WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Krones AG v. Daniel Reagan, Technical Packaging Service, Inc.
Case No. D2019-0090
1. The Parties
The Complainant is Krones AG of Neutraubling, Germany, represented by Grünecker Patent Attorneys and Attorneys-at-Law, Germany.
The Respondent is Daniel Reagan, Technical Packaging Service, Inc. of South Burlington, Vermont, United States of America (“United States” or “US”), self-represented.
2. The Domain Names and Registrar
The disputed domain names <kronesequipment.com>, <kronesmachines.com>, <kronesrepair.com> and <kronesservice.com> (hereafter 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 January 16, 2019. On January 16, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On January 17, 2019, 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 January 21, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 10, 2019. The Response was filed with the Center on February 10, 2019.
The Center appointed Wolter Wefers Bettink, Alistair Payne and Frederick M. Abbott as panelists in this matter on February 25, 2019. The Panel finds that it was properly constituted. Each member of 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. Supplemental filings
Both the Complainant and the Respondent have submitted supplemental filings to the Center, prior to the appointment of the Panel. In accordance with paragraph 10 of the UDRP Rules the Panel determines the admissibility, relevance, materiality and weight of the evidence. In addition, paragraph 12 of the UDRP Rules expressly provides that it is for the Panel to request, in its sole discretion, any further statements or documents from the Parties it may deem necessary to decide the case. As set out in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.6, unsolicited supplemental filings are generally discouraged, unless specifically requested by the Panel.
UDRP panels have repeatedly affirmed that the party submitting an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response (e.g., owing to some “exceptional” circumstance). As the supplemental filings focus on the criteria for a legitimate interest in the Domain Names, while providing additional factual statements, the Panel has decided to accept them.
5. Factual Background
Based on the evidence and undisputed submissions of the Parties, the Panel establishes the following facts on which to base its decision in this case.
The Complainant is a packaging and bottling machine manufacturer, based in Germany. It was founded in 1951 and employs more than 15,000 people worldwide. The Complainant has an international network with more than 100 sites worldwide and a number of sales and services companies in various countries.
The Complainant owns the following registrations of the trade mark KRONES (hereafter together referred to as the “Trade Marks”):
- German trade mark No. 744 834 KRONES, registered on January 19, 1961;
- German trade mark No. 849 390 KRONES (word/figurative mark), registered on September 2, 1968;
- German trade mark No. 889 001 KRONES (word/figurative mark), registered on December 22, 1971;
- German trade mark No. 397 43 648 KRONES, registered on November 18, 1997;
- International trade mark registration No. 279 233 KRONES, registered on January 31, 1964 for Switzerland, Egypt, Liechtenstein, Morocco, Monaco, North Macedonia, Serbia, San Marino and Viet Nam ;
- International registration No. 1100042 KRONES, registered on April 21, 2011, for, inter alia, Albania, Armenia, Azerbaijan, Bhutan, Belarus, Switzerland, China, Egypt, European Union, Georgia, Ghana, Croatia, Israel, Iran (Islamic Republic of), Japan, Kenya, Republic of Korea, Kazakhstan, Kyrgyzstan, Liechtenstein, Republic of Moldova, Mexico, Morocco, Mozambique, North Macedonia, Russian Federation, Serbia, Singapore, Sudan, Turkmenistan, Turkey, Ukraine, Namibia, Norway, Uzbekistan, United States and Viet Nam;
- US trade mark No. 863488 KRONES, registered on January 14, 1969.
The Domain Name <kronesrepair.com> has been registered on August 29, 2006 and the other Domain Names on March 8, 2007.
The Domain Names resolve to a website under “www.technicalpackagingservice.com” where Technical Packaging Service, Inc. (“TPS”) offers services relating to machines and lines for the food, beverage and pharmaceutical industry, as well as parts and rebuilds for such equipment. The company is mentioned as “Registrant organization” in the WhoIs details for the Domain Names. The Respondent is the CEO and President of TPS. The home page of this website features the caption “Need help with your Krones?” and below that “See how we can help you!” with a click through button to “Services”, which, when clicked upon, leads to the “Services” page on which the services are described that the Respondent can deliver.
Under the tab “About us” on the home page it is explained that Brian Reagan, one of the founders of the Respondent, “is a packaging industry veteran with over 20 years of packaging experience. In addition to over 5 years with TPS, previous employers include James River Corporation and Krones, USA.” It is also stated: “Brian’s current specialty is labeling equipment and he has extensive expertise on all of the Krones labeling machines Brian’s experience on Krones labelers includes cold glue, hot glue, pressure sensitive and Contiroll. He traveled to Krones headquarters in Germany on two occasions to receive training on new technologies (…) Brian has traveled the country servicing Krones equipment and has a long list of satisfied customers.”
In addition, it is stated on this web page: “We specialize in servicing Krones labelers and our work includes both major rebuilds and routine maintenance.”
6. Parties’ Contentions
The Complainant submits that the Domain Names are confusingly similar to the Trade Marks as they consist of the KRONES mark in its entirety, with the addition of the terms “machines”, “equipment”, “repair” and “service”. According to the Complainant these additional words are merely descriptive for the concerned goods and services and therefore not sufficiently distinctive to distinguish the Domain Names from the Trade Marks. In addition, the Complainant points out that the applicable Top-Level Domain suffix “.com” in the Domain Names is to be disregarded since it is a technical registration requirement.
The Complainant states that neither the Respondent nor the company TPS are official distributors of the Complainant and are not authorized otherwise by the Complainant to use any of the Trade Marks. The Complainant submits that the Respondent does not hold a trademark for KRONES or any similar trademark, nor is there evidence that the Respondent is commonly known by the Domain Names or any similar name. Furthermore, according to the Complainant there is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Names in connection with a legitimate noncommercial use.
The Complainant submits that the Respondent must have known the Complainant and his reputation at the time the Domain Names have been registered, as such registration took place long after the Complainant’s adoption and use of the Trade Marks. In addition, the Complainant contends, the fact that on the website under “www.technicalpackagingservice.com”, to which the Domain Names redirect, the phrase “Need Help with your Krones” is written, while it can be read there that one of the two founders of TPS used to be employed by Krones USA indicates an awareness of the Complainant and its rights in the Trade Marks at the time of registration of the Domain Names.
According to the Complainant, this shows that the Respondent must have been aware that the Domain Names would attract Internet users interested in the Complainant’s products and services for such products and that it uses the Domain Names to attract customers, and then attempts to offer its own services. The Complainant puts forward that the absence of any disclaimer on the website as to the relationship between the Respondent and the Complainant means that the Respondent both creates and benefits from any confusion customers may experience when wondering whether they are looking at the website of an authorized dealer or service partner of the Complainant. By using domain names that imply a connection with the Complainant, the Complainant’s machines and related services, the Respondent in the view of the Complainant has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant and the Complainant’s Trade Marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites.
As, according to the Complainant, its Trade Marks are well-known internationally, the incorporation thereof in the Domain Names is an indication of bad faith since there is no plausible explanation for doing so other than directing traffic to the linked website to acquire attention and commercial gain by taking advantage of the reputation of the Trade Marks.
The Complainant points out that the duration of the use of the Domain Names does not make the registration and use of the Domain Names legitimate. The Complainant contends that the question of whether or not the Respondent has rights or a legitimate interest in the Domain Names must be examined solely based on the criteria laid down in Oki Data Americas, Inc., v. ASD, Inc., WIPO Case No. D2001-0903, some of which the Respondent in the view of the Complainant does not meet.
The Respondent states that it operates the company TPS, which provides service and repair to “Krones” labelling machines in the United States. According to the Respondent, the Domain Names reflect the services TPS provides to customers. The Respondent submits that the Domain Names are not identical or confusingly similar to the Trade Marks, as no customer looking for the Complainant would be confused by finding the website under “www.technicalpackagingservice.com”. The Respondent contends that on the website no claim is made that TPS is the Complainant or is affiliated to it. In the view of the Respondent, the Domain Names simply represent the services TPS provides, which it purports to be a legitimate business, while making no attempt to confuse customers. The Respondent submits that an authorized dealer would have to claim to sell new “Krones” equipment or parts and TPS makes no such claim. The Respondent also contends that TPS has used the Domain Names legitimately for 12 years and has made no attempt to sell or transfer the Domain Names for profit to the Complainant or a competitor of the Complainant. Furthermore, the Respondent submits, TPS has made no attempt to disrupt the Complainant’s business or confuse its customers, and the Respondent has no history or a pattern of registering domain names to interfere with a trade mark owner’s use of a domain name.
In response to the Complainant’s supplemental filing, the Respondent submits that it has satisfied the conditions of the Oki Data decision, supra, and has a legitimate interest in using the Domain Names. In particular, the Respondent puts forward that (i) TPS actually provides service and repair of the Complainant’s machines; (ii) the website is not used to sell any other packaging equipment manufacturer’s goods or services; (iii) the website accurately discloses the Respondent’s relationship with the Complianant, in that it discloses that it is an independent company and makes no representation that it is the Complainant; (iv) the Respondent has made no attempt to corner the market in all the relevant domain names.
7. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following:
(i) The Domain Names are identical or confusingly similar to the Trade Marks; 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.
The Respondent is the CEO and President of TPS, which operates the website under “www.technicalpackagingservice.com”, to which the Domain Names redirect. In its Response, the Respondent has identified itself with TPS, in that it has derived its arguments to defend its case from the contents of the website operated by TPS. Apparently, TPS is using the Domain Names with consent of the Respondent or the Respondent is using the Domain Names for the benefit of TPS. Under these circumstances, for the purpose of this case the Panel will impute the contents of the website under “www.technicalpackagingservice.com” to the Respondent, as if it were the Respondent’s website.
A. Identical or Confusingly Similar
The Complainant has shown that it has registered rights in the Trade Marks. The Domain Names are confusingly similar to the Trade Marks as they each wholly incorporate the mark KRONES. The addition of, respectively, the descriptive words “equipment”, “machines”, “repair”, and “service” does not avoid a finding of confusing similarity between the Domain Names and the Trade Marks (see WIPO Overview 3.0, section 1.8; see also, inter alia, TPI Holdings, Inc. v. Carmen Armengol, WIPO Case No. D2009-0361, and F. Hoffmann-La Roche AG v. John Mercier, WIPO Case No. D2018-0980. The generic Top-Level Domain (“gTLD”) “.com” is typically disregarded under the confusing similarity test, since it is a technical registration requirement (see WIPO Overview 3.0, section 1.11).
Therefore, the Panel finds that each of the Domain Names is confusingly similar to the KRONES Trade Marks in which the Complainant has registered rights.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, the Complainant has to make out a prima facie case that the Respondent does not have rights to or legitimate interests in the Domain Names upon which the burden of production on this element shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the Domain names (WIPO Overview 3.0, section 2.1). Based on the evidence and the undisputed submissions of the Complainant, the Panel concludes that the Respondent is not an authorized dealer and has not received the Complainant’s consent to register or use the Domain Names or make any other use of the Trade Marks. The Respondent has not provided evidence, nor is it prima facie evident that its use of the Trade Marks and the Domain Names has resulted in it becoming commonly known by the Domain Names (paragraph 4(c)(ii) of the Policy). The use of the Domain Names serves a commercial purpose, namely to redirect potential customers and other Internet users to the website under “www.technicalpackagingservice.com” on which services and equipment are offered for sale. Therefore, the Respondent cannot (and in fact does not) show that it is making a legitimate noncommercial or fair use of the Domain Names (paragraph 4(c)(iii) of the Policy). Therefore, the Panel concludes that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the Domain Names.
This leaves the question whether the Respondent’s use of the Domain Names prior to the notice of the dispute can be considered to be in connection with a bona fide offering of goods or services, in accordance with paragraph 4(c)(i) of the Policy. In this connection, both the Complainant and the Respondent in their supplemental filings have referred to the criteria of the Oki Data decision (Oki Data Americas, Inc., v. ASD Inc., WIPO Case No. D2001-0903). In accordance with that decision, a service provider, such as the Respondent, using a domain name containing the complainant’s trade mark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name only if the following conditions are satisfied: (1) the respondent must actually be offering the goods or services at issue; (2) the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trade mark in a domain name to bait consumers and then switch them to other goods); (3) the site itself must accurately disclose the respondent’s relationship with the trade mark owner; and (4) the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trade mark owner of the ability to reflect its own mark in a domain name.
The Respondent’s use of the Domain Names meets the first two Oki Data criteria.
The Respondent does offer services for “Krones” equipment on the website to which the Domain Names redirect and the website appears to relate only to these services (“We specialize in servicing Krones labelers“) and not to (services for) equipment of other (packaging) companies.
The Respondent does not, however, meet the third requirement that it must accurately disclose its relationship with the Complainant.
The website at “www.technicalpackagingservice.com”, to which the Domain Names redirect, does not contain a specific disclaimer in relation to the Complainant, nor does it specifically disclose the Respondent’s relationship with the Complainant. For this purpose it is not sufficient that, as the Respondent states, the website makes no representation that it is the Complainant, as that leaves open the possibility that an Internet user typing in any of the Domain Names and seeing the website to which they redirect could be left with the impression that there is some commercial or legal relationship with the Complainant, when this is clearly not the case.
An Internet user who types in <kronesrepair.com> (or any of the other Domain Names) is redirected to the Respondent’s homepage, which features the caption “Need Help with your Krones?” and below that “See how we can help you!” with a click through button to “Services”. There is no express mention on that home page (or on any other page of the website) that the Respondent is independent from, or not affiliated to, the Complainant. Neither is there an express acknowledgement that the Respondent is not an authorized repairer of the Complainant’s equipment.
In the Panel’s view, the first impression for the Internet user who types in one of the Domain Names and subsequently views the home page of the Respondent’s website will most likely be that the Respondent is in some way linked to the Complainant, whether through affiliation, approval, as an authorised repairer, or otherwise. This is strengthened by the mentioning, under the “Our Team” tab on the website, of the work experience of Brian Reagan, one of the company’s founders, at Krones USA as well as the phrase: “He traveled to Krones headquarters in Germany on two occasions to receive training on new technologies.”
As the Respondent therefore has not demonstrated that it meets all the criteria of the Oki Data decision, the Respondent’s use of the Domain Names prior to the notice of the dispute cannot be considered to be in connection with a bona fide offering of goods or services, in accordance with paragraph 4(c)(i) of the Policy.
In addition, the Panel notes its finding under Part C below that in registering a series of four domain names that wholly incorporate the Complainant’s KRONES mark that the Respondent has engaged in a pattern of conduct of preventing the Complainant from reflecting its mark in a domain name. In the Panel’s view this conduct of the Respondent is also inconsistent with good faith use and further reinforces the Panel’s conclusion that the Respondent has no rights to or legitimate interests in the Domain Names in terms of paragraph 4(c) of the Policy.
C. Registered and Used in Bad Faith
It is evident that the Respondent knew the Trade Marks prior to registering the Domain Names, as one of the founders of TPS (the Respondent’s brother) worked for the Complainant’s US subsidiary prior to founding TPS together with the Respondent, while TPS on its website specifically offers services for users of “Krones” equipment. In addition, the Respondent has not disputed such knowledge.
The fact that the Domain Names redirect to another website (the website of TPS) is an indication that they are used to attract traffic to that website. In view of these circumstances and (i) the fact that the Domain Names include the Trade Marks in their entirety; (ii) the considerable reputation of the Trade Marks amounting from long use in numerous countries and in relation to the Complainant’s very substantial business; (iii) the use of the Trade Marks on the website to which the Domain Names redirect; and (iv) the lack of a disclaimer accurately disclosing the Respondent’s relationship with the Complainant, the Panel concludes that the Respondent registered and used the Domain Names to intentionally attempt to attract, for commercial gain, Internet users to the website or other online location creating a likelihood of confusion with the Trade Marks as to the source, sponsorship, affiliation or endorsement of the website or location or of the services on the website to which the Domain Names redirect, in accordance with paragraph 4(b)(iv) of the Policy.
In view of the fact that the Respondent has registered four domain names which include the Trade Marks in their entirety, the Panel considers that the Complainant has also shown that the Respondent has engaged in a pattern of conduct of preventing the Complainant from reflecting its mark in a domain name – in particular domain names which (by adding a descriptive term to the Trade Marks) indicate that its registrant sells or services the Complainant’s equipment, in accordance with paragraph 4(b)(ii) of the Policy.
Therefore, the Panel finds that the Respondent has registered and is using the Domain Names 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 <kronesequipment.com>, <kronesmachines.com>, <kronesrepair.com> and <kronesservice.com> be transferred to the Complainant.
Wolter Wefers Bettink
Frederick M. Abbott
Date: March 10, 2019
The majority opinion accurately summarizes the facts in this proceeding. However, in the view of this Panelist the Complainant has not made out a case of abusive domain name registration and use.
From the standpoint of the Policy, the Domain Names are each confusingly similar to the trade mark. In addition to incorporating the Complainant’s trademark, each includes a descriptive term that refers to a good or service that might reasonably be associated with the Complainant and its goods and services.
The majority opinion correctly observes that the Domain Names are each directed to the website of the Respondent which is identified by an entirely different domain name, i.e. “www.technicalpackagingservice.com”. The website of the Respondent is prominently headed with the term “TechnicalPackagingService”, with a subheading “labeling equipment repair, procurement and line optimization”. There are menu links to various internal pages, as noted by the majority opinion. The most prominent design element on the homepage is a graphic circular design with lines connecting to the various types of services provided by the Respondent, including “Emergency Repair Services”, “Parts”, “Installation and Commissioning”, etc.
There is a statement in fairly large font, “Need Help with your Krones?”. There is a list of well-known companies that the Respondent represents to be its customers. The homepage and website do not include an explicit disclaimer of association with the Complainant. Nor does the homepage or website include an explicit statement of association with the Complainant.
In this Panelist’s view, the Respondent has made out a case of nominative fair use of the Complainant’s trade mark in the Domain Names. Contrary to the view expressed by the majority, the fact that the Domain Names are used for commercial purposes does not preclude a determination of fair use. Many types of fair use have a commercial purpose, e.g., comparative advertising.
Judicial authorities in the jurisdictions in which the Complainant and the Respondent operate have been sympathetic to avoiding unnecessary restriction of competition in markets for goods and related services where the object of the third-party trade mark use is not the initial placing of the good on the market without trade mark owner consent, or use creating the false impression that the service provider is an authorized or “official” service provider of the trademark owner. Reference is made in the European context to Bayerische Motorenwerke (BMW) and BMW Nederland BV v. Ronald Karel Deenik, CJEU Case C-63/97 (1999) (“BMW v. Deenik”), and in the United States context to Toyota Motor Sales, USA, Inc. v. Tabari, 610 F.3d 1171 (9th Cir. 2010) (“Toyota v. Tabari”).
In BMW v. Deenik, the Court of Justice of the European Union (“CJEU”) held that a third-party provider of specialized repair services for a particular branded automobile, i.e. BMW, is entitled to make use of the trade mark for purposes of identifying his service expertise, provided that the third-party service provider acts fairly in relation to the trade mark owner. The CJEU did not require that the third-party service provider include a specific disclaimer of affiliation with the trade mark owner.
BMW v. Deenik was decided prior to the ubiquitous use of domain names as the human-friendly means of identifying locations on the Internet, but its principles remain operational.
Toyota v. Tabari, by way of illustrating the law of fair use in the United States, allowed third-party use of a trade mark owner’s proprietary mark in domain names which included additional descriptive terms, i.e. <buyorleaselexus.com> and <buy-a-lexus.com>. The service provider acted as an auto-broker, searching for and arranging the purchase of luxury automobiles on behalf of its clients. In its decision, the US Court of Appeals for the Ninth Circuit noted that there is a general rule that nominative fair use of a trade mark is predicated on a condition that use of the trade mark is necessary to identify the relevant product or service, but it specifically rejected the trade mark owner’s argument that use of its trade mark in the allegedly infringing domain names was by definition not “necessary”. In its decision, the Ninth Circuit stated that, “The nominative fair use doctrine allows such truthful use of a mark, even if the speaker fails to expressly disavow association with the trademark holder, so long as it’s unlikely to cause confusion as to sponsorship or endorsement.” It should be noted that in Toyota v. Tabari, the Ninth Circuit observed in its discussion of context that the third-party service provider had included a disclaimer of affiliation with the trade mark owner.
In both BMW v. Deenik and Toyota v. Tabari, as illustrative cases, the courts expressed concern that restricting reference by third-party service providers to the trademark goods would unnecessarily restrain competition in the markets for third-party provision of goods and services.
This Panelist recognizes that UDRP decisions have a certain universal character and in general are not intended to rely on the jurisprudence of courts from specific geographic locations. And, it is not this Panelist’s intention to rely on the afore-referenced decisions of the CJEU or Ninth Circuit as somehow controlling the outcome in this or another UDRP panel determination with respect to fair use. It is more a matter of establishing the lens through which this Panelist is considering the facts, and thereupon assessing whether the Respondent has established rights or legitimate interests in the Domain Names.
This assessment necessarily involves a certain element of subjectivity, that is, whether the Respondent has sought to create the impression that it is affiliated with or authorized by the Complainant. As noted above, the Respondent’s commercial website is identified by a domain name entirely different than that of the trade mark owner (and the Domain Names), and the website is prominently headed with an entirely different name (i.e. “TechnicalPackagingService”). Recognizing that as a matter of “initial interest” an Internet user viewing the Domain Names might have an impression that they are associated with the Complainant, upon redirection to the website of the Respondent that impression is dispelled. Initial interest confusion is not in itself sufficient to negate a finding of fair use.
The Respondent’s website identifies the Complainant’s products, but it would be extraordinarily difficult for the Respondent to offer services for the repair of the Complainant’s products if it could not identify them. There is nothing about the website that makes some type of excessive or deceptive use of the Complainant’s trade mark. The Respondent’s use of the Complainant’s trade mark on its website is “necessary” to identify the relevant goods and/or services.
The majority points out that the Respondent’s website identifies one of its principals as a former employee of the trade mark owner (i.e. the Complainant), who among other things has received specialized training at the headquarters of the Complainant. There is nothing to suggest that this principal is currently employed or affiliated with the Complainant. In this Panelist’s view, a prospective customer of a third-party service provider would wish to know that the service provider had received proper training, including by the manufacturer of the equipment for which services are provided.
The Respondent appears to have been using the Domain Names in connection with its website for about a decade. The Complainant filed a supplemental filing to make the point that its claim is not barred due to the lengthy period since the Respondent registered and began its use of the Domain Names. This Panelist does not suggest that the Complainant’s cause of action is barred by the passage of time.
However, one might reasonably expect that as the Respondent has been using the Domain Names for about a decade to direct Internet users to its website (headed with a different name), that if there were actual evidence of consumer confusion, i.e. emails to the Complainant from persons believing they were contracting with an authorized or official service provider, but instead contracted with an unaffiliated third party (i.e. the Respondent), that the Complainant would have furnished evidence of such confusion-in-fact. While such evidence is not a predicate to a finding of confusing similarity or unfair use (i.e. lack of rights or legitimate interests), the absence of such evidence suggests to this Panelist that Internet users have been able to sort out the nature of the relationship between the Complainant and the Respondent.
In this Panelist view, a “borderline” issue is that the Respondent has not included an express disclaimer of affiliation with the Complainant on its website. An express disclaimer might be the “most preferable” means to dispel potential confusion. But it is not a requirement for the establishment of fair use that goes instead to the overall impression created in the mind of the Internet user. In this case the Respondent has not, in this Panelist’s view, done something to suggest that it is an affiliated or authorized service provider of the Complainant. This Panelist does not consider the lack of an explicit disclaimer to preclude a finding of fair use of the Domain Names by the Respondent. In this Panelist view, the Complainant has failed to establish that the Respondent lacks rights or legitimate interests in the Domain Names.
For the foregoing reasons, this Panelist dissents from the view of the majority and would find in favor of the Respondent.
Frederick M. Abbott
Date: March 10, 2019