The Complainant is Blaabjerg Leg ApS of Glejbjerg, Denmark, represented by Andersen Partners Law Firm, Ireland.
The Registrant is Austin Gohery, Ausmar Civil Limited of Galway, Ireland, internally-represented. 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 June 27, 2017 via email and in hardcopy on July 3, 2017. On June 28, 2017, the Center transmitted by email to IEDR a request for registrar verification in connection with the disputed domain name. On June 29, 2017, IEDR transmitted by email to the Center its verification response confirming the Registrant as the registrant and providing contact details.
The Center verified that the Complaint and the amended Complaint satisfied the formal requirements of the .IE Dispute Resolution Policy (the “IEDR 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 Registrant of the Complaint, and the proceeding commenced on July 5, 2017. In accordance with the Rules, paragraph 5.1, the due date for Response was August 2, 2017. The Response was filed on August 1, 2017. On August 2, 2017, the Center invited the Complainant to consider submitting a request for suspension of the proceedings to explore possible settlement between the Parties by August 7, 2017. The Center did not receive any such request from Complainant. Accordingly, the Center informed the Parties that it would commence the Panel appointment process on August 8, 2017.
The Center appointed Adam Taylor as the sole panelist in this matter on August 11, 2017. 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 distributes inflatable outdoor play and fitness products. It owns European Union (“EU”) Trade Mark no. 008806275 for JUMPING PILLOWS, filed January 13, 2010, and registered June 22, 2010, in class 28.
The Registrant is a manufacturer of air bouncer inflatable play and fitness jumping systems. It claims to be the authorised distributor of such a product marketed as “Kangaroo Jumper” in the United States of America (“US”) and in the United Kingdom of Great Britain and Northern Ireland (“UK”).
The disputed domain name was registered on November 25, 2015. As of June 27, 2017, the Registrant was using the disputed domain name for a website selling inflatable outdoor play and fitness products, branded “Air Bouncers”. 5. Parties’ Contentions A. Complainant
The following is a summary of the Complainant’s contentions:
The Complainant’s trade mark has been used in a number of EU member states including by the Complainant’s “contractual partner” for a website at “”.
The Complainant has established proprietary and exclusive trade mark rights in Ireland in the mark JUMPING PILLOWS since before the disputed domain name was registered.
The disputed domain name is identical to the Complainant’s registered trade mark.
The Registrant has no right to register or use the disputed domain name in the manner it has done because this infringes the Complainant’s EU trade mark. The Registrant therefore lacks rights in law or legitimate interests in respect of the disputed domain name.
Since the Complainant and the Registrant are competitors, the Registrant has registered and used the disputed domain name in bad faith.
The disputed domain name was registered to prevent the Complainant from reflecting its protected identifier in a domain name, to interfere with and disrupt the Complainant’s business as well as to intentionally attract Internet users to a website of the Registrant by creating confusion with Complainant’s trade mark.
The Registrant is continuing to use the disputed domain name in an infringing manner notwithstanding cease and desist letters sent by the Complainant to the Registrant on April 6, 2016, and December 14, 2016. B. Registrant
The following is a summary of the Registrant’s contentions:
The Registrant “vehemently” denies that it has registered and used the disputed domain name in bad faith.
As well as manufacturing air bouncer inflatable play and fitness jumping systems, the Registrant is the sole authorised distributor in Europe for a “similar” product marketed as “the Kangaroo Jumper”.
In 2015, the Registrant became aware that the Complainant’s distributor had registered the domain name , despite having no right to do so. The Registrant registered the disputed domain name as a “countermeasure”.
The Registrant accepts that it has no use for the disputed domain name as it does not market the “Jumping Pillow” and is prepared to cancel or transfer the disputed domain name. However, the Registrant does not consider it fair to so do whilst the Complainant’s distributor retains . 6. Discussion and Findings A. Identical or Misleadingly Similar
Under paragraph 1.3.1 of the IEDR Policy, “protected identifiers” include “trade and service marks protected in the island of Ireland”. The Complainant’s EU Trade Mark for JUMPING PILLOWS therefore constitutes a “protected identifier” for the purpose of the IEDR Policy.
Accordingly, the Panel concludes that, disregarding the country-code Top-Level Domain (“ccTLD”) “.ie”, the disputed domain name is identical to a protected identifier in which the Complainant has rights. B. Rights in Law or Legitimate Interests
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 in law 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.
Paragraph 3.1 of the IEDR Policy specifies three non-exhaustive factors which may be considered as evidence of rights to or legitimate interests in the domain name but none of these apply. Indeed, the Registrant admits that it has “no use” for the disputed domain name as it does not sell Jumping Pillow products.
Making no mention of the fact that it has in fact used the disputed domain name to sell “Air Bouncers” on the website, which compete with the Complainant’s products, the Registrant seeks to justify acquisition of the disputed domain name purely as a “countermeasure” against the registration by the Complainant’s distributor of the domain name , which is said to reflect the trade mark used on products which compete with those of the Complainant and for which the Registrant is the sole distributor. The Registrant says that it is prepared to cancel or transfer the disputed domain name but that it is unfair to expect it to do so while the Complainant’s distributor retains .
The rights and wrongs (if any) of the registration and/or use of are not part of this proceeding and the Panel is not in a position to make any assessment thereof. But in any case, even if it were appropriate to impute to the Complainant the activities of the Complainant’s distributor in relation to and even if those activities constituted bad faith under the IEDR Policy and/or infringed relevant trade mark rights, that would still not provide the Registrant with a legitimate interest in even holding the disputed domain name, let alone using it to compete with the Complainant’s own products.
In the Panel’s view, the appropriate response to such perceived infringement was not for the Registrant to acquire the disputed domain name as some sort of bargaining chip or retaliatory step but, instead, for the relevant aggrieved party to go to court or file a proceeding under the IEDR Policy (as the Complainant has done in relation to the disputed domain name), if that party considers that it has grounds to do so.
The Panel would add that, curiously, the letter produced by the Registrant to evidence the Registrant’s role in relation to “Kangaroo Jumpers” is signed by a person who is described as the (US-located) owner of various companies including “Jumping Pillows LLC” and who uses a email address. However, the Registrant does not mention this, let alone explain the connection, if any, with the Complainant or claim any legitimate interest derived from such entity. The Panel therefore disregards the “Jumping Pillows” references in the letter.
For the above reasons, the Panel concludes that the Registrant has no rights in law or legitimate interests in the disputed domain name and that the second condition in paragraph 1.1 of the IEDR Policy has therefore been satisfied. C. Registered or Used in Bad Faith
As mentioned above, the Panel rejects the Registrant’s sole justification for acquiring the disputed domain name, namely as a “counter-measure” against the registration by the Complainant’s distributor of the domain name .
In any case, as discussed above, the Registrant has done more than merely register and sit on the disputed domain name. Despite claiming that it has “no use” for the disputed domain name, the Registrant has in fact used the disputed domain name, which reflects its competitor’s unadorned trade mark, for a website selling the Registrant’s own competing goods.
The Panel has no difficulty in concluding that the above constitutes both registration and use of the disputed domain name in bad faith.
Based on the foregoing, the Panel concludes that the Complainant has established that the Registrant has registered and used the disputed domain name in bad faith and that the third condition in paragraph 1.1 of the IEDR Policy has therefore been satisfied. 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.
Adam Taylor
Sole Panelist
Dated: September 1, 2017
Full & Egal Universal Law Academy