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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Highlight Communications AG v. Auto Systems Inc.
Case No. D2000-0512
1. The Parties
The Complainant is Highlight Communications AG of Schindellegistr. 3, 8808 Pfäffikon, Switzerland. The Respondent is Auto Systems Inc. of 2330 Margo SW, Albuquerque, New Mexico 87105, United States of America.
2. The Domain Name(s) and Registrar(s)
The domain name in issue is "shopnet.com" ("the domain name"). The Registrar is Network Solutions, Inc..
3. Procedural History
3.1 The Complaint was dated May 26, 2000, and received by WIPO Arbitration and Mediation Center on May 26, 2000.
3.2 A Response to the Complaint was filed on June 3, 2000. A Panel was constituted on July 10, 2000, with a single panelist, Nick Gardner. A statement of acceptance and declaration of impartiality and independence has been filed by the Panel.
3.3 The date scheduled for the Panel to render its decision is July 26, 2000.
3.4 The Complainant is represented by George Lizkourezos, Esq. of attorneys at law Dilworth & Barrese, LLP, 333 Earle Ovington Boulevard, Uniondale, New York 11553, United States of America. The Respondent is represented by Jeffrey D. Myers of attorneys at law Peacock, Myers & Adams, P.C., P.O. Box 26927, Albuquerque, United States of America.
3.5 On or about July 10, 2000, the Complainant, by its attorneys, lodged what was described as an "Addendum" to the Complaint. At the time the Panel was finalizing its decision, the Respondent filed a Response to the Addendum.
3.6 The Panel notes that the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") do not provide for further documents of this nature. Under the Rules it is for the Panel in its sole discretion to request any additional information. However, having received and reviewed the Addendum and the Response to the Addendum the Panel is of the opinion that these do not (for the reasons explained below) alter the Panel's decision. The Panel therefore in its discretion admits these documents.
4. Factual Background
4.1 The following facts are not disputed.
4.2 The Complainant relies on what it says is a registered trademark "SHOPNET" registered on January 31, 2000, which is registered in respect of the rental of automatic distribution machines. The Complainant has not filed any more than papers in German said to evidence this mark. As best the Panel can tell from these documents the mark is a German trade mark and the application date for this mark appears to be (at the earliest) November 20, 1998. It also appears to the Panel that the papers may evidence a published application for a registration rather than a registration itself. The Complainant acknowledges "the trademark certificate has not yet been received". Conclusive resolution of these issues would require evidence of German law and procedure (and properly translated documents). However as no point is taken by the Respondent on this issue the Panel will proceed on the basis the Complainant is the proprietor of the registered mark asserted. The Complainant does not in any event assert that any relevant right in this registered trade mark predate the Respondent's registration of the domain name.
4.3 The Respondent applied for and obtained registration of the domain name on August 18, 1996.
5. Parties’ Contentions
The Complainant’s contentions may be summarized as follows:
5.1 The Complainant has rights in the name "SHOPNET" by virtue of its trademark registration and/or its "SHOPNET" product (described by the Complainant as "a fully animated unmanned store controlled by robotics, where shoppers complete their purchases at kiosks and internet browsers"). It is convenient to say at this stage that the Complainant asserts that this SHOPNET product was "developed" in 1994. Absolutely no details are provided by the Complainant about this product, its development, or whether any trade took place under or by reference to the name SHOPNET in this product. In short there is no evidence at all from the Complainant other than as to the subsequent trade mark registration referred to above.
5.2 The Complainant also pleads that it "owns a chain of retail stores in Switzerland, Germany and Austria" but no details are given of these stores, whether they are named SHOPNET or what (if anything) their relevance is.
5.3 The domain name is identical or confusingly similar to the Complainant’s trademark "SHOPNET".
5.4 The Respondent has no right or legitimate interest in the domain name. In this respect, the Complainant alleges that:
(a) from September 1998 until early February 2000 (if not later) the Respondent did not have a world wide web page under the domain name "Shopnet.com";
(b) on April 11, 2000, the Complainant’s attorneys found a world wide web page site when they entered the domain name "shopnet.com" which consisted of pages offering a number of domain names for sale;
(c) the Respondent set up the world wide web site between early February 2000 and April 11, 2000, to deceive the general public into believing that it was making a legitimate commercial use of the domain name; and
(d) the Respondent is willing to sell the domain name "shopnet.com".
5.5 The Respondent registered and is using the domain name in bad faith. In this respect, the Claimant relies primarily upon e-mail correspondence between representatives of the Claimant and the Respondent’s representative wherein the Respondent’s representative made clear that the domain name was for sale.
The Respondent’s contentions may be summarized as follows:
5.6 The Respondent has rights to and legitimate interests in the domain name. Specifically, the Respondent was using the domain name bona fide from August 1996 when it registered the domain name to at least August 1998 in connection with a proposed automotive parts business. In this regard the respondent says the name was chosen based on the common United States usage of the word "shop" to designate a repair facility and the proposed business was a computer network providing services for automotive repair facilities in Texas.
5.7 In the event the proposed venture came to nothing but the Respondent was left with the domain name. It is not disputed by the Defendant that following an approach from the Complainant discussions as to the possible sale of the name followed (although the detail of those discussions is disputed).
5.8 The Respondent first became aware of a dispute concerning the domain name with the filing of the Complaint (although it was aware of the Complainant’s interest in purchasing the domain name from about November 26, 1998).
6. Discussion and Findings
6.1 The Panel has reviewed the Complaint, the Response, the Addendum to the Complaint and the Response to the Addendum and the documents annexed to these documents. In the light of this material, the Panel finds as set out below.
6.2 The domain name "shopnet.com" is identical to the Complainant’s registered trademark referred to at paragraph 4.2 above. To that extent the Complainant is literally within paragraph 4(a)(i) of the Uniform Domain Name Dispute Resolution Policy (the "Policy") in that it has rights in a trademark identical to the domain name. However the question arises as to whether the Complainant has to have had the rights concerned (or at least an earlier connected right, such as unregistered rights in the mark) at the time the Respondent registered the domain name in question. The Policy does not in terms say so but it would be odd (to say the least) if subsequently acquired rights could impugn an otherwise unobjectionable registration. In practical terms it seems to the Panel that this issue falls to be addressed under the requirement that the registration has to have been effected in bad faith (see below).
6.3 The nature and extent of the Complainant’s activities in general and by reference to the name "shopnet" in particular are wholly unclear to the Panel and there is a marked lack of evidence in this regard. It seems to the panel that a Complainant who wishes to avail itself of the ICANN procedure and seek, in effect to summarily dispossess a domain name owner of a domain name, is obliged to file (at least) reasonable evidence supporting its case. The Complainant here has singularly failed to do so. The Panel declines to find that the Complainant has any relevant reputation or other goodwill over and above the registration referred to at paragraph 4.2 above in the mark SHOPNET.
6.4 As a matter of common English the word SHOPNET combines two common English words, "shop" in the sense of either retail outlet or repair facility and "net" as an abbreviation for network. As such the Panel declines to find that registration in itself is so implausible or so coincidental as to immediately raise at least an inference of bad faith. There is no evidence the Respondent knew of the Complainant. There is evidence (albeit somewhat imprecise) that the Respondent at the time of registration did have plans to develop a service directed at automotive repair facilities. The Panel is not remotely attracted to the Complainant's argument (advanced in its Addendum) that because the Respondent's official filings show it to have been established for "selling and servicing computer hardware and software and NOT for the setting up, managing, running etc an on line ordering system for automotive parts" (emphasis present in original) its evidence in this regard is flawed or suspect.
6.5 The Respondent has provided some evidence that it developed and operated a website from August 1996 to July 1998.
6.6 The e-mail correspondence between Mr. Baalbergen and Ms. Eichent is evidence that the Respondent is willing to sell the domain name. The Panel does not find that the Complainant's Addendum challenging the Respondent's alleged lack of recollection as to the detail of this correspondence alters this basic point (which is not in fact disputed). However it is instructive to look at the origin of this dialogue which is an e mail of November 26, 1998, from a Mr. Baalbergen representing the Complainant as follows "Hello. I got your name from the internic.net. Our company is called ShopNET and we are going to establish a web site. I see you have reserved the name shopnet.com and wanted to know if you would be interested in selling it. Thanks. Aaron Baalbergen." The only evidence the Panel has as to who Mr. Baalbergen is or how he fits in is that his name is given as the contact details for the Complainant and these appear on the Complaint under a company name of "Business Advantages Inc". No company named ShopNET has been relied upon by the Complainant. The Panel notes that Mr. Baalbergen did not then nor at any subsequent time assert the Complainant had prior rights in SHOPNET – indeed at one point he stated that he would simply proceed with alternative plans if his offer was not acceptable.
7.1 In the light of the above findings, the Panel’s decision is as set out below.
7.2 So far as paragraph 4(a)(i) of the Uniform Domain Name Dispute Resolution Policy (the "Policy") is concerned, the Panel concludes that the Complainant has shown that it has as at the date of filing the Complaint an identical registered mark "shopnet". The Complainant has not shown that it had such a mark or any other relevant rights at the time of the Respondent's registration. Insofar as this is relevant it is addressed in relation to bad faith, below.
7.3 As far as paragraph 4(a)(ii) is concerned, the Panel is satisfied that the Respondent has rights to and/or a legitimate interest in the domain name by virtue of its use of the domain name in connection with its proposed business before it had notice of a dispute concerning the domain name. The later failure of that business plan and the subsequent non-use of the domain name does not invalidate that interest.
7.4 So far as paragraph 4(a)(iii) of the Policy is concerned, the Complainant simply fails to show any case at all that the name was registered in bad faith. It is not at all clear to the Panel what the Complainant's case here is – it seems to be based on the assertion that if a name is registered for the sole purpose of re-sale that in itself constitutes bad faith. Even were that the case here (which it is not – see above) that merely confuses paragraphs 4(a)(ii) and 4(a)(iii) of the Policy – clearly something more has to be shown. Typically this will be the knowledge of the Complainant's goodwill or reputation and the opportunistic registration of the name concerned with the possibility of sale to the owner of the goodwill firmly in mind. That is not shown here nor is any other relevant act of bad faith. Where a name is a perfectly ordinary English word, or as here a combination of such words considerably more than mere registration has to be shown to establish bad faith.
7.5 Much of the material lodged is addressed at the proposition that the Respondent has offered to sell the domain name to the Complainant. Evidence is then provided by both parties as to exactly what conversations took place, and what terms were proposed. So far as the Dispute Resolution Policy it is necessary for the Complainant to show both that the name was registered in bad faith and that it is being used in bad faith. The finding above as to registration is therefore sufficient to dispose of the case and accordingly much of the material the Parties have adduced becomes irrelevant. However the Panel will for completeness briefly summarize its findings on this issue.
7.6 The Panel is not satisfied that the Respondent's negotiations for the sale of the name nor its subsequent activation of a "domains for sale" website under or linked to the domain name themselves constitute bad faith. The evidence establishes that the Complainant approached the Respondent who indicated a willingness to sell but then held out for a price. If the Respondent's registration was bona fide, and if the Complainant comes along afterwards and seeks, without any relevant rights, to acquire the name the Respondent is, at least in the circumstances of this case, free so to do. The evidence in fact seems to show that Mr. Baalbergen for the Complainant, not having any relevant prior rights, simply initiated a dialogue by offering to purchase the domain name but then became unhappy as the price asked was higher than he wanted to pay. When that discussion led nowhere the Respondent offered the name for sale on a general basis. That is not use in bad faith by the Respondent.
7.7 The Panel therefore declines to find that the domain name should be transferred or cancelled.
7.8 No further action is required to implement the Panel’s decision.
Dated: July 25, 2000