WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ITT Industries, Inc. v Katherine Kliszcz
Case No. D2000-1431
1. The Parties
The Complainant is ITT Industries Inc of 10 Mountainview Road, Upper Saddle River, New Jersey 07458, United States.
The Respondent is Katherine Kliszcz, c/ The Canadian Imperial Bank of Commerce, 55 Yonge Street, Toronto, Ontario, M5E 1J4 Canada.
2. The Domain Name and Registrar
The domain name on which the Complaint is based is "marlowpumps.com".
The registrar with which the domain name is registered is Register.com, 575 Eighth Avenue, 11th Floor, New York, NY 10018, United States.
3. Procedural History
3.1 The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution Policy approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 ("the Policy") in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, also approved by ICANN on October 24, 1999 ("the Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect as at December 1, 1999 ("the Supplemental Rules").
3.2 The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") on October 19, 2000.
3.3 The Center has stated in its "Formal Requirements Compliance Checklist" dated November 1, 2000 that:
- The Complaint was filed in accordance with the requirement of the Rules and the Supplemental Rules.
- Payment for filing was properly made.
- The Complainant has complied with the formal requirements.
3.4 The Panel accepts these findings and itself finds that:
- The Complaint was properly notified in accordance with the Rules, paragraph 2(a), having been sent to the Respondent by Post/Courier and E-mail.
- A Response to the Complaint was filed in due time.
- A Reply from the Complainant to the Respondentís allegations was received on 21 November 2000 and a Counter Response from the Respondent to the Complainantís Reply was received on 6 December 2000. There is no provision for the filing of these documents under the Rules, and it appears to be a matter within the discretion of the Panel as to whether they should be admitted and the weight to be attached to them (Rule 10(b) and (d) of the Rules). This matter is dealt with below.
- The Administrative Panel was properly constituted.
3.5 The Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
3.6 The language of the proceedings is English.
4. Factual Background
4.1 The Complainant is the owner of US Registered Trademark No 666,832 for the mark MARLOW for "ípumps, including self-priming centrifugal pumps and diaphragm and plunger pumps, and parts thereof". This registration issued on September 9, 1958. The Complainant asserts that, by itself and through its predecessors, the trademark MARLOW has been continuously used since 1935 to identify itself as a source of pumps and related parts for use in the waste water treatment industry and, by reason of this use, the MARLOW trademark has become well known among the relevant public.
4.2 According to Register.comís WHOIS database, the Respondent is listed as the Administrative, Technical and Zone Contact for the domain name marlowpumps.com (Annex A of the Complaint). This registration was created with Register.com on 18 May 2000, expires on 18 May 2001, and was last updated 24 August 2000.
5. Partiesí Contentions
The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy has been satisfied:
- With respect to the element described in paragraph 4(a)(i) of the Policy, the Complainant asserts that the disputed domain name is confusingly similar to the MARLOW trademark, and that the mere addition of the descriptive word "pumps" does not decrease the confusing similarity but rather increases it and leads the relevant public to believe that the domain name is related to the Complainant and the pumps which the Complainant sells in association with its MARLOW trademark.
- With respect to the element described in paragraph 4(a)(ii) of the Policy, the Complainant asserts that the Respondent has no rights or legitimate interest in the disputed domain name. It was registered with Register.com only on 18 May 2000 (42 years after the registration of the MARLOW trademark), it is not linked to any other web site and there does not appear to be any business carried on in connection with the domain name. Furthermore, the address given in the contact information on registration (Annexes A and F, Complaint) was that of the Canadian Imperial Bank of Commerce, the apparent employer of the Respondent, rather than that of the Respondent, and the Bank denies any connection with the registration (Annex D, Complaint).
- With respect to the element described in paragraph 4(a)(iii) of the Policy, the Complainant asserts that the disputed domain name has been registered in bad faith by the Respondent who has refused to transfer it to the Complainant and has changed her contact information in such a manner as to conceal her identity.
The Respondent denies each of the assertions of the Complainant with respect to the individual elements contained in paragraph 4(a) of the Policy:
- With respect to paragraph 4(a)(i), the Respondent asserts that the Complainant does not own any trade mark for MARLOW PUMPS and that a prior US registration for this mark by the now defunct company Marlow Pumps Corporation, New Jersey, expired on November 3, 1992 and has not been renewed by that corporation or by the Complainant (Annex A, Response). The Respondent, however, does acknowledge the similar elements in the domain name "marlowpumps.com" and the trademark MARLOW (paragraph 4, Response).
- With respect to the element described in paragraph 4(a)(ii) of the Policy, the Respondent asserts that she has a legitimate interest in the disputed domain name "by virtue of her long term relationship with her boyfriend, who is an employee of Wastecorp Inc, an environmental management company." The Respondentís boyfriend is heavily involved in the marketing of various product lines of the Complainant, and the Respondent thought that it would be a "good idea" to build a site that would be devoted to the marlow pump line, highlighting the various uses of this versatile pump. After conducting trademark searches and finding that the MARLOW PUMPS mark had expired and the domain name "marlowpumps" was available, she registered the latter. Based on the above, she asserts that she has a legitimate interest and right to create a web site that offers a bona fide good and features the main product offerings of her boyfriendís company.
- With respect to the element described in paragraph 4(a)(iii) of the Policy, the Respondent denies that the disputed domain name was registered and is being used in bad faith, asserting that the primary purpose of the domain name registration was to develop a web site related to the Respondentís boyfriendís main product offering, which is marlow pumps. She states further that she has never used the disputed domain name following the registration, and the changes to her contact information did not seek to conceal her identity in any way.
C Further communications from the parties
As noted in para 3.4 above, following the filing of the Response by the Respondent, a Reply to this by the Complainant dated November 21, 2000 (the "Reply") was received by the WIPO Center and a Counter-Response to this by the Respondent dated December 6, 2000 ("Counter-Response") was subsequently received by the Center.
Under the Rules, there is no provision for the filing of such documents after the initial Complaint and Response. The Panel has power to request further statements or documents from the parties under Rule 12 of the Rules, but has not exercised this discretion in the present proceeding. It also has the obligation to ensure that the parties are treated with equality and that each party is given a fair opportunity to present its case under Rule 10(b), and the further power to determine the admissibility, relevance, materiality and weight of the evidence under Rule 10(d). These two provisions imply that there is discretion in the Panel to receive or reject further submissions, provided that both parties are informed of what has happened. In the present proceeding, therefore, the Panel is prepared to receive the Reply and Counter Response filed by the Complainant and Respondent respectively.
The Complainant here refers to the Respondentís "revelation" that she registered the disputed domain name on "behalf of her boyfriend" and goes on to note that the boyfriendís employer, WasteCorp International Investments Inc is the defendant in a pending trademark infringement lawsuit filed by the Complainant in the US District Court for the District of New Jersey for infringement of the trademark MARLOW for pumps. The Reply states further that the Complainant was unaware of the Respondentís personal relationship and the circumstances surrounding her registration of the domain name at the timing of the filing of its Complaint. It repeats its assertions that the disputed domain name is confusingly similar, that the Respondent has no rights or legitimate interest in the domain name and that this was registered in bad faith.
While conceding that the Complainant had no knowledge of her personal relationship or the circumstances surrounding her registration of the domain name at the time of the filing of the Complaint, she states that she dealt with these matters in a sworn affidavit submitted to the Complainants by their Barristers and Solicitors in Canada on October 30, 2000 and that no new facts were revealed in the Response in the present proceeding than were documented in the affidavit (the Respondent does not identify the proceedings to which the affidavit relates, but presumably it is the trademark infringement proceeding brought by the Complainant against WasteCorp International Investments Inc). The Respondent further denies that she registered the disputed domain name "on behalf of her boyfriend", but asserts that she acted independently and solely on her own initiative and judgment. She responds further to various allegations by the Complainant concerning her knowledge of the litigation brought by the Complainant against WasteCorp International Investments Inc, and denies again the allegation that she has no legitimate interest in the disputed domain name or that she acted in bad faith.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant has the burden of demonstrating three elements.
6.1 That the Complainant has rights in a trade or service mark with which the Respondentís Domain Name is identical or confusingly similar
As noted in paragraph 4.1 above, the Complainant is the owner of US Registered Trademark No 666,832 for the mark MARLOW for "ípumps, including self-priming centrifugal pumps and diaphragm and plunger pumps, and parts thereof". The Respondentís domain name comprises the word MARLOW together with the purely descriptive term "pumps", and, in the composite word "marlowpumps", the trademark "marlow" remains the dominant part of the domain name. Given that the MARLOW trademark is registered for pumps, the addition of the word "pumps" in the domain name is clearly calculated to cause confusion on the part of the relevant public and to lead them to believe that the domain name is related to the Complainant and the pumps which it sells. It is not to the point for the Respondent to assert that the Complainant has no trademark registration in respect of MARLOWPUMPS and therefore must be regarded as having abandoned this. The only question for the Panel here is whether the disputed domain name "marlowpumps.com" is confusingly similar to the registered trade mark MARLOW, and the Panel concludes that this is indeed the case.
6.2 That the Respondents must be shown to have no rights or legitimate interests in the Domain Name
Paragraph 4(c) of the Policy sets out certain matters which a Respondent can point to as demonstrating rights or legitimate interests in a disputed domain name for the purposes of paragraph 4(a)(ii). These include:
"(i) before any notice to you [the Respondent] of the dispute, your use, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
In the present proceeding, there is no evidence that the Respondent herself was engaged in the pump business in any capacity (subpara (i)) or that she had ever used or carried on a business under the name "marlow" (subpara (ii)). Furthermore, there is no evidence that the Respondent has ever used the domain name at all, so it is difficult to make any assessment of the matters referred to in subpara (iii), i.e. whether she has made or is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to mislead customers or to tarnish the trade mark at issue.
The matters referred to paragraph 4(c) are not an exhaustive statement of what may constitute rights or legitimate interests in a domain name, and it is therefore open to a Respondent to point to other evidence that may show this. In the present proceeding, the Respondent has sought to establish her legitimate interest in the following way. She argues that it arises by virtue of her long term relationship with her boyfriend, who is an employee of Wastecorp Inc, an environmental management company. Because of this relationship, the Respondent had become aware of the various industrial pumps that he has knowledge of and that he markets. She therefore sought to assist him in the development of a corporate web site, showcasing the various product offerings of Wastecorp, and decided specifically that it would be a good idea to build a site devoted to the marlow line that would be hyperlinked to the companyís main web page "wastecorp.com".
There is dispute between the parties as to whether the Respondent undertook the registration on behalf of her boyfriend and/or Wastecorp, or whether she was acting on her initiative. The evidence on this point is equivocal, although it is difficult to escape the conclusion that the Respondent was acting in co-operation with her boyfriend and/or Wastecorp in effecting the registration. But even if the contrary were to be assumed, the Respondentís assertion of a legitimate interest in the disputed domain name cannot be sustained on this basis. It cannot be the case that a person can acquire such an interest purely on the basis of a long term relationship with a third party who works in a particular industry in which the particular domain name is well known as a registered trade mark in relation to goods and/or services used in that industry. Such a claim is a long way removed from the kind of factors listed in paragraph 4(c), which refer to matters of a reasonably factual character, such as prior use or reputation, or the kind of use made by the Respondent, such as non-commercial and fair usage.
Accordingly, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name.
That the Respondent registered and is using the Domain Name in bad faith
Paragraph 4(b) of the Policy lists certain factors which, if found by the Panel to be present, shall be evidence of registration and use of a domain name in bad faith. This is not an exclusive list, but includes:
"(i) circumstances indicating that you [the Respondent] have registered or you have 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 your documented out-of-pocket costs directly related 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 is 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 web site or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
It will be noted that both registration and use of the domain name in bad faith are required here. Of the factors listed above, (i)-(iii) relate to registration, while (iv) relates to use following registration. However, in view of the fact that these factors are stated to be inclusive, it follows that there may be other factors that will point to bad faith, both in registration and in use. In this regard, it is worth noting an early decision of the Administrative Panel to the effect that registration in bad faith followed by a passive holding of a domain name when there is no way in which it could be used legitimately can amount to use in bad faith: Telstra Corporation Ltd v Nuclear Marshmallows Case D 2000-0003.
In the present proceeding, so far as the requirement of registration in bad faith is concerned, the Panel makes the following findings:
- With respect to the factor mentioned in subpara 4(b)(i), there is no evidence that the Respondent registered the domain name for the purpose of selling or transferring it for valuable consideration in excess of out of pocket expenses. Following earlier indications that she would transfer the name, the Respondent has refused to do so, but it is not possible from this to draw any conclusions as to her intentions at the time of registration.
- With respect to the factor mentioned in subpara 4(b)(ii), there is no evidence of a pattern of conduct by the Respondent which consists of registering domain names in order to prevent the owner of the trademark or service mark from reflecting the mark is a corresponding domain name.
- With respect to the factor mentioned in subpara 4(b)(iii), there is no direct evidence that the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor. However, it has been noted above that the Respondent has a personal relationship with an employee of Wastecorp Inc which is presently the defendant in US trademark infringement proceedings brought by the Complainant. This relationship existed at the time of the registration, and, although the Respondent asserts that she acted on her own initiative in doing this, it is difficult to escape the conclusion that she was acting in concert with her boyfriend and/or Wastecorp Inc in doing so. However, as it is unclear that her boyfriend and/or Wastecorp Inc were competitors of the Complainant, it is not possible to draw the further inference that she was acting for the purpose of disrupting the business of a competitor.
- The initial registration gave the Canadian Imperial Bank of Commerceís address and telephone number as part of the Respondentís contact information. The Bank, however, has denied any involvement in the registration of the domain name. This is clearly suggestive of bad faith on the part of the Respondent in registering the domain name with these contact details, i.e. in suggesting that the Bank was involved in the effecting of the registration.
- As noted above, the Respondent has admitted to a personal relationship with an employee of Wastecorp, which is the defendant in US trade mark proceedings brought by the Complainant. Although the Respondent vehemently denies this, there is sufficient evidence to suggest that she effected the registration in conjunction with her boyfriend and/or Wastecorp Inc, and was therefore concealing the identity of the true beneficiary of the domain name of the registration. This is further evidence of bad faith in the registration of the domain name.
In light of the above, the Panel concludes that there is sufficient evidence that the domain name was registered in bad faith.
So far as the second requirement of paragraph 4(a)(iii) is concerned (use of the domain name in bad faith), the Panel makes the following findings:
- As there has been no use of the domain name by the Respondent in relation to a web site or the offering of goods or services, it is impossible to make any finding with respect to the matters referred to in paragraph 4(b)(iv) of the Policy.
- Since registration, the Respondent has sought to hide her identity through changing the contact information relating to the domain name. Although the Respondent claims this was for security reasons and also followed the threat of subpoena to the United States, the new name and address are quite different. In particular, the name "kate m" is not readily identifiable with the name Katherine Kliszcz, and the Respondentís explanation for the adoption of this different name is an unconvincing one, particularly when coupled with the fact that the address given is that of the Bank (see above). On this basis, the Respondentís retention of the domain name while attempting to disguise her identity amounts to use in bad faith within the meaning of the Telstra case referred to above.
- As noted above, the Respondent has not used the domain name to establish a web site or to sell or offer any goods or services; furthermore, if she were to do so, it is difficult to conceive how she could make use of the domain name without causing confusion with the registered trade mark MARLOW and therefore becoming the subject of trademark infringement proceedings herself. In the light of the Telstra case referred to above, this provides a further basis for finding that the Respondent is using the disputed domain name in bad faith.
On the basis of the above findings, the Panel concludes that there is sufficient evidence that the Respondent has used the domain mark in bad faith since the time of registration.
The Administrative Panel decides that the Complainant has proven each of the three elements in paragraph 4(a) of the Policy and accordingly requires that the domain name "marlowpumps.com" be transferred to the Complainant.
Dated: December 20, 2000