The Complainant is Straight Arrow Products, Inc. of Bethlehem, Pennsylvania, United States of America, represented by Forresters, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Aiden Devine, Orchard Equestrian Limited of Limerick, Ireland, represented by Patrick G. McMahon Solicitors, Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with IE Domain Registry Limited (“IEDR”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2014 via email and on January 5, 2015 by hardcopy. On December 24, 2014, the Center transmitted by email to IEDR a request for registrar verification in connection with the disputed domain name. On January 2, 2015, IEDR transmitted by email to the Center its verification response confirming the Respondent as the registrant and providing the contact details.
The Center verified that the Complaint and the amended Complaint satisfied the formal requirements of the .IE Dispute Resolution Policy (the “Policy”), the WIPO Dispute Resolution Rules of Procedure for .IE Domain Name Registrations (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 Respondent of the Complaint, and the proceeding commenced on January 5, 2015. In accordance with the Rules, paragraph 5.1, the due date for Response was February 2, 2015. The Response was filed on February 2, 2015.
The Center appointed Alistair Payne as the sole panelist in this matter on February 13, 2015. 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 has been in business since 1970 and is a leading manufacturer of human and equestrian hair shampoo and a range of related products. It sells these products all over the world in 29 countries under its MANE ‘N TAIL trade mark through its website at , , and through a network of around 150,000 retailers. The Complainant owns various trade mark registrations for its MANE ‘N TAIL word mark, including Community Trade Mark (“CTM”) registration number 198192 from 1996. The Complainant also owns a variety of second level domain name registrations incorporating “manentail”.
The Respondent registered the disputed domain name on May 26, 2010. 5. Parties’ Contentions A. Complainant
The Complainant submits that it’s MANE ‘NTAIL mark has through extensive use and advertising over 40 years built up a very substantial goodwill and reputation. It says that it owns trade mark rights as set out above and that this CTM qualifies as a protected identifier for the purposes of the Policy. It considers that the substantive element of the disputed domain name is identical to its MANE ‘N TAIL mark.
The Complainant says that as far as it is aware the Respondent does not trade under and is not known by the disputed domain name. The Complainant says that it had rights in the MANE ‘N TAIL mark since the 1970’s and has trade mark rights that are effective in Ireland dating back to 1996. The Complainant notes that the Respondent by its own admission says that it introduced the Complainant’s MANE ‘N TAIL products into Ireland in 2009 as a reseller, approximately one year before it registered the disputed domain name and therefore the Respondent must have been aware of the Complainant’s rights and use of the mark at the date of registration of the disputed domain name.
The Respondent, according to the Complainant, was never an authorised distributor of the Complainant’s products but was a wholesale customer of its official distributors and sold into the market at a lower value than those distributors. The Complainant says that it was made clear to the Respondent that it was not an authorised distributor and that it did not grant permission to the Respondent to register the disputed domain name or to use the images on its website at the disputed domain name.
In August 2013 the Complainant wrote to the Respondent to revoke any false impression that the Respondent may have had in this regard and to demand that the website be shut down. This letter elicited no response and so a further letter was sent by the Complainant’s legal agents in June 2014 noting that the website at the disputed domain name falsely represented that the Respondent was an authorised distributor of the Complainant, that the website misleadingly evoked the Complainant’s website and included the Complainant’s images without authority and that the Complainant had never given the Respondent authority to register the disputed domain name or , , , or all which resolved to the website at the disputed domain name. This letter resulted in the Respondent making some changes to its website and elicited a response to which the Complainant’s agent replied confirming that the Respondent was neither an authorised distributor nor was it authorised to register or to use the disputed domain name or to replicate images or text from the Complainant’s website and noting that negotiations for it to become an exclusive distributor in Ireland had never been concluded. Following this letter the Complainant notes that the Respondent made further changes to its website but continued to use the disputed domain name and to imply on its website that it is the Complainant’s authorised distributor.
The Complainant submits that the Respondent is not a distributor or reseller making a bona fide offering of goods or services and that this case does not comply with the factors outlined in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 and as a consequence the Respondent has no rights or legitimate interests in the disputed domain name. In summary in this regard the Complainant says that the Respondent has not restricted its website to the sole promotion of the Complainant’s products, the Respondent’s website does not accurately disclose its relationship with the Complainant and the Respondent is trying to corner the market in equivalent domain names and to deprive the Complainant of reflecting its own mark in a domain name.
The Complainant submits that the Respondent is using the disputed domain name and its other domain name registrations incorporating the Complainant’s mark in order to capitalize on the reputation of the Complainant’s mark so as to attract Internet users to its website. It says that the similarity of get up of the Respondent’s website, the lack of disclaimer on it and the fact that the Respondent has approached customers of other authorised distributors to offer products at a lower price all points to the Respondent’s bad faith intent in attempting to divert and confuse customers in order to sell products (whether the Complainant’s or other products) to them. The Complainant also notes that the Respondent must have made a false statement to the domain name authority upon registering the disputed domain name as written proof would have been required of the Respondent’s right to use the disputed domain name in circumstances that it did not own the Complainant’s mark or name. As a result the Complainant says that the Respondent registered and used the disputed domain name in bad faith. B. Respondent
The Respondent accepts that the disputed domain name is identical to the Complainant’s trade mark.
The Respondent submits that its business in reselling the Complainant’s products began in 2009 through Transcon Trading, Inc. the European master distributor of the Complainant’s products. It says that although it requested a formal distribution agreement no such agreement was ever signed but it considered itself to be the Irish distributor for the Complainant’s products. It notes that in 2010 Transcon requested details on behalf of the Complainant of various information including details of websites used in the sale of the Complainant’s products. The Respondent says that following the supply of such information the Complainant must have been aware of its ownership and use of the disputed domain name. The Respondent also says that it was supplied by Transcon with the Complainant’s high resolution images in 2009 for the purposes of print media and websites and that these materials were obviously provided on the basis of an implied licence for selling the Complainant’s products. The Respondent maintains that it had been informed that all of its dealings were to be with Transcon and therefore it was not to know whether Transcon had actual authority to provide such materials or not.
In 2010 the Respondent became aware that another Irish entity, McCormack’s Chemists was selling the Complainant’s human product range. It says that supply problems developed and product prices increased in a manner that made it think that its business was being frustrated by Transcon and the Complainant. The Respondent had attempted to negotiate a formal distributorship agreement in 2011 but this was proposed on the basis that it would be limited to equine products. The Respondent was not prepared to limit its current re-selling arrangements in this way and therefore refused to agree to the terms proposed. It became apparent that McCormack’s Chemists had been appointed as the exclusive distributor in Ireland of the Complainant’s human range of products and the Respondent was requested to desist from sales of the Complainant’s human products to pharmacies in Ireland. In August 2013 Transcon requested that the Respondent take down its website and the Complainant wrote to the Respondent requiring it to take down the Respondent’s materials from its website while also alleging that use of the domain name was misleading.
The Respondent submits that its interests are legitimate in that it registered the disputed domain name and used it to further the Complainant’s business. It says that the Complainant knew of its registration and use and that its master distributor provided it with promotional materials for its website. It submits that there was no objection from the Complainant until it came to appoint an exclusive distributor in Ireland after which time it engaged in a concerted effort to prevent the Respondent from selling the Complainant’s products.
The Respondent says that based on the Oki Data principles, it has offered and promoted the Complainant’s goods from its website at the disputed domain name. It says further that it only sells the Complainant’s goods from its website and that it operates a separate site for its other products. The Respondent submits that its site accurately discloses its relationship with the Complainant and although it has subsequently made changes to the site that it always considered that it was the Complainant’s authorised distributor. It also says that the various statements on its site and the use of its own logo before that of the Complainant’s products indicate its bona fides. Although it admits to having registered some other domain names it says that it did so for bona fide purposes of selling into those markets, notes that it does not own the domain name as suggested by the Complainant and has no relationship with the owner. It says that it did not register any of these domain names in order to corner the market in domain names based on the Complainant’s mark.
The Respondent says that it is incorrect of the Complainant to say that there is no evidence of the Respondent’s bona fide use of the disputed domain name in connection with an offering of goods or services. It says that it has generated considerable goodwill by selling the Complainant’s products. It says that its website at the disputed domain name does not include a direct hyperlink to its main website although it does include its email address and one incidental textual reference.
The Respondent submits therefore that its registration and subsequent use of the disputed domain name have been in good faith and for the purpose of selling the Complainant’s products and on the basis that it thought that it was an authorised distributor or reseller of the Complainant’s products. It notes that the Complainant’s allegation that it must have supplied misleading information in order to register the disputed domain name is without foundation and that to the best of its recollection it told the registration authority when queried on the basis that it was a distributor in Ireland. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns various trade mark registrations for its MANE ‘N TAIL word mark, including CTM registration 198192 from 1996. The disputed domain name, although not including spacing or an apostrophe, is otherwise the same as this mark with no additions. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s word mark registration and that the Complaint succeeds under the first element of the Policy. B. Rights in Law or Legitimate Interests
Although never a formally authorised distributor of the Complainant’s products, it is apparent from the evidence in the record that the Respondent was since 2009 a reseller of the Complainant’s products in Ireland through the Complainant’s American based master distributor for Europe.
Numerous Uniform Domain Name Dispute Resolution Policy (“UDRP”)1 panels have considered similar cases in the context of both authorised and unauthorised distributorships and many of these cases have been decided by reference to a set of principles that were developed very soon after the development of the UDRP. In Oki Data Americas, Inc. v. ASD, Inc., supra, the panel set out four minimum factor requirements in deciding whether the respondent in that case was making a bona fide use of the disputed domain name:
“- Respondent must actually be offering the goods or services at issue. E.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306 (January 24, 2001) (respondent failed to show demonstrable preparations to use the domain name in connection with a bona fide offering);
- Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods. Nikon, Inc. v. Technilab,WIPO Case No. D2000-1774 (February 26, 2001) (use of Nikon-related domain names to sell Nikon and competitive cameras not a legitimate use); Kanao v. J.W. Roberts Co., Case No. 0109 (CPR July 25, 2001) (bait and switch is not legitimate);
- The site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents. E.g., Houghton Mifflin Co. v. Weatherman, Inc.,WIPO Case No. D2001-0211 (April 25, 2001) (no bona fide offering where website’s use of Complainant’s logo, and lack of any disclaimer, suggested that website was the official Curious George website); R.T. Quaife Engineering v. Luton,WIPO Case No. D2000-1201 (November 14, 2000) (no bona fide offering because domain name improperly suggested that the reflected site was the official U.S. website for Quaife, an English company; moreover, respondent’s deceptive communications with inquiring consumers supported a finding of no legitimate interest); Easy Heat, Inc. v. Shelter Prods.,WIPO Case No. D2001-0344 (June 14, 2001) (no bona fide use when respondent suggested that it was the manufacturer of complainant’s products);
- The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name. Magnum Piering, Inc. v. Mudjackers,WIPO Case No. D2000-1525 (January 29, 2001) (‘a single distributor is extremely unlikely to have a legitimate interest in precluding others from using numerous variants on a mark’).”
In this case the Respondent has been reselling the Complainant’s goods in Ireland and has genuinely used its website at the disputed domain name to assist it in making those sales. It appears that the Respondent has only advertised the Complainant’s products at its website at the disputed domain name and has maintained a separate site for the sale of other goods. There is no evidence of it having engaged in “bait and switch” activities.
It appears that in 2010 the master distributor requested details on behalf of the Complainant of various information including details of websites used in the sale of the Complainant’s products. Following the supply of such information the Complainant must have been aware of the Respondent’s resale of its products and of its website at the disputed domain name. It did not however object to statements made on the website or to the Respondent’s use of the disputed domain name until 2013. This letter noted that the Respondent’s website at the disputed domain name incorrectly represented that the Respondent was an authorised distributor of the Complainant and also misleadingly evoked the Complainant’s imagery and get-up without authority.
The website contained at this time various statements including the opening statement “Welcome to Mane ‘N Tail Ireland”, a confirmation that “We at Orchard Equestrian Limited are distributors for Mane ‘N Tail Ireland” and “We supply the Mane ‘N Tail range of products to Pharmacies and Saddlery shops – if you want to become a stockist, please contact us” and then a copyright notice at the foot of each page “Copyright Mane ‘NTail in Ireland”. It was not until after receipt of the Complainant’s cease and desist letter and in response to this dispute that the Respondent altered these statements on its website to make it clear that it is a reseller, an independent supplier and that the MANE ‘N TAIL marks are the property of the Complainant. Even as at November 11, 2014 the Complainant notes that its Google search returned a result listing the Respondent’s website as the “Mane ‘N Tail in Ireland official site” which notation also appeared in the top left hand corner of the Respondent’s website.
The Panel finds on the balance of probabilities that retail outlets or people seeing the original statements on the Respondent’s website would have reasonably assumed that the Respondent was the official distributor in Ireland of Mane ‘N Tail products when this was never in fact the case. It is clear from both the Complainant’s and the Respondent’s evidence that the Respondent had not to this point and was never subsequently appointed as an official distributor. In fact it was a reseller that was up until this point supplied with products for resale by the Complainant’s master distributor, but based on the evidence provided by both parties had no more rights than that. The fact that the Respondent more recently (prior to the Complaint filing) changed the wording on the site does not alter the overall impression made upon the public that the Respondent was the official distributor of the Complainant. As a result the Panel finds that the Respondent does not meet the requirements of the third Oki Data factor.
In choosing the disputed domain name the Panel notes that the Respondent chose to incorporate the Complainant’s mark as a whole without any modifier that might have differentiated its disputed domain name from the Complainant’s domain names or which might have detracted from giving the impression that the disputed domain name was owned or authorised by the Complainant. As noted by this Panel recently in FJ Westcott Company v. Samuel Leo Klein / Image Melbourne Pty Ltd,WIPO Case No. DAU2014-0037:
“this Panel believes that in a case where the domain name used by a distributor is essentially identical to a complainant’s trade mark or trading name and includes no distinguishing feature, then it is strongly arguable that there are no rights or legitimate interests (and that there is also bad faith) even in circumstances that the Oki Data requirements might otherwise be satisfied (which they are not in this case)”.
As far as the final Oki Data factor is concerned the Panel notes that the Respondent registered several other second level domain names which also incorporated the Complainant’s mark as a whole and without any modifier. These include, in particular, , , and . Although the Panel accepts the Respondent’s confirmation that it did not register and is not the owner of it does not accept that the Respondent had the right to register these domain names without the Complainant’s express authority. Had the Respondent been appointed as the Complainant’s official Irish distributor it is extremely unlikely that the Complainant would have wished to be precluded from registering, or enabling its local distributors to register, these domain names in Germany, Spain or Italy and would have contractually prevented the Respondent from registering other domain names in this way. In the Panel’s view this amounts to the Respondent seeking to preclude the Complainant, or its relevant authorised distributors, from registering these domain names. The Panel therefore finds that the circumstances of this case also do not meet the requirements of the final Oki Data factor.
For these reasons the Panel finds that the Respondent has not rebutted the Complainant’s case that the Respondent has no rights or legitimate interests in the disputed domain name and the Complaint accordingly succeeds under this element of the Policy. C. Registered or Used in Bad Faith
The Complainant is required to demonstrate under the third element of the Policy that the Respondent has either registered or used the disputed domain name in bad faith.
It follows from the Panel’s findings above that even if the Respondent was tacitly authorised to resell the Complainant’s products, there is no evidence to suggest that, the Respondent was either authorised or entitled to register the disputed domain name wholly containing as it does the Complainant’s trade mark without any distinguishing modifier. In addition the Panel’s findings in this case based on its application of the Oki Data factors point to registration in bad faith. Even if the Panel was to give the Respondent the benefit of the doubt and to find that it made the original registration of the disputed domain name in good faith (which it is not minded to do for the reasons outlined above), the Panel would find that the Respondent’s conduct and subsequent use has been in bad faith in any event.
The Panel notes that the Respondent incorrectly represented itself as the official Irish distributor of the Complainant’s products on its website and procured that Google search results would present it in a similar manner. The Respondent also registered four other domain names that wholly contain the Complainant’s mark without any modifier and admits that this was in order to sell the Complainant’s products into these markets presumably by driving traffic to the Respondent’s website at the disputed domain name. However the effect of these registrations is in fact to preclude the Complainant, or its authorised local distributor, from registering its mark as a domain name in each of the relevant jurisdictions and this amounts in the Panel’s view to bad faith.
Even if the Respondent is correct in its allegation that the Complainant is late in asserting its rights and is fighting something of a rear-guard action to retrieve the disputed domain name, the Respondent’s conduct amounts to bad faith under the Policy. As a result the Panel finds that the Complaint succeeds under the third element of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 5 of the IEDR Policy and 14 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant provided the IEDR is satisfied that the Complainant fulfils the eligibility criteria set out in IEDR Registrations Policy for ownership of the disputed domain names. Alternatively, the Panel orders that the disputed domain name should be cancelled.
Alistair Payne
Sole Panelist
Dated: March 4, 2015
1 As the Policy is similar to the UDRP, the Panel refers to prior UDRP and other similar domain name dispute resolution policy decisions where instructive.
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