ombrello.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

PPG Industries Ohio, Inc. v. MultiPro Limited, Thames Global Internet Services, Rejel Automotive Limited

Case No. D2004-0950

1. The Parties

The Complainant is PPG Industries Ohio, Inc., of Pittsburgh, Pennsylvania, United States of America, represented by Webb Ziesenheim Logsdon Orkin & Hanson, PC, United States of America.

The Respondent is MultiPro Limited, Thames Global Internet Services, of Berkshire, United Kingdom of Great Britain and Northern Ireland and Rejel Automotive Limited, of Bedford, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <ombrello.com> is registered with Tucows.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 11, 2004. On November 12, 2004, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On November 12, 2004, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 17, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was December 7, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 8, 2004.

The Center appointed Daniel J. Gervais as the sole panelist in this matter on December 15, 2004. 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 sells chemicals and other related products under the trademark OMBRELLO, which is registered in several countries and territories, including the European Union. The products are used in the automotive industry.

The Respondent at one time purchased some of the Complainant’s products, ostensibly to distribute them in the United Kingdom. The Respondent registered the domain name (as well as the domain name <ombrello.co.uk>, which has since been transferred to the Complainant by virtue of a Nominet panel decision) and used those to resell the Complainant’s products. No contract was signed. A significant part of the products purchased by the Respondent were returned to the Complainant.

The Respondent subsequently offered to transfer the domain name (together with <ombrello.co.uk>) to the Complainant for £75,000.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that it owns the OMBRELLO trademark; that the domain name is identical to said mark (with the addition of the generic “.com”); that the Respondent, even though he registered the domain name and created a webpage to resell the Complainant’s legitimate wares, was not authorized to do so and is no longer authorized to distribute the Complainant’s products; finally that the domain name was registered and used in bad faith.

The Respondent was aware of the Complainant’s mark when it registered the domain name. It is using the domain name with the intent of transferring it to the Complainant and/or to prevent the Complainant from using it, and/or to disrupt the Complainant’s business, all of which constitute instances of bad faith registration and use under the Policy.

There is a strong likelihood of consumer confusion in letting the Respondent continue to use the domain name, because the Respondent is not the Complainant or an agent or representative of the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements is satisfied:

1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section 6.1); and

2. The Respondent has no rights or legitimate interests in respect of the domain name (see below, section 6.2); and

3. The domain name has been registered and is being used in bad faith (see below, section 6.3.).

Paragraph 4(a) of the Policy clearly states that the burden of proving that all these elements are present lies with the Complainant.

Pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom, as it considers appropriate.

A. Identical or Confusingly Similar

This question raises two issues: (1) does the Complainant have rights in a trademark; and (2) is the domain name identical or confusingly similar to such trademark or service mark.

On this part of the test, the facts clearly favor the Complainant, who owns relevant registrations of the trademark OMBRELLO. The domain name is identical to the trademark, except for the generic top-level domain name “.com.” As a rule, addition of the generic top-level domain (gTLD) reference, which is necessary for a domain name to be operational, does not alter the mark, and is sufficient to establish functional identity to the complainant’s mark. See Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493, Telecom Personal, S.A., v. NAMEZERO.COM, Inc, WIPO Case No. D2001-0015, Société Générale and Fimat International Banque v. Lebanon Index/La France DN and Elie Khouri, WIPO Case No. D2002-0760.

The Panel thus finds for the Complainant on this first part of the test.

B. Rights or Legitimate Interests

According to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

As was decided by several administrative panels, while the Complainant has the burden of proof on this issue, once the Complainant has made a prima facie showing, the burden of production shifts to the Respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue.

There might be a question, discussed below, as to whether the Respondent was at one point in time “licensed” to use the Complainant’s mark. That is no longer the case. It could also be argued that the Respondent made preparations to use the domain name in connection with an offering of goods, namely the Complainant’s. The real question is whether those preparations were bona fide.

In the absence of any evidence submitted by the Respondent, the Panel must accept the facts as presented by the Complainant on this point. The offering by the Respondent as a reseller of the Complainant’s goods was not bona fide for two main reasons. First, because it did not indicate the nature of the Respondent’s business in relation to the Complainant’s, thus potentially misleading consumers (see Houghton Mifflin Co. v. The Weathermen, Inc.WIPO Case D2001-0211; Motorola, Inc. v. New Gate Internet, Inc., WIPO Case No. D2000-0079; and Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., WIPO Case No. D2000-0113). Second, as a reseller the Respondent was not authorized to register the domain name or mark, and should have known that this would infringe the Complainant’s mark(s). See Glaxo Group Limited, SmithKlineBeecham Corporation d/b/a GlaxoSmithKline v. Michale Kelly, WIPO Case D2004-0262.

In a case such as this where acquiescence and/or an implied license may be present, it is essential to note the timeline defined in the Policy. Paragraph 4(c) indicates that for legitimate use under subparagraph (i) to be present, the bona fide preparations or use must have started place before notice of the dispute and still be commercially relevant (in the sense of being related to an offering of goods or services) at the time of the dispute. Under subparagraph (ii), the “reputation” (the “commonly known” element) must have been acquired prior to the dispute and still be present at the time of the dispute. Finally, under subparagraph iii, the legitimate noncommercial or fair use of the domain name must be present at the time of the dispute. Consequently, an alleged license may be relevant under subparagraph (i) if it is still in force. If, however, perhaps as a result of such a license, a respondent has acquired a “reputation” under the domain name, then that respondent may have a case under subparagraph (ii), though there is no evidence to warrant such a finding here. Additionally, the timeline in respect of the presence of a respondent’s legitimate interest, which varies according to the subparagraph on which it is based should not be confused with the analysis of the element of bad faith under paragraph 4(b) of the Policy, where two distinct moments in time are relevant, namely the registration of the domain name, and then the use of the domain name at the time of the dispute or in certain cases at a relevant time prior to such dispute.

The Panel thus finds for the Complainant on this second part of the test.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:

(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product.

There is evidence that the Respondent tried to sell the domain name to the Complainant for a sum far in excess of out-of-pocket costs directly related to the domain name, but the domain name was not initially registered with that aim in mind. There is also ample evidence that the domain name is used in bad faith, inter alia by preventing the rightful owner of the mark from reflecting the mark in a corresponding domain name, but there is no pattern of this type of conduct. Finally, the parties can hardly be said to be competitors now, and certainly were not when the domain name was registered. None of the first three subparagraphs above apply squarely to the facts at hand.

It may, however, be said that the Respondent is using the domain name with the intention 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 Respondent’s website or location or of a product. But the evidence that the domain name is actually used for that purpose is slim. The Complaisant admit that it is not certain whether the Respondent is currently selling products in such a way as to create confusion. The domain name does, however, resolve to a website on which goods and services are offered under the OMBRELLO trademark and where the Respondent’s name appears as the contact information. The goods and services sold, if any, appear to be legitimate. There is no direct claim of sponsorship, affiliation or endorsement. The facts thus do not warrant a “mechanical” finding of bad faith under subparagraph (iv).

Are there other elements justifying a finding of bad faith? If a distributor, under a license/distributorship agreement, is allowed to register a domain name incorporating the licensor’s mark(s), then that registration is not made in bad faith and the Policy would not justify a transfer to the licensor, even after the termination of the Agreement, because there was no bad faith at the time of registration. Remedies may exist in such a case, but they are based on the contract, not the Policy (see Celebrity Signatures International, Inc. v. Hera’s Incorporated Iris Linder, WIPO CaseD2002-0936). It is essential to bear in mind, however, that this only applies where the registrant/distributor is actually authorized to register the domain name. Trademark owners who want to avoid this situation would be well advised to register their domain names in their name and license their use to distributors.

The question here is whether there was such a license or distributorship agreement authorizing (verbally because no written contract exists) the Respondent to register the domain name. The answer is no. The Complainant was certainly aware of the Respondent’s registration of the domain name, but it quickly tried to purchase the name from the Respondent. It could have taken the matter to court of course, but it is understandable for a trademark owner not to seek the first opportunity to sue its distributors. Only after an extended period of time, and usually only with some additional sign of agreement by the trademark owner, could a distributor credibly argue that there was acquiescence or that some form of estoppel might apply--though the Panel makes no finding as to the applicability of such legal doctrines under the Policy be cause the facts do not warrant such a conclusion here. The Respondent was not licensed to “use” the mark. He was only reselling goods and/or services bearing the trademark.

Unauthorized registration by a distributor of a domain name incorporating a trademark, followed by a relatively brief period of inaction or negotiation by the trademark owner does not constitute bona fide use for the purposes of a finding of legitimate interest, nor does it constitute “good faith registration” under the Policy. Having come to this conclusion, and given the various instances of bad faith uses already mentioned, the Panel finds for the Complainant on this third pat of the test.

The Panel notes that such a conclusion also seems consistent with the broader public interest at play in this case. National trademark laws often impose a duty on trademark owners to monitor the use of their mark(s) and to ensure the quality of goods or services sold or offered under that mark. Letting a reseller whom the trademark owner does not control use the trademark as part of a domain name makes it much harder to fulfil this critical function. In addition, there is a likelihood of confusion because Internet users would be justified in believing that the Respondent is an authorized representative of the Complainant, which is not or no longer the case.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <ombrello.com> be transferred to the Complainant.

Daniel J. Gervais
Sole Panelist

Dated: December 21, 2004