WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fanuc Corporation v. SC Metalkid 2008 SRL and Alunăriței Liliana
Case No. DRO2016-0005
1. The Parties
The Complainant is Fanuc Corporation of Minamitsuru-gun, Yamanashi Prefecture, Japan represented by Leaua & Asociatii, Romania.
The Respondents are SC Metalkid 2008 SRL (the First Respondent) and Alunăriței Liliana (the Second Respondent) of Iasi, both of Romania, represented by the internal representative of the First Respondent.
2. The Domain Names and Registrar
The Disputed Domain Names <fanucdrill.ro>; <fanuc.ro>; <robocut.ro>; <robodrill.ro>; and <roboshot.ro> are registered with ROTLD.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 24, 2016. On March 24, 2016, the Center transmitted by email to ROTLD a request for registrar verification in connection with the Disputed Domain Names. On March 25, 2016, ROTLD transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On March 31, 2016, the Center sent an email communication to the parties in English and Romanian regarding the language for the proceeding. On April 1, 2016, the Complainant requested that English be the language of the proceeding. On April 5, 2016 the Respondent agreed English to be the language of the proceeding.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 11, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 1, 2016. The Respondent requested an extension of the Response due date for four days in accordance with article 5(b) of the Rules. The Response was filed with the Center on May 5, 2016.
The Center appointed Charné Le Roux, David Perkins and Flip Jan Claude Petillion as panelists in this matter on June 3, 2016. The Panel finds that it was properly constituted. Each member of 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 Japanese company which was incorporated in 1972. It is part of the Fanuc group of companies, providing automation products and services in the field of robotics and computer numerical control (CNC) systems worldwide under the FANUC, ROBODRILL, ROBOCUT and ROBOSHOT trade marks. The products bearing these trade marks were introduced to the market between the period 1972 and 1984.
The Complainant owns trade mark registrations for the trade marks FANUC, ROBOCUT, ROBOSHOT and ROBODRILL respectively in Benelux and as European Union trade marks. The Benelux registration for FANUC is dated April 1, 1973 and the trade mark registrations for the remaining marks are all dated September 6, 2004. The Complainant also owns domain names incorporating the said trade marks including <fanuc.com>, <fanuc.at>, <fancu.be>, <robodrill.eu> and <roboshot.eu>.
The Complainant and an affiliate company entered into a non-exclusive distribution agreement with SC Gibas CNC East Europe SRL (GIBAS CNC) on April 9, 2009. The agreement was effective from the date of signature until December 31, 2009, but made provision for annual renewal subject to 90 days prior written agreement by all the parties. The distribution agreement has as its object the distribution and sale of the Complainant's products in the Romanian territory. It is not in dispute that the distribution agreement was not renewed at the end of December 2009.
The Complainant sent a letter to GIBAS CNC on September 30, 2013 to advise it of mergers within the Fanuc group of companies and that it would not renew the distribution agreement and that the agreement would end on December 31, 2013.
The Disputed Domain Names were registered as set out below:
<fanuc.ro> registered on October 30, 2007
<fanucdrill.ro> registered on March 18, 2009
<robocut.ro> registered on March 18, 2009
<roboshot.ro> registered on March 18, 2009
<robodrill.ro> registered on March 18, 2009
Apart from the first Disputed Domain Name listed above, which is registered in the name of the First Respondent, the remaining Disputed Domain Names are all registered in the name of the Second Respondent. The Disputed Domain Name <fanuc.ro> was originally registered in the name of Gibas Numeriek SRL which was deregistered as a company in March 2014. It had the Second Respondent indicated as its administrator and Mr. Favoreel, the representative of both Respondents in this matter, indicated as its sole shareholder.
In March 2015, the Complainant applied to ROTLD to cancel the Disputed Domain Name <fanuc.ro> on the basis that its proprietor no longer existed. It was not successful with this application, since "the former holder of the right to use has updated its contact information according to ROTLD proceedings thus becoming the owner of the domain". The First Respondent was then already recorded as the registrant.
The website associated with the Disputed Domain Name <fanuc.ro> is currently indicated as being under construction. The website associated with the remaining Disputed Domain Names all resolve to the website "www.alfamm.ro" which prominently displays the names "Gibas" and "Alfa Metal Machinery Group" on its first page and which ultimately resolves to pages where a number of products and services in the metal cutting industry and metal mass production business are offered for sale, including products sold under the Complainant's trade marks and those of third parties.
5. Parties' Contentions
The Complainant submits in connection with its rights in the trade marks FANUC, ROBOCUT, ROBOSHOT and ROBODRILL that they are registered, as indicated above, and that they enjoy a worldwide reputation. It contends that all the Disputed Domain Names are identical and/or confusingly similar to its trade marks, since they incorporate the trade marks in their entirety. The Complainant also argues that the addition of the generic term "drill" to the Disputed Domain Name <fanucdrill.ro> does not distinguish it from the Complainant's trade mark FANUC.
The Complainant asserts that the Respondents have no rights or legitimate interest in respect of the Disputed Domain Names for the following reasons:
a. The Respondents have never been affiliated with the Complainant nor have they been authorized by the Complainant to use and/or register its trade marks in domain names;
b. The Respondents have no prior rights in the Disputed Domain Names and are not commonly known by them;
c. While the Complainant had a relationship with GIBAS CNC arising from a distribution agreement, this contractual relationship did not extend to the Respondents. Also, GIBAS CNC had no express right to register domain names incorporating the Complainant's trade marks nor a right to do so merely because it had a right to resell the Complainant's products. The Complainant points out in this respect that the distribution agreement was a non-exclusive agreement. It asserts that even if a distributor can establish a right to register a domain name incorporating a trade mark holder's trade mark, in this case such a right, even if it existed, could not have been transferred from GIBAS CNC to any of the Respondents.
The Complainant contends that the Respondents registered and are using the Disputed Domain Names in bad faith, as the Respondents clearly have been aware of the existence of the trade marks of the Complainant, given their long standing worldwide use.
The Complainant argues that the Respondent's bad faith in connection with the Disputed Domain Name <fanuc.ro> is evident in the use that is being made of it. It states that at some point the website associated with that domain name appears to have displayed the products of the Complainant but that following receipt of the Complainant's cease and desist communication, the website was taken down and is now indicated as being under construction. The Complainant argues that this action constitutes an admission that the First Respondent had no right to register the Disputed Domain Name. The Complainant also indicates that the First Respondent requested payment of an amount of a minimum of 6 figures in Euro in order to agree to the transfer of the Disputed Domain Name <fanuk.ro> to the Complainant. The Complainant does not provide any evidence of this request, however.
The Complainant points out that the website to which the other four Disputed Domain Names resolve promotes the main activities of "Alfa Metal Machinery Group", with which the Complainant has no relationship, and that it offers for sale both the products of the Complainant and those of third parties. In this way, the Second Respondent attempts to attract for commercial gain Internet users by creating confusion with the Complainant's trade marks and that the said website is somehow connected with the Complainant.
The Complainant argues that the First Respondent seems to have engaged in a practice of registering well known trade marks of companies with whom a dealer contract was concluded and refers to an uncontested decision issued by the ADR Centre for ".eu" disputes in Prague, where the panel ordered the First Respondent to transfer of the domain name <smtcl.eu>. The Complainant contends that the First Respondent is in this case also retaining the domain name <fanuc.ro> in order to prevent the Complainant from reflecting its trade mark in a corresponding domain name.
The Complainant requests that the Disputed Domain Names be transferred to it.
The Complainant also requests, in connection with a procedural point, consolidation of its complaint against the Respondents, on the following grounds:
a. All the Disputed Domain Names are controlled by Mr. Favoreel, who represents the "Gibas" companies as well as the First Respondent and who responded on behalf of the First Respondent when it was asked by the Complainant to transfer the Disputed Domain Name <fanuc.ro>;
b. The Disputed Domain Names <fanucdrill.ro>, <roboshot.ro>, <robocut.ro> and <robodrill.ro> all resolve to a page where the word "Gibas" prominently appears, and then transfers to the website of "Alfa Metal Machinery Group";
c. The Second Respondent is appointed as a special director of the First Respondent;
d. The email address of all the Disputed Domain Names are identical;
e. The domain name server for all the Disputed Domain Names are identical; and
f. All the Disputed Domain Names incorporate the trade marks of the Complainant.
The Respondents, both represented by Mr. Favoreel, filed comprehensive arguments contesting the statements made by the Complainant and the relief that it seeks. They indicate firstly that they are part of a Romanian group of companies that trade in CNC machines and that most of these machines are sold equipped with the Complainant's components. The Respondents concede that the Complainant is a leading company in the CNC industry.
The Respondents contend that they commenced discussions with the Complainant from 2007 to represent it in Romania in connection with its FANUC, ROBODRILL, ROBOCUT and FANUCDRILL products. They indicate that they registered the Disputed Domain Name <fanuc.ro> and subsequently developed a website in order to promote their activities, based on their experience in the Complainant's products. The Respondents state that they conducted a trade mark search in September 2007 for the FANUC trade mark but could not find anything on the European Union database and contend that since the Complainant had not filed for its trade mark in Europe at that time, the First Respondent's registration of <fanuc.ro> in October 2007 had been done correctly. The remaining Disputed Domain Names were subsequently also registered and attached to a website in order to promote the Complainant's products.
Insofar as the current use of the Disputed Domain Names is concerned, the Respondents state that the website associated with <fanuc.ro> was taken down on the last day of the distribution agreement, being December 31 2013 according to the Respondents, and that since the Disputed Domain Names have been parked, do not resolve to a website and do not generate any traffic, that the Complainant's argument that traffic is diverted to the Respondents' websites is incorrect.
The Respondents agree that the above stated distribution agreement had been executed, but deny that it was a non-exclusive agreement and that the contract was limited in time, stating that it was, in fact, only cancelled with effect of December 2013, following receipt of the Complainant's letter of termination. The Respondents submit further in connection with this point, along with supporting evidence, that during 2011/2012 a re-structure took place when they grouped, together with the First Respondent, to trade under the name and style of "Alfa Metal Machinery Group", that the Complainant was aware of this re-structure and that it issued an invoice in May 2012 in favour of the First Respondent. The Respondents deny that the Complainants did not have any relationship with the Respondents and point out that the distribution agreement was signed by the Second Respondent.
The Respondents acknowledge that the business relationship between the parties ended, albeit in 2013 and state that while they had no legal difficulty with the termination at that point, the Complainant's demand to the Respondents to return the Disputed Domain Names and actions that it subsequently took did not constitute good faith on its part. The Respondents disclose an email from the Complainant to transfer the Disputed Domain Name <fanuc.ro>, dated July 23, 2013 and their reactions to it, which include submissions in a November 2013 email such as "we have bought this domain legally and this to support our common today's business: selling FANUC ROBO machines in Romania. We have done serious investment for this marketing of your product" and "The fanuc.ro website will be in function to support our mutual business as long our contract with fanuc robomachines is valid, after this it will be available for reasonable compensation". In January 2014 the Respondents advised: "I told already several times and years ago to your people if you want to obtain this domain name then make an offer to buy". This lead to discussions regarding the potential purchase of the Disputed Domain Name <fanuc.ro> and culminated in an offer by the Complainant on May 26, 2014 to purchase it for an amount of EUR 5,000. The Respondents state that they did not accept the offer as the said amount did not correspond with the investment they made in developing the website. They vehemently deny that there was any request for payment of an amount of a minimum of 6 figures in Euro.
The Respondents submit that they comply with the four requirements set out in the case of Oki Data America's, Inc. v ASD Inc., WIPO Case No. D2001-0903 (the Oki Data case) namely that:
a. They used the website associated with <fanuc.ro> only to promote the Complainant's products;
b. The above said website accurately disclosed the Respondents' relationship with the Complainant;
c. They have not tried to corner the market on all domain names; and
d. They are still offering the Complainant's goods for sale.
The Respondents' reaction to the Complainant's request for consolidation include that the Complainant has not proven an exclusive right in the Disputed Domain Names <fanucdrill.ro> or <robocut.ro>.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Disputed Domain Names, the Complainant must prove:
(i) that the Disputed Domain Names are identical or confusingly similar to trade marks or service marks in which it has rights;
(ii) that the Respondents have no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) that the Disputed Domain Names have been registered and are being used in bad faith.
A. Language of the Proceedings
The Complaint was submitted in English whereas the registration agreement for the Disputed Domain Names is Romanian. In terms of paragraph 11 of the Rules, in the absence of an agreement between the parties or otherwise specified in the registration agreement, the administrative proceeding should be in the language of the registration agreement. The Complainant requested the proceedings to be in English to which the Respondents agreed. It is thus not necessary for this Panel to consider the issue further other than to acknowledge the existence of the party agreement and proceeds to a decision in English.
Paragraph 10(e) of the Rules provide for the consolidation of multiple domain name disputes. Panels have generally held that a single complaint may be brought against multiple respondents and domain names when the domain names or websites to which the domain names resolve are subject to common control, and where the consolidation would be fair and equitable to all parties.
On consideration of the facts of this matter, the Panel finds that the Complainant has made out a case for consolidation on the basis that:
a. All the Disputed Domain Names and the websites to which they resolve are subject to the common control of Mr. Favoreel, who also represents both the Respondents in this dispute. This finding is supported by the fact that the contact email address and DNS in respect of all the Disputed Domain Names are identical.
b. Consolidation would avoid unnecessary duplication of time, effort and expense and ultimately would be fair and equitable to all parties.
While the Respondents contest the request for consolidation, their arguments mainly centre around the exclusivity that the Complainant can claim in the trade marks FANUCDRILL and ROBOCUT, which do not address the issue of consolidation.
C. Identical or Confusingly Similar
The Complainant has furnished evidence of trade mark registrations for the trade marks FANUC, ROBOCUT, ROBOSHOT and ROBODRILL, currently on the Benelux trade marks register as well as the register of the European Union Intellectual Property Office ("EUIPO"). The Complainant has also advanced a case of substantial use of its trade marks in commerce, claiming that its trade marks have become well known. The Respondents did not dispute the evidence regarding the Complainant's registered trade mark rights or extensive use in commerce. In fact, they agreed that the Complainant is a leading company in the robotics and CNC systems industries.
Consequently, the Panel finds that the Complainant has succeeded in proving that it has rights in its above stated trade marks.
The Panel also has no difficulty in finding that in the cases of <fanuc.ro>, <robocut.ro>, <roboshot.ro> and <robodrill.ro> the Disputed Domain Names are identical to the trade marks in issue and in respect of <fanucdrill.ro>, confusingly similar to the Complainant's trade mark FANUC. The Disputed Domain Name <fanucdrill.ro> wholly incorporates the Complainant's FANUC trade mark and also the generic term "drill", which is a descriptive term that relates to the Complainant's industry and as such exacerbates the likelihood of confusion. Its addition to the Disputed Domain Name does not distinguish it from the Complainant's trade mark. The Respondents have in any event also not disputed the Complainant's argument that the Disputed Domain Names are identical and/or confusingly similar to its trade marks.
The Panel finds that the Complainant has satisfied this Policy requirement.
D. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove a negative, namely that the Respondents lack rights or legitimate interest in the Disputed Domain Names. This is accomplished as follows:
"Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such a prima facie case is made, the production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, the complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interests, the panel then weighs all the evidence with the burden of proof always remaining on the complainant." See WIPO Overview of WIPO Panel views of Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") at paragraph 2.1 in this regard.
The Respondents argue that their commercial relationship with the Complainant provides them with the legitimate interest that they require in order to succeed under this Policy heading. A number of panels have dealt with the question of the rights or legitimate interest that a reseller or distributor of trade marked goods can claim in a domain name which contains such a trade mark. The consensus view largely set out in the Oki Data case indicates that a legitimate interest may be established if the re-seller's use meets certain requirements, including the actual offering of goods and services at issue, the use of the website associated with the disputed domain name only to sell the trade marked goods, the website's accurate and prominent disclosure of the registrant's relationship with the trade mark holder, and an absence of monopolizing conduct by the Respondents in respect of domain names that reflect the trade mark. However, some panels are of the view that it would generally be difficult for a respondent to establish the requisite rights or legitimate interest in a domain name identical to a trade mark where the respondent has no relevant trade mark rights and no express authority of the relevant trade mark holder. A few panels furthermore held that a right to resell a trade mark holder's products does not create a right to use a domain name that wholly incorporates the relevant trade mark. See WIPO Overview 2.0 at paragraph 2.3 and the decisions reflected there.
In this case, the Panel took into account the following factors in finding that the Respondents did not establish rights or legitimate interest in the Disputed Domain Names:
a. The Respondents registered the Disputed Domain Names prior to their (or their predecessors in title in the case of the First Respondent) entering into a distribution agreement with the Complainant;
b. The Respondents have not been commonly known by the Disputed Domain Names and have themselves acquired no trade mark rights in them;
c. The Disputed Domain Names were registered some years after the Complainant's registration of its trade marks in Benelux and the European Union in 1973 and 2004 respectively;
d. The Disputed Domain Names wholly incorporate the Complainant's trade marks, with nothing to distinguish them from the Complainant and its business;
e. The Complainant did not consent to the registration of the Disputed Domain Names and the Panel accepts that it did not so even silently, considering the restricted terms of the distribution agreement, which clearly indicates that it was a non-exclusive sales right that was granted to the Respondents' predecessor in title. The Panel does not consider the length of the term of the agreement to be of any relevance.
f. The Disputed Domain Names are not used in connection with the bona fide offering of goods and services nor do they constitute noncommercial or fair use. The website at <fanuc.ro> has been inactive from December 2013 when the relationship between the parties finally terminated. The remaining Disputed Domain Names resolve to the Respondents' website where neither the Complainant's goods are sold exclusively, nor is the relationship between the Respondents and Complainant disclosed.
The Respondents' pre-December 2013 use of the Disputed Domain Names may potentially have indicated rights or legitimate interests in terms of the Oki Data case, but their later conduct does not, as indicated in paragraph above, and the Respondents' rights or legitimate interest is typically assessed at the time of the Complaint filing. The Respondents' conduct also does not satisfy the relevant burden of proof expressed in the minority views summarized in WIPO Overview 2.0 at paragraph 2.3. See Vibram S.p.A. v. Chen yanbing, WIPO Case No. D2010-0981.
Accordingly, the Panel finds that the Respondents have no rights or legitimate interest in respect of the Disputed Domain Names.
E. Registered and Used in Bad Faith
The Respondents registered the Disputed Domain Names at a time when the Complainant had an established reputation and registrations for its trade marks. It also did so even before the establishment of a distribution agreement with the Complainant. While they did so, they say, in order to promote the Complainant's business, it would rather appear that their conduct was opportunistic and designed to obtain a springboard advantage in the market for their own benefit.
Also, the Respondents' acceptance in principle that the Complainant is entitled to the Disputed Domain Names but on the basis that payment of more than the Complainant's of EUR 5,000 should be made, cannot be considered good faith conduct. The Panel is not prepared to accept the Respondents' submission that the Complainant was never interested in the Disputed Domain Names or, as indicated above, that it consented tacitly to their registration and use by the Respondents.
Turning to the current passive holding of <fanuc.ro>, the Panel cannot consider of any use that the Respondents could make of it that would not be considered bad faith in light of the Complainant's rights and on this present record. Insofar as the remaining Disputed Domain Names are concerned, they lead Internet users to a website that promotes not only the Complainant's goods but also those of third parties. Clearly, such use demonstrates an intent to trade off and reap a benefit from the value that attaches to the Complainant's trade marks, also constituting use in bad faith under paragraph 4(b)(iv) of the Policy.
Taking into account the circumstances around the registration of the Disputed Domain Names and their use, the Panel finds that the Complainant has met its burden of proof within the meaning of paragraph 4(b)(i) and (iv) of the Policy and that the Disputed Domain Names were registered and are being used in bad faith.
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 Names: <fanucdrill.ro>, <fanuc.ro>, <robocut.ro>, <robodrill.ro>, <roboshot.ro> be transferred to the Complainant.
Charné Le Roux
Flip Jan Claude Petillion
Date: June 17, 2016