WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Auer Lighting GmbH v. Domain Privacy LTD / The Tidewinds Group, Inc.

Case No. D2009-1622

1. The Parties

The Complainant is Auer Lighting GmbH of Bad Gandersheim, Germany, represented by Gramm, Lins & Partner, GbR, Germany.

The Respondent is Domain Privacy LTD / The Tidewinds Group, Inc. of Marblehead, Massachusetts, United States of America.

2. The Domain Name and Registrar

The disputed domain name <maxos.com> is registered with Fabulous.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 1, 2009. On December 2, 2009, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the disputed domain name. On December 3, 2009, Fabulous.com transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 11, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 15, 2009. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 December 16, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 5, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 6, 2010.

However, on the date that the Response was due, January 5, 2010, the Respondent sent a communication to the Center stating that the Respondent The Tidewinds Group, Inc. (“Tidewinds”) had commenced legal proceedings against the Complainant and the Registrar Fabulous.com in the Supreme Court of Queensland on January 5, 2010. The Respondent requested that the Center take no further action in relation to this administrative proceeding while the Supreme Court action was pending. The first page of the Claim was provided to the Center. No Statement of Claim or other court document was provided.

The Center appointed John Swinson as the sole panelist in this matter on January 12, 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.

On January 14, 2010, the Center issued Administrative Panel Procedural Order No. 1 stating that the Panel was considering whether or not to terminate or suspend these proceedings in light of the concurrent legal proceedings between the Parties, pursuant to paragraph 18 of the Rules, and invited each party to make submissions on the issue by 11am (Geneva time), January 18, 2010. The Procedural Order also invited the Respondent to provide the Panel with a full copy of the Claim and Statement of Claim filed in the Supreme Court of Queensland, Australia as well as any evidence to show that the Claim had been served on the Complainant.

Both parties responded to this Procedural Order on January 15, 2010, as discussed in more detail below.

4. Factual Background

The Complainant is a registered company in Germany, with its principal place of business in Bad Gandersheim, Germany. The Complainant forms part of the Advanced Lighting Technologies Inc. (“ADLT”) group of companies which has its headquarters in Ohio, United States of America (“USA”).

The Complainant is in the business of supplying lighting components such as reflectors, Fresnel lenses, filters and dental reflectors.

The Complainant is the registered owner of the MAXOS trademark in various countries around the world.

The exact date of registration of the disputed domain name by the Respondent is unclear; however it appears that the disputed domain name was created on March 29, 2003. Presently, the website resolving from the disputed domain name is being used as a pay-per-click landing page.

No information was provided about the Respondent Domain Privacy LTD (“Domain Privacy”), although the Panel understands them to be an organisation that provides domain privacy protection services. Furthermore, no information was provided about the Respondent Tidewinds other than that they share the same contact details as Domain Privacy. An Internet search by the Panel of their website, “www.tidewinds.com”, disclosed that Tidewinds provide software development and consulting expertise, as well as offering domain name registration services.

5. Parties' Contentions

A. Complainant

The Complainant makes the following contentions:

The Complainant is in the business of supplying lighting components such as reflectors, Fresnel lenses, filters and dental reflectors, as well as other pressed components for technical applications e.g. water meter lenses and safety sight glasses.

The Complainant has a corporate history dating back to 1948 (albeit under different names).

The Complainant owns various MAXOS trademarks in many countries around the world, including (for example):

Australian Trademark Registration No. 438913, filed on January 7, 1986.

Canadian Trademark Registration No. TMA324034, filed on March 20, 1986 and Canadian Trademark Registration No. UCA50553, filed on January 28, 1954.

European Community Trademark Registration No. 003662962, filed on February 13, 2004.

German Trademark Registration No. 949008, filed on March 25, 1976.

Great Britain Trademark Registration No. 1262888, filed on March 19, 1986 and Great Britain Trademark Registration No. 739690, filed on February 24, 1955.

International (AU, BA, BX, CH, DZ, EG, ES, FR, HR, IT, ME, MK, PT, RS, SI) Trademark Registration No. 425888, filed on September 15, 1976.

Japanese Trademark Registration No. 2204700, filed on June 18, 1987 and Japanese Trademark Registration No. 2261374, filed on May 29, 1987.

Russian Trademark Registration No. 16569, filed on April 28, 1956.

South African Trademark Registration No. 85/9077, filed on December 19, 1985.

USA Trademark Registration No. 1613898, filed on June 12, 1989.

The majority of these trademarks are registered for the following international classes:

CLASS 9 Heat and pressure-resistant inspection glasses for fitting in apparatus, containers and instruments; and

CLASS 21 Glass, unworked or semi-worked.

In the relevant field of business, the Complainant's MAXOS products have a market share of more than 75% in the United States, and the four major United States companies in this field exclusively use MAXOS products. In 2002, the turnover for MAXOS products was more than 800,000.00 Euro and in 2003 it was more than 510,000.00 Euro.

The trademark MAXOS has been used by the Complainant, or previous versions of the Complainant's business, since at least before 1998.

The Respondent has no rights or legitimate interests in respect of the disputed domain name.

There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain. Instead, the disputed domain name is being used as a pay-per-click landing page. One example of an advertisement on the disputed domain name is for Dumico, who offer, among other things, transparent glasses. These glasses are similar, if not identical to the products covered by the trademark registrations for MAXOS (owned by the Complainant). Consequently, such a use of the disputed domain name cannot be considered a bona fide use.

The disputed domain name was registered and is being used in bad faith. In the present case, as the disputed domain name is directed to a landing page, the Respondent is obviously only interested in attracting Internet users who are searching for the Complainant's MAXOS products. This use also causes confusion with the Complainant's trademarks and website and disrupts the Complainant's business by diverting customers from the Complainant's website. All of these things are done for commercial gain as the disputed domain name is a pay-per-click website.

It is alleged that Domain Privacy and Tidewinds are collaborating with regard to the unfair registration and use of the disputed domain name. It is noted that both parties have the same contact details. It is further noted that the disputed domain name was transferred on December 1, 2009 which is the same day the Complaint was filed.

B. Respondent

The Respondent did not reply per se to the Complainant's contentions.

The Respondent sent an email to the Center on January 6, 2010 stating “Your notification of default is false and not accepted. [The Respondent] elected to not participate in WIPO's arbitration and in accordance with the rules filed a law suit with a competent court. We demand you retract the Notification of Default.”

6. Discussion and Findings

Procedural Issue - Concurrent Legal Proceedings

The Respondent's request to suspend these proceedings due to the concurrent legal proceedings will be addressed by the Panel before examining the substantive elements.

As stated above, the Respondent Tidewinds commenced legal proceedings against the Complainant and the Registrar Fabulous.com in the Supreme Court of Queensland, Australia on January 5, 2010.

Both Parties were invited to provide written submissions as to whether or not the Panel should terminate or suspend these proceedings in light of Queensland Supreme Court action filed by the Respondent Tidewinds.

In response to the invitation, the Complainant submitted that they had not yet been served with the initiating court proceedings. Under the Uniform Civil Procedure Rules of Queensland (“UCPR”), a proceeding starts when the originating process is issued by the court (Rule 8); therefore despite the lack of service on the Complainant, the Panel considers that concurrent legal proceedings have commenced.

The Complainant submitted that paragraph 4(k) of the Policy was not applicable to the issue of whether or not to suspend these proceedings.

The Complainant submitted that the Respondent had no rights in “maxos” and that the Complainant is “justified to put pressure on the respondent by continuing with the administrative proceedings.”

In the Respondent's response, the Respondent argued that the matter should be dismissed in light of the concurrent legal proceedings because “further action by this panel is unnecessary and a waste of judicial resources.… Any movement forward on this matter before WIPO would be an abuse of this panel's moral authority and manifest mal intent towards [the Respondent].”

The Respondent asserted that “maxos” was a moniker for “Maximum Operating System” and that the Complainant's Complaint is “a flagrant attempt at reverse domain name hijacking.”

The Respondent has not provided the Panel with a full copy of the initiating court proceedings.

The Panel refers to paragraph 18(a) of the Rules:

“In the event of legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.”

The Panel believes that suspension is not an appropriate action in this case as it would leave the matter unresolved for an indefinite period of time. Such a delay falls outside the aims of the of the Policy which is designed to be expeditious (see Galley, Inc. v. Pride Marketing & Procurement / Richard's Restaurant Supply, Inc., WIPO Case No. D2008-1285).

Various other Panels have exercised their discretion to proceed to a decision under paragraph 18(a) of the Rules despite the existence of concurrent legal proceedings. See for example Galley, Inc. v. Pride Marketing & Procurement / Richard's Restaurant Supply, Inc., WIPO Case No. D2008-1285; Newell Operating Companyv. HostMonster.Com and Andrew Shalaby, WIPO Case No. D2008-1805; Western Flordia Lighting, Inc. v. Samantha Ramirez, SamiRami, SESCO Lighting, Inc., and Cynthia Parker-Chillemi, WIPO Case No. D2008-1122 and Western Holdings, LLC v. JPC Enterprise, LLC d/b/a Cutting Edge Fitness and d/b/a Strivectin SD Sales & Distribution, WIPO Case No. D2004-0426.

It is relevant for the Panel to consider the nature of the court action and the remedies sought. In this case, the Panel has not been supplied with a full copy of the initiating court proceedings. Therefore the Panel is not aware of the substance of the court case. Moreover, the Respondent may decide not to serve the Supreme Court Claim on the Complainant for a long period of time (i.e., 12 months) or at all. The Complainant is unable to respond to the Supreme Court Claim until it is served.

The Panel notes that by exercising its discretion to proceed to a decision, the Panel's decision will not be binding on the Court, nor will it prevent the filing of any defences or counterclaims by either the Complainant or the Respondent (see Western Holdings, LLC v. JPC Enterprise, LLC d/b/a Cutting Edge Fitness and d/b/a Strivectin SD Sales & Distribution, WIPO Case No. D2004-0426).

Therefore the Panel chooses to exercise its discretion to proceed to a decision.

The Panel makes no finding under paragraph 4(k) of the Policy, and believes that paragraph 4(k) does not prevent the Panel proceeding to a decision in this case.

The Panel makes no decision as to whether or not a court claim that has been filed but not served is sufficient for the purposes of paragraph 4(k) of the Policy to prevent the implementation of this decision (other than to note that, at least to the extent that a copy of relevant court documents have not been received by the concerned registrar in accordance with paragraph 4(k), implementation under that paragraph would seem to be the natural consequence).

Substantive Issues

To succeed in its claim, the Complainant must demonstrate that all of the elements in paragraph 4(a) of the Policy have been satisfied, namely:

(i) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect to the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

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

B. Identical or Confusingly Similar

The Complainant is the registered owner of numerous trademarks throughout the world for the word mark MAXOS. The earliest application for the trademark MAXOS was filed in 1954 in the Czech Republic, Slovakia, Canada and Hungary and all of these trademarks now belong to the Complainant.

The MAXOS trademark is identical to the disputed domain name. The suffix “.com” can be ignored for this purpose.

Accordingly, the first element has been met.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy enumerates several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for the purposes of Paragraph 4(a)(ii):

(i) before any notice to you 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 (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 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.”

The Complainant is required to make out an initial prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant also contends that there is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. It is contended that use of the disputed domain name as a landing page, offering advertisements for similar products, cannot be considered a legitimate use of the disputed domain name.

The Panel finds that there is no evidence available to it that the Respondent is commonly known by the name “Maxos”. Based on the content of the Respondent's website (featuring pay-per-click advertising including for competitive products) the Respondent does not appear to be making a legitimate noncommercial or fair use of the disputed domain name.

The Respondent's assertion in its email responding to Administrative Panel Procedural Order No. 1 that “maxos” was a moniker for “Maximum Operating System” lacks credibility in light of the evidence submitted by the Complainant showing headings on the website at the disputed domain name for “light”, “AEG”, “PYREX”, “GLASS PANELS”, “GIARDINI NAXOS HOTEL” and other terms unrelated to operating systems.

The content of the Respondent's website at the disputed domain name, as shown in printouts provided in the Complaint, does not reflect a bona fide offering of goods or services. The disputed domain name is being used for a pay-per-click (“PPC”) parking page at which advertisements are used to divert customers to, amongst other things, sites with products that compete with the Complainant's products. It is well established that PPC parking pages built around a trademark do not constitute a bona fide offering of goods or services (see for example Ustream.TV, Inc. v. Vertical Axis, Inc,WIPO Case No. D2008-0598; mVisible Technologies, Inc. v. Navagation Catalyst Systems, Inc., WIPO Case No. D2007-1141 and Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415). The links on the Respondent's website are clearly based on the trademark value of the disputed domain name - they are focused on promoting products of the same type sold by the Complainant under the MAXOS trademark. See also, Sanofi-aventis v. Shashi c/o Dynadot Privacy, WIPO Case No. D2007-1313.

The Respondent is ultimately responsible for the content of the website, regardless of how such content is generated. Viacom International Inc. v. Future Media Architects, Inc., WIPO Case No. D2008-1833.

Accordingly, on the evidence available to it, the Panel finds that the second element has been met.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy enumerates several ways that, if found by the Panel to be present, shall be evidence of the use and registration of the disputed domain name in bad faith.

The Complainant contends that, by using the disputed domain name, the Respondent has intentionally attempted to attract Internet users to the disputed domain name, who are in fact searching for the Complainant's MAXOS products. Such use causes confusion with the Complainant's MAXOS trademark and disrupts their business by diverting customers from the Complainant's website. It is noted that the landing page is used for commercial gain as the website resolving from the disputed domain name is a pay-per-click website.

On the evidence available to it, the Panel finds that, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the disputed domain name by creating a likelihood of confusion between the disputed domain name and the Complainant's MAXOS trademark. MAXOS is a trademark registered in a large number of countries around the world and the disputed domain name is identical to the trademark. The fact that the Respondent's website contains links to goods and services which compete with the Complainant's MAXOS goods and services demonstrates an intention to confuse Internet users for commercial gain.

Accordingly, on the evidence available to it, the Panel finds that the third element has been met.

The Panel is aware that the Respondent Tidewinds has been a party in a number of other domain name disputes. See, for example, Banco do Brasil S.A. v. The Tidewinds Group, Inc., Abadaba S.A. Domain Admin, WIPO Case No. D2007-1657; NB Trademarks, Inc. v. Domain Privacy LTD and Abadaba S.A., WIPO Case No. D2008-1984; Skyhawke Technologies, LLC v. The Tidewinds Group, Inc. a/k/a DNS Admin, NAF Claim No. 949608. The Panel did not need to consider the fact of these prior decisions in reaching this decision.

The Complainant also alleges that Domain Privacy and Tidewinds collaborated with regard to the unfair registration and use of the disputed domain name. The Panel considers it unnecessary to comment on this matter.

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 <maxos.com> be transferred to the Complainant.

John Swinson
Sole Panelist

Dated: February 2, 2010