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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
VeriSign Inc., v. VeneSign C.A.
Case No. D2000-0303
1. The Parties
Complainant is VeriSign, Inc., a California corporation, located at 1350 Charleston Road, Mountain View, California 94043, United States.
The Respondent is a Venezuelan company by the name of VeneSign C.A., with the address Qta Techo, Av. 9 Alto Prado, Caracas, MI 1080-056, Venezuela.
2. The Domain Name and Registrar
The domain name is <venesign.com>, registered with Network Solution, Inc., in the United States of America.
3. Procedural History
A complaint pursuant to the Uniform Domain Name Dispute Resolution Policy was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") and was received by the Center on April 18, 2000.
Also a hardcopy of the complaint was transmitted by air courier.
The Center acknowledged receipt of the complaint by e-mail sent on April 20, 2000, with a request for verification of the domain name <venesign.com> sent to Network Solutions, Inc. on April 19, 2000.
On April 21, 2000, Network Solutions confirmed by e-mail to the Center that the domain name <venesign.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. It was also confirmed by the registrar that the Uniform Domain Name Dispute Resolution Policy is in effect for the registration.
On April 28, 2000, a Notification of Complaint and Commencement of Administrative Proceeding was transmitted to the Respondent, with a copy to Complainant, by the method required under § 2 (a) of the Rules. This Notification of Complaint and Commencement of Administrative Proceeding set a deadline of May 18, 2000, by which the Respondent could file a response to the Complainant.
On May 25, 2000, having received no response from the Respondent, by using the same contact details and methods as were used for the Notification of Complaint and Commencement of Administrative Proceeding, the Center transmitted to the Parties the Notification of Respondent Default.
On June 2, 2000, following Complainant's request to have the dispute decided by a single-member panel, the Center appointed a Panelist, informing the Parties on the same date of this appointment.
On June 16, 2000, the Panelist requested the Parties to provide further information (i) whether Respondent's name VeneSign C.A. is a valid and/or registered company name in Venezuela and when it was registered or the company was formed, (ii) whether Respondent has registered or applied for a trademark for the VeneSign name and on what date and (iii) whether there is further information available relevant to the question of the alleged bad faith.
Complainant responded with a brief on June 19, 2000, providing further information. Respondent, for the first time in this procedure, sent an e-mail message referring to an answer to the Request of the Panel which, however, was not attached to the e-mail. The Center requested the Respondent to forward a copy of the document that was referred to in the e-mail message. On June 26, 2000, a submission from the Respondent was received, addressing a number of the points raised by the Panel's request.
The administrative Panel shall issue its decision based on the complaint, the Policy, the Uniform Rules, the WIPO Supplemental Rules, and the other submissions of the parties.
4. Factual Background
Given the absence of a response, the following facts are undisputed:
Complainant is in the business of providing certifications for online communications and transactions, internet security services, secure e-mail and online payment services, among other products and services. These services are being offered at Complainant's current website <www.verisign.com>. Complainant alleges to be the foremost certification authority for issuing certificates of authenticity on the world wide web.
Complainant has adopted and registered a trademark for use with all its products and services. The mark consists of the word "VeriSign" with an initial "V" in the form of a check mark and a capital "S" in the middle of the word. This trademark is registered in the United States, with applications for registration being made to the European Community, and in 19 other countries around the world. Originally, the trademark was registered by Verifone on December 21, 1999, and was assigned to VeriSign on February 15, 2000.
Complainant did not only achieve protection for the word "verisign" in its distinctive written form, but it also filed for a stand-alone protection of the stylist "V" in the form of a check mark with a pixelized right tip, on which application on January 14, 2000, a notice of publication under Sec. 12(a) of the United States Trademark Act of 1946 was issued identifying that the mark of application appears to be entitled to registration, provided, that no opposition will be filed within the time specified by Sec. 13(a) of the Trademark Act.
Complainant has attached as Annex 5 to its Complaint an overview on the marks in foreign countries which shows a wide coverage of trademark protection throughout the world for the word "VeriSign".
Respondent uses the domain name <venesign.com> which was registered with Network Solutions, Inc. beyond the mere word as it is stated in the domain name also in a visual appearance on its website which shows an initial capital "V" in the form of a check mark and a capital "S" in the middle of the word.
Complainant alleges that Respondent has copied both the check mark "V" and the capital "S" in the middle of the word in an attempt to deceive the user into believing that Respondent is a part of, sponsored by, affiliated with or endorsed by Complainant. As Respondent, moreover, at his website, whose content is in the Spanish language, advertises itself as a certification authority offering digital certificates, Complainant alleges that Respondent is using the domain name <venesign.com> to attract for commercial gain internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of Respondent's website, on the products or services offered on this website. With that, it is alleged that the worldwide reputation that Complainant has established and with which the mark is associated in the mind of the internet community around the globe, is made use of by Respondent.
Complainant sent Respondent a letter demanding to cease and desist using the domain name <venesign.com> on April 5, 2000, indicating that Claimant will take whatever appropriate legal steps to protect its marks.
With an e-mail dated April 6, 2000, Respondent answered in stating:
"Our certification service is for our country "VENEzuela", the name VeneSign is derived by our country name.
Webserver and offices are located in Venezuela and services are only for Venezuelan people.
If you condider [sic] we are making something wrong, I can send a copy of your letter to our attorney to check this."
5. Parties' Allegation
Complainant alleges that Respondent's registration and use of the domain name <venesign.com> violates its rights in its trademark "VeriSign". Specifically, Complainant alleges that the domain name "venesign" is confusingly similar to the trademark and, given that both Parties are in the same business, Respondent's use of this domain name is likely to cause confusion. Complainant alleges that Respondent is using the domain name only to attract internet users to its website by creating a likelihood of confusion.
Given Respondent's failure to file a response, the Panel accepts as true all the allegations of the Complainant (compare Talk City Inc. v. Robertson, Case No.
D2000-0009 (WIPO February 24, 2000); eAuto L.L.C. v. EAuto Parts, Case No. D2000-0096 (WIPO April 9, 2000)).
Respondent's default, however, does not lead to an automatic ruling for Complainant. Complainant still must establish a prima facie case showing that under the Uniform Domain Name Dispute Resolution Policy it is entitled to a transfer of the domain name.
6. Discussion and Findings
The jurisdiction of the Panel is limited. Pursuant to § 4(a) of the Uniform Domain Name Dispute Resolution Policy, a domain can be transferred only when Complainant has proven that each of the following three elements is present:
1. The domain is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
2. the domain holder has no "rights or legitimate interests in respect of the domain name" and
3. the domain "has been registered and is being used in bad faith".
6.1 Confusing Similarity
Complainant has satisfied the first requirement. While the domain name <venesign.com> is not identical to the trademark of Complainant of "VeriSign", it is confusingly similar as, in neglecting the unimportant part .com, the second half of both terms are identical, with the first half varying only in two letters ("ne" instead of "ri"). If not already confusing in its mere spelling (the distinctive appearance of the word "VeriSign with the initial "V" in form of a check mark is insofar of no importance), the pronunciation of the two words is so close that confusion can arise in the mind of the consumer.
6.2 Rights in Domain Name
It cannot be concluded that Respondent has no "rights or legitimate interests" in the domain as it is required under the Uniform Domain Name Dispute Resolution Policy.
Complainant is alleging that Respondent has no rights in the domain name as it is not a licensee of Complainant nor otherwise authorized by Complainant to use its "VeriSign" trademark.
The request of the Panel to obtain further evidence on the rights in the domain name <venesign.com> was unanswered by Respondent and was also not answered in substance by Complainant who just stated that Complainant has no information whether VeneSign C.A. is indeed the valid company name of Respondent. However, also Complainant in its complaint identifies Respondent under the company name VeneSign C.A.
Even though Respondent does (obviously) not have its own trademark and is not licensed by Complainant to use this trademark, Respondent can point to the fact that the domain name equals its company name "VeneSign C.A.", which could give Respondent rights to the domain. The further allegation of Respondent that it is entitled to the domain name because the name is derived from the country name "VENEzuela" remains rather doubtful as there would be other means to indicate to the public the relationship with the country Venezuela, but this issue can be left open.
6.3 Bad Faith
Complainant alleges as bad faith element that Respondent has registered and is using the domain name only to attract, for commercial gain, internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of Respondent's website, especially as to the product and services offered, by stating that Respondent "has copied both the check mark "V" and the capital "S" in the middle of the word in an attempt to deceive the user into believing that Respondent is a part of, sponsored by or affiliated with or is endorsed by Complainant.
Bad faith registration and use under § 4(b) of the Uniform Domain Name Dispute Resolution Policy requires evidence of the following circumstances:
(i) circumstances indicating that you have registered or that you have acquired the domain name primarily for the purpose of selling, renting, otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess to your documented out-of-pocket-costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, internet users to your website or other online locations, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location of a product or service on your website or location.
Complainant is not bringing forward any evidence as to the first three circumstances under which a panel can find bad faith in registration or use of a domain name but Complainant is relying on (iv).
The evidence that Complainant is bringing forward to fill those words with life is the specific way that the word ("venesign") is used once the user has entered the domain name into the computer and has accessed the webpage of Respondent. In that case, a user will see the specific spelling which is used by Respondent and which Complainant claims to be violating its trademark, that is the use of a check mark "V" and the capital "S" in the middle of the word.
This use of "venesign" on the website in a graphical manner may violate Complainant's trademark and may constitute passing-off or any other act of unfair competition. Especially the use of trademarks throughout a website in a graphical manner seems to qualify as prima facie a case of bad faith, as the public next to the likelihood of confusion is also exposed to a confusing similar use of Complainant's trademark as to source, sponsorship, affiliation or endorsement of the website. With that the requested additional bad faith element beyond similarity as such to constitute a case of bad faith appears to be present.
Even with the bad faith element more likely than not being present, the Panel has to acknowledge from the record, taking into account the evidence produced by Complainant only that the fact remains that the Respondent used its own company name, VeneSign C.A. in the domain name <venesign.com>. Therefore, it has to be stated that the second test under § 4(a) of the Uniform Domain Name Dispute Resolution Policy, that domain holder has no rights or legitimate interest in respect of the domain name, has not been established by Complainant.
This decision should not be understood as a substantive decision on the likelihood of confusion between the Parties' use of "VeriSign" or "VeneSign", which will be a dispute for the courts to decide, taking into account the fact that Respondent is converting its own company name in a domain name. Especially the latter will be an important point of consideration for a court in the dispute between the Parties. Such issues, however, cannot be resolved in a proceeding under the Uniform Domain Name Dispute Resolution Policy, but will rather have to be addressed in a court proceeding.
The panel finds in favor of Respondent and denies Complainant's request for a transfer of the domain name <venesign.com> to Complainant.
Dated: June 28, 2000