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Salton Europe Limited v. Jeffrey Chen [2005] GENDND 1773 (20 October 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Salton Europe Limited v. Jeffrey Chen

Case No. D2005-0638

1. The Parties

The Complainant is Salton Europe Limited, Manchester, United Kingdom of Great Britain and Northern Ireland, represented by Eversheds Solicitors, Manchester, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Jeffrey Chen, Taipei, Taiwan, Province of China.

2. The Domain Name and Registrar

The disputed domain name <esaltoneurope.com> is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 17, 2005. On June 21, 2005, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain name at issue. On June 21, 2005, Go Daddy Software, which is a related company to Wild West Domains, Inc., 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 and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 13, 2005. 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 22, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was August 11, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 18, 2005. On September 9, 2005, the Center renotified the Complaint to the Respondent as the result of a missing e-mail address in the original notification. The Respondent did not submit any response to the further notification.

The Center appointed Dr. Vinod K. Agarwal as the sole panelist in this matter on October 12, 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

From the Complaint and the various annexures to it, the Panel has found the following facts:

Complainant’s activities

The Complainant is a designer and distributor of kitchen appliances and personal care products. The Complainant has been selling some of these products under the brand names RUSSELL HOBBS, CARMEN, GEORGE, FOREMAN and TOWER.

The Complainant was initially known as Pifco Limited. It has been using the name SALTON since 1947. In 1988, Salton Inc. was founded in the United States of America. In 2001, Salton Inc. of the United States acquired Pifco Limited of the United Kingdom. Thus, as a result of acquisition, in October 2001, Pifco Limited of the United Kingdom changed its name to Salton Europe Limited and the trading activities were carried on in the name of Salton Europe. The SALTON brand name has been used worldwide in relation to kitchen appliances.

The Complainant also operates a website under the domain name <saltoneurope.com>. The Complainant registered this domain name on July 30, 2001. The said website contained information about the branded products of the Complainant, together with links to information about its holding company, Salton Inc.

Respondent’s identity and activities

The Respondent did not reply to the Complainant’s contentions. Hence, the Respondent’s activities are not known.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in this case. These elements are as follows:

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

(ii) The Respondent has no right or legitimate interests in respect of the domain name; and

(ii) The domain name has been registered and is being used in bad faith.

In relation to element (i), the Complainant contends that with effect from May 18, 1992, it is the registered proprietor of the mark SALTON in the United Kingdom (No. 1434386) in respect of Class 09 goods; that is, hair curling and hair setting appliances and apparatus, kettles, flat irons, soldering irons, switches, sockets, adapters, leads and batteries, vacuum cleaners, optical magnifiers and reading glasses, etc.

Similarly, the Complainant is also the registered owner of trademark name SALTON with effect from November 29, 1999, in the United Kingdom (No. 000294967) in respect of goods covered by Class 07 (including electric kitchen machines and electrical appliances), Class 09 (including electric flat irons) and Class 11 (including electric kettles). (Nice Classification).

In view of the aforesaid, it is submitted that the domain name of the Respondent is identical or confusingly similar to a trademark in which the Complainant has rights.

The Complainant further contends that the disputed domain name <esaltoneurope.com> was registered by it in November 2002. Complainant was the registered owner of the domain name <esaltoneurope.com> until January 2005. The Complainant carried out sales of various products through this domain name online. The renewal date was inadvertently missed by the Complainant. It is stated that the person with responsibility for domain names left the Complainant’s group, and as a result, the renewal date was missed. The Respondent registered the disputed domain name on February 18, 2005.

In relation to element (ii), the Complainant contends that the Respondent (as an individual, business, or other organization) has not been commonly known by the domain name <esaltoneurope.com> as the Respondent is known as “Jeffery Chen”. The domain name <esaltoneurope.com> is not a descriptive word in which the Respondent may have a genuine interest. The Respondent is making no use of the domain name in connection with a bona fide offering of goods or services. Furthermore, the Respondent is not making a legitimate non-commercial or fair use of the said domain name. The Respondent registered the domain name for the sole purpose of misleading and misdirecting the public.

Regarding the element at (iii), the Complainant contends that the main purpose for registering the domain name <esaltoneurope.com> by the Respondent was to sell it to the Complainant or to mislead the general public.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel as to the principles the Panel is to use in rendering its decision. It says that, “A panelist shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

According to paragraph 4(a) of the Policy, the Complainant must prove that:

(i) The domain name 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 of the domain name; and

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

A. Identical or Confusingly Similar

The present dispute pertains to the domain name <esaltoneurope.com>. The Complainant is the registered owner of the trademark SALTON in the United Kingdom. The full name of the Complainant is Salton Europe Limited and the Complainant is known by that name worldwide. The said trademark SALTON has been used in the domain name of the Respondent with a very minor variation. The two names, “saltoneurope” as used in the domain name and Salton Europe, the corporate and trading name of the Complainant are almost identical and confusingly similar in appearance and pronunciation. In the disputed domain name, only the letter ‘e’ has been added at the beginning by the Respondent. It has been held by panels in the past UDRP cases that the addition, deletion or change of one word or letter from the trademark of a complainant will not alter the nature of the domain name. In Estee Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869, the panel compared the respondent’s domain name <estelauder.com> with the complainant’s trademark ESTEE LAUDER and came to the conclusion that the absence of one “e” was the only difference and concluded that the respondent’s domain name is “confusingly similar to the Complainant’s mark”. Similar conclusions have been arrived at by the panels in the cases of Pharmacia & Upjohn AB v. Dario H. Romero, WIPO Case No. D2000-1273 (PHARMACIA and <pharmaciae.com>) and Briefing.com Inc. v. Cost Net Domain Manager, WIPO Case No. D2001-0970. Thus, the Panel finds that the domain name is confusingly similar to the registered trademark of the Complainant.

B. Rights or Legitimate Interests

According to paragraph 4(c) of the Policy, the Respondent may demonstrate its rights to or legitimate interests in the domain name by proving any of the following circumstances:

(i) before any notice to the Respondent of the dispute, the Respondent’s 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) the Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate non-commercial 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 Respondent has not filed any response in this case. There is no evidence to suggest that the Respondent has become known by the disputed domain name in Taiwan or anywhere in the world. Based on the evidence in the Complaint, it is presumed that the above circumstances do not exist in this case and that the Respondent has no rights or legitimate interests in the disputed domain name. See also Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse, WIPO Case No. D2000-1221. SALTON is the registered trademark of the Complainant. It is evident that the Respondent can have no legitimate interest in the domain name. Further, in view of the fact that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for or use a domain name incorporating said trademark and that nobody would use the words “salton” and “europe” together unless seeking to create an impression of an association with the Complainant, the Panel finds that the Respondent has no rights or legitimate interests in the domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of the domain name in bad faith:

(i) Circumstances indicating that the Respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or

(ii) The Respondent has 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 it has engaged in a pattern of such conduct; or

(iii) The Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) By using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, internet users to its web site 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 the Respondent’s web site or location or of a product or service on its web site or location.

The contention of the Complainant is that the present case is covered by the fourth circumstance. The Complainant was the registered owner of the disputed domain name until January 2005. Due to inadvertence, the Complainant forgot to renew the registration. Immediately upon the expiry of the Complainant’s registration, on February 18, 2005, the Respondent registered the said disputed domain name. It is contended by the Complainant that the only reasons for the Respondent to select and use the domain name <esaltoneurope.com> is to increase traffic to the Respondent’s website at “www.webooks.com” by taking advantage of the Complainant’s goodwill and reputation in its SALTON mark. In this way, the Respondent is not making a legitimate or fair use of the disputed domain name. In support of its contentions, the Complainant has also relied on the case of Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing & Logistics Corp., WIPO Case No. D2000-0464.

This and other information submitted by the Complainant leads to the presumption that the said domain name was registered and used by the Respondent in bad faith. The Panel agrees with the said contention of the Complainant and concludes that the registration of the said domain name amounts to the registration and use of the domain name in “bad faith”.

7. Decision

In light of the forgoing findings, namely, that the domain name is confusingly similar to a trademark or service mark in which the Complainant has rights; that the Respondent has no rights or legitimate interests in respect of the domain name; and that the domain name was registered in bad faith and is being used in bad faith, the Panel directs that the domain name <esaltoneurope.com> be transferred to the Complainant.

Vinod. K. Agarwal
Sole Panelist

Dated: October 20, 2005