The Complainant is Proxxon S.A. of Luxembourg, represented by Irdi Legal of Australia.
The Respondent is Woodworking Machinery Specialists Pty Ltd of Preston, Victoria, Australia, represented by its Managing Director.
The disputed domain name <proxxon.com.au> is registered with NetRegistry Pty Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2009. On December 17, 2009, the Center transmitted by email to NetRegistry Pty Ltd. a request for registrar verification in connection with the disputed domain name. On December 18, 2009 and December 22, 2009, NetRegistry Pty Ltd. transmitted by emails 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 .AU Dispute Resolution Policy (the “Policy” or “auDRP”), the Rules for AU Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for AU 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 January 5, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 25, 2010. On January 5, 2010, the Respondent sent a request to the Center regarding the extension to the Response due date with supported arguments. On the same day, the Center informed the parties that the Response due date was extended to February 1, 2010. The Response was filed with the Center on February 1, 2010.
The Center appointed Alan L. Limbury as the sole panelist in this matter on February 5, 2010. 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 incorporated in the Grand Duchy of Luxembourg. Since March 25, 1994 it has been the registered proprietor in Australia of the trademark PROXXON in respect of a wide range of metalworking and woodworking tools (Registered No. 574551). Since 1996 it has sold hand and power woodworking tools under that mark on credit terms to a small number of Australian retailers and wholesalers.
In 1997 the Complainant began selling its Proxxon products to the Respondent's predecessor in business, a company incorporated in August, 1993 under the name presently used by the Respondent, namely Woodworking Machinery Specialists Pty Ltd. That company registered the business name Proxxon Tools Australia in the State of Victoria on January 28, 2000 and registered the disputed domain name <proxxon.com.au> on February 1, 2000.
The Respondent was incorporated on November 11, 2004 under the name Lessac Pty Ltd. On February 1, 2005, Woodworking Machinery Specialists Pty Ltd changed its name to Gudari Pty Ltd and the Respondent changed its name to Woodworking Machinery Specialists Pty Ltd. On the same day, Gudari Pty Ltd transferred the business name Proxxon Tools Australia to the Respondent. The disputed domain name remained registered under the name Woodworking Machinery Specialists Pty Ltd and the company identifier of Gudari Pty Ltd. According to a former director of that company, the disputed domain name was transferred to the Respondent in March, 2006 and shortly thereafter Gudari Pty Ltd was wound up.
NetRegistry Pty Ltd became the registrar of the disputed domain name on January 16, 2008. On June 12, 2009, the disputed domain name still appeared to be registered under the company identifier of the deregistered Gudari Pty Ltd and the Complainant sought cancellation for that reason. Cancellation did not occur and on July 9, 2009 the register showed the disputed domain name as registered to the Respondent.
The Complainant says it first became aware of the registration and use of the disputed domain name in or about December, 2007. It says the disputed domain name is identical or confusingly similar to its PROXXON trademark and that the Respondent has no rights or legitimate interests in the disputed domain name, which was registered or is being used in bad faith.
As to legitimacy, the Complainant says that in supplying Proxxon products to the Respondent and its predecessor, it entered into no distributorship agreement, granted no exclusive rights and granted no licence to use its trademark. The Respondent does not maintain a website at “www.proxxon.com.au”. The domain name resolves to the Respondent's website at “ww.woodworking.com.au” where, in addition to the Complainant's products, competing products are offered for sale, including those under the Respondent's own WMS brand. This is not bona fide use of the disputed domain name.
The Respondent is unable to show that it is commonly known by the disputed domain name. It does not maintain any online White Pages telephone directory entry which includes “Proxxon”. Since the Complainant notified the Respondent of its rights by letter dated April 15, 2008, the Respondent has begun using the disputed domain name in conjunction with the names Proxxon Tools Australia and Proxxon Australia on various online listings and since March, 2009 has maintained a Yellow Pages listing under the name Proxxon Tools Australia. Still, there is no evidence that the Respondent is generally known by the disputed domain name nor by the PROXXON mark.
As to bad faith, the Complainant says the Respondent is not using the disputed domain name to sell only the Complainant's trademarked goods: it is using it as a bait to attract to its website at “www.woodworking.com.au” possible purchasers of the Complainant's goods and then to expose them to other goods, including its own branded goods. That website misleadingly suggests that the Respondent is in some sense the official vendor of the Complainant's goods or is sponsored by or otherwise related to the Complainant.
The Response uses the expression “WMS” to refer indiscriminately to the Respondent and to the company that preceded the Respondent in using the company name Woodworking Machinery Specialists Pty Ltd. In summarizing the Response, this Panel has done the same, but has also endeavoured to distinguish between the two entities when it appears important to do so.
On behalf of the Respondent, the Managing Director, Mr. Stanley Kofoed says that he was the General Manager of WMS in the year 2000 when the disputed domain name was originally registered and has always been the person that has renewed the registration thereafter. He has always been the contact and the person who signed all documents relating to the domain name registration. He is also the only person that has dealt directly with the Complainant, placing orders, arranging payments, general communications and promoting Proxxon in Australia since 1997. He became a Director of WMS in 2005 after managing the said company since 1987 as an employee and has continued to register the domain name as required since 2000.
Gudari Pty Ltd held the disputed domain name on behalf of the Respondent from February 2005 until it was formally transferred to the Respondent in March 2006 after which time Gudari Pty Ltd was wound up.
The Respondent points to an email dated March 4, 2008 from the Complainant (Annex D1) to show that the Complainant knew WMS had been using the domain name for eight years. The Respondent argues that the Complainant knew this for almost ten years yet never complained, until it commenced cooperation with a new partner, Fourth Axis.
The Complainant was aware from an email dated February 5, 2004 that WMS had been buying full page advertisements in woodworking magazines at a cost of $2,100.00 each promoting Proxxon products and listing the name of the company followed by the statement “visit our website: “ww.proxxon.com.au”. In 2006 the Complainant sent the Respondent a CD ROM of product photos for a website update.
An international Google search of the word “proxxon” reveals only the Proxxon section of the Respondent's website, which lists only Proxxon products. Under no circumstances is anybody directed to any other part of the Respondent's website when they search the disputed domain name, which goes directly to Proxxon products only.
When a Google search of “www.woodworking.com.au” is made, the Proxxon site does not show up. The woodworking site lists all products the Respondent markets including those of Proxxon. It has never been the intention to drag consumers to the <proxxon.com.au> site to view other brands unless the consumer elects to leave the Proxxon section of the site.
If an Australian Google search is performed on the word “proxxon”, a number of domain names using words such as Proxxon, Australia and Specialists are listed. The owners of these domains have no direct involvement with the Complainant nor do they buy direct from the Complainant and they carry very little Proxxon product (if any). The Respondent considers itself singled out even though it carries stock and owns the disputed domain name and has done so for ten years.
The WMS Yellow Pages listing started before 2004, not in 2009 as claimed by the Complainant.
The Complainant was obviously pleased enough with the cooperation from the Respondent over recent years because it sent encouraging communications on a number of occasions, the last of which, on January 11, 2008, was sent just a few weeks before the Complainant complained about the use of the <proxxon.com.au> domain name.
In summary, the Respondent says that Mr. Kofoed was the original registrant on behalf of WMS of the disputed domain name back in February 2000 and has been the only person to renew and sign on each occasion and to maintain the website. The domain name was transferred to the Respondent from his previous employer and it is only legal and fair that he should be permitted to keep the disputed domain name as he intends to continue marketing and promoting Proxxon products. He has spent many tens of thousands of dollars in promotion of Proxxon products and maintenance of the website. He exhibits at a number of fairs throughout Australia and also has a data base of over one thousand clients that have requested and received Proxxon catalogues from his company at no expense to and with no financial support from the Complainant.
They have supported and promoted the Complainant for over 13 years and prior to this current issue have never had any criticism or complaints from the Complainant. Therefore the Respondent would be well within its rights in thinking that the Complainant has been happy with the past cooperation with the Respondent.
A telephone discussion in early 2008 sent alarm bells ringing when the Complainant advised Mr. Kofoed that it expected an increase in sales in the vicinity of two million Euros for the Australian market, a figure beyond the reach of any company marketing this type of products into such a small market.
Mr. Kofoed is also the legal holder of all electrical approvals (both local and national) for Proxxon hand tools, an Australian Government requirement. These approvals cost many thousands of dollars to obtain and maintain. The Respondent currently has a stock holding of over $45,000.00 of Proxxon products and therefore the <proxxon.com.au> website is a very important and vital part of the Respondent's daily business. The Respondent plans to continue to sell Proxxon products in Australia.
Even though the Complainant has refused to supply the Respondent with stock for approximately the past two years, the Respondent has still sourced and purchased Proxxon products to keep stock holdings at an acceptable level so as to maintain a large presence in the Australian market.
The Complainant never listed the Respondent on the Complainant's website even though they were business partners since 1997. This is one of the reasons why the disputed domain name was registered.
It can only be assumed that the Complainant was not concerned in the past about the disputed domain name registration because it made no complaints. The Complainant is now trying to gain access to the disputed domain name to further its business activities with its new importer at the expense of what rightfully belongs to the Respondent.
To succeed in a complaint under the Policy, a complainant must establish that:
(i) the domain name is identical or confusingly similar to a name, 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 or subsequently used in bad faith.
In determining whether a domain name is identical or confusingly similar to a trademark, country code top level domain suffixes are to be ignored: see BT Financial Group Pty Limited v. Basketball Times Pty Ltd, WIPO Case No. DAU2004-0001.
The disputed domain name is identical to the Complainant's PROXXON trademark for the purposes of this Complaint. The Complainant has established this element of its case.
The Complainant's mark is not a common dictionary word: it is distinctive. The Respondent's name is Woodworking Machinery Specialists Pty Ltd. Although the Respondent acquired the registered business name Proxxon Tools Australia in 2005, the material before the Panel does not establish that the Respondent is commonly known by that name nor by the name Proxxon. The Complainant has asserted (and the Respondent has not denied) that the Complainant has not granted to the Respondent (nor to its predecessor) any express permission to incorporate the PROXXON mark into the disputed domain name.
These circumstances establish a prima facie case of absence of rights or legitimate interests in the disputed domain name on the part of the Respondent. The onus therefore shifts to the Respondent to show, by concrete evidence, that it has such rights or interests.
It is common ground that, from 1997 until 2008 (when the Complainant withheld delivery of orders from the Respondent once this dispute arose) the Complainant had been selling its Proxxon products to the Respondent's predecessor, and subsequently to the Respondent, for resupply into the Australian market. The Respondent says one of the reasons why the disputed domain name was registered in 2000 was that the Complainant would not list the Respondent's predecessor on the Complainant's website. The Respondent is in a position to know this because Mr. Kofoed, its Managing Director, was the employee of the Respondent's predecessor responsible for obtaining that registration. The Respondent does not assert that the Complainant was aware of or approved the registration of the disputed domain name at the time. Rather, the Respondent relies on subsequent correspondence and events as indicating that the Complainant became aware of the registration of the disputed domain name in the hands of the Respondent's predecessor and subsequently the Respondent and should therefore be taken impliedly to have approved, so as to afford to the Respondent rights or legitimate interests in the disputed domain name. Further, the Respondent points to advertisements it says were published in 2004 containing references to the disputed domain name. These are relied upon both to show awareness on the part of the Complainant and fair use by the Respondent of the disputed domain name prior to notice of this dispute.
The Complainant says it was unaware of the Respondent's registration of the disputed domain name prior to about December, 2007. The material presented by the Respondent does not show this to be incorrect.
First, the circumstances in which the disputed domain name was registered in 2000 (one reason being that the Complainant would not mention the Respondent's predecessor on its website) make it unlikely that the Complainant was informed of that action at the time.
Second, Annex D1 of the Response, on which the Respondent relies, is a reply dated March 4, 2008 to a message from the Respondent that is not before the Panel. The relevant passage reads: “Regarding your offer to forbear from advertising under the name PROXXON Tools Australia and forbear from promoting the website “ww.proxxon.com.au”in any of your future marketing and advertising we have noted this. Unfortunately, using our brand name in your trade name and registering the Top Level Domain for a long time (ie. 8 years) does not make the action right. The reason: this trade name is misleading as it conveys the idea that PROXXON Tools of Australia is a PROXXON owned company. The same goes for a Top Level Domain”. Given its character as a reply to a message that is not before the Panel, the Panel is not prepared to accept that this amounts to an acknowledgement that the Complainant had known for eight years about the disputed domain name.
Third, although the Complainant was clearly made aware that the Respondent and its predecessor were advertising in the trade press, it has not been established that the Complainant was made aware of the advertisements containing references to the website “www.proxxon.com.au”. Assuming that those advertisements were published in 2004, as claimed by the Respondent – there is no printed date on the copies before the Panel, only a handwritten note, presumably by the Respondent, as to their date – there is nothing before the Panel to show that these advertisements came to the attention of the Complainant. Likewise, the CD ROM of photos for a website update is not shown to have been sent to the Respondent by the Complainant with the disputed domain name in mind. Rather, it is consistent with the Complainant having in mind an update of the “www.woodworking.com.au” website.
Hence, on the material before the Panel, the position appears to be that, since 1997, the Respondent and its predecessor have bought from the Complainant (until this dispute arose) and resold in Australia Proxxon products. Despite owning the business name registration, the Respondent has not provided evidence that it is known by the business name.
As to whether the Respondent's use of the disputed domain name prior to notice of this dispute has been bona fide, it is useful to consider the factors taken into account in relation to authorised sales agents in the leading case under the UDRP, Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903: the Respondent is actually offering the Complainant's Proxxon goods and is not trying to corner the market in domain names to prevent the Complainant from reflecting its own mark in a domain name. However, the Respondent does not use the site to sell only the trademarked goods and the site does not accurately disclose its relationship with the trademark owner, thereby suggesting that the Respondent's “www.woodworking.com.au” website is the Complainant's official Australian site. These last two factors militate against a finding that the Respondent's use of the disputed domain name has been bona fide.
In the absence of permission from the Complainant to incorporate the PROXXON mark into the disputed domain name, the Respondent's trading activities do not give the Respondent rights or legitimate interests in the disputed domain name and the Panel finds that it has none.
The Complainant has established this element of its case.
As mentioned, the disputed domain name resolves to the Respondent's website at “www.woodworking.com.au”, where other brands of tools are offered for sale, as well as Proxxon tools. The Respondent stresses that the particular page of that website to which the disputed domain name resolves is devoted solely to Proxxon products, saying it has never been the intention to drag consumers to the “www.proxxon.com.au” site (by which the Panel understands the Respondent to mean the Proxxon page of the “www.woodworking.com.au” website) to view other brands unless the consumer elects to leave the Proxxon section of the site.
Under the Policy, paragraph 4(b)(iv), the following circumstances shall be evidence of bad faith registration and use:
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to a website…by creating a likelihood of confusion with the complainant's name or mark as to the…affiliation or endorsement of that website […]
Here the disputed domain name, which comprises the Complainant's distinctive PROXXON trademark with the “com.au” suffix, conveys to Internet users both that it will lead them to a website at which the Complainant's Proxxon products are available for purchase and that it will lead them to the official Australian website of the Complainant. Thus the disputed domain name itself conveys an affiliation or endorsement of the website to which it resolves. In the hands of the Respondent the latter representation is misleading because the Respondent's “www.woodworking.com.au” website is not the official Australian website of the Complainant. It matters not that the Respondent is a dealer in genuine Proxxon goods. What is misleading is not the nature of the goods but the nature of the website. As in the case of Nikon, Inc. and Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774, the domain name in dispute suggests a broader relationship than actually exists.
The Panel finds that the Respondent has been fully aware of this and that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its “www.woodworking.com.au” website by creating a likelihood of confusion with the Complainant's mark as to the affiliation or endorsement of that website.
The Panel therefore finds that the disputed domain name has been used in bad faith.
The Complainant has established this element of its case.
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 <proxxon.com.au> be transferred to the Complainant upon the Registrar being satisfied of the Complainant's eligibility.
Alan L. Limbury
Dated: February 19, 2010