WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Doro AB v. Electronic Commerce Organization, S.L.
Case No. D2014-0523
1. The Parties
The Complainant is Doro AB of Lund, Sweden, represented by Advokatbyrån Gulliksson AB, Sweden.
The Respondent is Electronic Commerce Organization, S.L. of Sant Cugat del Vallés, Barcelona, Spain.
2. The Domain Name and Registrar
The disputed domain name <doroonline.com> (“Disputed Domain Name”) is registered with CSL Computer Service Langenbach GmbH dba Joker.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2014. On April 1, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 2, 2014, the Registrar transmitted by email to the Center its verification response confirming that the 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, the Complainant filed an amended Complaint on April 9, 2014.
The Center verified that the Complaint together with 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, and the proceedings commenced on April 11, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 1, 2014. The Response was filed with the Center on April 25, 2014.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on May 9, 2014. 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.
Prior to the appointment of the Panel, on April 29, 2014, the Center received a Supplemental Filing from the Complainant, which was subsequently forwarded to the Panel. Following the Panel’s review of this Supplemental Filing, the Panel has decided not to accept the Complainant’s Supplemental Filing, as they appear to largely address topics which the Complainant could have addressed in its Complaint and, either way, the majority of the submissions appear to be a repeat of the Complaint, and has no effect on the Panel’s findings.
4. Factual Background
The Complainant is a telecommunication company based in Sweden and established in 1972. The Complainant holds Community trade mark (“CTM”) and Swedish trade mark registrations for the DORO mark.
The Respondent is a company based in Spain. It registered the Disputed Domain Name on 28 April 2011. The Respondent uses the Disputed Domain Name to resolve to a website which markets and sells DORO products.
5. Parties’ Contentions
The Complainant’s contentions can be summarized as follows:
(a) The Complainant holds CTM and Swedish trade mark registrations for the DORO mark. The Disputed Domain Name incorporates the Complainant’s DORO registered trade mark. The word “online” is a generic word that adds nothing to distinguish the Disputed Domain Name from the Complainant‘s DORO trade mark.
(b) The Respondent is not affiliated or related to the Complainant, and is not licensed by the Complainant or otherwise authorized to use the DORO trade mark. The Respondent also has no trade mark rights in the DORO mark.
(c) Even though the Respondent appears to be marketing and selling original DORO products, the registration and use of the Disputed Domain Name is unfair and misleading. The website to which the Disputed Domain Name resolves is similar to the Complainant’s website “www.doroespana.es”, and also features the Complainant’s DORO logo and other copyright images. The Respondent is therefore using the Disputed Domain Name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the DORO trade mark.
(d) The Complainant seeks to rely on what it has identified as “the minority view” taken by some panelists that without the express permission of the trade mark holder, the right to resell the trade mark holder’s products does not create a right to use the trade mark as a basis for a domain name.
(e) The Complainant contends that the position regarding resellers taken by a majority of panelists should not be relied on in this case. The majority view is based on Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, which provides that a reseller can use a trade mark as a domain name if it satisfies four requirements (discussed further below). Either way, the Complainant contends that the Respondent has failed to satisfy one of the four requirements (i.e., it has not accurately disclosed its relationship with the Complainant on the website), and therefore cannot rely on Oki Data Americas, Inc. v. ASD, Inc., supra.
The Respondent’s contentions can be summarized as follows:
(a) Whilst the Respondent accepts that the Complainant’s has trade mark rights in DORO, it does not think that the Disputed Domain Name is confusingly similar.
(b) The Respondent is a reseller of the Complainant’s DORO products since 2011. The Respondent relies on email correspondences between it, the Complainant’s sales manager and the Complainant’s authorized distributor, and also relies on invoices issued by the Complainant’s authorized distributor for the purchase of DORO products. The email correspondence shows that the Complainant knew about the Respondent’s intention to open an online store, and even introduced the Respondent to the Complainant’s authorized distributor.
(c) The Respondent is using the Disputed Domain Name and DORO trade mark to market and sell only and exclusively the DORO products.
(d) The website in which the Disputed Domain Name resolves, was developed based on the Respondent’s own self-developed shop engine, which it has applied to many other online shops operated by the Respondent. It therefore denies that its website is merely a modified versions of the Complainant’s website.
(e) The legal notice on the Respondent’s website states that the intellectual property rights belong to the Respondent or their respective owners, and the website also states that the Respondent is a specialized reseller of DORO products.
(f) The Respondent contends that it has legitimate rights and interests in the Disputed Domain Name as a reseller of the Complainant’s DORO products, since it meets the criteria set out in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview”) and Oki Data Americas, Inc. v. ASD, Inc., supra, i.e., (i) the Respondent is a reseller who is actually offering the goods and services at issue; (ii) it uses the website only to sell the trade marked goods; (iii) the website accurately discloses the Respondent’s relationship with the Complainant, i.e., as a specialized reseller of DORO products; and (iv) the Respondent has not tried to corner the market in all domain names. The Respondent therefore argues that it is using the Disputed Domain Name to make a bona fide offering of goods and services in good faith.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; 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 by the Respondent in bad faith.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in the DORO mark, based on its CTM and Swedish trade mark registrations.
The Disputed Domain Name incorporates the Complainant’s DORO mark in its entirety, the only difference being the word “online”. The word “online” is a generic term. It is well established that where the distinctive and prominent element of a disputed domain name is the complainant’s mark, and the only difference is a generic term that adds no distinctive element, then such a generic term does not negate the confusing similarity between the disputed domain name and the mark (See Oakley, Inc. v. Joel Wong/BlueHost.com- INC, WIPO Case No. D2010-0100; Diageo Ireland v. Guinnessclaim, WIPO Case No. D2009-0679; and The Coca-Cola Company v. Whois Privacy Service, WIPO Case No. D2010-0088).
The Panel finds that “doro” is the distinctive component of the Disputed Domain Name and the addition of the word "online" does nothing to distinguish it from the Complainant’s trade mark.
It is also well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the Generic Top-Level domain extension (“gTLD”), in this case “.com”, may be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, WIPO Case No. D2006-0762).
The Panel accordingly finds that the Disputed Domain Name is confusingly similar to the Complainant’s registered mark, and that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Name, even if it has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview”) states that once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel accepts that the Complainant registered and began using the DORO trade mark well before the Disputed Domain Name was registered, and that there is no evidence to show that the Respondent has become commonly known by the Disputed Domain Name or has any trade mark rights that correspond to the Disputed Domain Name. Therefore, the Panel is of the view that a prima facie case has been established and it is for the Respondent to prove it has rights or legitimate interests to the Disputed Domain Name.
The question is whether or not the Respondent, as a reseller of the Complainant’s DORO products, can be said to have been using the Disputed Domain Name in connection with a bona fide offering of goods, and therefore has rights or legitimate interests in the Disputed Domain Name.
The majority view taken by many UDRP panels is that a reseller can be found to be making a bona fide offering of goods, and therefore have a legitimate interest in the relevant domain name, if it meets the following criteria set out in Oki Data Americas, Inc. v. ASD, Inc., supra (“Oki Data”) and Paragraph 2.3 of the WIPO Overview:
(1) the Respondent must actually be offering the goods or services at issue;
(2) the Respondent must use the website to sell only the trade marked goods;
(3) the Respondent must accurately disclose its relationship with the trade mark owner on the website; and
(4) the Respondent must not “corner the market” in all domain names that reflect the trade mark in question.
However, whilst still subscribing to the majority approach above, some UDRP panels have taken the view that it will “generally be very difficult for a respondent to establish rights or legitimate interests where the respondent has no relevant trade mark rights and without the authority of the complainant has used a domain name identical to the complainant’s trademark” (see paragraph 2.3 of the WIPO Overview 2.0). Some UDRP panels have even gone a step further and moved away from the Oki Data test to take an alternative approach (relied on by the Complainant), that simply being a reseller does not give a respondent the right to incorporate the relevant trademark in a domain name without the express permission of the trademark holder (see X-One B.V. v. Robert Modic, WIPO Case No. D2010-0207; Xerox Corporation v. Imaging Solution, WIPO Case No. D2001-0313; and The Stanley Works v. Camp Creek Co., Inc., WIPO Case No. D2000-0113).
Based on the facts of this case, the Panel finds that in applying any of the above approaches, the Respondent has failed to establish that it has any rights or legitimate interest in the Disputed Domain Name for the purposes of the Policy.
The Complainant does not appear to dispute the fact that the Respondent is using the website, to which the Disputed Domain Name resolves (“Website”), in order to market and sell the Complainant’s official DORO products. In fact, the Complainant was clearly aware that the Respondent intended to use an online store to sell the DORO products, and initially raised no objections; nor however did it explicitly consent to the Respondent’s doing so. This is based on the email correspondence provided by the Respondent. The Respondent had contacted the Complainant on April 28, 2011, stating that it is a company that manages several online shops for the sale of different products in Spain (examples of which included “www.wacomonline.com”, “www.plustekonline.com” and “www.icomonline.es”). The Respondent stated that it was interested in opening an online shop to resell the Complainant’s DORO products in Spain – “We have seen your range of products DORO which we think are very interesting and could be a real good seller from one of our online shops…I would like to ask if you would be interested in having a company like ours distributing your products as an online shop, what would you require or if you already have an organisation in Spain, how can we contact them in order to see if there is a possibility of doing business together [sic]”. A person who identified themselves as the sales manager of the Complainant emailed the Respondent to confirm that it was interested in the Respondent’s proposal, and subsequently informed the Respondent that it had asked its distributor (Senior Consulting) to contact them. The Respondent then started purchasing the DORO products from the Complainant’s distributor, and has been using the Website to exclusively sell DORO products (i.e., no other products or services appear to be advertised or sold via the Website).
However, although the Complainant was well aware that the Respondent intended to sell the DORO products from an online store and initially raised no objections, the Panel on the other hand also notes that at no point during the Respondent’s correspondence with the Complainant did the Respondent indicate that it intended to register a domain name that incorporated the Complainant’s DORO mark (only that it intended to sell them online). Further, nowhere in the correspondence did the Complainant expressly authorise the Respondent to use its DORO trade mark in a domain name, nor did it authorise the Respondent to use on the Website the Complainant’s DORO trademark or any of the images found on the Complainant’s “www.doroespana.es” website. The Complainant only seemed to have tacitly authorised the Respondent to resell its DORO products online from one of the Respondent’s online shops.
The Panel considers this to be a border line case. However, in the end, the Panel is persuaded that the Respondent has failed to establish any legitimate interest or rights in the Disputed Domain Name based on the following facts:
- There is no evidence that the Complainant expressly consented to the Respondent’s use of its DORO trademark in the Disputed Domain Name (as discussed above). The copies of the correspondence between the parties that were submitted by the Respondent show, at most, that the Complainant was agreeable to the Respondent purchasing and reselling its DORO products online. There is no indication that the Complainant ever agreed to the Respondent’s registration of, nor did the Respondent ever ask for express permission or indicate that it intended to register, a domain name that incorporated the Complainant’s DORO mark.
- At the top of the Website, under the “DOROONLINE.COM” logo, it states “distribuidores especializados en productos Doro” (i.e., Specialised distributors of DORO products). However, the use of the word “especializados” (specialised) implies that the Respondent is a special distributor for the Complainant, which the Panel understands is inaccurate and gives a false impression of their relationship. There is also no other clear indication on the Website (i.e., in any company information section, the terms and conditions, etc.) of the relationship between the Respondent and the Complainant, or any disclaimer that clearly sets out that the Website is not operated or endorsed by or affiliated with the Complainant.
- The Panel accepts, based on the evidence provided, that images had been taken from the Complainant’s website and incorporated onto the Respondent’s Website, which, in the absence of any evidence to the contrary, the Panel accepts that the Complainant holds the copyright. Although the bottom of the Website states “Todas las imágenes de los productos son © Doro” (i.e., “all product images are © Doro”), the legal notice contained on the Website fails to make this clear (it simply mentions that all copyright in the content and images used on the Website belong to the Respondent or “their respective authors”) and seems rather to give the impression that they are somehow approved by the Complainant.
- The Website has a similar look and feel of the Complainant’s “www.doroespana.es” website, i.e. they both use the same colour.
- The Panel is not convinced by the Respondent’s argument that the Website is based on its own proprietary shop-engine which it uses for all its websites – although for purposes of argument the Panel is willing to accept that the layout may be consistent amongst all the Respondent’s websites, the Panel notes that the colour and logo used on the Respondent’s Website appears to match the same colour and logo used on the official website of the Complainant (i.e., they both use a similar shade of green and the word “doro” appears at the top of the Respondent’s Website in lower case, similar to the Complainant’s DORO mark), and the Respondent’s other websites do not appear to use that same colour or logo format.
- The Panel gives no credence to the Respondent’s argument that the Complainant may have in fact copied its Website, as no evidence has been provided by the Respondent other than a bare allegation, and the Panel notes that the Complainant registered its <doroespana.es> domain name prior to the registration of the Disputed Domain Name.
- Further, there is no evidence that the Respondent has become commonly known by, or has any relevant trademark rights corresponding to the Disputed Domain Name.
The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Respondent registered the Disputed Domain Name on April 28, 2011, which was about one week before the Respondent first approached the Complainant to ask it if it was interested in the Respondent acting as an online reseller of the Complainant’s DORO products. The Respondent therefore registered the Disputed Domain Name before it knew whether or not the Complainant would even enter into discussions with the Respondent about it acting as the Complainant’s reseller. In light of the foregoing, it is reasonable to infer that the Respondent registered the Disputed Domain Name in bad faith, as it intended to use the Disputed Domain Name, irrespective of whether or not the Complainant agreed to the Respondent reselling the Complainant’s DORO products (which, either way, would not in itself have granted the Respondent permission to register the Disputed Domain Name which incorporated the Complainant’s DORO trade mark in its entirety).
Based on the correspondences between the Respondent and the Complainant in 2011, the Respondent clearly knew about the Complainant and its DORO trademark at the time it registered the Disputed Domain Name, and intentionally registered and is using the Disputed Domain Name to attempt to attract Internet users to the Respondent’s Website, by creating a likelihood of confusion with the Complainant’s DORO trade mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website, for commercial gain, i.e., to increase the number of sales of the products offered on the Website. This is further supported by the fact that the look and feel of the Website reflects the Complainant’s official website, and the Website uses the Complainant’s DORO trademark and copyrighted images, which may further mislead and confuse users into believing that the Website is either the official website of the Complainant or is somehow endorsed or affiliated with the Complainant (especially since there is no disclaimer).
The Panel therefore finds that paragraph 4(a)(iii) of the Policy is satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name, <doroonline.com>, be transferred to the Complainant.
Date: May 23, 2014