Home | Databases | WorldLII | Search | Feedback Generic Top Level Domain Name (gTLD) Decisions

Société des Produits Nestlé SA v. Myongjin Kim [2005] GENDND 602 (8 July 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Mr. Gulberg Singh Panesar v. Panrix Electronix Limited/PC Ideas Limited

Case No. D2005-0402

1. The Parties

The Complainant is Mr. Gulberg Singh Panesar, Leeds, United Kingdom of Great Britain and Northern Ireland, represented by L. J. Bray & Co., United Kingdom of Great Britain and Northern Ireland.

The Respondent is Panrix Electronix Limited/PC Ideas Limited, Leeds, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <panrix.com> is registered with Melbourne IT trading as Internet Name Worldwide.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2005. On April 15, 2005, the Center transmitted by email to Melbourne IT trading as Internet Name Worldwide a request for registrar verification in connection with the domain name at issue. On April 20, 2005, Melbourne IT, trading as Internet Name Worldwide, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 28, 2005. The Center verified that the Complaint together with the amendment to 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 May 11, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 31, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 7, 2005.

The Center appointed Ian Blackshaw as the sole panelist in this matter on June 17, 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 is a retailer of computer equipment, software and services and carries on business in the name of Panrix Computers. And is the owner of the trademark PANRIX.

The trademark has been registered with the Trademarks Registry of the British Patent Office under the UK Trademarks Act 1994, in the name of the Complainant in Class 9 in respect of computer systems and parts and fittings under No 2,016,119 since March 17, 1995. A copy of the corresponding registration certificate has been provided to the Panel.

Further, a large number of suppliers and consumers of computer equipment and services in the UK associate the trademark with the Complainant and none other by reason of the following facts:

(a) The trademark is composed of the first 3 letters of the Complainant’s family name and the diminutive of the first name of his son Ricky;

(b) The Complainant has carried on business as a retailer of computer equipment and services under the trademark continuously since 1990.

According to the concerned registrar, the disputed domain name is held by Panrix Electronix Limited of 82, Otley Road, Headingley, Leeds, UK (“the registered address”), but that record is wrong. Entries kept by the Registrar of Companies for England and Wales (the person responsible for incorporating limited companies in England and Wales under the Companies Act 1985, commonly referred to as “Companies House”) show that a private limited company called Panrix Electronix Limited (“Electronix”) was incorporated on September 11, 1991, under company number 02644943; that it was wound up on October 18, 2002; and that it is now in liquidation, which means that it no longer exists. Electronix never traded from the registered address. That address is one of the places where the Respondent carries on business the Respondent appears to have paid an undisclosed sum to Wilson Pitts who were liquidators (responsible for calling in and realizing the assets of an insolvent and distributing the proceeds to its creditors) of another company in liquidation called Panrix Technology Limited (“Technology”) for whatever rights they could assign in respect of the disputed domain name on or about June 18 2002. The Respondent registered the disputed domain name in Electronix’s name rather than its own (or even Technology’s) on January 25, 2003. The Respondent is, and at all material times has been, a private company incorporated under the Companies Act 1985, under company number 03474429 on December 2, 1997.

Electronix was at all material times a joint venture between the Complainant and his brother, who were its directors and shareholders. The Complainant permitted Electronix and Technology to trade under the trademark under gratuitous, non-exclusive and revocable licenses thereby indicating to consumers his connection with that company.

The Complainant started to trade under the trademark as a sole trader in 1990, and continues to do so as such. And uses, has throughout that time, both on his own account and as licensor of companies of which he was a director and shareholder, continuously used the trademark on:

- business stationery (samples of which have been provided to the Panel);

- press and magazine advertisements (samples of which have been provided to the Panel);

- products such as computer casing, keyboards, mouse mats and packaging (photographs of which have been provided to the Panel);

- websites (pages of which have been downloaded from the Complainant’s current site at “www.panrix.co.uk” and also from archives of Electronix’s site at “www.panrix.com” before the sale by the liquidator, copies of all the same have been provided to the Panel); and

- fascia boards at the trade counters of the Complainant’s business premises (a photograph of which has been provided to the Panel).

Products supplied by the Complainant or by his licensees have won many awards in the computer press ever since he commenced trading in 1990, copies of corresponding certificates have been provided to the Panel.

Annual receipts for the supply of computer equipment and services under the trademark exceeded GBP1 million in the Complainant’s first year of trading and peaked at GBP8,502,201 in the year ended September 30, 2000. Average annual expenditure on advertising exceeded GBP250,000 before the administration of Electronix. Copies of the corresponding reports and accounts of Electronix for the period ended February 28, 2001, showing sales of GBP8,502,201 for the 12 months ended September 30, 2000 and advertising and exhibition costs for the same period, have been provided to the Panel.

5. Parties’ Contentions

A. Complainant

The Complainant contends as follows:

1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), (b)(ix)(1))

The domain name at issue <panrix.com> is confusingly similar and almost identical to the PANRIX trademark.

The Complainant has “rights” in the trademark PANRIX (“the trademark”) in the UK within the meaning of paragraph 4(a)(i) of the Policy, pursuant to the Trademarks Act 1994 (the principal trademarks legislation for the UK) and under the Common Law of England and Wales. For the purpose of this proceeding, the expression “the trademark” refers to the sign PANRIX as used as a registered trademark, a trade name identifying the Complainant’s business, and as a sign distinguishing goods and services emanating directly or indirectly from the Complainant from those of all other undertakings, and not just to the registered trademark that is mentioned below.

The trademark has been registered with the Trademarks Registry of the British Patent Office as a registered trademark under the provisions of the Trademarks Act 1994, of the United Kingdom in the name of the Complainant for Class 9 in respect of computer systems and parts and fittings for the aforesaid under No 2,016,119 since March 17, 1995.

Section 9(1) of the Trademarks Act 1994, confers upon the Complainant exclusive rights in the trademark. These are infringed by use of the trademark in the UK without his consent. Section 10(4) (d) of that Act further provides that “use” of a sign includes its use in advertising. Extracts from the relevant parts of sections 9 and 10 of the Act have been provided to the Panel.

The Common Law of England and Wales confers a right of action upon a supplier, whose goods or services are recognized by consumers or the trade by reference to a trademark or other sign, against anyone who uses the same or confusingly similar mark or sign to misrepresent a connection with such supplier. The principle is summarized in the passage from the speech of Lord Oliver of Aylmerton in Reckitt & Colman Products Ltd. v Borden Inc [1990] 1 WLR 491 contained in the second paragraph on page 499. A copy of this passage, together with pages 491 & 492 of the report of this judgement, has been provided to the Panel.

Save for the suffix “.com”, the disputed domain name is identical to the trademark.

Therefore, the first element of paragraph 4(a) of the Policy is satisfied.

2. The Respondent has no rights or legitimate interests in respect of the domain name;

(Policy, paragraph 4(a)(ii), Rules, paragraph 3(b)(ix)(2))

The Respondent is incorporated in the name of PC Ideas Limited and the Panel has been provided with a copy of the corresponding details as they appear at Companies House.

The Respondent trades under the sign PC Ideas as the home page of its website at “www.pcideas.co.uk” and a list of outlets show, copies of which have also been provided to the Panel.

The Respondent has never been known by, nor traded under, any other name.

Save for its use of the disputed domain name, the Respondent has made no use of the trademark.

Even on the website located by the disputed domain name, the Respondent’s corporate name appears in the top left had corner as a copy of the home page downloaded on April 11, 2005, shows. Again, a copy has been provided to the Panel.

By virtue of the facts and matters mentioned or referred to above, the registration and use of the disputed domain name requires, and at all material times has required, the Complainant’s consent.

The Complainant consented to:

(a) the registration of the disputed domain name on February 20, 1997;

(b) use of the disputed domain name by Electronix until its winding up on October 18, 2001; and

(c) use of the disputed domain name by Technology between its incorporation on March 16, 2001, and winding up on June 5, 2002,

but contends that such consent was gratuitous, non-exclusive and revocable at will or, alternatively, upon reasonable notice.

Furthermore, the Complainant’s consent to Electronix lapsed when Electronix ceased to carry on business and his consent to Technology ended when that company was wound up.

Nothing obliges, or has ever obliged, the Complainant to assign, or grant a license under, the trademark, to technology’s liquidators, or to anyone acquiring assets of Electronix or Technology through those liquidators and he has never done so.

In Hesco Bastion Limited v. The Trading Force Limited, WIPO Case No. D2002-1038, it was held that a liquidator can acquire no better title to a domain name acquired from an insolvent licensee than the title that the licensee had previously enjoyed. Therefore, the Respondent acquired no right or legitimate interest in respect of the disputed domain name from Electronix’s or Technology’s liquidators because those liquidators were never entitled to sell such right or interest.

Accordingly, the second element of paragraph 4(a) of the Policy is satisfied.

3. The domain name was registered and is being used in bad faith;

(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))

It is clear from the language of the Policy, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions and decisions in previous administrative proceedings that the verb “registered” can refer to registration after acquisition, as well as registration upon creation, of a domain name:

(a) the above proposition is implied by the provision that one of the circumstances evidencing the registration of a domain name in bad faith includes circumstances indicating that a respondent has registered or has acquired a domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to a complainant (paragraph 4(b)(i) of the Policy);

(b) it is bolstered by paragraph 3.7 of the WIPO Panel Views, which reports that it is the consensus view that “the transfer of a domain name to a third party does amount to a new registration” for the purposes of paragraph 4(a)(iii) of the Policy; and

(c) it is further supported by a number of decisions in administrative proceedings, one of which is the decision in Motorola, Inc. v. NewGate Internet, Inc., WIPO Case No. D2000-0079, where a subsequent acquisition by a respondent has been held to constitute registration.

The Complainant relies on the following as evidence of registration in bad faith:

(a) the Respondent’s registration of the disputed domain name in the name of a company that had been in liquidation since August 26, 2002, rather than its own name, or even that of the company from whose liquidators it claims to have bought that domain name, thereby giving the impression that the Respondent had acquired, been acquired by, was somehow associated with Electronix or had otherwise been licensed by the Complainant;

(b) the Respondent’s knowledge, or reason to believe, that it needed the Complainant’s consent to use the domain name by reason of the facts and matters mentioned or referred to above;

(c) the Respondent’s knowledge that it lacked such consent; and

(d) the misrepresentation of an association with the Complainant, or alternatively Electronix, by the words “pannrix.com in association with pcideas ltd” on the homepage of the web site at “www.panrix.com”.

The Complainant relies on the following as further evidence of use in bad faith:

(a) the facts and matters mentioned or referred to above;

(b) a meeting between the Complainant and Mr. Zulfi Baig, a director of the Respondent in January 2003, when the Complainant showed Mr. Baig his trademark registration certificate and asked him to cease and desist from infringing his registered trademark; and

(c) the absence of any coherent justification for the Respondent’s retention and use of the disputed domain name in party to party correspondence between lawyers, copies of which have been provided to the Panel.

It may, therefore, be inferred that the Respondent has intentionally attempted to attract for commercial gain, Internet users to its website through creating a likelihood of confusion with the Complainant’s mark as to the source or affiliation of the Respondent’s website or of the sources of its products and services within the scope of paragraph 4(b)(iv) of the Policy.

In the circumstances, both limbs of the third element of paragraph 4(a) of the Policy are present and the condition required by sub-paragraph (iii) of that paragraph is satisfied.

B. Respondent

The Respondent, having been duly notified of the Complaint and these proceedings, did not reply to the Complainant’s contentions or take any other part in these proceedings.

6. Discussion and Findings

To qualify for cancellation or transfer, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:

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

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

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

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

In accordance with paragraph 14(a) of the Rules, in the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint; and (b) if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.

In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.

In previous UDRP cases in which the respondent failed to file a Response, the Panel’s decisions were based upon the complainant’s assertions and evidence, as well as inferences drawn from the respondent’s failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and also Köstritzer Schwarzbierbrauerei v. Macros-Telekom Corp, WIPO Case No. D2001-0936.

Nevertheless, the Panel must not decide in the Complainant’s favor solely based on the Respondent’s default (Cortefiel S.A. v. Miguel García Quintas, WIPO Case No. D2000-0140). The Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true.

A. Identical or Confusingly Similar

It is established case law that where a domain name incorporates a complainant’s registered mark, this is sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

The domain name at issue incorporates without any modification the trademark PANRIX, which is owned and has been commercially used and promoted by the Complainant in and for the purposes of its business as a registered trademark for more than 10 years and previously at Common Law since 1990. This is a clear misuse and infringement on the part of the Respondent of the Complainant’s trademark, as well as a breach of the Common Law Doctrine of ‘Passing Off’ (as defined in the above cited House of Lords decision in the case of Reckitt & Colman Products Ltd. v. Borden Inc. [1990] 1 WLR 491, and is also in breach of the Policy. The Panel considers that the addition by the Respondent of the suffix ‘.com’ is immaterial and irrelevant for these purposes, adding no distinctiveness whatsoever.

In view of this, the Panel finds that the domain name registered by the Respondent is identical or confusingly similar to the trademark PANRIX in which the Complainant has clearly demonstrated to the satisfaction of the Panel that it has established and commercially valuable rights.

B. Rights or Legitimate Interests

In order to determine whether the Respondent has any rights or legitimate interests in respect of the domain name (paragraphs 3(b)(ix)(2) of the Rules and 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:

- Whether before any notice to the Respondent of the dispute, there is any evidence of 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;

- Whether 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;

- Whether the Respondent is making a legitimate non commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence to show that the Respondent was acting in pursuance of any rights or legitimate interests when registering the domain name at issue. Although the Respondent acquired the disputed domain name from the liquidators of Electronix or Technology, neither these companies, whilst in existence, nor their liquidators, according to the evidence adduced by the Complainant, had any legal right or title to grant or assign any rights to use the Complainant’s trademark as part of the disputed domain name. The Panel agrees with the Complainant’s contention that any rights that Electronix or Technology may have acquired from the Complainant to use his trademark lapsed when Electronix ceased to carry on business and also that the Complainant’s consent in favor of Technology to use his trademark came to an end by ‘operation of law’ when Technology was wound up. Furthermore, the liquidators were not able to give any better right or title to the Respondent to use the trademark as part of the disputed domain name, when the Respondent acquired that domain name from them, in accordance with the well established English Common Law legal principle of ‘nemo dat quod non habet’. This is also consistent with the decision in the WIPO Case No. D2002-1038 cited by the Complainant and referred to above.

In spite of what the inaccurate Whois contact details may wrongly indicate, no evidence has been adduced that the Respondent has been commonly known by the domain name; nor is making a legitimate non-commercial or fair use of the domain name; nor has the Respondent been authorized or licensed by the Complainant to use the Complainant’s trademark PANRIX as part of the domain name at issue.

Furthermore, the adoption by the Respondent of a domain name identical to the Complainant’s trademark inevitably leads to the diversion of the Complainant’s consumers to the Respondent’s website (see further on this point below) and the consequential tarnishing of the Complainant’s trademark. In other words, the Respondent is trading for commercial gain on the good name and reputation of the Complainant’s business and trademark and unfairly attracting to its own business and activities the substantial goodwill that the Complainant has established in its mark, evidence of which has been provided to the Panel, without any right or legal justification for doing so.

Therefore, the Panel concludes that the Respondent has neither rights to nor legitimate interests in the domain name at issue.

C. Registered and Used in Bad Faith

Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.

Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:

“(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location.”

Based on the case file the Panel agrees with the Complainant’s contention that the Respondent by registering the domain name at issue is trading on the Complainant’s valuable goodwill established in its trademark PANRIX over a period of some 15 years.

Again, by registering and using the domain name at issue incorporating the Complainant’s trademark, PANRIX, the Respondent is misleading consumers and Internet users into thinking that it is, in some way or another, connected, sponsored or affiliated with the Complainant and its business, or the Respondent’s activities are approved or endorsed by the Complainant, none of which, in fact, is the case.

The Respondent seems to be trading on the Complainant’s goodwill and reputation, which the Complainant has built up. This, without any explanations by the Respondent to the contrary, of which none are forthcoming, constitutes bad faith. See the case of eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633, where it was stated that:

“The Domain Name consists of the EBAY trademark plus the addition of the country name Korea. Because the Domain Name incorporates the identical EBAY trademark, a consumer or user of the Internet viewing a website located at the “www.ebaykorea.com” domain address would be likely to assume that the website or operator is somehow sponsored by or affiliated with eBay, when it is not.”

Furthermore, the use by the Respondent on the homepage of its website of the words “panrix.com in association with pcideas ltd” may be calculated to mislead Internet users and consumers into thinking that the Respondent has some relationship with the Complainant and his business or has approved the use of the domain name at issue, neither of which, in fact, is the case. This is further evidence of bad faith on the part of the Respondent.

In addition, the Panel agrees with the Complainant’s contention, for the several reasons mentioned above, including, in particular, the decision in the WIPO Case No. D2000-0079 cited and referred to above, that, for the purposes of paragraph 4(a)(iii) of the Policy, a subsequent acquisition of a disputed domain name by a respondent constitutes registration of such domain name.

Finally, the failure by the Respondent to respond to the Complainant’s ‘cease & desist’ letter, dated October 21, 2004, and give the required ‘undertaking’ (part of the ‘party to party’ correspondence exchanged between the Complainant’s and Respondent’s lawyers referred to above) subsequent to the meeting in January 2003, between the Complainant and one of the directors of the Respondent (also referred to above), coupled with the failure of the Respondent to file any answer to the Complainant’s Complaint or otherwise participate in the present proceedings is further indication of bad faith on the part of the Respondent.

Therefore, for all the above reasons, the Panel concludes that the Respondent has registered and is using the domain name at issue in bad faith.

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 <panrix.com> be transferred to the Complainant.

Ian Blackshaw
Sole Panelist

Dated: June 23, 2005