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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Piab AB v. EDCO USA Inc.

Case No. D2002-0059

 

1. The Parties

The Complainant is PIAB AB whose address is Box 4501, SE-183 04 Taby, Sweden. The Complainant is represented by Mr. Johan Mikaelsson of Domain and Intellectual Property Consultants AB (Dipcon AB) address being William Gibsons Vag 1SE-433 76 Jonsered, Sweden.

The Respondent is EDCO USA Inc, a private corporation of Missouri, USA. The Respondent is represented by Mr. Ed Johnson, 1671 Larkin Williams Road, Fenton MO 63026 USA.

 

2. The Domain Names and Registrars

The domain names in dispute ('Domain Names') are:

- <piab.biz>
- <xpiab.com>
- <xpiab.net>
- <piabx.com>
- <piabx.net>
- <quitpiab.com>
- <quitpiab.net>

The Registrars with which the Domain Names are registered are the following:

Network Solutions Inc, 505 Huntmar, Park Drive, Herndon, VA 20170-5142, USA and ("TLDs"), Inc. dba SRSplus, 1100 Glendon Avenue, 8th Floor, Los Angeles, CA 90024, USA.

 

3. Procedural History

Hard copies of the Complaint were filed on January 21, 2002, and an electronic format was filed on January 28, 2002. On January 23, 2002, the Center transmitted acknowledgment of receipt of Complaint. On January 25, 2002, the Center transmitted a request for register verification to Network Solutions and TLDs in connection with this case. On January 30, 2002, Network Solutions sent via e-mail to the Center a verification response confirming that the Respondent is the registrant. On February 4, 2002, TLDs sent via email to the Center a verification response confirming that the Respondent is the registrant.

On February 4, 2002, the Center verified the Complaint that satisfied the requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the 'Policy'), the Rules for Uniform Domain Name Resolution Policy (the 'Rules') and the Supplemental Rules for Uniform Domain Name Dispute Resolution (the 'WIPO Supplemental Rules').

On February 4, 2002, the Center formally commenced this proceeding and sought to notify the Respondent that its Response would be due by February 24, 2002. The Response was received on February 21, 2002.

On February 28, 2002, the WIPO Arbitration and Mediation Center notified the parties that an Administrative Panel had been appointed consisting of a single member: Professor Michael Charles Pryles, who had submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

 

4. Factual Background

The Complainant, PIAB AB is a multinational company in the vacuum technology business. The Complainant established it's first factory in 1951. Today the Complainant's vacuum products are marketed throughout the world and the company is represented in over 50 different countries by wholly or partially owned companies as well as by independent distributors and retailers.

The Complainant has registered the trademark PIAB in 21 countries and the PIAB trademark in USA was registered in 1969. The trademark PIAB is also registered in the following counties: Australia, Austria, Belgium, Denmark, Finland, France, Germany, Great Britain, Ireland, Italy, Japan, Luxembourg, Mexico, Netherlands, South Korea, Sweden, Switzerland and the US.

The Respondent registered the Domain Name <piab.biz> on November 7, 2001, with TLDs Inc. The remainder of the Domain Names as of January 30, 2002, are held by EDCO USA Inc (Respondent) as registrant and are 'active'.

 

5. Parties’ Contentions

The Domain Names will be dealt with in the following manner:

- piab.biz> will be referred to as the first category of Domain Names;

- piab.x.com>, <piabx.net>, <xpiab.com> and <xpiab.net> will be referred to as the second category and of Domain Names;

- quitpiab.com> and <quitpiab.net> will be referred to as the third category of Domain Names.

Domain Name and Registered Trademark Confusing Similar (paragraph 4(a)(i) of the Policy)

The Complainant asserts that the first category of Domain Names is identical and/or confusingly similar to the PIAB trademark registered by the Complainant. The Complainant submits that the relevant part of the domain name is identical to the Complainant's registered trademarks. Further, the Complainant submits that the ".biz" suffix should be disregarded when comparing a domain name with a trademark to determine similarity.

The Respondent asserts that the Complainant 'had every opportunity to register, but saw no value in doing so when the Respondent registered the (first category) Domain Name'. Further, the Respondent asserts that as the Domain Name has not yet been activated then no harm to the Complainant can be inferred, 'nor can any future intended use be foretold by the Complainant'.

The Complainant submits in regard to the second category of Domain Names that they are confusingly similar to the registered PIAB trademark. It submits that the letter 'x' added to the registered PIAB trademark results in a domain name that is confusingly similar to the PIAB trademark.

The Respondent claims that the letter 'x' is short hand for the word 'no' and therefore persons using the Domain Names would be aware that they are not affiliated with the Complainant.

The Complainant asserts with regard to the third category of Domain Names, that they are confusingly similar to the PIAB trademark. The Complainant asserts that adding words with a pejorative meaning to trademarks, satisfies the first element of paragraph 4(a) of the Policy.

The Respondent contends that the term 'quit' represents a description which would preclude a visitor of the web site from concluding that the Domain Names had some affiliation with the Complainant. Further, the Respondent contends that the word 'quit' has no pejorative meaning. That the word 'quit' has no disparaging effect and merely provides a descriptive or informative meaning.

Legitimate Interest or Right in the Domain Name (paragraph 4(a)(ii) of the Policy)

The Complainant contends that the Respondent does not have any rights in the registered trademark PIAB, nor is the Respondent a licensee of the Complainant.

Further, the Complainant contends that there has been no evidence of the Respondent's use or demonstrable preparations to use the Domain Names with a bona fide offering of goods or services.

The Respondent contents that it has a right to use the Domain Names for the purposes of disseminating information. The Respondent asserts that the provision of information should in itself constitute a bona fide purpose and be sufficient for a finding of a legitimate interest in the Domain Names.

Registration in Bad Faith (paragraph 4(a)(iii) of the Policy)

The Complainant asserts that the Respondent registered the Domain Names with an intention to sell the Domain Names to the Complainant for consideration in excess of the Respondent's out of pocket costs in registering the Domain Names.

The Respondent contends that the phrase 'a substantial offer' in it's letter of offer to the Complainant meant that it sought from the Complainant 'a real offer' which it would consider. Further, the Respondent contends that the registration of the Domain Names was not done with a view to sell and that the Respondent did not contact the Complainant to solicit the sale of the Domain Names.

The Complainant contends that the Respondent engaged in bad faith registration. The Complainant refers the panel to examples of 'bad faith registrations' by the Respondent relating to a competitor company named Vac-Cube.

The Respondent contends that submissions relating to the registration of domain names linked to Vac-Cube (a competitor) should be dismissed for irrelevance by this panel.

The Complainant in support of it's assertion of the Respondent's bad faith argues that the Respondent has linked the Domain Names to it's own website displaying it's own products. The Complainant asserts that as the Respondent provides the same type of products as the Complainant, a visitor that misspells the Complainant's domain name may wrongfully believe that he or she has arrived at a website managed by the Complainant or that the website has at least some affiliation to the Complainant.

The Complainant further contends that registration of 'defensive' domain names (such as, <quitpiab.com>) is increasing in frequency and as a consequence trademark owners have sought to anticipate the registration of such domain names by registering such defensive domain names themselves. The Complainant refers the panel to an example of IBM Inc registering such a pejorative domain name.

The Complainant asserts that as such registration becomes more frequent, a consumer who types in a domain name consisting of a trademark together with a pejorative word cannot be sure whether the web page he or she arrives at is connected to the trademark owner.

The Respondent contends that one cannot mistakenly type <quitpiab.com> or <quitpiab.net> as asserted by the Complainant. The Respondent asserts that the arguments put by the Complainant relating to defensive registration of Domain Names are not consistent with the Complainant's own actions. The Respondent contends that as the Complainant has had ample opportunity to register defensive Domain Names and failed to do so, it has foregone any rights in the Domain Names.

 

6. Discussion and Findings

General

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following:

- The Domain Names are identical or confusingly similar to the trademarks; and

- The Respondent has no right or legitimate interest in respect of the Domain Names; and

- The Domain Names have been registered and are being used in bad faith.

Paragraph 4(b) of the Policy sets out four illustrative circumstances that, if proved, constitute evidence of bad faith as required by paragraph 4(a)(iii) referred to above.

Paragraph 4(c) of the Policy sets out three illustrative circumstances that, if proved, constitute evidence of a right or legitimate interest as described in paragraph 4(a)(ii) referred to above.

Before discussing the application of the Policy to the facts of this case, it should be noted that the Respondent has stated in it's Statement of Response at page 3 paragraph 5 that it has not renewed registration over the domain names: <xpiab.com>, <xpiab.net>, <piabx.com> and <piabx.net>. Despite this the panel is informed that as of January 30, 2002, those domain names were all registered in the name of the Respondent. Therefore, the panel proceeds on the basis that the Respondent remains the registrant of all the Domain Names.

Domain Names Identical / Confusingly Similar

The panel finds that there is ample evidence of registered trademarks held by the Complainant for the phrase 'PIAB'.

Having found that the Complainant owns a registered trademark for the phrase 'PIAB', there can be little doubt that the first category of Domain Names is identical and/or confusingly similar to the Complainant's registered trademark. The panel finds that the addition of a ".biz" suffix is not sufficient differentiation when comparing a domain name with a trademark when determining questions of similarity.

In addition, whether or not a domain name has been activated has no bearing on whether a disputed domain name and a registered trademark are identical or confusingly similar. In this case the panel finds that the first category of Domain Names is identical to the Complainant's registered trademark.

With regard to the second category of Domain Names, the panel finds that the addition of a letter 'x' to the Complainant's registered trademark is insufficient to differentiate the second category of Domain Names from the Complainant's registered trademark and finds that the former is confusingly similar to the latter. The mere addition of the letter 'x' either before or after a registered trademark does not serve to adequately distinguish it. The Domain Name therefore remains confusingly similar to the registered trademark.

The panel finds, in regard to the third category of Domain Names, that the word 'quit' is pejorative in meaning. The panel agrees with the view of panels in previous cases that a pejorative phase added to a registered trademark is likely to result in a confusingly similar domain name. See e.g. D2000-0996 Diageo plc v. John Zuccarini, Individually and t/a Cupcake Patrol. Therefore the panel finds pejorative references added to a registered trademark are confusingly similar.

No Right or Legitimate Interest

The panel finds that the Respondent has no right or legitimate interest in the Domain Names. The panel does not accept the Respondent's contention that the dissemination of product information directly in competition to the Complainant's registered trademark creates a legitimate interest or right in the Domain Names. On the contrary, the panel finds that competitor product information offered through the Domain Names does not constitute a legitimate interest or right vested in the Respondent.

Domain Names Registered and used in Bad Faith

The panel finds that the Respondent has registered the Domain Names, mainly to:

- prevent the Complainant (owner of the registered trademark) from reflecting the trademark in a corresponding domain name;

- gain a commercial advantage from potential confusion by website users; and

- obtain payment from the Complainant for the transfer of the Domain Names in excess of reasonable costs of registration.

The panel finds that the Respondent's request that a substantial offer of payment be made by the Complainant for the transfer of the Domain Names constitutes bad faith. The panel finds that the Respondent has sought to profit from the registration of the Domain Names.

The panel finds that as the Respondent has sought payment for the Domain Names over and above its expenses in registering the Domain Names and when coupled with the fact that the Domain Names (with the exception of the first category) are linked to the Respondent's domain name with obvious commercial gain accruing to the Respondent, the panel finds that the Respondent has registered and using the Domain Names in bad faith.

 

7. Decision

I find that in view of the above the Domain Names should be transferred to the Complainant.

 


 

Professor Michael Charles Pryles
Sole Panelist

Dated: March 13, 2002

 

Источник информации: https://internet-law.ru/intlaw/udrp/2002/d2002-0059.html

 

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