WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Control Techniques Limited v. Lektronix Ltd
Case No. D2006-1052
1. The Parties
The Complainant is Control Techniques Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Baker & McKenzie, of United Kingdom of Great Britain and Northern Ireland.
The Respondent is Lektronix Ltd. of Aldridge, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Names and Registrar
The disputed domain names <controltechniques-repairs.com> and <controltechniques-spares.com> are registered with CSL Computer Service Langenbach GmbH d/b/a Joker.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 18, 2006. On August 21, 2006, the Center transmitted by email to CSL Computer Service Langenbach GmbH d/b/a Joker.com a request for registrar verification in connection with the domain names at issue. On August 22, 2006, CSL Computer Service Langenbach GmbH d/b/a Joker.com transmitted by email to the Center its verification response. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 1, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was September 21, 2006. The Response was filed with the Center on September 18, 2006.
The Center appointed The Honourable Neil Anthony Brown QC as the sole panelist in this matter on October 4, 2006. 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 the UK subsidiary of the United States company Emerson Electric Co., which is incorporated under the laws of the State of Missouri. It is in the business of designing, producing and marketing of electronic drives for electric motors, which it does under the name CONTROL TECHNIQUES. Amongst other activities, it operates a website, the address of which is “www.controltechniques.com” on which it offers servicing, repairs and supply of spare parts for its products. It also owns several other domain names and websites incorporating the CONTROL TECHNIQUES name in various countries.
The Respondent is a major industrial electronic repair company in many countries throughout the world. It registered the domain name <controltechniques-repairs.com> and <controltechniques-spares.com> on February 9, 2005.
5. Parties’ Contentions
The Complainant alleges that the disputed domain names <controltechniques-repairs.com> and<controltechniques-spares.com> should no longer be registered with the Respondent but that they should be transferred to the Complainant.
It contends that this should be done because, within the meaning of paragraph 4 of the Policy, the domain names are identical or confusingly similar to the Complainant’s unregistered and common law trademark CONTROL TECHNIQUES, that the Respondent has no rights or legitimate interests in the domain names and that the domain names have been registered and subsequently used in bad faith. The Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the domain names to the Complainant.
In support of its case on the first of these three elements, the Complainant contends that common law trademark rights are sufficient to found a Complaint under the UDRP and that it has acquired a common law trademark in the name CONTROL TECHNIQUES because of its long use in the Complainant’s business and its exclusive association with the Complainant’s name. It then says that the two domain names are confusingly similar to the trademark because they include the principal words of the trademark and then, in each case, have merely had added to it, one other word which is descriptive of the business of the Complainant’s business, which must create confusion as to whether the website of that name is operated by the Complainant.
The Complainant then contends, to establish the second element, that the Respondent has no rights or interests in the domain names because the Respondent is not authorized in any way to use its trademark and because the facts show an obvious intention by the Respondent to benefit from the reputation of the CONTROL TECHNIQUES mark, which was established before the domain names were registered.
Furthermore, the Complainant contends that the Respondent has been using the domain names to promote not only the products of the Complainant but also the products of its rivals, which is not a bona fide offering of goods and services.
The Complainant also argues that the Respondent is not named CONTROL TECHNIQUES and that, accordingly, it cannot bring itself within the provisions of paragraph 4(c)(ii) of the Policy.
Finally, the Complainant contends that the domain names were registered and are being used in bad faith. It contends that this is so because, first, the Respondent’s practice of registering a long series of domain names incorporating famous products and then claiming that it can service and provide spare parts for those products, shows that the Respondent registered the contentious domain names to prevent the Complainant from reflecting the trademark in a corresponding domain name, in breach of paragraph 4(b)(ii) of the Policy.
Secondly, the Complainant says, it is clear that the Respondent registered the domain names primarily for the purpose of disrupting the business of a competitor, because its intention was to divert to its own website potential customers of the Complainant. The Complainant alleges that this fact brings the Respondent within the provisions of paragraph 4(b)(iii) of the Policy.
By the same means, the Respondent has been attracting business by creating confusion as to whether its website and the goods and services promoted on it are being offered by the Complainant. This, the Complainant alleges, also establishes bad faith by virtue of paragraph 4(b)(iv) of the Policy.
The Respondent has explained its registration of the domain names and its operation of the websites to which they resolve, as follows:
Lektronix is increasingly reliant on utilising the Internet to generate new business and inform potential customers the range of equipment we repair. To this end we have a main website under the banner of Lektronix.co.uk plus a number of feeder sites that specifically describe the business we carry out. These generally name the company concerned and then add ‘repairs’ or ‘spares’ to the address.
To this end it says that it has had no objections from any other company in the Complainant’s position about the way it attracts its business, other than from the Complainant. Its service is popular because it receives about 350,000 hits per month on its various websites.
Turning to the specific allegations in the Complaint the Respondent says that the Complaint must fail because “Control Techniques” is not a trademark. As it puts it, the Complainant has argued that “the name Control Techniques is a trademark and that we have no right to use it in any way at all. But it is not a trademark; it is simply two words joined together. In all of the cases quoted in the complaint the entire list of domain names referred to registered trademarks Accordingly the Respondent cannot be infringing a trademark”.
Furthermore, there are many companies that undertake work on Control Techniques products and say so openly, for the Complainant has a poor reputation for after sales service.
Moreover, the Respondent alleges, the domain name cannot be confusingly similar to the CONTROL TECHNIQUES name because the Respondent makes it clear on its websites that it is not connected to the Complainant. It is therefore “… not passing ourselves off to be Control Techniques” and is independent of the Complainant and the other companies whose products it services.
The intention of these sites was to make it clear to Internet users that the Respondent could repair and provide spares for Control Techniques equipment, which, although placing it in direct competition with the Complainant, would never result in a prospective customer being in any way misled by Respondent’s websites.
The Respondent then emphasizes the commercial good sense of its process by contending:
We have been undertaking work on Control Techniques equipment for many years and have a reputation in the market place for offering high quality repairs. In many instances we will offer to repair equipment that Control Techniques themselves deem to be too old to repair. Without our assistance the user of the equipment would have no alternative but to purchase a new replacement unit of a more modern specification. This can cause huge disruption to companies and unnecessary expenditure. In many cases we have had customers contacting us to ask if we will repair equipment that Control Techniques have turned away.
As to the disclaimer on its websites the Respondent says that it offered to add to the home page of its two websites whatever wording the Complainant wanted to reinforce the fact that it has no connection with the Complainant, but had received no response.
As to the allegation of the Complainant that it does not know the Respondent, the Respondent says as follows:
This is very strange as in the past Control Techniques has referred some of its customers, with older equipment that they cannot service, to us for assistance. Also we have, a few years ago, tendered to Control Techniques for the provision of repair services on their older product that they no longer wish to support. Finally, we are a customer of Control Techniques and buy equipment and spare parts off them on a regular basis.
The Respondent concludes with some general observations on what it maintains is the true nature of the current proceeding:
We submit that the complainant is simply utilising this mechanism as a way of stopping us undertaking lawful business in competition with them. They wish to ensure that any customer of theirs remain ignorant of the fact that there are other companies able to offer a better service than they can. Surely this goes directly against the whole concept of a free Internet where no company, however large, can dictate to the market”.
6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to 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.
The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4 (a) of the Policy have been established before any order can be made to transfer a domain name. As the proceedings are civil, the standard of proof is the balance of probabilities.
Thus for the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities, that:
A. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
B. The Respondent has no rights or legitimate interests in respect of the domain name; and
C. The domain name has been registered and is being used in bad faith.
The Panel will therefore deal with each of these requirements in turn.
A. Identical or Confusingly Similar
The Complainant must first establish that there is a trademark or service mark in which it has rights. It is here that the first dispute arises in the present case, for the Complainant concedes that it does not have a registered trademark or service mark with which the domain name is confusingly similar and the Respondent contends that that being so, the Complaint must fail, for the Policy specifically provides that there must be a trademark. To this, the Complainant replies that it is enough that it has an unregistered trademark. The first question is therefore whether an unregistered or common law trademark is sufficient to give the Complainant standing to bring a UDRP complaint.
The answer to this question is that a series of UDRP decisions have held and it is now well established that the Policy protects rights in unregistered trademarks: for example, see: Bennett Coleman & Co. Ltd. v. Steven S. Lafwani, WIPO Case No. D2000-0014, SeekAmerica Networks Inc. v. Tariq Masood, WIPO Case No. D2000-0131, and the cases cited by the Complainant, Brisbane City Council v.Warren Bolton Consulting Pty Ltd., WIPO Case No. D2001-0047 and Imperial College v. Christopher Dessimoz, WIPO Case No. D2004-0322.
However, the fact that an unregistered trademark is sufficient to bring the proceedings does not mean that a Panel will automatically accept that there is an unregistered trademark in any particular case simply because a Complainant asserts that there is.
What evidence, then, will a panel expect to find before it is able to conclude that the evidence establishes the existence of an unregistered trademark?
The answer to this question is to be found in the useful WIPO Overview of WIPO Panel Views on Selected UDRP Questions1:
1.7 What needs to be shown for the complainant to successfully assert common-law or unregistered trademark rights?
Consensus view: The 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. The fact that the secondary meaning may only exist in a small geographic area does not limit complainant’s rights in a common law trademark. Unregistered rights can arise even when the complainant is based in a civil law jurisdiction.
Uitgeverij Crux v. W. Frederic Isler, WIPO Case No. D2000-0575, Transfer Skattedirektoratet v. Eivind Nag, WIPO Case No. D2000-1314 Transfer Amsec Enterprises, L.C. v. Sharon McCall, WIPO Case No. D2001-0083, Denied.
Australian Trade Commission v. Matthew Reader, WIPO Case No. D2002-0786, Transfer.
To these decisions may be added: UK Betting PLC v. Oldfield, WIPO Case No. D2005-0637 and Ticket Specialist Inc. v. hubshift, FA. 575616 (Nat. Arb. Forum, December 5, 2005) where the three panelists said:
“…to succeed in a Complaint under the Policy in relation to an unregistered mark, it is necessary for Complainant to prove that it has, through use, acquired secondary meaning, i.e. a reputation such that members of the public associate those goods or services solely with Complainant or its licensees.” (citing British Heart Foundation v. Meyer, AF-0957 (eResolution August 22, 2001).)
Answering this question is a matter of considering all of the evidence and applying it to the words that are said by the Complainant to constitute the trademark. The task is made more difficult when the words, as in the present case, are generic words and not obviously created or invented.
In the present case, the Panel finds that the Complainant has established, to paraphrase the words of the WIPO Overview, that the name CONTROL TECHNIQUES has become a distinctive identifier associated with the Complainant or its goods and services. That is so for the following reasons: the Complainant has been selling its products worldwide under the name CONTROL TECHNIQUES since 1985, it has advertised extensively under that name, its products are recognized by consumers and the media, it has adopted the name as its company and business name, its domain names have adopted the name around the world, its publications use the name and it continues to spend large sums of money on advertising and promoting the name at exhibitions and conferences.
Just as importantly for present purposes, it uses the same name in promoting its business of servicing and repairing the electric drives that it makes.
Moreover, there is no evidence to suggest that there is a company or business other than the Complainant that uses the name in the same area of industry as the Complainant.
The Panel is therefore satisfied that CONTROL TECHNIQUES is an unregistered trademark owned by the Complainant.
The next question is whether the domain names are confusingly similar to the trademark. The answer is that they are. The domain names consist, first of all, of the entirety of the trademark. Secondly, the domain names do not have any additional words as part of them that detract from or minimize the effect and dominance of the trademark in the domain name. Thirdly, the words that have been added to the trademark to comprise the domain name, “repairs” and “spares” respectively, do not lessen any confusing similarity that there is, but add to it. That is so because, once it is known by a potential market that CONTROL TECHNIQUES is in the repair and servicing of electric drives, which we now know that it is, the objective bystander would naturally assume that the Control Techniques referred to in the domain names and offering repairs and spares for Control Technique products is the same as Control Techniques itself.
This is exactly the same as the situation in Dr. Ing. h.c. F. Porsche AG v. Kentech, Inc. a.k.a. Helois Lab a.k.a. Orion Web a.k.a. Titan Net a.k.a. Panda Ventures a.k.a. Spiral Matrix and Domain Purchase, NOLDC, Inc., WIPO Case No. D2005-0890, where the domain name <porsche-repair-parts.com> was held to be confusingly similar to the trademark PORSCHE.
Accordingly, the Complainant has made out the first of the three elements that it must establish.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the domain names.
But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Thus, if the Respondent proves any of these elements or indeed anything else that shows it has a right or interest in the domain name, the Complainant will have failed to discharge its onus and the complaint will fail.
The Complainant has set about it the task of showing that the Respondent has no right or legitimate interest in the domain names by arguing and tendering evidence in support of its submissions, to the effect that the Respondent has been given no right to use the CONTROL TECHNIQUES trademark and in particular no right to use it to promote the products of the Complainant’s competitors. Consequently, it is said, the Respondent cannot have been using the domain name for a bona fide offering of goods and services.
The Respondent, however, counters this argument by saying that on a proper analysis it is entitled to rely on sub-paragraph (i) and it contends that it was using the domain name in connection with a bona fide offering of goods and services before the dispute was brought to its notice, which appears from the evidence to have occurred on or about May 5, 2006.
The bona fide offering of goods and services that it relies on, can be shortly stated, for the Respondent is quite open in saying that it advertises on its website that it will repair and provide spare parts for the Complainant’s equipment. As it says in its submission to the Panel:
“We specialise in offering to large manufacturing companies a repair service that is independent of the original equipment manufacturer.
We repair equipment manufactured by all of the large automation companies worldwide. This includes Control Techniques.
Lektronix is increasingly reliant on utilising the Internet to generate new business and inform potential customers the range of equipment we repair. To this end we have a main website under the banner of Lektronix.co.uk plus a number of feeder sites that specifically describe the business we carry out. These generally name the company concerned and then add repairs or spares to the address.”
This process is beyond doubt the offering of both goods and services.
But is it a bona fide offering of goods and services?
At one time, it was generally thought that such a practice could not be bona fide because the party in the position of the Respondent was simply making an unauthorized use of the other party’s trademark to promote its own business and that such conduct was certainly not bona fide.
That view, however, was disturbed in 2001 by the decision in Oki Data Americas, Inc. v. ASD, Inc. WIPO Case No. D2001-0903. In that proceeding, it was decided that a ‘reseller’, meaning an authorized sales or service agent, was making a bona fide offering of goods and services when it used its principal’s trademark in a domain name to advertise its own services, which involved selling the principal’s products or its spare parts. Those circumstances, it was said, gave the reseller a legitimate interest in the domain name sufficient to defeat a claim by the trademark owner. It will be seen, therefore, that this was a significant decision and it has been followed and developed by some UDRP panelists in recent years. Other panelists, however, have regarded it as an unwarranted restriction of the rights of trademark owners. Thus, the WIPO Overview (supra) has dealt with the Oki Data principles as follows:
2.3 Can a reseller have a right or a legitimate interest in the disputed domain name?
Majority view: A reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements. These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site accurately disclosing the registrant’s relationship with the trademark owner. The respondent must also not try to corner the market in domain names that reflect the trademark.
Oki Data Americas, Inc. v. ASD, Inc. WIPO Case No. D2001-0903, Denied. Experian Information Solutions, Inc. v. Credit Research, Inc. WIPO Case No. D2002-0095 among others, Transfer
Minority view: Without the express permission of the trademark holder the right to resell the trademark holder’s products does not create a right to use the trademark as the basis for a domain name.
Motorola, Inc. v. NewGate Internet, Inc. WIPO Case No. D2000-0079, Transfer with Dissenting Opinion
For cases dealing with a non-contractual relationship see:
DaimlerChrysler A.G. v. Donald Drummonds WIPO Case No. D2001-0160, Denied (with dissent),
Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946, Transfer,
Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent, WIPO Case No. D2004-0481 and, Denied.
As will be seen from the cases cited in the Overview, the OKI Data principles have even been applied where there has been no contractual relationship between the domain name registrant and the trademark owner, despite the fact that in Oki Data itself, the Respondent was an approved Oki Data representative.
But even when the Oki Data principles have been recognized and applied, they have always been acknowledged to be subject to some very significant conditions and limitations. The most important of these is that, as it was put in Oki Data itself:
- Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods. Nikon, Inc. v. Technilab, WIPO Case No. D2000-1774 (February 26, 2001) (use of Nikon-related domain names to sell Nikon and competitive cameras not a legitimate use); Kanao v. J.W. Roberts Co., Case No. 0109 (CPR July 25, 2001) (bait and switch is not legitimate).
In other words, the domain name registrant will be using the trademark for a legitimate purpose if it uses it to promote solely the goods of the trademark owner, but if it uses the trademark in a domain name as a guise to promote other goods and services which will not be in the interests of the trademark owner, that use of the trademark will be wholly illegitimate.
Applying the Oki Data principles and this important qualification on those principles, to the facts of the present case, it is clear that the Respondent cannot rely on it to show a bona fide offering of goods and services, or, consequently, a right or legitimate interest in the domain name.
That is so because the websites to which the domain names <controltechniques-repairs.com> and <controltechniques-spares.com> resolve, promote the repair of and spare parts for, Control Techniques products, but they also promote them for other and rival brands. They do this by announcing on the home page of each website the following:
We also provide spares for the following manufacturers: Siemens, Allen Bradley, Indramat, Bosch, Fanuc, GEM80, Danfoss, Mitsubishi, Eurotherm, Honeywell, Telemecanique, ABB, Modicon, Baumuller, Baldor, Lenze, and many others...
If the user clicks on one of those names, it is directed away from the “controltechniques” sites and to a site in the particular rival manufacturer’s name, one of the sites that the Respondent describes as its “feeder sites” and then on to the Respondent’s own site where the services are ordered. Thus, the CONTROL TECHNIQUES trademark is being used by the Respondent on its websites to promote the wares of these other companies and also to promote the services of the Respondent itself in servicing those other brands, none of which can benefit the Complainant or be with its approval.
Moreover, the home page of the websites invites the user to “Click Here for Control Techniques Spare Parts”, but when one does, the user is directed not only to Control Techniques products, but also to a choice of what seems like dozens of other brands as well as Control Techniques. So even seeking out Control Techniques does not necessarily lead to Control Techniques products or services.
The websites also emphasize the broad spectrum of offerings that is available to the user by including in their section on “Commonly Asked Questions”, the following question:
“Q: What equipment can you repair?
A: Lektronix routinely repairs a huge range of equipment the details of which can be found in the supported equipment and manufacturers sections of this site.”
Indeed, the Respondent has never denied that it promotes its services with respect to the goods of manufacturers other than and in addition to Control Techniques. The Respondent’s submission in the present proceeding makes this plain by saying:
“We specialise in offering to large manufacturing companies a repair service that is independent of the original equipment manufacturer.
“We repair equipment manufactured by all of the large automation companies worldwide. This includes Siemens, Rockwell, Mitsubishi, ABB, Fanuc, Danfoss, Group Schneider, Cegelec, Alstom, etc. etc and Control Techniques”.
It is clear, therefore, that the Respondent cannot bring itself within the Oki Data principles, for it is trading on the Complainant’s trademark to promote its own services and to enhance the products of business rivals of the Complainant by offering to service their competing products and sell their competing spare parts.
The Respondent is also outside the Oki Data principles because the disclaimer on its home page is inadequate. What little of the disclaimer can be read, announces that the Respondent is not affiliated with Emerson Electric Co., which of course is correct, but it does not disclaim a connection with Control Techniques, as it should, if it wishes to avoid inevitable confusion with the Complainant and the suggestion that Control Techniques approves of its sale and servicing of its rivals’ products.
For these reasons, the Respondent has not been able to show a bona fide offering of goods and services before the dispute was brought to its notice. It therefore cannot avail itself of the benefit of paragraph 4(c)(i) and, as it does not rely on and could not bring itself within either of the other provisions of that paragraph, it has been unable to show that it has a right or legitimate interest in the domain names.
The Complainant has therefore made out the second of the three elements that it must establish.
C. Registered and Used in Bad Faith
The Complainant must prove on the balance of probabilities both that the domain name was registered in bad faith and that it is being used in bad faith: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Further guidance on how to implement this requirement is to be found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which shall be evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive. The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.
The starting point in this inquiry must surely be that the Respondent, like everyone else in its industry, must have known of the Complainant’s prominent CONTROL TECHNIQUES mark. That being so, it could not have chosen or subsequently used the word “controltechniques” in its domain names for any reason other than to trade on that name and to confuse Internet users and by that means to attract them to a website with a name which is the same as that of the prominent mark. That is, in itself, evidence of bad faith, both generally and specifically within the meaning of paragraph 4(b)(iii) and (iv).
The Complainant relies on sub-paragraphs 4(b)(ii), (iii) and (iv) to make out its case of bad faith. The Panel’s view is that the facts bring the case clearly within paragraph 4(b) (iii) and (iv).
The case comes within paragraph 4(b)(iii) because the Respondent is using the domain name to run a business in open competition with the Complainant in the repair of Control Techniques equipment and the sale of Control Techniques spare parts. Such a business is lawful in itself, but it is contrary to the Policy to conduct it by using domain names that have been registered primarily to disrupt the rival’s business. It is clear that the Complainant wants customers to come directly to it and it is equally clear that the Respondent is trying by means of the domain names to divert or siphon off as many of them as it can and to get the business for itself. That is clearly disrupting the business of a competitor, for it is interrupting the progress of that business.
The case also comes within sub-paragraph 4(b)(iv) for the following reasons. First, the Respondent does not deny, but positively asserts in its submission, that the way it conducts its business is to attract Internet users to its website so that it can get business from them. Secondly, the way it is doing this is to create the impression through its domain name that it is operating under the imprimatur or, as the Policy puts it, “the sponsorship, affiliation or endorsement” of Control Techniques. The Respondent could always have used its own name and then announced on its website that it sold spare parts for and serviced Control Techniques equipment. Instead of doing that, it has attracted potential customers by using and promoting the Complainant’s trademark without consent and creating the impression in the minds of at least some potential customers that it has the endorsement of the Complainant.
This view, that the conduct just described amounts to bad faith, is consistent with the view taken by other UDRP panels on analogous facts and particularly in cases where the names of well-known motorcar manufacturers have been used to sell spare parts made by other manufacturers. Thus, in Toyota Motor Sales, U.S.A., Inc. v. Pick Pro Parts Inc, WIPO Case No. D2005-0562, the owner of the domain name <lexus--parts.com>, an unauthorized dealer in Lexus parts, was directing the domain name to its website <pickproparts.com>, where Lexus parts could be bought, but alongside parts for more than thirty other brands. On the issue of bad faith that inevitably arose for decision, the Panel said:
“Paragraph 4(b) of the Policy cites four non-exclusive circumstances that indicate bad faith in registering and using a domain name. The fourth is strikingly apposite here: using a domain name intentionally to attract Internet users to a site for commercial gain, by creating a likelihood of confusion with the complainant’s mark (Policy, paragraph 4(b)(iv)). The Respondent confusingly employs the Complainant’s marks in the Domain Names to attract Internet users to the Respondent’s commercial site, where the Respondent attempts to sell Complainant’s parts, as well as those of its competitors, evidently for commercial gain. This constitutes bad faith under paragraph 4(b)(iv) of the Policy. See Toyota Motor Sales U.S.A., Inc. v. I.E. Mann d/b/a Everything Internet, FA0411000370902 (Nat. Arb. Forum, January 11, 2005), <autotoyotaparts.com> (respondent “commercially benefits from this diversion by selling products and services to Internet users who are searching under Complainant’s mark”); Toyota Motor Sales U.S.A., Inc. v. Indian Springs Motor, FA0305000157289 (Nat. Arb. Forum, June 23, 2003), <glennstoyota.com> and <usedtoyotalexus.com> (bad faith may be inferred where a respondent profits from its “diversionary use” of the complainant’s mark in a domain name that resolves to a commercial website and the respondent fails to respond with a plausible good-faith reason for using the mark)”.
Those observations are equally applicable to the present case and show that, within the meaning of paragraph 4(b)(iv), there has been bad faith registration and use.
The Complainant has therefore made out the third of the three elements that it must establish.
This may be an appropriate place to refer to the correspondence addressed by the Respondent to the Complainant and its advisers and also to the Center. The Panel is concerned to ensure that the Respondent understands and accepts that all of its representations have been considered and taken into account in this decision. It is therefore appropriate to quote an extract from the Response, which was the form of a letter to the Center dated September 18, 2006, for its other correspondence echoes similar sentiments. The Respondent wrote:
We think this case is rather important to the future of, not only our business, but of the independence of the web as a whole. By using these websites we are simply attempting to inform users of a service that is available to them. We are not trying to deceive them into thinking anything other than the truth.
It is true that the independence of the web is a high priority and that there should be as few restraints as possible on the use of the web to inform users of services that are available to them. The Policy is not designed to frustrate either of those objectives. But the same objectives can be achieved without transgressing the rights of the owners of trademarks who often have a very substantial investment in the integrity of their names and who have a right to expect protection of their trademarks. It is also important that, as far as possible, users of the web are not mislead or misdirected.
In the present case, the Panel hopes that the Respondent understands that it is not the business it conducts or the promotion of it which is the subject of concern, but using the Complainant’s trademark, albeit an unregistered trademark, without permission and using it to promote the Respondent’s business so that at least some users are likely to be mislead into thinking that the services offered are those of the Complainant or that they are being offered with some sort of endorsement by the Complainant.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <controltechniques-repairs.com> and <controltechniques-spares.com> be transferred to the Complainant.
The Honourable Neil Anthony Brown QC
Dated: October 11, 2006