WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

EVAC+CHAIR Corporation v. Handelsmaatscappij H. Van Leeuwen

Case No. D2003-0621

 

1. The Parties

The Complainant is EVAC+CHAIR Corporation, New York, New York of United States of America, represented by Fitzpatrick, Cella, Harper & Scinto, United States of America.

The Respondent is Handelsmaatscappij H. Van Leeuwen, Heerlen of Netherlands, represented by Thuis & Partners Advocaten, Netherlands.

 

2. The Domain Names and Registrars

The disputed domain name <evacchair.com> is registered with Tucows. The disputed domain name <evacchair.info> is registered with Gandi SARL.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 7, 2003. On August 8, 2003, the Center transmitted by email to Tucows and Gandi SARL a request for registrar verification in connection with the domain names at issue. On August 8, 2003, Tucows 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 August 12, 2003, Gandi SARL 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. 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 "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 13, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was September 2, 2003. The Response was filed with the Center on September 2, 2003.

The Center appointed David Perkins as the sole panelist in this matter on September 9, 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 September 11, 2003, the Complainant submitted a Reply to the Response. The Rules do not provide for additional submissions to the Complaint and the Response but the Rules provide the Panel with a discretion to request further statement or documents from either of the parties [Rules, Paragraph 12]. Where additional Submissions from one party are admitted by the Panel, it is normally appropriate to allow the other party an opportunity to respond on the basis that the parties should be treated with equality and that each party is given a fair opportunity to present its case [Rules paragraph 10(b)].

The Panel does not consider it necessary to admit the Complainantís further submission dated September 11, 2003, since on the Complaint and Response the Panel had already determined Ė prior to reading the Complainantís Reply Ė to find in the Complainantís favour. As the Panel did not admit the Complainantís supplemental filing, it was not necessary to admit the Respondentís reply to the supplemental filing, received by the Center on September 16. But, had it been necessary and appropriate, in the Panelís view, to admit the Reply, the Panel would have offered the Respondent the opportunity of responding to it and accepted the Respondentís proffered reply.

 

4. Factual Background

4.A. The Complainant

The Complainantís Business

4.A.1 The Complainant has been manufacturing and selling emergency wheelchairs under the EVAC+CHAIR trademark since about 1982. In 2002, sales of products bearing that trademark totalled more than US$7 million worldwide against over US$225,000 spent in advertising and promotion.

4.A.2 The Complainant has licensees for its EVAC + CHAIR product worldwide, one of which is EVAC+CHAIR International Limited [formerly, trading as Paraid Limited] of Birmingham, United Kingdom. In June 1997, Paraid Limited appointed the Respondent as exclusive distributor for the EVAC+CHAIR product for the territories of Benelux, Germany, Switzerland and Austria. The Exclusive Distribution Agreement was for an initial period expiring October 10, 2002, and thereafter until termination by either party.

4.A.3 By letter dated November 28, 2001, the Respondent gave notice to terminate that Agreement with effect from October 10, 2002.

The Complainantís Trademarks

4.A.4 The Complainant is proprietor of the following registered trademarks.

Number

Country

Mark

Classes

Date Registered

1,211,465

United States of America

EVAC+CHAIR

12,19 and 44

October 5, 1982

382,797

Australia

EVAC+CHAIR

12

January 16, 1986

509,776

Benelux

EVAC+CHAIR

12

December 23, 1991

280,945

Canada

EVAC+CHAIR

 

June 30, 1998

1,265,365

France

EVAC+CHAIR

12

March 15, 1984

1,067,695

Germany

EVAC+CHAIR

12

December 28, 1983

1,184,197

United Kingdom

EVAC+CHAIR

12

October 27, 1989

4,150,714

Japan

EVAC+CHAIR

12

May 29, 1998

144,567

New Zealand

EVAC+CHAIR

12

March 12, 1984

1955,661

Sweden

EVAC+CHAIR

12

April 12, 1985

The Complainantís Domain Name

4.A.5 The Complainant is the registrant of the <evac-chair.com> domain name, which was registered on November 9, 1997.

4.B The Respondent

The Respondent is a company trading in The Netherlands.

4.B.1 Eight days after the letter dated November 28, 2001, [paragraph 4.A.2 above], on December 6, 2001, the Respondent registered the two domain names in issue, <evacchair.com> and <evacchair.info>. Those two domain names resolve to the Respondentís website at "www.vanleuvencompanies.com." The Complaint states that the Respondent is also the beneficial registrant of the domain names <evac-chair.de>; <evacchair.de> [registered July 2003]; <evacchair.co.uk> [registered February 2002]; <evacchair.ch>; and <evanchair.at>.

 

5. The Parties Contentions

5.A. The Complainant

5.A.1 Following the letter of November 28, 2001, there was a period during which the parties negotiated with a view to establishing a new basis for continuing to do business. Those negotiations, however, where not successful and terminated in March 2003.

5.A.2 During that period, the Respondentís case is that it continued to operate Ė by agreement between the parties Ė as distributor for the EVAC+CHAIR product in its designated territories but on a non-exclusive basis.

5.A.3 The Complainant says that "very recently" Ė by which the Panel assumes shortly before August 2003, when the Complaint was filed Ė the Respondent began selling lookalike emergency wheelchairs using the two domain names in issue targeting precisely the same customers as those to whom the Respondent formerly sold the EVAC+CHAIR. The Complainant alleges that the Respondentís emergency wheelchair infringes the Complainantís right in two U.S. logo trademarks and that the Respondentís website Ė "www.vanleuvencompanies.com" - uses the EVAC+CHAIR mark in its source code/metatags in an effort to divert Internet traffic away from the Complainantís site. A cease and desist letter was sent by the Complainantís solicitors dated July 1, 2003.

5.A.4 On the facts, the Complainantís case is that, demonstrably, the three requirements of paragraph 4 of the Policy have been met and that, accordingly, the two domain names in issue should be transferred. In the light of what follows, it is not necessary to summarise in this Decision the Complainantís detailed submissions in this respect as would be normal practice.

5.B. The Respondent

5.B.1 On August 14, 2003, [within two days from receipt of the Complainant], the Respondentís Dutch lawyers wrote to the Center explaining that they had replied by fax dated July 31, 2003, to the Complainantís solicitorsí cease and desist letter dated July 1 [paragraph 5.A.2 above] explaining that

• the exclusive distributorship ended on the contract date of October 10, 2002, [paragraph 4.A.2 above];

• thereafter, with the agreement of both parties, the Respondent had continued to distribute the Complainantís EVAC-CHAIR product until negotiations finally terminated in March 2003; and

• that immediately thereafter the Respondent took appropriate steps to cease use of the EVAC+CHAIR names and/or mark. For example, in April 2003, the Respondent instructed its Internet Service Provider. The InternetOne of Utrecht (Holland), to cancel the various domain names using that mark, including the two domain names in issue.

5.B.2 It appears from the correspondence exhibited to the Response that the Respondentís letter of November 28, 2001, [paragraph 4.A.3 above] was sparked off by an incident where one of the EVAC-CHAIR products supplied to the Respondent by Paraid failed due to a defective weld. This, however, appears to have been a one-off incident. Other product was inspected and found to be quite satisfactory with the result that no product recall was considered necessary.

5.B.3 When the negotiations broke down Ė it appears in late February 2003, Ė Paraid wrote to the Respondent on February 26, 2003, requesting that the Respondent should cease all reference to the EVAC-CHAIR name and mark 21 days after receipt of that letter. The Respondent states that it fully complied with that demand. As noted [paragraph 5.A.3 above], this is disputed by the Complainant, hence the letter from the Complainantís solicitors of July 1, 2003.

5.B.4 As to the continued registration of the two domain names in issue, the Respondent explains that it was not until August 2003, that its Internet Service Provider, InternetOne [paragraph 5.B.1 above], advised that it was not appropriate to cancel those domain names but, rather, to allow them to lapse for non-renewal in due course.

5.B.5 As to use of the EVAC+CHAIR mark in metatags directing traffic to the Respondentís "www.vanleuvencompanies.com" website, the Response exhibits a letter dated July 18, 2003, from its web advertising and design consultants, @WEB advertising & design BV, which states that the EVAC+CHAIR mark or derivatives of it do not form part of the metatag information.

5.B.6 The Respondentís case is, therefore, that it took all appropriate steps promptly and properly to terminate its former distributorship for the EVAC+CHAIR product, including ceasing its use of the two domain names in issue. By the letter dated August 14, 2003, the Respondentís Dutch lawyers [paragraph 5.B.1 above] wrote to the Complainantís U.S. attorneys confirming deletion of its Belgian EVACCHAIR domain name and offering to transfer the two domain names in issue, suggesting that it would in the circumstances be appropriate to withdraw the Complaint in this administrative proceeding. As stated in paragraph 3 above, the Complaint was filed with the Center on August 7, 2003.

5.B.7 There then followed an exchange of correspondence between counsel for the parties with regard to the compensation which the Respondent requested the Complainant to pay in consideration for transfer of the two domain names in issue and six additional EVACCHAIR country code domain names. It appears, however, that no agreement was reached on that amount. The Response states that the Respondent is willing to transfer the two domain names in issue to the Complainant and that the Respondent would have transferred them "to Complainant on its first request." The Respondent asks this Tribunal to order that the Complainant "bears all of the costs" of the Complainant.

 

6. Discussion and Findings

6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:

• that the Respondentís domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

• that the Respondent has no rights or legitimate interests in respect of the domain name; and

• that the domain name has been registered and is being used in bad faith.

6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondentís rights or legitimate interest in the domain name in issue.

6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.

6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognises that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.

Identical or Confusingly Similar

6.5 The two domain names incorporate the Complaintís registered EVAC-CHAIR trademark but for the hyphen. They are to all intents and purposes identical to the Complainantís trademark and this requirement of the Policy is met.

Rights of Legitimate Interests

6.6 The Response unequivocally states that the Respondent does not dispute the rights and legitimate interests of the Complainant in the two domain names in issue. The Respondentís actions, in attempting to cancel the domain name, also suggest that it was aware that it had no rights and legitimate interests in the domain name once it stopped selling the Complainantís products.

Registered and Used in Bad Faith

6.7 It is clear that, if the negotiations which followed the letter of November 28, 2001, and ended in late February 2003, had resulted in an ongoing relationship whereunder the Respondent continued to distribute the EVAC-CHAIR product, continued use of the two domain names would have been appropriate. The Respondent must, in the Panelís opinion, be regarded as having registered the two domain names for the joint benefit of themselves and the Complainant/Paraid Limited in the context of such an ongoing trading relationship. The Respondent, therefore, at all times held those domain name in trust for/on behalf of the Complainant trademark owner. It appears from its conduct (set out in the correspondence submitted with the Response) that the Respondent accepts this to be the case. Were it otherwise, the domain names would clearly have been both registered and used in bad faith.

6.8 The Respondent has now, it seems, taken appropriate steps to cease use of the Complainantís EVAC+CHAIR tradename, both as regards use of the two domain names in issue and otherwise. In the circumstances, it would be nonsensical for this Panel to find that this Complaint fails for lack of initial registration in bad faith. Indeed, in the absence of the post November 28, 2001, negotiations succeeding, registration of the two domain names on December 6, 2001, could be regarded as having been made in prospective bad faith registration. Further, despite the Respondentís apparent willingness to comply with the terms of the Complainantís solicitorsí letter of February 26, 2003, continued maintenance of the two domain names at the date when this Complaint was filed constitutes use in bad faith.

6.9 As noted in paragraph 5.B.5 above, the Respondent appears to request the Tribunal to order that is costs relating to this Complaint should be born by the Complainant. First, the Policy does not empower the Panel to make such an order. Second, even if it had such power, the Panel would not have made such order. In the circumstances, the Respondent could and should have transferred the domain names in issue without imposing a pre-condition that the Complainant reimburse its expenses.

 

7. Decision

For all the foregoing reasons, the Panel decides that the Complainant has provided each of the three elements of paragraph 4A of the Policy. Accordingly, the Panel requires that the domain names <evacchair.com> and <evacchair.info> be transferred to the Complainant.

 


 

David Perkins
Sole Panelist

Dated: September 16, 2003