WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Takaso Rubber Products Sdn Bhd v. Selim Tasci and Tasci Dis Tic. Ltd. STI
Case No. D2006-1263
1. The Parties
The Complainant is Takaso Rubber Products Sdn Bhd, Johor, Malaysia, represented by Tay & Partners, Kuala Lumpur, Malaysia.
The Respondents are Selim Tasci and Tasci Dis Tic. Ltd. STI, Istanbul, Turkey.
2. The Domain Names and Registrar
The disputed domain names <romanticcondom.com> and <romanticcondoms.com> are registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 2, 2006. On October 2, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On October 3, 2006, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants 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 October 4, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October 24, 2006. The Response due date was extended until November 7, 2006. The Response was filed with the Center on November 8, 2006.
The Center appointed Professor Frederick M. Abbott as the sole panelist in this matter on November 14, 2006. 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.
By email received by the Center on November 13, 2006, Respondent transmitted a supplemental submission. That supplemental submission effectively constituted an amended response. In the interests of providing each party with adequate opportunity to present its case, the Panel by its Administrative Order No 1 decided to accept that supplemental submission and, further to Complainant’s request, granted leave to Complainant to file a supplemental submission. Complainant’s supplemental submission was duly received by email by the Center on November 23, 2006. Further to Respondent’s request, the Panel by its Administrative Order No 2 granted it leave to file a responsive supplemental submission, which was duly received by email by the Center on December 4, 2006. The Panel advised the parties that the anticipated due date for its decision was set to December 15, 2006.
4. Factual Background
Complainant has registered the trademark ROMANTIC in 72 countries, including (but not limited to) Malaysia and Turkey. In Malaysia, the Certificate of Registration is for trademark no. 98005205, in International Class (IC) 10, covering “condoms”, registration dated April 27, 1998. In Turkey, the trademark registration number is 120358, in ICs 5 and 10, registration dated May 30, 1990. In addition to submitting documentary evidence of the foregoing registrations, Complainant has submitted documentary evidence of registration of the ROMANTIC trademark in numerous other countries, including China, Guatemala, Morocco, New Zealand, Singapore, South Africa and Switzerland. (Complaint, paras. 11 & 13, Annex 8)
Complainant indicates that its worldwide sales of condoms in 2005 totaled approximately 6 million Malaysian Ringgits, (or US $1.7 million).1 Complainant has submitted representative invoices for its sales. (Id., para. 14 & Annex 9.) Complainant indicates that it spends approximately 10% of its total revenues on advertising and promotion, and has submitted representative invoices and advertising materials used in connection with its condom products. (Id., para. 15 & Annex 10.)
Complainant states that it was the registrant of the domain names <romanticcondoms.com> and <romanticcondoms.com.co.uk> commencing on August 10, 2000 and June 19, 2003, respectively. However, due to the failure of its Malaysian agent, Hicom Teleservices, to properly process its request and payment for renewal of the domain name <romanticcondoms.com> from August 4, 2004, its registration lapsed. Complainant has submitted invoices and receipts from its agent that support its claim that it made payment for renewal of the <romanticcondoms.com> domain name in a timely manner. According to Complainant, it did not become aware of the lapse by its agent until on or about January 14, 2005. That was the time at which, according to Complainant, it also discovered that Respondent had registered the disputed domain names.
According to Complainant, Respondent was sole distributor of Complainant’s condom products in Turkey from June 1, 2002 to April 14, 2006. Respondent made two purchases of consignments from Complainant in 2003 amounting to approximately US $42,000. (Complaint, para. 11 & Annex 4). No written distribution agreement was submitted by Complainant or Respondent with respect to this time period. An email from Complainant to Respondent dated March 29, 2005 refers to June 2002 as the date from which the parties have been dealing together. (Complaint, Annex 6) Respondent indicates that it commenced doing business with Complainant in 2003, and that this was pursuant to oral agreement. (Response (Supplemental), paras. 6-11.) However, Respondent’s documents also indicate that it has sold Complainant’s products since 2002, and that the content of its web site has not changed since that time. (Id., paras. 32-35.) Complainant indicates that it was first contacted by e-mail by Respondent on June 6, 2002, in which Respondent stated that it “saw your goods from your web site”, and ordered samples on July 4, 2002 (Complainant’s Supplemental Submission, para. 5).
Complainant alleges that Respondent has used the disputed domain names to direct Internet users to a web site which advertises products other than those of Complainant. The sample web site pages submitted by Complainant relate only to one of the disputed domain names, <romanticcondom.com>. These pages prominently promote Complainant’s products, i.e., various specific condom products, all prominently identified by Complainant’s ROMANTIC trademark. As of July 19, 2006, those web pages state that Respondent “is the exclusive dealer of Romantic Condoms in Turkey”, and include Respondent’s contact information. There are several “headers” on the web pages which reflect other offerings of Respondent’s businesses. These headers represent a small portion of the web page.
Complainant has provided copies of several emails forwarded from Respondent to Complainant which contain third-party Internet user requests for information regarding where to purchase Complainant’s products in or for countries other than Turkey. (Complaint, Annex 20.)
Respondent has acted as an authorized reseller of Complainant’s products (see infra). By email of March 29, 2005, Complainant notified Respondent that it had become aware of Respondent’s registration of the disputed domain names, and requested that it transfer those domain names to Complainant. Respondent acknowledged that Complainant had rights in the ROMANTIC trademark in the condom sector in Turkey, but said that other companies used that brand name in other sectors in the Turkish market. Respondent stated that it believed Complainant had voluntarily abandoned the domain name <romanticcondoms.com> because the registration had lapsed, that Complainant could have re-registered the name at small cost, and that Respondent registered the disputed domain names in good faith to publicize Complainant’s products. Respondent indicated that by purchasing the disputed domain names it had in effect protected Complainant from those who might have used them for bad purposes. Respondent added various elements of dissatisfaction regarding its business relationship with Complainant. After various interim exchanges, by email dated January 6, 2006, Complainant offered to continue supplying its products to Respondent on an exclusive basis for Turkey for one year, at a price lower than its current sales price, on condition that Respondent transfer the disputed domain names to Complainant within 14 days. Respondent by email dated January 9, 2006 counter offered, requesting a 10-year exclusive distributorship with minimum purchase commitments, and on that condition Respondent would transfer the disputed domain names. Respondent requested that “5% of the surface of the home pages must be open to us and you must give us a link to use the 5% of the surface of the home pages”. Complaint, Annex 6.
Complainant and Respondent met together in April 2006. At that meeting the parties discussed the terms and conditions of a proposed contract, as well as transfer at least of the disputed domain name <romanticcondoms.com>. Minutes of the meeting prepared by Complainant indicate that the parties failed to reach agreement on the terms of a long-term contract, and likewise on Respondent’s transfer of the disputed domain name. (Complaint, Annex 7.)
According to the Registrar’s Verification Report, Respondent is registrant of the disputed domain names, <romanticcondom.com> and <romanticcondoms.com>. A GoDaddy.com WHOIS database report submitted by Complainant indicates that the record for the disputed domain name <romanticcondom.com> was created on September 11, 2002. A GoDaddy.com WHOIS database report submitted by Complainant indicates that the record for the disputed domain name <romanticcondoms.com> was created on January 14, 2005. (Complaint, Annex 1)
Respondent indicates that it began research on the condom sector in 2002 and decided on its own to use the term “romantic” in a domain name, thereafter registering <romanticcondom.com> in 2002. Respondent states that it began doing business with Complainant in 2003, by oral agreement. (Response (Supplemental), paras. 6-11)
Respondent states that Complainant’s principal trademark is “ROMANTIC LOVE RUBBER”, and that various Internet searches demonstrate that this is the preponderant way in which Complainant’s products are identified by Complainant. Response (Supplemental), para. 12 & Annex 2. Complainant has submitted the results of different Internet searches that show Complainant’s trademarked products as “ROMANTIC CONDOMS” in the search results (Complainant’s Supplemental Submission, Annex 28).
Respondent has submitted certain evidence suggesting that the web sites addressed by the disputed domain names are rarely visited. Id., Annex 8.
Respondent has registered the word and design trademark “TASCI ROMANTIC” (or “BY. TASCI ROMANTIC”) in Turkey,2 registration number 200431253, in ICs 3, 10 & 35, dated September 28, 2004.
The Registration Agreement in effect between Respondent and GoDaddy Software subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory Administrative Proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant argues that it has rights in the trademark ROMANTIC as evidenced by registration of that trademark in 72 countries, including Malaysia and Turkey, and by its continuous use of that mark in connection with sales of its condom products at least since 1978.
Complainant contends that the disputed domain names were registered subsequent to its securing of rights of its trademark, and that those disputed domain names are identical or confusingly similar to Complainant’s trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names. It argues that Respondent was never authorized to use its trademark in domain names, that Respondent was not commonly known by the disputed domain names when it registered them, and that Respondent is not making fair use of its trademark in the domain names. Complainant contends that Respondent registered the disputed domain names with full knowledge that the trademark ROMANTIC belongs to Complainant, which ownership has since been acknowledged by Respondent. Complainant argues that Respondent was formerly its distributor, and that its status as a distributor did not give it a right to register Complainant’s trademark in domain names.
Complainant states that Respondent registered and is using the disputed domain names in bad faith. Complainant argues that Respondent has used the disputed domain names in connection with a web site which features links to web sites offering products other than those of Complainant. Complainant further argues that Respondent is deceiving consumers by suggesting that it is acting as the supplier of Respondent when, in fact, Complainant has ceased to supply Respondent. Respondent continues to indicate on its web site that it is the exclusive dealer of Complainant’s products in Turkey, which is untrue. Complainant argues that evidence it has submitted of Internet user inquiries to Respondent regarding purchasing of Complainant’s products in third countries evidences that Internet users are misled by Respondent’s website. Complainant argues that the intentional inducement of Internet user confusion as to its sponsorship or affiliation with Respondent’s web site is done for commercial gain. Complainant contends that Respondent’s demand for a long-term contract on commercially unreasonable terms in exchange for return of the disputed domain names is evidence of Respondent’s bad faith.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain names to it.
Respondent contends that Complainant’s trademark, ROMANTIC, is a commonly used adjective, and that Respondent registered the disputed domain name <romanticcondom.com> because it is similar to that adjective, and that Complainant through Internet research in 2002 realized that the domain name was not used by a third-party. Respondent states that it initiated its business relationship with Complainant thereafter.
Respondent argues that Complainant uses the trademark “ROMANTIC Love Rubber” in the promotion of its products, and not the trademark “ROMANTIC Condom”. Therefore, the disputed domain name is not confusingly similar to Complainant’s actual trademark.
Respondent asserts that Complainant’s trademark is not well-known internationally.
Respondent states that it has registered the trademark “TASCI ROMANTIC” in Turkey, and that this is evidence that Complainant’s trademark is not global and unique.
Respondent suggests that Complainant has fabricated evidence concerning the identity and activities of its agent for domain name registration.
Respondent asserts that Complainant failed to notify it regarding its January 14, 2005, registration of the disputed domain name <romanticcondoms.com> for a substantial period of time.
Respondent claims that it has used the same web site addressed by the disputed domain name <romanticcondom.com> since 2002, and that Complainant has not before objected to the web site.
Respondent claims that Complainant did not request transfer of the disputed domain name <romanticcondom.com> because it was aware that Respondent had registered, used and promoted it in Turkey for five years.
Respondent asserts that Complainant failed to renew the registration of the disputed domain name <romanticcondoms.com>, and that Respondent fairly concluded that Complainant had relinquished the name. Respondent acted legitimately and in good faith when it registered that domain name.
Respondent states that it has used the web site associated with the disputed domain names to sell products legitimately purchased from Complainant, and that it has the right to sell those products under the disputed domain names.
Respondent states that it has not acted in bad faith because it is selling Complainant’s products which it purchased from Complainant, and has not sought to sell the disputed domain names to Complainant or use them for an illegal or unethical purpose.
Respondent states that five emails it forwarded to Complainant with consumer inquiries for purchase of condoms in third countries over a five-year period is insubstantial evidence of Internet user confusion.
Respondent requests the Panel to reject Complainant’s request for transfer of the disputed domain names.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this Administrative Proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
Complainant and Respondent have each filed initial and supplemental submissions. The Panel is satisfied that Respondent was given adequate notice of these proceedings, and that each party has been given adequate opportunity to present its position.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondent’s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has demonstrated that it has rights in the trademark ROMANTIC as evidenced by registration in numerous countries, including Malaysia and Turkey, the respective home countries of Complainant and Respondent. Complainant’s ROMANTIC trademark was registered in Malaysia in connection with condom products in 1998. Complainant’s ROMANTIC trademark was registered in Turkey in 1990 in connection with condom products. Respondent has not challenged the validity of Complainant’s trademark registrations in Malaysia or Turkey, nor has it challenged the validity of Complainant’s registrations in other countries.
Although Complainant has secured wide geographic registration of its trademark, it has not submitted evidence sufficient to demonstrate that the mark is “well known” from the standpoint of Article 6bis of the Paris Convention. Complainant has not submitted substantial evidence of public recognition of the mark. Moreover, the volume of advertising and sales of the trademarked product are not sufficient to establish prima facie that the mark is well known on a worldwide basis. Complainant might be able to provide such evidence in another legal forum, but it has not done so here.
Respondent has registered the disputed domain names <romanticcondom.com> and <romanticcondoms.com>. Those domain names incorporate Complainant’s ROMANTIC mark, and add the term “condom” (singular and plural). Complainant’s trademark is registered for use in connection with condoms. Complainant’s products are packaged and advertised using the term “ROMANTIC condoms” (see, e.g., Complainant’s Supplemental Submission, Annex 30). An Internet user familiar with Complainant’s trademark would be likely to assume that a domain name which combined Complainant’s ROMANTIC trademark with the common identifier for its product, “condom” or “condoms”, identified Complainant and its products.
Respondent has argued that Complainant most often identifies its products as “ROMANTIC Love Rubbers”. There is insufficient evidence in this proceeding to firmly determine what identifier Complainant uses most often in connection with sales of its condom products. But such a determination is not necessary to resolve the question whether the disputed domain names are confusingly similar to Complainant’s ROMANTIC trademark. Respondent has combined Complainant’s ROMANTIC mark with the term that most commonly identifies Complainant’s product. This is likely to confuse Internet users into believing that the web site associated with the disputed domain name addresses is associated with Complainant and its products. See, e.g., Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503.
Complainant has established that it has rights in the trademark ROMANTIC and that the disputed domain names are confusingly similar to its mark.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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 noncommercial 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.” (Policy, paragraph 4(c)).
The factual circumstances with respect to the two disputed domain names are distinct, and the Panel will treat them separately with respect to this element.
Respondent registered the disputed domain name <romanticcondom.com> on September 11, 2002. Respondent indicates that it did so after an Internet search regarding condoms, and its recognition that this name was not then held by a third party. The same Internet search would logically have revealed Complainant’s then-operative web site addressed by <romanticcondoms.com> (and products), and Complainant has indicated that it was first contacted by Respondent in June 2002, and that Respondent ordered sample products from it in July 2002. Although Respondent suggests that it did not do business with Complainant until 2003, it also indicates that it established its web site offering Complainant’s products in 2002.
The Panel concludes based on the preponderance of evidence and logical inferences drawn from that evidence that Respondent registered the disputed domain name <romanticcondom.com> in late 2002 with knowledge of Complainant’s trademarked products. At that time, Complainant’s ROMANTIC trademark was registered in Turkey in connection with condom products. There is no evidence that Complainant authorized Respondent to use its trademark in a domain name, or that Respondent was commonly known as <romanticcondom.com> in late 2002.
This leaves the questions whether Respondent may have used the disputed domain name <romanticcondom.com> for a bona fide offering of goods prior to notice of a dispute, and whether it may be making fair use of the disputed domain name.
Standing alone, Complainant’s trademark registration in Turkey does not constitute implied notice of a dispute. Respondent may have believed that it could legitimately register the disputed domain name to resell Complainant’s products notwithstanding the trademark registration. Complainant did not object to Respondent’s registration and use of the disputed domain name <romanticcondom.com> at least until March 2005, about two and one-half years following registration. The issue in these circumstances is whether Respondent’s use of the disputed domain name prior to notice was bona fide.
Did Respondent evidence the intention of a good-faith reseller of Complainant’s products, or conversely did Respondent evidence an intention to take unfair advantage of Complainant’s mark and goodwill associated with it?
The printouts of Respondent’s web site associated with the disputed domain name <romanticcondom.com> submitted by Complainant showed that it is predominantly devoted to promotion of Complainant’s trademarked products. There are modest-sized headers which allow Internet users to link to other sites operated by Respondent. However, these do not play a major role in the overall impression of the web site, which is to offer Complainant’s trademarked products for resale.
The web site states that Respondent is the exclusive dealer for Complainant’s condom products in Turkey, and that is no longer true. This fact is the basis for determining below that Respondent is not fairly using the second disputed domain name <romanticcondoms.com>. However, it is common ground of Complainant and Respondent that this was true at the time the statements were made by Respondent in late 2002 through 2004, that is, when it used the <romanticcondom.com> domain name prior to notice of a dispute. Complainant permitted Respondent to operate the aforementioned web site under the disputed domain name for two and one-half years without objection, and only in 2005 sought to obtain transfer of that domain name. Given the proximity of this disputed domain name to the one used in 2002-2004 by Complainant, it is reasonable for the Panel to infer that Complainant was aware of Respondent’s web site during that timeframe.
Based on the totality of the surrounding circumstances, and noting that such decisions are made in the context of the particular case, the Panel concludes that Respondent operated the web site addressed by the disputed domain name <romanticcondom.com> in a bona fide manner prior to notice of a dispute from Complainant. The Panel notes that this decision might have been different if Complainant had established that its trademark was “well-known”, such that Respondent might have been determined to have taken unfair advantage of Complainant’s goodwill in its mark. The Panel need not address the issue of fair use in respect to this disputed domain name.
On the basis of this determination, Complainant has failed to demonstrate that Respondent lacks rights or legitimate interests in the disputed domain name <romanticondom.com>, and the Panel will not direct the registrar to transfer that disputed domain name to Complainant. The Panel will not address the issue of bad faith in connection with this domain name.
Respondent registered the disputed domain name <romanticcondoms.com> on January 14, 2005. It did so following the lapse of Complainant’s registration for that same domain name.
Complainant promptly objected to that registration, first by e-mail of March 29, 2005, when (according to Complainant) it also first learned of the failure by its agent to renew its registration. The evidence in this proceeding does not make clear when the disputed domain name <romanticcondoms.com> was linked to Respondent’s web site. However, in light of the short time period between Respondent’s registration of this disputed domain name and Complainant’s objection to its registration, the Panel considers that Respondent did not make bona fide use of that name “prior to notice of a dispute”.
Respondent has effectively argued that it was commonly known by this disputed domain name when it registered it in January 2005 because it had registered the trademark TASCI ROMANTIC. The Panel rejects that assessment.
Complainant registered the trademark ROMANTIC covering condoms in Turkey in 1990. That trademark registration is valid and subsisting. In accepting for registration in 2004 Respondent’s TASCI ROMANTIC in the IC covering condoms, the trademark office of Turkey must have determined that the combination of the word and design TASCI and ROMANTIC would be sufficiently distinct from the word mark ROMANTIC in the minds of consumers so as to avoid a likelihood of confusion. Logically, the trademark office of Turkey would not have presumed that Respondent was free to use the mark ROMANTIC independent of combination with TASCI. Otherwise, that office would have been approving the use of identical marks for identical products, which would be inconsistent with basic trademark law principles (as evidenced by Article 16 of the WTO TRIPS Agreement, to which Turkey (and Malaysia) are parties).3 Therefore, registration by Respondent of the trademark TASCI ROMANTIC does not evidence that Respondent was commonly known by the disputed domain name <romanticcondoms.com> when it registered that name. Respondent is not entitled to use Complainant’s ROMANTIC trademark in Turkey (to which Complainant in all events objects) absent combination with TASCI, which is not present in this disputed domain name. Compare Lexicon Marketing Operating Luxembourg, S.A.R.L v. Facundo de Giorgio, WIPO Case No. D2006-0730, in which registration of a trademark in Argentina provided the basis for a determination that the respondent had rights or legitimate interests in a disputed domain name, notwithstanding its lack of rights or legitimate interests in the United States).
The question remains whether Respondent is making fair use of Complainant’s trademark in this disputed domain name. Such determinations are context-dependent and, in the totality of the circumstances here, the Panel determines that Respondent is not making fair use of Complainant’s trademark (see discussion of fair use factors in, e.g., HBP, Inc. v. Front and Center Tickets, Inc., WIPO Case No. D2002-0802 and Pfizer Inc v. Van Robichaux, WIPO Case No. D2003-0399.) As of July 2006, Respondent’s web site explicitly stated that Respondent is the “exclusive dealer of Romantic Condoms in Turkey”, whereas Complainant and Respondent previously severed their business relationship. Complainant’s business is effectively disrupted by this misrepresentation. The use of Complainant’s trademark in connection with Respondent’s contact information led to demonstrable instances of Internet user confusion, with prospective clients of Complainant contacting Respondent for information. There is no disclaimer of affiliation with Complainant on Respondent’s web site. To the contrary, Respondent explicitly conveys the message that it is affiliated with Complainant. It is a basic premise of the fair use exception to the exclusive rights of the trademark holder that a party claiming fair use has not misleadingly conveyed the impression that it is affiliated with the trademark holder. For example, in Bayerische Motorenwerke AG (BMW) and BMW Nederland BV and Ronald Karel Deenik, ECJ Case C-63/97, 23 Feb. 1999, the European Court of Justice said:
“51. The fact that the trade mark is used in a reseller’s advertising in such a way that it may give rise to the impression that there is a commercial connection between the reseller and the trade mark proprietor, and in particular that the reseller’s business is affiliated to the trade mark proprietor’s distribution network or that there is a special relationship between the two undertakings, may constitute a legitimate reason within the meaning of Article 7(2) of the directive [for prohibiting the resellers use of the mark].”
It is not necessary to address here other circumstances in which a third-party reseller may be entitled to fair use of a trademark in a domain name. It is sufficient to disapprove Respondent’s claim of fair use here that it has misleadingly asserted an exclusive business relationship with Complainant.
The Panel determines that Complainant has demonstrated that Respondent lacks rights or legitimate interests in the disputed domain name <romanticcondoms.com>.
C. Registered and Used in Bad Faith
As stated above, the Panel will not make a determination regarding whether the disputed domain name <romanticcondom.com> was registered and used in bad faith because it has determined that Complainant failed to prove that Respondent lacks rights or legitimate interests in that name.
The Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of bad faith (Policy, paragraph 4(b)). Among these circumstances are that the domain name has been registered or acquired by a respondent “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 [respondent’s] documented out-of-pocket costs directly related to the domain name” (Id., paragraph 4(b)(i)), and that a respondent “by using the domain name, … [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, sponsorship, affiliation, or endorsement of [respondent’s] web site or location of a product or service on [its] web site or location” (id., paragraph 4(b)(iv)).
Complainant has submitted substantial evidence that Respondent has offered to transfer the disputed domain name <romanticcondoms.com> to Complainant, but only on condition that Respondent be granted, inter alia, a 10 year exclusive distribution agreement for Turkey, which Complainant repeatedly explained was inconsistent with its normal business practices. The demand by Respondent for such a business concession in exchange for transfer of the disputed domain name constitutes an offer to transfer the disputed domain name for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name. In light of the relatively short time between Respondent’s registration of the disputed domain name and its demand of favorable contract terms for its transfer, it is reasonable to conclude that Respondent had the intention to gain leverage with respect to Complainant when it registered that disputed domain name. Such action is evidence of bad faith registration and use within the meaning of Paragraph 4(b)(i) of the Policy.
As discussed in assessment Respondent’s claim of fair use, the disputed domain name directs Internet users to a web site which explicitly and misleadingly claims an affiliation of “exclusive dealer” between Respondent and Complainant. Such misrepresentation for commercial gain creates a likelihood of confusion with Complainant’s mark as to the sponsorship or affiliation of Respondent’s web site. This also constitutes bad faith within the meaning of Paragraph 4(b)(iv) of the Policy.
The Panel determines that Respondent registered and has used the disputed domain name <romanticcondoms.com> in bad faith. Complainant has satisfied all three elements of the Policy necessary for a finding that this disputed domain name should be transferred to it.
For the foregoing reasons regarding the disputed domain name <romanticcondom.com>, the Complaint with respect to that domain name is denied.
For the foregoing reasons regarding the disputed domain name <romanticcondoms.com>, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <romanticcondoms.com>, be transferred to the Complainant.
Frederick M. Abbott
Dated: December 16, 2006
1 Conversion by Panel using http://www.xe.com/ucc/convert.cgi.
2 The photocopy of the certificate of registration in Turkey submitted by Respondent is not entirely clear. It appears that the term “by.” appears before the term “Tasci”. Whether the trademark registered by Respondent is “BY. TASCI ROMANTIC” or “TASCI ROMANTIC” is not material to this proceeding. The Panel will hereafter refer to Respondent’s registered trademark as “TASCI ROMANTIC”.
3 Article 16, TRIPS Agreement, provides in relevant part “In case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed.”