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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Zingerle Metal SrL v International E-Z UP, Inc.
Case No. D2001-1283
1. The Parties
The Complainant in this administrative proceeding is Zingerle Metal SrL, an Italian corporation, with its principal place of business at Zona Industriale 103, 39040 Naz/Sciaves (BZ) in Italy. The Respondent is International E-Z UP, Inc. of 1601 Iowa Ave, Riverside, CA 92507 in the United States of America.
2. The Domain Name and Registrar
The domain name in issue is <mastertent.com> ("the Domain Name"), the Registrar of which is Network Solutions, Inc. ("the Registrar").
3. Procedural History
The WIPO Arbitration and Mediation Center ("the Center") received an electronic version of the Complaint on October 23, 2001, and the Center received a hard copy of the Complaint on October 26, 2001, accompanied by all annexures. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the UDRP"), and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"). The Complainant made the required payment to the Center.
On October 25, 2001, the Center transmitted to the Registrar by e-mail a request for registrar verification in connection with this case. On October 26, 2001, the Registrar transmitted via e-mail to the Center its Verification Response, confirming that the registrant is E-Z UP, Inc., the Respondent herein, and stating that the Administrative Contact and Technical Contact of the Respondent is Mr Steve Shaffer, of the same address as the Respondent. The Verification Response also confirmed that the version 5 of the Network Solutions Service Agreement and hence the UDRP applies to the Domain Name.
On October 29, 2001, the Center notified the Complainant of an error in the identification of the registrar of the Domain Name made in the Complaint and invited the Complainant to amend the Complaint to identify the Registrar correctly. The Complainant lodged the correction to the Complaint on October 30, 2001.
On November 5, 2001, the Center formally notified the Respondent by email to the Respondent’s registered email address that this administrative proceeding had been commenced, and provided a copy of the Complaint with full information concerning the lodgment of the Complaint and information regarding the provision of a Response, making clear that the final date for lodging that Response was November 25, 2001. November 5, 2001, is the formal date of the commencement of this administrative proceeding.
The Center also sent notification of the Complaint to the Respondent by courier (with all accompanying exhibits). The courier delivered the Complaint on November 7, 2001.
No Response has been filed by the Respondent. Notification of Default was sent by e-mail to the parties on December 3, 2001.
On December 10, 2001, this Panelist was appointed by the Center. The Panelist has filed a Statement of Acceptance and Declaration of Impartiality, and his decision is scheduled to be forwarded to the Center by December 24, 2001.
4. Factual Background
(a) The Complainant commenced manufactured folding tents or shelters of its own design in 1993 and selling them under the unregistered trade mark "masterTENT" in a logo consisting of a pyramid superimposed upon an oval ("the Trade Mark").
(b) Folding tents of the Complainant’s design sold under the Trade Mark in many countries in Europe and Scandinavia and other countries such as Japan, Singapore and Australia have increased from Ђ354,300 in 1994 to Ђ3,365,000 in 2000.
(c) The Complainant has supplied marketing materials prominently featuring the Trade Mark, which it has used extensively since 1993.
(d) Since 1998, the Complainant has operated a website under the domain name <mastertent.it>, which prominently features the Trade Mark.
(e) The Respondent is also in the business of manufacturing and/or selling folding tents or shelters.
(f) The evidence provided by the Complainant establishes that, from at least October, 1997, a company which may be related to the Respondent, E-Z UP Europe BV has been aware of the "masterTENT" products of the Complainant and of the Trade Mark.
(g) The Respondent operates a website with the domain name <ezup.com>. From that website, it appears that the Respondent has no product with a name similar to the Trade Mark.
(h) The Domain Name was registered in the name of the Respondent on April 29, 1997, and has since been renewed, but is not presently in use. At one time it may have pointed to the Respondent’s website, but it does not do so now.
(i) Prior to issuing the Complaint, the Complainant wrote a letter dated August 8, 1998, to the Respondent, expressing the Complainant’s concern that the Respondent may have secured the Domain Name to prevent the Complainant from using it, noting that the Respondent had no interest in it, and requesting that the Domain Name be transferred to the Complainant.
(j) No reply was received to the correspondence of the Complainant.
(k) The Complainant wrote an e-mail to the Administrative Contact and Technical Contact of the Respondent noting this, making the same complaint, and the same request, on July 24, 2001, and giving until July 27, 2001, for a reply.
(l) The Complainant received a letter from attorneys acting for the Respondent dated July 27, 2001. This letter confirmed receipt of the e-mail, but denied that the Respondent had received earlier correspondence. The letter claimed that the Respondent registered the Domain Name in good faith, "with the intention of developing a product line of canopies to be marketed using that domain" as well as making certain other claims which are not relevant to this administrative action.
(m) Following a further e-mail from the Complainant, the attorneys for the Respondent replied by e-mail, stating that the Respondent had removed the Domain Name from its DNS library, "thereby shutting down the site". Further correspondence by email was fruitless in resolving the matter, and the Respondent has not transferred to Domain Name to the Complainant.
(n) The Complainant has further established that the Respondent has also registered the domain name <ecotent.com> ("Eco-Tent" is a brand used by another competitor of the Respondent, Eide Industries, Inc), also registered on April 29, 1997, which does not appear to be in use, and <protent.com> ("Pro-Tent" is a brand used by another competitor of the Respondent, the Swiss company PRO-TENT Zeltsysteme AG), registered on October 9, 1996, and which presently goes to a website of the respondent mirroring its principal website, on which there are no producers called "Pro-Tent" or "Protent".
(o) The Complainant has succeeded in registering the domain name <mastertent.net>, which is in use and points to the Complainant’s website, and has permitted distributors to register <mastertent.de> and <mastertent.nl> and other such domain names, which also prominently feature the products of the Complainant and the Trade Mark.
5. Parties’ Contentions
(a) In accordance with paragraph 4(a) of the UDRP, the Complainant asserts, inter alia, as follows:-
(i) that the Domain Name is confusingly similar to the Trade Mark;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name;
(iii) that the Domain has been registered and is being used in bad faith.
(b) In respect of (i), the Complainant asserts that the word "MASTERTENT" has become through extensive use exclusively associated with the Complainant, and hence is a trademark within the meaning of paragraph 4(a) of the UDRP. The Complainant also notes that the Domain Name includes the word "MASTERTENT" which is a significant element of the Trade Mark.
(c) In support of (ii), the Complainant contends that:
(i) the Domain Name was being used to direct Internet users assuming that the Complainant would be identified by a ".com" domain name to the Respondent’s website, but is now not being use for any purpose; and
(ii) the Respondent has no product of the name "Mastertent", and indeed this name has a long history of use by and association with the Complainant, internationally.
It is evident from the evidence presented that the Complainant has not authorized or licensed the Respondent to use the Trade Mark or any part of it.
(d) In support of (iii), the Complainant asserts that bad faith is evidenced by:
(i) registration of the Domain Name in order to prevent the owner of the Trade Mark from reflecting the Trade Mark in a corresponding domain name, and that the Respondent has engaged in a pattern of such conduct (paragraph 4(b)(ii) of the UDRP);
(ii) registration of the Domain Name primarily for the purpose of disrupting the business of a competitor (paragraph 4(b)(iii) of the UDRP); and
(iii) use of the Domain Name with the intention of attempting to attract, for commercial gain, Internet users to the Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s web site or location or of a product on the Respondent’s web site or location.
As noted above, no Response has been filed.
Onus of proof
(a) The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the UDRP.
(b) However, the Respondent has had ample opportunity to respond to the allegations of the Complainant and has not done so.
(c) Paragraph 15(a) of the Rules instructs the Panel to decide a complaint on the basis of the statements and documents submitted in accordance with the UDRP, the Rules and any rules and principles of law that it deems applicable. In the absence of any response from the Respondent, the onus upon the Complainant will be satisfied if a conclusion which is capable of being drawn from the evidence provided by the Complainant is not contradicted by the Respondent; see Alcoholics Anonymous World Services, Inc. v Raymond WIPO Case No. D2000-0007; Ronson Plc v Unimetal Sanayi ve Tic A.S. WIPO Case No. D2000-0011 among numerous other decisions.
The Complainant’s trademark
(a) The Trade Mark is not registered. However, there is nothing in the UDRP restricting its application in respect of unregistered trademarks.
(b) The Complainant has provided evidence of substantial use of the Trade Mark, internationally, from at least 1994.
(c) The Panel is satisfied that the Trade Mark has through extensive use become identified internationally with the Complainant solely.
(d) The Panel is further satisfied that the word "Mastertent", notwithstanding its separate element "Master" might be regarded as having some laudatory signification, and the element "Tent" is plainly descriptive of the Complainant’s products, together are capable of acquiring secondary signification identifying the Complainant and its products, and on the evidence have done so.
(e) As to element (i) of paragraph 4(a) of the UDRP, the Panel notes that the determination of confusing similarity is a factual one which must be satisfied by the Panelist making a side-by-side comparison of the Trade Mark and the Domain Name, taking into account the degree of aural, visual, or conceptual similarity between the two, the similarity of the goods and services for which they are used and the inherent or acquired distinctiveness of the Trade Mark, as well as issues relevant to language; see Tchibo Frisch-Röst-Kaffee GmbH v Hans Reischl WIPO Case No. D2001-0079.
(f) The word "MASTERTENT" in the Domain Name is identical to the word "masterTENT" appearing in the Trade Mark, other than in graphical representation, and this is a very significant element in the Trade Mark.
(g) The Panel considers the Domain Name to be confusingly similar to the Trade Mark.
(h) Although not required to do so, the Panel also concludes that the word "MASTERTENT" has acquired secondary signification through extensive use and is identified as a trademark of the Complainant. In this case, the Domain Name is identical to the Complainant’s trademark.
Respondent has no legitimate interests in Domain Name
(i) In light of the behavior of the Respondent referred to above, it is impossible to conclude that the Respondent has any legitimate interest in the Domain Name.
(j) The evidence establishes, indeed, that the Respondent is a direct competitor of the Complainant, with its own trademarks, and has never used the brand "Mastertent" in respect of any of its products.
(k) Furthermore, notwithstanding the protestations of the Respondent’s attorneys in July, 2001, the Respondent has taken no steps to use the name "Mastertent" to promote any of its products.
(l) Indeed, the evidence strongly suggests that the Respondent was fully aware of the Complainant products and of the Trade Mark, before registering the Domain Name.
Registration and use in bad faith
(m) The conclusion from the evidence is overwhelming that the respondent registered the Domain Name in order to prevent the Complainant from reflecting the Trade Mark in a corresponding domain name, and further, from the evidence regarding the Respondent’s conduct with respect to the <ecotent.com> domain name and the <protent.com> domain name, that this was part of a "pattern of such conduct", within the meaning of paragraph 4(b)(ii) of the UDRP.
(n) Similarly, the conclusion is overwhelming that the Respondent registered the Domain Name primarily for the purpose of excluding the Complainant from registering its Trade Mark in the corresponding gTLD, as the Respondent appears to have done with respect to the <ecotent.com> domain name and the <protent.com> domain name, and has done so to make it harder for the Complainant to compete with the respondent on equal terms, and hence disrupt the Complainant’s business, within the meaning of paragraph 4(b)(iii) of the UDRP.
(o) Finally, the Panel finds it an equally overwhelming conclusion that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by use of the Domain Name, although it no longer does so, by creating a likelihood of confusion with the Trade Mark, within the meaning of paragraph 4(b)(iv) of the UDRP.
(p) The fact that the Respondent no longer is using the Domain Name does not alter this conclusion. The list of circumstances in paragraph 4(b) of the UDRP is non-exclusive. Previous decisions under the UDRP have given some guidance regarding the conduct which might be regarded as evidencing the required bad faith outside the examples given in paragraph 4(b); see Telstra Corporation Ltd v Nuclear Marshmallows WIPO Case No. D2000-0003; Club Méditerranée S.A. v Clubmedical WIPO Case No. D2000-1428; Time Inc v Chip Cooper WIPO Case No. D2000-1342.
(q) In this case, the Respondent’s refusal to transfer the Domain Name to the Complainant, whilst not using it, but still renewing it, should also be regarded as bad faith within the meaning of paragraph 4(b) of the UDRP.; see Telstra Corporation Ltd v Nuclear Marshmallows WIPO Case No. D2000-0003 in which it was observed that "the concept of a domain name ‘being used in bad faith’ is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith" (at paragraph 7.9), provided that the Panel "give close attention to all the circumstances of the Respondent’s behaviour. A remedy can be obtained under the Uniform Policy only if those circumstances show that the Respondent’s passive holding amounts to acting in bad faith." (at paragraph 7.11)
The Panel therefore concludes that the Respondent registered and has been using the Domain Name in bad faith.
In the light of the findings in paragraph 6 above, the Panel concludes that:-
- the domain name <mastertent.com> is confusingly similar to the Trade Mark of the Complainant; and
- the Respondent has no rights or legitimate interests in the domain name; and
- the domain name has been registered and is being used in bad faith.
Accordingly, the Panel determines in accordance with paragraph 15 of the Rules that the Domain Name <mastertent.com> be transferred to the Complainant, Zingerle Metal SrL, in accordance with paragraph 4(i) of the UDRP.
William Peter Knight
Dated: December 21, 2001