WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ford Motor Company v. Speedy Autoservice GmbH and Co KG
Case No. DBIZ2002-00187
1. The Parties
1.1 The Complainant is Ford Motor Company of Suite 600, Parklane Towers East, One Parklane Boulevard, Dearborn, Michigan, 48126-2490, United States of America.
1.2 The Respondent is Speedy Autoservice GmbH and Co KG of Mexicoring 35, 22297 Hamburg, Germany.
2. The Domain Name and Registrar
The domain name upon which this Complaint is based is <speedy.biz> ("Disputed Domain"). The registrar of the Disputed Domain as at the date of the Complaint is Secura GmbH of Am Alten Posthof 4-6, Koeln 50667, Germany ("Registrar").
3. Procedural History
3.1 The Complaint was submitted for decision in accordance with the Start-up Trademark Opposition Policy ("STOP") for .BIZ, adopted by NeuLevel, Inc. and approved by Internet Corporation for Assigned Names and Numbers ("ICANN") on May 11, 2001, in accordance with the Rules for Start-up Trademark Opposition Policy for .BIZ, adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001 ("STOP Rules") and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .BIZ ("WIPO Supplemental STOP Rules").
3.2 The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") via email on April 27, 2002, and in hardcopy on May 2, 2002. The fees prescribed under the STOP Rules and the WIPO Supplemental STOP Rules and the STOP Schedule of Fees have been paid by the Complainant.
3.3 The Center sent the Notification of STOP Complaint and Commencement of Administrative Proceeding (including the domain name registrant, administrative contact, technical contact, zone contact and billing contact, as required by Paragraph 2(a) of the STOP rules) on May 23, 2002, to the Respondent via e-mail (without attachments) and on May 24, 2002, by post/courier (with enclosures), and to the Complainantís representative via e-mail with attachments. The Center sent a copy of the Complaint (without attachments) on May 23, 2002, to the ICANN and the Registrar.
3.4 The Respondent filed a Response on June 12, 2002.
3.5 An Acknowledgment of Receipt of Response was sent by the Center to the Respondent and the Complainant via email on June 24, 2002. The parties were notified in the Acknowledgment of Receipt of Response that the Center would proceed to appoint the Administrative Panel.
3.6 Pursuant to paragraph 6(c) of the STOP Rules, the Center notified the Complainant and Respondent on June 30, 2002, via e-mail of the appointment of the Administrative Panel and that, pursuant to paragraph 7 of the STOP Rules, the Panelist had submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center.
3.7 The Center sent a Transmission of Case File to The Panel by email on July 30, 2002. The documentation was received in hard copy by the Panel in Sydney, Australia on August 6, 2002.
3.8 In accordance with Paragraph 4(a) of the STOP Rules, the Center has verified that the Complaint satisfies the formal requirements of the STOP, the STOP Rules and the WIPO Supplemental STOP Rules.
3.9 Late in the proceedings the Center noticed that although the Complainant provided the correct ticket number, the Ford Motor Company is not the company listed as IP claimant. The IP claimant is listed as Kwik-Fit Holdings PLC, a limited liability company of the United Kingdom. According to Paragraph 1 of STOP, only STOP IP claimants have the right to challenge domain name registration. The Center contacted the Complainantís representative with a Procedural Order dated August 12, 2002, asking that it provide the Center with an explanation regarding the relationship between the two entities by August 20, 2002. No explanation has been provided to the Center to date. The Complaint asserts that Kwik Fit Holdings is the Complainantís wholly owned subsidiary.
3.10 Accordingly the Panel is not satisfied that the Complaint satisfies the formal requirements of STOP.
3.11 All other procedural requirements appear to have been satisfied.
4. Factual Background
4.1 Activities of the Complainant
The Complainant does not assert any information about itself in the Complaint.
4.2 The Complainantís Trademarks
The following information is asserted as fact in the Complaint and remains uncontested: The Complainant states that its wholly owned subsidiary, Kwik Fit Holdings has rights in Community Trademark Application No. 000631119, which was registered on April 4, 2001, by Speedy Europe S.A. and subsequently assigned to Kwik Fit Holdings. Annex 2 shows that the Speedy mark was registered by Speedy Europe S.A. on April 11, 2001, for vehicles and vehicle parts, maintenance and repair etc.
4.3 The Complainantís Use of Trademarks
The following information is asserted as fact in the Complaint and remains uncontested: "Complainant uses the Speedy mark in connection with automobile parts, services, maintenance and repair".
4.4 Activities of the Respondent
The Respondent asserts in the Response that:
- The Respondent has been the owner and operator of a chain of outlets under the name "Speedy" since 1976, which specialises in automobile parts, services, maintenance and repair.
- The Respondent is the owner/operator of a chain of businesses, operating all over the northern part of Germany.
4.5 The Respondentís Trademarks
The Respondent asserts that:
"The Respondent is the owner or beneficiary of an unregistered trade or service mark that is identical to the domain name (for proof see Annex No. 1-4) and has substantial goodwill in connection therewith."
4.6 German court proceedings involving the Complainant and the Respondent
The Respondent states that the dispute between the Complainant and the Respondent has been going on for decades and that there are four court decisions on the topic in Germany. Three of these decisions, translated to English, are attached as Annexures No. 1-3. The Respondent states that all of these cases were decided in favour of the Respondent, as a result of which, Speedy Inc., Delaware confirmed deletion of part of their trademark No. 961604.
5. The Complainantís Contentions in the Complaint
5.1 The Complainant asserts that the domain name is identical to numerous registered trade and service marks held by the Complainant for the Speedy mark.
5.2 The Complainant asserts that the "Respondent should be considered as having no rights or legitimate interests in respect of the domain name that is the subject of the Complaint inasmuch as Respondent is using the Speedy mark in direct competition with Complainantís pre-existing and well established rights. By registering the domain name, Respondent, whose business is local in nature, can only be considered as attempting to capitalize on the goodwill developed by Complainant in the Speedy mark, which has international recognition."
5.3 The Complainant asserts that the Respondent has registered the Disputed Domain, or is using it in bad faith because it has been registered primarily for the purpose of disrupting the Complainantís business and is attempting to divert Internet users to its site for commercial gain by creating a likelihood of confusion.
6. The Respondentís Contentions in Response
The Respondent states that it does not deny the Disputed Domain is identical to the Complainantís trademark.
The Respondent asserts that:
- "The Respondent has legitimate rights to use the domain name because the Respondent has been known by a description incorporating the word "Speedy" since at least 1976 and has traded continuously since that time under such name."
- The domain name was not registered or acquired:
(a) for the purpose of selling it to the Complainant. The Respondent has never tried to sell it to the Complainant.
(b) to stop the Complainant using it or to attract users to the website by creating a likelihood of confusion with the Complainant.
- "Before the Respondent received any notice of the dispute, there is evidence of the Respondentís use of, or demonstratable preparations to use, the domain name in connection with a bona fide offering of goods or services. See "http://www.corporateonline.de/Pagesspeedy.html".
[The Panel was not able to access this website].
7. Discussion and Panel Findings
This section is structured by reference to the elements required by paragraph 4(a) of STOP. In order to be successful, the Complainant has the burden of proving, on the balance of probabilities, that all three elements are present.
Domain name identical to a trademark or service mark in which the Complainant has rights
The Disputed Domain is <speedy.biz>. The Respondent does not deny that the Disputed Domain is identical to the Complainantís trademark.
The Panel finds the Disputed Domain is identical to a trademark or service mark in which the Complainant has rights and accordingly the Complainant has proven paragraph 4(a)(i) of the Policy.
No rights or legitimate interests in respect of the domain name
The Complainant does not actually assert that the Respondent has no legitimate rights in the trademark. Rather, the Complainant asserts that the Respondentís trademark is in competition with its own and that the Respondentís business is local.
The Respondent asserts, and it remains uncontested, that it has been using the Speedy trademark for many years. The Respondent has furnished the Panel with numerous pamphlets and other materials demonstrating the use of the Speedy trademark. The Respondent asserts these brochures span many decades and the Panel has no reason to doubt this.
The Panel is quite satisfied that the Respondent has a right and legitimate interest in the domain name and accordingly finds that the Complainant has not proven paragraph 4(a)(ii) of STOP.
Domain name was registered or is being used in bad faith
Given the Panelís finding that the Respondent has a right or legitimate interest in the domain name it is unnecessary for the Panel to consider whether the domain name was registered or is being used in bad faith. However, the Panel will briefly address this below.
There is no evidence put before the Panel to substantiate any allegation that the Disputed Domain was applied for, registered or used in bad faith and accordingly the Complainant has not proven paragraph 4(a)(iii) of STOP.
As detailed in paragraph 3.9, the Complainant failed to comply with the procedural requirements of STOP and then failed to comply with the Procedural Order issued by the Center. Hence the Complainant has failed to rebut the prima facie fact that the Complainant is a different entity from the IP Claimant. Only the latter is entitled to file a STOP Complaint. The Panel views this as an additional and alternative ground on which the Complaint should be dismissed.
The Complainant having failed to prove the requirements of paragraph 4(a)(ii) and (iii) of STOP, having failed to comply with the procedural requirements of STOP, and having failed to obey the Procedural Order of the Center, the Panel dismisses the Complaint.
Philip N. Argy
Dated: August 30, 2002