WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AB Electrolux v. International Newcastle
Case No. DBIZ2002-00260
1. The Parties
The Complainant is AB Electrolux, a Swedish Corporation having its principal place of business in Stockholm. The Complainantís authorized agent is Jenny Björnemo, of Cogent IPC, AB, of Stockholm, Sweden.
The Respondent is International Newcastle, of Miami, Florida, United States of America.
2. The Domain Name and Registrar
The domain name is <partner.biz> ("the domain name"). The domain name is registered with Iholdings.com, Inc. D/B/A Dotregistrar.com, of Miami, Florida, United States of America ("the Registrar").
3. Procedural History
The Complaint was submitted by the Complainant to the WIPO Arbitration and Mediation Center (the "Center") on May 27, 2002 (email), and May 29, 2002 (hard copy).
The Complaint was made pursuant to the Start Up Trademark Opposition Policy for .BIZ adopted by Neulevel Inc. and approved by ICANN on May 11, 2001 (the "STOP"), the Rules for Start-Up Trademark Opposition Policy (the "STOP RULES"), and the WIPO Supplemental Rules for Start-Up Trademark Opposition Policy for .biz (the "Supplemental STOP Rules").
The STOP is incorporated into the Respondentís registration agreement with the Registrar, and the Respondent is therefore obliged to submit to and participate in a mandatory administrative proceeding in the event of a Complaint being filed concerning the domain name.
On June 13, 2002, the Center emailed to the Respondent a Notification of Complaint and Commencement of Administrative Proceeding, together with a copy of the Complaint (minus attachments). Copies of the Notice and the Complaint (with attachments) were also sent by Federal Express courier to the Respondent at the address notified in the WHOIS database, on June 13, 2002. Copies of the Notification of Complaint and Commencement of Administrative Proceedings, and the Complaint itself (minus attachments), were also transmitted to ICANN and the Registrar.
The Notification of Complaint and Commencement of Administrative Proceeding, advised the Respondent that the last day for sending a response to the Complaint, would be July 3, 2002.
No response having been received, on July 5, 2002, the Center issued a Notification of Respondent Default.
The Center then invited Warwick Alexander Smith, of Auckland, New Zealand, to serve as Panelist in the case. Warwick Alexander Smith having duly completed a form of acceptance and a Declaration of Impartiality and Independence, the Center on July 19, 2002, appointed him as the Administrative Panel in this administrative proceeding. The Panel considers that he has been properly appointed under the STOP Rules and the Supplemental STOP Rules.
The Center then forwarded to the Panel, by courier, the record in the case.
The Panel agrees with the assessment of the Center that the Complaint meets the formal requirements of the STOP, the STOP Rules, and the Supplemental STOP Rules.
The language of the administrative proceeding is English, being the language of the Registration Agreement. The Complainant has paid the necessary fees to the Center.
No other legal proceedings relating to the domain name have been notified to the Panel.
The Complaint shows that the Complainant was provided by the Registry Operator with a ticket number. In response to a request from the Panel, the Center has confirmed that there are no other IP Claimants in the queue. The Complainant therefore has priority to commence this administrative proceeding.
4. Factual Background
Where there is no response to a Complaint, STOP Rule 5(e) requires that (in the absence of exceptional circumstances) the Panel shall decide the dispute based upon the Complaint. The summary of the main facts which follows is taken from the Complainantís Complaint, and these matters are to be regarded for the purposes of the decision in the proceeding, as sufficiently proved.
The Electrolux Group is the Worldís largest producer of powered appliances for kitchen, cleaning, and outdoor use. More than 55,000,000 Electrolux Group products are sold each year, to a value of approximately US$14 billion, in more than 150 countries. The Complainant is the parent company in the Group, and it is the 100% owner of the subsidiary Husqvarna AB.
PARTNER is a trademark used by corporations within the Electrolux Group for outdoor products for consumers and industries. For consumers, the mark is used in association with chainsaws, lawn-mowers, garden tractors, blowers, hedge shears, trimmers and the like.
In industry, the mark is used for cutting machines and hydraulic aggregates, fittings for those products, and for cutting wheels. The industrial products are sold in approximately 60 countries, and the Electrolux Group has a world market share in excess of 30%. The PARTNER products were originally marketed by another Swedish company, but that company was purchased by a corporation within the Electrolux Group in 1979. Since that time, PARTNER saws and cutting equipment have been marketed through the "Partner Industrial Products" Division of the Electrolux Group.
"Partner" industrial products have often been mentioned in articles in industrial publications, and at exhibitions, and it is clear that the trademark PARTNER is widely known in association with the products mentioned, all over the world.
The Complainant has produced a list of registered trademarks and pending applications for the mark PARTNER, in the international Classes 7, 8, 9, 12, 35, 37, and 42, in numerous countries. The registrations include United States registered trademark number 1416421 registered on November 11, 1986.
The Complainant has also produced a copy of a trademark certificate (which appears to be dated at some time in the early 1990s), showing that the mark PARTNER was registered in Great Britain and Northern Ireland (under the Trademarks Act 1938 (UK)), in Class 7, in respect of "power-operated tools for use in forestry, agriculture and horticulture, power chainsaws, lawn-mowing machines, and parts and fittings included in Class 7 for all of the aforesaid goods". The registered proprietor of the United Kingdom mark is shown in the 1990s certificate as Electrolux Motor Aktiebolag, which is now part of Husqvarna AB. In filing its IP claim with the Registry Operator, the Complainant relied on this United Kingdom registration of the PARTNER trademark.
For reasons apparently related to the internal structure of the Electrolux Group, the PARTNER trademarks are now owned by the Complainantís wholly-owned subsidiary Husqvarna AB. The mark itself is said to be "maintained and controlled" by the Complainant, which controls and administers all trademarks within the Group.
The Complainant says that it also has many domain name registrations incorporating its PARTNER trademark. However, it was not able to obtain registration of the name <partner.com>, and it does not suggest in its Complaint that the owner of <partner.com> is not entitled to ownership of that domain name.
The Respondent is a United States-based entity. Its "administrative contact" shown in the relevant WHOIS database, is "Domain Sales". The WHOIS database provides the address "FORSALE@Domaincollection.com" for the Respondent, and the Respondentís email address is "Sales@domaincollection.com".
There is a web site at "http://www.domaincollection.com", through which "domain name solutions" are offered. The page from the web site which the Complainant has produced, advertises "thousands of premium domains available, including .US, .BIZ, and .INFO names!". The page also states that the operators of the web site have been "Domain Agents" since 1998.
On May 21, 2002, the Complainantís representative received an email from "Sales@domaincollection.com" thanking Ms Björnemo for her enquiry and quoting an asking price of US$ 5,900 for the domain name. The Complainant has not produced a copy of the enquiry.
The WHOIS registration details of the Respondent, including in particular the Respondentís address and the administrative contact for the domain name, suggest that the Respondent is in the business of trading in domain names. The quoted sale price just referred to makes it fairly clear that that is so.
5. The Partiesí Contentions
1. The Complainant contents that it has rights in the trademark PARTNER, and that the domain name is identical to that mark. The Complainant says that its "rights" in respect of the trademark, arise from the fact that Electrolux Motor AB (the owner of the United Kingdom and United States of America registered PARTNER marks), and Husqvarna AB, are wholly-owned subsidiaries of the Complainant, and that it is the Complainant which maintains and controls the use of the trademarks within the Group.
2. The Complainant contends that the Respondent has no rights or legitimate interests in the domain name -
(i) The Complainantís research has not revealed any trademark rights in the name "Partner" owned by the Respondent;
(ii) The Respondent has never been commonly known by the name "Partner" or any variation thereof;
(iii) The Respondent has never used the name "Partner".
(iv) The Complainant has not licensed or authorized the use of the PARTNER trademark by the Respondent, and the Respondent has no business or other connection or affiliation with the Complainant.
(v) The Complainant has not been able to acquire rights to the domain name <partner.com>, and it therefore has a genuine and particular interest in acquiring the domain name. In contrast, the Respondent has no such legitimate interest.
3. The Respondent has registered the domain name, or is using it, in bad faith:
(i) In accordance with the normal procedures adopted by the Registry Operator under the IP Claims Service, Neulevel advised the Respondent of the existence of the Complainantís IP claim, including the identity of the Complainant and the basis of its claimed intellectual property right. Notwithstanding the clear warning that an administrative proceeding might follow, the Respondent elected to proceed with registration of the domain name with full knowledge of the Complainantís rights.
(ii) While the Complainant has been unable to establish whether the Respondent has any future plans for a web site at the domain name, there is no evidence of any use or intended use by the Respondent which might give the Respondent legitimate rights in the domain name.
(iii) The Respondent is connected to the domain name selling company Domaincollection.com. The Respondent only registered the domain name in order to sell it. The offer to sell for the price of US$5,900 made by Domaincollection.com shows that the operators of that web site are effectively in control of the domain name, and are either the same person or persons as the Respondent, or the agent of the Respondent.
(iv) The offer to sell for US$5,900 also shows that the Respondent never had any intention of keeping and using the domain name: The Respondentís primary purpose in registering the domain name was to sell it to the owner of the PARTNER trademark, for valuable consideration in excess of the out-of-pocket costs directly related to the domain name. The Complainant submits that that must constitute bad faith.
(v) The Respondent has stated a false telephone number, and left out a street address, from the WHOIS database details provided to the Registrar at the time of registration. The Complainant submits that the false telephone number, and the absence of any proper street address, are evidence that the Respondent wished to prevent anyone from contacting the Respondent regarding the domain name. The Complainant contends that that is also evidence of bad faith.
The Respondent has not filed any submissions.
6. Discussion and Findings
The Panel is satisfied that the Complaint has been properly notified to the Respondent in accordance with Rule 2(a) of the STOP Rules.
General Procedures Under the STOP and the STOP Rules
Under the STOP, a Complaint can only be filed by an "IP Claimant" who has filed an IP Claim for a particular alphanumeric string. If that string has been registered as a .BIZ domain name, Neulevel, the Registry operator of the .BIZ gTLD, notifies the IP Claimant and invites it to initiate a STOP proceeding within 20 days. If there are multiple claimants, Neulevel determines priority orders on a randomized basis (STOP Paragraph 4(l)(i)). Only the priority claimant is invited to initiate a STOP complaint, which is allocated a "ticket number" which allows dispute resolution providers to verify whether a STOP Complaint is filed by the priority claimant. The service provider (in this case the Center) is required to advise the Panelist if a given domain name in dispute is subject to more than one claim. In the present case, there is no other IP claim.
When application is made to register a particular alphanumeric string as a domain name in the .biz gtld, the Registry Operator notifies the applicant if an IP claim has been lodged which matches that alphanumeric string. The applicant for registration is given particulars of the IP claim, including the IP Claimantís identity and contact details, and the nature of the right, which the Claimant has asserted. The applicant is then asked to elect whether to cancel the application for registration, or to proceed with it in the knowledge that an administrative proceeding (such as the present one) may follow. If the applicant fails to make an election, his or her application is taken no further.
What the Complainant must Establish under the STOP
Under the STOP, the Complainant must show:
(a) That the domain name is identical to a trademark or service mark in which the Complainant has rights (Paragraph 4(a)(i)).
(b) That the Respondent has no rights or legitimate interests in respect of the domain name (Paragraph 4(a)(ii).
(c) That the domain name has been registered or is being used in bad faith (Paragraph 4(a)(iii)).
A Respondent may demonstrate a right or legitimate interest in a domain name. Examples of circumstances available to a Respondent to demonstrate a "right or legitimate interest" are provided in Paragraph 4(c) of the STOP, as follows:
(i) [The Respondent is] the owner or beneficiary of a trade or service mark that is identical to the domain name; or
(ii) Before any notice to [the Respondent] of the dispute, [the Respondentís] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(iii) [The Respondent] (as an individual, business, or other organization) has been commonly known by the domain name, even if [the Respondent has] acquired no trademark or service mark rights.
It is to be noted that this is not an exhaustive description of the circumstances which might constitute rights or legitimate interests in a domain name.
Paragraph 4(b) of the STOP sets out the following examples of bad faith registration or use:
(i) Circumstances indicating that [the respondent has] 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 [the Respondentís] documented out-of-pocket costs directly related to the domain name; or
(ii) [The respondent has] registered the domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name; or
(iii) [The respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondentís] web site or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of [the respondentís] web site or location or of a product or service on [the respondentís] web site or location.
Because the STOP and the STOP Rules come into play shortly after registration of a domain name, the "bad faith" issue is normally judged as at the time of registration. Because of the "lock" placed on the use of the domain name under the STOP, there is no scope under the STOP for drawing inferences from a Respondentís failure to develop a web site linked to the domain name.
The Panel now addresses the three matters the Complainant must establish under Paragraph 4(a) of the STOP.
Paragraph 4(a)(i) of the STOP Ė Domain Name Identical to a Trademark or Service Mark in which Complainant has rights
There is no doubt that the domain name is identical to the trade or service mark PARTNER. However, the registered proprietor of the PARTNER mark is not the Complainant, but its wholly-owned subsidiary Husqvarna AB. How then, can the Complainant say that it has rights in the domain name? (It is not apparent to the Panel why the subsidiary Husqvarna AB was not named as the Complainant.)
The Complainantís answer is that the trademark is "maintained and controlled" by the Complainant, and that its subsidiary Husqvarna AB is "fully owned and managed" by the Complainant.
While in the event it is not necessary to decide this issue (because of the view the Panel takes on the allegation of bad faith registration or use under Paragraph 4(a)(iii) of the STOP), the Panel has considerable doubt whether the Complainantís control of its subsidiary is sufficient to give it "rights" within the meaning of Paragraph 4(a)(i) of the STOP.
To have a "right" in a trade or service mark, this Panel considers that a party should be the owner of that mark, or it should have been licensed or authorized to use the mark by the owner of the mark. In this case, the Panel has been given very little evidence on which to determine the exact nature of any "rights" the Complainant may possess. The Complainant has produced two documents, which appear to set out details of the registrations of the corporations AB Electrolux and Husqvarna AB, but they are in the Swedish language and the Complainant has not provided any translations. Leaving aside that difficulty, the document relating to Husqvarna AB does not appear to contain any reference to AB Electrolux, and the names of the individuals mentioned in the two documents appear to be different. The Panel is left only with the Complainantís assertions that it "maintains and controls" the PARTNER mark, and that the owner of the mark (Husqvarna AB) is "fully owned and managed" by the Complainant.
Without more evidence, the Panelís tentative view is that mere ownership of the shares in a corporation which owns a trademark, is not sufficient to give the shareholder "rights" in that trademark within the meaning of Paragraph 4(a)(i) of the STOP. However, it is not necessary to decide the point, as the Complaint fails on other grounds.
Paragraph 4(a)(ii) of the STOP Ė No rights or legitimate interests in respect of the domain name
The Panel finds this part of the Complaint proved. The Complainant has not conferred any rights or interests on the Respondent, and there is no suggestion that any of the circumstances listed in paragraph 4(c) of the STOP might be applicable: the Respondentís interest in the domain name appears to have been only to sell it. While that is not of itself an unlawful or improper intention, it is not in the Panelís view sufficient to constitute a "right or legitimate interest" for the purposes of Paragraph 4(a)(ii) of the STOP.
In the absence of any evidence from the Respondent, the Panel therefore finds that the Respondent does not have any rights or legitimate interests in respect of the domain name.
Paragraph 4(a)(iii) of the STOP Ė Domain name registered or being used in bad faith
The Complainant relies primarily on paragraph 4(b)(i) of the STOP, contending that the circumstances indicate that the Respondent registered the domain name primarily for the purpose of selling it to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondentís documented out-of-pocket costs directly related to the domain name. The Complainant particularly relies on the nature of the Respondentís business (trading in domain names), and the email exchange in which the operators of the web site at domaincollection.com offered to sell the domain to the Complainantís representative, for US$5,900.
The Complainant does not rely specifically on any of subparagraphs (ii), (iii), or (iv) of paragraph 4(b) of the STOP, but does point to an incorrect telephone number and incomplete address details in the WHOIS records for the domain name, as evidencing bad faith registration on the part of the Respondent.
The Panel is not satisfied on this latter point. Neither the Complainant nor the Center has apparently had any difficulty contacting the Respondent at the email address for the domain name in the WHOIS database, and the Complainantís representative clearly managed to contact the party in control of the web site at "www.domaincollection.com". There is no suggestion that the address was insufficient for the Federal Express courier to reach the Respondent. In these circumstances, the Panel does not see any basis for the Complainantís submission that "it is clear that the Respondent wishes to prevent anyone to contact him regarding this domain name". The Center and the Complainant have both been able to contact the Respondent without difficulty.
The Complainant faces further difficulties in that the word "Partner" is a common, generic word in the English language. The Complainantís trademark registration in the United States is only in international Class 7, and that is also so in the United Kingdom. At the time the Respondent made application to register the domain name, the Respondent might reasonably have considered that there would be numerous opportunities for the domain name to be used in categories where there would be no prospect of confusion with the businesses operated by the Electrolux Group of Companies. Indeed, some party other than the Complainantís Group has apparently obtained registration of <partner.com>.
The Respondent appears to be a dealer in domain names, but being a dealer is not, in itself, sufficient to render every acquisition of a domain name by that dealer with a view to sale, an act of bad faith. (See for example WIPO Case No. DBIZ2002-00091 - Barilla Allmentare SpA v. DNS Research Inc., where the learned Panelist noted : "Trading in generic domain names is not of itself unlawful").
While the Respondent certainly appears to have offered to sell the domain name to the Complainantís representative, the Complainant has elected not to produce the email which was presumably sent to the web site at "www.domaincollection.com" in order to obtain the Respondentís selling price. There is no evidence that the Respondent knew that it was dealing with the Complainant (or for that matter, a competitor of the Complainant).
At the end of the day, the Panel is of the view that the word "Partner" is so common and generic in the English language, that it cannot safely be concluded that the Respondent acted in bad faith in proceeding with its application to register the domain name.
For all the foregoing reasons, the Panel declines to order the transfer of the domain name to the Complainant.
Warwick Alexander Smith
Dated: August 2, 2002