WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kronopol Sp. z o.o v. Lamwood Products (1990) Limited, Levana Schwartz
Case No. D2007-1596
1. The Parties
The Complainant is Kronopol Sp. z o.o., of Poland, represented by Ogilvy Renault LLP, Canada.
The Respondent is Lamwood Products (1990) Limited / Levana Schwartz, of Canada, represented by Lang Michener LLP, Canada.
2. The Domain Name and Registrar
The disputed domain name <kronopol.com> is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2007. On October 31, 2007, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On October 31, 2007, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent (Levana Schwartz) is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 8, 2007. 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 November 9, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 29, 2007. The Response was filed with the Center on November 29, 2007.
The Center appointed James A. Barker as the sole panelist in this matter on December 12, 2007. 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 following facts appear to be uncontested.
The Complainant is one of the world’s largest manufacturers of wood and wood-based products. On November 10, 1994, the Complainant’s sister company registered the international trademark KRONOPOL.
The Respondent (Lamwood Products (1990) Limited, or “Lamwood” for short) is a corporation organized and subsisting under laws of the Province of Ontario, Canada. The Respondent registrant of the disputed domain name (Levana Schwartz) is the President of Lamwood. (The Panel has inferred from this that the registration of the disputed domain name was effected on behalf of Lamwood. The Respondent itself indicates that Lamwood is the beneficial owner of the disputed domain name. As such, references to “the Respondent” in this decision, are to be taken as references to both the named registrant of the disputed domain name and Lamwood.)
The Complainant states that, in 1999, the Respondent (Lamwood) was granted rights to use the KRONOPOL trademark in Canada and the United States of America. Importantly, the Complainant also states that:
“Lamwood was initially entitled to register the disputed domain name, www.kronopol.com. However, as set out below [in the Complaint] the Sale Contract between Kronopol and Lamwood was terminated effective June 29, 2007.”
The disputed domain name was first registered on July 1, 1999. At the date of this decision, it reverted to the Respondent’s own website at “www.lamwood.net” after showing the following message:
“Effective June 29, 2007, Kronopol Marketing will continue to carry on business as Lamwood Products (1990) Limited.
In a few seconds you will be redirected to Lamwood Products’ home page. If your browser does not redirect automatically, please click here.”
5. Parties’ Contentions
The following is summarized from the Complaint.
The Complainant provided evidence from its sister company Kronospan Schweiz AG (a Swiss company) that the Complainant was granted rights to that trademark by its sister company for a period of 20 years until November 9, 2014. The Complainant asserts that, by virtue of that grant from its sister company, it has rights in the KRONOPOL trademark and that the disputed domain name is identical to that mark.
The Complainant also asserts that the Respondent has no rights or legitimate interests in the disputed domain name. Essentially, the Complainant contends that the Respondent is no longer entitled to the disputed domain name because of the termination of the contractual relationship between them. There is currently litigation on foot between the Complainant and Respondent relating to that termination. The Complainant provided evidence of a letter from the Respondent, dated May 18, 2007, in which the Respondent agreed that it would cease using the KRONOPOL trademark on the termination of their contractual relationship.
The Complainant refers to the prior Panel decision in UVA Solar GmbH & Co K.G. v. Mads Kragh, WIPO Case No. D2001-0373. The Complainant contends that, in that case, the Panel held that where a reseller of a manufacturer’s product obtains a right from the manufacturer to use its mark in a domain name, that right comes to an end when the distributorship does. The Complainant states that the facts in this case are similar.
For somewhat similar reasons, the Complainant asserts that the disputed domain name has been registered, and is being used, in bad faith.
The following is summarized from the Response.
The Respondent denies the allegations made in the Complaint. In particular, the Respondent states that Lamwood Products (1990) Limited is not properly the Respondent, since the disputed domain name is registered in the name of Levanna Schwartz. The Respondent also contends that the Panel should use its discretion to terminate this dispute, since it is essentially a contractual dispute between the Complainant and the Respondent.
In relation to the elements under paragraph 4(a) of the Policy, the Respondent questions whether the Complainant has any trademark rights. The Complainant, the Respondent points out, only asserts in the Complaint that it has rights in a “trade name”, and there is in any case some doubt about who is the proper owner of rights in the name “Kronopol”. Documents provided by the Complainant refer to both “Kronspan AG” and “Kronospan Schweiz AG”.
The Respondent states that there is no real dispute that it had a right to register the disputed domain name, and that the real point of dispute is whether the Respondent (Lamwood) was required to transfer the disputed domain name to the Complainant following the termination of their contractual agreement.
The Respondent argues that it has become commonly known to its customers in the United States of America and Canada under the name “Kronopol”. The Respondent provides evidence of a business name registration in that name, as well as invoices, packing slips, a planning schedule, purchase orders, a debit note, stationery and a memo paper, and a photograph of a sign formerly displayed on Lamwood’s warehouse showing its use of the name “Kronopol Marketing”. The Respondent claims that there is nothing in the agreements between the parties that requires the Respondent to transfer the domain name registration.
The Respondent distinguishes the case of UVA Solar GmbH & Co K.G. v. Mads Kragh, WIPO Case No. D2001-0373, referred to by the Complainant. Among other things, the Respondent notes that, in that case, the Complainant did not know about the domain name registration whereas, in this case, the Complainant knew of that registration and use.
The Respondent refers to various cases and the Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy, in support of the principle that the Policy is only intended to permit the disposition of clear abuses, not to resolve legitimate disputes of law such as in this case.
For somewhat similar reasons, the Respondent claims that it has not registered nor used the disputed domain name in bad faith.
6. Discussion and Findings
For the Complaint to succeed, under paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
These three elements are discussed in turn below, immediately following a discussion of two procedural issues raised in this case.
A. Procedural Issues
Two procedural issues arose in this case.
Firstly, on December 6, 2007, the Complainant made a further filing in connection with its case. It is well established in previous Panel decisions that such supplemental filings are not desirable as a rule. Neither the Policy nor the Rules explicitly provide for supplemental filings. A Panel has a discretion to admit or invite further filings under the paragraph 10(a), (b) and (d), and paragraph 12 of the Rules. The Panel found that there was sufficient evidence to make a decision on the basis of the Complaint and Response. As such, the Panel did not consider the supplementary filing.
Secondly, the Respondent claimed that Lamwood is not properly a respondent to this proceeding. It is difficult to see what advantage such an argument is to the Respondent, particularly as the Respondent rests its own rights and legitimate interests in the disputed domain name almost entirely on the activities of Lamwood. Regardless, the Complaint (as amended) properly identifies the registrant of the disputed domain name (Levana Schwartz) as the Respondent. And it is clear in any case, from both parties submissions, that there is a very close connection between the named registrant and Lamwood. (For example, the Respondent refers to Lamwood as being a “family owned business” of which Levana Schwartz is the President and CEO.) For this reason, as noted above under ‘Factual Background’ references in this decision to the Respondent are references to both Lamwood and the named registrant of the disputed domain name.
B. Identical or Confusingly Similar
Rights in a trademark
Under Paragraph 4(a)(i) of the Policy, the Complainant must first establish that it “has rights” in a trademark or service mark. Although there is undesirable ambiguity in the Complaint on this point, the Panel finds that, on balance, the Complainant has established such rights.
As evidence of its rights, the Complainant provides a copy of details of the international registration for the trademark KRONOPOL, provided in the WIPO ROMARIN database. That copy provided by the Complainant appears to date from October 1997. It identifies the owner of the mark as “Kronospan AG”. At the date of this decision, however, the owner is identified as “Kronospan Schweiz AG”. The Complainant provides no explanation of this difference. The Respondent argues that this, and some other slight differences in designation of the Complainant in the Complainant’s correspondence, throw doubt about the ownership of the mark.
However, the Panel has not approached this issue in a pedantic or narrow way, particularly having regard to the expedited nature of these proceedings. It is reasonably clear that “Kronospan Schweiz AG” is the registrant of an international mark for KRONOPOL. It seems reasonable to infer that “Kronospan Schweiz AG” is the same entity in substance as “Kronospan AG” or is a sufficiently related entity.
Another issue raised by the Respondent, and not clearly evidenced by the Complainant, is the nature of the trademark rights of the Complainant – Kronopol Sp. z o.o. As evidence of its rights in the trademark, the Complainant provides a copy of a letter from Kronospan Schweiz AG, confirming that the Complainant “has had the right to use the mark name ‘Kronopol’” since the mark was registered. No detail is given about the nature and duration of those rights granted to the Complainant. The Respondent suggests that there is no evidence that the Complainant has any more than a “bare permission” (that is, a non-exclusive right) to use the mark as opposed to a proprietary interest.
Under paragraph 4(a)(i) of the Policy, it may be established that a complainant “has rights”, for example, by evidence that the Complainant was granted exclusive rights to exploit the mark in a particular field or geographic area. In contrast, a number of previous Panels have denied complaints on the basis that the then complainant could establish only non-exclusive rights in the trademark in question. (See for example, Intermedia Film Equities USA Inc. and AGV Productions, Inc. v. Varietydomains.com, WIPO Case No. D2004-0065.)
The Panel has finds however, from all the facts of this case, that the Complainant “has rights” in a mark for the purpose of paragraph 4(a)(i) of the Policy. It has been established by a number of previous panels that evidence of non-exclusive rights can be sufficient under paragraph 4(a)(i), in circumstances where the licensee is a closely related entity to the trademark owner. (See, for example, Toyota Motor Sales U.S.A. Inc. v. J. Alexis Prods., WIPO Case No. D2003-0624 and other cases cited in the Intermedia Film decision above.). This is such a case. The Complaint describes Kronospan AG as its “sister company”. The Respondent does not appear to dispute that the Complainant and Kronspan AG / Kronospan Schweiz AG are all closely related. It is also notable that the Respondent itself, in entering an agreement for a grant to it of “rights in the Kronopol Trade name”, must have acted on the basis that the Complainant validly had those rights to grant.
For these reasons, the Panel finds that the Complainant “has rights” in a trademark for the purpose of paragraph 4(a)(i) of the Policy.
Identical or confusingly similar
It is well-established that the “.com” extension is to be disregarded for the purpose of determining whether a disputed domain name is identical or confusingly similar. Disregarding that extension, the disputed domain name is textually identical to the KRONOPOL mark.
For these reasons, the Panel finds that the Complainant has established that the disputed domain name is identical to the trademark in which the Complainant has rights.
C. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interest in a disputed domain name, among other circumstances, by showing one of the circumstances in paragraphs 4(c)(i), (ii) or (iii). The Respondent in this case has asserted that the circumstances in both paragraph 4(c)(i) and (ii) are present, being that:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.
That is, if the Respondent establishes any one of these circumstances, or provides other evidence of having a right or legitimate interest in the disputed domain name, the Complaint must fail. The overall onus under the Policy remains on the Complainant to establish that the Respondent has no such rights or legitimate interests.
In the circumstances of this case, Panel finds that the Complainant has failed to discharge this burden. This is because the Respondent has demonstrated an arguable case in relation to establishing both paragraphs 4(c)(i) and (ii) of the Policy.
In relation to paragraph 4(c)(i), there is no dispute that the Respondent legitimately operated under an agreement with the Complainant, which lasted from around 1999 until June 29, 2007. What is in dispute is the existence and nature of any rights in the trademark KRONOPOL that may have continued beyond that date. The parties are also engaged in court proceedings relating to the break down of the contractual relationship between them.
As noted above, the Complainant refers to the previous Panel decision in UVA Solar GmbH & Co K.G. v. Mads Kragh, WIPO Case No. D2001-0373, to support its argument that termination of the contractual arrangement between the Complainant and Respondent rendered illegitimate any right or interest of the Respondent in the disputed domain name. That is, the Complainant argues that any use of the disputed domain name by the Respondent, following the termination of their contractual agreement, could not be bona fide within the meaning of paragraph 4(c)(i) of the Policy. The Panel does not make such a finding for the following reasons.
Firstly, making such a finding necessarily would require a finding about the nature and extent of the contractual agreement that is in dispute, and the subject of court proceedings between the parties. There is no significant evidence about the nature of that agreement in the case file for this case. And the nature of that agreement is obviously the subject of strenuous dispute between the parties. It is not within the scope of the Policy for the Panel to resolve that dispute.
Secondly, the Panel does not accept that the facts of this case are sufficiently similar to the UVA Solar case cited by the Complainant. In that case, the Panel found that the termination of a distributorship resulted in the then respondent losing any rights or legitimate interests in the subject domain name that might have arisen from that distributorship. In that case, it was clear that there was never any agreement between the parties relating to registration of the subject domain name. In this case, it is exactly the scope of such an agreement that is in dispute. To the extent that the Panel in the UVA Solar case made findings about the nature of the agreement between the then parties, those findings appear to have been about aspects of the agreement which were not seriously in dispute.
Thirdly, it follows that the Respondent has an arguable case, under paragraph 4(c)(i), that it made a bona fide offering of goods before notice to it of this dispute. The Respondent provided substantial evidence of conducting business under the name “Kronopol Marketing”. There is no dispute that, over almost the last 7 years, the Respondent has conducted a bona fide business in relation to that mark.
In relation to paragraph 4(c)(ii) of the Policy, and as noted above, the Respondent provided substantial evidence of having traded under the name “Kronopol Marketing”. It might be noted that paragraph 4(c)(ii) requires that the Respondent is “commonly known by the domain name” (emphasis added). On one hand, it might be argued that this implicitly requires a respondent to be commonly known by the whole domain name. On the other hand, it might be argued to be sufficient if a respondent is commonly known by a significant part of the domain name. The latter approach appears to have been followed by a number of previous panels. See for example, John Hayes v. Vaughan Enterprises, WIPO Case No. D2004-0531. In that case, the then panel found that it was sufficient if the domain name formed a part of the then respondent’s business name. This case appears relevantly similar. The disputed domain name <kronopol.com> clearly formed a part of the business name “Kronopol Marketing” used by the Respondent.
Paragraph 4(c)(ii) requires that “you [the Respondent] have been” commonly known by the disputed domain name. The Respondent’s evidence is that it has been commonly known by that name; and so known legitimately for a significant period, at least under its agreement with the Complainant. If the Complainant has been commonly known by that name for a number of years, in both Canada and the United States of America, it seems unlikely that it would cease being so known simply because of the recent termination of its relationship with the Complainant. No doubt, the Complainant would argue that the termination of the agreement means that the Respondent cannot be legitimately known by that name thereafter. But paragraph 4(c)(ii) relates only to a circumstances of fact (whether the Respondent has been commonly known by the name). The Complainant’s argument however relates to an issue of law (whether the Respondent may validly be known by that name). While some panels have been prepared to accept that a name adopted with mala fide intent would not meet the criteria under paragraph 4(c)(ii) (see Palm, Inc. v. South China House of Technology Consultants Ltd., WIPO Case No. D2000-1492), this does not appear to be such a case.
Fourthly, and as noted by the Respondent, the purpose of the Policy is limited to dealing with cases of cybersquatting. The Complainant’s argument in relation to paragraph 4(a)(ii) of the Policy rests, however, on the finding that the Respondent lacks rights or legitimate interests because of the valid termination of an agreement, and related trademark licenses and possible infringement, the scope of which remains in dispute between the parties. Such a dispute is more suited to court proceedings.
For all these reasons, the Panel finds that the Complainant has failed to establish that the Respondent lacks rights and legitimate interests in the disputed domain name.
D. Registered and Used in Bad Faith
Because of the Panel’s finding above, it is strictly unnecessary for the Panel to make a determination as to bad faith.
However, for similar reasons set out above in relation to the Respondent’s rights or legitimate interests, the Panel would not find that the disputed domain name has been registered and used in bad faith. In particular, the Panel would be reluctant to find that the registration of the disputed domain name was done in bad faith, in circumstances where that registration of the disputed domain name was done with the support of the Complainant with whom the Respondent was in a business relationship. A similar approach was followed in Urbani Tartufi s.n.c. v. Urbani U.S.A., WIPO Case No. D2003-0090 (cited by the Respondent); and Western Holdings, LLC v. JPC Enterprise, LLC d/b/a Cutting Edge Fitness and d/b/a Strivectin SD Sales & Distribution, WIPO Case No. D2004-0427).
The Panel notes that this decision does not prejudice the right of either party in relation to court proceedings to settle the matter in dispute between them. The Panel does not express a view about the merits of the contractual dispute between the parties. As noted above, this is not a dispute within the scope of the Policy to resolve.
For these reasons, the Panel finds that the Complainant has not established this third element of the Policy.
For all the foregoing reasons, the Complaint is denied.
James A. Barker
Dated: December 26, 2007