Aura Light International AB v. Mark Brazier-Jones

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Aura Light International

AB v. Mark Brazier-Jones

Case No. D2002-0332

1. The Parties

The Complainant is Aura Light International AB, Lumavagen, PO Box 508,

371 23 Karlskrona, Sweden. Its authorized representative is Monika Colak,

Verisign Sweden AB, SE-200 42 Malmö, Sweden.

The Respondent is Mark Brazier-Jones, Hyde Hall Barn, Sandon,

Buntingford, Hertfordshire, SG9 ORU, United Kingdom

2. The Domain Name and Registrar

The domain name at issue is <auralight.com>.

The Registrar is Network Solutions Inc, 505 Huntmar Park Drive,

United States of America.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center

("the Center") by e-mail on April 8, 2002, and a hardcopy

was received by the Center on April 16, 2002. The Center acknowledged

the receipt of the Complaint on April 11, 2002.

On April 12, 2002 the Center sent to Network Solutions a request for verification

of registration data. On April 17, 2002, Network Solutions confirmed

that it is the Registrar, that the Respondent is the Registrant of the domain

name <auralight.com>, and also provided details of the administrative,

technical and billing contact for the domain name.

The Center verified that the Complaint satisfied 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") and that payment was properly made. The Panel

is satisfied this is the case. On April 18, 2002, the Complaint was

properly notified in accordance with the Rules, paragraph 2(a), and the

administrative proceedings commenced.

On May 3, 2002 the Center received a response by e-mail. Since the Response

had several deficiencies, the Center sent a Deficiency Notification to the

Respondent on May 3, 2002. On May 7, 2002, the Respondent

informed the Center by e-mail that four signed hardcopies of the Response

had been sent to it, which were received by the Center on the same date.

On May 22, 2002, the Center notified the Parties that an Administrative

Panel, composed of a single member, Dr. Gerd F. Kunze, had been appointed

and that the Panelist had duly submitted a "Statement of Acceptance

and Declaration of Impartiality and Independence" to the Center.

An amended Response in reply to the Center’s Notification of Deficiency

was received in hardcopy on May 23, 2002, early enough to be transmitted

to the Panelist together with the hardcopy of the Complaint. The Panelist

sees no reason not to accept these attachments, which were already announced

in the timely e-mail Response, to be considered for the decision, only because

the mail arrived at the Center with a certain delay. The date scheduled

for issuance of the Panel’s decision is June 5, 2002.

4. Factual Background

A. Complainant

The Complainant is a manufacturer of high-quality light sources, in particular

fluorescent lamps. Its long life fluorescent lamps are used internationally

in many public places, such as the St. Gotthard Tunnel, the Berlin

Highway, and the Öresund bridge between Sweden and Denmark (these and

other examples are shown in Annex 3 to the Complaint).

The Complainant is, amongst others, the owner of trademarks for the wordmark

AURALIGHT in different countries, including Community Trade Mark No. 1115047

of July 10, 2000, (application date March 23, 1999)

for goods in cl. 9 of the International Classification, including optical

lamps and lanterns, luminous signs, neon signs, and parts and components

of these products (registrations of the wordmark AURALIGHT in Norway and

Switzerland have been applied for after the Community Trade Mark). It is

also the registered owner of the wordmark AURA in several countries, including

the United Kingdom (registration No. 1572833 of May 23, 1994,

for "lamps, luminaries, lamp support columns; parts and fittings for

all the aforesaid goods" in cl. 11), and of device marks, containing

the word AURA combined with a graphical device and sometimes with additional

text, such as "long life lights". Copies of these registrations

are included in Annex 8 to the Complaint.

The Complainant uses several domain names, containing its trademark AURALIGHT

in gtlds, such as <auralight.org>, <auralight.biz> and <auralight.info>,

and also in several cctlds.

B. Respondent

The Respondent has for a good number of years developed a business of designing,

manufacturing and selling to an international clientele a range of exclusive

furniture and home lighting (as opposed to the Complainant’s outdoor lighting).

This submission is documented by catalogues submitted together with the

Response.

The Respondent registered on February 17, 2000, the domain name

<auralight.com>.

5. Parties’ Contentions

A. Complainant

The Complainant submits that (1) the domain name <auralight.com>

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; (3) the domain name was registered

and is being used in bad faith.

According to the submissions of the Complainant it has established

a subsidiary in Great Britain and since 1994, has been represented

in the country. The Complainant has not submitted evidence for these submissions.

B. Respondent

According to the submissions of the Respondent, it has in 1997, developed

marketing strategies for a new lighting product, which did not fit in the

category of furniture and lighting normally sold by the Respondent and therefore

was launched under the name "Auralight". The Respondent has submitted

promoting materials for the "Auralight new lighting concept with 7

clip-on clip-off filters". The Respondent has also submitted evidence

for a patent application, dated February 2000, for the "clip on

clip off colored filters" and copies of invoices from a design Consultant,

and from an electronics company (Annex 3), dating back, not to 1997,

rather to the year 1999 (the earliest invoices for AURALIGHT leaflets

being dated February 10 and 19, 1999, respectively).

The Respondent has also submitted evidence for its reputation by attaching

a copy of a letter from "British Trade International", dated December 29, 1999,

in which the Respondent is invited to participate in the "Design Excellence

Exhibition" part of a British trade promotion in the Philippines in

March 2000. According to that evidence apparently also an "Auralight"

lighting of the Respondent has been exhibited together with other articles

of the Respondent.

When the Respondent submits that its product "Auralight" is not

meant for commercial nor industrial use, its intention is evidently not

to describe its use of the term "Auralight" to be non-commercial

in the meaning of the Policy. From the context it is clear that the Respondent

intends to explain that "Auralight" is a lighting tool for the

home, as opposed to the Complainant’s "commercial and industrial"

use of the trademark AURALIGHT for long life fluorescent lamps in public

places.

The Respondent submits that it registered the domain name <auralight.com>

for its own business activities and, since it was even not aware of the

Complainant or any trademark registration of the Complainant, it did not

act in bad faith.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements that the Complainant

must prove to merit a finding that the domain name of the Respondent be

transferred to the Complainant:

1) the domain name is identical or confusingly similar to a trademark

or service mark ("mark") in which the Complainant has rights; and

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.

1) Identity or confusing Similarity with a Mark in which the Complainant

has rights

The domain name <auralight.com> is identical to the Community Trade

Mark AURALIGHT in which the Complainant has rights (the generic TLD indicator

".com" cannot be taken into consideration when judging identity

or confusing similarity). The domain name is also very similar to the UK

registration AURA of the Complainant, since the part "light" of

the domain name is descriptive for the product, for which the domain name

is used. It is not disputed between the parties that actual cases of confusion

with the Complainant have taken place as a consequence of the use of the

domain name <auralight.com> by the Respondent.

2) Legitimate Rights or Interests in respect of the Domain Name

The Respondent has no connection or affiliation with the Complainant, who

has not consented to the Respondent's use of the domain name, which is identical

with its trademark.

However, the Respondent has submitted evidence that before any notice to

it of the dispute, it has used the name "auralight" in connection

with a bona fide offering of goods. It has even submitted evidence to have

made demonstrable preparations to make such use, which date back before

the date of the Community Trade Mark application, dated March 23, 1999,

AURALIGHT of the Complainant (Annex 3 to the Response, showing invoices

dated February 10 and 19, 1999). It is not disputed between

the parties that the Respondent, before making active use of the domain

name <auralight.com> for a website, advertised on its homepage http://www.brazier-jones.com

its "Auralight Roomsets". The Complainant refers in its Complaint

to that use, submitting in that connection that the Respondent provided

for an inactive link to its "Auralight site" (Annex 11 to the

Complaint) which only after the Complainant’s request to transfer the domain

name <auralight.com> for the amount of 500 Euros, had been activated

by the Respondent (Annex 13 to the Complaint shows the website http://www.auralight.com

of the Respondent).

The Complainant considers the use of the name "Auralight" by

the Respondent to be an infringement of its trademark rights in the trademark

AURALIGHT and therefore considers that the Respondent’s use of its corresponding

domain name cannot be legitimate. However, as evidenced by the Respondent,

it started preparations for the use of the "Auralight" product

even before the Community Trade Mark AURALIGHT of the Complainant was applied

for registration. It is therefore a question of British law and practice

to decide whether the Respondent committed trademark infringement or whether

it has better rights or at least user rights in an unregistered trademark

based on Common Law. Even considering that the Complainant has submitted

evidence for having rights in the trademark AURA, dating back to 1994, it

is under the Policy, and based on the evidence submitted by both parties,

not possible to arrive at the conclusion that the Respondent had no legitimate

interests. The Complainant has submitted that it had been represented in

the United Kingdom since 1994. However it has not submitted evidence for

that submission or for any use of its trademarks AURA and AURALIGHT or any

other of its trademarks. The Panel cannot therefore, based on the submissions

of the parties, decide upon the difficult questions under British trademark

law and practice, whether at the time of launching its product "Auralight"

the Respondent infringed any existing trademark rights of the Complainant.

Since the submissions and evidence of the Complainant do not allow a clear

conclusion that the Respondent had no rights or legitimate interests in

the domain name <auralight.com>, the Panelist tends, based on the

evidence submitted by the Respondent, to apply paragraph 4(c)(i) of the

Policy in favor of the Respondent, according to which it may prove that

before any notice of the dispute it used a name corresponding to the domain

name, and in that context also the domain name, in connection with a bona

fide offering of goods or services. However, no final decision need be taken

on that question, because the submissions and evidence of the Complainant

are not sufficient, in view of the submissions and evidence of the Respondent,

for a conclusion that the Respondent has registered the domain name in bad

faith.

3) Registration and Use in Bad Faith

For a Complainant to succeed, the Panel must be satisfied that a domain

name has been registered and is being used in bad faith.

As an example, the Policy paragraph 4(b)(i) mentions registration

of the domain name primarily for the purpose of selling, renting or otherwise

transferring the domain name registration to the Complainant who is the

owner of a mark or to a competitor of that Complainant for valuable consideration

in excess of out-of-pocket costs directly related to the domain name. A

generally applied test is therefore whether a Respondent has attempted to

sell the domain name for a sum in excess of the Respondent’s out of pocket

expenses in registering the domain name.

At first glance this test seems to apply in the present case, since the

Respondent has offered, to sell the domain name <auralight.com> to

the Complainant for the sum of UK £19,000, a sum which is clearly in

excess of the out of pocket expenses of the Respondent in registering the

domain name (the sum, mentioned in the Complaint, of £190.000 was however

not requested by the Respondent, as may easily be seen from Annex

10 to the Complaint, submitted as evidence for the request of the Respondent).

However, the Respondent has submitted arguments speaking against the assumption

that it acted in bad faith.

Before registering the domain name <auralight.com> the Respondent

had commenced using the term "Auralight" as a trademark for its

new product, which it developed at a time at which the Community Trademark

AURALIGHT of the Complainant had not been applied for (see above). The Respondent

cannot therefore have infringed the rights of the Complainant in that mark

when it adopted the unregistered trademark "Auralight" for its

product. It may have infringed the earlier UK trademark registration AURA

of the Complainant. However, based on the facts and evidence submitted by

the parties, the Panelist is not in a position to arrive at a conclusion

about this question. Contrary to the submission of the Complainant, the

fact that the Complainant and the Respondent are both using their respective

trademarks and domain names for similar products (both are lamps), does

not allow, in view of the particular circumstances of the present case,

the conclusion that the Respondent must have had knowledge of the Complainant,

when choosing the domain name <auralight.com>. Even if the respective

goods are similar or even identical in that they are both lamps, it is decisive

that the parties to this proceeding market their products to a totally different

clientele and cannot therefore be considered to be competitors (and in view

of the specific clientele of the Complainant, it is not unlikely that the

Respondent, who clearly does not belong to this clientele, ignored its existence).

Also, whether after registration of the Community Trade Mark AURALIGHT

by the Complainant, the Respondent’s use of the term "Auralight"

for its product must be considered to be trademark infringement, or the

Respondent’s earlier use of the term "Auralight" amounts to better

rights or at least to a right for continued use under British Common

Law principles, cannot be decided within the context of the present proceeding.

Even if the Respondent’s adoption and/or use of the term "Auralight"

were to be considered infringement of the Complainant’s rights in any of

its trademarks, the very fact that the Respondent adopted the term "Auralight"

as a trademark for its product, cannot, under the circumstances of the case,

be considered adoption of the Complainant’s trademark AURALIGHT in bad faith.

When, in February 2000, the Respondent registered the domain name <auralight.com>,

it registered its own unregistered trademark "Auralight" in the

".com" domain in order to be able to use, for its new product,

a domain name which corresponded to its trademark, for its new product.

As submitted by the Complainant itself, the Respondent soon mentioned the

domain name <auralight.com> as reference for more information about

its product "Auralight" which it advertised on its homepage. Even

if the website <auralight.com> was activated only on December 13, 2001,

it was clearly used to advertise the "Auralight" product of the

Respondent and not for any other purpose. This confirms that the Respondent

registered the domain name in order to promote its own "Auralight"

product and not to disrupt the business of the Complainant (registration

in the ".com" domain may be explained by the fact, which is evidenced

in the attachments to the Response, that the Respondent serves an international

clientele).

When about one year after registration of the domain name <auralight.com>

and a much longer period of use of the unregistered trademark "Auralight",

including use of both the trademark and the domain name on the Respondent’s

homepage, the Respondent was approached by the Complainant, it was nevertheless

prepared to transfer the domain name to the Complainant, apparently because

it realized that to a certain extent confusion of customers of the Complainant,

who is acting under its trade name Aura Light, was arising out of its

use of the domain name <auralight.com>. As may be seen from the more

complete exchange of e-mails in the context of the Respondent’s offer for

sale, which the Respondent submitted as Attachment 5 to its Response, the

Respondent, in its e-mail dated March 28, 2001, explained to the

Complainant that it needed a domain name for its product "Auralight".

As a consequence, when selling the existing domain name to the Complainant,

the Respondent would have to change the name (trademark) of its product

named "Auralight" and to re-launch it. Therefore the Respondent

expected a fair price to be paid taking into account the necessary extensive

changes. This shows that the Respondent did not intend to sell the domain

name as such for an excessive amount of money, but offered to sell

the domain name if the Complainant was prepared to reimburse it for

the costs invested in the adoption and use of the unregistered trademark

"Auralight" for its product. In an ensuing exchange of e-mails,

the Respondent listed in more details the costs (for printing and design

for office stationary, brochures, instruction booklets, logo stickers and

swing tags; for re-advertising in the trade magazines and newspapers; for

re-designing and producing the metal name plate which appears on each Auralight

lamp) to be covered and the Complainant explained that, having adopted other

domain names, which seem to function well, it did not have much use for

the domain name, and would therefore not be prepared to pay a high amount.

Finally, after months of exchanges of e-mails between the parties, the Respondent

requested, based on the calculations done by its people, an amount of no

less than £19,000 (the Respondent submitted some evidence for its costs

in Attachment 3 to the Response). During all these months and exchanges

of e-mails the Complainant never raised a legal objection against the Respondent’s

use of the domain name, rather submitted to be interested in acquiring the

domain because "it would have been nice to own the company name as

a domain also" (e-mail dated April 11, 2001, contained in

Attachment 5 to the Response). However, on December 5, 2001, the

representative of the Complainant sent a cease and desist letter to the

Respondent and for the first time claimed that the use of the domain name

<auralight.com> was an infringement of its Community Trade Mark and

the product Auralight constituted a clear violation of that Community Trade

Mark, and at the same time offered the sum of 500 Euros for a voluntary

transfer.

Taking into account that the Respondent is a leading home furniture and

home lighting provider, that it developed a new and unique lighting product

for use in private homes, and that it promoted that new product with brochures

and leaflets and also on its home page in the Internet, there are no circumstances

discernible which would indicate that the Respondent has registered

the domain name primarily for the purpose of selling, renting or otherwise

transferring the domain name to the Complainant. For the same reasons it

has apparently not registered the domain name primarily for the purpose

of disrupting the business of the Complainant, which is manufacturing and

selling its lighting products to a different clientele. In view of the facts

mentioned before and of the totally different business activities and clientele

of the parties, it is also most unlikely that the Respondent has attempted

to attract, for commercial gain, Internet users to its website. On the contrary,

where confusion arose, the Respondent at once forwarded e-mails to the Complainant,

which were addressed to it but concerned the Complainant.

Even if the circumstances listed in paragraph 4(b) of the Policy are only

examples of evidence of registration and use of a domain name in bad faith,

the Panel fails to see any other circumstances which would show that the

Respondent has registered the domain name <auralight.com> in bad faith.

Since for a Complaint to succeed the Complainant must prove that the Respondent

has registered and is using the domain name in bad faith, it is not

necessary to discuss whether the Respondent now, that it is informed about

the claimed trademark rights of the Complainant, is using the domain name

in bad faith. As said before, the Respondent requested the payment of £19,000

in view of its need to re-launch its product under a new trademark. Whether

that request was justified or not depends on the question whether the use

of the unregistered trademark "Auralight" by the Respondent for

its product infringes the trademark rights of the Complainant. That question

cannot be decided in the present proceedings, where the transfer of the

domain has been requested based on the submission that it has been registered

and is being used in bad faith. Assuming that the use of the trademark "Auralight"

by the Respondent is considered to be infringement of the Complainant’s

trademark rights in the United Kingdom, a question to be decided by the

courts, the use of the domain name <auralight.com> of course also

infringes these rights. It may also be possible that the Respondent’s use

of the unregistered trademark "Auralight" on the Internet and

its use of the domain name <auralight.com> infringes the rights of

the Complainant in its trademarks in other countries, such as in Sweden.

These questions and possible remedies of the Complainant against such use

depend on the manner in which the Respondent uses its trademark and its

domain name on the Internet (e.g. whether it offers "Auralight"

products in the ".com" domain for sale in all countries without

exclusion of countries in which the Complainant has better rights and/or

without a clear statement that the Respondent is not related to the Complainant

and has no rights to use the Complainant’s trademarks, etc). In that context

the WIPO Joint Recommendation on the Protection of Marks, and Other Industrial

Property Rights in Signs, on the Internet, adopted on October 3, 2001,

is referred to. All these questions of possible trademark infringement,

may arise, but cannot be considered in the present proceeding, independently

from the question, to be denied, whether the Complainant has proven that

the Respondent has registered the domain name <auralight.com> in bad

faith.

In conclusion the Panel is of the opinion that in the present case the

Complainant tries to solve a possible trademark infringement case between

the parties, which raises complicate legal issues, with the help of the

Policy, which is not designed for that purpose. The purpose of the Policy

is to solve cases of clear registration and use of domain names in bad faith,

and as said before, the Complainant has failed to prove that the Respondent

registered the domain name <auralight.com> in bad faith.

7. Decision

The Panel decides and orders that:

(i) Complainant has failed to establish the domain name has been

registered and is being used in bad faith;

(ii) The Complaint is dismissed.

Dr. Gerd F. Kunze

Sole Panelist

Dated: June 4, 2002