The Complainant is Tadano Ltd. of Kagawa, Japan, represented by Seiwa Patent & Law, Japan.
The Respondent is Whois Privacy Services Pty Ltd of Fortitude Valley, Queensland, Australia and Stanley Pace of Flower Mound, Texas, United States of America, represented by Rodenbaugh Law, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with F (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on December 7, 2012. On December 7, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 10, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain name. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on December 14, 2012.
The Center verified that the Complaint together with the amendment to 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 December 14, 2012. On January 3, 2013, the Respondent’s representative communicated with the Center requesting that the proceedings be terminated or stayed or in the alternative an extension to file a Response be granted. On January 4, 2013, the Center extended the Response due date until January 7, 2013. The Respondent did not submit any further communications at that stage. Accordingly, the Center notified the parties that it would be proceeding to Panel Appointment on January 11, 2013.
The Center appointed Sir Ian Barker as the sole panelist in this matter on January 18, 2013. 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 January 23, 2013, the Panel issued Administrative Panel Procedural Order No. 1 in the following terms:
“The Panel, having reviewed the Complainant and the Respondent’s submissions, orders the following:
1. The Respondent is to forward within 3 working days, by January 26, 2013, copies of the proceedings referred to in Mr. Rodenbaugh’s email of January 3, 2013. The documents are to be exact copies of the documents filed in the Federal Court of Australia. The date of filing in the Court must also be provided.
2. The Complainant is requested to make submissions on the Respondent’s request for termination or suspension of the proceedings within a further 3 working days, by January 29, 2013. The Respondent being entitled to make submissions strictly in reply within a further 3 working days, by February 1, 2013.
3. The date for the Panel’s determination will be extended to February 15, 2013.”
On January 23, 2013, the Center received from the Registrar copies of documents filed in the Federal Court of Australia, which were the documents required by the Panel in Clause 1 of the above Administrative Panel Procedural Order.
On January 28, 2013, the Complainant filed a document disagreeing with the Respondent’s request for termination or suspension and expressing the wish to proceed with the administrative proceedings.
On January 27, 2013, the Respondent forwarded to the Center, the same Federal Court documents – namely, Notice of Filing and Statement of Claim as had been received via the Registrar.
The Respondent filed no reply submissions to the Complainant’s further submissions. 4. Factual Background
The Complainant has, since 1948, been engaged in the production and sale of construction cranes, truck loader cranes, aerial work platforms and the like.
Its head office is in Japan and its sales for the year to March 2012, reached about JPY 91 billion yen (non-consolidated) and JPY 1142 billion (consolidated).
The Complainant has heavily advertised its products in Japan and in many other countries in Europe, North America, Asia and Oceania.
The Complainant has registered trademarks for the word “Tadano” in Japan and elsewhere, including the United States where the Respondent, Mr. Stanley Pace, apparently resides.
The Complainant’s brand is well-known internationally in the specialized market for industrial cranes and heavy machinery of that type. It has a large business in the United States where it has spent considerable sums on promotion of its products.
The Respondent’s website, accessed through the disputed domain name, has links to websites of equipment vendors and competitors of the Complainant.
Mr. Pace has been a respondent in nine WIPO domain name disputes. In all of these the complainant has succeeded.
The disputed domain name was registered on November 4, 1998. No reason was advanced by the Complainant for the fact that the Complaint was filed 14 years after the disputed domain name had been registered. 5. Respondent’s Application for Dismissal or Stay
The Respondent’s application for dismissal or stay is based on proceedings filed in the Federal Court of Australia on January 23, 2013, seeking a declaration either that the Respondent has not infringed the Complainant’s Australian registered trademarks for TADANO, or that the Respondent has not used the disputed domain name in any way that infringed any common law or registered trademark of the Complainant. Further declarations that the Respondent is able to continue to use the disputed domain name and is the lawful and beneficial licensee of the disputed domain name are sought.
The Statement of Claim pleads that the Respondent in this case (Applicant in the Court) acquired a licence from the Registrar of the disputed domain name to use it, and that the licence is to be construed in accordance with the laws of the State of Queensland. The pleading specifically refers to the WIPO Complaint and avers that the Respondent has not used the disputed domain name in bad faith or in a manner inconsistent with the domain name licence. He claims a legitimate interest in using the term “Tadano” on any website that does not pass itself off as that of the Complainant.
The “legitimate interest” and the exact nature of the licence alleged is unclear from this very Spartan pleading. One presumes it refers to the rights conferred by the registration agreement with the Registrar, such as they are.
Rule 18(a) of the Policy states:
“(a) In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.”
The Respondent relies on DNA (Housemarks) Limited v. T Co,WIPO Case No. D2009-0367 (“the DNA case”) and seeks a dismissal without prejudice to the Complainant filing again, if the Respondent does not succeed in its Court proceedings. A stay of the WIPO proceedings is sought as an alternative. If these orders are not made the Respondent sought a further 10 days within which to file a Response.
Also relevant is Paragraph 4(k) of the Policy which provides:
“Availability of Court Proceedings. The mandatory administrative proceeding requirements set forth in Paragraph 4 shall not prevent either you or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded. If an Administrative Panel decides that your domain name registration should be canceled or transferred, we will wait ten (10) business days (as observed in the location of our principal office) after we are informed by the applicable Provider of the Administrative Panel’s decision before implementing that decision. We will then implement the decision unless we have received from you during that ten (10) business day period official documentation (such as a copy of a complaint, file-stamped by the clerk of the court) that you have commenced a lawsuit against the complainant in a jurisdiction to which the complainant has submitted under Paragraph 3(b)(xiii) of the Rules of Procedure. (In general, that jurisdiction is either the location of our principal office or of your address as shown in our Whois database. See Paragraphs 1 and 3(b)(xiii) of the Rules of Procedure for details). If we receive such documentation within the ten (10) business day period, we will not implement the Administrative Panel’s decision, and we will take no further action, until we receive (i) evidence satisfactory to us of a resolution between the parties; (ii) evidence satisfactory to us that your lawsuit has been dismissed or withdrawn; or (iii) a copy of an order from such court dismissing your lawsuit or ordering that you do not have the right to continue to use your domain name.” 6. Parties’ Contentions A. Complainant
The disputed domain name is identical to the numerous famous trademarks registered worldwide, in which the Complainant has rights.
The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant gave the Respondent no authority to reflect its trademarks in the disputed domain name.
None of the situations envisaged by Paragraph 4(c) of the Policy applies to the Respondent’s operation of providing links on the website to competitors of the Complainant, such as used equipment vendors. The website is designed to change to websites in different languages.
The disputed domain name has been registered and is being used in bad faith. The website accessed by the disputed domain name indicates that the disputed domain name “may be for sale by its owner”. The Respondent is obtaining a “free ride” at the expense of the Complainant and is attempting for commercial gain to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website by the Complainant.
The Respondent used a Privacy service, which supports the inference of the Respondent’s illegitimate purpose in registering and using the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions but made submissions in support of the application for dismissal or stay.
The Respondent submits that any ruling by the Federal Court will take precedence over the Panel’s decision under the Policy and that the Panel should not give any decision on the merits of the Complaint unless and until the Court has ruled against the Respondent who has submitted to the jurisdiction of the Court with jurisdiction pursuant to Paragraph 3(b)(xiii) of the Rules. 7. Discussion and Findings
The Panel must first consider the Respondent’s request under Rule 18 of the Policy, since if relief were to be granted under that Rule, there would be no need for the Panel to address the merits of the Complaint.
The following principles can be extracted from the DNA decision given by an experienced panelist, which are adopted by this Panel. There, the learned panelist had considered other cases where similar situations had arisen. The DNA case provides the following guiding principles:
(a) A court will make a decision based on evidence and submissions given in open court with cross-examination of witnesses. A proceeding under the Policy is decided merely on the papers presented by the parties without any testing.
(b) A panel decision under the Policy carries no precedential weight and is not binding on any court.
(c) Past panelists, under the Policy, have refused to dismiss or waive the administrative proceedings where the litigation appeared manipulative or issued for the purposes of delay.
(d) In cases where a respondent had expressly participated in the UDRP process and filed suit only after the Panel had been appointed, the Panel should proceed to a decision. However, where as in this case, the Respondent issued court proceedings before the Panel had been appointed and without submitting a substantive response, a national court was the exclusive forum to decide the matter. This has been found to be the correct course of action despite the possibility of an unscrupulous respondent acting to abuse the system.
(e) Where the substance of the respondent’s civil cause of action is virtually identical to the determinations which the panel would have to address, that is a factor in favour of termination.
(f) Such identity of issues means that the present situation equates with that of the Panel proceeding to give a decision and the losing party contesting the matter in the relevant local court. See Paragraph 4(k) of the Rules.
(g) A Panel decision on the merits will not advance the Complainant’s desire for finality, if the Respondent continues with the Court proceedings.
(h) Termination is preferable to suspension since the Rules made no provision for a lengthy delay. Termination means no finding has been made and the Complainant can file a new proceeding under the Policy if it believes the Court case was filed in bad faith or otherwise to harass the Complainant.
In the present case, the Panel is skeptical about the merits of the court proceedings. The grounds in the statement of claim seem rather lightweight. However, that conclusion is not one which the Panel can make definitively. If the Panel proceeded and found for the Complainant, the Respondent could still continue with the court case. For these reasons the Panel finds that publication of this Termination Order as a Decision is warranted. See DeTeMedien Deutsche Telekom Medien GmbH v. Registrant [2828625] Laura Mouck /Moniker Privacy Services, WIPO Case Number D2010-0955 (“We simply record this so that any future panel considering a dispute between the same parties may wish to take these facts into consideration.”) 8. Decision
The Panel hereby orders, pursuant to Paragraph 18(a) of the Rules, that this proceeding be terminated. This termination shall be without prejudice to Complainant’s filing a new complaint under the Policy at any time following termination of the pending Declaratory Judgment action in Australia, but with prejudice if filed before that lawsuit is terminated.
No doubt, the Complainant will monitor the Court proceedings so that there is no delay in having the case heard on the merits. One can have confidence that a Court of such high standing as the Federal Court of Australia, will ensure that the case is heard as soon as it is able to be heard.
Sir Ian Barker
Sole Panelist
Date: February 14, 2013
Full & Egal Universal Law Academy