WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Rigol Technologies, Inc. v. John Brand
Case No. D2012-1947
1. The Parties
The Complainant is Rigol Technologies, Inc. of Chang Ping District, Beijing, China, represented by Hahn Loeser & Parks LLP, United States of America (the “USA”).
The Respondent is John Brand of Monument, Colorado, United States of America, represented by Sherman & Howard, L.L.C., United States of America.
2. The Domain Name and Registrar
The disputed domain name <rigolusa.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 2, 2012. On October 3, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 5, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On October 15, 2012, the Respondent sent a pre-commencement email communication to the Center with a request to forward the Complaint to him. The Center responded that the Complaint was still undergoing the verification process.
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 October 17, 2012.
In accordance with the Rules, paragraph 5(a), the due date for Response was November 6, 2012. On October 29, 2012, the Respondent transmitted to the Center an email communication with a request to see the Complaint. The Center advised the Respondent that the Complaint had been sent on October 17, 2012 and resent it to him on October 31, 2012. On November 1, 2012 the Respondent requested an extension of the period within which to file his Response which, due to an apparent technical issue, the Center only received on November 19, 2012. In any event, the Response was filed with the Center on November 6, 2012.
4. Factual Background
The Complainant is a corporation located in China. It operates a company in the USA under the name Rigol Technologies USA, which it incorporated in August 2009 in the State of Ohio. The Complainant has used the trade mark RIGOL since 2009 in connection with oscilloscopes, galvanometers, spectrographs and related scientific surveying and measuring apparatus.
The Disputed Domain Name was first registered by the Respondent on November 6, 2008 and renewed by him on November 7, 2010. The Respondent had a commercial relationship with the Complainant, which ended on July 8, 2009. The website attached to the Disputed Domain Name features the Complainant’s products exclusively.
5. Parties’ Contentions
The Complainant contends that it acquired rights in the trade mark RIGOL as a consequence of the use that it has made of it in relation to scientific surveying and measuring equipment. It advises in this respect that it incorporated a company in the USA under the name Rigol Technologies USA in August 2009 and that it has been using the RIGOL mark in interstate commerce since that time.
The Complainant contends that the Disputed Domain Name is confusingly similar to its RIGOL trade mark, as the Disputed Domain Name is substantially similar to the mark.
The Complainant also contends that the Respondent lacks rights or legitimate interests in the Disputed Domain Name in that:
a. the Respondent is not connected with the Complainant, nor is he commonly known as Rigol;
b. the Respondent was previously employed by the Complainant and, although he was responsible for securing the Disputed Domain Name on behalf of the Complainant, after the termination of his relationship with the Complainant in July 2009, the Respondent failed to turn over control of the Disputed Domain Name to the Complainant; and
c. the Respondent is not making legitimate noncommercial or fair use of the Disputed Domain Name because he knew of the Complainant’s rights in the Disputed Domain Name prior to obtaining and using it.
The Complainant further contends that the Disputed Domain Name was registered and is being used in bad faith. The Complainant relies on the date that the Respondent renewed the Disputed Domain Name, namely November 7, 2010, as bad faith registration, since the Respondent was then no longer affiliated with the Complainant. The Complainant asserts that when the Respondent left employment with the Complainant on July 8, 2009, he was not authorized to retain ownership of the Disputed Domain Name.
The Complainant also contends that the Disputed Domain Name contains content indicating that it is being operated on behalf of the Complainant, particularly insofar as it includes a picture of the Complainant’s headquarters and links to distributors of the Complainant’s products.
The Complainant argues that the fact that the Respondent is now employed by a competitor of the Complainant is supportive of its argument that the Respondent is improperly retaining possession of the Disputed Domain Name. The Complainant submits, lastly, that the Respondent’s purpose in renewing the Disputed Domain Name was to create a likelihood of confusion and to prevent the Complainant from obtaining a corresponding domain name.
The Complainant requests that the Disputed Domain Name be transferred to it.
The Respondent submits background facts to his relationship with the Complainant (supported by an affidavit attested to by him) to the effect that he first met the Complainant in 2004, after which a commercial relationship was pursued with the primary aim of the Respondent becoming the Complainant’s distributor in the USA. He denies that he was an employee of the Complainant. The Respondent advises that while there was no written agreement between the parties, he relied on the Complainant’s verbal assurances. During November 2008, the Respondent suggested to the Complainant that its websites at “www.rigolna.com” and “www.rigol.com” were not suitable for the USA market. The Respondent subsequently, with the Complainant’s permission, registered the Disputed Domain Name in 2008. The Respondent then developed a website associated with the Disputed Domain Name which he advises merely provides static information about the Complainant’s products. The Respondent refers to this as a “brochure” website. The parties’ business relationship was terminated by the Complainant in July 2009. The Respondent explains that this termination gave rise to disputes between the parties regarding the parties’ obligations to each other, giving rise to numerous exchanges between the parties and their respective counsel in an effort to resolve the differences. The Respondent provides copies of letters that he received from the Complainant’s counsels in USA and Beijing in this regard and points out that in none of these letters reference was made to the Disputed Domain Name or the fact that the Complainant objected to the Respondent’s ownership of the Disputed Domain Name. The Respondent contends that since termination of the parties’ relationship in July 2009, the website attached to the Disputed Domain Name has not been changed. The Respondent also submits that while he moved on to other activities following the Complainant’s decision to sever the relationship, he nonetheless maintained an optimistic view that the relationship with the Complainant might at some point be re-established.
The Respondent advises in connection with the renewal of the Disputed Domain Name, that it was not done deliberately or intentionally but that it occurred as an automatic debit action by the Registrar.
The Respondent does not dispute that the Disputed Domain Name contains a word which is identical to a term in which the Complainant holds trade mark rights.
The Respondent contends that he does have a legitimate interest in the Disputed Domain Name, in that:
a. the registered the Disputed Domain Name with the knowledge and approval of the Complainant, for the sole purpose of developing a USA based distribution arm for marketing the Complainant’s products and that this was an authorised activity in which he engaged for over one year,
b. although he has not used the Disputed Domain Name since July 2009, he maintained this legitimate interest on the basis of his hopeful expectation of the re-establishment of a relationship between the parties.
The Respondent denies that he acted in bad faith and indicates that the initial registration of the Disputed Domain Name was with the knowledge of the Complainant, with the sole motive to support the business of the Complainant. The Respondent states that the initial registration was not made to divert customers, or create confusion, or to interfere with the Complainant’s business or to act in any manner that was not in the best interest of the Complainant.
The Respondent also denies that there has been bad faith use of the Disputed Domain Name. He submits that up until July 2009, the website associated with the Disputed Domain Name was used to promote the Complainant’s products and subsequently, as there has not been any change to this website, anyone visiting the website would be redirected to information about the Complainant and its products and services and not the Respondent or any competitor of the Complainant. The Respondent argues that there could not be any bad faith if, following the termination of the relationship between the parties for a period of three and a half years, the Complainant never stated any objection to the Respondent in connection with his continued retention of ownership of the Disputed Domain Name.
C. Supplemental Filings
The Complainant filed a Supplemental Filing after the Respondent’s Response had been noted, stating:
a. that the Respondent’s renewal of the Disputed Domain Name after termination of the parties’ business relationship, while he was working for a competitor of the Complainant, confirms that the Disputed Domain Name was registered in bad faith;
b. that the Respondent explicitly acknowledged that an offer to sell or license a domain name to the Complainant is evidence of bad faith and that he became guilty of committing that very act when he sent an email to the Complainant after being served with the Complaint, with the following statements: “I am surprised you and your client have taken this route. Y don’t you make an offer and save lots of time and $?”;
c. that the Respondent’s decision to hold the Disputed Domain Name hostage demonstrates bad faith and that the argument that he renewed the Disputed Domain Name and continued to hold it in the hope that he would do business with the Complainant in future is ridiculous and also disingenuous, as he is employed by a competitor of the Complainant;
d. that potential customers are confused by the website associated with the Disputed Domain Name, in connection with which the Complainant provided copies of blog entries with questions asking if the said website was an official website of the Complainant.
The Respondent subsequently also filed a Supplemental Filing, objecting to the right of the Complainant to file a supplemental filing in the absence of a request from or prior authority of the Panel. He also disputes that the Complainant advanced any explanation about why the matters in its Supplemental Filing constituted new facts that could not have been included in the initial Complaint.
The Respondent nevertheless deals with the specific submissions made by the Complainant in its Supplemental Filing, maintaining that the renewal of the Disputed Domain Name was automatic and did not amount to an intentional act of registration. The Respondent also reacted to the Complainant disclosing his email soliciting an offer, by indicating that it amounted to an “off-hand comment” to the Complainant about transferring the Disputed Domain Name and that it does not support the Complainant’s allegations of bad faith. The Respondent requested further time in which to file a suitable rebuttable, should the Panel elect to accept the Complainant’s Supplemental Filing.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove:
(i) That the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which it has rights; and
(ii) That the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) That the Disputed Domain Name has been registered and is being used in bad faith.
A. The Supplemental Filings
The Complainant’s Supplemental Filing deals with an email that the Respondent sent to the Complainant after the Complaint had been filed, the Complainant’s view on the Respondent’s stated expectation of a renewed commercial relationship between the parties and evidence of possible confusion caused by the website associated with the Disputed Domain Name. The Respondent’s Supplemental Filing answers to these statements to some degree. Both parties, however, also re-argue in their Supplemental Filings matters previously set out in the Complaint and Response or, alternatively, matters that are not relevant or should have been included in the earlier proceedings.
It is generally accepted that, in line with the Policy stated objective of prompt and efficient resolution of domain name disputes, unsolicited supplemental filings (namely those that are not expressly requested by the Panel) will only be allowed in exceptional circumstances. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) at paragraph 4.2 in this regard. With very limited exceptions, the exceptional circumstances involve matters that arise after the initial pleadings were filed and which could not reasonably have been anticipated at that time. See Digital Ceramic Systems Limited v. Baltea SRL, WIPO Case No. D2012-1198 and also Mani Brothers LLC v. Lincoln Gasking, WIPO Case No. D2008-0097, where the panels confirmed that supplemental filings should address relevant issues which were not known by the filing parties at the time that they filed their documents.
The email submitted with the Supplemental Filing of the Complainant was sent after the Complaint was filed and so were the blog entries demonstrating possible confusion, so they meet the first criteria for admission. They clearly could not have been anticipated by the Complainant. The Panel also deems the Respondent’s statement that he was hoping for the relationship between the parties to re-commence, to be a statement that the Complainant could not reasonably have anticipated, so the Panel admits these three aspects in the Complainant’s Supplemental Filing. The balance of the Complainant’s Supplemental Filing consists primarily of re-argument of matters included in the Complaint and/or that should have been included in the Complaint. This is not admitted and will not be considered by the Panel in rendering its decision. Insofar as the Supplemental Filing of the Respondent is concerned, the Panel is prepared to take into account the Respondent’s reaction to the disclosure of his email inviting the Complainant to make an offer. The Respondent’s re-argument in his Supplemental Filing is also not accepted, for the same reason as that of the Complainant. The Panel does not consider that there is any point in allowing the Respondent a further opportunity to file Supplemental Filings, as all the issues have been properly ventilated in the pleadings submitted. This request consequently fails.
B. Identical or Confusingly Similar to a mark in which the Complainant has rights
The Complainant’s claim of ownership in the trade mark RIGOL is not disputed by the Respondent.
The Panel consequently finds that the Complainant has succeeded, for Policy purposes, in establishing rights in RIGOL through use that it has made of it in commerce. The Panel also finds that the combination of the Complainant’s trade mark with the geographic descriptor “USA” suffice for purposes of a finding that the Disputed Domain Name is confusingly similar to a mark in which the Complainant has rights.
The Complainant has satisfied this Policy requirement.
C. Rights or Legitimate Interests
The facts set out in the pleadings clearly indicate that the Respondent initially acted as an agent of the Complainant in registering the Disputed Domain Name on its behalf, with the view of furthering the Complainant’s trade in the USA. The Respondent himself makes numerous comments to the effect that he wanted to become the Complainant’s distributor in the USA and that his motive was to support the business of the Complainant. He says also that his initial registration of the Disputed Domain Name was not to interfere with the Complainant’s business or to act in any manner which was not in the best interests of the Complainant. The Respondent says explicitly in his sworn affidavit that all of his efforts at that time were for the benefit of the Complainant and that he was “acting as a master representative for Rigol in the United States”. When the relationship with the Complainant terminated, the Respondent could no longer logically maintain that he held the objective stated above and, at the same time, a legitimate right or interest in the Disputed Domain Name. The Panel agrees with the findings in one of the case citations provided by the Respondent namely A. Nattermann and Cie. GmbH and Sanofi-aventis v. Watson Pharmaceuticals, Inc., WIPO Case No. D2010-0800 and the cases mentioned therein being Lonely Planet Publications Pty Ltd v. Mike Tyler, WIPO Case No. D2004-0670 and Levantur, S.A. v. Media Insight, WIPO Case No. D2009-0608, namely that paragraph 4(ii) of the Policy refers to a right or legitimate interest existing at the time of the Complaint. On this basis, a registrant who did not have rights or legitimate interests at the date of registration of a domain name may subsequently acquire this and, conversely, a registrant who had rights or legitimate interests may lose it, for example, if the registrant ceases to distribute the trade mark owner’s goods.
In this instance, the Panel finds on the evidence that the Respondent does not have a right or legitimate interest in respect of the Disputed Domain Name for purposes of safe-harbor protection under the second element of the Policy, as the relationship between the parties terminated in July 2009.
The Panel therefore finds that the second requirement of the Policy is satisfied.
D. Registered and Used in Bad Faith
The Respondent relies principally on the fact that because his initial registration of the Disputed Domain Name was not made in bad faith, the Complainant cannot succeed in terms of paragraph 4(a)(iii) of the Policy, which requires that both registration and use in bad faith must be proven for a complainant to succeed. There has been debate on the issues relating to the distinction between bad faith use and bad faith registration and also, the effect of the renewal of a domain name in bad faith in view of paragraph 4(a)(iii) which provides a non-exhaustive list of deeming provisions and paragraph 2 of the Policy, which states “By applying to register a domain name or by asking us to maintain or renew a domain name registration you hereby represent and warrant to us that…d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights.” These are developing areas of UDRP jurisprudence and are recognized as such in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 3.1.
In dealing with questions arising from these debates, some panels have previously looked at the totality of the circumstances and assessed “registration and use in bad faith”, as a unitary concept, especially in view of the possible undesirable outcome that this may otherwise have in instances where a respondent originally registered a domain name in good faith and because of this, exercises its freedom to exploit a complainant’s trade mark. Other panels have expressed the view that the “unitary concept” interpretation would amount to the equivalent of an amendment to the Policy, which of course goes beyond the scope of a panel’s authority. See Eastman Sporto Group LLC v. Jim and Kenny, WIPO Case No. D2009-1688; Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011; A. Nattermann and Cie. GmbH and Sanofi-aventis v. Watson Pharmaceuticals, Inc., WIPO Case No. D2010-0800 for a comprehensive overview of both approaches. There is, so far, an overall reluctance by panels to adopt the “unitary concept” approach, to which reluctance this Panel adheres in the interest of consistency in jurisprudence. However, this still leaves the effect of a renewal of a domain name in bad faith, which is discussed further towards the end of this decision.
In reaching a conclusion on this matter, the Panel has considered the following aspects of the Respondent’s conduct and the facts in this matter:
(a) The stated objective of the Respondent in registering the Disputed Domain Name, namely to support the Complainant in its business activities in the USA, which can no longer be present following the termination of the business relationship between the parties.
(b) That the intention of the parties as expressed in the evidence was clearly not for the Respondent himself to own the Disputed Domain Name but rather to hold it on behalf of the Complainant (as a “Master Representative”) in support of the objectives stated above.
(c) The Respondent’s continued maintenance of the Disputed Domain Name, where the Respondent had clearly known that his use of the Complainant’s trade mark would have been conditional upon an existing business relationship between the parties. There can thus no longer be good faith reason for the Respondent to retain the Disputed Domain Name. See UVA Solar GmbH & Co. K.G. v. Mads Kragh, WIPO Case No. D2001-0373 in this regard.
(d) The obvious harm and disruption that is being caused to the Complainant’s business as a consequence of the maintenance of the website associated with the Disputed Domain Name and arising from customers being confused about whether the website is an official website of the Complainant.
(e) That if the Respondent gave the representation and the warranty in paragraph 2 of the Policy in renewing the Disputed Domain Name in November 2010, it would have been knowingly false.
(f) The attempt by the Respondent to solicit a financial offer from the Complainant almost immediately after being notified of the Complaint.
The Complainant in this matter has not placed evidence before this Panel to allow it to infer from the Respondent’s conduct that the original registration was in bad faith. The Complainant asks this Panel rather to consider the bad faith renewal of the registration of the Disputed Domain Name as satisfaction of the third requirement of the Policy.
UDRP panels have generally and, especially in the earlier cases, considered that the transfer of a domain name to a third party amounts to a new registration, but not the renewal of a domain name. However, in later cases, particularly PAA Laboratories GmbH v. Printing Arts America, WIPO Case No. D2004-0338 and Eastman Sporto Group LLC v. Jim and Kenny, WIPO Case No. D2009-1688 the panels referred to paragraph 2 of the Policy in considering the renewal of a domain name as equivalent to a new registration, in circumstances particularly where the registrant proceeded to renew the domain name with an intent to benefit from the complainant’s trade mark. While the panel in the PAA Laboratories case decided not to adopt this approach in its ultimate finding, it did state that “The abusive refreshing of the original registration is an act which this Panel considers should be an act of a kind encompassed by paragraph 4(a)(iii) of the Policy. The benefit of an original good faith registration should not be perpetual to the point where it can cloak successors in title and successors in “possession” long after the original registration would have expired”. In the Eastman Sporto matter, the panel found that at the time of the renewal by the respondent, its use of the disputed domain name had become use in bad faith. The panel in the Eastman Sporto matter deemed the respondent’s renewal of the disputed domain name to be the date on which to measure whether the disputed domain name was registered and used in bad faith for purposes of paragraph 4(a)(iii). This Panel adopts the same approach in this matter, as it is clearly one where an initial authorized registration of a domain name turned into an exploitative retention by the Respondent, which this Panel finds to be conduct in bad faith.
The Panel consequently finds that the third requirement of the Policy has been met.
For the foregoing reasons, in accordance with paragraph 4(a) of the Policy and paragraph 15 of the Rules, the Panel orders that the Disputed Domain Name <rigolusa.com> be transferred to the Complainant.
Charné Le Roux
Dated: November 29, 2012