The Complainants are Mul-T-Lock Ltd of Israel (the “First Complainant”) and Mul-T-Lock (UK) Ltd of the United Kingdom of Great Britain and Northern Ireland (the “Second Complainant”), represented by Rouse Legal, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Barry Forsyth trading as AES Security Systems of the United Kingdom of Great Britain and Northern Ireland.
The disputed domain names are <mul-t-lock-agents.com>, <multlockchubb.com> and <mul-t-lock-dealer.com> (the “Domain Names”). The Domain Names are registered with Easyspace.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2010. On May 17, 2010, the Center transmitted by e-mail to Easyspace a request for registrar verification in connection with the Domain Names. On May 18, 2010, the Registrar transmitted by e-mail 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” 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 May 18, 2010. On the same date, the Center received an e-mail response (possibly automated) from Mr. B. Forsyth, the Respondent's Administrative Contact. On May 19, 2010, the Center replied to the e-mail of May 18, 2010 and requested confirmation that his communication may be regarded as the Respondent's complete Response. Mr. Forsyth did not respond. Accordingly, the Center informed the parties on June 8, 2010 that it was proceeding with the Panel Appointment.
The Center appointed Antony Gold as the sole panelist in this matter on June 18, 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 Complainants are members of the Mul-T-Lock group of companies (“Mul-T-Lock”). This group was apparently founded in 1973 and is a manufacturer of high security products including locks, padlocks and other related components. Mul-T-Lock is wholly owned by Assa Abloy, which is stated to be the world's leading manufacturer of locking products. Mul-T-Lock's worldwide sales are stated to be around USD 100 million annually.
Mul-T-Lock owns various trade mark registrations for MUL-T-LOCK internationally, including United Kingdom trade mark 1367759 registered in 1990 in the name of the First Complainant. The First Complainant is also the owner of United Kingdom trade mark 1058983 for MULTLOCK, first registered in 1978. Examples of Mul-T-Lock's many other trade mark registrations for MUL-T-LOCK have also been produced by the Complainants. The Complainants also own numerous domain names incorporating the MUL-T-LOCK mark, including <mul-t-lock.com> and <mul-t-lock.co.uk> which resolve to the Complainants' principal corporate websites. The Complainants have also produced details of their substantial worldwide advertising spend for products sold under the MUL-T-LOCK mark.
The Respondent has been an authorised dealer of Mul-T-Lock's products since 1999. The Respondent has registered a total of 17 domain names incorporating the MUL-T-LOCK or MULTLOCK trade mark, in five different “batches”. The Complainants became aware of the registration of the first batch of domain names (which did not include any of the Domain Names which are the subject matter of this Complaint) in early 2006. There were apparently discussions between the parties about these registrations. The Complainants have produced an e-mail from the Respondent to the Second Complainant, Mul-T-Lock (UK) Ltd, dated April 25, 2006 which indicates that the Respondent asserted that the market value for the domain names could be in the region of GBP 30,000 per domain name.
In August 2006, a second batch of domain names (not including any of the Domain Names which are the subject matter of this Complaint) was registered by the Respondent. Further discussions ensued between the parties. Somewhat surprisingly, considering what had occurred, the parties entered into further dealership agreements in May 2007 and June 2008. The Complainants state that these agreements did not in any way ratify the Respondent's previous registration and use of domain names incorporating the MUL-T-LOCK mark. Both agreements stated that the Respondent was only permitted to use the MUL-T-LOCK trade marks upon a written request for permission being received by the Second Complainant and consent thereafter being given by it. The Complainants state that no such request was ever received from the Respondent nor any permission given by the Complainants.
The June 2008 agreement also included a trade mark use agreement which stated that the Respondent's permission to use the MUL-T-LOCK trade marks only extended to the re-sale in the United Kingdom of goods containing Mul-T-Lock products, and was subject to compliance with Mul-T-Lock's logo and trade mark guidelines. Under this agreement the Respondent also agreed “not to use or register any trademarks identical or similar to the Mul-T-Lock trade marks or to any other name adopted by Mul-T-Lock”.
A third batch of domain names was registered by the Respondent on June 18, 2008, followed by a fourth batch in early 2009.
On June 18, 2009, the Complainants' solicitors wrote to the Respondent seeking recovery of the domain names incorporating the MUL-T-LOCK marks, requesting that they be transferred to the Complainants and seeking written assurances from the Respondent that he would not register any further domain names incorporating the mark MUL-T-LOCK. Eventually, on August 3, 2009, the Respondent replied to the Complainants' solicitors by e-mail. The e-mail is marked ‘Without Prejudice'. Its admissibility is considered further below.
A fifth batch of domain names was registered on October 11, 2009. Some of these domain names diverted Internet users to the Respondent's website at “www.thelocksmith.co.uk”.
The fourth and fifth batches of domain names registered by the Respondent included the domain names that are the subject of this Complaint. The Complainants assert that these batches of domain name registrations were made in breach of the dealer agreement dated June 2008, and specifically the trade mark use agreement included within it.
This Complaint was subsequently filed by the Complainants on May 14, 2010. As at May 9, 2010, one of the Domain Names, <multlockchubb.com>, redirected to the Respondent's website at “www.thelocksmith.co.uk”. The other two Domain Names (<mul-t-lock-dealer.com> and <mul-t-lock-agents.com>) both resolved to an Easyspace holding page.
The Complainants assert that the Domain Names incorporate the marks MUL-T-LOCK or MULTLOCK in their entirety, alongside either the ‘Chubb' name or a descriptive term, such as ‘agents' or ‘dealer'. The Complainants rely on the First Complainant's United Kingdom trade mark registrations for the marks MUL-T-LOCK and MULTLOCK. For this reason, the Complainants assert that the Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainants have rights.
The Complainants also assert that the Respondent has no rights or legitimate interest in the Domain Names. They point to the fact that, even after signing the dealer agreements in 2007 and 2008 (which included contractual obligations on the Respondent not to use Mul-T-Lock's trade marks without obtaining the prior consent of the Complainants) the Respondent proceeded to register three further batches of domain names incorporating the marks MUL-T-LOCK or MULTLOCK without seeking permission. The Complainants assert that the use of these marks is directly in breach of the dealer agreements and Mul-T-Lock's logo and trade mark guidelines. The fifth batch was also registered by the Respondent despite his receipt of the Complainants' cease and desist letter in June 2009.
The Complainants maintain that, even though the Respondent is an authorised re-seller of Mul-T-Lock products, he is not permitted to use the Domain Names since he is not actually using them (nor are the Complainants aware of him ever having used them) to promote Mul-T-Lock or its products, or indeed any lock or security goods or services. Moreover, the Complainants argue that the websites to which the Domain Names resolve do not accurately describe the Respondent's relationship with Mul-T-Lock since they suggest a deeper affiliation than a mere reselling or dealership arrangement. The Complainants say that the Respondent therefore does not fulfill the requirements for a bona fide offering of goods set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
As an alternative argument the Complainants assert that, even if the Respondent had some authority to register and use the Domain Names, his actual use of them would constitute free-riding on the Complainants' reputation in the MUL-T-LOCK and MULTLOCK marks by creating the false impression that the Respondent is the sole or principal dealer of Mul-T-Lock products or is a member of the Mul-T-Lock group.
The Complainants assert that any rights the Respondent has to use Mul-T-Lock's marks do not extend to the deceptive use of domain names to divert Internet users to holding pages, pay-per-click pages or the Respondent's own website at “www.thelocksmith.co.uk”. The Complainants also maintain that use of the Domain Names to divert to pay-per-click sites cannot constitute legitimate use of those domain names.
The Complainants point to the fact that the Respondent has registered a far higher number of domain names (17 in total) than could reasonably be necessary even for a legitimate reseller business. They submit that such extensive registration demonstrates a lack of legitimate interest by the Respondent in the Domain Names, exacerbated by the fact that the Respondent has not actually used the Domain Names to promote Mul-T-Lock products.
The Complainants say that the Respondent's offer to sell the Domain Names to the Second Complainant at an inflated price indicates his lack of legitimate interest in them. The Complainants contend that this also demonstrates the Respondent's bad faith in acquiring the Domain Names with the intention of offering them for sale at a price substantially in excess of the fees paid for registering them. The Complainants further point to the fact that the Respondent has not invested any effort in developing sites using the Domain Names and has not connected them to any website that he is genuinely interested in developing. The Complainants believe that the Domain Names are being used as “blocking” registrations to prevent the Complainants from reflecting their well-known MUL-T-LOCK and MULTLOCK marks in a corresponding domain name.
Morever, the Complainants assert that the Respondent's use of the Domain Names is likely to confuse people into thinking that the Domain Names are registered to, operated or authorized by, or otherwise connected with the Complainants. The Complainants say that the resulting confusion will cause them damage as a result of lost sales and lost Internet traffic to their legitimate websites.
The Complainants also assert that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the pay-per-click sites that were located at the <mul-t-lock-dealer.com> and <mul-t-lock-agents.com> domain names. The Complainants say that the Respondent's registration and use of the Domain Names is intended to draw on the well-established reputation of Mul-T-Lock's business and trade marks in order to promote his own business and to divert customers looking for Mul-T-Lock products to his website and to unauthorized pay-per click directory sites with links to competing third party websites. The Complainants assert that such use of the Domain Names dilutes from and free-rides on the reputation in Mul-T-Lock's trade marks and is in bad faith.
‘Without prejudice' correspondence
The Complainants submit that notwithstanding the privilege which ‘without prejudice' correspondence attracts in many jurisdictions, the Respondent's ‘without prejudice' e-mail of August 3, 2009 should be admitted in evidence on the basis that it does not constitute a genuine offer to settle the dispute and evidences the Respondent's bad faith and lack of legitimate interest in the Domain Names. The Complainants also rely on paragraph 10(d) of the Rules which states that the Panel “shall determine the admissibility of evidence”. They argue that a panel determining a complaint is therefore not bound by ‘without prejudice' rules.
The Complainants cite as their authority for their proposition the decisions in Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525 and CBS Broadcasting, Inc. v. Gaddoor Saidi, WIPO Case No. D2000-0243. The panels in those cases noted that the purpose of ‘without prejudice' rules is to prevent a genuine settlement offer by a party from being put forward as evidence of that party's liability. However, the panels found that any offer by a registrant to sell or transfer the domain name for consideration in excess of his out-of-pocket costs is directly relevant (and often decisive) to the question of bad faith in domain name disputes. The exclusion of such evidence might therefore unfairly prejudice a complainant's ability to prove his case. Moreover, the panels said that respondents with a legitimate interest in a domain name would not be adversely affected since panels are fully capable of distinguishing genuine settlement offers from bad faith attempts to obtain disproportionate value from a domain name.
The Respondent did not respond substantively to the communications of the Center and did not submit any factual and legal contentions in response to the Complaint. However, the Respondent's position (at least in respect of the first four “batches” of domain names) is set out in his ‘without prejudice' e-mail dated August 3, 2009 sent to the Complainants' solicitors. For reasons outlined below, the Panel has found this e-mail to be admissible in evidence and it is material to set out the main points made by the Respondent in it.
The Respondent acknowledged the Complainants' registered trade mark rights in the name MUL-T-LOCK but denied any intentional mis-use of the MUL-T-LOCK trade marks, or passing off. The Respondent claimed that the domain names complained of (which included <multlockchubb.com>) had been registered in order to promote the Complainants' product range as part of the Respondent's business as a legitimate dealer of Mul-T-Lock products. The Respondent claimed to be dissatisfied with the conditions of his dealership arrangement, particularly by the alleged failure of Mul-T-Lock to support its authorised dealers and to give them adequate exposure in the marketplace. The Respondent also commented that individuals within the Second Complainant's organization were aware of the Respondent's domain name registrations but chose to ignore them.
The Registrant did, however, accept that the domain names which were registered after the June 2008 dealer agreement was entered into may have deviated from the terms of that agreement as a result of an oversight on his part. He therefore made an offer to sell those domain names (including <multlockchubb.com>) to the Complainants, subject to being offered a “fair market price” for them, failing which he indicated that the domain names would be put up for sale by auction.
The Respondent also sought to justify his activities on the basis that the various domain names had not been “reserved” by Mul-T-Lock and were available to register with a domain registrar freely and without restriction. The Respondent went on to suggest that responsibility for domain name registrations found to be unlawful should rest with the domain registrar offering them for sale, and not the registrant.
Paragraph 4(a) of the Policy requires that the Complainants prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainants have rights;
(2) the Respondent has no rights or legitimate interests with respect to the Domain Names; and
(3) the Domain Names have been registered and are being used in bad faith.
The Complainants have shown that the First Complainant has registrations in the United Kingdom for the word marks MUL-T-LOCK and MULTLOCK.
Dealing with each of the Domain Names in turn:-
For the purposes of assessing confusing similarity, a comparison must be made between the name ‘mul-t-lock-agents' and the First Complainant's mark MUL-T-LOCK (it being widely accepted that the domain name suffix ‘.com' is disregarded for the purpose of making a comparison). In this case, the distinctive element of the Domain Name is clearly the element MUL-T-LOCK which is identical to the First Complainant's mark. The word ‘agents', which appears at the end of the Domain Name would generally be regarded as less important, and is entirely descriptive in nature.
Having regard to the fact that this Domain Name incorporates the Complainants' mark in its entirety, the addition of a generic or descriptive word does not prevent the Domain Name from being confusingly similar to the mark. The Panel is therefore satisfied that the Domain Name <mul-t-lock-agents.com> is confusingly similar to the First Complainant's mark MUL-T-LOCK.
For the same reasons as those set out above in relation to <mul-t-lock-agents.com>, this Domain Name is considered confusingly similar to the First Complainant's mark MUL-T-LOCK. The distinctive part of this Domain Name is the first element, namely ‘mul-t-lock' and the addition of the descriptive term ‘dealer' does not prevent the Domain Name from being confusingly similar to the mark.
Although this Domain Name wholly incorporates the First Complainant's mark MULTLOCK, the second part of the Domain Name consists of a brand name, CHUBB, which is distinctive in its own right and is not a generic or descriptive term.
The owner of the United Kingdom trade mark for CHUBB in the relevant use classes is Chubb International Holdings Limited which, in common with the Complainants, is part of the Assa Abloy group. The Complainants also state that Chubb locks were marketed by Mul-T-Lock under licence between 2006 and 2009. There is thus clearly a connection between the ‘Chubb' brand and Mul-T-Lock. The addition of the name ‘Chubb' after the First Complainant's mark MULTLOCK does not prevent the Domain Name from being confusingly similar to the Complainants' registered marks. Moreover, consumers are more likely to notice and remember the first part of the Domain Name, that is, ‘multlock' which is identical to the First Complainant's mark MULTLOCK.
On balance, the Panel finds that the Domain Name <multlockchubb.com> is confusingly similar to the First Complainant's mark MULTLOCK.
Given that the Respondent is, and was throughout the relevant period, an authorized dealer of the Complainants' products, it is necessary to examine whether any of the dealership agreements entered into by the parties might be considered as giving the Respondent any rights or legitimate interests in the Domain Names.
Although the Respondent has registered numerous domain names incorporating the MUL-T-LOCK trade marks, the present proceedings only concern the Domain Names, which were registered in April or October 2009. At this time, the relationship between the parties was governed by the dealership agreement dated June 2008 which included the trade mark use agreement discussed above. This agreement made it clear that the Respondent would only be permitted to use the MUL-T-LOCK marks upon a written request for permission being submitted and thereafter agreed to by the Second Complainant, and any such use was permitted only for the purposes of re-sale and promotion of Mul-T-Lock products.
The Registrant did not seek such permission and the Complainants submit that the registration of the Domain Names was not in accordance with the terms of the 2008 agreement. The Respondent's e-mail of August 3, 2009 suggests that he agrees with this submission, at least in relation to the Domain Name <multlockchubb.com> which had been registered at that time (the Domain Names <mul-t-lock-agents.com> and <mul-t-lock-dealer.com> were registered after the Respondent's e-mail, but again without the Second Complainant's permission). The Complainants have also asserted that the Domain Names have never been used by the Respondent to legitimately promote or sell Mul-T-Lock products, and the Respondent has put forward no evidence to the contrary.
The Panel is consequently satisfied that the dealership agreement of June 2008 does not give the Respondent any legitimate rights in respect of the Domain Names insofar as they were registered and are being used without the Complainants' consent and in breach of the terms of the trade mark use agreement. The Respondent also does not fulfill the requirements for a bona fide offering of goods set out in Oki Data Americas, Inc., supra in particular because:
(1) the Respondent is not actually offering any lock or security goods or services through the Domain Names; and
(2) the Respondent is not using the Domain Names to sell Mul-T-Lock branded goods.
Accordingly, the Panel is satisfied that the Complainants have established that the Respondent lacks rights or legitimate interests in the Domain Names given that the Respondent is not using the Domain Names in connection with a bona fide offering of goods and services in accordance with the terms of his dealership. The Respondent has put forward no convincing proof of any legitimate interests in the Domain Names.
It is also telling that the Respondent registered 17 different domain names incorporating the marks MUL-T-LOCK or MULTLOCK. A single distributor is very unlikely to have a legitimate interest in such a high number of domain names, and the Panel is therefore not convinced by the Respondent's claims (insofar as they are taken to apply also to the domain names registered after his e-mail of August 3, 2009) that the Domain Names were registered with the genuine intention of using them to promote Mul-T-Lock's products.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the Domain Names.
Under paragraph 4(b) of the Policy, bad faith can be established by various non-exhaustive criteria. These include circumstances indicating that:
(i) the Respondent has registered or acquired the Domain Names primarily for the purpose of selling, renting or otherwise transferring the Domain Names to the Complainants, who are the trade mark owner, for valuable consideration in excess of his documented out-of-pocket costs directly related to the Domain Names;
(ii) the Respondent has registered the Domain Names in order to prevent the owner of the trade mark from reflecting the mark in a corresponding domain name, provided that he has engaged in a pattern of such conduct;
(iii) the Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or
(iv) the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other online location, by creating a likelihood of confusion with the Complainants' marks as to the source, sponsorship, affiliation or endorsement of the Respondent's website or location of a product or service on his website.
The Panel must, in this context, consider the admissibility of the Respondent's ‘without prejudice' e-mail dated August 3, 2009. In this respect, the Panel accepts the Complainant's submissions. The Panel is satisfied that ‘without prejudice' rules should not apply to exclude evidence of settlement offers in the context of domain name disputes, because such offers are crucial in determining a respondent's potential bad faith. The Respondent's e-mail dated August 3, 2009 is therefore admitted as evidence in the present proceedings.
With this in mind, the Panel has considered the Respondent's e-mail of August 3, 2009 whereby he offered to sell domain names incorporating the marks MUL-T-LOCK or MULTLOCK to the Complainants for a “fair market price” and threatened to auction those domain names if a satisfactory offer was not received within 30 days. The Panel has also considered the e-mail correspondence between the Respondent and the Second Complainant in April 2006, where the Respondent indicated that he would consider selling various domain names incorporating the mark MUL-T-LOCK to the Second Complainant and suggested that the ‘going rate' may be in the region of GBP 30,000 per domain name. The Panel has also taken into account the fact that the Respondent appears to have taken no steps to connect any of the Domain Names to any websites legitimately used by him to promote Mul-T-Lock's products or services.
The Panel is therefore satisfied that the Respondent has acquired the Domain Names with the primary intention of offering them for sale at a price substantially in excess of the fees paid for registering them. This is sufficient in itself to establish bad faith.
The Panel also agrees that the Respondent intentionally diverted Internet users to the pay-per-click sites previously located at “www.mul-t-lock-dealer.com” and “www.mul-t-lock-agents.com” (some of which resolved to the websites of Mul-T-Lock's competitors) and did so for commercial gain. The Panel accepts the Complainants' submission that such use of the Domain Names is liable to dilute and free-ride on the reputation of the Mul-T-Lock brand. This further suggests that the registration of the Domain Names was in bad faith.
The total number of domain names incorporating the MUL-T-LOCK and MULTLOCK marks registered by the Respondent (17 domains) is also far in excess of any number reasonably required by an authorised reseller or dealer in order to legitimately carry out his or her business. The Panel is therefore satisfied that the Respondent has engaged in a pattern of bad faith “blocking” registrations to prevent the Complainants from reflecting the MUL-T-LOCK and MULTLOCK marks in corresponding domain names.
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 <multlockchubb.com> be cancelled and the domain names <mul-t-lock-agents.com> and <mul-t-lock-dealer.com> be transferred to the First Complainant as requested.
Dated: June 29, 2010