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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Rudolf Hensel GmbH v. Hensotherm AB
Case No. D2002-0634
1. The Parties
The Complainant is Rudolf Hensel GmbH, Lack- und Farbenfabrik, Lauenburger Landstraβe 11, D-21039 Börnsen, Federal Republic of Germany.
The Respondent is Hensotherm AB, Verkstadsg. 6B, Trelleborg, 231 66, Sweden.
2. The Domain Names and Registrars
This dispute concerns the Domain Names <hensotherm-firestop.net>, <hensotherm-firestop.com>, <hensotherm-firestop.org>.
The Registrar is Ascio Technologies, Inc.
3. Procedural History
The Complaint was received by WIPO Arbitration and Mediation Center (the "Center") on July 9, 2002. On July 12, 2002, the Center issued a Deficiency Notification to the Complainant calling for correction of an error in the Complaint relating to the name of the Registrar. On the same day, the Center received the amended version of the Complaint containing the requisite correction.
On July 15, 2002, Ascio Technologies, Inc (the "Registrar") confirmed that the domain names <hensotherm-firestop.net>, <hensotherm-firestop.com> and <hensotherm-firestop.org> (the "Domain Names") were registered with the Registrar and that Hensotherm AB (the "Respondent") is the current registrant and that Swedish is the language of the registration agreement. The Registrar has further confirmed that the Policy is applicable to the Domain Names.
On July 16, 2002, the Center issued a Language Notification to the Complainant pointing out that the language of the proceedings should, unless otherwise agreed, be Swedish. On July 22, 2002, the Swedish version of the Complaint was received by the Center.
The Center has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administrative Panel (the "Panel") is satisfied that this is the case.
On July 23, 2002, in accordance with the Rules, paragraph 2(a), the Center notified the Respondent of the Complaint and informed the Respondent inter alia that the last day for sending its Response to the Complainant and to the Center was August 12, 2002.
On August 14, 2002, the Center issued a Respondent Default Notification. The late Response (in English) was received by the Center on August 15, 2002, together with an explanation for the delay.
Following a further series of communications, culminating in an email from the Complainant dated August 19, 2002, it was agreed between the parties that the language of the proceedings should be English. By that email the Complainant also sought permission to file a further statement in response to the Response. The Panel has been given no reason why the normal procedure should be varied in this case and declines to allow a further submission from the Complainant.
The Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
No further submissions were received by the Center or the Panel, as a consequence of which the date scheduled for the issuance of the Panel’s Decision is September 4, 2002.
4. Factual Background
The Complainant, Rudolf Hensel GmbH, is a company incorporated in Germany and is engaged in the production of fire-proof paints.
The Complainant is the proprietor of Swedish, German and international trade mark registrations of the mark HENSOTHERM for inter alia, fire-proof paints. The earliest of those registrations dates back to 1977. The Swedish registration which came through on April 21, 1989, was applied for on May 24, 1988.
The Respondent, Hensotherm AB, a Swedish company, was incorporated on June 15, 1988, and is (or was) a subsidiary of another Swedish company, Sada AB.
At some stage after the incorporation of Hensotherm AB (the Panel does not know the date) the Complainant appears to have entered into a trade mark licence agreement with Sada AB, whereby Sada AB was licensed to use the trade mark in Sweden for the duration of the agreement. Clause 3(a) of the Licence Agreement makes reference to the Respondent and reads (in translation) as follows:-
"Hensotherm AB is a subsidiary of Sada AB and is only permitted to use the brand name as subsidiary."
Clause 7 of the Licence Agreement includes the following paragraph:-
"The Licensee is not entitled to have the trade mark registered as a whole or as part of a trade mark or as a licensed trade mark in his name or in the name of a third company or person."
Clause 9 of the Licence Agreement reads as follows:-
"In case of a termination, the Licensee has the right to produce and sell the products within an additional term of six months. Thereafter, the Licensee has to surrender any use of the trade mark, be it as a trade mark, a designation or any other kind."
The Agreement is said to be governed by the laws of the Federal Republic of Germany. At some date prior to 1999, the Agreement was terminated. The Panel has not been informed as to the date of the termination nor the circumstances leading up to the termination.
The Respondent is the proprietor of Community Trade Mark Registration Number 000357863 for HENSOTHERM, a registration which the Complainant is currently seeking to have declared invalid. The Panel has not been informed as to the date of that registration. The Complainant’s request for a Declaration of Invalidity is dated July 19, 2001.
The Respondent also claims to be the proprietor of a variety of other trade mark registrations of Hensotherm including registrations in Norway, Lithuania, the Middle East, Malaysia, Singapore, Estonia and Russia. However, the Respondent has provided few details of those registrations and has exhibited to the Response no copy trade mark registrations certificates.
The Respondent registered the Domain Names between July 1997, and May 1999.
5. Parties’ Contentions
The Complainant contends that the Domain Names are confusingly similar to the Complainant’s HENSOTHERM trade mark.
The Complainant contends that the Respondent’s past use of the trade mark has only been as a licensee of the Complainant and that now that the Licence has been terminated, the Respondent has no right to use the name. The Complainant further points out that to the extent that the Respondent has used the trade mark outside Sweden (including, for example, the Respondent’s registration and use of the Domain Names) the Respondent has been in breach of the Licence Agreement.
The Complainant claims that the Respondent can have no justification for its registration of the Domain Names and that the Domain Names should be transferred to the Complainant. As to the bad faith claim, the Complainant states:-
"The domain names were registered in order to prevent the owner of the trademarks from reflecting the marks in corresponding domain names. Further, the domain names were registered primarily for the purpose of disrupting the business of the Complainant, intentionally attempted to attract, for financial gain, Internet users to the registrant’s web site or other on-line locations, by creating a likelihood of confusion with the Complainant’s marks."
The Respondent acknowledges that it manufactured product for the Complainant prior to 1999, but states that since then it has had no business relations with the Complainant.
The Respondent appears to accept that the Domain Names are similar to the Complainant’s trade mark, but asserts that the Respondent’s rights to the mark HENSOTHERM pre-date any rights that the Complainant may have to that mark. [In passing, the Panel notes that the Respondent ignores the Complainant’s German registration which dates back to 1977 and ignores too the fact that the date of the Complainant’s application for registration of the Swedish trade mark pre-dates the incorporation of the Respondent.]
The Respondent claims a legitimate interest in the Domain Names because HENSOTHERM has been the Respondent’s name since 1988.
In response to the bad faith allegation, the Respondent claims that it registered the Domain Names for no reason other than that its own name is HENSOTHERM and that it has been manufacturing and selling product under that name for 14 years. It claims to be using the Domain Names for its website.
The Respondent makes no reference to the Licence Agreement.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith.
Identical or confusingly similar
The Domain Names each comprise three elements, namely the Complainant’s trade mark, a generic description of a product category covered by the Complainant’s trade mark registrations and the generic domain suffix.
The Panel finds that the Domain Names are each confusingly similar to a trade mark in which the Complainant has rights.
Respondent’s Rights or Legitimate Interests
There is no dispute that the Complainant is named Hensotherm AB and that for many years the Respondent has been manufacturing and selling fire-proof paints under and by reference to the mark HENSOTHERM.
There is also no dispute that the Respondent is the proprietor of a Community Trade Mark for the mark HENSOTHERM in the relevant product category.
On that basis, there can be no doubt that the Respondent has prima facie rights and/or legitimate interests in respect of the Domain Names. That is the prima facie position.
If, however, the Complainant’s allegations are correct, namely that the extent to which the Respondent can be said to have any rights or legitimate interests in respect of the name or mark HENSOTHERM is pursuant to the trade mark licence granted to Sada AB and that everything done by the Respondent outside the scope of that Licence Agreement and/or since termination of the Licence Agreement has been in breach of the terms of that Agreement, then it may very well be that the Respondent has no rights or legitimate interests in respect of the Domain Names.
However, those are issues for which this administrative procedure is ill-equipped to deal. The Policy is designed to deal with cybersquatting and not the resolution of factually complex and legally complex contractual and/or trade mark disputes.
Even if that were not the position and even if it were the case that this was an appropriate dispute to be resolved by way of this administrative procedure, the information put before the Panel has been sparse in the extreme. The version of the Licence Agreement, which is exhibited to the Complaint, upon which the Complainant’s allegations are primarily based, is undated. The Panel has been provided with no detail as to how the parties’ relationship developed and ultimately terminated. While the Panel is unimpressed with the Respondent’s claim as to prior rights to the Hensotherm name in Sweden, it could be that at some stage during the 14 year period from 1988 to 2002, the Respondent has been able to acquire independent rights in the name in one or more countries. The Panel simply does not know. Accordingly, even if this were a dispute suitable for resolution under the Policy, the Complainant has put insufficient information before the Panel to enable the Panel to come to any fair determination.
However, for the reasons stated above, this dispute is clearly a matter for the Courts and not an administrative proceeding under the Policy.
The Panel finds that the Complainant has failed to prove that the Respondent has no rights or legitimate interests in respect of the Domain Names.
For the same reasons, the Panel finds that the Complainant has failed to prove that the Domain Names were registered in bad faith and are being used in bad faith.
The Complaint is dismissed.
Dated: August 31, 2002