The Complainant is Forbo Financial Services AG, Switzerland, represented by Weinmann Zimmerli, Switzerland.
The Respondent is Ashrad, United Arab Emirates. 2. The Domain Name and Registrar
The disputed domain name ( “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 27, 2019. On May 27, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On 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 June 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 26, 2019. The Center received an informal communication from the Respondent on June 15, 2019. However, the Respondent did not submit any response. Accordingly, the Center proceeded to panel appointment on June 28, 2019.
The Center appointed Ellen B Shankman as the sole panelist in this matter on July 3, 2019. 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 registration date of the Domain Name registration was confirmed by the Registrar to be October 16, 2007.
The trademark SIEGLING serves as a house mark of the Complainant and is protected as a registered trademark in multiple jurisdictions worldwide.
The Complainant provided evidence of multiple trademark registrations for the mark SIEGLING including, inter alia, United Arab Emirates Registration No. 264979 (registered on December 18, 2016) and Swiss Registration No. 2P-445158 (registered on April 30, 1997).
The Panel also conducted an independent search to determine that the Domain Name resolves to a page with a “403” error message, and the website currently appears to be inactive. 5. Parties’ Contentions A. Complainant
The Complainant is part of the Forbo group of companies (“Forbo”) which is a global industry leader in, inter alia, supplying high-quality conveyor belts and processing belts as well as plastic modular belts, power transmission belts, timing and flat belts made of synthetic materials and various ancillary goods and services. Forbo’s belting products are used in a variety of ways in manufacturing and in retail service sectors, for example as conveyor and processing belts in the food industry, as treadmills in fitness studios or as flat belts in letter sorting systems. Forbo is offering these products under inter alia, the trademark SIEGLING.
The Complaint alleges that the brand name SIGELING dates back to early decades of the 19th century when Mr. Ernst Siegling founded a belting company under his own name in Hannover, Germany, which became well known for innovative energy efficient belting products. Mr. Siegling’s company was acquired by Forbo in 1994 and subsequently renamed into Forbo Siegling GmbH. Exclusive protection for the brand name SIEGLING was formalized at least as early as April 30, 1997, which is the filing date of the Swiss Trademark Registration No. 2P-445158 SIEGLING. This trademark served as the priority basis for various trademarks registrations around the world.
The Complaint further alleges that the Domain Name entirely incorporates the trademark SIEGLING of the Complainant and only adds the geographic term “gulf” - standing for the Gulf region where the Respondent is located. The Complainant has good reasons to assume that the beneficial owner of the disputed name is M/S Oman Rolling Belts (“ORB”) or that the Respondent and ORB was the local distributor of Forbo’s belting products for the Gulf region (United Arab Emirates, Bahrain, Oman, Yemen, Qatar, and Kuwait). In order to formalize their relationship, the Complainant’s affiliate - Forbo Siegling GmbH who had been granted a non-exclusive license by the Complainant to use the SIEGLING trademarks around the world - and ORB concluded a distribution agreement on November 10, 2009. As part of this distribution relationship, Forbo Siegling GmbH granted ORB a non-exlusive sublicense to use and display the SIEGLING trademarks for the purposes of marketing Forbo’s belting products in the Gulf region. However, ORB was prohibited from registering a domain name consisting of the SIEGLING trademark and ORB specifically acknowledged that this trademark exclusively belonged to Forbo and that it shall have no rights, title, or interest in or to the trademark except as specified in the distribution agreement. A copy of that agreement was provided with the Complaint.
With registered mail dated July 28, 2011, Forbo Siegling GmbH terminated the distribution agreement with effect as of January 31, 2012. Accordingly, ORB was obligated to cease using the SIEGLING trademark. However, after the termination, the Complainant claims that it learned that ORB had registered the Domain Name and was using it to sell products of third parties. As the registration and use of the Domain Name was a of the distribution agreement and the Complainant’s trademark rights, the Complainant asked ORB to delete the Domain Name. As a reaction to the respective warning letter, ORB denied any infringement and claimed to be entitled to use the Domain Name - which confirmed that ORB actually was the holder of the Domain Name. In addition, ORB assured that it would not offer Forbo’s products under the Domain Name. With email of February 5, 2015 and with warning letters of November 24, 2014 and January 21, 2019, the Complainant once again drew attention to ORB’s contractual obligations and his trademark rights. However, ORB neither answered these letters nor complied with the request to delete the Domain Name.
To summarize the Complaint, the Complainant is the owner of multiple registrations for the trademark SIEGLING, in respect of a range of goods and services including the “belts” in question in this dispute. The Domain Name is confusingly similar to the trademark owned by the Complainant. The addition of the geographic term “gulf” where the Respondent operates does not prevent a finding of confusing similarity. Therefore, the Domain Name could be considered virtually identical and / or confusingly similar to the Complainant’s trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Domain Name was registered and is being used in bad faith; the use of the Domain Name would lead to a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the Respondent by the Complainant, especially for competing goods and services. Thus, the Respondent’s registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) That the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) That the Domain Name has been registered and used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for SIEGLING.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark. Further, the Panel finds that the mere addition of the geographical term “gulf” to the Domain Name does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark. See Pfizer Inc. v. Asia Ventures, Inc.,WIPO Case No. D2005-0256. See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110, stating “The incorporation of a Complainant’s well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant’s trademark.”
Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is confusingly similar to the Complainant’s registered trademark, under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although complainants bear the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270.
The Complainant focused its efforts not on the identified Respondent Ashrad, but on the beneficial holder of the Domain Name which is a former distributor in a commercial relationship that has gone sour and been terminated. The beneficial owner of the Domain Name was identified as ORB. The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name and that it is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks.
Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Name.
The Panel further finds this to be the case whether or not there is any connection between the Respondent and the beneficial holder. In the case of the identified Respondent Ashrad, there is certainly no legitimate use or interest, and with regard to the beneficial holder ORB, the Panel is not persuaded that the Domain Name is being used for a legitimate fair purpose (and which also informs the third element of the Policy discussed further below).
Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel notes that this case provided a challenge under this third element of the test.
Given the distinctiveness of the Complainant’s trademark and reputation, the Panel agrees with the Complainant’s claims that the Respondent has registered the Domain Name with full knowledge of the Complainant’s trademark SIEGLING and used it at some points for the purpose of misleading users and diverting Internet traffic.
However, while the Panel finds that such “use” is clearly in bad faith, the disquieting question still lies in whether the “registration” was also done in bad faith.
While there is some circumstantial evidence to support the claims of the Complainant, there is also some circumstantial evidence to interpret otherwise. It is hard to go back in time to the mindset of the Respondent in 2007 after more than a decade has passed.
The distribution agreement – which this Panel believes a UDRP panel should not normally have to review in detail in order to determine abusive registration – states that no domain should be registered without permission, and the Respondent’s email contests and claims that the Domain Name was registered during their initial work together. There is no evidence either way regarding what might have happened then and especially noting the distribution there is silence on whether the activity was understood at the time to be a legitimate piece of the promotion of the Complainant’s goods.
Even if this Panel cannot “right the wrong” of the Respondent’s use in bad faith and apparent breach of contract, the clear mandate of the UDRP is bad faith registration and use of the Domain Name. The Panel cannot go back to find clear bad faith at the time of the registration, given the interference from Complainant’s own evidence that the Respondent may have registered the mark as part of the initial business development relationship between the parties. See e.g. Groupement des Labaratoires Francaise/Soras v. Embryolisse USA,WIPO Case No. D2019-0664, (“Although it is difficult to know the mind of a registrant at the time of registration of a domain name, the Complainant has not produced any evidence to suggest that the Respondent made the registration for any other purpose than to further the sales of the Complainant’s products consequent upon the acquisition of the distribution rights in 2005. On the foregoing basis, the Complainant on the balance of probabilities cannot prove registration, and therefore registration and use conjunctively, of the disputed domain name in bad faith under paragraph 4(a)(iii) of the Policy, and the Complaint cannot succeed. The Complainant not having succeeded, the question of use of the disputed domain name in bad faith is moot, however the Panel notes that some of the remaining matters raised in the Complainant are in the nature of alleged breaches of the Agreement, and the requirement that upon its termination, the Respondent shall cease and desist from use of the Complainant’s trademarks in any manner. The scope of the Policy is limited to the abusive registration of a domain name and does not extend to trademark or contract disputes.”)
This Panel agrees with the panel in that case referenced above, as with this case that the scope of the Policy is limited to the abusive registration of a domain name and does not extend to trademark or contract disputes.
Although the Complainant has provided ample evidence of the Complainant’s prior rights in the trademark, the timing of the registration of the Domain Name with apparent full knowledge of / and the Respondent’s reply to the Complainant’s request for voluntary transfer of the Domain Name, given the lack of evidence regarding clear registration of the Domain Name in bad faith, the Panel finds that the Complainant has not satisfied the third requirement under paragraph 4(a)(iii) of the Policy.
The panel notes that other fora such as a court where discovery and probing of evidence is possible may be better suited to resolve this case. 7. Decision
For the foregoing reasons, the Complaint is denied.
Ellen B Shankman
Sole Panelist
Date: July 16, 2019
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