The Complainant is VIPA Gesellschaft für Visualisierung und Prozessautomatisierung mbH of Herzogenaurach, Federal Republic of Germany, represented by Kanzlei Dr. Bahr of the Federal Republic of Germany.
The Respondent is Visual Production Analysts Ltd of Altrincham, Cheshire, United Kingdom of Great Britain and Ireland.
The disputed Domain Name <vipa.com> is registered with Network Solutions, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 25, 2008. On September 26, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 26, 2008, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 1, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 21, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 22, 2008.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on October 30, 2008. 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.
The Complainant is a limited liability company organized under German law and headquartered near Erlangen in Bavaria. The Complainant provides automation engineering and control devices and software, specializing in programmable logic controllers (PLCs) that connect with sensors and actuators to control, for example, machinery on factory assembly lines.
The Complainant has subsidiaries or affiliates in the United Kingdom (VIPA Limited), Austria, Croatia, Denmark, France, Hungary, Italy, The Netherlands, Spain, the United States of America, Australia, China, India, Indonesia, Malaysia, Philippines, Singapore, and Vietnam, all bearing the name VIPA. Independent distributors also sell the Complainant's products in a score of other European countries and in Latin America, Asia, and the Middle East.
The Complainant operates a website at “www.vipa.de” (the “Complainant's website”), with versions in German, English, and French. On the “Career” page of its website, the Complainant characterizes itself as a “medium-sized company in the field of automation”.
The Complainant uses the trademark VIPA internationally. The Complainant holds two German trademark registrations, numbers 397 57 330 (registered on April 4, 1998) and 397 06 515 (registered on May 12, 1998) for the word VIPA. In addition, the Complainant obtained an international registration of the standard-character mark VIPA from the World Intellectual Property Organization (registration number 701 154) on May 12, 1998. The international registration shows the basic registration in Germany and lists designations under the Madrid Agreement for Austria, Benelux, China, Democratic People's Republic of Korea, France, Italy, Portugal, Spain, and Switzerland, as well as designations under the Madrid Protocol for Denmark, Finland, Norway, Sweden, and the United Kingdom.
According to Company Register records furnished by the Complainant, the Respondent is a private limited company incorporated in the United Kingdom in 1988, with its registered office in Cheadle, Cheshire, United Kingdom. The Respondent registered the Domain Name on September 13, 1997. The Registrar's current WHOIS database lists a postal address for the Respondent in Timperley, Cheshire, United Kingdom, with Noel Kelly of London as the administrative and technical contact. Mr. Kelly's email address is in the domain <tarsus.co.uk>.
The Domain Name does not currently resolve to a website, and there are no archived versions of a website associated with the Domain Name available through the Internet Archive Wayback Machine at “www.archive.org”.
Counsel for the Complainant sent a letter to the Respondent on August 25, 2008 asserting trademark infringement and demanding transfer of the Domain Name, noting that the Domain Name did not appear to be in active use. There was no reply to the letter. The Complainant's representative called the telephone number listed in the WHOIS database and was told that Noel Kelly, who is listed as the administrative and technical contact for the Domain Name, was not employed there. A fax to the Tarsus Group (an avenue suggested by Mr. Kelly's email address in the WHOIS database) elicited no reply. This Complaint followed.
In response to the Center's notice of the Complaint, however, Noel Kelly sent an email dated October 2, 2008 asking the Center to direct correspondence to Rupert Kelly, “the owner of this domain.” The Center asked for further information and received an email from Rupert Kelly, providing his contact details at Visual Production Analysts Ltd, the Respondent. Noel Kelly also reported to the Center that he is only the technical contact for the Domain Name but could not update the WHOIS record because it is in “legal lock” due to the current UDRP proceeding.
On October 5, 2008, the Respondent sent the Center a copy of the Respondent's “recent” letter to the Complainant offering to settle the dispute by selling the Domain Name to the Complainant for €4,250, as a contribution to website redesign costs. The Respondent's letter, signed by Rupert Kelly as Director, states that the Respondent has been trading as “ViPA Ltd” since 1988 and has used the Domain Name since 1997 as an email domain for employees and associates of the Respondent. The letter reports that the Domain Name was also used for a company website until October 2004, when it was taken down for redesign to reflect the Respondent's new businesses as a media delivery consultancy and a high-definition television systems integrator. The Respondent characterizes this project as an “unfinished streaming media gateway/portal” to be used with the Domain Name.
The Center has not been notified of any subsequent agreement to settle the dispute, and the Respondent did not submit a Response in this proceeding.
The Complainant argues that the Domain Name is identical or confusingly similar to its VIPA trademark and that the Respondent has no rights or legitimate interests in the Domain Name.
The Complainant argues that the Respondent registered the Domain Name “with malign bad faith”, as it is identical to a registered international brand of which the Respondent had knowledge “in a legal sense”. The Complainant also cites Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (which described a “passive holding” form of bad faith). The Complainant also cites as evidence of bad faith the Respondent's failure to maintain updated contact information in the WHOIS registry and its non-responsiveness to the Complainant's attempts to contact the Respondent and raise trademark infringement concerns.
The Respondent did not reply to the Complainant's contentions.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of a disputed domain name, the Complainant must demonstrate each of the following:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules,
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
The Complainant unquestionably holds registered trademarks for VIPA. Disregarding the nondistinctive top-level domain name “.com”, which is a necessary part of the Internet address, the Domain Name is identical to the Complainant's mark.
Thus, the Complainant has established the first element of the Policy.
The Respondent does not claim a relationship with the Complainant or dispute the Complainant's assertion that it has not authorized the Respondent to use its VIPA mark. This establishes the Complainant's prima facie case on the second element of the Complaint, and the burden shifts to the Respondent to produce evidence of its rights or legitimate interests under paragraph 4(c) of the Policy. See Admiral Insurance Services Limited v. Mr. Adam Dicker, WIPO Case No. D2005-0241; Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited, WIPO Case No. D2004-0753. The Respondent has not done so.
The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which the Respondent could demonstrate rights or legitimate interests in the Domain Names:
“(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.”
The Respondent has not come forward with a Response in this proceeding. The Respondent's recent letter making a settlement proposal to the Complainant suggested that the Respondent has been trading under the name “ViPA Ltd” since 1988 but offers no evidence of this. The Respondent's letter reported its use of the Domain Name for email addresses (which is apparent from email correspondence with the Center), its former use of the Domain Name for a company website, and its plans to mount a redesigned company website and portal using the Domain Name. Otherwise, there is no evidence in the record sufficient to affirmatively establish rights or legitimate interests within one of the safe harbors in paragraph 4(c) of the Policy.
The Panel does not find the unsupported and unattested statements in the recent settlement letter sufficient to establish the Respondent's rights or legitimate interests in the Domain Name. In the absence of a Response and evidence, the Panel finds that the second element of the Policy is sustained. However, for the reasons discussed below, the Complaint fails under bad faith.
The Complainant relies first on the “passive holding” doctrine widely accepted by UDRP panels following Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, inferring bad faith from the Respondent's registration of a Domain Name identical or confusingly similar to a registered mark, even though the Domain Name has not been used. This is not entirely apposite in this case, since the Domain Name has apparently been used as a company email domain and, according to the Respondent, was also used for a time as a company website.
In any event, the Telstra holding relied on the fact that by the time the domain name at issue was registered; TELSTRA was a well-known, registered mark in Australia, where the Respondent was located. The Panel in that proceeding found that the mark was so distinctive and well established that “it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate.”
That is simply not the case here. The Domain Name was registered in England in September 1997, by an English company with similar initials that had apparently (at least according to documentary evidence provided by the Complainant, as discussed above under Factual Background) been in business for nearly a decade. The Complainant, in Germany, did not register the VIPA trademark until the next year, in April 1998. The international registration was then issued in May 1998, expressly designating the United Kingdom on the basis of a “declaration of intention to use the mark”. Thus, the available record indicates that the Complainant's VIPA mark was not registered anywhere at the time the Respondent registered the Domain Name, and moreover that it was not even used as an unregistered mark in the United Kingdom, where the Respondent is located, at the time of the Domain Name registration. The Panel could not, in these circumstances, reach the same conclusion as in Telstra.
The chronology also entirely undermines the Complainant's argument that the Respondent had constructive or “legal” notice of its registered mark. Most UDRP panels have declined to apply the principle of constructive notice to Policy proceedings (especially with respect to parties outside the United States of America, where the constructive notice doctrine appears in trademark legislation and jurisprudence). See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, section 3.4 (available at <http://www.wipo.int/amc/en/domains/search/overview/>). But the principle could not apply here, where there was no registered mark at the time the Respondent registered the Domain Name.
Paragraph 4(a)(iii) of the Policy requires the Complainant to establish that “the domain name has been registered and is being used in bad faith”. Thus, it expressly concerns the Respondent's likely intentions at the time of registration as well as subsequently, and there can be no finding of bad faith under the Policy unless there is evidence from which it can be inferred that the Respondent had an actual mark (or, in certain limited circumstances, a known prospective mark) in contemplation when it registered the Domain Name. See, e.g., Kooks Custom Headers, Inc. v. Global DNS, LLC, WIPO Case No. D2008-0233; Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827; ExecuJet Holdings Ltd. v. Air Alpha America, Inc., WIPO Case No. D2002-0669.
The Complainant has offered no evidence of the Respondent's actual knowledge of the VIPA mark at the time it registered the Domain Name, and the Respondent's subsequent behavior does not imply such knowledge. The mark was not registered at the time, and it does not appear that it had been used as an unregistered mark in the United Kingdom. There is also no evidence suggesting that the Respondent had actual knowledge of the Complainant's unregistered mark in Germany or elsewhere.
The Complainant's additional arguments for bad faith based on allegations of incorrect registration details and unresponsiveness are, therefore, immaterial.
The Panel concludes that the Complainant has failed to establish the third element of the Policy.
For all the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Dated: November 13, 2008