The Complainant is ADOS GmbH of Aachen, Germany, represented by Schneiders & Behrendt Rechtsanwälte/Patentanwälte, Germany.
The Respondent is Therefore Corporation GmbH of Mödling, Austria, represented by Schwarz Schönherr Rechtsanwälte KG, Austria.
The disputed domain names <ados.com> and <myados.com> are registered with Network Solutions, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 10, 2010. On September 15, 17, and 21, 2010, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain names. On September 21, 2010, 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” or “UDRP”), 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 September 22, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 12, 2010. The Response was filed with the Center on September 28, 2010.
The Center appointed Tobias Zuberbühler, Thomas Hoeren and Reinhard Schanda as panelists in this matter on November 3, 2010. The Panel finds that it was properly constituted. Each member of 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.
The Complainant submitted an unsolicited Supplemental Filing on November 26, 2010, which the Center duly brought to the Panel’s attention. The Panel has determined not to admit the Supplemental Filing, which in any event would not have changed the Panel’s decision. The Panel has also determined that it is not necessary to give the Respondent an opportunity to submit a reply (if any). The Panel has extended the due date for this decision (under paragraph 10(c) of the Rules) to the date indicated under its paragraph 7 below.
The Complainant produces gas warning and gas measurement devices and installations since 1900 in Germany and most other countries of the European Union. The Complaint is based on an international trademark registration and various national registrations, among others for Germany (classes 7, 9, 11, 16, 42) and the United States, for the trademark ADOS, with priority rights dating back to April 1992. The Complainant markets its products via the website “www.ados.de” and is also the owner of the company name “Ados”.
The Respondent has its seat in Austria and develops and distributes document management software since the early 90s. As per April 28, 1994, the Respondent obtained trademark protection for the mark ADOS in Austria for class 9, 35, 41 and 42 and in the United States for class 9.
The disputed domain name <ados.com> was registered on April 22, 1997, and the disputed domain name <myados.com> on August 21, 2004.
Following a Community Trademark application by the Respondent for ADOS on September 19, 2002, the Complainant filed an opposition on August 23, 2003. Thereafter, the parties were engaged in a trademark dispute against each other for the mark ADOS. The parties managed to conclude a settlement agreement on June 12, 2008 (“Settlement Agreement”, Annex 7 to the Complaint), under which the Respondent accepted to cease and desist from using the mark ADOS in the countries and for the goods and services for which the Complainant had prior rights.
The Complainant argued: The disputed domain names <ados.com> and <myados.com> are identical to the ADOS trademarks and the company name “Ados” of the Complainant. With regard to the domain name <myados.com>, the addition of the prefix “my” to the mark ADOS does not prevent a finding of confusing similarity.
The Complainant had filed its Community Trademark for ADOS on April 19, 1996, prior to the registration of the disputed domain name <ados.com> in 1997 and <myados.com> in 2004. The respective priority of the Complainant’s trademarks indicates bad faith of the Respondent. The Respondent also should have conducted a trademark research before registering the disputed domain names.
Furthermore, the Respondent has undertaken to accept the prior rights of the Complainant with regard to the mark ADOS under the Settlement Agreement.
Finally, the Respondent has used the domain name <ados.com> to deliberately redirect potential customers to its own website.
The Respondent replied: In 1994, neither the Respondent nor its subsidiaries were aware of the fact that a company with a similar name exists in Germany. This is supported by the fact that the parties are active in completely different business fields.
The Respondent became aware of the Complainant for the first time when the latter filed an opposition against the Respondent’s Community Trademark application for ADOS in August 2003.
Under the Settlement Agreement, the Respondent accepted to cease and desist from using the mark ADOS, but only in the countries and for the goods and services for which the Complainant had prior rights. Furthermore, the parties agreed that the Respondent could use the mark ADOS for a grace period of one year after signing the Settlement Agreement. During the grace period, the disputed domain name <ados.com> was used to redirect users from the old website of the Respondent to the new website “www.therefore.net”. Since 2009, the software products of the Respondent are distributed under the company name and trademark THEREFORE.
The Respondent acknowledges that the requirements of paragraph 4(a)(i) of the Policy are fulfilled because the disputed domain names are identical and confusingly similar, respectively, to the trademarks of the Complainant.
However, the disputed domain names were not registered and never used in bad faith. When the disputed domain name <ados.com> was registered in 1997, the Respondent was not aware of the existence of the Complainant, since the parties are not competitors. The lack of a trademark research before registering a domain name does not indicate bad faith. After having been on the market for three years with the name “Ados” to promote its software products without being admonished by the Complainant or any third parties, there was no reason for the Respondent to conduct a trademark research at the time of the registration of the disputed domain name <ados.com>. A trademark search is not even mandatory before registering a trademark according to Austrian or European trademark law.
Furthermore, the Respondent has a legal interest under the Settlement Agreement in continuously using the disputed domain names for goods and services which are not identical and/or confusingly similar to those for which the Complainant enjoys protection and in those countries in which the Complainant has no prior rights for the mark ADOS. When signing the Settlement Agreement, the Complainant was aware of the fact that the Respondent was the owner of the disputed domain names. Nonetheless, the Complainant never asked for a transfer of the domain names before signing the Settlement Agreement, but only for a limited use of the trademark ADOS. In paragraph 16 of the Settlement Agreement, the following was stipulated: “With the conclusion of this Agreement, all claims arising from the use of the sign ‘ADOS’ shall be deemed adjusted and settled.”
Paragraph 11 of the Rules provides that the language of the administrative proceeding shall be the language of the Registration Agreement unless otherwise agreed by the parties, or specified otherwise in the Registration Agreement. In this case, the registrar of the disputed domain names has confirmed that the language of the Registration Agreement used for the disputed domain name registrations is English. In its Response, the Respondent requested to conduct the further proceedings in German. Even though both parties are based in German-speaking regions, there are no compelling circumstances in the Panel’s view to change the language of the proceedings from English to German.
The disputed domain name <ados.com> is identical to the Complainant’s trademark ADOS.
With regard to the disputed domain name <myados.com>, the addition of the prefix “my” to the Complainant’s trademark ADOS does not prevent a finding of confusing similarity, as confirmed in many UDRP decisions.
As acknowledged by the Respondent, the Complainant has thus fulfilled the requirements of paragraph 4(a)(i) of the Policy.
An assessment of whether the Respondent has a legitimate interest in the disputed domain names or not would require an in-depth analysis of the Settlement Agreement and the different fields of activity of the parties on a country-by-country basis. Such analysis may exceed the scope of a UDRP proceeding. In any event, the question of rights or legitimate interests may be left open in view of the findings below regarding the lack of bad faith use of the disputed domain names by the Respondent.
This Panel considers that paragraph 2 of the Policy implicitly requires some good faith effort on the part of the registrants to avoid registering and using domain names corresponding to trademarks of others in violation of the Policy. Accordingly, UDRP panels have for example considered this good faith requirement may be absent where a respondent registered a domain name identical to the distinctive trademark of another and used the domain name “to generate revenue by directing Internet users to the websites of the trademark owner’s competitors, without exploring in a meaningful way the possibility of third-party rights” without any exploration of the possibility of third party rights and with willful blindness to the possibility thereof (See, e.g., HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062).
In the Panel’s view, the present case must however be distinguished from the one set forth above because the Complainant has not presented any evidence suggesting that the trademark ADOS is distinctive or well-known, and the disputed domain names were used for a legitimate business. Consequently, the Panel holds that there are insufficient grounds for finding here that the disputed domain name <ados.com> was necessarily registered in bad faith.
On the other hand, the disputed domain name <myados.com> was registered in August 2004 when the Respondent was aware of the Complainant’s trademark rights since the Complainant had filed an opposition to the Respondent’s Community Trademark application for ADOS in 2003. Despite this possible bad faith registration, however, a subsequent bad faith use of the domain name <myados.com> is not given in this case, for reasons set forth below:
Even if this Panel would endorse the position taken by a small number of panels, such as in the Mummygold case (City Views Limited v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE, WIPO Case No. D2009-0643) that a domain name may be transferred under the UDRP if it was registered in good faith, but subsequently used in bad faith, an analysis of the case at hand would in any event not support a finding of bad faith with respect to the disputed domain names.
Under the Settlement Agreement, the Respondent is clearly entitled to use the mark ADOS in the fields and countries where the Complainant does not have any trademark rights. As mentioned, a full analysis of whether the Respondent has breached or is breaching the respective contractual provision and of the scope of the respective rights under the Settlement Agreement would exceed the scope of these administrative proceedings. In any event, the Complainant would seem to have the burden of proof to show a breach of contract by the Respondent. Under the present circumstances, however, a breach of contract by the Respondent appears to be highly unlikely since the disputed domain names are both inactive.
Furthermore, the Complainant must have been aware of the disputed domain names held by the Respondent during the parties’ discussions leading to the Settlement Agreement in 2008, but did not negotiate for a transfer of such domain names under the agreement. Considering the global settlement clause stipulated under paragraph 16 of the Settlement Agreement, the current claim for a transfer of the disputed domain names would seem to be unjustified.
Finally, contrary to the Complainant’s allegations, the Panel is not able to identify any attempt by the Respondent to redirect potential customers of the Complainant to its own website.
Accordingly, the Panel holds that the disputed domain names are not being used in bad faith, and the Complainant has thus not fulfilled all requirements under paragraph 4(a)(iii) of the Policy.
Naturally, the present finding under the Policy would not prevent either party from pursuing its options further through the courts, which, in so far as the allegations concerning the terms and alleged breaches of the mentioned Settlement Agreement are concerned, may provide a more suitable forum for examination of the relevant issues.
Considering the Panel’s decision set forth above, it is not necessary to examine whether the Complainant is estopped from bringing its claim with respect to the disputed domain name <ados.com> 13 years after registration of the domain name. While the respective time period until a claim was raised appears to be very long, it would also have to be taken into account that the Complainant raised an opposition against the Respondent’s Community Trademark registration in 2003, so that any applicable statute of limitations (if indeed such statute or related equitable doctrines would be found by this Panel to be applicable under the Policy) would most likely have been interrupted, with a new time period running from 2003.
For all the foregoing reasons, the Complaint is denied.
Tobias Zuberbühler
Presiding Panelist
Thomas Hoeren
Panelist
Reinhard Schanda
Panelist
Dated: December 7, 2010