WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Columbia ParCar Corp. v. S. Brustas GmbH
Case No. D2001-0779
1. The Parties
The Complainant is Columbia ParCar Corp. of 350 N. Dewey Avenue, Reedsbury, Wisconsin 53959, United States of America.
Represented by Mr. Dana Roberts of Nordic Group of Companies, 414 Broadway, Ste. 20, Baraboo, Wisconsin 53913, United States of America.
The Respondent is S. Brustas GmbH of Am Hahnenbusch 8, Nieder-Olm, D-55268, Germany.
Respondent is represented by Mr. S. Brustas
2. The Domain Name and Registrar
The domain name with which this dispute is concerned is: <columbiaparcar.com>.
The Registrar with which the domain name is currently registered is Network Solutions, Inc., of 505 Huntmar Park Drive, Herndon, Virginia 20170, United States of America.
3. Procedural History
3.1 The Complaint was filed electronically on June 18, 2001, and in hard copy on June 13, 2001, at the WIPO Arbitration and Mediation Center (the "WIPO Center").
3.2 On June 20, 2001, the WIPO Center requested verification of the domain name details from the Registrar and on June 25, 2001, the Registrar verified:
(i) that a copy of the Complaint had been sent to it by Complainant;
(ii) that the domain name is registered with it;
(iii) that the current registrant of the domain name is the Respondent;
(iv) that the Registrar's Service Agreement Version 5.0 is in effect;
(v) that the domain name is currently in "Active" status;
(vi) Respondent's Administrative Contact and Technical Contact is ACE Hostmaster (AH3713-ORG) hostmaster@ACECONCEPT>COM, ACE Concept, 74-923 Highway 111, Suite 224, Indian Wells, CA 92210, United States of America, 760-345-6700, Fax – 760-345-4454.
(vii) The Billing Contact is Mueller, Andreas (AM3018) billing@SCHLUND.DE, Schlund + Partner GmbH & Co, Erbprinzenstrasse 1, Karlsruhe D-76133 DE. +49 721 91374-0, (Fax) +49 721 91374-20.
3.3 On June 25, 2001, all formal requirements for the establishment of the Complaint having been checked by the WIPO Center were found to be in compliance with the applicable ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the ICANN Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") , and WIPO’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Center advised Complainant that it had complied with all of the Center's requests.
3.4 On June 26, 2001, the WIPO Center sent the Notification of Complaint and Commencement of Administrative Proceeding by courier, facsimile and by e-mail to Respondent, the Administrative Contact, the Technical Contact and the Billing Contact and by e-mail to the postmaster at the domain name.
3.5 The Administrative Proceeding commenced on June 26, 2001, and the Response was due on July 15, 2001.
3.6 On July 5, 2001, Respondent wrote to the WIPO Center with copy to Complainant, asserting that due to the summer vacation period in Germany Respondent was unable to obtain the services of an English speaking lawyer and requested an extension for response, suggesting that a minimum of 90 days would be required.
3.7 Complainant replied on July 6, 2001, stating that it did not agree to Respondent's request, asserting that Respondent has used a U.S. law firm extensively, and submitting that if an extension were to be granted, an extension to July 31, 2001, would be more than reasonable. Respondent replied to WIPO Center on the same day with further argument for a 90 day extension.
3.8 On July 9, 2001, the WIPO Center granted an extension to July 31, 2001, and on the same day Respondent requested reconsideration by the WIPO Center and stated that it had been unable to open WIPO's website listing the Model Response. The WIPO Center replied refusing the request and noting that no technical problems with its server had been notified.
3.9 On July 27, 2001, a Response was filed.
3.10 Panelist D.J. Ryan, having filed a Statement of Acceptance and Declaration of Impartiality and Independence, was appointed sole panelist on August 9, 2001.
4. Factual Background
4.1 Complainant is a U.S. company incorporated in the State of Wisconsin and is a manufacturer and marketer of small vehicles intended for use as golf carts and industrial vehicles.
4.2 Complainant is the registered proprietor of the following trademarks registered in the United States of America:
- No. 1,600,673 - COLUMBIA and Eagle device registered June 12, 1990, in respect of "motorised golf cars".
- No. 1,643,537 - PARCAR registered May 7, 1991, in respect of "motorised golf cars".
4.3 Complainant was incorporated in the State of Wisconsin on October 1, 1976, under the name "Mark Seats, Incorporated" and changed its name to its present name "Columbia ParCar Corporation" on August 28, 1984, when it appears Complainant took over the golf car business of the Harley Davidson Motor Co. (Complainant Annex 1 and Respondent Annex 52). Complainant has traded under that name and used that name in its promotional material since that date.
4.4 Respondent is a German corporation which was established in 1985 by its principal Sam Brustas, a former employee of Harley Davidson. Mr. Brustas appears to be the controller of Respondent and in correspondence no distinction appears to be drawn between the GmbH and Mr. Brustas. References in this decision to Respondent will therefore include Mr. Brustas personally. Respondent markets and appears also to manufacture and design small vehicles including golf carts and industrial vehicles and components for electric vehicles such as magnet motors, controllers, batteries and other products (See Complainant's website – Complainant Annex 7). Principal among such products appears to be golf cars and industrial vehicles supplied by Complainant.
4.5 By an Agreement dated March 18, 1985, between Complainant and Mr. Brustas, Respondent was granted the exclusive right to purchase and resell Complainant's golf cars and parts and accessories in Europe, the Middle East and Africa. By Clause 17 of the "Exclusive Dealer's/Agent Contract" annex to the Agreement Complainant, referred to in the clause as "Columbia" and Respondent, referred to in the clause as "dealer" agreed that:-
"Columbia is the exclusive owner of the trademark COLUMBIA and all other trademarks used in connection with its Products. Dealer agrees not to infringe upon or harm the rights of Columbia in its trademarks. Such trademarks shall only be used in a manner and in forms approved by Columbia and Columbia shall have the right to police such use. Dealer's license to use such trademarks shall cease upon termination of this Agreement."
In May 1987, a new Agreement was entered into between Complainant and Respondent containing, in Clause 15, a provision in the same terms as Clause 17 of the 1985 Agreement.
4.6 The domain name was registered on behalf of Respondent on August 4, 1999, at the same time as Respondent's domain name <Brustas.com> was registered. The time at which Complainant became aware of the registration of the domain name is in dispute between Complainant and Respondent but in the opinion of the Panel nothing turns on the precise date when Complainant acquired this knowledge. It seems not to be in dispute that at no stage did Complainant specifically authorise Respondent to register the domain name. Complainant asserts that it became aware of the registration in March of 2000, and on May 17, 2000, Complainant wrote to Respondent demanding that Respondent relinquish the domain name and offering to reimburse Respondent for the $70 registration fee (Complainant Annex 12).
4.7 By its reply of June 9, 2000, Respondent declined to transfer the domain name to Complainant and freely admitted that it has intentionally attempted to attract Internet users to its web-site to promote and sell Complainant's products, asserting that it has a right to do so and that its activities are in no way harming, but rather have served to enhance, the image of Complainant.
4.8 Further attempts by the parties to settle the matter were unsuccessful and this Complaint was filed on June 13, 2001.
5. Parties Contentions
5.1 Complainant's contentions may be briefly summarised as follows:
(i) "Columbia ParCar" is a trademark in which Complainant has rights by virtue of its separate registrations of the trademarks COLUMBIA AND DEVICE and PARCAR.
(ii) "Columbia ParCar" is a common law trademark in which Complainant has rights and that the separate trademarks, COLUMBIA for industrial vehicles, and PARCAR for golf cars, are almost always used in advertising materials in conjunction with the full name "ColumbiaParCar" (Complainant Annex 19).
(iii) Respondent has no rights or legitimate interests in the domain name and that registration of the domain name is in contravention of paragraph 15 of the Dealer Agreement between Complainant and Respondent.
(iv) Complainant has never agreed to Respondent's use of the domain name and objected to such use immediately on discovery of it.
(v) Respondent has never been commonly known by the domain name.
(vi) Respondent is not making a legitimate non-commercial or fair use of the domain name within the provisions of Paragraph 4(c)(iii) of the Policy and points to Complainant's website offering products other than Complainant's products at that site.
(vii) Respondent registered and is using the domain name in bad faith. Complainant contends that the domain name was registered in knowledge of Complainant's use of "Columbia ParCar" as its trademark and in violation of the provisions of the Dealer Agreement. Complainant further contends that:
"Internet users entering the Brustas web-site through"<columbiaparcar.com>" expecting to find out about Columbia ParCar vehicles are met with a confusing array of information regarding vehicles "based on" Columbia ParCar vehicles, custom made vehicles and other products, parts and accessories. See Annex 7."
5.2 Respondent's contentions may be summarised as follows:
(i) "ColumbiaParCar" ("the compound mark") is not a trademark in which Complainant has rights. Respondent contends that Complainant does not use the compound mark as a trademark but uses only the separate trademarks COLUMBIA and PARCAR.
(ii) As Complainant's exclusive dealer, Respondent has a right to use the domain name, and has used the name continually since the 1980's in relation to the sale and distribution of Complainant's products in its exclusive territory.
(iii) The domain name was not registered primarily for the purpose of selling, renting or otherwise transferring the domain name, but rather with the intent to more successfully market Complainant's products.
(iv) Complainant did not register the domain name in order to prevent Complainant from reflecting the mark in a corresponding domain name.
(v) Respondent has used the compound mark continuously for more than 16 years in connection with the bona fide offering of goods.
(vi) Respondent has been commonly and continuously known by the name "ColumbiaParCar" for over 16 years.
6. Applicable Dispute
6.1 This dispute is one to which the Policy applies. By registering the domain name, Respondent accepts the dispute resolution Policy adopted by the Registrar. The Registrar's current policy set out in its domain name registration agreement is the Policy.
6.2 To succeed in its Complaint, Complainant must show that each of the conditions of Paragraph 4(a) of the Policy are satisfied, namely that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
7. Discussion and Findings
Identical or Confusingly Similar Trademarks
7.1 Respondent contends that the domain name is not substantially identical or confusingly similar to either of Complainant's registered trademarks COLUMBIA and PARCAR. The running together of two marks to form a compound mark is referred to in Anglo-Australian law as "bridging over". The effect of this so-called "bridging over" has been considered in the English courts and by the Registrar of Trademarks in Australia on a number of occasions, see for example, Taylor's Drug Co Limited's Application (1923) 40 RPC 193, Freestone v. Caterpillar Tractor Co (1985) AIPC 90.237. Were it necessary to do so, the Panel would be of the opinion that, consistently with the decisions in those cases, the compound mark "Columbia ParCar" is confusingly similar to the marks COLUMBIA and PARCAR. The matter is, however, put beyond doubt by the fact that, contrary to Respondent's submissions, there is clear evidence of use by Complainant of the compound mark "Columbia ParCar" in its advertising and promotional material for both its Columbia models and its ParCar models (see for example Complainant Annex 19), where the expression "ColumbiaParCar" is clearly used as a trademark alongside the separate marks COLUMBIA and PARCAR and not merely as Complainant's corporate or business name.
The Panel therefore finds that the domain name is identical or confusingly similar to a trademark in which Complainant has rights.
Legitimate Right or Interest
7.2 It is clear from the evidence that Respondent has for many years used the name Columbia ParCar in connection with the bona fide offering of goods and services. It has been used on Respondent's letterheads (Respondent Annex 48 and 49), on envelopes (Respondent Annex 50), in brochures published by Respondent (Respondent Annex 51) and in correspondence with Complainant itself (Respondent Annex 57). It is also clear that such use has been with the full knowledge and consent of Complainant. It is Complainant's submission, however, that Respondent was entitled to use the name Columbia ParCar only to the extent permitted by the Distribution Agreement and that that permission did not extend to its use as a domain name or to its use in relation to the promotion and sale of goods other than those of Complainant's manufacture. This raises questions of the construction of the Distribution Agreement, the scope of the authority granted and the respective rights of Complainant and Respondent in German law in relation to the use of the compound mark. These, however, are questions which are not within the scope of the enquiry under the Policy and which it is not necessary to resolve.
7.3 Paragraph 4(c)(i) of the Policy provides that if the Panel finds that before notice of the dispute, Respondent used the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services, that shall demonstrate Respondent's rights or legitimate interests to the domain name. There is no material dispute between Complainant and Respondent as to the facts surrounding Respondent's use of the compound mark on letterheads, brochures and the like, and Complainant has clearly acquiesced in that use. Where the parties differ is in respect of the consequences of that use. It may be that Respondent's use of the compound mark may be actionable in other proceedings, but this is not a matter for this Panel and the Panel is bound by the provisions of the Policy. It is therefore bound to apply the mandatory provisions of Paragraph 4(c)(i).
The circumstances in this case resemble those in, for example, Weber-Stephen Products Co v. Armitage Hardware, WIPO Case D2000-0187 (May 11, 2000) and ABIT Computer Corporation v. Motherboard Super Store, Inc., WIPO Case D2000-0399 (August 8, 2000) where an exclusive dealer has, with the knowledge and consent of the trademark owner, used that trademark in the course of its business for the purpose of promoting the sale of the principal's product. It is not a case where one of a multitude of mere resellers seeks, without the knowledge or authority of the trademark owner, to register as a domain name a famous trademark of the supplier (see for example Avon Products, Inc., v. Jongsoo Lee, WIPO Case D2001-0272 (April 12, 2001)). Nor do the circumstances here in any way resemble those in the case of Motorola, Inc,. v. Newgate Internet, Inc., WIPO Case D2000-0079 (April 14, 2000) relied on by Complainant where the respondent, having no apparent connection with the complainant registered the domain name and attempted to sell it to the complainant for an amount in excess of the respondent's out-of-pocket expenses and threatened in the alternative, to use the domain name for a sex site.
7.4 The Panel, therefore, concludes that Respondent has demonstrated a legitimate right or interest in the domain name.
7.5 Respondent also contends, and supports with evidence, a claim that it has been commonly known by the domain name (Respondent Annexes 23 to 46). The Panel is of the opinion that the evidence provides substantial support to that claim but, in the light of the above finding, it is unnecessary for the Panel to express a concluded opinion.
Use and Registration in Bad Faith
7.6. As Respondent has successfully established its right and legitimate interest, Complainant has failed to establish the necessary element required under Paragraph 4(a)(ii) of the Policy, it is unnecessary to consider the further question as to whether or not the domain name has been registered and is being used in bad faith.
8.1 The Panel decides that:
(i) The domain name is identical or confusingly similar to a trademark in which Complainant has rights;
(ii) Complainant has failed to establish that Respondent has no rights or legitimate interests in the domain name;
(iii) The Complaint is dismissed.
Dated: August 23, 2001