WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Utensilerie Associate S.p.A. v. C & M
Case No. D2003-0159
1. The Parties
The Complainant is Utensilerie Associate S.p.A., of Monvalle, Varese, Italy and represented by Cyrille Mazeline of Cabinet Lavoix, 75441 Paris cedex 09 France ("Complainant").
The Respondent is C & M of Antwerp, Belgium, and represented by Dimitri Dupont of Belgium ("Respondent").
2. The Domain Name and Registrar
The disputed domain name <usagshop.com> is registered with Network Solutions, Inc. ("Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the the "Center") on February 27, 2003. On March 3, 2003, the Center sent an Acknowledgement of Receipt to the Complainant.
On March 3, 2003, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue.
On March 4, 2003, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.
On March 5, 2003, the Center sent a Complaint Deficiency Notification to the Complainant. The Complainant responded on March 5, 2003, by sending the Center an Amendment to the Complaint.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the the "Supplemental Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center on March 6, 2003, formally notified the Respondent of the Complaint, and the proceedings commenced on March 6, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was March 26, 2003. The Response was filed with the Center on March 26, 2003.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on April 8, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On April 8, 2003, the Center received from Complainant supplemental information. The Panel has decided that this supplemental filing of information is not in compliance with the Rules and has, therefore, not taken this supplemental information into account.
4. Factual Background
On the basis of the documents submitted by the parties, the following facts can be established as agreed between parties or insufficiently disputed.
Complainant is the owner of the trademark USAG, which has been registered worldwide, among others in the Benelux, Germany, France and Italy (International Registration number R401791, registered on October 10, 1973, and renewed in October 1993; and International Registration number 705010, registered July 21, 1998).
Respondent is (among others) a reseller of Usag products in Belgium.
On January 12, 2000, Respondent registered the domain name <usagshop.com>.
On February 21, 2000, Respondent contacted Complainant to request Complainant's approval for the use of the USAG logo and photographs/pictures showing Complainant's tools on the webshop Respondent was at that time creating. Respondent did not request Complainant for authorization to use the denomination "usag" for "usagshop" as a domain name, nor to register the domain name <usagshop.com>.
On February 25, 2000, via its Belgium importer granted Respondent approval for the use of the USAG logo in relation to its tools, such approval being subject to a final approval after visualization of the proof of the website before "going online".
After visualizing Respondent's website, Complainant informed Respondent on September 14, 2000, that it regarded the content of the webpages as problematic on certain points.
On October 2, 2000, after Complainant became aware that Respondent had registered and was using the domain name <usagshop.com> for its website, Complainant informed Respondent that it had passed the matter on to its legal department.
On February 9, 2001, Complainant requested Respondent to delete the name "usag" from the address of its website (the domain name). Respondent did not comply with this request.
On July 27, 2001, Complainant sent a Cease and Desist Letter to Respondent requesting Respondent to transfer the domain name <usagshop.com> to Complainant. Respondent did not reply to this summons.
On February 27, 2003, Complainant filed a Complaint against Respondent with the Center.
5. Applicable Rules
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
"(i) the domain name at issue is identical or confusingly similar to a trademark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith."
Paragraph 4(b) of the Policy sets out, by way of example, four circumstances, each of which, if proven, shall be evidence of the registration and use of the domain name in bad faith for the purpose of paragraph 4(a)(iii) above.
Paragraph 4(c) of the Policy sets out, by way of example, three circumstances, each of which, if proven by Respondent, shall demonstrate Respondent’s rights or legitimate interests to the domain name for the purpose of paragraph 4(a)(ii) above.
6. Parties’ Contentions
Complainant is the owner of several trademarks comprising the denomination "usag". Complainant is a leading Italian professional hand tool manufacturer who has been in business since the first half of the 20th century. Complainant is known by the name "Usag", which name also constitutes its main trademark. Complainant has registered the domain names <usag-tools.com> and <usag.it>.
The grounds for the Complaint are:
(1) the disputed domain name <usagshop.com> is confusingly similar to the trademark USAG for which Complainant owns several registrations in various countries, among which Belgium (Benelux) where Respondent is located. The term "usag" has no particular meaning and is accordingly distinctive. In the domain name <usagshop.com>, the "usag" element is dominant by means of it making up the first part of the word. It is unlikely that the addition of the word "shop" will lessen the confusing similarity with Complainant's trademark USAG. Moreover, the suffix "shop" is descriptive when applied to a website for a virtual store. The inclusion of a gTLD such as ".com" is irrelevant when determining the similarity between trademarks and domain names. Complainant furthermore points out that the addition of words such as "shop" or "store" to a recognized trademark has been determined as creating a confusing similarity between a domain name and a trademark. See e.g. DaimlerChrysler A.G. v. Donald Drummonds, WIPO Case No. D2001-0160 (June 18, 2001) and Gorstew Limited & Unique Vacations v. Shop A-Z.com, FA 94941.
(2) Complainant states that Respondent has no rights or legitimate interests in respect of the domain name <usagshop.com> as provided in paragraph 4(a)(ii) and paragraph 4(c) of the Policy.
Respondent has no trademark rights to USAG or "usagshop" and was not known under the name "usag" or "usagshop" prior to the registration of the domain name. Respondent was only known under its company name C & M. Respondent was aware of Complainant's trademark USAG prior to the registration of the domain name at issue and the creation of its webshop. At no time did Complainant consent to the use of its mark USAG in the domain name at issue. Respondent never requested Complainant's consent to use the trademark USAG in the domain name. Respondent only requested Complainant's consent for the use of the USAG logo to present Complainant's tools on its webshop and for the placing of promotional material showing Complainant's tools on its webshop. Complainant's permission for the use of its USAG trademark was limited solely to the presentation of Complainant's tools on Respondent's webshop. Furthermore, this approval was not unconditional.
Respondent's website does not contain a (clear) disclaimer stating that it is displaying a trademark belonging to Complainant, and that Respondent is neither affiliated to nor linked with Complainant. Furthermore, Respondent is not exclusively selling Complainant's tools, supplies and equipment, but also tools bearing trademarks belonging to Complainant's competitors. Respondent is making unfair commercial use of the domain name, intentionally misleading consumers for commercial gain. Consumers that are diverted to Respondent's website (may) assume that they are on Complainant's website or that Respondent's website is sponsored by or linked to Complainant.
(3) Complainant states that the domain name <usagshop.com> was registered in bad faith as provided in paragraph 4(a)(iii) and paragraph 4(b) of the Policy.
It is clear from the correspondence between parties that Respondent's website was established as a commercial site, and Respondent cannot deny that it is currently being operated for commercial gain. Respondent's website does not mention that the displayed USAG trademarks belong to Complainant or that Respondent is in no way affiliated with, sponsored by or linked to Complainant.
Respondent is not engaged in the exclusive sale of Complainant's goods, but also in the sale of products belonging to Complainant's competitors.
Respondent has registered and uses the domain name at issue, reproducing Complainant's trademark with the intention of attracting Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship and affiliation of the website or of the products available on the site, since it was aware of Complainant's trademark prior to the registration and use of the domain name at issue. Furthermore, Respondent knew that Complainant's mark was well-known in the tools and implements branch and therefore that consumers would be attracted by a domain name containing the trademark USAG.
If Respondent was not intentionally attempting to misleadingly divert consumers to its website, it would have agreed to transfer the domain name at issue to Complainant and continued operating its site under another domain name, for example its domain name <c-m.be>, site which is re-routed to Respondent's site under the domain name <usagshop.com>.
Respondent states that it has been reselling Usag products for more than six years without any formal complaint from Complainant. Respondent has explicitly asked for authorization to use the USAG logo. Respondent presented Complainant with a draft of the website of <usagshop.com>. In this draft the term "uasgshop" was mentioned 15 times. In its first reaction to this draft, Complainant requested changes in the website, but did not mention anything about the domain name. The first time Complainant referred to the use of the domain name <usagshop.com> (stating that they had passed the matter on to their legal department) was on October 2, 2000.
Respondent's current website contains disclaimers that its shop is not affiliated with Complainant, that the trademarks and logos are registered by Complainant and explicitly states that the website is owned and created by Respondent.
Respondent states that the disputed domain name is not confusingly similar to Complainant's trademark. Respondent wishes to emphasize that its domain name merely identifies the subject matter of the site, namely the selling of Usag products and that the presence of the disclaimer ensures there is no likelihood of confusion. Furthermore, Respondent stresses that the domain name <usag.com> does not belong to Complainant, but to the American company US Aqua Guard.
Respondent emphasizes that he has rights and legitimate interests in respect to the domain name at issue, since it established its website shortly after the registration of the domain name on January 12, 2000, and that is has, from the start, been used to sell Complainant's products. Respondent also makes reference to the fact that Complainant was informed about the website, its content, layout etc., and only after a year raised formal objections to the use of the website. Respondent stresses that it was, prior to the registration of the domain name, a reseller of genuine products of Complainant, obtained through the official Belgium distributor in a bona fide manner.
Respondent states that the domain name <usagshop.com> was not registered nor is used in bad faith. The fact that Respondent was aware of Complainant's well-known mark prior to the registration of the domain name at issue is not in itself determinative. Respondent's website is an online shop selling Complainant's products as well as other products not manufactured by Complainant, and as such there is no risk of confusion.
Respondent operated the website for more than a year before receiving notice from Complainant that it disputed the use of the domain name. Respondent is not attracting users to the site by creating a likelihood of confusion, nor are such users likely to believe they are dealing with Complainant or that Complainant sponsors the site. It is unlikely that any user looking for Complainant would enter the domain name <usagshop.com>. More importantly, there is a disclaimer on Respondent's website.
7. Discussion and Findings
A. Trademark rights
Complainant has provided sufficient evidence of its right to the trademark USAG.
B. Identical or confusingly similar
The domain name <usagshop.com> is clearly confusingly similar to Complainant's trademark USAG.
The domain name incorporates the well-known trademark USAG with the generic word "shop" and the suffix ".com" (which indicates that the domain name is registered in the .com gTLD). It is clear that in this combination Complainant's trademark stands out. The ability of the word "shop" to distinguish the domain name at issue from Complainant's trademark is limited. Therefore, the public may think that the domain name is somehow connected to the (owner of the) USAG trademark. (See e.g. Nikon, Inc. and Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774 (February 26, 2001) concerning the domain names <nikondealer.com>, <nikondealers.com> and <niconcamera.com>; SAP v. Andrew Sparrow, WIPO Case No. D2001-0733 (July 24, 2001) concerning the domain names <sap-ag.com>, <sap-world.com> and <sap-partners.com>; Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing & Logistics Corp., WIPO Case No. D2000-0464 (July 27, 2000) concerning the domain name <toshibastore.com>; DaimlerChrysler A.G. v. Donald Drummonds, WIPO Case No. D2001-0160 (June 18, 2001) concerning the domain name <mercedesshop.com>; and Nokia Corporation v. Wavesmultimedia (Bila Kalemba), WIPO Case No. D2002-0130 (June 24, 2002) concerning the domain name <nokiaflasher.com>.)
C. Rights or legitimate interests
Under paragraph 4(c) of the Policy, Respondent may demonstrate that it has a right or legitimate interest to a domain name for the purpose of paragraph 4(a)(ii), inter alia, by providing evidence of any of the following circumstances:
"(i) before any notice to you of the dispute, your 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
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
The domain name <usagshop.com> has been used by Respondent for a website through which both Usag products and products from Complainant's competitors can be ordered. Respondent has been acting as reseller of Usag products since 1997. The right to resell products does not create a right to use a mark more extensively than required to advertise and sell the products. As was held by the panels in, inter alia, Motorola, Inc. v. NewGate Internet, Inc., WIPO Case No. D2000-0079 (April 20, 2000); The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113 (April 13, 2000); Mikimoto (America) Co. v. Asanti Fine Jewellers Ltd., Case No. AF-0126 (eResolution Apr. 8, 2000); R.T. Quaife Engineering, Ltd. and Autotech Sport Tuning Corporation d/b/a Quaife America v. Bill Luton, WIPO Case No. D2000-1201 (November 14, 2000); Nokia Corporation v. Nokia Ringtones & Logos Hotline, WIPO Case No. D2001-1101 (October 18, 2001); Volvo Trademark Holding AB v. Peter Lambe, WIPO Case No. D2001-1292 (January 20, 2002); Nokia Corporation v. Wavesmultimedia (Bila Kalemba), WIPO Case No. D2002-0130 (June 24, 2002), a licensee or a dealer, agent or distributor of products of the trademark owner or of compatible products does not per se have a right to a domain name which includes that trademark. As decided by the panel in Motorola, Inc. v. NewGate Internet, Inc., WIPO Case No. D2000-0079 (April 20, 2000): "the use of a mark as a domain name clearly goes further than what is required merely to resell products."
Respondent would only have a right to the domain name <usagshop.com> if Complainant had specifically granted that right. Although Respondent received permission from Complainant to use the USAG logo and promotional materials for Usag products on its website, it did not inform Complainant of, let along ask permission for the registration and use of the domain name <usagshop.com>. Clearly, Complainant's permission to use the trademark USAG on the website does not include permission for registration and use of the domain name <usagshop.com>.
In light of the foregoing, the Panel finds that the Respondent has no rights or legitimate interests in the domain name.
In these circumstances, the Panel also finds that although Complainant could have contested Respondent's registration and use of the domain name <usagshop.com> sooner, this does not generate a right or legitimate interest in the domain name for Respondent. By registering the domain name at issue and starting an online shop under this domain name without asking Complainant's permission for the use of the USAG trademark in this domain name, Respondent has apparently taken the risk that Complainant will not agree to such use. Furthermore, Complainant, from February 2001 onwards, has consistently requested Respondent to transfer the domain name at issue and has not in any way created the impression that it consented to the registration and use of the domain name by Respondent.
D. Registration and use in bad faith
Complainant is relying on paragraph 4(b)(iv) of the Policy, which provides that sufficient evidence of bad faith may consist of:
"(iv) By using the domain name, you have intentionally intended to attract for commercial gain, Internet users to your website or other on-line locations, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."
The Panel finds that Complainant has provided sufficient evidence in this regard. It is clear that Respondent was aware of and knew the trademark USAG when registering the domain name <usagshop.com>. Respondent has deliberately included Complainant's trademark in the domain name <usagshop.com> in order to attract business. Furthermore, Respondent, by its use of the domain name at issue, has created the (incorrect) impression of endorsement by or affiliation with Complainant. The contents of the website, offering Usag products, together with the domain name may create the (incorrect) impression that Respondent is either the exclusive distributor or a subsidiary of Complainant, or at the very least that Complainant has approved its use of the domain name. Respondent has put forward that its current website contains a disclaimer the shop is not affiliated with Complainant, that the trademarks and logos are registered by Complainant and explicitly states that the shop is owned and created by Respondent. Leaving aside whether such a disclaimer, in the circumstances of the case, would be sufficient to conclude that Respondent did not register and use the domain name in bad faith, such a disclaimer should first of all be clear and easy to find for those visiting a website. This does not appear to be the case. A printout of Respondent's website dated February 2003 as provided by Complainant, does not show this disclaimer. As the Panel has verified, even today the homepage of Respondent's website under <usagshop.com> does not display a disclaimer. Only after clicking on the "usag tools" icon does a page appear where a disclaimer is presented, but only at the bottom of the page. This clearly is insufficient to remove the impression of affiliation with or endorsement by Complainant for the majority of the visitors to Respondent's website.
Therefore, it is apparent that Respondent has intentionally used the goodwill of Complainant's trademark to create traffic to its website operating under the domain name <usagshop.com>. (See also e.g. Chanel, Inc. v. Estco Technology Group, WIPO Case No. D2000-0413 (September 18, 2000).)
A further element which confirms Respondent's bad faith is the fact that Respondent, in its prolonged correspondence with Complainant in 2000 on the admissibility of the use of Complainant's trademark on the website, never mentioned that it would start an on-line shop under the domain name <usagshop.com>, nor that it had already registered the domain name for that purpose on January 12, 2000.
The Panel therefore concludes that there is sufficient evidence that Respondent's registration and use of the domain name <usagshop.com> is in bad faith.
On the basis of the foregoing, the Panel decides that Complainant has provided the required evidence to request the transfer of the domain name from Respondent to Complainant. Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel orders that the registration of the domain name <usagshop.com> be transferred to Complainant.
Wolter Wefers Bettink
Dated: April 22, 2003