Distributors; this is a good case to use where the Respondent has been a distributor of the Complainant but the distribution agreement had come to an end. This meant that there could no longer be a right or legitimate interest by the Respondent in the domain name and it was clearly bad faith for the Respondent to keep diverting internet hits to a competitor of the Complainant.
TVLogic Co., Ltd. v Desmet & Associates, Inc., KR-1300080, May 31 2013
Domain name at issue: <tvlogic.net>
Facts
The Complainant was engaged in the manufacture and sale of broadcasting HD display and other broadcasting equipment under the trademark TVLogic.
The Respondent registered the disputed name on September 1 2006, while it was a distributor for the Complainant. However, although the distributorship had been terminated, the Respondent had been using the domain name in dispute to redirect the Complainant’s customers to a competitor’s brand.
Complainant won. Disputed domain name was transferred from Respondent to Complainant.
Decision Summary:
A) Similarity between the Trademark and the Domain name Disputed
The Panel found that the disputed domain was confusingly similar to the Complainant’s trademark, although it would not have been surprising if the finding had been that the domain name was identical to the trademark.
B) Rights or Legitimate Interest of the Respondent
Based on the absence of a response from the Respondent, a lack of bona fide offering of goods or services in connection with the domain name and the fact that the distributor agreement had come to an end, the Panel found that the Respondent had no rights or legitimate interests in the disputed domain name.
C) Registered and Used in Bad Faith
The fact that visitors to the disputed domain name were directed to a page that was no longer active indicates an intention on behalf of the Respondent to disrupt the business of the Complainant. The distributorship had come to an end, but the Respondent was confusing the visiting customers into thinking that the Complainant’s products were no longer commercially dealt with and was selling goods of a competitor of the Complainant.
Why it the decision interesting?
This decision is interesting because it establishes bad faith where a distributor agreement has been terminated. But note that it concludes that there was both bad faith registration and bad faith use.
The decision does not mention whether the Respondent, as a distributor for the Complainant, had the right to register the domain name using the Complainant’s trademark. If it did, the question might arise as to how there was registration in bad faith as well as use in bad faith. Subsequent bad faith use would normally not allow for the transfer of the disputed domain name to the Complainant due to the inability of the facts to satisfy the language of Paragraph 4(a) of the Policy – “registered and used in bad faith”. See in contrast to this decision, Miele, Inc. v Absolute Air Cleaners and Purifiers,[1] where the Respondent was also a former distributor of the Complainant; the Panel could not decide that the Respondent’s <miele.net> domain was registered in bad faith even though bad faith use was evident. The transfer of the domain name was therefore refused. In the present case, it might have been implied by the Panel that as the Respondent had acted in bad faith after the termination of the distributor agreement, the registration must have been effected by a similarly bad motive.
[1] WIPO Case No. D2000-0756 (Sept. 20, 2000)