WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
EBI LTD. / Haffner Int’l Marketing Group (HIMG) v. HIMG Seramik ve Ins. Urunleri Paz. San. Tic. LTD., Yusuf Bugra Sahin
Case No. D2013-1143
1. The Parties
The Complainants are EBI LTD. / Haffner Int’l Marketing Group (HIMG) of Vista, California, United States of America (“US”), represented by Istanbul Patent & Trademark Consultancy Ltd., Turkey.
The Respondent is HIMG Seramik ve Ins. Urunleri Paz. San. Tic. LTD., Yusuf Bugra Sahin of Istanbul, Turkey, represented by Deriş Patents and Trademark Agency A.Ş., Turkey.
2. The Domain Name and Registrar
The disputed domain name <himgseramik.com> (the “Domain Name”) is registered with Reg2C.com Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) for the domain names <ceramicureturkey.com> and <himgseramik.com> on June 26, 2013. On June 26, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with these domain names. On June 28, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant for both domain names and providing the contact details.
On July 3, 2013, the Center sent an email communication to the Complainants inviting them to amend the Complaint to conform to the word limit specified in Rules, paragraph 3(b)(ix) and Supplemental Rules, paragraph 11. The Complainants filed an amended Complaint on July 8, 2013.
On July 3, 2013, the Center transmitted the language of the proceedings document to the parties in both English and Turkish. On July 5, 2013, the Complainants requested English be the language of the proceedings. On July 8, 2013, the Respondent requested Turkish be the language of the proceedings. On July 8, 2013, the Complainants reiterated their request and objected to the Respondent’s language request.
The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint in English and Turkish, and the proceedings commenced July 9, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response July 29, 2013. The Response was filed with the Center on July 29, 2013.
In light of the Respondent’s consent to the remedy requested by the Complainant with respect to the domain name <ceramicureturkey.com>, on July 31, 2013, the Center informed the parties of the possibility of suspending the proceeding in order to explore settlement. On July 31, 2013, the Center notified the suspension of the proceeding. On August 21, 2013, the Complainants requested the Center to drop the domain name <ceramicureturkey.com> from the present Complaint and reinstitute the proceeding only with respect to the domain name <himgseramik.com>. Accordingly, on August 22, 2013, the Center informed the parties about the commencement of panel appointment procedure only with respect to the domain name <himgseramik.com>.
On August 28, 2013, the Center received a Supplemental Filing from the Complainants. The Center acknowledged receipt of the Supplemental Filing on August 28, 2013. On the September 24, 2013 the Center received a Supplemental filing from the Respondent, which it also acknowledge on September 25, 2013.
The Center appointed Jon Lang, Andrew F. Christie and Selma Ünlü as panelists in this matter on September 20, 2013. 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. Preliminary Matters
A. Language of Proceedings
On July 8, 2013, the Respondent objected to the Complainant’s request that English be the language of the administrative proceedings and requested instead that Turkish be the language of the administrative proceedings. On July 8, 2013, the Complainants reiterated their request and objected to the Respondent’s language request. The Panel holds that, given that the parties throughout corresponded in English, that the two agreements between the parties to which reference is made below are in English, and that the Respondent has shown no difficulties in dealing with the proceedings in English, that it is proper for this proceeding to be conducted in English.
B. Further Submissions
As mentioned earlier, the parties have filed supplemental submissions. Given the factually complex backdrop to this Complaint, the Panel is concerned to give each side a fair opportunity to present its case. In these circumstances, the Panel exercises its general powers under the Rules, paragraph 10, to allow the supplemental submissions.
5. Factual Background
A. The Parties
The first Complainant, EBI Ltd, is a corporation, organized and existing under the laws of the State of California, and operating from its headquarters in Vista, California. It was established in 1990, by Mr. H. Haffner. The first Complainant’s brochure annexed to the Complaint states “For over 20 years EBI Ltd., has been a pioneer in the ceramic repair industry and a provider of innovative, high-tech, acrylic-based repair solutions.”
The second Complainant, Haffner International Marketing Group Inc. (also founded by Mr. Heinz Haffner), is a global marketing company which, since 1994, has been promoting worldwide CeramiCure products made by the first Complainant.
The Respondent HIMG Seramik ve Ins. Urunleri Paz. San. Tic. LTD. (“HIMG Seramik”) was incorporated in February, 2007 in accordance with the Turkish Commercial Law by two shareholders Mr. Y. B. Sahin and Mr. T. Sahin.
Hereafter, except where otherwise indicated, the parties will be referred to simply as the Complainants and the Respondent.
B. Trade Marks, Applications for Trade Marks and Domain Names of the Parties
The Complainants have made trademark applications to the Turkish Patent Institute for the mark HIMG (on January 31, 2013, application no. 2013/09343) and to the USPTO for the marks HIMG (serial no. 85832785) and HIMG SERAMIK (serial no. 85832862) (on January, 25, 2013). As at the date of this proceeding, those applications had not proceeded to grant.
The Domain Name was registered on February 2, 2009.
C. The Former Business Relationship Between the Parties
The Complainants had a business relationship with the Respondent between 2006 and 2011, whereby the Respondent was allowed to market and sell the Complainants’ products in Turkey, Middle East and India. A “Mutual Confidentiality Agreement” dated March 1, 2006, was signed (referred to as the “MTA”) between “HIMG Inc. Int’l Business Development” (on the face of it a different entity to the second Complainant) and the first Complainant on the one part, and Mr. Y. B. Sahin, referred to as an independent consultant, on the other. The second paragraph of the MTA reads “The parties desire to enter into business and/or technical agreement (“Discussions”) relating to the use of CeramiCureTM […]”. The MTA set out the basis on which the Respondent was to work as an independent consultant for and with the Complainants.
There is also a “Compensation Agreement” from 2006 by which “HIMG Inc” (again not either of the two Complainant’s herein) and/or the first Complainant agreed to pay USD 1,000 to the bank account of Mr. Y. B. Sahin.
The relationship between the parties came to an end in December 2011.
6. Parties’ Contentions
A.1. The Relationship Between the Parties
Mr. Y. B. Sahin was hired as the representative of the Complainants in Turkey to assist in the selling and promotion of CeramiCure products. He agreed and accepted all terms and conditions presented to him. On June 27, 2006, Mr Y. B. Sahin established a sister company in Turkey with the agreed company name of “HIMG Int’l CeramiCure Turkey” (hereafter “HIMG Turkey”) to market CeramiCure products. This was done with funds provided by the Complainants. The company was registered in Mr. Y. B. Sahin’s name and that of his relative Mr. T. Sahin.
The Complainants began financing HIMG Turkey’s operation, including salary and commission for Mr. Y. B. Sahin, and expenses to attend trade shows, conferences and business development. Mr. Y. B. Sahin provided monthly financial reports to the Complainants, showing the activities of HIMG Turkey and received financial injections from the Complainants and related entities to finance HIMG Turkey’s growth. The Respondents were given direct access to all of the Complainants’ customers in Turkey, India, the Middle East and Asia. The Respondent was also given formulas for products and received training from the Complainants on how to manufacture the CeramiCure products. At some point, to reduce costs, HIMG Turkey began small-scale manufacturing. To this end, the Respondent purchased products and raw materials from the Complainants and their affiliated entities at cost to manufacture CeramiCure products. All profits were shared.
For over five years, Mr. Y. B. Sahin operated HIMG Turkey and reported income and activities to the Complainants. In September 2011, the Respondent failed to report monthly revenues to the Complainants. In October 2011, the Complainants attempted to communicate with the Respondent regarding the reports, but the Respondent became evasive and negative and the relationship was terminated in December 2011.
The Respondent continues to hold itself out as HIMG Turkey selling its product, HOOF-it, using the Complainants’ trade secrets and formulas, marketing to the Complainants’ customers, and operating HIMG Turkey for its own benefit.
A.2. Confusing Similarity with a Mark in which the Complainant Has Rights
The Complainants say that the Domain Name is confusingly similar to the mark HIMG in which it enjoys common law rights, HIMG being an abbreviation of the second Complainant’s trade name “HAFFNER INTʼL MARKETING GROUP” which has been widely used to refer to the second Complainant since 1994.
The mark HIMG is the second Complainant’s main common law trademark used on all trading operations, advertisements and promotions. It has been widely used to refer to the second Complainant.
The second word in the Domain Name is “seramik”, which means “ceramic” in English. It is clearly a generic term and is related to the business in which the Complainants are active. Given the well-known nature of the Complainants’ HIMG common law mark, the addition of such a descriptive term not only fails to distinguish the Domain Name from the HIMG mark, but also reinforces the association of the Domain Name with it. The Domain Name thus creates a likelihood of confusion in the minds of consumers, who expect it to resolve to a website owned by, operated by or affiliated with the Complainants.
A.3. Rights and Legitimate Interests
The Respondents have no bona fide interest in the Domain Name.
The Respondent does not have permission from the Complainants to use its trademark in any domain name. The past business relationship did not grant the Respondent ownership of a mark or domain name associated with the Complainants’ mark.
Whilst the Complainants were aware of the Domain Name and its use by the Respondent, they could not oppose such use as they did not want to harm the business relationship between them.
The relationship was terminated in December, 2011, as a result of the Respondent’s bad faith behaviour and because of the Respondent acting as a direct competitor of the Complainants. From then on, all the activities of the Respondent conducted under the Complainants’ trademarks and trade names constituted trademark infringement. Legal action has taken place in Germany, India, US and several cease and desist letters have been sent by the Complainants concerning trademark infringement and unfair competition.
The Domain Name is not a mark by which the Respondent is commonly known and the only right, the Respondent might be said to have had, derive from the commercial relationship between the parties which has now come to an end.
The Respondent uses the Domain Name to receive emails bearing confidential information regarding the Complainants and promoting their (the Respondent’s) own products. There is no website to which it points.
A.4. Bad faith
The Respondent registered and used the Domain Name in bad faith.
The Respondent was well aware of the Complainants’ mark HIMG when the Domain Name was registered and knew that it did not have permission to do so. Because of the unavailability of the Domain Name the Complainants could not register it in their own names.
On February 6, 2012, the Respondent began using a new email address <email@example.com> to contact the Complainants’ customers.
In February 2012, the Complainants became aware that the Respondent had established a new website at “www.nnrepair.com”, calling its product “NNREPAIR”. Much of the content of the website was copied from the Complainants’ website at “www.ceramicure.com”, with minor modifications to the site and product names.
In March 2012, the Respondent participated in the Indian Ceramics 2012 trade show as “NNREPAIR” at a booth paid for by HIMG Turkey, and marketed and sold the Complainants’ products, including CeramiCure products. They represented themselves as part of the HIMG business. The Complainants make complaint about a number of matters in connection therewith.
The Complainants retained German counsel and filed a legal action in Germany to prevent the Respondent from exhibiting at the CERAMITEC fair in Munich in May 2012. The Complainants are taking action in the US as well.
The Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating confusion with the Complainants’ trademarks as to the source, sponsorship, affiliation or endorsement of its website. Such use clearly threatens to divert actual clients away from the Complainants and disrupt the Complainants’ business.
The Domain Name should be considered as “Proprietary Information” under the MTA and upon termination it should have transferred to the Complainants.
The Complainants assert that not being notified of the registration of the Domain Name constitutes bad faith registration but that even if that is wrong, it is possible to find “retroactive bad faith registration” in the circumstances of this case.
B.1. The Relationship Between the Parties
Mr. Y. B. Sahin had an arrangement with the Complainants to sell their goods in Turkey without any control provisions regarding name usage or local goodwill. During this time Mr. Y. B. Sahin invested in developing other products under a trade name including HIMG SERAMIK.
The Respondent has acquired a legitimate interest in respect of the Domain Name.
B.2. Confusing Similarity with a Mark in Which the Complainants Have Rights
The Complainants do not have any registered trademark for HIMG, just pending applications. The Complainants’ trademark applications do not satisfy the first condition of the Policy (i.e., a trademark right).
Whilst the Complainants claim common law rights in the “himg” term, they have not provided any evidence in support. The Complainants are a small business with a turnover of around USD 500,000 and therefore the marketing activity of the Complainants is limited.
The brochure of the Complainants found on its website “www.ceramicure.com” does not use the HIMG mark. The term “himg” is not used in the name of the company or in other material.
The Complainants have failed to prove that the term “himg” has become a distinctive identifier of the Complainants or their goods and services and thus the Complainants have failed to prove that they have rights in the HIMG mark for the purposes of the Policy.
B.3. Rights and Legitimate Interests
HIMG Seramik was incorporated in accordance with Turkish Commercial Law by its two shareholders and they have fully paid up its capital in accordance with legal requirements. It is not a “sister company” of the Complainants and there is no link between them.
There was no agreement concerning the establishment of HIMG Seramik which is completely independent from the Complainants. Mr. Y. B. Sahin decided to transform his “person company” by incorporating a limited company so as to organize his business in a more institutional way. Contrary to what is alleged, there were no funds or capital injections by the Complainants for the establishment of HIMG Seramik.
There was a commercial relationship between Mr. Y. B. Sahin and the Complainants based on the Compensation Agreement by which the Complainants paid a monthly consultancy fee of USD 1,000 (and a commission on products sold within Turkey). Thus, the money transferred by the Complainants to the Respondent from 2006 was transferred pursuant to the Compensation Agreement.
The Complainants were, from the outset, aware that the name of the Respondent included “HIMG” as a result of business transacted between the parties. Despite the fact that Complainants were not shareholders in HIMG Seramik, the Complainants did not object for more than 6 years (until the present dispute). The Complainants conceded in their Complaint that they were aware of the Domain Name. They thereby acquiesced in the inclusion of the mark HIMG in the Respondent’s trade name.
The MTA relates to “Proprietary Information” and allowed a discussion about entering into a business or technical agreement to take place freely. The definition of “Proprietary Information” does not include trademarks or trade names.
The mark HIMG is still unknown to customers of the Complainants whereas the Respondent has communicated with and invoiced its customers using the trade name “HIMG Seramik” from as early as 2007, and has a right to do so.
Therefore, the Respondent has been or is commonly known by the Domain Name since before the Complaint even if the Respondent has acquired no trademark or service mark rights in relation thereto.
The Domain Name is identical to the Respondent’s trade name (HIMG Seramik) and the website to which it points is used by the Respondent in furtherance of its business.
B.4. Bad Faith
The Respondent did not conceal registration of the Domain Name and the Complainants have acknowledged that they were aware of the registration and of the trade name used (HIMG Seramik).
The Respondent has acted in good faith as the registration has been made in accordance with its trade name.
The Respondent did not register the Domain Name primarily to sell, rent or transfer it to the Complainants for profit.
B.5 Reverse Domain Name Hijacking
It is clear that the Complainants do not regard the HIMG mark as a distinctive sign as it did not consider protecting the term as a trademark (up until now), or even a company name. They have only used HIMG as an abbreviation within its business contracts.
Whilst the Complainants decided to apply for trademark registrations of HIMG and HIMG SERAMIK in early 2013, after more than 20 years of operation, that was done just for the purposes of this dispute. The Domain Name was registered in early 2009, i.e. 4 years prior to the Complainants’ trademark applications. It is clear from the Complainants themselves that they knew of the Respondent’s trade name and the Domain Name since 2007.
The Complainants allowed the use of “HIMG Seramik” for more than 6 years during which time the Respondent became known by that name. The Complainants have no trademark rights upon which they can rely.
Finally, the Complainants have demonstrated bad faith by registering the following domain names composed of the Respondent’s registered trademark NNREPAIR, (registered in Turkey in 2012), all of which are re-directed to the Complainant’s website “www.ceramicure.com”:
- <nnrepair.co.in >
7. Parties’ Further Submissions
The Complainants deny that the Respondent is completely independent and say that the assertions in respect thereof are an attempt to mislead the Panel. It is said that until 2011, the Respondent has been acting in the name of and on behalf of the Complainants. It relies on a number of documents annexed to its further submission dating back to 2006, for instance:
- the Complainants’ announcement to all their customers dated July 1, 2006, of the establishment of their Turkish company, that letter ending, “Kind Regards, Heinz D. Haffner, HIMG Int’l Inc. & EBI Ltd’”
- communications (one showing a wire transfer being discussed on September 7, 2010) dating back to July, 2006, concerning the establishment, funding and other matters concerning the business in Turkey, which they say demonstrates that it has never been independent of the Complainants, and which also shows that even before the establishment of what the Complainants describe as their “sister” company, they, the Complainants, funded the basic needs of Mr. Y. B. Sahin.
- the Complainants’ company brochure as it existed before the termination of the relationship.
- photographs of product and packaging bearing the HIMG SERAMIK mark.
There is no possibility of the Respondent not being aware that (presumably) the second Complainant had been known by the acronym HIMG and has common law trademark rights therein.
There is no bona fide use of the trademark HIMG independently from the Complainants and any independent use would not be legitimate or in good faith.
The Respondent was acting in the name of the Complainants in Turkey and then the Middle East region, and use of the mark HIMG has been for that purpose.
From the date of termination of the relationship, all the activities of the Respondent conducted under the Complainants’ trademarks and trade names have constituted trademark infringement given that neither the business relationship nor any of the agreements signed, granted the Respondent ownership of a trademark or of a domain name associated with the trademark.
Whilst the Complainants were aware of the Domain Name and its use by the Respondent, they could not oppose and thereby cause harm to the business relationship between the parties until termination, at which point use of the Domain Name became a tool of unfair competition.
As to the term “Proprietary Information” (used in the MTA), it is said that this includes certain categories of information. Whilst examples are given, it is a non-exhaustive list, and the trademarks and domain names of the Respondent should be treated as falling within the definition and therefore subject to the same restrictions on use as other forms of proprietary information.
Given that the Policy requires registration and use in bad faith, the Complainants rely on the “Retroactive Bad Faith Registration Doctrine” which it regards as “well-established case law” increasingly accepted by UDRP panels. Thus, when use of a trademark in a domain name is conditional on the performance of certain provisions of agreements entered into between complainant and respondent, or where the use of a trademark in a domain name is conditional upon the continued relationship established by the parties under those agreements, the failure to perform those provisions or the termination of the relationship, combined with the continued use of the trademark in the domain name, constitutes registration of the domain name in bad faith.
As far as Reverse Domain Name Hijacking is concerned, the Complainants say that they obviously have rights in the HIMG mark and that such rights prevent any finding of bad faith for the purposes of reverse domain hijacking.
The Complainants do not have any trademark registrations at present and have not sufficiently evidenced any common law rights in the mark HIMG e.g. the level of sales under the mark, extent of advertising, etc. They have not therefore substantiated that the mark HIMG is recognized by its (potential) customers and seen as a distinctive identifier associated with the Complainants or their goods and services.
The Respondent was incorporated in February, 2007 and has rights to use its trade name or the distinctive part thereof, and claims of the Complainants against such use by a Turkish company should be submitted to the Turkish commercial courts. The Panel cannot override rights accorded to the Respondent in accordance with Turkish commercial law.
The Complainants, knowing that the mark HIMG was being used by the Respondent, remained silent for more than 6 years, and have acquiesced in its use.
The document relied on by the Complainants that refers to a wire transfer being discussed on September 7, 2010, actually refers to “August 10 Consulting Fee”, which the Respondent regards as inconsistent with the assertions of the Complainants that they funded HIMG Seramik.
The Respondent did not conceal registration of the Domain Name from the Complainants and has acted in good faith given that registration of the Domain Name was in accordance with the trade name of HIMG Seramik.
The Respondent did not register the Domain Name primarily to sell, rent or transfer it to the Complainants for profit.
This is a case of Reverse Domain Name Hijacking as the Complainants waited nearly 6 years before formally objecting to the Domain Name. The objection is to the use of the Respondent’s HIMG Seramik trade name and the Complainants initiated the UDRP proceeding with knowledge that they do not have a trademark registration for or common law rights in the HIMG mark.
Moreover, the Complainants have demonstrated bad faith behaviour by registering domain names composed of the Respondent’s registrered trademark NNREPAIR (registered in Turkey since 2012), which are all re-directed to the Complainants’ website at “www.ceramicure.com”:
The First Complainant also filed a CTM application for NNREPAIR which has since been withdrawn.
The photographs of packaging bearing the HIMG SERAMIK mark which the Complainants rely on are products that have been exclusively produced by the Respondent since 2012. The Respondent exhibits photographs of similar packaging showing that it has been responsible for production, the packaging showing the trade name of the Respondent without mention of the Complainants. Moreover, the Respondent contends that they own the copyright in the HIMG SERAMIK logo.
Finally, it is said that the Complainants do not produce market or commercialise two of the products exhibited to its further submission and the Complainant’s attempts to misdirect the Panel in this regard also demonstrates the bad faith behaviour of the Complainants for the purposes of Reverse Domain Name Hijacking.
8. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is:
(i) identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A complainant must prove each of these three elements.
A. Identical or Confusingly Similar
Under the UDRP, the test for confusing similarity involves a comparison between the trademark and the domain name to determine likelihood of Internet user confusion. To satisfy the test, the trademark to which the domain name is said to be confusingly similar would generally need to be recognisable as such within the domain name. Whilst the requirement of confusing similarity is generally regarded as a “low threshold” test (involving a simple comparison of the mark relied upon with the domain name in issue), the precursor to such a comparison is that a complainant does actually have rights in the mark to which the domain name is said to be confusingly similar or identical.
Here, the Complainants have no registered trademark rights (just applications for trademarks). While unregistered rights can suffice for UDRP purposes, the Complainants must do more than simply assert that they exist. As paragraph 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states (as a “Consensus view”), “The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such "secondary meaning" includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. […] a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required.”
Perhaps understandably, given the thrust of the Complainants’ case, namely that all that was done by the Respondent in Turkey pre-2012 was on their (the Complainants’) behalf, there was very little evidence provided with the Complaint demonstrating use of the acronym HIMG (by the Complainants) as a “distinctive identifier” or badge of origin. The Complainants did however have an opportunity to address this given that the Respondent very much put the Complainants’ alleged lack of rights in the HIMG mark in issue by their Response. Yet the supplemental submission filed by the Complainants, which the Panel has allowed and considered, fails to make out a convincing case on “rights”. The Panel is not satisfied that the Complainants have demonstrated that their use of the HIMG mark, such as it is, has given rise to unregistered rights in that mark. Merely using the acronym of a company name in communications with a trading partner is not enough – what is required, but absent here, is evidence that customers of the Complainants (trade or retail) regard HIMG as their trade badge of origin. Of course, if it is eventually established that any rights that might have arisen by virtue of the use of the HIMG (or HIMG SERAMIK) mark by the Respondent should be attributed to the Complainants, the situation may be very different, but that is an issue that cannot properly be decided by this Panel.
The Policy is intended to be an administrative mechanism directed at addressing a relatively narrow class of abusive conduct (being cyber squatting); it cannot unpick and make findings on complicated facts about a relationship going back some 7 years, particularly one as complicated as appears to be the case here. In the circumstances of this case, the Panel can look only at whether the Complainants themselves have shown that they have acquired unregistered trademark rights by virtue of their use of the acronym, HIMG. Given that scant evidence has been provided in this regard, the Panel is of the view that the Complainants have failed, for purposes of the present administrative proceedings, to show that HIMG has become a distinctive identifier associated with them or their goods or services.
In all the circumstances, the Panel is of the view that the Complainants have failed to satisfy the first requirement of the Policy. Whilst therefore it is not necessary to consider the issue of the Respondent’s rights or legitimate interests in the Domain Name, or the issue of bad faith, the Panel thinks it appropriate to make the following comments in relation to the former.
B. Rights or Legitimate Interests
The Respondent says that it has been commonly known by the Domain Name and it is indeed the case that being commonly known by a domain name is indicative of rights or legitimate interests in that domain name. The Respondent also says that the Domain Name is used in good faith in connection with its business and that the Respondent did nothing to hide its registration.
Given the Panel’s findings above, the question of whether the Respondent does in fact have rights or a legitimate interests in the Domain Name, is not something that the Panel needs to decide, although it should make one or two observations. The Complainants acknowledge that they were aware of the Domain Name and its use by the Respondent, but say that they could not complain because to do so would cause harm to the business relationship between them. They go on to say however, that once the relationship came to an end, the Domain Name in the hands of the Respondent became a tool of unfair competition. It is interesting that the Complainants put the position as one of not objecting to the use of the Domain Name, as opposed to agreeing to its use, but subject always to an agreement concerning an ongoing relationship. This observation leads to the issue of acquiesence (raised by the Respondent) but, as already stated, in view of the Panel’s findings so far, it is an issue that it need not address.
C. Registered and Used in Bad Faith
There is no need for the Panel to deal with this issue.
D. Reverse Domain Name Hijacking (RDNH)
The Respondent alleges Reverse Domain Name Hijacking. Paragraph 1 of the Rules defines Reverse Domain Name Hijacking as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.” The underlying dispute between the parties is complex and the Panel is of the view that there should be no finding of Reverse Domain Name Hijacking.
For the foregoing reasons, the Complaint is denied.
Andrew F. Christie
Date: October 18, 2013