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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Aquastel Inc., Aquastel International Ltd., Michel van Schaik v. VIP Investeeringud Ltd.

Case No. D2006-0640

 

1. The Parties

The Complainant is Aquastel Inc., Aquastel International Ltd. and Michel van Schaik, Palm Beach Gardens, Florida, United States of America, represented by Advokaadibьroo Sorainen Law offices, Estonia.

The Respondent is VIP Investeeringud Ltd., Tallinn, Estonia,, represented by Valeri Iltsenko of Envirolyte Industries International Ltd., Estonia.

 

2. The Domain Name and Registrar

The disputed domain name <aquastel.com> is registered with Stargate.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 23, 2006. On May 23, 2006, the Center transmitted by email to Stargate.com a request for registrar verification in connection with the domain name at issue. On May 24, 2006, Stargate.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 30, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was June 19, 2006. The Response was filed with the Center on June 14, 2006.

The Center appointed Peter G. Nitter as the sole panelist in this matter on June 29, 2006. 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.

The Complainants filed supplementary comments to the Response on July 5, 2006.

 

4. Factual Background

The Complainants are the proprietors of a number of registered trademarks, including:

- United States of Amercia trademark application, serial no. 78462402, published for opposition September 2005. The trademark AQUASTEL was registered as a word mark with the code: “standard character mark”. (Complaint, annex 2).

- United States of America trademark application, serial no. 78463574, published for opposition September 2005. The trademark AQUASTEL was registered as a word mark with the code: “design plus words”. (Complaint, annex 1).

- Estonian national trademark, registration number 42053, registered January 2006. The trademark AQUASTEL was registered as a word mark. (Complaint, annex 6).

- Estonian national trademark, registration number 42054, registered January 2006. The trademark AQUASTEL was registered as a figure mark. (Complaint, annex 7).

The Respondent does not contest that the Complainants are the owner of the above mentioned trademarks.

The domain name at issue, <aquastel.com>, was registered on June 15, 1999, by the Respondent’s representative, on behalf of an Estonian company called Aquastel Balti Ltd. Both the Respondent and one of the Complainants, Mr. Van Schaik, were Board members of Aquastel Balti Ltd.

By the end of 2004, due to differences between the shareholders and the Board members, Aqastel Balti Ltd. terminated manufacturing and supplies of Aquastel devises to customers. It has not been documented what happened to the company’s assets, and which person(s) that is/are the rightful owner(s) of the company’s various former rights. It is unclear whether the domain name in dispute has been transferred to the Respondent, or if the original registration has expired and the Respondent filed for a new registration in its own name.

 

5. Parties’ Contentions

A. Complainants

The Complainants contend that the domain name in dispute <aquastel.com> is identical to the Complainants’ registered and unregistered trademarks AQUASTEL.

The Complainants submit that the Respondent has no rights or legitimate interests in the domain name in dispute and that it registered the domain name without authorization from the Complainants.

The Respondent implies to potential costumers that there is a link between the Respondent and the Complainants, and that the source of the goods offered through the website is the Complainants.

The Respondent diverts potential customers of the Complainants by transferring the customers from <aquastel.com> to the Respondent’s website “www.envirolyte.com”.

The registration of the domain name at issue is executed in bad faith and is being used by the Respondent to divert Internet users to its own website to generate sales commissions for commercial benefits. The Complainants submit that the Respondent redirects web traffic from the disputed domain name to its own website intending to benefit from the web traffic actually intended for the Complainants.

The Respondent was well informed of the Complainants’ trademark registrations and extensive use of and reputation for the AQUASTEL mark.

The Complainants state that there has been filed a criminal case against Mr. Ilchenko and the registrar of the domain name, based on the unlawful transfer of the disputed domain name from Aquatel Balti Ltd. to the Respondent. According to the Complainants, the police in Estonia are currently investigating the case. Furthermore, a second criminal case was started against Mr. Ilchenco on the basis that he secretly and illegally has taken most of the assets of Aquastel Balti Ltd., and that he has abused his power as a management board member of Aquastel Balti Ltd.

B. Respondent

The Respondent does not contest that the domain name in dispute is identical to the Complainants’ trademarks AQUASTEL. However, the Respondent submits that the Complainants knew about the existence of the domain registration and potential market risk associated with resemblance of AQUASTEL and <aquastel.com> and that they initiated those trademark registrations with the only obvious purpose to create amongst customers a deceptive association with the products sold by Aquastel Balti Ltd. and subsequently by Envirolyte Industries International Ltd. The Respondent submits that it is the Complainants who registered trademarks identical or confusingly similar to the domain name.

The Respondent states that searches through a search engine on the Internet shows plenty of leads to companies either controlled or associated with the Complainants. It therefore does not effect on the Complainants in presenting their products to the potential customers, despite the resemblance.

The Respondent is using the domain <aquastel.com> only in the interests of Envirolyte Industries International Ltd., which in terms of technology and market responsibilities is a de facto successor of Aquastel Balti Ltd. From 1999 until 2004, while Aquastel Balti Ltd. still were in business, the products manufactured by the company were advertised and became known to the public under <aquastel.com>.

The Complainants attempt to market and sell products similar to ones of Aquastel Balti Ltd., but with different electrodes as a direct attempt to deceive the public and benefit from the superior electrodes used by Aquastel Balti Ltd., now used by Envirolyte Industries International Ltd. By generating dispute over <aquastel.com> the Complainants are trying to avoid creating their own support data and, instead, use the good name of the products built by Aquastel Balti Ltd. through the use of its famous electrodes.

When Aquastel Balti Ltd. had to terminate manufacturing and supplies of Aquastel devises to customers and was set to liquidation, the business of the company was taken over by Envirolyte Industries International Ltd.

The use of <aquastel.com> only implies that traditional customers who already have products manufactured by Aquastel Balti Ltd. or want to buy more of similar products, are shown where they can find those products or get service/warranty/spare parts for the earlier purchased devices.

The Respondent submits that all the above stated illustrates and proves that Envirolyte Industries International Ltd., through the Respondent, has rights to use the domain name in dispute.

Use of the domain name in dispute can not be considered as executed in bad faith, since the only purpose of the use is to direct customers having products of Aquastel Balti Ltd. or seeking similar products to the company where they can get traditional products and traditional services. There is not any significant influence on the traffic for those who are looking for AQUASTEL products from the Complainants.

Most companies formally dealing with Aquastel Balti Ltd. are presently selling identical, considering new developments and improvements, devices manufactured by Envirolyte Industries International Ltd. These companies own domain names like <aquastel.fr>, <aquastel.ca>, <aquastel.dk> and <aquastel.biz>.

The Respondent did not know about the Complainants’ trademark registration and its extensive use. The trademark registration in Estonia in October 2004, was filed by one of the Complainants as an individual and not on behalf of Aquastel Balti Ltd, where he still was a Board member at the time.

It is submitted that the registration of <aquastel.com> does not prevent the Complainants from reflecting their trademark AQUASTEL in corresponding domain names.

The Respondent does not consider the Complainants as competitors, because the technology related to the Respondent’s products is different from the Complainants’ products.

The Complainants are aiming at gaining benefits and establishing themselves on the market at the expense of other companies, and that they are trying to create an association between their registered trademarks and products which they have nothing to do.

The Respondent submits that there is a criminal case regarding <aquastel.com>. The Respondent states that the case is being closed due to the fact that no evidence of wrongdoings was found during the investigation.

 

6. Discussion and Findings

A. Procedural issues

The Panel has not considered the supplementary filings from the Complainants, as they can not change the fact that this case, because of significant factual and legal issues, is not very suitable for a resolution under the Policy. The Complainants will not be able to throw enough light on the evidence in this case, nor the case as a whole under this proceeding, see reasoning below.

B. Identical or Confusingly Similar

It seems undisputed that the Complainants have satisfied the first requirement. The domain name <aquastel.com> is identical to the Complainants’ AQUASTEL trademarks. The Complainants satisfy the first requirement under paragraph 4(a) of the Policy.

C. Rights or Legitimate Interests

While the Complainants satisfy the first requirement, the same cannot be said of the second and third requirements of paragraph 4(a) of the Policy. As to both, significant factual issues remain, resolution of which are beyond the scope of the Panel’s jurisdiction. According to the Respondent it uses the domain name in dispute only in the interests of Envirolyte Industries International Ltd., which is a de facto successor of Aquastel Balti Ltd. in terms of technology and market responsibilities. The transfer of the domain name at issue or any other rights from Aquastel Balti Ltd. to Envirolyte Industries International Ltd. has, however, not been documented or proved. Under these proceedings the complete correct facts can probably not be proved.

The Complainants state that the police in Estonia currently are investigating two criminal cases, because of a possible unlawful transfer of the domain name in dispute, and for taking most of the assets of Aquastel Balti Ltd. without permission. Furthermore, it is neither clear nor documented what happened at the period of time when Aquatel Balti Ltd. ceased to operate and what happened to its assets.

Under these circumstances and on this record, it cannot be concluded that the Respondent has no “rights or legitimate interests” in the domain at issue as required under the Policy. While the Respondent does not own AQUASTEL as a trademark, questions remain as to whether the Respondent’s use is a nominative fair use. Furthermore, it is beyond the scope of the Panel’s jurisdiction to decide whether the transfer of the domain name in this case was legal or not, or if Mr. Ilchenko did take any assets from Aquastel Balti Ltd. illegally. These are questions that require full analysis of the underlying facts, and are issues for the national courts.

D. Registered and Used in Bad Faith

Likewise, the Complainants cannot, on this record, establish the prerequisite of bad faith. Like under the second requirement, significant factual issues remain, resolution of which are beyond the scope of the Panel’s jurisdiction.

The Complainants submit that the registration of the domain name in dispute is executed in bad faith and is being used by the Respondent intentionally to divert, for commercial gain, Internet users to its own website to generate sales commissions for the commercial benefits of Envirolyte Industries International, which through its owner is linked to the Respondent. The Respondent states that it did not know of the Complainants’ trademark registration and its extensive use, and that Mr. Van Schaik filed an application for registration of the trademarks in his own name and without the other Board members’ knowledge.

The Panel cannot know on this record the full extent of the relationship between the parties, or if one or the other has been in bad faith.

For the forgoing reasons, the Complainants have failed to prove that the Respondent had registered and used the domain name in bad faith.

The brief summations of the Parties’ contentions disclose an extensive dispute between the Parties, including issues under various legal fields, which in the Panel’s view are beyond the Panel’s jurisdiction to solve. This alone is enough to justify denial of the Complaint. It is important to keep in mind that the Policy was designed to prevent the extortionate behavior commonly known as cybersquatting, and that it cannot be used to litigate all disputes involving domain names, (The Thread.com, LLC v. Poploff, WIPO Case No. D 2000-1470, and Oki Data Americas, Inc v. ASD, Inc., WIPO Case No. D2001-0903). This case is much more complex, factual and judicial, than the domain name disputes suitably solved under the Policy.

The Panel notes that this decision should not be interpreted to be conclusive as to the domain name matter, if the Complainants should decide to pursue the matter in a relevant national court.

 

7. Decision

For all the foregoing reasons, the Complaint is denied.

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Peter G. Nitter
Sole Panelist

Dated: July 13, 2006