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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aura Light International AB v. Mark Brazier-Jones
Case No. D2002-0332
1. The Parties
The Complainant is Aura Light International AB, Lumavagen, PO Box 508, 371 23 Karlskrona, Sweden. Its authorized representative is Monika Colak, Verisign Sweden AB, SE-200 42 Malmö, Sweden.
The Respondent is Mark Brazier-Jones, Hyde Hall Barn, Sandon, Buntingford, Hertfordshire, SG9 ORU, United Kingdom
2. The Domain Name and Registrar
The domain name at issue is <auralight.com>.
The Registrar is Network Solutions Inc, 505 Huntmar Park Drive, United States of America.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center ("the Center") by e-mail on April 8, 2002, and a hardcopy was received by the Center on April 16, 2002. The Center acknowledged the receipt of the Complaint on April 11, 2002.
On April 12, 2002 the Center sent to Network Solutions a request for verification of registration data. On April 17, 2002, Network Solutions confirmed that it is the Registrar, that the Respondent is the Registrant of the domain name <auralight.com>, and also provided details of the administrative, technical and billing contact for the domain name.
The Center verified that the Complaint satisfied 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") and that payment was properly made. The Panel is satisfied this is the case. On April 18, 2002, the Complaint was properly notified in accordance with the Rules, paragraph 2(a), and the administrative proceedings commenced.
On May 3, 2002 the Center received a response by e-mail. Since the Response had several deficiencies, the Center sent a Deficiency Notification to the Respondent on May 3, 2002. On May 7, 2002, the Respondent informed the Center by e-mail that four signed hardcopies of the Response had been sent to it, which were received by the Center on the same date.
On May 22, 2002, the Center notified the Parties that an Administrative Panel, composed of a single member, Dr. Gerd F. Kunze, had been appointed and that the Panelist had duly submitted a "Statement of Acceptance and Declaration of Impartiality and Independence" to the Center.
An amended Response in reply to the Center’s Notification of Deficiency was received in hardcopy on May 23, 2002, early enough to be transmitted to the Panelist together with the hardcopy of the Complaint. The Panelist sees no reason not to accept these attachments, which were already announced in the timely e-mail Response, to be considered for the decision, only because the mail arrived at the Center with a certain delay. The date scheduled for issuance of the Panel’s decision is June 5, 2002.
4. Factual Background
The Complainant is a manufacturer of high-quality light sources, in particular fluorescent lamps. Its long life fluorescent lamps are used internationally in many public places, such as the St. Gotthard Tunnel, the Berlin Highway, and the Öresund bridge between Sweden and Denmark (these and other examples are shown in Annex 3 to the Complaint).
The Complainant is, amongst others, the owner of trademarks for the wordmark AURALIGHT in different countries, including Community Trade Mark No. 1115047 of July 10, 2000, (application date March 23, 1999) for goods in cl. 9 of the International Classification, including optical lamps and lanterns, luminous signs, neon signs, and parts and components of these products (registrations of the wordmark AURALIGHT in Norway and Switzerland have been applied for after the Community Trade Mark). It is also the registered owner of the wordmark AURA in several countries, including the United Kingdom (registration No. 1572833 of May 23, 1994, for "lamps, luminaries, lamp support columns; parts and fittings for all the aforesaid goods" in cl. 11), and of device marks, containing the word AURA combined with a graphical device and sometimes with additional text, such as "long life lights". Copies of these registrations are included in Annex 8 to the Complaint.
The Complainant uses several domain names, containing its trademark AURALIGHT in gtlds, such as <auralight.org>, <auralight.biz> and <auralight.info>, and also in several cctlds.
The Respondent has for a good number of years developed a business of designing, manufacturing and selling to an international clientele a range of exclusive furniture and home lighting (as opposed to the Complainant’s outdoor lighting). This submission is documented by catalogues submitted together with the Response.
The Respondent registered on February 17, 2000, the domain name <auralight.com>.
5. Parties’ Contentions
The Complainant submits that (1) the domain name <auralight.com> is identical or confusingly similar to a trademark or service mark, in which the Complainant has rights; (2) the Respondent has no rights or legitimate interests in respect of the domain name; (3) the domain name was registered and is being used in bad faith.
According to the submissions of the Complainant it has established a subsidiary in Great Britain and since 1994, has been represented in the country. The Complainant has not submitted evidence for these submissions.
According to the submissions of the Respondent, it has in 1997, developed marketing strategies for a new lighting product, which did not fit in the category of furniture and lighting normally sold by the Respondent and therefore was launched under the name "Auralight". The Respondent has submitted promoting materials for the "Auralight new lighting concept with 7 clip-on clip-off filters". The Respondent has also submitted evidence for a patent application, dated February 2000, for the "clip on clip off colored filters" and copies of invoices from a design Consultant, and from an electronics company (Annex 3), dating back, not to 1997, rather to the year 1999 (the earliest invoices for AURALIGHT leaflets being dated February 10 and 19, 1999, respectively). The Respondent has also submitted evidence for its reputation by attaching a copy of a letter from "British Trade International", dated December 29, 1999, in which the Respondent is invited to participate in the "Design Excellence Exhibition" part of a British trade promotion in the Philippines in March 2000. According to that evidence apparently also an "Auralight" lighting of the Respondent has been exhibited together with other articles of the Respondent.
When the Respondent submits that its product "Auralight" is not meant for commercial nor industrial use, its intention is evidently not to describe its use of the term "Auralight" to be non-commercial in the meaning of the Policy. From the context it is clear that the Respondent intends to explain that "Auralight" is a lighting tool for the home, as opposed to the Complainant’s "commercial and industrial" use of the trademark AURALIGHT for long life fluorescent lamps in public places.
The Respondent submits that it registered the domain name <auralight.com> for its own business activities and, since it was even not aware of the Complainant or any trademark registration of the Complainant, it did not act in bad faith.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the domain name of the Respondent be transferred to the Complainant:
1) the domain name is identical or confusingly similar to a trademark or service mark ("mark") in which the Complainant has rights; and
2) the Respondent has no rights or legitimate interests in respect of the domain name; and
3) the domain name has been registered and is being used in bad faith.
1) Identity or confusing Similarity with a Mark in which the Complainant has rights
The domain name <auralight.com> is identical to the Community Trade Mark AURALIGHT in which the Complainant has rights (the generic TLD indicator ".com" cannot be taken into consideration when judging identity or confusing similarity). The domain name is also very similar to the UK registration AURA of the Complainant, since the part "light" of the domain name is descriptive for the product, for which the domain name is used. It is not disputed between the parties that actual cases of confusion with the Complainant have taken place as a consequence of the use of the domain name <auralight.com> by the Respondent.
2) Legitimate Rights or Interests in respect of the Domain Name
The Respondent has no connection or affiliation with the Complainant, who has not consented to the Respondent's use of the domain name, which is identical with its trademark.
However, the Respondent has submitted evidence that before any notice to it of the dispute, it has used the name "auralight" in connection with a bona fide offering of goods. It has even submitted evidence to have made demonstrable preparations to make such use, which date back before the date of the Community Trade Mark application, dated March 23, 1999, AURALIGHT of the Complainant (Annex 3 to the Response, showing invoices dated February 10 and 19, 1999). It is not disputed between the parties that the Respondent, before making active use of the domain name <auralight.com> for a website, advertised on its homepage http://www.brazier-jones.com its "Auralight Roomsets". The Complainant refers in its Complaint to that use, submitting in that connection that the Respondent provided for an inactive link to its "Auralight site" (Annex 11 to the Complaint) which only after the Complainant’s request to transfer the domain name <auralight.com> for the amount of 500 Euros, had been activated by the Respondent (Annex 13 to the Complaint shows the website http://www.auralight.com of the Respondent).
The Complainant considers the use of the name "Auralight" by the Respondent to be an infringement of its trademark rights in the trademark AURALIGHT and therefore considers that the Respondent’s use of its corresponding domain name cannot be legitimate. However, as evidenced by the Respondent, it started preparations for the use of the "Auralight" product even before the Community Trade Mark AURALIGHT of the Complainant was applied for registration. It is therefore a question of British law and practice to decide whether the Respondent committed trademark infringement or whether it has better rights or at least user rights in an unregistered trademark based on Common Law. Even considering that the Complainant has submitted evidence for having rights in the trademark AURA, dating back to 1994, it is under the Policy, and based on the evidence submitted by both parties, not possible to arrive at the conclusion that the Respondent had no legitimate interests. The Complainant has submitted that it had been represented in the United Kingdom since 1994. However it has not submitted evidence for that submission or for any use of its trademarks AURA and AURALIGHT or any other of its trademarks. The Panel cannot therefore, based on the submissions of the parties, decide upon the difficult questions under British trademark law and practice, whether at the time of launching its product "Auralight" the Respondent infringed any existing trademark rights of the Complainant. Since the submissions and evidence of the Complainant do not allow a clear conclusion that the Respondent had no rights or legitimate interests in the domain name <auralight.com>, the Panelist tends, based on the evidence submitted by the Respondent, to apply paragraph 4(c)(i) of the Policy in favor of the Respondent, according to which it may prove that before any notice of the dispute it used a name corresponding to the domain name, and in that context also the domain name, in connection with a bona fide offering of goods or services. However, no final decision need be taken on that question, because the submissions and evidence of the Complainant are not sufficient, in view of the submissions and evidence of the Respondent, for a conclusion that the Respondent has registered the domain name in bad faith.
3) Registration and Use in Bad Faith
For a Complainant to succeed, the Panel must be satisfied that a domain name has been registered and is being used in bad faith.
As an example, the Policy paragraph 4(b)(i) mentions registration of 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 a mark or to a competitor of that Complainant for valuable consideration in excess of out-of-pocket costs directly related to the domain name. A generally applied test is therefore whether a Respondent has attempted to sell the domain name for a sum in excess of the Respondent’s out of pocket expenses in registering the domain name.
At first glance this test seems to apply in the present case, since the Respondent has offered, to sell the domain name <auralight.com> to the Complainant for the sum of UK Ј19,000, a sum which is clearly in excess of the out of pocket expenses of the Respondent in registering the domain name (the sum, mentioned in the Complaint, of Ј190.000 was however not requested by the Respondent, as may easily be seen from Annex 10 to the Complaint, submitted as evidence for the request of the Respondent). However, the Respondent has submitted arguments speaking against the assumption that it acted in bad faith.
Before registering the domain name <auralight.com> the Respondent had commenced using the term "Auralight" as a trademark for its new product, which it developed at a time at which the Community Trademark AURALIGHT of the Complainant had not been applied for (see above). The Respondent cannot therefore have infringed the rights of the Complainant in that mark when it adopted the unregistered trademark "Auralight" for its product. It may have infringed the earlier UK trademark registration AURA of the Complainant. However, based on the facts and evidence submitted by the parties, the Panelist is not in a position to arrive at a conclusion about this question. Contrary to the submission of the Complainant, the fact that the Complainant and the Respondent are both using their respective trademarks and domain names for similar products (both are lamps), does not allow, in view of the particular circumstances of the present case, the conclusion that the Respondent must have had knowledge of the Complainant, when choosing the domain name <auralight.com>. Even if the respective goods are similar or even identical in that they are both lamps, it is decisive that the parties to this proceeding market their products to a totally different clientele and cannot therefore be considered to be competitors (and in view of the specific clientele of the Complainant, it is not unlikely that the Respondent, who clearly does not belong to this clientele, ignored its existence).
Also, whether after registration of the Community Trade Mark AURALIGHT by the Complainant, the Respondent’s use of the term "Auralight" for its product must be considered to be trademark infringement, or the Respondent’s earlier use of the term "Auralight" amounts to better rights or at least to a right for continued use under British Common Law principles, cannot be decided within the context of the present proceeding. Even if the Respondent’s adoption and/or use of the term "Auralight" were to be considered infringement of the Complainant’s rights in any of its trademarks, the very fact that the Respondent adopted the term "Auralight" as a trademark for its product, cannot, under the circumstances of the case, be considered adoption of the Complainant’s trademark AURALIGHT in bad faith.
When, in February 2000, the Respondent registered the domain name <auralight.com>, it registered its own unregistered trademark "Auralight" in the ".com" domain in order to be able to use, for its new product, a domain name which corresponded to its trademark, for its new product. As submitted by the Complainant itself, the Respondent soon mentioned the domain name <auralight.com> as reference for more information about its product "Auralight" which it advertised on its homepage. Even if the website <auralight.com> was activated only on December 13, 2001, it was clearly used to advertise the "Auralight" product of the Respondent and not for any other purpose. This confirms that the Respondent registered the domain name in order to promote its own "Auralight" product and not to disrupt the business of the Complainant (registration in the ".com" domain may be explained by the fact, which is evidenced in the attachments to the Response, that the Respondent serves an international clientele).
When about one year after registration of the domain name <auralight.com> and a much longer period of use of the unregistered trademark "Auralight", including use of both the trademark and the domain name on the Respondent’s homepage, the Respondent was approached by the Complainant, it was nevertheless prepared to transfer the domain name to the Complainant, apparently because it realized that to a certain extent confusion of customers of the Complainant, who is acting under its trade name Aura Light, was arising out of its use of the domain name <auralight.com>. As may be seen from the more complete exchange of e-mails in the context of the Respondent’s offer for sale, which the Respondent submitted as Attachment 5 to its Response, the Respondent, in its e-mail dated March 28, 2001, explained to the Complainant that it needed a domain name for its product "Auralight". As a consequence, when selling the existing domain name to the Complainant, the Respondent would have to change the name (trademark) of its product named "Auralight" and to re-launch it. Therefore the Respondent expected a fair price to be paid taking into account the necessary extensive changes. This shows that the Respondent did not intend to sell the domain name as such for an excessive amount of money, but offered to sell the domain name if the Complainant was prepared to reimburse it for the costs invested in the adoption and use of the unregistered trademark "Auralight" for its product. In an ensuing exchange of e-mails, the Respondent listed in more details the costs (for printing and design for office stationary, brochures, instruction booklets, logo stickers and swing tags; for re-advertising in the trade magazines and newspapers; for re-designing and producing the metal name plate which appears on each Auralight lamp) to be covered and the Complainant explained that, having adopted other domain names, which seem to function well, it did not have much use for the domain name, and would therefore not be prepared to pay a high amount. Finally, after months of exchanges of e-mails between the parties, the Respondent requested, based on the calculations done by its people, an amount of no less than Ј19,000 (the Respondent submitted some evidence for its costs in Attachment 3 to the Response). During all these months and exchanges of e-mails the Complainant never raised a legal objection against the Respondent’s use of the domain name, rather submitted to be interested in acquiring the domain because "it would have been nice to own the company name as a domain also" (e-mail dated April 11, 2001, contained in Attachment 5 to the Response). However, on December 5, 2001, the representative of the Complainant sent a cease and desist letter to the Respondent and for the first time claimed that the use of the domain name <auralight.com> was an infringement of its Community Trade Mark and the product Auralight constituted a clear violation of that Community Trade Mark, and at the same time offered the sum of 500 Euros for a voluntary transfer.
Taking into account that the Respondent is a leading home furniture and home lighting provider, that it developed a new and unique lighting product for use in private homes, and that it promoted that new product with brochures and leaflets and also on its home page in the Internet, there are no circumstances discernible which would indicate 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 the same reasons it has apparently not registered the domain name primarily for the purpose of disrupting the business of the Complainant, which is manufacturing and selling its lighting products to a different clientele. In view of the facts mentioned before and of the totally different business activities and clientele of the parties, it is also most unlikely that the Respondent has attempted to attract, for commercial gain, Internet users to its website. On the contrary, where confusion arose, the Respondent at once forwarded e-mails to the Complainant, which were addressed to it but concerned the Complainant.
Even if the circumstances listed in paragraph 4(b) of the Policy are only examples of evidence of registration and use of a domain name in bad faith, the Panel fails to see any other circumstances which would show that the Respondent has registered the domain name <auralight.com> in bad faith. Since for a Complaint to succeed the Complainant must prove that the Respondent has registered and is using the domain name in bad faith, it is not necessary to discuss whether the Respondent now, that it is informed about the claimed trademark rights of the Complainant, is using the domain name in bad faith. As said before, the Respondent requested the payment of Ј19,000 in view of its need to re-launch its product under a new trademark. Whether that request was justified or not depends on the question whether the use of the unregistered trademark "Auralight" by the Respondent for its product infringes the trademark rights of the Complainant. That question cannot be decided in the present proceedings, where the transfer of the domain has been requested based on the submission that it has been registered and is being used in bad faith. Assuming that the use of the trademark "Auralight" by the Respondent is considered to be infringement of the Complainant’s trademark rights in the United Kingdom, a question to be decided by the courts, the use of the domain name <auralight.com> of course also infringes these rights. It may also be possible that the Respondent’s use of the unregistered trademark "Auralight" on the Internet and its use of the domain name <auralight.com> infringes the rights of the Complainant in its trademarks in other countries, such as in Sweden. These questions and possible remedies of the Complainant against such use depend on the manner in which the Respondent uses its trademark and its domain name on the Internet (e.g. whether it offers "Auralight" products in the ".com" domain for sale in all countries without exclusion of countries in which the Complainant has better rights and/or without a clear statement that the Respondent is not related to the Complainant and has no rights to use the Complainant’s trademarks, etc). In that context the WIPO Joint Recommendation on the Protection of Marks, and Other Industrial Property Rights in Signs, on the Internet, adopted on October 3, 2001, is referred to. All these questions of possible trademark infringement, may arise, but cannot be considered in the present proceeding, independently from the question, to be denied, whether the Complainant has proven that the Respondent has registered the domain name <auralight.com> in bad faith.
In conclusion the Panel is of the opinion that in the present case the Complainant tries to solve a possible trademark infringement case between the parties, which raises complicate legal issues, with the help of the Policy, which is not designed for that purpose. The purpose of the Policy is to solve cases of clear registration and use of domain names in bad faith, and as said before, the Complainant has failed to prove that the Respondent registered the domain name <auralight.com> in bad faith.
The Panel decides and orders that:
(i) Complainant has failed to establish the domain name has been registered and is being used in bad faith;
(ii) The Complaint is dismissed.
Dr. Gerd F. Kunze
Dated: June 4, 2002