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Sociedad Española del Acumulador Tudor S.A.v. Asesoria Materiales Exportacion S.L. [2005] GENDND 1618 (19 September 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sociedad Española del Acumulador Tudor S.A. v. Asesoria Materiales Exportacion S.L.

Case No. D2005-0621

1. The Parties

The Complainant is Sociedad Española del Acumulador Tudor S.A., Madrid, Spain, represented by Katten Muchin Rosenman LLP, Washington, DC, United States of America.

The Respondent is Asesoria Materiales Exportacion S.L., c/o Alberto Sosa, Madrid, Spain, represented by Jose Luis Mataix, Gorraiz de Egües, Spain.

2. The Domain Names and Registrar

The disputed domain names <bateriastudor.com>, <batteriestudor.com> and <tudorbatteries.com> are registered with CORE Internet Council of Registrars.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2005. On June 16, 2005, the Center transmitted by email to CORE Internet Council of Registrars a request for registrar verification in connection with the domain names at issue. On June 16, 2005, CORE Internet Council of Registrars 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 July 1, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was July 21, 2005. The Response was filed with the Center on July 14, 2005.

The Center appointed Kiyoshi I. Tsuru as the Sole Panelist in this matter on August 2, 2005. 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

Complainant owns three MAGNUM TUDOR trademarks, registered in Spain on July 20, 1997; 47 TUDOR trademarks, the oldest ones of which were registered on February 23, 1979; they have been registered in Spain, Turkmenistan, Armenia, Chile, India, South Africa, Kazakhstan, Germany, Georgia and Ukraine; 17 various TUDOR (and design) or TUDOR (stylized) trademarks, the oldest of which was registered on June 26, 1978, said marks having been registered in Africa (OAPI), Georgia, Guatemala, Panama, El Salvador, Liberia, Latvia, Cuba, Romania, Portugal, Nicaragua, Cuba, Dominican Republic, Andorra, Estonia, Angola and Lithuania; one TUDOR MAGNUM trademark registered in Spain on April 20, 1997, one TUDOR MAXXIMA trademark registered in the European Community on July 3, 2000, and one TUDOR SUPPORT & NOMBRE trademark registered in Spain on July 6, 1987.

Complainant is the holder of one trademark application for TUDOR in India, filed on October 8, 1993.

The disputed domain name <bateriastudor.com> was registered on March 17, 2000.

The disputed domain name <batteriestudor.com> was registered on March 17, 2000.

The disputed domain name <tudorbatteries.com> was registered on March 13, 2000.

5. Parties’ Contentions

A. Complainant

Complainant was founded in 1897, and is a world famous and well known manufacturer and distributor of automotive batteries.

A.1. Identity or Confusing Similarity

The disputed domain names contain elements identical to and confusingly similar to Complainant’s trademarks: visually, because said domain names contain the entire word ‘tudor’; phonetically, because the speaker has no alternative but to say ‘tudor’ as part of the entire pronunciation; the disputed domain names have the same commercial meaning and source identification to the public as Complainant’s trademarks; they are used with a website that passes itself off as an official website of Complainant.

A former business partner of Complainant has already been mislead as to the origin of the websites to which the disputed domain names resolve.

A.2. Respondent’s lack of rights or legitimate interests in respect of the domain names

Respondent is not related to Complainant and has not received any license, permission or consent to use or own Complainant’s trademarks. Complainant submits a denial and revocation of Respondent’s allegations of any such permission.

Complainant’s extensive worldwide use and trademark registrations precede by over 100 years the registration dates of the disputed domain names.

Respondent is not commonly known by the name ‘Tudor’ or any variation thereof.

A.3. Bad faith registration and use

The disputed domain names actively use the TUDOR trademarks in connection with batteries. Respondent blatantly and prominently displays at Respondent’s website Complainant’s TUDOR trademark and even uses a false and misleading copyright notice of “© 2004 Tudor Batteries”—making it impossible for a consumer to believe anything other than that it is the official site of the Complainant.

Respondent is specifically trading on the TUDOR trademarks, has an illegal and harmful intent and purpose and “unclean hands”.

Respondent has constructive and actual prior knowledge of Complainant’s prior rights in the TUDOR trademarks, and nevertheless willfully proceeded to register and use the disputed domain names, hoping to profit from the TUDOR trademarks’ valuable reputation.

Registration and subsequent use was done deliberately to attract the public and divert Internet traffic away from Complainant’s official website with the confusingly similar disputed domain names, with the intent of causing public confusion, mistake and deception as to the source, origin and affiliation of the disputed domain names.

Registration and use of the disputed domain names was deliberately designed and calculated to trade on and misappropriate the enormous monetary value, reputation, notoriety, fame and goodwill in Complainant’s trademarks. Respondent has capitalized on the high consumer demand for Complainant’s TUDOR brand, and on the high-quality reputation and goodwill associated with the TUDOR trademarks.

Respondent’s intentional registration of the disputed domain names has deprived Complainant of its right to determine and decide with whom Complainant and its trademarks shall be connected and associated.

Respondent’s registration and use of the disputed domain names was done with the blatant and deliberate intent to trade on and procure the goodwill, fame, renown, reputation, worldwide notoriety and advertising expenditures of Complainant as related to its trademarks.

Bad faith is further demonstrated by Respondent’s false contact information.

Respondent registered, acquired and uses the disputed domain names primarily to sell batteries and related products under the TUDOR trademarks, to confuse the public, and/or to sell, rent or otherwise transfer the disputed domain name registrations to Complainant or to a competitor of Complainant, for valuable consideration in excess of the out-of-pocket costs directly related to the domain names.

Respondent has registered and used the disputed domain names in order to prevent the true owner of the trademark TUDOR from reflecting said mark in a corresponding domain name.

Respondent registered and uses the disputed domain names primarily for the purpose of disrupting the business of Complainant.

Respondent has intentionally attempted to use the disputed domain names to divert and attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the TUDOR trademarks as to the source, sponsorship, affiliation, association or endorsement of Respondent’s website.

B. Respondent

Mr. José Luis Mataix (Mr. Mataix) submits that he is the legal representative of Respondent.

Mr. Mataix claims to have signed two distributorship agreements with Complainant in 1993 (one for the market of Morocco and one for the market of Tunisia), and submits copies of the relevant agreements. This Panel notes that said agreements relate to the sales of products under the trademark TS.

Respondent submits a contract signed by Complainant and Indimaco, another company represented by Mr. Mataix, in 1994, by means of which Complainant appoints Indimaco as its agent in the territories of Morocco, Ceuta and Melilla with regard to products bearing the trademark TS.

Respondent submits some letters of credit and invoices from the years 1999 and 2000, showing sales of products made by Respondent, regarding Complainant’s products.

Mr. Mataix claims to have been invited by Complainant in 1997 to Complainant’s Centennial ceremony.

Respondent claims that Complainant authorized Respondent to register the disputed domain names in February 2000, and submits some invoices issued by Ferca Network to Respondent, as well as an Affidavit executed on July 13, 2005, by Mr. Mataix, stating said affirmation.

B.1. Identity or Confusing Similarity

The phrases ‘tudorbatteries’, ‘bateriastudor’ and ‘batteriestudor’, given the additional words ‘batteries’, ‘baterias’ and ‘batteries’ do not automatically invoke the same level of similarity with Complainant’s TUDOR trademarks, neither visually nor phonetically. The additional words lessen connection to the strong mark TUDOR. It is highly improbable that the average consumer or Internet user would automatically equate ‘tudorbatteries’, ‘bateriastudor’ and ‘batteriestudor’ with the TUDOR trademark (and cites Koninklikje Philips Electronics N.V. v. Manageware, WIPO Case No. D2001-0796.

B.2. Respondent’s rights or legitimate interests in respect of the domain names

Respondent claims to have been authorized by Complainant to register the disputed domain names.

Respondent was expressly given consent to offer in good faith batteries manufactured byTudor S.A.; the target of the disputed domain names and associated website was to offer in good faith batteries manufactured by Tudor; that was the reason to choose the names ‘tudorbatteries’, ‘bateriastudor’ and ‘batteriestudor’.

B.3. Bad faith registration and use

Registration of the disputed domain names has not prevented Complainant from having access to cyberspace. Complainant has its own domain name and associated website at “www.tudor.es”. It is exceedingly unlikely that any user seeking to find Complainant’s website at “www.tudor.es” would enter through said disputed domain names.

Respondent was backed by Complainant, which gave consent for the registration of the disputed domain names.

Before the filing of the present Complaint, Respondent had been using the disputed domain names relating to a bona fide offer of products and services.

The orders received by Respondent on the website associated with the disputed domain names have always been sent to Complainant.

Through the use of the disputed domain names, Respondent has not diverted Internet traffic away from Complainant’s official website, because it is exceedingly unlikely that any user seeking to find Complainant’s website at “www.tudor.es” would enter through the disputed domain names. Respondent’s website to which the disputed domain names resolve offers Complainant’s batteries and it does not offer contents, nor is it related to the trademark TUDOR. Complainant backed the construction of said website to offer its batteries in good faith.

The registration and use of the disputed domain names was not designed or calculated to trade on or misappropriate the enormous monetary value of the TUDOR trademarks nor to unjustly enrich Respondent by enabling it to unfairly obtain the benefits and advantages of Complainant’s own use. The Respondent has not capitalized on the high consumer demand for Complainant’s TUDOR brand. All orders and consultations received on Respondent’s website were delivered to Complainant.

Respondent denies that it has provided false contact information. Moreover, Complainant can locate Respondent in Spain, since Complainant and Respondent have been executing commercial operations together for some time now. Respondent and Mr. Mataix have had a close relationship with Complainant for over ten years. Complainant knows the address of Respondent, has issued invoices to and receives payments from Respondent.

Registration of the disputed domain names and the construction of Respondent’s website have always had one target only: to offer in good faith batteries produced by Complainant.

6. Discussion and Findings

In accordance with the Policy, paragraph 4(a), the Complainant must prove that:

(i) the domain names in question are 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 of the domain names, and

(iii) the domain names have been registered and are being used in bad faith.

In the administrative proceeding, the Complainant must prove that each of these three elements are present.

A. Identical or Confusingly Similar

Complainant has submitted evidence showing that it holds approximately 70 trademark registrations consisting of, or comprising the word TUDOR. Particularly, Complainant owns at least 47 TUDOR trademark registrations, the oldest of which dates back to the year 1979.

The TUDOR trademark has been used in commerce for over 100 years by Complainant.

The disputed domain names <bateriastudor.com>, <batteriestudor.com> and <tudorbatteries.com> entirely incorporate Complainant’s trademark TUDOR. The mere addition of the generic term ‘batteries’ in English, Spanish and French, i.e. ‘batteries’, ‘baterias’ and ‘batteries’does not per se render the said disputed domain names distinctive, when compared to such trademark, especially considering precisely that the said trademark distinguishes batteries. See, mutatis mutandis, Quixtar Investments, Inc. v. Smithberger and Quixtar-IBO, WIPO Case No. D2000-0138; GA Modefine S.A. v. Mark O’Flynn, WIPO Case No. D2000-1424. See also PepsiCo, Inc. v. Diabetes Home Care, Inc. and DHC Services, WIPO Case No. D2001-0174; Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Kil Inja, Caso WIPO Case No. D2000-1409 and America Online, Inc. v. Chris Hoffman, WIPO Case No. D2001-1184.

To carry into effect the similarity analysis, a panel must not take into account the generic top-level domain (gTLD) “.com”, because such gTLD has no legal significance. See Ahmanson Land Company v. Vince Curtis, WIPO Case No. D2000-0859, (citing in turn Monty and Pat Roberts, Inc. v. J. Bartell, WIPO Case No. D2000-0300, J.P. Morgan & Co., Incorporated and Morgan Guaranty Trust Company of New York v. Resource Marketing, WIPO Case No. D2000-0035; see also Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 and Sony Kabushiki Kaisha v. Inja, Kil, WIPO Case No. D2000-1409).

In view of the above, this Panel concludes that the disputed domain names <bateriastudor.com>, <batteriestudor.com> and <tudorbatteries.com> are confusingly similar to Complainant’s trademark TUDOR. The first requirement of the Policy has thus been proved by Complainant.

B. Rights or Legitimate Interests

The following are examples of circumstances where a respondent may have rights or legitimate interests in a contested domain name:

“(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.” (Policy, paragraph 4(c)).

Before Respondent was incorporated, Mr. Mataix, Respondent’s alleged representative claims to have signed two distributorship agreements with Complainant in 1993. In 1994, Indimaco, another company allegedly represented by Mr. Mataix entered into a distributorship agreement with Complainant. All three contracts expressly relate to the trademark TS, not to the trademark TUDOR. All three agreements were executed by persons other than the Respondent in this case, i.e. Asesoría Materiales Exportacion S.L.

Respondent has not submitted any evidence showing that Respondent and Complainant have entered into a similar distributorship agreement.

Complainant argues that Respondent is not related to Complainant and has not received any license, permission or consent to use or own Complainant’s trademarks. Complainant furthermore provides evidence that it has formally notified Respondent of this fact. The evidence on record confirms this affirmation: there is no piece of evidence showing that Complainant has granted Asesoría Materiales Exportacion S.L. any license, grant or authorization to use the trademark TUDOR.

Regarding the issue of whether a distributorship agreement allows a distributor to register a domain name comprising the principal’s trademark, this Panel concurs with the Panel that ruled in Omyacolor S.A. v. Recep Tanisman - Emko Emaye A.S., WIPO Case No. D2005-0520, in that “a distributor may not register a domain name identical to the principal’s trademark, unless the principal has given his explicit prior consent”.

Respondent has submitted an Affidavit stating that Complainant verbally authorized Respondent to register the disputed domain names, and that Complainant was pleased with Respondent’s registration. Complainant has contested Respondent’s declaration. Neither party has provided evidence showing that Complainant actually granted Respondent said authorization. In the absence of any instrument showing that the supposed oral agreement existed (contrary to other agreements, like the three distributorship agreements which were duly executed in writing), the Respondent cannot be said to have proven his allegation.

There seems to be no doubt that Respondent and its representative, Mr. Mataix sell TUDOR batteries.

The issue before us is whether Respondent has any rights or legitimate interests in the disputed domain names.

Let us depart from paragraph 4(c)(iii) of the Policy, because Respondent is making a commercial use of the disputed domain names (by placing batteries on the market), with intent for commercial gain. In conformity with the analysis set forth hereinbelow, this Panel believes that Respondent is misleadingly diverting customers from Complainant to Respondent’s website to which the disputed domain names resolve.

Having done that, let us analyze the remaining two scenarios: According to the evidence submitted by the parties, it is clear that prior to the filing of this Complaint, Respondent was using the disputed domain names in connection with the offering of batteries. The question is whether such offering was made in good faith. Being aware of “the enormous monetary value of the TUDOR trademarks”, as well as the fact that Complainant holds exclusive rights over said marks, and the fact that Complainant sells its products online by means of its domain name <tudor.es>, should have told Respondent that registering the domain names <bateriastudor.com>, <batteriestudor.com> and <tudorbatteries.com> on its own behalf could create some confusion among the consuming public.

Respondent can certainly make a nominative fair use of the trademark TUDOR when selling TUDOR batteries, but does it constitute nominative fair use to make Respondent’s website resolve to domain names that do not necessarily reflect the name of Respondent, i.e. Asesoria Materiales Exportacion or ASEMA S.L.

The following quote from Canon Kabushiki Kaisha v. Price-Less Inkjet Cartridge Company, WIPO Case No. D2000-0878 is applicable to the present case, mutatis mutandis:

“Accordingly, although the offering of replacement inkjet cartridges is a lawful and legitimate business, the use of these three disputed domain names as the initial contact points and web page banners deprives that business of the character of being bona fide, within the meaning of paragraph 4(c)(i) of the Policy.”

Moreover, the record shows that Respondent is involved in passing off activities, considering that Respondent’s website looks as if it was Complainant’s: Respondent’s homepage reads: “Welcome to the TUDOR BATTERIES Website.” The TUDOR brand is conspicuously displayed with no notice or disclaimer stating that said site is run and belongs to Asesoria Materiales Exportacion or ASEMA S.L. More importantly, the different pages that comprise the site contain a notice stating: ©2002 Tudor Batteries –All Rights Reserved. Based on this evidence, the Panel arrives at the conclusion that Respondent is trying to create the impression that Respondent’s website is actually Complainant’s. This cannot constitute a bona fide offering of goods or services. This lack of an accurate disclosure of the Respondent’s relationship with the Complainant would, by the way, lead to the same finding if the Oki-Data test were to be applied, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 2.3.

Finally, the evidence filed in connection with this case does not show that Respondent is commonly known by the names Tudorbatteries, Batteriestudor or Bateriastudor.

Therefore, this Panel finds no rights or legitimate interests on the side of Respondent, regarding the disputed domain names. The second element of the Policy has been fulfilled.

C. Registered and Used in Bad Faith

According to paragraph 4(b) of the Policy, the following circumstances shall be evidence of registration and use in bad faith:

“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

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

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”

The evidence filed with regard to this proceeding shows that Respondent has intended to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of said site.

Respondent has chosen to register and use three domain names that fully incorporate Complainant’s trademarks and link them to a website that states “Welcome to the TUDOR BATTERIES Website”, and on which site Complainant’s mark TUDOR is conspicuously displayed with no disclaimer as to the source, sponsorship, affiliation, or Complainant’s endorsement of said site (or absence thereof). Respondent proactively decided to include a copyright notice allegedly placed by Complainant, allegedly claiming Complainant’s rights to Respondent’s website contents. Complainant has not stated in this proceeding that it has authorized Respondent to do so. Respondent has not submitted evidence showing proof of such authorization. It seems that Respondent is trying to mislead Internet users who find Respondent’s website through the disputed domain names, by creating a likelihood of confusion with Complainant and its marks.

This Panel believes that the following legal reasoning from a previous panel is applicable to the case at hand, mutatis mutandis:

“The similarities between ‘Guerlain’ and the Domain Name [<buyguerlain.com>] cannot result from a mere coincidence. While Respondent could have chosen a million of other names for his company and his online store, he precisely chose a domain name incorporating Complainant’s name so as to be identical or at least extremely confusingly similar to Complainant’s trademark. By knowingly choosing a domain name consisting of Complainant’s trademark preceded by the verb ‘to buy’, Respondent intentionally created a situation which is at odds with the legal rights and obligations of the parties.” Guerlain S.A. v. HI Investments, WIPO Case No. D2000-0494.

Considering the above facts, this Panel finds that Complainant has met its burden under paragraph 4(a)(iiiv) of the Policy.

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 names <bateriastudor.com>, <batteriestudor.com> and <tudorbatteries.com> be transferred to the Complainant.

Kiyoshi I. Tsuru
Sole Panelist

Dated: September 19, 2005