The Complainant is OMLAT S.r.l., Italy, represented by Musumeci Altara Desana e Associati, Italy.
The Respondent is Berna Egin-Heinisch, Egin-Heinisch GmbH & Co. KG, Germany, represented by Heymel Anwaltskanzlei, Germany. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2020. On November 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 19, 2020, 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. On November 26, 2020, the Complainant filed an amended Complaint. 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 November 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 17, 2020. The Response was filed with the Center on December 17, 2020. The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on January 4, 2021. 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 11, 2021, at the request of the Panel, the Center issued Procedural Order no. 1 to the Parties. This requested, first, an explanation from the Complainant as to its relationship with the owner of the trademark upon which it relied, namely Mr. Stefano Aimo. The Complainant was specifically requested to state whether there was any license in place regarding said trademark. Secondly, said Order requested an explanation from the Respondent as to the significance of the multiple logos on the website associated with the disputed domain name. The Respondent was specifically requested to state whether said logos represented the Complainant’s competitors. Said Order requested each of the Parties to provide their statement by January 13, 2021. On January 13, 2021, both of the Parties filed statements in response to Procedural Order no. 1. On January 14, 2021, the Panel extended the due date for the Decision to January 25, 2021. 4. Factual Background The Complainant is a manufacturer of motor spindles claiming some 80 years’ experience and having its headquarters and registered office in Italy together with an authorized repair center in North America. The Complainant uses the OMLAT trademark in connection with its business. The Complainant states that it is the registrant of the domain name The Complainant cites its alleged ownership of European Union trademark no. 016504185 for the word mark OMLAT, registered on July 21, 2017, in international class 7 (spindles for machine tools and similar goods). The owner of this trademark is not the Complainant, but one Stefano Aimo, a physical person with an address in Italy. The original Complaint was filed by a person of that name using a corresponding email address within the Complainant’s The Respondent is an entity with a place of business in Germany. According to the relative WhoIs record, the creation date of the disputed domain name is December 20, 2018. The website associated with the disputed domain name is in both German and English. The following description relates to the English language website. The top of said site contains a logo for DERSPINDELDOCTOR underneath which are a variety of what appear to be third party logos. In response to the Procedural Order described below, the Respondent stated that these logos are trademarks of third party manufacturers, adding that no products from third party manufacturers are offered at said site. Beneath the logos, in large letters, is a heading which states: “Independent Repair+Service Center for OMLAT spindles”. Below, in smaller text, is the following paragraph: “Welcome to the Independent Repair+Service Center for OMLAT spindels [sic] in Europe – your trusted partner for your OMLAT spindle. We provide you with original spindles and spare parts from OMLAT and offer you working, fast solutions to problems with your OMLAT spindle.” Further down the page, said website provides full details about the Complainant’s company including “About Omlat”, “Story”, “Products”, “Service” and “Locations”. Sub-headings of “HISTORY”, “PRODUCTS”, “SERVICE” and “LOCATIONS” are also presented. The “SERVICE” section states “OMLAT is characterized by close proximity to its customers and a comprehensive service. A special feature of OMLAT customer service is the processing or refurbishing of all spindles. In this way, customers will again receive a new product including a manufacturer’s warranty”. Directly beneath this section are the Respondent’s contact details. On November 28, 2019, a representative of a German company wrote to the Complainant stating “I have heard that Omlat has opened a new service center in Germany. Please send us the information, we are interested in a repair of the spindle in Germany”. The Complainant replied on December 4, 2019, seeking to clarify the fact that it did not have an authorized service center in Germany and stating that said company should return the spindle to the Complainant for “a perfect repair”. On December 5, 2019, the representative from said company replied attaching a copy of a flyer and requesting the Complainant’s comments. The flyer is in the name of the Respondent and appears to have been prepared by it. Among other representations, the flyer states (Panel’s translation) “Welcome to the official Omlat repair center in Europe – your reliable partner for your Omlat spindle. In 2016 we decided to set up our OMLAT service division in the center of Germany. Our head office is near Kassel […]”. The flyer includes a contact page which features the URL of the website associated with the disputed domain name. An email from the representative of a German company to the Complainant dated April 23, 2020, asks, “Is it correct that [the Respondent] is the official repair center for Omlat in Europe? This is also listed on [the website associated with the disputed domain name]. We would like to know if there is really an existing agreement between [the Respondent] and [the Complainant]? If so, for what kind of services is [the Respondent] authorized by you?”. Likewise, an email from a representative of a different German company to the Complainant dated March 11, 2020, states “FYI” followed by what appears to be a hyperlink to the website associated with the disputed domain name. There follows text which the Panel assumes was quoted from said site “1. Willkommen im offiziellen Omlat Reparaturzentrum in Europa – Ihrem zuverlässigen Partner für Ihre Omlat-Spindel. Wir versorgen Sie mit Original Spindelen und...”. The Panel translates this as “1. Welcome to the official Omlat repair center in Europe – your reliable partner for your Omlat spindle. We supply you with original spindles and [...]” 5. Parties’ Contentions A. Complainant The Complainant makes the following contentions: Identical or Confusingly Similar The disputed domain name contains the word “Omlat”, exactly corresponding to the OMLAT trademark and the Complainant’s company name, widely used by the Complainant to identify its products and activities. The website associated with the disputed domain name contains a clear reference to the Complainant’s history by reproducing content from the Complainant’s official website and by the Respondent identifying itself as an official partner of the Complainant, of which it claims to be the official repair center. The Respondent is not so authorized and the only official authorized repair centers are those listed on the Complainant’s website. The website associated with the disputed domain name leads the public to believe there is a partnership between the Parties when there is not, and the Complainant has received a lot of communications from its clients asking if there is such an agreement in place. Rights or Legitimate Interests The Respondent has no right to use the disputed domain name and is evidently counterfeiting the Complainant’s rights in the OMLAT trademark. The disputed domain name and website contents disseminate untruthful information inducing the Complainant’s clients to believe that there is a partnership between the Parties, which could lead to potential damage to the Complainant’s image on the web and in the marketplace as the Complainant has no control over the quality or professionalism of the Respondent’s repair services. Registered and used in bad faith The Complainant’s above contentions demonstrate that the Respondent registered and used the disputed domain name in bad faith. The website associated with the disputed domain name induces the public to believe that the Respondent is authorized to operate an official repairs center for the Complainant, leading the Complainant’s customers to trust the Respondent on the basis that they will receive the quality they would expect from the Complainant. The Respondent refers to itself on its “About us” page as “your first point of contact when it comes to your OMLAT spindle”. The Respondent refers to being “a specialist for OMLAT spindles” and notes that “One call is enough”. The Respondent is using the disputed domain name to exploit the Complainant’s name and reputation for its own benefit and to win the Complainant’s clients. The Respondent solicits Internet users and the Complainant’s clients to go to the website associated with the disputed domain name by maliciously exploiting the likelihood of confusion with the OMLAT mark and official website. Response to Procedural Order no. 1 Mr. Aimo is the son of the Chairman and Legal Representative of the Complainant and works in its Accounting Department. The OMLAT mark has always been exclusively used by the Complainant. It was registered in the interests of the Complainant and there is an implicit license to use such mark in the Complainant’s favor. A statement is provided from Mr. Aimo confirming these matters. The Complainant was entitled to initiate the administrative proceeding regarding the disputed domain name. B. Respondent The Respondent makes the following contentions: Identical or Confusingly Similar No response. Rights or Legitimate Interests The Respondent is selling original products from the Complainant, namely “Omlat” machine spindles bought from the Complainant (invoices produced). The Respondent uses the disputed domain name to sell such original products and it is immediately pointed out on the associated website that the offer is manufacturer-independent by way of the literal statement “Independent repair and service center for OMLAT spindles”. A European Union trademark does not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the European Economic Area under that trademark by the proprietor or with his consent [citing European Union legislation and case law]. Registered and used in bad faith The Respondent has not acted in bad faith. The website does not induce the public to believe that the Respondent is authorized to operate an official repairs center of the Complainant. The disputed domain name is not identical to the Complainant’s mark. The presence of such mark in the disputed domain name does not violate the Complainant’s trademark rights. The website points out that the offer is manufacturer-independent and the following note appears: “Independent repair + service centre for OMLAT spindles”. Original spindles of the Complainant are available for purchase. Response to Procedural Order no. 1 The multiple logos on the Respondent’s website are trademarks of third-party manufacturers. These trademarks specify the machine manufacturers for which the Respondent is offering spindle repairs. However, no products from third-party manufacturers are offered at the disputed domain name, only spindles of the Complainant’s manufacture. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a 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 name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar This element of the Policy combines two tests: first, whether the Complainant has rights in a trademark, and secondly, whether the disputed domain name is identical or confusingly similar to such mark. In the present case, the Complainant is not the owner of the relied-upon trademark described in the factual background section above. However, in response to Procedural Order no. 1, the Complainant has explained that it is the exclusive licensee thereof and the owner has confirmed this in a statement dated January 13, 2021. Section 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides that an exclusive trademark licensee is considered to have rights in a trademark under the UDRP for purposes of standing to file a complaint. The section goes on to note that panels may expect parties to provide relevant evidence of authorization to file a UDRP complaint. In the present case, given the Complainant’s reply to Procedural Order no. 1, the Panel is satisfied that the Complainant is an exclusive licensee of the OMLAT mark described in the factual background section above and that it is authorized to file the present Complaint. For convenience, said mark will be described as “the Complainant’s mark” in the remainder of this Decision. Comparing the disputed domain name to the Complainant’s mark, the Panel notes that the mark is reproduced in its entirety at the beginning of the Second-Level of the disputed domain name followed by a dash or hypen and the word “service”. The addition of this descriptive word to the distinctive mark in the disputed domain name, with a dash or hyphen acting as a separator between the two elements, does not prevent a finding of confusing similarity under the first element assessment. The Complainant’s mark remains entirely recognizable in the disputed domain name. The Top-Level suffix in a domain name, being “.com” in the disputed domain name, is typically disregarded in the exercise of the comparison for the purposes of this element of the Policy. The Respondent did not oppose the Complainant’s contentions regarding this element of the Policy. In all of these circumstances, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied. B. Rights or Legitimate Interests The issue between the Parties on this topic is relatively narrow. The Parties agree that the Respondent is not an official or authorized dealer in the Complainant’s products and that it is using the disputed domain name to promote its business which provides sales and service of spindles, including the Complainant’s products. The Complainant’s position is that not only is the Respondent an unauthorized dealer and provider of servicing in respect of the Complainant’s products but it is also using the Complainant’s mark in a way which misleads the Complainant’s customers into believing that there is a partnership between the Parties and/or that the Complainant might be able to exercise some element of quality control over the Respondent’s activities when it does not. For its part, the Respondent states that it is entitled to use the Complainant’s mark in the disputed domain name and associated website because it is a reseller and provider of servicing for the Complainant’s products. In other words, the Respondent argues that it is making nominative fair use of the Complainant’s mark in the disputed domain name. Section 2.8.1 of the WIPO Overview 3.0 describes the manner in which panels under the Policy typically assess claims of this nature, bearing in mind that a reseller or service provider who uses a domain name containing a trademark to undertake sales or repairs related to the trademarked goods may be making a bona fide offering of goods and services, and thus may have a legitimate interest in such domain name. Panels usually review respondent conduct on the basis of the “Oki Data” test, arising from the case of Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. This case considered the inclusion of the OKIDATA trademark together with the word “parts” in the domain name The first requirement of the “Oki Data” test is that the Respondent must actually be offering the goods or services at issue. The Respondent asserts that it is doing so, for example producing invoices to show the spindles which it has purchased from the Complainant, and the Complainant does not appear to dispute this. There is no suggestion before the Panel that the spindles offered for sale are not the genuine product of the Complainant. Accordingly, the Panel is satisfied that the Respondent meets this part of the test. The second requirement is that the Respondent must use the site to sell only the trademarked goods or services. The reason for this is that the Respondent could otherwise be using the trademark to bait Internet users and then switch them to other goods, “bait and switch” neither being a legitimate practice nor constituting a bona fide offering of goods or services within the meaning of the Policy. In the present case, the practice in which the Respondent has engaged is not entirely clear-cut. The website associated with the disputed domain name offers only OMLAT spindles and relative servicing. The Respondent asserts, in response to Procedural Order no. 1, that no products from third party manufacturers are offered on said site. In light of the fact that the Parties’ screenshots of the website associated with the disputed domain name did not appear to disclose the full content of said site, the Panel determined that it would visit said website itself in order to conduct limited factual research into matters of readily accessible public record (see section 4.8 of the WIPO Overview 3.0”). The Panel notes that it has relied upon the English language version of said site for the purposes of the present Decision as it does not understand either of the Parties to have any dispute over the Respondent’s translation, as published by it on its own website. The first item to which the eye is drawn on entering the website, below the Respondent’s “DERSPINDELDOCTOR” logo at the top left, is the line of logos which the Respondent has admitted are “trademarks of third party manufacturers”. Each of these logos seems to function as a hyperlink (i.e. it changes the mouse pointer when hovered over, and it also provides the name of the company concerned in “tooltip” text). However, there are no active hyperlinks which take the Internet user elsewhere if a logo is clicked. Procedural Order no. 1 requested the Respondent to specify whether these logos related to competitors of the Complainant. The Panel notes that it has not answered that question directly. Given that the Respondent’s reply described the logos as those of “third party manufacturers”, and in the absence of a more direct answer to its question, the Panel assumes this to mean that such manufacturers are indeed in competition with the Complainant. Although the website associated with the disputed domain name is focused upon OMLAT spindles, the presence of an array of logos for third party competitive manufacturers as a prominent element is somewhat suggestive of “bait and switch”, even if no obvious or direct route is being provided to purchase an alternative brand from the site itself. In the Panel’s view, three factors are needed for “bait and switch” to be a live possibility: first, there must be use of the complainant’s trademark to “bait” the Internet user into visiting the website; secondly, there must be some form of advertising, promotion or other presence of the third party items offered on said website; and thirdly, there must be some available route by which the Internet user may be “switched” into purchasing the alterative goods or services. At least the first two factors are present here. There is however no way for visitors to purchase the product of the promoted third party manufacturers directly from the Respondent’s website and the Respondent states that it merely repairs such items. While the Respondent’s website may not necessarily be in classic “bait and switch” territory, it does use the Complainant’s trademark to promote alternative manufacturers and it is not obvious from the site that the Respondent’s reason for so doing is to demonstrate that it can repair other models of spindle. In the Panel’s opinion, there remains some ambiguity as to the status of the alternative brands vis-à-vis the Complainant’s products, particularly due to their prominent display on the website associated with the disputed domain name. Finally, on this topic, it should also be noted that the Complainant itself provides repair services for its own products and, to that extent, the Respondent is in competition with it. In correspondence with one of its customers who appears to have been confused as to the Respondent’s status, the Complainant acknowledges that there are likely to be third parties in Germany who would provide repair services for its products but indicates that “the best is to send the spindle in Omlat where [the Complainant] can guarantee a perfect repair”. The Complaint asserts that, by contrast, the Complainant can exercise no quality control over any work done by the Respondent. It is arguable therefore that there would be an element of “bait and switch” if the Respondent is attempting to secure for itself part of the Complainant’s “official” repairs business by misleading Internet users as to the extent of its status within the Complainant’s network or the extent to which its repair is officially sanctioned by the manufacturer. This question of the adequacy of disclosure of the relationship between the Parties is the subject of the next part of the “Oki Data” test, to which the Panel now turns. The third aspect to the test is that the site must accurately and prominently disclose the registrant’s relationship with the trademark holder. In the present case, the Parties are fundamentally at odds on that issue. The Complainant asserts that the Respondent’s website is wrongly suggesting that it is in partnership with the Complainant, in particular, by the unauthorized use of the Complainant’s company profile and history derived from its own website. The Respondent effectively asserts that its lack of a relationship with the Complainant is clearly spelled out. However, the Respondent’s sole basis for this assertion is that the word “independent” is used to describe its offering in two places within the site text. The first time the word occurs is in the prominent heading “Independent repair + service center for OMLAT spindles”. It occurs again the paragraph immediately following, which states “Welcome to the Independent Repair+Service Center for OMLAT spindels [sic] in Europe”. The Panel must therefore ask itself whether the word “independent” amounts to the Respondent making clear in its use of the disputed domain name that it is not affiliated in any way with the trademark owner, even if it offers the trademark owner’s genuine goods and ancillary services. Although prominent, this single word is not wholly unambiguous in the context in which it appears. For example, the Respondent could be an “independent” provider of sales and service but could still be economically linked with the Complainant, in that its activities might be sponsored or endorsed by the Complainant. The suggestion that there may be such an economic link or a special relationship between the Parties is enhanced by the presence of comprehensive details of the Complainant’s company on the website associated with the disputed domain name, as described in the factual background section above. The implication of the text under the “SERVICE” heading is that the Complainant carries out processing or refurbishment of spindles but this is directly placed above the Respondent’s contact details. As far as the Panel is concerned, this material is of the sort which would be expected on the Complainant’s site alone, or possibly on the site of an authorized representative. The main text does contain the statement “The Spindeldoctor sees himself as an expert in the spindles of OMLAT. We have been repairing the products of this manufacturer for more than ten years and are therefore familiar with all special features” and while the fact that the Respondent “sees himself” as such expert might indicate that there is no special endorsement from the Complainant, the rest of the text in this section suggests otherwise. While the Panel may itself find the Respondent’s website to be ambiguous, it is of particular significance that several of the Complainant’s customers or partners have evidently been confused by the Respondent’s activities. Some of this confusion may have arisen from the flyer which is described in the factual background section above. The content of this flyer is not reproduced on the website associated with the disputed domain name, although it does suggest that the Respondent is making, or has made, claims that it is an “official” provider of repairs. This places into context the apparent ambiguities found in the website content. More importantly for present purposes, the Complainant has produced email correspondence with two other companies which suggests that the wording of the website associated with the disputed domain name at one time may itself have stated that the Respondent provided an “official” Omlat repair center. This at least is what the customers believed, based upon their inquiries with the Complainant which reference the website at the disputed domain name. The Panel finds this, and the Respondent’s failure to comment upon it, to be of considerable significance. In all of these circumstances, the Panel has reached the conclusion that the Respondent has not met the third part of the “Oki Data” test. The present wording on the website is ambiguous and the sole word “independent” does not accurately represent the Respondent’s lack of any relationship with the Complainant. It is not in the nature of a prominent disclaimer and is open to misinterpretation by visitors to the site, not least in light of the full history of the Complainant’s company which is also listed. Furthermore, the record shows that the Respondent has been taking steps by way of the flyer and potentially by way of previous wording on its website, which is no longer available, to enhance this confusion by referring to itself as “official”. The final element of the “Oki Data” test is that the Respondent must not be “cornering the market” in domain names that reflect the trademark. There is no evidence before the Panel suggesting that the Respondent has done this in the present case. However, when all of the “Oki Data” criteria are reviewed together, it may be seen that the Respondent is in some difficulties establishing the second element and has failed to establish the third. In addition to considering the matter via the “Oki Data” test, it is also instructive to examine the composition of the disputed domain name itself in a case such as this, where fair use has been asserted by the Respondent. The disputed domain name consists exclusively of the Complainant’s trademark, together with the word “service”. As section 2.5.1 of the WIPO Overview 3.0 notes. even where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. The Panel considers that in the circumstances of this particular case, the use of the Complainant’s trademark with the word “service” in the disputed domain name, without the addition of any qualifying terms which might indicate non-affiliation, effectively impersonates or suggests endorsement by the Complainant in and of itself. In other words, the composition of the disputed domain name is such that Internet users would expect the Complainant to be found at the associated website rather than an unaffiliated third party. This conclusion provides further support for the Panel’s analysis in terms of the “Oki Data” test. In all of the above circumstances, the Panel concludes that the Respondent has not demonstrated that its use of the disputed domain name confers rights and legitimate interests upon it in connection with nominative fair use, as the topic is typically considered in cases under the Policy. The requirements of paragraph 4(a)(ii) of the Policy have been satisfied. C. Registered and Used in Bad Faith In the present case, the question of registration and use in bad faith is closely connected to the assessment of rights and legitimate interests. It is clear that as a reseller of the Complainant’s products, the Respondent had prior knowledge of the Complainant’s rights in the OMLAT mark before it registered the disputed domain name. In essence, however, if the Respondent can show that it has registered and used the disputed domain name in connection with honest commercial practices relating to nominative fair use of the Complainant’s trademark, such registration and use could not be considered to be in bad faith. As noted above, the Respondent has failed to do so in the opinion of the Panel. Weighing all of the evidence in the balance, the Panel finds that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of such website and of a service on such website, conform to paragraph 4(b)(iv) of the Policy. Said website is, at best, ambiguous as to the extent of such sponsorship, affiliation or endorsement. Furthermore, there is evidence that the website may previously have presented itself as “official” which would strengthen the impression of an endorsement by or an affiliation with the Complainant. There is also evidence, in the form of the flyer, that far from seeking to avoid confusion, the Respondent appears to have been working behind the scenes in a manner which has exacerbated this, again by using the word “official” in relation to its services and then pointing interested parties in the direction of the disputed domain name. The Complainant’s email correspondence with its customers or partners, and the flyer itself, have been put to the Respondent in the administrative proceeding. It has chosen not to address these and has merely insisted that it is entitled to describe itself as “manufacturer-independent”. In these circumstances, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The requirements of paragraph 4(a)(iii) of the Policy have been satisfied. 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 name Andrew D. S. Lothian
Sole Panelist
Date: January 25, 2021
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