WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Fatboy the original B.V. v. Padraig Beirne Case No. DIE2008-0003 1. The Parties
The Complainant is Fatboy the original B.V., of the Netherlands, represented internally.
The Registrant is Padraig Beirne, of Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with IE Domain Registry Limited. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 30, 2008. On October 31, 2008, the Center transmitted by email to IE Domain Registry Limited a request for registrar verification in connection with the disputed domain name. On November 6, 2008 (with further clarification on November 27, 2008), IE Domain Registry Limited transmitted by email to the Center its verification response confirming that the Registrant is listed as the registrant and providing the contact details. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the .IE Domain Name Dispute Resolution Policy (the “IEDR Policy”), the Rules for .IE Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .IE Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2.1 and 4.1, the Center formally notified the Registrant of the Complaint, and the proceedings commenced on November 28, 2008. In accordance with the Rules, paragraph 5.1, the due date for Response was December 31, 2008. The Registrant did not submit any response. Accordingly, the Center notified the Registrant's default on January 6, 2009.
The Center appointed Adam Taylor as the sole panelist in this matter on January 19, 2009. 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 a Dutch company trading in high class furniture, lifestyle products and beanbags. The Complainant acquired an exclusive license to produce and distribute the “FATBOY” beanbag in 2003. This is now the Complainant's main product.
The Complainant owns a Community Trade Mark number 3777836 dated May 3, 2004, for FATBOY in classes 20, 24 and 42.
The Complaint also owns a number of “fatboy” domain names including and .
The Registrant registered the disputed domain name on March 9, 2006.
As of July 17, 2008, there was a website at the disputed domain name titled “the original fatboy” offering the Complainant's products for sale in Ireland.
As of October 6, 2008, the homepage of the website consisted of the following statement: “Looking for gigantic, squashy comfort? Check out our new line of bean bag products at .” The statement included a link to that website. 5. Parties' Contentions A. Complainant Identical or Misleadingly Similar
The Complainant's FATBOY trademark is being used without the Complainant's permission. The Complainant made this clear to the Registrant by the contents of the distribution agreement and the letters sent to the Registrant.
The goods offered on the website at “www.”, which can be reached through the link provided on the website at the disputed domain name, are very similar to the design of the Complainant's products.
Using the trademark without the owner's permission to generate income for these similar goods can and will result in confusion to the public about the origin of this website, and the origin of the competing products. This includes the likelihood of confusion between the website at the disputed domain name and the official website of the Complainant.
The use of the term FATBOY in the domain name results in an infringement of the Complainant's trademark. Rights or Legitimate Interests
The Registrant registered the disputed domain name after becoming the exclusive distributor for the Complainant's products as from April 2006.
From October 3, 2006, the Complainant has been sending the Registrant a distribution agreement to be signed by the Registrant. This agreement granted the Registrant a non-exclusive license to use the Complainant's intellectual property (including the trademark FATBOY) under certain terms including a provision that the disputed domain name should be held in the name of the Complainant.
The Registrant refused to sign the distribution agreement due to its contents and refused to transfer the disputed domain name, whereupon the Complainant terminated the distribution agreement by written notification on September 29, 2008.
The Registrant changed the contents of the website so that it linked to a webshop offering products that are similar to or compete with the Complainant's FATBOY products.
The Complaint does not concern the conflict between parties concerning the question whether the distribution agreement does or does not apply. The action of the Registrant in publishing the link to the website with competing goods forms the basis of the Complaint.
The fact that the Registrant is a former distributor of Complainant does not justify the ongoing usage of the domain name per Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903.
The Parties do not agree on the question whether or not the usage of the disputed domain name during the distribution agreement was legitimate. This is a question of contract law and cannot be answered in this procedure. However, due to the current use of the disputed domain name for competing goods, the legitimacy of the usage of the disputed domain name during the distribution relationship is irrelevant.
The Registrant's conduct does not meet the factors which would justify the ongoing use of the disputed domain name by a former distributor.
The disputed domain name does not correspond to the personal name or pseudonym of the Registrant.
The disputed domain name is not identical or misleadingly similar to a geographical indication. Registered or Used in Bad Faith
The disputed domain name is being used primarily for the purpose of interfering with or disrupting the business or activities of the Complainant.
The Registrant is not willing to transfer the domain name despite numerous requests. The Registrant has said that it will transfer the domain name only for remuneration. It has been clear from the beginning that the Complainant did not approve of the registration by Registrant.
By using the disputed domain name, the Registrant intentionally attempted to attract Internet users to a web site by creating confusion with a Protected Identifier in which the Complainant has rights and the disputed domain name is used in a way that is likely to dilute the reputation of a trade or service mark in which the Complainant has rights.
The Registrant has intentionally created confusion between the Complainant's products previously sold on the website, and the competing Elephant products.
The Registrant benefits unjustifiably from the strong name recognition and reputation of the FATBOY products. With the continued use of the website and the disputed domain name, the Registrant is tarnishing the good reputation and name recognition of the Complainant and its products. The damage suffered by the Complainant is rising sharply as a result of the Registrant's actions. By offering competing infringing products, the reputation of the Complainant's trademark is being diluted. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 1.4 of the Policy states: “[t]he Complainant carries the burden of proving, prima facie, that the three conditions specified in paragraph 1.1 are met.” A. Identical or Misleadingly Similar
The first condition in paragraph 1.1 of the Policy is that the Domain Name is identical or misleadingly similar to a Protected Identifier in which the Complainant has rights.
Under paragraph 1.3.1 of the Policy, Protected Identifiers include “trade and service marks protected in the island of Ireland”.
Here, the Complainant owns a Community Trade Mark for the word FATBOY. The Community Trade Mark is protected in the island of Ireland and therefore constitutes a “Protected Identifier”.
Disregarding the domain suffix “.ie”, the Panel finds that the disputed domain name is identical to a Protected Identifier in which the Complainant has rights. B. Rights or Legitimate Interests
The second condition in paragraph 1.1 of the Policy is that the Registrant has no rights in law or legitimate interests in respect of the disputed domain name.
The Complainant must establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the Registrant to rebut the presumption of absence of rights or legitimate interests thereby created. See, e.g., Travel Counsellors plc and Travel Counsellors (Ireland) Ltd v. Portlaoise Travel Limited,WIPO Case No. DIE2006-0001.
The Complainant describes the Registrant as a “former distributor” and says that the parties disagree about whether or not the usage of the disputed domain name during the distribution agreement was legitimate. The Complainant says that the previous use was irrelevant, however, given the later diversion of the site to a competitor of the Complainant. The Complainant acknowledges that there are circumstances which would justify use of a domain name by a former distributor as set out in the Oki Data decision, supra, but asserts that the Registrant failed to comply with such criteria.
The Oki Data case has indeed been applied in the context of the Policy. See the helpful discussion in Comité Interprofessionel du Vin de Champagne (CIVC) v. Richard Doyle,WIPO Case No. DIE2007-0005.
The view of the majority of UDRP panels on this issue is set out in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.3, as follows:
“A reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements. These requirements 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 disclosing the Respondent's relationship with the trademark owner. The respondent must also not try to corner the market in domain names that reflect the trademark.”
Here, the precise relationship between the parties is unclear.
It appears that the Complainant wrote to a Mr. D. Mellett on nine occasions between October 3, 2006, and August 26, 2008, requesting that he sign a distribution agreement for the Complainant's products in Ireland while at the same time asserting that there was in any case a subsisting distribution relationship between the parties. The draft agreement provided, amongst other things, that the Complainant would “if possible” register or hold the disputed domain name, that the disputed domain name would have the same contents as the Complainant's principal website at and that, if the disputed domain name had already been registered by the Registrant, it would be transferred to the Complainant within 10 working days of signature of the agreement.
The Complainant has produced one letter in response dated September 4, 2008. That letter is in fact from Mr. M. Mellett in his capacity as director of Mardon Design Limited. It denies that there is any distribution agreement in existence and states: “You have no relationship with [D.] Mellett at present.” The letter makes detailed comments on the draft distribution agreement which it says must be addressed before there could be any negotiation about the draft agreement. The letter goes on to claim that “we do not have any distribution relationship with you and we have simply purchased quantities of your product for resale as Independent Contractors”. The letter also states that the disputed domain name would not be transferred to the Complainant without agreement on the issues and that “we will require consideration for any transfer of this domain”.
The Complainant then wrote to Mr. D. Mellett on September 29, 2008, terminating the distribution agreement “and/or any other agreement” and demanding transfer to it of the disputed domain name.
It has not been explained what are the connections between the various parties mentioned above, namely D. Mellett, M. Mellett (identified on the WhoIs as the administrative contact for the disputed domain name), Mardon Design Limited and Padraig Beirne, the Registrant.
Even if, as seems likely, all of those entities are connected and should be treated interchangeably with the Registrant, the Panel is not in a position to determine whether there was a distribution contract between the Complainant and Registrant or if the Registrant was acting as an unauthorized reseller of the Complainant's products or if indeed there was some other relationship between the parties. That would require, amongst other things, a consideration of the detailed interactions between the parties and the applicable law which is beyond the scope of this administrative proceeding.
The view of the Panel, however, is that, whatever the exact relationship between the parties, any rights and legitimate interests that may have flowed from it have been negated by the Registrant's subsequent conduct in completely ceasing use of the website for the Complainant's goods and instead using it solely to divert users to a competitor of the Complainant.
For that reason, and also taking into account the fact that the Registrant failed to file a response rebutting the Complainant's assertions, the Panel concludes that the Registrant has no rights in law or legitimate interests in the disputed domain name. C. Registered or Used in Bad Faith
The third condition in paragraph 1.1 of the Policy is that the disputed domain name has been registered or is being used in bad faith.
The Panel makes no finding as to the initial registration of the disputed domain name.
However, the Panel has little difficulty in concluding that the subsequent use of the disputed domain name to divert traffic to the Complainant's competitor constitutes use in bad faith.
Paragraph 2.1 of the Policy specifies six non-exhaustive factors which may be considered as evidence of registration or use in bad faith.
The Panel considers that the Registrant has used the domain name primarily for the purpose of interfering with or disrupting the business of the Complainant for the purposes of paragraph 2.1.3 of the Policy and/or that it has, through its use of the disputed domain name, intentionally attempted to attract Internet users to a web site or other on-line location by creating confusion with a Protected Identifier in which the Complainant has rights for the purposes of paragraph 2.1.4 of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 5.1 of the Policy and 14 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Adam Taylor
Sole Panelist
Dated: February 2, 2009
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