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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Guildline Instruments Limited v. Anthony Anderson

Case No. D2006-0157

 

1. The Parties

The Complainant is Guildline Instruments Limited of Smiths Falls, Canada, represented by an internal representative.

The Respondent is Anthony Anderson of Florida, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <guildline.com> (the “Domain Name”) is registered with Network Solutions, LLC (the “Registrar”).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on February 8, 2006, and in hard copy on February 13, 2006. The Center transmitted its request for registrar verification by email to the Registrar on February 9, 2006. The Registrar responded by email the same day, confirming that it was the registrar and the Respondent was the registrant of the Domain Name, that the registration agreement was in English and contained a submission to the jurisdiction at the location of the principal office of the Registrar, and that it would not change the status of the Domain Name except in accordance with paragraph 3 of the Uniform Domain Name Dispute Resolution Policy (the “Policy”); and providing the contact details for the registration on its Whois database.

The Registrar did not specifically confirm that the Policy applies to the registration. However, the Panel is satisfied that the Policy does apply, since it is well known that the Registrar has applied the Policy since its adoption, including to pre-existing registrations (such as the Domain Name) in accordance with the terms of its registration agreements.

The Registrar also did not confirm that it had received a copy of the Complaint. If the Complainant failed to send a copy of the Complaint to the Registrar in accordance with paragraph 4(b) of the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”), the deficiency is immaterial (since the Center subsequently sent a copy of the Complaint to the Registrar when it gave formal notification of the Complaint) and is hereby waived by the Panel under paragraph 10(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”).

The Center notified the Complainant by email on February 15, 2006, that there was a formal deficiency in the Complaint, in that it did not include a submission by the Complainant to the jurisdiction of the courts in at least one specified Mutual Jurisdiction as required by paragraph 3(b)(xiii) of the Rules. The Complainant responded by email on February 16, 2006, stating that the parties had agreed to submit any dispute under a contract between them to binding arbitration in Ottawa, Canada, and apparently contending that this dispute is a dispute under that contract. By a further email of February 17, 2006, the Complainant requested an extension of fifteen days to submit a response to the formal deficiency notification. The Center granted an extension accordingly until March 3, 2006. The Complainant submitted a response by email on February 24, 2006, and in hard copy received by the Center on March 2, 2006. This stated that the Complainant elected the location of the Registrar’s principal office as the Mutual Jurisdiction. In the context, the Panel interprets this statement as a submission to that jurisdiction in accordance with paragraph 3(b)(xiii) of the Rules.

The Center verified on March 6, 2006, that the Complaint satisfied the formal requirements of the Policy, the Rules and the Supplemental Rules.

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 6, 2006. In accordance with the Rules, paragraph 5(a), the due date for the Response was March 26, 2006. By email of March 22, 2006, the Respondent sent to the Center a letter dated March 21, 2006, enclosing a copy of a letter of December 22, 2005, sent by his attorneys to the Complainant’s attorneys summarizing his case. The covering letter stated that he elected to have the dispute decided by a single member Panel and that there were no legal proceedings underway regarding the Domain Name.

The Center acknowledged receipt by email of March 23, 2006, and asked the Respondent to confirm that it was his final Response, pointing out that he had until March 26, 2006, to submit his Response and drawing his attention to the Model Response on the Center’s website. The Respondent replied by email of March 24, 2006, confirming that his communication of March 22, 2006 was his final Response.

The Respondent’s communication of March 22, 2006, does not comply in various respects with the requirements of paragraph 5 of the Rules. However, the Panel is satisfied that the Complainant is not prejudiced by these deficiencies and hereby waives them under paragraph 10 of the Rules.

The Center appointed Jonathan Turner as the sole panelist in this matter on March 31, 2006. 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.

Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements (save as rectified or waived as mentioned above), was duly served on the Respondent and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules.

 

4. Factual Background

The Complainant, a company based in Ontario, Canada, sells and calibrates metrology products under the trademark GUILDLINE. It has used this mark continuously since 1958 and registered it in Canada with filing date of June 21, 1965, and in the United States with filing date of December 14, 1967. The Complainant has websites at “www.guildline.ca” and “www.guildlineusa.com”.

The Respondent is the President and (with his wife) the principal owner of Gulf Calibration Services Inc., a company based in Florida, United States, which competes with the Complainant. The Respondent’s former company, Guildline Instruments Inc. had been a distributor of the Complainant but the distributorship agreement between them was terminated in May 2005. Section 8.3 of an agreement between the Complainant and Guildline Instruments Inc. of August 28, 2003, provided that “Distributor shall not, at any time during the term of this Agreement or thereafter, have or claim any right, title, or interest in or to, any trademark or trade name belonging to or used by Principal, and shall not have or claim any right, title, or interest in or to any material or matter of any sort prepared for, or used in connection with, advertising or promoting of Products, even if such material or matter was produced, prepared, published or broadcast in whole or in part by Distributor or its employees or agents. It is understood that Principal has the sole and exclusive rights to any and all such trademarks, trade names, material, and matter”.

The Respondent registered the Domain Name on August 21, 1996. Since termination of the distributorship agreement mentioned above, the URL “www.guildline.com” has been used for a web page which purports to promote a business called “Custom Shirts & Things” dealing in “Logo Apparel”. It also states “This Site under Construction” and “This site was last updated 05/15/05”.

The Complainant’s solicitors wrote to the Respondent on November 28, 2005, complaining that his ownership and continued use of the Domain Name were in breach of section 8.3 of the distributorship agreement between the Complainant and Guildline Instruments Inc. The letter requested transfer of the Domain Name and offered to pay any expenses of the transfer. By letter of December 8, 2005, the Respondent requested further time to reply and indicated that he would entertain an appropriate offer if the Complainant wished to purchase the URL “www.guildline.com”. By letter of December 14, 2005, the Complainant reiterated the main points made in its solicitors’ letter of November 28, 2005, and threatened legal action if it did not have a firm proposal from the Respondent by January 3, 2006.

The Respondent’s attorneys replied to this correspondence by letter dated December 22, 2005. They asserted that the Domain Name was legitimately adopted and registered by the Respondent in 1996 and was used legitimately by him for nine years with the Complainant’s knowledge and acquiescence. With regard to the allegation of breach of section 8.3 of the distribution agreement, they stated that the Respondent’s companies were not claiming any right, title or interest in or to any trademark or trade name belonging to or used by the Complainant. They further maintained that, since termination of the distributorship agreement, the Domain Name had not been used inconsistently with the Respondent’s obligations, since it had only been used for the unrelated business of Custom Shirt & Things which did not give rise to any likelihood of confusion.

By letter dated January 9, 2006, the Respondent proposed a settlement to resolve all outstanding issues, comprising a full mutual release for all issues related to the distributorship agreement and the Domain Name, payment of US$35000 by the Complainant and transfer of the Domain Name to the Complainant. By letter dated January 13, 2006, the Respondent stated that he was willing to reduce the payment to 25,000 United States dollars and emphasized that the proposal covered all issues, not just the invoice issue and domain name issue mentioned in a proposal by the Complainant (which does not appear to be included in the parties’ submissions).

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is identical or confusingly similar to the mark GUILDLINE in which it has registered rights as stated above. The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Domain Name, alleging that his use of the URL for the “Custom Shirt & Things” web page does not represent a bona fide offering of goods or services, and that he is taking unfair advantage of emails inadvertently sent to “guildline.com” for the benefit of and to divert business to his competing company, Gulf Calibration Services Inc.

The Complainant further maintains that the Respondent is using the Domain Name in bad faith, by taking unfair advantage of emails intended for the Complainant and by seeking to sell it to the Complainant for 35,000 United States dollars and then for 25,000 United States dollars. However, the Complainant does not allege that the Respondent registered the Domain Name in bad faith.

The Complainant requests that the Domain Name be transferred to it. It confirms that there are no legal proceedings currently underway for the transfer of the Domain Name, but acknowledges that there are agreements between the parties dated May 19, 2000, and August 28, 2003.

B. Respondent

As mentioned above, the Respondent contends that he legitimately adopted and registered the Domain Name in 1996, and subsequently used it for nine years with the Complainant’s knowledge and acquiescence. He also maintains that, since termination of the distributorship agreement, he has not used the Domain Name inconsistently with his obligations, but has only used it for the unrelated business of Custom Shirt & Things which does not give rise to any likelihood of confusion.

The Respondent concludes that there is no reasonable basis for transferring the Domain Name to the Complainant.

 

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, to succeed in this proceeding, the Complainant must prove:

(a) that the Domain Name is identical or confusingly similar to a mark in which it has rights; and

(b) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(c) that the Domain Name was registered and is being used in bad faith.

These requirements will be considered in turn below.

In accordance with paragraph 15(a) of the Rules, the Panel must decide a complaint on the basis of the statements and documents submitted.

A. Identical or Confusingly Similar to a Mark in which Complainant has Rights

It is clear and not disputed that the Complainant has registered rights in the mark GUILDLINE. The Domain Name is identical to this mark apart from the generic suffix which can be disregarded. Accordingly, the first requirement of the Policy is satisfied.

B. Respondent has no Rights or Legitimate Interests

The Respondent appears to recognize that he does not have rights in respect of the Domain Name by virtue of his former company having acted as a distributor of the Complainant, since he does not claim to be entitled to continue to use the Domain Name in the same field and disclaims any right, title or interest in or to any trademark of the Complainant.

The Panel considers that the Respondent’s subsequent use of the Domain Name for the “Custom Shirts & Things” web page described above is not such as to give rise to rights or legitimate interests in respect of the Domain Name within the meaning of paragraph 4(a)(ii) of the Policy. It is evidently a rudimentary holding page and there is no evidence of any bona fide offering of goods or services of the kind indicated on it, or of any demonstrable preparations to use the Domain Name in relation to such goods or services before notice of the dispute as contemplated by paragraph 4(c)(i) of the Policy.

The evidence submitted does not show that the Respondent has any rights or legitimate interests in respect of the Domain Name and, in the Panel’s view, supports a finding that the Respondent does not have any such rights or legitimate interests. However, it is not necessary to reach a conclusion on this point in view of the Panel’s findings below with regard to the third requirement of the Policy.

C. Registered and Used in Bad Faith

The Respondent has not specifically disputed the Complainant’s allegations that he reads emails intended for the Complainant but sent inadvertently to the Domain Name and that he uses them for the benefit of his competing company, including by the diversion of customers expecting to do business with the Complainant. The Panel is satisfied by the evidence that these allegations of the Complainant are likely to be true. The Panel considers such use of the Domain Name to be in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.

However, the third requirement of the Policy is that the Domain Name has been registered and is being used in bad faith. It is evident from the terms of the Policy and confirmed in many decisions under it that these are cumulative conditions: see e.g. World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001, Telstra Computers Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

A long line of decisions has held that the first of these conditions requires that the original registration, or possibly a subsequent acquisition, of the Domain Name was in bad faith, and that the maintenance or renewal in bad faith of a registration originally made in good faith does not suffice: see Telaxis Communications Corp. v. William E. Minkle, WIPO Case No. D2000-0005, Teradyne Inc v. 4tel Technology, WIPO Case No. D2000-0026, Smart Design LLC v. Carolyn Hughes, WIPO Case No. D2000-0993, e-Duction, Inc. v. John Zuccarini, d/b/a The Cupcake Party & Cupcake Movies, WIPO Case No. D2000-1369, Weatherall Green & Smith v. Everymedia.com, WIPO Case No. D2000-1528, Village Resorts Ltd v. Steven Lieberman, WIPO Case No. D2001-0814, Substance Abuse Management, Inc. v. Screen Actors Modesl International, Inc., WIPO Case No. D2001-0782, Gamer.tv Limited v. Bestinfo, WIPO Case No. D2004-0320, PAA Laboratories GmbH v. Printing Arts America, WIPO Case No. D2004-0338, Green Tyre Company Plc. v. Shannon Group, WIPO Case No. D2005-0877.

In The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447, the panel expressed the view that “registered in bad faith” could cover maintaining a domain name on the register in bad faith, but found that the original registration had in any event been in bad faith. In WIPO Case No. D2004-0338, cited above, the panel considered that “Absent the consistency of approach which has found favour with numerous earlier panels, this Panel would have seen no good reason for a renewal not to be considered as equivalent to ‘registration’”.

Having reviewed the cases, the Panel considers that the consensus view, that the original registration or subsequent acquisition must have been in bad faith, should be followed in the interest of clarity and certainty.

In the present case the Complainant has not alleged that the Domain Name was originally registered in bad faith and there is no evidence as to the circumstances of the original registration. The Panel is not able to conclude on the basis of the statements and documents submitted that the original registration was made in bad faith. Furthermore, the Domain Name has remained in the ownership of the Respondent throughout, so there can be no question of acquisition in bad faith.

Accordingly, the Panel concludes that the first condition of the third requirement of the Policy has not been established and this Complaint must therefore be rejected.

This conclusion should not leave the Complainant without an effective remedy if its rights have been infringed. The Complainant has itself pointed out that the dispute may be covered by an arbitration clause in one of the contracts between the parties. Arbitration or court proceedings may well be more appropriate to resolve this dispute, since it appears to involve other issues as well as the Domain Name; and the parties have, perhaps understandably, refrained from attempting to explain within the confines of this proceeding the details of their former trading relationship and the circumstances in which the Domain Name was originally registered.

 

7. Decision

For all the foregoing reasons, the Complaint is denied.


Jonathan Turner
Sole Panelist

Dated: April 12, 2006

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2006/d2006-0157.html

 

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