WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
MegaGroup Investors B.V. v. Clifford Environmental Limited
Case No. DIE2020-0003
1. The Parties
The Complainant is MegaGroup Investors B.V., Netherlands, represented by Onel trademarks, Netherlands.
The Respondent is Clifford Environmental Limited, Ireland, internally represented.
2. The Domain Name and Registrar
The disputed domain name <bosta.ie> 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 17, 2020, via email. On June 17, 2020, the Center transmitted by email to IEDR a request for registrar verification in connection with the disputed domain name. On June 18, 2020, IEDR transmitted by email to the Center its verification response confirming the registrant and contact information for the disputed domain name.
The Center verified that the 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 Respondent of the Complaint, and the proceeding commenced on June 23, 2020. In accordance with the Rules, paragraph 5.1, the due date for Response was July 21, 2020. On July 17, 2020, the Respondent requested an extension to the Response due date. On July 20, 2020, pursuant to paragraph 5.1 of the Rules, the Response due date was extended until July 27, 2020. The Response was filed with the Center on July 27, 2020, and the Center informed the Parties that it would proceed with panel appointment pursuant to paragraph 6 of the Rules.
The Center appointed Alistair Payne as the sole panelist in this matter on July 29, 2020. 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 has operated for 75 years producing specialized water products and has various house brands including “Mega” and “Hydro-Pro”. It operates through group companies located in seven European countries and serves over 20,000 customers worldwide.
One of the Complainant’s group companies is a wholly owned subsidiary in the United Kingdom, Bosta UK Ltd., which sells specialized water products under the BOSTA mark in European Union countries, including in Ireland. Its products are sold on a “business to business” basis and also through various webshops at <bosta.nl>, <bosta.be>, and <bosta.co.uk> which is also accessible through <bosta.com>. The Complainant owns European trade mark registration 7070485 for BOSTA filed on July 9, 2008, and registered on February 26, 2010.
The Respondent based in Ireland installs wastewater systems and sells wastewater products, accessories, and spares throughout the island of Ireland and provides various consultancy services. It operates an online wastewater resource at the website <siteassessor.com>. The Respondent commenced operations in 2008.
5. Parties’ Contentions
A. Complainant
The Complainant submits that it owns registered European trade mark rights in its BOSTA mark as set out above.
It says that while the Respondent is a client of Bosta UK Ltd. and has been for the last three years, including making purchases to the value of GBP 18,000 in the last year, the Respondent is not an official or exclusive re-seller or distributor of BOSTA or the BOSTA products sold by the Complainant through its subsidiaries. It says that the Complainant never authorised the Respondent to register the disputed domain name and that the Respondent has no legitimate interests in registering it.
The Complainant says further that customers of its BOSTA products may well gain the incorrect perception that the Respondent is the official and exclusive distributor or reseller of the Complainant. This is, in particular the case, according to the Complainant, because there are references to water products such as piping systems on the website at the disputed domain name which are not BOSTA products. It says that the fact that there are no products of the Complainant offered on the website and that the relationship between the parties is not explained to visitors to the website means that the Respondent is use is not legitimate per the factors identified in Oki Data Americas, Inc. v ASD, Inc, WIPO Case No. D2001-0903.
As far as bad faith is concerned, the Complainant says that the Respondent must have known of the BOSTA mark as it was a client of Bosta UK Ltd. In spite of this knowledge, the Complainant submits that the Respondent registered the disputed domain name without the Complainant’s knowledge, apparently with the primary purpose of making an economic and competitive gain in selling water related products by using the disputed domain name in a misleading and confusing manner.
The Complainant notes that it contacted the Respondent in order to settle the matter amicably and after several reminders received an email from the Respondent’s solicitors on March 16, 2020, informing the Complainant that they were awaiting instructions from the Respondent. The Respondent’s solicitors requested that the Complainant would not file legal proceedings before receiving a response, however even after several further reminders the Complainant says that it never received a response.
In addition, the Complainant says that the registration of the disputed domain name prevents the Complainant from registering and using the disputed domain name in order to start a webshop in Ireland and the Complainant has instead been forced to register <bosta-shop.ie>.
B. Respondent
The Respondent submits that the Complainant’s European trade mark was registered on March 8, 2010, and not July 9, 2008, as indicated by the Complainant and that although the Complainant has asserted that it has used the BOSTA mark in Ireland since 1990, it has produced no evidence to support that assertion and that the Respondent has no knowledge of such use. The Respondent says that the first time that it became aware of the Complainant’s European trade mark registration was when it received the Complainant’s agent’s correspondence on January 29, 2020. The Respondent notes that it received telephone calls in late 2019 and an email in December 2019 threatening legal action and requesting the transfer of the disputed name for a reasonable price, to which it did not respond.
The Respondent submits that it is a legitimate operator in the wastewater industry and has been doing so since 2008. It notes that it has traded as “Munster Environmental” and “SiteAssessor.com” since that time and that its activities have included selling septic tank accessories and secondary treatment accessories. It says that it has a legitimate interest in the disputed domain name as BOSTA is an acronym for “Best Of Sewage Treatment Accessories”. The Respondent submits that the Complainant has provided no support for its assertion that the disputed domain name creates confusion with the relevant public.
The Respondent says that it has neither registered nor used the disputed domain name in bad faith and asserts that it has been entirely transparent in its dealings with the Complainant. It confirms that it became a client of Bosta UK Ltd. in the latter part of 2017 but says that it did not become aware of the Complainant’s European trade mark registration until receiving the Complainant’s agent’s correspondence in late January 2020. The Respondent says that it is an independent small company working exclusively in Ireland and refutes any suggestion by the Complainant that it registered the disputed domain name with a view to confusing customers or making an economic and competitive gain in selling water related products.
The Respondent submits that it was in correspondence annexed to the Response with the Business Development Manager for Bosta UK Ltd. from November 2017 about the possibility of setting up a website in Ireland that would be a mirror website of the website at <bosta.co.uk> listing the same products. It says that it is not a competitor of the Complainant and that it had made arrangements with Bosta Uk Ltd. to list their products for sale on the website. The Respondent says that the emails annexed to the Complaint from the Complainant demonstrates that it was encouraged to use a website to sell the Complainant’s products and received no objection to doing so from the Complainant until it received a call from the Complainant’s Commercial Director in late 2019 offering to purchase the disputed domain name.
The Respondent says that the Complainant has produced no evidence that the website at the disputed domain name is being used in a confusing and misleading manner and that the Complainant has not demonstrated any loss as a consequence of the Respondent’s use of the website at the disputed domain name. It further confirms that it has not used the website at the disputed domain name since receiving correspondence from the Complainant’s agents on January 29, 2020, that the website cannot be found on any search engine and that it has engaged a web designer to work on a new website, namely “Best of Sewage Treatment Accessories”.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns European trade mark registration 7070485 for BOSTA which the Panel notes was filed on July 9, 2008, and registered on February 26, 2010. In practice, the registration is in force from the filing date of the trade mark and therefore the Complainant’s error in asserting that it was registered on July 9, 2008, as noted by the Respondent, is of no moment. As the Complainant owns a prima facie valid trade mark registration there is no need for the Complainant to prove use, as asserted by the Respondent.
A valid European trade mark registration qualifies as a “Protected Identifier” under paragraph 1.3.1 of the Policy and the Complainant’s BOSTA mark is wholly incorporated into the disputed domain name without the addition of any other element before the “.ie” element. As a consequence, the Panel finds that the Complaint succeeds under the first element of the Policy.
B. Rights in Law or Legitimate Interests
The Complainant has submitted that the Respondent is not an official or exclusive re-seller or distributor of BOSTA or the BOSTA products sold by the Complainant through its subsidiaries. It says that while the Respondent is a customer, that it never authorised the Respondent to register the disputed domain name and that the Respondent has no legitimate interests in registering it. The Respondent has asserted that customers of its BOSTA products may well gain the incorrect perception from the disputed domain name that the Respondent is the official and exclusive distributor or reseller of the Complainant. However the Complainant notes that there are references to water products such as piping systems on the website at the disputed domain name which are not BOSTA products and that there are no products of the Complainant offered on the website. In addition, the Complainant notes that the supposed relationship between the parties is not explained to visitors to the website.
The Respondent seeks to rebut the Complainant’s case under this heading by asserting that it was in correspondence with the Business Development Manager for Bosta UK Ltd. from November 2017 about the possibility of setting up a website in Ireland that would be a mirror website of the website at <bosta.co.uk> listing the same products. It asserts that it is not a competitor of the Complainant and that it had made arrangements with Bosta UK Ltd. to list their products for sale on the website at the disputed domain name.
The Panel has reviewed the correspondence between the parties as annexed to the Response and notes that there are two fundamental inconsistencies that are not addressed in the Response. Firstly, the correspondence with the Complainant since late 2017 about the possibility of setting up a website to sell BOSTA products in Ireland never expressly discussed the possibility of the Respondent registering the disputed domain name incorporating the BOSTA mark in the “.ie” domain space. The closest the correspondence came to this was when the Respondent suggested that its proposed website would be a “mirror site” to the Bosta UK Ltd. website. Secondly, there is no evidence on the record that the website at the disputed domain name ever listed the Complainant’s BOSTA products. In fact, based on the screenshots of the website annexed to the Complaint and the Complainant’s assertions, it appears that third party products were promoted by the Respondent on the website at the disputed domain name. In particular the website featured “Luma” plastic pressure piping system products which the Complainant asserts are “water” products and not BOSTA products.
The parties agree that the Respondent has been a customer of the Complainant, however they disagree as to whether the Respondent could be said to be a distributor or re-seller of the Complainant’s BOSTA products. In Oki Data Americas, Inc. v. ASD, Inc, WIPO Case No. D2001-0903, the Panel identified four cumulative factors required to demonstrate that a respondent is making a legitimate use of a disputed domain name as a bona fide distributor or re-seller, namely: (i) the respondent must actually be offering the goods or services at issue; (ii) the respondent must use the site to sell only the trademarked goods or services; (iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and (iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.1 Based on the evidence on record as set out above, the Respondent fails the Oki Data test on elements (i) – (iii) inclusive. See also sections 2.1.3 and 2.1.4 of the IEDR Policy.
Accordingly, the Panel finds that the Respondent was not authorised by the Complainant to use the Complainant’s BOSTA mark, was not commonly known by the BOSTA name or mark or by the disputed domain name and was not a bona fide distributor or re-seller of the Complainant’s BOSTA products. The correspondence between the Respondent and the Complainant in relation to the development of a website in 2017 never specifically addressed the possibility of the Respondent registering a domain name incorporating the BOSTA mark and in any event the Respondent’s website at the disputed domain name listed third party products. There is moreover no evidence that it listed BOSTA products, but instead third party products were listed, and even if this had been the case, it would not have cured the Respondent’s conduct. Finally, if the Respondent really did believe that it was an authorised distributor or re-seller using the BOSTA mark, then its assertion that the disputed domain name is really an acronym for “Best Of Sewage Treatment Facilities” lacks credibility.
The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name which has not been rebutted by the Respondent. Accordingly, the Complaint also succeeds under this element of the Policy.
C. Registered or Used in Bad Faith
Under this element of the Policy, the Complainant must demonstrate that the disputed domain name was either registered in bad faith, or has been used in bad faith.
The Respondent has confirmed that it was a customer of the Complainant’s subsidiary, Bosta UK Ltd. since 2017. The BOSTA mark is used as a trade mark in the form of a combined word and logo mark on the website pages of the Complainant’s web shop. Although the Respondent may not have been aware of the Complainant’s registered trade mark rights, it is more likely than not that it had seen the Complainant’s use of the BOSTA mark as a trade mark at the time that it registered the disputed domain name. The fact that it was attempting to enter into a commercial relationship with the Complainant concerning a listing of the Complainant’s BOSTA products on its website implies that the Respondent should have had a greater awareness of the Complainant’s rights to its name and mark than could have been expected of a normal customer.
Further and as noted under Part B above, there is no evidence that the Complainant expressly or impliedly authorised the Respondent to register the disputed domain name. If the Respondent failed to check whether the Complainant had registered rights or in the alternative rights as a “protected identifier” for the purposes of the Policy in the BOSTA mark before registering the disputed domain name, then it should have done so. The Panel finds that in in view of the commercial negotiations between the parties as outlined above this should have been done. As a result, the Panel finds that the Respondent had, or should have had, knowledge of the Complainant’s BOSTA mark for the purposes of this element of the Policy when it registered the disputed domain name.
In any event, the evidence before the Panel is that the Respondent has promoted third party products on the website at the disputed domain name. Using a disputed domain name to intentionally attempt to attract Internet users to a web site or other on-line location by creating confusion with a protected identifier in which the Complainant has rights is conduct that under section 2.1.4 of the IEDR Policy amounts to evidence of both registration, and of use of the disputed domain name in bad faith.
Finally, after sending a holding response to the Complainant, the fact the Respondent failed to instruct its solicitors to send a substantive response explaining its registration of the disputed domain name and despite various reminders from the Complainant, only reinforces the Panel’s view of the Respondent’s bad faith.
Accordingly, the Panel finds that the Complaint also succeeds under this element of the Policy.
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 <bosta.ie> be transferred to the Complainant.
Alistair Payne
Sole Panelist
Dated: August 3, 2020
1 Given the substantial similarities between the Uniform Domain Name Dispute Resolution Policy (UDRP) and the IEDR Policy, the Panel finds it useful and appropriate to refer to such seminal UDRP case dealing with distributor and re-seller scenarios.
