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Altenloh, Brinck & Co. GmbH & Co. KG v. Steve Cree [2005] GENDND 254 (9 March 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Altenloh, Brinck & Co. GmbH & Co. KG v. Steve Cree

Case No. D2005-0046

1. The Parties

The Complainant is Altenloh, Brinck & Co. GmbH & Co. KG, Ennepetal, Germany, represented by Patent und Rechtsanwälte Dr. Solf & Zapf, Germany.

The Respondent is Steve Cree, Birdhall Lane, Stockport, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <spaxscrews.com> is registered with Tucows.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 14, 2005. On January 14, 2005, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On January 14, 2005, Tucows 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 January 19, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was February 8, 2005. The Response was filed with the Center on February 4, 2005.

The Center appointed Peter G. Nitter as the sole panelist in this matter on February 23, 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

The Complainant was the first German company to start the industrial production of screws, dating back to 1823. Complainant is the owner of trademark registrations for SPAX throughout the world, in particular for screws. Complainant furthermore operates its own websites to promote its products and provide information regarding its business and its goods, and is the owner of domain names such as <spax.com> and <spax.de>.

Respondent has registered and used the domain name at issue.

5. Parties’ Contentions

A. Complainant

The contested domain name is confusingly similar to the Complainant’s SPAX trademark.

The domain name at issue incorporates the Complainant’s SPAX mark in its entirety. Leaving aside the generic “.com”, the addition of the suffix “screws”, solely describing the goods concerned, does not give any distinguishing feature to the contested domain name capable of distinguishing it from the registered mark SPAX. The dominant, most prominent part and solely distinctive element of the disputed domain name is its beginning, the incorporation of the registered mark of the Complainant. The further component “screws” contained in said domain name is the common word for the goods for which the Complainant has registered and intensively used its mark SPAX for decades.

Spax screws is the obvious general term for the end consumer and the trade when naming or referring to the Complainant’s SPAX screws. All in all, the further part of the contested domain name being solely descriptive for the goods in question, it does not serve as a characterising feature within the domain name, and it does not effect the dominance of the solely distinctive word, that is “spax”.

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

The Respondent is not a licensee of or affiliate of the Complainant. Neither is the Respondent otherwise authorised to use the Complainant’s mark as a domain name or as part of such. The disputed domain name resolved to a website advertising for announcing online to soon open business concerning Spax screws. However, advertising for and announcing to offer for sale even legitimate goods with the SPAX mark of the Complainant, does not give the Respondent a right in a registered domain name incorporating that mark.

There is a crucial distinction between a business using an unconnected registered mark to refer to or identify the original goods it advertises or offers for sale, and incorporating or using that unconnected trademark in a domain name. The former use identifies and indicates the origin of the goods advertised for or offered for sale, and would normally be legitimate. The latter would be legitimate if there is an affiliation, sponsorship or other legal connection between the website owner and the trademark owner. The fact that the Respondent’s website, or its business in general, advertises for, refers to or offers the Complainant’s branded goods for sale does not in itself give the Respondent a right legitimate interest in the domain name incorporating the Complainant’s mark.

Further, the Respondent was not known by the disputed domain name prior to registration of that name. This is confirmed by the contents of the Respondent’s answering letter to the Complainant of December 9, 2004.

No fair use doctrine thus applies to the use being made of the Complainant’s mark and domain by the Respondent.

The domain name at issue was registered and has been used in bad faith.

The incorporation of the Complainant’s trademark in the domain name, the use of the mark on the website and the website layout including the Complainant’s CI colour green and use of Complainant’s drawings, are all together calculated to create confusion or deception as to the existence of some connection by way of sponsorship, endorsement, sanction or control between the Complainant and the website to which the contested domain name resolved.

The Respondent uses the disputed domain name in a manner that is calculated to deceive consumers, and it can be inferred that the Respondent registered the contested domain name for this purpose. Nothing on the website to which the disputed domain name resolved dispels the false impression that there is some authorisation from the Complainant for this setting up and conduct of the website, or that the Respondent has been authorised to use the Complainant’s mark in the matter. Further, the Respondent has unquestionably been familiar with the Complainant’s mark and its high reputation with regard to screws, as well as the Complainant’s domain name <spax.com>.

Besides, in the Respondent’s registration agreement with the Registrar, the Respondent represented that, to the best of his knowledge and belief, neither the registration of the domain name nor the manner in which it is directly or indirectly to be used, infringes upon the legal rights of a third party. Contrary to that representation, the Respondent was well aware of the Complainant’s trademark SPAX and the Complainant’s domain names.

Further on, the Respondent response of December 9, 2004 clearly indicates that the disputed domain name was registered for the purpose of interfering with and disrupting the business of the Complainant by forcing the continuance of business relations.

B. Respondent

The Respondent has rights and legitimate interests in respect of the domain name at issue.

At the time of the registration of the disputed domain name, Respondent was acting legitimately in the best interests of the Complainant as an “approved stockist”, and Respondent’s site was built to promote legitimate sales for Complainant’s product, which it was fully entitled to do. The Complainant’s website is a technical site which promotes the quality and benefits of its products, but Complainant does not sell its products through this website. It is obviously necessary for Respondent to inform its customers that it is not merely offering screws, but rather the SPAX specialized product which commands a premium price. Other “approved stockists” use the SPAX logo and wording on their websites.

The domain name has not been registered or used in bad faith.

The Respondent has at no point acted in bad faith. The domain name was not registered or used under any of the circumstances set out in Paragraph 4(b) of the Policy, exemplifying bad faith registration or use. The contested domain name was registered for the sole purpose of selling the SPAX products purchased from Complainant, and the domain name at issue or the corresponding website could not in any way interfere or disrupt Complainant’s business.

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant’s trademark is not identical to the disputed domain name, and the question is therefore whether there is a confusing similarity between the two.

The domain name at issue incorporates in its entirety Complainant’s trademark SPAX. Complainant’s trademark is clearly the most distinctive part of the disputed domain name, and the addition of the generic term “screws”, which corresponds exactly to the type of products sold under the SPAX trademark, is to be regarded as a descriptive suffix which does not add anything to the trademark.

Previous panel decisions under the UDRP have concluded that generic top level domain denominators such as “.com” are irrelevant when determining whether a disputed domain name is confusingly similar to a protected trademark.

The Panel finds it likely that a majority of potential users of the Internet site corresponding to the domain name at issue will assume that the domain name is connected to an Internet website owned, controlled or endorsed by Complainant. The risk of such confusion is also increased by Respondent’s use of the SPAX mark, as well as similar layout to that of Complainant, on its website. The Panel thus finds that the disputed domain name is confusingly similar to Complainant’s trademark SPAX.

B. Rights or Legitimate Interests

As it is notoriously difficult for a complainant to disprove the negative that a respondent does not have any rights or legitimate interests in the domain name at issue, Panels have required a complainant to establish at the least a prima facie case under this heading and, if that is made out, an evidential onus shifts to the respondent to rebut the presumption of no rights or legitimate interests.

The Complainant relies on the facts that the Respondent is not any more one of its dealers, agents or representatives, and furthermore that Respondent has never been licensed or authorized to use the Complainant’s trademarks or to register or use the contested domain name. The Respondent on its side contends that it can legitimately use the domain name as an “approved stockist”.

It has not been asserted that the Respondent itself, apart from the prior relationship it had with the Complainant, has ever been commonly known by the disputed domain name.

In Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, Respondent was an authorized repair facility of Complainant, and had offered Complainant’s goods and services since prior to the commencement of the case. On this background, the Panel concludes that Respondent’s offerings is “bona fide”, after having discussed certain minimum requirements that must be met for the offerings to be characterized as “bona fide”. The requirements mentioned are that Respondent must actually be offering the goods or services at issue, and must use the site to sell only the trademarked goods. The site must furthermore accurately disclose the registrant’s relationship with the trademark owner, and Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.

Other previous decisions under the UDRP have ruled that reseller did not have any rights or legitimate interests in the registration of a domain name utilizing the manufacturer’s trademark.

In The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co. Inc., WIPO Case No. D2000-0113 the Panel stated that “even if Respondent is a retail seller of Complainant’s products, the collateral trademark use necessary to allow resell of Complainant’s products is not enough to give Respondent proprietary rights in Complainant’s trademarks, and certainly not enough to confer the right to use these trademarks as domain names. Many famous trademarks designate goods that are manufactured and sold through numerous retail stores. But this, without something more such as authorization in a licensing agreement or other special circumstances, does not give the retail sellers rights of domain name magnitude over the manufacturer’s trademarks.”

In Motorola, Inc. v. NewGate Internet, Inc., WIPO Case No. D2000-0079, the Panel stated that “the right to resell products does not create the right to use a mark more extensively than required to advertise and sell the product. The use of a mark as a domain name clearly goes further than what is required merely to resell products.”

In Allen-Edmonds Shoe Corporation v. Takin’ Care of Business, WIPO Case No. D2002-0799 the Panel stated that “Respondent’s use of Complainant’s trademark as a domain name is not reasonably necessary to allow resale of Complainant’s products by Respondent…[E]ven if Respondent is acting on behalf of an “authorized” dealer (indeed, even if Respondent were itself an authorized dealer), its use of Complainant’s mark would not be legitimate absent a specific agreement between Complainant and Respondent to the contrary.”

The Panel finds it evidenced that there is no relationship between Complainant and Respondent of such a kind that may give Respondent a right to use Complainant’s trade mark, as the case was in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. In the present case, Respondent asserts entitlement solely as a result of its role as an “approved stockist”, which it is clear that has now come to an end, and without any explicit authorization from Complainant. Respondent holds that the use of Complainant’s trademark and the disputed domain name is necessary in order to communicate to potential customers that it is offering Complainant’s products.

The Panel is furthermore of the opinion that Respondent’s use of the domain name consisting of Complainant’s trademark with the addition of the generic term describing the products sold under the trademark, is not reasonably necessary to allow resale of Complainant’s products. Absent a specific agreement granting Respondent further rights in and to Complainant’s trademark, Respondent’s use of Complainant’s trademark should be confined to identifying Complainant and its products, and should not include use of the trademark as part of a domain name or otherwise in such a way that confusion may be caused as to the connection by way of sponsorship, endorsement, sanction or control between the Complainant and the website to which the contested domain name resolves.

Hence, the Panel finds that Respondent’s proffered assertions cannot constitute rights or legitimate interests as these terms are understood in the Policy.

C. Registered and Used in Bad Faith

Based on the evidence brought before the Panel, the Panel concludes that Respondent previously has been an “approved stockist” for Complainant’s products sold under the SPAX trademark, but that this relationship is now terminated, and consequently, there is currently no agreements or affiliations between Complainant and Respondent. The Panel furthermore finds that neither the appointment as an “approved stockist”, nor any other agreement with Complainant has granted Respondent any specific right to use Complainant’s SPAX trademark.

It is clear that the Respondent had actual knowledge of the Complainant’s trademark rights when the Respondent registered and used the domain name at issue, and according to the Panel’s conclusion under section B above, such registration and use of the contested domain name took place even if Complainant had not granted any such right to Respondent.

As the domain name at issue consists only of Complainant’s trademark SPAX with the addition of the generic term describing the products sold under the trademark, the Panel finds that there is an imminent risk that the domain name create confusion or deception as to the existence of some connection by way of sponsorship, endorsement, sanction or control between the Complainant and Respondent. During the time Respondent’s website corresponding to the domain name at issue was operative, the use of Complainant’s mark and website layout, including the same green colour as used by Complainant, as well as the use of Complainant’s drawings, further increased the risk of confusion.

In these circumstances the Panel finds that the Respondent has registered and used the contested domain name in bad faith, as this term is understood in 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 name <spaxscrews.com> be transferred to the Complainant.

Peter G. Nitter
Sole Panelist

Dated: March 9, 2005