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NAF NAF Distribution BV v. Stanley Au [2005] GENDND 623 (16 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Blackmer S.A.S., Delaware Capital Formation Inc and Dover Corporation v. Environmental Pumping Ltd

1. The Parties

The Complainants are Blackmer S.A.S., Auxerre, France; Delaware Capital Formation Inc, Wilmington, Delaware, United States of America; and Dover Corporation, Grand Rapids, Michigan, United States of America; together represented by Cabinet Breese-Derambure-Majerowicz, France.

The Respondent is Environmental Pumping Ltd, Ascot Berks, United Kingdom of Great Britain and Northern Ireland; Theale, Berkshire, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <blackmermouvex.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 18, 2005. On April 18, 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 19, 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 3, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 23, 2005. The Respondent did not submit a response until that date. Accordingly, the Center notified the Respondent’s default on May 25, 2005. On the same day, the center received a late response of the Respondent.

The Center appointed Gerd F. Kunze as the sole panelist in this matter on June 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. The Panel has decided to accept the late Response of the Respondent.

4. Factual Background

The Co-Complainants are related companies that are active in the manufacturing of different types of pumps and compressors, such as centrifugal pumps for the transfer of liquid and gas products, for oilfield operations, eccentric movement and vane pumps, etc. The Co-Complainant Blackmer S.A.S. is a subsidiary of Blackmer Corporation, which has been owned by the CO-Complainant Dover Corporation since 1964. Blackmer S.A.S. was acquired in 1997, when it was known under the trade name “Mouvex”. It is the holder of the group’s registrations for the trademark MOUVEX. The CO-Complainant Delaware Capital Formation Inc. is another subsidiary of the Co-Complainant Dover Corporation, which is acting as holder of the Group’s trademark BLACKMER. To simplify, the three Co-Complainants are in the following together referred to as “Complainant”.

The Complainant is the registered owner of many registrations for the trademarks BLACKMER and MOUVEX in many countries, and in particular of the following registrations (as evidenced by copies of the registration certificates):

- French registration No. 1020141 BLACKMER with priority date of June 17, 1977, in classes 7 and 9;

- British registrations Nos. B969086 and B969087 BLACKMER with priority date of December 16, 1970, in class 7;

- Community trademark No 3107307 BLACKMER with priority date of March 25, 2003, in classes 7 and 9;

- French trademark No. 1426849 MOUVEX with priority date of September 14, 1987, in classes 7 and 11;

- International registration No. 194905 MOUVEX, registered on July 26, 1956, in class 7.

As said before, the Co-Complainant Blackmer S.A.S., which has established a reputation as the leading manufacturer of positive displacement pumps, centrifugal pumps and compressors, was initially known under the trade name MOUVEX. During a transitional period the company used the trade name BLACKMER MOUVEX, before, on December 11, 2000, it definitely adopted the name Blackmer S.A.S. Still before that name change, the company registered (on September 21, 1999) the domain name <blackmer-mouvex.com> under which it has operated its main website since that year (the website is identical to the website “www.blackmer.com”). The trademark MOUVEX is being used for an eccentric disc pump, a patented pumping system, for which the Co-Complainant Blackmer S.A.S. is famous.

The Respondent is marketing industrial pumps and in the past used to sell some products of the Complainant. On May 21, 2003, the Respondent registered the domain name <blackmermouvex.com> using it to direct Internet users to a website that is identical to its main website “www.environmentalpumping.co.uk”. The expiry date of this domain name was May 21, 2005, however it has been locked by the Registrar and its status will be maintained until the dispute is resolved.

On December 2, 2004, a representative of the Co-Complainant Blackmer S.A.S. asked the Respondent per email whether it had any authorization to use the domain name <blackmermouvex.com>. After a reminder, sent on December 9, 2004, a representative of the Respondent offered on February 28, 2005, the transfer of the domain name under the condition that the Complainant would supply a certain type of pumps for a very competitive price.

These facts are all evidenced by attachments to the Complaint and, in absence of any submission of the Respondent to the contrary, the Panel is satisfied that the facts and documents submitted by the Complainant are truthfully reflecting the factual circumstances of the case.

5. Parties’ Contentions

A. Complainant

The Complainant submits that (A) the domain name <blackmermouvex.com> is identical or confusingly similar to the trademarks BLACKMER and MOUVEX in which it has rights; (B) the Respondent has no rights ore legitimate interests in respect of the domain name; (C) the domain name was registered and is being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. In a late-filed response it submitted copy of an email that it sent on May 3, 2005, to the Complainant. In this email it offered to cease using with immediate effect the domain name and not to renew it when coming up for renewal on May 21, 2005, provided the Complainant confirmed in turn that it would cease all legal action. The Complainant did not respond to this proposal.

6. Discussion and Findings

A. Identical or Confusingly Similar

The domain name <blackmermouvex.com> consists of a combination of the Complainant’s housemark BLACKMER with the trademark MOUVEX and the gtld “.com” which cannot be taken into consideration, when judging confusing similarity. It is therefore identical to these two trademarks on which the Complaint is based. Furthermore, the term “blackmer” in the domain name will be understood as a reference to the Complainant, because it stands at the beginning of the combination of these two reputed marks. Internet users that are knowledgeable of the pumping industry will understand that the term “mouvex” stands for a product of the Complainant, the more as the Complainant itself uses the domain name <blackmer-mouvex.com>. Indeed, Internet users who are aware of that domain name of the Complainant may unintentionally leave out the hyphen between the two terms, when typing that domain name, and as a consequence of the Respondent’s registration and use of the domain name <blackmermouvex.com> they will arrive at the Respondent’s website. They will therefore be misled and deceived. For all these reasons, the domain name <blackmermouvex.com> is confusingly similar to the trademarks BLACKMER and MOUVEX of the Complainant.

B. Rights or Legitimate Interests

The terms “blackmer” and “mouvex” are not descriptive words, in which the Respondent might have an interest. They are trademarks of the Complainant and also the present and a former business identifier of Blackmer S.A.S., one of the CO-Complainants. The Complainant has not consented to the Respondent’s use of the domain name. The Respondent does not make a legitimate use of the domain name, rather it uses it in order to direct users to its own website. Clearly the Respondent has not been commonly known by the domain name and it did not submit any circumstances that might show a legitimate interest in the domain name.

Therefore, the Panel is satisfied that the Respondent has no rights or legitimate interests in the domain name <blackmermouvex.com>.

C. Registered and Used in Bad Faith

The Respondent is a former distributor of the Blackmer company’s products in Great Britain and that company was previously known to it as “Blackmer Mouvex”. This company has been operating a website since 1999, under “www.blackmer-mouvex.com”. Furthermore, the trademark MOUVEX has been used for Blackmer’s patented pumping system.

Under the circumstances the Panel agrees with the conclusion of the Complainant that the Respondent could not have been unaware of the Complainant’s trademarks when registering the domain name <blackmermouvex.com>. Registering a domain name that consists of trademarks of a competitor and manufacturer, whose products have been distributed by the registrant, amounts in the absence of any circumstances justifying such behavior to registration in bad faith.

The use made by the Respondent confirms that the domain name <blackmermouvex.com> was registered in bad faith and is being used in bad faith. The domain name automatically directs users to a website of the Respondent, which is identical to its main website (“www.environmentalpumping.co.uk”) and which presents different models of pumps that are distributed by the Respondent. However, the Respondent does not content itself with that use of the domain name. Its website contains a section entitled “peristaltic pump” and in this section two models of pumps are compared. One model is described as the “good one”, whilst the other is described as the “the bad and the ugly”. The latter one is a pump that is manufactured and marketed by Blackmer.

If there had been any doubt about the bad faith of the Respondent, the Respondent itself showed its clear intentions in using the domain name <blackmermouvex.com> when, in its email dated May 3, 2005, it wrote: “If there is an opportunity for us to supply BM with Peristaltic Hose at a competitive price, we would welcome discussions on the immediate transfer of domain name and softening of our technical comments on website” (BM stands for *Blackmer Mouvex). This evidenced submission of the Complainant is confirmed by the Respondent who, in its late Response, submitted a copy of that email.

Paragraph 4b(i) of the Policy mentions as typical example for registration and use in bad faith circumstances indicating that the Respondent has registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the Complainant for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name. The behavior of the Respondent is comparable to this pattern, since it tried to draw financial advantages from transferring the domain name to the Competitor which no doubt would have amounted to a sum in excess of its out-of-pocket expenses. Another case listed in paragraph 4(b)(iv) as typical example for registration and use in bad faith is that by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product on that website. There can be no doubt that Internet users typing the domain name <blackmermouvex.com> (misspelling the domain name <blackmer-mouvex.com> of the Complainant or believing that this quasi-identical domain name would also belong to the Complainant) expect to arrive at a website of the Complainant or at least at a website somehow related to it in the manner as described in the Policy. The Respondent favors such wrong expectations of Internet users by avoiding to redirect the user in a manner to its website which would at once show that he arrived at the wrong website (whilst the contents of the website is identical to the website “www.environmentalpumping.co.uk“, the URL of the website does not automatically switch to that name, rather shows “www.blackmermouvex.com”). This pattern confirms that the Respondent used the domain name for commercial gain by attracting users to its website.

In addition to all these considerations showing bad faith of the Respondent, it damaged the reputation of the Complainant by denigrating its products on the website to which the disputed domain name directs users.

In conclusion the Panel is satisfied that the domain name <blackmermouvex.com> was registered and is being used by the Respondent 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 <blackmermouvex.com> be transferred to the Complainant.

Gerd F. Kunze
Sole Panelist

Dated: June 16, 2005