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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Hexion Specialty Chemicals GmbH v. Pacific Webs Pty Ltd.

Case No. D2005-1272

 

1. The Parties

The Complainant is Hexion Specialty Chemicals GmbH, Duisburg, Germany, represented by Happ Luther & Partner, Germany.

The Respondent is Pacific Webs Pty Ltd., Alton Downs, Australia.

 

2. The Domain Name and Registrar

The disputed domain name <bakelite.com> is registered with Tucows.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 8, 2005. On December 9, 2005, the Center transmitted by email to Tucows a request for registrar verification. On December 9, 2005, Tucows transmitted by email to the Center its verification response. 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 December 29, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was January 18, 2006. The Response was filed with the Center on January 18, 2006.

The Center appointed Luca Barbero as the sole panelist in this matter on February 2, 2006. 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.

On March 6, 2006, the Panel issued the following Panel Order No.1:

“The Panel, under paragraph 12 of the Rules, hereby makes the following order: The Respondent shall by no later than March 13, 2006, forward, by email and/or fax to the WIPO Center in accordance with paragraph 3(b) of the Supplemental Rules and copied to the Complainant by email and/or fax a further submission together with supporting documents/evidence limited to the following matters: (i) The clarification of the relationship between Philip Doble and Pacific Webs; (ii) Activities of Pacific Webs; (iii) Indicate the reasons why the domain name is for sale; (iv) Provide any evidence supporting a finding on the Respondent’s “intention of developing a website that provided a forum for fan raves or the critiquing of early 20 century American Literature including the Jazz Age, and the Plastic Age”; (v) Insert the following signed certification: “The Respondent certifies that the information contained in this Response is to the best of the Respondent’s knowledge complete and accurate, that this Response is not being presented for any improper purpose, such as to harass, and that the assertions in this Response are warranted under the Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.

The Panel may request further submissions from the Respondent following the submission by the Respondent.”

On March 13, 2006, the Center received the Supplemental Response from the Respondent pursuant to Procedural Order no. 1.

In light of its review of the Supplemental Response, the Panel, under paragraph 12 of the Rules, issued a Procedural Order no. 2 requesting the Complainant to submit comments on the Respondent’s Supplemental Response.

On March 31, 2006, the Panel upon request from the Complainant extended the due date for the Complainant’s comments to April 7, 2006. On April 7, 2006, the Complainant filed its comments (the “Supplemental Complaint”).

 

4. Factual Background

Complainant is Hexion Specialty Chemicals GmbH, a German corporation. The original company name was Bakelite AG which has been renamed to Hexion Specialty Chemicals GmbH in the course of its transformation from an Aktiengesellschaft (AG) to a GmbH.

The Complainant is the owner of the the German trademark registrations No. 138 054 BAKELITE (word) and No. 905 334 BAKELITE (word) and of the international trademark registration No. 191 585 BAKELITE (word). In Australia, BAKELITE was registered with the Australian trademark registrations No. 181 860 and No. 181 861 BAKELITE (word) in classes 1 and 17 in March 1966.

The Respondent registered the domain name <bakelite.com> on May 1, 2000.

 

5. Parties’ Contentions

A. Complainant

The Complainant informs the Panel that it enjoys a position as a European market leader in the area of phenolic resins and sells them in a wide variety of forms – for example phenolic novolaks, resoles, resin solutions and powder resins. Phenolic resins are used in areas including the foundry industry, refractories, the glass and mineral wool industry, and in manufacture of textile mats and friction linings. Moreover, the Complainant is presently the largest European supplier of phenolic foam resins for use in the areas of insulation, mining and floral arrangements.

The Complainant highlights that the trademark BAKELITE is a registered trademark in Europe and in 40 further countries including Australia where the sales of BAKELITE products have reached 650-700 tons per annum. In the area of household appliances, Bakelite moulding compounds are used in fabrication of products including kitchen machines and electric appliances. Bakelite epoxy resins have gained a leading position in various fields of application, and have made significant contributions to the technical development of this group of plastics.

The Complainant contends that the disputed domain name is identical to the trademark BAKELITE in which the Complainant has rights.

With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that the Respondent has not used or prepared to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. Instead, it is offering the disputed domain name over the Internet at prices in excess of any out of pocket expenses associated with the registration of domain names.

The Complainant emphasizes that the Respondent is the owner of the service at www.tangy.com, where several “quality domains” such as <bakelite.com> are offered for “Purchase”. The minimum price for the purchase of a domain at the Respondent web site is USD 190,00 but the Complainant quotes an example available on the Respondent web site referring to a price of USD 950,00 for the sale of another domain name.

The Complainant underlines that the purpose of selling the domain <bakelite.com> is not a legitimate interest for purposes of para 4(a)(ii). The Complainant registered and began using the trademark BAKELITE long before the Respondent’s registration and use of the domain name <bakelite.com>. The Respondent has not registered or used the name “bakelite” as a trademark, nor has he ever been known by this name. “Bakelite” is not part of the Respondent’s name, nor the denomination of one of its businesses or enterprises.

According to the Complainant, the Respondent has registered <bakelite.com> only to sell it to the highest bidder. The Respondent is not attempting to make any non-commercial legitimate use of the domain name and therefore the Respondent has no right or legitimate interest in the domain name <bakelite.com>.

With reference to the circumstances evidencing bad faith the Complainant indicates that the Respondent registered <bakelite.com> in order to sell or rent the domain name registration. Since its first registration on May 1, 2000 the domain name <bakelite.com> has not been used.

In the view of the Complainant, the fact that the Respondent has registered the domain name not to use it, but to offer it for rent or sale – by the Internet service “www.tangy.com” that is owned by the Respondent – is perfect evidence of a bad faith activity in prejudice of the Internet community and of the owner of the trademarks used as domain names.

In the Supplemental Complaint the Complainant highlights that the Respondent is operating a web site with the purpose of selling generic domain names and has registered other domain names with the purpose to sell them such as <sultan.net>, <susu.com>, <zzw.com>, <acco.com>, <alfreda.com>, <apple1.com>, <bmk.org>, <barowls.com and <bmk.org>, stating that such domain names are not generic terms such as <bakelite.com>.

The Complainant asserts that the designation Bakelite is not a generic term as it is quoted as a registered trademark in a number of dictionaries, providing the Panel with examples of such a statement. Therefore, according to the Complainant, the argument of the Respondent to have registered a generic name is not correct.

The Complainant contests that the domain name was actively used in a web site from February 20, 2001, indicating that while a site was on line it was not updated for a long period. The complainant concludes that since currently the domain name is not used for a legitimate purpose as it attracts Internet users to the Respondent web site for commercial gain, the prior use was irrelevant in any event.

B. Respondent

The Respondent informs the Panel that it has registered <bakelite.com> on May 1, 2000, with the “intention of developing a website that provided a forum for fan raves or the critiquing of early 20 century American Literature including The Jazz Age, and the Plastic Age. Bakelite.com was viewed as a relevant domain name for such content, as it represents the dйcor and atmosphere of the era of the early 20th century”.

The Respondent contends that the website was first placed online February 20, 2001 and remained so until June 4, 2004, inviting the Panel to verify this assertion by performing a search for <bakelite.com> at www.archive.org. According to the Respondent, this circumstance clearly indicates the domain name was purchased in good faith.

After this period Pacific Webs decided not to further maintain and develop the website www.bakelite.com and decided to sell the domain name, at which point it was listed on www.tangy.com for sale.

The Respondent highlights that it did not register the domain name for the sole purpose of resale, nor with the intention of selling it to the Complainant.

The Respondent indicates that it has had no contact with the Complainant and has been in possession of the registration of the domain name for a period of nearly six years with no complaint.

According to the Respondent the word “bakelite” is associated with the early 20th century and has become a generic term for describing antiques of that era. The Respondent furthermore comments that “bakelite” is part of the common vernacular and is therefore generic, depriving the trademark owners of exclusivity.

The Respondent indicates in the Supplemental Response that Philip Doble is a Director of Pacific Webs and Pacific Webs was registered in 1996, primarily as a web development company. The Respondent informs the Panel that it has developed many websites over the years including www. junglefruits.com, web pages for the School of Chemistry at the University of Tasmania, “www.coralsea.com” (Papua New Guinea Art Site), “www.bilum.com”, “www.seller.com.au”, and “www. bidder.com.au”.

The Respondent reiterates that during the early years, the business model was to purchase generic names and to identify webmasters willing to maintain and develop them and that “www.bakelite.com” was such an example. The Respondent contends that in the case of the disputed domain name, the author of the web site was Amy Stockwell stating that, if requested, the Respondent could provide a declaration to this effect.

The Respondent explains that the websites are no longer active due to a change of priority of Pacific Webs and a lack of investment funding. Pacific Webs now primarily focuses on the maintenance and operation of “www.owner.com.au”. This is a real estate site that allows properties for sale by their owner. Pacific Webs also owns and operates www.tangy.com as a post-registration domain name trading site that sells generic domain names purchased in the early years of our company. The Respondent specifies that it does not trade names other than the ones that it has registered directly and that in the over six years that it has been operating this site, it has never had a dispute nor was it ever contacted by the Complainant with reference to <bakelite.com>.

The Respondent contends that the website was first placed online February 20, 2001 and remained so until June 4, 2004, providing the Panel with a screen shot of the website taken from “www.archive.org” and indicating that the Respondent could supply, if requested, the original html files.

The Respondent believes it has acted in good faith with regard to <bakelite.com>. The Respondent was surprised to receive the Complaint after so much time has elapsed. The Respondent certifies that the information contained in its filings are complete and accurate.

 

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A panel shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the Domain name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has provided evidence of ownership of a number of trademark registrations such as German trademark registrations no. 138 054 BAKELITE (word) and no. 905 334 BAKELITE (word) and of the international trademark registration no. 191 585 BAKELITE (word) and the Australian trademark registrations no. 181 860 and no. 181 861 BAKELITE (word) in classes 1 and 17 in March 1966.

The Panel finds that the Complainant has proven that the disputed domain name is identical to trademarks in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

(a) that it has made 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 prior to the dispute; or

(b) that it is commonly known by the domain name, even if he has not acquired any trademark rights; or

(c) that it intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

There is no relation, disclosed to the Panel, between the Respondent and the Complainant and Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained authorization to use Complainant’s trademarks and name under any circumstance.

However, in light of its findings under C. below, the Panel does not need to reach a conclusion on rights or legitimate interests.

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith:

(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder has 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 the holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’ s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.

In the recent decision Mobile Communication Service Inc. v. WebReg, RN WIPO Case No. D2005-1304 the respondent’s business practice included the registration of domain names containing fanciful trademarks or trademarks created by the joinder of common or dictionary words that sometimes had expired, followed by efforts to resell those names. The Panel in the present case has examined the full list (not only those domain names singled out by the Complainant) provided by the Complainant of domain names registered in the name of the Respondent (e.g. <aeroklub.com>, <ahobby.com>, <airlift.org>, <acco.com>, <artcompany.com>, <alfreda.com>, <artcrafts.com>, <attacking.com>, <bankcheque.com>, <barowls.com>, <biomaps.com> and <bmk.org>). The Panel notes that most of these names are dictionary words without obvious association to a specific trademark.

The Panel concurs with the view expressed in the Mobile Communication case that it is not necessarily “bad faith to resell domain names that incorporate common dictionary terms if the respondent was unaware of complainant’s trademark rights at the time of registration, e.g., National Trust for Historic Preservation v. Preston, WIPO Case No. D2005-0424 (August 10, 2005); Landmark Group v. DigiMedia.com, L.P., NAF Claim No. 28549 (August 6, 2004); HQ Holdings, LLC v. EquiCorp, Inc., NAF Claim No. 256402 (June 15, 2004)”, even though “respondents cannot rely on this precedent to shield their conduct by closing their eyes to whether domain names they are registering are identical or confusingly similar to trademarks. In other words, where a respondent has registered a domain name consisting of a dictionary term because the respondent has a good faith belief that the domain name’s value derives from its generic qualities, that may constitute a legitimate interest and the offer to sell such a domain name is not necessarily a sign of bad faith. Where, in contrast, a respondent registers large swaths of domain names for resale, often through automated programs that snap up domain names as they become available, with no attention whatsoever to whether they may be identical to trademarks, such practices may well support a finding that respondent is engaged in a pattern of conduct that deprives trademark owners of the ability to register domain names reflecting their marks.”

By comparison, in the present case the Respondent has not directly offered the domain name for sale to the Complainant, and it appears that the Respondent was not contacted by the Complainant at an earlier stage. Another difference is that this Panel has not been provided with evidence that the Respondent has been a respondent in a number of UDRP proceedings evidencing a pattern of such conduct. It is also worth noticing that the disputed domain name appears to include dictionary meaning. Finally, in the present case the registration of the disputed domain name was not the result of an intentional snap process activated by the Respondent.

On balance, the Panel concludes that Respondent did not register the disputed domain name in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.

The Panel reaches this conclusion even if the Respondent’s stated “intention of developing a website that provided a forum for fan raves or the critiquing of early 20 century American Literature including The Jazz Age, and the Plastic Age” is not convincing. These and other issues would lend themselves better to examination in national court proceedings, and this Panel’s conclusions are not intended to cause any prejudice in this regard.

 

7. Decision

For all the foregoing reasons, the Complaint is denied.


Luca Barbero
Sole Panelist

Dated: April 26, 2006

 

Источник информации: https://internet-law.ru/intlaw/udrp/2005/d2005-1272.html

 

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