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WIPO Arbitration and
McMullan Bros., Limited, Maxol Limited, Maxol Direct Limited
Maxol Lubricants Limited, Maxol Oil Limited
Maxol Direct (NI) Limited v. Web Names Ltd
Case No. D2004-0078
1. The Parties
The Complainant is McMullan Bros., Limited, Dublin, Ireland; Maxol Limited, Dublin, Ireland; Maxol Direct Limited, Dublin, Ireland; Maxol Lubricants Limited, Dublin, Ireland; Maxol Oil Limited, Belfast, United Kingdom of Great Britain and Northern Ireland; Maxol Direct (NI) Limited, Newtownabbey, United Kingdom of Great Britain and Northern Ireland, represented by F.R. Kelly & Co., Ireland.
The Respondent is Web Names Ltd., Limerick, Ireland, represented by Holmes
O'Malley Sexton, Ireland.
2. The Domain Name and Registrar
The disputed domain name <maxol.com> (the "Domain Name") is
registered with Network Solutions, Inc. (the "Registrar").
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 29, 2004. On January 30, 2004, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue. On January 30, 2004, the 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, billing, and technical contact. 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").
3.2 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 19, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was March 10, 2004. On March 9, 2004, the Respondent's solicitors requested an extension of time to submit the Response. On March 10, 2004, the Respondent's solicitors requested a five day time extension for filing the Response. The Center granted a five day extension of time on March 10, 2004. The Response was filed with the Center on March 15, 2004.
3.3 The Center initially appointed Mr. James Bridgeman as Sole Panelist in this matter on March 24, 2004. By letter dated March 25, 2004 from its solicitors, the Respondent objected to the appointment of Mr. Bridgeman. The Complainant's advisers by email dated March 29, 2004, stated that they did not agree that the reasons given by the Respondent were valid, but nevertheless consented to the appointment of an alternative panelist. On March 31, 2004, Mr. Bridgeman resigned the appointment.
3.4 The Center appointed Matthew S. Harris as the Sole Panelist in this matter on April 1, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
3.5 The Complainant submitted a supplemental filing to the Center on April 9, 2004, i.e. Good Friday. At that time the Center was closed for the Easter break. The supplemental filing was forwarded to the Panel on the evening of April 14, 2004, i.e. the evening prior to the date that the decision was due. The Panel has come to the conclusion that it is not necessary to consider this additional material in order for the Panel to reach its decision in this case. Accordingly, the Panel has taken no account of this material in coming to its decision.
3.6 From a casual examination of the supplemental filing, the Panel notes that
there are certain clear similarities between the reasoning in that document
and the decision of the Panel which follows. The Panel wishes to make it clear
that any such similarities are merely coincidental and indeed, that for the
most part what follows had been prepared prior to receipt of the supplemental
4. Factual Background
4.1 The Complainant constitutes a group of companies comprising McMullen Bros., Limited, a holding company, and five of its subsidiary companies. McMullen Bros., Limited and three of the subsidiaries are incorporated in the Republic of Ireland. The two remaining subsidiaries are incorporated in Northern Ireland.
4.2 All of the subsidiary companies use the word "maxol" as part of their company name.
4.3 The Complainant has 19 separate registrations of the trademark "MAXOL" (the "Registered Trademarks") in the Republic of Ireland and the UK, of which 10 are word marks. In addition, the Complainant has registered "MAXOL FUELNET," "MAXOLAND" and "MAXOLUBE" as trademarks.
4.4 The Complainant has used the name "MAXOL" in the course of trade in Ireland and the UK since 1972.
4.5 The Complainant is the third largest oil company in the Republic of Ireland, with a turnover in excess of €600 million per annum and a network of 380 service stations and 50 authorised distributors, all of which use the name MAXOL.
4.6 The Respondent is a company incorporated in the Republic of Ireland in April 2000, concerned with the business of information technology.
4.7 The domain name <maxol.com> (the "Domain Name") was registered on January 7, 1997. The Respondent claims that it registered the Domain Name. This cannot be correct since at the time that the Domain Name was registered, the Respondent was not incorporated. It would appear that the Domain Name was registered by individuals who initially traded as "Websters" and then went on to establish the Respondent. However, both parties appear to accept and proceed on the basis that persons registering the Domain Name, "Websters" and the Respondent should be treated as one person for the purposes of the Policy. Accordingly, this decision similarly proceeds on this basis.
4.8 The Respondent has not used the Domain Name since its registration and the Domain Name does not resolve to any Internet site pertaining to the Respondent.
4.9 On April 16, 2003, advisers for the Complainant wrote to the Respondent and requested that the Respondent transfer the Domain Name to the Complainant. Solicitors for the Respondent replied in a letter dated April 30, 2003, marked "without prejudice." This reply requested inter alia that the Complainant revert with a "proposal" for settling the matter.
4.10 By letter dated May 22, 2003, advisers for the Complainant made
an offer of €750 to the Respondent in consideration for the transfer of
the Domain Name. Correspondence continued between the parties' advisers until
August 21, 2003, but no agreement was reached and the Respondent did
not transfer the Domain Name to the Complainant.
5. Procedural Arguments
5.1 It is convenient before setting out the various submissions of the parties, to deal with two procedural/evidential issues that have been raised by the parties. These are as follows:
(a) the Complainant's contention that the Respondent should not have been granted an extension of time in which to serve a Response and/or that the Response should be ignored;
(b) the Respondent's contention that the Complainant should be precluded in relying upon correspondence marked "without prejudice" as part of its Complaint.
Extension of time for Response
5.2 The relevant extension of time in this case was granted not by the Panel but by the Center. The Center has power to grant such an extension under paragraph 5(d) of the Rules. The Panel is not persuaded that it has the power to interfere with the decision of the Center, but even if it were so persuaded, the Panel sees no reason for interfering with that decision in this case.
5.3 The Complainant also suggests that the Panel should disregard the Response. The basis for this contention is unclear. Perhaps the Complainant relies upon paragraph 10(d) of the Rules that gives a panel the general power inter alia to determine the admissibility of any evidence. Even if the Panel were entitled to use this provision to justify a decision to ignore a Response otherwise filed on time, it would not be inclined to do so.
5.4 The reason for the Panel's conclusions here are as follows:
(i) The UDRP is intended to provide a straight forward and relatively inexpensive procedure for the determination of domain name disputes. An attempt, in effect, to appeal procedural decisions of the Center before the Panel is contrary to the spirit of the UDRP and such "appeals" are therefore to be discouraged.
(ii) The Panel sees no substantive reason on the facts of this case to accede to the Complainant's request. The Complainant does not claim that it has suffered any prejudice by reason of the additional 5 day delay that has resulted. Indeed any suggestion to the contrary is inherently improbable in a case where some 6 years and 6 months have passed between the registration of the Domain Name and the making of this Complaint. In the circumstances, the Complainant's request is rejected.
5.5 Put simply, the "Without Prejudice" doctrine precludes a party relying in court proceedings upon the assertions and statements of another in communications made for the purposes of attempting to settle that dispute. It is not a doctrine that is recognised in all legal systems but it is generally recognised in one form or another in common law systems, including Ireland and the United Kingdom. Therefore, the question arises whether, notwithstanding that the Policy and Rules make no mention of the doctrine, it should be imported into the Policy either generally or in the specific circumstances of this case.
5.6 There have been a number of decisions that have considered the issue. In
The Vanguard Group Inc v. Emilio Sa, (WIPO
Case No. D2001-1453), the panel commented as follows:
"The majority of decisions which have addressed this issue have, by far, come down against the application of privilege to `without prejudice' communications. The reasons given are numerous, examples of which are as follows:
1. No power to award damages or costs (see: Advance Magazine Publishers
Inc. v. Marcellod Russo, WIPO Case No.
2. The party is not precluded from litigating the same disputes, where the
`without prejudice' rule would apply. (See: Advance Magazine Publishers Inc.
v. Marcellod Russo, WIPO Case No. D2001-1049).
3. An offer to sell the name [in such correspondence] may go to the heard of
the issue, which the Panel must decide; therefore the efficacy of the Policy
would otherwise be severely undermined. (See: Advance Magazine Publishers
Inc. v. Marcellod Russo, WIPO Case No.
4. There is a vast scope for disagreement amongst Panels as to the manner of
application of the Rule. (See: Advance Magazine Publishers Inc. v. Marcellod
Russo, WIPO Case No. D2001-1049).
5. The Rule may be completely foreign to the jurisdiction of some Panelists,
leading to chaos. (See: Advance Magazine Publishers Inc. v. Marcellod Russo,
WIPO Case No. D2001-1049).
6. As registrants must be aware of the issue of offering the name for sale
at an excessive price, they cannot sensibly object to Panels looking at all
potentially relevant evidence and whether or not it emerges, `without prejudice'
correspondence. (See: Advance Magazine Publishers Inc. v. Marcellod Russo,
WIPO Case No. D2001-1049).
7. The registrant is protected from the effect of a Panel looking at this evidence
if he has a right or legitimate interest in the name. (See: Advance Magazine
Publishers Inc. v. Marcellod Russo, WIPO
Case No. D2001-1049; Magnum Piering, Inc v. The Mudjackers and Garwood
S. Wilson, Sr. WIPO Case No. D2000-1525).
8. Where a Respondent fails to object to the inclusion of such evidence by
failing to file a Response. (See: Hang Seng Data Services Ltd. v. Power M Investment
Ltd. WIPO Case No. D2000-0653).
9. Where the communication was not between the parties to the UDRP dispute,
but rather between the Respondent and a third party. (See: Nabor B.V.
Stanhome S.P.A. v. Organization Francisco Vicente, WIPO
Case No. D2000-0757).
10. Where the communications are between parties to the dispute, but precede
the dispute arising. (See: British Broadcasting Corp. v. Bodyline Beauty
Clinic (Mrs. Caroline Fell), WIPO
Case No. D2001-0389).
11. Where an offer to sell the Domain Name for valuable consideration in excess
of the documented out-of-pocket costs directly related to the Domain Name is
not only evidence of, but conclusively establishes that the Domain Name has
been registered and is being used in bad faith; (see: CBS Broadcasting Inc.
v. Gaddoor Saidi, WIPO Case No. D2000-0243).
12. Where the application of such a Rule could have a material effect on the
ability of Complainants to prove bad faith registration and use. (See: Spirit
Airlines, Inc. v. Spirit Airlines Pty. Ltd, WIPO
Case No. D2001-0748).
13. Where the Policy's goal of preventing cyber-squatting would not be furthered
by excluding such evidence. (See: Magnum Piering, Inc. v. The Mudjackers
and Garwood S. Wilson, Sr., WIPO Case
14. An offer to settle does not automatically mandate a finding of bad faith
as the Panel is still obligated to review the entire record to determine if
bad faith exists, but the history leading up to the adoption of the Policy suggests
that an offer to sell, absent a legitimate interest and absent contrasting evidence
of good faith, is so likely to be evidence of bad faith and use that its exclusion
is likely to result in injustice. (See: Magnum Piering, Inc. v The Mudjackers
and Garwood S. Wilson, Sr., WIPO Case
15. Rule 408 [that part of the US Federal Rules of Evidence that deals with
the admissibility of statements made in compromise negotiations] covers an enormous
range of situations, and reflects a policy judgment that, on average an offer
to compromise is not reliable evidence of responsibility or intent. (See: Magnum
Piering, Inc, v. The Mudjackers and Garwood S. Wilson Sr., WIPO
Case No. D2000-1525).
16. Parties in federal court litigations have other tools, including discover
and cross-examination, to help bring the true facts to the surface, thus making
submission of settlement offers less important; UDRP Panels, in contrast, can
rely on a truncated paper record. (See: Magnum Piering, Inc. v. The Mudjackers
and Garwood S. Wilson, Sr., WIPO Case
17. Panels are fully capable of assessing whether an offer of sale reflects
a good faith effort to compromise or part of a bad faith effort to extort. (See:
Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO
Case No. D2000-1525)."
5.7 Some of the objections raised and listed in The Vanguard Group are policy arguments to the effect that the without prejudice rule should not generally be adopted by the Policy. Others seem to turn on a question of fact whether the communication in question was truly without prejudice in nature. Indeed, in The Vanguard Group itself, the panel declined to apply the without prejudice rule simply because the offer made in that case was "made to advance [a] nefarious scheme" and therefore the rule should not apply.
5.8 Whilst "the majority of decisions" on this issue have declined
to apply the doctrine, the issue remains controversial. The dissenting panelist
in Motorola, Inc v. NewGate Internet, Inc., (WIPO
Case No. D2000-0079) concluded that the discussed correspondence
could be excluded from evidence under the United States Federal Rule of Evidence
(408) as it was an offer of compromise. In Donna Karen Studio v. Raymond
Donn, (WIPO Case No. D2001-0587),
the panel accepted the Respondent's contention that the disputed communication
should not be accepted as it was transferred "without prejudice" between
the parties and both sides accepted that it was so. Similarly, the panels in
the cases: The London Marathon Limited v. Websitebrokers Limited, (WIPO
Case No. D2001-0157) and Jewelutlra Ltd. v. Splash Group, (WIPO
Case No. D2001-0283) considered that a letter marked "without
prejudice" should render the correspondence inadmissible.
5.9 The Panel finds the policy arguments set out in The Vanguard Group decision as to why no general without prejudice rule akin to that which exists in the United Kingdom and Ireland should be incorporated into the UDRP, compelling. But even if this is accepted, should an exception should be made when, as here, both parties are in same jurisdiction?
5.10 Paragraph 15(a) of the Rules requires a Panel to make its decision "in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." This might justify applying the without prejudice doctrine in this case, but the Panel is unconvinced. The Policy provides an international procedure for international application by a panel comprising panelists who may come from a jurisdiction unconnected with either party. To import a national rule simply because both parties come from the same jurisdiction may result in similar cases being decided in a different manner dependant upon geographical accident. This is a conclusion that this Panel finds inherently unattractive. At times resort to national law may be unavoidable (for example when determining the existence of a trademark recognised by the Policy), but the Panel sees no reason for doing so in this case.
5.11 However, that is not to say that the without prejudice doctrine, or something akin to it, might never be applicable to proceedings under the Policy. In circumstances where both parties have expressly or implicitly agreed that discussions between them with a view to settlement should not be brought before a panel, there would exist a strong argument for excluding this material. Indeed, if this were not done, then a party might deliberately lure the other party into discussions, supposedly on a without prejudice basis, but in the hope that the other side might make a statement to its detriment during those discussions which could then be brought before a panel. This, the Panel believes, would be grossly unconscionable.
5.12 To apply the doctrine in cases of express or implied agreement would, in the opinion of the Panel, be consistent with the decision in the Donna Karan case cited above. It would also address the comments raised in relation to the Nominet UK Policy and Procedure in the case of Nokia Corp. v. Just Phones Ltd., Nominet UK DRS0058, that were cited in passing in The Vanguard Group decision as a reason for applying the without prejudice doctrine. These comments were that a dispute resolution service should provide some means by which the parties can attempt to reach settlement between them, without the risk that such settlement negotiations will be used against them in subsequent proceedings. The response to that contention is that the parties can simply agree that such negotiations cannot be so used.
5.13 However, no decision on this issue is necessary in this case. It cannot
be said in the case now before the Panel that the parties agreed or conducted
themselves on the basis that the without prejudice rule would apply. Two letters
from the Respondent's solicitors marked "without prejudice" have been
brought to the Panel's attention, of which only the one dated April 30, 2003,
is of any significance. The Complainant's advisers did not expressly agree that
these letters should be treated as "without prejudice," nor did they
mark their letters in reply "without prejudice." In the circumstances
the Panel concludes that it is entitled to take these letters into account in
making its decision.
6. Parties' Contentions
6.1 The Complainant is lengthy but the Complainant's contentions can be summarised as follows:
Identical or Confusingly Similar
6.2 The Complainant relies upon its Registered Trademarks. The Domain Name is identical to the Registered Trademarks.
6.3 The Complainant further relies upon its registered trademarks which contain the word "MAXOL" together with a logo element or another word. The Complainant contends that it has substantial goodwill and reputation and therefore unregistered trademark rights in the name "Maxol." The Domain Name is confusingly similar to these registered and unregistered trademarks.
No Rights or Legitimate Interests
6.4 The Complainant contends that the Respondent has made no use of the name "Maxol" in connection with any business activities and there is no evidence that the Respondent has made any preparations to use the Domain Name in connection with a bona fide offering of goods or services.
6.5 The non-use of the Domain Name for 6 and a half years is put forward as
prima facie evidence of a lack of legitimate rights and interests. In
this respect the Complainant relies on the decision in Mondick and American
Vintage Wine Biscuits, Inc. v. Brown (WIPO
Case No. D2000-0004) and Recordiati S.P.A. v. Domain Name Clearing
Company (WIPO Case No. D2000-0194).
6.6 The Complainant maintains that the Respondent's solicitors referred to a business plan developed by the Respondent but that despite requests for copies of that plan, none has been provided.
6.7 Further, any realistic use of the Domain Name by the Complainant would constitute infringement of the Complainant's trademarks given the decision of the European Court of Justice in Davidoff & Cie SA and Zino Davidoff SA v. Gofkid, (Case C-292/00).
6.8 The Complainant contends that the mere assertion of plans for future use is not sufficient to show legitimate interests (Sandy Frank Entertainment Inc. v. Law Street, Inc aka Wall Street, Inc, (NAF Case No. 93669)).
6.9 Further, the assertion by the Respondent that "Maxol" is an abbreviation
for "Maximum On-Line" is not credible given the fame of the Complainant's
trademarks. The Complainant claims this case is similar in this respect to those
of CIMCities LLC v. None aka Hamid Shojaee (NAF Case No. 95606) and
Deutsche Post AG v. MailMij LLC (WIPO
Case No. D2003-0128).
6.10 In this respect the Complainant relies upon the fact that it has a network of 380 service stations and 50 authorised distributors, as well as lubricant distributors, all of which "extensively use the Mark MAXOL" and has a turnover in excess of €600m per annum.
6.11 Accordingly, the Complainant asserts that the Respondent is not making a legitimate non-commercial or fair use of the Domain Name and therefore has no rights or legitimate interests in the Domain Name.
Registered and Used in Bad Faith
6.12 The Complainant asserts that the Respondent itself has acknowledged that it was aware of the Registered Trademarks at the time that the Domain Name was registered and that this must be the case given the extent of the reputation of the Complainant's business and use of the name "Maxol" in the territory where the Respondent carries on its business. This evidences bad faith.
6.13 The Complainant contends that the Respondent has expressed willingness in verbal and written correspondence to transfer the Domain Name to the Complainant for a sum of money in excess of the Respondent's out-of-pocket expenses. This, coupled with the non-use by the Respondent of the Domain Name since its registration, some 6 years 6 months ago indicates that the Respondent registered the Domain Name primarily for the purpose of transferring it to the Complainant for consideration in excess of out-of-pocket expenses, which is evidence of bad faith.
6.14 In this regard, the Complainant relies upon the decisions in Sud-Chemie
AG v. tonsil.com, (WIPO Case No. D2000-0376),
Telstra Corp. Ltd v. Nuclear Marshmallows, (WIPO
Case No D2000-2003) and HSBC Holdings Plc v. David H. Gold, (WIPO
Case No. D2001-0343).
6.15 The Complainant contends that bad faith is further evidenced by the Respondent's registration of the domain names <ballygowan.com> and <2fm.com>, which are identical to other well known Irish trademarks. According to the Complainant, this indicates a pattern of conduct on the part of the Respondent of registering Irish trademarks with a view to preventing the owner of the trademark from reflecting the mark in a corresponding domain name.
6.16 Accordingly, the Complainant contends that the Respondent registered the Domain Name primarily for the purpose of selling it to the Complainant or a competitor for valuable consideration in excess of the Respondent's out-of-pocket costs and/or that the Respondent is engaged in a pattern of registering domain names which correspond to trademarks to prevent the trademark owner from reflecting that mark in a corresponding domain name. This is bad faith.
6.17 The Complainant therefore requests that the Domain Name be transferred to the Complainant. For administrative ease, the Complainant requests that the Domain Name be transferred to McMullan Bros., Limited.
6.18 The Response is also lengthy. At times the logic is hard to follow. For example, numerous factual assertions are made in the Response under the heading "whether the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights." However, very few of these assertions have any relevance to or bearing upon that question. Nevertheless, the Response can perhaps be summarised as follows:
6.19 The Respondent contends that the Complainant is precluded from making its Complaint by Section 11 of the Statute of Limitations Act 1957, within the Republic of Ireland and that to allow the Complainant to succeed under the Policy would thereby "usurp" the Respondent's rights under statute law.
6.20 The Respondent also contends that the Complainant has "failed to provide evidence or proof of its registration with the Irish and UK Companies Registration Offices" and therefore has not proved the existence of companies capable of accepting ownership of a domain name. Similarly they have failed to show by virtue of Memoranda and/or Articles of Association that they have a legal entitlement to operate a domain name.
6.21 The Response does not clearly address the question whether or not the Respondent contests the Complainant's assertion that the Domain Name is identical to the Registered Trademarks. However, the Response does contain a number of assertions in respect of whether or not the Domain Name is "confusingly similar."
6.22 The Respondent asserts that "In or about December 1996, the directors of Websters developed an initiative to focus on one successful aspect of their business. The `maximum-on-line' project or MAXOnline project was established to coordinate the business. The project was established to promote innovative IT solutions for existing clients. These solutions included Live Audio WebCasting, E-Mail List Management, Product Launch Consultancy, Web Name Branding and Web Name Marketing. The Respondent sought to register the domain name <maxonline.com> for this purpose but discovered that the domain name had been purchased by another party namely Focus Interactive Inc., Irvington, NY, in the United States of America on March 1, 1995..."
6.23 The Respondent asserts that that the project domain name was reduced from the proposed <maxonline.com> to <maxol.com> for "customers ease of use." Essentially, it is arguing that "maxol" is a legitimate abbreviation of "MAXOnline."
6.24 The Respondent asserts that Websters was engaged in the business of purchasing domain names for clients and setting up websites. According to the Respondent, "MAXOnline was initially submitted as a proposal to several key customers. The strategy focused on using a customer's website as a tool to maximise business through site traffic as opposed to a mere contact details or brochure interface."
6.25 The Respondent further asserts that "after an initial Directors meeting of December 1996, it was established that to properly launch the project greater finances were required and approximately 18 - 24 months fundraising was required per the initial turnover estimates of Websters. The business had a substantial loan to repay with regard to the purchase of computers for the Internet café aspect of their business and as a result the directors estimated that time was required to raise funds."
6.26 The Respondent contends that the Complainant holds "an exceptionally limited scope and number or trademarks" in relation to the term "Maxol." The Respondent asserts that prior to the Respondent's registration of the Domain Name, the Complainant had only registered trademarks within the jurisdictions of the United Kingdom and Ireland.
6.27 The Respondent asserts that the trademark registrations are limited to classes which affect the primary business of the Complainant, namely oil related and petro-chemical products. The Respondent asserts that it operates an information technology business and it has never attempted to register trademarks in the area of oil related or petro-chemical products. The Respondent asserts that, as it has never engaged in any business similar to that of the Complainant, it would not be possible for there to be any confusion "between the businesses or goodwill of the respective parties."
6.28 The Respondent contends that the Complainant has failed to establish sufficient market recognition to merit the transfer of the Domain Name from the Respondent. The Respondent asserts that it conducted internet research "prior to the initial registration of the domain name <maxol.com> in 2000" which indicated that the term "maxol" is "generic and is used frequently by many different types of organization throughout the internet." Accordingly, the Complainant is not entitled to claim any greater right to the use of the Domain Name than the Respondent or any other party which makes use of the term "maxol" in connection with its business.
6.29 The Respondent asserts that the Complainant was not the first in time to register a trademark in respect of the word "maxol." The first registered trademark is now owned by the Royal Dutch/Shell Group of companies, a direct rival in business to the Complainant. The Respondent contends that when the Complainant discovered that Royal Dutch/Shell had acquired the trademark "maxol" on 1 October 2002, "they subsequently commenced attempts to acquire the domain name <maxol.com> from the Respondent by unorthodox means."
6.30 The Respondent contends that it has not received any objection from any other party with regard to its ownership of the Domain Name.
6.31 The Respondent denies that the Complainant holds sufficient goodwill and reputation in its trademarks so as to supersede the rights and interests of the Respondent.
6.32 The Respondent asserts that the Complainant has acknowledged that it is a small business in global terms by choosing to register the national domain name <maxol.ie> instead of the global domain name <maxol.com>.
6.33 The Respondent denies that the Domain Name is a misrepresentation of any goods or services of the Complainant.
6.34 The Respondent asserts that it has not had an opportunity to use the Domain Name due to legal threats extended by the Complainant.
6.35 The Respondent contends that it is not possible for any confusion to have been caused between the Domain Name and the Complainant's trademarks as the Respondent has not used the Domain Name since it was registered.
6.36 The Respondent contends that it has a legitimate interest in the Domain Name in connection with its "maximum-online" or "MAXOnline" business project and that evidence of plans for future commercial use of a domain name is sufficient to show a right or legitimate interest in that domain name.
6.37 The Respondent further contends that the six year period between the registration of the Domain Name and the making of the Complaint indicates that the Complainant has acknowledged that the Respondent has a legitimate interest by acquiescence.
6.38 The Respondent denies that it was aware of the Complainant's reputation or of the Complainant's trademark rights when it registered the Domain Name and asserts that the Domain Name was registered in good faith in connection with its proposed "MAXOnline" services.
6.39 The Respondent acknowledges that the Complainant "offered to buy the domain name <maxol.com> from the Respondent in correspondence dated May 22, 2003," but the Respondent denies that it has ever attempted to sell the Domain Name to the Complainant or to any other party and at no time has it made implicit requests for money. Therefore, the Complainant has not evidenced bad faith.
6.40 The Respondent further contends that its registrations of the domain names
<ballygowan.com> and <2fm.com> were made in good faith. <ballygowan.com>
was registered because "the directors of the Respondent Company have both
personal and emotional ties with the geographical area Ballygowan." So
far as <2fm.com> is concerned, the domain name "was purchased
in conjunction with a joint project 2fm and Websters regarding the creation
of an on-line address book (webcast) for messages of congratulations to Irish
Olympic Swimmer Michelle Smith." Therefore, the Complainant has failed
to show any pattern of conduct by the Respondent which would suggest bad faith.
7. Discussion and Findings
7.1 The Panel has reviewed the Complaint and the documents annexed to the Complaint. The Panel has also reviewed the Response and the documents annexed to the Response. In light of this material, the Panel sets out its findings below.
7.2 The Complainant must "prove" each of the following elements of the Rules, which are set out in paragraph 4(a) of the Policy as follows:
(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.
7.3 However, before considering each of these issues, it is convenient first to consider the assertions of the Respondent in relation to the Irish Statute of Limitations and the alleged lack of formal evidence as to the Complainant's incorporation and entitlement to operate a domain name.
7.4 The Policy does not make any express provisions for the application of any rule of limitation and the Respondent does not cite any cases to support that contention. Any suggestion that any such rule should apply strikes the Panel as inherently problematic. The Policy provides an international procedure for the resolution of domain name disputes and the Panel does not see why a law which is specific to a particular jurisdiction should be imposed on that procedure.
7.5 Of course it would be possible to make an exception where, as here, both parties are in the same jurisdiction. But for the reasons already rehearsed earlier on in this decision on the question of the without prejudice rule, this is an unattractive approach which the Panel rejects.
7.6 Does this mean that a complainant can always bring a complaint no matter how long has passed? This is a general question which does not need to be answered here. On the facts of this case, the Panel is of the opinion that where:
(a) the Respondent has been aware since at least 2003 (1997 if the Complainant's evidence is to be preferred) that the Complainant sought the transfer of the Domain Name to it;
(b) the Domain Name has not been used since registration; and
(c) the Respondent has not claimed that it has suffered any prejudice as a result of the Complainant's delay in bringing the claim,
the Complaint should not be rejected by reason of delay alone.
7.7 The Panel believes its conclusions in this respect
to be consistent with the reasoning in The Hebrew University of Jerusalem
v. Alberta Hot Rods (WIPO Case No.
Legal Status of the Complainant
7.8 The Panel notes that the Respondent has not put forward any evidence which would indicate that the Complainant is not incorporated or lacks the capacity to purchase or operate a domain name. Instead, the Respondent relies solely on the Complainant's "failure" to prove these aspects of the Complaint.
7.9 Each of the companies that make up the Complainant are identified by name and country of incorporation and registered office or principal place of business. This is more than sufficient to establish prima facie that these companies exist. For more to be required in circumstances where it puts forward no positive case in this respect would be to elevate legal formality over good sense. The Panel therefore rejects the Respondent's contention in this respect.
7.10 As to the question whether the companies have authority under their Memoranda and/or Articles to operate a domain name, the Respondent's contentions are also rejected. Firstly, no positive case is offered by the Respondent in this respect. The allegation is that the Complainant has failed to show it has such rights. Again, the Respondent assumes a degree of legal formality in the operation of the Policy that is simply not there. Secondly, even if correct, why it should be relevant to the operation of the Policy is far from clear. Thirdly, the argument strikes the Panel as inherently implausible. However, ultimately this is a matter of Irish company law which the Panel believes it is inappropriate and unnecessary for it to explore in this decision.
A. Identical or Confusingly Similar
7.11 There are two separate elements which the Complainant must prove under paragraph 4(a)(i). Firstly, the Complainant must provide evidence that it has rights in a trademark or service mark. Secondly, the Complainant must show that the Domain Name is identical to the trade or service mark in which it has rights.
7.12 In respect of this first element, the Complainant relies upon its Registered Trademarks. Evidence of registration of these trademarks is provided by the Complainant in the form of printouts of the online databases of the Trademark Registries where the trademarks are registered.
7.13 On this point, the Panel notes the Respondent's assertion that the failure of the Complainant to provide registration/renewal certificates in respect of the Registered Trademarks amounts to an admission by the Complainant that those marks may have expired or are invalid.
7.14 The Panel rejects this assertion. Previous Panels have accepted database
printouts from Trademark Registries (for example, Citicorp and Citibank,
N.A. v. Ghinwa and Others, (WIPO Case
No. D2003-0494) and to suggest, as the Respondent does, that by using a
practical alternative to adducing numerous certificates of registration a Complainant
is admitting that the registrations are no longer subsisting, is frankly ridiculous.
7.15 Each of the marks relied upon by the Complainant and the form that these marks take has been identified by the Complainant. This is sufficient. If the Respondent wished to put forward a substantive argument in relation to any of these marks it could have done so. It did not do so. The only sensible conclusion is that it has no such argument. The Respondent's contention is rejected.
7.16 On the basis of the evidence provided by the Complainant, the Panel accepts that the Complainant has rights in the Registered Trademarks. Accordingly, the Complainant has made out the first element under paragraph 4(a)(i).
7.17 Turning to the second element of this sub-paragraph, the Respondent in essence claims (as has been described greater detail earlier on in this decision) that such rights as the Complainant may have are limited to oil and petro-chemical productions. Therefore, so the argument goes, it is "not possible" for the Domain Name to be "confusingly similar" to any trademark of the Complainant.
7.18 This sort of argument has been raised before a number of previous panels.
At the heart of this assertion lies the question whether the Policy requires
a panel to limit itself to a straightforward comparison of the visual characteristics
of the domain name against those of the trademark, or whether there is scope
to allow an analysis of the possible limitations on the trademark rights. This
is an issue upon which different panels have had different views. For example,
it divided the panel in Olymp Bezner GmbH & Co. KG v. Olympus Access
Service, (WIPO Case No. D2003-0958).
However, as in Olymp Bezner it is not necessary to decide this issue
in this case.
7.19 When determining whether or not a domain name is identical or confusingly similar to a trademark, the ".com" suffix which denotes the generic top-level domain name, or gTLD, may be ignored. Once this is done and one takes into account that it is not possible to distinguish between upper and lower case script in a domain name, it is apparent that for the purposes of the Policy, the Domain Name is identical to the Complainant's word marks.
7.20 The Panel therefore finds that the Domain Name is identical to those of the Registered Trademarks that are word marks. This is sufficient. It is not necessary to consider any other of the Registered Trademarks or the Complainant's alleged unregistered trademarks. Accordingly, the Panel concludes that the Complainant has proved both of the elements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
7.21 When considering the question of rights or legitimate interests in this case, the Panel is forced to choose between two competing and irreconcilable views as to why it is that the Respondent registered the Domain Name in this case.
7.22 The Complainant essentially contends that the Respondent does not have and never has had any rights to use the Domain Name in connection with a bona fide business using the name "MAXOnline."
7.23 The Respondent counters that it registered the Domain Name in connection with a business project, the "maximum-on-line" project or "MAXOnline" project to provide IT solutions to clients, which the "directors of Websters" developed "in or about December 1996."
7.24 In a number of cases panels have held that once a complainant has put
forward prima facie evidence that the respondent has no relevant right
or interest, the burden of proof shifts to the respondent. The Complainant relies
on one such case, i.e. Anti Flirt SA and Mr. Jacques Amsellem v. WCVC
(WIPO Case No. D2000-1553). However,
this doctrine is of little assistance in this case. The Panel simple must choose
between these two competing positions, bearing in mind that ultimately it is
the Complainant who bears the burden of proof.
7.25 Key to the determination of this issue is the determination of the subsidiary issue as to whether discussion took place between the parties in early August 1997, and, if it did take place, what was said. The Complainant contends that a discussion did take place. It is claimed that at this time one Nicholas Merton contacted Websters to seek return of the Domain Name. According to a statutory declaration made by Mr. Merton (the "Statutory Declaration"), a person identifying himself as Mr. Hartigan told Mr. Merton during a telephone conversation on August 8, 1997, that the Domain Name was used "for training purposes, and that a lot of training material had been produced incorporating this domain name, and the material would have to be rewritten." Mr. Hartigan claimed these costs were in the region of IR£7,000 and Mr. Hartigan said that he was prepared to let the Complainant have the Domain Name in return for payment of that sum.
7.26 The Respondent's reply to this allegation is that it "denies categorically that Mr. Shane Hartigan of the Company ever attempted to sell the domain name <maxol.com> and the Respondent notes that the Complainant has failed to provide any documentation to support this claim outside of its purported statutory declaration which is completely untrue."
7.27 This statement is more ambiguous than might appear at first sight. Does the Respondent deny that any telephone conversation took place or simply that there was an "attempt to sell" the Domain Name during that conversation? What does the Respondent mean by "attempt to sell" and does this amount to a denial that there was any discussion of transfer of the Domain Name in return for a payment of costs or expenses? Indeed, is the Respondent's assertion strictly correct, but only because Mr. Hartigan could not be described to be "of the Company," since at the relevant date Web Names Ltd. simply did not exist?
7.28 Perhaps the Panel is in danger of over-analysing this statement. The assertion that the Statutory Declaration is "completely untrue" suggests that the Respondent simply intended to deny that there was any communication at that time between the Complainant and the registrants of the Domain Name. If so, then as a matter of fact, the Panel prefers the Complainant's evidence.
7.29 When faced with a choice in this case between detailed evidence in the form of a statutory declaration and a simple denial in a Response, the Panel prefers the detailed account of events to be found in the Statutory Declaration. This is particularly so when, as is explained later on in this decision, the Response contains at least one other demonstrable falsehood and is unsatisfactory in a number of other respects.
7.30 Of course, it does not necessarily follow from the fact that the Respondent offered to sell the Domain Name to the Complainant in August 1997, that the Respondent does not have rights or legitimate interests in the Domain Name. However, the fact that the reason given at that time for the price set on the transfer was not that it was being used in connection with any planned or operating business, but because it was being used for "training purposes," is, in the Panel's opinion, telling. It leads the Panel to conclude that no bona fide business was in place.
7.31 This, however, is not quite the end of the matter. The Respondent has provided some documentary evidence of its use of the Domain Name between 1997 and 2001. This takes the form of three letters from clients dated 1997, one letter from Mr. Hartigan also dated 1997, a quotation from Websters dated 2000, and a remittance letter dated 2001, all of which use the word "MAXOnline." These documents are problematic.
7.32 Firstly, it is hard to see any coherent business or service offered under that name. A letter from the Limerick Athenaeum (oddly spelt "Anthenaeum" on the letterhead) refers to "the work of MaxOnLine." A letter from the East Clare Golf Club records a discussion with Mr. Hartigan in relation to "MAXOnLine E-mail Marketing Services." A remittance letter from CKR fm is addressed to Interpoint Technologies and refers to "MAX OnLine Broadcasting Events." The remaining three documents make passing references to some form of webcast service.
7.33 Secondly, it is hard to reconcile this material with the assertions of the Respondent in the Response that "after an initial Directors meeting of December 1996, it was established that to properly launch the ["maxol"] project greater finances were required and approximately 18 to 24 months fundraising was required." Given this decision, why was the "MAXOnLine" name used in these documents at all?
7.34 However, of greater importance is the fact that, if the Respondent's case is correct, the Panel would expect further written evidence of the bona fide business concept to exist. In particular, in their "without prejudice" letter dated April 30, 2003, solicitors for the Respondent asserted as follows:
"Our client has in recent years developed business plans using the domain name <maxol.com> and was hoping to develop matters further. As a result he has spent a considerable amount of time, effort and resources in maintaining this project and the domain name."
7.35 In the Complaint the Complainant asserts it had asked for a copy of the business plan but none had been provided. The Respondent's response here is simply that it is "under no legal obligation to provide sensitive business project information to the Complainant nor are they under any legal obligation to share any of their business plans with other sources."
7.36 To the Panel, the suggestion that the Respondent's business plans in relation to use of the Domain Name which has not been used for over six years would be "sensitive business project information" is simply not credible. The Respondent is, of course, quite correct when it claims that it is under no obligation to share these documents with third parties, but not to provide these in the circumstances of this case can only lead the Panel to one realistic conclusion, i.e. these plans do not and never have existed. Also even if the Respondent's justification was a good one, why is no other evidence produced of the "considerable amount of time, effort and resources" allegedly expended?
7.37 In all the circumstances, the Panel can only conclude that the Respondent had and has no real bona fide business interest in the use of the Domain Name for a business or product named "MAXOnline." This in turn leads to the inevitable conclusion that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant has made out Paragraph 4(a)(ii) of the Policy.
Registered / Used in Bad Faith
7.38 In order to succeed under Paragraph 4(a)(iii) of the Policy, the Complainant must prove that the Domain Name was both registered by the Respondent in bad faith and has been used in bad faith.
7.39 A non-exclusive list of circumstances constituting evidence of bad faith for the purposes of paragraph 4(a)(iii) are set out in paragraph 4(b) of the Policy. They are as follows:
"(i) circumstances indicating that you have registered or you have acquired the Domain Name primarily for the purposes of selling, renting or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly to the Domain Name; or
(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; or
(iii) you have registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."
7.40 The Complaint does not specify the particular sub-paragraphs upon which the Complainant relies, but from the substance of the assertions made, it is apparent that the Complainant relies on sub-paragraphs (i) and (ii).
7.41 Key to the question of bad faith is whether, at the time of registration of the Domain Name, the Respondent knew of the Complainant's reputation and interest in the "Maxol" name.
7.42 The Complainant asserts that the Respondent was aware of this. The Respondent's response to that assertion is as follows:
"The Respondent denies that they/are were aware of the Complainant's reputation and/or trademark rights the Complainant alleges to hold. The Respondent submits however that they are aware of the ample use of the term maxol for many various types of products in different jurisdictions by different parties such as maxol catalyst ... and maxol flue vents, heaters, dyes."
7.43 The Respondent's assertion here cannot be reconciled with either the evidence or common sense. Firstly, in their "without prejudice" letter dated April 30, 2003, the Respondent's solicitors make the admission that at the time the "Maxol" or "Maximum on-line" project was created by their client, "[their] client noted the existence of the MAXOL Oil Company" but that "[their] client did not attempt to register any trademarks in any nice [sic] classes that would conflict with or prejudice any of your client's interests." Indeed, it appears that the Respondent had even conducted trademark searches, given its solicitors' assertion that "[their] client took careful note of the fact that your client did not register a mark in a nice [sic] class related to his area of business, namely that of nice [sic] classes 35, 38 and/or 41."
7.44 Secondly, the Complainant has provided extensive evidence of the extent of its reputation not only in Ireland as a whole, but also in Limerick, the location where the Respondent is based. In the circumstances, the Panel finds that the assertion by the Respondent that it was not aware of the existence of the use of the "Maxol" name by the Complainant frankly incredible. This is particularly so given the professed knowledge of the use of that name by parties outside of Ireland.
7.45 Therefore, if the Respondent registered the Domain Name in the knowledge of the Complainant's reputation in the name and (as the Panel has already found in connection with the issue of rights and legitimate interests) not in connection with any bona fide business venture, for what purpose did it register the mark?
7.46 In light of the professed willingness of Mr. Hartigan to transfer the Domain Name to the Respondent in return for the payment of IR£7,000 during the discussions that took place between Mr. Hartigan and Mr. Merton in August 1997, and which are recorded in Mr. Merton's Statutory Declaration, only one conclusion is reasonably credible. The Domain Name was registered primarily for the purpose of selling, renting or otherwise transferring the Domain Name to the Complainant for valuable consideration in excess of the Respondent's out-of-pocket costs directly related to the Domain Name, i.e. in circumstances falling within Paragraph 4(b)(i) of the Policy.
7.47 The fact that it is the Complainant who first
approached the Respondent seeking transfer of the Domain Name does not preclude
the Panel from coming to this conclusion. Cases abound in which bad faith registration
and use has been found in circumstances where it was the Complainant who made
the first approach (see for example SembCorp Industries Limited v. Hu
Huan Xin (WIPO Case No. D2001-1092)).
7.48 The suggestion in the "without prejudice" letter of April 30, 2003, that the Complainant "revert with a proposal whereby we can resolve this matter amicably" is consistent with this finding, but the Panel does not rely upon that statement to come to its conclusion in this respect.
7.49 The Complainant further relies upon the registration by the Respondent of <ballygowan.com> and <2fm.com>. According to the Complaint this was registration by the Respondent of domain names which correspond to well-known Irish trademarks. As such they show a pattern of conduct which falls within the scope of Paragraph 4(b)(ii).
7.50 The Panel is persuaded both by the Complainant's evidence as to the scope of the reputation of the "Ballygowan" trademark in respect of bottled water and its evidence that the owners of the "Ballygowan" trademark, Cantrell & Cochrane Group, had not given the Respondent authority to register the domain name on their behalf. The Respondent asserts that it registered the domain name <ballygowan.com> because "the directors of the Respondent Company have both personal and emotional ties with the geographical area Ballygowan." The Panel finds this explanation, absent any evidence or explanation of such personal and emotional ties, implausible.
7.51 So far as the domain name <2fm.com> is concerned, once again, the Panel finds the Respondent's evidence far from compelling. The evidence provided proves only that Websters had some sort of business relationship with 2fm for the provision of audio services on the Internet. There is nothing in this evidence which refers to the registration of the <2fm.com> domain name, in particular, there is nothing which would suggest that the Respondent had authority from 2fm to register the domain name. Indeed it is noticeable that nowhere in the Response does the Respondent expressly claim that 2fm agreed to the Respondent's registration of this domain name.
7.52 The Panel concludes that the Respondent has failed to provide any convincing evidence which would persuade the Panel to conclude that the registration of the domain names <ballygowan.com> and <2fm.com> was made in good faith.
7.53 For the reasons discussed above, the Panel concludes on the evidence put before it by both parties, that by registering the Domain Name and the domain names <ballygowan.com> and <2fm.com> the Respondent has engaged in a pattern of conduct of registering domain names in order to prevent the owner of the corresponding trademark from reflecting that mark in a domain name. Accordingly, the Panel finds that the Complainant has successfully made out its allegations in respect of Paragraph 4(b)(ii).
7.54 In light of the Panel's finding in relation to Paragraphs 4(b)(i)
and (ii), the Panel holds that the Domain Name has been registered and used
in bad faith and that the Complainant has made out Paragraph 4(a)(iii)
of the Policy.
8.1 For all the foregoing reasons, the Panel finds that the Complainant has sufficiently proved that:
(i) the Domain Name is confusingly similar to a trademark in which the Complainant has rights;
(ii) the Respondent does not have any rights to or legitimate interest in the Domain Name; and
(iii) the Domain Name was registered and has been used in bad faith.
8.2 For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <maxol.com> be transferred to McMullan Bros., Limited.
Matthew S. Harris
Dated: April 16, 2004