WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Touratech AG v. Rui Baltazar, Touratech-Portugal, Lda
Case No. D2016-0079
1. The Parties
The Complainant is Touratech AG of Niedereschach, Germany, represented by Bruno Braga da Cruz, Portugal.
The Respondent is Rui Baltazar, Touratech-Portugal, Lda of Lisbon, Portugal, self-represented.
2. The Domain Name and Registrar
The disputed domain name <touratech-portugal.com> is registered with Wild West Domains, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 14, 2016. On January 15, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date 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").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 9, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 29, 2016. The Response was filed with the Center on February 19, 2016.
The Center appointed Alistair Payne as the sole panelist in this matter on February 26, 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 is a German based company operating in the motorcycle accessories and adventure travel market that has been in existence for 25 years and now has a presence in 45 countries. It owns a German trade mark registration for TOURATECH filed on June 2, 2000 and it also owns a Community Trade Mark registration for this mark filed on November 27, 2000. The Complainant has also owned the domain name <touratech.com> since December 15, 1988 from which it operates its main website.
In September 2014 the Respondent entered into an exclusive distribution agreement with the Complainant for Portugal.
The disputed domain name was registered on February 24, 2004.
5. Parties' Contentions
The Complainant submits that it owns registered trade mark rights in the TOURATECH name and mark as set out above and that the disputed domain name is confusingly similar to its registered trade mark and that the inclusion of the geographic term "Portugal" does not distinguish the disputed domain name.
It says that, although the Respondent was appointed as exclusive distributor of its products and services in Portugal in September 2014, it was never authorised to register the disputed domain name and that the distribution agreement expressly prohibited the Respondent from doing so.
On April 15, 2015, and following the termination of the distribution contract, the Complainant says that it sent a cease and desist letter to the Respondent requesting that it cease use of the TOURATECH trademark and related properties including the disputed domain name. It simultaneously requested the Respondent to transfer the disputed domain name to it within 7 days of receipt of the cease and desist letter however the Respondent has never provided undertakings or transferred the disputed domain name.
The Complainant says that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services and it has not been commonly known by the disputed domain name. Neither says the Complainant is it making a legitimate noncommercial or fair use of the disputed domain name. Instead, according to the Complainant, the Respondent is using the disputed domain name to mislead and divert Internet users, by means of re-directing the disputed domain name to another website.
The Complainant asserts that the disputed domain name redirects Internet users to another website of the Respondent at "www.balgarpir.com" from which it offers products and services that compete with the Complainant's. The Complainant says that the Respondent is intentionally re-directing and attracting, for the purpose of commercial gain, Internet users to this website, by creating a likelihood of confusion with the Complainant's mark, in terms of paragraph 4(b)(iv) of the Policy.
It says that the Respondent knew of the Complainant's business and rights at the time of registration of the disputed domain name and that contrary to the terms of the distribution agreement it has subsequently refused to cease use of the Complainant's mark in the disputed domain name and is now disrupting the Complainant's business.
The Respondent made an email filing on February 19, 2016 that it subsequently confirmed on February 23, 2016 should be considered as its response. In summary the Respondent submitted copies of company documents in Portuguese showing that it is a registered Portuguese company that appears to have been operating under the name Touratech Portugal LDA for some years and at least since 2009. It also submitted that it uses the website to which the disputed domain name resolves for its own commercial purposes.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns registered trade mark rights in its TOURATCH mark as set out above, both in Germany and in the European Community. The disputed domain name wholly incorporates the highly distinctive TOURATECH mark owned by the Complainant. It only differs from the Complainant's registered trade mark by the addition of a hyphen and the geographical term "Portugal". These additions do not distinguish the disputed domain name from the Complainant's mark and the Panel therefore finds that the disputed domain name is confusingly similar to the TOURATECH mark in which the Complainant has rights in terms of the Policy. As a result the Panel finds that the Complaint succeeds under this element of the Policy.
B. Rights or Legitimate Interests
The Complainant has submitted that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services and it has not been commonly known by the disputed domain name. It also says that the Respondent is neither making a legitimate or a noncommercial or fair use of the disputed domain name. Rather says the Complainant, the Respondent is using the disputed domain name to mislead and divert Internet users, by means of re-directing the disputed domain name to another website and has acted in an illegitimate manner by refusing after termination of its distribution agreement with the Complainant to cease use of the TOURATECH mark and of the disputed domain name.
In the context of distribution arrangements between a complainant and respondent, the panel in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 set out four minimum factor requirements in helping to decide whether a respondent was possibly making a bone fide use of the disputed domain name, or not:
"Respondent must actually be offering the goods or services at issue. E.g,. World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306 (respondent failed to show demonstrable preparations to use the domain name in connection with a bona fide offering);
- Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods. Nikon, Inc. v. Technilab, WIPO Case No. D2000-1774 (use of Nikon-related domain names to sell Nikon and competitive cameras not a legitimate use); Shigeki Kanao v. J.W. Roberts Co., CPR No. 0109 (bait and switch is not legitimate).
- The site must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents. E.g., Houghton Mifflin Co. v. Weatherman, Inc., WIPO Case No. D2001-0211 (no bona fide offering where website's use of Complainant's logo, and lack of any disclaimer, suggested that website was the official Curious George website); R.T. Quaife Engineering v. Luton, WIPO Case No. D2000-1201 (no bona fide offering because domain name <quaifeusa.com> improperly suggested that the reflected site was the official U.S. website for Quaife, an English company; moreover, respondent's deceptive communications with inquiring consumers supported a finding of no legitimate interest); Easy Heat, Inc. v. Shelter Prods., WIPO Case No. D2001-0344 (no bona fide use when respondent suggested that it was the manufacturer of complainant's products);
- The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name. Magnum Piering, Inc. v. Mudjackers, WIPO Case No. D2000-1525 ("a single distributor is extremely unlikely to have a legitimate interest in precluding others from using numerous variants on a mark")."
In the instant case the exclusive distribution arrangement between the parties has terminated. It is notable that it was an express term under section 10, paragraph 5 of the distribution contract that the Respondent may use a country specific domain name during the period of the contract, but upon termination must transfer it to the Complainant. By its letter of April 15, 2015 and after termination of the distribution agreement, the Complainant requested that the Respondent should transfer the disputed domain name within 7 days but it has subsequently failed to do so and has offered no explanation as to why it has not done so, except that the disputed domain name is important to it commercially.
An analysis of the Oki Data factors indicates that the Respondent is not currently and has not for some time after termination offered the Complainant's products for sale under the disputed domain name. It has however maintained use of the disputed domain name after termination in order to divert Internet users arriving at the disputed domain name to its own site from which it offers alternative goods or services. This is not bona fide use in terms of the Oki Data factors or in terms of its contractual obligations with the Complainant and therefore the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and the Complaint also succeeds under this element of the Policy.
C. Registered and Used in Bad Faith
Following termination of the distribution arrangement between the parties in 2015, the Respondent has made the disputed domain name redirect Internet users to a website belonging to the Respondent at "www.balgarpir.com" from which it offers products and services that compete with the Complainant's products. The Complainant says that the Respondent is intentionally re-directing and attracting, for the purpose of commercial gain, Internet users to this website, by using the disputed domain name to create a likelihood of confusion with the Complainant's mark, in terms of paragraph 4(b)(iv) of the Policy. The Respondent has offered no credible explanation for its use of the disputed domain in this way and the Panel finds that the requirements of this section are fulfilled and that under the Policy this amounts to evidence of registration and use in bad faith.
The Complainant states that the Respondent registered the disputed domain name in 2004. The "WhoIs" indicates a creation date in 2004. The Respondent has not commented on these facts. The Complainant had commenced its business well prior to this date and had also registered its Community Trade Mark for TOURATECH by this time. This mark is unusual and distinctive and the Panel infers that the Respondent was aware of the Complainant's business and mark and registered the disputed domain name for its own purposes. It appears that the Respondent sought to regularise this position some years later in the context of the formal distribution agreement but following termination failed to transfer the disputed domain name as it is obliged to do and instead has chosen in bad faith to divert Internet users to its own website for the purpose of selling competing products. The Panel finds that in these circumstances there is sufficient evidence on the balance of probabilities of bad faith which is only reinforced by the Panel's findings under paragraph 4(b)(iv) as noted above.
Accordingly, the Complaint also succeeds under this element of the Policy.
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 <touratech-portugal.com> be transferred to the Complainant.
Date: March 7, 2016