The Complainant is Beardow & Adams (Adhesives) Limited of Buckinghamshire, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Carpmaels & Ransford, UK.
The Respondent is Richard Thomas, Thomas Adhesive Consultants of Dubuque, Iowa, United States of America. (“US”) 2. The Domain Name and Registrar
The disputed domain names and are registered with Active Registrar, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 4, 2015. On June 4, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 5, 2015, 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.
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 the Respondent of the Complaint, and the proceedings commenced on June 16, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 6, 2015. On June 16, 2015, the Center received an email from the Respondent. On June 18, 2015, the Center received an unsolicited supplemental filing from the Complainant, in the form of a Witness Statement in the names of Nicholas James Beardow. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent of the proceeding to panel appointment on July 7, 2015.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on July 16, 2015. 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 was incorporated in July 1976 and operates under the business name Beardow and Adams (Adhesives) Limited. The Complainant manufactures and sells adhesives under the name BAM FUTURA, BAM and FUTURA. The Complainant derived the word BAM for its adhesive products from the initials of the founders’ names, namely Messrs Beardow and Adams.
The Complainant owns several trademark registrations around the world for BAM FUTURA in association with adhesive products, including the following:
International Trademark Registration No. 1032347 for BAM FUTURA dated May 2, 2010
UK Registration No. 2247011 for BAM FUTURA dated March 30, 2001
CTM Registration No. 8341943 for BAM FUTURA dated December 23, 2009
Irish Registration No. 218344 for BAM FUTURA dated October 31, 2001
The disputed domain names and were both registered on April 25, 2011. At the time the Complaint was filed, the disputed domain names reverted to websites that provided links to third party websites. 5. Parties’ Contentions A. Complainant Confusingly Similar
The Complainant submits that it owns many trademark registrations for BAM FUTURA, BAM and FUTURA around the world, including those listed in paragraph 4 above.
The Complainant further contends that the disputed domain names and are nearly identical to the Complainant’s BAM FUTURA trademark except for the addition of the geographic designation “USA”. The term “USA” is a common abbreviation for the United States of America, and therefore suggests a link with the country. The Complainant submits that the addition of the geographic designation does not serve to distinguish the disputed domain names from the Complainant’s registered trademark.
Accordingly, the Complainant contends that the disputed domain names are confusingly similar to the Complainant’s registered BAM FUTURA trademark. Rights or Legitimate interests
The Complainant submits that the Respondent does not have any rights or legitimate interests in the and disputed domain names. The Respondent is not commonly known by the name Bam Futura, and has never been authorized or licensed by the Complainant. The Complainant further contends that the Respondent has not used the disputed domain names in a bona fide offering of goods and services. The disputed domain names revert to websites which provide links to third party websites through a pay-per-click advertising, which is not a bona fide offering of goods and services. Registered and Used in Bad Faith
The Complainant submits that the Respondent has registered and is using the disputed domain names and in bad faith because (i) the Respondent must have been aware of the Complainant’s registered trademark rights in BAM FUTURA, when the Respondent registered the confusingly similar disputed domain names; (ii) the Respondent registered and is using confusingly similar disputed domain names to trade on the goodwill and reputation of the Complainant’s registered trademark by using the disputed domain names in association with websites that provide pay-per-click advertising to websites owned and operated by third parties; and (iii) the Respondent owns many domain names that include registered trademarks of other parties, namely FO”, HENKEL, MULLER MARTINI, ROUSSELOT and WALMART. The ownership of domain names that include registered trademarks of other parties suggests the Respondent is engaged in cybersquatting for purposes of monetary gain, which is evidence of bad faith under the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions, but submitted an e-mail dated June 16, 2015, wherein the Respondent states that he met with a Mr. Baldy in Dubuqe, Iowa, offering the sales rights for “bamfutura” bookbinding hot melt adhesives for marketing. The Respondent further states that he purchased the disputed domain names to facilitate easy ordering for his customers. 6. Discussion and Findings
As a preliminary matter, the Panel must determine whether to accept the supplemental filing of the Complainant in the form of a Witness Statement in the name of Nicholas James Beardow. The Policy does not provide for the filing of supplemental materials, except in exceptional circumstances. However, the Witness Statement is appropriately narrow in scope, in that it addresses the alleged meeting with Mr. Baldy by the Respondent, and Mr. Baldy’s alleged offer of the sales rights for the trademark BAM FUTURA in the US, which was raised in Respondent’s informal e-mail response. The Witness Statement acknowledges a business relationship with Mr. Baldy, a director of Brunel Equipment & Supply, LLC (“Brunel”), and provides a copy of the Distribution Agreement dated January 4, 2011 (“the Agreement”). The witness Beardow explains that Brunel at no time had the authority or ability to license, sell or consent to the registration of the Complainant’s names by any third party as trademarks, domain names or otherwise. Brunel’s rights were limited by the Distribution Agreement to selling BAM FUTURA products in the US, and nothing further. The Panel is prepared to accept the supplemental filing on these points.
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain names are identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(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. A. Identical or Confusingly Similar
The Panel finds that the Complainant does have registered trademark rights in the mark BAM FUTURA by virtue of its Trademark Registrations, including those listed in paragraph 4 of this decision.
The Panel further finds that the disputed domain names and are confusingly similar to the Complainant’s registered trademark BAM FUTURA. The addition of the geographical term “USA” does not serve to distinguish the disputed domain names from the Complainant’s registered trademark.
Accordingly, the Panel finds that the Complainant has satisfied the requirements under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Panel notes that the Respondent did not file formal responding materials in this proceeding, and did not actually dispute any of the facts submitted by the Complainant. The facts reveal that the disputed domain names were registered by the Respondent on April, 2011, prior to any meetings with anyone connected to the Complainant. Respondent’s reliance on his meetings with Mr. Baldy are misplaced: Baldy was only a distributor in the US market for Complainant’s products and had no right to license or otherwise grant rights to use or register any of the Complainant’s marks. In any event, no relationship of any nature was ever created with Complainant’s organization because the Respondent decided not to carry the product line. The Respondent was clearly never authorized or licensed by the Complainant to use the registered trademark BAM FUTURA. Furthermore, the Panel is prepared to find that the registration and use of a confusingly similar domain name in association with a website that offers links to other parties as a pay-per-click website is not evidence of a bona fide offering of goods and services as defined under the Policy. Based on the evidence filed in these proceedings, the Panel is prepared to find that the Respondent does not have any rights or legitimate interests in the disputed domain names and .
Accordingly, the Panel finds that the Complainant has satisfied the requirements under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel is prepared to find, on the evidence filed, that the Respondent was aware of the Complainant’s registered trademark rights in the mark BAM FUTURA when he registered the disputed domain names on April 25, 2011. The Respondent’s attempted justification for its conduct is not credible for the reasons set out in Section B above. The Panel concludes that the Respondent acted in bad faith by attempting to trade on the goodwill and reputation of the Complainant’s trademark, without permission, and by subsequently developing websites which provide links to other parties’ websites for purpose of monetary gain.
Accordingly, the Panel finds that the Complainant has satisfied the requirements under paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names and be transferred to the Complainant.
Christopher J. Pibus
Sole Panelist
Date: July 30, 2015
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