Plasti Dip International, Inc. v. Yong Quek Peow
Claim Number: FA1601001658830
Complainant is Plasti Dip International, Inc. (“Complainant”), represented by Kristine M. Boylan, Minnesota, USA. Respondent is Yong Quek Peow (“Respondent”), Singapore.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <plastidipsingapore.com>, registered with Domain.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 29, 2016; the Forum received payment on January 29, 2016.
On January 29, 2016, Domain.com, LLC confirmed by e-mail to the Forum that the <plastidipsingapore.com> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name. Domain.com, LLC has verified that Respondent is bound by the Domain.com, LLC 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 February 1, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 22, 2016 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 firstname.lastname@example.org. Also on February 1, 2016, 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 February 11, 2016.
On February 15, 2016, Complainant submitted an Additional Submission. The submission was timely and in compliance with Supplemental Rule 7.
On February 17, 2016, Respondent sent an e-mail to the Forum, in which he posed some questions to Complainant. The Forum replied to the effect that the questions should be addressed directly to Complainant and reminded Respondent of the Supplemental Rule allowing him to file an Additional Submission. Complainant was copied on the Forum’s reply and the exchange of messages was posted to the case file web site, so it is part of the record of this case. On February 18, 2016, Respondent sent another e-mail to the Forum; this e-mail is also part of the record.
On February 21, 2016, Respondent submitted an Additional Submission. The submission was timely and in compliance with Supplemental Rule 7.
On February 12, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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.
Complainant states that it has rights in the PLASTI DIP mark through its registration in numerous jurisdictions around the world, including in Singapore, with rights dating back to 1983. The disputed domain name is confusingly similar to the PLASTI DIP mark because it contains the mark, less the space, combined with the geographic descriptor “Singapore” and the generic top-level domain (“gTLD”) “.com.” Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent is not commonly known by the disputed domain name, because Respondent is not authorized to use the PLATSI DIP mark. Complainant cites UDRP precedents to support its position.
Complainant alleges that Respondent uses the disputed domain name in bad faith because it is used to sell counterfeit versions of Complainant’s goods. Respondent registered the disputed domain name in bad faith because it did so with actual knowledge of Complainant’s rights in the PLASTI DIP mark. Complainant cites UDRP precedents to support its position.
Respondent alleges that he has rights and legitimate interests in the disputed domain name because he is the licensed distributor of Complainant’s products in Singapore. He states (sic): “Before I register the domain www.plastidipsingapore.com, I was appointed as a dealer in Singapore selling Plasti dip products by authorized distributor for Singapore and Malaysian from Plasti dip Pte Ltd. All plasti dip products were purchased from them.” Respondent produces a certificate from Plasti Dip PTE Ltd authorizing him to sell Plasti Dip products in Singapore.
Respondent alleges that he has not engaged in bad faith registration or use of the disputed domain name because he is the licensed distributor of Complainant’s products in Singapore and distributes only original, genuine products. Respondent states that he does not sell counterfeit products and that his prices are higher than the prices charged by Complainant on its own web site.
C. Additional Submissions
In its Additional Submission, Complainant states that Respondent is not an authorized distributor of Complainant’s products and has no affiliation with Complainant. Although Complainant does have authorized distributors in Singapore, Respondent is not one of them. Moreover, none of Complainant’s authorized distributors in Singapore has any knowledge of Respondent. This appears to be a case of a gray market importer fraudulently assigning distribution rights to other companies such as Respondent. Complainant states: “Accordingly, Respondent’s certificate, which purports to authorize Respondent as an authorized dealer of Plasti Dip products, is not legitimate and transfers no rights to Respondent.”
Further, states Complainant, there is no disclaimer on the website at the disputed domain name which discloses the relationship between Respondent and Complainant. Complainant cites the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) and UDRP precedents.
In his e-mail of February 17, 2016, Respondent states that he purchased all Plastidip products from Plasti Dip PTE LTD with invoices and asks Complainant: “who is the authorized Plastidip distributor [in Singapore] from 2013 to 2016?” and “does Plastidip have authorized Asia Pacific Distributor in Thailand?”
In his e-mail of February 18, 2016, Respondent states that Complainant appears not to be aware of authorized distributors such as Plastidip SE Asia or M&P Management Corp; and that Complainant appears not to know well each country authorized distributor’s terms and conditions. According to Respondent, each country distributor has the rights to authorize their own dealers without authorization from Complainant. In support, Respondent attaches an e-mail from “Plastidip SE asia Ltd” in which that organization states that it “looks after the supply of all Authorized Plastidip in South East Asia for M&P Export management corp, the sole Exporters”. The e-mail continues “there is no longer a sole agency agreement in force with Plasit Dip Pte Ltd., Singapore, and Plastidip SE Asia can now supply directly to distributors in Singapore.”
In his Additional Submission of February 21, 2016, Respondent states there are third parties that control the distribution rights for South East Asia for Complainant’s products: Shane Cowtan whose website is <www.plastidipseasia.asia> and Mike from M&P. Respondents states that he has communicated with them by e-mail, so they know him as a dealer in Singapore. Thus Complainant’s allegation that no distributor knows Respondent is not correct.
Respondent alleges that since those distributors know of his existence, he has the right to use the disputed domain name to sell Complainant’s original product: this is not a gray market. Respondent states (sic): “the only grey is Plastidip in USA have passed the authorized distributor management to a third party and Plastidip USA have no idea what is going on. Now the distributorship is so messy, they start to clean out everyone and some innocent people like me is one of them. … As an authorized dealer in Singapore, I have the right to keep the [disputed domain name].”
Respondent attaches copies of his e-mail communications with the cited distributors.
Complainant has rights in the mark PLASTI DIP, dating back to 1983.
Respondent is not authorized or licensed by Complainant to use its mark or to sell its products.
Respondent was authorized by “Plasti Dip PTE Ltd” to be a dealer in Singapore for Complainant’s products. That company alleges that it is the licensed distributor in Singapore and Malaysia for Complainant’s products. Respondent has been authorized to sell Complainant’s products by other entities that state that they are authorized distributors of Complainant’s products.
Respondent is using the disputed domain name to point to a web site that offers Complainant’s products.
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.
It is not contested that Complainant has rights in the mark PLASTI DIP. The disputed domain name is confusingly similar to the PLASTI DIP mark because it contains the mark, combined with the geographic term “Singapore.” See AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that the <axachinaregion.com> domain name “is confusingly similar to the Complainant's trade mark ‘AXA’” because “common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).
As Complainant correctly notes, a key jurisprudential reference relevant to this case is 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). The consensus view of WIPO panelists is: “Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant's relationship with the trademark holder. The respondent must also not try to ‘corner the market’ in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles. Pay-per-click (PPC) websites would not normally fall within such principles where such websites seek to take unfair advantage of the value of the trademark.”
As Complainant correctly points out, the web site at the disputed domain name does not disclose Respondent’s relation with Complainant. That notwithstanding, the Panel is of the view that the dispositive element here is “that not only authorized but also unauthorized resellers may fall within such Oki Data principles. ” As Complainant states, Respondent does not have a direct relation with it. Therefore there is no relation between Complainant and Respondent that Respondent should disclose on its web site.
Complainant initially alleged that Respondent was selling counterfeit goods, but retracted that allegation in its Additional Submission. What appears to be the case is that Respondent is selling genuine products that may or may not be gray market. To the extent that this activity is legal, it is legitimate and cannot be considered to be the sort of cybersquatting that the Policy was created to prevent. See Weber-Stephen Products Co. v. Armitage Hardware, D2000-0187 (WIPO, May 11, 2000); ITT Manufacturing Enterprises, Inc., ITT Corporation v. Douglas Nicoll, Differential Pressure Instruments, Inc., D2008-0936 (WIPO, Nov. 7, 2008); National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc., D2007-1524 (WIPO, Jan. 28, 2008).
The Panel finds that Complainant has not discharged its burden of proof for this element of the Policy.
Respondent alleges (and provides evidence) that he was authorized to sell Complainant’s products by entities that represent themselves as authorized distributors of Complainant’s products. Thus there are no grounds on which to find bad faith registration or use. See Easyjet Airline Company Limited v. Stephen B. Harding, D 2000-0398 (WIPO, June 22, 2000) (“The Policy was designed to apply only in clear cases of cybersquatting.”).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <plastidipsingapore.com> domain name REMAIN WITH Respondent.
Richard Hill, Panelist
Dated: February 24, 2016
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