WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hörmann KG Verkaufsgesellschaft v. Identity Protection Service / Scott Smith
Case No. D2015-0121
1. The Parties
The Complainant is Hörmann KG Verkaufsgesellschaft of Steinhagen, Germany, represented by CMS Hasche Sigle, Germany.
The Respondent is Identity Protection Service of Godalming, the United Kingdom of Great Britain and Northern Ireland (“U.K.”) / Scott Smith of London, U.K. / Doormatic Ltd of Guildford, U.K. internally represented.
2. The Domain Name and Registrar
The disputed domain name <hormanndoors.com> is registered with Webfusion Ltd trading as 123-reg (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 23, 2015. On January 26, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 26, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 28, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 30, 2015.
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 February 2, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 22, 2015. The Response was filed with the Center on February 19, 2015.
The Center appointed Adam Taylor as the sole panelist in this matter on February 24, 2015. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant was incorporated in Germany in 1935 and is now a major manufacturer and supplier of gates, doors, frames and operators with annual turnover of more than one billion euros and more than 6,000 employees in some 30 countries.
The Complainant owns Community trade mark no.1640697 for the word “HÖRMANN” filed May 4, 2000, in classes 6,7,9,19 and 37 as well as Community trade mark no.1650126 for a figurative mark consisting of the letter “H” within a device together with the word “HÖRMANN” beneath, filed May 5, 2000, in classes 6,7,9,19 and 37
The disputed domain name was registered on June 3, 2013.
As of January 23, 2015, the disputed domain name resolved to a website, the homepage of which was prominently branded “Hormann Garage Doors”. The introductory paragraph stated:
“Find a Large Range of Hormann Garage Doors Right Here Looking for Hormann garage doors? If you have decided to choose this brand, you’ve made a very good decision. Hormann is known for its high-quality products, and it is one of the biggest names in the industry. These German-built garage doors will last you for years, and will also make a stylish addition for your home. We have an extensive range of Hormann garage doors to choose from, so take a look through our products here and book a free site review today.”
Under the heading “Why Hormann Garage Doors Right”, the website summarised the Complainant’s history and extolled the Complainant’s “reputation for excellence”. And in sections headed “Why Us” and “Arrange a Free Site Survey for Your New Hormann Door”, the Respondent gave reasons as to why customers who had opted to purchase one of the Complainant’s doors should choose the Respondent to supply and install it.
Finally, at the bottom of the page, there was a row of logos comprising the Complainant’s logo as well as logos of other door / garage door brands.
On August 6, 2014, the Complainant emailed Marc Sebo of Doormatic Garage Doors Limited, who the Complainant considered to be the controller of the disputed domain name, requesting removal of the website at the disputed domain name. There was no response to this or two subsequent cease and desist letters sent by the Complainant’s lawyers on November 12, 2014 and January 9, 2015.
On January 26, 2014, following service of the Complaint, Mr. Sebo emailed the Complainant claiming to find it strange that the Complainant had not contacted him direct about the matter. He said that his company supplied and fitted the Complainant’s products, that the Complainant’s logo was on thousands of websites and that the website at the disputed domain name was set up to sell additional Complainant products and not to pretend to be the Complainant. He added that, if the Complainant felt strongly about it, he would be happy to sell “the site” to the Complainant as he had spent “a fair amount” on it and it attracted a good amount of traffic.
The Complainant’s lawyers responded on January 27, 2015, referring to the previous unanswered correspondence to Mr. Sebo and stating that the Complainant declined to make any payment to Mr. Sebo.
Mr. Sebo replied the same day claiming that he rented “the site” and that owners would not give it away because too much time had been spent on the site. He reiterated that he would be happy to discuss sale of the site and said that further correspondence should be directed to the owner of the site.
5. Parties’ Contentions
A summary of the Complainant’s contentions is as follows:
The Complainant has built up substantial goodwill and reputation in the Hörmann brand.
The disputed domain name is identical or at least confusingly similar to the Complainant’s trade mark. The descriptive word “doors” has a direct link to the goods and services covered by the Complainant’s trade marks.
The disputed domain name gives the impression that its owner is connected with the Complainant.
The website at the disputed domain name makes extensive use of the Complainant’s trade marks to offer garage doors and gates of various manufacturers.
The Complainant has never consented to the Respondent’s use of its trade marks.
There is no other company or product in the market for gates and doors using the names “Hörmann” or “Hormann”.
It is obvious that the Respondent was well aware of the Complainant’s trade mark when it registered the disputed domain name in light of the Complainant’s reputation, the combination with the term “doors” and the use of the website to sell and advertise gates and garage doors.
If the Respondent is simply renting the disputed domain name to the party using the website, then he is not offering any products but has registered and rented to the disputed domain name in the knowledge that it would be used to infringe the Complainant’s trade mark.
If the Respondent is the operator of the website, then there is no bona fide offering either as the disputed domain name creates the impression that the Respondent is connected with the Complainant. This will inevitably cause confusion amongst customers or potential customers of the Complainant. In addition the Complainant’s trade marks are used alongside those of the Complainant’s competitors, showing that the Respondent is offering competing products by reference to the Complainant’s name.
The selection of the disputed domain name for a website offering doors and gates was not a coincidence. The Respondent intentionally attempted to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s mark. The Respondent’s objective was to use or rent the disputed domain name for this purpose.
A summary of the Respondent’s contentions is as follows:
The Respondent has not intentionally attempted to align itself with the Complainant or to confuse customers. The Respondent has sold the Complainant’s doors for 14 years and the site was set up to advertise and sell more of the Complainant’s products, to the Complainant’s benefit. The Respondent never intended to sell the disputed domain name to the Complainant.
The site clearly states that the Respondent installs garaged doors and, if a client chooses to buy the Complainant’s products, the site gives reasons as to why it should buy from the Respondent and have the products installed by the Respondent. The telephone number on the site is answered as “Doormatic Garage Doors” and any correspondence is “Doormatic Garage Doors” stationery. The site makes it clear that the Respondent is representing other manufacturers and so it is not attempting to pass itself off as the Complainant.
The screenshots at Annex 1 to the Response show five other sites using the Complainant’s logo along with other logos. None of those other sites are associated with the Complainant and neither is the Respondent.
The Complainant emailed its logo to the Respondent on request without asking how it was going to be used or doing any due diligence.
The Complainant likes to be represented everywhere but it becomes a bully if it doesn’t like the form of representation. The Complainant has not contacted the Respondent with a view to finding a solution. The Complainant’s correspondence just makes demands.
The Respondent has numerous websites aimed specifically at what the client is seeking e.g., “www.rollergaragedoors.org”, “www.woodengaragedoors.me.uk”, etc.
The Complainant should have bought the disputed domain name if it was so concerned about its trade mark. The Complainant is only interested in the disputed domain name because the website’s ranking has improved and for its own commercial gain.
The Respondent has indicated that it would be prepared to discuss purchase of the site with the Complainant, given the considerable time, effort and money which the Respondent has put into the site, but the Complainant has declined to take a conciliatory route, preferring to take a bullying legal approach.
6. Discussion and Findings
A. Identity of Respondent
The registrant of the disputed domain name is “Scott Smith”.
The Complainant maintains that the disputed domain name is controlled by a company called “Doormatic Garage Doors Ltd” because the telephone number on the website at the disputed domain name matches that shown on another website, “www.doormaticgaragedoors”, and that this company is itself controlled by Marc Sebo. As mentioned in section 4 above, Mr. Sebo initially claimed that he rented the site, indicating that it was controlled by the “owners”. The Response has, however, been filed in the name of “Doormatic Ltd” with Mr. Sebo shown as the Respondent’s contact and representative. No evidence of a rental agreement has been produced; indeed the Response makes no mention of any rental arrangement. Nor was this referred to in Mr. Sebo’s first email to the Complainant.
While the picture is somewhat unclear, the Panel considers that the evidence points towards Mr. Sebo being the ultimate controller of the disputed domain name. Certainly, in the absence of a clear explanation otherwise, backed by supporting evidence, the Panel sees no reason to distinguish between the various entities mentioned above and so it proposes to treat them all interchangeably as “the Respondent”.
B. Identical or Confusingly Similar
The Complainant has established rights in the mark HÖRMANN by virtue of its registered trade mark for that term.
Paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) makes clear that the threshold test for confusing similarity under the UDRP involves a comparison between the trade mark and the disputed domain name to determine likelihood of Internet user confusion and that, in order to satisfy this test, the relevant trade mark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion. Paragraph 1.9 of WIPO Overview 2.0 adds that, in itself, the addition of merely generic, descriptive, or geographical wording to a trade mark in a domain name is normally insufficient to avoid a finding of confusing similarity and that panels have usually found the incorporated trade mark to constitute the dominant or principal component of the domain name.
Here, the Complainant’s distinctive trade mark is undoubtedly the dominant component of the disputed domain name and, as indicated in paragraphs 1.2 and 1.9 of WIPO Overview 2.0, the addition of the descriptive term “doors” is insufficient to avert a finding of confusing similarity.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
C. Rights or Legitimate Interests
As to paragraph 4(c)(i) of the Policy, the Respondent is reselling the Complainant’s own goods. The consensus view of UDRP panels – as expressed in paragraph 2.3 of WIPO Overview 2.0 – is that to establish a bona fide offering of goods or services in such circumstances, the Respondent must comply with certain requirements:
“These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder. The respondent must also not try to “corner the market” in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles.”
The Respondent claims that it registered the disputed domain name as part of its policy of using websites which are aimed specifically at what its customers are seeking, e.g., “www.rollergaragedoors.org”, “www.woodengaragedoors.me.uk”, etc. However, there is a major distinction between reselling products via such descriptive / generic domain names and registering and using domain names, such as the disputed domain name, which reflect other peoples’ trade marks; the latter can only be justified if the above-mentioned criteria are satisfied. Dealing with each of these requirements in turn:
Actual offering of goods and services at issue
It is not in dispute that the Respondent does indeed resell the Complainant’s goods.
Selling only the trade marked goods
The Complainant asserts that the Respondent is offering competing products via the website at the disputed domain name, evidenced by the appearance of the logos of competitors of the Complainant alongside the Complainant’s own logo on the home page of the website. The Respondent makes no attempt to justify the appearance of the competitor logos; indeed the Respondent makes no reference to the issue at all. The Panel is therefore driven to conclude that the Respondent included the competitor logos in order to advertise to users of the website that it supplied those competitor products and that therefore the website cannot be said to be selling only the trade marked products.
Accurate and prominent disclosure of the registrant’s relationship with the trade mark holder
The disputed domain name itself does not itself disclose the relationship between the parties as it simply consists of the Complainant’s trade mark plus a word which exactly describes the Complainant’s products.
As explained in section 4, above the home page website at the disputed domain name is prominently branded “Hormann Garage Doors”. There is no evidence of a disclaimer – prominent or otherwise – expressly stating that the Respondent is a supplier and installer of the Complainant’s products. In fact, the homepage nowhere names the operator of the website. The Respondent claims that the site clearly states that the Respondent is a supplier and installer of the Complainant’s products, reinforced by the fact that the site gives reasons as to why customers should use the Respondent for that purpose. The Panel agrees that a person carefully reading of the entire of the homepage may well ultimately divine the Respondent’s status. However, in the Panel’s view, the first few paragraphs of the homepage promoting the Complainant’s brand are somewhat ambiguous and could easily be seen by customers as having emanated from the Complainant itself and this, taken with the “Hormann Garage Doors” branding and the lack of a disclaimer or any other clear identification of the Respondent, is likely to lead most Internet users to the conclusion that the site is indeed connected with the Complainant. Certainly, in the Panel’s view, the site falls well short of providing an “accurate and prominent” disclosure of the parties’ relationship.
Nor does it help the Respondent if, as it claims, the phone number on the site is answered “Doormatic Garage Doors” or that subsequent correspondence is on “Doormatic Garage Doors” stationery. Even if such communications were to be regarded as accurate disclosure of the relationship between the parties, which itself is debatable, none of this occurs prominently on the Respondent’s website and so it comes too late in the process. Likewise, in the Panel’s view, the row of assorted brand logos at the bottom of homepage does not constitute a prominent disclosure of the fact that the Respondent is a reseller of the Complainant’s products.
The Respondent gives examples of websites of other resellers of the Complainant’s products which include the Complainant’s logo. However, these do not assist the Respondent because, insofar as one can tell (some of the Respondent’s screenshots are incomplete), none of the relevant domain names include the Complainant’s trade mark; rather, all of the websites appear to be conventional reseller websites branded with the reseller’s own name and listing, with logos, the brands of garage doors which they supply. These sites are materially different to the Respondent’s site, which involves a domain name incorporating the Complainant’s trade mark and a website branded with the Complainant’s trade mark. The Respondent has erred to the extent that it considers that this case simply revolves around the appearance of the Complainant’s logo on the Respondent’s website. In any event, even if there were other sites using the Complainant’s trade mark in an illegitimate manner, that of itself would hardly justify the Respondent doing likewise.
Cornering the market in domain names reflecting the trade mark
There is no suggestion that the Respondent has registered any other domain names reflecting the Complainant’s trade mark.
For the above reasons, the Respondent has failed to demonstrate compliance with two of the Oki Data criteria and so the Panel considers that the Respondent’s use of the disputed domain name cannot be said to be bona fide.
Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
D. Registered and Used in Bad Faith
The Panel considers that the disputed domain name has been registered and used in bad faith for similar reasons to those outlined above. In particular:
1. The Respondent selected a domain name which comprised the Complainant’s trade mark plus an obvious term describing the Complainant’s products; the disputed domain name in no way signalled its intended purpose as a reseller website.
2. The Respondent prominently branded the homepage with the name “Hormann Garage Doors” and made no effort to distinguish itself from the Complainant, whether by means of a disclaimer or otherwise. The Respondent did not even identify itself on the homepage.
3. The Respondent used the site to promote competing products.
The Panel concludes from the foregoing that the Respondent has registered and used the disputed domain name in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark.
Finally, the Respondent objects that the Complainant has not taken a conciliatory approach and attempted to buy the disputed domain name. However, it is a matter for the Complainant as to whether or not it wishes to attempt a resolution along those lines. The Complainant’s failure to do so does not, of itself, de-legitimise its case.
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 <hormanndoors.com> be transferred to the Complainant.
Date: March 10, 2015