The Complainant is Progeo Monitoring GmbH of Großbeeren, Germany, represented by Squire Patton Boggs LLP, United Kingdom of Great Britain and Northern Ireland ("UK").
The Respondent is Clark Gunness of Newbury, New Hampshire, United States of America, represented by Lawson Persson & Weldon-Francke, P.C., United States of America ("US"). 2. The Domain Names and Registrar
The disputed domain names ; ; ; and (the "Disputed Domain Names") are registered with Network Solutions, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 27, 2015. On November 30, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On November 30, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 8, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 28, 2015. The Response was filed with the Center on December 28, 2015.
The Center appointed John Swinson as the sole panelist in this matter on January 14, 2016. 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 Progeo Monitoring GmbH, a building and geotechnical monitoring company which was founded in Germany in 1992.
The Complainant owns the following registered trade marks (among others) (the "Trade Mark"):
- German trade mark registration number 2031538 for PROGEO, registered on March 2, 1993;
- International trade mark registration number 640524 for PROGEO, registered on June 23, 1995; and
- US trade mark registration number 3714787 for PROGEO, registered November 24, 2009.
The Complainant owns the domain name , at which its main business website is hosted.
The Respondent is Clark Gunness, an individual of the US. The Respondent was previously an authorized distributor for the Complainant in the US. The Respondent's company, Gaussan Technologies, now competes with the Complainant.
The Disputed Domain Names were registered on the following dates:
- - July 15, 2008;
- - September 27, 2008;
- - October 2, 2008; and
- - April 30, 2014.
The Disputed Domain Name currently redirects to the domain , at which the website for the Respondent's current business is hosted.
The websites at and currently display a Registrar parking page with pay-per-click ("PPC") links. Most of the PPC links on the parking page for appear to relate to geological equipment. Those on the parking page for relate to cancer treatments. At the time the Complaint was filed, there were no active websites associated with these Disputed Domain Names.
There is no active website associated with . 5. Parties' Contentions A. Complainant
The Complainant's contentions are as follows. Identical or Confusingly Similar
The Disputed Domain Names are confusingly similar to the Trade Mark. The Disputed Domain Names incorporate the Trade Mark in its entirety, and the additional elements of "monitor", "monitoring", or "group" do not distract from the Trade Mark.
The Disputed Domain Name is identical to the Complainant's company name. Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the Disputed Domain Name as the Respondent is no longer affiliated with the Complainant or licensed to use the Trade Mark.
The Respondent was appointed as the Complainant's distributor in the US by way of a distribution agreement dated November 5, 2007. That agreement was terminated by mutual agreement in February 2015, taking effect retrospectively from November 5, 2012, but the Respondent continues to hold the Disputed Domain Names, thereby directing Internet traffic away from the Complainant.
The Disputed Domain Name redirects to the domain name , which directs to the website for the Respondent's new company and which competes with the Complainant in the same industry.
Although there are no active websites at the Disputed Domain Names , or , consumers visiting these domains will be directed away from the Complainant as they would consider these domains to originate from the Complainant. Registration and Use in Bad Faith
The Respondent is using the Disputed Domain Name in bad faith as he uses the Trade Mark to attract Internet users to the Respondent's website based on a likelihood of confusion with the Trade Mark (see paragraph 4(b)(iv) of the Policy).
The Respondent failed to transfer the Disputed Domain Names following termination of the distribution agreement. The Respondent is attempting to disrupt the Complainant's business and compete with the Complainant in the US market (see paragraph 4(b)(iii) of the Policy).
Further, the Disputed Domain Names are used to divert Internet traffic away from the Complainant and/or to the Respondent's business therefore deceiving customers into believing the Respondent is still associated with the Complainant. B. Respondent
The Respondent's contentions are as follows. Identical or Confusingly Similar
The Respondent admits that the Disputed Domain Names are similar to the Trade Mark and would be confusingly similar if used as trade marks in connection with the same goods in respect of which the Trade Mark is registered. Rights or Legitimate Interests
The Respondent has legitimate interests in respect of the Disputed Domain Names as the Respondent's business was commonly known by the Disputed Domain Names. The Respondent registered the Disputed Domain Names in 2008 in the course of performing his duties as the Complainant's distributor.
The Respondent has distributed business cards and correspondence to customers and potential customers identifying the Disputed Domain Names and email addresses at the Disputed Domain Names as the way to contact the Respondent. The transfer of the Disputed Domain Names to the Complainant would result in potential customers seeking to contact the Respondent being unfairly diverted to the Complainant.
The Complainant has provided no evidence in support of its allegation that the Respondent has been unfairly diverting traffic away from the Complainant. Customers looking for the Complainant will easily be able to find it via a Google search. Registration and Use in Bad Faith
The Disputed Domain Names were registered and are currently being used in good faith.
The Respondent registered the Disputed Domain Names in 2008 in good faith and in connection with his duties under the distribution agreement with the Complainant. The Respondent was not obliged to transfer the Disputed Domain Names following termination under either the distribution or termination agreement. The distribution agreement did not prevent the Respondent from registering domain names in his own name, and while it contained post-termination obligations, none related to domain names.
The Respondent's continued use of the Disputed Domain Names has been for the sole purpose of allowing potential customers who have materials identifying the Disputed Domain Names to contact the Respondent.
Further, under the termination agreement, the Complainant granted the Respondent a "full, complete and final discharge" from all claims. The assertions raised by the Complainant in its cease and desist letter relate to claims the Complainant could have raised at the time the termination agreement was executed, and as such, each of the claims in that cease and desist letter has been released. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has 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.
The onus of proving these elements is on the Complainant. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Names are identical or confusingly similar to the Trade Mark.
As submitted by the Complainant, each of the Disputed Domain Names wholly incorporates the Trade Mark and combines it with a generic or descriptive term.
In relation to and , the addition of the generic term "group" does not diminish the confusing similarity, as it is likely Internet users would interpret this addition as subordinate to the Trade Mark, which is the dominant and distinctive part of those Disputed Domain Names (see, e.g., DPD Dynamic Parcel Distribution GmbH & Co.KG. v. Barath Singh,WIPO Case No. D2014-1823 and the case cited therein).
In relation to and , the addition of the terms "monitor" and "monitoring" increases the confusing similarity, as these Disputed Domain Names are identical, or almost identical, to the Complainant's name.
The Disputed Domain Names are confusingly similar to the Trade Mark. The Complainant succeeds on the first element of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Respondent was previously the Complainant's exclusive distributor in the US and Canada. That arrangement was terminated on February 19, 2015 (and, by agreement between the parties, termination took effect from November 5, 2012).
The Complainant's case is that, as the Respondent is no longer affiliated with the Complainant or licensed to use the Trade Mark, the Respondent has no rights or legitimate interests in the Disputed Domain Names.
The Respondent counters by saying, in summary, that he has rights and legitimate interests in the Disputed Domain Names as he registered them in the course of performing his duties as distributor, and his business was commonly known by the Disputed Domain Names.
The Respondent had a limited right to use the Trade Mark for the duration of his distribution agreement. The distribution agreement did not expressly deal with registration and use of domain names incorporating the Trade Mark, however, the Complainant clearly agreed to the Respondent doing so (by acquiescence, if not expressly through the explicit grant of a license to use the Complainant's trade marks).
Panels have consistently found that when a distribution arrangement terminates, any express or implied permission to use a domain name which incorporates a complainant's trade mark expires. See, e.g., Jerome Stevens Pharmaceuticals, Inc. v. Watson Pharmaceuticals,WIPO Case No. D2003-1029; SPECS GmbH v. SPECS Scientific Instruments, Inc. d/b/a SPECS Technologies Corporation,WIPO Case No. D2009-0308 and the cases cited therein; ESET, spol. s.r.o. v. Antivirus Australia PTY Ltd., Rodney Fewster, ESET Pty Ltd.,WIPO Case No. DAU2015-0014.
In Jerome Stevens Pharmaceuticals, Inc. v. Watson Pharmaceuticals,WIPO Case No. D2003-1029 the panel stated:
"There is no statement in the Policy that Respondent must have no legitimate interest both at the time of registration and thereafter. Thus, if one had legitimate use at one point, yet no longer is legitimately using the domain name, the Policy doesn't prohibit a finding of no legitimate use pursuant to paragraph 4(a)(ii)."
As such, on termination of the distribution agreement, any rights or legitimate interests that the Respondent may have had in relation to the Disputed Domain Names expired. From the date the distribution agreement was terminated, any ongoing use of the Disputed Domain Names by the Respondent cannot be considered bona fide.
The Panel now turns to the Respondent's contention that he has rights in the Disputed Domain Names because he was commonly known by the Disputed Domain Names through use on business cards, emails and the like.
The Respondent has provided no evidence that he uses or has used each or any of the Disputed Domain Names in that way, and it is unlikely that he did in relation to all four of the Disputed Domain Names. Further, the fact that the Respondent was using the Trade Mark, as incorporated into the Disputed Domain Names, under license from the Complainant does not mean the Respondent was commonly known by the Disputed Domain Names. The Respondent did so to expand the Trade Mark and the Progeo brand for the benefit of the Complainant. The Respondent cannot obtain his own rights in the Disputed Domain Names from such use.
Finally, the Respondent cannot rely on being commonly known by "Progeo Monitoring North America" to ground his rights or legitimate interests in the Disputed Domain Name, particularly when he is no longer using that name and is now trading under a different company name and offering goods and services which compete with those of the Complainant. See, e.g., Pangaea Laboratories Ltd, Pacific Direct Intertrading Pty Ltd v. Astrix Pty Ltd,WIPO Case No. DAU2015-0013 and SPECS GmbH v. SPECS Scientific Instruments, Inc. d/b/a SPECS Technologies Corporation,WIPO Case No. D2009-0308.
The Panel finds that the Complainant has made out a prima facie case that the Respondent has failed to rebut. The Complainant succeeds on the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and used the Disputed Domain Names in bad faith.
The written agreement between the parties states that the Respondent "is prohibited from claiming in his own name, trade mark rights … from products sold and manufactured by [the Complainant]."
The Disputed Domain Name currently redirects Internet users to the website for the Respondent's new business, Gaussan Technologies. The words "Formerly Progeo Monitoring" appear at the top of the home page for that website, in small print below the branding for his new company. Further, on the "About us" page of that website is the text:
"Gaussan Technologies Inc. is the new name for what was known as Progeo Monitoring of North America (Progeo Group)."
While it might be true that the Respondent previously owned or operated a company known as "Progeo Monitoring North America", it is incorrect and misleading for the Respondent to assert that his company, "Gaussan Technologies", was formerly known as "Progeo Monitoring". The Respondent is not affiliated with the Complainant, and "Gaussan Technologies" is not the company formerly known as "Progeo Monitoring" – it is an entirely separate business, and in fact, is a competitor of the Complainant. On termination of the distribution agreement, the Respondent no longer had any right to use the Trade Mark, or to draw on the Complainant's goodwill or reputation; by referring to "Gaussan Technologies" as the successor to Progeo Monitoring, the Respondent is doing just that.
The Respondent is using the Disputed Domain Name to intentionally divert Internet users to his own business, which competes with the Complainant. This is a clear example of bad faith under paragraph 4(b)(iv) of the Policy (see, e.g., Jerome Stevens Pharmaceuticals, Inc. v. Watson Pharmaceuticals,WIPO Case No. D2003-1029; SPECS GmbH v. SPECS Scientific Instruments, Inc. d/b/a SPECS Technologies Corporation,WIPO Case No. D2009-0308 and the cases cited therein; ESET, spol. s.r.o. v. Antivirus Australia PTY Ltd., Rodney Fewster, ESET Pty Ltd.,WIPO Case No. DAU2015-0014).
Paragraph 4(b)(iv) states that use of a domain name to intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website "shall be evidence of the registration and use of a domain name in bad faith".
In the words of this Panel in Pixers Ltd. v. Whois Privacy Corp.,WIPO Case No. D2015-1171:
"Paragraph 4(b)(iv) states that using a domain name in the way specified in that paragraph is 'evidence' of both bad faith registration and bad faith use of the domain name. In some circumstances, that evidence can be rebutted, for example, if it can be clearly demonstrated by the Respondent that the registration was not made in bad faith. … See Xbridge Limited v. Marchex Sales, Inc.,WIPO Case No. D2010-2069 and the cases cited therein. These decisions show that paragraphs 4(a)(iii) and 4(b)(iv) cannot be read in isolation – bad faith must be considered in light of paragraph 4(a)(ii) and, as demonstrated by Telstra, with consideration of the purposes of the Policy and the dynamic nature of the Domain Name System and of cybersquatting behavior.
In short, paragraph 4(b)(iv) provides an evidentiary presumption of bad faith registration where there is evidence of a certain kind of bad faith use. In many cases, it may be difficult for the Respondent to rebut this evidentiary presumption."
In the circumstances of this case, this presumption has not been rebutted by the Respondent. Applying paragraph 4(b)(iv) of the Policy, this Panel considers that the Respondent, by using the Disputed Domain Name to redirect to Respondent's website, is opportunistically using the Disputed Domain Name to attract Internet users for commercial gain, by creating confusion as to the existence and nature of any relationship with the Complainant.
Regarding the Disputed Domain Names and , at the time the Complaint was filed no active websites were associated with these Disputed Domain Names.
The Disputed Domain Name is still being passively held. There is no active website associated with this Disputed Domain Name.
The Respondent states that he has distributed business cards and correspondence identifying the Disputed Domain Names as the way in which customers and potential customers can contact him. He also states that his continued use of the Disputed Domain Names is for the sole purpose of allowing that contact to continue. From these statements in the Response, the Panel could infer that the Respondent may be using the Disputed Domain Names for email purposes. However, this is unclear based on the evidence on the record and it seems curious that the Respondent would want or need to maintain four different email addresses.
However this may be, it is accepted that a lack of active use of a relevant domain name does not prevent a finding of bad faith (see paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0")). A panel must consider all circumstances in order to determine whether a finding of bad faith is appropriate.
In Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, the panel said, "the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith."
The Respondent registered the Disputed Domain Names at a time when he was a distributor for the Complainant. On termination of that arrangement, almost 12 months ago, Respondent's right to use the Trade Mark and the Disputed Domain Names ceased. The Panel considers that the Respondent's failure to transfer the Disputed Domain Names to the Complainant, or at least cancel their registration, particularly after the Complainant's request that the Respondent do so, is an attempt to unfairly benefit from the Complainant's reputation and goodwill, and to disrupt the Complainant's business activities. This is all the more so when the Respondent is using at least one of the Disputed Domain Names to redirect Internet users to his own business, which competes with that of the Complainant, and the Respondent falsely claims an association with the Complainant on the Gaussan Technologies website. In addition, the Respondent is currently using the Disputed Domain Names and to divert traffic to PPC advertising pages. This is evidence of bad faith under paragraph 4(b)(iii) of the Policy.
The Complainant succeeds on the third element 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.
John Swinson
Sole Panelist
Date: February 19, 2016
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