Protego International Co., Ltd v. Joen Reinert / Iso Coat Industrial A/S
Claim Number: FA1502001607152
Complainant is Protego International Co., Ltd (“Complainant”), represented by Kasper Frahm of Plesner Law Firm, Denmark. Respondent is Joen Reinert / Iso Coat Industrial A/S (“Respondent”), represented by Mogens Birkebaek of Holst, Advokater Limited Liability Partnership, Denmark.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <protegowoodcare.com>, registered with Ascio Technologies, Inc. Danmark – Filial af Ascio technologies, Inc. USA.
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.
Roberto A. Bianchi as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 27, 2015; the Forum received payment on February 27, 2015.
On February 27, 2015, Ascio Technologies, Inc. Danmark – Filial af Ascio technologies, Inc. USA confirmed by e-mail to the Forum that the <protegowoodcare.com> domain name is registered with Ascio Technologies, Inc. Danmark – Filial af Ascio technologies, Inc. USA and that Respondent is the current registrant of the name. Ascio Technologies, Inc. Danmark – Filial af Ascio technologies, Inc. USA has verified that Respondent is bound by the Ascio Technologies, Inc. Danmark – Filial af Ascio technologies, Inc. USA registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 3, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 23, 2015 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@protegowoodcare.com. Also on March 3, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 March 23, 2015.
Complainant submitted a timely Additional Submission on March 26, 2015.
On April 7, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Roberto A. Bianchi as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
In its Complaint, Complainant makes the following contentions:
Complainant has registered the PROTEGO mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,359,012, registered June 25, 2013, filed Apr. 2, 2012). Complainant also asserts unregistered common law rights in the PROTEGO and PROTEGO WOODCARE marks since July 29, 2011. The mark is used on or in connection with the sale of a wide variety of wood care products. The <protegowoodcare.com> domain name is identical to the PROTEGO WOODCARE mark as the only difference is the generic top-level domain (“gTLD”) “.com,” and confusingly similar to the PROTEGO mark because the domain name contains the entire mark and differs only by the addition of a generic term and the gTLD “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is neither commonly known as the domain name or in possession of licensing rights that would allow use of the PROTEGO or PROTEGO WOODCARE marks in domain names. Further, Respondent is hosting a website that sells products in competition with Complainant.
Any rights that Iso Paint Nordic A/S had in the disputed domain name was extinguished upon the termination of the agreement between the parties. See UVA Solar GmbH & Co. K.G. v. Kragh, D2001-0373 (WIPO May 7, 2001), finding that a former distributor of the complainant's products maintained rights and legitimate interest in respect to a domain name during the duration of its distributorship agreement, but that said rights and interests ceased upon termination of the agreement. See also Mohawk Canoe Club v. Universal Computing Services c/o George Fluck, FA0405000267477 (Nat. Arb. Forum June 15, 2004): "Respondent has provided no justification to excuse its continued use of the disputed domain name after the termination of the relationship with Complainant".
Regardless of the above, the disputed domain name was transferred to Respondent on November 6, 2014 and Respondent is, according to the publicly available information, not a part of the same legal group as Iso Paint Nordic A/S.
Respondent has registered and is using the disputed domain name in bad faith. First, Respondent is offering the domain name for sale. Second, Respondent is hosting a website that sells competing products, which disrupts Complainant’s business. Third, Complainant also previously held the now disputed domain name, but lost it. Respondent is also misusing <protegowoodcare.dk>, for which Complainant has brought a dispute before the Danish Complaints Board for Domain Names. The Respondent has not responded in that case, and it appears there is no decision yet, either.
B. Respondent
In its Response, Respondent contends as follows:
The disputed domain name is not identical or confusingly similar to the PROTEGO or PROTEGO WOODCARE marks. The disputed domain name is comprised of the common and generic terms and thus cannot be deemed identical or confusingly similar to Complainant’s marks. Complainant has not enforceable rights because “protego” (Latin for “protect”) is a generic term describing Complainant`s business: providing wood protection products. As this term is generic, adding the words “wood” and “care” distinguishes the resulting domain name from the marks.
Respondent has rights or legitimate interests in the disputed domain name. First, Respondent is doing business as “Protego.” Second, Respondent was granted, and still maintains, the right to use the disputed domain name under a distribution agreement entered into by a third party and Complainant, which was then subsequently transferred to Respondent.
Respondent has not engaged in bad faith registration or use. Respondent states that the distribution agreement grants Respondent the right to use the disputed domain name.
C. In its Additional Submission, Complainant contends as follows:
The words in Respondent’s disputed domain name are not so generic that they cannot be trademarked, as several trademark authorities, including the USPTO, have allowed registration of the PROTEGO mark.
Complainant maintains that the third party’s good faith registration of the disputed domain name was extinguished upon termination of the agreement and the transfer of the disputed domain name to Respondent. The disputed domain name was transferred to Respondent on November 6, 2014, and Respondent is a new registrant in relation to the assessment that the Panel has to make concerning Paragraph 4(a)(ii) of the UDRP, as Respondent is not a party to the abovementioned agreement.
Respondent did not make any additional submissions.
Since the present dispute requires the determination of contract issues and contract interpretation it is beyond the scope of UDRP proceedings. Therefore, the Panel dismissed the Complaint, and ordered that the disputed domain name remain with Respondent.
Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Preliminary Issue: Dispute Outside the Scope of the UDRP
The Panel notes that as shown in Complainant`s evidence, and recognized by Respondent, on December 13, 2012, Iso Paint Nordic A/S, a Danish company, and Complainant Protego International Co., Ltd. entered into an agreement that provided for the following:
- Iso Paint Nordic A/S bought and took over various domain names containing the term “Protego, except those in Thailand. Iso Paint Nordic A/S acquired an unlimited and unqualified right to use the “Protego” name for 99 years at a cost of 20,000 Danish crowns.
- Protego International would be appointed as distributor in Thailand for Iso Paint Nordic A/S for the Protego product line. Iso Paint Nordic A/S guaranteed that it would appoint only country distributors according to its choice and needs, and that no distributors for the whole Asia continent would be appointed.
- Should Iso Paint Nordic A/S in the future no longer wish to use the Protego domain names and Protego name, Protego International would have the right to buy back the various domain names at the same cost as Iso Paint Nordic A/S has paid, that is 20,000.00 Danish crowns.
Respondent contends that these contract terms are unambiguous, and that pursuant to UDRP, paragraph 4(a) the administrative panel does not have jurisdiction or competence to decide on the issue of contract interpretation. Respondent concludes that the Panel cannot decide that the domain name in dispute should be transferred to the Complainant, as this would indirect imply a specific contract interpretation.
The Panel notes that although Complainant contends that Respondent is, according to the publicly available information, not part of the same legal group as Iso Paint Nordic A/S, and that Respondent was not a party to the December 13, 2012 agreement, Respondent in its Response appears to consider that the transfer of the disputed domain name in its favor was legal and in accordance with rights created by such agreement. The Panel also notes that Respondent refers to the agreement as if it were a party thereto, or a legal successor to Iso Paint Nordic A/S.
Complainant
asserts that any rights that Iso Paint Nordic A/S had in the disputed domain
name were extinguished upon the termination of the December 13, 2012 agreement between
the parties. However, the Panel believes it is not in a position to determine in
the present proceeding whether Complainant´s cancellation was justified or not
under the agreement, or whether or not the right of use of the disputed domain
name granted by Complainant to Iso Paint Nordic A/S under the agreement
included or not to right to transfer the registration of the disputed domain name
to a third party. The Panel believes that any such determinations would
require an interpretation of the agreement, which the Panel believes, in
agreement with Respondent, is beyond the competence of a UDRP panel, and very
much so since the December 13, 2012 agreement appears to be an international
contract, which, inter alia, most likely calls for the determination of
the governing law or laws.
In the opinion of the Panel, clarifying such facts and making such determinations would most likely require calling witnesses to declare under oath before a court of competent jurisdiction. Clearly differing from an wide-scope action brought before a court of competent jurisdiction, proceedings under the Policy are a simplified and expedited means to obtain an administrative decision after – typically - just one round of writings and without hearings, which makes them apt to determine whether a clear case of cybersquatting exists or not. In this regard, paragraph 135 of the Final Report of the WIPO Internet Domain Name Process of April 30, 1999, states: “(i) First, the scope of the procedure is limited so that it is available only in respect of deliberate, bad faith, abusive, domain name registrations or “cybersquatting” and is not applicable to disputes between parties with competing rights acting in good faith.” See the majority opinion in Courtney Love v. Brooke Barnett, (Nat. Arb. Forum May 14, 2007): (“ Thus, according to the majority, a dispute, such as the present one, between parties who each have at least a prima facie case for rights in the disputed domain names is outside the scope of the Policy.”) The panel in Luvilon Industries NV v. Top Serve Tennis Pty Ltd. Case No. DAU2005-0004 (WIPO Sept. 6, 2005) concurred with this reasoning: (“The Policy’s purpose is to combat abusive domain name registrations and not to provide a prescriptive code for resolving more complex trade mark disputes ... The issues between the parties are not limited to the law of trade marks. There are other intellectual property issues. There are serious contractual issues. There are questions of governing law and proper forum if the matter were litigated. Were all the issues fully ventilated before a Court of competent jurisdiction, there may be findings of implied contractual terms, minimum termination period, breach of contract, estoppels or other equitable defenses. So far as the facts fit within trade mark law, there may be arguments of infringement, validity of the registrations, ownership of goodwill, local reputation, consent, acquiescence, and so on.”); see also Everingham Bros. Bait Co. v. Contigo Visual, FA 440219 (Nat. Arb. Forum Apr. 27, 2005) (“The Panel finds that this matter is outside the scope of the Policy because it involves a business dispute between two parties. The UDRP was implemented to address abusive cybersquatting, not contractual or legitimate business disputes.”); see also Fuze Beverage, LLC v. CGEYE, Inc., FA 844252 (Nat. Arb. Forum Jan. 8, 2007) (“The Complaint before us describes what appears to be a common-form claim of breach of contract or breach of fiduciary duty. It is not the kind of controversy, grounded exclusively in abusive cyber-squatting, that the Policy was designed to address.”); see also Frazier Winery LLC v. Hernandez, FA 841081 (Nat. Arb. Forum Dec. 27, 2006) (holding that disputes arising out of a business relationship between the complainant and respondent regarding control over the domain name registration are outside the scope of the UDRP Policy).
For these reasons, according to paragraph 15(e) of the Rules, the Panel finds this is a business and legal dispute which is outside the scope of paragraph 4(a) of the UDRP, and more properly to be decided before a court of competent jurisdiction.
DECISION
Since the present dispute is outside the scope of the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the domain name <protegowoodcare.com>, REMAIN WITH Respondent.
Roberto A. Bianchi, Panelist
Dated: April 20, 2015
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