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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Villeroy & Boch AG v. David Gordon
Case No. D2001-0690
1. The Parties
The Complainant in this administrative proceeding is Villeroy & Boch AG, a corporation according to German law having its principal place of business at 66688 Mettlach, Germany, represented by Rechtsanwälte (attorneys at law) Wessing of Königsallee 92a, 40212 Dusseldorf, Germany. The Respondent is David Gordon of Shrewbury Lodge, Quinns Road, Shankill, Co. Dublin, Ireland.
2. The Domain Name and Registrar
The domain names in issue are <villeroyandboch.com>, <villeroyandboch.org> and <villeroyandboch.net> ("the Domain Names"), the Registrar is Network Solutions, Inc. of 505 Huntmar Park Drive, Herndon, Virginia 20170, USA ("Network Solutions").
3. Procedural History
The WIPO Arbitration and Mediation Center ("the Center") received on May 23, 2001, an e-mail version of the Complaint, and on May 28, 2001, a hard copy of the Complaint and accompanying documents. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"). The Complainant made the required payment to the Center. On May 30, 2001, the Center formally notified the Respondent that this administrative proceeding had been commenced, and that date is the formal date of the commencement of this administrative proceeding.
On May 29, 2001, the Center received from Network Solutions its Verification Response confirming that the registrant is David Gordon, the Respondent herein, and stating that the Administrative, Technical and Zone Contact is the Respondent, of Web Commerce Solutions Ltd. at the same address as that of the Respondent.
On June 15, 2001, the Respondent lodged a Response by e-mail. On June 27, this Panelist was appointed by the Center. The Panelist has filed a Statement of Acceptance and Declaration of Impartiality, and his decision was scheduled to be forwarded to the Center by July 11, 2001. However when the Panelist examined the Complaint on July 2, 2001, two important exhibits (W7 and W8) were found to be missing. These were forwarded to the Panelist on July 13, 2001.
4. Factual Background
a) The Complainant is the registered proprietor of the trademark VILLEROY & BOCH ("the Trademark") in the Republic of Ireland, as follows:-
(i) under No. 114356, registered on November 6, 1986 in Class 11; and
(ii) under No. 114357, registered on November 6, 1986 in Class 19.
b) In addition, the Complainant claims to own the trademark in "various countries".
c) The Complainant owns the domain names <villeroy-boch.de> and <villeroy-boch.com>.
d) The Domain Names were all registered on March 27, 2000, in the name of the Respondent.
5. Parties’ Contentions
The Complainant asserts, inter alia, as follows:-
(i) The Complainant’s company was founded in 1748 under the name Villeroy & Boch. The Complainant’s current trading name is "Villeroy & Boch AG". The company has been operated as a public limited company since 1987 and quoted on the stock exchange since 1990.
(ii) The Complainant is a worldwide well-known manufacturer of:
- all kinds of tiles,
- bathroom ceramics, bathroom furniture and fittings, bathroom accessories, mirrors, lights, bathroom textiles and ceramic kitchen sinks,
- tableware (crockery, crystal, cutlery, kitchen and home furniture, home textiles etc.),
- synthetics (bathtubs and shower trays).
(iii) It currently has worldwide annual sales of Euro 940 million. Production is carried out in 22 factories in ten European countries. Villeroy & Boch products are marketed in 125 countries by the Complainant’s own marketing companies and importers. The number of persons employed totals around 10,000.
(iv) The Respondent owns a small business offering web commerce solutions. He registered the Domain Names on March 27, 2000, but they have not been used for a website or any other on-line presence.
(v) On December 27, 2000, the Complainant’s representative wrote a cease-and-desist letter to the Respondent in the following terms:-
"Registration of Domain name
Dear Mr. Gordon,
We are the representatives of Villeroy & Boch AG, Mettlach, Germany. Our client asked us to contact you in the above-mentioned matter.
Our client has rights in the name "Villeroy & Boch" resulting from both its company name and registered trademarks. Please find attached the trademark registration. You are infringing these rights by registering the a.m. domain names. This obviously constitutes a clear-cut case of domain grabbing.
We advised our client to take the necessary steps to obtain the a.m. domain. To avoid legal proceedings we have to ask you to transfer the domain to our client. We have prepared the attached declaration. If we do not receive a signed declaration until January 16 we have to advise our client to file an action against you.
Please note that you are obliged to reimburse our client for the necessary legal costs."
(vi) The Respondent’s company Web Commerce Solutions Limited replied on January 8, 2001, as follows:-
"Further to your correspondence of 28th December, please be advised that the beneficial owner of the domain names "villeroyandboch" are Kilcroney Furniture Ltd. (Kilcroney, Co. Wicklow, Ireland). We have formally advised them as of 8th January 2001, of your request for the domain names and have furnished them with a copy of your facsimile. Please note that Kilcroney Furniture are retail agents for Villeroy and Boch.
As a solution provider to Kilcroney Furniture Ltd., we are obligated to act under their instructions. We shall be pleased to transfer the domain names, once we have received appropriate instruction from Kilcroney Furniture Ltd. and our costs and outlay to date have been cleared."
(vii) Kilcroney, however, denied ever having asked the Respondent to register the Domain Names on their behalf. They only asked the Respondent to register the domain name <villeroyandboch.ie.>. The Complainant exhibits a letter from Kilcroney Furniture dated February 14, 2001. This letter refers to a letter from the Complainant’s representative dated January 30, 2001 (which is not exhibited) and states:-
"We refer to your letter of 30 January 2001 and wish to apologize for any misunderstanding that has arisen in connection with the registration of Villeroy & Boch domain names.
We were not familiar with the necessary procedures and when a Mr. David Gordon of Web Commerce Solutions Limited offered to look after the registration of Kilcroney Furniture.ie and Villeroy & Boch we thought it in order to let him handle the details.
Unfortunately there were 3 x domain names registered on behalf of Villeroy & Boch of which none was Villeroy & Boch.ie. As agents for Villeroy & Boch we would be interested in registering Villeroy & Boch.ie but if this is not possible then we understand.
We have spoken to Mr. Gordon who is prepared to refrain immediately from using the Villeroy & Boch domain names that he has registered. Therefore we are returning your "Obligation" form, which you can forward directly to him at:
Quinns Road, Shankill
Co. Dublin. Tel. 01 204 3464
Once again our apologies and we trust this will clarify the matter."
(viii) The Respondent owns no rights in the sign "Villeroy & Boch", nor has the Complainant licensed or otherwise permitted the Respondent to use this trademark or to apply for the Domain Names.
(ix) When registering the Domain Names, the Respondent must have been aware of the fact that "Villeroy & Boch" is a well-known trademark and tradename enjoying good reputation globally. The products of the Complainant are well-known and well reputed not only in Germany but also throughout the world. It is inconceivable that the Respondent chose the very distinctive, non-generic second-level domain name "villeroyandboch" by coincidence, not knowing of the almost identical famous trademark "Villeroy & Boch". Instead, the Respondent consciously opted for the Domain Names due to their significant value resulting from the excellent reputation of the Complainant's trademark name/trading name. Such registration in spite of a very well known trademark has been held significant evidence of registration in bad faith (see, Woolworths plc v. David Anderson, WIPO Case No. D2000-1113).
(x) Further evidence for the fact that the Respondent registered the Domain Names for the sole purpose of selling, renting or otherwise transferring them can be found in the fact that the domain name has never resolved to a website or other on-line presence and still does not. There is no evidence of any fair use at all. Given that the Domain Names were registered a year ago, it must be concluded that the Respondent has never even been willing to make any fair use of the Domain Names and hence registered them in bad faith. In addition, the Respondent offers web commerce solutions, not furnitures, tiles or anything else the Complainant offers.
(xi) Both of the above mentioned circumstances clearly indicate that the Respondent's sole intention in registering the Domain Names has always been to make money by selling, renting or otherwise transferring them to the Complainant or to any other enterprise able to profit from the attractive Domain Names.
(xii) In the light of the decision in the Telstra case (WIPO Case No. D2000-0003), the Respondent’s sitting on the Domain Names in spite of the Complainant’s efforts combined with the fact that the Respondent has not actively used it during its considerable period of existence amounts to acting in bad faith.
(i) In the light of the foregoing summary of the Complainant’s assertions, it is worth quoting the Response verbatim:-
"With reference to the above case, I have set out below the relevant facts from my perspective.
As an IT solution provider, we were requested by a prospective client, Kilcroney Furniture Ltd. (Address: Kilcroney, Bray, Co.Wicklow) to register ‘villeroyandboch.com.’ Kilcroney Furniture Ltd. market and retail furniture including Villeroy and Boch Chinaware. (as approved agents). They requested the domain name in order to expand and retail the products online. As far as they were concerned, Villeroy and Boch used villeroy-boch.com.
I subsequently secured the above domain names on behalf of Kilcroney Furniture after they had initially requested the names through an Irish ISP. I registered the domain names in my personal name by way of convenience and ultimately to ensure payment.
This information was conveyed to the complainant who subsequently aggressively pursued Kilcroney Furniture Ltd. for the domain names together with legal costs and damages. Kilcroney Furniture effectively panicked and claimed that they never requested villeroyandboch.com but rather villeroyandboch.ie. However, I produced a copy of their original fax requesting the domain name and copied it to both Kilcroney and the complainant.
During this period, I made it quite clear that I held the domain name in trust for Kilcroney, had no personal requirement or agenda and clearly indicated that I would transfer the names upon receiving authorization from Kilcroney Furniture Ltd. When in Feb.2001, the complainant pursued me in the same aggressive manner, I clearly re-iterated the situation and also confirmed that I would not be renewing the domain names unless otherwise instructed. Further more I suggested that if they pay my outstanding costs of Ђ628, that I would assign the names, assuming that I was in a position to so do. (i.e. that they had not been picked up by a 3rd party upon non-payment).
I fail to see the reasoning for this dispute as the complainant could have sought transfer in the normal manner or indeed simply paid my outstanding costs. Indeed, perhaps their aggressive approach and the fact that they were not prepared to engage with Kilcroney Furniture Ltd., who are effectively one of their sales agents in Ireland, would in its own right, indicate an illegitimate claim to the domain names.
I have e-mail separately / attached relevant correspondence for your attention.
Please do not hesitate to contact me should you require further information."
(i) The Respondent exhibits a print-out of an e-mail dated March 23, 2000, from a Helen McHugh (of ESAT, which appears to be an Irish ISP). This e-mail appears to be addressed to Terry Rowan, apparently from Kilcroney Furniture, and confirms that, inter alia, the following domain names had been submitted for registration:
(ii) The Respondent also exhibits an e-mail from himself to the Complainant’s representative dated March 28, 2001, which reads as follows:-
"Further to our correspondence back in January last, you were informed that the beneficial owners of the domain names Villeroyandboch are Kilcroney Furniture Ltd. This continues to be the case. I attach herewith a copy of Kilcroney’s original correspondence with ESAT (a large Irish Telco/ISP operator in Ireland). Due to a number of errors in the registration process, Webcommerce were subsequently requested to secure the outstanding names on behalf of Kilcroney Furniture as per the attached fax, which we duly did under my name.
You will note that the fax includes the domain names villeroyandboch.com and kilcroneyfurniture.com and the contact reference is a Mr. Terry Rowan of Kilcroney Furniture, who I believe has written to you. You will also be aware from his correspondence with you, of his intention to acquire a domain name "villeroyandboch", yet further proof of our stance in this matter. Webcommerce registered both domain names in the same manner and have now been paid for costs relating to the domain name kilcroneyfurniture.com.
However, our costs remain outstanding for villeroyandboch in the sum of (e 628).
The domain names villeroyandboch are due for payment on 27/03/01 and we will not be renewing the names due to outstanding costs and instruction.
The onus is on you to resolve the issue with Kilcroney Furniture. Should you wish to furnish us direct with our costs (and assuming that the names have not been dropped), we will pay the domain registration charges for the y/e 27/03/02, concludes matters with Kilcroney Furniture and transfer the domain names as per your instructions. Other than as a service provider, Webcommerce including myself have never had any interest in the domain name villeroyandboch. As I believe this case is clear cut, we will not be entertaining any further correspondence in this matter unless accompanied by a cheque for above costs."
The Panelist is bound to comment that he finds it extraordinary that, assuming this e-mail was received by the Complainant’s representative, no mention is made of it in the Complaint.
6. Decision and Findings
The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the ICANN policy, as follows:
a) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
b) the Respondent has no rights or legitimate interests in respect of the domain name; and
c) the domain name has been registered and is being used in bad faith.
As to element (i), the Domain Names consist of the same expression "villeroyandboch" while the Trademark is VILLEROY & BOCH. While these are not visually identical, they are phonetically identical. Were it to be argued that the lack of visual identity was of any consequence, there can be no doubt that visually the domain names and the trademark are confusingly similar.
As to element (ii) of paragraph 4(a) of the ICANN Policy, the Respondent has done nothing to demonstrate that he has any rights or legitimate interests in the Domain Names. There is nothing to suggest that any of the circumstances mentioned in paragraph 4(c) of the ICANN Policy apply (i.e. before notice of the dispute preparation to use the Domain Names, being commonly known by the Domain Names or making a legitimate non-commercial or fair use of the Domain Names). The facts put forward by the Complainant make it plain that the Respondent has no rights or legitimate interest in the Domain Names. Indeed, the Respondent has been at pains to disclaim any such rights or legitimate interest, asserting that Kilcroney Furniture are (or were) the beneficial owners of the Domain Names.
Lastly, the Complainant must establish element (iii), i.e. that the Domain Names have been registered and are being used in bad faith. Paragraph 4(b)(i) of the Policy indicates to a respondent that the following circumstances shall be evidence of registration and use of a domain name in bad faith:
"circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name,"
The Complainant seeks to rely on this last paragraph as evidence that the Respondent has been guilty of registering and using the Domain Names in bad faith. However, the Complainant has made no attempt to argue that this Respondent has demanded "valuable consideration in excess of your documented out-of-pocket expenses directly related to the domain name(s)".
On the evidence, the Respondent has been willing to transfer the Domain Names on payment of his costs of e628, a sum (for three domain names) which seems not unreasonable. In the light of the Respondent’s e-mail of March 28, 2001, it would appear that, because the Complainant has refused to pay the sum of e628, the registration of each of the Domain Names has now lapsed. This would suggest that the launching of this administrative proceeding has been a waste of the Complainant’s money.
Nevertheless, the allegation has been made that the Respondent registered and has been using the Domain Names in bad faith, and the parties are entitled to the Panelist’s decision on that issue. Although the Respondent does not explain why he thought fit to register no less than three domain names, it seems clear that instructions of some kind were given to him by Kilcroney Furniture, and that Kilcroney Furniture were made aware that <villeroyandboch.com> was being registered. In those circumstances, the Panelist considers that it would be wrong merely to infer that the Respondent registered the Domain Names in bad faith. To do otherwise would place persons who act as agents for third parties in registering domain names in a difficult position.
Likewise, it would be wrong to seek to apply the rationale of the Telstra decision to the facts of the present case. At the end of paragraph 7.11 of the Telstra decision, the Panelist held:
"A remedy can be obtained under the Uniform Policy only if those circumstances [i.e. all the circumstances of the Respondent’s behaviour] show that the Respondent’s passive holding amounts to acting in bad faith."
In the circumstances of this administrative proceeding, the duty of the Respondent was manifestly not to use the Domain Names, but rather to hold them to the order of Kilcroney Furniture. This is what the Respondent did. If, as later asserted by Kilcroney Furniture, the Respondent has acted without authority he was entitled to take the view that if no one was prepared to pay his registration costs, he should allow the registrations of the Domain Names to lapse. On the facts of this case, non-use cannot be relied on as evidence of bad faith.
In the light of the findings in paragraph 6 above, the Panelist concludes that the Complainant has failed to make out a case under paragraph 4(a) of the ICANN policy.
Dated: July 23, 2001