WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Unilever Plc v. Implements, Inc.

Case No. DBIZ2002-00092

Complainant is Unilever Plc, a London domiciled corporation with its principal address in Unilever House, Blackfriars, EC4P4BQ, United Kingdom. Complainant is represented by Ms. Cecilia Nielson of Net Searches International Limited whose address is Elysium House, 126-128 New King's Road, London, SW6 4LZ, United Kingdom.

Respondent is Implements, Inc., a United States corporation with its principal address in 6 Brook Trail Road, 01778 Wayland MA, United States of America. Respondent is represented by Mr. Norton Greenfeld of Implements, Inc.

The domain name in dispute ("Domain Name") is <handyandy.biz>.

The Domain Name was first registered on March 27, 2002.

The Registrar with which the Domain Name is registered is Internetters Limited of Research House, Fraser Road, Greenford, Middlesex, UB6 7AQ, United Kingdom.

The Complaint was submitted for decision in accordance with the Start-up Trademark Opposition Policy for ".biz" ("STOP") adopted by Neulevel Inc. and approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on May 11, 2001, the Rules for Start-up Trademark Opposition Policy ("STOP Rules") and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for ".biz" ("Supplemental STOP Rules").

The Complaint was received by the WIPO Arbitration and Mediation Center ("Center") on April 26, 2002, in electronic copy and April 30, 2002, in hardcopy form. The Center sent an Acknowledgment of Receipt of Complaint to Complainant on May 1, 2002.

The Center sent a Notification of the Complaint and Commencement of the Administrative Proceedings to the Respondent on May 5, 2002. The Center set a deadline of May 25, 2002, by which the Respondent could make a Response to the Complaint.

The Center received by facsimile and electronic format the Respondent's Response on May 24, 2002. On the same day the Center acknowledged receipt of the Response. The Center received a hardcopy of the Response on May 28, 2002.

The Center sent a Notification of Appointment of Administrative Panel and Projected Decision Date by email to parties, in which Professor Michael Charles Pryles was appointed as Sole Panelist on June 4, 2002.

Complainant asserts that it owns the registered trademark and service mark "handy andy" ("Registered Mark (Global)") in 49 countries or country groups (such as Benelux) around the world (although the Complainant provided the Panel with evidence of only two such registered marks in New Zealand and South Africa). The United States of America is not a country in which the Complainant asserts rights.

On October 19, 2001 the United States Patent and Trademark Office recorded the assignment of the mark "handy andy" ("Registered Mark (United States)") from Netcraft Corporation to Handy Andy Corporation (both being United States domiciled companies). The assignment was recorded on the basis of a letter dated September 10, 2001, signed by Mr. Andrew Egendorf as President of both entities. The letter stated that both companies were wholly-owned subsidiaries of Tradecraft Corporation and that due to a reorganization of the company group, Handy Andy Corporation would now "operate that portion of the business of Netcraft Corporation to which the mark would pertain". The letter was accompanied by a signed application form dated September 10, 2001 in which Mr. Andrew Egendorf, as representative of Netcraft Corporation, consented to the transfer of the Registered Mark (United States) to Handy Andy Corporation.

Complainant is one of the world's largest consumer goods companies producing inter alia personal care and household cleaning products. Complainant has a wide range of brands within the home and personal care area. Complainant markets a product under the "Handy Andy" brand name. The product is a liquid designed to clean surfaces and paintwork and was launched in 1959. The volume of sales in the year 2001 of goods marketed under the Registered Mark (Global) amounted to EUR 15,370,000 and for the first quarter of 2002 EUR 4,621,000.

Respondent is a company wholly-owned by Mr. Norton Greenfeld (and his wife). Respondent is the entity through which Mr. Norton Greenfeld provides "consulting and other services and holds related assets". Mr. Norton Greenfeld owns 20 shares in an entity called Tradecraft Corporation (referred to above) which is said to be the holding company of Handy Andy Corporation and Netcraft Corporation. Handy Andy Corporation is the owner of the Registered Mark (United States).

Respondent "consults" for the "Tradecraft group of companies" and is the principal adviser in relation to the Internet (an assertion made in the Response and accepted on its face by the Panel). Respondent asserts that it will be the principal adviser of Handy Andy Corporation and Tradecraft Corporation in relation to the setup of the Domain Name.

Respondent has an arrangement/agreement with Tradecraft Corporation that in the event Respondent obtained rights in "patentable subject matter through invention" and "where such rights related to the business of Handy Andy Corporation at the time of such invention" Respondent would convey those rights to Handy Andy Corporation in exchange for shares in Tradecraft Corporation (an assertion made in the Statement of Response and accepted on its face by the Panel, although no documentary evidence of the "agreement" is provided).

No information has been provided to the panel as to the predominant business activity of Tradecraft Corporation or Handy Andy Corporation.

Complainant contacted Respondent via email on April 23, 2002, offering to purchase the Domain Name from Complainant. Complainant responded on the same day via email stating that "[his] company [owned] a United States Trademark [for the phrase] Handy-Andy and [would] be using the [D]omain [N]ame". Complainant via email dated April 24, 2002, sought details of the United States Trademark claimed by Respondent. On the same day, Complainant via email identified its client and the numerous trademarks registered by it around the world. Further, Complainant indicated that it had lodged an IP Claim for the Domain Name and was willing to implement the STOP process. Respondent via email dated April 25, 2002, offered to transfer the Domain Name to the Complainant on the condition that its "out-of-pocket costs in applying for and getting the domain name" would be reimbursed. The communications between Complainant and Respondent appeared to cease at this point. The Complaint was filed via email on April 26, 2002.

Domain Name and Registered Mark (Global) are identical (paragraph 4(a)(i) of the STOP)

Complainant asserts that the Registered Mark (Global) and the Domain Name are identical. It asserts that the inclusion of a ".biz" suffix in the Domain Name does not serve to distinguish the Domain Name from the Complainant's Registered Mark (Global) in any way.

The Response does not comment on this point.

Legitimate Interest or Right in the Domain Name (paragraph 4(a)(ii) of the STOP)

Complainant asserts it has undertaken extensive investigations and has found no evidence of "facts or elements to justify prior rights or legitimate connection to the name handy andy" vested in the Respondent.

Complainant has no business relationship with the Respondent. It has not given any consent, license or authorization to the Respondent for the use or registration of the Registered Mark (Global). Complainant further asserts that Respondent is not known by the name "handy andy".

Respondent contends that it has the following interests in the Domain Name which constitute a legitimate interest or right in the Domain Name:

Respondent asserts that it is wholly owned by Mr. Norton Greenfeld and his wife. It is submitted that upon the sale of "certain patent rights" which Mr. Greenfeld had invented in part, Mr. Greenfeld received shares in Tradecraft Corporation, which wholly owns Handy Andy Corporation. Handy Andy Corporation owns the Registered Mark (United States). Respondent asserts that its financial interest, that being Mr. Greenfeld's ownership of shares in Tradecraft Corporation is a legitimate interest in accordance with paragraph 4(a)(ii) of the STOP.

Respondent contends that it consults for the Tradecraft group of companies (which includes: Handy Andy Corporation, Netcraft Corporation and Searchcraft Corporation) in relation to "Internet issues". Respondent asserts that it will be responsible for the set up of the Domain Name site, which is intended to augment the trademarked services offered by Handy Andy Corporation.

Respondent asserts that it has an agreement with Tradecraft Corporation that in the event Respondent obtains rights to patentable subject matter through invention and where such subject matter related to the business of Handy Andy Corporation, Respondent would convey those rights to Handy Andy Corporation in exchange for shares in Tradecraft Corporation and upon any such request made by Tradecraft Corporation.

Registration or Use of Domain Name in Bad Faith (paragraph 4(a)(iii) of the STOP)

Complainants asserts that at the date of the registration of the Domain Name (March 27, 2002) the Registered Mark (Global) had been widely promoted around the world. Complainant contends the Registered Mark (Global) had become well known through out the world for household products offered by the Complainant. It claims that Respondent ought to have known of the Complainant's Registered Mark (Global).

Complainant contends that Respondent had received notice of Complainant's IP Claim over the Domain Name prior to registration of the Domain Name. Complainant submits that Respondent's registration of the Domain Name after such notice constituted bad faith.

In addition, Complainant asserts that where a respondent registers a Domain Name containing a mark in which a respondent has no prior rights, a respondent bears considerable responsibility to investigate whether any party has trademark rights in the alphanumeric string contained in the domain name. Therefore, Complainant asserts that Respondent should have searched various trademark databases. It submits that if such searches had been performed Respondent would have become aware of Complainant's rights in the Domain Name.

Complainant, also notes that the Domain Name is not currently in use. It submits that a passive holding when coupled with an offer to sell constitutes a registration made in bad faith. It refers the Panel to the decision in Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000).

Respondent asserts that it has a legitimate interest and right which means that Complainant's arguments in relation to responsibilities imposed on registrants with no rights or interests in a domain name upon registration have no applicability. Further, Respondent contends that the "bad faith" requirement is one which should be independently established by Complainant and that it is not entitled to rely on the absence of a legitimate interest or right as the basis of a "bad faith" contention.

In relation to Complainant's assertions that the web site is inactive, Respondent contends that domain names subject to the STOP cannot be activated while the subject of proceedings. Therefore, Respondent has been unable to activate the site. This, it is submitted, should not be evidence of a "passive holding".

Respondent contends that the offer of sale alleged by Complainant is of "no moment if a registrant has a right or legitimate interest in the domain name . . ." It claims that no evidence is provided by Complainant indicating that Respondent registered the Domain Name with the purpose of selling. Respondent contends that its intent in registering the Domain Name was to transfer the Domain Name to Handy Andy Corporation.

Paragraph 4(a) of the STOP requires that the Complainant must prove each of the following:

- Domain Name is identical to the Complainant's trademark or service mark; and

- Respondent has no rights or legitimate interests in respect of the Domain Name; and

- Domain Name has been registered or is being used in bad faith.

Paragraph 4(b) of the STOP sets out four illustrative circumstances that, if proved, constitute evidence of bad faith as required by paragraph 4(a)(iii) referred to above.

Paragraph 4(c) of the STOP sets out three illustrative circumstances that, if proved, constitute evidence of a right or legitimate interest as described in paragraph 4(a)(ii) referred to above.

The Domain Name in issue is <handyandy.biz>. The Registered Mark (Global) is "handy andy". The Domain Name is clearly identical to the Registered Mark (Global) for the purposes of the STOP. For the purposes of this analysis the ".biz" suffix is to be disregarded: AIMS Pty Ltd v Lee, WIPO Case No. DBIZ2001-00001 (February 14, 2001); Domain Bank Inc v Sonic Co. Ltd, WIPO Case No. DBIZ2001-00014 (February 13, 2001).

The only other difference between the two is a character space between "handy" and "andy" in the Registered Mark (Global). The Panel finds that for the purposes of the STOP a character space of this kind does not preclude a finding that the two are identical.

The Panel finds that Respondent does not own or is not licensed to use the Registered Mark (Global) or (United States). The Panel finds that Handy Andy Corporation owns the Registered Mark (United States).

Respondent has asserted that it has a financial interest. This is said to be the common ownership of shares by Mr. and Mrs. Greenfeld in the Respondent and in Tradecraft Corporation which it is claimed is the holding company of Handy Andy Corporation which holds the Registered Mark (United States). While evidence is provided of Mr. and Mrs. Greenfeld shareholding in Tradecraft Corporation, no evidence is provided that Tradecraft Corporation owns Handy Andy Corporation.

Even assuming that Mr. and Mrs. Greenfeld are shareholders in both Respondent and Tradecraft Corporation and that Tradecraft Corporation owns Handy Andy Corporation this would not be sufficient to establish the Respondent's legitimate interest or right in the Registered Mark (United States).

Common ultimate shareholding in the Respondent and in the holder of the Registered Mark (United States) is not enough. The Respondent must show that it has rights or a legitimate interest in the Registered Mark (United States). It can establish this by proving that it owns the Registered Mark (United States) or is licensed to use or holds other contractual rights in the Registered Mark (United States) conferred by the owner of the Registered Mark (United States). Respondent has not proven this, nor indeed has it even asserted that this is the case. Instead it relies on a degree of common ownership albeit indirect. But the rights and interests of shareholders are not the same as the rights and interests of the corporations in which they hold shares. In any event the asserted common shareholding is indirect because the share ownership claimed is not in the holder of the Registered Mark (United States) but in its holding company. Further, it has not been proved.

The Panel finds that regardless of whether or not sufficient documentary evidence were provided to it by Respondent which may or may not have demonstrated a line of ownership from Handy Andy Corporation (the holder of the Registered Mark (United States)) through Tradecraft Corporation (holding company) and Mr. Greenfeld (owner of shares) to Respondent, it ultimately finds that a financial interest by way of ownership of shares in a company is not sufficient to entitle a party to claim a legitimate interest in the Domain Name. The rights over the Registered mark (Global) rest with Handy Andy Corporation and not with Respondent. Respondent has not given any evidence to the Panel which would indicate that the owner of the Registered mark (Global) has licensed or conferred its interests in the Registered Trademark (Global) to Respondent.

Respondent has contended that it is a consultant to the Tradecraft group of companies. However, Respondent has not provided documentary evidence of any consultancy agreement it might have with Tradecraft Corporation or Handy Andy Corporation. Even assuming such an agreement exists there is no evidence of terms and the rights thereby conferred.

The Panel has found that Respondent does not have a legitimate interest or right in the Domain Name. It therefore finds that Respondent bore a responsibility to investigate whether any other party had trademark rights in the alphanumeric string contained in the Domain Name. The Panel refers to the decisions in: MGM Mirage v Young Joon Choi, WIPO Case No. DBIZ2001-00036 (February 14, 2002) (holding that a registrant should take "reasonable steps" to ensure that its domain name will not infringe upon the rights of another party) and Fisher Communications Inc v Escape Ventures Inc, WIPO Case No. DBIZ2001-00041(March 16, 2002).

Respondent has not submitted any evidence that it undertook reasonable steps, such as searches of trademark databases, to determine whether any trademarks with the phrase "handy andy" existed upon registration. Further, the Panel finds that the IP Claim lodged by the Complainant effectively put Respondent on notice that the Domain Name was identical to a trademark owned by Complainant.

Complainant acted in bad faith in registering the Domain Name, even though he might have been acting on the erroneous belief that it had a legitimate interest or right in the Domain Name. It ought to have taken reasonable steps in determining whether Complainant had a registered mark reflecting the Domain Name.

The Administrative Panel decides that the Complainant has proven each of the three elements in paragraph 4(a) of the STOP. Accordingly, the Administrative Panel requires that the Domain Name be transferred to the Complainant.

In accordance with Paragraph 4(l)(ii)(1) of the STOP and Paragraph 15(e)(i) of the STOP Rules, the Panel decides that no subsequent challenges under the STOP against the disputed domain name shall be permitted.