The Complainant is Mewa Textil-Service AG & Co. Management OHG of Wiesbaden, Germany, represented by Luther Rechtsanwaltsgesellschaft mbH, Germany.
The First Respondent is Yeoh.com/Mr. Yeoh Kok Cheow, Singapore. The Second Respondent is Mr. Yeoh Kok Jin, Malaysia, both represented by PC KOK & Co., Malaysia.
The disputed domain name <mewa.com> is registered with Network Solutions, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 18, 2009. On February 18, 2009, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On February 18, 2009, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the First Respondent is listed as the registrant and provided the contact details for the administrative, billing, and technical contact. 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 Respondents of the Complaint, and the proceedings commenced on February 26, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 18, 2009. The Center received numerous email delivery failure notices and the Complaint was sent again by email in batches of four, and by fax and courier.
On March 9, 2009, Mr. Alex Kok on behalf of the Respondent requested an extension of time of two weeks from March 19, 2009 for the Respondent to compile and submit its supporting evidentiary materials. On March 9, 2009 the Center requested the Complainant to comment by March 12, 2009 on the Respondent's request of extension of time. The Center also asked Mr. Alex Kok, the sender of the extension of time request, to clarify whether he will be formally representing the Respondent in this action, e.g., pursuant to the Rules, paragraph 5(b)(ii).
On March 10, 2009, Mr. Alex Kok confirmed that he would be formally representing the Respondent in the present proceedings and provided his contact details. The Complainant did not object to the extension of time request and the Center granted the extension request to April 2, 2009.
The Center appointed Linda Chang as a sole panelist in this matter on April 7, 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.
Given the complexity of the case and the parties' contentions, the Panel found it needed more time to review the case file. The Center notified the parties of the extended decision date on April 21, 2009 and June 3, 2009 respectively. The Panel, as the case required, subsequently issued Panel Order 1 and Panel Order 2 requesting the Respondent to clarify a few points as stated in the Response. The Center forwarded these Orders to the Parties on April 29, 2009 and June 8, 2009 respectively. The parties have duly submitted their communications concerning these Orders to the Center.
The Complainant is Mewa Textil-Service AG & Co Management OHG, a company incorporated in Germany and having its principal place of business in Wiesbaden, Germany, with business operations in numerous countries including Austria, Belgium, the Czech Republic, Germany, France, Hungary, Italy, the Netherlands, Poland, Slovakia, Spain and Switzerland.
The Respondents are brothers and the first Respondent registered the domain name in dispute in 1997.
The Complainant contends that it is the international known expert partner for textile services in different industries operating with 41 locations. The Complainant has been using the name MEWA as its company name and as a trade mark for its products and services since 1908. The MEWA trade mark has been applied for and registered as trade marks by the Complainant in various jurisdictions and on an international level, amongst others in Austria, Belgium, the Czech Republic, Germany, France, Hungary, Italy, the Netherlands, Poland, Slovakia, Spain and Switzerland. In particular, the Complainant has International Registrations for MEWA registered on February 25, 1957, June 22, 1992, February 4, 1993, December 3, 1993, January 12, 1995 and July 11, 2000. The Complainant also has German Registrations for MEWA registered May 27, 1992 and December 1, 1995, Community Trade Mark Registrations as well as applications for registration in the People's Republic of China, Singapore and the United States of America.
The Complainant operates various websites including, among others “www.mewa.be”, “www.mewa.cz”, “www.mewa.de”, “www.mewa.es”, “www.mewa.fr”, “www.mewa.it”, “www.mewa.at”, “www.mewa.hu”, “www.mewa-service.nl”, “www.mewa-service.pl”, “www.mewa-service.ch”, “www.mewa-service.com” and has advertised and promoted the MEWA marks across many sites on the Internet.
The Complainant also owns the following domain names that consist of the MEWA trade marks. The domain names include, but are not limited to, the following:
The Complainant contends that the Respondents are using an identical sign as part of the domain name.
The Complainant states that the domain name has not been used for any legitimate purpose. The registered Respondent does/did not offer any products or services in its own name under the domain name <mewa.com>. The domain name is registered for Yeoh.com and the website Yeoh.com was originally registered for BRAVO!Marketing located in San Francisco, California.
The Complainant contends that the Respondents made it difficult to contact them for any issues surrounding the domain name by not revealing his actually identity and by only referring to further websites.
The Complainant contends that during a period of two years (i.e., since at least April 2006 until mid 2008), the domain name <mewa.com> was not used to provide any content. When visiting the website on April 10, 2007 the user received the information that the account had been suspended and from April 2007 on the website was redirected to the website “www.drw.net”. Since September 2007 until recently all the contents were deleted from the website “www.mewa.com” and could not be accessed at all. In addition the website “www.Yeoh.com” did not show any content at all during the period December 2006 until February 2008 at least.
The Complainant contends that the domain name in dispute has not been used for any other legitimate purpose, neither by the other Respondent nor any other party.
The registered Respondent asserted that the domain name is owned by his brother, but the purported owner has never been registered as owner of the domain name. In addition, the registered Respondent has not produced any evidence of any purported ownership of the domain name by somebody else or any transfer in that regard nor any details concerning beneficiary ownership. The registered Respondent actually confirmed to the web agency of the Complainant in January 2007 that the website was no longer active and that it was now part of a cobwebpresence. Therefore in May 2007 the Complainant sent a letter informing the registered Respondent of the Complainant's rights and asking the registered Respondent to transfer the domain name to the Complainant. The registered Respondent did confirm receipt of such letter by email on July 4, 2007. When the Complainant did not receive any further answers to this letter, its legal counsel informed both Respondents by letter dated April 17, 2008 about the conflicting rights and submitted an offer to purchase the domain name for USD 5,000 (plus expenses the Registered Respondent might have incurred). The Respondent rejected the offer as being too low and the Complainant increased the offer by letter dated May 13, 2008 to EUR 7,500. By email of May 29, 2008, the Respondents requested a price of EUR 100,000 for the transfer of the domain name which the Complainant rejected as it was being too high.
Counsel for the Complainant tried once again to reach a settlement with the Respondents without success. Once the negotiations between the Complainant and the Respondents about a potential transfer of the domain names had been initiated and broken off, the contact details of the domain name were corrected and the domain name was activated by the registered Respondent for a glass trading business. The Complainant contends that this strongly supports the conclusion that the only purpose of launching the website was to increase the price for a potential domain name transfer.
The Complainant contends that any past and future use of the domain name by such purported owner therefore cannot be considered legitimate use. The registered owner had relinquished the domain name and did not provide any content under the domain name. The Respondents in effect confirmed that it was inactive and that it was only used for a cobwebpresence with no content at all to be provided.
The Complainant contends that no active use of the domain name is a factor that supports the allegation that the domain name is registered and used in bad faith. It states that the Respondents during the past years (until most recently) have not made any active use of the domain name. The Respondent had not operated any active website at “www.mewa.com” and the Complainant cites various cases in support of the assertion that inactivity can constitute use in bad faith.
The Domain name has not been used to offer own products or services by the registered Respondent. During the past years web visitors were redirected to a website “www.drw.net”. The Complainant asserts and cites cases in support of the assertion that where a domain name is only used to link to another website this does not constitute legitimate use, as the Respondents did not contribute any added value to the Internet by simply re-directing users to other sites.
The registered Respondent actually admitted that the website under the domain name <mewa.com> was no longer active and in April 2007 users were informed that the account was suspended.
The Complainant contends that assertion by the registered Respondent that the domain name has been transferred to his brother who allegedly operates a glass trading business cannot constitute active use. The Complainant cites cases that support the fact that a mere assertion that a Respondent intends to use the domain name does not establish such use. In NAF Claim No. FA 243507 it actually states that the Respondents inaction and passive holding of the website over a period of three years was evidence of illegitimate purpose and bad faith.
The Complainant states that it is recognized that use in bad faith is not confined to the time of registration. Use of the disputed domain name in bad faith can also occur after registration. The Complainant contends that when a domain name has definitely been relinquished by an owner it must be considered use in bad faith if afterwards such use is only provoked by a demonstration of interests of the trade mark owner in the domain name.
The Complainant contends that such lack of any legitimate, good faith use suggest bad faith.
The Complainant contends that the Respondent provided misleading contact details and made it nearly impossible to identify the correct owner of the website/domain name. Only due to extensive research efforts of the Complainant could it identify the brother of the registered Respondent with an address in Malaysia. The Complainant was at no stage of the proceeding able to communicate directly with the alleged owner.
The Complainant states that is has been confirmed in various decisions that it constitutes bad faith if the Respondent conceals his identity or makes it difficult to locate him for the purpose of lawfully pursuing the domain name.
The Complainant contends that the Respondents' failure to voluntarily transfer the disputed domain name is an additional factor in support of the Respondents' bad faith, as failure to positively respond to a complainant's efforts to make contact is a clear indication of bad faith registration and use in accordance with case law.
The Complainant contends that the Respondents' request of EUR 100,000 for the transfer of the domain name considerably exceeds the value of the domain name so that such offer had been refuted by the Complainant.
The Complainant contends that another factor is the use of its entire mark in the disputed domain name, thereby making it difficult to infer a legitimate use of the disputed domain name by the Respondent. In previous WIPO UDRP decisions bad faith has been inferred because the domain name included the Complainants entire trade mark.
The Complainant has adduced evidence to show that it is the registered owner of the MEWA mark in numerous countries and that it has rights in the mark. The Complainant contends that the Respondents' domain name incorporates the entirety of the Complainants trade mark, namely, MEWA.
The Complainant contends that another factor to support a finding of bad faith is the Respondents' knowledge of the Complainants rights. The Respondents registered the disputed domain name and reactivated the website “www.mewa.com” long after the Complainant adopted the business name and several MEWA marks. Internet searches would have revealed the business activities of the Complainant. In particular, search engines where the Complainant is listed with its activities show that that Complainant is active on an international scale, irrespective of whether the Complainant did or did not have registered trade marks within the Asian market at the time of registering the domain name. Due to the Complainants international activities the Respondent could have been aware of the Complainants rights in MEWA.
The Complainant contends that the knowledge when reactivating the domain name has to be considered to be equivalent to the knowledge when registering the domain name. Otherwise the legitimate trade mark owner would remain defenceless against abusive practices when enforcing its rights and demonstrating interest in the domain name.
The Complainant contends that the evidence establishes a) inaction by the Respondents in use of the domain name to post any content on the Internet for the past years for any legitimate purpose; b) constructive knowledge of the Complainant's trade mark by the Respondents when registering and later re-activating the website under the disputed domain name; c) Respondents' failure to positively respond to the Complainant's initial request for transfer; and d) the use of the Complainant's entire mark after constructive notice of the Complainant's rights. Based upon the evidence, Complainant holds that there are sufficient facts to support a finding that the domain name was registered and used in bad faith pursuant to the Policy paragraph 4(a)(iii).
The Respondents contends that it has no knowledge of the existence/registration of the Complainant's trade marks or other domain names as the Complainant did not have an active website presence until 2003, while the Respondents' domain name was registered on July 24, 1997. The Respondents contend that ownership of a registered trade mark, by Complainant, does not necessarily create rights and refer to a former WIPO UDRP decision in support of its claim.
The Respondent states that the Complainant has no trade marks within Asia, including Malaysia and states that the Complainant's trade mark registrations post date the Respondents' domain name registration and in addition these registrations are for textile related goods/services and have no connection to the Respondents' custom-framing business.
The Respondents claim that they have common law rights in the name by virtue of their business registration in 1994 and their continuous use since 1998 to the present time. The Respondents claim that “Mewa” is commonly known/associated with the Respondents due to their 12 years extensive use and the substantial goodwill/reputation it has acquired in the name during this period.
The Respondents assert that there can be no confusion as their business is totally different from the Complainant's business and that neither party has indulged in the business activities/services of the other.
The Respondents claim that it would be cumbersome to show all their sales documents which totalled thousands, but have adduced some random copies of sales/trading documents.
The Respondents contend that “Mewa” is not solely distinctive of/identifiable with the Complainant since Internet searches on popular search engines (Google and Yahoo!) show the same is used by hundreds if not tens of thousands of people unconnected to the Complainant. In the Complainant's own country Germany, “Mewa” is not distinctive of the Complainant as another separate legal entity also uses the same word.
The Respondents argue that they have rights or legitimate interests in the disputed domain name based on the following reasons:
1. Mewa was created from the middle name of the Respondents' mother (马美香 or Ma Me Xiang (romanized version)) in Chinese Mandarin language or Beh Bi Yeang in local Chinese TeoChew dialect (Respondents' mother-tongue). Respondents' mother's name was registered (national identity) in her TeoChew local Chinese dialect. Chinese characters used for Chinese Mandarin language and TeoChew local dialect are the same. Since the Mewa business is “to beautify one's memories through artistic framing of photographs/pictures”, the Second Respondent combines the official Chinese Mandarin word “Me” (美) (meaning “to beautify”) with the word “wa” (化). This combination Mewa (美化) in Chinese means to beautify something and the Respondents adduce evidence of their mother's name.
2. Mewa was born and used since 1994 until the present time. The Second Respondent bought a shop lot for its Mewa Business in 1995. In 1996 the First Respondent joined Bravo! Marketing in San Francisco as a graphic designer and, knowing the Second Respondent was serious in its business interest in Mewa, helped create the virtual presence. Since the Second Respondent was not computer literate, he entrusted the registration, setting up/maintenance of the domain name/website to the First Respondent. The First Respondent was informed that he needed a company letterhead to register the domain name and as he was working at Bravo! and for the sake of convenience he registered the domain name in the name of Bravo!'s name which provided the letterhead. The domain name was subsequently transferred to the First Respondent when he left Bravo! in 2000 and became a teaching assistant with Texas Tech University.
3. The First Respondent joined Mewa Business on August 3 1998 but left in 2001 to concentrate on teaching.
4. The Second Respondent was unable to convince the First Respondent to return as he was busy with teaching and university studies and it was agreed that each Respondent would hold 50% of the equity in the Mewa Business which included the domain name and the Respondents co-owned the domain name as partners.
5. The business is a genuine business having being audited by Malaysia Royal Customs & Excise Department granted licensing exemptions to the Respondents. Mewa also spent money to purchase its business vehicle in 1999 and fire insurances for its premises located in Malaysia.
6. The Respondents actively/substantially continue to use the domain name in connection with bona fide offering of goods and services. These uses are legitimate, bona fide and have been made since 1998.
7. The Respondents adduce evidence of its website pages in 1998 through to 2006.
8. Mewa Business existed since 1994 and never stopped business. In 1999 and 2003 it received orders from customer in the United States and client-acknowledgements.
9. The Respondents are commonly known by Mewa at least for customer framing services/products and possesses the right/legitimate interest to use Mewa, which is a variation/abbreviation of its registered business name since 1994.
10. There is no difficulty in contacting the Respondent. The Complainant successfully reached the Respondents through email on January 2007 and the Respondent also had receipt of the Center's notification for this proceeding.
11. In 2005 the Respondents renewed the domain name with webhosting agent drw.net. From 2006-2008 the First Respondent suffered severe work-related stress/problems which caused the domain name renewal/website to be temporarily neglected, but the actual business of Mewa Business continued.
12. The Respondents were entitled to reject the Complainants unreasonable purchase offer for a business in existence for 12-15 years. The Respondents made this fact known to the Complainant and the fact that USD 5,000 or EUR 7,500 is logically and economically business-wise unacceptable for a 12-15 year business with established goodwill/reputation.
13. First Respondent tried to resolve the temporary disruption to its website in 2006 but could not find time/strength to complete it due to his personal work problems and in addition the website was also disrupted by massive spam since 2006 and this was conveyed to webhosting agent drw.net. Drw.net also explained that the domain name was re-directed due to outstanding payment.
14. The Respondents did not take advantage of the Complainant as the Complainant was unknown and had no material presence in Asia/Malaysia and in most countries in the world prior to the Respondents' registration in 1997.
15. The Respondents assert that the Complainant ignored the substantial and continuous use made by the Respondents for the past 12-15 years.
16. The Complainant has not satisfied paragraph 4(a)(ii) of the Policy as Respondents have established rights/legitimate interest in the name used with bona fide offering of goods/services before any notice of the present dispute.
17. The Respondents are commonly known by the domain name and have common law rights in accordance with para 4(c)(i) and (ii) of the Policy).
18. The Complainant never contacted the Respondents in 1997 or soon after registration of the domain name, because it was obvious that the Respondents have rights/legitimate interest that could not be defeated by the Complainant.
The Respondents assert that they did not register and did not use the disputed domain name in bad faith for the following reasons:
1. The Complainant alleges, by citing various cases, that the Respondents were inactive. The Respondents state that inactivity alone however is not sufficient to support a bad faith claim.
2. The Respondent actively used the domain name since 1998 to date. There was a temporary disruption but this was caused by personal/work related problems and spam issues. The cases relied on relate to situations where a domain name is registered but has never been used in any form or manner.
3. Redirection of website to <drw.net> was done by the Respondents webhosting agent because of outstanding payment and not by Respondents.
4. The Respondents have used the domain name for real business/offering of goods/services for 12 years with a minor hiccup in 2006 but since the technical problems were resolved, Respondents' website was up and running again offering the same type of goods/services it has done for the past 12 years.
The Respondents assert that they did not provide misleading information as the Complainant successfully contacted the Respondents as early as January 2, 2007 with the same contact details and the Center's notification was successful.
The Respondents asserts that ownership is not an issue as the Respondents are partners and it is well known that a partner may act for the other partner and what one partner does binds the other partner. The Respondents claim that they are partners in equity/common law and adduce evidence of a trust deed between the Respondents.
The Respondents were entitled to reject the Complainant's unreasonable purchase offer for a business in existence for 12-15 years. The Respondents made this fact known to the Complainant and the fact that USD 5,000 or EUR 7,500 is logically and economically business wise unacceptable for a 12-15 year business with established goodwill/reputation.
The Respondents contend that they have used the domain name for 12 years and have acquired significant/substantial goodwill/reputation and common law rights. The Respondents assert that they are commonly known with/by the domain name in relation to custom-framing services/goods and their mark does not include a flower, as is the case of the Complainant's marks, but consist of 2 borders. Therefore, the Respondents state, bad faith does not exist.
The Respondents contend that the time to consider bad faith is when the Respondents took possession of the domain name on July 24, 1997 and similarly the renewal of a domain name registration (or reactivating it) does not constitute bad faith. The Respondents refer to a WIPO UDRP decision in support of the assertions.
The Respondents contend that the Complainant did not have an Internet presence before July 24, 1997 and can therefore not allege actual or constructive knowledge as that issue is irrelevant. The Respondents contend that their Mewa business is in Malaysia, outside of Germany (the Complainant's home country) and outside of Europe. The Respondents contend that they had no knowledge of the Complainant when the Respondents registered the domain name in 1997.
The Respondents contend that as of July 24, 1997 the Complainant has no website, no domain name registrations, no trade mark registrations in Asia/Malaysia, was not well known and had no Internet virtual presence. The Respondents contend that they cannot be expected to go to each/every country in the world in 1997 just to find out whether MEWA is a trade mark. The Respondents assert that the Complainant is not even associated with the word “mewa” and cannot be solely identified with it. The Respondents' registration is not in bad faith as the Respondents had no knowledge, actual or constructive of the Complainant. In addition the Respondents contend that the Complainant did not give any notice to the Respondents when the Respondents registered the domain name in 1997 or soon after and accordingly the Complaint is unsustainable.
The Respondents claim that the fact that the Complainant waited 10 years before contacting the Respondent in 2007 is a long and deliberate silence and would in effect amount to and can be considered as the Complainant having forfeited its rights.
The Respondents invite the Panel to consider this point based on earlier WIPO UDRP decisions as they believe the Complainant has launched an unjustifiable complaint with malice and full knowledge that it is unsustainable. The Complainant has misused its position to reversely hijack the domain name of the Respondents.
Paragraph 4(a) of the Policy requires the Complainant to prove all of the following in order for its contentions to be supported in the proceedings:
(A) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainants has rights; and
(B) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(C) the disputed domain name has been registered and is being used in bad faith.
The Complainant is the registered owner of the trade mark MEWA in numerous jurisdictions and has been using the MEWA name since at least 1908, with its first MEWA registration in 1957. Compared to the trade mark, the domain name <mewa.com> completely reproduces the former with the only difference being the inclusion of the generic gTLD term “.com”. This is not sufficient for purposes of the Policy to differentiate the domain name from the trade mark.
The domain name is identical or confusingly similar to the Complainant's trade mark and the Panel is satisfied that the Complaint has met the requirements of paragraph 4(a)(i) of the Policy.
In light of the Panel's finding under the next head, the Panel does not find it necessary to address this issue.
The Second Respondent established its glass trading business named Mewa in 1994 and the First Respondent registered the domain name in the year of 1997. The Respondents provided a notarised company registration document in Malaysia to prove its establishment in Malaysia. The issue for the Panel is the First Respondent's probable intent at the time the domain name was registered. In particular, whether or not when the First Respondent registered the domain name, he did so with knowledge of the Complainant's trade mark and with intent to exploit that trade mark unfairly.
The Complainant claims that the Respondents must have had knowledge of the Complainant and its trade mark rights. The Respondents state that when the First Respondent registered the domain name it was not aware of the Complainant and was not seeking to take advantage of the Complainant's trade mark rights in any way. The Respondents have produced evidence to show that they have been operating in the glass and framing industry since 1994 under the name of Mewa. The Panel notes that the Complainant did not have a business presence in Asian market at the time when the domain name was registered. In addition, the Complainant and the Respondents are operating in very different industries.
The Complainant asks the Panel to consider the Respondents' more recent behaviour which is that the Respondents re-activated the domain name soon after the parties suspended their negotiation on transfer of the domain name. The Complainants claim this to be bad faith because it believes the sole purpose of the re-activity is just to raise the price of the transfer.
However, as to this latter behaviour, the Panel notes, at least on the provided record before it, that one of the Respondents has been using the name Mewa over ten years and has built quite a level of goodwill/reputation in the name Mewa in the industry of glass and framing. It is fair to say the Respondents have created a legitimate right in the name of Mewa. In other words, the Panel is not satisfied that the Respondents' behaviour of offering to transfer the domain name at a desired price and later re-activating the domain name is of any help in identifying the Respondents' bad faith in registering and using the domain name.
The Complainant also challenges the partnership between the two Respondents as well as the rights each party should have in terms of the domain name. The Panel it finds a difficult issue to resolve on the present record and in an administrative proceeding such as the UDRP, but would rather think it would be more appropriate for a normal court of law to do so.
As the record stands, however, the Panel is not satisfied that the Complainant has succeeded in the present proceedings in showing that it is more likely than not that the disputed domain name was registered in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
As noted earlier, the Respondents alleged in their Response that the Complainant is guilty of reverse domain name hijacking. That term is defined in paragraph 1 of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” In the present case, the Panel finds that the Complainant, while ultimately unsuccessful, did not lack a good faith basis for bringing its Complaint. Accordingly, the Respondents' charge of reverse domain name hijacking is rejected.
For all the foregoing reasons, the Complaint is denied.
Dated: August 3, 2009