Case No. D2000-0374
- The Parties
The Complainant is Nasaco Electronics Pte Limited, a company organised under the laws of Singapore and having its principal place of business at Blk-211 Henderson Road #09-03, Henderson Ind. Park, Singapore 159552.
The Respondent is A&O Computer AG having its place of business at Feldeggstrasse 5, Glattburg, ZH 8152, Switzerland.
- The Domain Name and Registrar
The Domain Name at issue is:
The Registrar with which the Domain Name is registered is Network Solutions, Inc., of 505 Huntmar Park Drive, Herndon, Virginia, 20170, USA.
- Procedural History
A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on May 3, 2000, and the signed original together with exhibits were received on May 8, 2000. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant on May 8, 2000.
On May 5, 2000, a Request for Registrar Verification was transmitted to the Registrar, Network Solutions, Inc. ("NSI") requesting it to: (1) confirm that the Domain Name at in issue was registered with NSI; (2) confirm that the person identified as the Respondent is the current registrant of the Domain Name; (3) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the Registrar’s Whois database for the Registrant of the disputed Domain Name, the technical contact, the administrative contact and the billing contact; (4) confirm that the Uniform Domain Name Dispute Resolution Policy (the "Policy") applies to the Domain Name; (5) indicate the current status of the Domain Name, and (6) confirm that a copy of the Complaint was sent to the Registrar by the Complainant.
On May 11, 2000, NSI confirmed by reply e-mail that the Domain Name <nasacom.com> is registered with NSI, is currently in active status, and that the Respondent, A&O Computer AG, is the current registrant of the name. The Registrar also forwarded the requested Whois details, confirmed that the Policy is in effect, and confirmed the Registrar had received a copy of the Complaint.
The WIPO Center determined that the Complaint satisfied the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Complainant elected to have this dispute decided by a three-member Administrative Panel and paid the prescribed fees.
No formal deficiencies having been recorded, on May 12, 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 1, 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 the Registrar’s confirmation. In addition, the Complaint was sent by courier to the postal address given.
On May 31, 2000, WIPO received a Response.
On June 28, 2000, the WIPO Center appointed a three-member Panel comprising Mr John Terry, presiding Panelist, Mr Bernard Meyer-Hauser, Panelist and Mr Li Yong, Panelist and set the projected decision date as July 12, 2000.
- Factual Background
The present Domain Name was registered on September 27, 1996.
The certified Complaint states, and the Panel accepts that the Complainant has registered and used the trade mark "NASACOM" in Germany in relation to various goods in class 9 which are particularised in paragraph 12 of the Complaint, and has registered and used the trade mark "NASACO" in some 16 countries, including many European countries as well as USA, People Republic of China and Taiwan, one of the earliest registrations being the UK registration in class 9 dating from 22 November 1993. No particulars are given as to the extent of the Complainant’s business under the trade marks, the countries of use or the particular goods on which use may have been made.
The Complainant states, the Respondent does not dispute and the Panel accepts that an internet search on <nasacom.com> does not resolve into a valid address and that the Respondent is not a licensee or otherwise authorised by the Complainant to use "NASACOM" or "NASACO".
The Complainant has demonstrated that its representative, by email dated April 12, 2000, contacted the Respondent to enquire "at what price (if any) [the Respondent] would be prepared to transfer the Domain Name" at issue to the Complainant. Email interchange occurred and concluded with the Respondent’s statement to the effect that it would be willing to sell the Domain Name for US dollars $5,500 but the Respondent was actively negotiating with another party for transfer of the Domain Name.
The Respondent states and the Panel has no choice but to accept that it became the Domain Name owner by virtue of a transfer from a Mr Michael Widmer, a former employee of the Respondent. The Respondent further states that Mr Widmer created the "NASACOM.COM" homepage (sic) for a "mutual colleague", Mr Kevin Nay who, the Respondent states, has a company in Switzerland created in 1995 and known as "Nasacom" and which apparently has its own Domain Name <nasacom.ch> created by Mr Nay. The Respondent states that the Domain Name <nasacom.com> was "more or less forgotten". The Respondent indicates that a "homepage" for the Respondent was also created by Mr Widmer but in his own name; after he left the company in November 1996, he was asked to transfer that Domain Name which he finally did in 1999, apparently together with the Domain Name <nasacom.com>. The Respondent further indicated in the Response some plans to transfer the present Domain Name to Mr Nay.
- Parties’ Contentions
Firstly, the Complainant contends that the Domain Name <nasacom.com> is identical with or confusingly similar to the Complainant’s trade marks "Nasacom" and "Nasaco" which have been registered by the Complainant.
Secondly, the Complainant contends that its trade marks "Nasacom" and "Nasaco" have not been the subject of any authorisation for use in favour of the Respondent and the Respondent has no rights or legitimate interests in respect of the present Domain Name.
Thirdly, the Complainant contends that the Respondent satisfies the requirement of paragraph 4(a)(iii) of the Policy namely that the Domain Name has been registered and is being used in "bad faith".
Fourthly, the Complainant contends that the Domain Name should be transferred to the Complainant.
The Respondent does not deny the first of the Complainant’s contentions stated above.
The Respondent does not expressly assert that it has rights or legitimate interests in respect of the Domain Name.
The Respondent asserts it has acted in good faith but does not wish to retain the Domain Name and asserts that it should be transferred to a third party, a Mr Nay.
The Respondent contends that "the best solution would be to delete the Domain Name" and denies it should be transferred to the Complainant.
- Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) 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
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and,
(iii) that the Domain Name has been registered and used in bad faith.
The Panel holds that the Complainant has established element (a) of paragraph 4 in view of the trade mark registrations referred to in the Complaint. In any event the Respondent does not contest this point.
Regarding element (ii) of paragraph 4(a), since the Respondent does not clearly contest this element of the Complaint, it might be unnecessary for the Panel to make any finding as the onus on this issue lies with the Respondent in view of paragraph 4(c) of the Policy once a prima facie case is made out as we find to be the case here. The Respondent has not been legally represented and the Panel prefers not to decide this matter on any technicality of pleading and will now set out its reasons for finding that the Complainant has made out its case on element (ii) of paragraph 4(a).
It is first convenient to consider that under paragraph 4(c) of the Policy a Respondent can establish rights or legitimate interest if it can point to the application of any one of the following circumstances set out in paragraph 4(c):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organisation) have been commonly known by the Domain Name, even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
No use or preparations for use by the Respondent is asserted. For reasons that are quite unclear in the Response, a former employee had registered the present Domain Name and transferred it with another to the Respondent, there being no explanation for this course of action. Plainly, the circumstances of paragraphs (i) and (ii) are not made out or pleaded and neither are the circumstances of (iii) applicable since that paragraph is confined to cases where there has been a particular defined type of use and no use whatsoever is asserted by the Respondent.
However, the abovementioned circumstances in paragraph 4(c) are not a limitation of the general element (ii) of paragraph 4(a). Nevertheless, the panel finds that there is no contention by the Respondent of any facts which could give rise to a conclusion that the Respondent has some rights or legitimate interest in the present Domain Name.
The third element to be established by the Complainant is that the Domain Name has been registered and is being used in bad faith. The only distinct element of bad faith pleaded by the Complainant is that it inquired of the Respondent whether the Domain Name would be available for sale and received an offer. Paragraph 4(b) sets out four circumstances (which are exemplary only) but if found are deemed to provide evidence of relevant bad faith registration and use. The circumstances specified in paragraph 4(b) are in the following terms:
(i) circumstances indicating that you have registered or you have acquired 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 the trade mark or service mark or to a competitor of that Complainant, for valuable consideration in excess of 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 trade mark 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 web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
Regarding the circumstances set out in (i), there is no contention by the Complainant that the Respondent has initiated any offer to sell the Domain Name to the Complainant or any competitor of the Complainant; the Respondent may have initiated an offer to sell the Domain Name to a Mr Nay, but there is no proof of this. In any event there is no evidence that Mr Nay and his company are a competitor of the Complainant. The circumstances of acquisition of the Domain Name by the present Respondent are not clear, but there is no direct evidence of any intention of the Respondent in receiving the present Domain Name "for the purpose of selling, renting or otherwise transferring the Domain Name" to anybody. Indeed there is no evidence Mr Widmer, who was then an employee of the Respondent and who registered the present Domain Name and at least one other, did so for the purpose of profit. Furthermore, there is a plausible explanation that Mr Widmer registered the present Domain Name originally with a view to it being adopted by Mr Nay for his Swiss company "Nasacom".
The Panel holds that circumstance (i) is not made out.
Indeed the Complainant does not provide any express submission or explanation of why any one of the four circumstances specified in paragraph 4(b) should be held to arise and simply makes the broad contention of relevant bad faith. Having regard to the Response, it is clear that any inclination of the Panel to hold that a prima facie case had been made out by the Complaint is well rebutted by the Response and none of the circumstances required for (ii), (iii) or (iv) are made out.
Since the four circumstances of paragraph 4(b) are stated to be "in particular but without limitation", there is still left for the Panel the broader question of whether otherwise the circumstances are such that the Complainant has discharged the onus of proving that the Domain Name has been "registered and is being used in bad faith". It has been well established by previous ICANN decisions under the dispute resolution Policy that both the original registration and subsequent use must be in bad faith: see for example the decision in <telstra.org> case reported as Telstra Corporation Limited v. Nuclear Marshmallows Case D2000-0003.
In the present case, the Panel finds there is sufficient substance in the Complaint to establish a prima facie case of both bad faith registration and bad faith use by the Respondent and/or the predecessor Domain Name owner, sufficient to place the onus on the Respondent in rebutting the prima facie case against paragraph 4(a)(iii) of the Policy. The Policy contains no definition of "bad faith" and the Panel holds that it must weigh up and balance the various factors that are in or can be inferred from the Complaint and Response. Indeed the Panel observes that this approach has been taken in various prior Panel decisions under the Policy.
The Panel concludes that the following factors in combination can be argued to rebut the "bad faith" assertion of the Complainant:
- None of the exemplary circumstances of paragraph 4(b) of the Policy are made out.
- The Domain Name has only recently been transferred to the Respondent and delay in use of the Domain Name may be reasonable.
- There is no clear evidence of the full circumstances and reasons for registration originally of the Domain Name other than that the original Registrant was involved in website creation and, by inference, acquired the Domain Name with an intent to transfer it to a Mr Nay who had a Swiss company called "Nasacom" and which would therefore be a legitimate user.
- The present Domain Name owner did not seek to auction or solicit bids for transfer of the Domain Name; the Respondent only proposed a price of US$5,500 in response to the Complainant’s enquiry.
- No relevant market place reputation has been shown by the Complainant and the reasonable inference is the Complainant’s reputation would more likely be under the not identical but similar name "Nasaco".
- The Respondent does not hold a portfolio of Domain Names unused by the Respondent.
- The Domain Name does not resolve to a website with any offers for sale of the Domain Name.
Arguably, ground 4(b)(i) only applies where it is established that either the original Domain Name registration or the transfer to the present Domain Name owner was primarily with an ultimate purpose of selling at a substantial profit, but this ground only applies if the intention at the time of acquisition was to sell to the present Complainant or a competitor of the present Complainant. Arguably it is not sufficient for there merely to have been a general intention to transfer the Domain Name at a large profit to a person who at the time was totally unidentified. In other words ground 4(b)(i) does not apply if the Domain Name was acquired for speculative purposes.
However, factors for a finding of relevant bad faith have been identified by the Panel as follows:
- The Domain Name has subsisted for more than three years without any use by the Respondent or its predecessor.
- A price of US$5,500 has been proposed by the Respondent to transfer the Domain Name to the Complainant. This is clearly much greater than any possible expenses that might have been incurred in obtaining the Domain Name, or at least the Respondent does not offer any contrary evidence in rebuttal.
- The Respondent has conducted an apparent auction between two parties to dispose of the Domain Name.
- The Respondent has not established any legitimate rights or interests in terms of any of the exemplary grounds in paragraph 4(c) of the Policy.
- The original Domain Name registration by Mr Widmer was tainted by bad faith as apparently in breach of a duty to an employer and, by inference as part of an attempt to apply business leverage to the Swiss "Nasacom" company of Mr Nay.
- Since becoming the transferee of the present Domain Name registration, the Respondent has had opportunity to effect good faith use but has not done so. There is no evidence that the sale price of US$5,500 was commensurate with costs and the Panel finds this points towards bad faith usage.
The <telstra.org> decision D2000-0003 shows that in appropriate circumstances merely holding onto a Domain Name can be use within the meaning of element (iii). The case for finding "bad faith" usage gains support from the remark in the Response:
"I believe Mr Nay should receive it. I think the best solution would be to delete the Domain Name, then it would be free."
The Panel holds that the finding of bad faith in terms of the exemplary circumstances in clause 4(b) of the Policy is not limiting and although the precise terms of paragraph 4(b)(i) are not precisely met due to the narrow wording of that clause, it is open to the Panel to find bad faith on the wider basis inherent in the requirements of clause 4(a)(iii).
The Panel holds that the combination of factors stated above for a finding of bad faith registration and usage outweigh the contrary combination of factors. Furthermore, the Panel takes account of the public interest being better served by the present Domain Name vesting in the Complainant since the Complainant had an established trade mark presence for the Domain Name prior to its registration.
For the reasons stated above, the Panel decides that the Domain Name is identical or confusingly similar to the trade mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Name and the Respondent’s Domain Name has been registered and is being used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Domain Name shall be transferred to the Complainant.