WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ABBT Netherlands B.V. v. Oliver Miessler, Miessler Automotive GmbH & Co KG
Case No. D2015-2378
1. The Parties
The Complainant is ABBT Netherlands B.V. of ‘s-Hertogenbosch, the Netherlands, represented by Legal Experience Advocaten, the Netherlands.
The Respondent is Oliver Miessler, Miessler Automotive GmbH & Co KG, of Gernsbach, Germany, represented by Brennecke & Partner Rechtsanwälte, Germany.
2. The Domain Name and Registrar
The disputed domain name <air-suspension-shop.com> is registered with RegistryGate GmbH (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 31, 2015. On January 4, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 12, 2016, 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.
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”).
The Complaint was submitted in English. According to the Registrar, the language of the Registration Agreement is German. On January 14, 2016, the Complainant requested English as the language of proceedings. The Respondent submitted a request for German as the language of proceedings on January 18, 2016. The Center proceeded to communicate with the parties in English and German.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint in English and German, and the proceedings commenced on January 20, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 9, 2016. Upon request of the Respondent, the Center extended the Response due date until February 13, 2016 in accordance with the Rules, paragraph 5(b). The Response was filed with the Center on February 12, 2016.
The Center appointed Tobias Zuberbühler as the sole panelist in this matter on February 17, 2016. 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 (trading under the name Arnott Europe) is a distributor of air suspension products in Europe. Arnott is a global industry leader in manufacturing quality aftermarket air suspension products and accessories. The Complainant is the owner of the domain names <airsuspensionshop.com> (registered on March 3, 2010), <airsuspensionshop.eu> (registered on March 4, 2010) and <airsuspensionshop.nl> (registered on May 9; 2015). The Complainant has no registered trademark.
The Complainant used to sell air suspension products to the Respondent, which registered the disputed domain name on August 20, 2010 and advertises its own services and products of the Complainant’s competitors on the corresponding website.
5. Parties’ Contentions
In summary, the Complainant asserts the following:
The Complainant is entitled to the trade name and has common law rights in the mark “airsuspensionshop” because it has been using the domain names <airsuspensionshop.com>, <www.airsuspensionshop.eu> and <airsuspensionshop.nl> since 2010. The mark “airsuspensionshop” has become a distinctive identifier associated with the Complainant and/or its good and services. The marketing activities relating to the Complainant’s domain names demonstrate substantial use over a reasonable period. Furthermore, the Complainant’s domain names generated substantial traffic and there is sufficient evidence of third party use of “airsuspensionshop” to identify the trademark with the Complainant’s goods and services. The Complainant has therefore proven that it has established secondary meaning in respect of “airsuspensionshop”. Insofar as the secondary meaning should only exist in a small geographic area, this does not limit the Complainant’s rights in a common law trademark. Finally, unregistered rights can arise even when the complainant is based in a civil law jurisdiction.
The disputed domain name fully incorporates the dominant elements of the Complainant’s trademark. The hyphenation of the words “air-suspension-shop” must be disregarded in assessing the similarity between the relevant trademark and the disputed domain name.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not been granted any license or other authorization to use the Complainant’s trademark rights in the disputed domain name. Furthermore, the Respondent does no longer form any part of the Complainant’s distribution network.
The disputed domain name was therefore registered in bad faith and was without any doubt used in bad faith afterwards. The Respondent was already aware of the importance of the trademark rights of the Complainant at the time of registration of the disputed domain name and is using the disputed domain name to attract Internet users to the Respondent’s website where goods of the Complainant’s competitors are offered.
In summary, the Respondent contends the following:
The Complainant cannot rely on any (registered or unregistered) trademark rights, because the terms “air”, “suspension” and “shop” are generic words in the public domain which cannot be protected by any trademark rights. On the other hand, the Respondent has a proper interest in using these English terms due to its presence on the international market. In any event, the Complainant has forfeited any trademark rights by waiting more than 5 and a half years to assert its claims.
The Respondent is generating a substantial part of its profits via the web shop under the disputed domain name. The website has approximately 1,000 visits per day.
Finally, the disputed domain name was registered upon consultation of the Complainant to attract interest for the Complainant’s products in the German market.
6. Discussion and Findings
A. Language of the Proceedings
According to information provided by the Registrar, the language of the registration agreement is German. The Complainant has filed its Complaint in English and submitted a request for English to be the language of proceedings, considering that the parties regularly communicated in this language. The Respondent filed its Response in German and requested for the proceedings to be conducted in this language.
Paragraph 11(a) of the Rules provides that the language of the administrative proceedings shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. Considering that both parties evidently understand English and the Respondent’s website is also available in that language and the Respondent has not been prejudiced in that he submitted a German Response, which the Panel is capable of understanding, the Panel will issue the decision in English.
B. Identical or Confusingly Similar
This element of the Policy raises two issues: (1) whether the Complainant has rights in a trademark and (2) whether the disputed domain name is identical or confusingly similar to such trademark or service mark.
As to the first question, according to the consensus view of UDRP panelists, to successfully assert common law or unregistered trademark rights, the complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition 1.7 (“WIPO Overview 2.0”)). Relevant evidence of such “secondary meaning” includes the length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant’s rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, 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. Some panels have also noted that in cases involving claimed common law or unregistered trademarks that are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness.
In Annex 3 to the Complaint, the Complainant has submitted material showing the use of <airsuspensionshop.eu> for email addresses and communication, promotional material and stationary displaying a logo “AirSuspension shop.eu” and several invoices issued by the entity “Airsuspensionshop.eu”. Whether the generic term “airsuspensionshop” is overwhelmingly attributable to the Complainant in the areas where it is doing business is difficult to assess on the basis of the evidence submitted by the Complainant, since it has not provided any specific evidence as to the length and amount of sales under the trademark, the nature and extent of advertising, nor any conclusive evidence in the form of consumer surveys or media recognition. It must also be taken into account that the Complainant is marketing its products under the trademark “Arnott” and “Arnott Europe” including corresponding logos on its websites, while the logo “AirSuspension shop.eu” is not displayed anywhere.
Considering further that a complainant claiming unregistered trademarks comprised of descriptive words (as in the case at hand) might have a greater onus to present compelling evidence, the Panel finds that the Complainant has not fulfilled its burden of proof to demonstrate a secondary meaning of “air suspension shop” in a sense that the Complainant would be distinctively associated with this term.
Therefore, the Panel finds that the Complainant has not established common law or unregistered trademark rights for purposes of the Policy in the term “air suspension shop” based on the evidence before the Panel in this case and thus has not fulfilled paragraph 4(a)(i) of the Policy.
Against this background, the Panel does not have to examine whether the disputed domain name is confusingly similar to the asserted trademark rights of the Complainant; nor does it have to decide whether the second and third element of the Policy are fulfilled.
The Panel is mindful of the fact that the Respondent is a former customer of the Complainant, and that the registrations are intended to draw traffic from the Complainant; particularly given the findings under the first element though, the Panel finds this question of potential unfair competition better addressed in a court.
For the foregoing reasons, the Complaint is denied.
Date: February 25, 2016