WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
FANUC Corporation, FANUC UK Limited v. Whois Agent Your Jungle Privacy Protection Service / John Ginley / Neil Ginley; Pennine Automation Spares
Case No. D2015-1387
1. The Parties
Complainant is FANUC Corporation of Yamanashi Prefecture, Japan (the "First Complainant") and FANUC UK Limited (the "Second Complainant") of Coventry, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Adlex Solicitors, United Kingdom.
Respondent is Whois Agent Your Jungle Privacy Protection Service / Domain Administrator of Belize City, Belize / John Ginley of Colorado Springs, Colorado, United States of America / Neil Ginley of Coventry,
West Midlands, United Kingdom; Pennine Automation Spares/ Pennine Automation Spares Ltd. , of Halifax, United Kingdom.
2. The Domain Names and Registrars
The disputed domain names <fanuc-repairs.repair>, <fanuc-spares.com> and <fanucspares.com> are registered with Ascio Technologies Inc., CSL Computer Service Langenbach GmbH dba Joker.com, and NamePal.com #8027, respectively.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 6, 2015. On August 6, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names.
On August 7, 2015, Ascio Technologies Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant of the disputed domain name <fanuc-repairs.repair> and providing the contact details.
On August 20, 2015, NamePal.com #8027 transmitted by email to the Center its verification response concerning the disputed domain name <fanucspares.com> disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint.
On August 20, 2015, CSL Computer Service Langenbach GmbH dba Joker.com transmitted by email to the Center its verification response concerning the disputed domain name <fanuc-spares.com> confirming that Respondent is listed as the registrant of such domain name and providing the contact details.
The Center sent an email communication to Complainant on August 27, 2015 providing the registrant and contact information concerning the disputed domain name <fanucspares.com> disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on the same day.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 2, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 22, 2015. The Respondent did not submit any Response. Accordingly, the Center notified Respondent's default on September 25, 2015.
The Center appointed Roberto Bianchi as the sole panelist in this matter on October 13, 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.
The Panel decided that the three disputed domain names are under a common control. See section 6 A infra.
4. Factual Background
The First Complainant and the Second Complainant are part of the FANUC group. This group provides automation products and services such as robotics and computer numerical control ("CNC") systems. The group is one of the largest makers of industrial robots in the world.
The First Complainant is a Japanese company incorporated in 1972. Since then, it and its group companies have supplied automation systems and CNC equipment in Japan and worldwide under the name "Fanuc" and related names. The group net sales in 2012 were about 489,000 million yen (approximately GBP 2,806 million) in 2012 and 450,000 million yen (approximately GBP 2,582 million) in 2013. The First Complainant owns, inter alia, the following registrations for the FANUC trademark:
United Kingdom trademark No. UK00000910676; filing date and date of entry in registry: June 13, 1967. This mark covers electrical apparatus and instruments, automatic control apparatus, etcetera, in International Class 9.
United Kingdom trademark No. UK00001182663; filing date and date of entry in registry: October 1, 1982. This mark covers machine tools and automatic machines, etcetera, in International Class 7.
United Kingdom trademark No. UK00002337783; filing date and date of entry in registry: July 15, 2003. This mark covers electric motors, electric discharge machines, industrial robots, injection molding machines, machining center, etcetera, in International Class 7, and numerical controller, programmable controller, laser oscillator, computer software, etcetera, in International Class 9.
International trademark No. 948323 designating the European Union, dated June 11, 2007. This mark covers metalworking machines and tools, etcetera, in International Class 7, ear plugs, processed glass (not for building), etcetera, in International Class 9, construction, construction consultancy, etcetera, in International Class 37, providing meteorological information, architectural design, etcetera, in International Class 42.
The Second Complainant is the main company of the FANUC group and trades under the names "Fanuc" / "Fanuc Robotics" since 1982. The turnover of this company was approximately GBP 15.5 million in 2012 and GBP 20 million in 2013. Its main website is "www.fanucrobotics.co.uk", which shows the strapline "Welcome to the yellow world." The second Complainant offers servicing / repairs and spare parts for its systems.
The WhoIs records show that the disputed domain names <fanuc-spares.com>, <fanucspares.com> and <fanuc-repairs.repair> were created on July 5, 2001, September 7, 2012 and October 15, 2014 respectively.
On February 13, 2014, Complainant's solicitors, acting for the Second Complainant and FANUC Europe Corporation, SA, sent by email a letter to Pennine Automation Limited in relation to the disputed domain names <fanucspares.com> and <fanuc-spares.com>, and to the <fanuc-parts.co.uk>, <fanuc-spares.co.uk>, and <fanuc.li> domain names. In this letter, it was required that the websites associated to all these domain names be removed and that the domain names be transferred to Complainant. On the same day, Pennine Automation Spares replied that they would not have a problem transferring the <fanuc-spares.com>, <fanucspares.com> and <fanuc.li> domain names as they do not use them, but would not be willing to transfer the <fanuc-parts.co.uk> or <fanuc-spares.co.uk> domain names. Apparently, no transfer of the disputed domain names was effected.
5. Parties' Contentions
Complainant's contentions are as follows:
The disputed domain names wholly incorporate Complainant's FANUC trademark and differ only by the addition of the generic words "spares" and "repair" respectively. These terms fail to dispel the connection between the disputed domain names and the trademark, but they rather reinforce the link as they denote aspects of Complainant's services which include providing spares and repairs for its products direct to its customers. Complainant's trademark remains the dominant feature of the disputed domain names.
Complainant contends that Respondent lacks any rights or legitimate interests in the disputed domain names. (Complainant's contentions as to rights and legitimate interests are examined in detail at Section 6.C. below).
Complainant submits that no distinction should be drawn between the current registrant and the previous registrant of the disputed domain name <fanucspares.com>. It is clear that those entities are connected and that the registrant was changed into proxy, but with a website offering the same services and using the same contact address as before, in order to obstruct Complainant. Complainant submits that such activities of themselves evidence registration and use in bad faith.
Complainant relies on Policy paragraph 4(b)(iii) (registration of the domain name primarily for the purpose of disrupting the business of a competitor).Respondent is using the disputed domain names <fanucspares.com> and <fanuc-repairs.repair> to runa business in open competition with Complainant in the sale of Complainant'sgoods / spare parts and repair of Complainant's equipment. Such a business maybe lawful in itself, but it is contrary to the Policy to conduct it by using domain namesregistered primarily to disrupt the rival's business. Complainant wants customersto come directly to it and Respondent is trying by means of the disputed domain names to divertor siphon off as many of them as it can and to get the business for itself. That isclearly disrupting the business of a competitor in that it is interrupting the progress ofthat business. See Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052,whereactivities by a respondent very similar to those of Respondent in this case wereheld to constitute bad faith under paragraph 4b(iii), amongst other things.
In relation to paragraph 4(b)(iv), Respondent is seeking to create the impression through the disputed domain names <fanucspares.com> and <fanuc-repairs.repair> and associated websites copying Complainant's branding / logo / color scheme that it is operating under the sponsorship, affiliation or endorsement of Complainant. In finding that activities similar to those of Respondent in this case came within paragraph 4b(iv), the UDRP panel in Control Techniques Limited v. Lektronix Ltd, supra observed: "The Respondent could always have used its own name and then announced on its website that it sold spare parts for and serviced Control Techniques equipment. Instead of doing that, it has attracted potential customers by using and promoting the Complainant's trademark without consent and creating the impression in the minds of at least some potential customers that it has the endorsement of the Complainant." The same applies here. Indeed, the situation is aggravated by the use of the disputed domain name <fanucspares.com> to offer spares for competitor products – as in Control Techniques Limited v. Lektronix Ltd, supra.
Furthermore, at some point after receiving Complainant's cease and desist communication, Respondent chose to take down the website at the disputed domain name <fanucspares.com>. Complainant submits that this is an admission by Respondent that its previous use was illicit.
The disputed domain name <fanuc-spares.com> has not been used for an active website. Complainant refers to the well-known case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, where the UDRP panel noted that "the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith" and concluded that "it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith." See also paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"). The following facts evidence bad faith by passive holding: a) Respondent offers services in Complainant's industry including for Complainant's own products and was obviously aware of Complainant's distinctive trademark; and b) the disputed domain name <fanuc-spares.com> is clearly part of a pattern whereby Respondent has registered and used multiple domain names incorporating Complainant's trademark and has then used them illicitly – this applies to the other disputed domain names as well as the other domain names referred to in Complainant's letter of February 13, 2014 (as to which Respondent offered no defense in its response of February 13, 2014) and also to the domain name <gefanuc.co.uk> which Respondent was found to have registered and used abusively in the above-mentioned Nominet case.
Complainant also relies on the fact that Respondent has not denied bad faith in its communication of February 13, 2014, let alone offered any genuine explanation for its registration and use of the disputed domain names. If Respondent did have legitimate purposes in registering and using the disputed domain names it would have said so. Instead, Respondent clearly decided to carry on its illicit activities by thereafter secretly registering and using the disputed domain name <fanuc-repairs.repair> in the flagrant manner outlined above, despite Complainant's rights having been brought very firmly to its attention and no doubt as a fallback as it expected to have to relinquish its other domain names to Complainant.
According to Complainant, a further evidence of bad faith is Respondent's use of a domain name proxy service for the disputed domain name <fanucspares.com> before redirecting it to the copycat "www.gefanuc-parts.eu" website. This was clearly an attempt to evade responsibility for Respondent's bad faith registration and use of the disputed domain name. Complainant also refers to the matters raised in the Nominet case as evidencing Respondent's propensity to behave in bad faith towards Complainant including: a) the Nominet panel's conclusion that Respondent registered and used the domain name <gefanuc.co.uk> abusively both to create initial interest confusion and to sell such domain name to Complainant for some GBP 60,000; and b) Respondent's registration of the domain name <gefanuceur.ne> to "raise the stakes" in the communications with Complainant and then attempting to evade responsibility therefor.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
A. Previous Issue: Respondent's Identity
The Panel considers that the three disputed domain names are under a common control for the following reasons:
First, according to the WhoIs records for the disputed domain names <fanuc-spares.com> and <fanuc-repairs.repair> the registrant is Neil Ginley, of Pennine Automation Spares and Neil Ginley, of Pennine Automation Spares Ltd., of Halifax, United Kingdom, respectively. Second, with relation to the disputed domain name <fanucspares.com>, while at the moment the Complaint was file the registrant was Whois Agent Your Jungle Privacy Protection Service and at the present WhoIs data shows that the registrant is Whois Agent Your Jungle Privacy Protection Service, with an P.O. box in Belize City, Belize, Complainant has submitted as Exhibit 13 of the Complaint a printout of previous WhoIs data indicating that the registrant was John Ginley, with an address at "pennine machine tools, Halifax, west Yorkshire, GB". The concerned Registrar NamePal.com #8027 also confirmed that. Complainant also submits as Exhibit 17 of the Complaint its cease and desist letter sent by email to Pennine Automation Limited concerning, inter alia, disputed domain names the <fanuc-spares.com> and <fanucspares.com>. Complainant also submits the reply of "Pennine Automation Spares" to the cease and desist letter stating, "we would not have a problem trasfering [SIC] these as we do not use them fanuc-spares.com / fanucspares.com /(…)", which means that Pennine Automation Spares owns or controls the <fanucspares.com> disputed domain name.
Lastly, the Panel notes that the Center has separately complied with the notification requirements of Rules paragraph 2(a) in respect of each of the registrants of record, and that none of them has indicated that the disputed domain names should be considered under the control of somebody else than Pennine Automation Spares.
For the above reasons, although all the registrants of record for the disputed domain names are being named in the amended Complaint, the Panel considers them collectively as the "Respondent".
B. Identical or Confusingly Similar
Complainant has shown to the satisfaction of the Panel that it owns rights in the FANUC trademark. See section 4 above.
The Panel notes that the disputed domain names prominently contain the FANUC mark, just adding the generic terms "spares" (with or without a hyphen) and "repairs", plus the ".com" and ".repair" Top-Level domains. It is well established that such kind of additions are generally inapt to distinguish a domain name from a mark. Moreover, with the addition of the terms "spares" and "repairs" the attention of the Internet user is directed to Complainant's FANUC mark, thus reinforcing an overall impression of association of the disputed domain names with such mark.
Accordingly, the Panel finds that the disputed domain names are confusingly similar to Complainant's FANUC mark.
C. Rights or Legitimate Interests
In respect of rights and legitimate interests, Complainant contends that it has no association with Respondent, and that it has never authorized or licensed Respondent to use its trademarks.
1) The disputed domain name <fanuc-spares.com>.
The Panel agrees with Complainant that there is no evidence that the domain name <fanuc-spares.com> was ever used. On October 20, 2015, the Panel attempted to connect its browser to the "www.fanuc-spares.com" website and obtained a "Server not found" result. On the same day, the Panel visited the "Wayback Machine" at the "www.archive.org" website, searched for archived pages, and obtained a message stating, "Hrm. Wayback Machine doesn't have that page archived."
Also, the Panel notes that in Respondent's email of February 13, 2014, in reply to Complainant's cease and desist letter, Respondent stated that they would not have a problem transferring the domain name <fanuc-spares.com> to Complainant as they do not use it.
Since there is no evidence of use or of any preparations to use the domain name <fanuc-spares.com> name by Respondent, there can be no question of any bona fide use under Policy paragraph 4(c)(i), or of any fair or legitimate noncommercial use under Policy paragraph 4(c)(iii). According to the corresponding WhoIs data, the registrant of the domain name <fanuc-spares.com> is Mr. Ginley of Pennine Automation Spares. Thus, the Panel believes that there can be no question that Policy paragraph 4(c)(ii) could be applicable.
In absence of any submission or explanation from Respondent as to its reasons for having registered the disputed domain name <fanuc-spares.com>, which contains Complainant's FANUC mark, a well-known brand in Respondent's business sector of providing parts for CNC apparatus and hardware, the Panel concludes that Respondent lacks any rights or legitimate interest in the disputed domain name <fanuc-spares.com>.
2) The disputed domain names <fanucspares.com> and <fanuc-repairs.repair>.
Complainant contends that the disputed domain names <fanucspares.com> and <fanuc-repairs.repair> are being used to sell spares and offer repair services for Complainant's products, and that Respondent cannot show a bona fide offering because it has failed to comply with the Oki Data principles. First, Respondent has used the disputed domain name <fanucspares.com> to offer spares and/or repairs for competitor products. Second, the websites at the disputed domain names fail to accurately and prominently disclose Respondent's relationship with the trademark holder. There was no disclaimer on the January 2014 "www.fanucspares.com" website which also included Complainant's red-on-yellow logo which stood out compared to the rest of the font on the page. Complainant further contends that Respondent has used both the disputed domain names <fanucspares.com> and <fanuc-repairs.repair> for websites which blatantly copied and used Complainant's branding / logo / red/yellow color scheme to try and give the impression that it is, or is officially connected with, Complainant. Complainant argues that the prominent use of the expressions "Fanuc Parts & Fanuc Repair Center" and "Fanuc Repair Center" on the respective websites are designed to give the impression that the websites are Complainant's own official website for repairs or parts. Complainant further contends that the prominent use at one point of the name "FANUC CNC UK – EUROPE" as the heading in the box superimposed on the photo on Respondent's home page at "www.gefanuc-parts.eu", the website to which the disputed domain name <fanucspares.com> redirects, compounds the likelihood of confusion as this disputed domain name simply consists of Complainant's trade mark, plus "CNC", which is descriptive of its products, together with the geographical terms "UK" and "Europe" and is not qualified in any way. Complainant also contends that Respondent has used an identical version of Complainant's red-on-yellow "F" icon, visible in browser tab heading. Third, Complainant states that Respondent has tried to "corner the market" in domain names that reflect Complainant's trademark. Aside from the disputed domain names Respondent registered the domain names <fanuc-parts.co.uk>, <fanuc.li>, <fanuc-spares.co.uk>, <gefanuc.co.uk>, <gefanuceur.net> and <gefanuc-parts.eu>.
The Panel considers that the available evidence on the case file supports these contentions of Complainant as to these two disputed domain names, and thus are apt to constitute a prima facie case that Respondent lacks rights or legitimate interests. Also, on October 20, 2015, the Panel visited the website "www.fanuc-repairs.repair", which consisted of a single page stating, "One.com - Domain-Hosting-Email. Fanuc-repairs.repair is hosted by One.com". The Panel's visit to the "Wayback Machine" on the same day returned just one archived page, dated September 18, 2015, showing identical content for the website "www.fanuc-repairs.repair". In the Panel's opinion, this result also contributes to make Complainant's allegations of past use in violation of the Oki Data standards credible.
Also on October 20, 2015, the Panel visited the "www.fanucspares.com" website, which showed a "fanuc.pennineuk.com" initial page, located at "www.pennineuk.com", a website belonging to Pennine Automation Spares, i.e. Respondent. The Panel notes that on this page there are offered spare parts and CNC machine tool spares from FANUC, but also from Siemens, Indramat, Okuma, Heidenhain, etcetera, which compete with Complainant. Also, during the Panel's visit to the "Wayback Machine" conducted on the same day archived pages of "www.fanucspares.com" were obtained. These archive pages show offerings of spares from FANUC as well as from other competitors of Complainant such as Eikon, Daewoo Puma, Nakamura, Chiron, Hitachi Seiki, Kitamura, Bridgeport, etc. In the Panel's opinion, this is further evidence supporting Complainant's contention that Respondent has been using these domain names to lure Internet users, presumably looking for Complainant's products, spare parts and repair services, into Respondent's own website were products and services competing with those from Complainant were being offered. This violates the Oki Data standard that the website at the disputed domain names should be used to sell only the trademarked goods. See WIPO Overview 2.0, paragraph 2.3. Accordingly, the Panel believes that Respondent's use of the disputed domain names <fanucspares.com> and <fanuc-repairs.repair> does not appear to be connected with a bona fide offering of goods or services under Policy paragraph 4(c)(i). As Complainant's FANUC mark is being used to attract Internet users presumably looking for Complainant's goods and services and lure them into Respondent's website where competing goods and services are being offered for profit, the Panel believes this use is not a fair or legitimate noncommercial use pursuant to Policy paragraph 4(c)(iii). Finally, since according to the existing records in the corresponding WhoIs databases the registrants are Mr. Ginley and/or Pennine Automation Spares, Policy paragraph 4(c)(ii) clearly does not apply.
In absence of any submission in favor of Respondent, the Panel concludes that Complainant has made out its case that Respondent lacks any rights or legitimate interests in the disputed domain names.
D. Registered and Used in Bad Faith
Given that Respondent has registered the three disputed domain names, and has been using two of them as described in section 6.C. above, the Panel believes that Respondent, a person/company active in the business of providing spare parts and repairing inter alia FANUC apparatus and equipment, as well as providing goods and services in relation to Complainant's competitors, knew of, and had Complainant's FANUC mark, goods and services in mind at the moment of registering each of the three disputed domain names. Also, the registrations of Complainant's FANUC mark in the United Kingdom pre-date the registration of the disputed domain names by many years. See section 4 above. In the Panel`s opinion, these facts indicate that the registration of the disputed domain names was in bad faith.
1) Bad faith use of the disputed domain name <fanuc-spares.com>.
The Panel notes that as shown above the disputed domain name <fanuc-spares.com> does not resolve in any active website. As established in the most cited Telstra Corporation Limited v. Nuclear Marshmallows case, supra, this in itself does not mean that this domain name is not being used in bad faith. See WIPO Overview 2.0 ("[T] he apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith.")
Moreover, as contended by Complainant and described above, Respondent has been using the disputed domain name <fanucspares.com>, which is almost identical to <fanuc.spares.com>, to attract, confuse and profit from, Internet users seeking Complainant, its products and/or spare parts for Complainant's products, while offering them, at the same time, spare parts and/or other goods or services form competitors of Complainant. Since Complainant's FANUC mark and products are sufficiently well-known in the CNC sector, the Panel believes that the most plausible use that Respondent may have contemplated for the disputed domain name <fanuc-spares.com> was most likely the same it made of the other two disputed domain names, i.e., a use in bad faith.
2) Bad faith use of the disputed domain names <fanucspares.com> and <fanuc-repairs.repair>.
As shown in Section 6.C. above, until recently the disputed domain names <fanucspares.com> and <fanuc-repairs.repair> have been used, by re-directing them to the website "www.fanuc.pennineuk.com" to offer goods and services related to spare parts and repair services not only for Complainant's FANUC products but also for the products of several of Complainant's competitors. This means that Respondent, by using the disputed domain names <fanucspares.com> and <fanuc-repairs.repair> as described above, has intentionally attempted to attract, for commercial gain, Internet users presumably looking for Complainant's products and services covered by the FANUC mark to Respondent's website or other on-line location, by creating a likelihood of confusion with Complainant's FANUC mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on its website or location, which is a circumstance of registration and use in bad faith, pursuant to Policy paragraph 4(b)(iv).
Accordingly, the Panel finds that the disputed domain names have been registered and are being used in bad faith.
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 names, <fanuc-repairs.repair>, <fanuc-spares.com> and <fanucspares.com>, be transferred to the second Complainant, FANUC UK Limited.
Date: October 27, 2015