WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Eton Systems AB v. Per Bringle

Case No. D2017-1830

1. The Parties

The Complainant is Eton Systems AB of Gånghester, Sweden, represented by Ports Group AB, Sweden.

The Respondent is Per Bringle of Alpharetta, Georgia, United States of America (“United States”), represented by David Trippe, United States.

2. The Domain Name and Registrar

The disputed domain name <etonsupport.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 20, 2017. On September 21, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 22, 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 October 4, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 24, 2017. The Response was filed with the Center on October 19, 2017.

The Center appointed Alistair Payne as the sole panelist in this matter on October 30, 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.

4. Factual Background

Eton Systems is a global provider of handling systems consisting of individually addressable product carriers. Headquartered in Sweden, it has provided 4000 systems under the ETON name or mark in 60 countries since commencing business in 1967. The Complainant has owned registered trade marks for its ETON mark since 1992 and in particular trade mark registration number 2689048 filed in 2000 in Class 7 in the United States.

The Respondent was employed by the Complainant for many years and in 2007 was relocated to the United States where he was employed by the Complainant’s subsidiary company Eton Systems Inc. In 2010 an agreement between Eton Systems AB and the Respondent’s company Eton Support US LLC (“the Agreement”) was signed which allowed the Respondent to use the word “Eton” as part of its legal name during the currency of the Agreement. In this Agreement the Respondent acknowledged ETON as a trade mark owned by the Complainant. The Agreement was terminated on May 13, 2016.

The disputed domain name was registered by the Respondent on August 17, 2010, and redirects to a website with links to a competing website at “www.shopfloor.com”.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name is identical to the Complainant’s ETON trade mark with the addition of the generic term “support”. The Complainant says that the disputed domain name is therefore confusingly similar to the Complainant’s registered trade mark.

The Complainant submits that following the termination of the commercial sales agreement between the Respondent’s company and the Complainant, neither that company nor the Respondent has any right to use the “Eton” name or any of the ETON trade marks owned by the Complainant. It says that the Respondent is neither a current licensee nor distributor of the Complainant and the Complainant has not given the Respondent any permission to use the trade mark in the disputed domain name. Neither is there any evidence that the Respondent has been commonly known by the disputed domain name.

The Complainant also says that there is no evidence of demonstrable preparations by the Respondent to use the disputed domain name in connection with a bona fide offering of goods or services. What the Respondent is instead doing is using the Complainant’s reputation and well known trademark to attract consumers to the Respondent’s new website. According to the Complainant none of this conduct is bona fide or legitimate.

The Complainant notes that the disputed domain name was registered in 2010, the same year that the Respondent signed the Agreement with the Complainant allowing the Respondent to use the name ETON and it is therefore obvious that the Respondent was well aware of the Complainant’s trade marks and business when it registered the disputed domain name and that the Complainant first used the ETON mark many years previously.

It notes that under the terms of the Agreement that the Respondent is not entitled to continue use of the ETON mark or of the disputed domain name. It claims that when ex-employees or contractors hold on to a domain name registered in their individual names following termination of such a contract that previous panels have found this to amount to registration and use of the disputed domain name in bad faith.

The Complainant says that the Respondent is now using the disputed domain name to redirect to a website that features links that redirect visitors to another competing online site. Such use has previously been considered as bad faith under the Policy, see Simple Abilities Inc. v. Jeff Hoogveld and Adaptivies Abilities Inc., WIPO Case No. D2006-0143 and The Glorya Kaufman Dance Foundation and Glorya Kaufman v. Carolyn B. Baker & Associates and “Glorya Kaufman Dance Foundation,” formerly Domains By Proxy, Inc., WIPO Case No. D2010-0034. Such use, says the Complainant, also indicates that the Respondent, by using the ETON mark, has intentionally attempted to attract for commercial gain, Internet users to the Respondent’s new online location, by creating a likelihood of confusion with the Complainant’s mark alternatively to endorse the Respondent new website. This, says the Complainant, is evidence of registration and use in bad faith under the Policy.

B. Respondent

The Respondent submits that it is using the name “Etonsupport”, which is not a registered mark of the Complainant, who only uses “ETON” as a singular mark in relation to its machines for cutting fabric. It says that “Eton” is a commonly used name for many products and services that do not compete with the Complainant’s products and services. The Respondent notes that a random Internet search discloses: schools, deserts, a town in Murray County, Georgia state (in the United States), electronic devices sold on Amazon and many more. The Respondent denies that its use of the disputed domain name violates any agreements with the Complainant or any of the Complainant’s registered marks or other property rights to its use of “Eton”. The Respondent asserts that he has not and does not use the disputed domain name to compete with the Complainant.

As far as rights or legitimate interests are concerned, the Respondent says that its use of the disputed domain name does not reference the Complainant or the Complainant’s products. It says that the Complainant has not registered and does not own the disputed domain name as a mark and neither did the Complainant ever have any connection with this or a similar domain name prior to its agreement with the Respondent. He notes that the words “Eton” and “support” together are not exclusive to the Respondent and that an electronic company, Eton, formerly Lextronix, that partners with the Red Cross and sells electronic devices is found on the Internet under “Eton Support”. The Respondent’s use of the disputed domain name does not mislead the Complainant’s customers or divert its customers because the Respondent does not have any connection with any products or services that compete with the Complainant.

In terms of bad faith, the Respondent submits that the disputed domain name has not been registered as a trade mark. Secondly, he says that the Respondent’s use of the disputed domain name is not in bad faith because the Respondent does not compete with the Complainant.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has demonstrated that it owns registered trade mark rights for its ETON mark since 1992 and in particular trade mark registration number 2689048 filed in 2000 and registered on February 18, 2003 with the United States Patent and Trademark Office.

The disputed domain name wholly incorporates the Complainant’s ETON mark followed by the common English word “support”. The dominant and distinctive element of the disputed domain name is the trademark ETON and the addition of the generic word “support” does not distinguish the disputed domain name from the Complainant’s ETON mark. As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered ETON trade mark and the Complaint succeeds under the first element of the Policy.

B. Rights or Legitimate Interests

The Respondent was employed by the Complainant for many years and in 2007 was relocated to the United States where he was employed by the Complainant’s subsidiary company Eton Systems, Inc. In 2010 an Agreement between the Complainant and the Respondent’s company Eton Support US LLC was signed which at clause 5.2 allowed the Respondent’s company to use the word or mark “Eton” as part of its legal name and in the course of its sales activities during the term of the Agreement. The Respondent registered the disputed domain name in his own name in August 2010 for use in the course of his company’s business but continued to maintain the disputed domain name and to use it after termination of the Agreement in November 2015. At clause 5.2 of the Agreement mentioned above the Respondent acknowledges that it has no interest in the Complainant’s trade marks and the clause expressly confirms that the licence to use the ETON mark will automatically terminate upon termination of the Agreement. As a result, the Respondent’s company and by extension the Respondent who only registered the disputed domain name during and as a consequence of his company’s commercial relationship with the Complainant, has no legitimate interests or rights after that date to use the Complainant’s ETON mark.

The Respondent says that it is not using the ETON mark but rather is using the term “Etonsupport” in the disputed domain name. However, the disputed domain name wholly incorporates the ETON mark and as noted earlier, this is the distinctive element of the disputed domain name. Therefore, the Panel does not accept the Respondent’s submission in this regard.

Furthermore, the Respondent claims that as an electronic company he is selling electronic devices and not selling products which compete with the Complainant’s goods. However, the Panel finds that the Respondent’s products relate to the same business as the Complainant.

Previous panels have applied the factors from Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 in determining whether a former distributor or licensee has rights or legitimate interests in a domain name. In this case the panel set out four minimum factor requirements in deciding whether the respondent in that case was making a bona fide use of the disputed domain name:

- “Respondent must actually be offering the goods or services at issue”;

- “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”;

- “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”;

- “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.”

Applying these factors, it is immediately apparent (as further discussed under Section 6 C below) that the Respondent is using the disputed domain name to redirect to a website that features links that redirect visitors to a competing online site from which different products are sold. This amounts to baiting Internet users and switching them to other goods in terms of the first and second factors noted above. As a result, the Oki Data factors have not been satisfied and the Panel finds that the Complainant has made out its case that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The disputed domain name was registered in August 2010 just prior to December 2010 when the Respondent signed a commercial sales agreement with the Complainant which also allowed the Respondent to use the name and mark ETON in the course of carrying out activities under the Agreement. In breach of the terms of the Agreement the Respondent did not cease to use the ETON trade mark and did not de-register the disputed domain name following the termination of this Agreement.

In The Glorya Kaufman Dance Foundation, supra, the panel found that ex-employees or former directors holding on to domain names registered in their individual names after their separation from the former employer amounted to bad faith registration. This is in line with the views expressed in other cases in which UDRP panels have repeatedly held that the registration of a trade mark-related domain name by an employee with knowledge of the trademark owner’s rights in the mark constitutes bad faith registration and use. See for example Savino Del Bene Inc. v. Graziano Innocenti Gennari, WIPO Case No. D2000-1133 and more recently Piyush Kumar Parekh and Purvi Piyush Parekh v. Avanish Prasad, WIPO Case No. D2017-1252.

In the current case it is clear that the Respondent was well aware of the Complainant’s use and rights in the ETON mark when it registered the disputed domain name. It subsequently failed to cease use and to de-register the disputed domain name after termination of the Agreement between the parties and even after receipt of a cease-and-desist letter from the Complainant on September 1, 2017, which amounts in the Panel’s view to registration in bad faith.

Under paragraph 4(b)(iv) of the Policy there is deemed evidence of registration and use of a disputed domain name in bad faith where it is found that the Respondent has intentionally attempted to attract Internet users for commercial gain to its website by creating a likelihood of confusion as to source, sponsorship, affiliation or endorsement. There is clear evidence on the record in this case that the Respondent has continued to use the disputed domain name containing the ETON mark after the date of termination of the Agreement with the Complainant. Screen shots of the website to which the disputed domain name resolves, both before and after the date of termination, show that the Respondent’s use of the disputed domain name has changed very little and the Complainant asserts that links on the site then redirect Internet users to another competing website which the Panel finds offers products and services related to the same business as the Complainant’s. This amounts to intentionally attracting Internet users for commercial gain to the Respondent’s website by creating a likelihood of confusion as to source, sponsorship, affiliation or endorsement with the Complainant’s ETON mark in terms of paragraph 4(b)(iv) of the Policy.

The Respondent’s conduct in failing to cease use of the disputed domain name containing the Complainant’s ETON mark in terms of his company’s contractual obligation and then in using it to redirect Internet users to links for related products in its own commercial interests, amounts to a classic example of cybersquatting in bad faith under the Policy. As a result, the Panel finds that the Complaint succeeds in relation to the third element of the Policy.

7. Decision

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 <etonsupport.com> be transferred to the Complainant.

Alistair Payne
Sole Panelist
Date: November 7, 2017