[Indexed as: Marioff v. Ultra Fog]
[Indexed as: HIFOG.com]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Case No. D2000-0521
Commenced: 8 June 2000
Judgment: 26 July 2000
Presiding Panelist: Knud Wallberg
Domain name - Domain name dispute resolution policy - Legitimate interest - Bad faith registration - Bad faith use - Identical - Confusingly similar - Trademark - Parties competitors - Generic term - Degenerated mark - Jurisdiction - Device mark - Community directive - Perception - Hi-Fog.
Complainant was owner of trademark registrations in at least 16 countries for the mark HI-FOG in connection with fire extinguishing products since 1992. Respondent, also doing business in fire extinguishing, registered the domain name hifog.com in April 1999. Both parties are based in Sweden.
HELD, Name Transferred to Complainant
The Panel does not have the power to make a binding decision on the question of whether the term Hi-Fog is a trademark or a generic term. The Panel is, however, competent to take a position on the question for the purpose of making a decision in the case before it.
It is undisputed that Complainant is the holder of several valid registrations of a device mark containing the word Hi-Fog. Based on the relevant trademark laws, the fact that the mark is used by some enterprises within some sectors as an apparent generic term is not sufficient proof of degeneration. Furthermore, the evidence provided by Respondent does not necessarily show that the term is used in a generic sense. Also, no evidence has been furnished that the word Hi-Fog can be looked up in a dictionary. The Panel must therefore base its decision on the assumption that Complainant enjoys full rights in the trademark Hi-Fog.
Respondent has not presented evidence showing that they have any rights to support their registration and use of the domain name. It does not suffice that Respondent has the perception that the mark is a generic term in order to demonstrate legitimate interest in the domain name. Degeneration has not been proven to have occurred.
The domain name has been registered and is being used in bad faith. Respondent has tried to attract Internet users to its website by using a domain name that is almost identical to the trademark of the Complainant. Being close competitors, it is reasonable to assert from the facts that Respondent and Complainant have profound knowledge of each other, including the trademarks used. Also, Respondent has been using a pointer to re-direct traffic from the HIFOG.com site to Respondent's ULTRAFOG.com site.
Policies referred to
Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999
Statutes referred to
Community Directive on Trademarks (Directive 89/104), Article 12,2,a
Cases referred to
Zero International v. Beyonet, ICANN Case No. D2000-0161 (WIPO).
Allocation Network v. Steve Gregory, ICANN Case No. D2000-0016 (WIPO).
Wallberg, Panelist: -
1. The Parties
The Complainant in this administrative proceeding is Marioff Corporation Oy, Finland, represented by Attorney-at-law Carl-G Leissner, Sweden.
The Respondent is Ultra Fog AB, Sweden, represented by Attorney-at-law Michael Plogell, Sweden.
2. The Domain Name and Registrar
This dispute concerns the domain name <hifog.com>
The registrar with which the domain name is registered is Network Solutions Inc., Herndon, Viginia, USA.
3. Procedural History
A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on May 29, 2000, and the signed original together with four copies was received by the WIPO Center on May 31, 2000. The WIPO Center sent an Acknowledgement of Receipt to the Complainant, dated May 30, 2000.
On May 30, 2000, a Request for Registrar Verification was transmitted
to the Registrar, NSI. On May 31, 2000 NSI confirmed by e-mail that NSI
was in receipt of the
Complaint sent to NSI by the Complainant, the domain name <hifog.com>
was registered with NSI and that the Respondent was the current registrant
of the name. The
Registrar also forwarded the requested WHOIS details, confirmed that
the Uniform Domain Name Dispute Resolution Policy was in effect and stated
that the domain name
was on "Active" status.
The policy in effect is Network Solutions 5.0 Service Agreement. There
is no evidence that the Respondent ever requested that the domain name
at issue be deleted from
the domain name database. Accordingly, the provisions of Policy bind
the Respondent.
On June 2, 2000 the Complaint was amended by e-mail. The WIPO Center received the amendments by hard copy on June 6.
The assigned WIPO Center Case Administrator completed a Formal Requirements
Compliance Checklist on June 8, 2000. The Panel has independently determined
and
agrees with the assessment of the WIPO Center that the Complaint is
in formal compliance with the requirements of the Policy, the Rules for
Uniform Domain Name
Dispute Resolution Policy, as approved by ICANN on October 24, 1999
(the "Uniform Rules"), and the WIPO Supplemental Rules for Uniform Domain
Dispute Resolution
Policy, in effect as of December 1, 1999 (the "WIPO Supplemental Rules").
The required fees for a single-member Panel were paid on time and in the
required amount by
the Complainant.
No formal deficiencies having been recorded, on June 8, 2000, a Notification
of Complaint and Commencement of Administrative Proceeding (the "Commencement
Notification") was transmitted to the Respondent (with copies to the
Complainant, NSI and ICANN), setting a deadline of June 27, 2000, by which
the Respondent could file
a Response to the Complaint. The Commencement Notification was transmitted
to the Respondent by e-mail to the e-mail addresses indicated in the Complaint
and
specified in NSIs WHOIS confirmation, as well as to <[email protected]>.
In addition, the Complaint was sent by post/courier to the available postal
address.
A response to the Complaint was filed on June 27, 2000 and was acknowledged by the WIPO Center on June 28, 2000.
The Complainant had originally requested a three-member panel to be
appointed. This was apparently misunderstood by the Respondent who "confirmed"
the appointment
of a single member panel. Through e-mail correspondence the Complainant
agreed to revert from a three member panel to a single member panel.
Consequently, on July 13, 2000, the WIPO Center invited Mr. Knud Wallberg
to serve as a panelist in Case No. D2000-0521, and transmitted to him a
Statement of
Acceptance and Request for Declaration of Impartiality and Independence.
Having received on July 14, 2000, Mr. Knud Wallbergs Statement of Acceptance
and Declaration of Impartiality and Independence, on July 18, 2000, the
WIPO Center
transmitted to the parties a Notification of Appointment of Administrative
Panel and Projected Decision Date, in which Mr. Knud Wallberg was formally
appointed as the
Sole Panelist. The Projected Decision Date was July 27, 2000. The Sole
Panelist finds that the Administrative Panel was properly constituted and
appointed in accordance
with the Uniform Rules and WIPO Supplemental Rules.
The Administrative Panel shall issue its Decision based on the Complaint
and the Response, the e-mails exchanged, the Policy, the Uniform Rules,
the WIPO
Supplemental Rules.
4. Factual Background
The Complainant Marioff Oy (Marioff) is working in the business area of fire extinguishing. Marioff has several subsidiaries, inter alia in Sweden. The total annual turnover in the group amounts to approximately USD 54.216,000 (figures from 1999).
Marioff has registered "Hi-fog" as a trademark in at least 16 countries.
Appended to the complaint was the list with registrations of the trademark
"Hi-fog". <hi-fog.com> has
been registered as a domain name since April 15, 1998 and has since
then been in use.
The Marioff group also has a subsidiary with the name "Marioff Hi-fog Oy"; a company limited by shares registered in Finland.
The Respondent Ultra Fog AB, (Ultra Fog) is a company registered in
Sweden and working in the business area of fire extinguishing. It has an
annual turnover of USD
440.000 (figures from 1998).
Ultra Fog registered the domain name <hifog.com> in April 1999
5. Parties Contentions
A.Complainant
The claim regards the protected and registered trademark Hi-fog.
Marioff holds more than 800 patents and/or patents pending in the area of fire extinguishing products and to the major part regarding a product which is involved in a method of fire extinguishing what is called "hi-fog". Mr Göran Sundholm, today's major shareholder and CO of Marioff was the inventor of the method.
Marioff has registered "Hi-fog" as a trademark in at least 16 countries.
The mark has been registered since 1992. Appended to the complaint was
a list showing the
registrations of the trademark "Hi-fog". <hi-fog.com> was registered
as a domain name on April 15 1998 and has since then been in use. The Marioff
group also has a
subsidiary with the name "Marioff Hi-fog Oy", a company limited by
shares registered in Finland.
The Marioff group and Ultra Fog are working (solely) in the area of
fire extinguishing and are to be regarded as competitors in the Swedish
market but also elsewhere
including within the market with applications on vessels.
<hifog.com> was originally used as a site (home page) with information
from Ultra Fog and its products. In September 1999 a complaint was made
from Marioff to Ultra Fog
directly regarding use of the domain <hifog.com>. Marioff claimed
that Ultra Fog wrongfully used their registered trademark. Although Ultra
Fog answered Marioff and
claimed that Ultra Fog AB had the right to use the domain, the use
of the domain was shortly after this interrupted by Ultra Fog. Marioff
concluded than that the problem
then was over.
In the beginning of year 2000 Marioff noted that Ultra Fog had restarted to use the domain again. Now it was used as a pointer to Ultra Fogs own site.
"The pointer" (Pointer) states the following;
"Hifog is today an international accepted abridgement of highpressure based waterfog sprinkle system.
Various alternatives is available on the international market, one of htem (sic) is the Swedish alternative Ultra Fog.
Please search us on our website www.ultarfog.com" (sic)
On January 28, 2000, Marioff once again wrote to Ultra Fog complaining
about the use of the domain <hifog.com>. This time without any success
in the way that the use
has not been interrupted. In the Pointer it is alleged that "Hifog"
is an international accepted abridgement of high-pressure based water fog
sprinkler system, which the
Complainant contests.
The Complainant states that it is obvious that the domain name is more or less identical with the registered trademark, since only the hyphen is omitted.
Ultra Fog has no rights to a trade name registered by Marioff. Further
the only interest on behalf of Ultra Fog to use the domain is to be a parasite
on the registered
trademark Hi-fog.
The domain was registered by Ultra Fog in April 1999 while the trademark
was registered in Sweden in January 1993 (application July 1992). In Sweden
the trademark is
registered in Class 9 for Fire extinguishing equipment. The trademark
was registered in the United States 1995 in Class 9 for Fire extinguishers,
and fire hose nozzles.
Based on these facts Ultra Fog was therefore in bad faith when registering
its domain <hifog.com>.
Further shall be noted that in 1996 have Marioff made a complaint against
Ultra Fog regarding a possible patent infringement. Ultra Fog has had full
or very good knowledge
about Marioff and its products.
Ultra Fog has - which is seen by the wording in the Pointer - by using
the domain made an attempt to attract customers its own products, customers
which with a
likelihood to knowledge was looking for "Hi-fog" - the company behind
the trade mark.
In accordance with Paragraph 4(b),(i) of the Policy and for the reasons
described above, the Complainant requests the Administrative Panel appointed
in this administrative
proceeding issue a decision that <hifog.com> be transferred to the
Complainant.
B.Respondent
The Respondent claims that the word "hifog" is a generic term for high
pressure water fog sprinkler systems. To support the claim the Respondent
encloses several
examples (enclosures 1-11) that show the generic use of the word by
different professional entities among their customers.
Any trade mark rights that Marioff may have had must be considered degenerated.
Consequently, Ultra Fog has a legitimate right to use the term hifog when
they want to
inform the market about their marketing of such products, including
the use of the term as part of a domain name.
6. Discussion and Findings
According to Paragraph 15(a) of the Rules the Panel shall decide a complaint
in accordance with the Policy, the Rules and any rules and principles of
law that it deems
applicable.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1)that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
2)that the Respondent has no legitimate interests in respects of the domain name; and
3)the domain name has been registered and used in bad faith.
The question whether these criteria are fulfilled depends to a large
extent on whether the term Hi-fog is a trademark or whether it is a generic
term. The Panel notes that it
does not have the power to take a final and binding decision on this
point. That competence is left to the competent authorities in the jurisdictions
where such a claim may
be raised. The Panel is however competent to take a position on the
question for the purpose of making a decision in the case before it cf.
paragraph 15 of the Rules. The
position must be based on the facts presented in the case.
Complainants rights
It is undisputed that Marioff is the holder of several registrations
of a device mark containing the word Hi-fog, and that these registrations
are still valid. This includes
registrations in Finland and Sweden (where the Ultra Fog is located).
There is further no evidence that any of the registrations contains disclaimers
or other remarks to the
effect that the words Hi-fog is excluded from protection.
In addition, the trademark laws in both Finland and Sweden, which are
relevant for this case, are based on the Community Directive on Trademarks
(Directive 89/104). In
article 12, 2, a) of the directive it is stated that degeneration only
can occur if the mark as a consequence of the activity or inactivity of
the proprietor, has become the
common name in the trade for the product for which it is registered.
It is thus not sufficient proof of degeneration that the mark is used by
some enterprises within some
sectors as an apparent generic term. In addition to this principle
of law, the Panel has looked through the enclosures provided by the Respondent
and is of the opinion that
these do not necessarily show that the term is used in a generic sense.
The term is written by using both upper and lower case, and in some cases
reference could
actually be construed as a reference to the Complainants products.
In this context the Panel also notes, that no evidence has been furnished
that the word hifog can be looked up in a dictionary. This is contrary
to the situation in the
decisions in case D2000-0161 Zero International v. Beyonet concerning
the domain name <zero.com> and D2000-0016 Allocation Network v. Steve
Gregory concerning the
domain name <allocation.com> where the words "zero" and "allocation"
both are common words that can be found in dictionaries.
Under these circumstances the Panel finds that it must base its decision
on the assumption that the Complainant enjoys full and unlimited rights
in the trademark Hi-fog.
Paragraph 4, (a), (i) is thus satisfied.
Respondents legitimate interests
As to paragraph 4, (a), 2) cf. paragraph 4, (c) of the Policy the Panel
finds that the Respondent has not put forward evidence showing that they
have any rights to support
their registration and use of the domain name. The question is, whether
the fact that the Respondent has perceived the word hifog as a generic
term can lead to the
conclusion that the Respondent has a legitimate interest in the domain
name and has made legitimate fair use of it.
The Panel has considered this in depth. Based on the present facts,
degeneration has not been proven to have occurred. Under these circumstances
it does not suffice,
that the Respondent has the perception that the mark is a generic term,
in order to demonstrate that you have a legitimate interest in the domain
name. As stated above
this is a matter for the competent authorities to decide. Paragraph
4, (a), (ii) is thus also satisfied.
Bad faith
The third element is that the domain name has been registered and is used in bad faith cf. paragraph 4, (a), (iii) and 4, (b).
Marioff and Ultra Fog are engaged in the same area of business namely
production and sale of fire extinguishing systems. Being close competitors
it is reasonable to
assert from the facts presented in the case that they have profound
knowledge of each other including the trademarks used.
The Respondent has not contested that they have run a website under
the disputed domain name with the content (a "pointer") as described in
the Complaint and which
still appears on the website. Respondent has further not contested
the information about the previous content of their website as well as
the previous contacts between the
parties except for the alleged patent infringement.
Based on these facts it is the view of the Panel that the Respondent
through these acts has tried to attract Internet users to its website by
using a domain name that is
almost identical to the trademark of the Complainant, cf. paragraph
4, (b). Paragraph 4, (a), (iii) is thus also satisfied.
7. Decision
In view of the above circumstances and facts the Panel decides, that
the domain name registered by Respondent is identical to or quasi-identical
to the trademark in which
the Complainant has rights, and that the Respondent has no rights or
legitimate interests in respect of the domain name, and that the Respondents
domain name has
been registered and is being used in bad faith.
Accordingly, pursuant to Paragraph 4 (i) of the Policy, the Panel requires
that the registration of the domain name <hifog.com> be transferred
to the Complainant.
Knud Wallberg
Presiding Panelist
Dated: July 26, 2000
Domain Name Transferred