The Complainant is Ketut Puspa Ariani of Bali, Indonesia, represented by Rodyk & Davidson LLP, Singapore.
The Respondent is Martin Lindsey-Clark of Headington, Oxford, United Kingdom of Great Britain and Northern Ireland, represented by Rodyk & Davidson / Whois Privacy Protection Service, Inc. of Bellevue, Washington, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 3, 2012. On October 3, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 18, 2012, the Registrar transmitted by email to the Center its verification disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 21, 2012, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. In response, the Complainant sent an email to the Center on October 25, 2012, advising that it would not be filing an amended Complaint on the basis that the Registrant had been accurately named as at the date of the Complaint, although it submitted that Mr. Martin Lindsey-Clark (as set out in the Registrar’s verification) is in fact the true owner of the registration.
The Center verified that the Complaint on October 3, 2012 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 October 30, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 19, 2012. The Response was filed with the Center on November 18, 2012.
The Center appointed Alistair Payne as the sole panelist in this matter on December 4, 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
The Complainant is the majority shareholder and director of PT Abadi Sumber Hidup (“ASUHI”) which company is in the business of brewing and selling beer in Indonesia (and in various other countries) under the STORM brand since 2004.
The Respondent registered the Disputed Domain Name on December 23, 2004. 5. Parties’ Contentions A. Complainant
The Complainant says that she owns a combined logo and word mark registration for its STORM mark in Indonesia dating from July 2010 under registration number IDM00330442 and submits on behalf of ASUHI that the company owns a similar registration in Singapore (registration T1100144Z) and also the STORM BREWING trade name. The Complainant has submitted some evidence of some advertising and promotional activity of ASUHI concerning the STORM mark for its beer products, including for its “Storm Brewing Iron Stout”. The Complainant says that ASUHI sold beer products in Indonesia since 2004 and produces evidence of STORM beer labels from February 2006.
The Complainant says that the disputed domain name is confusingly similar to the STORM trade mark or to the trade name “Bali Storm Brewing Company” which she notes is not an incorporated company but rather a trade name for ASUHI and its distributor company from time to time.
The Complainant submits that Mr. Clark was an employee of ASUHI’s previous distributor and registered the disputed domain name for and on behalf of ASUHI under the Bali Storm Brewing Company name and subsequently transferred it to himself without authorization. She says that this transfer was made in bad faith and that Mr. Clark has no right or legitimate interest in the disputed domain name personally. Further she says that the website to which the disputed domain name now resolves appears to be for the benefit of one of ASUHI’s competitors and has refused after various requests to transfer it to the Complainant or ASUHI which is indicative of Mr. Clark’s bad faith in registering the disputed domain name. The Complainant submits that these facts together with the fact of Mr. Clark’s use of the Respondent as a privacy protection service to hide its identity is indicative of bad faith registration and use. She submits that the Respondent is using the disputed domain name to unfairly attract customers to its competitor’s website in the mistaken belief that the disputed domain name is operated or authorized by ASUHI. B. Respondent
The Respondent says that he registered the disputed domain name and created the STORM logo mark for the Storm Brewing Company or associated family companies which were owned by a group of founders not including the Complainant. He submits that Ashy was a contracted production company for the business and that the Complainant was paid a monthly fee for her involvement as a director from August 2004 but when Asuhi subsequently breached its exclusive contract in 2010 by ceasing supply and that this resulted in considerable loss and disputes and ultimately litigation between various of the parties. The Respondent also asserts that he was never an employee in any company in which the Complainant was a director or shareholder.
Essentially, the Respondent asserts that he is the original creator and true owner of copyright and trade mark rights in the STORM logo and is the original and proper registrant of the disputed domain name on behalf of the Storm Brewing Company and that it was not registered on Asuhi’s behalf or on behalf of the distribution company PT Bali. He says that he registered the disputed domain name eight months before the company asserted by the Complainant as his employer came into existence while he was a founding investor and general manager of the business and accordingly has legitimate rights or interests in the disputed domain name and undertook the original registration in good faith. He says that the disputed domain name was subsequently used to exploit the business’s products.
The Respondent notes that he used the privacy service based on legal advice as a means of protecting him form intimidating behavior by the Complainant. He denies the allegations made in various email correspondence by the Complainant and says that they were designed to create the impression that ASUHI owns rights in the mark and the disputed domain name. He raises the question as to whether the Complainant is in fact attempting reverse domain name hijacking in this case.
Finally the Respondent says that his company has no relationship with Asuhi’s asserted competitor, Stark and that he was unaware of the use by Stark of the same address and telephone number until this Complaint was made. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has prima facie demonstrated that she owns trade mark rights in the STORM combined word and logo mark which is registered in both Indonesia (registration number IDM00330442) and in Singapore (registration number T1100144Z). The Panel notes that whether there is a dispute concerning ownership of underlying rights is not a matter for the Panel under the Policy and prima facie registration of trade mark rights in a complainant’s name generally suffices for this purpose.
In the Panel’s view there is insufficient evidence before it to support the Complainant’s claim of unregistered trade mark law rights in the STORM, STORM BREWING or STORMBREWING IRON STOUT marks or trade names. As set out at section 1.7 of the WIPO Overview of WIPO Panel Views On Selected UDRP Questions and in the noted cases a finding of unregistered trade mark rights or common law rights requires that the complainant shows that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such "secondary meaning" includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. While the Complainant has demonstrated a certain amount of publicity, advertising and awards in support of a claim to common law rights this falls far short in the Panel’s view of demonstrating that any of these names or marks have become distinctive identifiers associated with the complainant or her products. The Panel notes in particular that the Complainant claims that Asuhi has been brewing and selling STOM beer in Indonesia since 2004, however Asuhi is not itself a party to this claim and it may be that Asuhi is really the owner of any unregistered trade mark rights in the relevant names or marks.
As a result the question for the Panel is whether the disputed domain name is confusingly similar to the Complainant’s registered combined word/logo mark? In making such a comparison previous panels have taken into account a number of factors. The 3 member panel in Limited Liability Company Infomedia v. c/o Office-Mail processing center / Whois privacy services, provided by DomainProtect LLC / 1) Eurofirm Ltd. 2) Ethno Share PO, Domain Manager,WIPO Case No. D2010-1239, of which the present Panel was a member summarised the general principles as follows:
“While panel approaches in assessing confusing similarity between a domain name and a trademark comprising a combination device and word mark can vary, certain commonalities are apparent to this Panel. These include where a combination trademark features a prominent design with a commonly used or generic word beside it, making a literal comparison of the trademark and the relevant domain name, considering the overall impression given by the mark, taking into account as appropriate the strength of the word mark element which is being directly compared with the domain name and considering the relevant prominence of the word mark element in the context of the overall impression given by the trademark. In other instances, particularly where the word component of the relevant mark has not been disclaimed as such, panels have found it appropriate to disregard the device element, and limited the comparison to one between the textual component of the relevant mark and the alphanumeric string in the disputed domain name. This is usually said to be because such disregarded device element is generally incapable of representation in a domain name, or because the word component of the combined mark may still have some distinguishing value sufficient to convey standing rights for the purpose of the Policy or because all components of the relevant mark capable of incorporation in a domain name have been so incorporated. See e.g. RUGGEDCOM, Inc. v. James Krachefels,WIPO Case No. D2009-0130. However, the latter approach may be less common in cases in which the device element forms a particularly prominent part of the relevant trademark, and the word element is a common or dictionary term. Indeed, in cases where the word element is a common or dictionary term and not inherently distinctive, panels have noted that there may be an onus on the complainant to present the panel with compelling evidence of secondary meaning and distinctiveness through extensive use. See e.g. Dreamstar Cash S.L. v. Brad Klarkson,WIPO Case No. D2007-1943.”
In the instant case the Panel notes that the word “Storm” is a prominent element of the logo and that the palm tree and cloud device being the other equally prominent elements of the combined logo mark are suggestive of a tropical storm. The word “storm” is of course a commonly used word in the English language and at least to English speakers in Indonesia or Singapore is not inherently distinctive per se. As noted in relation to its findings in relation to unregistered trade mark rights, there is relatively little evidence before the Panel of acquired distinctiveness of the STORM mark, even if the mark might be more distinctive for non-English speakers in Indonesia or Singapore in relation to beer products.
Although the Panel finds that the pictorial representation in the logo does evoke the concept of a tropical storm and therefore reinforces the overall impression that the combined mark relates to a storm, the logo is obviously much more than just a fancy representation of the word mark STORM. The Panel also notes that the logo in no way conjures up an image or suggests an association with “brewing” or beer products.
Even comparing just the “storm” element with the disputed domain name it seems to the Panel that in circumstances that the logo does not evoke the concept of brewing or evoke brewery or beer products and that there is relatively little evidence of acquired distinctiveness in the STORM mark, that it is difficult in these particular circumstances to make a finding of confusing similarity.
Taking all of these factors in to account the Panel finds that the disputed domain name is not confusingly similar to the Complainant’s combined word/device mark and that the Complaint does not succeed under the first element of the Policy. B. Rights or Legitimate Interests
In view of its other findings and as further discussed below, the Panel finds it unnecessary to consider this element further. C. Registered and Used in Bad Faith
A fundamental requirement of the third element of the Policy is that the Complainant demonstrates that the disputed domain name was registered in bad faith. This can be extremely difficult to demonstrate in circumstances where the disputed domain name was registered by a respondent before the complainant's relied-upon trademark right is shown to have been first established as is set out at section 3.1 of the WIPO Overview of WIPO Panel Views On Selected UDRP Questions, Second Edition.
In this case it is alleged that the disputed domain name was registered by the Respondent prior to registration of the company which the Complainant says employed the Respondent. In addition the Respondent alleges that very different circumstances existed concerning his relationship with the business and various companies than those alleged by the Complainant, such as would have a potential material effect on the assessment of this case. Prima facie it seems that it would be very difficult for the Complainant to make out its case of registration in bad faith or indeed that the Respondent has no rights or legitimate interests in the disputed domain name. However evidence of all of the relevant factors would need to be adduced and considered in detail and in the context of relevant national law for the matter to be determined properly.
Overall, the factual circumstances concerning ownership, creation, entitlement, the Respondent’s relationship to the various companies, the circumstances in which original registration was effected and the sequence of events differ so markedly and the nature of the disputes between the parties are of such a complexity that the matters in contention go well beyond the scope of the Policy to combat cybersquatting. This type of complex commercial dispute is appropriate for determination by the courts. In these circumstances the Panel declines the Respondent’s request of a finding of reverse domain name hijacking. 7. Decision
For the foregoing reasons, the Complaint is denied.
Alistair Payne
Sole Panelist
Date: December 18, 2012
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