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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dyson Limited v. Marнa del Mar Solнs Garcнa
Case No. D2001-0024
1. The Parties
Complainant is Dyson Limited, a limited company organised and existing under the laws of England and Wales whose principal place of business is situated at Tetbury Hill, Malmesbury, Wiltshire, SN16 0RP, United Kingdom. On January 1, 2001, the Complainant changed its name from Dyson Appliances Limited. Respondent is Marнa del Mar Solнs Garcнa, Fermin Caballero 60, 12-B, Madrid 28034, Spain.
2. The Domain Name and Registrar
The domain names at issue are <contrarotator.com>, <contrarotator.net> and <contrarotator.org>, hereinafter referred to also as the "Domain Names". The registrar is Network Solutions, Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received a complaint (hereinafter the Complaint) on January 5, 2001 (by e-mail) and on January 16, 2001 (hardcopy and exhibits). On January 10, 2001, the Center acknowledged receipt of the Complaint. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). Complainant made the required payment to the Center.
On January 10, 2001, the Center transmitted via e-mail to Network Solutions, Inc. a request for registrar verification in connection with this case. On January 12, 2001, Network Solutions, Inc. transmitted via e-mail to the Center, Network Solutions, Inc.'s Verification Response, confirming that the registrant is Ms. Marнa del Mar Solнs Garcнa and that the domain names registrations are in "active" status.
Having verified that the Complaint satisfied all the formal requirements of the Policy and the Rules, the Center transmitted on January 17, 2001, to Ms. Marнa del Mar Solнs Garcнa the Notification of Complaint and Commencement of the Administrative Proceeding by post (with attachment), and by fax and e-mail (without enclosures). On the same day, the Center transmitted via e-mail, copies of the foregoing documents to the complainant’s representative and to Network Solutions Inc.
On January 22, 2001, the Center received the Response from the Respondent in Spanish (by e-mail) and on January 24, 2001 (hardcopy and exhibits). On January 24, 2001 the Center addressed to Respondent an e-mail regarding language compliance with the Registration Agreement. On January 26, 2001, the Center received the Response in English (by e-mail) and on January 30, 2001 (hardcopy and exhibits). On January 29, 2001, the Center acknowledged receipt of the Response.
On February 2, 2001, in view of the Complainant’s designation of a single member panel the Center invited Mr. Luca Barbero to serve as a panelist and transmitted to him the Request for Declaration of Impartiality and Independence and the Statement of Acceptance.
Having received Mr. Luca Barbero's Statement of Acceptance and Declaration of Impartiality and Independence, the Center transmitted on February 8, 2001 to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Luca Barbero was formally appointed as the Sole Panelist. The Sole Panelist finds that the Administrative Panel (hereinafter referred to also as the Panel) was properly constituted and appointed in accordance with the Rules and Supplemental Rules.
4. Factual Background
The Complaint is based upon the following trademarks:
- United Kingdom application number 2251190 "CONTRAROTATOR", in classes 3, 7 and 11, filed on November 2, 2000
- Community Trade Mark application number 001965664 "CONTRAROTATOR", in classes 3, 7 and 11, filed on November 22, 2000 claiming International Convention priority from the United Kingdom trade mark application filed on 2nd November 2000
The Respondent is the owner of the Spanish Trade Marks Application number 2356737 for the trademark "CONTRAROTATOR" in class 41, filed on November 10, 2000.
<contrarotator.com>, <contrarotator.net> and <contrarotator.org> were all registered on November 2, 2000. According to Network Solutions, Inc.'s Verification Response. Ms. Marнa del Mar Solнs Garcнa is the registrant of <contrarotator.com>, <contrarotator.net> and <contrarotator.org>.
5. Parties’ Contentions
On November 2, 2000, the Complainant filed an application with the United Kingdom Patent Office for the registration of the United Kingdom trademark "CONTRAROTATOR" in classes 3, 7 and 11. On the same day the Complainant held a press launch for the Contrarotator™ washing machine at its headquarters in Malmesbury, United Kingdom. Over one hundred journalists from twelve countries attended the press launch. The launch of the Contrarotator™ washing machine attracted widespread press coverage throughout Europe, including radio reports and reports on news agency websites on the day of the launch. The Contrarotator™ washing machine is now on sale in stores in the United Kingdom and will be available for sale in other European countries and elsewhere during 2001.
On November 2, 2000, the Respondent registered the Domain Names with the domain name registrar Network Solutions, Inc.
On November 3, 2000, the Complainant received an e-mail from a Max Hensler, whom the Complainant presumes is connected with the Respondent, offering the Domain Names for sale. A copy of the printout of this e-mail was provided to the Panel. The Complainant informed the Panel that on the same day, following receipt of such an e-mail, several employees of the Complainant accessed the website www.contrarotator.com. This website contained the text "Welcome to the Washing Machine Website" and an image of a washing machine. This website has now been changed and, as at the date of the instant Complaint, makes no reference to washing machines.
On November 6, 2000, the Respondent sent an e-mail to numerous e-mail addresses of the Complainant offering the three Domain Names for sale and requesting offers to be sent to the Respondent at the Respondent’s e-mail address email@example.com. The e-mail stated that the offer would be exclusive to the Complainant on 6th November 2000 only, after which the Domain Names would be offered to other companies. A copy of the printout of the e-mail of the Respondent dated November 6, 2000 was provided to the Panel.
On November 7, 2000 the Head of the Legal Department of the Complainant addressed, in response to the above e-mail, a formal request to Respondent to transfer the Domain Names to Complainant, indicating that in absence of a reply by and not later than November 10, 2000 the Complainant would have referred the matter to WIPO.
On November 10, 2000, according to information provided by both the Respondent and by its Trademark Attorney in Barcelona, Spain, the Respondent filed an application with the Spanish Trade Marks Registry for registration of the trademark "CONTRAROTATOR" in class 41. The application was allocated application number 2356737. A copy of the letter from the Trademark Attorney was provided to the Panel.
The Respondent replied by e-mail on November 12, to the cease and desist letter of November 7, rejecting the Complainant’s requests, mentioning the existence of the above Spanish application and reiterating the offer for sale of the Domain Names. A copy of the exchange of correspondence and subsequent e-mail between the Complainant and the Respondent was provided to the Panel.
On November 22, 2000 the Complainant filed a Community Trade Mark application with OHIM for registration of the trademark "CONTRAROTATOR" in classes 3, 7 and 11, claiming International Convention priority from the United Kingdom trademark application filed on 2nd November 2000. A copy of the filing receipt of the application issued by OHIM was provided to the Panel.
As legal contentions, Complainant indicates that the Respondent should be considered as having no rights or legitimate interests in respect of the Domain Names for the following reasons:
- The Respondent has deliberately registered domain names, which it knew would be objectionable to the Complainant. It is no coincidence that the Respondent registered the Domain Names on the same day that the Complainant launched the Contrarotator™ washing machine. It is the Complainant’s contention that the Respondent saw press coverage about the Contrarotator™ washing machine on that date and proceeded immediately to register the Domain Names for the purposes of offering them to sale to the Complainant and others and not for the Respondent's own bona fide use. The original reference on the website with the address <www.contrarotator.com> to washing machines shows clearly that the Respondent was attempting to identify herself with the Complainant’s products.
- Before any notice to the Respondent of the dispute, there is no evidence of the Respondent’s use of the Domain Names or names corresponding to the Domain Names in connection with a bona fide offering of goods or services. The Respondent has not demonstrated any usage of the name "Contrarotator" that would provide a legitimate reason for the Respondent’s registration and use of the Domain Names. The three websites using the Domain Names contain no evidence as to why they should be entitled "Contrarotator" and the Complainant therefore invites the Panel to infer that the Respondent has no rights or legitimate interests in the Domain Names in view of the Complainant’s genuine rights in the name "Contrarotator" and all the surrounding circumstances.
- The Complainant submits that the Respondent has no legitimate interests in the Domain Names given (i) that the Domain Names are identical to the Complainant’s trade marks, which take priority over the Respondent’s application for registration of the trade mark "CONTRAROTATOR" in Spain, (ii) that the Domain Names have no obvious connection with the services purportedly being offered by the Respondent through the websites to which they relate and (iii) the financial demands contained in the Respondent’s communications referred to above.
- The Complainants underlines that the communications from the Respondent referred to above constitute compelling evidence that the real purpose behind the registration of the Domain Names is the transferring of the domain name registrations to the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs and expenses directly related to the Domain Names.
In view of the above, the Complainant invites the Panel to infer that the Respondent has registered and used the Domain Names in bad faith by using its registration to attempt to extract financial consideration from the Complainant or others in excess of its out of pocket expenses related to the Domain Names.
The Respondent indicates in the Response that "Contrarotator" is a service mark of word type in class 41, which includes services rendered by persons or organizations in order to develop the mental faculties of persons or animals, as well as services intended for entertainment and recreation, namely: "services for education or training of individuals or taming of animals and Services whose essential aim is entertainment, recreation or leisure of individuals". The application for the mark was filed on November 10, 2000 at 14:03 hours and it was assigned number 2356737. Copy of the application was provided to the Panel.
Respondent submits that contrarotator is an initiative whose aim is to bring people together around the idea of entertainment and recreation in an educational manner, and in no way, either now or in the future, will it be related to the industrial sector, and much less to washing machines.
According to the Respondent, "the registration in class 41 already delimits the object and purpose of the mark in a sufficiently clear manner and it does not come into conflict with classes 3, 7 and 11, protected by application number 001965664 filed by Dyson Limited at the "Office for Harmonization in the Internal Market" twelve days later, on 22 November 2000".
The Respondent explains that she has arrived at the name "Contrarotator" for a club as a contraction of the following ideas: reverse turn; inverse rotation; in short, going against the current, trying, in a humorous manner, to see the things around us in a different way. We also chose to give it an Anglo-Saxon touch, due to the facility of the English language to express complex ideas "in a very condensed and cacophonous manner".
The Respondent claims that <contrarotator.com>, <contrarotator.net> and <contrarotator.org> were registered on November 2, 2000 with Network Solutions, without prior knowledge of the existence of the product of Dyson Limited. The aforementioned domain names have not been registered in order to sell, rent or otherwise transfer the domain name registration to the complainant, as the presumed owner of the trademark or service mark, nor to a competitor of the complainant.
Furthermore, the Respondent indicates that the Domain Names have not been registered in order to prevent the complainant from reflecting his trademark in a corresponding domain name and suggest the Panel the following possible resolution to the present dispute. "The domain names would be ‘split’, granting me contrarotator.com as my domain name, which has already been publicized, and contrarotator.org, as the organisation is a non-profit making club, and granting contrarotator.net to the complainant in order that he may use it in promoting his product, paying us the costs of registration with Network Solutions. This does not, however, imply that we in any way recognise any of the claims of the complaint; it is simply a gesture of good faith on our part".
The Respondent states that the Domain Names have not been registered by the respondent in order to attract, for commercial gain, Internet users to the respondent’s website or any other online 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, of her on-line location or any product or service on the respondent’s website or on-line location as the activities are different.
The Respondent claims that prior to receipt of notification of the dispute, the respondent had been using the domain name at the address http://www.audiospot.es/sublease/ms/contrarotator.htm and had made preparations for its use in good faith to offer services.
With reference to that exchange of electronic correspondence exchanged with staff of Dyson Limited, the Respondent recognizes as genuine those in which the e-mail address firstname.lastname@example.org is given as that of the sender or recipient. The fact that the Complainant’s claim that the Respondent is in some way connected to a person named Max Hensler appears to the Respondent as a "crude manoeuvre in order to manipulate the facts in this case, especially with something like e-mail, which is so susceptible to such manipulation".
Furthermore, the respondent makes reference to the exchange of correspondence exchanged with the Head of the Legal Department, to the fact that the content, though private and restricted to members of the Club, in no way invites people to believe that this domain is for sale, or has any connection whatsoever with Dyson Limited and states that it is the is the first time that the Respondent is implicated in a dispute of this nature.
In the final factual/legal contention the Registrant states that "Dyson Limited is, without a doubt, a major company, but the registration of marks and domains on Internet provides equal protection to both individuals and large corporations".
6. Discussion and Findings
According to paragraph 15(a) of the Rules: "A Panel shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and,
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and,
(iii) that the Domain Name has been registered and is being used in bad faith.
6.1. Domain name identical or confusingly similar
The Complainant has provided evidence of ownership of trademark application for CONTRAROTATOR in United Kingdom and as Community Trademark.
In view of the above, the Panel finds that the Complainant has proved that the Domain Names are identical, obviously excluding the suffix ".com" ".net" and ".org", to the trademark of the Complainant according paragraph 4(a)(i) of the ICANN Policy.
6.2. Rights and legitimate interest
As proof of rights on the Domain Names, the Respondent has provided a copy of a Spanish application filed on November 10, 2000.
On the basis to the documents submitted to the Panel, though, on November 7, 2000 a cease and desist letter was addressed by the Complainant via e-mail to the Respondent. The application for the Spanish trademark was therefore filed after the Respondent was made aware of the intention of the Complainant to refer the instant matter to WIPO for an administrative proceeding according to the Uniform Domain Name Dispute Resolution Policy. Therefore, the Panel finds that the Spanish trademark application cannot be considered as a relevant right in the present procedure.
The Respondent failed to submit to the Panel convincing evidence of other prior legitimate interests on the sign CONTRAROTATOR.
Furthermore, the content of the web site corresponding to the Domain Names, reserved to the alleged "members of Club", was not provided by the Respondent to the Panel nor it was possible to have access on line since apparently the membership to the club is limited to Spanish residents (" … you must to reside in Spain to be member").
It appears evident that there is no relation between the Respondent and the Complainant, and Respondent is not a licensee of the Complainant, nor the Respondent has otherwise obtained an authorization to use Complainant’s trademark under any circumstance.
The Panel therefore finds that Respondent has no relevant rights or legitimate interests in respect of the Domain Names.
6.3. Registration and Use in Bad Faith
For the purpose of Paragraph 4(a) (iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Names in bad faith:
(i) circumstances indicating that the holder has registered or has 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 the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder 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 the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’ s website or other online 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 the holder’s website or location.
The Complainant has produced in the annexes of the Complaint copy of the email correspondence exchanged between the Complainant and the Respondent, which was carefully examined by the Panel concluding the following:
i) In the Response was stated that "the Respondent recognises as genuine those in which the e-mail address email@example.com is given as that of the sender or recipient". The Panel was inclined to acknowledge this statement for the communication addressed to the Complainant by Max Hensler with the object "contrarotator for sale" on November 3. It should be noted though that, according to the Complainant, following receipt of such an e-mail "several employees of the Complainant accessed the website www.contrarotator.com. This website contained the text ‘Welcome to the Washing Machine Website’ and an image of a washing machine".
ii) On the other hand, the Panel did not consider the Respondent statement about the "recognition" of e-mails, for the e-mail addressed to a number of different addressee "@dyson.com" on November 6, 2000. The Panel noted that said e-mail was sent as firstname.lastname@example.org by Mar Solis with the express indication to address a possible reply to the same address. Such an e-mail address email@example.com is the same one of the Administrative and Billing Contacts of the Domain Names, as indicated in the Network Solution Verification Response. Therefore, it can be concluded that the message dated November 6, 2000 was addressed by the Respondent to the Complainant.
iii) Said message contained the following text: "For Sale: Exclusive for you today www.contrarotator.com, www.contrarotator.org, www.contrarotator.net . If you are interested, please, send your offers to: firstname.lastname@example.org. Today in sole right for you, tomorrow the auction will be open to anothers companys. … (signed) Mar Solis email@example.com …". The present message was addressed to 19 (nineteen) different addressee "@dyson.com" including some general addresses such as "firstname.lastname@example.org; email@example.com; firstname.lastname@example.org; email@example.com; firstname.lastname@example.org; email@example.com" but also to many named employees of the Complainant.
iv) A cease and desist letter was addressed on November 7, 2000 by the Head of the Legal Department as a response to the above email. The Respondent in the reply on November 12, 2000, already sent as firstname.lastname@example.org, stated: "Why do you think, that you are the only one with rights over contrarotator? I see that you do not like negotiate this item, well it’s your choice (…). I have registered "contrarotator" before you in the Spanish Trade Marks Bureau (…) and I am the registrant in ‘Network Solutions’. If you prefer a very long war, you are going to waste your time, money and reputation. I am the contrarotator owner in Internet and in Spain, with a legitimate interest and I’ll submit my contrarotator website URL address daily to two thousand search engines and link pages worldwide with my personal data while you try to get other people property. That is my last word about this affair. If you want my domains send me an economical offer and we can discusse it, (…)"
The above circumstances indicate to the Panel that the Respondent has registered the Domain Names primarily for the purpose of selling the Domain Names to the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Domain Named.
Therefore, the Panel finds that Respondent has registered and is using the Domain Names in bad faith.
In light of the foregoing, the Panel decides that the Domain Names registered by the Respondent are identical to the Complainant's trademark, that the Respondent has no rights or legitimate interests in respect of the Domain Names and that the Domain Names have been registered and are being used in bad faith.
Accordingly, the Panel requires that the registration of the Domain Names <contrarotator.com>, <contrarotator.net> and <contrarotator.org> be transferred to the Complainant.
Dated: February 20, 2001