 2004 and trades under the name Dexpan International. There is no evidence of a written agreement between Complainant and CPI. CPI was permitted to use Complainant’s DEXPAN trademark, DEXPAN logo and Complainant’s copyrighted advertising material in promoting the Dexpan product in Europe and the Middle East. CPI advertised and resold Dexpan products t/a Dexpan International. A search of the website “www.” on the Internet Archive Wayback Machine discloses webpges of Dexpan International, Doohan, Ballydangan, Athlone, Co. Roscommon, Ireland; Phone: Niall ( phone number), Kevin (phone number); Email: [info@] promoting and advertising Dexpan products as early as March 8, 2005. Dexpan International webpages promoting Dexpan products have continuously appeared on the “www.” website up to October 12, 2012. The two principals of CPI t/a Dexpan International with whom Complainant corresponded were Kevin Heery and Niall Duffy. The only webpages appearing on the website “www.” from 2005 to 2012 were those of CPI t/a Dexpan International.
Correspondence between Complainant and CPI disclose that by 2007 CPI fell in arrears in payment for the dexpan product forwarded to CPI. The recession made the situation in Ireland and Europe worse. Sometime in 2007 Complainant made its last shipment of Dexpan product to CPI.
Correspondence continued between Complainant and CPI t/a Dexpan International through 2008 and 2009 about the outstanding account. Complainant became concerned that CPI t/a Dexpan International continued to promote and advertise Dexpan products while none were being ordered from Complainant or sold to CPI t/a Dexpan International. On September 17, 2010 Complainant put a final settlement proposal to CPI, advising CPI of its registered trademark for DEXPAN in Europe, making the settlement conditional upon CPI having: to stop using Complainant’s DEXPAN trademark immediately, including website, logo, photos, introductions and the Dexpan International company name. There is no evidence of any response to the email of September 17, 2010. On July 18, 2011 CPI t/a Dexpan International were informed by Complainant that ”…we are completely removing you as a distributor…” and urged CPI to remove your website “www.” right away to avoid any legal issues as we hold the trademarks to the DEXPAN logo and its name.
The WIPO Overview, 2.0, Section 2.3 summarizes the consensus view of the rights or legitimate interests a reseller/distributor of trademarked goods in a domain name which contains the trademark as follows: “Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods or services at issue, the use of the site to sell only trademarked goods and the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder.”
Since Complainant notified CPI t/a Dexpan International on July 18, 2011 of termination of the reseller agreement entered into in 2004, CPI has continued to post webpages on the “www.” website advertising and offering Dexpan product for sale. The webpages make no reference to Complainant the owner of the DEXPAN trademark. Complainant question that CPI t/a Dexpan International are selling Complainant’s Dexpan products as CPI t/a Dexpan International have not received Dexpan Products from Complainant since 2007. CPI t/a Dexpan International did not respond to this question.
The Panel finds that following termination of the resellers agreement Complainant has made a prima facie case that CPI t/a Dexpan International has no rights or legitimate interests in the disputed domain name.
It is difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a domain name. Previous decisions under the UDRP have found it sufficient for a complainant to make a prima facie showing that a respondent does not have any rights or legitimate interests in a domain name or domain names. Once this showing is made, the evidentiary burden shifts to the respondent to demonstrate its rights or legitimate interests in the domain name. See Deutsche Telekom AG v. Britt Cordon,WIPO Case No. D2004-0487 where the panel stated “A number of WIPO cases have established that, by virtue of paragraph 4(c) of the Policy, once a Complainant establishes a prima facie case that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent.” In this case, Respondent was given the opportunity by way of Response to demonstrate any rights or legitimate interests in the disputed domain name pursuant to paragraph 4(c) of the Policy. However, Respondent did not file a Response nor avail itself of the benefits of paragraph 4(c) of the Policy.
Based on the facts before the Panel, the Panel finds that Complainant has proven on a balance of probabilities that following termination of the resellers agreement CPI t/a Dexpan International does not have any rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(a)(iii) of the Policy, Complainant must prove that the disputed domain name has been registered and is being used in bad faith. C.1. Registered in Bad Faith
When the disputed domain name was created on February 14, 2005, Complainant was the owner of United States Trademark Application Serial No. 78388144 filed March 21, 2004 in relation to non-explosive chemical agents. Complainant claimed first use in commerce since February 15, 2002.
CPI agreed some time in 2004 with Complainant to become a reseller of Dexpan non-explosive demolition agent for Complainant in Europe and the Middle East. There is no evidence of a written agreement between Complainant and CPI relating to the reseller arrangement. CPI was obviously aware that Complainant was the owner of the trademark Dexpan used in association with non-explosive demolition agent before it agreed to become a reseller of Complainant’s Dexpan product. Complainant states in the Complaint that Complainant and CPI agreed in 2004 that CPI would purchase Dexpan product from Complainant and that CPI was allowed to use the DEXPAN trademarks in order to market and to resell Dexpan product to others. Complainant allowed CPI to use Complainant's trademarks and Complaint gave CPI copyrighted materials such as photographs and marketing material in order to market and resell Dexpan products to others.
CPI has traded as Dexpan International since at least as early as March of 2005 as shown on the webpages associated with the website “www.” appearing on the Internet Archive Wayback Machine. The webpages show use of the DEXPAN trademark, the Dexpan logo, the” Dexpan International” trade name and include extensive content of technical information, drawings and photographs provided by Complainant to CPI relating to Dexpan non-explosive demolition agent available from Dexpan International at its address in Ireland. An email dated September 17, 2010 from Complainant to Kevin Heery on the subject of “DEXPAN International” made an offer of settlement, conditional upon CIP having to “…stop using Dexpan trademark immediately, including website, logo, photos, introductions Dexpan International company name everything has to be in writing.” There is no evidence that Complainant objected to use of the trading name “Dexpan International” or the disputed domain name prior to 2010.
The onus is on Complainant to prove on a balance of probabilities that Construction Products International Ltd. t/a Dexpan International registered the disputed domain name on February 14, 2005 in bad faith.
Based on the evidence available to the Panel, the Panel finds that Complainant has not proven that CPI t/a Dexpan International created or had the disputed domain name registered by Tomas Breen on its behalf in bad faith on February 14, 2005. C.2. Domain Name Used in Bad Faith
Having regard to Complainant’s failure to prove registration in bad faith, the Panel does not propose to consider the issue of use of the disputed domain name in bad faith.
The Policy is directed to resolving disputes concerning allegations of abusive domain name registration and use. See, Milwaukee Electric Tool Corporation v. Bay Verte Machinery , Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. As stated in Oki DataAmericas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, “It is important to keep in mind that the Policy was designed to prevent the extortionate behavior commonly known as Cybersquatting. It cannot be used to litigate all disputes involving domain names. The T, LLC v. Poploff,WIPO Case No. D2000-1470.” In the current case there is no evidence of any written agreement between Complainant and CPI t/a Dexpan International. Disputes about alleged breaches of oral agreements which may or may not have considered default, notice of default, remedies for default, termination for failure to remedy default, remedies after termination and the like are normally better suited for legal proceedings providing production of documents, discovery of documents and witnesses etc. 7. Decision
For the foregoing reasons, the Complaint is denied.
Ross Carson
Sole Panelist
Dated: October 17, 2012
Full & Egal Universal Law Academy