ADR Center for .eu attached to the Arbitration Court attached to the Czech Chamber of Commerce and the Agricultural Chamber of the Czech Republic (Czech Arbitration Court)

Panel Decision

§ B12 of the .eu Dispute Resolution Rules (ADR Rules)

Case No.: 06920
Time of Filing: 2015-01-26 11:07:27
Administrative Contact: Lada Válková
 
Complainant 1
FANUC Corporation, Oshino-mura, Yamanashi Prefecture 401-0597 Japan
 
Complainant 2
FANUC UK Limited, Tom Bouchier
Seven Stars Industrial Estate
Quinn Close Off Wheler Road
Coventry
Great Britain (UK)
CV3 4LB
E-mail:          sxa@adlexsolicitors.co.uk
Telephone:  +44(0)2073178400
Fax:               +44(0)2073178405
 
Complainants´ Authorized Representative
Adlex Solicitors, Adam Taylor
 
Respondent
Web Editor
 
 
Domain Name(s): FANUC-CNC
 
Other Legal Proceedings
None of which the Panel is aware.
 
English summary of the decision: English summary of this Decision is hereby attached as Annex 1
 
Factual Background
The Complainants are associated companies that supply automation systems and robotics, known as computer numerical controls or CNC, under the name FANUC. 


On July 16, 2008 Respondent registered the domain name fanuc.cnc.eu, thus incorporating Complainant's trademark and a generic expression describing the Complainant's products and has used it to promote its business on the internet using the Complainant's name and logo without permission, to sell products it claims are the Complainant's branded goods without the permission of the Complainant and to promote products that are in competition with those of the Complainant. The Complainants have thus brought this proceeding to have the domain name transferred to it.

Complainant submitted the Complaint on January 26, 2015.

The Respondent failed to submit a Response within the time frame required and a Notification of Respondent’s Default was therefore issued on April 8, 2015.

On April 15, 2015, the Czech Arbitration Court appointed The Honourable Neil Anthony Brown QC as the sole panellist in this proceeding and on April 15, 2015 he lodged his Statement of Acceptance and Declaration of Impartiality and Independence.
 
Parties’ Contentions
  1. Complainant
    1. The First Complainant FANUC Corporation, of Oshino-mura, Yamanashi Prefecture 401-0597 Japan, a Japanese company, was incorporated in 1972 and since then it, and its group companies, have supplied automation systems in Japan and worldwide under the name 
    
    FANUC and related names.

    2. The Second Complainant FANUC UK Limited, a UK company and subsidiary of the First Complainant, has traded in the UK under the names FANUC and FANUC Robotics since 1982.


    3. The Complainants are hereinafter referred to collectively as “the Complainant” except where it is necessary to refer to them separately.

    4. The Complainant is part of the FANUC international group of companies which provides automation products and services such as robotics and computer numerical controls known as CNC systems.

    5. The group is one of the largest makers of industrial robots in the world. Its customers include manufacturers of cars and electronics.  

    6. The Complainant owns the following registered trade marks for FANUC among others.
    a. UK trade mark number 910676 dated June 13, 1967 - word mark for FANUC in class 9.

    b. UK trade mark number 1182663 dated October 1, 1982 - word mark for FANUC in class 7.

    c. UK trade mark 2337783 dated July 15, 2003 - word mark for FANUC in classes 7 and 9.

    d. International trade mark no. 948323 designating the EU dated June 11, 2007 - word mark for FANUC in classes 7, 9, 37 and 42.

    7. The Complainant relies on its registered trade marks referred to above.

    8. In accordance with Articles 10(1) and 21(1), these are rights recognised or established by national and/or Community law.

    9. The Complainant also relies on unregistered trade mark rights.

    10.  By virtue of its extensive trading and marketing activities outlined above, the Complainant has acquired substantial reputation and goodwill in the name Fanuc such that it is recognised by the public as distinctive of the Complainant’s business supplying automation products
    and services.

    11. Unregistered trade marks are protected under the laws of the UK. In accordance with Articles 10(1) and 21(1), these are rights recognised or established by national and/or Community law.

    12. The Complainant is the registered owner of the domain names fanuc.com and fanuc.co.jp.

    13 .The name FANUC is a coined term derived from “Factory automation numerical control”.

    14. FANUC UK Limited offers servicing / repairs and spare parts for its systems.

    15. The main website of FANUC UK Limited is at www.fanucrobotics.co.uk.


    16.The domain name fanuc-cnc ( "the disputed domain name") was registered on July 16, 2008.

    17. According to information received from EURid the registrant of the disputed domain name is Web Editor.

    18.  As of January 23, 2014 the website to which the disputed domain name resolved promoted the supply of services, including repairs, relating to CNC systems of competitors of the Complainant as well as to the Complainant’s own systems.

    19. The website carried links to third party sites that are controlled by Respondent. At least one of the sites leads to a further site advertising the products of Complainant’s competitors.

    20. As at January 15, 2015 a disclaimer had been added at the bottom of the homepage of the website at the Domain stating that the Respondent was not affiliated to the Complainant.

    21. The Domain Name is confusingly similar to the Complainants’ FANUC trade mark, disregarding the domain suffix.

    22. The Domain Name wholly incorporates the Complainant's FANUC trade mark and differs from the trademark only by addition of a hyphen and the term CNC. This term fails to dispel the connection between the Domain Name and the trade mark; indeed it reinforces the link because the term CNC describes exactly the systems supplied, serviced and repaired by the Complainant.

    23. Respondent has no rights or legitimate interests in the Domain Name. The Complainant submits that, for the reasons stated below, it has made a prima facie case to that effect and the burden then shifts to the Respondent to rebut that case.

    24. The Complainant has no association with the Respondent and has never authorised or licensed the Respondent to use its name.

    25. The Respondent is using the website at the disputed domain name to sell spares for the Complainant’s products and to offer servicing and repair services for the Complainant’s products. In particular, the Respondent uses the website to sell spares for the Complainant’s products and to offer servicing and repairs to Complainant’s products.

    26. The Respondent cannot make a case that it is a reseller or distributor of the Complainant’s goods and by that means acquire a right or legitimate interest in the disputed domain name. That is so because the website to which the disputed domain name resolves fails to disclose accurately and prominently  the Respondent’s relationship with the trade mark holder; on the contrary, the Respondent has copied and used the Complainant’s red and yellow branding / logo to try and give the impression that it is, or is officially connected with, the Complainant.

    27. The Respondent’s belated addition of a disclaimer on the website is an admission that the website failed to disclose the Respondent’s status accurately and prominently; and indeed that remains the position given that the disclaimer is subtly placed at the bottom of the site.

    28. As to Article 21(2)(b), there is no evidence that the holder of the disputed domain name has been commonly known by the name comprised in the domain name.

    29. As to Article 21(2)(c), there is no evidence of any legitimate and non-commercial or fair use of the disputed domain name. Indeed, it is clear that the Respondent was out for commercial gain.

    30. The Complainant also relies on the matters specified below in relation to bad faith as constituting further evidence that the Respondent lacks rights or legitimate interests in the disputed domain name.

    31. Although it is sufficient for the Complainant to succeed to establish lack of rights and legitimate interests, the Complainant also contends that the disputed domain name has been registered or used in bad faith.

    32.  The disputed domain name was registered or is being used in bad faith.

    33. The Complainant relies on the following:

    Disrupting competitor – pursuant to Article 21(3)(c) of the Regulation (EC) 874/2004.

    34. The Respondent is using the Domain to run a business in open competition with the Complainant in the sale of the Complainant’s spare parts and repair of the Complainant’s equipment, contrary to Article 21 and to conduct it by using a domain name registered primarily to disrupt the rival’s business. The Respondent is trying by means of the domain name to divert or siphon off as many customers as it can and to get the business for itself. That is clearly disrupting the business of a competitor as it is interrupting the progress of that business.

    Intent to confuse – pursuant to Article 21(3)(d) of the Regulation (EC) 874/2004

    35. The Respondent is also seeking to create the impression through the disputed domain name and associated website copying the Complainant’s branding / logo that it is operating under the sponsorship, affiliation or endorsement of the Complainant.

    36. This is aggravated by using the disputed domain name to offer repairs to and spares for competitor products.

    37. The disputed domain name also seeks to create the likelihood of confusion with the Complainant’s mark. As it offers repair of and spares for Complainant’s products and also competitor products there has been bad faith registration and use.

    38. The Complainant adds that the Respondent has specifically acted in a deceptive manner by giving the impression that the sites on the “links” page are third party sites whereas many of them are controlled by the Respondent itself.

    39. The Complainant also relies on the fact that the Respondent has not responded to, let alone denied, the assertions of bad faith in the various pre-action communications by the Complainant.

    40. The Second Complainant therefore seeks transfer of the Domain in accordance with Article 22(11) of Regulation (EC) 874/2004.

    41. The Second Complainant satisfies the general eligibility criteria set out in Article 4(2)(b) of Regulation (EC) 733/2002.

    42. The Second Complainant is an undertaking having its registered office within the Community per Article 4(2)(b)(i) of Regulation (EC) 733/2002.
  2. Respondent
    The Respondent did not file a Response in this proceeding.
 
Discussion and Findings
Under Article 21(1) of Regulation (EC) 874/2004 (“the Regulation”), the disputed domain name may be revoked if

it is identical or confusingly similar to a name in respect of which a right is recognized or established by national and/or Community law, for example the rights specified in Article 10(1) of the Regulation if it has been registered by its holder without rights or legitimate interests in the disputed domain name or if it has been registered or is being used in bad faith.

Accordingly, the first obligation on the Complainant is to establish a right that is recognized or established by national and/or Community law, such as the rights mentioned in Article 10(1).

Article 10(1) of the Regulation refers to: “registered national and community trade marks, geographical indications or designations of origin, and, in as far as they are protected under national law in the Member-State where they are held: unregistered trade marks, trade names, business identifiers, company names”.

In the present case the Complainant relies on registered national and community trademarks for FANUC and, in particular, the following:

a.    UK trade mark number 910676 dated June 13, 1967 - word mark for FANUC in class 9.

b. UK trade mark number 1182663 dated October 1, 1982 - word mark for FANUC in class 7.

c. UK trade mark 2337783 dated July 15, 2003 - word mark for FANUC in classes 7 and 9.

d. International trade mark no. 948323 designating the EU dated June 11, 2007 - word mark for FANUC in classes 7, 9, 37 and 42, (hereinafter collectively referred to as "the FANUC trademark").

The Panel has examined copies of the registration certificates for each of the trademarks and finds that they are all registered in the name of the First Complainant. The evidence is that the Second Complainant is the United Kingdom  subsidiary of the First Complainant. On that basis, the Panel accepts the submission and evidence of the Complainants and finds that both Complainants have the trademark rights required by Regulation 21 and that they are entitled to bring this proceeding. The Complainants are hereinafter referred to collectively as “the Complainant” except where it is necessary to refer to them separately.

The Complainant also submits that it has common law trademark rights in FANUC and has presented a persuasive and well-argued case for that proposition. It is clear that Complainant has those rights and probably rights in FANUC-CNC as well. However, as the Complainant's registered rights are so clear, it is not necessary to pursue the issue of common law trademark rights.

The Complainant also submits that the disputed domain name is registered in the name of the Respondent as the registrant of the domain name. The Panel has examined the evidence submitted by the Complainant in support of that submission, namely an email from EURID dated January 22, 2015 and the attached WHOIS dated January 21, 2015, both of which reveal that the disputed domain name is registered in the name of the Respondent. The Panel therefore accepts the Complainant's submission in that regard and finds that the Respondent is the registrant of the disputed domain name.

Identical or Confusingly Similar

The next question that arises is whether the disputed domain name is identical or confusingly similar to the FANUC trademark. The domain name consists of the trademark and the letters or term "cnc", followed by the generic Top Level Domain ".eu" which of course, as it is well-established, is ignored when making this comparison. That being so, the Panel finds that the disputed domain name is confusingly similar to the trademark, as the evidence establishes that "cnc" is known as an abbreviation for computer numerical control which is known as the generic description of a major product of the Complainant. The objective bystander, making a comparison between the domain name and the trademark, would therefore conclude that the domain name was invoking the trademark of the Complainant and its prominent product and would find the domain name confusingly similar to the trademark. That view is well established and supported by several Panel decisions: see CAC Overview of CAC panel views on several questions of the alternative dispute resolution for .eu domain name disputes, page 31 and the decisions there cited.

Rights and Legitimate Interests

The next question that arises is whether the disputed domain name "... has been registered by its holder without rights or legitimate interests in the name."

The Complainant submits that this is so and its submissions and evidence make that conclusion clear.

First, the Complainant says that the Complainant has no association with the Respondent and has never authorised or licensed the Respondent to use its name. The Panel agrees that this fact alone shows that the Respondent has no rights or legitimate interests in the domain name. The case is a clear one of Respondent simply taking the Complainant's trademark, adding an abbreviation for its known and prominent product and then using the resulting domain name, all without authority or licence. The Panel accepts the evidence to that effect. There is no way in which such conduct can give rise to a right or legitimate interest in a domain name and the Panel so finds in the present case.

25. Secondly, the Complainant points to the fact that the Respondent is using the website to which the disputed domain name resolves to sell spares

for the Complainant’s products and to offer servicing and repair services

for the Complainant’s products. In particular, the Respondent uses the website to sell spares for the Complainant’s products and to offer servicing and repairs to Complainant’s products. The Panel has examined the exhibits relied on by the Complainant and finds that the Complainant's submission is correct. The website is populated by innumerable references to service and parts for Fanuc products, "new and refurbished Fanuc products", new Fanuc equipment and the like, to the extent that the internet user could not but conclude that this is an authorised and official site offering the extensive Fanuc goods and services being promoted and with Complainant's authority. In fact, as the Complainant's evidence shows, it has "never authorised or licensed the Respondent" to trade on the Complainant's name in this way. The situation is made worse by the fact that the Respondent is using the Complainant's FANUC name and trademark to offer repairs and spare parts for competing products. The most egregious aspect of the website and its contents is that it presents itself by name as a Fanuc site, which the reader could not but think means that the Complainant has approved or consented to this use of its own name. As the Complainant also points out, the use of the Complainant's colours is another serious misrepresentation. There is no need to analyse this evidence further. Suffice to say that having regard to the Panel has examined it all in detail and finds that it supports the Complainant's allegations and proves conclusively that the Respondent has no rights or legitimate interest in the disputed domain name and none that could arise by virtue of Article 21(2)(a)of the Regulation.

The Complainant also submits that there is no evidence that the Respondent has been commonly known by the domain name within the meaning of Article 21(2)(b) of the Regulation and the Panel agrees with that submission and so finds.

The Panel also submits that there is no evidence that the domain name has been used for any legitimate and non-commercial or fair use within the meaning of Article 21(2)(c) of the Regulation and the Panel agrees with that submission and so finds.

All of these factors go to show first, that the Complainant's detailed submission shows that the Complainant has proved more than a prima facie case that has not been rebutted, as the Respondent has not filed a Response. But the Complainant's case also shows that the Respondent could not prove that it has such a right or interest.

The Panel also finds that on the evidence the Respondent could not bring itself within any of the provisions of Article 21(2) of the Regulation showing how a right or legitimate interest might be established.

It is also nothing to the point that the Respondent has belatedly added what it probably regards as a disclaimer. But it is contained so far into the website that in all probability few internet users would see it and, if they did, the dominant effect of the initial interest confusion created by the brazen and extensive content of the site means that it would have no effect.

Bad Faith

In view of the Panel's decision on the previous elements it is not strictly necessary to discuss the allegation that the Respondent registered and has used the disputed domain name in bad faith. However, for completeness and as the Complainant has gone to some effort to prepare a persuasive case on this issue, the Panel will address some remarks on the subject.

The Complainant submits that the disputed domain name was registered or is being used in bad faith and relies, first, on the following Article 21(3)(c) of the Regulation and submits in that regard that the Respondent is using the disputed domain name to run a business in open competition with the Complainant in the sale of the Complainant’s spare parts and repair of the Complainant’s equipment and to conduct it by using a domain name registered primarily to disrupt the rival’s business. The Respondent is trying by means of the domain name, it is said, to divert or siphon off as many customers as it can and to get the business for itself. That is, the Complainant submits, clearly disrupting the business of a competitor as it is interrupting the progress of that business As the Panel has already indicated, it has examined the screenshots from the website which are exhibits in the proceeding and finds that they clearly establish the propositions contended for by the Complainant.

The Complainant then submits that within the meaning of Article 21(3)(d) of the Regulation the Respondent is also seeking to create the impression through the disputed domain name and associated website copying the Complainant’s branding and logo that it is operating under the sponsorship, affiliation or endorsement of the Complainant. This is aggravated, it is submitted, by using the disputed domain name to offer repairs to and spares for competitor products. Again, the Panel finds on the basis of examining the website that this submission is correct and so finds.

The Complainant also submits that the disputed domain name create the likelihood of confusion with the Complainant’s mark. As it offers repair of and spares for Complainant’s products and also competitor products, it is submitted that there has been bad faith registration and use. The Panel agrees and so finds.

The Complainant adds that the Respondent has specifically acted in a deceptive manner by giving the impression that the sites on the “links” page are third party sites whereas many of them are controlled by the Respondent itself. The Panel finds from its own examination of the links and what they reveal that this is correct and so finds.

The Complainant also relies on the fact that the Respondent has
not responded to, let alone denied, the assertions of bad faith in the
various pre-action communications by the Complainant. The Panel is also of the view that this conduct exacerbates the bad faith.

Accordingly, the Panel finds that the disputed domain name has been registered and used in bad faith within the meaning of Article 21 (3) of the Regulation.

The Complainant has therefore made out a strong case that all of the elements of its claim have been established.
 
Decision
For all the foregoing reasons, in accordance with Paragraphs B12 (b) and (c) of the Rules, the Panel orders that the domain name fanuc-cnc be transferred to the Second Complainant.
 
Panelists
  • Neil Anthony Brown
Date: 2015-04-30
Annex 1
I.      Disputed domain name: fanuc-cnc


II.     Country of the Complainant: Japan and the United Kingdom; country of the Respondent: United Kingdom.

III.    Date of registration of the domain name: July 16, 2008.

IV.    Rights relied on by the Complainant (Art. 21 (1) Regulation (EC) No 874/2004) on which the Panel based its decision:
        1.    trademark registered in the United Kingdom, reg. No. 910676, for the term FANUC, filed on June 13, 1967, registered on June 13, 1967 in respect of goods and services in class 9.

        2.   trademark registered in the United Kingdom, reg. No. 1182663, for the term FANUC, filed on October 1, 1982, registered on October 1, 1982 in respect of goods and services in class 7.

       3.   trademark registered in the United Kingdom, reg. No. 2337783, for the term FANUC, filed on July 15, 2003, registered on December 12, 2003 in respect of goods and services in classes 7 and 9.

        4.   International trademark designated for the EU dated June 11, 2007, reg. No. 948323, for the term FANUC, registered in respect of goods and services in classes 7,9,37 and 42.
        
        5.   geographical indication:
        6.   designation of origin:
        7.   unregistered trademark:yes
        8.   business identifier:
        9.   company name:
       10.  family name:
       11.  title of protected literary or artistic work:
       12.  other:

V.    Response submitted: No

VI.   Domain name is confusingly similar to the protected rights of the Complainant.

VII.  Rights or legitimate interests of the Respondent (Art. 21 (2) Regulation (EC) No 874/2004):
        No.
        Why: First, the Complainant has no association with the Respondent and has never authorised or licensed the Respondent to use its name. The Respondent is using the website to which the disputed domain name resolves to sell spares for the Complainant’s products and to offer servicing and repair services for the Complainant’s products. The Respondent is using the Complainant's FANUC name and trademark to offer repairs and spare parts for competing products. The Respondent has not been commonly known by the domain name. There is no evidence that the domain name has been used for any legitimate and non-commercial or fair use and the Panel also finds that that submission is correct.

VIII. Bad faith of the Respondent (Art. 21 (3) Regulation (EC) No 874/2004):
        1. Yes
        2. Why: The Respondent is using the disputed domain name to run a business in open competition with the Complainant and to conduct it by using a domain name registered primarily to disrupt the rival’s business. Respondent is trying by means of the domain name to divert or siphon off as many customers as it can and to get the business for itself; that is disrupting the business of a competitor as it is interrupting the progress of that business. The Respondent is also seeking to create the impression that it is operating under the sponsorship, affiliation or endorsement of the Complainant. This is aggravated by using the disputed domain name to offer repairs to and spares for competitor products. The disputed domain name creates the likelihood of confusion with the Complainant’s mark. The Respondent has specifically acted in a deceptive manner by giving the impression that the sites on the “links” page are third party sites whereas many of them are controlled by the Respondent itself. The Respondent has not responded to, let alone denied, the assertions of bad faith in the various pre-action communications by the Complainant.

IX.   Other substantial facts the Panel considers relevant:

X.    Dispute Result: Transfer of the disputed domain name to the Second Complainant Fanuc UK Limited.

XI.   Procedural factors the Panel considers relevant:

XII.  If transfer to Complainant Is Complainant eligible? Yes.