Norgren, Inc. v. Lars Landefeld
Claim Number: FA1006001330274
PARTIES
Complainant is Norgren, Inc. (“Complainant”), represented by Kathleen S. Ryan, of
The Ollila Law Group LLC,
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain names at issue are <inorgren.com>, <norgren24.com>, <i-norgren.com>, and <gonorgren.com>, registered with 1&1 Internet AG.
PANEL
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Dennis A. Foster as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 16, 2010.
On June 18, 2010, 1&1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <inorgren.com>, <norgren24.com>, <i-norgren.com>, and <gonorgren.com> domain names are registered with 1&1 Internet AG and that the Respondent is the current registrant of the names. 1&1 Internet AG has verified that Respondent is bound by the 1&1 Internet AG registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 22, 2010, the Forum served
the Complaint and all Annexes, including a Written Notice of the Complaint,
setting a deadline of July 12, 2010 by
which Respondent could file a Response to the Complaint, via e-mail to all
entities and persons listed on Respondent’s registration as technical,
administrative, and billing contacts, and to postmaster@inorgren.com, postmaster@norgren24.com,
postmaster@I-norgren.com and postmaster@gonorgren.com. Also
on June 22, 2010, the Written Notice of the Complaint, notifying Respondent of
the email addresses served and the deadline for a Response, was transmitted to
Respondent via post and fax, to all entities and persons listed on Respondent’s
registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on July 12, 2010.
Complainant’s Additional Submission was received on July 19, 2010 in compliance with Supplemental Rule 7. The Panel has considered the Additional Submission in rendering the decision below.
On
July 19, 2010, pursuant to Respondent’s request to have the dispute decided by
a single-member Panel, the National
Arbitration Forum appointed Dennis A. Foster as Panelist.
Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
In this case, the language of the Registration Agreement is German and Respondent, a German citizen, insists that German should be the language used by the Panel in these proceedings. Complainant, on the other hand, requests that the language of the proceedings be English. Complainant argues that it is an American company with no knowledge of German, and that using that language would impose a significant burden upon Complainant, inevitably increasing unduly the costs and duration of the proceeding. To support its argument, Complainant notes further that the Complaint was drafted in English, the disputed domain names are English, English is widely used in international relations and English is the working language of the National Arbitration Forum.
In analyzing this issue, the Panel is mindful of the expeditious nature of UDRP proceedings and the necessity, in fairness to both parties, of avoiding undue cost and delay. However, most significant for the Panel is the fact that virtually all of the correspondence between the Complainant and the Respondent is in English. In that context, the Respondent has shown itself fully capable of understanding and drafting a high standard of English. The Complainant has provided its filings in English and German. The Response is only in German, but the Panel can read that language. For these reasons, the Panel is inclined to agree with Complainant’s arguments. Therefore, within its discretion under paragraph 11(a), the Panel shall designate English as the language of the proceedings and for this Decision. See Compagnie Gervais Danone v. Yao Renfa, D2008-0582 (WIPO June 30, 2008) and the UDRP cases cited in that decision pertaining to this issue.
RELIEF SOUGHT
Complainant requests that the disputed domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
- Complainant is a
- Complainant’s trademark, NORGREN,
has been in use since at least 1926.
Complainant has registered that mark in several countries, including the
- Complainant requests that the language of these proceedings be English and not German, because to do otherwise would place an undue burden on Complainant and slow the speed of the proceedings.
- All of the disputed domain names are confusingly similar to Complainant’s NORGREN trademark. They all incorporate the mark in full, adding in each case only single letters, short words, numbers or simple grammatical marks. Moreover, those additions reference aspects of Complainant’s business.
- Respondent has no rights or legitimate interests in the disputed domain names. For a year there were no postings on the websites found at the names. Subsequently, Respondent used the names to redirect Internet users to Respondent’s website, where Complainant’s and Complainant’s competitors’ products were offered. This does not constitute a “bona fide offering of goods or services” per paragraph 4(c)(i) of the Policy.
- Even if Respondent may legally sell Complainant’s products through Respondent’s website, it has no right to use Complainant’s trademark in the disputed domain names to do so. Nor may the trademark be so used to sell the products of Complainant’s direct competitors.
- Respondent is not licensed or otherwise authorized to use Complainant’s trademark, nor is Respondent commonly known by any of the disputed domain names. As Respondent is using the names to sell goods, Respondent is not making noncommercial or fair use of those names.
- Respondent registered the disputed domain names in bad faith. Due to the worldwide recognition of Complainant’s trademark, Respondent was undoubtedly well aware of the mark when registering the disputed domain names. Respondent registered the names to disrupt Complainant’s business.
- Respondent is using the disputed domain name in bad faith to redirect Internet users to Respondent’s website with the purpose of, among other things, selling the products of Complainant’s direct competitors. This is a “bait and switch” tactic that deters customers from buying Complainant’s products.
B. Respondent
- These proceedings should be held in German, as the registration agreement is in German and Respondent is a German citizen.
- Respondent is the managing director of a German company, Landefeld Druckluft u. Hydraulik GmbH that trades in pneumatic and hydraulic industrial products. Respondent was also authorized to represent Complainant’s products under a contract signed in 2006.
- Under that contract, Respondent had the right to use Complainant’s mark with respect to online and print media marketing without restriction, including in the disputed domain names.
- The differences between the disputed domain names, <inorgren.com>, <norgren24.com>, <i-norgren.com>, and <gonorgren.com>, and Complainant’s trademark, NORGEN, make it clear that Complainant does not own those names. Thus, the disputed domain names are not confusingly similar to Complainant’s mark, as Internet users will key in that mark if they seek a website affiliated with Complainant.
- Respondent’s website that is connected to the disputed domain names clarifies that the sites are not Complainant’s, but may have merely something to do with Complainant’s products. Through that website, Respondent sells the products of other companies as well. Some of the other companies’ products are more expensive than Complainant’s products.
- Respondent is attempting in no way to compete with Complainant. Both parties gain commercially from Respondents sale of Complainant’s products through Respondent’s use of the disputed domain names. Respondent’s use of the disputed domain names only gives Internet users the choice of purchasing Complainant’s products from Complainant or Respondent.
-The disputed domain names <inorgren.com> and <i-norgren.com> are not for public use but for intranet use.
-The disputed domain name <norgren24.com> allows Internet shoppers to buy the Complainant’s products from the Respondent 24 hours per day whereas the Complainant’s German affiliate does not do business after 1400 hours.
-The Complainant’s trademark is not being misused or diluted.
- Respondent did not register and is not using the disputed domain names in bad faith.
-To save time and resources, the Respondent is willing to have the disputed domain names lead to a page where Internet users can decide whether they want to do business with the Complainant or the Respondent.
C. Complainant’s Additional Submission
- The domain names are in English, and contain Complainant’s mark in its entirety, so the proceeding should be in English.
- There is no merit to Respondent’s argument that, by agreement with Complainant, Respondent has full rights to use Complainant’s trademark online and in print media, including use in the disputed domain names. A casual contact between Complainant and Respondent four years ago, allowing some limited use of files containing Complainant’s logo, does not grant Respondent a perpetual right to use Complainant’s trademark in any manner.
- Even if Respondent did have a right to use Complainant’s trademark for some purposes, there is no evidence that Respondent has the right to use that mark in the disputed domain names.
- Complainant and Respondent did enter into an informal business arrangement in 2006. Over Respondent’s objections, Complainant decided to terminate that arrangement in 2007, which Complainant was free to do since there were no signed contracts between them. Thus, any possible authorization for Respondent to use Complainant’s trademark ended in 2007.
- Prior to Respondent’s registration of the disputed domain names, Complainant sent Respondent letters demanding that Respondent stop using Complainant’s mark. Respondent resisted Complainant’s demands, but offered to comply for a payment of €175,000, which offer Complainant rejected.
- The recent addition of Complainant’s name and logo to Respondent’s website only increases the likelihood of consumer confusion regarding Complainant’s affiliation with the disputed domain names.
FINDINGS
Complainant is an internationally known American company that operates in the motion and fluid flow control products industry. It has been in business since at least 1926 and has used its trademark, NORGREN, continuously since then. Complainant has valid registrations for its mark in many countries, including with the United States Patent and Trademark Office (“USPTO”) (Registration No. 950,639; issued January 16, 1973) and the German Patent and Trademark Office (“GPTO”) (Registration No. 825,401; issued October 16, 1966).
Respondent, a German Company that trades in pneumatic and hydraulic industrial products, is the owner of the disputed domain names <inorgren.com>, <norgren24.com>, <i-norgren.com>, and <gonorgren.com>, which it registered on November 24, 2008. Respondent entered into a business relationship with Complainant in 2006. Complainant wrote Respondent that their relationship was terminated in 2007. Respondent now uses the disputed domain names to redirect Internet users to Respondent’s website, where those users are offered for sale Complainant’s products and the products of Complainant’s competitors.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has presented the Panel with good evidence that Complainant holds valid trademark registrations with the USPTO (Annex C) and GPTO (Annex D) for the mark NORGREN. The Panel finds that this evidence is sufficient to establish Complainant’s rights in those marks for the purposes of Policy paragraph 4(a)(i). See Spencer Douglass, MGA v. Bail Yes Bonding, D2004-0261 (WIPO June 1, 2004) (“The Complainant has established rights in the ALADDIN…marks, which are registered with the United States Patent and Trademark Office and thus are entitled to a presumption of validity.”); and Daimler AG v. Moench, FA 1118553 (Nat. Arb. Forum Jan. 15, 2008) (“Complainant has established sufficient rights in the DAIMLERBENZ mark through registration with the GPTO pursuant to Policy ¶ 4(a)(i)”).
While none of the disputed domain names is exactly the same as Complainant’s trademark NORGREN, the Panel notices first that all of the names contain the full mark. To that mark are added no more that two characters in any of those names, i.e., “i”, “i-“, “go” or “24”. Thus, the Panel is of the opinion that the Complainant’s trademark is salient in all of the disputed domain names. In many similar cases, prior UDRP panels have concluded that such additions do not distinguish a domain name from an established trademark, and so finds the Panel in this case. Therefore, the Panel believes that the disputed domain names are confusingly similar to Complainant’s trademark. See, for example, The Cyberbingo Corp. v. 207 Media, Inc., D2005-0714 (WIPO Oct. 4, 2005) (finding <i-cyberbingo.com> to be confusingly similar to the trademark CYBERBINGO, and stating,. “[t]he use of the letter “i”, the “-” and “.com” in association with CYBERBINGO in the domain name do not avoid a finding of confusing similarity.”); Juno Online Srvs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (finding the disputed domain name <my-juno.com> confusingly similar to the mark JUNO while opining that “[t]he addition of the generic word ‘my’ and a hyphen is insufficient to distinguish the domain name from Complainant’s mark.”); and Raisio plc and Town of Raisio v. Joohee, D2005-1041 (WIPO Dec. 14, 2005) (“The suffix “.com” does not contribute to distinguish the disputed domain name from the Complainant’s trademarks.”).
Accordingly, the Panel finds that Complainant has succeeded in showing that the disputed domain names are identical or confusingly similar to a trademark in which Complainant has rights.
In rendering its opinion with respect to paragraph 4(a)(ii) of the Policy, the Panel will follow the consensus view of prior UDRP panels that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names and then the burden shifts to Respondent to show it does have rights or legitimate interests. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”); and Hanna-Barbera Prods., Inc. v. Ent. Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
In this case, Complainant has established clearly its rights in a trademark to which the disputed domain names are confusingly similar and just as clearly asserts that Respondent is not authorized to use that trademark as part of a domain name, causing the Panel to conclude that a prima facie case has been made.
Respondent disputes Complainant’s contention that Respondent lacks authorization to use Complainant’s mark within the domain names at issue. To support this claim, Respondent cites its arrangement with Complainant, initiated in 2006, which allowed Respondent to use Complainant’s logo and to sell Complainant’s products online. Complainant concedes that at least an informal business relationship with Respondent did start in 2006, but that that relationship was terminated in 2007. Respondent disagrees, contending that the relationship is a binding agreement that is still in effect.
The correspondence the parties have exhibited tends to support the Complainant. Furthermore, it is clear to the Panel that Respondent has not presented for the record a fully executed written agreement between it and Complainant whereby Complainant has explicitly agreed to allow Respondent to use Complainant's trademark in domain names owned by Respondent. This confirms the Complainant’s contention that no written agreement exists.
In the absence of such a written agreement, the Panel has decided to follow the precedent set in numerous prior UDRP decisions where the rights of product resellers have been examined. Assuming arguendo that Respondent is authorized by Complainant to market Complainant’s goods online, one aspect of the test applied in said precedent is that, for such marketing to be considered a “bona fide offering of goods” per Policy paragraph 4(c)(i), Respondent is permitted to market only Complainant’s products through the disputed domain names. For supporting cases, see SkinMedica, Inc. v. Darush, FA 1115189 (Nat. Arb. Forum Mar. 20, 2008); Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (“Even if Respondent were legally selling Complainant’s products, it would not have the right to use Complainant’s trademark in the domain name to sell products of Complainant’s competitors…”); and Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001).
In this case, Respondent has admitted that the disputed domain names redirect Internet users to Respondent’s website, where the products of Complainant’s competitors as well as those of Complainant are offered for sale. Ergo, the Panel concludes that Respondent’s use of the disputed domain names does not meet the requirement of “a bona fide offering of goods or services” as delineated under paragraph 4(c)(i).
The Panel also finds that Respondent fails to satisfy the other two legitimizing criteria listed in paragraph 4(c), to wit: neither Respondent, Lars Landefeld, nor his company, Landefeld Druckluft u. Hydraulik GmbH, has been commonly known by any of the disputed domain names (paragraph 4(c)(ii)); and Respondent’s use of the disputed domain names to sell goods for profit is neither noncommercial nor fair use of the names (paragraph 4(c)(iii)).
Since Respondent has failed to rebut Complainant’s prima facie case, the Panel determines that said prima facie case prevails in this instance.
Accordingly, the Panel finds that Complainant has succeeded in showing that Respondent has no rights or legitimate interests in the disputed domain names.
The Panel believes that it is Respondent’s intent to use the disputed domain names for Respondent’s commercial gain, as Respondent admits it uses the names to sell the products of both Complainant and Complainant’s competitors. Moreover, the Panel believes that Respondent must know that, because of the confusing similarity between said names and Complainant’s trademark, Internet users searching for Complainant’s products are attracted to Respondent’s website (through redirection) and would be likely confused as to Complainant’s sponsorship, affiliation or endorsement of those names. As a result, the Panel determines that Respondent registered and is using the disputed domain names in bad faith pursuant to the circumstance enumerated in paragraph 4(b)(iv) of the Policy. See Computerized Sec. Sys., Inc. d/b/a SAFLOK v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003); and Compaq Info. Techs. Group, L.P. v. Waterlooplein Ltd., FA 109718 (Nat. Arb. Forum May 29, 2002).
Accordingly, the Panel finds that Complainant has succeeded in showing that the disputed domain names were registered and are being used in bad faith.
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is
Ordered that the <inorgren.com>, <norgren24.com>,
<i-norgren.com>, and <gonorgren.com> domain names be TRANSFERRED from Respondent to Complainant.
Dennis A. Foster,
Panelist
Dated: July 29, 2010
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