Borsig Process Heat Exchanger GmbH f/k/a
Borsig GmbH v. David Webb
Claim Number: FA0608000766319
PARTIES
Complainant is Borsig Process Heat Exchanger GmbH f/k/a Borsig GmbH (“Complainant”), represented by William P. Glenn, Jr., of Royston Rayzor Vickery & Williams L.L.P., 2102 Mechanic Street, Suite 205, Galveston, TX 77550. Respondent is David Webb (“Respondent”), represented by David M. Dingeman, 2907 Emerald Sound Drive, Cedar Hill, TX 75104.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <borsig.com>,
registered with Enom, Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Hugues G. Richard as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on July 31, 2006; the National Arbitration Forum received a hard
copy of the Complaint on August 4, 2006.
On August 1, 2006, Enom, Inc. confirmed by e-mail to the National
Arbitration Forum that the <borsig.com>
domain name is registered with Enom, Inc. and that the Respondent is the
current registrant of the name. Enom, Inc. has verified that Respondent is
bound by the Enom, Inc. registration agreement and has thereby agreed to
resolve domain-name disputes brought by third parties in accordance with
ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 9, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of August 29, 2006 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent’s registration as technical, administrative and
billing contacts, and to postmaster@borsig.com by e-mail.
A timely Response was received and determined to be complete on August
28, 2006.
On September 5, 2006, an Additional Submission from Complainant was
received in a timely manner according to The Forum’s Supplemental Rule 7.
On September 6, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Hugues G. Richard as Panelist.
On September 11, 2006, Respondent’s Response to
Complainant’s Additional Submission was received.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is a manufacturer and seller of pressure vessels and heat
exchangers. Complainant asserts it has been using the mark “BORSIG” since 1950
throughout the world and since 1972 in the United States and that it is commonly
known by its customers under the said mark.
Complainant also contends it has established rights in the BORSIG mark
through registration in Germany, Austria, Benelux, France, Greece, Italy, Spain
and Switzerland and through acquiring common law rights by its continuous use
and marketing under the name “BORSIG” in the United States.
Complainant alleges that sales of his products related to pressure
vessels and heat exchangers in the United States amounted to approximately
$40,000,000 in 2005 alone. Complainant also states that it spent $7,000 in U.S
advertising last year, as well as $55,000 in advertising throughout the world
in the same period of time.
Furthermore, Complainant’s states it adopted and continuously used the
mark “BORSIG” to identify its wares and services and to distinguish them from
its competitors’ services.
Complainant also contends that Respondent’s <borsig.com>
domain name is identical to the “BORSIG” mark within the meaning of Policy ¶
4(a)(i) because the disputed domain name encompasses the mark in its entirety
and merely adds the generic top-level domain “.com.”
In addition, Complainant alleges that Respondent is not commonly known
by the <borsig.com> domain name and that there have been no links
between the domain name <borsig.com> and any content since Mr.
Webb’s registration on May 7, 2005. Complainant claims that, even if the domain
name had been used as a search engine as Respondent asserts, Respondent would
use the domain name to redirect internet users to Complainant’s competitors or
unrelated web sites. In this manner,
according to Complainant, Respondent is capitalizing on consumer confusion to
obtain “click-through” fees for its own profits.
Complainant also alleges Mr. Webb’s nonuse is not a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
In addition, Complainant states that Mr. Webb’s registration and
passive holding of the domain name <borsig.com>, as well as the
absence of any notice of intended use on the web site, is evidence of bad faith
registration and use.
B. Respondent
Respondent contends he had never heard of Complainant’s registered
trademark for “BORSIG” and alleged use in the United States prior to receiving
this complaint. He disputes the claim that “BORSIG” has acquired common-law
trademark rights in the United States and maintains no evidence to this effect
was provided by the Complainant except for the claim $7,000 was spent in U.S
advertising.
Respondent also states Complainant does not provide any notice of
trademark registration such as the recognized registration symbol “®” when
using the mark “BORSIG” in commerce.
Furthermore, Respondent claims that Complainant abandoned his U.S
trademark registration and rights for “GHH BORSIG” on April 18, 2001.
Respondent asserts that, even though <borsig.com> is
identical to the Complainant’s German trademark registration for the “BORSIG”
mark, Complainant lacks sufficient rights in the said mark to meet the
requirements of Policy ¶ 4(a)(i).
Respondent also states that Complainant failed to establish common law
rights in the mark.
In addition, Respondent contends he registered <borsig.com>
on May 7, 2005 because it was an available generic domain name or common surname
domain name that he believed no party had exclusive rights to. Respondent says he uses a generic surname to
profit from the intrinsic value of the word without the intent to take
advantage of Complainant’s rights in those words. He further asserts he only owns mainly surname domain names and
generic domain names of which none have any live U.S. trademark registrations.
Furthermore, he contends that Policy ¶ 4(c)(ii) “has been interpreted
to require a showing that one has been commonly known by the domain name prior
to registration of the domain name” in cases only when Respondent failed to
respond.
Respondent asserts he has been using <borsig.com> as a
pay-per-click search engine until receiving the cease and desist letters
whereby he removed all contents until resolution is achieved.
Respondent contends his legitimate interest in the domain name <borsig.com>
is established per se at the point of registration.
Respondent also asserts Complainant does not show that Respondent
should have been aware of Complainant’s German or WIPO trademarks.
Moreover, Respondent contends that Complainant has failed to establish
a prima facie case to support its allegations that Respondent lacks
rights and legitimate interest pursuant to Policy ¶ 4(a)(ii). Respondent contends that Complainant has not
shown Respondent acted in bad faith within the meaning of Policy ¶ 4(a)(iii).
Respondent contends that he registered the domain name in good faith
over one year ago as well as many other generic domain names all used as search
engines. He also contends he never diverted customers from Complainant nor is
there any evidence to support this. Furthermore, Respondent states he is not in
the business of selling domain names and that there are no circumstances
indicating that Respondent registered or acquired the domain name primarily for
the purpose of selling, renting or transferring the domain name registration to
Complainant.
Respondent asserts he did not register the domain name in order to
prevent the owner of the trademark from reflecting the mark in a corresponding
domain name, in this case <borsig.de>. He also contends Complainant
failed to register <borsig.com> when it was available.
Furthermore, Respondent contends he did not register the domain name to
disrupt the business of a competitor.
He highlights that he is not in the business of selling heat exchange
equipment.
C. Additional Submissions
In his Additional Submission, Complainant asserts he is not required to
demonstrate registrations in the country in which Respondent operates. It is sufficient that Complainant can
demonstrate a mark in some jurisdiction.
Complainant states that the affidavits under Exhibits B and G serve as
evidence of use of the mark “BORSIG” in the United States and that it
establishes Borsig’s common law trademark rights in the mark.
Complainant also alleges the production of advertisement is not
required to show use of the mark.
Acquisition of common law trademark occurs with an account of long and
substantial use of the name in connection with its business.
Furthermore, Complainant contends that Respondent erred in assessing
that Borsig abandoned its U.S. trademark registration because the said mark,
“GHH BORSIG,” is a design mark intended to be used in connection with goods
identified as compressors, turbines and the controls and instrumentation
thereof. The Complainant also alleges
he is not the owner of the intent to use application relied upon by Respondent.
As to Respondent’s legitimate interest, Complainant contends that the
term “BORSIG” is a word and not a short, generic letter combination or
acronymic term as suggests Respondent.
Complainant also asserts the word “BORSIG” has no common meaning other
than what Borsig’s customers have come to recognize as a mark associated with its
pressure vessels and heat exchangers.
Complainant asserts that “BORSIG” is too unusual as a surname to be
considered a generic surname.
Furthermore, Complainant contends that Respondent is not known by the
name “Borsig” but rather by the names: David Webb, Bestinfo and
Goldmark-CDWebb.
Complainant also asserts Respondent did not provide any evidence that
the domain name <borsig.com> was used as a pay-per-click search
engine business model. He also contends
he did not find any linking of content to that domain name since May 7, 2005.
Complainant reasserts that Respondent did not use the domain name and therefore
has no bona fide offering of goods and services pursuant to Policy ¶
4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Complainant also contends that, if the website was ever used as a
search engine, Respondent’s “business model” diverts Internet users seeking
information about Borsig and its products to Respondent’s website, which
contains a series of hyperlinks to unrelated websites.
Complainant also reasserts that Respondent’s registration and passive
holding of the domain name <borsig.com> for at least a year is
evidence of bad faith registration and use.
He also alleges that the failure to place any notice of intended use of
the domain name amounts to bad faith registration and use.
D. Response to Complainant’s Additional Submission
Respondent reasserts Complainant did not provide concrete evidence as
to why he deserves world-wide exclusive rights in the domain name <borsig.com>
except for the affidavits provided in his Amended Complaint. He also maintains there is no evidence
showing the word “BORSIG” has acquired distinctiveness or secondary meaning.
Moreover, Respondent maintains that the domain name was used as a
pay-per-click search engine until the cease and desist letters were received
and that it would be used in the same way as the business model examples
submitted in Exhibits C and D.
Respondent also reasserts “BORSIG” is viewed primarily as a surname.
He also contends that Complainant did not show any evidence that
Respondent’s “business model” diverts Internet users seeking information about
Complainant and its products to other web sites, and that he never provided
content associated with heat exchangers or other heavy equipment on his web
sites.
Furthermore, Respondent states Complainant did not provide any evidence
that Respondent knew or should have known of Borsig’s trade name use or
trademark registrations at the time of the domain name registration.
FINDINGS
Rule 15 of the Rules for Uniform Domain
Dispute Resolution Policy states that “a Panel shall decide a complaint on the
basis of the statements and documents submitted and in accordance with the
Policy, these Rules and any rules and principles of law that it deems
applicable.” Furthermore, Rule 10
requires the Panel shall ensure that the Parties are treated with
equality. The Panel recognizes that the
parties went to great lengths to submit additional materials and will consider
the additional documents as a matter of fairness for both parties.
Complainant has continuously used the mark
“BORSIG” in the manufacturing and advertising of heat exchangers and pressure
vessels since 1950 throughout the world and since 1972 in the United
States. Moreover, Complainant is the
registered owner of the trademark “BORSIG” in Germany and of the mark “BORSIG”
in Germany, Austria, Benelux, France, Greece, Italy, Spain and Switzerland. He also spent $7,000 in U.S. advertising in
2005 and generated more than $40,000,000 in profits last year in the United
States. Complainant also owns and uses
the domain name <borsig.de>.
Respondent however, does not use the
mark. The record shows that Respondent
is not commonly know by the <borsig.com> domain name or by the
“BORSIG mark.” On May 7, 2005,
Respondent registered the domain name <borsig.com> without the
permission or authorization of Complainant.
Furthermore, Respondent is not using the domain name in connection with
a bona fide offering of goods or services given the domain name <borsig.com>
is not linked to any content.
Respondent also does not make legitimate noncommercial or fair use of
the domain name. Finally, Respondent
registered and used the disputed domain name in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (the “Rules”) instructs this 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.”
Paragraph 4(a) of the Policy requires that the Complainant must prove
each of the following three elements to obtain an order that a domain name
should be cancelled or transferred:
(1)
the domain name
registered by the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the Respondent
has no rights or legitimate interests in respect of the domain name; and
(3)
the domain name
has been registered and is being used in bad faith.
Complainant must first establish rights in the mark “BORSIG” before it
can proceed. Complainant does establish its rights in the mark by showing
registrations in Germany, Austria, Benelux, France, Greece, Italy, Spain and
Switzerland and through acquiring common-law rights by its continuous use and
marketing under the name “BORSIG” in the United States, as shown in the
affidavits of Mr. Nassauer and Mr. Richey.
A common law trademark constitutes a valid trademark under Policy ¶
4(a)(i) and the Panel is convinced the Complainant continuously used the mark
“BORSIG” in relation to its products. See
Keppel Tatlee Bank v. Taylor, D2001-0168 (WIPO March 28,2001).
Furthermore, the Policy does not require that a mark be registered in the
country in which the respondent operates.
See Choice Hotels International, Inc. v. Anna Valdieri, FA 758830
(Nat. Arb. Forum August 23, 2006) (citing Koninklijke KPN N.V. v. Telepathy
Inc., D2001-0217 (WIPO May 7, 2001)).
In addition, Respondent’s domain name <borsig.com> is
identical to the “BORSIG” mark. Respondent also admits that the disputed domain
name is identical to Complainant’s mark.
The presence of the “.com” suffix does not affect the domain name for
the purpose of comparison with the Complainant’s “BORSIG” mark. See Rollerblade Inc. v. McCrady,
D2000-0429 (WIPO June 25, 2000).
Complainant prevails under Policy ¶ 4(a)(i).
Once Complainant makes a prima facie
case that Respondent lacks rights and legitimate interests in the disputed
domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show
his rights or legitimate interests in the domain name <borsig.com>.
See Do the Hustle, L.L.C. v. Tropic Web, D2000-0624 (WIPO Aug. 21,
2000).
Complainant showed Respondent is not commonly
known by the name “BORSIG” and that no authorization was given to Respondent to
use that name. See Gallup Inc. v.
Amish Country Store, FA96209 (Nat. Arb. Forum, January 23, 2001) (finding
that a respondent does not have rights in a domain name when he is not known by
the mark). Under the facts and
circumstances of the case, the Panel finds that Complainant proved enough to
shift the burden of proof on Respondent.
Respondents asserts the domain name <borsig.com>
was an available generic name or generic surname that he believes no one should
have exclusive rights to and that was available at the time of
registration. Furthermore, Respondent
did not provide any evidence of use of the domain name <borsig.com>
related to any wares or services. The
Panel accepts the Complainant’s evidence that it was not used in connection
with a bona fide offering of goods or services pursuant to Policy ¶
4(c)(ii). In addition, Respondent does
not make a noncommercial or fair use of the domain name.
Complainant prevails under Policy ¶ 4(a)(ii).
Complainant contends that Respondent’s <borsig.com>
domain name has been inactive since at least a year and possibly longer. Respondent maintains that all content was
removed from the domain name since the start of the proceedings until the issue
is resolved and that the domain name was used as a pay-per click search
engine. However, Respondent did not
provide any evidence of use of the domain name while Complainant’s evidence
shows no content is, or was ever linked to the <borsig.com> domain
name. The other “business model” domain
names belonging to Respondent do not provide evidence as to the use made of the
<borsig.com> domain name.
Complainant asserts that, even in the event
the domain name <borsig.com> was used as a search engine, the
Respondent is diverting BORSIG’s customers to competitor’s web sites or to
other web sites, taking advantage of the goodwill associated with the mark. The
Panel finds, under the facts and circumstances of the case, that it is very
unlikely that there was ever any content linked to the <borsig.com>
domain name. Respondent’s registration
and passive holding of the domain name <borsig.com> for at least a
year is evidence of bad faith registration and use pursuant to Policy ¶
4(a)(iii). See Clerical Med. Inv.
Group Ltd. v. Clericalmedical.com D2000-1228 (WIPO Nov. 28, 2000).
Complainant prevails under Policy ¶
4(a)(iii).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <borsig.com>
domain name be TRANSFERRED from Respondent to Complainant.
Hugues G. Richard, Panelist
Dated: September 19, 2006
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National
Arbitration Forum