WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

FJ Westcott Company v. Samuel Leo Klein / Image Melbourne Pty Ltd

Case No. DAU2014-0037

1. The Parties

The Complainant is FJ Westcott Company of Maumee, Ohio, United States of America, represented by Spruson & Ferguson Lawyers, Australia.

The Respondent is Samuel Leo Klein / Image Melbourne Pty Ltd of Macleod Victoria, self-represented.

2. The Domain Name and Registrar

The disputed domain name <fjwestcott.com.au> is registered with Web Address Registration Pty Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2014. On December 9, 2014, the Center transmitted by email to Web Address Registration Pty Ltd a request for registrar verification in connection with the disputed domain name. On December 11, 2014, Web Address Registration Pty Ltd transmitted by email to the Center its verification response confirming the Respondent as the registrant and providing contact details.

The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy” or “auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 proceeding commenced on December 29, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 18, 2015. The Response was filed with the Center on January 12, 2015.

The Center appointed Alistair Payne as the sole panelist in this matter on January 23, 2015. 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 is a manufacturer of photographic equipment based in the United States. It trades under the names FJ Westcott, Westcott, Strobelite and Photo Basics and has sold its goods by reference to the trading name and trade marks FJ WESTCOTT and WESTCOTT in many countries around the world including in Australia. The Complainant owns trade mark registrations for the WESTCOTT word mark as a Community Trade Mark under number 012130662 registered in February 2014 and has a pending trade mark application for WESTCOTT in Australia under application number 1661798. The Complainant operates a website at the domain name <fjwestcott.com>.

The Respondent was appointed as an authorised distributor of the Complainant’s products in August 2009 for a 12 month term, but the distribution agreement was terminated by the Complainant in June 2010. The Respondent registered the disputed domain name on March 19, 2010 from which it operated a website advertising the Complainant’s products. Since the termination of the authorised distribution arrangement the Respondent has continued to obtain a supply of the Complainant’s products through parallel imports and to distribute them to end customers through its website at the disputed domain name.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it has made a substantial use of the FJ WESTCOTT and WESTCOTT trading names or marks both internationally and in Australia since 1999. It notes a range of international registrations incorporating the WESTCOTT mark, including the registration and Australian trade mark application noted above and says that the substantive element of the disputed domain name is identical or confusingly similar to its FJ WESTCOTT trading name and common law trade mark.

The Complainant says that on August 28, 2009, the Respondent entered into a distribution agreement (“Agreement”) with the Complainant with respect to the distribution in Australia of goods under the Complainant’s marks. On or about May 24, 2010, in accordance with the terms of the Agreement, the Complainant says that it gave notice of its intention to terminate the Agreement, effective June 24, 2010 and that the Respondent ceased to be an authorised distributor of the Complainant in Australia as of that date.

As a result the Complainant submits that as of October 10, 2014 (being the date of the Complainant’s cease and desist letter to the Respondent), the Respondent had no rights or legitimate interests in the disputed domain name. It says that after termination of the distribution Agreement, the Complainant has not subsequently granted the Respondent any license, permission, or other rights by which the Respondent could own or use any domain name incorporating the Complainant’s FJ WESTCOTT or WESTCOTT trade marks. It submits that following termination the provisions of the distribution Agreement terminated any rights that it may have had to use the Complainant’s trade marks and that it had no right under the Agreement to use the disputed domain name. As the Complainant submits that the Respondent was not otherwise known by the WESTCOTT or FJ WESTCOTT marks or by the disputed domain name, it says that the Respondent cannot point to any reason to say that it had rights or legitimate interests in the disputed domain name.

The Complainant maintains that its FJ WESTCOTT and WESTCOTT trade marks are quite well known in the photography industry and amongst consumers of photographic equipment and it enjoys widespread international recognition in those marks, including in Australia. Considering the relationship between the Complainant and the Respondent, it is inconceivable that the Respondent was unaware of the FJ WESTCOTT and WESTCOTT trade marks and of the Complainant’s ownership and rights in those trade marks when it registered the disputed domain name. The Complainant submits that the continued registration of the disputed domain name after the termination of the distribution Agreement and as at the date of the cease and desist letter can only be regarded as conduct in bad faith for the purposes of obstructing the Complainant or its new distributor in Australia.

The Complainant submits that the registration by the Respondent of the disputed domain name was clearly intended for the purpose of disrupting the business or activities of the Complainant or its licensees or distributors in Australia or to create a deliberate obstacle to such trading activities by the Complainant for the Respondent’s own benefit. This conduct, says the Complainant, was calculated to prevent the Complainant from reflecting its trade mark and trading name in the corresponding “.au” domain name space.

The Complainant further submits that in the circumstances of the contractual distributorship relationship between the parties the Respondent’s registration of the disputed domain name without authorisation was of itself an act of bad faith as was the continued registration of the disputed domain name after termination of the distribution Agreement. The Complainant says that the registration by the Respondent of the disputed domain name was clearly intended for the purpose of disrupting the business or activities of the Complainant, or its licensees or distributors in Australia, or to create a deliberate obstacle to such trading activities by the Complainant for the Respondent’s own benefit and to prevent the Complainant from registering a domain name in the “.au” domain space which corresponded to its mark. In addition the Complainant alleges in its cease and desist letter that the Respondent is using the disputed domain name for “bait and switch” purposes and says that the Respondent’s response indicates that the Respondent intends to maintain the disputed domain name as an obstacle to the Complainant’s business operations in Australia. The Respondent’s offer to lease space on the website at the disputed domain name only reinforces the view that the Respondent seeks personal gain through maintenance of the disputed domain name and therefore is conduct in bad faith.

B. Respondent

The Respondent asserts that the Complainant is ineligible to own a “.au” domain name under the auDRP.

It says that it has a legitimate interest in retaining use of the disputed domain name because it stocks and sells the Complainant’s branded goods. The Respondent says that it entered into a 12 month Australian distribution Agreement with the Complainant on August 28, 2009 and after discussions with the Complainant it registered the disputed domain name on March 19, 2010 and has run a website there ever since. The Complainant, says the Respondent, was an uncooperative partner and unlawfully broke the Agreement on June 24, 2010 before the full 12 months had lapsed. Subsequently, the Respondent says that it continued importing the Complainant’s products as parallel imports and that the Complainant was aware of this and even agreed to honour warranty claims as is evidence by an email received from the Complainant in October 2013. The Respondent notes that the Complainant did not appoint another Australian distributor until very recently.

The Respondent submits that although it has always sold a range of photographic equipment, it has only ever advertised the Complainant’s products from the website at the disputed domain name and therefore has never engaged in “bait and switch” advertising as alleged by the Complainant.

The Respondent says that it has its main website at “www.imagemelbourne.com.au”, which, among other brands, also includes an extensive range of the Complainant’s products available for purchase (76 products in total as at January 2015). It says that by contrast the Complainant’s newly appointed Australian distributor only has 16 items listed on its website and therefore as the Respondent is by far the larger stockist of the Complainant’s items it should properly own the disputed domain name.

Finally, the Respondent says that it offered the Complainant opportunity to hire space on the website at the disputed domain name in good faith and at fair commercial rates in an effort to end the dispute in a fair and equitable way.

6. Discussion and Findings

On February 4, 2015, the Complainant and by way of reply the Respondent filed late supplemental submissions. The Panel has reviewed these submissions but does not consider that there are new factual circumstances such as should justify their admission. In the Panel’s view the late filed supplemental submissions of either party add nothing additional to the case and the Panel accordingly exercises its discretion not to admit them.

A. Identical or Confusingly Similar

While the Complainant asserts that it trades under both the FJ WESTCOTT name and the WESTCOTT mark, it has not submitted evidence of trade mark registration of FJ WESTCOTT. Neither has it submitted persuasive evidence of common law rights in Australia in the FJ WESTCOTT mark (for example there is no evidence of sales, advertising or detailed evidence of use such as is normally required by auDRP panels where a party seeks to assert common law rights). However the Complainant does own a Community Trade Mark registration for the word mark WESTCOTT under registration number 012130662 dating from 2013. The Panel further notes that the Complainant has a trading name for “FJ Westcott.” The Panel notes that the Policy has no requirement under this element that a complainant’s registered trade mark rights must be in Australia and this has been confirmed by previous auDRP panels (see, for example, Doteasy Technology, Inc. v. M Makras and E.A Nahed dba Dot Easy Australia, WIPO CaseNo. DAU2006-0011and Marshmallow Skins, Inc. v. Piipiinoo Australia Pty Limited, WIPO Case No. DAU2013-0015). Further the fact that the registered trade mark was filed after the registration of the disputed domain name is also not relevant under the first element of the Policy.

The disputed domain name differs from the Complainant’s WESTCOTT registered trade mark only by the addition of the prefix “FJ”. The Panel notes that WESTCOTT has a high level of distinctiveness for photographic goods and the addition of the letters “FJ” are in the Panel’s view unlikely to distinguish the substantive element of the disputed domain name from the Complainant’s WESTCOTT registered trade mark. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s WESTCOTT trade mark registration and as a result the Complaint succeeds under the first element of the Policy.

B. Rights or Legitimate Interests

The Respondent entered into a distribution agreement with the Complainant in 2009 and registered the disputed domain name during the term of this Agreement in March 2010 and before the Agreement was terminated by the Complainant in June 2010. There appears to be a difference of opinion as to whether the Complainant authorised the Respondent’s registration of the disputed domain name, but suffice it to say that the Respondent maintains that it has a legitimate interest in the disputed domain name as a result of always having stocked the Complainant’s goods, both during and after the term of the distribution Agreement and that it has never made anything but a bona fide use of the disputed domain name. The Complainant on the other hand submits that the Respondent’s rights to use any of its trade marks were strictly limited and controlled by the terms of the distribution Agreement between the parties and that as a result the Respondent had no right to register the disputed domain name and its registration was in bad faith.

Numerous Uniform Domain Name Dispute Resolution Policy (“UDRP”)¹ panels have considered similar cases in the context of both authorised and unauthorised distributorships and many of these cases have been decided by reference to a set of principles that were developed very soon after the development of the UDRP. In Terra Plana International Ltd. v. The Summer House Australia Pty Ltd / Tanya Greenwood, WIPO Case No. DAU2012-0025,the panel adopted these factors in deciding whether the respondent in that case was for the purposes of this element of the Policy making a bona fide use of the disputed domain name in that case. The panel in that case noted the “minimum” factor requirements from Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 as follows:

“- 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 (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 (use of Nikon-related domain names to sell Nikon and competitive cameras not a legitimate use);

- 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 (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 (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 (no bona fideuse 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 (‘a single distributor is extremely unlikely to have a legitimate interest in precluding others from using numerous variants on a mark’).”

Applying the first factor to this case, it appears to the Panel that the Respondent has and continues to advertise the fact from its website at the disputed domain name that it sells the Complainant’s branded goods.

As far as the second Oki Data factor is concerned there is no evidence that the Respondent has offered any other goods from that site. Although a link from the site could bring an Internet user to the Respondent’s main site from which the Respondent offers its full range of goods, the purpose of the website at the disputed domain name is clearly to promote only the Complainant’s goods. In this regard the Panel notes that a link from the site leads to a detailed and dedicated page offering the Complainant’s products on the Respondent’s website and yet another link leads directly to the Complainant’s own website. Previous panels have in similar circumstances found that even where there is a link to a web page selling other products, unless there are supervening factors this kind of website format may fulfill the second Oki Data factor (ITT Manufacturing Enterprises, Inc., ITT Corporation v. Douglas Nicoll, Differential Pressure Instruments, Inc., WIPO Case No. D2008-0936).

As for the third factor, there is however no express disclaimer on the website at the disputed domain name. In addition, the Panel notes that the screenshot of the Respondent’s website at the disputed domain name filed in evidence by the Complainant, from the period immediately prior to issue of its cease and desist letter, shows that the statement “Westcott’s Australian distributor is Image Melbourne” was prominently featured on the site, although this statement does appear to have been subsequently removed by the Respondent. This statement was misleading at that date as the distribution Agreement between the parties had long since been terminated. It would of course incorrectly suggest to Internet users that the Respondent had an authorisation or affiliation that it did not have. This false impression is likely only to be reinforced by the link from the website at the disputed domain name to the Complainant’s own website, and in the Panel’s view amounts to use of the disputed domain name in bad faith. Accordingly, the Panel finds that the case does not fulfill the third requirement of the Oki Data factors.

Finally, although there is no evidence that the Respondent has registered any other domain name incorporating the Complainant’s marks, it is notable that the disputed domain name incorporates the Complainant’s key trading name “fj westcott”. As a result it prevents the Complainant or the Complainant’s new Australian distributor from registering its trading name in the “.com.au” domain space. The Panel notes that the trading name is registered as part of the disputed domain name without any modifier which might detract from giving the impression that the disputed domain name is owned by, or authorised by, the Complainant.

This Panel believes that in a case where the domain name used by a distributor is essentially identical to a complainant’s trade mark or trading name and includes no distinguishing feature, then it is strongly arguable that there are no rights or legitimate interests (and that there is also bad faith) even in circumstances that the Oki Data requirements might otherwise be satisfied (which they are not in this case).

This issue was considered by the learned panel in Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227 and although that decision did not ultimately turn on the point he noted as follows:

“There is a clear analogy here with the position in ‘criticism’ site cases. Recently there are a number of cases under the Policy that have held that there can be no rights or legitimate interests in the use of a domain name that comprises another’s trade mark even if the registrant intends to use the domain name for the purposes of a non-commercial site that is critical of the trade mark owner (see, for example this Panel’s decision in 1066 Housing Association Ltd. v. Mr. D. Morgan, WIPO Case No. D2007-1461 and the cases referred to therein). The rationale for this approach is that the intentional adoption of a domain name that is essentially identical to or does not distinguish itself from another’s trade mark will involve an impermissible impersonation of the trade mark owner.

It is fair to say that this is approach in criticism cases is not universally accepted and this is an area where there is still an ongoing debate amongst panellists. But if this is the right approach in criticism cases (and the Panel still believes that it is), then it is difficult to see why a commercial use by a legitimate reseller of goods of a domain name that is identical to the trade mark for the goods should be treated differently.

However, it is not necessary to consider this issue further because in the present case the Domain Name does not comprise the Complainant’s trade mark alone. It also contains additional elements and one of those additional elements is the word ‘unofficial’. It is a term that distinguishes and is intended to distinguish the Respondent from the Complainant (see also in this respect Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206). As a consequence this case cannot be simply dealt with on the basis that the Domain Name and the Domain Name alone involves an impersonation of the Complainant. It does not. It is necessary to look at the use actually made of the Domain Name and the nature of the website that operates from it to see whether the registration and use is abusive.”

The Panel endorses and agrees with this approach and notes that in the instant case there is no such distinguishing term. Therefore it seems to this Panel that such use must amount to an impermissible impersonation of the trade mark owner and that the Respondent’s use of the disputed domain name cannot be viewed as being bona fide without the trade mark owner’s authorisation.

The Panel’s view that the Respondent has no rights or legitimate interests in the disputed domain name is only reinforced by the contractual background to the Respondent’s registration and subsequent use of the disputed domain name. The distribution Agreement between the parties contained express and detailed prohibitions as to use of the Complainant’s trade mark rights other than as expressly authorised under the Agreement. However in spite of these restrictions the Respondent took it upon itself to register the disputed domain name containing the Complainant’s WESTCOTT trade mark in undistinguished form and then failed to cease use, as required by the distribution Agreement, following its termination.

Accordingly, the Panel finds that the Complainant has succeeded in making out its case that the Respondent has “no rights or legitimate interests” in the disputed domain name and the Complaint succeeds under this element of the Policy.

C. Registered or Subsequently Used in Bad Faith

Under the Policy it is only necessary for a complainant to assert successfully that the disputed domain name was either registered, or used, in bad faith. It follows from the Panel’s discussion above in relation to the third Oki Data factor, the Respondent’s registration of the disputed domain name in circumstances that it wholly incorporates the Complainant’s trade mark without any distinguishing modifier and the failure of the Respondent to cease use of the Complainant’s trade mark rights (the trading name FJ WESTCOTT) following termination of the distribution Agreement between the parties, that the Panel finds that the Respondent has used the disputed domain name in bad faith. As a result the Complaint also succeeds under the third element 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 <fjwestcott.com.au> be transferred to the Complainant provided the Registrar is satisfied that the Complainant fulfils the eligibility criteria set out in Schedule C of the Australian Domain Name Authority’s Domain Name Eligibility and Allocation Policy Rules for the Open 2LDs (2012-04) for ownership of the disputed domain names. Alternatively, the Panel orders that the disputed domain name should be cancelled.

Alistair Payne
Sole Panelist
Date: February 7, 2015

¹ As the auDRP is largely based on the UDRP with substantial similarities, the Panel refers to UDRP precedent where appropriate.