WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jo-El A/S v. Australian Cement Holdings Pty Ltd.
Case No. DBIZ2002-00237
1. The Parties
Complainant is Jo-El A/S, a Danish company with offices located at Oerbaekvej 280, Odense, Denmark, represented by Ms. M. Thestrup of Sandel Loje & Wallberg, Fredriksgade 7, DK-1265, Denmark.
Respondent is Australian Cement Holdings Pty Ltd, with offices at Cement Works Rd., Railton, Tasmania, Australia. Respondent is not represented by legal counsel in these proceedings. The contact for the Respondent is Mr. Paul Lockwood at the same address.
2. Domain Name and Registrar
The domain name at issue is <goliath.biz> (the Domain Name), registered on March 27, 2002, with Dotster.com, 11807 NE 99th St., Suite 1100,Vancouver, WA. 98682, United States of America.
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received Complainant’s complaint on May 17, 2002, (electronic version) and June 12, 2002 (hard copy). The Center verified that the complaint satisfied the formal requirements of the Start-up Trademark Opposition Policy for .BIZ (the "STOP"), the Rules for Start-up Trademark Opposition Policy (the STOP Rules), and the Supplemental Rules for Start-up Trademark Opposition Policy for .BIZ (the "WIPO Supplemental STOP Rules"). The formal date of the commencement of this administrative proceeding is June 12, 2002.
Having verified that the complaint satisfied the formal requirements of the STOP and the Rules, the Center transmitted on June 12, 2002, to Respondent, Notification of Complaint and Commencement of the Administrative Proceeding, via post/courier and e-mail, in accordance with the contact details provided by the Registrar’s Whois and the complaint.
The Center advised that the response was due by July 2, 2002.
On June 17, 2002, Respondent notified the Center that :
"After some consideration we have decided that we do not wish to pursue this matter any further.
We have a product, Goliath Cement, that is well-known in Australia but clearly the other party …has an equally legitimate claim to the domain name…"
The Complainant subsequently tried to work out an arrangement with the Respondent. By letter received by the Center on July 2, 2002, Complainant asked that the proceedings be suspended.
The Center issued a Notice of Suspension of Administrative Proceeding on July 2, 2002. The suspension was effective until August 1, 2002.
By letter dated July 31, 2002, the Complainant asked that the proceedings be recommenced.
On July 31, 2002, the Center reinstated the proceedings and stated that the due date for the Respondent's response was August 2, 2002.
On August 5, 2002, Mr. Lockwood of the Respondent wrote that "I have contacted Neulevel.biz, the registrar, and requested information as to how I might relinquish the claim for ownership of "goliath.biz". In that email, Mr. Lockwood reiterated that "Australian Cement considers it has a strong case…" stating that the value of Goliath cement sold was in the order of US$ 150 million per year.
On August 8, 2002, the Center invited the undersigned to serve as a Panelist. Having received the required s Statement of Acceptance and Declaration of Impartiality and Independence on August 8, 2002, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which the undersigned was formally appointed as the Sole Panelist, on August 14, 2002. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the STOP Rules and WIPO Supplemental STOP Rules.
The Administrative Panel shall issue its Decision based on the complaint, the response, the evidence presented, the STOP, the STOP Rules and the WIPO Supplemental STOP Rules.
4. Factual Background
Complainant alleges as follows:
JO-El A/S is among the leading suppliers of electrical products, work equipment, alarms and lamps to professionals and private. Further information about the Complainant can be found at www.jo-el.dk.
Jo-El A/S has several different products on the market - one line of products is sold under the international brand name and registered trademark GOLIATH (ANNEX C). The line of products sold under the name GOLIATH is primarily professional working light equipment. GOLIATH has been registered as a trademark in Denmark (Annex D), Australia, Austria, Benelux, Finland, France (Annex E), Germany, Italy, New Zealand, Norway, Portugal, Sweden, Switzerland and United Kingdom (for documentation please see Annex E – Company listing by registered owner). The Danish registration formed basis for the IP Claim. Please note that the Trademark proprietor for the name GOLIATH registered in Denmark is listed as JO Vaerktoej which is the former name of JO-EL A/S. For documentation hereof enclosed please find a transcript from the Danish Company register "Erhvervs- og Selskabsstyrelsen"(Annex F). The Complainants Danish trademark registration for GOLIATH covers apparatus for lightning, especi!
ally work lamps, fastening devices and stands for work lamps - all included in class 11."
The contested domain name is identical to the above mentioned Trademark registrations owned by the Complainant. The Complainant has made a preliminary search, which indicates the Respondent does not have any rights or legitimate interest in the contested domain name (Annex G). It should also be noted the Respondent did not file an IP Claim, which is an indication that they do not have any rights to the name GOLIATH. The Respondent has chosen to register the domain name in spite of Complainants IP Claim and the Respondent has been notified by Neulevel of this claim according to the regular Rules for the registration of. Biz domain names. The registration has never the less taken place and with full knowledge of complainants rights which, given the Respondent has no legitimate interest as stated above, in itself is a clear proof of bad faith. Based on the above facts and arguments the prerequistites of STOP, Paragraphs 4 (a), (b), (c) and STOP Rules, Paragraph 3) must be fulfilled in this case."
Respondent did not file a response within the time period set by the Center.
However, as noted above, Respondent did send emails on June 17 and August 5, 2002, in which it recognizes the Complainant's trademark rights but points out that it uses the name "Goliath" for cement and has apparently done so for a number of years. Therefore, the Respondent has maintained that it has the right to use the name "Goliath".
Respondent has not specifically requested that the Panelist reject the Complainant's request, but it has not agreed to transfer it. Instead, it has simply contacted the registrar to review the formalities.
5. Discussion and Findings
Paragraph 15(a) of the STOP Rules states that: "A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the STOP requires that Complainant must prove each of the following:
(1) that the Domain Name registered by Respondent is identical to the trademark or service mark in which the Complainant has right; and,
(2) that Respondent has no rights or legitimate interests in respect of the Domain Name; and,
(3) that the Domain Name has been registered or is being used in bad faith.
The Domain Name is <goliath.biz>.
"Goliath" is a registered trademark of Complainant.
In view of the above, the Administrative Panel finds that the Domain Name is identical to the trademark of Complainant, which is moreover not contested by Respondent.
b. Rights or Legitimate Interests
Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks or to apply for any domain name incorporating any of those marks, nor has he ever been known by this name.
However, Respondent has used the name "Goliath" in connection with the sale of cement. This is borne out not only by the Respondent's emails but by the Panelist's review on the internet. Using a "google" search, the Panelist found numerous references in third party sites to the Respondent's Goliath cement. These references appear to predate this dispute. These third party confirm that the Respondent used the name "Goliath cement" prior to commencement of these proceedings in connection with the sale of cement.
Therefore, the Panelist is satisfied that the Respondent falls within Section 4 (c) II. of the STOP showing the Respondent's legitimate interest in the domain name (use of "the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services").
On at least two occasions, the Respondent has indicated that it does not wish to continue to use the domain name. However, on each occasion, it has pointed out that it does have a claim to use the name. For the reasons set out above the Panelist agrees.
The Panelist does not find it appropriate to interpret such emails as evidence of an abandonment by the Respondent of such rights as they are clearly premised on the Respondent's position that it does have a legitimate claim to the domain name.
Therefore, the Panelist finds that the Complainant has failed to prove that the Respondent has no right or legitimate interest in the domain name as required under the STOP.
c. Registration or Use in Bad Faith
Given the Panelist's finding under part b, there is no need to consider the allegation of bad faith.
In light of the foregoing, the Administrative Panel decides that the Domain Name <goliath.biz> registered by Respondent is identical to the trademark of Complainant, but that the Complainant has not proven that the Respondent has no right or legitimate interest in respect of the Domain Name.
Accordingly, pursuant to STOP Paragraph 4(i) and STOP Rules Paragraph 15(e), the Administrative Panel denies Complainant's request for transfer.
Thomas H. Webster
Dated: August 26, 2002