WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Marioff Corporation Oy v. Ultra Fog AB
Case No. D2000-0521
1. The Parties
The Complainant in this administrative proceeding is Marioff Corporation Oy, Finland, represented by Attorney-at-law Carl-G Leissner, Sweden.
The Respondent is Ultra Fog AB, Sweden, represented by Attorney-at-law Michael Plogell, Sweden.
2. The Domain Name and Registrar
This dispute concerns the domain name <hifog.com>
The registrar with which the domain name is registered is Network Solutions Inc., Herndon, Viginia, USA.
3. Procedural History
A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on May 29, 2000, and the signed original together with four copies was received by the WIPO Center on May 31, 2000. The WIPO Center sent an Acknowledgement of Receipt to the Complainant, dated May 30, 2000.
On May 30, 2000, a Request for Registrar Verification was transmitted to the Registrar, NSI. On May 31, 2000 NSI confirmed by e-mail that NSI was in receipt of the Complaint sent to NSI by the Complainant, the domain name <hifog.com> was registered with NSI and that the Respondent was the current registrant of the name. The Registrar also forwarded the requested WHOIS details, confirmed that the Uniform Domain Name Dispute Resolution Policy was in effect and stated that the domain name was on "Active" status.
The policy in effect is Network Solutions 5.0 Service Agreement. There is no evidence that the Respondent ever requested that the domain name at issue be deleted from the domain name database. Accordingly, the provisions of Policy bind the Respondent.
On June 2, 2000 the Complaint was amended by e-mail. The WIPO Center received the amendments by hard copy on June 6.
The assigned WIPO Center Case Administrator completed a Formal Requirements Compliance Checklist on June 8, 2000. The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 (the "Uniform Rules"), and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999 (the "WIPO Supplemental Rules"). The required fees for a single-member Panel were paid on time and in the required amount by the Complainant.
No formal deficiencies having been recorded, on June 8, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, NSI and ICANN), setting a deadline of June 27, 2000, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by e-mail to the e-mail addresses indicated in the Complaint and specified in NSI’s WHOIS confirmation, as well as to <email@example.com>. In addition, the Complaint was sent by post/courier to the available postal address.
A response to the Complaint was filed on June 27, 2000 and was acknowledged by the WIPO Center on June 28, 2000.
The Complainant had originally requested a three-member panel to be appointed. This was apparently misunderstood by the Respondent who "confirmed" the appointment of a single member panel. Through e-mail correspondence the Complainant agreed to revert from a three member panel to a single member panel.
Consequently, on July 13, 2000, the WIPO Center invited Mr. Knud Wallberg to serve as a panelist in Case No. D2000-0521, and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence.
Having received on July 14, 2000, Mr. Knud Wallberg’s Statement of Acceptance and Declaration of Impartiality and Independence, on July 18, 2000, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Knud Wallberg was formally appointed as the Sole Panelist. The Projected Decision Date was July 27, 2000. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and WIPO Supplemental Rules.
The Administrative Panel shall issue its Decision based on the Complaint and the Response, the e-mails exchanged, the Policy, the Uniform Rules, the WIPO Supplemental Rules.
4. Factual Background
The Complainant Marioff Oy (Marioff) is working in the business area of fire extinguishing. Marioff has several subsidiaries, inter alia in Sweden. The total annual turnover in the group amounts to approximately USD 54.216,000 (figures from 1999).
Marioff has registered "Hi-fog" as a trademark in at least 16 countries. Appended to the complaint was the list with registrations of the trademark "Hi-fog". <hi-fog.com> has been registered as a domain name since April 15, 1998 and has since then been in use.
The Marioff group also has a subsidiary with the name "Marioff Hi-fog Oy"; a company limited by shares registered in Finland.
The Respondent Ultra Fog AB, (Ultra Fog) is a company registered in Sweden and working in the business area of fire extinguishing. It has an annual turnover of USD 440.000 (figures from 1998).
Ultra Fog registered the domain name <hifog.com> in April 1999
5. Parties’ Contentions
The claim regards the protected and registered trademark Hi-fog.
Marioff holds more than 800 patents and/or patents pending in the area of fire extinguishing products and to the major part regarding a product which is involved in a method of fire extinguishing what is called "hi-fog". Mr Göran Sundholm, today's major shareholder and CO of Marioff was the inventor of the method.
Marioff has registered "Hi-fog" as a trademark in at least 16 countries. The mark has been registered since 1992. Appended to the complaint was a list showing the registrations of the trademark "Hi-fog". <hi-fog.com> was registered as a domain name on April 15 1998 and has since then been in use. The Marioff group also has a subsidiary with the name "Marioff Hi-fog Oy", a company limited by shares registered in Finland.
The Marioff group and Ultra Fog are working (solely) in the area of fire extinguishing and are to be regarded as competitors in the Swedish market but also elsewhere including within the market with applications on vessels.
<hifog.com> was originally used as a site (home page) with information from Ultra Fog and its products. In September 1999 a complaint was made from Marioff to Ultra Fog directly regarding use of the domain <hifog.com>. Marioff claimed that Ultra Fog wrongfully used their registered trademark. Although Ultra Fog answered Marioff and claimed that Ultra Fog AB had the right to use the domain, the use of the domain was shortly after this interrupted by Ultra Fog. Marioff concluded than that the problem then was over.
In the beginning of year 2000 Marioff noted that Ultra Fog had restarted to use the domain again. Now it was used as a pointer to Ultra Fog’s own site.
"The pointer" (Pointer) states the following;
"Hifog is today an international accepted abridgement of highpressure based waterfog sprinkle system.
Various alternatives is available on the international market, one of htem is the Swedish alternative Ultra Fog.
Please search us on our website www.ultarfog.com"
On January 28, 2000, Marioff once again wrote to Ultra Fog complaining about the use of the domain <hifog.com>. This time without any success in the way that the use has not been interrupted. In the Pointer it is alleged that "Hifog" is an international accepted abridgement of high-pressure based water fog sprinkler system, which the Complainant contests.
The Complainant states that it is obvious that the domain name is more or less identical with the registered trademark, since only the hyphen is omitted.
Ultra Fog has no rights to a trade name registered by Marioff. Further the only interest on behalf of Ultra Fog to use the domain is to be a parasite on the registered trademark Hi-fog.
The domain was registered by Ultra Fog in April 1999 while the trademark was registered in Sweden in January 1993 (application July 1992). In Sweden the trademark is registered in Class 9 for Fire extinguishing equipment. The trademark was registered in the United States 1995 in Class 9 for Fire extinguishers, and fire hose nozzles. Based on these facts Ultra Fog was therefore in bad faith when registering its domain <hifog.com>.
Further shall be noted that in 1996 have Marioff made a complaint against Ultra Fog regarding a possible patent infringement. Ultra Fog has had full or very good knowledge about Marioff and its products.
Ultra Fog has – which is seen by the wording in the Pointer – by using the domain made an attempt to attract customers its own products, customers which with a likelihood to knowledge was looking for "Hi-fog" – the company behind the trade mark.
In accordance with Paragraph 4(b),(i) of the Policy and for the reasons described above, the Complainant requests the Administrative Panel appointed in this administrative proceeding issue a decision that <hifog.com> be transferred to the Complainant.
The Respondent claims that the word "hifog" is a generic term for high pressure water fog sprinkler systems. To support the claim the Respondent encloses several examples (enclosures 1-11) that show the generic use of the word by different professional entities among their customers.
Any trade mark rights that Marioff may have had must be considered degenerated. Consequently, Ultra Fog has a legitimate right to use the term hifog when they want to inform the market about their marketing of such products, including the use of the term as part of a domain name.
6. Discussion and Findings
According to Paragraph 15(a) of the Rules the Panel shall decide a complaint 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:
1)that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
2)that the Respondent has no legitimate interests in respects of the domain name; and
3)the domain name has been registered and used in bad faith.
The question whether these criteria are fulfilled depends to a large extent on whether the term Hi-fog is a trademark or whether it is a generic term. The Panel notes that it does not have the power to take a final and binding decision on this point. That competence is left to the competent authorities in the jurisdictions where such a claim may be raised. The Panel is however competent to take a position on the question for the purpose of making a decision in the case before it cf. paragraph 15 of the Rules. The position must be based on the facts presented in the case.
It is undisputed that Marioff is the holder of several registrations of a device mark containing the word Hi-fog, and that these registrations are still valid. This includes registrations in Finland and Sweden (where the Ultra Fog is located). There is further no evidence that any of the registrations contains disclaimers or other remarks to the effect that the words Hi-fog is excluded from protection.
In addition, the trademark laws in both Finland and Sweden, which are relevant for this case, are based on the Community Directive on Trademarks (Directive 89/104). In article 12, 2, a) of the directive it is stated that degeneration only can occur if the mark as a consequence of the activity or inactivity of the proprietor, has become the common name in the trade for the product for which it is registered. It is thus not sufficient proof of degeneration that the mark is used by some enterprises within some sectors as an apparent generic term. In addition to this principle of law, the Panel has looked through the enclosures provided by the Respondent and is of the opinion that these do not necessarily show that the term is used in a generic sense. The term is written by using both upper and lower case, and in some cases reference could actually be construed as a reference to the Complainants products.
In this context the Panel also notes, that no evidence has been furnished that the word hifog can be looked up in a dictionary. This is contrary to the situation in the decisions in case D2000-0161 Zero International v. Beyonet concerning the domain name <zero.com> and D2000-0016 Allocation Network v. Steve Gregory concerning the domain name <allocation.com> where the words "zero" and "allocation" both are common words that can be found in dictionaries.
Under these circumstances the Panel finds that it must base its decision on the assumption that the Complainant enjoys full and unlimited rights in the trademark Hi-fog. Paragraph 4, (a), (i) is thus satisfied.
Respondents legitimate interests
As to paragraph 4, (a), 2) cf. paragraph 4, (c) of the Policy the Panel finds that the Respondent has not put forward evidence showing that they have any rights to support their registration and use of the domain name. The question is, whether the fact that the Respondent has perceived the word hifog as a generic term can lead to the conclusion that the Respondent has a legitimate interest in the domain name and has made legitimate fair use of it.
The Panel has considered this in depth. Based on the present facts, degeneration has not been proven to have occurred. Under these circumstances it does not suffice, that the Respondent has the perception that the mark is a generic term, in order to demonstrate that you have a legitimate interest in the domain name. As stated above this is a matter for the competent authorities to decide. Paragraph 4, (a), (ii) is thus also satisfied.
The third element is that the domain name has been registered and is used in bad faith cf. paragraph 4, (a), (iii) and 4, (b).
Marioff and Ultra Fog are engaged in the same area of business namely production and sale of fire extinguishing systems. Being close competitors it is reasonable to assert from the facts presented in the case that they have profound knowledge of each other including the trademarks used.
The Respondent has not contested that they have run a website under the disputed domain name with the content (a "pointer") as described in the Complaint and which still appears on the website. Respondent has further not contested the information about the previous content of their website as well as the previous contacts between the parties except for the alleged patent infringement.
Based on these facts it is the view of the Panel that the Respondent through these acts has tried to attract Internet users to its website by using a domain name that is almost identical to the trademark of the Complainant, cf. paragraph 4, (b). Paragraph 4, (a), (iii) is thus also satisfied.
In view of the above circumstances and facts the Panel decides, that the domain name registered by Respondent is identical to or quasi-identical to the trademark in which the Complainant has rights, and that the Respondent has no rights or legitimate interests in respect of the domain name, and that the Respondent’s domain name has been registered and is being used in bad faith.
Accordingly, pursuant to Paragraph 4 (i) of the Policy, the Panel requires that the registration of the domain name <hifog.com> be transferred to the Complainant.
Dated: July 26, 2000