WIPO Arbitration and Mediation Center
De Dietrich Process Systems v. Kemtron Ireland Ltd.
Case No. D2003-0484
1. The Parties
The Complainant is De Dietrich Process Systems, of Zinswiller, France, represented by Cabinet Nuss of France.
The Respondent is Kemtron Ireland Ltd., of Cork, Ireland.
2. The Domain Name and Registrar
The Domain Name at issue is <de-dietrich-process-systems.com> hereinafter referred to also as the "Domain Name". The registrar is Domainpeople, Inc.
3. Procedural History
The WIPO Arbitration and Mediation Centre (the "Centre") received a complaint (hereinafter the "Complaint") on June 23, 2003, (by email) and on June 24, 2003, (hardcopy and exhibits). The Complaint satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). Complainant made the required payment to the Centre.
On June 24, 2003, the Centre transmitted via email to Domainpeople, Inc., a request for registrar verification in connection with this case. On June 26, 2003, Domainpeople, Inc. 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.
Having verified that the Complaint satisfied all the formal requirements of the Policy and the Rules, the Centre transmitted on June 26, 2003, to the Respondent at the address indicated in the Whois, the Notification of Complaint and Commencement of the Administrative Proceeding by post and by fax and email, indicating July 16, 2003, as the deadline to file the response.
The Respondent filed the response on July 16, 2003, which was duly acknowledged by the Centre on July 17, 2003.
On July 18, 2003, in view of the Complainantís designation of a single member panel, the Center invited Mr. Luca Barbero to serve as a panelist and transmitted to him the Request for Statement of Acceptance and Declaration of Impartiality and Independence.
Having received Mr. Luca Barberoís Statement of Acceptance and Declaration of Impartiality and Independence on July 21, 2003, the Center transmitted on July 22, 2003, to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Luca Barbero was formally appointed as the Sole Panelist.
The Sole Panelist finds that the Administrative Panel (hereinafter referred to also as the "Panel") was properly constituted and appointed in accordance with the Rules and Supplemental Rules.
On July 25, 2003, the Center received a supplemental filing from the Complainant and on the same day the Center requested if the Panel was willing to review it.
The Panel, following the views expressed by other Panels in a number of prior cases - decided both in favour of the Complainant and the Respondent - admitting unsolicited supplemental filings (see inter alia World Wrestling Federation Entertainment Inc (WWFE) .v. M. de Rooij, WIPO Case No. D2000-0290, National Australia Bank Limited v Quality Systems Consulting Ė QSC Pty Ltd, WIPO Case No. D2000-0765, Benzer v. FutureSoft Consulting Inc. and Sunil Bhatia, WIPO Case No. D2000-1648, Avon Products Inc. v. Jongsoo Lee, WIPO Case No. D2001-0272, Minnesota Mining and Manufacturing Company v. Mark Overbey, WIPO Case No. D2001-0727, Cosmos European Travels AG v. Eurotech Data Systems Hellos, Ltd., WIPO Case No. D2001-0941, Momo s.r.l. v. Andreoni, Inc, WIPO Case No. D2001-0961, The British Council v. Mr. Li Yen Chun, WIPO Case No. D2001-0997, Chantelle v. Marvin Anhalt, WIPO Case No. D2001-1181, Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447, Trans Continental Records, Inc. v. Compana LLC, WIPO Case No. D2002-0105, The Leading Hotels of the World Ltd. v. Online Travel Group, WIPO Case No: D2002-0241, HER MAJESTY THE QUEEN, in right of her Government in New Zealand, as Trustee for the Citizens, Organizations and State of New Zealand, acting by and through the Honourable Jim Sutton, the Associate Minister of Foreign Affairs and Trade v. Virtual Countries, Inc, WIPO Case No. D2002-0754, SES Astra S.A. v. Design Technology Ltd. (t/a Transcom ISP), WIPO Case No. D2002-1078) and in light of the fact that some of the particulars of the case were not entirely clear to the Panel, a Procedural Order was issued on the same July 25, 2003 deciding to review the Complainantís supplemental filing "in view of the duty of the Panel to ensure that the Parties are given a fair opportunity to present its case". The Panel also "decided that an additional 10 days period from the notification of such supplemental filing shall be allowed to the Respondent to file supplementary statements or documents with reference to the supplemental filing".
Somewhat to the Panelís surprise, the Respondent expressed "concern and disappointment" in relation to the admittance of the Complainantís supplemental filing by the Panel, protested "to this most unusual development" indicating to the Panel the grounds of the supposed breaches of the Policy in a detailed analysis of Rules 10, 12, 14, 17 and requested the Panel to provide "a written, acceptable rationale for the introduction and admittance of the Complainants Supplemental filing".
Since the Complainantís supplemental filing did not bring any substantial new element to the case nor addressed all the points still unclear to the Panel and the Respondent wished "the proceedings to continue on the premise that the Panel can return justifiable reasons for the introduction and admittance of the Complainants Supplementary File in relation to the breaches of Policy as outlined herein" though without providing any statement or further document, on August 11, 2003, the Panel issued the following second Procedural Order.
"Following the procedural order communicated to the Parties on July 28, 2003, admitting a supplemental filing of the Complainant and allowing an additional 10 days period to the Respondent to file supplementary statements and documents with reference to such Complainant's supplemental filing, the Panel:
a) whereas the admitted supplemental filing was duly submitted to the Panel;
b) whereas the 10 days period allowed to Respondent elapsed;
b) whereas the Complainant in such supplemental filing was mainly reaffirming information already provided to the Panel in the Complaint;
c) whereas the Respondent has requested to the Panel to provide a written acceptable rationale for the introduction and admittance of the Complainant's supplementary File;
d) whereas the Panel states that considered appropriate to allow the submission of the supplemental filing and to allow the 10 days additional period for the Respondent in order to acquire a clearer understanding of some of the facts of the present procedure, pursuant to Rule 10 (a);
e) whereas the Panel finds that was not provided by the Parties with sufficient documentary evidence as to the Respondent's rights to or legitimate interests (or lack of the same) in a Domain Name containing the trademark "DE DIETRICH" at the time of the registration of <de-dietrich-process-systems.com> (June 2, 2000) and about the fact that the domain name was or not registered on June 2, 2000, in bad faith;
herein requests, pursuant to Rule 12:
1. to both Parties to provide the Panel with relevant documents attesting the Respondent's rights to or legitimate interests (or lack of the same) in a Domain Name containing the trademark "DE DIETRICH" and about the fact that the domain name <de-dietrich-process-systems.com> was or not registered in bad faith at the time of the registration on June 2, 2000 (for instance documents attesting or excluding that the Respondent was a representative also of De Dietrich Process Systems in Ireland between May 10, 2000 and April 12, 2001).
2. To the Respondent to provide the Panel with its interpretation of the statement " ...We will not transfer the domain name <de-dietrich-process-systems.com> to De Dietrich Process Systems without any charge ..." contained in its letter of December 11, 2002.
3. To the Respondent to comment for the Panel the statement currently published at the home page of the web site corresponding to the Domain Name "While we are no longer the representative for QVF Glassware in Ireland, we still sell QVF Glassware and hold extensive stocks of QVF spares in Cork. If and when it arises that we do not have a particular QVF part. We are now in a position to Supply a COMPATIBLE ALTERNATIVE Glass of equivalent quality", especially explaining to the Panel the meaning of "compatible alternative".
4. To the Complainant to provide the Panel with further explanation of the statement "it is also important to stress the point that the Respondent has never distributed any goods under the name De Dietrich Process Systems trademarks".
The above documents and statements shall be submitted to the Panel within ten (10) day from the day of notification by the Centre of the present Procedural Order and no further statements and/or documents shall be admitted by the Panel in the present procedure after such a deadline. The Panel, in absence of exceptional circumstances, will forward its decision on the present procedure on or before fourteen (14) days thereafter."
Pursuant to the above order, the Complainant filed a reply on August 21, 2003, while the Respondent on August 13, 2003, again much to the Panelís surprise declared itself "completely outraged and appalled by the communication received from" the Panel and requested "a proper explanation for this unwarranted deviation from the rules i.e., the admission of the Complainants supplemental files" and indicated that "the Panels explanation by use of Rule 10(a) does not constitute a plausible rationale Ö" indicating that the Respondent would not have recognized "any decision or deadlines directed to him".
It is noted that the Panelís decision to request supplemental filing is in line with a number of other decisions, again decided both in favour of the Complainant and the Respondent in which the Panel deemed appropriate to request supplemental filing; see inter alia: Which? Limited v. James Halliday, WIPO Case No. D2000-0019, E. I. du Pont de Nemours and Company v. Avant Garde Composition, WIPO Case No. D2000-0130, Football Club des Girondins e Bordeaux v. Annie Arr, WIPO Case No. D2000-0149, Plaza Operating Partners, Ltd. v. Pop Data Technologies, Inc. and Joseph Pillus, WIPO Case No. D2000-0166, Recordati S.P.A. v. Domain Name Clearing Company, WIPO Case No. D2000-0194, SFX Entertainment, Inc. v. Medfield Builders, WIPO Case No. D2000-0547, (1) Sloan Capital Companies (2) Stuart M. Sloan v. Sloan E-mail Services, WIPO Case No. D2001-0138, Carpetright PLC v. Carpets Direct, WIPO Case No. D2001-0287, Pohang Iron and Steel Co., Ltd. v. Peijie Lu, WIPO Case No. D2001-0319, Société Anonyme Pierre Balmain v. Mr. Juan Carlos Zamora Guadalupe, WIPO Case No. D2001-1403 Bioland e.V v. Lee Yi, WIPO Case No. D2002-1147, Ed Servicio, S.A. v. LOGIC PROMO, WIPO Case No. D2003-0132.
Furthermore, it is noted, also on behalf of the Center, that the Respondent submitted its reply to the Procedural Order n.2 on the letter headed paper of WIPO Arbitration Mediation Center; this is obviously a practice that should not be adopted by any Party to a mandatory administrative proceeding.
The Respondent indicated in the cover email of the above referred reply to the second Procedural Order that he would have forwarded the matter to the company solicitor. To date, notwithstanding the additional extension of time granted by the Panel before taking a decision, the Respondent or the Company Solicitor did not address any of the questions raised by the Panel in the second Procedural Order nor the Panel and the Provider were notified of the initiation of any legal proceedings in respect of the Domain Name; Panel therefore proceeds with the present decision.
4. Factual Background
The Complaint is based on the International registration No 310 971, French registration No 1266210, Community Trademark registration No 001729573, British registration No 1187181, U.S. registration No 1451761 for the trademark "DE DIETRICH".
The Respondent registered the domain name <de-dietrich-process-systems.com> on June 2, 2000.
5. Partiesí Contentions
The Complainant informs the Panel that De Dietrich Company was founded as early as 1684, in the north-east of France and enjoys a strong presence in over twenty countries throughout the world. In September 2002, the DE DIETRICH Group achieved a consolidated turnover of Ä 500 millions with overseas sales representing approximately 60% of that figure. The core businesses of the De Dietrich Group are the heating equipment (known as DE DIETRICH THERMIQUE) and chemical equipment (known as DE DIETRICH PROCESS SYSTEMS).
The Complainant indicates that the Domain Name relates to this second core business at the head of which is the company DE DIETRICH PROCESS SYSTEMS (S.A.S.). This company is a worldwide manufacturer and supplier of process equipment, systems and services to the fine chemical and pharmaceutical industries. With the integration of the companies Rosenmund and QVF, the Chemical Equipment Division of the De Dietrich Group changed its name onto DE DIETRICH PROCESS SYSTEMS. With more than sixteen subsidiaries worldwide and a workforce of 1350 people, DE DIETRICH PROCESS SYSTEMS appears as a global supplier of equipment, systems and services for the fine chemical and pharmaceutical industries, built around a worldwide sales network. DE DIETRICH PROCESS SYSTEMS consolidated turnover amounted to Ä 218 millions, representing 40 % of the total turnover of the De Dietrich Group. It achieved 90% of its sales abroad.
The Complainant underlines that in the different fields of activities, all companies of the chemical Division are linked by the trademark, trade-name and company-name "DE DIETRICH". This name and mark are well-known to any person and organization who are familiar with these highly specialized and technological equipment and systems.
The Complainant informs the Panel that the Respondent is a manufacturer and distributor of gaskets and seals in all materials, suppliers of specialist material for the chemical, mechanical, dairy, electrical, acoustic, electronics and allied industries. It also supplies Process Glassware and Systems in Ireland and therefore was certainly aware of the existence of the Complainant.
On June 2002, DE DIETRICH PROCESS SYSTEMS discovered that the Respondent registered the domain name <de-dietrich-process-systems.com> and requested via an Intellectual Property agent to the Respondent to relinquish the Domain Name. This letter mentioned the rights of DE DIETRICH PROCESS SYSTEMS over the name and Trademark DE DIETRICH as well as the right of QVF PROCESS SYSTEMS LTD over the Trademark QVF indicating that KEMTRON was infringing those rights by registering and using the domain name <de-dietrich-process-systems.com> and the trademark QVF without any consent from the owner of those rights.
After a reminder sent to the Respondent on October 9, 2002, the Solicitors of the Respondent have written to the Complainantís Agents and explained that they were in charge of handling this case and that they will revert to them very soon. In the absence of any further reply, the Agents of DE DIETRICH PROCESS SYSTEMS sent another reminder on November 21, 2002, by registered mail.
On December 3, 2002, the Respondent's Solicitors stated "Thank you for your letter dated 21st November 2002. We have now had an opportunity to take our client's instructions. They confirm that they are no longer in a position to continue with their claim". An explanation to such a statement was then requested by the Complainant with a letter dated December 5, 2002.
On December 11, 2003, a letter drafted and signed directly by the Managing Director of the Respondent was received by the Complainant stating "We will not transfer the domain name "de-dietrich-process-systems.com" to DE DIETRICH PROCESS SYSTEMS without any charges as we have legally purchased this name which we were Irish distributors to protect this name as DE DIETRICH did not want it protected" and the Panel was provided with a copy of all the messages copied above.
The Complainant encloses to the Complaint the full data of registration of the trademark "DE DIETRICH" in over 40 countries informing the Panel that all the trademarks have been filed and registered in the name of DE DIETRICH & CIE and then assigned on December 20, 2001, to the company DE DIETRICH PROCESS SYSTEMS and providing the Panel also the copies of the certificates i.a. of the French registration No 1266210 of October 28, 1965, Community Trademark registration No 001729573 of June 28, 2000, British registration No 1187181 of December 15, 1982, U.S. registration No 1451761 of March 24, 1986.
The Complainant underlines that there exist many and important similarities between the Complainantís trademarks and the Domain Name as it fully reproduces the words "DE DIETRICH" which are distinctive with regard to the goods that are claimed in the various trademarks and are moreover internationally well-known. Furthermore, the words "process systems" are merely descriptive as they relate specifically to the business of the Complainant. Complainant further comments that the addition of generic term does not avoid confusing similarity for the purposes of paragraph 4 (a)(i) of the Policy.
According to the Complainant, the confusion is reinforced by the fact that the Domain Name is strictly identical to the Complainantís company name.
The Complainant indicates to the Panel that the Respondent has no rights or legitimate interests in respect of the domain name since, according to paragraph 4(c) of the Policy, there is not any evidence of the Respondent 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.
Furthermore the Respondent has never been commonly known by the Domain Name and he has not acquired trademark rights and therefore, according to the Complainant, the Respondent is not making a legitimate non-commercial or fair use of the Domain Name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.
While the Respondent claims that "they had legally purchased this name while we were Irish distributors" the Complainant, in the reply to the second Procedural Order, has provided the Panel with a clearer indication of the fact that the Respondent was only a representative of QVF, a company acquired by the Complainant on May 2000. The acquisition of QVF was first announced to the Respondent on January 19, 2000, and then officially notified with a letter dated May 10, 2000, which - the Panel notes was also annexed to the Response. The Complainant underlines that therefore, also at time of the registration of the Domain Name on June 2, 2003, the Respondent could not possibly ignore the existence of the company and the trademark "DE DIETRICH".
Furthermore, the Complainant states that on June 2000, the Respondent was the Irish distributor solely of QVF products and has never been the distributor of the DE DIETRICH PROCESS SYSTEMS products. Moreover the Respondent is also no longer the distributor of QVF since October 2001, pursuant to a termination letter enclosed to the Complaint.
The Complainant, in the reply to the second Procedural Order, also points out the fact that the acquisition of the QVF Group by the DE DIETRICH Group does not affect the activity of the QVF Group which remained and remains an entity with its own name and trademarks. The Complainant informs the Panel that has not authorized the Respondent in any manner to use any of its trademarks nor to register a domain name incorporating its trademarks "DE DIETRICH" and corresponding to its company name.
Therefore, the Respondent has registered a domain name similar to the Complainantís trademarks and identical to the Complainantís name with whom he has never had any direct relationships, especially as the rights to use the trademark "DE DIETRICH". The Respondent has consequently no legitimate interests at the time of registration of the Domain Name nor has presently any such interest.
With reference to the element of bad faith the Complainant points out that by the use of the Domain Name, the Respondent intentionally attempts to attract for commercial gain, Internet users to his web site or other on-line location, by creating a likelihood of confusion with the Complainantís mark, trade name and company name 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.
As evidence of such a statement the Complainant quotes a statement currently published on the web of the Respondent affirming "we are no longer the representative QVF Glassware in Ireland, we still sell QVF Glassware and hold extensive stocks of QVF spares in Cork. If when it arises that we do not have a particular QVF part. We are now in a position to supply a compatible glass of equivalent quality".
According to the Complainant the fact that the Respondent states that it is no longer the representative of QVF Glassware in Ireland is not sufficient for avoiding any likelihood of confusion with the trademark, trade name and company name DE DIETRICH. By registering and using the domain name <de-dietrich-process-systems.com>, the Respondent is deliberately making people believe that he belongs to the DE DIETRICH Group.
Furthermore, the Complainant points out that, since the Respondent has never marketed goods under the trademark DE DIETRICH and is obviously currently not using the Domain Name for promoting and selling DE DIETRICH goods. The Domain Name is currently redirecting Internet users on the Respondentís web site which is divided in three parts i) The presentation of Kemtron Process Glass, ii) Associated Companies iii) Kemtron Process Glass and Compatible Glass. According to the Complainant the title of the first part of the Kemtronís web site "Kemtron Process Glass", clearly shows the link to the Complainantís field of activity and to its name "DE DIETRICH PROCESS SYSTEMS".
The Complainant informs the Panel that on August 23, 2002, the presentation of the first page published on "www.de-dietrich-process-systems.com" did mention that information about the Respondent could be obtained on the following e-mail address: email@example.com. This reference has then been deleted pursuant to the Complainant request to withdraw all references to the trademarks "DE DIETRICH" from the web site.
In the reply to the second Procedural Order the Complainant indicates that - by mentioning in his site that he offers goods of equivalent quality to QVF goods - the Respondent intentionally tries to disrupt the business of QVF.
Making reference to Internet web site "www.qvf.com" for the indication of the entire range of goods sold by QVF, the Complainant emphasizes the fact that no DE DIETRICH trademark appears in such a site, and, according to the Complainant, this is a confirmation of the lack of interest and the bad faith of the Respondent, who is using a Domain Name containing the trademark of a well-known firm with whom he has never had any relations.
The Respondent in his Response asserts that it does have legitimate rights with regard to the Domain Name in question on the basis that he was representing QVF (Corning) since 1986, and by association to the De Dietrich Process Systems Group in Ireland since early 2000 until the termination of the representation in 2001.
The Respondent indicates that at the time of registration was preparing to use the domain name for the purpose of a bona fide offering of goods and services.
The Respondent informs the Panel that it was prudent in the preparation of the registration of the Domain Name since it verified the availability of the Domain Name by first conducting a trademark search for De Dietrich Process Systems the outcome of which indicated that the Community Trademark for De Dietrich Process Systems was filed on the June 28, 2000, and was registered on August 22, 2001, whereas the Respondent had registered the domain name on June 2, 2000. Therefore, according to the Respondent, the registration of the Domain Name did not infringe on any trademark rights, as the Complainant had none in place at the time of registration.
The Respondent argues that prior to the Complainantís acquisition of QVF and registration of the name De Dietrich process systems, it was an unknown entity in the field of process glassware.
The Respondent asserts that continues to be Irelandís leading customer of QVF glassware (GRAPH) and this status is primarily due to the respect and reputation secured by the Respondent in Ireland.
The Respondent states that "similarities between the trade name and domain name are undeniable, but once the address has been visited it would be unfair to suggest any level of ambiguity exists in terms of the relationship between the Respondent and the Complainant" as the Complainant has not indicated whether it has received correspondence from confused Internet users with respect to the domain name in question. The Respondent affirms that has not received any indication of confusion from the Irish customers and therefore asserts that confusion cannot and has not been proved by the Complainant.
With reference to the rights and legitimate interests, the Respondent asserts his position as De Dietrich Process Systems biggest Irish customer and his previous association with De Dietrich and QVF as exclusive representatives in Ireland which shows undeniable evidence of use, 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 and services.
The Respondent encloses to the Response a selection of invoices and purchase orders from 1986, until present day in order to emphasize the legitimacy of interest with regard to the domain name and products that the Respondent is currently purchasing for re-sale and has supplied as representatives.
The Respondent asserts that a critical aspect to this complaint is the period of acquisition and transition between January 2000 and October 2001. The Respondent makes reference to the same correspondence received in relation to the acquisition of QVF by De Dietrich and the subsequent integration as De Dietrich Process Systems, referred to by the Complainant. According to the Respondent all the correspondence clearly indicates the Respondent as representatives of the group in Ireland since it had responsibilities to the QVF group and, according to the Respondent "as a consequence, to De Dietrich Process Systems".
The Respondent states that "the legalities of whether Kemtron were in fact representatives of De Dietrich Process Systems in Ireland between January 2000 and October 2001, is obviously a matter that cannot be decided by the Arbitration Council, but what can be determined is that the Respondent acted in good faith and as representatives in the absence of clarity with regard to his position in Ireland".
The Respondent asserts that he is making a legitimate non-commercial and fair use of the domain name since the domain name was registered with an intent to inform customers of the change. Once the agreement had ended the Respondent informs the Panel that the web site corresponding to the Domain Name was used to inform customers of further change. Furthermore, the Respondent states that "the domain name site does not provide detailed product information, enquiry forms and prices, but directs visitors to sites relevant to their personal query".
According to the Respondent, the Respondent is not diverting consumers or tarnishing the trademark or service in a misleading fashion and indicated that "the supply of QVF process glassware is an integral part of Kemtronís sales as can be determined by annual turnover". Furthermore, the Respondent informs the Panel that "continues to promote and supply as customers" in light of the highest regard for the products of QVF and therefore it would be unprofessional if not petty of the Respondent to tarnish the trademark at issue.
The Respondent affirms that Complainantís interpretation the letter dated December 11, 2002 - stating that " ... will not transfer the domain name <de-dietrich-process-systems.com> to De Dietrich Process Systems without any charge ..." - "is clearly wrong". The Respondent indicates that the Domain Name should have been protected and as it was left unprotected, and the Respondent took the responsibility in the absence of the Complainantís interest.
The Respondent categorically denies that the Domain Name was registered in bad faith indicating that the Domain Name was registered for "several reasons" affirming that the suggestion that the Respondentís rationale was sinister or cynical can only be regarded as an insult to the integrity of the Respondent.
The Respondent informs the Panel that it is not a competitor of the Complainant and its activities, both as representative and customer "have only enhanced and contributed to the complainantsí status in Ireland". The Domain Name was registered in the belief that the Respondentís representation would continue and "this belief justified taking steps to protect the domain name and negate confusion during a difficult period".
The Respondent highlights that there are a number of other gTLDís that allow the Complainant to reflect its mark such as <de-dietrich-process-systems.net>, <de-dietrich-process-systems.org>, etc and, according to the Respondent these available gTLDís show that "there is no pattern to the Respondents activities" and also reinforces the "suggestion of complacency and unreasonable delay and disinterest in the disputed domain name". The Respondent also indicates that the domain name <de-dietrich.com> is owned by another supplier of De Dietrich equipment. In the same respect, the Respondent although not an official supplier, is very much integral to De Dietrich Process Systems sales in Ireland.
The Respondent informs the Panel that according to the Respondent the trademark "DE DIETRICH" is not internationally well known in the field of chemical equipment and the Complainant "has not proved recognition of De Dietrich Process Systems, especially in the field of process glassware and systems in which Kemtron has a superior reputation, with regard to advice and supply of process systems in Ireland".
According to the Respondent, the Complainant has completely disregarded the fact that the Respondent was the exclusive representative in Ireland for QVF for 15 years and at the time of registration of the Domain Name the Respondent had absolutely no indication that "he was not to carry out his responsibilities as representative, who as part of the remit, he believed was to protect and stimulate business for the group, and so registered the domain name currently in dispute".
The Respondent states that it is clearly indicated on the web page corresponding to the domain address that it does not represent QVF or De Dietrich since the Respondent is a customer of De Dietrich Process Systems in Ireland adding that "the suggestion that person(s) visiting the site and remain confused as to the relationship between the Respondent and the Complainant is highly improbable". The Respondent informs that Panel that has never wished to deliberately suggest a level of relationship other than that of customer, once the agreement had ended.
The Respondent asserts, enclosing copies of the invoices of purchase of goods that have successfully marketed, supplied, purchased and sold De Dietrich Systems products both as a representative and as a customer and therefore indicates that the Domain Name "was registered to protect for the purposes of promotion and sales of De Dietrichís proprietary products".
The Complainant suggests that the Respondent had prior knowledge of De Dietrich mark, name and company name but, according to the Respondent, the Complainantís use of the word "prior" is vague; the Respondent assumes that reference is made to the date of Domain Name registration, June 2, 2000. The Respondent reiterates that " became aware of the name De Dietrich Process Systems when initially informed of the acquisition of QVF by DDPS" again stating that prior to registering the Domain Name a trademark search was conducted and found that none was registered for De Dietrich Process Systems.
According to the Respondent, there is a complete absence of bad faith in this procedure because the Domain Name was not registered or used for the purpose of selling, renting or otherwise transferring the Domain Name to the Complainant, since has never contacted the Complainant to present a request. The Respondent reiterates that the Domain Name was registered in good faith to protect and inform his customer base in the belief that this act would ease the confusion created by the acquisition of QVF by DDPS and aid with the continuity of supply for proprietary products.
As a conclusion, the Respondent indicates that the Complainant has procrastinated for too long to assert "alleged rights to the domain name in dispute, underlining that similar gTLDís and ccTLDís exist unprotected". Furthermore, the Respondent asserts that the "Complainant has omitted important time frames and deliberately ignored the work Kemtron has done as a representative and a customer for the Complainant in order to reflect Kemtron as having a cynical agenda or motives for registering the domain name in question when the Kemtron had nothing if not the best intentions for the group at heart."
6. Discussion and Findings
According to paragraph 15(a) of the Rules: "A Panel shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and,
(iii) that the Domain Name has been registered and is being used in bad faith.
6.1. Domain name identical or confusingly similar
The Complainant has provided evidence of ownership of a number of trademark registration for trademark "DE DIETRICH" in many countries, including the International registration No 310 971 first filed on March 28, 1966, French registration No 1266210, Community Trademark registration No 001729573, British registration No 1187181, U.S. registration No 1451761.
With reference to the present issue, the panel also notes that the Respondent itself has declared in the Response that "similarities between the trade name and domain name are undeniable Ö".
In view of the above and of the fact that the wording "process system" is to be considered merely a descriptive portion of the sign, the Panel finds that the Complainant has proved that the Domain Name is confusingly similar to the trademark of the Complainant according to paragraph 4(a)(i) of the Policy.
6.2. Rights and legitimate interest
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the dispute domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a Domain Name by demonstrating in accordance with paragraph 4(c) of the Policy:
(a) It has made 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 prior to the dispute;
(b) It is commonly known by the domain name, even if it has not acquired any trademark rights; or
(c) It intends to make 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.
The statement of the Respondent that at the time of registration "was preparing to use the domain name for the purpose of a bona fide offering of goods and services" was not supported by any evidence. In absence of any supporting document, the fact that the Respondent had represented QVF (Corning) since 1986, the company which was acquired by the Complainant in January 2000, according to the Panel does not necessarily mean that "by association" the representation of the acquiring company had to be transferred to the Respondent.
In order to ascertain this very important issue besides the mere statements of the parties herein, the Panel - in the second Procedural Order - has explicitly requested to the Respondent to file documents supporting such a statement but to the date of the decision no evidence whatsoever was filed. The Panel finds that the correspondence enclosed to the Response has demonstrated that the Respondent was exclusive representatives in Ireland solely of QVF and by submitting the Complainantís invoices, the Respondent has only established that it was and is presently a customer of the Complainant, reselling some of its products.
In absence of any evidence to the contrary, the Respondent appears to be one of the many resellers of Complainantís products. Should the Panel consider a prior affiliation with a third company acquired by a complainant and/or a present reseller relationship sufficient to establish a legitimate interest would mean to allow any distributor, wholesaler or retailer to register and monopolize a third partyís trademark as a domain name, based on the mere fact that it sells those products as rightly stated i.e. in Ferrero S.p.A. v. Fistagi S.r.l., WIPO Case No. D2001-0262. The Panel concurs with the view of other Panels finding that the right to resell or market a product does not create the right to use a mark more extensively than required to advertise and sell the product at issue (R.T. Quaife Engineering, Ltd. v. Luton, WIPO Case No. D2000-1201; Motorola, Inc. v. NewGate Internet, Inc., WIPO Case No. D2000-0079). The extent to which a reseller of legitimate goods can use complainantís mark depends on the extent to which such use accurately reflects the user's connection with the mark owner (WWF Entertainment v. Ringside Collectibles, WIPO Case No. D2000-1306).
The Panel acknowledges that previous WIPO decisions differentiated domain names that are descriptive of goods (e.g. known marks of a supplier plus an indicia of the actual product sold), and domain names that constitute a potentially infringing use of the supplier's famous mark. A legitimate interest of Respondent was found to exist where Complainantís trademark was weak and descriptive of a business which was carried out by both parties (EAuto L.L.C. v. Triple S. Auto Parts, WIPO Case No. D2000-0047). In other words, the question is whether or not the domain name reflecting the Complainantís trademark is used by Respondent "for describing an element of its business and not for the nefarious purpose of causing confusion or diversion of business" (EAuto L.L.C. v. EAuto Parts, WIPO Case No. D2000-0096).
In the instant case, the Domain Name is confusingly similar to the Complainantís trademark and identical to one of the Complainantís company names and it is not descriptive of the generic type of goods sold by or the business of Respondent. Other than being authorized to sell Complainantís products and being a former distributor of a company which was acquired by the Complainant, the Respondent failed to demonstrate that its business, as a whole, is commonly known by the Domain Name at issue. Therefore, it is clear that Respondent is not commonly known by the Domain Name and cannot claim the defense of paragraph 4(c)(ii) of the Policy.
Furthermore, the Panel finds that is not to be considered a legitimate non-commercial and fair use of the Domain Name the alleged intention, which was not supported by the Respondent with any documentary evidence, to inform customers of the change of ownership of QVF. The registration of the Domain Name by Respondent suggests to third parties a much closer affiliation with Complainant than a mere former distributor of an acquired company and present reseller relationship.
Under these circumstances, the Panel finds that the Respondent failed to establish to have any rights or legitimate interest in the Domain Name.
6.3. Registration and Use in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holderís documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holderís web site or other online location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on the holderís website or location.
The Panel is not limited by the paragraph 4 (b) to determine whether the Domain Name was registered and used in bad faith and the Panel can infer the proof of bad faith also from additional circumstances provided that the two requirements, i.e. that the Domain Name was registered in bad faith and that said domain name is used in bad faith are proved.
As to the first requisite, the Respondent was certainly aware of the existence of the Complainantís trademark and the company name DE DIETRICH PROCESS SISTEMS at the time of registration of the Domain Name in June 2000, since, if not for the fact that the Complainant was established over 300 years ago and operates also in the same field of the Respondent, a first communication via fax was received on January 2000, revealing the acquisition by the Complainant of QVF that was subsequently officially announced in May 2000, with a further message, enclosed also by the same Respondent to the Response submitted to the Panel.
As to the use in bad faith, the Panel notes that the Domain Name is currently redirecting Internet users on the Respondent Ďs web site which is divided in three parts i) The presentation of Kemtron Process Glass, ii) Associated Companies iii) Kemtron Process Glass and Compatible Glass. Besides the use in the section "Associated Companies" of the Domain Name that contains the reference to the Complainantís trademark (which is at any rate a sort of self reference as the Domain Name is currently managed by the Respondent), in no other pages of the Internet site corresponding to the domain name
<de-dietrich-process-systems.com> any reference was traced to products of the Complainant.
Conversely, the web site is currently used by the Respondent to advertise solely the Respondentís range of products, the various activities and the names of all the companies for which the Respondent indicates to acts as a "Distributor/ Stockist"; no reference is made to the fact that the Respondent has never been associated directly with the Complainant and a justification or a disclaimer as to the use of such a Domain Name by the Respondent.
Therefore, in absence of any evidence to the contrary submitted by the Respondent, the Panel finds paragraph 4(a)(iv) of the Policy applicable in the instant case since the Respondent is intentionally attempting to attract, for commercial gain, Internet users to his web site, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the web site and the product or service on the Respondentís web site.
Furthermore the Respondent did not provide the Panel with any interpretation of the statement contained in his letter of December 11, 2002, "We will not transfer the domain name "de-dietrich-process-systems.com" to DE DIETRICH PROCESS SYSTEMS without any charges as we have legally purchased this name which we were Irish distributors to protect this name as DE DIETRICH did not want it protected". In absence of any convincing further explanation provided by the Respondent, the Panel has to rely upon the literal interpretation of such a statement which is suggesting that the Respondent has registered the Domain Name for the purpose of selling , or otherwise transferring the Domain Name to the Complainant for a consideration and the Panel therefore consider the above as an additional circumstance indicating bad faith.
The Panel also notes that the Respondent, on the web site corresponding to the domain name <de-dietrich-process-systems.com>, expressily states "While we are no longer the representative for QVF Glassware in Ireland, we still sell QVF Glassware and hold extensive stocks of QVF spares in Cork. If and when it arises that we do not have a particular QVF part. We are now in a position to Supply a COMPATIBLE ALTERNATIVE Glass of equivalent quality ÖFor any information please contact Ö" then providing the addresses and full reference of the Respondent.
Once more in absence of any comment of such a statement which was requested by the Panel to the Respondent, the Panel regards such a declaration as an additional circumstance supporting bad faith since the Respondent with this conduct is causing a detriment to the activities of a company which was acquired by the Complainant and is moreover publishing this information on a web site confusingly similar to the Complainantís trademarks and identical to the Complainantís company name.
In view of the above, the Panel finds that the Respondent has registered and used the Domain Name in bad faith, according to paragraph 4(a)(iii) of the Policy.
The Panel finds that the Domain Name registered by the Respondent is confusingly similar to the trademarks in which the Complainant has rights; and the Respondent has no rights or legitimate interests in respect of the Domain Name; and the Domain Name has been registered and is being used by the Respondent in bad faith.
Accordingly, the Panel decides that the domain name <de-dietrich-process-systems.com> be transferred to the Complainant.
Dated: September 24, 2003