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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Freni Brembo S.p.A. v. Webs We Weave

Case No. D2000-1717

 

1. The Parties

The Complainant is Freni Brembo S.p.A. ("Brembo"), a corporation organized under the laws of Italy, with its principal place of business at 25, Via Brembo, 24035 Curno (BG), Italy.

The Respondent is Webs We Weave, with its principal place of business at 7 North Drive, Freedom, CA 95019, USA.

 

2. The Domain name and Registrar

The domain name at issue is "brembobrakes.com" (the "domain name"). The Registrar is Network Solutions, Inc., (NSI) 505 Huntmar Park Drive, Herndon, VA 20170, USA.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") in hardcopy on December 8, 2000. On December 26, 2000, the Center acknowledged receipt of the Complaint and asked the Complainant to send an electronic version of the Complaint, which was received by the Center on January 2, 2001.

On December 26, 2000, the Center sent to the Registrar a request for verification of registration data. On December 27, 2000, the Registrar confirmed: 1) that Webs We Weave is the current registrant of "brembobrakes.com"; 2) that the Registrant’s address is 7 North Drive, Freedom, CA 95019, USA; 3) that the Administrative and Billing Contact is Andrew Duafala, Webs We Weave, 7 North Drive, Freedom, CA 95019, USA, e-mail: andrew@duafala.com; 4) that the Technical Contact is Todd Wyatt, Carmel Internet, 200 Clocktower Place Suite A205, Carmel, CA 93923, USA, e-mail: wyatt@carmelnet.com; 5) that the NSI Service Agreement Version 4.0 is in effect; 6) that the domain name was registered on September 29, 1999, and 7) that the domain name registration is in active status.

On January 22, 2001, the Center verified that the Complainant had complied with all formal requirements, including payment of the fee.

Also on January 22, 2000, the Center forwarded the Complaint to the Respondent by post/courier, fax and e-mail, with copies to ICANN and to the Registrar. The Center formally notified the Respondent that the Complaint satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"); that payment of the required sum had been made by the Complainant; and that an administrative proceeding had been commenced against the Respondent. A deadline of February 10, 2001, was fixed for the Response.

The Response was filed timely with the Center by e-mail on February 1, 2001, and by hardcopy on February 7, 2001. Between February 1 and February 15, 2001, the Center and the Respondent exchanged e-mail communication regarding formatting problems of the Response. The Center asked the Respondent to send the Response in Word format. On February 15, 2001, the Center acknowledged receipt of the Response by date of February 1, 2001.

On March 6, 2001, the Center notified the Parties that an Administrative Panel composed of a single member, Dr. Kamen Troller, had been appointed and that the Panelist had duly submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center. Absent exceptional circumstances, the Panelist was required to forward its decision to the Center in accordance with Paragraph 15 of the Rules by March 20, 2001.

The Panelist examined all notifications of the Center, the Complaint and the Response, and finds that they comply with the formal requirements of the Rules and Supplemental Rules, and that the Administrative Panel was properly constituted.

 

4. Factual Background

A. The Complainant

The Complainant is a large car and motorcycle brake systems manufacturer. The Complainant owns USA trademark registration No. 1948567 "brembo" (the "Trademark") in the international class 12 (vehicular brakes and parts thereof) (Complainant’s Exhibit H). The Complainant has registered the Trademark in other countries throughout the world (Exhibit I).

The Complainant asserts that it has been producing, selling and marketing brake systems under the Trademark in the United States since 1986, and in various other countries for over thirty years. The USA trademark registration certificate confirms that the Trademark was used for the first time on January 2, 1986. The Complainant has submitted a declaration of the President of Ibraco, Inc., d/b/a Brembo North America, Complainant’s North American affiliate, which states that the Trademark has been used in Europe since the 1960s, and in the United States since 1986. The Complainant operates its principal website at "www.brembo.it". Brembo North America operates a website at "www.brembo.com"

B. The Respondent

The Respondent is Webs We Weave, with its principal place of business at 7 North Drive, Freedom, CA 95019, USA. The WHOIS information for the domain name lists Webs We Weave as the Registrant. The legal status of Webs We Weave is unknown.

Andrew Duafala is listed as the Administrative and Billing Contact of "brembobrakes.com". He is also one of two signatories to the Response, and he is identified on the "www.brembobrakes.com" website as the owner of certain images and text appearing on the website. The Response is also signed by John McCoy of Britalia Motors, who is identified in the Response as the Authorized Representative for Respondent. The website, "www.brembobrakes.com", is in fact the website for Britalia Motors, a licensed distributor of Brembo brakes, among other products. These facts, and certain statements made in the Response, have led the Panel to conclude that the Respondent, Webs We Weave, is acting on behalf of Britalia Motors, probably with respect to the design and management of the aforementioned website.

The Respondent admits that it has not registered the "brembo" or "brembobrakes.com" as a trademark in any jurisdiction.

C. Facts Underlying the Dispute

The Complainant contends that it learned that a Brembo Distributor (Britalia Imports) was using "www.brembobrakes.com" as a domain name for its website during a search for references to Brembo in March 2000. The Complainant asserts that Brembo North America contacted Britalia in April 2000 and requested that the latter cease and desist from its unauthorized use of the Brembo mark. Two cease and desist letters, dated May 26, 2000, and July 27, 2000, were subsequently sent by the Complainant to the address of Britalia Imports -- the first to Mr. Andrew Duafala and the second to John McCoy. The Complainant asserts that notwithstanding these letters Britalia has continued to infringe the Brembo mark.

The Respondent disputes certain of these facts, stating instead that Britalia Imports informed Brembo North America of its web address. Britalia Imports also states that it offered to sell its website to Brembo North America and develop something new.

 

5. Parties’ Contentions

A. The Complainant

The Complainant contends that with respect to the disputed domain name each of the three requirements specified in paragraph 4(a) of the Policy are met. More precisely, the Complainant submits that:

(1) The domain name "brembobrakes.com" is identical or confusingly similar to the trademark "brembo" in which the Complainant has rights. The Complainant enlists the following arguments to sustain its allegation: (i) the core word of the domain name is "brembo" and the added word "brakes" does not reduce the likelihood of confusion; (ii) the use of the word "brakes" - the product for which the Complainant and its trademark are best known - reinforces the erroneous impression that the Respondent is affiliated with, sponsored by, or endorsed by the Complainant; (iii) intentional confusion is increased and further evidenced by the use on the Respondent’s website of the domain name as an insignia, and the use of a style and content that are very similar to that of the Complainant’s websitedomain name; and (iv) the reference on Respondent’s website to Valto Motors, a company that is not affiliated with the Complainant, is likely to confuse potential customers by suggesting that Valto Motors and its products are affiliated with or endorsed by Brembo.

(2) The Respondent has no rights or legitimate interests in the domain name, because the Respondent registered its domain name several years after the Complainant’s registration and first use of the Trademark. Moreover, the Complainant submits that by stating on the website that "Brembo® is a registered trademark of Brembo", the Respondent acknowledges that it had knowledge of Complainant’s exclusive rights in the Trademark.

(3) The domain name was registered and is being used in bad faith based on the grounds that: (i) at the time of the registration of the domain name Britalia was, as a distributor of the Complainant, fully aware of the Complainant’s trademark rights; and (ii) Britalia is attempting to attract customers by creating the impression that the Respondent is affiliated with, sponsored by or endorsed by the Complainant by stating that "Brembobrakes.com" is a division of Britalia Imports.

The Complainant requests the Administrative Panel to issue a decision transferring the domain name to the Complainant.

B. The Respondent

The Respondent takes issue with the Complainant’s contentions as follows:

(1) Although the Respondent does little to rebut the contention of confusing similarity between the domain name and mark, it does note that it states clearly on the website that "Brembo is a trademark of Brembo" and that the Respondent is "not connected with Brembo in any way except as a legal reseller of their parts obtained through our original equipment suppliers and other sources." It further states that "a retail customer expects to find consumer goods offered for sale by dealers whose job it is to sell them", and because "the fact that we operate a franchised motorcycle dealership with many products is reason enough to expect to see other motorcycle products, such as those produced by Valter Moto, also offered for sale on a motorcycle dealer or distributor’s website."

(2) The Respondent asserts that it has both rights and legitimate interests in the domain name, because it has used the domain name in connection with a bona fide offering of goods and services. The Respondent states that it has been selling and servicing Brembo brake products since 1973, and that the "development and use of this [domain] name and corresponding website is a legitimate and logical development of our business of selling to and servicing for our existing customers". The Respondent also submits that it has "both rights and legitimate interest in the trade name because we are legally required to service this product on behalf of the manufacturer because we have no choice about its placement on our motorcycles. Regarding aftermarket product sales and servicing, we also have both rights and legitimate interests in the trade name. Brembo North America employee Rafael A. Santiago came into our store and sold us a Brembo distributorship. The approximately $50,000.00 cost was mostly for Brembo brake products of his recommendation, including less desirable product[s] for Japanese models outside our normal sphere of influence". The Respondent also asserts that it has been commonly known by the domain name, and that, "As a leading supplier of these products to the public for such a long period of time, our name and business has become commonly associated with Brembo brakes by the public". The Respondent remarks that its original website, "www.britalia.com", has a Brembo brakes button that directs customers to its "www.brembobrakes.com" website for these services. Finally, the Respondent asserts that it is making legitimate and fair use of the domain name, without intent to misleadingly divert consumers or to tarnish the Trademark, because it is only using the domain name to sell products that it purchases directly or indirectly from the Complainant, and other similar non-competing products, such as Valter Moto accessories. The Respondent states that by providing quality service, it enhances the Trademark and in no way tarnishes it.

(3) The Respondent denies that its registration or use of the domain name was in bad faith, because the Respondent is an authorized distributor for the Complainant and developed a website in order to increase the Brembo sales as required by the Complainant. The Respondent further asserts that the Complainant was aware of and admired Respondent’s use of the domain name.

The Respondent requests that the Panel issue a decision that the domain name at issue remain with the Respondent.

 

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements are present:

(i) the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

(a) Identical or confusingly similar

The Complainant asserts that the domain name "brembobrakes.com" is identical or confusingly similar to the trademark "brembo".

The only differences between the domain name and the Trademark are: (1) the domain name adds the word "brakes"; and (2) the domain name has ".com" at the end. The term "brakes" is generic and, in addition, refers to Complainant’s principle product. The differences between Complainant’s Trademark and Respondent’s domain name are minor and do nothing to distinguish the mark from the domain name. (Footnote 1)

Thus, the Panel concludes that the domain name is confusingly similar to a trademark in which the Complainant has rights.

(b) Rights or legitimate interests

Paragraph 4(c) of the Policy defines the circumstances required for the Respondent to demonstrate "rights to and a legitimate interest in the domain name". The Respondent is only required to demonstrate any one of the following circumstances (in particular and without limitation) to prove its rights to or legitimate interest in the domain name:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent has presented sufficient evidence to prove that it has used the domain name in connection with the bona fide offering of Complainant’s goods before it received notice of the dispute. It is apparent from the Respondent’s website that Respondent is reselling Complainant’s products under the Trademark in its capacity as a distributor for Complainant. Although it appears that Respondent has also used its web page to sell products other than those of the Complainant’s (Valter Moto components), these instances appear to be minor.

The facts in this case are similar to those of Weber-Stephen Products Co. v. Armitage Hardware where a similar result was reached on the issue of legitimate use. (Footnote 2) Both cases involved an authorized sales representative or distributor who was selling goods under a Complainant’s mark using a domain name that was confusingly similar. Both cases also involve the sale of goods from other companies on the same webpage.

This case concerns a not uncommon type of dispute between a principal and an authorized distributor/reseller. The Panel does not have jurisdiction or the mandate to decide whether or not a distributor/reseller has the right to make use of a tradename or a trademark owned by the principal. Such causes of action require a profound analysis of the factual issues and a complicated weighing of the parties’ various interests which these administrative proceedings are not designed to accommodate. The question must be addressed by an ordinary court.

The Panel is aware that, before the Internet came into existence, Respondent’s actions might have been considered as a permissible or impermissible appropriation of the Trademark in the country of Respondent’s activity. With the creation of the global forum known as the Internet the rules have changed. In certain instances the principle of "First Come First Serve" must be viewed as furthering the interests of a domain name Registrant who acts the fastest, provided that the registration and use of the domain name occurs within the limits of the ICANN Policy. The question of permissible or impermissible use of a mark still exists, but this is a problem which must be left to ordinary courts for resolution.

On the record presented herein, and based on the Policy, this Panel must draw the conclusion that Respondent’s use of the domain name was in connection with a bona fide offering of goods and services and therefore that the Respondent’s use was legitimate. The Panel therefore concludes that the Respondent has rights or legitimate interests in the domain name.

(c) Bad faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to prove registration in bad faith as well as use in bad faith.

Paragraph 4(b) of the Policy sets forth a non-exclusive list of circumstances which shall be evidence that the registration and use of a domain name is in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.

The Complainant relies on the forth element, alleging that the domain name was registered and used in bad faith because the Respondent is attempting to use the domain name to attract customers by creating the impression that the Respondent is affiliated with, sponsored by, or endorsed by the Complainant.

The Panel is aware that the Respondent uses the domain name to attract, for commercial gain, Internet users to its website. Respondent’s website reproduces Complainant’s "brembo" trademark and the "brembo" logo, and states that the Respondent is a distributor for Brembo products. Therefore, it is not only a likelihood of confusion, but also identicalness with the Complainant’s trademark, that is relied upon by the Respondent to accomplish its (legitimate) sales objective.

It is important to note that the Respondent has made an effort to reduce the likelihood of confusion between itself and the Complainant and/or the Complainant’s business, by making clear that it does not own the "brembo" trademark and by selling other products than Complainant’s as well. More precisely, the Respondent’s website contains:

- the disclaimer: "BremboÒ is a trademark of Brembo. We are not connected with Brembo in any way except as a legal reseller of their parts obtained through our original equipment suppliers and other sources";

- the statement: "We are also an exclusive distributor for Valter Moto Racing components"; and

- the "Valter Moto" logo.

The Panel has also considered the Complainant’s allegation that certain language in the website ("Brembobrakes.com is a division of Britalia Imports") gives the impression that the Complainant is the Respondent’s subsidiary. The Panel is of the opinion that no reasonable person who reads the entire website would come to that conclusion. The Panel, however, also notes that the Respondent deleted this allegedly ambiguous language from its webpage once its was confronted with the Complainant’s allegation. The Panel sees in the Respondent’s rapid revision of its website a demonstration of the Respondent’s good faith as opposed to bad faith.

It does not appear that the Respondent’s actions are intended to tarnish, or have tarnished, the Complainant’s trademark. Nor does it appear that Respondent’s registration and use of the domain name have harmed the Complainant commercially. Respondent’s use of "brembobrakes.com" has not prevented Complainant from making its commercial presence known on the Internet. The Complainant and its affiliates themselves have registered "brembo.it" and "brembo.com". There is no rule that the registration of a mark gives the owner the right to all TLDs using the mark or a portion of the mark. As demonstrated above, the test to be applied is far more complicated.

In these present circumstances, it is natural that the Internet users will regard Respondent’s domain name as having some relation to the Complainant – this corresponds to the reality of the business relationship between the Complainant and the Respondent, since the Respondent is an authorized distributor of the Complainant’s products.

Based on the above considerations, the Panel finds that the Complainant has not succeeded in proving that the Respondent acted in bad faith.

 

8. Decision

The Panel decides that:

(1) the domain name "brembobrakes.com" is confusingly similar to the trademark "brembo";

(2) the Respondent has demonstrated that it has a legitimate interest in the domain name;

(3) the Complainant has failed to demonstrate that the domain name was registered and is being used in bad faith by the Respondent.

Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the registration of the domain name be left as it stands.

 

 

Kamen Troller
Sole Panelist

Dated: 19 March 2001

 

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Footnotes:

1. See also: Gateway, Inc. v. James Cadieux (D2000-0198); Chanel, Inc. v. Estco Technology Group (D2000-0413) and The Journal Newspapers, Inc. v. DomainForSale 980dollars (FA8000095395).

2. See also: Weber-Stephen Products Co. v. Armitage Hardware (D2000-0187).