Digga Australia Pty Ltd v. Digga Europe
Limited
Claim Number: FA0607000755181
PARTIES
Complainant is Digga Australia Pty Ltd (“Complainant”). Respondent is Digga Europe Limited (“Respondent”), represented by Alister Rayner, Shipton Downs Farm, Hazleton, Cheltenham, Gloucestershire GL54 4DX, England.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <diggaeurope.com> and <diggereurope.com>, registered with Totalregistrations.
PANEL
The undersigned certify that they have acted independently and
impartially and that to the best of their knowledge they have no known conflict
in serving as Panelist in this proceeding.
Debrett Gordon Lyons, Esq., Honorable Justice Richard B. Wickersham,
(Ret.) and Hon. Carolyn Marks Johnson sit as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically July 20, 2006; the National Arbitration Forum received a hard
copy of the Complaint July 28, 2006.
On July 25, 2006, Totalregistrations confirmed by e-mail to the
National Arbitration Forum that the <diggaeurope.com> and <diggereurope.com> domain names are registered with Totalregistrations
and that the Respondent is the current registrant of the names. Totalregistrations verified that Respondent
is bound by the Totalregistrations registration agreement and thereby has
agreed to resolve domain-name disputes brought by third parties in accordance
with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 9, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of August 29, 2006, by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent’s registration as technical, administrative and
billing contacts, and to postmaster@diggaeurope.com and
postmaster@diggereurope.com by e-mail.
A timely Response was received and determined to be complete August 28,
2006.
On September 13, 2006, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed Debrett Gordon Lyons, Esq., Hon. Richard B.
Wickersham, (Ret.), and Hon. Carolyn Marks Johnson, (Ret.) as Panelists.
The Panel first looks at a preliminary procedural
issue here that concerns the scope of UDRP actions. Because Respondent registered the disputed domain names while
under contract with Complainant, the Panel considered whether or not the
Complaint actually raises issues of abusive registration of the <diggaeurope.com> or <diggereurope.com>
domain
names, rather than rightful
possession of the domain names as well as the term “Digga Europe.”
The Panel finds the issues in this case concerning registration and
rights to be within the scope of the UDRP.
The Panel recognizes that the total dispute of the parties may well go
beyond the scope of the UDRP and the Panel does not attempt to influence or
affect issues that may be before the courts.
But see Commercial Publ’g Co. v. EarthComm., Inc. FA 95013 (Nat. Arb. Forum July 20, 2000)
(finding that the Policy’s administrative procedure is “intended only for the
relatively narrow class of cases of ‘abusive
registrations’ . . . The [P]olicy relegates all
‘legitimate disputes’ to the courts”); see also Discover New England
v. Avanti Group, Inc. FA 123886 (Nat. Arb. Forum Nov. 6, 2002) (finding the
dispute outside the scope of the UDRP because the dispute centered on the
interpretation of contractual language and whether or not a breach occurred).
The Panel next looks to the
substantive law issue of whether the doctrine of laches serves to
estoppe Complainant from going forward with this domain name complaint.
Respondent contends that it registered and used the <diggaeurope.com> and <diggereurope.com>
domain
names for several years without objection from Complainant; however,
Respondent does not point out delay after the severance of its relationship
with Complainant. As defined by Black’s
Law Dictionary, the doctrine of laches “is defined as neglect to assert
a right or claim, which, taken together with lapse of time and other
circumstances causing prejudice to adverse party …”.[1] The Panel is aware that some prior panels
have held that the doctrine of laches applies to a complainant’s delay in
bringing a complaint. See e.g., Citigroup Inc. v. Parvin, D2002-0969 (WIPO May
12, 2003) (“There is also a possible laches argument because Citi sat on this
claim for nearly 5 years in the case of some of these <cititravel>
domains, before doing anything to protect its marks.”); see also Square Peg Interactive Inc. v. Naim Interactive Inc., FA 209572 (Nat. Arb. Forum Dec. 29, 2003) (“If a
trademark owner accuses another party of infringement but then fails to pursue
the matter diligently, it may in some cases be concluded that the trademark
owner has abandoned its claim and the accused infringer may be able to build up
trademark rights.”). However, this
Panel finds that the doctrine of laches is not applicable to the present
Complaint.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following allegations
in this proceeding:
1.
Respondent
registered a domain name that is confusingly similar or identical to a mark in
which Complainant has protected rights.
2.
Respondent has
no rights to or legitimate interests in the mark contained within the domain
names and thereby no rights in the domain names.
3.
Respondent
registered and used the domain names in bad faith.
B. Respondent makes the following points in
response:
1.
Respondent
concedes that the domain names are confusingly similar but asserts that DIGGA
and DIGGA Europe are not confusingly similar.
2.
Respondent
asserts that it had rights through the agreement to distribute the products of
Complainant and thus rights to create the domain names based on the
relationship that existed with Complainant at the time.
3.
Respondent had
no bad faith in registering the domain name.
FINDINGS
Complainant manufactures, among other things,
machines, machine tools, motors and engines, machine coupling and transmission
components, agricultural implements, excavators, diggers, backhoes, trenchers
and trenching machines, augers and auger bits for the use with powered tools,
and auger driver units, rammers and ram drills, truck cranes along with repair
and installation services for such goods.
Such equipment is manufactured and
distributed internationally under the DIGGA mark, registered in Australia and
the European Union.
Complainant holds trademark rights by virtue of trademark registrations
in both Australia and the European Union since June 14, 2001, and June 15,
2006, respectively.
Prior to obtaining trademark registrations, Complainant enjoyed common
law rights in the DIGGA mark, having conducted business under that mark since
1981, although Respondent’s submission puts the organization date at 1983.
Complainant helped to establish Respondent as a corporate entity in 1998
for the sole purpose of distributing Complainant’s products. Respondent maintains that it had the sole
right to distribute Complainant’s products in Europe between 1998 and 2006.
An agent and employee of Complainant registered the two disputed domain
names February 23, 2000, using Complainant’s mark. The same agent attempted to register Complainant’s trademark in
Europe, without Complainant’s consent and withdrew the application due to
Complainant’s objection.
Respondent became a licensed distributor of Complainant in 1998 and Complainant terminated the relationship with
Respondent in November 2004.
Cease and desist notices were sent by
February 2005.
On November 4, 2006, Respondent changed its
name from Digga Europe Ltd. to Auger Torque Europe Ltd, but retained the
disputed websites containing Complainant’s mark and refused to transfer them to
Complainant.
Respondent continued to use the disputed
domain names and caused them to resolve to sites offering products that
competed with Complainant, diverting those seeking Complainant and
Complainant’s products to Respondent’s auger torque product brand.
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 Complainant to 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)
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 asserts that Respondent registered a domain name that is confusingly similar or identical to its DIGGA mark, in which Complainant established rights pursuant to Policy ¶ 4(a)(i) by virtue of its trademark registrations for the mark in both Australia and the European Union. The Panel finds based on the extrinsic proof in this proceeding that Complainant’s trademark registrations for the DIGGA mark in Australia and in the European Union sufficiently demonstrate Complainant’s rights in the mark under Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)… .”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
However, in light of the fact that Respondent’s registrations of the disputed domain names predate Complainant’s trademark registrations, the Panel also looks to the proof to determine whether Complainant demonstrated common law rights by establishing secondary meaning in the DIGGA mark that would precede the registration dates pursuant to Policy ¶ 4(a)(i). Complainant asserts that its business was formed in 1981, and that since such time Complainant has utilized the DIGGA mark in the manufacturing of augers, auger-drives, trenchers, and related attachments, along with service and installation of these goods.
Moreover, Complainant contends and offers documentation in support to show that it is recognized worldwide as the leading manufacturer of such materials. Consequently, the Panel finds that Complainant sufficiently demonstrated secondary meaning in its DIGGA mark and the Panel concludes that Complainant established common law rights in the mark pursuant to Policy ¶ 4(a)(i). See Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005) (finding that complainant had established common law rights in its STELLAR CALL CENTRES mark because complainant demonstrated secondary meaning for the mark); see also BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000) (finding that complainant has common law rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify complainant as the source of broadcast services over the Internet, and evidence that there is wide recognition with the BROADCASTAMERICA.COM mark among Internet users as to the source of broadcast services).
Complainant also alleges that the disputed domain names that Respondent registered, <diggaeurope.com> and <diggereurope.com>, are confusingly similar to the DIGGA mark in which Complainant has rights. The Panel finds that the <diggaeurope.com> domain name incorporates Complainant’s DIGGA mark in its entirety, with the addition of the geographic term “europe,” with the generic top-level domain (“gTLD”) “.com.” Furthermore, the Panel finds that the <diggereurope.com> domain name consists of a term that is phonetically identical to Complainant’s mark, with the addition of the geographic term “europe,” and the gTLD “.com.” In VeriSign, Inc. v. Tandon, D2000-1216 (WIPO Nov. 16, 2000), the panel found confusing similarity between complainant’s VERISIGN mark and the <verisignindia.com> and <verisignindia.net> domain names because the respondent added the word “India” to the complainant’s mark. Moreover, in Hewlett-Packard Co. v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000), the panel found that a domain name which is phonetically identical to the complainant’s mark satisfies ¶ 4(a)(i) of the Policy. Further, the panel in Valeant Pharms. Int’l v. Carpela, D2005-0786 (WIPO Sept. 2, 2005), concluded that the addition of the gTLD “.com” to the complainant’s CESAMET mark did not sufficiently distinguish the <cesamet.com> domain name from the mark.
Therefore, the Panel in the present
case finds that the disputed domain names that Respondent registered are
confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Net2phone Inc. v. Netcall SAGL,
D2000-0666 (WIPO Sept. 26, 2000) (finding that the respondent’s domain name
<net2phone-europe.com> is confusingly similar to the complainant’s mark
because “the combination of a geographic
term with the mark does not prevent a domain name from being found confusingly
similar”); see also YAHOO! Inc. v. Murray, D2000-1013
(WIPO Nov. 17, 2000) (finding that the domain name <yawho.com> is
confusingly similar to the complainant’s YAHOO mark).
Respondent contended that it was
the registered holder of the <diggaeurope.com> and <diggereurope.com>
domain
names, and that it has held them
since 2000 and 2002, respectively.
Consequently, Respondent contends that it registered the disputed domain
names prior to Complainant’s registrations of the DIGGA mark in Australia or within
the European Union. Because the Panel
has found that Complainant sufficiently demonstrated common law rights in the
DIGGA mark pursuant to Policy ¶ 4(a)(i), Respondent’s argument fails.
The
Panel finds that Complainant satisfied ICANN
Policy ¶ 4(a)(i).
Complainant established with extrinsic evidence in this proceeding that it has legal and common law rights to the DIGGA mark that is contained within the disputed domain names that Respondent registered. Complainant is required to demonstrate this prima facie showing that Complainant has rights and that Respondent lacks such rights to or legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). Once Complainant demonstrates a prima facie case, the burden then shifts to Respondent to prove that it has rights or legitimate interests in the disputed domain names. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant contends
that if Respondent were commonly known by the disputed domain names it was while
acting as a distributor of Complainant’s products in Europe under the
distribution agreement between the two parties. However, Complainant alleges that the distribution agreement
between Complainant and Respondent was terminated, and Respondent now conducts
business as “Auger Torque Europe Ltd.”
Consequently, the Panel finds that Respondent is no longer a licensee of Complainant, has no contractual obligations with Complainant, and is not affiliated with Complainant. The evidence on record suggests that Respondent is no longer known by either of the disputed domain names. Thus, the Panel finds that even if Respondent were commonly known by the disputed domain names as Complainant’s agent, no evidence suggests that Respondent was commonly known by Complainant’s mark prior to the agency relationship with Complainant. Respondent thus obtained no rights to or legitimate interests in connection with the disputed domain names during its use as Complainant’s agent, pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. -Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) “to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail”).
Furthermore, the Panel finds that Respondent was not using the <diggaeurope.com> and <diggereurope.com> domain names in connection with either a bona fide offering of goods or services in accord with Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii), because the disputed domain names resolve to commercial websites offering the sale of products that directly compete with those of Complainant. In light of Complainant’s provision of auger, augerdrives, trenchers, and other related products under the DIGGA mark in Complainant’s business, the Panel determines that Respondent utilized the <diggaeurope.com> and <diggereurope.com> domain names for commercial purposes in order to attract Internet users to its competing website and has not used the disputed domain name in a manner consistent with either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Hale Prods., Inc. v. Hart Int’l Inc., FA 198031 (Nat. Arb. Forum Dec. 2, 2003) (finding that the respondent lacked rights and legitimate interests in the <jawsoflife.com> domain name where it was being used to divert Internet users to the website for Phoenix Rescue Tools, one of the complainant’s direct competitors).
The record reflects, as well, that Respondent registered the disputed domain names while under contract with Complainant and in connection with distribution on behalf of Complainant. Although Respondent argues that the central issue of the complaint is not whether the <diggaeurope.com> and <diggereurope.com> domain names were registered in contravention of Complainant’s rights in the DIGGA mark, but whether Respondent or Complainant have rights to the domain name registration for the <diggaeurope.com> and <diggereurope.com> domain names, the Panel disagrees. Respondent acted as an agent for Complainant when it registered the disputed domain names. Respondent's agency relationship with Complainant is sufficient evidence to support findings that Respondent was aware of Complainant's rights in the domain names and the DIGGA mark. Thus, Respondent knew when it registered the disputed confusingly similar domain names that it was acting on behalf of Complainant and that Respondent would not hold any rights or legitimate interests in the domain names.
Therefore, the Panel
finds that Respondent's former agency relationship with Complainant is not
sufficient to establish rights or legitimate interests in the domain name
pursuant to Policy ¶¶ 4(c)(i) and (iii).
See Vinidex Pty. Ltd. v. Auinger, AF-0402 (eResolution
Oct. 18, 2000) (finding that as a former employee, Respondent knew or should
have known Complainant's mark was in use as an integral part of the corporate
name and as a trademark and that Respondent understood the legitimate interests
and rights of Complainant and, by contrast, its own lack of interest or right. This is sufficient for Complainant to
establish that Respondent had no rights or interest in the domain name); see
also Savino Del Bene Inc. v. Gennari,
D2000-1133 (WIPO Dec. 12, 2001) (finding that a former employee does not
acquire rights or legitimate interests in a domain name identical to the former
employer's trademark).
Respondent argues that the fact that its registration of the disputed domain names predates Complainant’s trademark for the DIGGA mark controls. This argument fails because the Panel has found that Complainant established common law rights in the DIGGA mark prior to its relationship with Respondent. Respondent also contends that it has rights and legitimate interests in respect of the disputed domain names because Respondent has consistently enjoyed the goodwill associated with the words “Digga Europe” in the distribution of augers and related products. Because the Panel has found that Respondent failed to establish rights to or legitimate interests in the <diggaeurope.com> and <diggereurope.com> domain names, this argument fails as well. Additionally, Respondent contends that its history and contractual relations with Complainant demonstrate Respondent’s goodwill in the DIGGA mark. Because the Panel has found that Respondent failed to demonstrate rights to or legitimate interests with respect to the disputed domain names, this argument fails.
The
Panel finds that Complainant satisfied ICANN Policy ¶ 4(a)(ii).
Moreover, Respondent intentionally registered the disputed domain names that contain in their entirety Complainant’s mark but naming itself as registrant. Even if Complainant hired Respondent to create or register a domain name, Respondent, as the agent of Complainant, should have registered the domain name under Complainant’s name as registrant. Respondent’s knowing registration of a domain name that is confusingly similar to Complainant’s mark and Respondent’s claim of ownership in that name constitutes bad faith registration pursuant to Policy ¶ 4(a)(iii). See Canada, Inc. v. Ursino, AF-0211 (e-Resolution July 3, 2000) (finding that because Respondent was hired by Complainant to help design and register Complainant’s websites, Respondent had intimate knowledge of Complainant’s business and use of its TEENFLO mark. Therefore, Respondent’s registration of <teenflo.com> was in bad faith.).
Furthermore, this is not a case of random registration; Respondent knew when it registered domain names containing Complainant’s DIGGA mark that it was acting as Complainant’s distributor. Complainant’s permission to distribute products did not confer in Respondent rights to or interests in Complainant’s mark or the resulting domain names. Respondent acted in bad faith when registering the domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”); see also Kraft Foods (Norway) v. Wide, D2000-0911 (WIPO Sept. 23, 2000) (finding that the fact “that the Respondent chose to register a well known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue”); see also Albrecht v. Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (“The Respondent intentionally registered a domain name which uses the Complainant’s name. There is no reasonable possibility that the name karlalbrecht.com was selected at random. There may be circumstances where such a registration could be done in good faith, but absent such evidence, the Panel can only conclude that the registration was done in bad faith.”).
Furthermore, Complainant notes that
although Respondent previously held distribution rights to Complainant’s DIGGA
products, Complainant has since terminated all such distribution rights. Respondent’s prior relationship with
Complainant supports findings by the Panel that Respondent knew of
Complainant’s rights in the DIGGA mark, and that any use by Respondent of the
disputed domain names to offer goods that compete with goods of the Complainant
supports findings of bad faith pursuant to Policy ¶ 4(a)(iii). See Int’l Soc’y for Cellular
Therapy v. Hache, FA 671078 (Nat. Arb. Forum June 13, 2006) (finding that
the respondent acted in bad faith in registering the disputed domain name in
light of the respondent’s creation and management of the original domain name
website on behalf of the complainant); see also Associated Materials, Inc. v. Perma Well, Inc., FA 154121 (Nat. Arb
Forum May 23, 2003) (finding that the respondent’s actual knowledge of the
complainant’s rights in the ULTRAGUARD mark, inferred from the fact that the
respondent was a distributor of the complainant, evidenced that the disputed
domain name was registered in bad faith).
Respondent argued that, pursuant to Policy ¶ 4(a)(iii), it registered the <diggaeurope.com> and <diggereurope.com> domain names, pursuant to its distribution business and with the full knowledge and approval of Complainant. This argument does not conflict with the Panel’s holding that Respondent acted as Complainant’s agent and thus, acted in bad faith when it registered the domain names containing Complainant’s mark in Respondent’s name. It is irrelevant to this Complaint that the disputed domain names actually were registered by a consultant, allegedly on behalf of Respondent, that now works for Complainant. Moreover, the Panel does not address Respondent’s argument that the registration of the disputed domain names occurred when contractual arrangements between Complainant and Respondent were in place and that the contract did not restrict the registration of the domain names. The issue of contract rights and interpretation are not within the scope of the UDRP.
The Panel finds that Complainant
satisfied ICANN Policy ¶ 4(a)(iii).
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 <diggaeurope.com>
and <diggereurope.com> domain name be TRANSFERRED from
Respondent to Complainant.
Hon. Carolyn Marks Johnson, (Ret.)
Hon. Richard B. Wickersham, (Ret.)
Debrett Gordon Lyons, Esq.
Dated: September 27, 2006.
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[1] Henry Campbell Black, Black’s Law Dictionary, 6th ed. West Publishing Co.: St. Paul, MN, 1990, 875.