The Complainant is Julius Blum GmbH of Höchst, Austria, represented by Patentwälte Torggler & Hofinger, Austria.
The Respondent is Aaron vladimirsky, handyct of Norwalk, Conneticut, United States of America (“USA”). 2. The Domain Name and Registrar
The disputed domain name, (the “Domain Name”), was at the time of the filing of the Complaint registered with DNC Holdings, Inc. (the “First Registrar”). The Domain Name is currently registered with GoD LLC. (the “Second Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2015. On December 21, 2015, the Center transmitted by email to the First Registrar a request for registrar verification in connection with the Domain Name. On December 24, 2015, the First Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details, and stating that the Domain Name “will remain locked during the pending administrative proceeding”.
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 28, 2015. On December 29, 2015 the Respondent responded to the Center in the terms of the email set out verbatim in section 4 below. Further email communications from the Respondent were received on January 4 and 5, 2016.
In accordance with the Rules, paragraph 5, the due date for Response was January 17, 2016. The Response was filed with the Center on January 17, 2016.
The Center appointed Tony Willoughby as the sole panelist in this matter on January 20, 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.
On January 22, 2016 the Panel conducted a Whois search to verify certain aspects of the registration of the Domain Name and found that, contrary to the information provided to the Center by the First Registrar on registrar verification, the registrar for the Domain Name was now the Second Registrar and the Domain Name was held in the name of a privacy service.
On January 22, 2016, at the request of the Panel the Center emailed the First Registrar (with copy to the Second Registrar) inviting it to explain the apparent breach of paragraph 8 of the Rules and to rectify the position.
The First Registrar responded that the incident occurred due to an error in removing the Lock on their part. The Second Registrar confirmed that the underlying registrant of the Domain Name remains the above-named Respondent, and confirmed that the Domain Name would remain under lock for the remaining pendency of the proceeding. 4. Factual Background
The Complainant is an Austria-based company, which was founded in 1952 and is engaged in the production of furniture fittings, which it markets internationally under and by reference to the trade mark BLUM.
The Complainant is the registered proprietor of numerous trade mark registrations around the world covering its BLUM trade mark including by way of example United States Trade Mark Registration No. 1,622,012 filed March 15, 1989, registered November 13, 1990 for BLUM (typed drawing) for various types of furniture fittings in classes 6, 7 and 20.
The Respondent claims to run a handyman business in Connecticut, USA. The Domain Name was registered on October 2, 2003 and is connected to a parking page apparently hosted by the First Registrar featuring advertising links associated with furniture fittings suppliers, including competitors of the Complainant.
On February 12, 2015 the Complainant’s representatives in the USA wrote to the Respondent, drawing the Respondent’s attention to the Complainant’s trade mark rights in respect of its BLUM trade mark and other trade marks of the Complainant and complaining of the Respondent’s unauthorized use of those trade marks on various of the Respondent’s websites. The letter sought inter alia transfer or cancellation of the Domain Name.
The Respondent did not reply to that letter.
On June 23, 2015 the Complainant’s representatives in the USA wrote again to the Respondent, pointing out that the Respondent had not responded to their earlier letter and reiterating their complaints regarding the Respondent’s unauthorized use of the Complainant’s trade marks.
On September 9, 2015 the Complainant’s representatives in the USA wrote to the Complainant’s representatives in this proceeding, an Austrian law firm, stating that they had sent a further cease and desist letter to the Respondent on September 3, 2015 and had tried to reach him by telephone. They report that he emailed them stating that he “was granted permission from [sic] original distributor Atlantic Plywood” and offered to sell the Domain Name for USD 30,000. He apparently stated that he had disabled the website connected to the Domain Name to which objection had been taken and indicated that he intended to redirect it exclusively to “blumhardware”.
On December 29, 2015 (as indicated in section 3 above) the Respondent emailed the Center in the following terms:
“I am really frustrated about this letters, all previous correspondences was answered and year ago website was changed according your requirements. Since then we did not receive any requests from you. Blumhardware is in compliance, we are authorized reseller and selling original blum items supplied to us by original Blum distributor from USA. I do not understand why you perusing your sellers, what are you going to do without us??
If you want to buy this webname please remit $30000 to our company. Otherwise I think we are good partner of Blum and hope for a long time.
Please INCLUDE THE ABOVE E-MAIL WITH YOUR REPLY. Thank you for your time.”
And later the same day:
“we are in compliance and everything was fixed and removed long time ago-you have old information. We are resellers and have right to use blum hardware technical information on our site.”
On January 4, 2016, the Respondent emailed the Center in the following terms:
“website never worked it is still disabled, no logos present no blum items at all, I am really frustrated and we dropped blum hardware line completely and not selling it anymore. if you want me to resell your hardware I need your approval to use your pictures and logos on my websites as agreed initially with 3 of your official distributors. They provided all necessary pictures and technical information for us to use and I am completely unsatisfied with your unexpected claim. Without this information we cannot resell your items in USA stores.Get back to me ASAP, I also forwarded this letter to Blum Corp.” 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is confusingly similar to the Complainant’s BLUM trade mark, denies that the Respondent is an authorized distributor of its products, contends that the Respondent has no rights or legitimate interests in respect of the Domain Name and contends that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. B. Respondent
The Respondent accepts that the Domain Name “seems similar to the Complainant’s trade mark”, but contends that “Blum” means “flower” in German and Yiddish and is a commonly used personal name “in different countries and cultures”.
He asserts that he has conducted searches and found other similarly confusing domain names incorporating the Complainant’s trade mark. He says that he grew up in a Jewish family in Eastern Europe and called his grandmother “Blumchen” for her “decades long dedication to her flower garden”.
He contends that he has a right and legitimate interest in respect of the Domain Name because for the last ten years he has been trading as a handyman building and installing custom hardware for his customers and has expanded his business over the last 5 years to include the sale of branded hardware from a number of producers including the Complainant.
He says that he contacted one of the Complainant’s distributors for permission to sell the Complainant’s products. He claims that he has never represented himself to be the Complainant and has no intention of doing so. He says that his business area is exclusively the USA. He states: “We do business in the USA and use different merchandise Brands to satisfy our Customers.” And, later: “But, we feel that there is not any correlation to the Complainant’s website and our Web site name or our Business. It is used as a common adjective and does not represent any ‘brand’.”
As to bad faith the Respondent contends that he did not acquire the Domain Name in order to sell it; nor to block the Complainant; nor to disrupt the Complainant’s business. He concludes: “I will keep using this domain solely to continue selling customized hardware to my customers and will no longer offer any Blum products to any of my existing or future customers.”
From the Respondent’s email received by the Center on December 29, 2015, it would appear that he contends that he is an authorized seller of the Complainant’s products and has done all that was required of him. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is 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 Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith. B. Identical or Confusingly Similar
The Domain Name comprises the Complainant’s trade mark with the addition of the word “hardware” and the “.com” generic Top-Level Domain (“gTLD”) identifier. Neither of these additional features serves to dilute the distinctiveness of the Complainant’s trade mark. The word “hardware” describes the Complainant’s product category and the gTLD identifier is a purely technical addition serving no distinctive purpose.
The Panel finds that Domain Name is confusingly similar to a trade mark in which the Complainant has rights. C. Rights or Legitimate Interests
While it is for the Complainant to prove all 3 elements of paragraph 4(a) of the Policy, in the case of the second element (paragraph 4(a)(ii) of the Policy) it is generally sufficient in the first instance for the Complainant to make out a prima facie case calling for an answer from the Respondent. As this Panel explained in Julian Barnes v. Old Barn Studios Limited,WIPO Case No. D2001-0121,
“While the overall burden of proof is on the Complainant, this element involves the Complainant proving matters, which are peculiarly within the knowledge of the Respondent. It involves the Complainant in the often impossible task of proving a negative. In the Panel’s view the correct approach is as follows: the Complainant makes the allegation and puts forward what he can in support (e.g. he has rights to the name, the Respondent has no rights to the name of which he is aware, he has not given any permission to the Respondent). Unless the allegation is manifestly misconceived, the Respondent has a case to answer and that is where paragraph 4(c) of the Policy comes in. If the Respondent then fails to demonstrate his rights or legitimate interests in respect of the Domain Name, the complaint succeeds under this head.”
In this case the Complainant has demonstrated by its evidence that by the date of registration of the Domain Name it had been trading for many years under the name BLUM and had achieved trade mark protection for the name. The Complainant contends that the Respondent adopted the Domain Name with knowledge of the Complainant’s business and with a view to attracting traffic to its own website connected to the Domain Name offering similar services. The Complainant states that it has never authorized the Respondent to use its trade mark. Further, the Complainant has demonstrated (and the Respondent has asserted) that the Respondent has been using the website connected to the Domain Name for the sale of not only Blum products but also the products of the Complainant’s competitors.
The Panel is satisfied that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent.
If the Respondent is able to satisfy the Panel that he has been making bona fide use of the Domain Name for his business, paragraph 4(c) of the Policy provides him with a solid defence.
The Respondent has answered, but not in an entirely consistent manner. First, he draws attention to the fact that “blum” is a close translation in German and Yiddish for “flower” and that it is a common name in some countries, but that does not appear to the Panel to be why he adopted the name for the use of his hardware business in the USA. He has not asserted that that is why he selected the name and has not produced any evidence to that effect. Secondly, he refers to the fact that his adoption of the Domain Name coincided with his decision to offer for sale branded hardware of various manufacturers (including the Complainant from whose distributor in the USA he sought permission) to suit the needs of his customers. However, he claims to have registered the Domain Name in 2003, which by his own account was some seven years before he decided to expand his business to sell third party products. Finally, at the end of the Response he states that the name “is used as a common adjective and does not represent any “brand.”, which is, in the circumstances, nonsense.
The Respondent has produced no documentary support for any of his assertions.
In the view of the Panel there can be no doubt that, consistent with his claimed decision to sell third party branded products, the Respondent selected the Domain Name intending it to refer not to anything associated with flowers, but to the branded product of the Complainant.
There is a dispute between the parties as to whether or not the Respondent has ever been an authorized distributor of the Complainant’s products; moreover, as is evident from the Panel’s choice of language above, the Panel is by no means certain that the Respondent has ever sold any of the Complainant’s products. However, for the purposes of this decision the Panel is prepared to treat the Respondent as a reseller of the Complainant’s products and for this purpose it matters not whether or not the Respondent is/was an authorized reseller.
To what extent is it fair and reasonable for a reseller of branded product to use the brand as or as part of a domain name so as to give to the reseller a right or legitimate interest in respect of that domain name? The matter is dealt with in paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), which poses the question: “Can a reseller/distributor of trademarked goods or services have rights or legitimate interests in a domain name which contains such trademark?” At this stage, for present purposes it is only necessary to quote the first part of the Consensus view:
“Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site accurately and prominently disclosing the registrant’s relationship with the trademark holder. The respondent must also not try to ‘corner the market’ in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data1 principles.”
In this case, the Respondent fails that test. If he is to be believed, he has been using the Domain Name featuring the Complainant’s trade mark to sell the products of several manufacturers, including products competing with the Complainant’s products and threatens to use it for anything but the Complainant’s products (The Response concludes: “I will keep using this domain solely to continue selling customized hardware to my customers and will no longer offer any Blum products to any of my existing or future customers”). Certainly, the parking page to which the Domain Name is currently connected features advertising links to a wide variety of hardware suppliers.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. D. Registered and Used in Bad Faith
The Panel is not certain that anything that the Respondent asserts should be believed in the absence of independent documentary verification. His references to other uses/meanings of the word/name “blum” are of no assistance given his clearly expressed desire to sell the Complainant’s branded products. In fact those references only serve to question the Respondent’s integrity. And there are other unanswered questions.
Why, if the Respondent only decided to expand his business to include the sale of third party hardware about five years ago, did he register the Domain Name twelve years ago?
Ordinarily, the Panel would have expected a bona fide user of another party’s trade mark to come forward with a coherent, consistent explanation supported by documentary evidence. For example, the Respondent claims to be an authorized distributor of the Complainant’s products. It should have been very easy for the Respondent, aware that the Complainant denies the claim, to produce relevant evidence, even if only a letter from the source of the authorization. But the Respondent has produced nothing. Why?
And then, of course there has been the transfer of the Domain Name to the Second Registrar in breach of the Rules (see section 3 above), which is not something that the Panel would have expected of a bona fide trader falsely accused of acting in bad faith. Why? What did the Respondent hope to achieve?
The Complainant contends that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy, which provides:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
If the Panel is to approach this on the basis that the Respondent runs a handyman business selling third party hardware, the Respondent knew when he registered the Domain Name that he would be using it to connect to a website selling inter alia the goods of manufacturers other than the Complainant. Clearly, he knew that this use of the Complainant’s brand would attract customers looking for the Complainant’s products; after all the Domain Name identifies the Complainant’s products and no others. Those customers would then be exposed to a variety of other goods having nothing to do with the Complainant. Thus the Respondent would be using the Domain Name and has in fact used the Domain Name for his own commercial benefit going beyond sale of the Complainant’s goods.
On that basis the Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The same finding would apply if the Respondent’s business is the acquisition of advertising Pay-per-Click income derived from his parking page.
An alternative basis might be that his aim all along was to provoke an approach from the Complainant, the trade mark owner, thereby enabling him to make the offer of sale of the Domain Name for USD 30,000 referred to in section 4 above. If that was his aim the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(i) of the Policy, but the Panel regards this as an unlikely aim given the intervening lapse of twelve years from registration of the Domain Name.
The Panel finds on the balance of probabilities that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) 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 Domain Name, be transferred to the Complainant.
Tony Willoughby
Sole Panelist
Date: January 27, 2016
1 Oki Data Americas, Inc. v. ASD, Inc. WIPO Case No. D2001-0903
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