WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Perkins Holdings Limited v. Michele Caroli SRL

Case No. D2013-1364

1. The Parties

The Complainant is Perkins Holdings Limited of Eastfield, Peterborough, United Kingdom of Great Britain and Northern Ireland, represented by Hogan Lovells International LLP, France.

The Respondent is Michele Caroli SRL of Modugno, Italy, self-represented.

2. The Domain Name and Registrar

The disputed domain name <perkinsengines.net> is registered with Register.it SpA (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2013. On August 1, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 2, 2013, 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. According to information received from the concerned Registrar, the Center sent an email to the parties informing them that the language of the registration agreement for the disputed domain name is Italian. Accordingly, the Complainant was requested to provide at least one of the following options: a) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; or b) submit the Complaint translated into Italian; or c) submit a request for English to be the language of the administrative proceedings. On August 7, 2013, the Complainant submitted a request for English to be the language of the administrative proceedings. On August 8, 2013, the Respondent submitted a request for Italian to be the language of the administrative proceedings.

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 in English and Italian, and the proceedings commenced on August 12, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 1, 2013. The Response was filed with the Center on August 30, 2013. On September 2, 2013, the Center received another communication from the Respondent.

The Center appointed Daniel Kraus as the sole panelist in this matter on September 12, 2013. 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.

4. Factual Background

The Complainant, Perkins Holdings Ltd is a world leading manufacturer and supplier of diesel and gas engines. It was founded in 1932, and acquired in 1998 by Caterpillar Inc. The Complainant has built more than 15 million engines by 2003. Its products are distinguished by PERKINS trademarks and logos which have been used for 80 years and are registered in several countries around the world. These trademarks include the following:

- Italian trademark (word) PERKINS No. 1130581, filed on April 29, 1955 and registered on February 4, 1956, for goods and services in classes 7 and 12;

- Italian trademark (word) PERKINS No. 1005832, filed on July 6, 1962 and registered on December 7, 1967, for goods and services in class 7;

- Community trademark (word) PERKINS No. 152223, filed on April 1, 1996 and registered on October 14, 1998, for goods and services in classes 7, 12 and 37;

- Community trademark (word) PERKINS No. 2626018, filed on March 21, 2002 and registered on January 25, 2005, for goods and services in classes 1, 2, 4, 6, 9, 16 and 17;

- Community trademark (figurative), No. 152199, filed on April 1, 1996 and registered on December 3, 1998, for goods and services in classes 7, 12 and 37.

The Complainant has established an extensive global network of distributors through which it sells its parts and provides its services. In Italy, the Complainant has since March 1, 2011 an exclusive distributor, “BU Power Systems Italia”, based in Como.

Besides its trademarks, the Complainant has made substantial investments to develop a strong presence online and has registered and uses several domain names consisting of the mark PERKINS, such as <motoriperkins.eu>, <perkinsengine.com>, <perkins-engines.com>, <perkins.de>, <perkins.es>, <perkins.eu>, etc. The Complainant is also active on social media such as YouTube and LinkedIn.

The disputed domain name was registered in 2004 in the name of Michele Caroli SRL, a company located in Modugno, Italy, that sells engines and parts from Perkins and other manufacturers, including Donaldson, Kubota, VM Motori, Deutz and ATS England. The Respondent has also registered the domain names <perkins.it>, <motoriperkins.it> and <ricambiperkins.it>, as well as some generic domain names such as <engineparts.it> and <motoridiesel.it>. The registration of the disputed domain name under the name of the Respondent had taken place without the knowledge of the Complainant.

The Respondent ceased to be an authorized distributor of the Complainant as of February 28, 2011. Its domain names, and in particular the disputed one <perkinsengines.net> redirect to a website, “www.motoridiesel.it/perkins_engine_parts.htm” which offer products of the Complainant, but also of the Complainant’s competitors.

5. Parties’ Contentions

A. Complainant

The complainant first contends that the disputed domain name is identical or confusingly similar to its PERKINS trademark. The disputed domain name incorporates the term “Perkins”, which is phonetically and visually identical to the Complainant’s PERKINS trademark. The mere addition of the term engines is not sufficient to distinguish the disputed domain name, as that term is common and descriptive and reinforces the confusing similarity with the Complainant’s PERKINS trademark. Besides, the addition of the suffix “.net” is also insufficient to differentiate the disputed domain name from its trademark.

The Complainant then argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name as it is neither commonly known by the term “Perkins” nor an authorized distributor of the Complainant. Besides, it asserts that the respondent is not using the domain name in connection with a bona fide offering of goods and services.

Finally, the Complainant argues that the disputed domain name was registered and is being used in bad faith.

Although the Complainant recognizes that the disputed domain name had already been registered in 2004, it contends that the doctrine of laches does not apply.

For all these reasons, the Complainant requests that the disputed domain name be transferred to it.

B. Respondent

The Respondent states that it has been active in the business of replacement parts for engines since 1926 and that it has been since then working very seriously, professionally, transparently and punctually. It has collaborated with the Complainant since 1978 and had a distribution contract with the Complainant as of October 2003 for the region of Puglia and Campania (Italy). The collaboration was always very good. The respondent has always strived to satisfy the standards of the Complainant and does not believe that any illegitimate behavior was at the source of the resignation of the distribution contract. On the contrary, according to the Respondent, the Complainant had been aware already as of 2002 that the Respondent had also been distributing spare part of competitors, but has never made any comment to that respect.

The Respondent further argues that the use of the denomination “motori Perkins” or “Perkins engines” on search engines leads to all sorts of websites of resellers of spare parts for that type of engines. This, in its view, is evidence that the name “Perkins”, although it refers to the Complainant, also identifies a particular diesel engine. For this reason, the Respondent argues that its behavior is in no way leading to confusions. The Respondent further argues that it sells original parts and not copies, and that its domain name is not confusingly similar with the trademark of the Complainant, in particular because the denomination “Perkins” has become a generic denomination and that the addition of the term “engines” differentiates the disputed domain name from the trademark. According to the Respondent, many websites make use of the denomination “Perkins”. Besides, the Complainant has not complained about the use of the denomination “Perkins” by the Respondent since it used it in 2004.

The Respondent further contends that it has rights or legitimate interests in respect of the disputed domain name, in particular because it had a distribution contract with the Complainant, and that this is still the case, even though the contract has been ended. This is also the case, according to the Respondent, because the Complainant also furnished it with spare part of competitors. Finally, the Respondent argues that it registered and uses the disputed domain name in good faith, as the registration took place in 2004 with the knowledge of the Complainant.

6. Language

The language of the Registration Agreement is Italian. Paragraph 11(a) of the Rules provides that

“unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.

The Complainant requested the language of proceedings to be English on the following grounds:

1. The Registration Agreement is available in English on the Registrar’s website, a copy of which is available at the following URL: “http://we.register.it/domains/terms_conditions_reg.html?chglng=eng”;

2. The disputed domain name is registered under the generic extension “.net”;

3. The disputed domain name includes the English term “engines”;

4. The website to which the disputed domain name is pointing is in English and therefore the Respondent is targeting English speakers; thus, the Respondent is likely to have a good understanding of the English language;

5. Given that the activities carried out via the disputed domain name are blatantly illegitimate and detrimental to the Complainant, it would be disproportionate to require the Complainant not to submit the present Complaint in English as this would cause an undue burden, additional expenses and unnecessary delay due to the need for translation of the Complaint.

On the other hand, the Respondent argues, exactly to the opposite, that the Complainant had a subsidiary in Italy and that all relations with Italian distributors took place in Italian. Further, the contract was translated into Italian and the presence of an Italian translator was insured for courses that took place in the United Kingdom. An Italian speaking person was available for customer care in the United Kingdom and all communications were translated into Italian. Finally, the law firm representing the Complainant has an office in Italy and the Respondent does not understand why the use of Italian would be so complicated.

It is clear to this Panel that the Respondent has a sufficient command of English. The website to which leads the disputed domain name is in English. Hence, the relevant public that the Respondent aims to reach is English-speaking and the Respondent must have a minimum knowledge of English in order to meet the needs of its clients. Further, the Respondent answered to the Complaint, which had been filed in English, showing that it perfectly understood its content. The Panel hence determines the language of proceedings to be English. The Panel having sufficient knowledge of Italian, a translation of the Response will not be requested, in order to ensure the decision is issued with no delay.

7. Discussion and Findings

To qualify for cancellation or transfer of the disputed domain name, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The 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.

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.

A. Identical or Confusingly Similar

This issue has already been dealt with in an earlier case concerning a domain name <perkinsengine.com>, Perkins Holdings Limited v. Domain Admin / Private Registrations Aktien Gesellschaft, WIPO Case No. D2011-1825, of which the conclusions are valid in the present case and can hence be transposed here.

Similarly to the <perkinsengine.com> case, the Complainant is the owner of the trademark PERKINS, registered in Italy and the European Union for use in association with engines and related products and services. The Complainant uses the PERKINS trademark in several websites. The Complainant asserts that it has used the PERKINS trademark for 80 years and this has not been contested by the Respondent. In the circumstances, the Panel finds that the Complainant has rights in the trademark PERKINS.

The Complainant’s PERKINS Italian trademark was first registered in 1956, long before the disputed domain name was registered in 2004.

The Policy requires that the disputed domain name be “identical or confusingly similar” to the Complainant’s trademarks. The disputed domain name and the Complainant’s PERKINS trademark are visually and phonetically similar. The differences between the Complainant’s PERKINS trademark and the disputed domain name are the addition in the disputed domain name of the word “engines” and the “.net” suffix.

The “.net” suffix may be disregarded for the purpose of determining whether a challenged domain name is identical or confusingly similar to a trademark. Indeed, it is more typical to look to the second level domain for that determination, since the “.net” suffix is merely descriptive of the registry services. See The Toronto-Dominion Bank v. Boris Karpachev, WIPO Case No. D2000-1571; Ticketmaster Corporation v. Harold R. Brown, II, Harold R. Brown III, and Ted Waitt, WIPO Case No. D2001-0716; The Chancellor, Masers and Scholars of the University of Oxford v. DR Seagle t/a Mr. Oxford-University, WIPO Case No. D2001-0746.

The addition of generic or descriptive words to a trademark in a domain name normally does not avoid a finding of confusing similarity, particularly where the trademark constitutes the dominant or principal component of the domain name. Further, the use of a generic or descriptive word that describes the products or services with which the trademark is ordinarily used may exacerbate or increase the confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.9; Costco Wholesale Corporation and Costco Wholesale Membership, Inc. v. Kenneth Terrill, WIPO Case No. D2010-2124 Gateway Inc. v. Domaincar; WIPO Case No. D2006-0604; Guccio Gucci S.p.A. v. Hainei Zhou, WIPO Case No. D2011-1017; The Toronto-Dominion Bank v. Boris Karpachev, WIPO Case No. D2000-1571; Pancil, LLC v. Wan-Fu China, Ltd., WIPO Case No. D2007-0492.

Here, as in Perkins Holdings Limited v. Domain Admin / Private Registrations Aktien Gesellschaft, supra, the Panel finds that the use of the word “engines” together with the PERKINS trademark increases the confusing similarity between the disputed domain name and the Complainant’s PERKINS trademark, because the Complainant uses its PERKINS trademark in association with engines and related products and services.

For those reasons, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s PERKINS trademark. Accordingly, the Panel finds that the Complainant has satisfied the first element required by the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides examples of circumstances that can demonstrate the existence of rights or legitimate interests in a domain name: (i) use of, or preparations to use, a domain name in connection with a bona fide offering of goods or services; (ii) the fact that a respondent has commonly been known by a domain name; and (iii) legitimate noncommercial or fair use of a domain name, without intent for commercial gain to mislead consumers or tarnish the trademark.

The Complainant must establish at least a prima facie case under this heading and, if that is made out, the burden of production shifts to the Respondent to rebut the presumption of absence of rights or legitimate interests. See, e.g., Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc., WIPO Case No. D2003-0070.

In the present case, although the Respondent may have had rights and legitimate interests in using the Complainant’s trademark when it was in a contractual relation with the Complainant as one of its distributors in Italy, the Panel finds that this is not the case anymore since the contract between the parties has been ended by the Complainant and even less so since the Complainant sent cease and desist letters to the Respondent. The Panel also notes in this regard that the website associated with the disputed domain name offers products of the Complainant’s competitors. Therefore paragraph 4(c)(i) of the Policy is not applicable. See also paragraph 2.3 of the WIPO Overview 2.0.

Policy paragraph 4(c)(ii) is not applicable. The Respondent does not contend, and there is no evidence, that it has been commonly known by the disputed domain name or that the disputed domain name is derived from one of the Respondent’s trademarks or trade names.

Policy paragraph 4(c)(iii) is not applicable. The Respondent does not contend, and there is no evidence, that the Respondent is making a noncommercial or fair use of the disputed domain name. To the contrary, the evidence establishes that the Respondent is using the disputed domain name for commercial purposes.

For those reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The third requirement of the Policy, set out in paragraph 4(a)(iii), is that the Complainant must prove that the disputed domain name “has been registered and is being used in bad faith”.

The Panel finds that the disputed domain name was registered and is being used in bad faith.

As mentioned in the factual description, when the Respondent registered the disputed domain name, he was an official distributor of the Complainant. In other cases arising out of similar facts, panels have refused to find bad faith registration because the registration was made with the consent or at the request of the trademark owner. See e.g. ITMetrixx, Inc. v. Kuzma Productions, WIPO Case No. D2001-0668. The Thread.com, LLC v. Jeffrey S. Poploff, WIPO Case No. D2000-1470. In those cases, though, the respondent was expected to register the domain name under its own name.

However, in the present case, the Complaint suggests that the registration of the disputed domain name under the name of the Respondent had taken place without the knowledge of the Complainant although the Respondent denies that this is the case. No convincing evidence has been provided by the parties in this regard. On balance, and also taking into account the current use of the disputed domain name, the Panel finds in favor of the Complainant and concludes that the Respondent’s registration of the disputed domain name was in bad faith.

Similar situations have arisen in other UDRP cases, in which the bad faith registration was also found to be realized by panels. See e.g., Champion Innovations, Ltd v. Udo Dussling (45FHH), WIPO Case No. D2005-1094; Robilant & Associati Srl v. POWERLAB snc (ROBILANT6-DOM), WIPO Case No. D2006-0991; Profilink Ltd v. lanko Pavlov Dingozov, WIPO Case No. D2013-1241.

As for bad faith use, the Complainant has established that the Respondent is now using the disputed domain name in order to sell spare parts of the Complainant but also of competitors. Such sales are an issue for competition law, and may as such not be contrary to trademark law. However, if such sales – and the use of a trademark in order to promote the sale – may be allowed as such, the use of the trademark in a domain name in order to benefit from the goodwill and fame attached to a trademark to attract traffic to its website is constitutive of bad faith use. This is precisely what the Respondent does in the present case. Besides, it appears, in those circumstances, that the Respondent’s refusal to return the disputed domain name to the Complainant is evidence of bad faith use. See also e.g., Champion Innovations, Ltd v. Udo Dussling (45FHH), supra.

8. Laches

As mentioned in paragraph 4.10 of the WIPO Overview 2.0, “Panels have recognized that the doctrine or defense of laches as such does not generally apply under the UDRP, and that delay (by reference to the time of the relevant registration of the disputed domain name) in bringing a complaint does not of itself prevent a complainant from filing under the UDRP, or from being able to succeed under the UDRP, where a complainant can establish a case on the merits under the requisite three elements. Panels have noted that the remedies under the UDRP are injunctive rather than compensatory in nature, and that a principal concern is to avoid ongoing or future confusion as to the source of communications, goods, or services.” Besides, in the present case the Complainant has acted immediately after it has terminated the distribution contract with the Respondent. Laches is not even an issue in such circumstances.

9. Decision

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 name <perkinsengines.net> be transferred to the Complainant.

Daniel Kraus
Sole Panelist
Date: September 26, 2013