WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fine Tubes Limited v. Tobias Kirch, J. & J. Ethen, Ethen Rohre GmbH
Case No. D2012-2211
1. The Parties
Complainant is Fine Tubes Limited of Plymouth, United Kingdom of Great Britain and Northern Ireland, represented by Bond Pearce, United Kingdom of Great Britain and Northern Ireland.
Respondent is Tobias Kirch, J. & J. Ethen, Ethen Rohre GmbH of Aachen, Germany, represented by Meissner, Bolte & Partner, Germany.
2. The Domain Name and Registrar
The disputed domain name <fine-tubes.com> is registered with PSI-USA, Inc. dba Domain Robot (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2012. On November 9, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 12, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on November 20, 2012.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 23, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 13, 2012. The Response was filed with the Center on December 13, 2012.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on December 19, 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.
Following review of the case file and drafting of a preliminary decision, the Panel sought additional pleading from the parties regarding certain elements important to reaching a final decision in this matter. Administrative Panel Procedural Order No. 1 stated in relevant part:
“Complainant has secured registration in a number of jurisdictions, including the United Kingdom and European Union, for the word and design trademark FINETUBES. Complainant has relied on these registrations as evidence of rights in a trademark. Complainant has also asserted unregistered trademark rights in the words “Fine Tubes”.
Respondent has provided evidence that Complainant’s application for registration of a word (alone) trademark “Fine Tubes” as a CTM was refused by OHIM on absolute grounds. Respondent has also provided evidence that Complainant withdrew an application to the UK IPO for registration of the word (alone) trademark “Fine Tubes” following examination, and by implication in order to avoid a final refusal. As a preliminary matter, these refusals lead the Panel to conclude that Complainant does not have rights in the word (alone) trademark “Fine Tubes”. Complainant does, as a preliminary matter, appear to have rights in the word and design trademark FINETUBES.
The Panel is concerned that neither party has addressed how the Panel should assess substantial similarity between a word and design trademark, on one side, and a domain name, on the other, from the standpoint of previous decisions of UDRP panels involving similar subject matter. There are a substantial number of potentially relevant decisions.”
Complainant and Respondent each transmitted a supplemental submission within the timeframe specified in Panel Order No.1. Respondent objected to additional legal argumentation by Complainant regarding alleged unregistered trademark rights as being outside the scope of Panel Order No.1.
4. Factual Background
Complainant is the owner of registrations for the word and design trademark FINETUBES in a number of national/regional trademark offices. The term FINETUBES is represented in lowercase letters, with “tubes” in bolder font than “fine”. The graphical element of the trademark consists of a predominantly solid oval (or ellipse) of which on the lower left-hand portion a smaller oval/ellipse is excised, as appears below:
The FINETUBES word and design trademark is registered at the UK Intellectual Property Office (UK IPO), registration number 2540687,1 dated June 18, 2010, in international classes (ICs) 6 and 40, covering “Pipes and tubing of metals or alloys; goods made wholly from tubing or pipework; parts and fittings for the aforesaid goods” and “Treatment of materials; processing of tubes and tubing; electropolishing, bending, plating and coating tubes made of metals or of alloys; custom manufacture and processing of goods”. The same form of word and design trademark is registered at OHIM as a Community Trade Mark (CTM), registration number 1061830, based on international registration dated November 2, 2010, received at OHIM January 13, 2011 and published January 14, 2011, also in ICs 6 and 40. The same form of word and design trademark is the subject of an international registration under the Madrid System, registration number 1,061,830, dated November 2, 2010, in ICs 6 and 40, designating Albania, Australia, Bahrain, Bosnia and Herzegovina, China, Croatia, Egypt, European Union, Georgia, Iceland, Japan, Liechtenstein, Norway, Russian Federation, Serbia, Singapore, Sultanate of Oman, Switzerland, The former Yugoslav Republic of Macedonia, Turkey, Ukraine, United States of America. Further to the aforesaid designations, protection has been granted in a number of countries, with refusal pending further review from China and partial refusal from Australia pending. The United States Patent and Trademark Office (USPTO) registered the aforesaid word and design trademark on its Principal Register, registration number 4,103,648, dated February 28, 2012.
Complainant is a leading specialist manufacturer of high precision seamless and welded metal tubes for the oil and gas, nuclear, aerospace, chemical and medical industries. Complainant maintains offices in the UK, France, Germany and India, and exports goods to over 35 countries worldwide. Complainant has participated in a number of high profile international projects, including providing 130 km of cooling pipes for the Large Hadron Collider of the European Organization for Nuclear Research and providing titanium hydraulic tubing for the Eurofighter Typhoon aircraft in 1999. Complainant operates a commercial Internet website at “www.finetubes.co.uk” to which a number of other domain names registered by Complainant (including <finetubes.com>) resolve. Complainant indicates that its use of “Fine Tubes” as a trademark commenced when it was incorporated as a UK company in 1943, and that it has used “Fine Tubes” as a trademark continuously since that time. Complainant has provided evidence of its use of the stylized FINETUBES trademark and the word “Fine Tubes” in advertisements placed in international, national and regional publications for various industries. Complainant has provided evidence of annual turnover of approximately GBP 35,000,000 for the year ended December 31, 2011.
Complainant indicates that its Central European Sales Office is located in Munich, and that it has a substantial number of regular clients for its products located in Germany.
According to the Registrar’s verification, Respondent is registrant of the disputed domain name. According to the Registrar, the disputed domain name was registered by Respondent on November 14, 2011. Respondent has indicated that it changed its firm name from J. & J. Ethen to Ethen Rohre GmbH.
The disputed domain name resolves to a commercial website at Internet address “www.ethen-rohre.de”, available in German and English, offering for sale “Custom-made capillary precision tubes, services from consulting over production management to logistics or immediately deliverable stock tubes”. Under its “Industries” tab, Respondent indicates that its largest consumers are in the sectors of “Apparatus Engineering, Automotive, Chemical Technology, Oil and Gas Industrie, Medical Technology, Measurement and Control Systems, Nuclaire and Energy Technology, Science” [sic]. There is no disclaimer of association with Complainant on Respondent’s website.
Complainant has furnished a statement from an employee that she attempted to contact Respondent via its website in early 2010 to complain about Respondent’s unauthorized use of Complainant’s trademark as a Google AdWord, but received no response. Complainant indicates that the message was written in German.
Complainant has provided some evidence of “actual confusion” among its customers in the form of an email message from a long-standing customer asking whether Complainant had created a new German subsidiary named Ethan-Rohre because the disputed domain name had directed it to Respondent’s website.
Respondent has provided evidence that Complainant filed an application to register the word trademark FINE TUBES on the register of the UK IPO, application number 2540686, filing date March 2, 2010, application withdrawn following examination on May 19, 2011. The online file of the UK IPO does not include a copy of the examiner’s assessment.
Respondent has provided evidence of a refusal dated May 25, 2004 by the OHIM to register the word trademark FINE TUBES as a CTM (application number 001869577). The database of the OHIM indicates that the grounds for refusal are in CTMR.007(1)b and CTMR.007(1)c, which refer to corresponding provisions of the Community Trade Mark Regulation (CTMR), regarding absolute grounds for refusal.2
Respondent provided a copy of an outgoing office action, dated February 15, 2011, from a USPTO examiner in a provisional refusal for registration of Complainant’s stylized FINETUBES trademark based on its international registration. In that office action, the examiner requested that Complainant disclaim “the descriptive wording ‘FINE TUBES’ apart from the mark as shown because it merely describes an ingredient, quality, characteristic, function, feature, purpose or use of applicant’s goods and/or services… Specifically, the attached evidence from Internet dictionaries shows this wording “tubes” is generic and/or highly descriptive for the applicant’s goods and services while the wording “fine” is laudatory meaning the tubes are of great quality of used for very complicated purpose use and thus must be thin an or delicate in nature [sic]”. Respondent did not provide a copy of Complainant’s response to this office action dated May 5, 2011 which addresses in detail the provisional refusal of the examiner, nor did Respondent note or provide documentation indicating that Complainant’s argument in response was accepted and that the stylized FINETUBES trademark was registered without a disclaimer as to FINETUBES.3 Complainant did not include reference to the USPTO process in its supplemental submission.
Respondent has provided a copy of a refusal dated 11-8-2011 by the China Trademark Office of registration of Complainant’s stylized trademark based on the international registration, the grounds for which are stated as: “This mark has the nature of exaggerating the quality of the goods for which the mark is used. This mark has the nature of exaggerating the quality of the services for which the mark is used.” Complainant indicated that it has filed arguments objecting to this refusal, but that an early determination is not expected.
Respondent has provided evidence of provisional refusal, dated October 20, 2011, from the Russian Patent and Trademark Office (ROSPATENT) based on the international application for the word and design mark on grounds that the “finetubes” portion of the mark is not protectable. However, with respect to this designation, Complainant has indicated that it is “Awaiting notification of grant”.
The registration agreement in effect between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use. (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant alleges that it is the owner of rights in the trademark “Fine Tubes” which has been in continuous use since 1943. Complainant refers to registrations for the FINETUBES trademark. Complainant argues that it has acquired common law trademark rights in “Fine Tubes” at least in the United Kingdom by reason of the law of passing off.
Complainant contends that the disputed domain name is identical to its “corporate identity and trade mark”, and that the addition of “.com” to its trademark is purely descriptive.
In response to Panel Order No. 1, Complainant argues that “the trade mark includes a logo element that consists of 2 ellipses but the Complainant contends that the dominant, fundamental and distinctive element of the mark is the word element ‘fine tubes’.” Complainant refers to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), arguing “that the logo element of the Complainant's registered trade mark is simply 2 non-stylised ellipses and constitutes an extremely basic logo. There are many thousands of registered trade marks that include ellipse elements all of which coexist in the marketplace. The logo element in question is not highly distinctive and therefore does not form an especially prominent or distinctive part of the trade mark overall.” Respondent refers to several prior administrative panel decisions under the Policy (see discussion infra) it contends support its position that the word element is the dominant part of its registered trademark, and that the word portion may be used for assessment of confusing similarity with the disputed domain name.
Complainant argues that its CTM application was filed more than 12 years ago, and that “the Complainant has acquired substantial goodwill and reputation since this time”. Complainant states with respect to its UK application:
“… the UK application was withdrawn voluntarily after a commercial decision was taken not to incur the expense of filing further submissions at that stage. The Complainant wanted to focus on their International registrations and protection first. The Complainant had the option to file further evidence and third party Witness Statements and request a Hearing at the IPO but decided not to do so. We attach a letter from the Complainants solicitors dated 13 May 2011 withdrawing the application (and the IPO's response) which confirms that there was no Hearing. The Complainant instead decided to focus on registering their ‘Fine Tubes and Device’ trade marks in the UK, EU and Internationally which were filed at approximately the same time.”
Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent is not affiliated with and has not been authorized by Complainant to use its well-known trademark; (2) Respondent has no trademark or other rights in “Fine Tubes”; (3) the term “Fine Tubes” has no meaning in the German language such that Respondent could only be using Complainant’s trademark to divert Internet users to its website; (4) Respondent must have known of Complainant and its business when it registered the disputed domain name; (5) Complainant notified Respondent in 2010 about its concerns regarding use of its trademark in Google AdWords.
Complainant contends that Respondent registered and is using the disputed domain name in bad faith because: (1) the disputed domain name is redirecting Internet users to Respondent’s home page; (2) Respondent is misrepresenting to the public that there is an association between Complainant and Respondent; (3) Complainant’s trademark is well-known and potential customers of Complainant would assume that Respondent and its website are somehow associated with Complainant; (4) Complainant has provided evidence of actual confusion among Complainant’s customers; (5) Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to Complainant being source, sponsor, affiliate or endorser of Respondent’s website; (6) Respondent registered the disputed domain name for the purpose of disrupting Complainant’s business; (7) when Respondent registered the disputed domain name it must have been aware of Complainant and its business.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent argues that Complainant primarily relies on “business designation rights”, i.e. its corporate name, rather than rights in a trademark in these proceedings. Respondent contends that business designation rights arise only in respect to countries in which main offices have been established, and only within a legally admissible scope. Respondent argues that registration of business designations does not require establishment of a distinctive character, which differentiates such rights from trademark rights. Respondent contends that purely descriptive terms are refused trademark registration on absolute grounds.
Respondent contends that Complainant has rights only to “device marks which contain the non-registrable term ‘Fine Tubes’ as an element which is not eligible for protection.” Respondent contends that Complainant has been unable to register the word designation “fine tubes” in any country in the world because it is a purely descriptive indication for the corresponding products. Complainant refers to the rejection by OHIM (see Factual Background, supra) based on refusal of marks devoid of any distinctive character, and marks that designate the kind, quality, etc., of the goods or services.
Respondent further refers to withdrawal by Complainant of its application for registration of the word trademark “Fine Tubes” at the UK IPO which, according to Respondent, was apparently done to keep the application from being rejected for reasons having to do with pure descriptiveness. Complainant argues that problems arose in many countries with respect to the designations based on the international application because of the descriptive wording “fine tubes” even though these terms form part of a word and design mark.
Respondent contends that the office action from the USPTO (see Factual Background, supra) requiring disclaimer of the terms “Fine Tubes” is evidence that those terms are generic and/or highly descriptive.
Respondent refers to the refusal of the China Trademark Office and the provisional refusal of the Russia Patent and Trademark Office as evidence that “Fine Tubes” is not protectable as a trademark.
Respondent contends that Complainant’s failure to refer to the aforesaid refusals of registration is evidence of bad faith on the part of Complainant.
Respondent argues that under harmonized EU trademark law Complainant would have been able to demonstrate acquired distinctiveness in a descriptive term, but that Complainant was “obviously unsuccessful” in obtaining registration on the basis of the mark’s reputation because in relevant trade circles the terms “fine tubes” exclusively refer to the type of product involved.
Respondent contends that it has rights or legitimate interests in the disputed domain name because, as a manufacturer and marketer of fine tubes, it has “every right to employ the designation ‘fine tubes’ as a purely descriptive definition of its own products”. Because the terms are free for use by the public, competitors in the marketplace may register the terms “fine tubes” as domain names. A decision in favor of Complainant would amount to granting Complainant a monopoly on the description “fine tubes” linking Internet users exclusively to monopolized websites of Complainant.
In response to Panel Order No. 1, Respondent states that nothing in Complainant’s supplemental submission refutes Respondent’s position that Complainant’s CTM application for the word mark “Fine Tubes” was rejected on grounds of lack of registrability, and notes that Complainant could have but did not provide copies of its correspondence with OHIM to the Panel. Respondent further notes with respect to withdrawal of the UK word only application, “Further submissions and a hearing are only requested by the trademark office if the registration of the mark is fundamentally not possible due to its descriptive content and that these grounds for refusal can only be overcome by proven acquired distinctiveness. But since an acquired distinctiveness of the descriptive term ‘Fine Tubes’ does not exist, the Complainant had to withdraw its trademark application.”
In further response to Panel Order no. 1, Respondent argues with respect to the administrative panel decisions cited by Complainant, “these cases related without exception to terms which exhibited a certain degree of distinctiveness. They did not concern terms having a purely descriptive character. As a result, in each case it was ruled that trademark rights could also be derived from word/device marks. It was determined, and still can be determined to a sufficient degree of certainty, that the word-only components of the word/device marks are distinctive in themselves.” Respondent refers to a number of administrative panel decisions that Policy (see discussion infra) it argues support its position that the word-alone portion of Complainant’s word and device trademark may not be assessed for confusing similarity in relation to the disputed domain name.
Respondent argues that it did not register and use the disputed domain name in bad faith because the disputed domain name is “used merely as a forward link to the company address ‘ethen-rohre.de’”. Respondent argues that it is not attempting to imitate or exploit the Internet presence of Complainant, that Respondent’s website presence is absolutely independent in design, graphics, etc. from Complainant’s website.
Respondent argues that it is irrelevant that there are German translations for the generic term “Fine Tubes” since English has been used in Germany for a long time in trade circles where products of Complainant and Respondent are offered. Respondent notes that its own website is available in English.
Respondent alleges that it has used the generic terms “Fine Tubes” in good faith in the disputed domain name.
Respondent requests the Panel to reject Complainant’s Complaint.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to the Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center notified the Complaint to Respondent and Respondent filed its Response in a timely manner. Respondent thereafter submitted a supplemental submission. The Panel is satisfied that Respondent was notified of the Complaint and was afforded a reasonable opportunity to respond.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
In its Complaint, Complainant consistently refers to its establishment of rights in the trademark “Fine Tubes” as evidenced by use in commerce in the United Kingdom since 1943, and in other countries more recently. Complainant dates use of its trademark back to June 1943 when Fine Tubes Limited was incorporated as a UK Limited Company. Complainant has provided a substantial amount of corporate promotional literature and third-party references to its business as “Fine Tubes”. This establishes that Complainant is known as a business by the name “Fine Tubes”, “Fine Tubes Ltd.” and/or “Fine Tubes Limited” (hereinafter collectively “Fine Tubes”). Moreover, Complainant supplies products and product design services under its company name “Fine Tubes”, and its customers in the relevant industry would understand products and services provided by it as “Fine Tubes” products. Complainant has shown that it has established a reputation in various parts of the global specialized tubing industry as “Fine Tubes”.
Based on advertising, promotion and evidence that its customers associate Complainant and its products with its “Fine Tubes” name, Complainant argues that it has established unregistered trademark rights in that term. The Policy requires only that a complaining party demonstrate rights in a trademark or service mark. There is no requirement that those rights be based on or evidenced by registration, and there are a substantial number of panel decisions finding in favor of complaining parties, including decisions by this Panel (see, e.g., Avanade Inc. v. Robert Tansey, WIPO Case No. D2001-0824; Desert Schools Federal Credit Union v. Symlink Communications, llc, WIPO Case No. D2001-0528, and Monty and Pat Roberts, Inc. v. J. Bartell, Case No. D2000-0300), on the basis of unregistered or common law trademark rights.
Complainant has presented evidence of substantial use of the terms “Fine Tubes” in commerce. However, Respondent has provided evidence of rejection in 2004 by OHIM of an application by Complainant for registration of the word trademark “Fine Tubes” standing alone, with reference by OHIM to Article 7(1)(b) and 7(1)(c) of the Community Trade Mark Regulation that establish absolute grounds for refusal. The relevant paragraphs provide for refusal with respect to:
(b) trade marks which are devoid of any distinctive character;
(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;
As Respondent noted, Complainant did not make reference to this refusal in its Complaint. In Response to Panel Order No. 1, Complainant argues that it submitted the rejected application more than 12 years ago, and “has acquired substantial goodwill and reputation since this time”. This seems to imply that OHIM rejected its application because of a failure to demonstrate acquired distinctiveness, and not that the application was rejected because the trademark consists of non-registrable terms. Yet, Complainant failed to provide copies of any correspondence with OHIM that may have more precisely indicated the grounds for refusal. Moreover, Complainant bases its argument concerning establishment of unregistered trademark rights on its repeated fact that it has been using “Fine Tubes” in commerce since 1943. Complainant has not explained how the term that did not acquire distinctiveness over a period of about 60 years – from the standpoint of OHIM – did so in the most recent decade. It seems to the Panel likely that Complainant would have had enough materials to persuade OHIM of acquired distinctiveness after 60 years of use in commerce if OHIM were going to accept that basis for registration.
Respondent also provided evidence that Complainant applied for and withdrew an application for registration of the word trademark “Fine Tubes” on the register of the UK IPO. The online database of the UK IPO indicated that Complainant’s withdrawal followed examination, but did not provide details of the results of the examination. In response to Panel Order No. 1, Complainant explained that it could have filed additional evidence and requested a hearing in support of its application, but decided that it did not want to incur the additional expense of further pursuing the matter, and made a commercial decision to focus on its international applications first. Complainant submitted copies of correspondence with the UK IP Office to confirm that it had withdrawn its application, but it did not submit correspondence that might have indicated the results of the examination. Given the long period of time during which Complainant has indicated it did business under the word term “Fine Tubes”, and its seeming reliance on that term in the commercial market, the Panel finds itself unpersuaded that Complainant elected to abandon its application to pursue other matters. The Panel infers from the withdrawal the inference suggested by Respondent, i.e. that this was done to avoid a rejection on grounds that the examination indicated that the terms “Fine Tubes” are not registrable because they are commonly descriptive or generic. If Complainant believed the rejection could have been overcome by a demonstration of acquired distinctiveness, it had about 70 years doing business under the name “Fine Tubes” to find the requisite consumer trademark association with the term.4
Respondent contends that the term “Fine Tubes” is purely descriptive of a type of product offered for sale by Complainant and Respondent. While the term “fine tubes” does not appear to constitute a common English dictionary term, the terms “fine” and “tube” are each common dictionary terms. “Tube”, inter alia, is a noun referring to “any of various usually cylindrical structures or devices”.5 “Fine” as an adjective is defined variously as “free from impurity”, “very thin in gauge or texture”, “very precise or accurate” and “superior in kind, quality, or appearance”.6 The combination term “Fine Tubes” may be understood to refer to cylindrical structures or devices that are characteristically free from impurities, thin, precise and/or superior in quality.
There is a class or type of terms that may not be reserved as trademarks because they are commonly descriptive of a genus or class of thing. See Park 'N Fly v. Dollar Park and Fly, 469 U.S. 189, 194 (1985), citing Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (CA2 1976).7 This principle of international trademark law is embodied in the Article 7(c) of the Community Trademark Regulation. If a term is commonly descriptive or generic for a genus or class of thing it simply may not take on trademark status regardless of the amount of a party’s advertising, promotion and use of the term. As explained in Abercrombie and Fitch: “This means that even proof of secondary meaning, by virtue of which some ‘merely descriptive’ marks may be registered, cannot transform a generic term into a subject for trademark. … [N]o matter how much money and effort the user of a generic term has poured into promoting the sale of its merchandise and what success it has achieved in securing public identification, it cannot deprive competing manufacturers of the product of the right to call an article by its name.” 537 F 2d at 9.
Based on the evidence before it, the Panel must conclude that OHIM rejected Complainant’s application for registration of “Fine Tubes” on grounds that the term commonly described and is generic for a genus or class of thing, i.e. fine tubes.8 The Panel must also infer that the examination by the UK IP Office reached the same conclusion.9 “Fine Tubes” may not refer narrowly to one particular thing, since fine tubes could refer, inter alia, to a thin and delicate cylindrical device, or to a cylindrical device manufactured at a high level of precision. Yet a commonly descriptive combination term such as “Fine Tubes” might encompass a reasonably broad class of products, and for that reason it may be necessary to reserve that combination term against trademark appropriation for use in relation to those products by a particular enterprise.
For purposes of the current UDRP proceeding, primarily on the basis that the OHIM refused Complainant’s application for registration of the word trademark “Fine Tubes” based on absolute grounds, and that Complainant withdrew its application for registration of the word trademark “Fine Tubes” at the UK IPO, the Panel determines that Complainant does not have unregistered rights in the word trademark “Fine Tubes” standing alone (i.e. without the graphic design portion of the registered trademark). The Panel determines that the term “Fine Tubes” serves in trade to designate the kind and quality a product. Were the Panel to determine otherwise, it would be recognizing Complainant rights in a trademark that its home country trademark office and its regional trademark office (where Respondent is based) have refused (or implicitly refused) to grant or recognize. While the Panel is not strictly bound by the determinations of the trademark offices in terms of assessing unregistered trademark rights, it accords those offices substantial deference for the jurisdictions in which they are operating.
Complainant also has referred to and relied on registrations for the word and design trademark incorporating the term FINETUBES (see Factual Background supra). There are two major distinctions between Complainant’s alleged unregistered “Fine Tubes” trademark and the registered FINETUBES word and design trademark. First, the terms “fine” and “tubes” are joined without spacing and are lowercase in the word and design mark. Second, there is a significant purely graphic element presumably intended to signify a tube structure in the word and design mark. In this regard, the alleged unregistered word trademark “Fine Tubes” and the registered FINETUBES word and design trademark are differentiated and distinct.
Complainant has made substantial use of the word and design FINETUBES trademark. It appears on its website and in its promotional literature. Complainant enjoys a presumption of rights in the word and design trademark based on registration in the UK and EU, among other jurisdictions, and Respondent does not contest the validity of Complainant’s word and design mark taken as a whole. The Panel determines that Complainant has rights in the FINETUBES word and design trademark in the UK, EU and USA, at the least, and that the EU CTM establishes rights for Complainant in Germany, where Respondent is based.
Complainant has established that it has rights in the word and design trademark FINETUBES as shown in Factual Background (supra).
Respondent has registered and used the disputed domain name <fine-tubes.com>. Complainant must demonstrate that the disputed domain name is confusingly similar to a trademark in which it has rights, which the Panel has determined to be the word and design trademark FINETUBES.
Complainant in its initial pleading did not allude to the legal standards the Panel should apply in comparing a word and design trademark, on one side, and a word (alone) mark, on the other, from the standpoint of determining confusing similarity. Complainant was presumably acting in “hypothetical reliance” on its alleged unregistered word trademark. Yet it repeatedly invoked its registrations for a word and design trademark. It is difficult for the Panel to understand how Complainant expected the design portion of its registered trademark to be ignored.
In the interests of basing its decision on a complete record, the Panel requested Complainant to consider and address prior decisions under the Policy regarding the appropriate legal approach. Complainant has relied on the following decisions: EFG Bank European Financial Group SA v. Jacob Foundation, WIPO Case No. D2000-0036; Mentor ADI Recruitment Ltd (trading as Mentor Group) v. Teaching Driving Ltd, WIPO Case No. D2003-0654; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031; Asset Loan Co. Pty Ltd v. Gregory Rogers, WIPO Case No. D2006-0300; Which? Limited v. Whichcar.com c/o Whois Identity Shield / Vertical Axis, Inc, WIPO Case No. D2008-1637; Australian Trade Commission v. Matthew Reader, WIPO Case No. D2002-0786, and; Casa Editorial El Tiempo, S.A. v. Montanya Ltd, WIPO Case No. D2009-0103.
Respondent replied with reference to the following decisions: Porto Chico Stores, Inc. v. Otavio Zambon, WIPO Case No. D2000-1270; Meat and Livestock Commission v. David Pearce aka OTC / The Recipe for BSE, WIPO Case No. D2003-0645; MAHA Maschinenbau Haldenwang GmbH & Co. KG v. Deepak Rajani, WIPO Case No. D 2000-1816; Minibar North America Inc. v. Ian Musk & GEMS Global Electronic Minibar Systems AS, WIPO Case No. D2005-0035, and Ideation Unlimited, Inc. v. Dan Myers, WIPO Case No. D2008-1441.
Complainant’s principal argument regarding comparison between its word and design trademark and the disputed domain name, is that “Fine Tubes” is the “dominant, fundamental and distinctive” part of its registered trademark, and that the oval/ellipse design portion is extremely basic, common to many trademarks that coexist in the marketplace, is not highly distinctive, and “therefore does not form an especially prominent or distinctive part of the trademark overall”.
What Complainant has not referenced is the significance in this context of the rejection of its application to register “Fine Tubes” by the OHIM, and the implicit rejection of its application (based on Complainant’s withdrawal) by the UK IPO. While “Fine Tubes” may be the dominant part of its registered trademark, it does not have rights in “Fine Tubes” standing alone. Assuming “Fine Tubes” is the predominant part of the registered word and design trademark, and that the ovals/ellipses are inconsequential, Complainant is left without enforceable trademark rights.
Complainant’s references to UDRP precedent do not support its position. In EFG Bank European Financial Group SA v. Jacob Foundation, WIPO Case No. D2000-0036, the complainant owned a registered word trademark (“EFG”) in the European Union in addition to a registered word and design trademark. Its trademark was protected absent the registered word and design trademark. In Mentor ADI Recruitment Ltd (trading as Mentor Group) v. Teaching Driving Ltd, WIPO Case No. D2003-0654, the panel determined that the word portion of the word and design trademark was dominant, and found substantial similarity with the complained-against domain name, but there was no suggestion or discussion that the word portion of the word and design trademark was itself unprotectable. In Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031, the panel determined that the word and design registered trademark was “weak”, but not that the word portion was incapable of protection, rejecting the respondent’s argument that the trademark was “merely descriptive”; in Asset Loan Co. Pty Ltd v. Gregory Rogers, WIPO Case No. D2006-0300, the panel determined that the complaining party had unregistered trademark rights in the word combination it compared to the complained-against domain name. In Which? Limited v. Whichcar.com c/o Whois Identity Shield / Vertical Axis, Inc, WIPO Case No. D2008-1637, the panel determined that the use of the question mark (?) in the complaining party’s registered trademark did not make it a stylized mark. In Australian Trade Commission v. Matthew Reader, WIPO Case No. D2002-0786, the panel determined that the complaining party had unregistered trademark rights in the word portion of the mark it compared to the complained-against domain name. In Casa Editorial El Tiempo, S.A. v. Montanya Ltd, WIPO Case No. D2009-0103, the panel determined that the complained-against domain name was confusingly similar to a registered word trademark that was also included with inconsequential modification in a word and design trademark. Complainant has not pointed to a single panel decision under the Policy in which the word portion of a word and design trademark was found to be generic and incapable of serving a trademark function, and compared for purposes of confusing similarity to a disputed domain name.
Conversely, Respondent has referred to several administrative panel decisions in which the word portion of a word and design trademark, when found to be unprotectable standing alone, was determined not capable of establishing substantial similarity to the complained-against domain name. In Meat and Livestock Commission v. David Pearce aka OTC / The Recipe for BSE, WIPO Case No. D2003-0645, the panel determined that the complaining party did not have trademark rights in the word portion of its word and design trademark standing alone, and determined an absence of confusing similarity with the complained-against domain name. In Minibar North America Inc. v. Ian Musk & GEMS Global Electronic Minibar Systems AS, WIPO Case No. D2005-0035, the word portion had been disclaimed in its entirety and the panel found there was nothing left with which to find confusing similarity.10 In Ideation Unlimited, Inc. v. Dan Myers, WIPO Case No. D2008-1441, the panel found that the complaining party had disclaimed the word portion of a registered word and design mark in its entirety at the USPTO, and disclaimed a portion before the UK IPO, and had not established common-law rights in the word portion. It refused a finding of confusing similarity with the complained-against domain name.
The Panel refers also to Limited Liability Company Infomedia v. c/o Office-Mail processing center / Whois privacy services, provided by DomainProtect LLC / 1) Eurofirm Ltd. 2) Ethno Share PO, Domain Manager, WIPO Case No. D2010-1239, in which the panel determined that the word portion of a word and design mark was a commonly used term in which the registered trademark owner did not have rights, and refused to find confusing similarity with the complained-against domain name; and; Ville de Paris v. Salient Properties LLC, WIPO Case No. D2009-1279, in which the panel determined that the complaining party did not have rights in the word portion of its word and design trademark, and refused to find confusing similarity with the complained-against domain name.
In this proceeding, Complainant is asserting that the disputed domain name is confusingly similar to a term, “Fine Tubes”, in which it has been unable to establish trademark rights standing alone (without graphical element). Under these circumstances, the Panel must consider that addition of graphical elements was and is a prerequisite to the establishment of enforceable trademark rights in the word and design mark FINETUBES. The Panel is unwilling to extract from the word and design combination those elements necessary to establish confusing similarity with the disputed domain name, i.e. the words “fine tubes”, because this would effectively grant Complainant enforceable trademark rights which it has been denied by OHIM and (implicitly) by the UK IPO.
The Panel determines that Complainant has failed to establish that it has rights in a trademark to which the disputed domain name is identical or confusingly similar.
Complainant having failed at this first stage, the Panel will not consider the issues of rights or legitimate interests or bad faith registration and use.
This administrative panel decision turns on the question whether the combination term “Fine Tubes” may be exclusively appropriated as a trademark by Complainant for use in relation to those products. Relevant trademark office authorities in the jurisdictions where Complainant and Respondent are headquartered have decided that the term may not be registered as a trademark. Complainant recently withdrew its application to register that term following examination by authorities in the United Kingdom, where it is based. Complainant may eventually decide to reengage with UK or OHIM trademark authorities and relevant courts on this matter. It is not inconceivable that Complainant will succeed. But, this Panel defers to the present state of affairs before the relevant trademark office authorities, noting that there is no compelling reason to reject their judgment in this particular matter.
For the foregoing reasons, the Complaint is denied.
Frederick M. Abbott
Date: January 30, 2013
1 The terminology "design" and "device" are interchangeable, with "design" used by the USPTO in its trademark registration system (see, e.g., Trademark Manual of Examining Procedure, Oct. 2012, at § 1207.01(c)), and the UK Intellectual Property Office using the term "device" (see, e.g., UK IPO Manual of trade marks practice, at Ch, 3, “Devices: representations indicative of the goods/services”). The terms are used interchangeably in this decision.
2 Copies of correspondence with Complainant is not furnished at the OHIM website. Panel visit to OHIM website, January 2, 2012.
3 Panel visit to USPTO website, and case file for Complainant's trademark as registered, January 2, 2012. See further discussion at note 8, infra.
4 Complainant’s failure to refer to the UK application in its initial Complaint and subsequent failure to request leave to file a supplemental response to Respondent’s Response, support the inference that Complainant was not anxious to pursue inquiry regarding the withdrawal of the UK application and rejection by OHIM.
5 See http://www.merriam-webster.com/dictionary/tubes, definition 1.
6 See http://www.merriam-webster.com/dictionary/fine, definitions 1-4.
7 Neither party has made reference to case law of the European Court of Justice or national courts of the EU member states in its pleadings. However, such case law is referred to in various administrative panel decisions referenced later in this decision.
8 For this reason, Complainant's references to actual confusion (evidence of which is sparse), are not relevant to whether Complainant has unregistered rights in the word trademark alone. Actual confusion may be relevant to establishing acquired distinctiveness, but a generic term remains a generic term even if consumer confusion may be present.
9 Respondent noted that a USPTO examiner had initially requested disclaimer of the term “finetubes” apart from the mark as shown with respect to Complainant’s application for the USA on grounds that the combination term was commonly descriptive. Complainant argued to the examiner that FINETUBES is a coined term with numerous possible meanings, and that the term is suggestive. In the alternative, Respondent argued that the term may be descriptive, but not “purely” or “merely descriptive”, and that it is capable of secondary meaning. Complainant also argued that as part of a unitary mark with the design it was not necessary to disclaim FINETUBES because the mark as a whole creates a commercial impression distinct from its components. The examiner ultimately allowed registration of the word and design mark without disclaimer of FINETUBES apart from the mark as shown, but the USPTO records provide only the result, not the basis on which the examiner made a decision. The fact that the USPTO allowed registration of the combination word and design mark as a whole without a disclaimer is not particularly probative of whether the USPTO would have allowed registration of the term “Fine Tubes” standing alone.
10 The Panel does not consider Porto Chico Stores, Inc. v. Otavio Zambon, WIPO Case No. D2000-1270 or MAHA Maschinenbau Haldenwang GmbH & Co. KG v. Deepak Rajani, WIPO Case No. D 2000-1816, referred to by Respondent, as sufficiently relevant to the current proceeding.