The Complainant is Rohl, LLC, Irvine, California 92618, United States of America, represented by Stetina Brunda, Garred & Brucker, United States of America.
The Respondent is ROHL SA, Erstein, France, represented by MEYER & Partenaires,
France.
2. The Domain Name and Registrar
The disputed domain name <rohl.com> is registered with Namebay.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 23, 2006. On May 24, 2006, the Center transmitted by email to Namebay a request for registrar verification in connection with the domain name in issue. On May 24, 2006, Namebay 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 June 2, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was June 22, 2006. The Response was filed with the Center on June 19, 2006.
The Center appointed Adam Samuel as the sole panelist
in this matter on June 28, 2006. 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 limited liability corporation in California, USA. It markets kitchen and bath products. It has had US trademark rights in the name ROHL since 1992. The Complainant has been the registrant of the domain name <rohlhome.com> since April 5, 1998.
The Respondent is involved in manufacturing and selling
street and sport center lighting, urban furniture and energy bollards. It has
been incorporated in France since 1967. It has had trademark rights in the name
ROHL since 1990. The Respondent has been the registrant of the domain name in
issue since July 24, 1997.
5. Parties’ Contentions
A. Complainant
The Complainant has trademark rights with respect to ROHL. The Respondent has started operating a website similar to “www.rohlhome.com”. The domain name is identical to the Complainant’s trademark name and there is a likelihood of confusion as to the source of the goods marketed through the Respondent’s proposed website. That website offers lighting fixtures for sale. Customers seeking to find the Complainant’s products have erroneously discovered the Respondent’s domain name, creating considerable confusion among the Complainant’s customers.
The Respondent is not commonly known by the domain name in issue. The Respondent is not making a legitimate non-commercial or fair use of the domain name in issue. The Respondent intends to mislead or divert the Complainant’s customers or otherwise tarnish the Complainant’s trademark. The domain name in issue has languished “under construction” since inception.
The domain name in issue was registered or acquired by the Respondent primarily in order to sell the registration to the Complainant or one of the latter’s competitors for valuable consideration in excess of the Respondent’s out-of-pocket expenses. The Respondent bought the domain name in order to prevent the Complainant from reflecting its ROHL trademark in a domain name. It has intended to divert Internet users to the Respondent’s website, forcing the Complainant to acquire the domain name in issue for valuable consideration and otherwise to disrupt the Complainant’s business.
B. Respondent
The Respondent has had trademark rights in the name ROHL that go back to 1990, and pre-date the Complainant’s rights. Its incorporation using the same name in France goes back to 1967.
The domain name has been used since inception and resolves to a web page containing the Respondent’s baseline device, main description and e-mail corporate address. The fact that the site is under construction does not mean that the Respondent has no legitimate interest in the domain name in question. The domain name is used by the Respondent on its letterhead paper and commercial documentation, notably as an e-mail address.
The Respondent has never contacted the Complainant in order to sell the domain name to it. The Respondent has declined to sell the domain name for valuable consideration in spite of the offers made to it by the Complainant. The Respondent registered the domain name to reflect its trademark and corporate name in a corresponding domain name.
The Respondent was not aware of the Complainant until the latter contacted it in relation to the domain name in issue. The domain name <rohlllc> is available in all the top-level generic versions. The Complainant has not filed a complaint against other registrants who have registered the ROHL name as domain names such as <rohl.net>, <rohl.org> or even <rohl.us> where the company conducts all its business.
The Complainant and Respondent do not compete with each other. The Complainant operates only in the USA and Canada and provides plumbing, kitchen and bathroom fixtures. The Respondent which does business only in Europe offers lighting products. The activities and geographic range of the companies is very different. A Google search for Rohl provides only the Complainant’s domain name.
Where two companies have the same trademark, the matter should be resolved on a “first-come first-served” basis in that the Respondent’s domain name registration should prevail over the Complainant’s attempt to obtain the same domain name.
At the time of filing the Complaint, the Complainant
knew of the Respondent’s trademark rights and its incorporation using
the same name in France since 1967 and has failed to mention the Respondent’s
rights in connection with the domain name in issue. The proceeding was brought
for the primary purpose of harassing the Respondent into surrendering the disputed
domain name. This is reverse domain name hijacking.
6. Discussion and Findings
Under the Policy, the Complainant must prove that
(i) the domain name is identical or confusingly similar to a trademark or service mark in which it has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the
domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
There is no dispute on this. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complaint fails to indicate that the Respondent has owned trademark rights in France and elsewhere in the name ROHL since 1990. These actually pre-date the Complainant’s rights. Although the Complainant knew this when filing the Complaint from a letter sent to it by the Respondent’s lawyers dated December 30, 2005, it failed to point it out in the Complaint or to deal with the point that a trademark registrant would normally be regarded as having rights and legitimate interests with respect to a domain name that is identical to the trademark to which the Respondent owns rights.
The Respondent has owned trademark rights to the name ROHL since 1990, the validity of which has not been contested in these proceedings. It must, consequently, have rights in respect of the domain name in issue which is identical to the name with the exception of the addition of the generic suffix “.com”. This Complaint must, therefore, fail.
If it was not for the allegation of reverse hijacking, this decision would end at this point. However, since the Respondent has sought a ruling on this matter and to obtain a declaration that the Complainant is using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name, it is necessary to consider the other points in the Complaint.
C. Registered and Used in Bad Faith
The Complainants have made a number of allegations of bad faith, each of which have been answered fully by the Respondent. None of the evidence on file contradicts any of the Respondent’s factual assertions. (This is regardless of whether they are discussed below).
The Respondent owns trademark rights in the name almost exactly reflected in the domain name in issue. It has been incorporated in the same name for over a quarter a century. A Google search under “Rohl” lists the Complainant’s website and not the Respondent’s. The two companies offer different products on different continents.
A letter dated December 30, 2005, from the Respondent’s lawyer to the Complainant’s lawyer indicates a number of things that do not appear and are not controverted in the Complaint (and must, therefore, be accepted as correct). It notes:
“As you may be aware, your client has already tried to reach our client previously by phone and letter to request the domain name <rohl.com> to be transferred.
Our client was not aware of your client before being contacted regarded this issue.”
The letter goes onto explain that “the domain name resolves to a web page containing its baseline device, main business description and e-mail and corporate addresses.” It also sets out clearly the Respondent’s trademark registrations for the name “rohl” and the fact that the company has been incorporated using the same name since 1967. Other arguments deployed here in this complaint are also clearly set out, notably the fact that the two businesses do not compete with each other. The letter concludes by rejecting the suggestion that the Respondent is interested in transferring the domain name to the Complainant.
The tone of the letter is friendly but clear. The point here is that the Complainant knew exactly the points that the Respondent was going to raise in these proceedings before starting them.
The Complainant cannot complain of bad faith when a company clearly entitled to use the same trademarks as itself registers a domain name which reflects both those trademarks and its own company name for over a quarter of a century. A later business cannot just register a trademark and then subsequently use this procedure to remove a website from the Internet that uses the same name. In this sense, the Respondent must be correct in saying that where there are two owners of a trademark in the same name, the first to register a domain name must be entitled to keep it. For this reason alone, the Complaint must fail.
The Complainant argues that the Respondent registered the domain name in bad faith in order to disrupt the Respondent’s business and divert the Complainant’s customers to its website. The Complainant has provided no evidence to support this assertion. The letter from the Respondent’s lawyer dated December 30, 2005 makes it clear that the Respondent had no idea of the Complainant’s existence until the dispute arose. The Complaint does not contradict this assertion.
The Respondent correctly points out that it does not in any way compete with the Complainant as regards either products or geographic range. Its website does not seek to divert business from the Complainant to the Respondent. The Respondent could not supply the customer needs of the Complainant and has shown no intention of doing so. The Respondent’s website does not divert customers to a competitor of the Complainant.
The Complainant argues that the fact that the website is under construction constitutes evidence of bad faith. This argument must fail for a number of reasons. First, it is quite legitimate for a company to buy a domain name reflecting its own trademark to ensure that it can use that domain name at a later date to reflect that trademark. At the relevant point in time, the registrant may not need a website. It is reasonable and not evidence of any bad faith for a business to register a domain name reflecting trade mark rights held by itself and its actual corporate name to protect itself against subsequent possible registrants of the same domain name.
In any event, the extract from the website in question indicates the areas in which the Respondent operates and provides contact and e-mail address information. This would be of use to those seeking to do business with the Respondent.
Finally, the Complaint seems to suggest that the Respondent wants to sell the domain name to the Complainant or one of its competitors. The only evidence on file on this subject is the letter quoted above from the Respondent’s lawyers which directly and convincingly contradicts this assertion.
D. Reverse Hijacking
The Respondent in this case seeks a declaration that the Complainant has engaged in reverse domain hijacking under Paragraph 15(e) of the ICANN Rules. Paragraph 1 of the Rules defines this concept as
“using the Policy in bad faith to attempt to
deprive a registered domain-name holder of a domain name.”
Paragraph 15(e) says:
“If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
In Jazeera Space Channel TV Station v. AJ
Publishing aka Aljazeera Publishing, WIPO
Case No. D2005-0309, the Panel went into some detail on what is meant by
“reverse domain name hijacking”. It said:
“Reverse domain name hijacking is defined in
the Rules as “using the Policy in bad faith to attempt to deprive a registered
domain-name holder of a domain name”. The onus of proving bad faith is
on the Respondent, and mere lack of success of the Complaint is not of itself
sufficient to constitute reverse domain name hijacking. (On those points, refer
to the decision of the three-member panel in Sustainable Forestry Management
Limited v. SFM.com and James M. van Johns “Infa dot Net” Web Services,
WIPO Case No. D2002-0535.)
Allegations of reverse domain name hijacking have
been upheld in circumstances where a respondent’s use of a domain name
could not, under any fair interpretation of the facts, have constituted bad
faith, and where a reasonable investigation would have revealed the weaknesses
in any potential complaint under the Policy (see Goldline International,
Inc v. Gold Line, WIPO Case No. D2000-1151).
See also Deutsche Welle v. DiamondWare Limited, WIPO
Case No. D2000-1202, where an allegation of reverse domain name hijacking
was upheld in circumstances where the complainant knew that the respondent used
the at-issue domain name as part of a bona fide business, and where the
registration date of the at-issue domain name preceded the dates of the complainant’s
relevant trademark registrations.
The three-member panel in Yell Limited v. Ultimate
Search, WIPO Case No. D2005-0091 noted
that whether a complainant should have appreciated at the outset that its complaint
could not succeed, will often be an important consideration.
Turning to the position in this case, the majority is of the view that it shouldhave been clear to the Complainant that its case had no prospect of success. Add to that the matters referred to in subparagraphs (iii) and (iv) below, and the majority reaches the conclusion that the Respondent’s allegation of bad faith use of the Policy must be upheld. The majority has reached those views for the following reasons:
(i) The Complainant is a substantial corporation, which operates in numerous countries and has access to high quality legal advice.
(ii) The structure of the Complaint itself suggests that the Complainant was well aware that it had to prove not only that the Respondent had been using the domain name in bad faith, but also that it had registered the domain name in bad faith (the two aspects of paragraph 4(a)(iii) of the Policy are dealt with as separate and distinct issues at subparagraphs (a) and (b) of paragraph 43 of the Complaint). If the Complainant appreciated that it had to prove bad faith registration as at April of 1996, it must also have appreciated that it could not do so.
(iii) The Complainant has failed to address a number of issues raised by the Respondent in support of its allegations of reverse domain name hijacking. One matter which clearly called for a response, was the apparent use by the Complainant of “@aljazeera.com” email addresses for its journalists, on its website at “www.english.aljazeera.net”. The Respondent alleged that the Complainant had been adopting that practice continuously and systematically, and that it had raised the issue with the Complainant without success (see paragraph 21 and Annexure 1 to the Response). The majority may have been prepared to accept that an occasional reference to <aljazeera.com> could have found its way onto the Complainant’s own website by mistake, but the Respondent’s allegation of a systematic intent to encourage confusion at the very least called for some response from the Complainant. The Complainant did not respond, and that failure inevitably lends some weight to the Respondent’s allegations.
(iv) The majority is also of the view that the Complainant must have been aware of the Respondent’s website at the domain name for some years. That domain name had been registered since April 1996, and the Complainant itself produced evidence of a mistaken reference to <aljazeera.com> on a BBC website going back to 2001. Yet, the Complainant stated at paragraph 38 of the Complaint that it had only become aware of the registration of the domain name “recently”. In the circumstances, the Panel is of the view that the Complainant should have been more forthcoming on precisely when it first learned of the Domain Name’s existence – in any situation where a complainant is challenging a domain name which has been registered for approximately nine years, the question of why the complainant has not moved earlier to assert its rights must be an obvious one.
The majority can readily understand that there may well be some confusion between the respective websites operated by the Complainant and the Respondent, and that the Complainant may be suffering at the very least some inconvenience as a result. However, that is not the point under the Policy – the Policy should not be invoked if a complainant knows or should know that any case it might present could not succeed. In the absence of more substantial explanations from the Complainant, the majority concludes that the Complainant probably didappreciate that its Complaint could not succeed if the Respondent chose to defend it. That conclusion, considered with the matters referred to at subparagraphs (iii) and (iv) above, lead the majority to conclude that the Respondent’s allegations of reverse domain name hijacking must be upheld.”
The fact that a complaint is unsuccessful is clearly not enough to justify the declaration sought. The Respondent has the burden of proving that the complaint was brought in bad faith to attempt to deprive a registered domain-name holder of a domain name.
Before filing the complaint, the Complainant knew that the Respondent owned trademark rights in the name exactly reproduced in the domain name. It knew that the Respondent did not compete with the Complainant’s business because it was in a different business and on a different continent. By looking at the website to which the domain name in issue resolves, the Complainant or its lawyers would have realised that the website was being used by the Respondent to provide e-mail and other contact information resources to people wishing to find the Respondent. Equally, a quick look at the website would have made it clear that the Respondent was not using the domain name to divert internet users to a competitors’ site.
At the time of filing the complainant, the complainant knew or had no reason to doubt that the respondent was using and had used the at-issue domain name as part of a bona fide business.
The Complaint contains allegations to the effect that the Respondent was seeking to sell the domain name to the Complainant which are contradicted by the only evidence on file. In this respect, the Complainant made allegations that it must have known were not correct. That, at least, is what emerges from the limited correspondence on the file.
The domain name in issue has existed since 1997. It is somewhat curious as to why the Complainant has now asserted its rights to a name that is an exact replica of its trademark.
Most seriously of all, though, the Complainant’s lawyers knew from the letter of December 30, 2005, that, assuming that the publicly verifiable facts contained in it were correct, this Complaint had no chance of success. The Complainant chose not to question or respond to the assertions made in that letter. It presented the Complaint without reference to and in some cases in direct contradiction of the material contained in the letter. The Complainant may have hoped that the Respondent would not participate in these proceedings and point out the factual errors in the Complaint of which the Complainant was already well aware when it filed the Complaint.
While the Complainant probably has no feelings of ill-will towards the Respondent, it appears to regard the Respondent’s domain name registration as an obstruction of its business objectives to be removed without regard to the Respondent’s rights and interests.
In the Panel’s opinion, for all these reasons,
the Complaint was filed by a significant company, assisted by lawyers, acting
in bad faith, knowing full well that if the matter was properly investigated,
it had no prospect of success. The Respondent must, therefore, be entitled to
the declaration that it seeks.
7. Decision
For all the foregoing reasons, the Complaint is denied.
The Panel declares that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Adam Samuel
Sole Panelist
Dated: July 12, 2006
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