WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Crestron Electronics, Inc. v. ATTN: crestronasia.com, Domain Discreet Privacy Service / Transtrade Hong Kong Co. Limited (formerly known as Crestron Asia Limited)
Case No. D2017-0777
1. The Parties
The Complainant is Crestron Electronics, Inc. of Rockleigh, New Jersey, United States of America (“United States”), represented by Ballard Spahr, LLP, United States.
The Respondent is ATTN: crestronasia.com, Domain Discreet Privacy Service of Jacksonville, Florida, United States / Transtrade Hong Kong Co. Limited (formerly known as Crestron Asia Limited) of Hong Kong, China, represented by Stevenson, Wong & Co., Hong Kong, China.
2. The Domain Names and Registrar
The disputed domain names, <crestronasia.com> (the “First Domain Name”), <crestronasia.asia> (the “Second Domain Name”) and <crestron.asia> (the “Third Domain Name”) (together the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 18, 2017. On April 18, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On April 19, 2017, 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 April 25, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 15, 2017. Upon the request of the Respondent of May 11, 2017 and May 18, 2017, the Response due date was extended to May 19, 2017 under paragraph 5(b) of the Rules, and to May 21, 2017 under paragraph 5(e) of the Rules respectively. The Response was filed with the Center on May 21, 2017.
The Center appointed Tony Willoughby as the sole panelist in this matter on June 6, 2017. 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.
On June 6, 2017, the Center received further submissions from the Complainant in response to the Center’s email dated May 22, 2017.
4. Factual Background
The Complainant is a New Jersey, United States based producer of home automation devices. The business was founded over forty years ago and is a substantial multi-million dollar company trading globally.
The Complainant is the registered proprietor of a large number of trade mark registrations around the world of or including the name “Crestron”. For present purposes it is necessary to mention only one of them, namely United States Registration No. 1324244 CRESTRON (typed drawing) registered March 12, 1985 (application filed April 23, 1984) in class 9 for various remote control systems and related apparatus.
The Respondent was incorporated in Hong Kong, China on February 7, 1991 under the name Ango Engineering Consultants Limited. It changed its name on October 26, 1995 to “Crestron Asia Limited”, since when it has been until January 2017 the sole distributor for the Complainant in various territories in South East Asia.
On November 1, 2003, the Parties formalized their relationship with a so-called “Representative Agreement” dealing with the way forward, which while expressed to endure for only three years, formed the basis for their continuing relationship until it was terminated by the Respondent in January 2017. The Representative Agreement featured a number of key terms regulating the Respondent’s use of the trade mark CRESTRON and the Respondent’s corporate name “Crestron Asia Limited”, all of which required advance approval of the Complainant.
From about 2015, it appears that the relationship between the Parties, which had been a very close one, akin to a “partnership” according to an affirmation dated January 27, 2017 filed by the Complainant in proceedings between the Parties in Hong Kong, China, began to fall apart, resulting in the Respondent terminating the Representative Agreement by a ninety day notice delivered by letter on October 17, 2016.
The First Domain Name was registered on February 9, 1999, the Second Domain Name was registered on February 15, 2008 and the Third Domain Name was registered on March 21, 2008. The Panel has been unable to find any active website connected to any of the Domain Names and no screenshots have been provided by either Party.
5. Parties’ Contentions
The Complainant contends that the Domain Names are identical or confusingly similar to the Complainant’s CRESTRON trade mark, that the Respondent has no right or legitimate interest in respect of the Domain Names and that the Domain Names have been registered and are being used in bad faith by the Respondent.
The Respondent denies all the Complainant’s contentions. The Respondent contends that when the Domain Names were registered it obtained the consent of the Complainant.
It further contends that the websites connected to the Domain Names “do not bear any logo trade mark of the Complainant and/or involve any sale or promotion of goods and services. Neither did the Respondent adopt any of the trade mark of the Complainant in its business name.”
Further the Respondent contends that the Representative Agreement did not specify that upon termination “the Respondent would be required to transfer the domain name, which it had been using”.
Finally, the Respondent refers to the Hong Kong legal proceedings mentioned in Section 4 above and “submits that the current administrative proceeding taken out by the Complainant should be terminated, or at least suspended until determination of the Summons, pursuant to Paragraph 18(a) of the Rules”.
6. Discussion and Findings
A. Preliminary Issues
Termination or Suspension
The Respondent seeks termination or suspension of this administrative proceeding on the basis of the litigation commenced in Hong Kong, China by the Complainant, which according to the Respondent is scheduled to come before the Court on November 7, 2017. A Summons filed by the Complainant in the Hong Kong court on January 27, 2017 sought an order requiring the Respondent to “take down the website hosted at www.crestonasia.com and take all necessary steps to transfer the domain name <crestonasia.com> and any other domain names which it may hold which contain any of the Crestron Trade Marks to the Plaintiff”.
This court case in Hong Kong, China appeared to be seeking the relief sought in this administrative proceeding, yet under section X of the Complaint headed “Other Legal Proceedings”, the Complainant stated “No proceedings”. The Panel is prepared to accept that this apparent mis-statement cannot have been with a view to deceiving the Panel, because, as appears in Section 4 above, the Complainant has annexed to the Complaint the Complainant’s affirmation in support of the Court Summons.
In any event, the Complainant has since clarified this aspect of the matter in a further filing by saying that it entered “no proceedings”, because by the time of the Complaint, the proceedings in question no longer concerned the Domain Names and now relate solely to issues of costs. Accordingly, it was not in fact a mis-statement.
Even if it were the case that the proceedings continue to seek transfer of the Domain Names, the existence of those proceedings is not of itself a bar to the Panel proceeding to a decision under the Policy, although the Panel has a discretion in the matter.
In this case the Panel can see no reason to terminate or suspend this administrative action, can readily deal with this case under the Policy and will proceed to a decision. The Respondent’s request for termination or suspension is denied. It should be stressed however that the criteria to be applied under the Policy (see paragraph B below) are not the same as those applied by a court in a trade mark infringement action.
Consent to Transfer
The Complainant contends that the Respondent has consented to the transfer of the First Domain Name relying upon a statement in the Respondent’s letter of October 17, 2016 terminating the Representative Agreement, in which the Respondent includes a list of matters to be handed over to the Complainant “to ensure a smooth transition”. One of those matters reads “www.crestonasia.com website, Facebook and Apps”.
In support of this claim the Complainant refers to Infonexx.Inc v. Lou Kerner, Wildsites.com, WIPO Case No. D2008-0434 (“Infonnex”) in which the panel in that case, having set out the terms of paragraph 4(a) of the Policy stated:
“However, this Panel considers that a genuine unilateral consent to transfer by the Respondent provides a basis for an order for transfer without consideration of the paragraph 4(a) elements. As was noted by the Panel in The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132, when the Complainant seeks the transfer of the disputed domain name, and the Respondent consents to transfer, the Panel may proceed immediately to make an order for transfer pursuant to paragraph 10 of the Rules. Accordingly, and in light of the parties’ stipulations set forth above, the Panel will order the transfer of the disputed domain name to the Complainant. This is clearly the most expeditious course. Id.; Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207.”
That case concerned a markedly different set of facts from the facts of this case. In that case the Respondent “expressly stipulate[d] and request[ed] that the domain name be transferred to the Complainant without findings under paragraph 4(a) of the Policy.” As the Complainant has acknowledged in the Complaint, the Respondent’s attitude to the Complainant changed markedly following the October 17, 2016 letter and far from consenting to transfer, the Respondent has responded to the Complaint, denied the Complainant’s claims and sought dismissal of the Complaint.
This is not a case where it can be said that the Respondent has unilaterally agreed to transfer of any of the Domain Names. Indeed, even on the terms of the October 17, 2016 letter it may be argued that what was being agreed to was transfer of the website rather than the First Domain Name.
The Panel is not satisfied that this is the kind of case where the Infonnex formula should be adopted.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove that:
(i) The Domain Names are 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 Domain Names; and
(iii) The Domain Names have been registered and are being used in bad faith.
Moreover, in writing its decision, the Panel has to have regard to paragraph 15(e) of the Rules and in particular the following sentence namely:
“If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at reverse domain name hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”
C. Identical or Confusingly Similar
The Respondent denies that the Domain Names are identical or confusingly similar to the Complainant’s trade mark, but gives no reasons why.
The Domain Names each feature within them the Complainant’s CRESTRON trade mark in its entirety. As such the Domain Names are identical or confusingly similar to the CRESTRON trade mark in which the Complainant has rights. See paragraph 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), which states:
“While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”
The Panel sees no reason to depart from the normal approach. The Panel finds that the Domain Names are identical or confusingly similar to a trade mark in which the Complainant has rights.
D. Rights or Legitimate Interests
If, as the Complainant contends, it is the case that, following termination of the Representative Agreement, the Respondent has no right to use the Complainant’s CRESTRON trade mark, then it is most unlikely that currently the Respondent has any right or legitimate interest in respect of the Domain Names, whatever may have been the position in the past. However, in light of the Panel’s finding under paragraph E below it is unnecessary for the Panel to address this issue.
E. Registered and Used in Bad Faith
The Complainant has annexed to the Complaint no fewer than 15 previous WIPO decisions under the Policy. One of them is Infonnex (see above) dealing with “Consent to Transfer”. The other 14 decisions to varying degrees all stress the need for a complainant to prove both bad faith registration and bad faith use of the domain name(s) in issue, a point recognized by the Complainant when reciting the terms of paragraph 4(a)(iii) of the Policy.
Thus, for example, in Drugstore.com, Inc. v. Nurhul Chee / Robert Murry, WIPO Case No. D2008-0230, the panel underlined the conjunctive nature of the requirement by italicizing the word “and” in the passage reading: “Complainant must show that the domain name was registered in bad faith and is being used in bad faith.” In Playboy Enters. International Inc. v. Joao Melancia, WIPO Case No. D2006-1106, the panel states: “The Panel finds that the domain name <playboyportugal.com> has been both registered and used in bad faith”. In Green Tyre Company Plc. v. Shannon Group, WIPO Case No. D2005-0877 (“Green Tyre”), one of the few cases cited by the Complainant, which involved a former licensee the panel had this to say: “Considering the Complainant’s explicit permission for registration of the Domain Name by the Respondent in the present case, the Panel finds that the Respondent did not have the requisite bad faith when it registered the Domain Name.”
For the purposes of this decision, the Panel concentrates solely upon the question of bad faith registration. If the Complainant cannot satisfy the Panel that the Domain Names were registered in bad faith, no amount of subsequent bad faith use will convert a good faith registration into a bad faith registration. As the panel went on to say in Green Tyre (above), a case upon which the Complainant relies:
“Furthermore, the Panel finds that the circumstances as mentioned by the Complainant which are of a later date than the registration of the Domain Name, cannot lead to the conclusion that the original registration in good faith in retrospective has become a registration in bad faith.”
In this context “registration in bad faith” normally refers to the registration of a domain name with a view to taking unfair advantage of the complainant’s trade mark in some way or in some way damaging the complainant’s business.
Accordingly, the questions to be resolved in relation to bad faith registration of the Domain Names involve the state of mind of the Respondent on February 9, 1999 when it registered the First Domain Name; on February 15, 2008, when it registered the Second Domain Name; and on March 21, 2008, when it registered the Third Domain Name. Was it the case or, failing direct evidence, is it likely to have been the case that on those dates or any of them, the Respondent’s purpose in registering the Domain Names in question was to take unfair advantage of the Complainant’s CRESTRON trade mark or in some way cause damage to the trade mark or to the Complainant’s business?
The Respondent states that it sought and obtained the Complainant’s permission to register each of the Domain Names, but produces no evidence in support. The Complainant states that “it is indisputable that Respondent registered the Disputed Domain Names”, but states unequivocally that it has no idea whether or not there was an agreement in place when the Respondent registered the First Domain Name.
The fact that there might have been an agreement in place in 1999 and that the Respondent might have registered the First Domain Name with the permission of the Complainant, could spell the end of the Complaint insofar as it concerns the First Domain Name. It is for the Complainant to prove its case, not for the Respondent to prove its defence.
In relation to the Second and Third Domain Names the only evidence before the Panel (apart from the bare assertion from the Respondent that it obtained the consent of the Complainant) is the Representative Agreement dated November 1, 2003, which preceded registration of those Domain Names. That agreement makes no mention of domain names, but does make it clear that the Respondent uses its corporate name, Crestron Asia Limited, under licence of the Complainant and that any uses of the CRESTRON trade mark must have the advance written approval of the Complainant. The Complainant appears to be contending that the Second and Third Domain Names were registered in breach of the Representative Agreement in that the Respondent did not have the requisite advance written approval.
There is no supported evidence of any kind from either Party as to the state of affairs at that time insofar as requests for permission and grants of permission are concerned. Thus the Panel is left to look at the situation in the round and assess the probabilities.
One clear piece of evidence comes from paragraph 17 of the Complainant’s affirmation filed in the Hong Kong court proceedings. Under the heading of “Performance of the Representative Agreement”, the Complainant’s Executive Vice President of Finance, who had been working for the Complainant since 2006, stated “Notwithstanding that Crestron Asia was an independent contractor/licensee of Crestron USA, the working relationship was very close and highly intertwined, with high levels of exchange of information. From a layman’s perspective, I would describe the relationship as working in ‘partnership’.”
It is in that context, the context of a close working intertwined relationship (in practical if not legal terms a relationship akin to a partnership) that the Panel asks (and answers) the following questions:
Is it likely that in 1999 when the Complainant gave permission for the Respondent to adopt the name, “Crestron Asia Limited”, it also gave the Respondent permission to register the First Domain Name, which did no more than reflect the name of the Respondent company in the “.com” generic Top-Level Domain, for use for the Respondent’s website? Yes.
Is it likely that in early 2008 when the “.asia” Top-Level Domain became available for general registration, the Respondent registered the Second and Third Domain Names (again doing no more than replicating the name of the business, but in the new “.asia” domain) for any reason other than for the benefit of the Respondent’s business, which was exclusively devoted to the marketing of the Complainant’s products? No.
If the Respondent had, as it claims, sought permission for the Domain Names at those dates, is there any conceivable reason why the Complainant would have refused permission? No.
If it had been the case that the Second and Third Domain Names had been registered at a time when the Parties’ relationship had begun to sour, then there would have been reason to suspect the Respondent’s motives, but on the evidence before the Panel the relationship between the Parties only began to deteriorate many years after the registration dates of the Domain Names. If there had been any evidence to show that during the course of the relationship around the time of the registration of the Domain Names, the Complainant had reason to believe that the Respondent had been acting in bad faith toward the Complainant, then again that might have been reason to question the Respondent’s motives in registering the Domain Names, but there is no evidence of that kind; quite the contrary, as can be seen from the above quoted passage from paragraph 17 of the affirmation filed in the Hong Kong court proceedings.
If, as the Complainant asserts, the Second and Third Domain Names were registered in breach of the terms of the Representative Agreement, that is a matter of contract law for the courts. It is certainly not an indication that the Respondent at that stage had any bad faith intent directed at the Complainant. Indeed, it might well have been regarded as negligent for the custodian of a name such as “Crestron Asia Limited”, not to have sought to protect the name in the “.asia” domain as soon as it became available for registration.
The Panel finds that the Domain Names were not registered in bad faith. Given that finding, the Panel does not need to consider the use made of the Domain Names on termination of the Representative Agreement.
The Complainant having failed to prove bad faith registration of the Domain Names, the Complainant has failed to establish to the satisfaction of the Panel that the Domain Names have been both registered in bad faith and used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
F. Reverse Domain Name Hijacking
In the view of the Panel this case should never have been launched. The Complainant’s court case in Hong Kong, China addresses the Complainant’s allegations of breach of contract, trade mark infringement and passing off and all those allegations raise legal issues stemming from the wording of the 2003 Representative Agreement, the wording of the October 17, 2016 letter and the Respondent’s post termination behaviour. None of it (apart from bare assertions) addresses the issue as to whether or not the Respondent was acting in bad faith when registering the Domain Names.
While the Complainant baldly states that “it is indisputable that the Respondent registered the Domain Names in bad faith […]”, no attempt has been made to address the state of play as at the dates of those registrations. The Respondent’s behaviour since October 2016 after the relationship began to deteriorate and so many years after the registration of the Domain Names cannot sensibly, in the context of the undisputed close relationship between the Parties at that time, reflect the Respondent’s intentions at the dates of registration. It is that post-2016 behaviour (allegedly misleading representations as to the Respondent’s status vis-a-vis the Complainant, continuing use of the “Crestron” name and declining to transfer the Domain Names) that has prompted the Complainant to take action, not any real belief that the Domain Names or any of them were in fact registered in bad faith.
The Complainant cannot claim to be unaware of the detail of the Policy and the relevant criteria. It has annexed to the Complaint 15 decisions under the Policy and the whole of the WIPO Overview of WIPO Panel Views on UDRP Questions, Second edition. It has demonstrated an awareness that dealing with former distributors who have registered the domain names in issue is not entirely straightforward given that the domain names in issue may well have been registered in good faith.
The Complainant cited three distributorship cases, namely Green Tyre confirming that subsequent bad faith use cannot render a good faith registration a bad faith registration; Those Characters From Cleveland Inc. v. User51235 (email@example.com ), WIPO Case No. D2006-0950, a case in which the respondent was not the licensee; and SPECS GmbH v. SPECS Scientific Instruments, Inc. d/b/a SPECS Technologies Corporation, WIPO Case No. D2009-0308, a case in which the facts are not entirely clear to the Panel, but from the complainant’s contentions as set out in the decision by the panel it appears that the domain names in issue may have been re-registered after the parties’ relationship had terminated and the domain name registrations had expired.
This case is not a case where the Complainant has put forward any argument that subsequent bad faith use should convert a prior good faith registration into a bad faith registration. Nor could it do so in the face of the Green Tyre case, which it cited. Despite the lack of any contemporaneous evidence supporting its argument and most starkly in the case of the First Domain Name where it acknowledges that it has no idea what the contractual situation was at the date of that registration, it has persisted in the bald assertion that those registrations were made in bad faith. The First Domain Name is the one, which should have alerted them to the fact that there was a serious fundamental problem in bringing a case under the Policy. First, they have acknowledged that there may have been an agreement in place between the Parties at that time in relation to that Domain Name. They simply do not know. Secondly, it would have been extraordinary if permission to use the corporate name did not include permission to use a similar name for a domain name to promote the business online. Thirdly, there is no evidence that complaint was ever raised in respect of that Domain Name or its use from date of registration to termination of the relationship some 18 years after the event. In the view of the Panel, the Complainant, which had clearly from the nature of the annexes made a close study of the previous case law under the Policy and the relevant criteria, either knew or ought to have known that it could not establish the third element, notwithstanding what it believed to be subsequent bad faith use of the Domain Names.
The Panel finds that the case was brought in bad faith.
For the foregoing reasons, the Complaint is denied.
Date: June 9, 2017