The Complainant is Eddy Merckx Rijwielen-Cycles NV of Belgium, represented by Crowell & Moring, LLP of Belgium.
The Respondent is City Cycle, Inc. of United States of America.
The disputed domain name <merckx.com> is registered with Network Solutions, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 19, 2009. On January 20, 2009, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name.
On January 21, 2009, Network Solutions, LLC transmitted by email to the Center its verification response which provided different address and contact details for the Respondent to the contact information identified in the Complaint. The Center sent an email communication to the Complainant on January 22, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 26, 2009. Apart from the address and contact details, Network Solutions confirmed that:
(a) the disputed domain name was registered with it;
(b) the language of the registration agreement was English; and
(c) the registration of the disputed domain name had been locked pending resolution of the proceeding.
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” or “UDRP”), 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 February 2, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 22, 2009. The informal Responses were filed with the Center on January 22, 2009 and January 26, 2009.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on March 5, 2009. 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 manufacturer and seller of bicycles and components and accessories for bicycles. Its name and business is associated with the famous cyclist of the same name.
The Respondent is an on-line bicycle shop located in the United States of America, operating from a website at the domain name <competitivecyclist.com>. It registered the disputed domain name on December 26, 2004.
It has sold bicycles made by, or made from components made by, the Complainant at some point in the past. In doing so, it would appear to have dealt with a wholesaler in the United States of America. The disputed domain name resolves, via redirection to several webpages showing pictures of complete bikes that the Respondent has sold which have been made by the Complainant or from the Complainant's branded products.
After the Complaint was filed, the Respondent wrote to the Complainant's representatives suggesting that it would be willing to sell the domain name to the Complainant “for a reasonable price, or otherwise work out a solution.” In response to a request “What is the solution you propose”, the Respondent stated that its solution was “to sell the domain for a reasonable fee.” The communication went on to state that, while the Respondent was not sure of the value of the domain name, a “Value Assessment Tool” on the Registrar's website valued the domain name at USD25,000.00.” When asked if that was the price proposed, the Respondent confirmed it would accept that amount.
Under paragraph 4(a) of the Policy, the Complainant has the burden of proof in respect of the following three elements:
(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.
The Panel considers each of these factors in turn.
There are two parts to this inquiry: does the Complainant have trademark rights in a sign and, if so, is the disputed domain name identical or confusingly similar to that mark?
The Complainant relies on:
(1) a Benelux trademark registration for MERCKX, registered on December 10, 2008;
(2) Benelux and International Trademark registrations for word and figurative versions of EDDIE MERCKX covering bicycles and sports clothing which date, in the case of the Benelux registrations, from 1981; and
(3) use of the trademarks EDDIE MERCKX on, particularly, racing cycles for 27 years and MERCKX for “many years”.
The disputed domain name is, apart from the functional gTLD, .com, identical to the trademark rights for MERCKX alone. As the Complainant points out, the fact that the registrations (at least) were secured after the disputed domain name is not disentitling on this part of the inquiry.
As MERCKX is a substantial and distinctive component of the word and figurative marks for EDDIE MERCKX, the Panel also finds that the disputed domain name is confusingly similar to those marks. The Respondent does not seriously contend to the contrary. Indeed, the nature of its use depends very significantly on people making a link between the disputed domain name and the Complainant's trademarks
Accordingly, the Panel finds that this requirement has been satisfied.
The second factor that the Complainant is required to establish is that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) sets out three non-exhaustive examples of rights or legitimate interests for the purposes of the Policy. They are:
(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.
In view of the difficulty in disproving a negative, the Complainant must adduce sufficient material to raise a prima facie case under this factor and then, if that is established, an evidential burden shifts to the Respondent to rebut that prima facie case. For convenience the Panel refers only to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview”) paragraph 2.1.
The Complainant points out that the disputed domain name is not the same as nor derived from the Respondent's own name or trademarks. It states that it has never (before the Complaint was served) had any contact with the Respondent and, by inference, that it has not authorized the Respondent to use its trademarks or to register them (or anything confusingly similar).
The Respondent's position is that it is “a former high-profile” dealer in EDDY MERCKX bicycles in the United States of America and continues to retail EDDY MERCKX products. Accordingly, it contends it is perfectly entitled to register and use the domain name.
Some elaboration is required. It would appear from the Respondent's communications that it acquired the Complainant's bicycles, or bike components, from the Complainant's US importer, rather than directly from the Complainant. Accordingly, the Complainant's claim that it has never been in contact with the Respondent is not necessarily incorrect. Secondly, the evidence in the case is that the only EDDY MERCKX brand product currently offered for sale from the Respondent's website is a particular short sleeved jersey.
The WIPO Overview has identified two main approaches to resellers which register domain names related to brands they sell.1 The minority view considers that this is not justified unless the registration is effected with the trademark owner's position. The majority view, however, based on cases such as Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 has been fairly summarized in paragraph 2.3 of the WIPO Overview:
“A reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements. These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site accurately disclosing the registrant's relationship with the trademark owner. The respondent must also not try to corner the market in domain names that reflect the trademark”.
These principles have been accepted as applicable also in the case of an unauthorized reseller in cases such as Volvo Trademark Holding AB v. Auto Shivuk, WIPO Case No. D2005-0447 and ITT Manufacturing Enterprises, Inc., and ITT Corporation v. Douglas Nicoll, Differential Pressure Instruments Inc., WIPO Case No. D2008-0936.
As noted above, when the Complaint was filed, the Respondent was offering for sale a short sleeve jersey sourced from the Complainant. The Respondent no longer sells bikes made from the Complainant's products (although the Respondent states it may do so in the future). At the time the Panel's decision was prepared, a person who clicked on the links associated with the photographs of the Complainant's branded bicycles that the Respondent has sold was presented with a dialog box. The dialog box is headed with the URL of the Respondent's website (not the disputed domain name) and the following text:
“You have clicked on an invalid or obsolete link. The brands of bikes that we currently offer are listed on this page”.
The browser is then re-directed to a page on the Respondent's website which listed the following brands: BMC, Cervélo, Pegoretti, Pinarello, Ridley and Wilier. These are all competitors of the Complainant.
In these circumstances, the Panel finds that the Respondent does not have rights or legitimate interests in the domain name. The approach adopted in the line of cases of which Oki-data is a well-known example is seeking to balance, within the context of the Policy, the need to permit non-trademark owners to use trademarks in a fair manner while at the same time precluding persons not authorized by the trademark owner from taking unfair advantage of the trademark e.g. by taking a free ride on the trademark or a reputation or goodwill which may have been developed from use of the trademark.
The sale only of a single product a short sleeved cycling jersey, an accessory at that, from a website in a context where the other products offered for sale from the website including, in particular, bicycles and bicycle frames of the Complainant's direct competitors is too slender a foundation to constitute a bona fide offering of the actual goods. In this context, the key considerations are that the Respondent is not offering the Complainant's products (other than the single short sleeve jersey product) at all.
That is, while the Respondent's website to which the disputed domain name is redirected accurately displays products made by, or from components of, the Complainant, the browser cannot buy such products and is redirected to brands which are in direct competition with the Complainant.
Accordingly, the Panel finds that the Complainant has satisfied the second requirement.
The third requirement that the Complainant must demonstrate to succeed is that the disputed domain name has been registered and used in bad faith. In connection with this factor, paragraph 4(b) of the Policy provides:
“For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
As the terms of the paragraph make clear, these are examples only and not an exhaustive enumeration of the circumstances in which registration and use in bad faith are found.
The Respondent makes no bones that it was well aware of the Complainant's trademarks and the reknown of, at least, the EDDY MERCKX brand when the disputed domain name was registered. Rather, as discussed above, the Respondent contends its use of the domain name is perfectly legitimate.
The disputed domain name, by redirection, resolves to a webpage on which products made by, or from components of, the Complainant are displayed. As already noted, however, such products are no longer available. On ascertaining this, a browser may well then explore the other, directly competing products on offer on the website. In fact, clicking on links associated with the photographs of the Complainant's products automatically brings those directly competing products to the browser's attention. The Panel is satisfied that this is use of the domain name in bad faith akin to the conduct proscribed in paragraph 4(b)(iv) of the Policy above.
It is not sufficient, however, for the Complainant to demonstrate only use in bad faith. The domain name must also have been registered in bad faith.
It is clear that the Respondent registered the domain name because of the association it would immediately suggest to many in the cycling world. It is also clear that the Respondent did so without permission from the Complainant. It is not clear from the record whether or not the Respondent was still dealing in the Complainant's bicycles when the disputed domain name was registered. As this was a fact peculiarly within the Respondent's knowledge, the Complainant never having dealt with the Respondent, the Respondent's failure to address this point directly may allow an inference to be drawn that the domain name was registered at a later date. Even if it were not, however, it seems highly likely from the Respondent's website that it was also dealing at the time in a wide range of directly competing products. On at least some of the applications of the Oki Data case, supra, that would be sufficient for a finding of bad faith.
In the circumstances, the Panel considers that, as an unauthorized user of the Complainant's trademark, it fell to the Respondent to explain clearly and fully the circumstances when it registered the domain name including its intentions at that time and what steps, if any, it had taken to prevent unfair use of the Complainant's trademarks. The Respondent has failed to do that. Rather, as already noted, the Respondent has evinced a willingness to sell the domain name to the Complainant for a sum far in excess of the Respondent's out of pocket expenses in registering the domain name. Accordingly, the Panel infers, on the record in this case, that the disputed domain name was registered in bad faith.
Accordingly, the Complainant has successfully established this requirement.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <merckx.com> be transferred to the Complainant.
Warwick A. Rothnie
Dated: March 20, 2009
1 See also David Lindsay, International Domain Name Law: ICANN and the UDRP, (Hart Publishing, Oxford, 2007), 306 16.