DECISION OF THE THIRD-PARTY DECIDER. Henkel KGaA v. MADEurope.com. Case No. 4014: fa.be

Transcription

1 BELGIAN CENTRE FOR ARBITRATION AND MEDIATION DECISION OF THE THIRD-PARTY DECIDER Henkel KGaA v. MADEurope.com Case No. 4014: fa.be 1. The Parties The Complainant in the administrative proceeding is Henkel KGaA, having its head office at Henkelstrasse 67, Düsseldorf, Germany, represented by Philippe Péters and Florence Verhoestraete, attorneys, with offices located at Chaussée de la Hulpe, 177/6, 1170 Brussels, hereinafter the Complainant. Respondent is MADEurope.com, represented by Alexander White, with offices located at Avenue de Stalingrad, 100, 1000 Brussels, hereinafter the Respondent. 2. Domain Name The domain name at issue is fa.be, registered on December 12, 2000, hereinafter referred to as the Domain Name. 3. Procedural History On April 4, 2002, the Belgian Centre for Arbitration and Mediation (the Centre) invited Mr. Geert Glas to serve as the Third-Party Decider, and informed him that the exchange of arguments would be closed on April 11, 2002, and that his decision was due on April 25, On the same day, the Third-Party Decider sent the Statement of Independence to the Centre. On April 9, 2002, Complainant sent a request to file further submissions in order to reply to a number of arguments and facts contained in the Respondent's response, pursuant to Article 12 of the Rules for Domain Name Dispute Resolution (the "Rules"). Following Complainant's request, the Third-Party Decider issued on April 10, 2002, an Intermediate Procedural Decision, ordering that Complainant was authorised to file submissions in response, provided that such submissions be limited to replying to facts and arguments contained in the Respondent's response and the enclosures thereto. The submissions had to be sent to the Centre, together with a copy to Respondent, at the latest on April 24, 2002, and the decision would be due on May 8, On April 24, 2002, the Centre provided the Third-Party Decider with Complainant's submissions in response. Page 1

2 The Third-Party Decider shall issue its decision based on the complaint, the response, the submissions in response, the evidence presented, Article 10 of the "Terms and conditions of domainname registrations under the ".be" domain operated by DNS", entitled "Dispute resolution policy" (the "Policy"), and the Rules. 4. Factual Background Complainant s main business relates to the manufacture and commercialisation of products for body care, including soap, body lotions, sun cream, etc. Complainant is the owner of several trademark registrations in various countries for the trademark FA. Copies of those trademark registrations are attached to the complaint. These are: Benelux trademark registration number for the word mark FA, filed on 14 April 1971, for goods of class 3; International trademark registration number for the word mark FA, filed on 16 August 1988, for goods of classes 3, 5, 6, 8, 9, 10, 11, 14, 16, 18, 20, 21, 25 and 26; International trademark registration number 2R for the device mark FA, filed on 19 March 1991, for goods of class 3; and Community trademark registration number for the word mark FA, filed on 1 April 1996, for goods of classes 3, 5 and 21. Complainant uses this "FA" trademark to identify and distinguish a number of its products (a.o. soap and shampoo). It can be said that "FA" is a rather well-know trademark for these products. It appears from Respondent's web site located at that Respondent is a company active in the IT and Internet world which provides services to its clients as various as interactive online promotions, domain name registrations, online surveys, intranet portals, discussion forums, webmail, e-commerce, secure online payment systems, etc. From the file of the parties, it appears that the following facts and allegations are underlying the present dispute: On 12 December 2000, the Domain Name was registered by Respondent. It appears from two printouts from DNS's WHOIS database, provided by Complainant, that Respondent first registered the Domain Name as Mediappliedynamics but that subsequently this name was changed to MADEurope.com. Complainant alleges and Respondent does not deny that the Licensee and the Agent of the Domain Name are actually one and the same company. On 15 January 2001, Complainant sent a letter of cease and desist by registered mail to both Mediappliedynamics and MADEurope.com, at Stalingradlaan 100, 1000 Brussels, requesting that Respondent cease using the Domain Name and releases the same to Complainant. Respondent never received these letters. According to Complainant, Respondent simply failed to pick them up at the post office; Respondent's representative alleges that the post office refused to release the letters, because they were not addressed to him personally (the letters were addressed to "t.a.v. de directie", meaning in English "to the attention of management"). On 22 February 2001, Complainant's counsel sent another cease and desist letter written in the Dutch language. At the request of Respondent's representative, Complainant's counsel sent an English translation of the same letter to Respondent on 23 February Respondent's representative replied by on 26 February 2001, stating that he was not aware of a product called "Fa" or a company called "Henkel" and that the Domain Name had been registered Page 2

3 only because "fa" is a two letter abbreviation and because the Domain Name constitutes a play on words in the English language, fabe being the shortened word for "fabulous". He moreover specified that he had future project for the Domain Name, as well as for the other two letters domain names registered by his company, namely dd.be, 1a.be, dv.be, ee.be, ff.be, fu.be and hq.be. He further stated that the domain name was not for sale and that he had modified the web page located at by adding the following disclaimer: "This domain name is in no way connected with the "FA" brand. You can find the company web site on any search engine". On May 7, 2001, Complainant's counsel wrote to Respondent that his allegation that he was not aware of the FA trademark lacked all credibility and that he had to stop using the Domain Name and transfer it to Complainant. Complainant contends that Respondent replied over the phone that he was prepared to give up the Domain Name in exchange for another two letter domain name. This fact is challenged by Respondent and is not evidenced, save by a letter of Complainant's counsel dated May 12, There is no relation between Respondent and Complainant, and Respondent is not a licensee of Complainant, nor has Respondent otherwise obtained an authorization to use Complainant s trademarks. The Domain Name resolves to the following web page, which is in fact an elaborate "Under construction" page: 5. Parties Contentions a. Complainant In summary, Complainant argues that: that Respondent has registered the Domain Name which is identical to Complainant s FA Page 3

4 trademark; that Respondent has no rights or legitimate interests in respect of the Domain Name because he is in any event unable to rely on circumstances, which, pursuant to Article 10, b, 3 of the Policy, could establish a legitimate interest; and that Respondent registered the Domain Name in bad faith, because Respondent could not ignore Complainant s trademark in view of its fame and because he offered the Domain Name for sale (reference is made, concerning this last point, to Respondent's alleged offer to exchange the Domain Name for another two letter domain name). Consequently, Complainant requires the transfer of the Domain Name registration. b. Respondent In summary, Respondents argues that: he registered the Domain Name without knowledge of Complainant or its trademark, "to be used in association with a service offered to the professional, non-retail clothes fashion industry"; he registered the Domain Name because it is a short, easy to remember domain name and because it is the abbreviation of the words " Fashion Agency, Fashion Agencies, Fashion Addresses and Fashion Access as well as Fashion Agenda with the intention of a play on words on the connotation of fabulous or "fab(e)" when read as his company has developed several different web sites and projects around different domain names, as will be the case for the Domain Name; there are a lot of other different two letter domain names who are rightfully used by companies as abbreviations, although these companies are not owners of the corresponding two letter trademarks; there are also a lot of other "fa.something" gtlds and "fa" cctlds, who are owned and exploited by individuals or companies unrelated to Complainant; and the trademark "FA" is not as well known as Complainant would like it to be, as allegedly evidenced by several searches made on the Internet; Consequently, Respondent requires that the complaint be denied. 6. Discussion and Findings Paragraph 15.1 of the Rules instructs the Third-Party Decider as to the principles the Third-Party Decider is to use in determining the dispute: "The Third-Party Decider shall decide on the Complaint in accordance with the Policy and these Rules." Pursuant to article 10, b, 1, of the Policy the Complainant must prove each of the following: "the licensee's domain name is identical or confusingly similar to a trademark, a tradename, a social name or corporation name, a geographical designation, a name of origin, a designation of source, a personal name or name of a geographical entity in which the Complainant has rights; and the licensee has no rights or legitimate interests in the domain name; and the licensee's domain name has been registered or is being used in bad faith." Page 4

5 a. Identity The Domain Name is fa.be. FA is a registered trademark of Complainant. In view of the above, the Thrid-Party Decider finds that the Domain Name is identical to the trademark FA of Complainant. Indeed, it does not make a difference whether the word FA is used as such as a second level domain, or if it is used as the combination of the letters f and a resulting from the alleged abbreviation of two words. b. Rights or Legitimate Interests In essence, Complainant contends that Respondent has no rights or legitimate interests in respect of the Domain Name because he is in any event unable to rely on circumstances, which, pursuant to Article 10, b, 3 of the Policy, could establish a legitimate interest. In this regard, Complainant states that Respondent does not use the Domain Name in connection with the bona fide offering of goods or services, since in fact the Domain Name has not been effectively used by Respondent. This is confirmed by Respondent, who states that the Domain Name has simply been connected to an elaborate "Under construction" page while waiting for a project and web site to be developed. Respondent however considers that this constitutes a bona fide offering of goods or services, since the "Under construction" page advertises the services provided by Respondent. While the Third-Party Decider finds that the mere connection of a domain name to an "Under construction" page does constitute a use of the domain name in question, such use does however certainly not constitute a bona fide offering of goods or services. Indeed, an "Under construction" web page is by nature merely an announcement or generic advertisement. The fact that the "under construction" page of Respondent contains a "contact us" invitation and a one sentence description of the services it offers does not constitute a bona fide offering of goods or services which would create a legitimate interest in the Domain Name. Complainant furthermore states that Respondent is not commonly known by the Domain Name. Respondent does not provide any evidence showing that this could be the case. Finally, Complainant alleges that it has in any case a greater interest in the Domain Name than Respondent. While this seems very true, it is however not the relevant criteria to be applied in the framework of this proceeding. According to Article 10, b, 3 of the Policy, it would indeed suffice for Respondent to successfully challenge Complainant's allegations and evidence and show that it has a legitimate interest in the Domain Name in order to succeed. In the limited framework of this procedure, the Policy and the Rules, the only relevant question is whether Respondent has a legitimate interest. Respondent indicates that he choose the Domain Name because it is a short, easy to remember domain name and because it is the abbreviation of the words " Fashion Agency, Fashion Agencies, Fashion Addresses, Fashion Access as well as Fashion Agenda with the intention of a play on words on the connotation of fabulous or "fab(e)" in its shortened form when read as Respondent also provides information on several projects which it has developed in the course of its business. However, Respondent does not provide any evidence sustaining that it has a right to the Domain Name, nor that it has any commercial or non-commercial project around the Domain Name which could be of a nature to create a legitimate interest in the Domain Name. Finally, the Third-Party Decider notes that Respondent wrote the following phrase on the web page connected to the Domain Name: "This domain name belongs to madeurope. If you have interest in developing a project, portal or other concept or service, contact us." This clearly shows that Respondent does not have a clear plan with regard to the use of the domain name and is willing to work with any third party who wishes to develop a project around the Domain Name. This seems to indicate that respondent does not have a personal legitimate interest in the Domain Name. Page 5

6 Under these circumstances, the Third-Party Decider finds that Respondent has no rights or legitimate interests in the Domain Name. c. Registration or Use in Bad Faith (i) (ii) The Rules and the Policy require that in order for the transfer of a domain name to be ordered, its licensee must have registered or used it "in bad faith". The same "in bad faith" wording can be found in the Uniform Dispute Resolution Policy (UDRP) adopted by ICANN, which UDRP has influenced the current Rules and Policy. Most often the presence of such bad faith can be deduced from specific facts which are indicative of so-called cybersquatting: the owner or licensee of the domain name proposes to transfer the domain name to the trademark owner for valuable consideration, the owner or licensee of a domain name engages in a pattern of conduct by registering several domain names which are similar to trademarks Such fact is invoked in this case where Complainant alleges that respondent proposed during a telephone conversation to transfer the Domain Name to Complainant in exchange for another two letter domain name. Assuming that such proposal was indeed made (which Respondent denies), this does not seem to establish that Respondent would have registered or used the Domain Name in bad faith. Respondent does indeed seem to have a clear preference for two letter domain names in the Belgian country code domain space, as illustrated by the fact that Respondent is the current licensee of the following domain names: dd.be; 1a.be; dv.be; ee.be; ff.be; fv.be; hq.be. Two letter domain names are generally very popular and sought after as they are easy to remember and therefore attractive to web site owners. To the best of our knowledge none of these other two letter domain names seems to infringe on a third party's trademark. This pattern of conduct therefore gives some credibility to Respondent's argument that when registering the Domain Name, he was merely looking for another two letter domain name and had no intention to infringe Complainant's trademark rights in the word "FA". This may also shed a different light on Respondent's alleged proposal to transfer the Domain Name in exchange for another two letter domain name. This proposal, if it was made, does indeed seem to illustrate that Respondent was interested in the rare commodity two letter domain name as such and consequently willing to exchange it for any other two letter domain name, rather than in the monetary value of the specific Domain Name. (iii) In some cases however, the bad faith of the owner or licensee of a domain name is not deduced from facts but based on overriding presumptions. This is for example the case when the domain name consists of a widely known and famous trademark (e.g. Coca-Cola) or of a trademark which is so arbitrarily chosen (e.g. Haägen-Dazs) that it is excluded or at least extremely unlikely that a third party would by chance chose this same word for its domain name. Complainant invokes such presumption in this case as it states that its trademark "FA" is so famous that Respondent could not have ignored it when registering the domain Name. It goes without saying that Complainant's trademark "FA" is indeed well-known. As a consequence, the use of the Domain Name may well constitute a trademark infringement under the Benelux trademark Act. The question which the Third-Party Decider needs to answer is however not whether the Domain Name constitutes a trademark infringement but whether the Domain Name has been used or registered in bad faith, which is a more severe test. Page 6

7 Having carefully assessed all the facts and circumstances of this case, the Third-Party Decider finds that there is enough doubt subsisting which prevents him from presuming such bad faith to have existed or to exist. This doubt is based on: the fact that the Domain Name is one of eight two letter domain names registered by Respondent, the seven other being totally unrelated to any trademark; the fact that, because the invoked trademark "FA" consists of two letters and Respondent has a clear preference for two letter domain names, it is not at all unlikely that the Respondent choose the Domain Name for reasons not related to Complainant's trademarks; the fact that following the first cease and desist letter of Complainant, respondent immediately added a disclaimer to his webpage and allegedly proposed to transfer the Domain Name not in exchange for a cash amount but for another two letter domain name. In view of the elements and evidence submitted by the parties, the Third-Party Decider finds that there are no sufficient indications that Respondent registered the Domain Name because of, or by reference to, Complainant's trademark. In conclusion and in view of the above, it is the Third-Party Decider's opinion that it is not proven that Respondent did register or has been using the Domain Name in bad faith. 7. Decision In light of the foregoing, the Third-Party Decider decides that the Domain Name fa.be registered by Respondent is identical to the trademark of Complainant, that Respondent does not have a right or legitimate interest in respect of the Domain Name but that it is not proven that Respondent did register or has been using the Domain Name in bad faith. Accordingly, pursuant to Article 10, e, of the Policy, the Third-Party Decider denies the request that the registration of the Domain Name fa.be be transferred to Complainant. Brussels, on May 8, Geert Glas, Third-Party Decider Page 7