WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Baxi Heating UK Ltd. v. Patrick Russell
Case No. DIE2014-0005
1. The Parties
The Complainant is Baxi Heating UK Ltd of Warwick, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by FRKelly, Ireland.
The Respondent is Patrick Russell of Waterford, Ireland, represented by Cruickshank Intellectual Property Attorneys, Ireland.
2. The Domain Name and Registrar
The disputed domain name <baxi.ie> is registered with IE Domain Registry Limited (“IEDR”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2014 via email and the hardcopy was received on October 9, 2014 via courier. On October 7, 2014, the Center transmitted by email to IEDR a request for registrar verification in connection with the disputed domain name. On October 9, 2014, the Complainant requested a thirty-day suspension of the proceeding. The proceeding was initially suspended from October 10, 2014 to November 9, 2014, and the suspension was thereafter extended to December 8, 2014 at the request of the Complainant. The proceeding was reinstituted on December 9, 2014. On December 9, 2014, IEDR transmitted by email to the Center its verification response confirming the Respondent as the Respondent and providing contact details.
The Center verified that the Complaint satisfied the formal requirements of the .IE Dispute Resolution Policy (the “IEDR Policy”), the WIPO Dispute Resolution Rules of Procedure for .IE Domain Name Registrations (the “Rules”), and the WIPO Supplemental Rules for .IE Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2.1 and 4.1, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on December 12, 2014. In accordance with the Rules, paragraph 5.1, the due date for Response was January 14, 2015. On January 13, 2015, the Respondent requested a twenty-day extension to file its response. The response due date was extended to January 21, 2015. The Response was filed on January 21, 2015.
The Center appointed Yvonne McNamara as the sole panelist in this matter on February 9, 2015. 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
A. The Complainant
The Complainant is a UK company engaged in a business concerning boilers and heating apparatus.
It is part of a European company group known as BDR Thermea which provides air conditioning and heating products and services.
The Complainant runs a business providing goods – primarily gas boilers – and services under the BAXI mark from its website at “www.baxi.co.uk”. The Complainant registered the domain name <baxi.co.uk> in 1996. The Complainant has also owned the domain name <baxi.com> since 1997.
BAXI products are distributed in Ireland by Potterton Myson (Ireland) Limited (“Potterton”). It appears from its own website (which at the date of this decision was at “www.baxipottertonmyson.ie” but which is referred to in the Complaint as at “www.potterton-myson.ie”) and from the website of the Complainant, that Potterton may also be part of the BDR Thermea group.
The Complainant is owner of registered rights in the trade mark BAXI. Three registrations are specified in that regard and extracts from the relevant registry databases are annexed to the Complaint. The Complainant draws the Panel’s attention in particular to the following registrations:
a. Community trade mark registration no. 775,684 BAXI in class 11 for: apparatus for heating; domestic heating appliances; apparatus for ventilation and air control;
b. Community trade mark registration no. 2,889,038 BAXI in class 11 for: domestic heating appliances; boilers; gas boilers; control systems for gas and gas boilers, and in class 37 for: installation and advisory services relating to the installation of boilers, electricity generators, heating installations; maintenance and repair of boilers, electricity generators, heating installations; maintenance and repair of gas and electric installations and equipment; maintenance and repair of heating systems;
c. Irish trade mark registration no. 80307 BAXI in class 11 for: space heaters and parts thereof.
The rights conferred by these registrations date from March 18, 1998, October 11, 2002 and February 8, 1972, respectively.
It is also clear from the registry details provided that these marks have been renewed as renewal fell due in each case and that the rights in question have subsisted on each relevant register since registration.
The Complainant indicates that it became aware of the disputed domain name in 2014.
B. The Respondent
The Respondent is a natural person.
The Response indicates that the Respondent owns RPG Facilities Limited which is described as a gas pipe fitter and gas installer provider in Ireland. The Response further indicates that RPG Facilities Limited employs RGII certified gas installers in Ireland and that it has “since 2007 acquired a loyal customer base in Ireland”.
The Respondent registered the disputed domain name on April 12, 2013 in his own name. The disputed domain name leads to a webpage promoting RPG Facilities Limited and its services. The Respondent indicates that the website to which the disputed domain name leads “went live” on May 23, 2013 and that the disputed domain name has been used in connection with the website since then. The Respondent registered the business name “Baxi Services” on March 23, 2013.
5. Parties’ Contentions
A. Complainant
Identity or misleading similarity with a protected identifier in which the Complainant has rights
The protected identifier in this case is the BAXI mark. As outlined above, the Complainant owns trade mark registrations effective in Ireland and throughout the European Union protecting the BAXI mark for the goods and services of interest in this case, namely boilers and boiler maintenance, installation and repair services in classes 11 and 37 respectively.
The Complainant further claims that by virtue of its use of the BAXI mark, it has acquired a reputation and goodwill in the business that it runs under the mark, and that the use of the disputed domain name by the Respondent constitutes a misrepresentation as to connection with the Complainant which will cause confusion and deception in customers. In short, the Complainant asserts that in addition to registered rights in the BAXI mark, it has unregistered rights in the mark that are protectable under the law of passing off.
In this regard, the Complainant asserts that use of the mark was inaugurated in 1935, by a related company presumably or the predecessor in title of a related company, on a central heating system. The Complainant recites other landmark products put on the market under the mark in the intervening years. The Complainant traces the pedigree of the mark back to a founding company established by Richard Baxendale in 1866 (which presumably accounts for the derivation of the BAXI mark). The Complainant explains that it is now part of the BDR Thermea group which it describes as one of Europe’s largest manufacturers and distributors of domestic and commercial water and heating systems, employing 6,400 people throughout Europe and with a turnover exceeding EUR 1.2 billion.
The Complainant points to its own website at “www.baxi.co.uk” as a vehicle by which it promotes and markets its products and services under the BAXI mark internationally.
As regards the use of the mark in Ireland, the Complainant points to Potterson’s activities as distributor indicating that Potterton distributes BAXI branded boilers in Ireland via independent heat merchants. The Complainant exhibits screen shots from Potterton’s website featuring references to BAXI products and to a copy of a BAXI products brochure distributed in Ireland.
The Complainant describes its “subsidiary” in Ireland (it is not clear whether or not this is a reference to Potterton) employing three gas service engineers to provide warranty training and technical support to Registered Gas Installers Ireland (RGII) and as having a “practical gas training centre” where it trains approximately 700 gas installers every year on its domestic and commercial products. It is not explicitly stated that all of the products mentioned are BAXI branded products. The Complainant goes on to say however that the Complainant’s key focus is to provide Irish gas installers with the key skills to ensure that they carry out service and repair on all BAXI boilers as per the manufacturers manual.
As regards the identity or misleading similarity of the protected identifier with the disputed domain name, the Complainant argues that the addition of the “.ie” Top-Level Domain (“TLD”) can simply be read out of the analysis and that the disputed domain name is identical or misleadingly similar to the BAXI mark in which the Complainant asserts its rights.
Rights or legitimate interests of the Respondent in the disputed domain name
The Complainant points out that in circumstances where its claimed use of the mark began in 1935, where it has trade mark rights in Ireland dating back to 1972 and domain names incorporating the BAXI mark from 1996, that its use far pre-dates that of the Respondent.
The Complainant in essence asserts that the goodwill and reputation that the Complainant has built up in the BAXI mark are such that the Respondent must have been aware of the BAXI mark and business when it applied to register the disputed domain name.
The Complainant also points out that the disputed domain name does not reflect the name of the Respondent.
The Complainant asserts that the Respondent secured the business name “Baxi Services” (registered under number 489576) on April 11, 2013, the day before the Respondent applied to register the disputed domain name. (It appears to the Panel that the business name was in fact obtained on March 23, 2013). In any event, the Complainant asserts that the Respondent only acquired the business name in order to secure registration of the domain name under the relevant rules of IE Domain Registry Ltd, which grants domain names in the “.ie” country code TLD (“ccTLD”).
The Complainant asserts that the Respondent is using the BAXI mark in the disputed domain name “to drive his business with no regard to the confusion that this causes and is likely to continue to cause in the Irish market.”
The particular concern of the Complainant in this regard is that the use of the disputed domain name by the Respondent in a manner which the Respondent is using it will cause his customers to believe that the Complainant has trained or endorsed the Respondent in respect of the provision of services on the Complainant’s products.
The Complainant instances a recent incident with a customer who was looking for an “in warranty” call – presumably for a BAXI product – and contacted the Respondent through the website run under the disputed domain name. The Complainant indicates that “the homeowner was surprised, disappointed and confused when the respondent refused to carry out the call.”
The Complainant says that such instances of confusion damage the Complainant’s brand image in the Irish marketplace.
Registration or use in bad faith
The essence of the Complainant’s case is that the registration and use of the BAXI mark in the disputed domain name cannot have been other than in bad faith in circumstances where the Respondent knew should have known of the Complainant’s mark and nevertheless adopted it in a domain name.
The Complainant specifically invokes paragraph 2.1.4 of the IEDR Policy by contending that the use of the disputed domain name is intended to mislead visitors to the site run under it into thinking that the Respondent is a specially trained repair service engineer for BAXI products and is approved, sponsored or otherwise associated with the Complainant.
The Complainant additionally invokes paragraph 2.1.5 of the IEDR Policy by asserting that the Respondent is using the disputed domain name in a way that is likely to dilute the reputation of the Complainant’s trade mark.
B. Respondent
Identity or misleading similarity with a protected identifier
The Respondent asserts that the Complainant has not proved that it has acquired reputation and goodwill for its business under the BAXI trade mark in Ireland, that all the Complainant has made are “conclusory statements” of reputation and goodwill and that it has not provided evidence of sales or marketing in Ireland except for a copy of an undated brochure, unaccompanied by any information as to the number of brochures that have been distributed in Ireland.
The Respondent comments that membership of the BDR Thermea group does not comprise evidence of reputation or use of the BAXI mark in Ireland.
The Respondent characterises the Complainant as “admitting” that the BAXI boilers are sold through a separate Irish company which does not have the BAXI mark in the company name or (at least at the inception of this proceeding) in the domain name under which its website is operated.
The Respondent argues that his business is to be distinguished from that of the Complainant in circumstances where the Respondent “offers a range of brand and non brand specific gas repair and installation services together with safety inspections on gas pipe work under the domain name <baxi.ie> through his company RPG Facilities. The Respondent indicates that it does not manufacture or distribute boilers in Ireland or in any other jurisdiction.”
The Respondent further argues that the “.ie” ccTLD is not to be ignored when comparing the trade mark at issue with the disputed domain name, as the Complainant has argued. In this regard the Respondent indicates that the “.ie” TLD signifies services available in Ireland which the Respondent asserts is significant in circumstances where he argues that the Complainant has not proved a reputation or use of the BAXI trade mark in Ireland.
Rights or legitimate interests of the Respondent in the disputed domain name
The Respondent’s core response to the Complainant’s assertion that the Respondent “must have been aware of”, the BAXI mark is that “the Complainant has not provided any evidence of reputation or goodwill attached to the Complainant’s trade mark to ground this claim.”
The Respondent responds to an allegation that customers would believe that they were making an arrangement with the Complainant as the manufacturer of BAXI boilers when visiting the website run under the disputed domain name, by saying: “the Registrant’s company name RPG Facilities is clearly visible on the homepage of the Registrant’s website… Therefore it is clear to a member of the public that the website is not the Complainant’s company. Furthermore, the Registrant makes no reference to the Complainant’s company on the website. Therefore there is no basis for the Complainant’s claim that confusion is likely to arise.”
The Respondent also points out that the Complainant provided no evidence of the alleged incident whereby a customer contacted the Respondent looking for an “in warranty” call in relation to a BAXI product only to be disappointed.
Registration or use in bad faith
The Respondent counters the assertion that the disputed domain name must have been used in bad faith because of the reputed status of the Complainant’s trade mark by asserting that no evidence of any such reputation has been provided.
The Respondent responds in particular to the Complainant’s assertion that the Respondent knew or should have known of the Complainant and its BAXI mark when the Respondent was registering the disputed domain name and therefore that its use must be in bad faith, by arguing that the doctrine of constructive notice does not apply to dispute resolution under the IEDR Policy.
Finally, the Respondent indicates as follows “The Registrant has been using the disputed domain name in good faith from May 23, 2013 when the website went live, prior to being put on notice of the Complainant’s interest in the domain. The disputed domain name continues to be utilised by the Registrant for his company RPG Facilities. This confirms that the Registrant has a legitimate interest in the disputed domain name.”
6. Discussion and Findings
The IEDR Policy prescribes the elements of a justified complaint in respect of a domain name as follows:
(a) A domain name is identical or misleadingly similar to a protected identifier in which the Complainant has rights; and
(b) The Respondent has no rights in law or legitimate interests in respect of a domain name; and
(c) A domain name has been registered or is being used in bad faith,
The Panel notes that the IEDR Policy is similar in many respects to the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and therefore considers it appropriate to refer to authorities concerning the UDRP to the extent applicable to the IEDR Policy.
An issue regarding what has or has not been submitted by the Complainant by way of substantiating material has been raised by the Respondent and forms a key part of the response in this case. It is convenient at this stage therefore to refer to the provision at paragraph 14.1 of the Rules, and associated commentary, in relation to the materials on the basis of which complaints are to be determined.
Paragraph 14.1 of the Rules provides:
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In Sensis Pty Ltd, Telstra Corporation Limited v. Yellow Page Marketing B.V., WIPO Case No. D2011-0057, the Panel had the following to say about the equivalent rule in the UDRP Rules:
“It is true that panelists must proceed with care in examining information beyond the documents submitted by the parties. Those are accompanied by a signed certification of accuracy. Paragraphs 3(b)(xiv) and 5(b)(viii) of the Rules [paragraphs 3.4.13 and 5.2.6 of the IEDR Rules] respectively, require complainants and respondents to certify that the information contained in the complaint or response is, to the best of their knowledge, “complete and accurate”. No such certification validates information discovered independently by the panel. Moreover, a party can request an opportunity to reply to new or unforeseen arguments or evidence submitted by the opposing party. That opportunity is absent when the panel refers to new information for the first time in the decision, without first requesting “further statements or documents” from the parties under paragraph 12 of the Rules [paragraph 11 of the IEDR Rules].
Nevertheless, UDRP panels frequently avail themselves of resources not supplied or mentioned by the parties, when these are publicly available and have a high degree of credibility for a relevant purpose. As reflected in a variety of UDRP decisions, such resources may include the following:
- published UDRP decisions and other official documents relating to the Policy, such as ICANN and WIPO reports;
- documents establishing relevant “rules and principles of law” pursuant to Rules, paragraph 15(a) [paragraph 14.1 of the IEDR Rules], such as constitutions, statutes and statutory instruments, legislative history, rules and regulations, international conventions, court decisions, administrative decisions, official guidance by trademark registration bodies, legal treatises, and scholarly articles;
- official trademark databases;
- official databases of registered companies and trade names;
- domain name registrars’ WhoIs databases and historical WhoIs databases;
- websites associated with the domain names, and websites linked from those websites, to establish how and by whom the domain names are used;
- historical versions of websites associated with domain names, prominently those available through the Internet Archive’s “Wayback Machine” (see, e.g., The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services [23658], WIPO Case No. D2007-1438, and decisions cited therein);
- other websites and social media pages operated by the parties or their associates, as well as advertising, press releases, and other public statements by the parties, especially where these tend either to corroborate or impeach the parties’ statements in a UDRP proceeding, reveal an admission against interest, or furnish information about an absent respondent;
- standard reference works, such as dictionaries, encyclopedias, Wikipedia, and materials published by relevant industry associations.
In most cases, the panel’s reference to sources such as these will not require exercising the panel’s discretion under Rules, paragraph 12 [paragraph 11 of the IEDR Rules] to invite “statements or documents” on the subject from the parties. The panel will use these resources, for example, to interpret and apply the Policy and Rules, establish relevant legal principles, fill in the factual gaps left by a silent respondent, or test the credibility and completeness of the parties’ statements in the UDRP proceeding. The Policy is designed to provide an administrative procedure for the speedy and inexpensive resolution of a particular kind of dispute, offering limited remedies that are not exclusive of recourse to judicial proceedings. Thus, unlike civil litigation and some arbitration procedures, the Policy and Rules do not contemplate a discovery process, successive rounds of pleading and motions, or evidentiary hearings. Accordingly, UDRP panels should be reluctant to request or allow additional submissions that would substantially delay the proceedings or burden the parties. It is not normally necessary or appropriate in the interest of fair process or natural justice to delay the UDRP proceeding so that the parties can comment on legal or factual materials that were in existence and foreseeably relevant to their positions when they prepared the complaint or response.”
The Panel adopts this approach – akin to the doctrine of judicial notice in the common law but tailored to the less formal proceedings prescribed under the IEDR Policy and the UDRP for resolution of domain name disputes.
In this case, the Panel has made limited research as described above and has had reference to the websites specifically mentioned by the parties and the content of them.
A. Identical or Misleadingly Similar to a Protected Identifier in Which the Complainant Has Rights
The first element to be established by a complainant is that it has rights in a protected identifier to which the domain name is identical or misleadingly similar.
Paragraph 1.3 of the IEDR Policy provides:
“Protected identifiers for the purposes of this Policy are:
1.3.1. Trade and service marks protected in the island of Ireland.
1.3.2. Personal names (including pseudonyms) in which the Complainant has acquired a reputation in the island of Ireland.
1.3.3. Geographical indications that can prima facie be protected in the island of Ireland…”
The Complainant has rights in the BAXI mark in the strongest form in which such rights can occur, namely by virtue of trade mark registration – Irish as well as Community Trade Mark registrations. As set out above, these confer registered rights on the Complainant in the BAXI mark in Ireland for goods of class 11 including, in so far as is relevant to this case, boilers, and in class 37 for boiler installation, maintenance and repair services.
The Complainant also appears to rely on common law rights for the purposes of its Complaint.
The consensus view of UDRP panels as to what needs to be shown to ground a complaint on the basis of unregistered rights, refers (at paragraph 1.7 of the WIPO overview of WIPO Panel Views on Selected UDRP Questions” (“WIPO Overview 2.0”)) to a need to show that the name in question has become a “distinctive identifier” of the Complainant’s business. This test approximates the Irish common law tort of passing off which requires the claimant to show that it has built up goodwill in a business under the mark, that the impugned actions constitute a misrepresentation by reference to the mark of a link or association with the claimant’s business and that the claimant has been damaged as a result.
In this regard, the Complainant has demonstrated that there is a large range of BAXI products available for distribution In Ireland through Potterton, that the distribution arrangement is a sophisticated one - either in the nature of a special distributorship or substantially vertically integrated operation, in that, judging from the website materials and brochure submitted by the Complainant, Potterton, who refer to themselves as Baxi Potterton Myson Ireland Ltd on their website (evidently also at the time of the complaint judging from the materials attached), offer technical advice and after sales service on an extensive range of BAXI boilers.
The Complainant has also demonstrated that it runs a commercial operation from its own website at “www.baxi.co.uk” the domain name for which was registered in 1996 and that it has owned the domain name <baxi.com> since 1997 and of course that it owns the trade mark registrations relied upon.
In terms of general background and scale of the Complainant’s operation, its part in BDR Thermea and the size and scale of that operation, its history and the pedigree of the BAXI mark, these matters are certainly reflected in the materials accessible on the Complainant’s website at “www.baxi.co.uk” to which the Complainant makes reference.
However, if the Complainant had been seeking to establish common law rights in the BAXI mark in Ireland, which it may not have been and I come back to this below, there would have been certain force in the Respondent’s contention that substantiating information has not been given in relation to these matters or what this means in terms of sales of BAXI products in Ireland, advertising specifically attributable to BAXI products in Ireland and so on.
Having said that, it is clear to the Panel that a very substantial business is being run from both websites under the BAXI mark. It is also clear as regards the Irish market that while other brands are mentioned on the Potterton site, significantly, as indicated above, Potterton is referred to in a number of places as “Baxi Potterton Myson Ireland Ltd. and that that business clearly encompasses, technical advice, product offerings, installer and repairer recommendation and location and after-sales service for BAXI products as an important part of the offering of the company.
The scope and technical detail of the BAXI products demonstrated on the Potterton website and in its brochure, is inconsistent with the notion that a substantial business is not being run under the BAXI mark or that the BAXI name would not be recognised by persons engaged in the gas boiler business and related businesses in Ireland.
Were it necessary for the Panel to make a finding as to whether sufficient use had been made to build up requisite goodwill in the State, the Panel would have been inclined to find sufficient use (the most compelling evidence in this regard being the Respondent’s own actions) but could have more comfortably come to that view with the assistance of more specific information about the extent of sales and advertising of BAXI products and services in the State.
There is in fact no need to make any such finding in that the Complainant has clear registered rights in the BAXI mark in the classes directly of interest and does not have to show unregistered rights in addition in order to ground the Complaint.
The Panel has recited the matters relating to what can properly be found in respect of the Complainant’s BAXI business in the State however as there matters are relevant outside of the scope of a formal “passing off” analysis, to the questions of legitimate interest and bad faith to be discussed below.
As regards the requirement that the disputed domain name be identical or misleadingly similar to the BAXI mark, there can be little doubt that, if not identical, it is misleadingly similar. The Respondent’s argument that it does not make gas boilers but that his company only provides installation servicing and repair and that the addition of the “.ie” as the TLD marks the services out as services available in Ireland, do not operate as distinguishing factors under the first element of the IEDR Policy in general and it is in any event clear from the Potterton website that it provides an installer and repairer location and recommendation service for Irish customers for boilers, including BAXI boilers, which of necessity are not themselves makers of BAXI products and are based in Ireland.
Accordingly, the first element of the IEDR Policy is satisfied.
B. Rights in Law or Legitimate Interests
Paragraph 3 of the IEDR Policy provides that the following factors may be considered as evidence of rights to or legitimate interests in the domain name:
“3.1.1. Where the Respondent can demonstrate that before being put on notice of the Complainant’s interests in the domain, it had made demonstrable good faith preparations to use the domain name in connection with a good faith offering of goods or services, or operation of a business.
3.1.2. Where the domain name corresponds to the personal name or pseudonym of the Respondent.
3.1.3. Where the domain name which is identical or misleadingly similar to a geographical indication has been used, in good faith, by the Respondent before such geographical indication was protected in the Island of Ireland.”
The Complainant essentially asserts the Respondent could not have adopted the BAXI mark in the disputed domain name in ignorance of the Complainant’s rights in it and that its adoption is meant to cause customers to assume the Respondent is a service provider approved by the Complainant.
The Panel believes that it is significant that the Respondent does not directly deny that it was aware of the BAXI mark and instead seeks to rely on the assertion that the Complainant has not provided sufficient substantiating evidence to support its claim to goodwill and reputation.
The Panel finds that it is improbable in the extreme that the Respondent, a gas boiler and service provider, would not have been aware of the business of the Complainant and its group companies in the boiler sector. The Panel also finds that the choice of the word “baxi” as a domain name establishes by itself that the Respondent was so aware. As pointed out by the Complainant, the word “baxi” does not reflect the name of the Respondent or his company and no explanation is given by the Respondent as to why the name was chosen for the disputed domain name or what significance it could possibly have had other than as a reference to the Complainant’s products. The only reasonable inference arising to be made is that the name was incorporated within the domain name so that the Respondent’s website would be retrieved by Internet searches conducted by reference to the Complainant’s products or services.
What the Respondent does say by way of response to the Complainant’s “legitimate interests” argument seems to the Panel to be characterized by careful wording.
In this regard the Respondent writes: “The Complainant indicates that a homeowner would believe that they are making an arrangement with the Complainant as the manufacturer of Baxi boilers when visiting the disputed domain” before going on to indicate that there should be no such confusion due to the presence of the Respondent’s company’s name on the Respondent’s website.
However the Respondent is there denying a concern that the Complainant did not express. The key concern of the Complainant is rather that: “The key issue for the Complainant is that customers will believe that the Complainant has trained or endorsed Mr. Russell, the Respondent”, i.e., not that customers will think that the Respondent is the Complainant.
The Respondent also asserts that:
“The Registrant has been using the disputed domain name in good faith from May 23, 2013 when the website went live, prior to being put on notice of the Complainant’s interest in the domain. The disputed domain name continues to be utilized by the Registrant for his company RPG Facilities. This confirms that the Registrant has a legitimate interest in the disputed domain name.”
In light of the matters mentioned above, and those to be mentioned below under the bad faith heading, the Panel concludes that when the Respondent makes the statement in his Response that he has used the disputed domain name prior to being put on notice of the Complainant’s interest in the domain, what he must be taken to mean is that he registered and used it before knowing what the response was going to be from the makers of BAXI products. This will have been the case for most if not all persons who register domain names incorporating a mark that they know is not their own and does not preclude a finding of bad faith.
The panel in Madonna Ciccone v. Dan Pirisi, WIPO Case No. D2000-0847 dealt with such a case as follows:
“The record supports Respondent’s claim that it used the domain name in connection with commercial services prior to notice of the dispute. However, Respondent has failed to provide a reasonable explanation for the selection of Madonna as a domain name. Although the word ‘Madonna’ has an ordinary dictionary meaning not associated with Complainant, nothing in the record supports a conclusion that Respondent adopted and used the term ‘Madonna’ in good faith based on its ordinary dictionary meaning. We find instead that name was selected and used by Respondent with the intent to attract for commercial gain Internet users to Respondent’s web site by trading on the fame of Complainant’s mark. We see no other plausible explanation for Respondent’s conduct and conclude that use which intentionally trades on the fame of another can not constitute a ‘bona fide’ offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.”
The Panel finds that the Respondent does not have a right or legitimate interest within the meaning of the IEDR Policy in the disputed domain name in the circumstances of this case.
C. Registered or Used in Bad Faith
Paragraph 2 of the IEDR Policy provides that among the indicia of bad faith are:
2.1.4. Where the Respondent has, through its use of the domain name, intentionally attempted to attract Internet users to a web site or other on-line location by creating confusion with a Protected Identifier in which the Complainant has rights; or
2.1.5. Where the domain name is used in a way that is likely to dilute the reputation of a trade or service mark in which the Complainant has rights.
The Panel has already indicated its finding that the notion that the Respondent did not know about the BAXI name and business at the time he registered the disputed domain name is not plausible. Indeed such knowledge is not specifically denied by the Respondent, the Respondent focuses instead on asserting that insufficient material has been submitted by the Complainant to substantiate the acquisition of goodwill and reputation in Ireland. Having found that the facts support the conclusion that the Respondent actually knew about the BAXI name and business, the issue of the applicability or otherwise of constructive notice in the IEDR Policy does not arise.
The fact that the disputed domain name continues to be utilised by the Registrant’s company RPG Facilities does not assist the Respondent’s case but rather tends to confirm the Complainant’s fear that the idea is to imply that RPG Facilities – a provider of gas product installation and repair services – is somehow endorsed or recommended by the Complainant or its group company. The Panel finds (also given the findings under Section B above) that the Respondent is using the disputed domain name to create traffic to his website by (an unjustified and unearned) association with the Complainant’s mark and business.
The Panel finds for the Complainant on this ground.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 5 of the IEDR Policy and 14 of the Rules, the Panel orders that the disputed domain name <baxi.ie> be transferred to the Complainant.
Yvonne McNamara
Solo Panelist
Date: February 27, 2015