WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Broadwood International v. Mark Page
Case No. D2011-0626
1. The Parties
The Complainant is Broadwood International of Hampshire, the United Kingdom of Great Britain and Northern Ireland, represented by Bond Pearce, the United Kingdom of Great Britain and Northern Ireland.
The Respondent is Mark Page of Essex, the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Names and Registrar
The disputed domain names <snowex.com> and <sweepex.com> are registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2011. On April 11, 2011, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain names. On April 11, 2011, Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” 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 April 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 4, 2011. The Response was filed with the Center on April 30, 2011. A Supplemental Filing from the Complainant was received by the Center on May 5, 2011.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on May 9, 2011. 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.
Administrative Panel Order No.1 was notified to the Parties on May 10, 2011, granting the Respondent a right of reply strictly to the matters contained in the Complainant’s Supplemental Filing. A Supplemental Fining from the Respondent was received by the Center on May 10, 2011. The Parties were informed through the Center that the Panel had ordered that no further filings would be accepted unless specifically called for.
4. Factual Background
The following brief summary of the factual background is taken from information contained in the Complaint and the Response.
The Complainant is in the business of importing and distributing machinery including Snowex salt spreaders, grit spreaders, gritters, de-icers and related equipment, and Sweepex mechanical sweepers.
The Complainant owns the registered trademarks:
SWEEPEX, Community Trade Mark No. 003984143, filing date August 12, 2004, registered November 18, 2005, classes 7 and 21;
SNOWEX, Community Trade Mark No. 003984176, filing date August 12, 2004, registered November 18, 2005, class 7.
The Respondent is the proprietor of Loadlift Limited which was a licensed dealer in the Complainant's products between late 2003 and February 22, 2011.
The Respondent apparently registered the disputed domain names <sweepex.com> on September 4, 2003 and <snowex.com> on June 15, 2004.
The Complainant wrote to the Respondent on November 18, 2005, setting out the terms of its Trade Mark Licence Agreement. This said among other things that without the permission of the Complainant the trademarks could not be used for domain name or email address purposes, and that any such use was under licence and gave no rights in the trademark to the Respondent.
On July 4, 2006, the Complainant asked the Respondent to transfer the disputed domain names to it and offered to purchase them. On July 25, 2006, the Respondent replied offering to sell the disputed domain name <snowex.com> to the Complainant for GBP 38,000. There was no sale.
On January 31, 2011, the Complainant wrote to the Respondent terminating its dealership with effect from February 22, 2011, and requesting the transfer of the disputed domain names.
A further approach to the Respondent on February 15, 2011, was replied to by the Respondent, stating prices for the disputed domain names in more detail and intimating that they could be sold to potential buyers in Europe and America. The corresponding websites were changed to promote products competing with those of the Complainant. The disputed domain names are currently parked at a UK.2 holding page.
5. Parties’ Contentions
The Complainant’s extensive submissions include the following.
The Complainant has produced copies of Intellectual Property Office registration documents for its ownership of the Community trademarks SWEEPEX and SNOWEX and says they are unusual, invented, and not generic terms. It is contended that the disputed domain names are effectively identical to the Complainant’s trademarks.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain names. The Respondent was initially aware of the Complainant's rights in the trademarks SWEEPEX and SNOWEX and that the Respondent lacked such rights.
Specifically in terms of paragraph 4(c)(i) of the Policy the Complainant contends that the use of the Complainant’s trademarks by the Respondent could not be bona fide without the authorization of the Complainant. Because the Agreement between the Complainant and the Respondent has now been terminated, the Respondent will be unable to use the disputed domain names in connection with any bona fide offering of goods and services. Bona fide use would entail the Respondent using the website to sell only the trademarked goods, otherwise the Respondent would be using the Complainant’s trademarks to bait and switch.
It is contended that the Respondent has not been commonly known by the disputed domain names in terms of paragraph 4(c)(ii) of the Policy. Furthermore the disputed domain names have been used for trade and not noncommercially in the terms of paragraph 4(c)(iii) of the Policy.
The Complainant further contends that the disputed domain names were registered and are being used in bad faith. The Respondent had a non-exclusive license to use the Complainant’s trademarks for specific and limited purposes and should have sought the Complainant’s permission before registering the disputed domain names.
Currently the disputed domain names resolve to a UK.2 holding page. Within the body of their WhoIs search results it is stated that <snowex.com> is for sale for USD 20,000 and <sweepex.com> is for sale for USD 18,000. The Complainant contends with reference to paragraph 4(b)(i) of the Policy that the Respondent’s actions, including a refusal to transfer the disputed domain names, threatening to sell them to a competitor, and the high price asked from the Complainant for them, lead to a suspicion that they were acquired primarily for the purpose of selling, renting, or otherwise transferring to the Complainant or a competitor for valuable consideration in excess of the allowed out-of-pocket costs.
The Complainant says that the Respondent has disrupted and plans to disrupt the Complainant’s business by selling competing products through the websites of the disputed domain names, within the meaning of paragraph 4(b)(iii) of the Policy.
In terms of paragraph 4(b)(iv) of the Policy, the Complainant contends that the Respondent has intentionally attempted to attract for commercial gain, Internet users to the websites of the disputed domain names by confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service thereon. In February 2011 the Respondent started to promote “SaltDogg” products, being in competition with the Complainant. The Respondent also promoted the trade name “Gritex” which, it is contended, is designed to appear to be a natural extension to the Complainant's range that includes “Sweepex”, “Snowex”, “Spreadex”, “Broomex” and “Wessex”.
The Complainant refers the Panel to the previous case of the domain name <veltins-usa.com> (C. & A. Veltins GmbH & Co. KG v. Heller Highwater Inc., WIPO Case No. D2004-0466), which the Complainant considers to have points of precedent value, and a number of other previous decisions under the UDRP.
The Complainant requests the transfer to it of the disputed domain names.
The Respondent denies the Complaint. His extensive submissions include the following.
The Respondent states that his company Loadlift Limited began trading with the Complainant on November 1, 2003, offering “Snowex” and “Sweepex” products.
The Respondent says that on June 14, 2004 at a CIWM trade show he had a meeting with the account manager of the Complainant and discussed the Complainant’s lack of Internet presence. The account manager informed the Respondent that this was an ethical decision based on the Complainant’s religious principles not to use the Internet. The Respondent says it was then agreed for Loadlift Limited to register the disputed domain names and use them for their mutual benefit to promote and sell the “Snowex” and “Sweepex” products. The Respondent has produced in evidence a copy of a statement dated April 29, 2011 to this effect by the Complainant’s account manager of the time, referring to a 2003 CIWM trade show. The Respondent says that at the time of the meeting, “Snowex” and “Sweepex” were not registered U.K. trademarks and that no trademark license agreement was signed by Loadlift Limited.
The Respondent says the disputed domain names were successfully used to promote the Complainant’s products. A plate stuck to machines, an image of which is produced, featured the Complainant’s stylised SWEEPEX trademark and the corresponding disputed domain name. The Respondent has also produced brochure pages prominently featuring together the Complainant’s machines, the stylised trademarks of both the Respondent and the Complainant, and also the trademark HAAGA, and says that such usage was with the knowledge and approval of the Complainant.
The Respondent contends that in 2006 the Complainant changed its position on the use of the Internet and sought to purchase the disputed domain names. The Respondent offered to sell them at a price reflecting his expenditure on Google advertising, good will generated and promotion of the web site. He says the Complainant declined the offer and it was agreed that the Respondent’s company would continue to use the disputed domain names and the Complainant would create a separate web presence without an online shop. In July 2007 the Respondent added “Haaga” sweepers to its website alongside the “Sweepex” sweepers.
The Respondent has produced a letter from the Complainant dated March 18, 2008, asserting a point of view about pricing policy of mutual benefit within the industry and referring positively to the Respondent’s promotion of the Complainant’s products through the Internet.
In June 2010 the Respondent added “SaltDogg” gritters to its website.
The Respondent says that in January 2011 the Complainant abruptly ended its trading agreement and demanded the transfer to it of the disputed domain names. There was further correspondence in which the Respondent offered to sell for prices that, he contends, reflected the costs of operating the websites including GBP 67,000 of Google advertising, and the benefits of sales worth about a million pounds. In the absence of a reply from the Complainant, the Respondent removed the “Snowex” and “Sweepex” products and redesigned the website, then later placed the disputed domain names on the UK2 holding page pending a resolution.
The Respondent contends in a summary that the disputed domain names were registered in good faith after prior discussion with the Complainant; they were used for nearly 7 years with the knowledge and approval of the Complainant; they were offered back to the Complainant for a fair price; and the Respondent wishes to use them to fulfill responsibilities to previous customers.
C. Complainant’s Supplemental Filing
The Complainant contends that the person who authorised the Respondent to register the disputed domain names was not entitled to do so without the express permission of the Complainant’s directors, and refers to this person as a salesman.
The Complainant says that the letter to the Respondent dated March 18, 2008, was to address only concerns over pricing.
Other matters contained in the Supplemental Filing were inherently clear in the Complaint.
D. Respondent’s Supplemental Filing
The Respondent says another named member of the Complainant Company was present at the CIWM trade show for at least two of the show days, during which time there was discussion of domain names.
Other matters mentioned in the Respondent’s Supplemental Filing were clear in the Response.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required:
“…to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
A. Identical or Confusingly Similar
The Complainant is required to prove under paragraph 4(a)(i) of the Policy that it has rights or legitimate interests in a trademark to which a disputed domain name is identical or confusingly similar. The Panel is satisfied by the evidence that the Complainant holds the registered trademarks SNOWEX and SWEEPEX to which the disputed domain names <snowex.com> and <sweepex.com> respectively are identical within the meaning of the Policy.
B. Rights or Legitimate Interests
The Complainant must prove on balance that the Respondent does not have rights or legitimate interests in each of the disputed domain names. It is conventional for the Complainant to assert on the basis of reasonable enquiries that the Respondent has no such rights or legitimate interests, and for the Respondent to seek to establish that it does.
Paragraph 4(c) of the Policy sets out certain circumstances, without limitation, whereby the Respondent may be able to refute the Complainant’s prima facie case by seeking to establish rights or legitimate interests under paragraph 4(a)(ii) of the Policy, namely:
“(i) before any notice to you [the Respondent] 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.”
Paragraphs 4(c)(ii) and (iii) of the Policy are not realistically of the essence of the present case. The establishment of rights or legitimate interests under paragraph 4(c)(i) of the Policy may be interdependent upon whether there was bad faith on the part of the Respondent in the terms of paragraph 4(a)(iii) of the Policy.
The Respondent’s version of events is that he initially drew attention to the Complainant’s lack of Internet presence by talking to a person the Respondent calls the account manager and the Complainant calls a salesman (hereafter the “employee”). This took place in either 2003 or 2004 at a CIWM [assumed to mean the Chartered Institution of Wastes Management] trade show. In a signed letter from the employee dated April 20, 2008, addressed “To Whom It May Concern”, presumably elicited by the Respondent, the employee confirms this version of events, states an ethical reason why the Complainant did not then wish to have an Internet presence, and states: “Mark wanted to register the domain names for Loadlift Limited to sell Broadwood International’s sweepex and snowex products. I told Mark that this wouldn’t be a problem and that Broadwood International would be happy using Loadlift Limited as its effective internet agent.”
The Complainant counters that the Respondent has not established that the employee was entitled to give such consent or to bind the Complainant without the express permission of the directors, which was not given.
It is necessary to interpret the events of the 2003 or 2004 discussions as they appear to have been at the time on the basis of the evidence. There is no reason to doubt the Respondent’s version of the meeting, which is corroborated by the employee’s statement and is not categorically denied by the Complainant. The meeting took place in the context of a trade show, being in part a congregation of business people, where there may be at least a reasonable expectation that a person present and appearing to represent his or her company has been appropriately instructed and authorised. It may be the case, as the Complainant argues, that in this instance the employee was not authorised to make the particular representation that he did as to the Complainant’s position concerning the Internet, or to grant permission for the disputed domain names to be registered. That, however, would appear to be a matter between the Complainant and its employee. The Respondent was in the position of having asked for and been granted permission to use the disputed domain names from a person who he could reasonably and sincerely have believed to be in a position to answer for the Complainant to that extent.
The Respondent states, and the employee’s letter of April 20, 2008 supports, that he requested the disputed domain names for use to promote “Snowex” and “Sweepex” products. In the exercise of its limited power to undertake independent inquiries (section 4.5, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), the Panel has viewed Wayback Machine captures of the websites to which the disputed domain names have resolved. It would appear that from their acquisition and at least until late 2004 they resolved to similar websites that were subdomains of “www.loadlift.com” featuring the Complainant’s products, prominently and apparently exclusively, updated from time to time with information about product demonstrations and trade shows. A corner was devoted to the Hand in Hand charity for world poverty. The style of the websites changed from time to time and the Complainant’s products appear to have been featured into 2007, but not exclusively so after that.
It was not until November 18, 2005, well after the disputed domain names came into use in 2003 and 2004, that the Complainant wrote to the Respondent setting out its formal expectations relating to the use of the its trademarks for Internet purposes and instituting a Trade Mark Licence Agreement. A later exchange of correspondence requesting transfer of the disputed domain names to the Complainant in 2006 evidently did not lead to a solution. Nevertheless, as late as March 18, 2008, the Complainant through its General Manager sent to the Respondent a short, firm, but not unfriendly letter, opening “Dear Mark” and closing “Best regards”, that set out expectations as to pricing policy, but included the significant paragraph: “We do appreciate that you successfully display and sell Broadwood products on your web site and we want to help you as much as possible to do so, but we must respect the need for other Dealers in other areas to work unencumbered.”
The inference drawn by the Panel from the letter of March 18, 2008, is that the Complainant had at the least acquiesced in and generally approved of the Respondent’s use of the disputed domain names from 2003 or 2004 until 2008. Having weighed all available evidence surrounding the environment in which the disputed domain names were acquired and put to use, the Panel is not persuaded that such use, at least initially, was other than in connection with a sustained and genuine offering of goods or services that would be bona fide provided the disputed domain names had not been registered in bad faith.
C. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain names have been registered and are being used in bad faith. Paragraph 4(b) of the Policy lists four illustrative alternative circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you [the Respondent] 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 website or location.”
In order for the Complainant to establish registration in bad faith, it is necessary to prove that bad faith was an ingredient at the time of registration. On the evidence, the Respondent openly discussed with an employee of the Complainant whether there should be websites for “Sweepex” and “Snowex”. He was told that the Complainant did not want to register the disputed domain names and that the Respondent was free to do so. Whilst it may be that the employee was not authorised to say these things, the key point is that the Complainant has the burden of proving that the Respondent acted in bad faith. Since the Respondent had openly revealed his suggestion and received what could reasonably be taken as an all-clear, it would be difficult to construe on balance that his action in making the registrations was in bad faith. Previous decisions under the Policy are not precedent per se, however C. & A. Veltins GmbH & Co. KG v. Heller Highwater Inc., supra, advanced by the Complainant, is distinguished in part because in that case the panelist decided there was not convincing evidence that the relevant domain name was registered with the knowledge or permission of the relevant Complainant.
It could be argued that when an employee, servant or agent registers a domain name on behalf of a principal, it may be with the intention that the domain name belongs to the principal. That interpretation is specifically discounted in the present case because the Respondent was given the sound explanation that the Complainant had an ethical or religious objection to the use of the Internet. Although this position, despite its overtones of finality, may since have changed, the Respondent’s action can only be evaluated against the circumstances presented to him at the time.
To an extent, a registrant’s intentions at the time of a registration may be assessed retrospectively from the reality of the usage that follows. On the other hand, as discussed in more detail with citations in Saurikit, LLC v. Cykon Technology Limited, WIPO Case No. D2010-2193, bad faith registration cannot reasonably be constructed retroactively out of a good faith registration because of much later events. Nothing in the initial usage of the disputed domain names (at least before November 18, 2005) disturbs the Panel’s finding that bad faith did not enter into the act of registration.
As to possible use of the disputed domain names in bad faith, the earliest date when the Complainant instituted a Trade Mark Licence Agreement was November 18, 2005, and it cannot be construed to have applied earlier. Whether use of the disputed domain names thereafter was strictly in accordance with that Agreement is not strongly argued, but as discussed above, as late as March 18, 2008, the Complainant’s letter to the Respondent was appreciative in its reference to “your website” and “we want to help you as much as possible to do so”. Nevertheless, after the Complainant’s termination of the Respondent’s Broadwood Dealer Status in a letter dated January 31, 2011, the Respondent offered three disputed domain names (including <snowex.co.uk>) to the Complainant for GBP 35,000 in total, failing which “my solicitor will be reopening negotiations with parties in Europe and America who have already expressed an interest in obtaining these.”
The evidence does not support the Complainant’s suspicion that, as would be required by paragraphs 4(b)(i) or (iii) of the Policy, the disputed domain names were “registered ... primarily” for later sale or disruptive purposes. The clear threat to offer the disputed domain names to others, however, in the particular circumstances, is found by the Panel to have been an act of bad faith use in the general terms of paragraph 4(a)(iii) of the Policy, without reference to the illustrative provisions of paragraph 4(b) of the Policy, which are without limitation. Contemporaneously with that threat, according to screenshots provided in evidence, the <snowex.com> website featured “Gritex” machines or resolved to a website featuring “SaltDogg” machines, both in competition with the Complainant, constituting bad faith use in the terms of paragraph 4(b)(iv) of the Policy.
Without proof of both bad faith registration and bad faith use, the Complainant cannot satisfy the requirements of paragraph 4(a)(iii) of the Policy, and the Panel has found no evidence to indicate that at the times of registration it was in the Respondent’s mind to commit bad faith in any of the terms of paragraph 4(b) of the Policy or otherwise.
Reverting to the question of rights or legitimate interests under paragraph 4(a)(ii) of the Policy, and in the wording of paragraph 4(c)(i) of the Policy, the Panel finds there was “before any notice to you of the dispute ... use of ... the domain name[s] in connection with a bona fide offering of goods or services”. Consequently the Respondent had at least a legitimate interest in the disputed domain names under paragraph 4(a)(ii) of the Policy. Where previously well-established rights may have been negated later, that becomes a business or trademark dispute.
In summary the Complainant has not succeeded in proving on the balance of probabilities that the disputed domain names were registered in bad faith or that the Respondent did not have a legitimate interest in them. The decision does not give the Respondent any rights in the Complainant’s trademarks or preclude the bringing of a Complaint under the UDRP against any later registrant of the disputed domain names.
For all the foregoing reasons, the Complaint is denied.
Dr. Clive N.A. Trotman
Dated: May 23, 2011