WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Diversified Dynamics Corporation d/b/a Cat Pumps v. Euroquipe (Cork) Limited

Case No. DIE2012-0002

1. The Parties

The Complainant is Diversified Dynamics Corporation d/b/a Cat Pumps of Minneapolis, Minnesota, United States of America (“U.S.”), represented by Briggs and Morgan, P.A., U.S.

The Respondent is Euroquipe (Cork) Limited of Ovens, County Cork, Ireland.

2. The Domain Name And Registrar

The disputed domain name <catpumps.ie> is registered with IE Domain Registry Limited (“IEDR”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2012. On August 29, 2012, the Center transmitted by email to IEDR a request for registrar verification in connection with the disputed domain name. On September 4, 2012, IEDR 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 .IE Dispute Resolution Policy (the “IEDR Policy”), the WIPO Dispute Resolution Rules of Procedure for .IE Domain Name Registrations (the “Rules”), and the WIPO Supplemental Rules for .IE Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2.1 and 4.1, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 17, 2012. In accordance with the Rules, paragraph 5.1, the due date for Response was October 15, 2012. The Respondent did not file any Response. Accordingly, the Center notified the Respondent’s default on October 31, 2012.

The Center appointed James Bridgeman as the sole panelist in this matter on November 15, 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.

On December 4, 2012, the Panel issued Administrative Panel Procedural Order No. 1, noting that the Administrative Contact for the disputed domain name had not been sent electronic Notification of the Complaint and granting the Respondent an additional five days to indicate whether it intends to participate in these proceedings and submit its response. The Notification of Complaint an the Complaint including annexes and relevant attachments were resent on the same day. No Response was filed.

4. Factual Background

The Complainant is the owner of a number of trade mark registrations and pending applications for the trade mark CAT PUMPS including the following registered trademarks:

United States registered trade mark CAT PUMPS and design, registration number 931329, registered on March 28, 1972 for goods in international class 23, being “high pressure pumps for spray cleaning, washing and degreasing” pursuant to an application filed on October 16, 1970;

Japan registered trade mark CAT PUMPS and design, registration number 5419983, registered on June 24, 2011 for goods in international class 7 being “high pressure pumps for spray cleaning, washing and degreasing, other pumps” pursuant to an application filed on February 1, 2010;

German trade mark CAT PUMPS and Design, registration number 915454, registered on February 27, 1974 for goods in international class 7 being Hochdruckpumpen rum Spruhrelnigen, Waschen and Entfetten sowie Teile solcher Pumpen” pursuant to an application dated March 12 1970; and

United States registered trade mark CAT PUMPS registration number 4021992, registered on September 6, 2011 for goods in international class 7 being “high pressure hydraulic pumps for spray cleaning, washing and degreasing” pursuant to an application dated filed on December 21, 2012.

The Complainant and its authorized affiliates currently own several domain names incorporating the CAT PUMPS mark including <catpumps.com> (registered in 1997), <catpumps.co.uk> (registered in 1997), <catpumps.be> (registered in 1998), and <catpumps.de>.

The disputed domain name was registered on April 10, 2007.

There was no Response filed but the Complainant has adduced in evidence as an annex to the Complaint, a copy of an email dated August 10, 2012 from the liquidator of the Respondent to the Complainant’s UK affiliate stating as follows:

“The domain www.catpumps.ie has been licensed to Equoqupe Sales & Service Ltd (formerly Euroquipe (Cork) Ltd since April 10, 2007. I note you are requesting same. Please forward your bid I offer for the Domain Name, www.catpumps.ie, as it is for sale as an asset of the liquidation. I would expect to close bidding within 3 weeks, from this date, that is August 31, 2012.”

5. Parties’ Contentions

A. Complainant

The Complainant submits that it has been actively conducting business in Ireland for approximately 25 years and has been selling CAT PUMPS branded products to the Respondent and/or its predecessors during this entire period. In recent years, the Complainant’s sales within Ireland have averaged approximately USD 300,000 annually.

Approximately USD 180,000 of those annual sales has been to the Respondent. The Complainant has utilized several other resellers throughout Ireland, including, without limitation, Rainbow Wash Systems Ltd. (“www.speedwash.ie”), PE Services and Eurowash (“www.peservices.ie”); and Eurojet (“www.eurojet.ie”).

The Complainant submits that in addition to its rights acquired by its registered and pending trade mark registrations worldwide, the Complainant has also acquired valuable common law rights in the CAT PUMPS mark by virtue of its longstanding and continuous use in commerce of such mark, including extensive use in the island of Ireland over the last twenty-five (25) years.

The Complainant submits that such common law rights constitute a Protected Identifier under paragraph 1.3 of the IEDR Policy. In this regard the Complainant cites the decision of the panel in Monster Worldwide, Inc., and Monster Worldwide Ireland Limited v. Monster Finance Limited WIPO Case No. DIE2009-0001. (“Complainants have substantial goodwill in the name MONSTER throughout the island of Ireland and they hold a common law trade mark in the name MONSTER which is protected in the island of Ireland.”)

The Complainant submits that the disputed domain name <catpumps.ie> is identical or misleadingly similar to the Complainant’s CAT PUMPS mark. The offending domain name <catpumps.ie> and the associated website incorporate and utilize the Complainant’s CAT PUMPS mark in its entirety. The Complainant submits that it is well settled that the addition of the ccTLD extension suffix ”.ie” does not avoid confusion. The Complainant cites Priority One Financial Services Inc. v. Michael Cronin, WIPO Case No. D2006-1499 and Laramar Group, L.L.C. v. XC2, WIPO Case No. D2006-0617.

The Complainant submits that accordingly it has satisfied the requirements of paragraph 1.1.1 of the IEDR Policy .

The Complainant submits that the Respondent has no rights in law or legitimate interests in respect of either the CAT PUMPS mark or the disputed domain name (IEDR Policy, paragraph 1.1.2; Rules, paragraph 3.4.8.2).

The Complainant submits that the Respondent and/or its predecessor became a reseller of the Complainant’s CAT PUMPS products in approximately 1987. The Respondent acquired the <catpumps.ie> domain name without the knowledge, permission or authority of the Complainant in 2007.

Subsequent to learning of the Respondent’s registration of the disputed domain name, the Complainant objected and has consistently taken the position that the Respondent has no rights or legitimate interests in the CAT PUMPS mark or the disputed domain name; and that the Respondent should transfer ownership / control of the domain name to the Complainant.

The Complainant submits that the Respondent used the disputed domain name to divert or redirect traffic to its own website located at the domain name <euroquipe.ie> which has been used to sell and promote both CAT PUMPS branded products other products unrelated to the Complainant. At no time has the Respondent’s website in any way attempted to explain or disclose its relationship with the Complainant.

The Complainant asserts that the Respondent is no longer an authorized reseller of the Complainant’s CAT PUMPS goods and is no longer conducting business; that the Respondent is currently in the process of liquidating its assets; and that the Respondent has advised the Complainant that it intends to auction off the <catpumps.ie> disputed domain name to the highest bidder as part of the liquidation. According to the Complaint, the Respondent currently owes the Complainant EUR 17,049.41.

The Complainant has objected to any sale or transfer of the disputed domain name to a third party. As of the date of the Complaint, the Respondent has refused to acknowledge the Complainant’s rights.

The Complainant further complains that the Respondent has utilized multiple original copyrighted materials and images of the Complainant in conjunction with its website.

The Complainant submits that it is well settled that a respondent cannot claim rights or legitimate interests in the subject domain name due to its prior status as a reseller. A number of panels established under the Uniform Domain Name Dispute Resolution Policy (“UDRP”), have rejected, in certain circumstances, the legitimacy of a reseller’s use of a manufacturer’s mark in a domain name. Motorola, Inc. v. NewGate Internet, Inc., WIPO Case No. D2000-0079; General Electric Company v. Japan, Inc., WIPO Case No. D2001-0410; X-ONE B.V. v. Robert Modic, WIPO Case No. D2010-0207; and Vibram S.p.A. v. Chen yanbing, WIPO Case No. D2010-0981.

The Complainant submits that while these decisions cited are not decisions under the IEDR Policy, it is recognized that it is appropriate to look to principles established under the UDRP where they are of assistance in applying comparable provisions under the IEDR Policy. In this regard the Complainant cites the decision in Adidas AG and Adidas (Ireland) Limited v. Gabor Varga and Jozsef Petho, WIPO Case No. DIE2006-0004.

Other panels have followed the lead decision in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 wherein the panel concluded that a reseller’s use of the manufacturer’s mark in a domain name can be considered legitimate only if: (1) the reseller actually offers goods or services associated with the Complainant’s mark; (2) the reseller uses the domain name to sell only goods or services associated with the Complainant’s mark; (3) the subject website accurately discloses the reseller’s relationship with the mark holder; and (4) the reseller must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name. MasterCard International Incorporated v. Global Access, WIPO Case No. D2008-1940; Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227; Intex Recreation Corp. v. RBT, Inc., Ira Weinstein, WIPO Case No. D2010-0119.

In the present case, according to the Complaint, it is not necessary to decide between these conflicting views. Even under the more lenient Oki Data analysis, the Respondent lacks any rights or legitimate interests because: (1) it no longer offers CAT PUMPS products for sale; (2) it has always offered multiple non CAT PUMPS products on the website associated with the disputed domain name; and (3) at no point has the Respondent attempted to explain or disclose its relationship with the Complainant on the websites associated with the disputed domain name.

The Complainant submits that the disputed domain name was registered or is subsequently being used in bad faith. (IEDR Policy, paragraphs 1.1.3, 2.1 and Rules, pararagraph 3.4.8.3). Paragraph 1.1 of the IEDR Policy requires that the domain name in question has been registered, or, in the alternative, is being used in bad faith. The Complainant asks this Panel to note that this is a significant departure from the UDRP which requires both registration and use in bad faith.

The Complainant submits that the Respondent’s actions qualify as bad faith under all enumerated examples of bad faith identified in the IEDR Policy:

- the Respondent is no longer a reseller of the Complainant’s products;

- the disputed domain name is currently being used solely for auction to the highest bidder;

- the Respondent’s action will prevent the Complainant from utilizing its mark in conjunction with the Irish country code top level domain “.ie”;

- the Respondent’s registration of the subject domain name and current attempts to auction it to the highest bidder, including the Complainant’s competitors, precludes the Complainant from utilizing its house mark in conjunction with the country code top level domain name associated with Ireland (one of the Complainant’s longstanding markets);

- the Respondent is attempting to auction the domain to the highest bidder for profit well in excess of its registration costs which alone constitutes bad faith.

The Complainant cites the decision of the panel in Daimler Chrysler Corporation v. Brad Bargman, WIPO Case No. D2000-0222 as authority for the proposition that offering domain name for sale by auction is evidence of bad faith arguing furthermore that the Respondent’s attempt to auction the disputed domain name confirms the likelihood of dilution and resulting damage to the CAT PUMPS mark. The disputed domain name has value for purposes of an auction solely because of the goodwill and brand recognition associated with the Complainant’s mark. The Complainant submits that a competitor would be interested and willing to purchase the domain name solely to cause confusion and improperly capitalize on the CAT PUMPS brand.

Moreover, the Complainant argues that the website to which the disputed domain name resolves, operated by Respondent has been utilized by Respondent to sell multiple non CAT PUMPS products.

The Complainant argues that this Panel may find therefore that the Respondent intentionally used the disputed domain name to attract Internet users to its website by creating confusion with the Complainant’s mark. The Respondent’s use of the CAT PUMPS mark was intended solely to benefit from the goodwill associated with the CAT PUMPS mark and drive customers to the Respondent’s website.

The Complainant further argues that the likelihood of confusion is strengthened by the Respondent’s use of the Complainant’s copyrighted original material and images at its site. Vibram S.p.A. v. Chen yanbing, WIPO Case No. D2010-0981 (“Respondent’s use of images that are identical to the images that appear in the Complainant’s website, along with Complainant’s trademarks, prove that the Respondent attempted to create a false impression of association between the disputed domain name and Complainant’s [website] and constitutes bad faith.”)

The Respondent intentionally provided false information when applying for the disputed domain name. The Respondent had been a reseller of the Complainant’s CAT PUMPS branded products for approximately twenty (20) years. Accordingly, it had actual or constructive knowledge of the CAT PUMPS mark long before registering the disputed domain name. RRI Fin. Inc. v. Ray Chen, WIPO Case No. D2001-1242. (Actual or constructive knowledge of complainant’s mark before domain name registration is evidence of bad faith.)

Additionally, pursuant to Section 8(a) of Ireland’s Domain Registry’s Terms and Conditions, the Respondent represented and warranted when it registered the domain that “us[e] of the domain name will not infringe or otherwise violate the rights of a third party.” Contrary to such warranty and representation, and with longstanding knowledge of Cat Pump’s rights in the CAT PUMPS mark, Respondent registered the domain without Cat Pumps authority or approval.

Moreover, the Respondent is currently attempting to auction the domain name to the highest bidder without the Complainant’s permission or authority (the target audience presumably consisting of the Complainant’s competitors). Such registration and use further evidences and constitutes bad faith. Sleep-Tone Entertainment Corp. v. Sound Choice Disc Jockeys, Inc., NAF Claim No. FA93636 (bad faith registration and use found due to violation of paragraph 2 of the UDRP which charges Respondent with the responsibility to “determine whether your domain name registration infringes or violates someone else’s rights.”); The Sun Chronicle v. Web Solutions, Inc., NAF Claim No. FA94895 (by failing to check whether the registration would infringe on the right of a third party as required by paragraph 2 of the UDRP, Respondent registered the domain name in bad faith). Even in the absence of wilful misrepresentation, “the careless registration of a domain name, with the clear risk of infringing third party’s trade mark rights . . . is . . . an act of bad faith which falls in ICANN’s UDRP criteria.” Everything for a Dollar Store Inc. v. Sheri Brown, NAF Case No. FA318960.

Finally, in an email to the liquidator of the Respondent Company on July 20, 2012, the General Manager of the Complainant’s affiliate Cat Pumps (UK) Limited stated inter alia as follows:

“Following the closure of the Euroquipe business, Cat Pumps (UK) Limited wish to take control of that domain name. In this respect: 1. Please note that we do not consider this domain name to be something that is the property of Euroquipe, or yourselves as the liquidators, and therefore might be offered for sale. 2. We do not consider that this domain name could be transferred to any other party, either with or without the purchase of any or all of the assets of Euroquipe, their premises, company name or any other part of the business.”

It would appear from the file that the Liquidator’s response was the above-referenced email dated August 10, 2012.

The Respondent did not file a Response to the Complaint.

6. Discussion And Findings

Paragraph 1 of the IEDR Policy places on the Complainant the obligation to prove that:

1.1.1 the domain name is identical or misleadingly similar to a Protected Identifier in which the Complainant has rights; and

1.1.2 the Respondent has no rights in law or legitimate interests in respect of the domain name; and

1.1.3 the domain name has been registered or is being used in bad faith.

Paragraph 1.3.1 of the IEDR Policy provides inter alia that the concept “Protected Identifiers” for the purpose of the IEDR Policy includes trade and service marks protected in the island of Ireland.

A. Identical or Confusingly Similar

Under paragraph 1.3 of the IEDR Policy, “Protected Identifiers” are defined as inter alia: “1.3.1 trade and service marks protected in the island of Ireland…” This definition is not restricted to registered trade marks and in Dermalogica, Inc. and The International Dermal Institute, Inc. v. Dermalogics Skincare Teoranta, WIPO Case No. DIE2007-0004 in addition to the fact that the complainants’ trade mark was protected in both jurisdictions on the island of Ireland the panel further found that it was protected at common law and was therefore a Protected Identifier as defined by paragraph 1.3.1 of the IEDR Policy.

While the Complainant has a substantial portfolio of registered trade marks none of them have the force of law on the island of Ireland and to succeed the Complainant must rely on its rights, if any, in the trade mark CAT PUMPS at common law.

In order to succeed in such circumstances, the Complainant must provide evidence of its rights at common law and furthermore that such rights are “protected on the island of Ireland”.

In Internet Interaction Limited, trading as Grabone v. Robert Hayden, WIPO Case No. DIE2010-0005 the panel decided that a complainant “must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition...”

In the present case the Complainant has furnished evidence of use of the trade mark on a website on the “.ie” domain and in an affidavit the General Manager of the Complainant’s associate company Cat Pumps (UK) Limited has averred to the fact that the Complainant’s goods have been sold in Ireland for 25 years.

This Panel finds that there is sufficient evidence to establish that the Complainant has rights at common law in the CAT PUMPS sufficient to satisfy the threshold test set by paragraph 1.1.1 of the IEDR Policy.

This Panel further finds that the disputed domain name is identical to the Complainants common law trade mark. The “.ie” ccTLD extension may be ignored for the purposes of comparison in the circumstances of the present case.

This Panel therefore finds that the Complainant has satisfied the first element of the test in paragraph 1.1.1 of the IEDR Policy.

B. Rights in Law or Legitimate Interests

There was no response filed by the Respondent. On the evidence of the Complainant the Respondent is a former authorized reseller of the Complainant’s CAT PUMPS products but is now in liquidation.

Notwithstanding the absence of a Response the Complainant has the obligation to make out a prima facie case that the Respondent has no rights in law or legitimate interests in the disputed domain name in which circumstances the onus shifts to the Respondent to prove its rights in law or legitimate interests. See for example Travel Counsellors plc and Travel Counsellors (Ireland) Ltd v. Portlaoise Travel Limited, WIPO Case No. DIE2006-0001.

Notwithstanding the significant differences between the IEDR Policy and the UDRP, because there are obviously many similarities also, IEDR panelists have indicated a willingness to follow the consensus approach to issues that arise as adopted by UDRP panelists where appropriate, and have frequently referred to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”): ASOS PLC v. Page 7 Media Ltd, WIPO Case No. DIE2010-0003; Palmerston Limited, Hutchison 3G UK Limited, Hutchison 3G Ireland Limited and Hutchison Whampoa Limited v. Alan Mahon, WIPO Case No. DIE2005-0001; B & S Limited v. Gabor Varga and Jozsef Petho, WIPO Case No. DIE2006-0005; Netmovers Ltd. v. Anne Marie Doyle, WIPO Case No. DIE2008-0001; Taxassist Direct Limited v. Hugh Murphy, WIPO Case No. DIE2008-0002; Department of Arts, Sport and Tourism v. Odyssey Internet Portal Limited, WIPO Case No. DIE2005-0002.

In a number of cases, specifically, panels have adopted and applied the principles in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 when deciding whether a reseller has rights in law or legitimtate interests in a disputed domain name. Comité Interprofessionel du Vin de Champagne (CIVC) v. Richard Doyle, WIPO Case No. DIE2007-0005; Fatboy the original B.V. v. Padraig Beirne, WIPO Case No. DIE2008-0003.

Applying the principles in Oki Data, in certain circumstances, a reseller can make a bona fide offering of goods and services and thus have a legitimate interest in a domain name that is identical to or confusingly similar with a supplier’s trade mark. To succeed on Oki Data principles, the respondent must show an actual offering of goods and services at issue, the use of the web site to which the disputed domain name resolves to sell only the trade marked goods and the site must accurately disclose the respondent’s relationship with the trade mark owner. A respondent must also not try to corner the market in domain names that reflect the trade mark.

On the evidence before this Panel, the Respondent was an authorized reseller of the Complainant’s products sold under the CAT PUMPS trade mark, however their business relationship has now ended and it appears that the Respondent Company is in liquidation. The Complainant has never given any right, permission or authority to the Respondent to register the disputed domain name which is identical to its trade mark. The Complainant was initially not aware that the Respondent had registered the disputed domain name and since it became aware has continuously taken the position that the Respondent has no rights in law or legitimate interests in the CAT PUMPS mark or the disputed domain name.

In these circumstances, this Panel finds that the Respondent cannot avail of the defence provided by the Oki Data principles because, on the unrefuted evidence of the Complainant, the website to which the disputed domain name resolves has been used by the Respondent to promote the sale of competing goods and furthermore has failed to accurately disclose the Respondent’s relationship with the trade mark owner.

Separately it may be implied from the email dated August 10, 2012 from the liquidator of the Respondent to the Complainant’s UK affiliate that the liquidator takes the view that the disputed domain name is an asset of the Respondent and therefore there is some property right in the disputed domain name. It is not necessary to decide this point in the present case because any rights that the Respondent might have in the domain name as a reseller would be predicated on its adherence to the Oki Data principles.

In the circumstances as the Complainant has made out a prima facie case that the Respondent has no rights in law or legitimate interests interest in the disputed domain name and the Respondent has failed to satisfy this Panel that it has any such rights or legitimate interests, the Complainant is entitled to succeed in the second element of the test in paragraph 1.1.1 of the IEDR Policy also.

C. Registered and Used in Bad Faith

The third element of the test in paragraph 1.1.3 of the IEDR Policy requires the Complainant to prove that the disputed domain name has been registered or is being used in bad faith.

Having considered the evidence, this Panel finds on the balance of probabilities that the disputed domain name was registered by the Respondent without the permission of the Complainant and used as the address of a website to sell and promote competing products unrelated to the Complainant in addition to the Complainant’s products. The disputed domain name has therefore been used as bait for Internet users who are aware of the Complainant’s goods and presumably seeking information about the Complainant’s products and then used in bad faith to switch the traffic to the Respondent’s website that offers a wider range of products.

Paragraph 2 of the IEDR Policy includes among the examples of factors that may be evidence of bad faith registration and use. Paragraph 2.1.4 specifically includes among those factors circumstances that indicate that that the registrant has, through its use of the domain name, intentionally attempted to attract Internet users to a web site or other on-line location by creating confusion with a Protected Identifier in which a complainant has rights.

This Panel finds therefore that the disputed domain name was registered in bad faith.

The Complainant has therefore succeeded in the third and final element of the test in paragraph 1.1 of the IEDR Policy.

It is not necessary therefore to consider whether the disputed domain name is being used in bad faith.

The Complainant is entitled to succeed in this application.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 5 of the IEDR Policy and 14 of the Rules, the Panel orders that the domain name <catpumps.ie> be transferred to the Complainant.

James Bridgeman
Sole Panelist
Dated: December 13, 2012