Red-Dot .com : Dashed #domain pursued by #German company in #UDRP

Germans love dashed domains, and the UDRP for Red-Dot.com confirms that.

The Complainant is Red Dot GmbH & Co. KG, Germany, that operates from the matching .ORG. They also operate the .DE, with a dash.

The Respondent is the owner of a company, Mining Auger & Tool Works, Inc., claiming rights to the RED DOT mark, along with their right not to use the domain. They opt to operate from Jackhammers.com instead. They registered Red-Dot.com in 1998.

Most of the UDRP sleuth work performed by the sole panelist involved trying to locate the “RED DOT” mark in early 20th century photos provided by the Respondent. There was no such proof, but the panelist still gave the Respondent the benefit of the doubt.

In the end, the decision was to let the Respondent keep the domain, and a finding of Reverse Domain Name Hijacking was declined.

Full details on the decision follow:

Red Dot GmbH & Co. KG v. Perfect Privacy, LLC / Schuweiler, R. & S.
Case No. D2019-0785

1. The Parties

The Complainant is Red Dot GmbH & Co. KG, Germany, represented by KNPZ Rechtsanwälte, Germany.

The Respondent is Perfect Privacy, LLC, United States of America (“United States” or “US”) / Schuweiler, R. & S., United States, self-represented.

2. The Domain Name and Registrar

The disputed domain name <red-dot.com> (the “Disputed Domain Name”) is registered with Network Solutions, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 5, 2019. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain name. On April 7, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 8, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on April 9, 2019.

The Center verified that the Complaint together with the amendment 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 10, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 30, 2019. The Response was filed with the Center on April 24, 2019. On May 5, and 6, 2019, the Center received Supplemental Filings from the Complainant and the Respondent, respectively. For reasons discussed below the Panel will admit these filings. The Center appointed Nick J. Gardner as the sole panelist in this matter on May 10, 2019. 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.

On May 16, 2019, the Panel issued a procedural order (the “Procedural Order”) directing the Respondent to file an affidavit which it had offered to file in its Supplemental Filing. The Respondent filed that affidavit on May 22, 2019. On May 24, 2019 the Complainant filed submissions and evidence in response to this affidavit in accordance with permission granted by the Panel in the Procedural Order.

4. Factual Background

The Complainant is an organisation based in Germany which promotes each year a series of design awards. It hosts annually “the Red Dot Award” which is awarded in various categories to the winners of a competition for outstanding product design. This award dates back to 1955. There is no dispute that it is a prestigious competition. The 2018 award competition received over 6,000 entries. The Complainant owns various trademarks which are for the words “red dot” (or sometimes in conjoined form i.e. “reddot”). Some of these trademarks are for the words on their own – for example the earliest trademark placed in evidence is German trademark no. DE39971205, registered on April 6, 2000. Most of the trademarks include the words as part of a figurative design. The Complainant’s trademarks include two US trademarks – US trademark no. 4808690, registered on September 8, 2015, for a design including the words REDDOT AWARD, and US trademark no. 4577987, registered on August 5, 2014, for the words RED DOT LIVING. The Complainant’s trademarks are referred to collectively in this decision as the “Complainant’s RED DOT trademark”. The Complainant has registered the domain name <red-dot.org> and its principal website is linked to that domain name.

The Disputed Domain Name was registered on December 12, 1998.

The Disputed Domain Name resolves to a webpage containing automatically generated links. None of these relate to the Complainant or its design awards. It appears that this page is automatically generated by the Registrar.

Details as to the Respondent and its business are discussed below.

5. Parties’ Contentions

A. Complainant

The Complainant says that the Disputed Domain Name is identical to the Complainant’s RED DOT Trademark.

It says the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and/or in the words Red Dot, as it is not the Respondent’s name.

It says that the registration and use of the Disputed Domain Name is in bad faith. It says that the Disputed Domain Name was registered primarily with the purpose of selling renting or transferring it to the owner of the Complainant’s RED DOT Trademark at a profit. It also says that the Disputed Domain Name was registered to prevent the trademark owner from using it, and that there is no conceivable reason why the Respondent should register the Disputed Domain Name but then not use it.

The Complaint was initially filed against a privacy service. Once the underlying Respondent was identified by the Registrar the Complainant amended its Complaint. In doing so it said as follows:

“The company of the Respondent appears to act as a producer, distributor and service provider for jackhammers and other woodworking tools (“https://us.kompass.com/c/mining-auger-tool-works- inc/us139208/”). The company operates the website “www.jackhammers.com”. This website obviously does not contain any products and/or services in relation with the term “Red Dot”. Please find attached the results of a SAEGIS trademark research, proving that neither Mr. Schuweiler nor his company have registered any trademarks in the USA or in Germany containing the term “Red Dot”. In fact the company of Mr. Schuweiler has only registered three U.S. Federal Trademarks (AIRREX LUBE, AIRREX ICE-OUT, and AIRREX), all of them having nothing to do with the term “Red Dot”. Thus, the Respondent has no rights or legitimate interests in respect of the domain [name] <red-dot.com>. The domain [name] was obviously registered and is being used in bad faith”.

B. Respondent

The Respondent (i.e. Mining Auger & Tool Works, Inc. – see below) has filed a detailed Response. In summary it says that the Respondent is in the business of supplying mining and drilling bits and augers and that it promotes those under the brand name “red dot” which it has used for more than 80 years. It says that it is entitled to register the Disputed Domain Name (its principal website would appear to be linked to the domain name <jackhammers.com>) and then not use it. It also says it was unaware of the Complainant when it registered the Disputed Domain Name. It also says many other people use the term “red dot” in various ways and the Complainant does not have exclusive rights in that term.

Following the Procedural Order (see above) the Respondent provided an affidavit from Robert Schuweiler.

In that affidavit Mr. Schuweiler stated as follows:

– He is an owner in what he describes as “a family business that is registered with the State of Minnesota in United States of America under the name “Mining Auger & Tool Works, Inc.”;
– The origins of that business date back to the 1920’s when his grandfather purchased the business;
– For more than 80 years the business has used the trademark RED DOT to identify products the business sells, including consumable drill rods (mining augers), couplings, rock drill bits, hand tools, and edge tools;
– In 1998 he registered the Disputed Domain Name on behalf of the business. He did so as it corresponds with the RED DOT trademark the business uses;
– Under the state and federal laws of the United States the business owns trademark rights in the mark RED DOT;
– Since 1998 he has renewed the Disputed Domain Name’s registration and the business has continued to use the RED DOT trademark on products it sells;
– He was not aware of the existence of the Complainant in 1998 when he registered the Disputed Domain Name and only became aware of the existence of the Complainant when he received the present Complaint;
– In early 2019, before receiving the Complaint, he received an email solicitation to purchase the Disputed Domain Name which he has exhibited to the Response. This solicitation was from lawyers who did not identify their client.

6. Discussion and Findings

6.1 Procedural Matters

A. Procedural matters – Identity of the Respondent

The Panel notes this is a case where one respondent, (“Perfect Privacy, LLC”), appears to be a privacy or proxy service.

The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.4.5, as follows:
“In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.

Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent.”

In the present case the Panel considers the underlying Respondent to be Schuweiler, R. & S. (which in the light of Mr. Schuweiler’s evidence the Panel takes as including a reference to his company, Mining Auger & Tool Works, Inc.) and references to the Respondent are to include that company.

B. Procedural Matters – admission of supplementary material.

It seems to the Panel that the Complainant could not readily have anticipated matters raised in the Response, given that no active website was linked to the Disputed Domain Name, a privacy service was used and no reply was sent to the solicitation sent by the Complainant’s lawyers seeking to buy the Disputed Domain Name. The Panel will therefore allow the Complainant’s Supplementary Statement and then, in fairness, the Respondent’s Supplementary Statement in reply to this material. The Panel also allows the further material filed in accordance with the Procedural Order.

6.2 Substantive Matters

To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel in respect of the Disputed Domain Name that:

(i) The Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) The Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

It is clear that the Complainant has rights in the Complainant’s RED DOT Trademark. The Complainant has submitted detailed evidence that it is the owner of various trademarks which include the words RED DOT. Most of the trademarks are device marks but each features prominently as part of the registered device the words RED DOT and in these circumstances the Panel concludes the Disputed Domain Name is confusingly similar to each of these trademarks. Confusing similarity between a domain name and a device mark which includes words or letters is a readily accepted principle where the words or letters comprise a prominent part of the trademark in question – see for example EFG Bank European Financial Group SA v Jacob Foundation, WIPO Case No. D2000-0036; and Sweeps Vacuum & Repair Centre, Inc. v Nett Corp, WIPO Case No. D2001-0031.

It is well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar – see for example Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.

The Disputed Domain Name is therefore confusingly similar to the Complainant’s RED DOT Trademark and paragraph 4(a)(i) of the Policy has been satisfied.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:

(i) before any notice to the Respondent of the dispute, use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent has been commonly known by the Disputed Domain Name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent says that it has been using the term “red dot” in relation to its mining augers and bits for over 80 years. The Respondent says that the various materials it has annexed to the Response establish its case in this regard. If the Panel accepts the Respondent’s evidence then it is clearly the case that (i) above applies. The Complainant appears to dispute this evidence, so a consideration of the evidence is needed.

This material in question is, in the opinion of the Panel, not entirely satisfactory. It comprises seven photographs each forming a separate Annex to the Response. Annex 1 shows a cylindrical metal object clearly imprinted with the Respondent‘s name and logo, a marking “www.jackhammers.com” and the words “Red Dot” (with a stylized circle between the two words). It also bears a part number and other text. It is undated. Annex 2 is labeled “current examples of our Red-Dot bits” and contains a photo of three more similarly labeled cylindrical items. It too is undated. Annex 3 contains another photo of several items. It is labeled “current examples of our Red-Dot Bits – note distinctive center dot hole”. This appears to be an axial view of the same items as in Annex 2 so no markings are visible. Annex 4 is a sepia photograph of a miner working in a tunnel which has been labeled “miner using red dot-bit for blast holes in 1950s”. It is not possible to see the detail of the bit in the photograph so it does not establish what (if any) markings the bit had. Annexes 5, 6, and 7 are similar – all showing what are labeled as historical photographs of a “Red-Dot bit” or coupler usage dating back to the 1930s, but nowhere in these photographs can the detail of any markings on the drill bits or couplers be seen.

Mr. Schuweiler dealt with this material in his affidavit. He said as follows:

– Annexes 1 to 3 show items that his business sells.

– Annexes 4 to 7 are photographs of activities using equipment which included “Red Dot” branded items. He says that although the trademark is not readily identifiable in the photographs, at the time the photographs were taken the business sold the items in question marked with the “Red Dot” brand.

The Complainant has (as permitted by the Panel) responded to Mr. Schuweiler’s evidence. It says there is no evidence that the business in question has any trademark rights in the term “RED DOT” and it is clear it has never used the Disputed Domain Name. It says no “Red Dot” branded products are offered for sale at the website the business uses located at “www.jackhammers.com”. It also includes a further copy of the Annex 5 photograph in the form of a print out from the Flickr photograph hosting website which it says is from a book called “The Legend of Ingersoll Rand” and shows use of equipment in Australia and disputes it has anything to do with the Respondent.

The Panel has to deal with this evidence as best it can. It does not seem that the Respondent has any registered trademark rights in the term “Red Dot” or “Red-Dot”. The Panel does not have enough information to know whether it might have unregistered trademark rights in either of those terms, which is in any event a question of US law outside the Panel’s competence. The Panel does not however consider these issues matter so far as the Policy is concerned – if the Respondent can establish bona fide use of either of the terms “Red Dot: or “Red-Dot” commercially prior to the present dispute then its case succeeds. The question is whether the evidence does establish such use. The photographs of miners using equipment (Annexes 4 to 7) are still unsatisfactory even when explained by Mr. Schuweiler. It is misleading to say no trademark is “readily identifiable” in them. It is simply not possible to see in these photographs whether individual bits or any other equipment bore any markings of any sort and, if so, what those markings were. Mr. Schuweiler says they did, but his evidence does not explain where these photographs came from, who took them (the Panel infers it was probably not him given their likely age), or how he knows that the equipment in question included components that bore the “Red Dot” brand. The Panel is also not persuaded that the Flickr version of the Annex 5 photograph produced by the Complainant conclusively proves anything either. The Complainant’s case is that this shows usage in Australia. This assertion appears to be derived from a comment below the photograph which says (in French) that it is an Australian Mining Engineer. However the author of that comment also states in a previous comment that the legend to the photograph in the book in question states that it is a “Gordon Ingersoll hammer drill being tested in […] Philipsburg New Jersey” which is manifestly not in Australia. Ultimately the Panel declines to place any reliance one way or another of the photographs in Annexes 4 to 7 of equipment in use.

The Annex 1 and 2 photographs are however a different matter. They quite clearly show cylindrical metal objects marked with the Respondent’s name and the “www.jackhammers.com” website address together with the words “Red Dot”. The words are not hyphenated but are separated by a stylized roundel. The Respondent has not commented on these photographs one way or another. The Panel in the light of Mr. Schuweiler’s evidence is minded to accept that these photographs show that the Respondent has manufactured and presumably sold mining drill bits marked in this manner.

However the Complainant in its supplementary statement expressly raised the point that the website at “www.jackhammers.com” operated by the Respondent has no evidence of any sales of “Red Dot” branded products and noted that the Respondent had produced no evidence of even a single sale of a “Red Dot” branded product. The Panel has visited the “www.jackhammers.com” website and agrees that no such evidence can be found. It is rather unsatisfactory that Mr. Schuweiler has not produced more evidence in his affidavit dealing with this issue, which had been raised by the Complainant before the affidavit was prepared and filed. Ultimately however it seems clear to the Panel that on the balance of probabilities Annexes 1 and 2 establish that “Red Dot” branded products have been manufactured by the Respondent. Absent fraud or dishonesty – and none is suggested – there is no other credible explanation for the items shown in these photographs. The only issue then is as to timing. Mr. Schuweiler says this activity has been going on for over 80 years. The Panel does not think the evidence is clear in this regard – again Mr. Schuweiler does not make clear how he knows this. The items shown in Annexes 1 and 2 are marked with a website address, so clearly are not themselves examples of items that predate the Internet. However the Panel considers that it is more likely than not, given Mr. Schuweiler registered the Disputed Domain Name over 20 years ago, that such products were manufactured and sold prior to the date of the present Complaint. In reaching this conclusion the Panel has also taken into account the factors which are discussed below in relation to bad faith as to the nature of the Disputed Domain Name and the likely credibility of Mr. Schuweiler’s evidence as to having no knowledge of the Complainant or the Complainant’s RED DOT trademark.

Accordingly, the Panel finds that before any notice to the Respondent of the present dispute, the Respondent has used a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods and hence that the Respondent has established a legitimate interest. It follows that the Complainant has failed to establish that the second condition of paragraph 4(a) of the Policy has been fulfilled.

C. Registered and Used in Bad Faith

Whilst the Panel’s finding under Section B above is sufficient to enable a conclusion to be reached in relation to this Complaint, the Panel also rejects the Complainant’s claim that the Disputed Domain Name has been registered and used in bad faith.

The Panel finds that there is no evidence to suggest that the Disputed Domain Name has been registered and used in bad faith. The Respondent says it had never heard of the Complainant or its use of the term “Red Dot” when it registered the Disputed Domain Name. Given the evidence before the Panel that account seems to the Panel to be credible, and the Panel sees no reason to doubt the Respondent’s statement.

In reaching this conclusion the Panel has considered the Complainant’s case that the Respondent must have had the Complainant’s use of the term “Red Dot” in mind when it registered the Disputed Domain Name. The Panel finds that case to be unconvincing. The difficulty with that case is that the words “red” and “dot” are manifestly ordinary short English words which could have been independently derived. The Respondent says these words are widely used – whilst that to the Panel seems likely to be correct, the Respondent has not actually placed any examples in evidence. The Panel has no difficulty in accepting the Complainant’s evidence that it uses those words in relation to a series of prestigious design awards which it has hosted for many years. The Complainant is based in Germany but it would appear from the evidence that its reputation in this regard is at least to some extent international. The Wikipedia entry placed in evidence by the Complainant says it received over 15,500 submissions from over 70 countries in 2014. Previous winners of relevant awards include international companies such as Apple. However the precise extent of its reputation in the US is unclear to the Panel. The earliest US trademarks listed in its evidence date from 2014. Assessing this evidence as best it can, the Panel concludes there is nothing which suggests the Complainant’s reputation in the term “Red Dot” extends outside those with an interest in product design. Nothing suggests that term is a household name widely recognised more generally. Specifically there is nothing before the Panel which suggests that Mr. Schuweiler as the owner of a family company selling drilling equipment based in Minnesota, United States, would have known of the Complainant in 1998 when he registered two ordinary English word in conjoined form as the Disputed Domain Name. Nor is there any evidence which leads the Panel to conclude his evidence not to have heard of the Complainant prior to the present complaint is untrue.

The Panel also finds there is no evidence of use in bad faith. The Respondent is entitled to own and not use the Disputed Domain Name. There is no evidence it has targeted the Complainant and the fact that it did not even respond to an expression of interest in purchasing the Disputed Domain Name clearly indicates its motives were not as suggested by the Complainant.

Accordingly the Panel concludes there is no credible evidence to establish bad faith on the part of the Respondent and the Complainant has failed to discharge its burden of proof and has failed to establish that the third condition of paragraph 4(a) of the Policy has been fulfilled.

D. Reverse Domain Name Hijacking

The Respondent seeks a finding of Reverse Domain Name Hijacking (“RDNH”). Paragraph 15(e) of the Rules provides that if after considering the submissions, the Panel finds that the Complaint was brought in bad faith, for example in an attempt at RDNH, or was brought primarily to harass the domain-name registrant, the Panel shall declare in its decision that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. In assessing this issue the Panel adopts the approach in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.16:

“Reasons articulated by panels for finding RDNH include: (i) facts which demonstrate that the complainant knew it could not succeed as to any of the required three elements – such as the complainant’s lack of relevant trademark rights, clear knowledge of respondent rights or legitimate interests, or clear knowledge of a lack of respondent bad faith (see generally section 3.8) such as registration of the disputed domain name well before the complainant acquired trademark rights, (ii) facts which demonstrate that the complainant clearly ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint, including relevant facts on the website at the disputed domain name or readily available public sources such as the WhoIs database, (iii) unreasonably ignoring established Policy precedent notably as captured in this WIPO Overview – except in limited circumstances which prima facie justify advancing an alternative legal argument, (iv) the provision of false evidence, or otherwise attempting to mislead the panel, (v) the provision of intentionally incomplete material evidence – often clarified by the respondent, (vi) the complainant’s failure to disclose that a case is a UDRP refiling, (vii) filing the complaint after an unsuccessful attempt to acquire the disputed domain name from the respondent without a plausible legal basis, (viii) basing a complaint on only the barest of allegations without any supporting evidence.”

On balance the Panel does not consider the Complainant’s conduct warrants a finding of RDNH. The Respondent was entirely entitled to use a privacy service, and not to use the Disputed Domain Name but this made it impossible for the Complainant to establish all of the relevant facts prior to preparing the Complaint. That remained the case when the Respondent failed to reply to a solicitation from lawyers acting for the Complainant – whilst under no obligation to do so the Respondent could have then stated relevant information which might have led the Complainant to act differently. Accordingly the Panel on balance is not persuaded that the Complainant’s conduct falls within the above guidelines nor that it deserves the censure of a finding of RDNH.

7. Decision

For the foregoing reasons, the Complaint is denied. The Panel declines the Respondent’s request for a finding of Reverse Domain Name Hijacking.

Nick J. Gardner
Sole Panelist
Date: June 3, 2019

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