The Complainants are Modelleisenbahn Holding GmbH and Modelleisenbahn GmbH of Bergheim, Austria, represented by Diana Sattler, Austria.
The Respondent is Roman Plaszewski of Elburn, Illinois, United States of America, represented by Bullard Smith Jernstedt Wilson, United States of America ("US"). 2. The Domain Names and Registrar
The disputed domain names and are registered with DNC Holdings, Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 23, 2014. On April 24, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 28, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on May 7, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 12, 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 the Respondent of the Complaint, and the proceedings commenced on May 14, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 3, 2014. The Respondent requested an extension until July 12, 2014. The Complainant objected to the granting of any extension. The Center granted an extension until June 12, 2014. The Response was filed with the Center June 11, 2014.
The Center appointed Christopher J. Pibus, Reinhard Schanda and Tony Willoughby as panelists in this matter on July 11, 2014. The Panel finds that it was properly constituted. Each member of 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 Complainants and the Complainants' predecessors-in-title have been in the business of making and selling model trains since the early 1960's. The Complainants own several trademark registrations for the marks ROCO and FLEISCHMANN in association with model trains and accessories, including:
U.S. Registration No. 0778717 for FLEISCHMANN – October 20, 1964
German Registration No. 635186 for FLEISCHMANN – March 31, 1953
International Registration No. 324156 for FLEISCHMANN – October 27, 1996
U.S. Registration No. 1809816 for ROCO – December 7, 1993
Austrian Registration No. 135792 for ROCO – May 15, 1991
International Registration No. 574549 for ROCO – May 21, 1991
The Complainants operate websites at "" and "".
The Respondent served as a distributor for the products of the Complainants and their predecessors-in-title, but according to the Complainants the distribution contract expired on December 31, 2013.
On March 4, 1996 the Respondent registered the domain name and on October 7, 1998 the Respondent registered the domain name . The Respondent has used the respective domain names in association with websites that offer for sale and promote model trains and accessories (primarily those of the Complainants) for more than 15 years.
In 2005 a predecessor of the Complainants filed a complaint with the Center against the Respondent's company, Roman and Co., in respect of the disputed domain name, , but withdrew the complaint on learning that the Respondent had been given express permission by the previous owners of the company to register that domain name (the Respondent's contention). The Complainants' contention is that that complaint was withdrawn because the then owner of the company concerned was declared bankrupt. 5. Parties' Contentions A. Complainant Identical or Confusingly Similar
The Complainants submit that they own trademark registrations for the trademarks ROCO and FLEISCHMANN in Europe and the United States of America, as listed in paragraph 4 of this decision.
The Complainants contend that the disputed domain names and are identical to the registered trademarks ROCO and FLEISCHMANN except for the generic Top-Level Domain ("gTLD") ".com". The addition of a gTLD ".com" does not distinguish the disputed domain names from the Complainants' trademarks. Rights and Legitimate Interests
The Complainants admit that the Respondent had a contractual relationship with the Complainants' subsidiary beginning in 2005, but state that as of December 31, 2013 the relationship is no longer in effect. The Complainants claim that they never authorized the Respondent to register the disputed domain names. The Complainants contend that the right to resell or distribute the trademark holder's products does not create a right to register and use a domain name that is identical or confusingly similar or otherwise wholly incorporates the relevant trademarks, unless certain conditions are met. In this case, the Complainants submit that the Respondent is selling products that originate from other companies (in addition to those of the Complainants) and falsely claims to be the exclusive importer of the Complainants' products and is therefore not in compliance with the required conditions. Registered and Used in Bad Faith
The Complainants submit that the Respondent has registered and is using the disputed domain names in bad faith because (a) the Respondent is blocking the Complainants from using the disputed domain names and (b) the Respondent was aware of the Complainants' rights in the ROCO and FLEISCHMANN registered trademarks and is attempting to "exploit the famous reputation" of the Complainants, without authorization. The Complainants point to the Respondent's "Roman and Company" logo, which they contend is confusingly similar to the "Roco" logo as an additional indication of the Respondent's bad faith intent. The Respondent, after receiving the Complainants' cease and desist letter, refused to transfer the disputed domain names. B. Respondent
The Respondent submits that he was granted permission from the Complainants' predecessors-in-title to register the disputed domain names. In 1996, Mr. Huber Adlgasser, the export manager of the Complainants' predecessor-in-title for the ROCO trademark and Mrs. Elfriede Rossler, the owner of the predecessor-in-title, approved, encouraged and granted the Respondent the unconditional right to register and develop the disputed domain name . In 1998, management for the Complainants' predecessor-in-title for the FLEISCHMANN trademark also agreed that the Respondent could unconditionally register and use the disputed domain name .
For 18 and 16 years, respectively, the Respondent has used the ROCO and FLEISCHMANN-derivative domain names in association with websites which sell and promote model trains and accessories.
The Respondent submits that he was given unconditional permission to register the disputed domain names, and as such, had a right and legitimate interest in the disputed domain names. The Respondent invested significant effort and money to promote the corresponding websites, which sold and advertised the Complainants and the Complainants' predecessor-in-title's products, and received praise and encouragement for his efforts.
The Respondent also contends that he registered the disputed domain names in good faith, by virtue of the unconditional permission to do so, received from the trademark owners in 1996 (ROCO) and in 1998 (FLEISCHMANN). The Respondent submits that he has used the disputed domain names in good faith since registration.
The Respondent contends that the Complainants are guilty of reverse domain name hijacking. In support of that contention the Respondent points to (a) the 18 years and 16 years respectively that the Respondent has been using the disputed domain names with the knowledge of the Complainants and their predecessors, (b) the circumstances surrounding the filing and withdrawal of the earlier complaint in respect of (WIPO Case No. D2005-0111), (c) the failure of the Complainants to make any reference in the Complaint to that earlier case and (d) the Complainants' behaviour in opposing the Respondent's request for an extension of time for the Response, yet knowing of the complexities of the background to the case. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainants must establish each of the following elements:
(i) The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) The disputed domain names have been registered and are being used in bad faith.
Moreover, in writing its decision, the Panel has to have regard to paragraph 15(e) of the Rules and in particular the following sentence, namely:
"If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding."
Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name". A. Identical or Confusingly Similar
The Panel finds that the Complainants own registered trademark rights in the trademarks ROCO and FLEISCHMANN by virtue of the trademarks listed in paragraph 4 of this Decision.
The Panel further finds that the disputed domain names and are identical to the Complainants' registered trademarks ROCO and FLEISCHMANN. The disputed domain names are identical to the Complainants' registered trademarks except for the addition of the gTLD ".com". The addition of the gTLD ".com" does not serve to distinguish the disputed domain names from the Complainants' trademarks.
Accordingly, the Panel finds that the Complainants have satisfied the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
In light of the Panel's findings with respect to bad faith, it is not necessary for the Panel to comment on rights or legitimate interests. C. Registered and Used in Bad Faith
The Respondent has filed detailed, substantive evidence, which establishes to the Panel's satisfaction that he did not register or use the disputed domain names in bad faith. In reaching this conclusion, the Panel notes the following facts, which have been proven by way of affidavit, statements, and documentary evidence by the Respondent and various non-party witnesses:
1) the Respondent had commercial relationships with the Complainants' predecessors-in-title, which predated the Complainants' ownership of the ROCO and FLEISCHMANN trademarks by many years.
2) In the course of those relationships, the Respondent sought and received express permission from the prior owners of the ROCO and FLEISCHMANN trademarks to register the disputed domain names, and to use those names in connection with active websites.
3) With respect to both the ROCO and FLEISCHMANN trademarks, written statements from the prior owners (Peter Maegdefrau – ROCO and Rolf Fleischmann – FLEISCHMANN) corroborate the Respondent's claims that the permission to register the disputed domain names was granted and as to the relevant annexed affidavit concerning "" such permission was at that time without any restrictions: "no strings attached".
4) The history of prior ownership of the ROCO and FLEISCHMANN trademarks, as set out in the Respondent's evidence, is confirmed by a review of the United States Patent Trademark Office records for U.S. Trademark Registration No. 0778717 for FLEISCHMANN and U.S. Trademark Registration No. 1,809,816 for ROCO.
The Panel has also reviewed the Respondent's account of a prior UDRP case (WIPO D2005-0111) which was initiated by the Complainants' predecessor-in-title Roco Modellspielwaren GmbH (and its owner, Peter Maegdefrau) with respect to the Respondent's registration of (held in the name of Roman and Co), one of the same disputed domain names in this decision. In that case, the same Respondent filed the same explanatory evidence as he did here, and the complaint was withdrawn. The Panel is concerned that the Complainants in the current proceeding failed to disclose the prior dispute, and the full circumstances surrounding the Respondent's long term use of the disputed domain names. The Complainants' foundational claim that the Complainant itself had "never granted permission to the Respondent" to use the disputed domain names, although literally true (and consistent with the Complainant's acknowledgement that one of its subsidiaries did formerly have a contractual relationship with the Respondent), was not a fair or complete characterization of the situation.
In all the circumstances, the Panel accepts the Respondent's explanation of his historical role as distributor of ROCO and FLEISCHMANN branded products, and finds that his registration of the disputed domain names was not done in bad faith. Accordingly, the Complainant has failed to satisfy the requirement under paragraph 4(a)(iii) of the Policy. D. Reverse Domain Name Hijacking
By a majority the Panel dismisses the Respondent's request for a finding of Reverse Domain Name Hijacking. While the Panel is concerned that the Complainants in the current proceeding failed to disclose the prior dispute, and the full circumstances surrounding the Respondent's long term use of the disputed domain names, the majority feels that it has inadequate information as to the background to establish that the Complaint was brought in bad faith.1
In conclusion, the Panel recalls that the present decision is limited to the facts and circumstances as applied to the Policy criteria. There may be broader trademark licensing or related questions between the parties beyond the scope of the Policy; in this respect it is noted that while the Complainants' predecessors-in-interest appear to have granted permission for the Respondent to register the disputed domain names the Complainants (as current trademark owner) plainly take issue with such registrations. In this respect the Panel notes that the Policy is necessarily limited in scope, but that the present decision does not foreclose any court options the parties may have. 7. Decision
For the foregoing reasons, the Complaint is denied.
Christopher J. Pibus
Presiding Panelist
Reinhard Schanda
Panelist
Tony Willoughby
Panelist
Date: August 14, 2014 CONCURRENCE (IN PART)
I agree with my co-panelists that the evidence filed by the Respondent clearly establishes that the disputed domain names were registered and used by the Respondent with the permission and encouragement of the Complainants' predecessors and that the Complaint should be dismissed.
However, I respectfully disagree that the Respondent's request for a finding of Reverse Domain Name Hijacking be dismissed.
The Panel Majority is concerned that there is less than full information as to the factual background; and it is true that in certain respects the parties' submissions lack clarity. Both parties operated through various corporate entities over the period in question, but their dates and spheres of operation and the distinctions between them are not clearly set out.
Crucially, as to the failure of the Complainants to make any reference in the Complaint to the withdrawal of the earlier complaint (see above), it is not clear when the Complainants first became aware of that earlier complaint. It seems barely conceivable that they were unaware of it prior to this administrative proceeding, but on the papers before the Panel it is at least possible and I am prepared to rest my argument for a finding of Reverse Domain Name Hijacking on other grounds.
I start from the proposition that in this context a parent company cannot hide behind one of its subsidiaries. The Complainants must be treated as having the knowledge of the first Complainant's subsidiary that entered into a distribution agreement with the Respondent in 2005.
I then ask myself the question: is it possible that that subsidiary entered into that agreement unaware that the Respondent was a pre-existing distributor of the Complainants' products in the United States of America? Answer: "No". Is it possible that that subsidiary would have entered into that agreement without having investigated to some extent the Respondent's history of distributing those products in the United States of America? Answer: "No". Even if at that stage the first Complainant's subsidiary was unaware of the Respondent's use of the disputed domain names, is it conceivable that over the following 8 years of the distribution agreement that subsidiary was unaware that the Complainants' products were being promoted and sold online under and by reference to the disputed domain names? Answer: "No".
When they filed the Complaint, the Complainants:
1. knew that to succeed in this Complaint they had to establish that the disputed domain names were both registered in bad faith and are being used in bad faith;
2. knew from their exhibited WhoIs searches, that the disputed domain names had been in the hands of the Respondent for 18 years and nearly 16 years respectively, long before the Complainants or any of their subsidiaries came on the scene, thereby rendering the Complainants' statement in the Complaint that they "had never authorised registration of the disputed domain names", at best, meaningless;
3. knew from their exhibited screenshots from the WebArchive WaybackMachine, that the disputed domain names had long been used to connect to websites promoting the sale of the Complainants' products in the United States of America;
4. knew that throughout the 8 years of the distribution agreement with the first Complainant's subsidiary those same websites had continued to promote the sale of the Complainants' products in the United States of America.
It is clear, in my view, that when the Complainants filed the Complaint they must have known that the Complaint was doomed to failure. They took no steps to make complaint about the disputed domain names until after termination of the distribution agreement. To their knowledge it was never a case for the Policy and should not have been launched. For me, this is a case of Reverse Domain Name Hijacking.
Tony Willoughby
Panelist (Concurring)
Date: August 14, 2014
1 It should be pointed out also however that the Respondent has characterized certain facts in its favour (e.g., by noting in the Response that while third party goods are sold at are "not model trains but accessories […] which help sell model trains!" and "at no time from the development of these first websites until present have we offered or sold any other products from any other company under the domain name of www.") whereas the Complainant directly contests this stating "the Respondent does not only offer [the Complainants'] products but products of various [competing third party] producers" (which claim is supported by the Complainants' annexed screenshots). That is to say, the parties make competing claims as to the use of the disputed domain names.
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