WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LION NATHAN LIMITED v. WALLACE WAUGH
Case No. D2000-0030
1. The Parties
Complainant is Lion Nathan Limited of Level 5, Tower 2, 55-65 Shorthand Street, Auckland, New Zealand ("Lion"), whose authorised representative is Baldwin Shelston Waters. Respondent is Wallace Waugh, of River Road, RD1, Hamilton, Waikato, New Zealand ("Mr. Waugh"), whose authorised representative is Knowles & Associates.
2. The Domain Name and Registrar
The domain name in issue is "steinlager.com", the Registrar of which is Network Solutions Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received Lion’s complaint on January 18, 2000 (electronic version) and on February 1, 2000 a hard copy of the Complaint and accompanying documents. The Center verified that the complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). Lion made the required payment to the Center. The formal date of the commencement of this administrative proceeding is February 3, 2000.
On January 31, 2000, the Center transmitted via e-mail to Network Solutions a request for registrar verification in connection with this case. On February 4, 2000 Network Solutions transmitted via e-mail to the Center Network Solutions’ Verification Response, confirming that the registrant is Mr. Waugh and both the administrative and billing contacts are Mr. Waugh.
On February 3, 2000, the Center transmitted to email@example.com, Notification of Complainant and Commencement of the Administrative Proceeding. The Center advised that the Response was due by February 22, 2000. On the same day copies were sent by facsimile and priority mail to Mr. Waugh.
On February 22, 2000, Knowles & Associates submitted via e-mail and facsimile to the Center Mr. Waugh’s Response dated February 22, 2000.
On February 29, 2000, the Center advised the parties via fax that Mr. Christopher Tootal had been appointed as the Panelist in this proceeding and enclosed a copy of the Panelist’s Statement of Acceptance and Declaration of Impartiality and Independence.
By e-mail dated February 23, 2000 addressed to the Center Lion’s solicitors acknowledged receipt of Mr. Waugh’s Response, and raised the following issues:-
"In terms of the above, we note that the Response raises certain matters not previously disclosed to the Complainant. We respectfully submit these require a response. We seek leave pursuant to paragraphs 10(b) (fair opportunity to present case) and 12 (further statements) of the ICANN Rules to lodge further statements or documents to respond to these issues.
We also seek clarification on one issue. Our client’s Complaint was not accompanied by sworn evidence as we did not see this as a requirement of the Rules and indeed not in keeping with the purpose of the procedure.
However, we see that the Respondent has lodged evidence in sworn form. We do not wish to unnecessarily complicate the procedure. However, nor do we wish our client to be disadvantaged in any way and we seek your comment on whether our client’s evidence in chief and/or in response should be in sworn form."
In relation to the issue concerning sworn evidence, the Center replied by email on February 25, 2000, as follows:-
"The Rules neither envisage nor call for evidence submitted in support of a Complaint or Response to be sworn. As a factual matter, the weight to be given to sworn evidence is ultimately a matter of the Panelist."
The Panelist respectfully agrees with the Center.
In relation to the second issue, Mr. Waugh raised a number of objections, and the matter was referred for decision to the Panelist.
The Panelist, by email dated March 1, 2000 issued the following request:-
"1. The Panel has noted the e-mails of the Complainant dated 23 February and of the Respondent dated 24 February.
2. The Panel hereby requests the Complainant to lodge, within 10 days of today’s date, a statement by way of Answer to the Response. The Answer shall be strictly limited to replying to matters raised for the first time by the Respondent in his Response, and which the Complainant was in no position to raise in the Complaint.
3. The Panel has Rule 10(b) well in mind, and reserves the right to request the Respondent to file a further Response should this prove necessary."
Lion submitted its "Answer to new issues raised in Respondent’s Response" on March 10, 2000, whereupon Mr. Waugh sought leave to file a further response.
The Panelist took the view that Mr. Waugh should be given the opportunity of dealing with some of the matters raised in the Answer, and a "Respondent’s Answer to Complainant’s Submission dated 10 March 2000" was lodged on March 23, 2000.
4. Factual Background
The complaint is based on the trade mark STEINLAGER registered in over 36 countries around the world in various formats, but particularly as the word STEINLAGER, and primarily for beer. For the purposes of this complaint, the Panelist notes that the Complaint:
No dates of registration are given in the Complaint, but the Panelist assumes that the trade marks had all been registered (at least in New Zealand, the U.S.A. and other major economies) before the events leading to the present dispute. (Indeed, Mr. Waugh’s Response clearly shows that the U.S.A. trade marks had been so registered).
Mr. Waugh’s son, Ian Wallace Waugh, who has sworn an affidavit in support of Mr. Waugh, filed a trade mark application on April 22, 1998 at the United States Patent and Trade Mark Office for STEINLAGER in respect of "Road painting and striping machines". Notice of Allowance of that application was issued on January 18, 2000.
"steinlager.com" was registered in the name of Mr. Waugh on April 25, 1997 with NSI. Following a complaint from Lion’s attorneys dated June 19, 1997, NSI placed the domain name on "hold" under NSI’s Domain Name Dispute Policy (Rev. 02).
5. The Complaint
"The Complaint and Annexure A contain information and documents which are commercially sensitive and confidential. The information and documents are supplied to WIPO, the Panelist and the Respondent solely for the purpose of dealing with the Complaint. The Complainant does not consent to the use or disclosure of such information or documents to any other person or entity for any other purpose whatsoever."
Unfortunately, Lion do not identify what information and documents they consider are confidential, and while the Panelist accepts that he should not use the information and documents for any purpose other than dealing with the Complaint, Lion and its advisers must be aware that the Panelist’s decision must be published. In the circumstances, the Panelist has tried to avoid disclosing information which may be confidential, but the Panelist recommends that if confidentiality questions arise in future cases parties should identify specifically what matters they consider to be confidential.
"However, the Respondent has said he would only transfer the domain name upon payment of a sum in the order of NZ$20,000".
6. The Response
In the Response, Mr. Waugh disputes much of the Complaint. The following are the principal matters raised:-
"Instead, the name STEINLAGER is of Germanic origin and can be approximately translated into English as meaning "stone layer". The Respondent considered that as such, the mark made fanciful reference to road laying or road marking equipment, therefore the Respondent’s road marking products could be sold under the name STEINLAGER.
"WT has marketed road marking products in the U.S.A. under the trade mark STEINLAGER. In particular, a substantial order of approximately NZ$400,000 per annum for road marking equipment was received in November, 1999."
("WT" is WT Design and Engineering, a business set up by Mr. Ian Waugh in 1989.)
7. Lion’s Answer
In its Answer, Lion replies to three issues, namely Mr. Waugh’s arguments that the domain name was registered for a legitimate commercial purpose, that he is not a cybersquatter, and that the veracity of The Dominion article is denied. The Panelist has ignored Lion’s further submissions in relation to The Dominion article on the ground that Lion could have dealt more formally with that issue in the Complaint had it chosen to do so. However, Lion’s further submissions in relation to the first two issues are in the Panelist’s opinion admissible. The Panelist notes in particular the following matters raised by Lion:-
A significant proportion of these domain names are alleged to contain company names or trade marks associated with large multi-national companies. The registration of such domain names is said to demonstrate a pattern of behaviour which demonstrates bad faith within the scope of Paragraph 4(b)(ii) of the ICANN Policy and constitutes cybersquatting.
8. Respondent’s Answer
In response to Lion’s Answer, Mr. Waugh submitted a 4-page statement, accompanied by an affidavit of Philip Robin Hart, a chartered accountant, who has acted for Mr. Waugh and his family for 23 years. The following substantive matters are raised:-
"The Respondent and his son operate a well-known business, which has been manufacturing electronics since 1989 and road marking equipment since 1995".
"I can confirm that Iain Wallace Waugh trading as W T Design has been in business since 1989 and since 1995 has been actively involved in the design and development of a range of equipment for the application and monitoring of road painting equipment".
Mr. Hart (in para. 3) goes on to recall a visit to "the" factory (which factory is not specified). He says:-
"During that visit I saw a number of electronic traffic display signs, and the controllers for those signs.". He also confirms "that at that stage there was a definite and significant business in these products".
After stating that the Waugh family has invested many hundreds of thousands of dollars in research and development, Mr. Hart concludes his affidavit with the following sentence:-
"Although the road painting equipment division is only a part of the group’s overall substantial activities it is crucial to the desired spread of activities over manufactured products, Internet retailing and IT design".
9. Discussion and Findings
Paragraph 4.a of the Policy directs that Lion must prove each of the following:-
(i) The domain name in issue is identical or confusingly similar to one of Lion’s trade marks or service marks, and
Clearly, the domain name "steinlager.com" is identical to Lion’s many registrations of the word STEINLAGER.
Mr. Waugh relies in support of his having rights or legitimate interests in the domain name "steinlager.com" on the alleged use of the trade mark STEINLAGER in relation to road-marking products. The Panelist is not persuaded that any such use has occurred. The evidence put forward by or on behalf of Mr. Waugh is unconvincing and/or contradictory. The Panelist notes in particular the following matters:-
(i) The conflict between the statement in the Response
"INK Electronic Media Limited has been trading in a product which is referred to as, and bears the trade mark STEINLAGER"
and (in reply to the submission that all steps taken by Mr. Waugh in relation to the Alleged Business, including incorporation of INK, occurred after registration of the domain name).
"The date at which INK Electronic Media was incorporated has absolutely nothing to do with the Steinlager domain name, WT design or the marketing of road marking products. INK Electronic Media is a separate business specialising in the sales of pharmaceuticals and electronics products over the Internet."
"As can be seen from the screen shot, the intended use of the name STEINLAGER was clearly intended to relate to road marking equipment, not beers."
When it was pointed out by Lion that this was the sole piece of evidence provided by Mr. Waugh in support of the existence of the Alleged Business and that the only product illustrated appeared to bear the logo "WT" and was not road marking equipment, Mr. Waugh’s Answer stated that the product shown (an odometer, a distance-measuring device) "is specially designed for the road painting industry". This may be true, but is hardly evidence of use of STEINLAGER in relation to road-marking products.
The Panelist finds that Mr. Waugh has no rights or legitimate interests in respect of the domain name "steinlager.com".
(i) On the basis of Mr. Waugh’s Response and his and Mr. Ian Waugh’s affidavits, the evidence appeared to be that:
"In each case, we have set about finding a domain name for the site, and then developing the brand once the domain name had been obtained".
"If any rightful party contacts the Respondent wanting any of these names the Respondent would happily transfer without charge, in the same fashion as the Respondent has transferred merck.co.nz".
(INK had also registered "merck.co.nz" allegedly to promote Merck products).
"A reporter from that newspaper did call me about my conversation with the Lion Nathan representative. Although the conversations occurred some years ago, I doubt the veracity of the article as reported. I may have mentioned NZ$20,000, but only in connection with the costs of developing a website. I was upset at Lion Nathan’s attitude and their obvious assumption that we had no rights to the domain name."
The Panelist has carefully read the Dominion article, and considers that it is substantially accurate and that Mr. Waugh cannot seriously challenge it. It is clear that Mr. Waugh was very upset by what he saw as Lion’s high-handed approach to him, and was determined to make Lion pay for that. Mr. Waugh’s and his son’s subsequent actions seem to have been designed to attempt to prevent Lion securing the domain name "steinlager.com".
In the light of the foregoing matters the Panelist concludes that Mr. Waugh registered the domain name "steinlager.com" in bad faith. The domain name is being used in bad faith in that Mr. Waugh is preventing Lion from registering its trade mark STEINLAGER in the .com gTLD.
In light of the foregoing the Panelist decides that the domain name registered by Mr. Waugh is identical to the trade mark of Lion, Mr. Waugh has no legitimate interests in respect of the domain name, and the domain name in issue has been registered and is being used in bad faith.
Accordingly, the Panelist orders that the registration of the domain name "steinlager.com" be transferred to Lion Nathan Limited.
Dated: April 3, 2000