WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Omnigraphics Capital (Pty) Ltd v. Fleximount, Guy Langevin
Case No. D2004-0471
1. The Parties
The Complainant is Omnigraphics Capital (Pty) Ltd, Ottery, Cape Town, South Africa, represented by Cliffe Dekker Incorporated, South Africa.
The First Respondent is Fleximount, Vaughan, Ontario, Canada.
The Second Respondent is Guy Langevin of Fleximount, Vaughan, Ontario, Canada.
2. The Domain Names and Registrar
The disputed Domain Names <fleximount.net> and <fleximount.org> are registered with NameScout Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2004. On June 29, 2004, the Center transmitted by email to NameScout Corp. a request for registrar verification in connection with the Domain Names at issue. On June 29 2004, NameScout Corp. 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 8, 2004. The Center verified that the Complaint together with the amendment to 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 July 12, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was August 1, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 2, 2004.
The Center appointed Dawn Osborne as the sole panelist in this matter on August 5, 2004. 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.
4. Factual Background
The Complainant designs manufactures and distributes outdoor advertising signs and materials as well as related equipment. Complainant has registered and/or has applied for the registration of the mark FLEXIMOUNT in various countries worldwide including Canada. The First Respondent was a distributor for the Complainant’s products but the distribution agreement has now been terminated. The Second Respondent is cited as the directing mind of the First Respondent.
5. The Second Respondent
The Second Respondent is not the Registrant of the Domain Names and it is not clear to the Panel why he has been cited as an additional Respondent. Accordingly the Panel will treat the Complaint as properly made only as against the First Respondent.
6. Parties’ Contentions
The Complainant’s contentions can be summarized as follows:
1. The Complainant has registered, or applied for the registration of the trademark FLEXIMOUNT and device in various countries worldwide. In particular in Canada it registered the FLEXIMOUNT trademark and design under trademark numbers 1007194 and applied for the registration of Fleximount in Class 35. It has also registered “www.fleximount.com” a website which is the principal source of information about the Complainant’s products.
2. On or about June 22, 2002, Complainant appointed First Respondent as its distributor for Complainant’s products including the FLEXIMOUNT product for an initial period of 3 years.
3. Under the Distributorship Agreement the First Respondent acknowledged that the ownership of the FLEXIMOUNT mark vested in the Complainant and that it could not make use of that mark after termination.
4. Permission was given to the First Respondent to incorporate the FLEXIMOUNT mark into its company name subject to certain terms and conditions including that any right to use the trademark would cease on termination of the Distribution Agreement.
5. The First Respondent breached a number of its obligations in the Distributorship Agreement and the Agreement was terminated. The Complainant also complained that the Domain Names <fleximount.org> and <fleximount.net> had been registered without the Complainant’s consent or knowledge. A demand was made for transfer which has received no response.
6. The First Respondent is holding itself out to be an authorized distributor of the Complainant’s Fleximount products. In fact First Respondent seems to regard itself as Fleximount. Respondent continues to market and distribute products similar to those manufactured and distributed by Complainant under the Complainant’s trademark and on the strength of the goodwill enjoyed by the Complainant and its products.
7. The Domain Names are identical or confusingly similar to Complainant’s trademarks. The First Respondent is a direct competitor of the Complainant.
8. Any interest which the Respondent may have had in respect of the Domain Names continued only for the duration of the Distribution Agreement. The mere fact that the First Respondent had the right to distribute Complainant’s products for a period did not give the Respondent the right to apply for registration of the Domain Names. Rights of use were strictly limited by the Agreement and ceased on termination.
9. The Domain Names were registered and are now being used in bad faith. First Respondent registered the disputed Domain Names without Complainant’s knowledge or consent. This is bad faith even if it is argued that the unilateral registration was done solely for the purpose of advancing the Complainant’s products in the marketplace. There was no need for such registration, the Complainant had already registered a top level domain name which was referred to in the distribution agreement.
10. It remains bad faith on Respondent’s part to persist with retaining the registration to the Domain Names now that the agreement between Complainant and First Respondent has terminated. The Respondent had an ulterior motive from the beginning in registering the Domain Names.
11. The fact that the First Respondent ignored Complainant’s demand that it cease and desist from non authorized illegitimate and wrongful use of the Domain Names is indicative of First Respondent’s bad faith
12. The Respondent’s use of the Domain Names is an intentional attempt to attract for commercial gain Internet users to its website by creating the likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. The Respondents have registered the Domain Names as part of a strategy to enter into unlawful competition with the Complainant. The First Respondent has conducted itself in a manner which demonstrates that, regardless of its contractual arrangements with Complainant, it intends to sell similar or identical products to those of the Complainant using the Complainant’s trademark. The First Respondent is in fact being held out as the originator of the Fleximount product. Respondent clearly intends to mislead potential customers of products into believing that it is both the manufacturer and distributor of Complainant’s products and clearly intends to tarnish Complainant’s trademark. The continued use of the Domain Names incorporating Complainant’s trademark is undoubtedly intended to drive custom away from Complainant to Respondent’s advantage and to Complainant’s disadvantage and is therefore unlawful.
The Respondents did not reply to the Complainant’s contentions.
7. Discussion and Findings
A. Identical or Confusingly Similar
The substantive part of the Domain Names in question are identical to the Complainant’s FLEXIMOUNT trademark. The Domain Names are the “.org” and “.net” versions of the Complainant’s <fleximount.com> domain name. The suffixes “.org” and “.net” are generic. For the purposes of the Policy the Domain Names are identical to the Complainant’s FLEXIMOUNT trademark.
B. Rights or Legitimate Interests
The Respondents have not submitted a Response and therefore have not submitted any arguments in support of their position. The First Respondent was a distributor of the Complainant’s products. The terms of the Distributorship Agreement are clear that any rights to use the Complainant’s intellectual property ceased on termination of the Distributorship Agreement. As such the Complainant has demonstrated that the Respondent has no rights and legitimate interests in respect of the Domain Names.
C. Registered and Used in Bad Faith
Paragraph 4 (b) of the Rules sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including
“by using the domain name [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, affiliation or endorsement of [its] web site or location or of a product or service on [its] web site or location.”
The First Respondent appears to have registered the Domain Names without the knowledge or consent of the Complainant while acting as the Complainant’s distributor and then continued to use the Domain Names to sell similar products to the Complainant after the Distributorship Agreement with the Complainant terminated.
By using the Domain Names after the Distributorship Agreement has terminated for products in the same field as the Complainant, the Respondent has shown that it always intended to take the benefit of the registrations of the Domain Names for itself even if its relationship with the Complainant ended in breach of the Distributorship agreement it had signed. The fact that it registered the Domain Names without requesting permission or telling the Complainant reinforces this conclusion. The Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its site by creating a likelihood of confusion with the Complainant’s FLEXIMOUNT mark as to the source, affiliation or endorsement of the Respondent’s Fleximount website. As such the Panel holds that the Domain Names were registered and used in bad faith.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <fleximount.net> and <fleximount.org> be transferred to the Complainant.
Dated: August 17, 2004