ADR Center for .eu attached to the Arbitration Court attached to the Economic Chamber of the Czech Republic and Agricultural Chamber of the Czech Republic (Czech Arbitration Court)
Panel Decision
§ B12 of the .eu Dispute Resolution Rules (ADR Rules)
Case No.: 06116 Time of Filing: 2011-08-22 11:21:39 Administrative Contact: Tereza Bartošková Complainant Name: SGG LISCO LLC Complainant's Authorized Representative Name: CABINET BEAU DE LOMENIE, GREGORY INGRAND Respondent Name: JAMES SPALDING Respondent's Authorized Representative Name: Domain Name(s): SPALDING Other Legal Proceedings English summary of the decision: English summary of this Decision is hereby attached as Annex 1 Factual Background
It exploits in particular the trademark SPALDING.
According to the annexes submitted with the Complaint, Complainant is the owner of various trademark’s registrations, among which the following:
- CTM Trademark SPALDING, n°003924909 registered on November 27, 2007 and covering goods in class 28;
- CTM Trademark SPALDING (figurative), n°009656455 registered on December 23, 2010 and covering goods in classes 9, 14, 18 and 28.
The disputed domain name <spalding.eu> was registered on August 8, 2007. According to Respondent, the domain name was purchased via the internet platform sedo.com at the beginning of 2011.
The domain name at issue used to redirect internet users to the Sedo homepage and it now directs to a page under construction.Parties’ Contentions
In addition, Complainant argues in particular that it has never granted, assigned, licensed, sold or transferred any right related to the trademark SPALDING to Respondent. The parties are not linked and Respondent has not used the disputed domain name in connection to the offering of goods and services since the domain name redirects internet’s users towards the Sedo’s website, a market place for domain names. There is therefore no legitimate interest or right justifying the registration of the domain name.
Furthermore, when it comes to bad faith registration or use of the domain name, Complainant considers that directing a domain name towards a market place website for domain names is not good faith registration or use of the domain name.
Complainant concludes that these circumstances seem to indicate that the domain name was registered or acquired for the purpose of selling it to Complainant at a price higher than out of pocket costs.
He purchased the domain name at the Sedo’s platform at the beginning of 2011 and plans to use it in connection to his family business Spalding Estate Limited.
The domain name is not for sale and he has changed the website towards which it directs. It now directs to a website under construction.Discussion and Findings
(1) in ADR Proceedings where the Respondent is the holder of a .eu domain name registration in respect of which the Complaint was initiated that:
(i) The domain name is identical or confusingly similar to a name in respect of which a right is recognized or established by the national law of a Member State and/or Community law and; either
(ii) The domain name has been registered by the Respondent without rights or legitimate interest in the name; or
(iii) The domain name has been registered or is being used in bad faith.
Each aspect of this test will now be examined.
1) Identical or Confusingly Similar
Complainant has demonstrated that it owns the trademark SPALDING.
The Panel has now to examine whether there is a confusing similarity between the trademark and the domain name in dispute.
The domain name fully incorporates Complainant’s prior trademark SPALDING.
It has often been held that the mere incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to a Complainant’s registered mark.
As to the suffix “.eu”, it is widely accepted that this element is not relevant for the purposes of the test for identity or confusing similarity.
As a result, the Panel finds that the domain name is identical to the trademark SPALDING held by Complainant. Accordingly, the Panel finds that the condition set forth under Paragraph B11(d)(1)(i) of the ADR Rules is fulfilled.
2) Rights or Legitimate Interests
Under Paragraph B11(e) of the ADR Rules, "any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate the Respondent’s rights or legitimate interests to the domain name for purposes of Paragraph B11(d)(1)(ii): (1) prior to any notice of the dispute, the Respondent has used the domain name or a name corresponding to the domain name in connection with the offering of goods or services or has made demonstrable preparation to do so; (2) the Respondent, being an undertaking, organization or natural person, has been commonly known by the domain name, even in the absence of a right recognized or established by national and/or Community law; (3) the Respondent is making a legitimate and non-commercial or fair use of the domain name, without intent to mislead consumers or harm the reputation of a name in which a right is recognized or established by national law and/or Community law."
Under the ADR Rules, the burden of proof for the lack of rights and legitimate interests of Respondent lies with Complainant. However, the existence of negative facts is difficult to prove, and the relevant information for Respondent is mostly in its sole possession. Therefore, the Panel holds that it is sufficient for Complainant to make a prima facie demonstration that Respondent lacks rights or legitimate interests in the domain name. The burden of proof then shifts to Respondent to substantiate its rights or legitimate interests in the domain name.
As stated by Complainant, the Panel believes that there is no relationship between Respondent and Complainant and that Respondent is not a licensee of Complainant nor has Respondent otherwise obtained an authorization to use Complainant’s trademark in a domain name. However, these elements, as important as they are, are not always sufficient to conclude that there is no right or legitimate interest in the disputed domain name.
In the present case, Complainant does not take into account the fact that "Spalding" is Respondent's family name, as it has been reaffirmed by Respondent in his reply.
Respondent does need to be authorized to register or buy a domain name reproducing his family name. Unless such registration or purchase is part of a scheme to obtain commercial gains from Complainant, which the latter has not demonstrated, the registration of a domain name reproducing the registrant's family name is legitimate. Deciding the contrary would diminish the importance of family names. The fact that the domain name used to direct towards the Sedo's homepage does not prove the lack of legitimate interest. In addition, domain name registrants don't have to use their domain names for offering goods and services.
The Panel further notes that, according to the few elements and arguments provided by Complainant, it does not seem that Respondent has ever tried to sell his domain name to Complainant at an out of pocket price. It is unlikely to have occurred since the Response specifies that Respondent has no intention to sell the domain name.
As a conclusion, the Panel deems that Complainant has not managed to demonstrate that Respondent does not have legitimate interest in the domain name. Accordingly, the Panel finds that the condition set forth under Paragraph B11(e) of the ADR Rules is not fulfilled.
3) Registered or Used in Bad Faith
Under Paragraph B11(f) of the ADR Rules, "the following circumstances, in particular but without limitation, if found by the Panel to be present, may be evidence of the registration or use of a domain name in bad faith:
(1) circumstances indicating that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name to the holder of a name, in respect of which a right is recognized or established by national and/or Community law, or to a public body; or
(2) the domain name has been registered in order to prevent the holder of such a name in respect of which a right is recognized or established by national and/or Community law, or a public body, from reflecting this name in a corresponding domain name, provided that:
(i) the Respondent has engaged in a pattern of such conduct; or
(ii) the domain name has not been used in a relevant way for at least two years from the date of registration; or
(iii) there are circumstances where, at the time the ADR Proceeding was initiated, the Respondent has declared its intention to use the domain name, in respect of which a right is recognized or established by national and/or Community law or which corresponds to the name of a public body, in a relevant way but failed to do so within six months of the day on which the ADR Proceeding was initiated;
(3) the domain name was registered primarily for the purpose of disrupting the professional activities of a competitor; or
(4) the domain name was intentionally used to attract Internet users, for commercial gain to the Respondent’s website or other on-line location, by creating a likelihood of confusion with a name on which a right is recognized or established, by national and/or Community law, or it is a name of a public body, such likelihood arising as to the source, sponsorship, affiliation or endorsement of the website or location or of a product or service on the website or location of the Respondent; or
(5) the domain name is a personal name for which no demonstrable link exists between the Respondent and the domain name registered."
Complainant argues that the disputed domain name is not associated with a good faith offering of goods and services which means that it is not registered or used in good faith.
Regarding bad faith registration, Complainant has not managed to prove that Respondent had not only his family name but also the trademark SPALDING in mind when the domain name was registered or purchased. Therefore, it does not seem that the domain name was registered in bad faith.
When it comes to bad faith use, Complainant has not explained how the redirection towards the Sedo’s homepage could be considered as bad faith offering of goods and services. The disputed domain name does not direct towards one of Complainant's competitor and the domain name itself is not even offered for sale on Sedo’s website. In addition, the Panel has not found any evidence showing that Respondent has ever tried to sell his domain name to Complainant. Finally, any individual or organisation based in the European Union can register a .eu domain name and the registrant does not have to offer goods or services for sale via the domain name. Therefore, it does not seem that the domain name is used in bad faith.
As a conclusion, the Panel deems that Complainant has not managed to demonstrate that Respondent registered or has used the domain name in bad faith. Accordingly, the Panel finds that the condition set forth under Paragraph B11(f) of the ADR Rules is not fulfilled.Decision Panelists
- Nathalie Dreyfus
Date: 2011-09-30 Annex 1
Complainant is a US company operating worldwide in the field of sporting goods under various names. It exploits in particular the trademark SPALDING.
First, the domain name fully incorporates Complainant’s prior trademark SPALDING. The mere incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to a Complainant’s registered mark. As to the suffix “.eu”, it is widely accepted that this element is not relevant for the purposes of the test for identity or confusing similarity. Therefore, the domain name reproduces the trademark SPALDING.
Second, "Spalding" is Respondent's family name and Respondent does need to be authorized to register or buy a domain name reproducing his family name. Unless such registration or purchase is a part of a scheme to obtain commercial gains from Complainant, which the latter has not demonstrated, the registration of a domain name reproducing the registrant's family name is legitimate. The registration of the domain name is therefore legitimate.
Third, regarding bad faith registration, Complainant has not managed to prove that Respondent had not only his family name but also the trademark SPALDING in mind when the domain name was registered or purchased. When it comes to bad faith use, Complainant has not explained how the redirection towards Sedo’s homepage could be considered as bad faith offering of goods and services.
For all the foregoing reasons, in accordance with Paragraphs B12 (b) and (c) of the Rules, the Complaint is Denied.