WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Oceanair Marine Limited v. Marc Stengel

Case No. D2006-0754

1. The Parties

The Complainant is Oceanair Marine Limited, West Sussex, United Kingdom of Great Britain and Northern Ireland, represented by Boult Wade Tennant, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Marc Stengel, Glyndon, Maryland, United States of America, who represents himself.

2. The Domain Name and Registrar

The disputed domain name, <oceanair.com>, is registered with Wild West Domains, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2006. On June 16, 2006, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain name. On June 16, 2006, Wild West Domains, Inc. 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 June 21, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July 11, 2006. The Response was filed with the Center on July 11, 2006.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on July 17, 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

The Complainant carries on business supplying marine blinds, window covering solutions and other interior product solutions for boats. It commenced business in the UK in 1990, and over time has expanded its operations to a number of countries around the world. It has apparently recently announced a merger with Maritime Trading Company, based in Vermont, USA.

Since its establishment, the Complaint states that the Complainant has generated revenues of £27 million. Some £23.3 million of these revenues have been generated since 1999. It has spent over £0.8 million itself in exhibiting at boat shows and other advertising. This is said not to include whatever its distributors around the world spend themselves. The annexures include examples of the advertising and promotion of the trademark OCEANAIR. The usual print run of Brochures is 20,000 and there are a further 15,000 Retail Brochures printed annually. The Complainant has also been the recipient of the Queen’s Award for Enterprise, at least twice in the International Trade category.

In addition, the Complainant has obtained registration of CTM No. 3898244 OCEANAIR covering “window blinds, curtains, screens, shades, fly screens; all adapted for watercraft; parts and fittings therefore in International Class 12 and similar goods in International Class 20.

CTM No 3898244 was filed on, and is effective from, June 16, 2004.

The Respondent registered the domain name on March 23, 1995.

The domain name resolves to a website “Owings Mills Network” which appears to combine a Marketplace with a range of community information programs. Owings Mills is located in Maryland northwest of Baltimore and somewhat inland of Chesapeake Bay.

5. Discussion and Findings

Paragraph 15(a) of the Rules requires the Panel to determine the dispute on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and principles of law that the Panel deems applicable.

Therefore, under paragraph 4(a) of the Policy, the Complainant has the burden of proof in respect of the following three elements:

(i) The domain name 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 interests in respect of the domain name; and

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

The Panel deals with each of these elements in turn.

A. Identical or Confusingly Similar

There are two parts to this inquiry: does the Complainant have trademark rights and, if so, is the disputed domain name identical or confusingly similar to it.

The Complainant has demonstrated ownership of the CTM for OCEANAIR.

The fact that the CTM was registered long after the domain name was registered does not preclude a finding that the domain name is identical or confusingly similar to the Complainant’s proved trademark rights: e.g. Digital Vision Ltd v Advanced Chemill Systems WIPO Case No. D2001-0827. In such cases, the later date of acquisition of trademark rights was considered relevant only to the second and third requirements.

In any event, the matters referred to in section 4 above are sufficient to establish that the Complainant has common law rights in the mark also and those date from the commencement of its operations.

Apart from the addition of the gTLD suffix, “.com”, the domain name is identical to the Complainant’s trademark rights.

Accordingly, the Panel finds that the domain name is identical or confusingly similar to the Complainant’s trademark rights: see e.g. Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046, Ticketmaster Corporation v. DiscoverNet Inc., WIPO Case No. D2001-0252; Williams-Sonoma d/b/a Pottery Barn v. John Zuccarini, WIPO Case No. D2002-0582.

B. Rights or Legitimate Interests

The second factor that the Complainant is required to establish is that the Respondent has no rights or legitimate interests in respect of the domain name.

Paragraph 4(c) sets out three examples of rights or legitimate interests for the purposes of the Policy. They are:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Given the difficulties for a complainant in proving such a negative, it is now widely accepted that the Complainant must establish a prima facie case of lack of rights or legitimate interests and an evidential onus will then shift to the Respondent to rebut the presumed absence of rights or legitimate interests: See e.g. Advance Magazine Publishers Inc. and Les Publications Condé Nast SA v. ChinaVogue.com WIPO Case No. D2005-0615.

The Complainant draws attention to the fact that the Respondent’s domain names <buildyourcommunity.com> and <owingsmills.net> resolve to largely the same website as that to which the domain name resolves. It then claims that there is absolutely no link or reason for using the domain name to re-route to a website entitled Owings Mills Network. Accordingly, the Complainant contends that it cannot be legitimate to provide access to a website entitled Owings Mills Network through the domain name.

The Complainant further contends that the domain name does not describe any feature of the Respondent’s services nor is there any basis on which the Respondent can argue that he or his business is commonly known by the domain name. Therefore, according to the Complainant, the Respondent is attempting to make a commercial gain by using the domain name with its potential to mislead and divert the Complainant’s customers to his website.

The Respondent contends that he registered the domain name 10 years before the Complainant obtained registered trademark rights. He also points out that “ocean air” is a descriptive term and includes in his Response website print outs for businesses such as Ocean Air Motel in Florida, OceanAir Sea Kayak and Oceanair Inc, “experts in international logistics”. He points out that his field of activity is quite different to that of the Complainant and, in a number of places, denies any prior knowledge of the Complainant or its activities when he registered the domain name.

The propositions that the Complainant invites the Panel to accept are too broadly expressed. There are certainly many cases where a trademark term has been registered as a domain name and “parked” at an advertising type portal. In such cases where the complainant has succeeded, there has also usually been a clear element of bad faith demonstrated in connection with the registration and use (or non-use as in Telstra Corporation Ltd v. Nuclear Marshmallows WIPO Case No. D2000-0003) which have provided a basis for a finding of an absence of rights or legitimate interests. In such cases, there is usually also a clear basis from which to infer that the respondent registered the domain name in dispute with prior knowledge of the complainant’s rights.

Given the close connection between findings under the second limb and of bad faith under the third limb, it is appropriate that the Panel also deal with the other grounds on which the Claimant invites the Panel to infer prior knowledge of the Complainant and bad faith.

The Complaint does indicate that the Complainant first made sales in the USA in 1991. It also states that the Complainant first participated in a boat show in the USA at Annapolis (also in Maryland) in October 1998. The Complaint does not give any details of the quantum or spread of those sales. It seems likely that they would be relatively small. On the figures submitted by the Complainant, the years from 1990 (when it commenced business) until 1998 amounted to less than £4 million. They are also the total revenues from sales in 24 other countries in addition to the USA. It may be that these activities would be sufficient to provide the Complainant with rights under US law, either federal or state. That is not clearly established on the papers in this case, particularly at the time the Respondent registered the domain name.

For the reasons discussed below under “Registered and Used in Bad Faith”, the Panel does not find that the other allegations made by the Complainant are sufficient to overcome that deficiency.

Accordingly, in this case, the Complainant’s claims do not give sufficient regard to the descriptive nature of the terms registered in the domain name or the relatively narrow field in which the Complainant has operated and the time when the Respondent registered the domain name.

In the circumstances of this case, therefore, and having regard to the discussion below on the interlinked issue of bad faith, the Panel finds that the Complainant has not established that the Respondent does not have rights or legitimate interests in the domain name.

C. Registered and Used in Bad Faith

Having regard to the finding in section 5B above, it is not strictly necessary to consider this issue. As noted in that section, however, the Complainant relies heavily on “bad faith” issues to support a conclusion that the Respondent does not have rights or legitimate interests in the domain name. Accordingly, it is appropriate to address those arguments.

The discussion in relation to rights and legitimate interests considered the Complainant’s reliance on its trademark rights . The Complainant also invites the Panel to infer bad faith (and so registration of the domain name with knowledge of the Complainant’s rights) by reason of the Respondent having been found to have violated the Policy in First American Financial Corporation v Marc Stengel NAF Case No. FA0311000211937 and court proceedings in the USA in which it is alleged that the Respondent has engaged in fraud.

The First American case does lend some support to the Complainant’s contention. It is not conclusive in the Complainant’s favour, however, as direct knowledge of First American’s trademark was proved before registration: the Respondent was a customer of the particular program which First American operated under the trademark.

The court case in which the fraud allegations are made is an entirely different case. From the materials in the Complaint, it involves a dispute between four shareholders in a corporation. The Respondent was also a former director and employee of the corporation. It is certainly clear from the materials that the Respondent hotly contested the allegations made against him. The subject matter of that dispute is entirely different to questions of abusive registration of a domain name. Moreover, on the materials in the Complaint, they are allegations only. The materials do not include any judgment or other adjudication on the merits.

Thirdly, the Complainant invites the Panel to find bad faith on the basis that the domain name was registered primarily for the purpose of selling it for more than its out of pocket expenses. Apart from the matters already canvassed, the foundation for this is that, when the Complainant wrote to the Respondent seeking a transfer of the domain name, the Respondent replied claiming that he had already turned down offers in excess of $9,000. The Respondent then rejected an offer of $900.

Certainly, the Policy cannot be defeated by a respondent who “passively” invites offers in excess of out-of-pocket expenses rather than initiates contact with a direct monetary demand. Such an approach would render the Policy nugatory.

The Respondent contends that there is no obligation on him to sell the domain name at any price just as no vendor of real estate is obliged to accept the price a purchaser offers. That is only true where the domain name in question is legitimately acquired without bad faith.

In the circumstances of this case, however, there is no basis for the Panel to infer that the Respondent must have registered the domain name either with knowledge of the Complainant or otherwise in bad faith.

For the reasons set out above, therefore, the Panel finds that the Complainant has not established that the domain name was registered and used in bad faith.

6. Decision

For all the foregoing reasons, the Complaint is denied.

Warwick A. Rothnie
Sole Panelist

Dated: July 27, 2006