The Complainant is Compositech, Inc. of Speedway, Indiana, United States of America ("US") and SRAM, LLC. of Chicago, Illinois, US, represented by Kestenberg Siegal Lipkus LLP, Canada.
The Respondent is Joseph Muino and Ciclismo Ltd of Sheffield, United Kingdom of Great Britain and Northern Ireland ("UK").
The disputed domain name <zippwheels.com> (the "Disputed Domain Name") is registered with 1&1 Internet AG (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 7, 2014. On August 8, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. The same day, an amended Complaint was filed by the Complainant. On August 12, 2014, the Registrar 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 together with the amended 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 August 14, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 3, 2014. An informal Response was filed with the Center on September 2, 2014.
On September 18, 2014, the Complainant emailed the Center, attaching supplemental submissions in response to the Respondent's submissions. The Center replied to the Complainant on September 19, 2014, advising that the supplementary material received would be forwarded to the Panel and that the Panel would determine the admissibility of the material.
The Center appointed John Swinson as the sole panelist in this matter on September 15, 2014. 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.
The first Complainant is SRAM, LLC, a multinational corporation that specializes in the manufacture and distribution of bicycle components, including wheels, handlebars, stems and seat posts. The second Complainant is Compositech, Inc., a subsidiary of SRAM, LLC. These entities will be collectively referred to as the "Complainant" for the purposes of this decision.
Compositech, Inc. owns a number of registered trade marks, including US Trademark Registration No. 1579973 for ZIPP word mark (registered January 30, 1990). It also owns registrations for the ZIPP word mark in Canada, Australia, China, Costa Rica, New Zealand, South Africa, Taiwan Province of China and Hong Kong, China. These trade marks will be collectively referred to as the "Trade Mark" for the purposes of this decision.
The Complainant submits that it also has common law rights in ZIPP trade mark, dating from 1988. The Complainant provided evidence of its use of ZIPP since that time. The Complainant also owns a number of domain names incorporating the Trade Mark, including <zipp.com>, <zipp.bike> and <zippstore.us>.
The Respondent is Joseph Muino and Ciclismo Ltd of the UK (collectively, "the Respondent"). As the Respondent only filed an informal Response, little else is known about the Respondent.
The Respondent (or its predecessor) registered the Disputed Domain Name on July 27, 2001. The Disputed Domain Name currently redirects to a webpage which advertises a ZIPP branded black valve. In the past, it has redirected to the Complainant's website.
The Complainant's contentions are as follows.
The Disputed Domain Name is confusingly similar to the Trade Mark.
The Disputed Domain Name incorporates the Trade Mark in its entirety. The addition of the descriptive term "wheels" does not distinguish the Disputed Domain Name from the Trade Mark. If anything, it adds to the confusion since the cycling-related goods offered on the website at the Disputed Domain Name bear a striking resemblance to the Complainant's products bearing the Trade Mark.
The Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Trade Mark as to source, sponsorship, affiliation or endorsement of the website, or of products or services on the website.
The Respondent used the Trade Mark without the Complainant's consent. The Respondent had actual and constructive knowledge of the Complainant's rights. This is revealed by the goods advertised on the website at the Disputed Domain Name, which display branding that is confusingly similar to the Trade Mark.
The Respondent is not using the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial use. The Respondent is profiting from its infringement of the Complainant's rights (through customers purchasing the competing goods offered on the website at the Disputed Domain Name).
The Complainant has not authorized or licensed the Respondent to use or register a domain name which incorporates Trade Mark and the Respondent is not an authorized reseller of the Complainant's products. The Respondent is not commonly known by the Disputed Domain Name.
The Respondent is diverting users to the website at the Disputed Domain Name, to presumably obtain commercial benefits through the sale of products bearing confusingly similar reproductions of the Trade Mark on identical goods (bicycle wheels and other cycling products). The Respondent is creating a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation or endorsement of the Respondent's website or location.
The Complainant further submits that the Disputed Domain Name was registered primarily for the purpose of disrupting the business of a competitor.
The Complainant is well-known and it is clear that the Respondent had knowledge of the Trade Mark when it registered the Disputed Domain Name, as evidenced by the use of confusingly similar branding on products sold on the website.
The Respondent did not respond to a cease and desist letter from the Complainant.
The Respondent's contentions are as follows.
The Disputed Domain Name was purchased by the Respondentwhen the Respondent wasthe sole agent and distributor for the Complainant's ZIPP products in the UK. The Complainant was aware of the registration at this time. The Respondent was the sole agent and distributor of the products until May 2007. This case is the first time that ownership of the Disputed Domain Name has been an issue.
The Disputed Domain Name redirects to a website advertising ZIPP branded product which the Respondent purchases from an authorized distributor.
The Respondent was an authorizeddistributor of the Complainant's products at the time that it registered the Disputed Domain Name, and therefore did not register the Disputed Domain Name to disrupt the Complainant's business.
The Respondent has owned, renewed and used the Disputed Domain Name for 13 years without issue.
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The onus of proving these elements is on the Complainant.
The Policy envisages prompt and efficient resolution of domain name disputes. Accordingly, the Rules and the Supplemental Rules only contemplate the filing of a complaint and a response, with strict time and word limits. There is no explicit provision for additional filings, except for further statements or documents provided in response to a request from a panel. Paragraph 10 of the Rules provides that the Panel is to conduct proceedings "with due expedition" and gives the Panel the power to "determine the admissibility, relevance, materiality and weight of the evidence". Generally, panels will only accept supplementary filings in "exceptional" circumstances.
The Complainant has provided supplementary submissions that mainly offer rebuttal arguments. However, these submissions also confirm an important fact, that the Respondent was the Complainant's distributor. Accordingly, the Panel accepts the supplementary submissions as part of the record in this proceeding.
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Complainant asserts that it owns the Trade Mark, and provided evidence of ownership. The Panel accepts that the Complainant owns the Trade Mark.
In this case, the gTLD designation at the end of the Disputed Domain Name does not impact the assessment of confusing similarity under the Policy (see e.g. Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698).
The Disputed Domain Name is a combination of the Trade Mark with the descriptive term "wheels". The Panel finds that the Trade Mark remains the dominant element in the Disputed Domain Name. It is well established that the addition of a descriptive term (such as "wheels") to a trade mark does not prevent confusingly similarity (see e.g. Mesosystem, S.A. v. LeaseDomains.com, WIPO Case No. D2013-0711 and Giorgio Armani S.pA. Swiss Branch, Mendrisio v. Gabriella Chung, WIPO Case No. D2013-0821).
In light of the above, the Panel finds that the Disputed Domain Name is confusingly similar to the Trade Mark. The Complainant succeeds on the first element of the Policy.
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that there is no evidence that the Respondent is commonly known by the Disputed Domain Name or that the Complainant has given the Respondent any permission to use the Trade Mark.
The Respondent submits that it was sole agent and distributor for ZIPP products in the UK from 2001 until 2007. The question here is whether before any notice to the Respondent of the subject matter of the dispute, it was making bona fide use of, or demonstrable preparations to use, the Disputed Domain Name in connection with an offering of goods or services.
The test for bone fide in this context was outlined in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. The "minimum" requirements are:
"- Respondent must actually be offering the goods or services at issue. E.g. World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306 (January 24, 2001) (respondent failed to show demonstrable preparations to use the domain name in connection with a bona fide offering).
- Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods. Nikon, Inc. v. Technilab, WIPO Case No. D2000-1774 (February 26, 2001) (use of Nikon-related domain names to sell Nikon and competitive cameras not a legitimate use); Kanao v. J.W. Roberts Co., Case No. 0109 (CPR July 25, 2001) (bait and switch is not legitimate).
- The site must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents. E.g., Houghton Mifflin Co. v. Weatherman, Inc., WIPO Case No. D2001-0211 (April 25, 2001) (no bona fideoffering where website's use of Complainant's logo, and lack of any disclaimer, suggested that website was the official Curious George website); R.T. Quaife Engineering v. Luton, WIPO Case No. D2000-1201 (November 14, 2000) (no bona fide offering because domain name <quaifeusa.com> improperly suggested that the reflected site was the official U.S. website for Quaife, an English company; moreover, respondent's deceptive communications with inquiring consumers supported a finding of no legitimate interest); Easy Heat, Inc. v. Shelter Prods., WIPO Case No. D2001-0344 (June 14, 2001) (no bona fide use when respondent suggested that it was the manufacturer of complainant's products).
- The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name. Magnum Piering, Inc. v. Mudjackers, WIPO Case No. D2000-1525 (January 29, 2001) ("a single distributor is extremely unlikely to have a legitimate interest in precluding others from using numerous variants on a mark")."
Applying these "minimum" requirements here:
- As of 2007, there is no longer a business relationship between the parties. Although the Respondent is no longer the Complainant's sole agent and distributor in the UK, it appears that it still has at least one of the Complainant's products in stock (i.e. the black valve advertised on the website that the Disputed Domain Name redirects to). Therefore, technically, it is "actually offering the goods or services at issue".
- The webpage that the Disputed Domain Name redirects to only advertises a ZIPP branded black valve. However, the website at the domain name to which the Disputed Domain Name resolves also features links to other products, most of which are HED branded.
- The product description for the black valve states that it is made by ZIPP USA. However, as far as the Panel can determine, the Respondent does not clearly disclose its relationship with the Complainant anywhere on the website associated with the Dispute Domain Name.
- The Respondent stocks only one of the Complainant's products, which is a GBP 5 product.
In light of the above, the Panel concludes that the Respondent has not made out the Oki Data factors. It appears that the Respondent is using the Disputed Domain Name to direct Internet users to its main website (at "www.hedwheels.com"), by first directing them to a subpage of this website. It seeks to legitimize this use by advertising an inexpensive product featuring the Trade Mark on the subpage. It appears that this behavior began in late 2013. The Panel has conducted its own investigations, which it is entitled to, and notes that the Wayback Machine indicates that up until around November 2013, the Disputed Domain Name redirected to the Complainant's website. Then for a period of time, the Disputed Domain Name redirected to the "www.hedwheels.com" products page, which sold mainly HED branded products (which compete with the Complainant's products). It appears that the redirection to the subpage featuring the ZIPP branded black valve has only been set up recently, in order to legitimize the Respondent's use of the Trade Mark.
The Complainant succeeds on the second element of the Policy.
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Disputed Domain Name has been registered and is being used in bad faith.
The Complainant took 13 years to file the Complaint. As discussed in previous UDRP cases, a delay in bringing proceedings does not provide a defense per se under the Policy. However, in this case, the Complainant's delay is relevant to the discussion of bad faith that follows.
The consensus view of paragraph 4(a)(iii) is that the Complainant must prove both bad faith registration and bad faith use. This view was clearly and succinctly stated in Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011 ("Mile") as follows: "the consensus view since the Policy was implemented in 1999 has been that the conjunctive 'and' indicates that there must be bad faith both at the time of registration and subsequently".
This view has been challenged in some decisions, which treated "registration" and "use" as a unified concept (see e.g. City Views Limited v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE, WIPO Case No. D2009-0643 ("Mummygold") and Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, WIPO Case No. D2009-0786 ("Octogen")).
This Panel endorses the approach of the panel in Mile (see also Xbridge Limited v. Marchex Sales, Inc, WIPO Case No. D2010-2069 for a comprehensive discussion of these issues). To construe "registration" as a continuous process would negate the distinction between "registration" and "use" within the Policy. When interpreting the words of the Policy, it is important to keep in mind that the objective of the Policy was to combat the abusive registration of domain names in "cybersquatting" cases, where registration occurred in bad faith. If the intention was that "registration" and "use" be considered in the alternative, this would have been reflected in the wording of the Policy. For example, the dispute resolution policies for other domains (such as ".au", ".uk" and ".eu") provide that the third element can be satisfied through either bad faith registration or use.
The Respondent (or its predecessor) registered the Disputed Domain Name on July 27, 2001. The Panel notes that the Respondent has renewed the Disputed Domain Name on a number of occasions over the past 13 years, however, it is widely accepted that the renewal of a domain name represents a continuation of the original registration and does not constitute bad faith registration as required by the Policy.
The onus is on the Complainant to prove bad faith registration. The Complainant submits that it is well-known and that the Respondent had knowledge of the Trade Mark when it registered the Disputed Domain Name. At the time that the Disputed Domain Name was registered the Respondent (or its predecessor) was, by the Complainant's admission, a distributor of the Complainant's products, so of course the Complainant and the Trade Mark were known to the Respondent. As stated above, the Wayback Machine indicates that up until around November 2013, the Disputed Domain Name redirected to the Complainant's website. The Panel finds that the Respondent (or its predecessor) registered the Disputed Domain Name as part of its legitimate business activities, in order to promote the Complainant's cycling products. The Complainant did not take issue with the Respondent's registration of the Dispute Domain Name when it was being used for this purpose. In fact, the first time the Complainant complained about the Disputed Domain Name was on January 17, 2014, when the Complainant wrote a cease and desist letter to the Respondent.
It is worth noting that at the time of registration of the Disputed Domain Name, it appears likely that the Respondent would have had rights or legitimate interests in the Disputed Domain Name (i.e. Oki Data factors would have been made out).
In light of the above, it cannot be said that the Respondent (or its predecessor) registered the Disputed Domain Name in bad faith. As this aspect of the third element of the Policy is not satisfied, the Panel is not required to address whether the Disputed Domain Name has been subsequently used in bad faith.
The Complainant has failed to satisfy the third element of the Policy and the Complaint must be denied.
For the foregoing reasons, the Complaint is denied.
John Swinson
Sole Panelist
Date: October 7, 2014