WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Ricardo Plc v. QXL Ricardo Plc

Case No. DBIZ2002-00240

 

1. The Parties

The Complainant is Ricardo Plc, Bridge Works, Shoreham-by-Sea, West Sussex, BN43 5FG, United Kingdom.

The Respondent is QXL Ricardo Plc, Landmark House, Hammersmith Bridge Road, London W6 9EJ, United Kingdom.

 

2. The Domain Name and Registrar

The Domain Name at issue is <ricardo.biz>.

The Registrar is Virtual Internet (UK) Limited.

 

3. Procedural History

The Complaint was received by WIPO Arbitration and Mediation Center ("the Center") by email on May 17, 2002, and in hardcopy form on May 22, 2002. The Center has verified that the Complaint satisfies the formal requirements of the Start-up Trademark Opposition Policy ("STOP") and the Rules relating thereto and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.

The Complaint was properly notified in accordance with the STOP.

On May 28, 2002, the Center notified the Respondent of the Complaint in the usual manner and informed the Respondent inter alia that the last day for sending its Response to the Complainant and to the Center was June 17, 2002.

On June 17, 2002, the Response was received by the Center by email and in hardcopy form on June 19, 2002.

The Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

No further submissions were received by the Center or the Panel.

 

4. Factual Background

The complainant, Ricardo Plc, is a company incorporated in England. It has a global turnover of £150 million. It provides internal combustion engine advisory services. It manufactures gearboxes, prototypes of whole engines and transmissions. It also designs, develops and tests internal combustion engines.

The Complainant uses the name RICARDO as both a service mark and a trademark and is the proprietor of several community and UK trademark registrations for RICARDO (word) in several classes for a variety of goods and services relating mainly to engines.

The Respondent, QXL Ricardo Plc is also a company incorporated in England. It was formed in September 1997 and was listed as a public limited company on the London Stock Exchange and NASDAQ under the name QXL.com Plc in September 1999. In November 2000 the Respondent changed its name to QXL Ricardo Plc following the acquisition of a shareholding in Ricardo.de AG, a German company.

Since December 2000 the Respondent has also been listed on the Frankfurt Stock Exchange. Directly and through a wholly owned subsidiary, the Respondent currently holds over 90% of the share capital of Ricardo.de AG. In addition, the Respondent has a number of other subsidiaries including Ricardo.ch AG (a Swiss company) and Ricardo.nl BV (a Dutch company), both of which are wholly owned by the Respondent.

Directly and through its subsidiaries the Respondent operates on-line auction services targeted at Denmark, Finland, France, Germany, the Netherlands, Norway, Italy, Spain, Poland, Sweden, Switzerland and the UK. The subject matter of the auctions includes holidays, computers, antiques, electrical appliances and memorabilia. The services are provided from a variety of websites including www.qxl.com. In Germany, the Netherlands and Switzerland the auction services are provided under the Ricardo brand.

The Respondent claims and the Panel has no reason to doubt that the German service has been trading under the Ricardo brand since July 1998, the Dutch service since approximately July 2000 and the Swiss service since approximately April 2000. These services are available at www.ricardo.de, www.ricardo.nl and www.ricardo.ch respectively.

The Respondent claims that the turnover of the Respondentís group for the year ended March 31, 2001, was approximately £5.4 million.

 

5. Partiesí Contentions

A. Complainant

The Complainant contends that the Domain Name is identical to its RICARDO trademark.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant has not licensed the Respondent to use the Domain Name or the RICARDO trademark. And the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name because the Respondentís business has no connection with the Ricardo name alone. The Complainant states that the Respondentís name is QXL Ricardo Plc and that in the UK, Denmark, Spain, Finland, France, Italy, Norway and Sweden the Respondent trades under the name QXL with its main website being at www.qxl.com. The Complainant concedes that the Respondent uses the word Ricardo but states that this is used as a secondary name either under or in conjunction with the Respondentís main trading name of QXL. The Complainant asserts that the Respondent does not trade under the RICARDO name alone, nor does it offer goods or services under that name alone, nor is it commonly known under that name alone.

The Complainant claims that the Domain Name was registered in bad faith by the Respondent because it is used solely to attract for commercial gain internet users to the Respondentís website by creating a likelihood of confusion with the Complainantís registered trademark as to the source, sponsorship, affiliation or endorsement of the Respondentís website. The Complainant asserts that consumers associate the Ricardo name alone with the Complainant and QXL Ricardo with the Respondent. The Complainant says that the proper course for the Respondent to have taken was to register the domain name <qxlricardo.biz> or <ricardoqxl.biz>. The Complainant states that in registering the Domain Name the Respondent was acting in bad faith.

B. Respondent

The Respondent concedes that the Domain Name is identical to the Complainantís registered trademarks, but in so doing points out that the Complainantís registrations/application "relate principally to engineering, the design and development of engines and transmissions and associated services."

The Respondent sets out how it acquired the Ricardo name and the nature of the business, which its group conducts under and by reference to the Ricardo name. In paragraph 6.10 of the Response it states "on the basis of the registrations and applications referred to above, together with the businesses in Germany, the Netherlands and Switzerland which trade under the Ricardo brand, the Respondent asserts that it has legitimate rights and interests in the Domain Name."

As to the allegation that it registered the Domain Name in bad faith or is using the Domain Name in bad faith, the Respondent has this to say:-

"6.11 The Respondent denies that the name was registered in bad faith, either to attract Internet users to its websites by creating a likelihood of confusion with the Complainantís trademarks or to prevent the Complainant from reflecting their trademark in the domain name. On the contrary, the Respondent registered the domain name in order to protect the interests in the Ricardo trading name of its group of companies, and for future exploitation of the Ricardo brand. The Respondent refers further to its registration of trademarks consisting of, or containing, the word Ricardo as set out above.

6.12 In particular, the Respondent denies that consumers associate the Ricardo name solely with the Complainant. In support of this, the Respondent relies on the considerable goodwill and reputation established by the online auction services operated by its companies in Germany, the Netherlands and Switzerland under the Ricardo name and at the domain names listed in paragraph 6.5 above.

6.13 Further, the Respondent denies that the registration or use of the domain name does or would create a likelihood of confusion as to the source of any services provided by its group companies through the domain name. The services provided by the Parties are so disparate in nature and their branding so different that a consumer would have no reasonable cause to believe that the Respondentís online auction services are associated with, or provided by, the Complainantís engineering and transmission business.

6.14 The Respondent submits that, accordingly, the Complainant has failed to satisfy Clause 4(a)(iii) of the STOP."

 

6. Discussion and Findings

General

According to paragraph 4(a) of the STOP, the Complainant must prove that

(i) The Domain Name is identical to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and

(iii) The Domain Name has been registered or is being used in bad faith.

Identical

There is no dispute between the parties that the Domain Name is identical to a trademark in which the Complainant has rights.

Respondentís Rights or Legitimate Interests

The Panel has inspected the various websites of the Respondent and manifestly in Holland, Switzerland and Germany, the Respondent and/or its subsidiaries in those countries trade under the name Ricardo.

While the trademark registrations for the word RICARDO alone appear to be in the name of the Respondentís wholly owned subsidiaries, the group appears to have a very substantial interest in that name and domain names featuring it. The Respondent as the parent company of the group manifestly has a significant, legitimate interest in the RICARDO trademark and the Domain Name.

Bad Faith

The STOP was designed to deal with cybersquatters. The factual background, which is set out in paragraph 4 above, makes it abundantly clear that the Respondentís decision to select the Domain Name had absolutely nothing to do with the Complainant at all. The Respondent appears to have been motivated solely by the group business conducted under the Ricardo name.

 

7. Decision

The Complaint is dismissed.

 


 

Tony Willoughby
Sole Panelist

Dated: July 12, 2002