WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Laminex (Australia) Pty. Ltd. v. Henry Trujillo
Case No. DBIZ2002-00068
1. The Parties
The Complainant is Laminex (Australia) Pty. Ltd., an Australian proprietary company, of 6 Thomas Street, Chatswood, NSW 2067, Australia. Complainant is represented in this administrative proceeding by Phillips Ormonde & Fitzpatrick, Level 21, 367 Collins Street, Melbourne, VIC 3000, Australia.
The Respondent is the Registrant, Henry Trujillo, 2756 W. Park Place, Denver, Colorado 80219, United States of America.
2. The Domain Name and Registrar
The Domain Name subject to complaint is <formica.biz>. The Registrar of the Domain Name is PSI-Japan, Inc., Asahi Sanban-cho Plaza #206, 7-1, Sanban-cho, Chiyoda-ku, Tokyo 102-0075, Japan.
3. Procedural History
3.1. The Complaint in respect of the disputed Domain Name was received by the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") by email on April 26, 2002, and in hard copy on April 30, 2002. The Complaint satisfies the formal requirements of the Start-up Trademark Opposition Policy for .BIZ ("STOP"), the Rules for Start-up Trademark Opposition Policy ("STOP Rules"), both as adopted by NeuLevel, Inc., and approved by ICANN; and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy ("Supplemental Rules"). The prescribed fee has been paid. There is a further IP Claimant in respect of the disputed Domain Name.
3.2. Complainant states that on April 26, 2002, a copy of the Complaint was sent to the Respondent in accordance with the STOP Rules and a copy was sent to the concerned Registrar by email and courier.
3.3. On May 28, 2002, the Registrar was asked to confirm the details of the Registrant.
3.4. On June 11, 2002, Formal Notification of STOP Complaint and Commencement of Administrative Proceeding was sent by Center to the Respondent and Complainant.
3.5. On July 5, 2002, Notification of Respondent Default was sent by Center to Respondent and Complainant.
3.6. On July 29, 2002, Dr. Clive Trotman, having provided the Center with a Statement of Acceptance and Declaration of Impartiality, was appointed as a single member Administrative Panel and notification was sent to Complainant, Respondent and the Panel. An electronic copy of the Case File was sent by email to the Panel on July 29, 2002, and the complete Case File was sent by courier.
4. Factual Background
4.1. According to information supplied by Complainant, FORMICA® is a well known decorative laminate used in kitchens, bathrooms and elsewhere, domestically and industrially. The product has been manufactured since 1927 and owes its name to an earlier product that replaced mica for the purpose of electrical insulation, hence, "for mica". The FORMICA® business had entered foreign (non U.S.A.) markets by 1947 and sales had topped $US 24 million by 1951. The brand is also now associated with metal laminates, wood surfacing and laminated flooring products. The FORMICA® brand name ranks among the world's most recognized logos and trademarks.
4.2. Until recently, the International Formica business was owned by Formica Corporation, a Delaware Corporation and the FORMICA® trademarks were owned by Formica Technology Inc. In 1995 the Formica business in the Oceania region (including the FORMICA® trade marks in Australia, New Zealand, Fiji and Papua New Guineau) was sold by Formica Corporation to CSR Limited ("CSR"). The assignment of the FORMICA® trade marks in these jurisdictions is on record and CSR is currently listed as the owner of these marks. Prior to that assignment, CSR had been using the FORMICA® trade marks under license from Formica Technology, Inc.
4.3. In 1999, CSR sold the Formica business in Australia together with the FORMICA® trademarks in Australia, New Zealand, Fiji and Papua New Guineau to the Complainant and sold other assets of their business in New Zealand to AMATEK (NZ) LIMITED. The Complainant since acquiring the FORMICA® trademarks has used them in the Oceania region in relation to products including laminates, wood panels, edging and fibreboard.
4.4. The Complainant operates a website <formica.com.au> which promotes its products and services.
5. Partiesí Contentions
A. Contentions of Complainant
5.1. The contentions of Complainant include (paragraphs 5.2-5.9 below) that:
5.2. The dispute is properly within the scope of the STOP. The registration agreement, pursuant to which the Domain Name being the subject of this Complaint was registered, incorporates this Policy by reference.
5.3. The disputed Domain Name <formica.biz> is identical to the trademark FORMICA in which Complainant has rights.
5.4. Respondent does not have any rights or legitimate interests in the disputed Domain Name. Respondent has not been authorized by Complainant or its predecessors in title to use or apply for any trademark or Domain Name incorporating Complainant's trademark.
5.5. Extensive searches have not located any information to indicate that Respondent undertakes any activity that would entitle it to use the Complainant's trademark. Even if Respondent dealt legitimately in Complainantís products, that would not give him sufficient proprietary rights in Complainantís trademarks. Precedent Domain Name Decisions have held that use of the trademark in a Domain Name in these circumstances must require the trademark owner's specific authorization.
5.6. At the time of the registration of the Domain Name, the Respondent was made aware of the Complainant's rights in the FORMICA® trade mark through the <.biz> registration process.
5.7. The disputed Domain Name has been registered or is being used in bad faith: to create an impression of an association with the Complainant (or Complainant's predecessors in title); to create an impression of an association with the goods and services offered by the Complainant; to attract business from the Complainant; to prevent the Complainant from reflecting the FORMICA® mark in a corresponding <.biz> Domain Name; and generally to disrupt Complainantís business or misleadingly to divert members of the public by confusion.
5.8. Precedent has held that it is not necessary for bad faith to be targeted specifically at the Complainant.
5.9. The remedy requested by Complainant is that the disputed Domain Name be transferred to Complainant.
B. Contentions of Respondent
5.10. Respondent has not offered any Response.
6. Discussion and Findings
Jurisdiction of Administrative Panel
6.1. STOP Paragraph 4(a) states:
"You are required to submit to a mandatory administrative proceeding in the event that a Complainant asserts to the applicable Provider, in compliance with the Rules, that:
(i) Your domain name is identical to a trademark or service mark in which the Complainant has rights; and
(ii) You have no rights or legitimate interests in respect of the domain name; and
(iii) Your domain name has been registered or is being used in bad faith."
6.2. Complainant has made the relevant assertions as in 6.1 above. This dispute is properly within the scope of the Start-up Trademark Opposition Policy and the Administrative Panel has jurisdiction to decide the dispute.
Whether the Domain Name is Identical to a Trademark or Service Mark in which Complainant has Rights
6.3. The Complaint states at 13.1.7 that CSR Ltd is currently listed as the owner of the FORMICA® trademarks, and later at 13.1.8 that CSR Ltd in 1999 sold the trademarks in Australia, New Zealand, Fiji and Papua New Guineau to Complainant. For the purposes of this Proceeding only it is accepted by the Panel that Complainant has rights in the trademark FORMICA®.
6.4. The disputed Domain Name is <formica.biz> of which the gTLD extension <.biz> is of no consequence for the determination of identity or otherwise. The remainder of the Domain Name, FORMICA, is identical to a trademark in which Complainant has rights and accordingly the Panel finds for Complainant under Paragraph 4(a)(i) of the STOP.
Whether Respondent Has Rights or Legitimate Interests in Respect of the Domain Name
6.5. Complainant must prove that Respondent has no rights or legitimate interests in respect of the Domain Name. Complainant has made out a prima facie case that, as the trademark holder, at least for Oceania, it has not licensed or authorized use of the trademark to Respondent, and furthermore, to the best of Complainant's knowledge the Complainant's predecessors in title (Formica Corporation and CSR Ltd.) have not done so either, therefore Respondent does not and cannot have any rights or legitimate interests in the trademark, which he has embodied in the Domain Name.
6.6. Respondent has not refuted Complainant's claim generally or in any of the illustrative terms available to him under Paragraph 4(c) of the STOP. Examining these potential defenses in turn, there is no evidence that Respondent is the owner or beneficiary of a trade or service mark identical to the Domain Name; or that he has used a name corresponding to the Domain Name for a bona fide purpose; or that as an individual, business, or other organization, he has commonly been known by the Domain Name. Reasonable searches and enquiries detailed by Complainant failed to reveal any activity of Respondent having any legitimate connection with Complainant's trademark. The Panel finds for Complainant under Paragraph 4(a)(ii).
Whether the Domain Name Has Been Registered or Is Being Used in Bad Faith
6.7. Complainant is required to prove that the Domain Name has been registered or is being used in bad faith. The STOP Paragraph 4(b) provides for a finding of bad faith in the following illustrative circumstances, which are without limitation:
"(i) Circumstances indicating that you [Respondent] have registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of the 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 Complainant from reflecting the mark in a corresponding domain name; 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 Complainant's 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."
6.8. Inevitably there is some difficulty in proving allegations in the terms of Paragraphs 4(b)(i)-(iv) if a Respondent has done nothing at all after registration of a Domain Name (although it is firmly established in UDRP precedent that inaction can contribute to bad faith). However in the present case it is clear that Respondent knew of the Complainant's trademark because the registration process involved him being informed of it, and he elected to proceed with the registration nevertheless. Furthermore it is practically inconceivable that he would not have been aware of the existence and fame of such a universal trademark as FORMICA®. Thus it can be held that Respondent had actual or constructive knowledge of Complainant's world-famous trademark at the time of registration of the disputed Domain Name. That is sufficient evidence of bad faith (Ford Motor Company and Land Rover Ltd. v. Institution, WIPO Case No. DBIZ2001-00045; Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163).
6.9. As concluded in 6.4 above, the disputed Domain Name is identical to Complainant's trademark. As concluded in 6.6 above, Respondent does not have rights or legitimate interests in the Domain Name. As concluded in 6.8 above, the disputed Domain Name was registered in bad faith. The Panel gives its decision for Complainant and against Respondent.
The Decision of the Administrative Panel is that the disputed Domain Name <formica.biz> is identical to Complainant's trademark, that Respondent has no rights or legitimate interests in the Domain Name, and that the Domain Name has been registered in bad faith. The disputed Domain Name <formica.biz> shall be transferred to Complainant.
Dr. Clive N. A. Trotman
Dated: August 12, 2002