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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Princess International Sales and Service Limited and Princess Yachts International PLC v. Lambert and Turner/Lambert Turner Marine
Case No. D2002-0419
1. The Parties
Complainants in this administrative proceeding are Princess International Sales And Service Limited (which trades as Princess Motor Yacht Sales and will be referred to below as the "First Complainant" or "PMYS") of Northampton, United Kingdom; and Princess Yachts International PLC (which will be referred to below as the "Second Complainant" Or "PY") of Devon, United Kingdom.
The second Complainant manufactures and sells a range of luxury yachts under the name "Princess". The first Complainant is the exclusive distributor of vessels made by the second Complainant in the UK, Spain (with the exception of the coast from the east of Valencia to France), Portugal, Turkey and the Channel Islands. "Princess" vessels are the only new motor yachts sold by the first Complainant. The first Complainant is the proprietor of the domain names <princess.co.uk> and <princess.eu.com>. The second Complainant is the proprietor of the domain name <princess-yachts.com>.
The Respondent in this administrative proceeding is Mr. Richard Lambert of Mallorca, Spain, the registered owner of the disputed domain names, <princess-spain.com> and <princessspain.com>.
The registrants of these domain names are "Lambert and Turner" and "Lambert Turner Marine" respectively. These are the trading names of Mr. Richard Lambert. The Respondent also appears to trade as "Lambert & Turner Marine".
2. The Domain Names and Registrar
This dispute concerns the domain names <princess-spain.com> (domain name (1)), <princessspain.com> (domain name (2)).
The Registrar of domain name (1) is Tucows, Inc., the Registrar of domain name (2) is Easyspace Ltd.
3. Procedural History
On May 2, 2002, the Complainant submitted a complaint by e-mail to the World Intellectual Property Organization (WIPO) Arbitration and Mediation Center ("the Center") for a decision in accordance with the Uniform Domain Name Dispute Resolution Policy ("the Policy"), 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). On May 7, 2002, the Center received the hardcopy of the same from the Complainant. The Complainant elected to have the dispute decided by a three-member Administrative Panel.
On May 7, 2002, the Center sent the Acknowledgment of Receipt of Complaint by e-mail to the Complainant, its authorized representative and the Respondent. On the same day, the Center sent a Request for Registrar Verification to the Registrars. The Registrars confirmed by e-mail with the Center that they were the Registrars of the disputed domain names and that the registrant of domain name (1) is "Lambert and Turner" and the registrant of domain name (2) is "Lambert Turner Marine".
On May 23, 2002, the Center found that the Complainant had satisfied the formal requirements of the Policy, the Rules and the Supplemental Rules.
On May 24, 2002, the Center sent the Notification of Complaint and Commencement of Administrative Proceeding (the Notification) by post/courier (with enclosures), e-mail (with the complaint but without attachments) and by facsimile (with the complaint but without attachments) to the Respondent’s authorized representative, and transmitted by e-mail the complaint (without attachments) to the Complainant’s authorized representative. It also extended a copy of the Notification to the Internet Corporation for Assigned Names and Numbers (ICANN) (with the complaint but without attachments) and the Registrar (with the complaint but without attachments). The said Notification set the formal date of the commencement of this administrative proceeding as May 24, 2002 and required the Respondent to submit a response to the Complainant and the Center within 20 calendar days from the date of receipt of the Notification, i.e. by June 13, 2002, failing which the Respondent would be considered to be in default.
On June 13, 2002, the Center received the response from the Respondent by facsimile and on June 19, 2002, in hardcopy.
On June 14, 2002, the Center transmitted a Response Deficiency Notification. Communications between the Center and Respondent ensued from June 14-20, 2002, regarding the Response Deficiency Notification.
On July 15, 2002, the Center sent a Notification of Appointment of Administrative Panel, appointing Paz Soler Masota, Jonathan Turner, and François Dessemontet, each of whom had previously submitted a Statement of Acceptance and Declaration of Impartiality and Independence. François Dessemontet was designated Presiding Panelist.
4. Factual Background and Parties’ Contentions
A. The Complaint:
The second Complainant, PY, is the proprietor of the following registered trade marks:
(1) Spanish Registered Trade Mark No. 1,536,382-1 for the trade mark "PRINCESS" in class 12, filed on December 14, 1989, and registered on January 5, 1993.
(2) Community Trade Mark ("CTM") No. 000763235 for the trade mark "PRINCESS" (in stylised font) in classes 12, 37 and 39, filed on March 2, 1998, and registered on March 19, 2001.
The goods in international class 12 include boats, yachts and (motor) power boats.
The Complainants have used the trade mark "PRINCESS" in relation to motor yachts and yacht sales since the 1970s. As a result of extensive usage, advertising and promotion, the Complainants have acquired substantial goodwill and reputation in the trademark "PRINCESS" in relation to (1) motor yachts and (2) motor yacht sales. Such goodwill and reputation exists throughout the world, including in the UK and Spain. Accordingly, in addition to the registered trademarks identified above, the Complainants have acquired common law trademark rights in the trademark "PRINCESS" in such fields. At least in the UK such common law rights arise by reason of the law of passing off.
The domain names in dispute consist only of the Complainants’ trademark "PRINCESS" and the suffix "SPAIN" or "-SPAIN". The addition of "SPAIN" or "–SPAIN" does not add any distinguishing feature to the word "PRINCESS". When used in relation to yachts and yacht sales the addition of the suffix merely serves to indicate or suggest contrary to the fact that either:
(1) the domain names belong to and are operated by a Spanish office or branch of either or both of the Complainants, or
(2) the domain names belong to and are operated by an official agent or distributor of the Complainants, who is authorised and approved to act as the Spanish representative of one or both of the Complainants.
As to the Respondent, Richard Lambert commenced employment with PMYS in about September 1994 as a junior sales trainee. Initially he worked in the UK. For a period ending in January 2000 he worked for PMYS in its sales office in Majorca. He left in January 2000 by mutual agreement. Although termination was by agreement, it arose from a legitimate complaint on the part of PMYS, in that Richard Lambert had set up the Respondent’s firm of yacht brokers whilst still employed by PMYS.
Subsequent to his departure, relevant events have been as follows:
(1) May 7, 2000: registration of the domain name <lambert-turner.com>;
(2) May 9, 2000: Richard Lambert arranged or was involved in the registration of the disputed domain names;
(3) July 20, 2001: PMYS sent an e-mail to Mr. Lambert asking for the domain name <princess-spain.com> to be transferred to PMYS. After this e-mail there was a telephone call between Chris Rubython of PMYS and Richard Lambert about the domain names. Richard Lambert intimated that he would make a formal response.
(4) July 24, 2001: the Respondent replied in the following terms:-
"… the potentiality for this site for Lambert and Turner per annum would be between Ј64,000 … and Ј80,000 …"
It is to be noted that the Respondent has allegedly no trademark or other rights to the domain names in dispute. The Respondent is not a branch of the business of either of the Complainants. It is not an authorised distributor or agent of either of the Complainants. The Respondent has never called itself or traded under the name "PRINCESS-SPAIN" or "PRINCESSSPAIN" until material appeared at one of the domains, following a complaint from the first Complainant. The sequence of events strongly suggests that material has only been placed on one of the domains in dispute in a belated attempt to show a genuine and legitimate use for the domains.
It is allegedly to be inferred:
(1) That the domain names in dispute were registered with the intent that in due course they would be sold or transferred to the Complainants for a sum considerably in excess of the Respondent’s out of pocket costs directly related to the domain names.
(2) The Respondent, knowing the Complainants’ business, registered the names so as to prevent the Complainants from reflecting their rights in the PRINCESS trademarks in Spain in a corresponding domain name. <princess-spain.com> and <princessspain.com> are particularly suitable domain names for the Complainants to use in relation to their business in Spain. Neither of the Complainants is a Spanish company (albeit PMYS has interests in two Spanish companies connected with the sale and service of Princess vessels), yet they have an international range of customers including many customers in Spain of all nationalities.
B. The Response
The Response first asserts that the complaint is invalid under the Rules and the Supplemental Rules through faulty submission as it appears to be an incomplete draft and fails to properly supply supporting information in relation inter-alia to its own para N° 28 which is incorrectly completed.
Further, the Response asserts that this action,whereby a large entity having failed in negotiations to purchase or bully the smaller entity into surrendering domain names then resorts to WIPO, is a case of reverse domain name hijacking.
Moreover, the Respondent does have legitimate rights to the use of these domain names having registered them, operated a website for some time, and being involved in the sale of second-hand Princess yachts in Spain, and simply by the creation of the unique names Princess Spain; for example, should he wish to sell the domain to a kitchen manufacturer or hotel ground called Princess operating in Spain or indeed a sex domination website called "princessspain" he has the legitimate right to do so under EU and Spanish Law.
As to the reverse domain name hijacking, the Respondent notes that the Complainants changed their trading name in November 2001, some 17 months after Richard Lambert registered the domains.
5. Discussion and Findings
A. Domain Names Confusingly Similar to the Trademarks
There is no doubt that <princessspain.com> and <princess-spain.com> are confusingly similar to the trademark of the Complainants. The PRINCESS trademark is extremely well known in the boating industry in Europe. Hence, it deserves protection as is foreseen under Art. 16 (2) TRIPs and Art. 6 bis Paris Convention of 1883. Therefore, although the name "PRINCESS" may be said to be a generic word at first, the likelihood that it will be mistaken for some royal title in Spain is as remote as the "Titanic" being mistaken for the scion of the Titans of Greek mythology. This is not to say that the trademark "PRINCESS" would be protected all over the world against any use in any industry whatsoever, but this is not the question pending before the Panel. The Respondent’s website is obviously connected with the boating industry, and more particularly the sale of motor yachts. Therefore, the infringement of the "PRINCESS" trademarks where they are protected (to wit, Spain where the Respondent is apparently domiciled and transacts business, as well as the European Union) is obvious. The fact that the community trademark is registered with stylized fronts is no bar to that protection against a domain name misappropriation. In the U.S.A., the trademark PRINCESS for boats would also be protected because of its secondary meaning.
The fact that "SPAIN" is added to the "PRINCESS" trademark does not remove the cause for confusion, since it is common to add to the name of the manufacturer or to the name of one of its foreign retailers the territory in which this branch is active. It certainly implies for the Internet users that an authorization has been granted by the holder of the trademark to the entity using the same. In this regard too, the domain names at issue are misleading.
B. Rights or Legitimate Interests of the Respondent
The Respondent has no rights or legitimate interests in the domain names at issue.
The domain name was not used by the Respondent in connection with any offering of goods or services before notice of the dispute, and the Respondent has not provided evidence of any other use of "Princess-Spain" as a trading name before notice of the dispute. Furthermore, having evaluated the evidence presented, the Panel concludes that the Respondent’s subsequent use of the domain name has not been bona fide or legitimate.
Although the Respondent is free to deal in second-hand <Princess> boats as every broker or dealer in the world, he is not entitled to pass himself off as an authorized dealer. Further, he is not entitled to divert the renown of the Complainants to his own benefit.
Finally, he should not be in the position to tarnish the luxury image of the Complainants by airing a rather amateurish image on his site, which implies for third parties that the Complainants might authorize a second-grade business to use their marks on the Internet.
C. Registration and Use in Bad Faith
Several elements indicate that both registration and use of the domain names did not occur in good faith.
First, the Respondent, as a former employee of the First Complainant for six years, was certainly aware of the renown of the Complainants’ trademark.
Second, the Respondent offered to sell the domain name at an extravagant price, much superior to his out-of-pocket expenses.
Third, the Respondent uses only one of the two domain names, and this use apparently started only after that the Complainant threatened to have recourse to the Policy or ordinary court proceedings.
The Respondent further registered different domain names comprising two trade names of the British boating industry. There is a pattern of misappropriation of intellectual property rights in this behaviour, which is indicative of unfair competition contrary to the honest practices in commerce and industry as are required under Article 10 bis of the Paris Convention.
The Respondent has developed a strategy which cannot be explained on its own merits. The choice of the domain names was not casual at all. Because of the information and experience he had access to as an employee, he was in the position to know precisely that the Spanish market was a target of great importance for the firms of the Complainants. The fact that he is using the pages (apparently) to present himself as a specialized trader of Princess boats contradicts completely his alleged intention to register domain names suitable for any other fields of activity.
The printed version of the material initially shown at the website "www.princess-spain.com" differs from the one currently displayed at the same URL as well as at "www.princessspain.com". At present, it is remarkable that the pages of Respondent have been modified in order to accomplish a very similar look and feel to the ones of the Complainants. This identical livery, along with the above-mentioned facts, characterizes this case as a paradigmatic example of the so called acts of obstruction. The conduct of Respondent constitutes a crystal-clear case of acts suitable to damage, without justification, the position gained previously by another competitor. Moreover, the display of these pages is capable to dilute the value and merit of those elements of prestige to which the position of the Complainants is linked. It is worth noting that the Complainants are also present on the second-hand boats market. The conduct of the Respondent falls additionally under Article 12 of Spanish Law 3/1991, which holds unfair to unduly take advantage of the goodwill and reputation of a competitor, as well as under Article 6 of Spanish Law 3/1991, which holds unfair any behaviour suitable to create confusion as to the activity, business or establishment of a third party, provided that the risk of association among consumers would be enough to consider unfair any certain practice. Complainants’ marks are well-known trademarks. Holders of well-known trademarks should not be forced to register each and every possible domain name that could ever be requested with the mentioned trademark. The new Spanish trademark law of December 7, 2001 provides under Article 24 for a more complete protection of the type of trademarks, in the case concerned, to prevent others from using them in telecommunication nets and/or as domain names.
In the light of the foregoing, the Panel decides that the domain names at issue are confusingly similar to Complainants’ trademarks, that the Respondent does not have rights or legitimate interests to the disputed domain names, and further, that the Respondent appears to have acted in bad faith in registering and using the disputed domain names. Therefore, the Panel declines to find reverse domain name hijacking and orders the domain names <princessspain.com> and <princess-spain.com> to be transferred to the First Complainant, Princess International Sales and Services Ltd.
Paz Soler MasotaJonathan Turner
Dated. July 29, 2002