The Complainant is Pelikan Vertriebsgesellschaft mbH & Co. KG. of Hannover, Germany, represented internally.
The Respondent is Pelikan Iran of Tehran, Islamic Republic of Iran. 2. The Domain Name and Registrar
The disputed domain name is registered with IRNIC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 6, 2010. On October 7, 2010, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On October 9, 2010, IRNIC transmitted by email to the Center its verification response 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 .ir Domain Name Dispute Resolution Policy (the “Policy” or “irDRP”), the Rules for .ir Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .ir Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 28, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 17, 2010. On November 9, 2010, the Respondent requested an extension to file its Response until February 20, 2011. The Center did not extend the due date for Response. The Respondent submitted its Response on November 16, 2010.
The Center appointed Dennis A. Foster as the sole panelist in this matter on November 25, 2010. 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 manufactures and sells stationary products, including high quality writing instruments, paper and other office materials under its trademark, PELIKAN. The Complainant is based in Germany, but does business on a worldwide basis. The Complainant has registered its trademark internationally under the Madrid System (PELIKAN and design, Registration No. 831963; issued August 25, 2003) and with the Iranian trademark authorities (PELIKAN and design, Registration No. 61766; issued October 15, 1997).
The Respondent is the owner of the disputed domain name, . The Respondent has had an exclusive license from the Complainant to produce and sell in Iran certain stationary and office products under the Complainant’s trademark. The Respondent also owns the domain name, , which is not under dispute in these proceedings. 5. Parties’ Contentions A. Complainant
- The Complainant is a company based in Germany that does business on a worldwide basis. It manufactures and sells stationary products, including high quality writing instruments, paper and other office products. In 2009, the Complainant and its affiliated companies generated approximately USD 388,804,000 in revenues worldwide.
- The Complainant owns several valid trademark registrations for its mark, PELIKAN, including an international trademark registration under the Madrid System and a trademark registration with the Iranian authorities.
- The Complainant also conducts business online through its website found at .
- The disputed domain name, , is identical to the Complainant’s PELIKAN mark, because the additional ccTLD, “.ir”, is irrelevant when comparing domain names to trademarks.
- The Respondent has no rights or legitimate interest with respect to the disputed domain name. The Respondent was once a licensee of the Complainant, but that relationship was concluded as of December 31, 2005, per a letter sent by the Complainant to the Respondent. The Respondent contests receipt of that letter. The license between the parties never permitted the Respondent to file trademarks or domain names containing the Complainant’s PELIKAN trademark.
- The Respondent is using the disputed domain name to facilitate the production and sale of products under the Complainant’s trademark. Some of those products were never authorized for sale under the license agreement between the parties, and are thus “fake products” of the Complainant.
- The disputed domain name was registered and is being used in bad faith. The Respondent uses the name to redirect Internet users to the Respondent’s website, “www.”, which offers products bearing the Complainant’s trademark for sale. Thus the Respondent is seeking commercial gain based on user confusion as to the sponsorship of the disputed domain name and the products offered there.
- As a former licensee of the Complainant, the Respondent had actual knowledge of the Complainant’s rights in the trademark, PELIKAN, a further indication of the Respondent’s bad faith registration and use of the disputed domain name. B. Respondent
- The Respondent questions the authority of the Center to decide this case and believes the case should instead be subject to the proper Iranian judicial authorities.
- The Respondent has been operating for 45 years, has sales in the millions of USD and has been marketing products under the “Pelikan” brand name in Iran for years. The products so marketed can thus not be considered “fake”. Without legitimate products, the Respondent would not have become such a successful company. 6. Discussion and Findings
Pursuant to paragraphs 4(a)(i) – (iii) of the Policy, the Complainant shall prevail under these proceedings and secure a transfer of the disputed domain name, , provided that the Complainant can prove that:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name has been registered or is being used in bad faith.
In analyzing this case, the Panel notes that the Complainant and the Respondent had a contractual relationship whereby the Complainant permitted the Respondent to produce and sell products under the Complainant’s trademark, PELIKAN, throughout Iran. Were this a relatively simple contractual relationship based on a single document that was before the Panel, with both parties in agreement as to its validity, the Panel might be inclined to interpret that document in the context of a routine analysis pursuant to the Policy.
However, in this case, the Complainant has presented the Panel with three agreements between the parties (Annex E of the Complaint): a “Licensing Agreement concerning the Use of Know-How and Trademarks”; a “Sub-Licensing Agreement for Trademarks”; and a “Licensing Agreement for Patents and Technical Know-How”. Upon examination of these documents, certain issues present themselves immediately to the Panel. The first agreement referred to above ostensibly authorizes the Respondent to use the trademark, PELIKAN, in its corporate name (Article I, paragraph 6) – such authorization to be withdrawn upon termination of that agreement (Article XII) – but the Panel observes that the two latter agreements, both of which predate the former agreement, name the Respondent as “Pelikan Iran Corporation”. This situation draws the Panel’s attention because paragraph 4(c)(ii) of the Policy allows the Respondent to establish rights or legitimate interests in the disputed domain name if the Respondent was commonly know by that name prior to the instant dispute between the two parties. Given these contractual circumstances, how is the Panel to determine exactly how “Pelikan” came to be an integral part of the Respondent’s name?
The Complainant asserts that it sent a letter (Annex F of the Complaint) to the Respondent that terminated the Respondent’s license, but acknowledges also that the Respondent disputes having received it. The letter also allowed the Respondent to finish selling whatever Pelikan products it still had on hand. Under these circumstances, how is the Panel to conclude if the letter was effective? Moreover, in its review of that letter, the Panel does ascertain a cancellation of the first agreement noted above, but finds it unclear as to whether there was the firm intent on the part of the Complainant to cancel the latter two agreements noted above. Since the nominal termination date suggested in that letter, December 31, 2005, has the Respondent continued to produce and sell some products labeled with the Complainant’s trademark in Iran up to the date of the filing of the Complaint in 2010? If so, has this been with or without the Complainant’s (at least tacit) permission?
Finally, the Complainant claims that the Respondent has no right to own or use the disputed domain name, , but seems to acquiesce in the Respondent’s ownership and use of the domain name, – the latter name appearing to be confusingly similar to the former name as well as to the Complainant’s trademark. The Panel wonders how this apparent contradiction is explainable in the context of the parties’ business relationship.
The evidentiary and direct examination limitations inherent under the Policy do not permit the Panel to adequately address the questions and concerns raised above. As a result, the Panel finds that adjudicating the contractual complexities and business relationship between the parties in this case is beyond the Panel’s purview and the scope of a UDRP proceeding, which is designed instead to address circumstances of abusive cyber-squatting. Therefore, the Panel declines to rule on the Policy elements delineated above and believes that the dispute between the parties can be decided only in a more comprehensive forum. See Clinomics Biosciences, Inc. v. Simplicity Software, Inc.,WIPO Case No. D2001-0823 (“Prior decisions have rejected complaints where the dispute is primarily contractual and therefore outside the scope of the [P]olicy.”); Summit Industries, Inc. v. Jardine Performance Exhaust Inc.,WIPO Case No. D2001-1001 (“This case involves contractual interpretation issues…It is not an appropriate situation for the application of the UDRP.”); Everingham Bros. Bait Co. v. Contigo Visual, NAF Claim No. 440219 (“The UDRP was implemented to address abusive cybersquatting, not contractual or legitimate business disputes.”); and BioMedical Technology Solutions, Inc. v. Suresh Shottam, NAF Claim No. 1048716 (“…this Panel concludes that the Complaint contains a question of contractual interpretation, and thus falls outside the scope of the UDRP.”).
Complainant has cited two UDRP cases where panels have examined contractual relationships between the parties involved and rendered full decisions under the Policy, Heel Quik, Inc. v Michael H. Goldman & Barbara S. Goldman, NAF Claim No. 92527 and Marine Toys for Tots Foundation v. Jim Gayles,WIPO Case No. D2001-0088. However, because of the substantially different fact patterns, the Panel does not find those cases to be controlling in this instance.
In Heel Quik, Inc, supra, the Panel ruled in a situation, unlike the present case, where there was only one contract between the parties involved. In examining that one document, the learned panel in that case could determine easily the extent to which the respondent was authorized to use the trademark of the complainant and to what extent that authorization would permit the creation of a domain name that contained said trademark. As noted above, in this case, the plethora of differing agreements prevent the Panel from rendering such a straight forward and fair determination.
The Panel concedes that In Toys for Tots, supra, reference was made to three separate agreements between the complainant and the respondent. However, the panel in that case noted that each of those agreements was “substantially similar”, such that the next one served simply as an extension of the prior one. Furthermore, that panel found that there was a specific clause in each agreement concerning webpages that authorized the respondent “to use…a webpage for only for the term of the contract”. Since the term in each of those agreements was clear and concise – and the term of the last agreement had expired – there was no difficulty for that panel in finding that the respondent could not lay claim legitimately to a website that incorporated the complainant’s trademark at the time of the dispute. Again, as noted above, it is not apparent to the Panel, given the various agreements and unclear termination letter, the exact contractual relationship between the Complainant and the Respondent and whether that relationship has been terminated for all purposes. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Dennis A. Foster
Sole Panelist
Date: December 9, 2010
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