|Kläger||Audiotech Systems Ltd.|
|Entscheider||Harris, Matthew S.|
|Entscheidung||Transfer, denied in part|
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Audiotech Systems Ltd. v. Videotech Systems Ltd.
Case No. D2008-0431
1. The Parties
1.1 The Complainant is Audiotech Systems Ltd., of London, United Kingdom of Great Britain and Northern Ireland.
1.2 The Respondent is Videotech Systems Ltd., of Barking, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Names and Registrars
The disputed domain names <audiotechsystems.com> and <121wholesales.com> (the “Domain Names”) are registered with Schlund + Partner (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2008. On March 20, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On March 20, 2008, the Registrar transmitted by email to the Center its verification response. In that response the Registrar stated that it could not confirm that the named Respondent in the Complaint was the current registrant of the domain names. Instead, it stated that the registrant data for the <audiotechsystems.com> domain name was:
and that the registrant data for the <121wholesales.com> domain name was:
3.2 However, the first line of the address details retained by the Registrar for the <121wholesales.com> domain name was “The Videotech Group” and the other address details for the Respondent and the registrants of the domain names are the same. In the circumstances, it seems reasonably clear that the Complainant sufficiently identified the Respondent for the purposes of these proceedings (and the Panel notes from the papers subsequently filed in these proceedings that both parties have proceeded on this basis).
3.3 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”).
3.4 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 April 1, 2008. In accordance with the Rules, paragraph 5(a), the due date for the Response was April 21, 2008. The Response was filed with the Center on April 16, 2008.
3.5 Supplemental submissions were filed by both the Complainant and the Respondent on April 20, 2008 and April 21, 2008 respectively. The significance of these will be discussed further below.
3.6 The Center appointed Matthew S. Harris as the sole panelist in this matter on April 30, 2008. 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
4.1 The Complainant is Audiotech Systems Limited, a limited company registered in England and Wales in 1998. The Complainant is a wholesaler of electrical goods, smoking accessories and a range of what the Complainant describes as “fancy goods”. The company trades under the names “121wholesaler”, “audiotech systems” and “121zippo” and owns a number of domain names that incorporate these names.
4.2 The Respondent is Videotech Systems Limited, a limited company registered in England and Wales in 1992. The Respondent is also a wholesaler of electrical goods, smoking accessories and a range of miscellaneous products via the Internet. It has at various times traded as “Videotech Systems” and “123wholesale”.
4.3 It seems reasonably clear that the Respondent and the Complainant have been in dispute for some time in relation to the names chosen for their respective businesses.
4.4 The Respondent registered <audiotechsystems.com> as a domain name in April 2001. It would appear that at the relevant times the webpage operating from this domain name has had the words “welcome to Audiotechsystems.com… If you are looking for: AUDIOTECHSYSTEMS.com you have come to the right place” in large letters at the top of the screen. The Internet user is then redirected to a website operated by the Respondent from the <123wholesale.co.uk> domain name. There is also a link to that website.
4.5 The <121wholesales.com> domain name was registered in October 2006. The webpage operating from this domain name is similar to that of the <audiotechsystems.com> domain name. The words “welcome to… 121wholesalers.com… click here to enter our main site” are written across the top of the page. Further down the page is written the following:
“A competitor (you know who you are) is so desperate for business that he has been trading under a name very similar to Videotech & 123wholesale.co.uk in an attempt to confuse and steal our customers.
There is no doubt you will agree that this is very bad business practice and clearly the actions of a desperate individual.
We urge you not to fall victim to the childish pranks of a [sic] unscrupulous competitor and to boycott his website.”
4.6 Until recently, neither party would appear to have been the owner of any registered trade mark in relation to the names in dispute between the parties. However, on June 25, 2007, the Respondent applied for a UK registered trade mark in the words:
The trade mark proceeded to registration on December 21, 2007.1
5. Parties’ Contentions
5.1 The Complainant’s factual and legal contentions can be summarised as follows:
5.2 The Complainant claims to have been trading under the name “Audiotech Systems Ltd” since registration of the company in 1998. There is some discrepancy here since the Complainant later states that it has been trading under the name “Audiotech Systems” for 8 years (i.e., 2 years less than previously suggested). The Complainant states that it has been trading under the name “121wholesale” for 3 years. Both names are said to have become “service marks” of the Complainant and the Complainant states that both suppliers and customers associate the Complainant with those marks.
5.3 The Complainant states that the domain name <audiotechsystems.com> is identical to its “service mark” “Audiotech Systems”. The Complainant further maintains that the <121wholesales.com> domain name is identical to the “service mark” “121wholesale” save for the pluralisation and is therefore confusingly similar. The Complainant claims that its customers have been going to the Respondent’s sites in the belief that they belong to the Complainant and that it has received complaints as a result of this confusion.
5.4 The Respondent’s own domain name, <videotechsystems.uk.com>, hosts a live e-commerce site. Recently they have also set up a website at “123wholesale.co.uk”. The Respondent is widely known in the market under these two names i.e., “videotechsystems” and “123wholesale”.
5.5 The Complainant alleges that the Respondent has never traded under, nor been known by, the names “Audiotech Systems” or “121wholesales”. The Complainant states that the Respondent therefore has no legitimate interest or good reason for owning the Domain Names, particularly since they are aware of the Complainant’s interest in these names.
5.6 The Respondent registered the domain name <audiotechsystems.com> in April 2001. The Complainant asserts that between then and the date of the Complaint the Respondent has not used the domain for “anything other than publishing abusive and confusing information for our customers” and that <121wholesales.com> has been used in a similar way. The Complainant maintains that the Respondent has used the Complainant’s “service mark”, name, address, phone number and product names to confuse search engines and customers. Further, the Respondent is said to have copied text from the Complainant’s site to make its own site confusingly similar to that of the Complainant.
5.7 The Complainant alleges that the Respondent is using the Complainant’s “service marks” to confuse and mislead customers and to divert them to the Respondent’s website. The Complainant states that this is “an unfair, unethical and illegal business practice”.
5.8 The Complainant states that the Domain Names were registered in order to disrupt the business of the Complainant and that in each case, the domain name was bought within a year of the Complainant commencing trading on the Internet under that “service mark”.
5.9 The Complainant and the Respondent operate in the same market and until recently both traded from Whitechapel Road. The Complainant states that the Respondent therefore had full knowledge of the Complainant’s business name and “service marks”. The Complainant alleges that the Domain Names were registered “purely because of sick jealousy with the intention of causing disruption to [the Complainant’s] business”.
5.10 The Complainant asserts that the Respondent has used “121wholesale” as a key word for their paid advertisement with Google.co.uk, which constitutes a violation of copyright law and that they have used the word “audiotech” in the same way. The Complainant states that this clearly shows an intention by the Respondent to steal the Complainant’s customers. Further, the Complainant maintains that the Respondent “used the ‘white text on white background’ search engine hack to deceive the human eyes and manipulate the search results”.
5.11 The Complainant maintains that by using the Domain Names, the Respondent has intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s “service marks” and website.
5.12 The Complainant has succeeded in Nominet proceedings against the Respondent in respect of the domain name <121wholesales.co.uk>.
5.13 The Respondent has not submitted a Response in the correct format and has instead responded by means of a letter on the Respondent’s notepaper and signed by “Bobby Nagpal”. The fact that the Response is non-compliant and the consequences of this are addressed in greater detail in section 6 of this decision.
5.14 The Respondent has not addressed the Complainant’s assertions directly in its Response but has instead set out the facts from its own perspective. The Respondent’s contentions can be summarised as follows:
5.15 The Respondent states that the Complainant’s founder, Mr. G S Lamba, was a business partner in the Respondent’s company, which was established in 1992. The Respondent asserts that at that time it owned the domain names <videotech.uk.com> and <videotechuk.com>.
5.16 The Respondent states that it had planned to launch a sister company named “Audiotech Systems Ltd”, which would distribute car hi-fi equipment whilst the Respondent continued to sell video equipment. The Respondent claims that as a business partner, Mr. Lamba was aware of these plans.
5.17 Mr. Lamba resigned from the Respondent in February 1998. The Respondent maintains that despite assurances from Mr. Lamba that he would be starting his own business from another part of London (and therefore would not be in direct competition with the Respondent), he in fact opened Audiotech Systems Ltd (the name that the Respondent had planned for its sister company) barely 500 yards away from the Respondent’s premises within a month of leaving. The Respondent alleges further that in 1999, the Complainant began advertising in trade magazines using adverts identical to those of the Respondent, the sole difference being the name of the company.
5.18 The Respondent asserts that in order to combat the threat to the Respondent’s business that the Complainant posed, the Respondent began to attract a nationwide customer base by launching a full e-commerce website at “www.videotechuk.com”.
5.19 In October 1999, the Respondent states that it pursued its original plan of launching a sister company, which it named “Audiotech 2000 Limited” (the name “Audiotech Systems Limited” being unavailable as a result of the actions of the Complainant). The Respondent asserts that it successfully marketed this new sister company. The Respondent maintains that same month, however, the Complainant registered the domain name <audiotechsystems.co.uk> in a direct attempt to capitalise from this marketing.
5.20 The Respondent claims that the Complainant continued to benefit from the Respondent’s expensive and extensive advertising and soon after began to advertise in the same publications as the Respondent, appearing ahead of the Respondent where the advertisements were listed alphabetically.
5.21 The Respondent states that in April 2001, it purchased <audiotechsystems.com> in an attempt to limit the damage being caused by confusion with the Complainant. This domain name redirects to the Respondent’s main website. The Complainant did not launch an e-commerce site until several years later, in June 2005. The Respondent argues that the suggestion that the Respondent was attempting to benefit from the Complainant’s online reputation must be false since the Respondent’s own site had at that point been trading successfully for a number of years.
5.22 The Respondent states that due to the customer confusion caused by the similarity between “Audiotech” and “Videotech”, in September 2004 the Respondent renamed its website “123wholesale.co.uk” and left behind the “Videotech” brand that it had spent 13 years developing. The Respondent asserts that it was necessary to increase advertising threefold in order to ensure that customers were aware of the re-branding.
5.23 The Respondent states that in January 2005, the Complainant purchased the domain name <videotechuk.co.uk> and redirected it to its main website in order to capitalize from the confusion caused by the renaming.
5.24 The Respondent asserts that almost a year after it had undertaken the renaming exercise, the Complainant registered the domain name <121wholesale.co.uk>. The Respondent states that a year later, the Complainant launched a new website with that domain name and installed a redirection page on its website “www.audiotechsystems.co.uk”.
5.25 Over the past few months, the Respondent states that it has been receiving complaints from customers about the poor level of service that they have received. The Respondent alleges that it has later transpired that they had ordered goods from the Complainant’s website in error. The Respondent asserts that the Complainant is thereby tarnishing the good reputation of the Respondent.
5.26 The Respondent claims that the Complainant has been passing itself off as affiliated with the Respondent since its incorporation in 1998. Further, the Respondent maintains that the Complainant had hoped to cause confusion in the market place by establishing a company with a name remarkably similar to that of the Respondent and setting up domain names with similar names to the e-commerce sites of the Respondent.
5.27 The Respondent asserts that since then, the Complainant has also attempted to benefit from the Respondent’s successful advertising campaigns, relying on customer confusion between the two companies.
5.28 The Respondent maintains that the reason Nominet ordered the transfer of the <121wholesales.co.uk> domain name was that the response had been “submitted late”.
5.29 The Respondent encloses letters from its solicitors addressed to the Complainant requesting that they cease and desist use of the domain names <121wholesale.co.uk> and <audiotechsystems.co.uk> on the basis that they constitute an attempt to pass off the Complainant’s business as that of the Respondent. The letters are dated June and July 2007.
5.30 The Respondent lastly contends that the Complainant is attempting to secure control of the Domain Names in order to strengthen its defence against the allegations of passing off and breach of trade mark that the Respondent intends to bring in court.
6. Procedural issues
6.1 There are two outstanding procedural issues which it is convenient for the Panel to address before considering the substance of the dispute between the parties.
6.2 The first is the failure of the Respondent to submit a proper response in compliance with the Rules. This means for example, that the statements made by the Respondent in its letter are unsupported by the statement of truth required by paragraph 5(b)(viii). This is not a trivial matter. The Policy provides a relatively informal process of dispute resolution. It has no formal rules of evidence and panels frequently are prepared to treat as evidence assertions of fact to be found in the parties’ submissions insofar as these facts can reasonably be expected to be within the knowledge of that party.2 In the circumstances, it is imperative that submissions contain at the very least the limited safeguard provided by paragraph 5(b)(viii).
6.3 It is therefore not surprising that in the past some panels have disregarded in their entirety responses that have not been in compliance with the Rules. However, the Panel does not think this is the right approach in this case. The reason for this is that it would appear that elements of what the Respondent asserts in its letter are not actually inconsistent with the Complainant’s case or positively disputed by the Complainant. Nevertheless, the Panel has approached this material with caution.
6.4 The second procedural question is the status of the supplemental submissions filed by the parties on April 20 and 21, 2008. As was stated in DK Bellevue, Inc. d/b/a Digital Kitchen v. Sam Landers, WIPO Case No. D2003-0780:
As is by now well established the Rules do not provide any right of reply. Parfums Christian Dior S.A. v. Jadore, WIPO Case No. D2000-0938. Although supplemental submissions may be accepted to address new legal developments, see e.g., Pet Warehouse v. Pets.Com, Inc., WIPO Case No. D2000-0105, or to rebut unexpected factual assertions, see e.g., Pacific Fence & Wire Co. v. Pacific Fence and Jim Paradise, WIPO Case No. D2001-0237, they should be allowed sparingly.
6.5 The Panel accordingly asked the Center to provide it with copies of the supplemental submissions in this case without prejudice to its position as to whether this material should be taken into account for the purposes of these proceedings. It became apparent from a brief review of this material that the documents merely set out further details of the underlying dispute between the parties which stretches back to the late 1990s. Neither submission adds significantly to the substance of the issues to be decided in the current UDRP proceedings. In the circumstances, it is not necessary to comment further upon the supplemental filings for the purposes of reaching a decision in this dispute.
7. Discussion and Findings
7.1 Paragraph 15(a) of the Rules directs the Panel to decide a Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and the principles of law that the Panel deems applicable.
7.2 It is incumbent on the Complainant to make out its case in all respects under the rules set out in paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) The 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 domain name; and
(iii) The domain name has been registered and is being used in bad faith.
7.3 The Panel will therefore deal with each of these elements in turn in this decision. Nevertheless, it is helpful first to briefly comment on the ongoing dispute between the parties in relation to use of names. This dispute can be traced back to the late 1990s, when, according to the Respondent, the Complainant commenced trading under the name that the owner of the Respondent had intended to use for a “sister company”.
The Underlying Dispute between the Parties
7.4 The Respondent in particular claims that the Complainant’s trading activities under the “Audiotech Systems” and “121wholesale” names for the last ten years have amounted to the tort of passing off. Presumably if correct, the Respondent would be entitled to an injunction to stop the Complainant from using these names and if that is so, how (so the argument seems to go) could the adoption of these names be abusive for the purposes of the Policy?
7.5 It is, of course, neither possible nor appropriate for this Panel to conduct a trial of these passing off claims under the Policy. If this is to occur at all, this should take place in the courts. In the circumstances, it is tempting for the Panel simply to dismiss these claims in their entirety on the grounds that this is not the sort of case that the Policy was designed to address. This temptation is all the greater given that the facts of this matter (as they are understood by the Panel) are of little credit to either party. It is sad that two relatively small and at one time connected businesses have not been able to reach an agreement for nearly 10 years on what names they can and cannot use for those business. The famous words of Shakespeare’s Mercutio spring to mind.3
7.6 Nevertheless, the Panel does not think that it should give into that temptation. There are a number of reasons for this. First, notwithstanding the Respondent’s vehement assertions that the Complainant has infringed its rights for nearly a decade, it has not commenced court proceedings. The Respondent provides copies of letters before action from its solicitors dated June and July 2007 and it is clear that the Complainant has not complied with the Respondent’s demand. Yet nearly a year later proceedings have not been commenced and no explanation is offered in this respect. Therefore, whilst the Respondent asserts in its Response that “this is a legal case which will be fought in the British Courts”, the Panel is frankly somewhat sceptical that these proceedings will ever occur. It is all too easy to make allegations of infringement and, in circumstances where as here little has been done to progress those claims and little or no evidence is offered in support of those allegations, the Panel believes that it would be wrong simply to take these allegations at face value.
7.7 Second, and of greater importance, is the fact that the Panel believes to mix up the issue of passing off or trade mark infringement in this manner is wrong as a matter of principle. Numerous panels have held that trade mark infringement and abusive registration are not the same thing. They frequently overlap, but one is not dependent upon the other. This is not, of course, a case where a complainant alleges that a respondent’s domain name registration is infringing and therefore that the registration is abusive. It is a case where the Respondent alleges that the Complainant’s use of the names that the Complainant relies upon infringes its rights and therefore the Respondent’s adoption of domain names that incorporate those “infringing” names cannot ipso facto be abusive. However, in the Panel’s opinion the fact that it is the Respondent rather than the Complainant that raises the claim of infringement does not matter.
7.8 In the circumstances, the Panel believes that the correct approach is to examine each of the requisite elements of the Policy in turn. If in the context of that examination it is apparent that there is a substantive factual dispute between the parties, it may be that the dispute is incapable of determination under the Policy, and the Complaint may consequently fail. It may also be a dispute of fact that is relevant to some separate claim as a matter of law. But it is the irreconcilable dispute of fact rather than the legal claim that is relevant here.
Identical or Confusingly Similar
7.9 The Complainant maintains that the Domain Names are identical or confusingly similar to its “service marks”. The Complainant has been trading under the name “Audiotech Systems” for at least 8 years from its Whitechapel address. The Complainant has also been trading via the Internet at <audiotechsystems.co.uk> since 2005. While the Complainant has not expressly claimed unregistered trade mark rights in the “Audiotech” name, the fact that it claims that its “service marks” have been acquired through use in trade, means that this is implicit. It has also long been clear that unregistered or common law trade mark rights in a name4 which might found a claim in passing off under the law of England and Wales provide sufficient rights for the purposes of the Policy (see for example Antonio de Felipe v. Registerfly.com, WIPO Case No. D2005-0969; Louis de Bernieres v. Old Barn Studios Limited, WIPO Case No. D2001-0122; and Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235).
7.10 There is a complication in that the “Audiotech Systems” mark is alleged to be derived from the Respondent’s “Videotech Systems” name. Whilst the Respondent provides little in the way of supporting evidence as to the extent of its activities under that name, there seems to be little dispute that at least initially those activities were not unsubstantial and the Complainant seems to accept that the Respondent is “widely known in the market” under the “Videotech” name (notwithstanding the Respondent’s admission in the Response that as least so far as its Internet activities were concerned, it abandoned use of the “Videotech Systems” name over three years ago).
7.11 Although this is never quite made explicit in the Response, the Respondent’s contention seems to be that as a consequence of the similarities between the “Audiotech Systems” name used by Complainant and the “Videotech Systems” name used by the Respondent, the “Audiotech Systems” name has failed to become distinctive of the Complainant’s business. However, in the absence of more cogent evidence to this effect from the Respondent, the Panel is unconvinced. First, notwithstanding the obvious similarities between the terms “Audiotech Systems” and “Videotech Systems”, the differences are far from trivial. Second, it strikes the Panel that after 10 years of trading under the “Audiotech Systems” name, the Complainant would have developed independent goodwill in that brand notwithstanding the alleged similarities to the “Videotech” brand used by the Respondent. Whilst the evidence as to the use of the brand is not extensive the Complainant has provided accounting documentation that suggests that total sales of the Complainant in 2007 were over 200000. How this split between the various brands under which the Complainant has operated is not made clear, but no matter how the sales are split, the “Audiotech Systems” name appears to have been used at all times as the “parent brand” for the Complainant in respect of all of its activities. For example, invoices in the name of “www.121zippo.co.uk” and “www.121wholesale.co.uk” attached to the Complaint all prominently include in bold letters at the top the “Audiotech Systems Ltd” name.
7.12 The Respondent also alleges that it has incorporated a company under the name “Audiotech 2000 Ltd” in late 1999. However, there is simply no evidence produced by the Respondent of any trading by any company under that name. Similarly, whilst the Respondent claims to have “marketed” the new company, what form that marketing took and when it took place is not explained or evidenced.
7.13 In the circumstances, the Panel accepts that the Complainant has developed sufficient reputation in the “Audiotech Systems” name to provide it with unregistered trade mark rights in the United Kingdom for the purposes of the Policy.
7.14 Given this finding, it inevitably follows that the domain name <audiotechsystems.com> is essentially identical to a trade mark in which the Complainant has rights for the purpose of the Policy. Therefore, so far as the <audiotechsystems.com> domain name is concerned the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
7.15 The position in relation <121wholesales.com> is more complicated. Again the Complainant accepts that the Respondent is “widely known” under the “123wholesale” name. Indeed, according to the Respondent (and in contrast to “Videotech Systems”), this is the name under which it now conducts all its Internet activities.
7.16 So far as the evidence of the Complainant’s own activities under the “121wholesale” name are concerned, the evidence is far less compelling than is the case in relation to “Audiotech”. The Complainant appears to have been trading under the “121wholesale” mark for 3 years, or, on the Respondent’s case, only 2 years. There is also very little evidence before the Panel as to the extent of that trading. The only evidence proffered in this respect is a single invoice dated November 12, 2003 on <121wholesale.co.uk> in the sum of 174.65.
7.17 Further, the one digit difference between the “121wholesale” and “123wholesale” names is far harder to spot.
7.18 In short, there is a real question in this case as to the extent of the Complainant’s reputation in the “121wholesale” name. The similarity between that name and the Respondent’s “123wholesale” name further calls into question the extent to which the “121wholesale” name is one in which the Complainant owns any substantial goodwill. The Panel therefore finds that the Complainant has failed to show that it has unregistered trade mark rights in the “121wholesale” name under English law and therefore has failed to make out the requirements of paragraph 4(a)(i) of the Policy.
7.19 The Panel recognises that in doing so it has reached a conclusion different from the appointed expert in the separate Nominet proceedings between the parties in relation to a similar domain name.5 However, in the Nominet proceedings it would appear that the Respondent did not put in submissions.6 The Panel is also mindful that it is sometimes said that the rights requirement is not a stringent one so far as the Policy is concerned. However, it is one thing to find unregistered rights on the basis of limited evidence of trading activity, and quite another to reach the same conclusion where, as here, the trading evidence is not only limited but that there appears to be a real unresolved dispute as to how the name is perceived by the relevant public.
7.20 In the circumstances, so far as the <123wholesales.com> domain name is concerned, the Complainant has not made out the requirements of paragraph 4(a)(i) of the Policy. There is consequently no need to consider further the Complainant’s case under paragraphs 4(a)(ii) and (iii) of the Policy in relation to this Domain Name.
Rights or Legitimate Interests
7.21 Paragraph 4(c) of the Policy sets out three examples of rights or legitimate interests for the purposes of the Policy. They are:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
These are not an exhaustive enumeration of rights or legitimate interests. They are examples only.
7.22 The Respondent does not positively assert any of these grounds of rights or legitimate interest. This is perhaps not surprising. For example, it seems reasonably clear that at no time has the Respondent been known as “Audiotech Systems”. According to the Respondent, it has a sister company with the name of “Audiotech 2000 Limited”. However, the domain name is not registered in the name of that sister company and even if it were there is no evidence before the Panel that at any time it has been known by the “Audiotech Systems” name.
7.23 The Respondent instead states that in fact it purchased the <audiotechsystems.com> domain name “to limit the damage being caused by the name confusion and had this redirected to our website”. Might then this provide an alternate “legitimate interest” under the Policy?
7.24 Whilst this argument is superficially attractive, it carries with it difficulties, both of principle and fact. The argument that there is such a legitimate interest is dependent upon the Panel accepting that the Respondent is entitled as a matter of law to use, or at least stop the Complainant from using, the “Audiotech Systems” name. Not only is there insufficient evidence before the Panel to support such a finding, but as this Panel recently held in 1066 Housing Association Ltd. v. Mr. D. Morgan WIPO Case No. D2007-1461, so far as possible, the issue of rights and legitimate interest should be determined without reference to local notions of non-infringing use. In the Panel’s opinion such “defensive” use even if honestly intended does not provide a right or legitimate interest under the Policy.
7.25 Further, in this case the Panel also thinks that it is wrong to characterise the Respondent’s activities in this case as “defensive”. The Respondent did not set up a website under the <audiotechsystems.com> domain name just to dispel alleged customer confusion. Instead, (as is explained in greater detail under the heading “bad faith” below), the Respondent sought to represent itself on the website as the real “Audiotech Systems”, when the reality is that it has not for many years (and possibly never) adopted that name in connection with its business. If anything this was activity that seems calculated to foster further confusion amongst Internet users. Such activity does not provide the Respondent with rights or a legitimate interest under the Policy.
7.26 In the circumstances, so far as the <audiotechsystems.com> domain name is concerned, the Complainant has made out paragraph 4(a)(ii) of the Policy.
Registered and Used in Bad Faith
7.27 The Complainant states that the Respondent is using the <audiotechsystems.com> domain name to “confuse and mislead [the Complainant’s] customers and divert them to its website”. This appears to be a reference to the Policy, paragraph 4(b)(iv):
by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
7.28 As stated above, the Respondent claims that its intention in registering the domain name was to defend itself against attempts by the Complainant to pass itself off as the Respondent.
7.29 However, the website operating from the domain name is headed with the words “welcome to… AudiotechSystems.com” and then states that “If you are looking for: AUDIOTECHSYSTEMS.com you have come to the right place”. In circumstances where it would appear that the Respondent does not otherwise use the “Audiotech Systems” name, it is hard to see how this can be sensibly interpreted by Internet users as anything but a reference to the Complainant’s business.
7.30 Further, there is the use of what the Complainant calls the “‘white text on white background’ search engine hack”. What the Complainant is referring to here is the fact that if one looks at the underlying code for the website operating from the <audiotechsystems.com> domain name there are several references directly to the Complainant which cannot be seen by the human eye. For example, the page contains the text “Welcome to Audiotech Systems Ltd. Please choose one of the three sites operated by your favourite Audiotech Systems Ltd”.
7.31 In the circumstances, the inference is obvious. The Respondent is using the <audiotechsystems.com> domain name to misrepresent to the public that it is the Complainant and it is the intention of the Respondent to transfer people looking for the Complainant’s business to the Respondent’s current business at <123wholesale.co.uk>. In the opinion of the Panel, this activity falls within the bad faith use described in the Policy, paragraph 4(b)(iv). It is also possible to infer from the use that the Respondent is making of the domain name and the content of the website that operates there from that this was also the intention of the Respondent at the time it initially registered the domain name.
7.32 The Panel is prepared to accept that the Respondent may honestly believe that these actions are justified given the ongoing dispute about the derivation and use of the “Audiotech Systems” name. Nevertheless, in the opinion of the Panel this does not prevent a finding of bad faith registration and use for the purposes of the Policy.
7.33 In the circumstances, so far as the <audiotechsystems.com> domain name is concerned, the Complainant has made out paragraph 4(a)(iii) of the Policy.
7.34 The Panel suspects that its findings in this case will not satisfy either party. The Respondent has already stated that this matter will be put before the courts and whilst the Panel has already expressed doubts that this will occur given the history of this matter to date, it is clearly in the interests of both parties that their underlying dispute in relation to the use of various names be resolved. After approximately ten years of parallel activity it should be possible for the parties to reach some form of accommodation with one another in this respect. The Panel would strongly encourage the parties to do so.
8.1 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, <audiotechsystems.com> be transferred to the Complainant.
8.2 For all the foregoing reasons, the Complaint is denied in respect of the domain name <121wholesales.com>.
Matthew S. Harris
Dated: May 14, 2008
1 Whilst the details of the Respondent’s trade mark registration are not to be found in the papers filed by the parties, the Respondent does refer to its trade mark No. 2459450 and the Panel has independently verified the existence of this trade mark from a search on the UK trade mark database accessible at the UK Intellectual Property Office website (as to the Panel’s powers to do this see paragraph 4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions).
2 At times it may not be particularly compelling evidence and may be easily countered by evidence from the opposing party, but that is a question of evidential weight rather than principle.
3 Romeo And Juliet Act 3, scene 1, 91.
4 The Panel uses the terms “unregistered” or “common law” trade mark rights and “goodwill in a name” notwithstanding the fact that it is well aware that under the English law of passing off, it is not goodwill in a name that is protected but goodwill in a business and that it is frequently said that in English law there is no such thing as a common law trade mark. Nevertheless, for the purposes of the Policy it is the extent to which the English law of passing off may protect against the use by a third party of a specific unregistered term (rather than other forms of “misrepresentation”) that is important. In this context the terms “goodwill in a name”, “common law trade marks” and “unregistered trade mark rights” remain both meaningful and useful. For a further explanation of the issues here see, for example, 3-4 to 3-5 of Wadlow ‘The Law of Passing-Off’, third edition.
5 The Nominet ADR procedure is somewhat different to the Policy, and there may well be differences in what constitutes “rights” for the purposes of each. However, so far as the issue of rights in a name under the English law of passing off are concerned, the assessment is, or should be, the same.
6 See paragraph 4.3 of Audiotech Systems Ltd v. The Videotech Group DRS 04739.