WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dyson Limited v. Whois Privacy Protection Service, Inc. and Guillermo Gregorio, 1314 INFORMATICA, S.L.
Case No. D2012-0702
1. The Parties
The Complainant is Dyson Limited of Malmesbury, Wiltshire, United Kingdom, represented by Wragge & Co., United Kingdom.
The Respondent is WhoIs Privacy Protection Service, Inc. of Bellevue, Washington, United States of America and Guillermo Gregorio, 1314 INFORMATICA, S.L. of Madrid, Spain.
2. The Domain Name and Registrar
The disputed domain name <bladelessfansmall.com> is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 3, 2012. On April 4, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 4, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 16, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 17, 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 the Respondent of the Complaint, and the proceedings commenced on April 18, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 8, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 10, 2012.
The Center appointed Staniforth Ricketson as the sole panelist in this matter on May 16, 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 Administrative Panel Procedural Order No 1 dated June 14, 2012, the Panel sought further submissions from the Complainant with respect to its reputation in, and usage of, the expression “bladeless fan”. Shortly after this on June 18, 2012, the Complainant requested that the proceeding be suspended as it appeared that the parties might be moving towards a resolution of their dispute. However, on July 18, 2012, in an email communication to the Centre, the Complainant withdrew this request and asked that the Panel proceed to its determination. Accordingly and in keeping with Procedural Order No. 1 and further directions by the Panel, the Center re-instituted the proceeding on July 23, 2012 and invited the Complainant to submit any further material until July 30, 2012. The Complainant duly filed a submission on July 30, 2012. No further submissions by way of reply were received from the Respondent by the due date for decision (August 10, 2012), and the Panel therefore moved to finalize its determination.
4. Factual Background
So far as the Complainant is concerned, the factual background to this proceeding is identical to that in a parallel proceeding (Dyson Limited v. Richard Delas, WIPO Case No. 2012-0701) which has already been considered by the Panel in relation to a different disputed domain name and different respondent.
In short, the Complainant is one of a group of United Kingdom of Great Britain and Northern Ireland (“UK”) companies which is engaged in the design, manufacture and sale of domestic appliances including vacuum cleaners, hand dryers and fans. It is headed by the well-known inventor, designer and developer, Sir James Dyson. According to the Complaint, the group as a whole trades in more than 50 countries, with 80% of its products being sold outside the UK. Of immediate relevance to the present proceeding is the Air Multiplier range of domestic fans, which was launched by the Complainant in 2009, with worldwide sales of approximately 700,000 since then. These fans are markedly different to domestic fans that were on the market at the time, in that they do not have large spinning fan blades which cause air to be blown, but rather have a small impeller, built into the foot of the fan. As a result, the Complaint asserts that these fans have widely become known as “bladeless fans”.
The Complainant has responsibility within the Dyson group for the trade marks and domain names used by all the companies within the group. Hence, it is the Complainant in this proceeding.
So far as the Respondent is concerned, he is a Spanish resident who has been registered as the owner of the disputed domain name since December 26, 2011 (Complaint, Annex 2). It appears further from the Complaint that the disputed domain name resolves to a website from which Internet orders for various domestic appliances, including fans, may be made. Some of these fans, moreover, appear to be either copies of the Complainant’s products or the actual product itself. The website to which the disputed domain name resolves includes the email addresses firstname.lastname@example.org and email@example.com.
5. Parties’ Contentions
The submissions of the Complainant, including its Response to Procedural Order No 1, are very similar to those made in the parallel proceeding Dyson Limited v. Richard Delas, WIPO Case No. D2012-0701, and may be summarized as follows.
While the Complainant has no registered trade mark for the words “bladeless fan” with respect to fans and similar products, its argument is that it nonetheless has common law rights in these words as an unregistered mark based on its extensive use of them in the promotion of its fan product. Apart from its evidence of sales since 2009 (700,000 units), it refers here to the use of these words on its website as well as Google searches which show numerous hits for the words “bladeless fan” in relation to this product. On the basis that this satisfies the first part of paragraph 4(a) of the UDRP, the Complainant then argues that the disputed domain name is confusingly similar to its unregistered trade mark BLADELESS FAN, and that this immediate impression is not ameliorated or lessened by the addition of the words “fan”, “small” or the generic top-level domain (gTLD) suffix “.com”. In its further submissions dated July 30, 2012, the Complainant has provided additional evidence that its products are known by the name “bladeless fan”, filing in support here statements from the trading/marketing directors of two large UK home and electrical goods retailers (Argos and Comet) that, to their knowledge, the name “bladeless fan” is widely used, and known, by their customers as a product emanating from the Complainant. In the same submissions, the Complainant refers again to the evidence of use already filed with the Complaint itself.
As to the second requirement of paragraph 4(a) of the UDRP, namely that the Respondent has no rights or legitimate interests in the disputed domain name, the Complainant asserts that this usage is occurring without its authorization, and that the Respondent has no relationship with the Complainant or permission from it to use its trade mark. It argues further that, while the Respondent is offering goods from the website linked to the disputed domain name, this is not a bona fide offering of goods as it is such as to lead consumers into believing that the goods are those of the Complainant while the Complainant believes these to be counterfeit or copies. It says further that, even if the goods are legitimate, the use of its trade mark in relation to their resale does not automatically include the right to use the Complainant’s trade mark (and by extension any other terms in which the Complainant has rights) as a domain name, absent a license agreement or other special circumstances, referring here to the panel decision in The Stanley Works and Stanley Logistics, Inc. v. Camp Creek, Co., Inc., WIPO Case No. D2000-0113. The Complainant goes on to say that the Respondent does not need to use the disputed domain name for the purposes of carrying on its business, and asserts that its use is rather a deliberate attempt to pass itself off as authorized by the Complainant in order to benefit from the Complainant’s substantial goodwill and reputation. Furthermore, the Respondent has no registered trade mark of its own consisting of or incorporating the words “bladeless fan”. Accordingly, the Complainant contends that the Respondent can have no rights or legitimate interest in the disputed domain name.
As to the third requirement of paragraph 4(a) of the UDRP, namely registration and use in bad faith, the Complainant relies on the various matters referred to under the preceding requirement, and, in addition, argues that the adoption of the disputed domain name by the Respondent has been deliberately adopted by the Respondent to mislead consumers into believing that they are purchasing the Complainant’s products, repeating here its assertion that the Complainant’s products are well-known by the name “bladeless fan”. There is a further argument that the Respondent has deliberately chosen to “mimic the Complainant’s trading style”, referring here to such matters as the similar “look and feel” of the Respondent’s website to that of the Complainant (see Complaint, Annex 5 and 8). In addition, the Respondent’s website includes multiple references to the words DYSON and AIR MULTIPLIER, with similar font and design elements to those used by the Complainant, and has used various images and text protected by copyright that have been copied from the Complainant’s website (Complaint, Annex 8 and 9). In the Complainant’s view, these infringements of its copyright are further indications of bad faith on the part of the Respondent in its use of the disputed domain name.
The Complainant further submits that there are indications on the images of the fan products displayed on the Respondent’s website that show that these are not “genuine” Dyson products, pointing to small differences such as the position of button controls, the presence of other markings not found on the Complainant’s products, the absence of any of the Complainant’s trademarks and the fact that they are offered at significantly cheaper prices to those of the Complainant. The Complainant submits that these differentiating features are unlikely to be apparent to online consumers, who will then be misled into believing that the products originate from, or are authorized by, the Complainant.
Furthermore, the Complainant notes that the Respondent previously had a website linked to the domain name <bladelessfanstore.com>. The Complainant became aware of this in October 2011, sent a “cease and desist” letter in December 2011, and shortly after this the site was taken down. However, following this, the Respondent registered the disputed domain name, with the content of the website to which this domain name resolves being almost identical to that of the website that had been taken down.
The Complainant further submits that evidence of bad faith is to be seen in the Respondent’s choice to keep its identity secret on its website, meaning that customers are unable to identify who to contact.
The Complainant concludes with a series of general allegations that the Respondent’s use of the words “bladeless fans”, coupled with various other matters on its website, is inherently deceptive, and thus underlines its bad faith in both registration and use of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 5(e) of the Rules provides that, where no response is submitted, in the absence of exceptional circumstances, the Panel is to decide the dispute based upon the Complaint. Such default on the part of the Respondent does not relieve the Complainant from being required to establish that each of the requirements of the UDRP, in particular those under paragraph 4(a), is established. Additionally, paragraph 14(b) of the Rules provides that, “if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences there from as it considers appropriate.”
Accordingly, the Panel proceeds to deal with the elements required to be satisfied under paragraph 4(a) of the UDRP, noting that it is necessary for the Complainant to satisfy each one if it to succeed in achieving the relief requested. As will be seen below, the Complainant’s inability to establish the first of these makes it unnecessary for the Panel to consider and determine any of the detailed evidence and submissions that have been made concerning the remaining requirements. It will also be seen that the absence of any Response from the Respondent has no relevance to this determination.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the UDRP requires that the Complainant establish that the disputed domain name is “identical or confusingly similar to a trademark or service mark in which the complainant has rights”. There are therefore two limbs of paragraph 4(a)(i) of the UDRP that the Complainant must satisfy: first, that it has “rights in a trade or service mark” (this need not be a registered mark), and, secondly, that the disputed domain name is “identical or confusingly similar” to that mark.
Unfortunately for the Complainant, and for the same reasons as in Dyson Limited v. Richard Delas, WIPO Case No. D2012-0701, it must fall at the first of these hurdles. It has no registered trade mark, national or otherwise, in respect of the words “bladeless fan”, and must therefore establish that these words are capable of protection as an unregistered trade mark by virtue of the reputation attaching to them through usage and consumer recognition. The Complainant is certainly correct to submit that registration of a mark is not required for the purposes of paragraph 4(a)(i) of the UDRP. On the other hand, it is still necessary under the formulation “a trademark or service mark” to show that the alleged mark, where it is unregistered, has nonetheless operated as a mark to identify goods or services associated with the Complainant. In the present case, the burden on the Complainant is even greater, in that the words “bladeless fan” are almost completely descriptive of the goods themselves, namely domestic fans without blades. As with any descriptive expression, it is therefore necessary to show that there is some secondary meaning associated with this expression that indicates a specific trade origin rather than just a characteristic or quality of the goods concerned. While the Panel is not required to apply any particular system of national law to questions before it, it is enjoined under paragraph 15(a) of the Rules to proceed to a determination on the basis of “the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. “In this regard, the present Panel derives support from the particular approach of Anglo-Australian courts in relation to the protection of descriptive names and marks under the common law principles of passing off, as contained in such cases as Reddaway v. Banham  AC 199; Reckitt & Colman Ltd v. Borden Inc  RPC 341; and Hornsby Building Information Centre Pty Ltd v. Sydney Building Information Centre Pty Ltd  140 CLR 216.
Accordingly, the question for the Panel here is whether there is sufficient evidence before it to indicate that the expression “bladeless fan” has been used by the Complainant as a mark of origin possessing a secondary connotation in addition to, and separate from, its directly descriptive meaning. On the evidence before it (which is the same as in Dyson Limited v. Richard Delas, WIPO Case No. D2012-0701), the Panel is unable to conclude that this is the case for following reasons:
(i) The website pages exhibited by the Complainant at Annex 5 do not provide any clear evidence of the expression “bladeless fan” being used as a mark in relation to the fan products: there is no particular highlighting of the expression on any of these pages, unlike the clear highlighting that occurs in relation to the words “Dyson” and “Air Mulitiplier” which are identified specifically as trademarks (both being registered as such). Indeed, the words “bladeless fan” do not appear as such in any of the accompanying descriptive material: rather, the relevant references that appear here are “no blades”, “bladeless desk fan” and “bladeless tower fan”, and these appear simply as part of surrounding text describing the particular products that are advertised on those pages. To confirm these conclusions, the Panel visited the Complainant’s website on May 29, 2012, but could find no other instances of the expression “bladeless fan” being highlighted or emphasized in a trademark sense in relation to these products.
(ii) The press cuttings exhibited in Annex 6 of the Complaint do not take matters much further: while there are references in these various articles to “bladeless fans”, these appear to be direct descriptions of the product, which is obviously a highly innovative and attractive one, rather than trademark uses that identify a specific trade provenance (which is clearly “Dyson”, in any event).
(iii) The Google searches for the expression “bladeless fan” (Complaint, Annex 8) appear, at first impression, to be more significant here, in that the top results are all for products produced by the Complainant. On closer inspection, however, they do not really answer the question of whether this expression was being used in a trade mark sense rather than just descriptively, and no further analysis of the way in which the Google searches were conducted has been provided and how their results are to be interpreted. Furthermore, each search throws up the words “Dyson” and “Air Multiplier” which are themselves registered trade marks. This leads to a further difficulty for the Complainant, namely that, leaving aside the descriptiveness of the expression “bladeless fan”, it is always more difficult to show that any alleged mark is being used as a mark where this occurs in conjunction with other “stronger” marks (as in the present case).
In light of the above, the Panel sought further submissions and evidence from the Complainant as to the use of the expression “bladeless fan” as a trade mark, rather than as a pure descriptor (see Procedural Order No 1). This evidence consists of two unsworn statements from the following persons:
1. Huw Crwys-Williams, trading director of Argos Ltd. This is a subsidiary of Home Retail Group plc and, according to the 2011 Annual Report of Home Retail Group (Annex C), Argos is the UK’s largest general merchandise retailer, with 751 stores in the UK and Ireland (page 4) and a turnover of GBP 4,194 million in 2010/11 (Supplemental Filing, page 15). It is the UK’s second largest Internet retailer, with 400 million visits a year (Supplemental Filing, page 8). The Complainant states that it understands that Argos sells more fans in the UK than any other retailer. Mr Crwys-Williams’ statement is contained in an email dated June 21, 2012 to David Hollander of the Complainant, and the relevant parts are as follows:
I have been asked by Dyson what, in my experience, people are referring to when they use the term “bladeless fan”.
I often refer to Dyson’s fan products as “bladeless fans”. Whilst I appreciate that the term “bladeless fan” could be applied to any fan without “traditional” blades, in my experience, when people use the term, they are using it to refer to Dyson’s fan products, as opposed to as a general term for non-traditional fans.
To my knowledge, Dyson was the first to market this sort of non-traditional fan on any significant scale, and they have sold very well in Argos’ stores.
2. Michelle Gorringe-Smith, head of trading – home appliances, Comet Group. According to information on the Comet website (see Supplemental Filing, Annex D), Comet is is the second largest retailer of electrical goods in the UK, with at least 240 stores and a turnover of GBP 1,537.9 million in 2010/11. Ms. Gorringe-Smith’s statement is also contained in an email dated June 22, 2012 to David Hollander of the Complainant, and the relevant parts are as follows:
I have been asked by Dyson what, in my experience, people are referring to when they use the term “bladeless fan”.
I and my Store Colleagues often refer to Dyson’s fan products as “bladeless fans”. Whilst I appreciate that the term “bladeless fan” could be applied to any fan without “traditional” blades, in my experience, when people use the term, they are using it to refer to Dyson’s fan products, as opposed to as a general term for non-traditional fans.
To my knowledge, Dyson was the first to market this sort of non-traditional fan on any significant scale, and they have sold very well in Comet’s stores.
Although unsworn, it is open to the Panel to accept such statements as having some probative value. However, they are essentially statements of opinion as to what “people” mean when they use the term “bladeless fan” and it is far from clear just what is meant by the word “people” – whether this is a reference to other staff members in the stores, to customers, or to the public at large. Lack of clarity on this important issue makes it difficult for the Panel to assess whether the words “bladeless fan” have, and are being used with, a trade mark connotation. Both the persons providing these declarations clearly have the experience and expertise to provide meaningful opinion evidence, but for such opinion to carry weight it needs to be clear what the factual basis for it is. Furthermore, in a case such as this, opinion evidence also needed to be supplemented by evidence of actual usage by the Complainant itself, that is, evidence as to the way in which the Complainant’s products actually enter the marketplace and how they are advertised and promoted. On the material before it, however, the Panel is unable to determine whether the words “bladeless fan” have been used as a trade mark by the Complainant, rather than just as a general description of the product which is usually identified by reference to the registered trade marks DYSON or AIR MULTIPLIER.
In light of the above, the Panel concludes that the Complainant has not been able to establish that the expression “bladeless fan” is a trade mark in which it has “rights”. Accordingly, the first requirement of paragraph 4(a) of the UDRP is not made out. This is the same as in the Panel’s earlier decision in Dyson Limited v. Richard Delas, WIPO Case No. D2012-0701, which is hardly surprising given that the Complainant has chosen to rely on the same evidence of use that was found to be lacking in that proceeding. These findings are in contrast to the earlier case brought by the Complainant in relation to the disputed domain name <air-multiplier.org>, where the expression “air multiplier” was the subject of a trade mark registration by the Complainant: see further Dyson Limited v. Wilson Blues, WIPO Case No. D2011-1563.
In view of this finding, it is unnecessary for the Panel to proceed to a consideration of the second requirement of paragraph 4(a)(i) of the UDRP, namely that the disputed domain name is identical or confusingly similar. Clearly, however, such a finding would have followed had the Panel found for the Complainant on the issue of rights in a trade mark.
B. Rights or Legitimate Interests
Given its findings under paragraph 4(a)(i) of the UDRP, it is also unnecessary for the Panel to make any findings in relation to the requirement of “rights or legitimate interests” under paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Given its findings under paragraph 4(a)(i) of the UDRP, it is likewise unnecessary for the Panel to make any findings in relation to the requirement of registration and use of the disputed domain name in bad faith” under paragraph 4(a)(iii).
For the foregoing reasons, the Complaint is denied. The Panel reaches this conclusion with some regret, as here appears to be evidence in the Complaint with respect to paragraph 4(a)(ii) and (iii) of the UDRP that suggests that the Respondent is engaging in a course of conduct that may well be confusing and an infringement of copyright to boot. Such matters may give rise to other rights of action against the Respondent, but cease to be relevant to the present proceeding once the Complainant has failed to show that it has rights in a trade mark that has been incorporated in the Respondent’s domain name.
Date: August 7, 2012