WIPO Arbitration and Mediation CenterADMINISTRATIVE PANEL DECISIONBFS of the Americas LLC, dba Battery Filling Systems v. Matthias Pahlke, Fillwatch Landau GmbHCase No. D2008-17861. The PartiesThe Complainant is BFS of the Americas, LLC, d/b/a Battery Filling Systems, of North Carolina, United States of America. The Respondent is Matthias Pahlke, Fillwatch Landau GmbH, Nurnberg, Germany. 2. The Domain Name and RegistrarThe disputed domain name <batteryfillingsystem.com> (the “Domain Name”) is registered with PSI-USA, Inc. dba Domain Robot. 3. Procedural HistoryThe Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2008. On November 20, 2008, the Center transmitted by email to PSI-USA, Inc. dba Domain Robot a request for registrar verification in connection with the Domain Name. On November 25, 2008, PSI-USA, Inc. dba Domain Robot 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 Domain Name. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed amendments to the Complaint on November 19, 2008 and November 20, 2008. The Center verified that the Complaint together with the amendments to 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 4, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 24, 2008. The Response was filed with the Center on December 12, 2008. The Center appointed Warwick Smith as the sole panelist in this matter on January 7, 2009. 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. 4. Factual BackgroundThe ComplainantThe Complainant is BFS of the Americas LLC, a company incorporated in the State of Delaware in the United States of America, carrying on business from premises in North Carolina. The Complainant manufactures and distributes battery watering systems for industrial, golf car, solar, and mining lead acid batteries. According to the Complaint, the Complainant represents itself as “Battery Filling Systems” in North and South America to industrial markets, and to Golf markets worldwide. The Complainant has a partner company called BFS GmbH in Germany, and that company operates a website at “www.bfsgmbh.de”. According to the Complaint, the Complainant acquired and has been using the domain name <batteryfillingsystems.com> since August 5, 1999. The Complainant does not have any relevant registered trademark or service mark. However, in an email to the Center dated November 19, 2008, the Complainant’s Ms. Elliott advised: “We have tried to get the name battery filing systems trade marked, however, because it is a generic naming nomenclature, we have been unable to do so. Our logo is trade marked and we use the name of our company “Battery Filling Systems” with our logo. We also spell out our company name on all literature.” With the Complaint, the Complainant has provided one of its brochures. On the cover, the brochure shows what appears to be a “bfs” logo mark, consisting of the letters “bfs” in stylized form, superimposed on a grey and blue circle. Immediately below the circle, appear the words “Battery Filling SYSTEMS. The leader in battery filling technology”. Where the expression “Battery Filling SYSTEMS” is used, the words “Battery Filling” are printed in a larger, more prominent font than the word “SYSTEMS”. The same “bfs” logo appears inside the brochure, as well as on the back cover. The Respondent and the Domain NameThe Respondent is a German corporation with business premises in Nurnberg, Germany. The Complainant says that the Respondent is a competitor of the Complainant and of BFS Germany, and has been trying for the past 2 years to break into the United States and Canadian markets. The Complainant says that it became aware of the Respondent when it saw an advertisement placed in the publication “Batteries + Energy”, spring 2008 issue. The advertisement consisted only of the words “Quality and Reliability for over 15 years “www.batteryfillingsystem.com”. There was no reference to the identity of the advertiser. The Complainant says that the Respondent’s products look a little different from those offered by the Complainant, but “essentially they do the same thing”. The Complainant says that the Domain Name was registered by the Respondent on November 19, 2007. However, the Respondent has produced registrar’s Whois particulars for the Domain Name showing that the Domain Name was in fact registered on February 4, 2005. The Respondent says that the November 19, 2007 date referred only to an updating of the registered details relating to technical support for the Domain Name. The Complainant has produced copies of emails which it says evidence customer confusion resulting from the Respondent’s use of the Domain Name. The Complainant referred in particular to one of its customers having mistakenly sent an email to “[…]@batteryfillingsystem.com”. The Complainant says that the email went to the Respondent, and was forwarded by the Respondent to its representative in Canada, who proceeded to supply the Complainant’s customer with a quote. There was another instance of the Complainant’s representative in Florida mistakenly sending an email to the Respondent, again intending it for Ms. Elliott. The Complainant’s Florida representative received a reply from a representative of the Respondent. The Respondent says that it registered the Domain Name on February 4, 2005 without knowing about the existing version of the Domain Name with an “s” on the end. The Respondent says that it was focusing on what it had been doing for years on a worldwide market, and not only in the United States of America. It says that it has registered many other words synonymous with “battery fillings system”, in different languages and in different domain spaces. The Respondent acknowledges that it is in competition with “BFS” worldwide, and with “BFS of the Americas” in the United States and in parts of South America. The Respondent says that it already had an intensive business, running to many hundreds of thousands of United States dollars, in the United States market in the period from 1997 to 1999, before the Complainant had registered its <batteryfillingsystems.com> domain name. The Respondent was then operating under a registered FILLWATCH logo mark, which featured the drawing of liquid with the words “battery filling system”. The Respondent says that the choice of the Domain Name followed logically from that early use of the words “battery filling system”. In support of that contention, the Respondent produced copies of correspondence from 1997 and 1998, bearing what appears to be a stylized logo mark “Fillwatch battery-filling system”. The Respondent says that it has always used the expression “battery filling system” in its logo. With respect to the email traffic confusion, the Respondent says that all incoming emails addressed to the Domain Name are directed to “[…]@fillwatch.de”, which address the Respondent described as having a “catchall” function. Any email addressed to “[name]@batteryfillingsystem.com” will arrive at that email address. The Respondent says that its employee who received the emails which were mistakenly sent to the Respondent’s email address had no knowledge of the Complainant, and followed the Respondent’s policy of forwarding business emails from prospective customers in foreign countries to the Respondent’s partner organization in the relevant country. 5. Parties’ ContentionsA. ComplainantThe Complainant contends: 1. The Domain Name is confusingly similar to a trademark or service mark in which the Complainant has rights, namely “Battery Filling Systems”. 2. The Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent’s main website is at “www.fillwatch.com”, and the Domain Name now points to that website. The pointing of the Domain Name to that website was a direct act intended to deceive and pull in customers looking for the Complainant’s website. The Respondent never advertised itself as “Battery filling system” until it began trying to penetrate the US market. It bought a domain name very similar to the Complainant’s domain name (i.e. the Domain Name) and added one line of text to its website. It still markets itself as “Fillwatch”. 3. The Domain Name was registered and is being used in bad faith. In addition to the foregoing, the Respondent is intentionally attempting to attract the Complainant’s customers by confusing them and deceitfully using an email address confusingly similar to that of the Complainant’s Ms Elliott, when there is no-one at the Respondent Company having that name. The Respondent sends out emails that the Complainant’s customers may think are actually coming from the Complainant. That could do a great deal of damage to the Complainant. B. RespondentThe Respondent contends: 1. The Complainant has no rights in respect of any “Battery Filling Systems” trademark or service mark, which is a purely descriptive expression. All of the Complainant’s and Respondent’s competitors use the description “battery filling system” in describing their products, and nearly all users describe the product in the same terms. 2. The Respondent had used the expression “Battery Filling System” on its letterhead and in its marketing, before the Complainant registered its domain name <batteryfillingsystems.com>. 3. The trademark and the description of products sold by the Complainant is “BFS”, not “Battery filling systems”. 4. There was no bad faith in the Respondent’s replies to emails received from the Complainant’s customers. The Respondent’s employee responding to the emails had no knowledge of the Complainant, and simply pressed “answer all” when she replied, sending the information to the Complainant’s customer, the Complainant’s salesman, and to “[…]@batteryfillingsystem.com”. There are (and will be) no email addresses used by the Respondent to send out email styled “[name]@batteryfillingsystem.com”. The Respondent relies on its company name and registered trademark in its communications. 5. The Complainant has brought its Complaint in bad faith, and the Panel should make a finding of reverse domain name hijacking. The Complaint was only superficially investigated by the Complainant, and none of the information given by the Complainant is true or meets the requirements of the Rules. 6. Discussion and FindingsA. What the Complainant must prove – GeneralUnder Paragraph 4(a) of the Policy, a complainant has the burden of proving the following: (i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) That the disputed domain name has been registered and is being used in bad faith. Paragraph 15(a) of the Rules requires the panel to: “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”. B. Identical or Confusingly SimilarThe Complaint fails at this point. In the Panel’s view, the Complainant has failed to prove that it has any rights in the claimed “BATTERY FILLING SYSTEMS” mark. First, the Complainant has no registered right in any such mark, either on the principal or supplemental registers maintained by the United States Patent and Trademark Office. Secondly, the claimed mark is at best descriptive or at worst (for the Complainant) generic. A complainant who has no registered trademark or service mark may nevertheless satisfy the relevant requirement of paragraph 4(a)(i) of the Policy by showing that it has a common law (unregistered) right in the United States of America (or in some other jurisdiction where the relevant national law recognizes unregistered, or common law, trademark rights), in a trademark or service mark to which the disputed domain name is identical or confusingly similar. Common law trademark rights in the United States of America are established by use of the claimed mark in commerce. Where the claimed mark is descriptive of the trader’s products, that use must be sufficient to show that the claimed mark has become recognized by members of the relevant public as distinguishing the complainant’s products from the products of other traders. Generally, a complainant may prove such a common law trademark by producing evidence of sales revenues, of products sold under the claimed mark, of advertising using the claimed mark, of any unsolicited media attention for the claimed mark, and of any surveys showing brand recognition of the claimed mark. As the three-member panel said in the recent decision of Advance News Service Inc. v. Vertical Axis Inc./Religionnewsservice.com, WIPO Case No. D2008-1475: “the absence of such evidence is fatal to an attempt to establish common law rights in a descriptive phrase. See PC Mall, Inc. v Pygmy Computer Systems Inc., WIPO Case No. D2004-0437 (August 25, 2004): ‘there is no specific argument, or evidence, regarding the extent of Complainant’s usage of its various marks during the relevant time period. There is no evidence at all regarding the amount of Complainant’s sales of goods or services in connection with any of its marks. Nor is there any evidence of the extent of complainant’s advertising or promotion of any of its marks. Complainant has not presented evidence of how the purchasing public perceives the ‘mall’ common characteristic of Complainant’s family of marks, through a survey or otherwise. And Complaint has sidestepped, rather than squarely addressed, the question of whether the members of its family of marks are distinctive.” In this case, the claimed mark is clearly descriptive of the Complainant’s goods and services. It supplies battery filling systems. The Complainant has produced no evidence of sales revenues, advertising, unsolicited media attention, or brand recognition relating to sales made under a BATTERY FILLING SYSTEMS mark. Its evidence is that it has used the expression “battery filling systems” in its own domain name, and as part of a wider logo mark incorporating the letters “bfs” and the blue and grey circle device. There is nothing in the evidence to suggest that the expression “battery filling systems”, standing alone, has become distinctive of the Complainant’s products, as opposed to being merely descriptive of the goods or services sold by the Complainant. But there is a more fundamental problem with the Complainant’s claim to rights in a BATTERY FILLING SYSTEMS mark. That expression appears to be not merely descriptive of particular goods or services sold by reference to the expression, but generic, in the sense that it denotes, or names, the very “genus” or category of goods or services which are said to be covered by the claimed mark. Generic expressions are not registrable as trademarks or service marks in the United States of America at all, even with proof of use in commerce (see for example, the decision of the Court of Appeals, Second Circuit, in Abercrombie & Fitch Co v. Hunting World Inc., 537F2d 4, 9-10). To illustrate the distinction, a seller of bananas might conceivably succeed in registering YELLOW FRUITY as a trade mark for his bananas, if he could show that, through years of use of that expression in connection with his banana sales, YELLOW FRUITY had developed a “secondary meaning”, denoting his bananas, and not those sold by other banana sellers (as well as being descriptive of bananas generally). But he would never be able to claim BANANAS as a trademark for his bananas. Tellingly in this case, the Complainant’s Ms. Elliott advised the Center in the email dated November 19, 2008, that the Complainant had tried to get the name “Battery Filling Systems” trademarked, but “because it is a generic naming nomenclature, we have been unable to do so”. Having regard to the foregoing considerations, the Panel finds that the claimed mark BATTERY FILLING SYSTEMS is either descriptive or generic. To the extent that it is descriptive, there is no proof that it has acquired “secondary meaning”, as a mark denoting just the Complainant’s products. If it is generic, it cannot be a trademark. In either case, the expression “battery filling systems” does not on the provided record qualify as a trademark or service mark in which the Complainant could have rights within the meaning of paragraph 4(a)(i) of the Policy. For completeness, the Panel notes that the Complainant might have made (but did not make) an argument that it has relevant rights in the BFS device logo, incorporating the letters “bfs”, the grey and blue circle, and the words “battery filling systems”, and that the Domain Name is confusingly similar to such a (common law) mark. On the evidence which has been produced, it appears that the Complainant might have a reasonable claim to common law rights in such a mark. Nevertheless, the Panel would not have regarded the Domain Name as being confusingly similar to any such mark. The expression “battery filling systems” as used within the logo, remains a purely descriptive or generic phrase, and as such plays little or no role in the essential trademark function of distinguishing the Complainant’s products from the products of other traders who supply battery filling systems. Indeed, the evidence demonstrates that the Respondent itself was using the expression “battery filling system” with its FILLWATCH mark, before the Complainant even registered its own domain name. In those circumstances, the expression “battery filling systems” would not be a distinctive part of any such logo mark, and the use of the non-distinctive element in the Domain Name would not, in the Panel’s view, result in any confusing similarity between the logo and the Domain Name. For the foregoing reasons, the Complainant has failed to make out its case under paragraph 4(a)(i) of the Policy, and the Complaint must therefore be denied. In those circumstances, it is not necessary for the Panel to address the questions of rights or legitimate interests, and bad faith registration and use, under paragraphs 4(ii) and (iii) of the Policy. C. Reverse Domain Name HijackingReverse domain name hijacking is defined in the Rules, at paragraph 1, as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”. The Respondent contends that the Complaint was superficially investigated and not done in a professional way. The Panel accepts the latter part of that submission. The Complaint was obviously prepared without the benefit of legal advice, and there was evident naivete in the Complainant telling the Center that it had attempted to have the claimed trademark registered, but had been unable to do so because “it is a generic naming nomenclature”. It appears that the Complainant did not appreciate that that acknowledgement might be fatal to the Complaint. Alternatively, it may have been intended to signal that the Complainant intended to mount its claim based on its use of the “bfs” logo over the years since the late 1990s (although that was not the case advanced in the body of the Complaint (e.g. “we represent ourselves as Battery Filling Systems in North and South America …”)). Either way, the frank acknowledgement in the November 19, 2008 email does not seem to the Panel to be consistent with any dishonest intent. On the other side of the ledger, the Respondent, after apparently operating contentedly under a FILLWATCH mark for many years, and using <fillwatch.de> and <fillwatch.com> domain names for its principal website, decided in 2005 to register a domain name which differed by only one letter from the domain name used by one of its competitors. The Complainant has proved that some level of marketplace confusion has since arisen, and, if the Respondent was aware of the Complainant and its domain name, the Respondent must surely have expected that there would be some market confusion caused by its registration of the Domain Name. The Respondent denies that it was aware of the Complainant or its Domain Name, but the reverse domain name hijacking question is whether it was reasonable for the Complainant to believe, when filing the Complaint, that the Domain Name was registered by the Respondent with knowledge of the Complainant. In the Panel’s view, that would not have been an unreasonable belief. Both parties had been operating in the same field, and the Respondent acknowledges that it had been selling product into the North American market since the late 1990s. The Panel is of the view that it was not unreasonable for the Complainant to believe that the Respondent would have been aware of the Complainant when the Respondent registered the Domain Name, and that the Respondent expected (and indeed intended) that some level of marketplace confusion would ensue when the Domain Name was registered. Weighing all of those circumstances, and notwithstanding the fact that the Complaint has failed on account of deficiencies in the claim which were or should have been within the Complainant’s knowledge, the Panel declines to make a finding of reverse domain name hijacking in this case. The Complainant appears to have acted honestly, but without a proper appreciation of the need to prove each element of paragraph 4(a)(i) of the Policy. This is not a case where the Complainant has acted in bad faith. 7. DecisionFor all the foregoing reasons, the Complaint is denied. Warwick Smith Dated: January 21, 2009.
: https://xn--c1ad2agd.xn--p1ai/intlaw/udrp/2008/d2008-1786.html
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