WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Rego-Fix AG v. GP System Singapore Pte Ltd.

Case No. D2015-0427

1. The Parties

The Complainant is Rego-Fix AG of Tenniken, Switzerland, represented by Braunpat Braun Eder AG, Switzerland.

The Respondent is GP System Singapore Pte Ltd. of Singapore, represented by Ong Peng Chwan, Singapore.

2. The Domain Names and Registrar

The disputed domain names <regofix.com> and <regofix.xyz> are registered with Network Solutions, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 11, 2015. On March 11, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 12, 2015, 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.

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 proceeding commenced on March 20, 2015. On March 27, 2015, the Respondent requested an extension of the Response due date. In light of the Respondent’s request, the Complainant was requested to comment. On March 30, 2015, the Complainant objected to the Respondent’s request for extension of the Response due date. On March 30, 2015, the Center extended the Response due date to April 13, 2015. The Response was filed with the Center on April 10, 2015.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on April 22, 2015. 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 is a manufacturer and supplier of precision tool holding products. In 1992, it obtained registration in Switzerland for the trademark “rego fix” in a black triangle device, Trademark No. P-396685 for a range of goods in International Classes 6 and 7. It also obtained an International Registration for the same trademark on October 21, 1992. The designated countries include Singapore.

In 1997, the Complainant obtained registration in Switzerland for the trademark REGO-FIX, Trademark No. P-446266. There is also an International Registration. In addition, the Complaint includes evidence of a number of other trademark registrations for both marks in a number of countries including the United States of America and Singapore.

The first disputed domain name was registered by the Respondent on November 4, 1996. The second disputed domain name on June 3, 2014.

In the intervening years, the Complainant made some intermittent attempts to have the Respondent transfer the first disputed domain name to it. In one of those attempts, the Respondent offered to transfer the first disputed domain name to the Complainant for a payment of USD 20,000.

The first disputed domain name redirects to a website at <gpsystem.com>. This website offers for sale a wide range of products including various products in the fields covered by the Complainant’s trademarks. The Complainant says that the products are not of its manufacture. The Respondent says, however, that the specific products identified by the Complainant are supplied to the Respondent by a supplier, Zürn, which “has a close relationship with” the Complainant and these products include products manufactured by the Complainant.

It appears that the Respondent was for a time the distributor of the Complainant’s products in Singapore. The Complaint does not make it clear whether the relationship terminated before the first disputed domain name was registered. The Response states that the first disputed domain name was registered when the Respondent was the Complainant’s reseller.

5. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain names, the Complainant must demonstrate each of the following:

(i) each 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 each disputed domain name; and

(iii) each disputed domain name has been registered and is being used in bad faith.

Paragraph 15(a) of the Rules directs the Panel to decide the complaint 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.

A. Identical or Confusingly Similar

The Complainant has proven ownership of the registered trademarks REGO-FIX and the “rego fix” logo referred to in section 4 above.

The Respondent does not dispute that entitlement. It does say it registered the first disputed domain name before the Complainant registered its trademark in 1997. That is only true, however, of the word mark REGO-FIX alone.

In any event, it is well established under the Policy that, at this stage of the inquiry, what is required is a comparison of the disputed domain names to the proven trademark(s). If a disputed domain name was registered before the trademark was acquired is not relevant to this issue. It may be relevant, however, to the questions at subsequent stages of the inquiry. Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420.

Disregarding the generic Top-Level Domain (“gTLD”) components, each disputed domain name differs from the word mark only by the omission of the hyphen. That is plainly not a distinguishing feature. Accordingly, the Panel finds that both disputed domain names are confusingly similar to the Complainant’s word mark.

Typically, when making the comparison to a figurative mark, it is permissible to disregard the device elements and, unless they are very trivial or insignificant, take into account the verbal elements only. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.11. The verbal element “rego fix” is a key part of the trademark and would naturally be used as a reference point by people viewing or referring to the trademark. Accordingly, the Panel considers that both disputed domain names are confusingly similar to the logo mark as well.

Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in each disputed domain name.

Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:

(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain names or a name corresponding to the [disputed] domain names in connection with a bona fide offering of goods or services; or

(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain names, even if [the Respondent] has acquired no trademark or service mark rights; or

(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., paragraph 2.1 of the WIPO Overview 2.0.

It is not in dispute between the parties that the Respondent is no longer associated with the Complainant and has not for many years been authorized by the Complainant to use the Complainant’s trademarks.

The Respondent defends its registrations essentially on three grounds. First, it says it registered the first disputed domain name when it was a reseller of the Complainant’s products and they made up a substantial part of its business. Secondly, as noted above, it says it is selling Zurn products which incorporate the Complainant’s products. Thirdly, it says it has not used either disputed domain name to advertise or suggest it is selling the Complainant’s products and no-one going to its site would be misled into thinking it was the Complainant’s website or that it was offering for sale the Complainant’s products. The Respondent does not claim to be commonly known by the disputed domain names.

In view of the conclusion reached in respect of the first disputed domain name under the third stage of the inquiry (below), no good purpose would be served by a ruling on whether the Complainant had established that the Respondent had no rights or legitimate interests in the first disputed domain name. The Panel concludes, however, that the Respondent has no rights or legitimate interests in the second disputed domain name.

The second disputed domain name appears to be inactive – at the time this decision is being prepared it resolves to an “Under Construction” page. Passive holding of a domain name can still breach the Policy: Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No. D2000-0003. The most likely uses of the second disputed domain name by the Respondent would appear to be in relation to its business or, as the Respondent has previously proposed in relation to the first disputed domain name, for sale to the Complainant. At this stage, however, the Respondent does not claim it has made any preparations to use the second disputed domain name. It also does not invoke any of the other potential justifications under paragraph 4(c) of the Policy.

The second disputed domain name was registered many years after any relationship between the Complainant and the Respondent had well and truly ended. It was also registered many years after the Complainant registered both its trademarks, including in Singapore. There had also been a number of communications between the Complainant and the Respondent in the intervening years in which the Complainant made clear that it was not consenting to the Respondent’s use. See Fisher v Brooker [2009] 1 WLR 1764; paragraph 4.10 of the WIPO Overview 2.0.

The use of the second disputed domain name in relation to the products, or at least some of the products, which the Respondent carries in its business, would appear to infringe those rights. The Respondent’s point that it does not use the disputed domain name to promote the Complainant’s products is not a defence. Rather, under the Policy, use of someone else’s trademark to obtain sales of other products is typically bad faith under the policy falling outside the scope of paragraph 4(c)(i). Assuming in the Respondent’s favour that some of the products it does offer for sale at the redirected website do incorporate the Complainant’s components would not assist the Respondent in this case. First, the redirect is to a website which offers a wide range of products from different brands, not just Zurn. The redirection is not to the specific pages from which Zurn products are offered for sale. Moreover, even disregarding the potential that Zurn may not always use the Complainant’s components, the type of use in contemplation is still a use of the Complainant’s trademarks to derive sales of a third party’s products.

In these circumstances, the Complainant has established that the Respondent does not have rights or legitimate interests in the second disputed domain name.

C. Registered and Used in Bad Faith

Under the third requirement of the Policy, the Complainant must establish that each disputed domain name has been both registered and used in bad faith by the Respondent. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd., WIPO Case No. D2010-0470.

Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.

For the reasons explained in relation to the second stage of the inquiry, the Respondent has been using, albeit passively, the second disputed domain name in bad faith under the Policy. Those reasons are equally applicable to the use the Respondent has been making of the first disputed domain name since its relationship with the Complainant ceased.

According to the Respondent, it registered the first disputed domain name when it was the Complainant’s reseller and a substantial part of its business was the sale of the Complainant’s products. The Complaint is ambiguous about when the relationship with the Respondent was terminated. It also does not provide any details about the terms of the relationship including what arrangements, if any, were in place relating to the use of the Complainant’s trademarks.

The Panel notes that many panels have considered that a distributor or reseller who uses another’s trademark for a website which sells other products as well as the trademark owner’s products, at least where the other products are a substantial part of the website, is not legitimate under the Policy. That is in the context of whether or not the Respondent has rights or legitimate interests – under the second stage of the inquiry. In the present case, the issue is the Respondent’s purpose in registering the first disputed domain name. If the Respondent registered the first disputed domain name as part of a legitimate venture with the Complainant (especially if done with the Complainant’s knowledge or consent), the first disputed domain name will not have been registered in bad faith. Danshar (1963) Ltd. v. Joey Gilbert, WIPO Case No. D2011-2304. The Complainant bears the onus under this limb as under the others. Its submissions on this point are, at best, equivocal. It does not state that the first disputed domain name was registered without its knowledge or in breach of its arrangements with the Respondent. It also does not appear to have started objecting to the Respondent’s registration of the disputed domain name until after the relationship had ended. On the other hand, the Respondent has expressly addressed the circumstances of the registration of the first disputed domain name and the Complainant has not sought to rebut the Respondent’s claims in that respect. In the circumstances of this case, the Panel is unable to find that the Respondent registered the first disputed domain name in bad faith.

The circumstances of the registration of the second disputed domain name as discussed in relation to the second stage of the inquiry, however, lead to the conclusion that it was registered in bad faith. By that time, the Respondent was both well aware of the Complainant’s trademark rights and also that the Complainant was objecting to the use of its trademarks by the Respondent.

Accordingly, while the Panel finds that the second disputed domain name was both registered and is being used in bad faith, the Panel finds that the Complainant has not established that the first disputed domain name was registered in bad faith and so fails against that disputed domain name on this issue.

The Panel notes that the Complainant asserts its trademarks are well-known throughout the world. The Respondent disputes this. In the circumstances of this case, acceptance of the Complainant’s claim would not assist it given that the record in this case does not support a finding that the first disputed domain name was registered in bad faith.

6. 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 <regofix.xyz> be transferred to the Complainant. The Complaint is otherwise denied.

Warwick A. Rothnie
Sole Panelist
Date: May 4, 2015