WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dorma GmbH+Co.KG v. Steven Polgar and Linox Technology Pty Ltd
Case No. D2012-0113
1. The Parties
Complainant is Dorma GmbH+Co.KG of Ennepetal, Germany, represented by Surana & Surana International Attorneys, India.
Respondent is Steven Polgar and Linox Technology Pty Ltd both of Alexandria, New South Wales, Australia.
2. The Domain Name and Registrar
The disputed domain name <dorma.biz> is registered with Name.com LLC and the disputed domain name <dorma.info> is registered with GoDaddy.com, LLC. (Collectively, the “Registrars”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 23, 2012. On January 23, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name <dorma.info>. On January 23, 2012, GoDaddy.com, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name <dorma.info>, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on January 30, 2012, providing the registrant and contact information disclosed by GoDaddy.com, LLC, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 3, 2012.
The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on February 6, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 26, 2012.
By email dated February 6, 2012, Complainant notified the Center of its belief that Respondent Steven Polgar had registered the disputed domain name <dorma.biz> on January 23, 2012, the date Complainant filed its initial Complaint in this proceeding. Complainant requested that it be allowed to add the disputed domain name <dorma.biz> to its Complaint. By e-mail dated February 6, 2012, the Center advised Complainant that because its request was received during the notification process such amendment could not be made at that stage, but that Complainant could request the Panel appointed in connection with the proceeding to authorize amendment or supplement to the Complaint to add an additional disputed domain name.
Respondent did not submit any formal response to the initially notified Complaint with respect to <dorma.info>. However, Respondent Steven Polgar by e-mail dated February 6, 2012, transmitted the following e-mail message to the Center:
I refer to claimants continually harassment of myself and our companies domain names.
This has transpired over many years and we feel that this is nothing more than an attempt to harass our rightful ownership of domain names.
Linox Technology is the agent for Dorma bed linen in Australia and as such have the rightful ownership of domain names that are registered to myself and Linox.
Dorma.co.uk is the parent company who have owned the domain name since 1996.
We would be pleased to discuss these matters when convenient.”
The Center appointed Frederick M. Abbott as the sole panelist in this matter on March 9, 2012. 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.
By e-mail dated March 10, 2012, Complainant requested the Center to advise when it would be possible to request leave to file an amendment or supplement to its Complaint to add an additional disputed domain name. The Center advised the Panel of that request. On March 15, 2012, the Center transmitted to the parties by e-mail Administrative Panel Procedural Order No. 1, providing, inter alia:
“The Panel authorizes Complainant to amend its Complaint, or to file a supplemental pleading, so as to add <dorma.biz> to this administrative dispute resolution proceeding, within five calendar days of transmission of this Administrative Panel Procedural Order No. 1. Should Complainant elect to file an amendment or supplement, the Center shall promptly request verification from the registrar of the identity of the registrant. Upon receipt of that verification, and if it confirms that Respondent is the registrant, the Center shall notify Respondent of Complainant’s amendment or supplement.
Should Respondent be identified as registrant of <dorma.biz>, Respondent shall have a period of 20 calendar days (the ordinary time period for filing of a response to a complaint) to file a response to the amendment or supplement submitted by Complainant and notified by the Center.
The Panel notes that Complainant has the alternative to file a new separate complaint with respect to the additional domain name should it prefer to do so. Such filing would be independent of the present proceeding. This is not a recommendation, but merely noting the availability of an alternative.”
By e-mail dated March 19, 2012, Complainant transmitted its Supplemental Pleading to the Center, requesting to add the disputed domain name <dorma.biz> to this administrative dispute resolution proceeding, and incorporating allegations against Respondent Steven Polgar substantially similar to those alleged in its initial Complaint with respect to disputed domain name <dorma.info>. By e-mail dated March 23, 2012, the Center requested verification of registration information with respect to the additional disputed domain name from Name.com LLC. By e-mail dated March 23, 2012, Name.com LLC confirmed the registration details for the disputed domain name <dorma.biz>. By e-mail dated March 28, 2012, the Center re-notified Respondent of Complainant‘s Complaint and its additional Supplemental Pleading, and provided Respondent with a period of 20 calendar days in which to file a response. The due date for such response was April 17, 2012.
By e-mail dated March 29, 2012, a Director of Linox Technology Pty Ltd sent the following communication to the Center, which was forwarded to the Panel and Complainant:
“I writing to you in reference to the fax that you have sent us at Linox Technology.
I would like to inform you that Steven Polgar is no longer a Director of Linox Technology and has not been for the last 2 years. I would like for you to remove any references that might include Linox Technology, as this matter has nothing to do with Linox Technology.
I would like you to take this into consideration regarding this matter.”
Respondent provided no additional response.
By e-mail dated April 20, 2012, the Center advised the parties that the Panel would proceed to a decision.
4. Factual Background
Complainant is the owner of registrations for the trademark DORMA in Australia, Germany and numerous other countries. Representative registrations of the DORMA trademark include registration number 797508, effective June 17, 1999 on the Register of IP Australia, in international classes (ICs) 6, 7, 9, 16 and 19, covering, inter alia, mechanical locks and keys, revolving doors of metal, manually operated doors and gates, and glass doors of all kinds; International Registration under the Madrid System, number 722009, dated June 15, 1999, in ICs 6, 7, 9, 16, and 19, designating more than 50 countries; registration number 2201691, dated June 30, 1999, on the Trade Marks Registry of the United Kingdom Intellectual Property Office, in ICs 6, 7, 9, 16, and 19, and; registration number 388794, dated June 30, 1928, on the register of the German Patent Office; registration number 30777963, dated February 21, 2008, on the register of the German Patent Office; Community Trade Mark (CTM), registration number 00652337, dated October 22, 2009; Registration on the Principal Register of the United States Patent and Trademark Office, registration number 2,655,538, dated December 3, 2002, in ICs 6, 7, 9, 19, 20, 21, in 37 and; registration number 740855, dated December 23, 1996, on the Trade Marks Registry of India.
Complainant is a world leading producer and supplier of door technology, operating 87 wholly-owned companies in 49 countries, including Australia and New Zealand. Complainant employs more than 6600 employees, and has received numerous awards for its innovative products. Complainant was founded in Germany in 1908, and the trademark DORMA was adopted in 1927. The term “dorma” is an acronym formed from the surnames of the company founders Dorken and Mankel, and as such is a coined term. Complainant has registered a substantial number of domain names incorporating the DORMA trademark, including (but not limited to) <dorma.com>, where it operates a sophisticated commercial website.
According to the GoDaddy.com, LLC verification report, Respondent “Linox Technology Pty Ltd” is the registrant of the disputed domain name <dorma.info>, with "polgar, steven [xxxxx]@linox.com.au" listed as the Administrative and Technical Contact. The record of registration for this disputed domain name was created on March 10, 2009. According to GoDaddy.com, LLC, this disputed domain name was registered to Respondent in March 2009.
According to the Name.com LLC verification report, Respondent “Steven Polgar” is the registrant of the disputed domain name <dorma.biz>. That verification report does not indicate the date on which the record of registration of this disputed domain name was created. An InterNic WhoIs report furnished by Complainant indicates that the disputed domain name <dorma.biz> was registered on January 23, 2012.
Linox Technology Pty Ltd and Steven Polgar are collectively referred to in this decision as "Respondent", unless expressly indicated otherwise.
The disputed domain name <dorma.info> and, more recently, <dorma.biz> have been used to direct Internet users to Internet address ”www.linox.com.au/”. That address is the homepage of Linox Technology, which styles itself as "A World Leading Designer & Manufacturer of Architectural Stainless Steel Fittings". The homepage includes links to various sub-pages, including under “Products”, "Frameless Sliding Doors" and "Frameless Glass Pool Fencing". There is no apparent reference to Complainant or its products on Respondent’s website.
Complainant transmitted cease-and-desist notices to Respondent, for which postal receipts were returned verifying delivery, in November and December 2009. Complainant did not receive any response from Respondent.
Complainant previously initiated dispute settlement proceedings against Respondent under the .IN domain Name Dispute Resolution Policy (INDRP) with respect to the domain name <dorma.co.in>, and transfer of the disputed domain name to Complainant (and costs) were awarded in that proceeding by a decision dated January 6, 2011. Complainant initiated dispute settlement proceedings against Respondent under the INDRP with respect to the domain name <dorma.in>, and transfer of the disputed domain name was ordered on December 8, 2010. Complainant initiated dispute settlement proceedings against Respondent under the INDRP with respect to the domain name <dormaindia.in>, and transfer of the disputed domain name was ordered on November 30, 2010. Complainant has furnished copies of each of the decisions referenced above.
The registration agreements in effect between Respondent, on one hand, and GoDaddy.com, LLC and Name.com LLC, on the other hand, subject Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use. (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant alleges that it owns rights in the trademark DORMA in numerous countries, including Australia and New Zealand, as evidenced by registration in those countries, and supported by its long use in commerce in these countries, Germany and worldwide. Complainant contends that DORMA is a coined term and therefore distinctive. Complainant argues that the DORMA trademark is well-known within its relevant industry.
Complainant contends that the disputed domain names are identical to its trademark within the meaning of the Policy.
Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain names because: (1) Complainant‘s trademark was well known at the time the disputed domain names were registered; and (2) Respondent has fraudulently and in bad faith used the disputed domain names to direct Internet users to Respondent’s commercial website where it offers products similar to those of Complainant.
Complainant alleges that Respondent registered and is using the disputed domain names in bad faith because: (1) Complainant‘s trademark was well established when Respondent registered the disputed domain names; (2) Complainant has not authorized Respondent to use its trademark; (3) because of the way that Respondent is using the disputed domain names it is obvious that Respondent is aware of Complainant and its products, including in Australia where Respondent conducts its business; (4) Respondent is using the disputed domain names for commercial gain to attract Internet users to its website by creating confusion as to Complainant as source, sponsor, affiliate or endorser of Respondent‘s website; (5) Respondent is using Complainant‘s DORMA trademark as a keyword/tag for its website, further demonstrating that Respondent is attempting to divert Internet users to Respondent’s website, and; (6) to the best of Complainant‘s knowledge, Respondent has not registered DORMA as a trademark in Australia or elsewhere.
Complainant requests the Panel to direct the Registrars to transfer the disputed domain names to Complainant.
The Respondent did not formally reply to the Complainant’s contentions. Respondent Steven Polgar transmitted an e-mail to the Center asserting a right to use the disputed domain name <dorma.info> in connection with Linox Technology’s representation of “Dorma bed linen” in Australia. Respondent Linox Technology Pty Ltd sent a communication to the Center indicating that Respondent Steven Polgar has not been a Director of that enterprise for 2 years, and that this dispute has nothing to do with Linox Technology Pty Ltd. Respondent Linox Technology Pty Ltd requested that references to it be removed from this proceeding.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent has notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center notified Respondent of the Complaint and the Supplemental Pleading and commencement of the proceedings. Each of the two Respondents sent e-mail transmissions to the Center that effectively confirmed receipt of notice. The Panel is satisfied that Respondent received adequate notice of these proceedings and was afforded a reasonable opportunity to respond.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has provided substantial evidence of rights in the trademark DORMA in Australia, Germany and many other countries. Complainant has furnished certificates of trademark registration and evidence of substantial use in commerce of the DORMA trademark (see Factual Background, section 4, supra). Respondent has not challenged Complainant‘s assertion of trademark rights. Complainant has established rights in the DORMA in Australia and Germany, among other countries.
Complainant has provided substantial evidence to support that the DORMA trademark is well-known among persons familiar with the commercial door industry.
The Panel finds the disputed domain names <dorma.biz> and <dorma.info> are identical to the DORMA trademark within the meaning of the Policy.
The Panel determines that Complainant has established rights in the DORMA trademark and that the disputed domain names are identical to that trademark.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c))
With respect to this element of the Policy, Complainant has argued that Respondent lacks rights or legitimate interests in the disputed domain names because: (1) Complainant‘s trademark was well known at the time the disputed domain names were registered, and; (2) Respondent has fraudulently and in bad faith used the disputed domain names to direct Internet users to Respondent’s commercial website where it offers products similar to those of Complainant. With respect to the bad faith element of the Policy, Complainant has further argued that: (1) Respondent has not been known by the disputed domain names, nor has it established trademark rights, and; (2) Respondent has not been authorized to use Complainant‘s trademark. The Panel finds that Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain names.
Respondent Linox Technology Pty Ltd has asserted that Steven Polgar has not been employed as a Director of the enterprise for two years, and that it has nothing to do with this dispute. However, Linox Technology Pty Ltd is the listed registrant of the disputed domain name <dorma.info>. Moreover, Linox Technology Pty Ltd has provided no evidence regarding the employment record and/or status of Steven Polgar. Under these circumstances, the Panel is constrained to maintain Linox Technology Pty Ltd as Respondent in this proceeding. An order of transfer that does not name the listed registrant of the disputed domain name might not be given effect by the Registrar.1
The statements of Respondent Steven Polgar regarding an agency relationship with “Dorma bed linens” are at odds with the fact that the disputed domain names are redirected to the website of Linox Technology Pty Ltd, which supplies products competing with those of Complainant.
Respondent has not provided any evidence to support a finding of rights or legitimate interests in the disputed domain names.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These include:
“(ii) [respondent has] 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 [respondent has] engaged in a pattern of such conduct; or (iii) [respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or; (iv) by using the domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [respondent’s] web site or location or of a product or service on [respondent’s] web site or location”.
Respondent registered the disputed domain names directly incorporating the coined-term distinctive trademark of Complainant, and has used those disputed domain names to direct Internet users to its own commercial website where it offers products that compete with those of Complainant. The Panel therefore finds that Respondent has used the disputed domain names for commercial gain to attract Internet users to its website by creating a likelihood of confusion with Complainant‘s mark as to whether Complainant is source, sponsor, affiliate or endorser of Respondent‘s website.
Respondent has registered a number of domain names, including the disputed domain names in this proceeding and domain names in the “.in” country code, that incorporate Complainant‘s trademark. Respondent has attempted to disrupt the business of a competitor, as well as prevented that competitor from registering its trademark in corresponding domain names (in a pattern of such conduct).
The Panel determines that Respondent registered and is using the disputed domain names in bad faith within the meaning of paragraph 4(b)(ii)-(iv) of the Policy.
The panel will direct the Registrars to transfer the disputed domain names to Complainant.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, <dorma.biz> and <dorma.info>, be transferred to Complainant.
Frederick M. Abbott
Dated: April 26, 2012
1 There may be extraordinary circumstances in which a panel determines that it is appropriate to redact the identity of a respondent. For example, there have been instances of confirmed identity hijacking, and use of such hijacked identity to register a domain name. Under such confirmed extraordinary circumstances, redaction of a respondent's identity may be appropriate. This is not such an extraordinary circumstance. Respondent Linox Technology Pty Ltd has not denied that Steven Polgar was an employee of the company, nor has it argued or provided evidence that Steven Polgar registered <dorma.info> without authority.