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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc.

Case No. D2003-0070

 

1. The Parties

The Complainant is Atlas Copco Aktiebolag, of Nacka, Sweden, represented by Fredrik Lund of United States of America.

The Respondent is Accurate Air Engineering, Inc. of Compton, California, United States of America represented by Mitchell B. Hannah of United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <atlascopcoparts.com> (the "domain name") is registered with Network Solutions, Inc. Registrar.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 30, 2003. On January 31, 2003, the Center transmitted by email to Network Solutions, Inc. Registrar a request for registrar verification in connection with the domain name at issue. On February 4, 2003, Network Solutions, Inc. Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, and technical contact. As registration of the domain name was due to expire during the pendency of the dispute, the Center notified the Registrar of the need to ensure that the domain name remained locked and was not released to the public prior to the conclusion of this proceeding. The Center verified that the Complaint satisfied the formal requirements of 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").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 6, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was February 26, 2003. The Response was filed with the Center on February 26, 2003.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on March 4, 2003. I submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. The other procedural requirements of the Policy and the Rules having been satisfied, I find that the Panel has been properly constituted.

On March 6, 2003, the Center also received from the Complainant a document entitled Complainant’s Reply to Respondent’s Response (the "Reply"). The Complainant also copied the Reply to the Respondent’s attorney. The Reply was not forwarded to me pending a decision which ultimately led to Procedural Order No 1 referred to below.

Bearing in mind the considerations discussed below in section 5, particularly the imperatives reflected in paragraph 10(b) of the Rules, I issued Procedural Order No 1 on March 10, 2003:

(a) accepting the Reply as part of the case file;

(b) allowing the Respondent until March 14, 2003, to file any answering material that it considered advisable; and

(c) extending the time for the determination to March 24, 2003.

In the event, the Respondent did not file any further submissions.

 

4. Factual Background

The Complainant’s corporate group manufactures a range of industrial products including air compressors, generators, drilling equipment and parts therefor.

The Complainant is the owner in the United States of US Trademarks Registration Nos 601,282 for COPCO and 1,526,505 for Atlas Copco and device.

US Trademark 601,282 was filed on July 3, 1951, and registered on January 25, 1955. The specification is for a range of goods in International Class 7.

The device comprising US Trademark 1,526,505 is quite simple, consisting of the words "Atlas Copco" in cursive script shown horizontally between two thick bands. The application was filed on May 14, 1986, and registered on February 28, 1989. The registration covers a most extensive range of goods and services in International Classes 6, 7, 8, 9, 11, 12, 16, 17, 21, 37, 41 and 42. The registration details state that the trademark was first used in commerce in the USA for all goods and services in 1962.

The Complainant also claims common law rights in the "Atlas Copco" mark. The basis of this claim are the assertions in the Complaint that the Complainant’s corporate group employs 26,000 people around the world, has manufacturing facilities in 13 countries and the group has worldwide revenues in 2001 of approximately US$5 billion.

In its Response, the Respondent states that it is a 50 year old California corporation engaged in the business of sales, service and installation of industrial air compressors. It claims to be one of the largest independent dealers in the air compressor market in California.

The Respondent registered the domain name on March 21, 1999. The domain name does not resolve to an active website. The Complainant asserts, and the Respondent does not deny, that it never has.

The Respondent has also registered <ingersollrandparts.com>, <gardnerdenverparts.com>, <sullairparts.com>, <quincyparts.com> and <joyparts.com>. Each of these names was also registered on March 21, 1999. The Complainant states, and the Respondent does not deny, that each of these domain names include the brand name of one of its competitors plus the word "parts". The Complainant also states, and the Respondent does not deny, that none of these names has ever resolved to an active website either.

The Respondent does have an active website at "www.accurateair.com", the domain name for which was registered in March 1996.

 

5. Discussion and Findings

Preliminary matters

As noted above, the Complainant served what purported to be a reply to the Response on the Center on March 6, 2003. The Policy and the Rules do not provide a complainant with a right to file a reply. Subject to the requirements under the Rules to treat each party equally, to ensure that each party is given a fair opportunity to present its case and to conduct the proceedings with due expedition (paragraphs 10(b) and (c) of the Rules), the Panel has a discretion whether or not to accept further submissions, on what terms and with what consequences: paragraphs 10(a) and (d) of the Rules. Given the nature of the issues in dispute and the process, a response may well raise matters which it would only be fair to allow a complainant an opportunity to address. An example of such a situation could be a factual claim about some matter that the complainant could not reasonably anticipate in advance. There may well be other situations.

It was not possible to determine whether or not the circumstances warranted allowing a reply without first ascertaining the content of the proposed further submissions. In similar situations, some Panels have reviewed the proposed submission to ascertain if it addressed matters that could not reasonably have been anticipated or were otherwise properly of a reply nature and, if it did not, indicated that they would disregard the document in rendering the decision. Other Panels have implemented timetables for submissions on the need for further submissions and replies, sur-replies and the like, of greater or lesser complexity.

At least in common law systems, a moving party will usually have an opportunity to file further material in reply. The respondent also ordinarily has an opportunity to address that material (if needs be) at least at the hearing before the relevant tribunal. Notwithstanding paragraph 13 of the Rules, that invariably does not occur in proceedings under the Policy which (as paragraph 10(c) of the Rules indicates) are intended to be determined expeditiously on the papers.

In these circumstances, I considered that the obligation under paragraph 10(b) of the Rules to give each party a fair opportunity to present its case required me to review the Reply. Once that material was reviewed, the requirement of equal treatment by itself and fairness generally led me to conclude that the Respondent should have a similar opportunity in the absence otherwise of an opportunity to rebut the Reply.

The expeditious nature of proceedings under the Policy, coupled with the requirements of impartiality and fairness embodied in the Policy and the Rules are important contributors to the strength and success the Policy. Complainants should not be encouraged to undermine those features by allowing supplemental filings unnecessarily. The onus is on the complainant to provide evidence and submissions dealing with all the relevant matters and the Rules contemplate that this should ordinarily be done in the complaint. A complainant that fails to comply with that onus in the complaint runs a number of risks. The Panel may well not admit the material. The submission of further material may well provide a respondent with an opportunity to address some shortcoming in a reply. Further, these proceedings are meant to be decisions on the papers. If the factual claims and counterclaims become so involved that their resolution depends on fine analysis of witness credibility or interpretation of legal issues outside the Policy, the proceeding may well be carried outside the scope of what can be decided under the Policy appropriately.

Having reviewed the Reply, I do not think that the Complainant acted unreasonably in seeking to file the Reply at least to the extent that it responded to a factual allegation that it did not itself sell equipment or parts to the public.

Under paragraph 4(a) of the Policy, the Complainant has the burden of proof in respect of the following three elements:-

(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

I deal with each of these elements in turn.

A. Identical or Confusingly Similar

There are two parts to this inquiry: does the Complainant have trademark rights and, if so, is the disputed domain name identical or confusingly similar to it.

At the least, the Complainant has demonstrated ownership of the two registered trademarks set out in section 4 above.

The question of resemblance for the purposes of the Policy requires a comparison of the disputed domain name to the trademark rights which have been proved. This is a different test to that involved in trademark law where questions of the goods or services covered by the trademark rights can be relevant to the likelihood of confusion: see for example Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420. The question of the scope of the Complainant’s trademark rights may of course be relevant to the issues under paragraphs 4(b) and 4(c).

As noted above, Trademark 1,526,505 is for the words "Atlas Copco" in a very simple device. The words "Atlas Copco" are the prominent and distinctive component of the trademark. The device elements act as a border, almost giving the trademark the appearance of a label. The domain name incorporates the prominent and distinctive feature of the Complainant’s Trademark. It differs from the prominent and distinctive feature of the Trademark only by the addition of the word "parts" as a suffix, the deletion of a space between "Atlas" and "Copco" and the addition of the ".com" gTLD. The word "parts" is clearly a generic descriptor. Indeed the Response is in part predicated on that fact. These differences cannot be relied on to take the domain name out of the scope of confusing similarity for the purposes of the Policy: see e.g. Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046; Ticketmaster Corporation v. Discover Net Inc, WIPO Case No. D2001-0252; Williams-Sonoma v. John Zuccarini, WIPO Case No. D2002-0582. See also Komatsu Ltd. and Komatsu America International Company v. RKWeb Ltd., WIPO Case No. D2000-0995 (finding that "[e]ach of the domain names ‘komatsuparts.com’ and ‘komatsu-parts.com’ is virtually identical to the Komatsu Ltd’s registered trademark KOMATSU") and Caterpillar Inc. v. Matthew Quin, WIPO Case No. D2000-0314 (finding that the domain name ‘caterpillarparts.com’ was confusingly similar to the complainant’s registered trademarks CATERPILLAR and CATERPILLAR DESIGN).

In view of this finding, it is unnecessary for me to consider the position for the Complainant’s other registered trademark. Nor is necessary for me to consider whether the sketchy details provided about the asserted common law rights are adequate to establish the existence of such rights.

B. Rights or Legitimate Interests

The second factor that the Complainant is required to establish is that the Respondent has no rights or legitimate interests in respect of the domain name. It is notoriously difficult for a complainant to disprove a negative of this sort. Consequently, Panels have required a complainant to establish at the least a prima facie case under this heading and, if that is made out, an evidential onus shifts to the respondent to rebut the presumption of no rights or legitimate interests.

The Complainant relies on the facts that the Respondent is not one of its dealers, agents or representatives and has never been licensed or authorized by the Complainant to use the Complainant’s trademarks or to register or use the domain name. The Complainant also relies on the fact that the Respondent has never used, or made demonstrable preparations to use, the domain name.

The Respondent contends that it is (and has for 50 years been) legitimately engaged in the commercial business of selling, installing and servicing air compressors whether "atlascopco" or otherwise. It claims it has just as much right to participate in the market as the Complainant. Further, the Respondent claims that:

"It is common knowledge throughout the industry which Respondent is engaged [sic], that the manufacturer of such parts as the Complainant makes, does not directly sell those parts and equipment to the end user. The only reasonable interpretation of the domain name "atlascopcoparts" is that it would belong to a reseller of "atlascopcoparts" either authorized or not. The market which the domain name targets is different from that of the Complainant’s."

In its Reply (which I admitted on the terms of Procedural Order No 1 outlined above), the Complainant contests the allegation that it does not sell to end users. It claims that, contrary to this assertion, it sells equipment including compressors and parts directly to end users such as rental companies, industrial companies, energy companies, spring water bottling companies and other consumers.

On the basis of the materials before me, I find it more likely that the Complainant does in fact sell its products to end users. The Respondent may well genuinely believe that the Complainant does not sell to end users but, even on its own case, it is not part of the Complainant’s business organization or distribution network and so may well not be privy to such matters. On the other hand, the Complainant clearly is in a position to know its business.

That is not an end of the matter, however, as the gravamen of the Respondent’s defence is that it can legitimately use the domain name to indicate that it is a reseller of "Atlas Copco" parts, whether authorized or not.

The Complainant relies on a line of decisions under the UDRP in which Panels have ruled that a reseller, even an authorized dealer, does not have any rights or legitimate interests in the registration of a domain name utilizing the manufacturer’s trademark. These include The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co. Inc., WIPO Case No. D2000-0113:

"even if Respondent is a retail seller of Complainant’s products, the collateral trademark use necessary to allow resell of Complainant’s products is not enough to give Respondent proprietary rights in Complainant’s trademarks, and certainly not enough to confer the right to use these trademarks as domain names. Many famous trademarks designate goods that are manufactured and sold through numerous retail stores. But this, without something more such as authorization in a licensing agreement or other special circumstances, does not give the retail sellers rights of domain name magnitude over the manufacturer’s trademarks."

Motorola, Inc. v. NewGate Internet, Inc., WIPO Case No. D2000-0079:

"the right to resell products does not create the right to use a mark more extensively than required to advertise and sell the product. The use of a mark as a domain name clearly goes further than what is required merely to resell products."

Allen-Edmonds Shoe Corporation v. Takin’ Care of Business, WIPO Case No. D2002-0799:

"Respondent’s use of Complainant’s trademark as a domain name is not reasonably necessary to allow resale of Complainant’s products by Respondent…[E]ven if Respondent is acting on behalf of an ‘authorized’ dealer (indeed, even if Respondent were itself an authorized dealer), its use of Complainant’s mark would not be legitimate absent a specific agreement between Complainant and Respondent to the contrary."

See also Johnson and Johnson v. RxUSA, FA0205000112609.

In line with those decisions, there is no question here of the Complainant having authorized the Respondent to register or use the domain name. On the contrary, the Respondent asserts entitlement without such authorization.

In some legal systems where the use of a trademark on or in relation to the trademark owner’s genuine goods is neither use of the trademark nor an infringement (see e.g. in British law jurisdictions Champagne Heidsieck et Cie v Buxton [1930] 1 Ch 330 and its progeny), some of the propositions above would appear too sweeping. On the other hand, the Panelist in Allen-Edmonds Shoe, above, considered that the use there under consideration would clearly fall outside the US law’s exception for "nominative fair use", citing New Kids on the Block Inc. v News America Publishing Inc. 971 F.2d 302, 308 (9th Cir. 1992); Toho Co. v. William Morrow & Co. , 33 F.Supp.2d 1206, 1211 (D.C. Cal. 1998).

The potential for different legal systems to treat the same type of conduct differently suggests the need for a degree of caution in proceeding under the Policy which aims to establish norms for the registration of domain names across national borders. Nonetheless, it would be preferable to ensure that, as far as possible, similar fact situations should receive like treatment under the Policy.

There is a second line of UDRP cases, however, where disputes between manufacturers and resellers have been considered to fall outside the scope of the Policy. This line of cases is based on Adaptive Molecular Technologies, Inc. v. Priscilla Woodward & Charles R. Thorton, d/b/a Machines & More, WIPO Case No. D2000-0006, in which a website retailer’s use of a trademarked name Militec was found to be a legitimate interest and lacking in bad faith – or, at least, that the complainant had not sufficiently proved either bad faith or the absence of entitlement. Subsequent decisions have dealt carefully with attempts to rely on the Adaptive Molecular Technologies approach. Thus, in National Collegiate Athletic Association and March Madness Athletic Association, L.L.C. v. Mark Halpern and Front & Center Entertainment, WIPO Case No. D2000-0700, for example, the Panelist noted that:

"Nor does Adaptive Molecular compel a determination in favor of Halpern and Front and Center. There (1) respondent acquired goods directly from complainant, (2) respondent sold only complainant’s goods at the single site in issue, (3) there apparently were not multiple registrations of variations on the mark in issue, and (4) respondent submitted an affidavit that complainant had acquiesced in respondent’s registration."

Here, of course, there is no suggestion that the Complainant has acquiesced in the Respondent’s registration and use of the domain name. Nor is there any question, as in some of the cases, of the Respondent having been appointed a dealer by or on behalf of the Complainant. The Respondent claims to be an independent dealer. Significantly, here there is also no suggestion that the domain name has ever resolved to an active website at all, let alone one selling on the Complainant’s genuine, trademarked goods.

Dealing with a similar issue in Zuffa LLC v. LGRE, WIPO Case No. D2001-0458, the Panelist noted that:

"Unlike some of the cases relied upon by Respondent, here there is no evidence of any preparations, however perfunctory, that Respondent has made to use the domain name."

In Zuffa, the remarks quoted above were addressed to the respondent’s purported reliance directly on paragraph 4(c)(i) of the Policy. As those remarks foreshadowed, that defence was rejected on the facts although the complaint was ultimately denied as the complainant was unable to discharge the burden of showing registration and use in bad faith.

Paragraph 4(c) sets out three illustrations of rights or legitimate interests for the purposes of the Policy. They are:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent here has not sought to rely directly on paragraph 4(c)(i). The Respondent would clearly fail in a purported defence explicitly based on paragraph 4(c)(i) as the domain name has not resolved to an active website since its registration four years ago. There has clearly been no use of the domain name in connection with a "bona fide offering of goods or services" as required by the paragraph. Nor has there been any suggestion of demonstrable preparations to use the domain name. The Respondent contends for a broader proposition: in essence that it has the right to use the domain name to indicate that it is a seller of "Atlas Copco" parts, whether authorized or not, if it chooses to do so.

I consider that the Respondent’s proffered defence cannot constitute a right or legitimate interest of the kind envisaged in the Policy in the circumstances of this proceeding, especially where the domain name does not resolve to an active website and there is no evidence of demonstrable preparations for use.

One reason for the narrow circumstances prescribed by paragraph 4(c)(i) is that it allows an assessment to be made about whether the domain name is being used fairly or to divert the trademark owner’s customers. It is not possible to test that here as the domain name does not resolve to an active website. That is highly significant where the Respondent sells products of the Complainant’s competitors. Thus, it is not possible to say, as in Adaptive Technologies, that only genuine goods are being offered through the domain name.

I acknowledge that the examples given in paragraph 4(c) are not an exhaustive enumeration of rights or legitimate interests, they are illustrations only. Nonetheless, each of the categories involves an investigation into the "good faith" of the respondent’s activities. This is expressly so in the case of sub-paragraphs (i) and (iii) and lies at the foundation of sub-paragraph (ii). The Policy appears to contemplate some entitlement specific to the particular respondent and not just some general possibility "in gross" that may, or may not, apply.

Further, Panels have therefore recognized that a respondent’s registration and use of a domain name in bad faith (as that concept is understood under the Policy) can colour claims to rights or legitimate interests: see e.g. Telstra Corporation Limited v. Barry Cheng Kwok Chu, WIPO Case No. D2000-0423; ABB Asea Brown Boveri Ltd v. Yvonne Bienen, Bienen Enterprises, WIPO Case No. D2002-0718. For the reasons I discuss in section C below, I conclude that the Respondent has registered and used the domain name in bad faith (as that term is understood under the Policy).

Taking all these matters into consideration, I find that the Respondent has not rebutted the prima facie case made out by the Complainant in the circumstances of this proceeding. Consequently, I find that it does not have rights or legitimate interests in the domain name.

C. Registered and Used in Bad Faith

The Complainant advances several different bases for concluding that the domain name has been registered and used in bad faith. For present purposes, it is necessary to consider only one, that based on paragraph 4(b)(ii):

"you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct;".

The registration of the domain name and five other similar domain names for other competitors in the industry, all on the same day, none of which has been used in the four years of registration clearly satisfies this test: Calvin Klein Trademark Trust and Calvin Klein, Inc. v. Cologne Zone, WIPO Case No. D2001-1039; Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd., WIPO Case No. D2000-0802; Nikon Inc. and Nikon Corporation v. Photocom Korea, WIPO Case No. D2000-1338.

The Respondent’s position is that:

"the registering of this domain name and others associated with products that the Respondent is actively engaged in selling, servicing and installing serve a legitimate business purpose."

It is clear that the Respondent had actual knowledge of the Complainant’s trademark rights when the Respondent registered the domain name. Apart from anything else, the Respondent claims to have been active in the business of selling and servicing air compressors and components for 50 years. Also, in answer to a letter of demand from the Complainant, the Respondent claimed that it "does service work from time to time on Atlas Copco products." Further, the Response does not deny the specific allegations in the Complaint of actual or constructive knowledge.

The Respondent’s website includes representations as trademarks of the names "Gardner Denver" and "Deltech", but not the Complainant’s. Under "Company Profile", the Respondent claims to be the authorized distributor of Gardner Denver air compressor equipment and parts for California. Under "Service and Repairs", however, it states that "Though we specialize in Gardner Denver equipment, we also service I - R, SULLAIR, QUINCY & most major brands."

The Complainant’s products are not mentioned by name. By itself, however, that is not conclusive. The Respondent’s main relationship appears to be with Gardner Denver, one of the Complainant’s competitors. The Respondent’s proffered defence might be consistent with these facts also.

The Respondent also offered to sell the domain name to the Complainant for US$100,000. There is a dispute between the parties about how that offer came about. The Respondent does not dispute that the offer was made although it attempts to dismiss it in the Response as mere "puffery". In some circumstances, an offer to sell would not be conclusive either since a person who has an entitlement to some property or right could well be prepared to resolve a conflict by selling it if the price were acceptable.

What does not sit well at all with the Respondent’s proffered defence is that it has not used the domain name, or any of the others, throughout the four years of registration to resolve to an active website. It is actively engaged in business in the relevant field. If it had registered the domain name in good faith for use in connection with that business, one would have expected the domain name to be used in connection with an active website by now. That has not been done. Nor has the Respondent attempted any explanation of reasons why that has not been done. Further, there has been no active use of, or explanation offered for, any of the other domain names registered on the same day, including the domain name <gardnerdenver.com>, the brand owner of which the Respondent is apparently be an authorized distributor.

Taking all these matters together, therefore, the circumstances clearly smack of the opportunistic behaviour struck at by the Policy. In these circumstances, I find that the Respondent has registered the domain name and used it in bad faith contrary to the Policy.

 

7. Decision

The Panel decides that:

(i) the domain name is identical or confusingly similar to a trademark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name, and

(iii) the domain name has been registered and is being used in bad faith by the Respondent.

Accordingly, the Panel decides that the Complainant has proven each of the elements in paragraph 4(a) of the Policy and orders that the domain name <atlascopcoparts.com> be transferred to the Complainant, Atlas Copco Aktiebolag.

 

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Warwick A. Rothnie
Sole Panelist

Dated: March 24, 2003