Complainant is HYTORC Division UNEX Corporation of Mahwah, New Jersey, United States of America, represented by Justin B. Bender, United States of America.
Respondent is Hytorc VA, Timothy Moore of Mechanicsville, Virginia, United States of America, represented by Julie Roscoe Eckstein, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2013. On December 24, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 24, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on January 9, 2014.
The Center verified that the Complaint together with the amended 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 January 13, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 2, 2014. The Response was filed with the Center on January 31, 2014.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on February 7, 2014. 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 operates in over 100 countries under its brand name, HYTORC. It has over 40 years of experience in industrial bolting systems while manufacturing a range of hydraulic and pneumatic tools.
Complainant owns trademark registrations for HYTORC in more than 100 countries including the United States dating from 1981.
Complainant also owns a number of domain names that incorporate the HYTORC name, including its principal domain name , as well as , , , and .
The Domain Name was registered on June 5, 2008. 5. Parties’ Contentions A. Complainant (1) Identical or confusingly similar:
Complainant asserts the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
Complainant asserts that the HYTORC trademark enjoys a substantial reputation not only in the United States, but worldwide as well. Complainant states that HYTORC is a well-known trademark.
Further, Complainant contends that the Domain Name wholly incorporates Complainant’s HYTORC mark, to which a geographic indicator is attached, namely, the abbreviation “va”, which refers to the State of Virginia. Complainant submits that the addition of this abbreviation to the Domain Name does not distinguish it from Complainant’s trademark. In fact, it increases the likelihood of confusion, because consumers and Internet users will be lead to believe that the Domain Name is the Virginia business of Complainant. As such, the Domain Name is confusingly similar to a trademark in which Complainant has rights. (2) Rights or legitimate interests:
Complainant contends use of the HYTORC trademark in a domain name would not be lawful without the authorization of Complainant. This is because Complainant is the proprietor of the HYTORC trademark worldwide. Complainant has not authorized Respondent’s use of the HYTORC trademark as part of the Domain Name. While Respondent previously acted as an agent for Complainant, Complainant terminated Respondent’s agency agreement on July 25, 2013. Respondent therefore no longer has any right to use the HYTORC mark, or to sell and/or repair Complainant’s goods. Respondent is no longer associated with Complainant in any way.
Complainant argues that Respondent’s use of the phrases “Sales”, “Service”, “Rentals” and “Training” on the website associated with the Domain Name is in violation of the now terminated agency agreement. The tools, sales, service, rentals and training referred to are to be performed by Complainant-authorized representatives only. Further the tools Respondent currently uses to do such sales, service, rentals and training are demo tools and, as such, have always and will remain the sole property of Complainant and contractually must be returned to Complainant. Complainant makes reference to the termination letter and email correspondence between it and Respondent in this regard, submitted with its evidence.
Complainant states that even after the termination of the agency agreement, Respondent sent letters to and solicited its previous customers masquerading as the only HYTORC representative in the territory. As a result, Complainant has had to advise these and other previous customers that Respondent is no longer an agent or distributor for HYTORC equipment.
Complainant alleges that Respondent’s refusal to cooperate with Complainant’s demands gives rise to several claims against Respondent, including trademark infringement, fraudulent misrepresentation and interference with contractual relations. There is no evidence that Respondent has been, or is commonly known by, the name HYTORC, or that he has acquired any trademark or service mark rights in this mark. Complainant’s trademark and domain name registrations existed prior to the registration of the Domain Name in Respondent’s name. The Domain Name is linked to an active trademark infringing website. This does not provide a basis for a bona fide interest by Respondent in the Domain Name.
Complainant states that Respondent engages solely in commercial use of the HYTORC mark to take advantage of Complainant’s rights and to compromise Complainant’s business relationships. As such, Respondent is not making any legitimate, noncommercial, or fair use of the Domain Name. His use is also not in connection with a bona fide offering of Complainant’s goods or services. Complainant submits, for the reasons above, that Respondent has no rights or legitimate interest in the Domain Name. (3) Registered and used in bad faith:
Complainant alleges that Respondent is not a legitimate registrant of the Domain Name. He registered it to engage in a Complainant-authorized business, but now maintains the registration for the purpose of disrupting the business of Complainant and to obtain commercial gain by misleadingly attracting Internet users through Respondent’s website, thereby creating a likelihood of confusion with the HYTORC trademark as to the source, sponsorship or endorsement of Respondent’s website.
Complainant contends that Respondent uses the Domain Name as its operating page to divert consumers from the current Complainant-authorized HYTORC representative. When consumers enter the Domain Name into their browsers or perform Google searches for HYTORC representatives in Virginia, they are directed to the Domain Name. This website indicates that Respondent is Complainant’s authorized Virginia-vicinity HYTORC representative. These actions damage and disrupt Complainant’s business by inferring that inferior goods by competitors mentioned on the website are associated with, or are in fact, Complainant’s goods.
Finally, Complainant urges that Respondent’s holding of the Domain Name amounts to use of the registration in bad faith as contemplated in terms of paragraph 4(b) of the Policy for the following reasons: (i) Complainant could not find any evidence of actual or intended future good faith use by Respondent; (ii) it is not possible to imagine any plausible future use of the Domain Name by Respondent that would not amount to illegitimate use; (iii) Respondent failed to respond to Complainant’s letters to cease and desist in any positive way; (iv) upon information and belief, Respondent solicits Complainant’s customers to change their contact details away from HYTORC, which is with the intention to damage and disrupt Complainant’s business.
Complainant therefore submits that, for the reasons mentioned above, the Domain Name was registered and is being used in bad faith. B. Respondent (1) Identical or confusingly similar:
Respondent refutes Complainant’s arguments concerning the manner in which the Domain Name is allegedly identical or confusingly similar to a trademark or service mark in which Complainant has rights. Respondent acknowledges that Complainant has a United States trademark registration for HYTORC. However, Respondent contends that although Complainant has alleged the Domain Name will cause consumer confusion (because it adds "va" to the end of the mark), in fact, the Domain Name does not cause consumer confusion because the average consumer would not search for a company under its name plus “va”. Respondent refutes Complainant's argument that "va" is a well-used search tool for a consumer to find a product in Virginia. Further, while UDRP panels have stated that use of a country name in association with a mark that describes a product leads to an inference that the domain name is associated with the mark and product, they have not stated that use of an abbreviation of a state name is confusingly similar. (2) Rights or Legitimate Interests:
Respondent states that he was a distributor for Complainant and owns the business, Hytorc of Virginia & Maryland, LLC, a Virginia limited liability company. Respondent claims it purchased the Domain Name and paid the associated fees with the acquiescence of Complainant. Respondent has used the Domain Name since 2008, a period of over five years. There was, by admission of Complainant, an agreement between the parties for Respondent to use the Domain Name and to have rights or legitimate business interests in the Domain Name. There is no written agreement between Complainant and Respondent. Respondent sold and serviced tools manufactured by Complainant.
Respondent argues that Complainant brings in other evidence that has no relevance in this case, involving possible issues between the parties that the UDRP cannot decide. Respondent states that it sold, rented, and serviced tools manufactured by Complainant, and continues to service tools manufactured by Complainant. Respondent contends that Complainant acquiesced in Respondent's registration and use of the Domain Name and Respondent's use is a nominative fair use. There is, or was, some relationship between the two parties involving Respondent's sale and service of Complainant's products.
Further, Respondent claims that before receiving any notice of the dispute, Respondent's use of the Domain Name was in connection with a bona fide offering of goods or services. In the Complaint (paragraph (ii)), Complainant proffers evidence that prior to notice of the dispute, Respondent's use of the Domain Name and the trademark was in connection with a bona fide offering of goods and services: i.e., the sale, rental, and service of Complainant's tools. The Complainant states, "While the Respondent did act as an agent for the Complainant". In paragraph (iii) of the Complaint, Complainant references a terminated agency agreement. However, no agreement was entered as an exhibit, because there is no written agreement. The Domain Name does not offer other manufacturer's goods for sale or service, nor does it re-route the user to another website. Respondent may advertise its ability to service the manufactured tools, and use Complainant's mark in so doing.
Respondent states that it is or has been commonly known by the Domain Name, even if Respondent has acquired no trademark or service mark rights. Respondent has used the Domain Name since 2008, a period of over five years. In that time, Respondent has built a solid reputation for sales and service for these types of tools. Complainant's evidence shows that Complainant was losing customers to Respondent because Respondent's Domain Name is wellknown and often used in the industry.
Last, Respondent states that it is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue. Respondent was selling the products manufactured by Complainant. Respondent was servicing the products manufactured by Complainant. Respondent has rights and a legitimate interest the Domain Name. (3) Registered and Used in Bad Faith:
Respondent refutes the arguments made by Complainant as to why the Domain Name should be considered as registered and used in bad faith. Respondent did not register nor acquire the Domain Name primarily for the purpose of selling, renting, or otherwise transferring it to Complainant or to a competitor of Complainant. The Domain Name was not registered in order to prevent Complainant from reflecting its trademark in a corresponding domain name and, in connection therewith, Respondent has not engaged in a pattern of such conduct. Complainant and Respondent were not competitors and the Domain Name was not registered by Respondent primarily to disrupt Complainant's business. The Domain Name was not registered by Respondent in an intentional attempt to attract, for commercial gain, Internet users to Respondent's website or other on-line location, by creating a likelihood of confusion with Complainant.
Finally, Respondent urges that, as the facts in the Complaint and the Response show, Respondent was given permission to use Complainant’s trademark in the Domain Name. Respondent registered and acquired the Domain Name in a legitimate business venture: selling and servicing products manufactured by Complainant. Complainant's allegations in its discussion of bad faith all discuss facts occurring after notice of this dispute, not at the time of the registration and acquisition of the Domain Name, as the Rules require. Respondent may use the Domain Name to service the manufacturer’s tools, a legitimate use of the Domain Name. Respondent's use of the Domain Name was not registered or used in bad faith under the purpose of paragraph 4(a)(iii) of the Rules. Until just before notice of this dispute, Respondent's use of the Domain Name since 2008 was in good faith and continues to be in good faith. Respondent did not intentionally change the use of the Domain Name. 6. Discussion and Findings
The required elements of the Policy are well understood. In order to succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith. A. Identical or Confusingly Similar
Complainant has demonstrated rights in its distinctive HYTORC family of trademarks, as evidenced by the trademark registrations submitted with the Complaint, and including evidence of Complainant’s long-standing use of these marks in commerce in the United States, where Respondent is located.
The threshold test for confusing similarity under the Policy involves a comparison between the trademark and the domain name to determine the likelihood of user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of a common or descriptive term typically being regarded as insufficient to prevent a likelihood confusion. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2. Moreover, the addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. UDRP panels have usually found the incorporated trademark to constitute the dominant component of the domain name. See WIPO Overview 2.0, paragraph 1.9.
In this case, the Panel finds that the Domain Name is confusingly similar to the Complainant’s HYTORC mark. Without the generic Top Level Domain (“gTLD”) suffix, the Domain Name consists of the combination of the distinctive HYTORC portion of Complainant’s trademark, with the added letters “va,” which in this context can be taken to refer to the State of Virginia. See Transamerica Corporation v. DreamNet Inc, NAF Claim No. 103036 (“Due to the substantial secondary meaning Complainant has created with its mark, as well as its presence on the Internet, users accessing the Internet are likely to recognize Respondent’s domain name and falsely assume that the disputed domain name has the support and sponsorship of Complainant when it does not.”)
The Panel determines that the Domain Name is confusingly similar to a trademark in which Complainant has rights. Accordingly, the Panel concludes that the first element of paragraph 4(a) of the Policy is established. B. Rights or Legitimate Interests
While Complainant satisfies the first requirement, the same cannot be said with respect to the second and third requirements of paragraph 4(a) of the Policy. As to both, factual issues remain, the resolution of which are beyond the scope of this Panel’s jurisdiction.
In this case, the Panel finds that Complainant has failed to make a prima facie showing that Respondent has no rights or legitimate interests in the Domain Name. Complainant acknowledges that Respondent previously acted as an agent for Complainant, with their agency agreement allegedly terminating in July 2013. Evidence submitted by Complainant demonstrates that there was a commercial relationship between the parties, which ended recently. When the Domain Name was registered by Respondent in 2008, it appears that Respondent may have done so with the acquiescence of Complainant. Respondent used the Domain Name for a period of over five years. Respondent also appears to have established a company named Hytorc of Virginia & Maryland, LLC.
The Policy, paragraphs 4(c)(i) and (ii), provides that any of the following circumstances shall demonstrate a respondent’s rights or legitimate interests in a domain name:
(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.
There is now clearly a dispute between the parties. Complainant urges that Respondent is no longer associated with Complainant, and that Respondent is allegedly engaging in conduct that is harmful to Complainant’s business and infringing on Complainant’s HYTORC trademark. These allegations, however, do not negate the possibility that Respondent, prior to the dispute, used the Domain Name in connection with a bona fide offering of goods or services. Further, Respondent has asserted it is commonly known by the Domain Name, which is similar to the name of the company Respondent appears to have established in 2011, Hytorc of Virginia & Maryland, LLC.
Under these circumstances and on this record, it cannot be concluded that Respondent has no “rights or legitimate interests” in the Domain Name as is required under the Policy. While Respondent does not own HYTORC as a trademark, questions remain as to whether Complainant legally acquiesced in Respondent’s registration and use of the Domain Name, at least initially, or whether Respondent’s continued use is a nominative fair use as contended by Respondent. Complainant, on the other hand, argues that Respondent’s use infringes its trademark rights. Acquiescence and fair use, as well as questions of infringement, are principles of trademark law, each requiring analysis that often goes beyond the scope of this Policy. SeeAdaptive Molecular Technologies, Inc. v. Priscilla Woodward & Charles R. Thorton, d/b/a Machines & More,WIPO Case No. D2000-0006 (“The decision [to deny the complaint] is limited to the fact that, on this record, the existence of significant factual and legal issues makes this case inappropriate for resolution under the Policy.”).
Accordingly, the Panel concludes that the second element of paragraph 4(a) of the Policy is not established. C. Registered and Used in Bad Faith
Similarly, Complainant cannot, on this record, establish the requisite bad faith registration and use. While it is undisputed that Respondent chose the Domain Name with knowledge of Complainant’s HYTORC trademark, that knowledge, alone, does not, at least in the circumstances presented here, establish bad faith registration of the Domain Name. Instead, it appears that at least at the time of registration, Respondent did so without objection from the Complainant, and was possibly acting as Complainant’s agent. The record does not support a finding of bad faith registration.
As to the alleged bad faith use, the Panel does not know the full extent of the relationship between the parties, although it appears that there was possibly a prior agency relationship between them involving Respondent’s sale and servicing of Complainant’s products. A dispute has now erupted between the parties which involves not only the Domain Name, but also equipment claimed by Complainant. Respondent has claimed nominative fair use, while Complainant has raised serious issues involving trademark infringement, fraudulent misrepresentation and interference with contractual relations. Again, these are issues for the courts.
Accordingly, the Panel concludes that Complainant has not met its burden of establishing bad faith registration and use. 7. Decision
For all of the foregoing reasons, the Complaint is denied.
Christopher S. Gibson
Sole Panelist
Date: February 24, 2014
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