WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Luvilon Industries NV v. Top Serve Tennis Pty Ltd.
Case No. DAU2005-0004
1. The Parties
The Complainant is Luxilon Industries NV, a company incorporated under the laws of Belgium, of Antwerp, Belgium, represented by Monahan & Rowell Solicitors, Australia.
The Respondent is Top Serve Tennis Pty Ltd. of Burwood, New South Wales, Australia.
2. The Domain Names and Registrar
The disputed domain names <bigbanger.com.au> and <luxilon.com.au> are registered with Melbourne IT trading as Internet Names Worldwide.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2005. On July 8, 2005, the Center transmitted by email to Melbourne IT trading as Internet Names Worldwide a request for registrar verification in connection with the domain names at issue. On July 11, 2005, Melbourne IT trading as Internet Names Worldwide 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 .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 21, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was August 10, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 12, 2005.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on August 18, 2005. 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 is a Belgian company which manufactures sporting goods. It is the holder of International Trade Mark Registration No. 797754 dated October 25, 2002, for the word mark LUXILON . The registration designates Australia under the Madrid Protocol and is protected in Australia for goods in classes 18, 25 and 28.
The Complainant is also the holder of International Trade Mark Registration No. 779434 dated February 28, 2002, for the composite mark BIGBANGER and Device. The registration designates Australia and is protected for goods in classes 7, 18, 25 and 28.
An individual, Nico Van Malderen, said to be the General Manager of the Complainant, owns the domain names <bigbanger.com>, <bigbanger.be> and <luxilon.be>, allegedly all on behalf of the Complainant. All were registered in early 2000.
The Complainant’s related company, Luxilon Sports NV, was established in 2003, to undertake all of the Complainant’s business in relation to the worldwide marketing and distribution of strings for racketball, tennis, badminton, and squash rackets. Luxilon Sports uses the trade marks and the domain names with the permission of the Complainant.
In or about 2001, the Complainant came to a verbal agreement with the Respondent that the Respondent would become its Australian representative, and later the representative of Luxilon Sports when it came into being. In consequence of that agreement Luxilon Sports supplied tennis strings to the Respondent which it retailed in Australia.
The relationship between the Respondent and Luxilon Sports deteriorated and on October 20, 2004, Luxilon Sports sent a letter to the Respondent stating, amongst other things, that it had ceased to supply the Respondent with goods and demanding that the Respondent cease all use of the LUXILON name on its website “www.topserve.com.au” and in any printed material.
In or about November 2004, Luxilon Sports discovered that the Respondent’s website carried a link to a site at “www.luxilon.com.au”, also registered to the Respondent, where the Respondent held itself out as “Luxilon Australia”. It was later uncovered that the Respondent had also registered the second disputed name <bigbanger.com.au>.
The disputed domain names had both been registered by the Respondent on August 24, 2004.
By February 2005, cease and desist letters had been sent to the Respondent by the Complainant’s solicitors in connection with both disputed domain names but the Respondent refused to transfer the names to the Complainant before compensatory claims it alleges against the Complainant are met.
The Complainant through Luxilon Sports appointed a new Australian representative.
The Complaint was filed in consequence of the failure to transfer the names. The Complainant requests transfer of the disputed domain names to it. The Respondent did not submit a formal reply.
5. Parties’ Contentions
In short, the Complainant argues that it has rights in the marks LUXILON and BIGBANGER through use and registration; that no permission was given to the Respondent to register the disputed domain names and so it has no rights or legitimate interests in the disputed names; and that the continued use of the disputed domain names after receiving notice of termination of supply of the Complainant’s goods constituted an attempt by the Respondent to attract Internet users to its website for commercial gain by creating a likelihood of confusion.
The Complainant goes on to argue that although the Respondent has subsequently closed down the offending websites, there is no assurance they will not be re-activated since the Respondent has not complied with the Complainant’s solicitors’ demand letters and there is no legal basis for the Respondent to have proprietorship of the disputed domain names. Finally, the Complainant is unable to fully exploit its products without the ability to use those domain names.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules requires the Panel to decide the Complaint on the basis of the statements and documents submitted by the parties and in accordance with the Policy, the Rules and those principles of law that the Panel deems applicable.
Under Paragraph 4(a) of the Policy the Complainant has the burden of proving the following three elements:
(i) The domain name is identical or confusingly similar to a name, trade mark or service mark 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 or subsequently used in bad faith.
Paragraph 5.3 of the Policy states that a respondent is not obliged to file a response and if no response is filed then, absent exceptional circumstances, a panel shall decide the dispute based on the information provided in the complaint.
This Panel finds no exceptional circumstances for the Respondent’s failure to submit a Response. Nevertheless, the Panel still has the responsibility of determining which of the Complainant’s assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts (See, Inter-IKEA Systems B.V. v. Hoon Huh, WIPO Case No. D2000-0438).
Paragraph 1.1 of the Policy states that the “purpose of the auDRP is to provide a cheaper, speedier alternative to litigation for the resolution of disputes between the registrant of a .au domain name and a party with competing rights in the domain name”. The Policy goes on to underscore the fact that it does not apply to all types of domain name disputes but only those that meet the requirements set out in Paragraph 4(a) above. It has also been said in numerous UDRP decisions that the purpose of that policy (upon which the auDRP is modeled) is to combat abusive domain name registrations and not to provide a prescriptive code for resolving more complex trade mark disputes. Against that backdrop, the Panel makes the following observations.
First, the Complainant failed in 2001 (if not earlier) to regulate its relationship with the Respondent by means of a formal, written document. There is no evidence of the terms of the verbal agreement or of the exact nature of the contractual relationship(s) which arose between the parties. What is clear is that this relationship lasted some years until Luxilon Sports terminated supply and appointed a new Australian representative.
Secondly, the Complainant certifies in its Complaint that the information supplied is to the best of its knowledge complete and accurate. Whilst it is not the Complainant’s obligation to make the Respondent’s case, it is clear that correspondence from the Respondent and related dealings with the Respondent are not fully exposed in the Complaint. The letter dated October 20, 2004, from Luxilon Sports to the Respondent, for example, reads in part:
“In light of recent events please be informed that Luxilon Sports NV has ceased the delivery of Luxilon tennis strings to your company.
Regarding the design of the Luxilon tennis racket I would like to point out that a proposal of 10,000 EUR fixed and 4% royalties on the net selling price was accepted by you in consideration of the design work and the worldwide distribution rights.
The agreed lump sum of 10,000 EUR has been fully paid by Luxilon, i.e. 5,000 EUR on February 2, 2004 and 5,000 EUR by means of a set off with the outstanding amounts of your company towards Luxilon (sic.).
I am therefore flabbergasted by the proposed amount of AUD 554,000 stated in your email dd. October 15, 2004. This is not at all what was agreed upon. Furthermore I would like to remind you that Luxilon has invested a great deal of valuable time and money in this project and that it is the behaviour of Top Serve (including the slandering of Luxilon’s name) that has left Luxilon with no other choice than to cancel its plans for the commercialization of this racket.”
There is no copy of the Respondent’s October 15, 2004 email.
Moreover, the Complainant’s Solicitors wrote to the Respondent on January 14, 2005 and again on February 25, 2005. Copies of those letters were annexed to the Complaint. The February letter states in one place:
“I note in your response of January 14, 2005, a suggestion that the “luxilon.com.au” would (sic.) not be transferred to Luxilon Industries NV until payment of all monies asserted to be owed to TST and/or you”.
Again, there is no copy of the Respondent’s January response.
Whilst the Rules empower a panel to request additional material from the parties, this Panel has taken the view for reasons which are set out later that their production would not have altered its reasoning and would instead have led to an unnecessary delay in the issue of this decision.
Thirdly, in the Complaint it is said that “the Respondent has refused to transfer back either of the contested domain names without payment of monies it alleges as being owed by Sports together with an unidentified amount the Respondent asserts for its costs in registering the domain names”. It is noted that there is nothing in the Complainant’s evidence to support the assertion that the Respondent has demanded an undisclosed amount to compensate it for registering the domain names.
The Panel turns to the specific elements of Paragraph 4(a) of the Policy which the Complainant must establish.
A. Identical or Confusingly Similar
In the absence of any contest to the validity of the two International trade mark registrations, there is no doubt that the Complainant has rights in the marks. Equally, the Panel has no hesitation in finding that in each case the trade mark and the corresponding disputed domain name are confusingly similar. In the case of the BIGBANGER mark, it is noted that the registration is for a composite mark and not a plain word mark. Although the Complaint has failed to provide in its evidence a clear representation of the mark, the Panel is still able to discern that the word element is the physically dominant and distinctive part of the mark and there is no question that the domain name <bigbanger.com> is confusingly similar to the Complainant’s BIGBANGER and device registration.
The Panel finds that the Complainant has met the first element of the Policy.
B. Rights or Legitimate Interests
It has been observed by panelists in formative decisions that there is a necessary connection between the elements of legitimate rights, on the one hand, and bad faith, on the other. In particular, if it can be seen that the Respondent in fact had rights in the domain name, then it is generally difficult to assimilate that with a conclusion that the Respondent had acted in bad faith.
The Complainant submits that to its best knowledge, the Respondent has always been known as Top Serve Tennis and has not been commonly or widely known as “Luxilon” or “Luxilon Australia” or “Bigbanger”. It argues that since it unequivocally terminated its relationship with the Respondent, there is no basis on which the Respondent can claim a right or entitlement in the disputed domain names.
The Panel is of the view that here lies the critical issue. Paragraph 4(c) of the Policy gives the following two examples of possible legitimate interests in a disputed domain name.
1. before any notice of the dispute, the respondent can show bona fide use of the domain name in connection with an offering of goods, or
2. the respondent has become commonly known by the domain name, even if it has acquired no trade mark rights.
As stated above, the Complainant bears the onus of showing that neither of these circumstances could hold true.
It has already been noted that the Complainant did not prove the nature of its relationship with the Respondent (other than playing a role in the chain of supply of branded tennis racket strings to the Respondent for retail sale) or the terms which might have governed that relationship. Quite aside from the question of proper ownership of the disputed domain names, there are references to other intellectual property issues and no clear evidence that those matters were regulated by agreement either. Nonetheless, what the Complainant argues is that at no time did it or Luxilon Sports authorize the Respondent to register or use the disputed domain names. The Complaint reads at one point:
“The Complainant acknowledges that during the course of the Agreement between Sports and the Respondent, the Respondent could conceivably have utilized an argument of fair use of the Contested Domain Names (under Trade Mark Law) to use the Marks and register the domain names for the exclusive purpose of selling genuine Luxilon and Bigbanger products which it was authorized to do. Any argument of an implied authorization or fair use right or any claim of a close and substantial connection to the Contested Domain Names was clearly negated when the Agreement between the parties was terminated.”
The issues between the parties are not limited to the law of trade marks. There are other intellectual property issues. There are serious contractual issues. There are questions of governing law and proper forum if the matter were litigated. Were all the issues fully ventilated before a Court of competent jurisdiction, there may be findings of implied contractual terms, minimum termination period, breach of contract, estoppels or other equitable defenses. So far as the facts fit within trade mark law, there may be arguments of infringement, validity of the registrations, ownership of goodwill, local reputation, consent, acquiescence, and so on.
What is perfectly clear to this Panel is that the Complainant has fallen short of showing that the Respondent has no rights or legitimate interests in the domain names. The evidence before the Panel is that the Respondent had perhaps an exclusive arrangement to sell the Complainant’s goods in Australia without any control provisions regarding name usage or local goodwill and during which time the Respondent apparently invested in developing other tennis products under the Luxilon name with the Complainant’s collaboration. This arrangement appears never to have formalized in writing and lasted from 2001 or earlier until October 2004, when the Complainant claims to have unilaterally terminated it.
In terms of the examples of legitimate usage given in the Policy and cited above, the Respondent registered and used (or at least made preparations to use) the domain names in connection with an offering of goods before notice of this dispute, albeit that chronologically there is a rather thin margin in the Respondent’s favour. The question is then whether the use or preparations for use were bona fide. The close timing weighs against the Respondent but only if it is accepted that the Respondent had no rights in the names. The Panel finds that on the facts there is a serious question to be tried as to whether the Respondent does have rights or legitimate interests in the names. That question, and others, needs to be brought in an appropriate forum. So far as this Complaint is concerned, the Panel holds that the Complainant has not discharged its onus to show that the Respondent has no legitimate interests in the two disputes domain names and so decides that the Complainant has failed to satisfy the second element in Paragraph 4(a) of the Policy.
C. Registered or Used in Bad Faith
For the reasons set out above, it is not necessary to reach any finding on this aspect of the Policy.
For all the foregoing reasons, the Complaint is denied.
Debrett G. Lyons
Dated: September 6, 2005