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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Uni-Select Inc. v. British Auto Supply Co. Ltd.

Case No. D2006-0926

 

1. The Parties

The Complainant is Uni-Select Inc., Quйbec, Canada, represented by McCarthy Tйtrault, Canada.

The Respondent is British Auto Supply Co. Ltd. (herein “British Auto”), Toronto, Ontario, Canada, represented by J. Philip Viater, Canada.

 

2. The Domain Name and Registrar

The disputed domain name <autopartsplus.com> (herein the domain name in dispute) is registered with Tucows.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2006. On July 23, 2006, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name. On July 24, 2006, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 26, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was August 22, 2006, pursuant to a one week extension requested by the Respondent, unopposed by the Complainant and granted by the Center. The Response dated August 15, 2006, was filed with the Center on August 21, 2006.

The Center appointed J. Nelson Landry as the sole panelist in this matter on August 29, 2006. 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

In the present case where both parties have provided substantial evidence, which in part is uncontested and in part discloses divergences or contradictions, the Panel considers useful to present first the facts presented by each party which do not present divergences of views and secondly those parties’ facts on which there is disagreement which will be commented on the decision section.

Facts from the Complainant:

The Complainant has been using the Auto Parts Plus Trademarks throughout Canada since at least April 1988. The trademarks of the Complainant AUTO PARTS PLUS & DESIGN and AUTO PARTS PLUS, were registered respectively on November 17, 1989 and on January 01, 1999, both in association with the same wares, for automotive filters, automotive brake parts and automotive exhaust parts.

According to CIPO Canadian Trademark Data Base, Annex E to the Complaint, the trademark AUTO PARTS PLUS & DESIGN was applied for registration on March 25, 1988 by a predecessor of the Complainant. A declaration of use of the trademark was filed on September 14, 1989. By reason of a merger in March 1993, it became the property of the Complainant. The trademark AUTO PART PLUS was applied for registration by the Complainant on June 18, 1993 and from the registration document from Annex E to the Complaint the date of first use is as early as April 1998. The registration was delayed by an opposition that was made in July 1994 which was removed in September 1998. In both registrations, there is a disclaimer for the terms “auto and parts” outside the trademarks (herein the “Trademarks” or the “AUTO PARTS PLUS Trademarks”).

The domain name in dispute was registered on January 26, 1998.

On January 31st, 2000, the Complainant and Respondent entered into a Supply Agreement Group A, Annex G to the Complaint (herein the “Agreement”). In the preamble, in paragraph 3, it is stated: “The Member operates a business specialized in the sale of automotive parts, equipment, tools and accessories and is a member of Uni-Select as an affiliated business”. As of April 2006, there were approximately 200 members that are identified under the Complainant’s “Auto Parts Plus” banner and at least 350 stores across Canada cumulating sales of over $295,000,000.

The website of the Respondent has posted several other of the Complainant’s registered Trademarks, including the UNI-SELECT NETWORK Trademark and U AND S DESIGN Trademark Annex B to the Complaint.

The operator of the Respondent’s website located at <autopartsplus.com> provides an online auto parts order form that allows Internet users to communicate with the Respondent.

The Complainant sent, by registered mail, a first letter dated November 6, 2002, to the Respondent indicating that the Respondent violates its intellectual property rights.

Facts from the Respondent

The Respondent British Auto has been selling auto parts since 1904 and joined the Complainant’s network in 1987 (Annex X to the Response) to increase its purchasing power.

The Complainant is a corporation that is essentially a buying group for auto parts at a cheaper rate to resell them to the members of its network for their own independent businesses.

The main website, “www.uni-select.com” of the Complainant was created in February of 1996, and is the website that the Complainant uses to promote its activities.

The Complainant held a members meeting to discuss the increasing phenomena of web-based business. The Complainant encouraged all their members to expand their independent businesses on the Internet.

Michael Schwartz of the Respondent, approached Pierre Thйriault of the Complainant and informed him that the domain name in dispute was available for use and asked the Complainant if they would have any objections to the Respondent using the domain name for it’s own independent business or if the Complainant would like to use it for themselves. Mr. Thйriault said, “if it’s not already taken, go get it and good luck”.

The Respondent presented the Complainant with the web-design and the Complainant was impressed with the website and wished the Respondent luck in its endeavors. The Respondent then proceeded with the registration of the domain name in dispute.

From 1998 until 2002, the Complainant knew that the Respondent was using the domain name in dispute to promote its sales. The Complainant did not voice any objections and kept encouraging the Respondent to keep up the good work. The sales of the Respondent were increasing dramatically and the Respondent ordered more parts from the Complainant. The Complainant loaned the Respondent nearly $170,000 to buy another auto parts business to increase its growth.

In 2002, the Respondent received a letter from the Complainant and communicated with the Complainant by telephone. The Complainant apologized and said it was a mistake from their legal department and told the Respondent to forget the letter.

In the agreement between the parties, Annex A to the Response section 6.1 reads “…identify his business with the name, logo and colours of Auto Part Plus…”. In 2002, the Complainant asked the Respondent to modify the trademarks on their website which were incorrect, so as to represent the actual marks.

The Respondent has been and continues to sell auto part and supplies from the website at the domain name in dispute since 1998 and its online expansion has always been made and commonly known by the domain name in dispute.

The Respondent did not place any forwarding device to another website. It has always used only the domain name in dispute <autopartsplus.com> for its sales of auto parts and supplies.

Since 1987 the Respondent exclusively bought and sold products obtained from the Complainant and since the termination of the agreement between the parties, continues to use the site of the domain name in dispute to sell auto parts and supplies. The Respondent has changed its website to remove all attachments to the Complainant since thetermination of the Respondent’s participation in the Complainant’s network by the Complainant.

The Respondent has spent substantial money advertising the domain name in dispute and built its entire business expansion on the said domain name. It has not registered any other domains with the terms “auto parts plus”. The Respondent only one domain name to start their business and nothing more.

The Complainant registered <uni-select.com> and another domain name <autopartsplus.net> at least two year ago. It has not yet made any use of <autopartsplus.net>.

Facts where there is disagreement or contradiction:

Facts provided by the Complainant:

The Respondent allegedly has not been authorized to use the AUTO PARTS PLUS trademark either alone or in conjunction with any other word as a domain name nor to promote its business via the Internet.

In 2002, Mr. Schwartz allegedly offered to sell the domain name in dispute to the Complainant for approximately $10,000.

The Complainant allegedly sent a second letter, dated April 21, 2004, to the Respondent indicating that the Respondent violates its intellectual property rights. This letter in (Annex F to the Complaint) bears the mention “by personal delivery”, not sent registered mail as indicated by the Complainant.

Facts provided by the Respondent:

The Respondent asserts that it never received the said letter dated April 21, 2004, and had no knowledge of it until this proceeding had been initiated.

The Respondent asserts that it has a license to use the “…business name Auto Parts Plus”. and is also known as Auto Parts Plus, as per the agreement.

The Respondent asserts that it has never offered to sell the disputed domain name.

 

5. Parties’ Contentions

A. Complainant

The Complainant submits a) that domain name in dispute is identical or confusingly similar to the Complainant’s Trademarks, b) that the Respondent has no legitimate interest in the domain name in dispute and is not making a legitimate non commercial or fair use of the domain name in dispute since the website is both commercial and transactional and c) that the domain name in dispute was registered and used in bad faith.

According to the Complainant, the Respondent could not have been commonly known by the domain name in dispute, distributed products and services as a member of the “Uni-Select Network”, since these matters were entirely determined by its contractual relations with the Complainant and the Complainant has never authorized the Respondent’s use of the Trademarks as a domain name. See Motorola, Inc. v. NewGate Internet, Inc., WIPO Case No. D2000-0079; The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113; Omyacolor S.A. v. Recep Tanisman-Emko Emaye A.S., WIPO Case No D2005-0520 and Sociedad Espaсola del Acumulador Tudor S.A. v. Asesoria Materiales Exportacion S.L., WIPO Case No. D2005-0621. As a licensee or a dealer of the trademark owner one does not per se have a right to a domain name. The legitimacy depends on the nature and scope of the rights.

The Complainant contends that the Respondent clearly chose the domain name in dispute so as to increase traffic to the website; Internet users would reasonably expect to find such merchandise at a website at the domain name <autopartsplus.com> and moreover, the website has posted several other of the Complainant’s registered trademarks, including the UNI-SELECT NETWORK trademark and U AND S DESIGN trademark as mentioned in Annex B of the Complaint.

The Respondent has used the domain name in dispute intentionally to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s Trademarks as to the source, sponsorship, affiliation or endorsement of its website or of products or services on its website. See Deutsche Telekom AG v. Yong Cho, WIPO Case D 2005-0415 and SR Teleperformance v. At Random, WIPO Case No. D2005 0193.

The Complainant reminds that such activity is sufficient evidence of bad faith to justify the claim.

B. Respondent

The Respondent does not challenge the Complainant on the first criteria, the identity or the confusing similarity of the domain name in dispute with the trademarks, but challenges the two other criteria, denies having no legitimate interests in the domain name in dispute and having registered and used the domain name in dispute in bad faith.

The Respondent relying on the fact that it has been part of the Complainant’s network since 1987 (Annex A to the Response) and wanting to expand its business via the online network submits that it sought the consent of the Complainant, obtained it and had a legitimate interest in registering the domain name in dispute and further relies on Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No D2002-0774, wherein the panel held that a reseller using the complainant’s trademark over many years has a legitimate interest in the domain name and in any event was not using it in bad faith. It also relies several other WIPO UDRP decisions wherein the panel considered that if a respondent exclusively, or for the most part, sells a complainant’s products, it has a legitimate interest in the domain name. See Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No D2000-0187; Adaptive Molecular Technologies Inc. v. Priscilla Woodward & Charles Thorton d/b/a Machines & More, WIPO Case No. D2000-0006. The Respondent reiterates that it exclusively sold the Complainant’s products.

The Respondent further contends that the words auto parts plus are not anywhere near distinctive to warrant a web monopoly for the Complainant although the parties knew each other and their respective trademarks, the domain name is a generic term or, at best, a descriptive mark lacking proof of acquired distinctiveness and auto parts is exactly what the Respondent sells. According to the Respondent, WIPO UDRP panels have concluded that a respondent has a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the complainant’s trademark. See EAuto, L.L.C . v. EAuto Parts, WIPO Case No. D2000-0096 which held that someone has a legitimate interest in a domain that describes their services. The panel in that case specifically noted that people use terms for reasons other than for its trademark significance. Moreover, some one may legitimately use the term in a way that is consistent with the meaning.

The Respondent then represents that the Complainant is trying to argue contractual principles about whether a license to use their trademark was extended to British Auto and for how long which issues are beyond the scope of this Panel. Having allowed the Respondent to build its entire business of the website over a period of 8 years, the Complainant is now legally estopped from asserting any more rights they may have on the domain name in dispute. It is not the place of this Panel to make any findings that could jeopardize this legal right of the Respondent. See Adaptive Molecular Technologies Inc. v. Pricilla Woodward & Charles R. Thornton, d/b/a Machines & More, WIPO Case No. D2000-0006.

According to its evidence, the Respondent alleges that its online expansion has always been commonly known by the domain name in dispute and stresses that there is not and never was any forwarding device to another website. The Respondent which sells auto parts and supplies has always used <autopartsplus.com> as its domain name. It has spent numerous amounts of money advertising the domain name in dispute and built its entire business expansion on the said domain name. No reasonable person would ever do this if they did not, in good faith, believe that the website was theirs. See Green Tyre Company Plc.v. Shannon Group, WIPO Case No. D2005-877, wherein the respondent was licensed. Yet in that case the panel found that there was still no evidence of bad faith. However, the panel ruled in favor of the respondent since it was not a case of cybersquatting, it was a case of law, such as this case.

The Respondent further represents that in 2004, the Complainant registered <autopartsplus.net> but it has not even set up its website on <autopartsplus.net>, which is evidence that this action is clearly being brought frivolously.

In respect of the offer to sell the domain name in dispute, the Respondent denies this fact.

In view of the circumstances of this case, the Respondent requests that the Panel make a determination on reverse domain name hijacking against the Complainant.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order for a domain name to be cancelled or transferred:

(i) The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights, and

(ii) The Respondent has no rights or legitimate interest in respect of the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Respondent does not dispute this criterion. It therefore acknowledges that the Complainant has rights in the Trademarks which are registered in Canada and that the domain name in dispute is identical to the Trademarks. The Panel finds in any case that the disputed domain name is identical to the Complaint’s AUTOPARTS PLUS trademark.

Accordingly, the first criteria under the Policy has been met.

B. Rights or Legitimate Interests

Respondent has filed a response in this proceeding and contends that it has rights or legitimate interest in the domain name in dispute and that it has engaged in legitimate, non-commercial and fair use of the domain name in dispute.

The Complainant has given a license to the Respondent to make use of Complainant’s Trademarks. The evidence, above and discussed below, demonstrates that the Respondent has openly engaged is a legitimate business under the Complainant’s Trademark in accordance with the agreement between the parties, the consent of the Complainant to use the Trademarks of the Complainant and to register the domain name in dispute in its own name and the Complainant’s subsequent acquiescence.

The Respondent has been engaged in the commercial business of selling auto parts since 1904 and has become a member of Complainant’s network in 1987. Two agreements were signed in this respect and both have been produced as annexes to the Response. The first one having been destroyed in a fire is evidence by an unsigned copy acknowledged by the Complainant to correspond to the original signed one.

The first agreement of 1987 is entitled “Auto Parts Plus Identification Program” and in the third paragraph of the preamble, we read: “Subject to the terms hereinafter set forth, Uni-Select grants to the Auto Parts Plus Member rights to the use of the trademark and business name Auto Parts Plus (the “Trademark”) within the following territory.” And in section 1.1b) it is stipulated as an admission criteria that it must “be a party to a Supply Agreement with Uni-Select” which is the second agreement put in evidence by the Respondent. Both of these agreements are silent in respect of domain names.

It is stipulated in section 3.1 of the first agreement that “the non exclusive license to use the Trademark is for the purpose of enabling the Auto Parts Plus Member to sell automotive replacement parts and to use the Trademark in the course of the Members’ normal activities and for no other purpose”. The evidence before the Panel indicates that the Respondent did use the Trademarks and domain name in dispute exactly for that purpose and exclusively with the Complainant.

In section 6 – Identification - the Member undertakes to identify his business with the name, logo and colours of Auto Parts Plus. As seen herein, at the request of the Complainant, some errors of colours were corrected by the Respondent.

Finally in section 7.1, it is stipulated that “the Member acknowledges … that any use of the business name or Trademark Auto Parts Plus requires the express authorization of Uni-Select.”

The Supply Agreement in Annex G to the Complaint does not have any section pertaining to the use of the Trademark. However, under section 5 – Purchase of goods -

It is stipulated: “The Member undertakes to buy all of its automotive parts, equipment, tools and accessories exclusively from Uni-Select…”. The evidence is clear and not denied that the Respondent has, since 1987, including the period since the registration of the domain name in dispute, maintained exclusive supply activities with the Complainant. If there are instances of confusion as the Complainant contends, they are most likely the result of the Respondent complying with the two agreements. The Respondent in a likelihood was acting legitimately and in good faith.

In 1998, after disclosing its intention to the Complainant of registering the domain name in dispute to enhance its business activities and having received no objection but on the contrary encouragement to do so, it did register the domain name in dispute and has used it for at least 7 years when in 2006, the contractual relationship between the Complainant and the Respondent was unilaterally terminated by the former.

The Respondent has conducted all its online activities exclusively on the domain name in dispute and exclusively to promote and sell products purchased from the Complainant and has thus substantially and continuously increase its business volume which proved beneficial to both the Respondent and the Complainant. In a similar situation in Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No D2002-0774, the respondent had not diverted sales from the complainant and the complainant had adopted a domain name policy one year after the registration by the respondent and tried to obtain the transfer after the complaints of other distributors who felt that the respondent had an unfair advantage. In that case, the panel declined to order the transfer.

The evidence is clear to this Panel that the Respondent has been engaged in a bona fide commercial legitimate business prior to 1987 and has continued this legitimate business under the Trademarks of the Complainant pursuant to the agreements signed with the Complainant and its domain name pursuant to the consent given by the Complainant.

For these reasons, the Panel finds that the Respondent has rights or legitimate interests in the domain name in dispute. Therefore, the second criteria of the Policy has not been met by the Complainant.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.

It should be noted that the circumstances of bad faith are not limited to the above.

The Complainant contends that the domain name in dispute was registered and used in bad faith. It appears significant to the Panel, in the light of the present circumstances of this case, to review the evidence and put it in perspective, first in respect of the registration and then its use.

The Complainant has not provided much evidence to support its contention that the domain name in dispute was registered in bad faith other than the fact that the Respondent was not, in his agreements with the Respondent, authorized or licensed to register said domain name. The Respondent has put in evidence two agreements between the parties. While none does authorize the Respondent to make such registration, neither does prohibits it.

However the Respondent has stated that it had informed the Complainant of its project and was told to go ahead. Furthermore this evidence is corroborated by statements of former employees at managerial level of the Complainant and the behavior of the Complainant.

The Respondent has provided an affidavit from R. McPherson who was National Accounts and Ontario Sales Manager of the Complainant during the period that the domain name in dispute was registered. Mr. McPherson confirms that he was present when “Mr. Schwartz (of the Respondent) asked Mr. Thйriault (of the Complainant) if Uni-Select (the Complainant) wanted the domain and Mr. Thйriault told Mr. Schwartz that Uni-Select did not want the domain” and “Mr. Thйriault told Mr. Schwartz that he can register <autopartsplus> if he wants to set up a website for his corporation”.

This meeting took place in 1998 prior to the registration. It is only in 2002 that the Complainant sent by registered mail to the Respondent a demand letter to transfer the domain name. When the latter inquired about this letter, he was told to forget it and continued its business. In 2004 the Complainant contends to have sent another cease and desist letter, which in fact is indicated as “delivered by hand” (Annex F to the Complaint), but the Respondent contends that it never received said letter. It is appropriate to observe that the said second letter mentions that a draft copy of the complaint had been prepared, is attached and gives the Respondent a short delay to comply otherwise the complaint would be filed with WIPO. Yet it is only in 2006 that this proceeding started.

In a solemn affirmation, (Annex G to the Response) Philip Antecol a former employee of the Complainant from October 2004 and March 2005 (after the alleged second letter) as General Manager for the Ontario division of the Complainant informs us that he was asked “to try to encourage British Auto Supply (the Respondent) to release the rights to <autopartsplus.com> (the domain name in dispute)”. His investigation confirmed that the Respondent was “given explicit permission by Mr. Pierre Thibault to proceed with the website name. Later on in contacts with the Respondent he inquired about their view of the situation and his prior understanding was confirmed.” He then felt that he would not be able to resolve this issue amicably without more active support and interest from Executive Vice President of the Complainant, which was not forthcoming. He further states that the course of action of the Respondent corresponded to his views, as General Manager, of encouraging members to grow their business and that the Respondent “was certainly ahead of the curve”.

During that period some events took place. The Respondent was asked to correct its website to accurately represent the Trademarks which he did, then it benefited from the assistance of the Complainant for a loan and the availability of premises when its own burned down. To this Panel, this is not consistent with disapproval of the registration and severe demand letters. It is similar to the facts in National Futures Association v. John L. Person, WIPO Case No D2005-0690, wherein the Complainant knew about the website and asked for minor changes but did not challenge title until much later.

All these facts and circumstances point to the direction of earlier approval and authorization to register the domain name in dispute and certainly acquiescence thereafter. As it has been stated in Green Tyre Company Plc.v. Shannon Group, WIPO Case No. D2005-0877 where explicit permission was proven, the Respondent did not have the requisite bad faith when it registered the domain name in dispute.

The WIPO UDRP panel decisions cited by the Complainant are not directly relevant and applicable to the present case for different reasons. In the See Motorola, Inc. v. NewGate Internet, Inc., WIPO Case No. D2000-0079 the complaint was filed within six months and there was no corroborating evidence of the approval of Motorola and respondent had not presented evidence sufficient to convince the three member Panel of its legitimate interest in the domain name. In Nokia Corporation v. David Wills, WIPO Case No. D2001-0004 there was no trademark authorization and the respondent had insufficient evidence as also found in Kabushiki Kaisha Hitachi. In SR Teleperformance v. At Random, WIPO Case No. D2005-0193, the panel considered the clear evidence, not denied, of redirecting the Internet traffic to another website At Random Communications which company was also the subject of a successful complaint.

In The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113, the Complaint was filed in less than a year in respect of well-known bostitch name. The panel found that there was little evidence of respondent’s contention of having been authorized by the Respondent who was simply a retail seller of Complainant’s products. The panel stated that such collateral use was certainly not enough to confer the right to use the trademark as the domain name “without something much more such as authorization in a licensing agreement or other special circumstances”. The said circumstances are in evidence in the present case

In Omyacolor S.A. v. Recep Tanisman-Emko Emaye A.S., WIPO Case No D2005-0520, there was no response nor dispute of the facts advanced by the complainant. In Sociedad Espaсola del Acumulador Tudor S.A. v. Asesoria Materiales Exportacion S.L., WIPO Case No. D2005-0621, the panel having examined the evidence of both parties did not find the presence of a distributorship agreement and relied on the following statement in Omyacolor S.A. v. Recep Tanisman-Emko Emaye A.S., WIPO Case No D2005-0520 “a distributor may not register a domain name identical to the principal trademark unless the principal has given his explicit prior consent”. Furthermore, the record showed that the respondent in that case was involved in passing off activities.

On the preponderance of evidence in this case, the Panel finds that the domain name in dispute was registered in good faith.

The Complainant contends that the Respondent would have asked $10,000 to sell the domain name in dispute which fact is denied by the Respondent. The affidavit of Pierre Thйriault, account manager of the Complainant, states that in a conversation with Michael Swartz the later offered to sell the said domain name for “an amount significantly higher than the cost of registering and maintaining the domain name (approximately $10,000)”. This statement is not corroborated. This event would have taken place in March 2001, prior to the first demand letter and the second demand letter which had a draft complaint attached thereto, which draft complaint has not been produced. Was the alleged offer to sell mentioned therein? We do not know.

This type of evidence, contested by the Respondent demonstrates that this proceeding is not the best forum to decide such contested factual assertion where there is no cross-examination nor discovery of the parties, see Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No D2000-0187 wherein the panel stated “that argument is better addressed to a court, which is better equipped to resolve such complicated factual issue”.

If there was, in 2002, such disapproval of the registration and the benefit of an alleged offer to sell, why was the Complaint filed only in 2006? This long delay is troubling for this Panel as the withholding of important information about the trademark application troubled the Panel in the ITMetrixx., Inc., v. Kuzma Productions WIPO Case No D2001-0668 case and similarly for a delay of three years in Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No D2000-0187. Is it not that with the Respondent working exclusively with the products obtained through the Complainant and with the success of these activities beneficial to both parties, the filing of a complaint would have had severe consequences if the relationship thus terminated? There were negative consequences apparently for the Respondent subsequent to the unilateral termination by the Complainant in early 2006. The exchange of e-mails between the representative of the Respondent, the WIPO Center and counsel for the Complainant mentions difficulties for the Respondent to find counsel, in part due to its financial situation.

Since the registration of the domain name in dispute in 1998 until termination in early 2006, the evidence is clear and cogent that the Respondent has used the domain name in dispute solely for its activities and exclusively for the Complainant. The Respondent represents that it was using “ auto and parts”, generic terms to explain to the public the nature of its activities. The evidence demonstrates that the Respondent was using these two terms, not alone but together with the third term “plus” which are the Trademarks of the Complainant, Trademarks that it was authorized to use. Obviously, these Trademarks being made of generic and descriptive terms auto and parts (which are subject to a disclaimer in the registrations) are weak trademarks. However, as a combination they remain trademarks that have been adopted, applied for registration by the Complainant, examined, accepted and registered by the Canadian Patent Office. It is not for this Panel to assess the validity of these trademarks on the basis of the presence of descriptive terms therein.

The Draw-Tite, Inc.v. Plattsburg Spring Inc.,v. WIPO Case No D2000-0017 case is quite analogous to the present one. The panel found first that the respondent was selling the complainant’s goods under the complainant’s trademark and was using the domain name in connection with the bona fide offering of the complainant’s goods or services and second complainant did not controvert respondent’s assertions or evidence of being authorized to register the domain name, third “the respondent has been operating its website under the disputed domain name since 1997, but never received any complaint from complainant until June 1999. (Exhibit 1 to response). Even after its complaint to respondent, complainant continued to sell respondent products under the Draw Tite trademarks”. The affirmation of the respondent combined with complainant’s failure to explain why it did not take action for 2 years before taking action and file a complaint are events which show complainant’s acquiescence to the respondent’s actions. The Panel finds that the events of the present case equally show acquiescence and are as persuasive and determinative, if not more.

On the record in the present case, the Panel finds that the Respondent has used the domain name in dispute openly, exclusively and in good faith, to conduct its business with only one supplier, the Complainant, on one hand and its customers on the other hand.

For the reasons discussed above, the Panel finds that the third criteria of the Policy has not been met.

Determination of reverse domain name hijacking

The Respondent has asked for a determination of reverse domain name hijacking. Paragraph (1) of the Rules defines reverse domain hijacking as “ using the Policy in bad faith to attempt to deprive a registered domain name of a domain name. Paragraph 15(e) of the Rules is also relevant. As the Panel said in Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc., WIPO Case No D2004-0843 “To prevail on such a claim, Respondent must show that the Complainant knew of the Respondent’s unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith.”

If the Panel was to use the low threshold that the Complainant has used to attempt to convince the Panel of Respondent’s lack of bona fide interest and its bad faith in the registration and use of the domain name in dispute, there would not be much hesitation to find bad faith reverse hijacking. This Panel does apply higher levels of criteria.

In respect of the unassailable right of the Respondent, one must remember that the Complainant had the affidavit of Mr. Thйriault about the alleged offer to sell the domain name in dispute for “approximately $10,000”, which fact is challenged by the Respondent. As already mentioned a competent court may, if called upon, determine the outcome of this credibility issue. Yet this evidence was in affidavit form and cannot be totally ignored in this context. This affidavit gives a certain reasonableness to the Complainant in filing a complaint. See Private Media Group, Inc. Despite the substantial evidence in favor of the Respondent, this Panel cannot conclude to a clear knowledge by the Complainant of Respondent’s unassailable right or legitimate interest in the domain name in dispute or a clear lack of bad faith in the registration and use of the said domain name. As already mentioned herein, this type of issue and determination of evidence is better assessed by a court of competent jurisdiction.

The claim for the determination of reverse domain name hijacking is declined.

 

7. Decision

On the preponderance of the evidence in this case, this action should be denied and a finding of reverse domain name hijacking should not be found.

The Panel concludes that:

(a) the domain name <autopartsplus.com> is confusingly similar to the Complainant’s Trademark; and

(b) the Respondent has rights or legitimate interest in the domain name in dispute; and

(c) the domain name in dispute has not been registered in bad faith and is not being used in bad faith;

(d) the reverse highjacking has not been demonstrated.

For all the foregoing reasons, the Complaint is denied.


J. Nelson Landry
Sole Panelist

Dated: September12, 2006

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2006/d2006-0926.html

 

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