WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BSP Europe A/S v. Editors Keys
Case No. D2013-1575
1. The Parties
The Complainant is BSP Europe A/S of Hørsholm, Denmark, represented by Johan Schlüter law firm, Denmark.
The Respondent is Editors Keys of Manchester, United Kingdom of Great Britain and Northern Ireland (the “UK”), represented by Adlex Solicitors, UK.
2. The Domain Name and Registrar
The disputed domain name <logickeyboards.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2013. On September 9, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 10, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent was listed as the registrant and providing the contact details. On September 10, 2013, the Center received an email communication from the Respondent, providing the Center with an update of the Respondent’s contact details. On September 11, 2013, the Respondent’s authorized representative sent an email communication to the Center stating that the Respondent had not received a copy of the Complaint. On the same day, the Complainant sent the Complaint and Annexes to the Respondent using the updated contact information.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 19, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was October 9, 2013. The Response was filed with the Center on October 2, 2013.
The Center appointed Brigitte Joppich as the sole panelist in this matter on October 10, 2013. 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 paragraph 7 of the Rules.
4. Factual Background
The Complainant was established in 2002. It has been using the designation “Logickeyboard” since 2003 in connection with its business and products, namely computer hardware and accessories including keyboard solutions with custom keys. The Complainant offers its products online at “www.logickeyboard.com”.
The Respondent is offering inter alia dedicated editing shortcut keyboards for various software products, including Apple’s Logic software. The disputed domain name was registered on February 23, 2006 together with 13 other domain names consisting of “-keyboard” prefixed by the name of the relevant software product for which the Respondent either supplied keyboard products or was intending to do so.
When the Complainant became aware of the registration of the disputed domain name by the Respondent in 2008, it sent cease and desist letters to the Respondent on September 10, 2008 and November 18, 2008.
5. Parties’ Contentions
(1) The Complainant states that it is one of the leading companies in its business field and contends that it owns unregistered trademark rights in “Logickeyboard” with respect to computer hardware and accessories under Section 3(1)(2) of the Danish Trademark Act. The Complainant argues that the disputed domain name is identical to its unregistered trademark and its domain name despite the plural “s” at the end of the disputed domain name.
(2) The Respondent has no rights or legitimate interests in the disputed domain name as it only uses the disputed domain name to redirect customers to its website at “www.editorkeys.com” for the mere purpose of commercial gain and to mislead the customers by creating a likelihood of confusion and creating the impression that the website is established and run by the Complainant, as the Complainant never granted its consent to or otherwise licensed or permitted the Respondent’s use of the Complainant’s trademark, as the Complainant and the Respondent are competitors, and as, therefore, it is beyond any doubt that the Respondent is familiar with the Complainant.
(3) The disputed domain name was registered and is being used in bad faith. The Complainant states that this finding is supported by the fact that the Respondent terminated redirecting the disputed domain name upon receipt of the two cease and desist letters from the Complainant in 2008 and that the Respondent has now again started redirecting the disputed domain name. It further states that the Respondent is not using “Logickeyboards” as a trademark and service mark for identical goods and services and has only registered the identical domain name to sponge on the Complainant’s trademark and lure the Complainant’s customers to the Respondent’s website for commercial gain by creating a likelihood of confusion with the Complainant's trademark.
The Respondent denies the Complainant’s contentions. With regard to the three elements specified in paragraph 4(a) of the Policy, the Respondent argues as follows:
(1) The Complainant did not supply sufficient evidence to show that “Logickeyboard” has become a distinctive identifier of its products or services as it only provided a series of invoices addressed to a single buyer together with a website printout. The Respondent further argues that all of the invoices most prominently feature the Complainant’s “BSP EUROPE” logo on the top right hand side while the “logickeyboard” logo is inferior and the term “logickeyboard” is in a tiny font, virtually illegible, which suggests that the products were offered / branded as “BSP EUROPE” rather than “logickeyboard”. Finally, the Respondent contends that the Complainant did not provided any evidence showing that these particular products were ever offered, advertised or packaged under the brand “logickeyboard” and that it has not provided any statistics indicating that anyone has ever visited its website.
(2) With regard to its own rights or legitimate interests in the disputed domain name, the Respondent states that it has engaged in the business of supplying specialist keyboard-related products for a range of well-known sophisticated editing software programs such as Avid, Cubase and Photoshop, since 2005 and that its products involve the addition of relevant software shortcuts to the keys on the keyboard in order to speed up and simplify the customers’ use of the software. One of the software programs for which the Respondent supplies keyboard-related products is a sophisticated recording studio by Apple, known as “Logic”, with versions such as “Logic Pro” and “Logic Express”.
The Respondent contends that its managing director instructed a colleague in February 2006 to register domain names consisting of “-keyboard” prefixed by the name of the relevant software product for which the Respondent either supplied keyboard products, or was intending to do so and evidenced that a total number of 14 domain names have been registered on February 23, 2006. The Respondent states that its purpose was to use the domain names for “satellite websites” relating to those products, linked to the Respondent’s main website at “www.editorskeys.com” for search engine optimization purposes, but that this never happened and the Respondent instead redirected the domains to the relevant product pages on its website.
The Respondent further states that, on its record, it never received the letters allegedly sent by the Complainant, that the Complainant produced no evidence that they were dispatched, let alone signed for on receipt and that, accordingly, the Complainant is entirely mistaken in thinking that the Respondent made adjustments to the redirect in reaction to the Complainant’s correspondence.
(3) The Respondent strongly denies that it registered and used the disputed domain name in bad faith. It also invokes the Complainant’s admitted delay in filing this case, waiting some five years after it became aware of the disputed domain name.
(4) Finally, the Respondent requests a finding of Reverse Domain Name Hijacking. It contends that the Complainant knowingly concealed critical evidence in this case as it carefully avoided exhibiting any screenshots of the Respondent’s website referring to the “Logic Keyboard” products.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the disputed domain name is identical or confusingly similar to the Complainant’s trade mark; and
(ii) the 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.
First of all, the Complainant does not own any registered trademark rights in “Logickeyboard”. It relies on unregistered trademark rights in “Logickeyboard” in Denmark, based on the use of such term in Denmark since 2003 in the course of trading its products, namely computer hardware and accessories.
According to Section 3(1)(2) of the Danish Trademarks Act, a trademark right can be established through use of the mark in Denmark for those specific goods and services for which the mark has been used. The Annexes to the Complaint, on which the Complainant relies, primarily reveal use of “Logickeyboard” on invoices issued to a single recipient as well as on the Complainant’s website at “www.logickeyboard.com”. In the view of the Panel, on the record of this case, the name “Logickeyboard” has been used in connection with the Complainant’s business and products.
It is consensus view that common law or unregistered trade mark rights may be sufficient for the purposes of establishing rights under paragraph 4(a)(i) of the Policy (cf. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”); UITGERVERIJ CRUX v. W. FREDERIC ISLER, WIPO Case No. D2000-0575; Skattedirektoratet v. Eivind Nag, WIPO Case No. D2000-1314; Amsec Enterprises, L.C. v. Sharon McCall, WIPO Case No. D2001-0083; Australian Trade Commission v. Matthew Reader, WIPO Case No. D2002-0786; Imperial College v. Christophe Dessimoz, WIPO Case No. D2004-0322). To establish common law or unregistered trademark rights under the Policy, a 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. In fact, specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required.
In the Panel’s view, the evidence provided by the Complainant is not sufficient to establish that the Complainant enjoys unregistered rights in “Logickeyboard” as a trademark or service mark that can be invoked under the Policy. In support of its claim, the Complainant filed invoices issued between 2003 and 2013, addressed to a single company in New York, United States of America, and featuring the “Logickeyboard” in the top left corner. However, the first invoice including a product named “Logickeyboard” was issued on August 11, 2007. Before such date, all products mentioned in the invoices are specified as “keyboard” only. Moreover, the Complainant’s invoices not only included keyboards but also keysets. As a result, the Panel finds that, more likely than not, the Complainant used “Logickeyboard” prior to August 11, 2007 (and also at the time of the registration of the disputed domain name) as a trade name only and not as a trademark in connection with specific goods and services. Furthermore, no claim of secondary meaning has been made by the Complainant and no satisfactory evidence in support of such claim has been presented to the Panel. The Panel therefore cannot but find that the Complainant failed to establish the first element of the Policy in these Policy proceedings.
Even if the Panel had found in favor of the Complainant with regard to paragraph 4(a)(i) of the Policy, it still would have had to deny the transfer of the disputed domain name as the Complainant failed with regard to paragraph 4(a)(iii) of the Policy as well. The Complainant provided insufficient evidence as to the Respondent’s bad faith registration of the disputed domain name. Given that “Logickeyboards” is clearly describing one of the Respondent’s products, namely keyboards for Apple’s Logic software, that the Respondent registered a total number of 14 domain names all consisting of the name of a software and the word “keyboard” or “keyboards”, and that, according to the evidence provided by the Complainant, its use of “Logickeyboard” is limited to Denmark and the United States, the Panel also finds it more likely than not that the Respondent in fact registered the disputed domain name in 2006 to have a suitable range of domain names at hand (also for its keyboards for Apple’s Logic software) rather than with a view to the Complainant or its products. As a result, the Complainant also failed to establish that the Respondent registered the disputed domain name in bad faith.
The Panel declines to make a finding of reverse domain name hijacking in light of the unregistered trademark rights the Complainant may potentially invoke in Denmark, but which for purposes of these UDRP proceedings the Complainant has failed to establish with evidence as discussed above.
For the foregoing reasons, the Complaint is denied.
Date: October 24, 2013