Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

The Complainant is UVA Solar GmbH & Co KG of Carl-Friedrich-Gauss-Strasse 11, 50259 Pulheim, Germany.

The Respondent is Mads Kragh, Abell Group, 90 Alton Road, Suite 702, Miami Beach, FL 33139, United States of America.

The domain name at issue is:

<sunmaxx.com>

and the Registrar is:

Network Solutions, Inc.

The WIPO Arbitration and Mediation Center [the Center] received the Complaint on March 14, 2001, [electronic version] and on March 20, 2001, [hard copy]. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy [the Policy], the Rules for Uniform Domain Name Dispute Resolution Policy [the Rules], and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy [the Supplemental Rules]. The Complainant made the required payment to the Center.

The formal date of the commencement of this administrative proceeding is March 23, 2001.

On March 21, 2001, the Center transmitted via email to Network Solutions, Inc.

a request for registrar verification in connection with this case on March 22, 2001, Network Solutions, Inc. transmitted by email to the Center Network Solutions' verification response confirming that the registrant is Sunmaxx of Adelgaade 61, Hobro 9500, Denmark and that the contact for administrative, billing and technical purposes is Mads Kragh.

Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted on March 23, 2001, to:

postmaster@sunmaxx.com,

sun3@swissonline.ch and to

madskragh@yahoo.com

this Notification of Complaint and Commencement of the Administrative Proceeding. The Center advised that the Response was due by April 11, 2001. On the same day the Center transmitted by fax and mail copies of the foregoing documents to:

Sunmaxx

Adelgaade 61

Hobro 9500

Denmark;

Mads Kragh

Helberskovvej 22, Als

9560 Hadsund

Denmark;

and to

Mads Kragh

Abell Group

90 Alton Road, Suite 702

Miami Beach

FL 33139

United States of America

The Response was received from the Respondent on April 11, 2001, [electronic version] and on April 12, 2001, the Center sent Acknowledgement of Receipt of that Response to the Respondent at the address notified in the said Response:

Mads Kragh

100 Meridian Avenue #1

Miami Beach, FL 33139

United States of America

and also using the contact details and methods as were used for the Notification of Complaint and Commencement of the Administrative Proceedings.

A Reply from the Complainant was received on April 12, 2001, [electronic version] and a Rejoinder from the Respondent was received on April 18, 2001, [electronic version].

Having received on April 19, 2001, Mr. David Perkins' Declaration of Impartiality and Independence and his Statement of Acceptance, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. David Perkins was formally appointed as the Sole Panelist. The Projected Decision Date was May 7, 2001. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.

Having reviewed the communication records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondents". Therefore, the Administrative Panel shall issue its Decision based upon the Complaint, the Response, the Complainant's Reply to the Response, the Respondent's Rejoinder to that Reply, the Policy, the Rules and the Supplemental Rules.

4.1.1 The Complainant's Business

The Complainant's business is in skincare products and cosmetics [particularly, sun and tanning creams and lotions]. The Complainant also sells coin operated sun tanning equipment and provides the business and technical know-how involved in the establishment and operation of tanning studios. The equipment, the skincare products and provision of the services appear to be exploited through distributors in a franchise type of arrangement.

4.1.2 The Complainant's Trademark

The Complainant owns the trademark and service mark SUNMAXX which is registered in Classes 3, 11 and 35. It is an international registration IR 677,701 dated June 17, 1997, based on an originating German application of October 7, 1996.

4.1.3 The Territories covered by the IR are Austria, Benelux, Denmark, France, Germany, Hungary, Italy, Liechtenstein, Monaco, Norway, Poland, Portugal, San Marino, Spain, Sweden, Switzerland and the Untied Kingdom.

4.1.4 The goods and services specified by the IR are:

Class 3: cosmetics, in particular sun and tanning creams and lotions.

Class 11: apparatus for tanning, apparatus for tanning all around, including such apparatus operating by insertion of a coin, solaria and ultra violet bulbs not for medical use.

Class 35: marketing, business advice and mediation of the technical know-how needed in the furnishing and operating of tanning studios.

4.1.5 The SUNMAXX trademark is registered in the name of UVA-Solar Wolfgang Müller KG, the former name of the Complainant company.

4.1.6 The Complainant's relationship with the Respondent

It appears, although it is not entirely clear from the various submissions by the parties to this administrative proceeding, that the Complainant's products are supplied throughout Europe by Sun Cosmetics Becker KG ["Sun Cosmetics"] of Fuellinsdorf, Switzerland. A Mr. Jurgen Becker is the principal of Sun Cosmetics.

4.1.7 From August 1998, until the end of 1999, the Respondent was the sole distributor of SUNMAXX products in Denmark, such products being supplied to him by Sun Cosmetics. The Respondent contends that this sole distributorship continued until February 2000.

4.2.1 As the sole distributor for SUNMAXX products in Denmark, the Respondent states that:

· he marketed SUNMAXX products at trade shows, in newspapers and magazines, through direct contact with retailers and by his website using the domain name in issue, <sunmaxx.com>;

· copies of all marketing material used by the Respondent for that business were first approved by Sun Cosmetics, who agreed to reimburse the Respondent for 50% of his marketing expenses;

· the domain name in issue was registered by the Respondent on August 24, 1998, with the express authorization of Sun Cosmetics;

· at all times the Respondent was lead to believe that Sun Cosmetics was a branch of the Complainant's enterprise;

· this is evidenced by use of the SUNMAXX trademark which is prominently displayed on the business stationary of Sun Cosmetics; and

· the Complainant never complained about the Respondent's use of the domain name in issue until January 31, 2000, almost a year and a half after he registered it.

4.2.2 In short, the Respondent's case is that he established and used the domain name in issue as the authorized distributor of the Complainant's SUNMAXX products in Denmark. The Respondent has exhibited a Statement of Mr. Jurgen Becker of Sun Cosmetics of April 2001. The full text of that Statement reads:

"1. From 4/98 until 12/99 I was head of Sun Cosmetics Becker KG.

2. From 4/98 until now Sun Cosmetics Becker KG managed the export and distribution of Sunmaxx products throughout Europe.

3. In August 1998, Abell Group became the sole distributor of Sunmaxx products in Denmark and Sun Cosmetics Becker KG supplied Abell Group with Sunmaxx.

4. As a distributor of Sunmaxx products, Abell Group was required to market Sunmaxx products and submit marketing proposals to Sun Cosmetics Becker KG in advance. Sun Cosmetics Becker KG agreed that Abell Group would be reimbursed for 50% of its authorized marketing expenses.

5. Some time in August 1998, Abell Group proposed to market Sunmaxx products on the Internet and asked Sun Cosmetics Becker KG for permission to register the name <sunmaxx.com>. Abell Group was authorized to do so.

The Complainant contends that the Respondent has registered as a domain name a mark which is identical to the Complainant's SUNMAXX trademark, that the Respondent has no rights or legitimate interests in respect of the domain name in issue and that the Respondent has registered and is using that domain name in bad faith.

The Respondent contends that he was an authorized distributor of the Complainant's SUNMAXX products in Denmark and that he registered and used the domain name in issue with the express authorization of Sun Cosmetics, which at all material times managed the export and distribution of SUNMAXX products throughout Europe. In the circumstances, the Respondent contends that he has rights and legitimate interests in the domain name in issue, which he registered and used in good faith.

6.1 The Policy paragraph 4a provides that the Complainant must prove each of the following:

· that the Respondent's 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 domain name; and

· the domain was registered and is being used in bad faith.

6.2 Paragraph 4b of the Policy sets out four illustrative circumstances that, if proved, shall be evidence of registration and use of a domain name in bad faith.

6.3 Paragraph 4c of the Policy sets out three illustrative circumstances, which, if proved, shall demonstrate a Respondent's rights or legitimate interests to the domain name in issue.

6.4 Identical or Confusingly Similar

6.4.1 The Complainant contends that its trademark SUNMAXX and the domain name in issue are identical. Although this is not expressly admitted in the Response, it is not challenged by the Respondent, who relies upon the Complainant failing to make out its case under paragraphs 4a(ii) and (iii) of the Policy.

6.4.2 The Panel finds that the mark and the domain name are identical and that the Complainant succeeds in establishing this requirement of the Policy.

6.5.1 The Complainant's Case

· the Respondent was never licensed or otherwise authorized by the Complainant to use the SUNMAXX trademark as a domain name during the time that the Respondent was the Complainant's sole distributor for its products in Denmark, or subsequently;

· the domain name is not the legal name of the Respondent;

· the Respondent knew that SUNMAXX was a registered trademark of the Complainant at the time the domain name in issue was registered [August 1998];

· neither Sun Cosmetics nor its then principal Mr. Becker authorized the Respondent to register and use the domain name in issue; but

· even if Mr. Becker did give such authorization to the Respondent for the purposes of advertising and selling SUNMAXX products, it could only be registered by the Respondent "for the trademark holder, the Complainant."

6.5.2 In other words, the Respondent only held the domain name in issue for so long as he continued to do business as the distributor of SUNMAXX products in Denmark. Until that distributorship came to an end in late 1999 / early 2000, the Complainant had no knowledge that the Respondent had registered the domain name in issue. Immediately the Complainant became aware of this, it complained to the Respondent on January 31, 2000.

6.5.3 As the Panel understands the Complainant's case, it is that;

· it never authorized the Respondent to register the domain name in issue;

· alternatively, if Mr. Becker did authorize that registration, it was only for the purpose of selling SUNMAXX products while the Respondent continued to distribute those products in Denmark;

· so that when the Respondent ceased to carry on that function, he became disentitled to continue to own or to use the domain name. This is akin to the English law notion of a distributor holding a trademark on trust for the brand owner for the duration of the business relationship between them.

6.5.4 The Respondent's Case

This is set out in paragraph 4.2 above. Essentially, the Respondent seeks to bring himself within paragraph 4c(i) of the Policy on the basis that before notice to him of this dispute on January 31, 2000, he had used since August 1998, the domain name in connection with a bona fide offering of goods. That use was as the legitimate sole distributor of the Complainant's SUNMAXX products in Denmark.

6.5.5 The issue for Decision

This is whether authorization by the Complainant's European Distributor, Sun Cosmetics, to register the domain in issue and/or the de facto use of that name as part of the marketing of the Complainant's SUNMAXX products in Denmark was subject to the implicit condition that such ownership and use should only continue to subsist for the purpose of and, hence, for the duration of the Respondent's distributorship for Denmark.

6.5.6 The Respondent cannot credibly assert that it did not know that SUNMAXX was not a registered trademark. It is prominently featured on the business stationery of Sun Cosmetics with the letter ® encircled in a Delivery Note which is exhibited to the Response.

6.5.7 The parties' submissions do not contain particulars of the arrangement under which the Respondent distributed SUNMAXX products in Denmark for the period August 1998 to December 1999, [or, as the Respondent contends, February 2000]. However, it is, in the Panel's experience, usual for such arrangements to contain an express provision that use of the trademark owners' trademark by its distributor shall be limited temporally during the contractual relationship between them and shall only be used for the purpose of that relationship.

6.5.8 The Panel takes the view, on the limited facts before it, that Sun Cosmetics was held out by the Complainant as its authorized distributor of SUNMAXX products in Europe with authority to deal with sub-distributors like the Respondent on behalf of the Complainant. There is nothing to suggest that Mr. Becker was not entitled to give the authority to the Respondent referred to in paragraph 6 of his Statement [set out in paragraph 4.2.2. above].

6.5.9. However, it would be totally consistent with such an arrangement for such authority to be limited as suggested in paragraph 6.5.7 above. It is just not credible that either the trademark owner [the Complainant] or its European Distributor [Sun Cosmetics] would give a national sub-distributor in Denmark [the Respondent] carte blanche to incorporate the SUNMAXX trademark in a domain name with freedom to continue to own, use or sell that domain name after termination of the distributorship arrangement. As the Respondent himself states in his Rejoinder:

"All the Respondent's marketing activities were conducted solely to promote Respondent's sales of SUNMAXX products … . "

Those activities are stated by the Respondent in paragraph 12 of the Response to include registration of the domain name in issue. Further, in relation to his answer to the case on bad faith [see, below] the Respondent states that the domain name was registered to distribute the products online [paragraph 16 Response] and was not registered to disrupt the Complainant's business [paragraph 18 Response].

6.5.10 In the circumstances, the Panel takes the view that the Respondent did

have rights and legitimate interests in respect of the domain name in issue but only for the duration of his distributorship of the Complainant's SUNMAXX products. That distributorship having come to an end in late 1999 or February 2000, the Respondent no longer has any rights or legitimate interests in respect of the domain name. The Complainant, therefore, succeeds in establishing the second requirement of paragraph 4a of the Policy.

6.6 Registered and Used in Bad Faith

6.6.1 The Complainant's Case

The Complainant contends that:

· the domain name in issue was only registered by the Respondent in order to prevent the owner of the trademark [the Complainant] from reflecting the mark in a corresponding domain name;

· bad faith is also shown by the Respondent changing its address from that shown in its Registration Agreement with Network Solutions to its new address in Florida;

· that the Respondent is not actually using the domain name and that the ISP has permitted the Complainant to connect through the domain name in issue to a temporary website limited to a single page which caries the SUNMAXX trademark and illustrates certain of the SUNMAXX products, showing the address of Sun Cosmetics; and

· that the Respondent offered to sell the domain name in issue for Swiss Francs 7,000 in settlement of sums owing by the Respondent to Sun Cosmetics.

6.6.2 In other words, the current bad faith use of the domain name complained of is the locking out of the Complainant from using its own SUNMAXX trademark as a domain name and refusal to transfer it to the Complainant trademark owner unless certain debts owing to Sun Cosmetics are foregone. Further, the original registration could only have been made in good faith if, from the outset, the Respondent registered it on terms that it was held for the benefit of the Complainant and was to be used by the Respondent only for so long as the Respondent should continue to distribute the Complainant's SUNMAXX products in Denmark. This is not, however, consistent with the Respondent's refusal to transfer the domain name to the Complainant now that the Danish distributorship is at an end. Manifestly, registration of the domain name in issue could not have been made in good faith at the outset. Further, even after being put on notice of the Complainant's concerns on January 31, 2000, the Respondent renewed the registration on August 24, 2001.

6.6.3 The Respondent's Case

The Respondent's case is that:

· the Complainant's European Distributors, Sun Cosmetics authorized - with the ostensible authority of the Complainant - registration by the Respondent of the domain name in issue for the purpose of marketing the Complainant's SUNMAXX products in Denmark;

· the Respondent so used the domain name in issue to distribute SUNMAXX products online;

· the domain name was never registered with the intent of preventing the Complainant from reflecting the SUNMAXX trademark in a corresponding domain name;

· the Complainant and the Respondent are not competitors and the domain name was not registered by the Respondent to disrupt the Complainant's business; and

· there has been no attempt by the Respondent to attract for commercial gain Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of that website.

6.6.4 In other words, the Respondent contends that he can bring himself within each of the 4 circumstances set out in paragraph 4b of the Policy, so evidencing registration and use in good faith. The Respondent denies the allegation that he has attempted to sell the domain name in issue for Swiss Francs 7,000 in extinguishment of debts owing to Sun Cosmetics. The Respondent, however, admits that he:

"… tried to recover one-half of his expenses in establishing and maintaining the domain name from Complainant, in accordance with the 50% expense agreement made with Sun Cosmetics Becker KG (see attached Statement)."

6.6.5 The issues for Decision

As to registration in good faith, can one registration originally made in good faith subsequently become one made in bad faith? Put another way, if authority to register the domain name was given subject to certain terms and conditions, does subsequent breach of such conditions negative what would otherwise have been a bona fide registration?

6.6.6 Here, the Panel has held in relation to paragraph 4a(ii) of the Policy - rights or legitimate interests - that the Respondent's right to register and use a domain name incorporating the Complainant's SUNMAXX trademark was limited both temporally and in terms of the permissible use. Those were related to the period during which the Respondent should continue to distribute SUNMAXX products in Denmark. Indeed, the above quoted extract from the Respondent's Rejoinder indicates an understanding by the Respondent that registration and maintenance of the domain name was a marketing expense of his distribution arrangement for which he was entitled to be compensated 50% by Sun Cosmetics. How can the Respondent credibly suggest that his registration could be other than in good faith only for the duration of the SUNMAXX trading relationship? In the Panel's opinion, he cannot.

6.6.7 In the circumstances, the Panel finds that registration of a domain name can lose its bona fides if the registrant subsequently breaches one of the terms upon which he was authorized to register it. Here, that breach is the Respondent's continued holding of the domain name in issue beyond the temporal limit of his distributorship for Denmark, compounded by renewing that registration in August 2001, when he had been on notice of the Complainant's position since January 31, 2000.

6.6.8 The Respondent is, however, not using the domain name in issue. Indeed, Sun Cosmetics has a temporary website to which the domain name resolves [see paragraph 6.6.1 above]. Use in bad faith can be shown other than through the circumstances set out in paragraph 4b of the Policy [see WIPO Case No. D2000-0003 Telstra Corporation Ltd. .v. Nuclear Marshmallows]. The circumstances set out in paragraph 4b are illustrative only, they are without limitation.

6.6.9 Since the Respondent's Danish distributorship for SUNMAXX products has ceased - indeed, it came to an end in late 1999 / early 2000 - there can be no good faith reason for the Respondent to retain the domain name. The conditions under which this Panel holds that the Complainant's Distributor [Sun Cosmetics] authorized registration by the Respondent in the first place have been breached by the Respondent's refusal to transfer the domain name in issue to the trademark owner. If there is a dispute between the Respondent and Sun Cosmetics as to sums which Sun Cosmetics claims are owed to it by the Respondent and as to marketing expenses which the Respondent claims are due to it from Sun Cosmetics, this is a matter to be resolved in another forum. The Policy is not concerned with concepts such as set-off.

6.6.10 In the circumstances, the Panel finds that the domain name in issue was registered and is being used in bad faith by the Respondent and that, consequently, the Complainant succeeds in meeting the requirements of paragraph 4a(iii) of the Policy.

6.6.11 Exhortation to Parties and their Professional Advisers

The Rules provide that the parties are to be treated with equality and that each party is given an opportunity to present its case [Rules, paragraph 10(b)]. The Panel shall determine the admissibility, relevance, materiality and weight of the evidence [Rules, paragraph 10(d)]. Parties must offer credible evidence;

"A Panel is not required to blindly accept assertions offered by a Respondent any more than it is required to accept unsupported assertions by a Complainant. It is especially important under this procedure to test Respondent's assertions for evidentiary support and credibility, since normally the Complainant has no opportunity to counter the Respondent's assertions, whilst the Respondent does have the opportunity to counter those of the Complainant." [WIPO Case No. D2000-0624 Do the Hustle .v. Tropic Web]

6.6.12 Here both parties have been given a second bite at the cherry in the form of the Complainant's Reply of April 12, 2001 to the Response and the Respondent's Rejoinder of April 18, 2001. Even so, the Parties' representatives in this case could and should in the Panel's opinion have presented further and adequately documented submissions. The Center provides adequate guidance in this respect and, additionally, there is now a substantial quantity of Decisions under the Policy on the Center's website available for the assistance of parties and their professional advisers. It is for the benefit of both parties that the facts upon which a Complaint is based and answered should be out in adequate detail, with clarity and be properly evidenced by supporting documentation. Mere recitation of the circumstances set out in paragraphs 4b and 4c of the Policy with bald assertions that they are, or are not, met is not enough.

However, for the foregoing reasons set out in this Decision, the Panel decides that the Complainant has on balance proved each of the three elements of paragraph 4a of the Policy. Accordingly, the Panel directs that the registration of the domain name <sunmaxx.com> be transferred to the Complainant.

David Perkins
Sole Panelist