1. The Parties Complainant is HID Global Corporation of Irvine, California, United States of America (“United States” or “U.S.”), represented by Cohausz & Florack, Germany.
Respondent is Munir Shaikh, Clary Business Machines, Co. / Sufian Munir, Clary Business Machines, Co. of San Diego, California, United States, represented internally.
2. The Domain Name and Registrar The disputed domain name (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2015. On September 23, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 23, 2015, the Registrar transmitted by email to the Center its verification response confirming that Respondent Munir Shaikh, Clary Business Machines, Co. is listed as the registrant and providing the contact details. On September 23, 2015, the Respondent transmitted by email an informal response to the Complaint.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 5, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 25, 2015. The Response was filed with the Center on October 6, 2015. On October 6, 2015, the Center acknowledged receipt of the Response and requested the Respondent to confirm its Response was final and complete. Absent any further confirmation, the Center confirmed it would proceed to appoint the Panel on October 28, 2015.
The Center appointed Mark Partridge as the sole panelist in this matter on November 12, 2015. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On December 7, 2015, the Panel issued a Procedural Order in accordance with Paragraphs 12 and 17 of the Rules requesting additional submissions from the Parties. The Parties provided timely responses to the Procedural Order.
4. Factual Background Complainant and its parent company sell computer printers under the FARGO brand. Complainant is the owner of U.S. Reg. No. 1952850 for FARGO in connection with “color printers; identification card printers,” filed on December 16, 1994, and registered on January 30, 1996. Complainant and its parent company also own trademark registrations for FARGO in many countries.
Respondent registered the Domain Name in 2008. It uses the Domain Name for a website that promotes the sale of Complainant’s printers.
5. Parties’ Contentions A. Complainant Complainant contends that Respondent is not a licensee, retailer, or in any other way authorized by Complainant to use the FARGO mark. It claims the reselling of Complainant’s products is strictly regulated by agreement. Complainant contends that Respondent sells goods covered by Complainant’s Mexican trademark registration. Complainant contends that these acts may lead to the wrongful conclusion that Respondent is a retailer or licensee duly authorized by Complainant, whereas in fact Respondent’s use of the Domain Name is without consent of Complainant. Complainant contends that Respondent is not using the Domain Name in connection with a good faith offering of goods or services. It asserts that Respondent’s bad faith is shown by the fact that Respondent wants to make a link to the mark of Complainant.
B. Respondent Respondent argues that the Complaint is a mistake. Respondent claims it has been an authorized reseller of Complainant’s printers since 2008. Respondent contends that the Domain Name has been used exclusively to sell Complainant’s printers in the United States as a loyal partner of Complainant. Respondent says it is not selling anything in Mexico, has sold over $1 million worth of Complainant’s printers which it buys from Complainant’s designated distributor, and has made significant investments in SEO marketing.
Respondent says it is willing to sell the Domain Name to Complainant if it is compensated for loss of business and the SEO efforts it has made over 6 years of use of the Domain Name.
C. Supplemental Submissions In its Supplemental Submission, Complainant reasserts that Respondent has no express permission to use Complainant’s trademark as the basis for a domain name and that it fails to disclose the proper relationship between the Parties as required by prior UDRP decisions. Complainant also asserts that Respondent’s offer to sell the Domain Name to Complainant is evidence of bad faith.
Respondent claims that it adequately discloses its identity on the website as Clary Business Machines, that Complainant is the one acting in bad faith by waiting many years to bring this claim, and that its offer to sell is merely a good faith attempt to settle the dispute.
It is undisputed that the Domain Name is confusingly similar to a mark in which Complainant has rights. In fact, it is admitted that Respondent uses the Domain Name as a reference to the fact that it sells Complainant’s products.
B. Rights or Legitimate Interests
Complainant contends that Respondent is not an authorized retailer or licensee of Complainant. Complainant relies on its trademark rights and screen shots of the Respondent’s website to support its claim. Respondent contends that it has been authorized to sell Complainant’s products. The Panel notes that Complainant has not denied Respondent’s factual claim that it is a legitimate reseller of FARGO printers. Rather, Complainant argues that Respondent is not authorized to use Complainant’s marks as domain names and that Respondent does not properly disclosure its relationship to Complainant.
Respondent contends that it uses the Domain Name exclusively for the sale of FARGO printers. Complainant has not disputed this fact. The screen shots submitted by Complainant support Respondent’s claim that it only uses the Domain Name to sell Complainant’s products.
Respondent also contends that it has sold FARGO printers purchased from Complainant’s designated distributor WYNIT. It has provided records purporting to show that it has purchased FARGO printers for resale from WYNIT every year since 2008.
If it is exclusively using the Domain Name to sell Complainant’s goods, Respondent may have a legitimate right and legitimate interest in using the Domain Name. See for example Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001 0903. One of the requirements of such use, however, is proper disclosure of the relationship of the reseller to the trademark owner. This issue in the context of this dispute is explored more fully below, however, for the purposes of this element, the Panel concludes that the Respondent does not meet the requirements of the Oki Data test.
The Panel furthermore finds that none of the other circumstances described in paragraph 4(c) of the Policy apply and that the Complainant has made out its case under this element.
C. Registered and Used in Bad Faith
Complainant’s initial allegation of bad faith states in full:
“Respondent has registered and has been using the domain name in bad faith, evidenced by the fact that the website corresponding to the domain name is used to offer goods for sale to Mexican customers preferably which are protected by the Mexican trademark FARGO of the Complainant. This is an indication for bad faith use of the domain name –Respondent wants to make a link to the mark of the Complainant.”
Respondent disputes that it is selling goods in Mexico and there is no evidence in the record to support Complainant’s contrary claim. In any event, it is not explained or apparent why sales of Complainant’s products in Mexico would be bad faith. Perhaps the goods are intended for U.S. sale only, but that is only speculation, is not claimed in the submissions, and therefore is not a basis for finding bad faith.
Respondent does not deny that it uses Complainant’s mark in a domain name for the sale of Complainant’s goods exclusively.
Complainant alleges that authorized resale of its goods requires an agreement. However, it provides no evidence of the terms of such agreement, whether or not Respondent is subject to such an agreement, whether the agreement specifically prohibits the use of the FARGO mark as the basis for a domain name, etc. It also provides no support for its claim that resale of goods requires an agreement or consent absent some contractual obligation. Accordingly, this allegation fails to prove that Respondent has acted in bad faith.
There is no allegation by Complainant that Respondent is selling counterfeit goods or that its website is a sham. As a result, the Panel accepts the use of the Domain Name for what it appears to be and what Respondent claims it to be: registration and use of the Domain Name exclusively for the purpose of selling Complainant’s products. Complainant has not showed or argued otherwise.
In its Supplemental Submission, Complainant asserts that Respondent’s settlement offer shows bad faith because Respondent seeks compensation. Respondent claims the request for compensation is fair because of its legitimate use of the Domain Name, substantial investment in the Domain Name, and its long use of the Domain Name without objection. The Panel agrees under these circumstances that the settlement offer does not establish bad faith.
The final peg on which to hang bad faith, according to Complainant’s Supplemental Submission is Respondent’s failure to disclose its relationship with Complainant. The only relationship with Complainant presented in the record is the fact that Respondent resells Complainant’s goods, and has done so for many years using the Domain Name. Respondent claims that the relationship is adequately disclosed, that it properly states it is selling Fargo Cardprinters and it clearly states its own identity as Clary Business Machines.
The issue is a close one, but the Panel finds that Respondent’s current use fails to properly disclose its relationship to Complainant. The Domain Name directs users to a webpage that prominently displays a logo for “Fargo Cardprinters”. The content of the page relates solely to “Fargo Cardprinters”. The text on the webpage states “We at Fargo printers are major retailers of Fargo ID card printers.” The copyright notice at the bottom of the page is in the name of Fargo Card Printers. There is no reference whatsoever on this page to Clary Business Machines. The only way to find a reference to Clary Business Machines is to follow some (but not all) of the links at the bottom of the webpage. Even those resulting pages remain framed under the Fargo Cardprinters logo.
Based on the record presented, the only basis for finding bad faith use is the fact that Respondent does not adequately disclose its relationship to Complainant and instead uses the Domain Name in a manner that may create confusion about that relationship. An Internet user visiting the site at the Domain Name could reasonably believe that it was dealing directly with the manufacturer of the product and not with a separate unauthorized reseller.
As noted above, one of the leading decisions regarding resellers is the Oki Data case. The reasoning of that case indicates that a reseller may have a right or legitimate interest in a domain name incorporating a mark if it meets several factors: (1) the reseller must sell the branded goods of the manufacturer; (2) the only goods sold on the site must be the branded goods; (3) the reseller must adequately disclose its relationship to the trademark owner; and (4) the reseller must not attempt to corner the market in the in all domain names matching the brand. The guidance of the well-reasoned Oki Data case has been widely followed. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.3.
In this case, the only factor that is not satisfied is the third factor. The cases relied upon by Complainant that establish its right to relief under these circumstances are Motorola, Inc. v. NewGate Internet, Inc., WIPO Case No. D2000-0079; DaimlerChrysler A.G. v. Donald Drummonds, WIPO Case No. D2001-0160; Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946; Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent, WIPO Case No. D2004-0481. None of these cases, however, grants relief based solely on the third factor. All involve additional evidence of bad faith or turn on other issues. Nevertheless, it appears to the Panel that the third factor of the Oki Data analysis weighs in favor of Complainant and leads to the conclusion that Respondent is using the Domain Name in bad faith, one prong of the UDRP bad faith analysis.
The Panel notes that the Domain Name was registered in 2008. Complainant took no action until 2015 and provides no explanation for this delay. Respondent contends that Complainant’s delay is bad faith and should prevent relief. The consensus view in UDRP cases is that delay is not a defense if the other elements of the claim are satisfied. See WIPO Overview 2.0, paragraph 4.10. The Panel sees no reason to depart from that view here.
The final issue is whether the Panel can infer bad faith registration in 2008 from the bad faith use shown currently. Neither party makes a distinction between current use and past use or registration. In the final analysis, Complainant contends that Respondent registered and used the Domain Name in bad faith because it did not adequately disclose the proper relationship between itself as a reseller and Complainant as the trademark owner. In contrast, Respondent claims that it adequately made that disclosure by linking to other pages that identify Respondent by name. On balance, the Panel finds that the evidence on this point favors Complainant, as explained above, and therefore concludes that Respondent is not making legitimate use of the Domain Name and has registered and used the Domain Name in bad faith.
7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to Complainant.