WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

R&M Italia SpA, Tycon Technoglass Srl v. EnQuip Technologies Group, Inc.

Case No. D2007-1477

 

1. The Parties

The Complainant is R&M Italia SpA, Tycon Technoglass Srl, Venezia, Italy, represented by Thompson Hine LLP, United States of America.

The Respondent is EnQuip Technologies Group, Inc., Florida, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <tycon.com> is registered with Network Solutions, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 5, 2007. On October 10, 2007, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On October 10, 2007, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 October 17, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 6, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 7, 2007.

The Center appointed The Honourable Sir Ian Barker as the sole panelist in this matter on November 15, 2007. 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.

On November 15, 2007, the Respondent filed a late Response, claiming that it had not received notification of the Complaint. The records of the Center showed that all its communications were delivered to the Respondent’s email address from which it sent the Response. Inadvertently, the Center did not forward a faxed notification of Complaint. Couriered hard copies were returned citing “recipient refusal”. In the interests of justice, the Panel has decided to admit the late Response. The Panel notes a later affidavit from the Complainant’s lawyer which indicates that the Respondent did receive the Complaint in a timely fashion.

The Respondent alleged that the attorneys for the Complainant were conflicted and should not have been acting against him. Consequently, on November 19, 2007, the Panel made the following Procedural Order:

“(1) The Complainant is asked to comment on the Respondent’s email of November 15, 2007, alleging that the Complainant’s attorneys are conflicted and should not be acting against him. The Complainant is only requested to comment on this point and any reply on the merits will not be allowed.

The due date for the Complainant to give comments is November 21, 2007;

(2) The Respondent may file a submission strictly in reply within a further 3 working days, following the receipt of the Complainant’s comments, i.e., no later than November 26, 2007.

Please note that the Administrative Panel is not like a Court and that it has no jurisdiction to order the removal of any lawyer from the case. That said, the Complainant’s lawyers may nevertheless wish to consider the position if the Respondent’s allegation is correct.

The submission should be sent to the Center by e-mail (with signed pdf) or faxed (+41 22 740 3700), and copied to the other Party.

In the given circumstances, the projected date of decision is December 7, 2007.”

Both parties made submissions following the Panel’s order. The Complainant’s lawyers saw no requirement to disqualify themselves and denied ever receiving any confidential lawyer/client information from the Respondent’s principal.

The Respondent still maintained its earlier position. It said that information about glass storage tanks was sought from it by an employee of the Complainant’s lawyers.

Unlike a Court, the Panel has no jurisdiction or control over the legal representatives of parties to a dispute under the Policy. The most the Panel can do is what it did in this case – draw the Respondent’s views to the attention of the Complainant. Having considered the responses of both parties to the Procedural Order, the Panel does not express a view on the alleged conflict of interest and proceeds to deal with the Complaint on the merits.

The Respondent elected to use the opportunity to file submissions on the conflict of interest issue, to seek to file a further Response. The Panel had not envisaged such a step. No leave was sought by the Respondent for filing this document. The Procedural Order referred to the Respondent’s submission on the conflict point was required to be “strictly in reply”. Although the Complainant sought to file a Reply to the Respondent’s filings, the Panel has decided not to admit the Respondent’s purported additional Response, for the reasons:

(a) no grounds for filing it were provided;

(b) it was not contemplated by the Procedural Order;

(c) the Respondent was given an indulgence to file its Response out of time;

(d) there is nothing in the additional Response that seems material to the issues which the Panel must consider.

 

4. Factual Background

The Second Complainant is a subsidiary of the First Complainant.

The Complainants are the owner of the Trademark TYCON in theUnited States of America, Italy and the European Union. The Second Complainant is the owner of the trademark TYCON in the United Kingdom. The Complainant has used the trademark in the United States since 1986 and the trademark was granted there on April 30, 1999. Other trademark registrations go back to 1972. The marks relate to a whole range of metallic products and industrial heavy engineering equipment.

The Respondent registered the disputed domain name on December 2, 1996, and operated a website thereat on behalf of the Complainants to aid sales of their products in North America. The parties operated under an agreement which began in 1990 and terminated on June 28, 2007. The most recent agency agreement between the parties was dated March 31, 2001.

The Respondent no longer represents the Complainants for customer communication and is no longer authorized to use the Complainant’s mark. No copies of the agency agreement were provided to the Panel by either party.

The Complainant operates a website at the disputed domain name for, inter alia, the marketing of competing products to former and/or current customers of the Complainant. There is no statement of affiliation with the Complainant nor reference to any product associated with the Complainant’s mark. Contact information of the Complainant has been deleted from the website.

By letter dated May 10, 2001, the President of the Respondent indicated that ownership of the disputed domain name had been relinquished to a subsidiary of the First Complainant in 1998. The Respondent has not transferred the disputed domain name to the Complainant(s) despite requests so to do.

The Complainants had given the Respondent no rights in the disputed domain name other than under the agency agreement now terminated.

 

5. Parties’ Contentions

A. Complainant

The disputed domain name is identical to marks in which the Complainants have rights.

The Respondent has no current right or legitimate interest in respect of the disputed domain name. Any rights that it may have had under the agency agreement were extinguished on June 28, 2007. The Respondent has refused to transfer the disputed domain name to the Complainants despite many requests so to do over several years.

The domain name was registered and is being used in bad faith. The Complainants have spent substantial sums in advertising and promoting their trademarks world- wide. The Respondent has never attempted to register the trademark in the United States or anywhere else.

The Respondent acknowledged in 2001 that the Complainant was the legal owner of the disputed domain name but has refused to transfer it. The Respondent is using the domain name directly to attract Complainant’s customers for the purpose of selling them competing products.

The registration by the Respondent of the disputed domain name became no longer bona fide when the Respondent failed to surrender the domain name at the end of a contractual relationship permitting use of the trademark. See Exel Oyj v. KH Trading, WIPO Case No. D2004-0433 citing UVA Solar GmbH & Co Kg v. Mads Kragh, WIPO Case No. D2001-0373.

B. Respondent

The name “Tycon” is generic and is used by many industries in many countries. The trademark registration does not refer specifically to the products made by another subsidiary of the first Complainant, Pfaudler. There are many Tycon websites which fact makes the name non-unique.

For eleven years without protest from the Complainants, the Respondent has maintained total control of the website. The documentation shows that attempts by the first Complainant to buy the disputed domain name were never completed because of differences over price and control of the website.

The Respondent uses the website in good faith. It contains nothing harmful to the Complainants.

The Respondent referred to a lawsuit in Florida where it is the plaintiff and a company called Robbins & Myers Inc. is defendant. It is said that Robbins & Myers Inc. owns the Complainants.

 

6. Discussion and Findings

The Complainant is required to prove that each of the following comments or paragraph 4(a) of the Policy must be satisfied:

(i) The domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

(ii) The Respondent has no rights to or legitimate interests in the domain name.

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

A. Identical or Confusingly Similar

The disputed domain name is identical to several registered trademarks in which the Complainants have rights. Accordingly, paragraph 4(a)(i) of the Policy has been proved. The claim of the Respondent that the marks are generic has no merits. The Complainant(s) have registered marks and the Panel cannot go behind this registration and say that registration should not have occurred.

B. Rights or Legitimate Interests

Whatever the claim the Respondent may have had rights in the disputed domain name, whilst it was in an agency relationship with the Complainant, those rights ceased on June 27, 2007. The Respondent no longer has any rights to use the disputed domain name, having been given none by the Complainants. The Respondent did not dispute that its relationship with the Complainants ceased on that date.

Moreover the Respondent has not demonstrated any of the considerations under paragraph 4(c) of the Policy which, if demonstrated, would require a finding for the Respondent under this limb of the policy. Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

In particular, it is not possible for the Respondent to allege, as it does, that it is making legitimate non-commercial fair use of the disputed domain name without intent for commercial gain. Clearly it is using the Complainants’ mark. This must be for commercial purposes. The Respondent’s website must have the effect of diverting potential customers of the Complainants because it is using the Complainants’ registered marks.

C. Registered and Used in Bad Faith

The Complainant must prove both bad faith registration and continuing use. There is little difficulty in showing continuing bad faith use in that the Respondent is still using the Complainant’s trademarks in the disputed domain name on a site which advertises the products of competitors of the Complainant.

The more difficult question however is whether the Respondent registered the domain name in bad faith in 1996 at a time when it was the agent of the Complainant and allowed to market the Complainant’s goods.

There is a similarity here with the Exel Oyj case, referred to earlier, where the Panel asked the question whether, if authority to register a domain name was given subject to certain terms and conditions, did the subsequent breach of such conditions render what otherwise would appear to have been a bona fide registration, one in bad faith? The Panel, after careful consideration, answers that question affirmatively following the UVA Solar case referred to earlier. As in the Exel Oyj case, the Respondent’s capacity as the Complainant’s agent had come to an end.

The Respondent’s non-fulfillment of a clear agreement to return the domain names may also be taken as a basis for concluding that the Respondent’s original registration lacked good faith. The fact that the domain name was registered before the distribution agreement between the Complainant and Respondent does not alter the Panel’s view of the matter since the Respondent agreed to the terms of an agreement that must have foreseen the transfer of the domain name at the end of the agreement.

The case of UVA Solar Gmb H 60 KG v. Mads Kragh (cit.supra) is also helpful. There, as here, the complainant had not produced to the panel the agency agreement between the trademark owner and the respondent as its agent or licensee. However, the respondent there (as here) did not deny the complainant’s allegations of termination of the agreement. The Respondent in this case, has not denied the Complainant’s allegations regarding the content of the agreement and its cancellation. Essentially, in a similar situation the panel in that case found:

(a) The respondent’s authority to register the disputed domain name had been assessment of given subject to certain terms and conditions; breach of such conditions can alter what would otherwise have appeared to have been a bona fide registration.

(b) Breach of such conditions can be shown by the domain name registrant refusing to transfer the disputed domain name to the trademark owner when the agency contract ceased.

(c) Any claims, set-offs or cancellations by an agent such as for marketing expenses have to be resolved in another forum. The Policy is not concerned with set-off, etc.

The present Panel follows both the above precedents which are highly apposite to the particular circumstances of the present situation.

The Complainant has proved all three limbs of Paragraph 4(a) of the Policy.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <tycon.com> be transferred to the first Complainant, R&M Italia SpA.

Hon. Sir Ian Barker
Sole Panelist

Date: December 7, 2007