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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Crйdit Agricole Indosuez Luxembourg s.a. v. Patrick G O’Regan
Case No. D 2000-1300
1. The Parties
Complainant: Crйdit Agricole Indosuez Luxembourg s.a., Allйe Scheffer, 39, L-2520 Luxembourg
Respondent: Patrick G. O’Regan, Washington Street, 27-29, IE - Cork
2. The Domain Name and Registrar
Domain Name: fastnet.com
Registrar: Network Solutions Inc.
3. Procedural History
The Complaint was received by WIPO by email on October 2, 2000 and in hard copy on October 5, 2000. WIPO has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.
The Complaint was properly notified in accordance with the Rules paragraph 2(a) and the Respondent responded to the Complaint within time on October 27, 2000/October 30, 2000 (email/hard copy). The Panel is properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
No further submissions were received by WIPO or the Panel as a consequence of which the date scheduled for the issuance of the Panel’s Decision is November 15, 2000.
4. Factual Background
On April 4, 1991, Network Peripherals Inc of 2880 Zanker Road, Suite 206, San Jose, CA 95134 registered the domain name fastnet.com ("the Domain Name"). This is apparent from an Internic Whois search exhibited as part of Exhibit A to the Response.
The Complainant has since 1996 been developing a financial service under the name FASTNET.
The Complainant has sought and obtained wide trade mark protection for the word mark FASTNET in many European countries and in the United States of America. The dates of the various applications and registrations range from November 1996 to April 1998.
On or before June 18, 1997, the Domain Name was transferred to the Respondent.
On October 21, 1999 the Respondent received a letter from lawyers representing Fastnet Corporation of Bethlehem, Pennsylvania. This is an internet business trading through its domain name fast.net. The letter called upon the Respondent to cease and desist from any and all usage of the Domain Name extending into the United States and sought a written assurance that all use of the Domain Name extending into the United States or any similar variants thereof "will terminate immediately and/or will not happen in the future." The letter also sought assignment of the Domain Name.
There followed various communications between the lawyers for the parties, concluding with representations from those representing the Respondent that the Respondent was not yet using the Domain Name and that the Respondent had no intention of using the Domain Name in the United States.
In about April 2000 the Respondent instructed a law firm in Arlington, Virginia, to advise him in relation to the Domain Name and that firm commissioned various trade mark and internet searches covering the name "Fastnet". The results are exhibited as Exhibits G and H to the Response. Suffice it to say that a variety of registrants/users of Fastnet names were identified.
On July 11, 2000, the lawyers representing the Respondent sent faxes to at least six organisations, namely Fastnet Spa of Italy, Fastnet Systems Plc of the United Kingdom, Fastnet Corporation of Bethlehem, Pennsylvania, Fastnet Inc of Tokyo, Japan, Fastnet International of Brighton, United Kingdom, Fastnet SA of Switzerland. In each case the fax invited offers for the Domain Name in excess of US$100,000.
On August 8, 2000 the Respondent’s lawyers contacted the Complainant’s US trade mark attorney informing him that the Respondent was not using the name but was looking for a purchaser at a price of not less than US$100,000. The indication was given that the Respondent might accept less, but offers less than US$50,000 would not be given serious consideration.
In August 2000 the Respondent posted on BizWeb2000.com’s CyberMarketing InfoBoard a message reading "I have a really relevant e-business type domain name which I want to sell. It has been valued at up to $75,000 by a major domain broker. Can anyone advise me on how to maximise my chances besides submitting it to online brokers."
5. Parties’ Contentions
The Complainant contends as follows:-
As the Domain Name is identical to Complainant’s prior trade mark registrations it cannot be denied that the Domain Name fastnet.com is likely to create a likelihood of confusion with Complainant’s trade marks registered throughout the world.
The Respondent has no legitimate interests in respect of the Domain Name fastnet.com. Indeed, to the best of the Complainant’s knowledge the Respondent is neither a licensee nor authorised to make any use whatsoever of the Complainant’s trade marks. Furthermore, Fastnet does not correspond to the Respondent’s name, company name, nickname, trade name or trade mark in that none of them consist in whole or in part of the word Fastnet.
The Complainant has enjoyed trade mark protection in Ireland since November 1997 and this confirms that the Respondent has no legitimate interest to hold this Domain Name registration. Had the Respondent demonstrated an interest in the Fastnet name in the course of trade in Ireland after November 1997, he would have infringed the Complainant’s trade mark rights. On this basis, the Panel is asked to conclude that the Respondent has registered the Domain Name fastnet.com in bad faith.
The offer for sale to the Complainant’s US trade mark attorney indicates that the Respondent only acquired the Domain Name with the intent to sell it to the highest bidder.
The Respondent has acted as a "spoiler" preventing the Complainant and other possible companies having a legitimate interest in using the name Fastnet from doing business on the internet under their trade mark names unless they pay the Respondent’s fee.
Attention is drawn to the contents of Article 4(b)(i) of the Policy.
Further, the fact that the Respondent has never developed his Domain Name since the registration date seems to confirm the absence of commercial activities or trade interests of the Respondent in the word Fastnet. This is evidence of use in bad faith of the Domain Name by the Respondent.
The Respondent contends as follows:-
The Respondent reserved the Domain Name on June 18, 1997 and obtained the Domain Name with authorisation from the original registrant of the Domain Name, namely Network Peripherals of California.
The Respondent also reserved the domain name, clearisland.com, and other versions of that name on December 3, 1999.
The Respondent initially registered the Domain Name for use in connection with a website relating to the famous landmark associated with his residence. The Respondent says that he visited Cape Clear Island often during his life and the Fastnet Lighthouse is a longstanding symbol of the summers spent on the Cape during his youth.
The Respondent lives and works in Cork, Ireland and both Fastnet and Clear Island are geographical locations associated with the Respondent’s residence in Cork. The Respondent draws attention to the fame of the Fastnet lighthouse which is situated off Cape Clear Island.
Originally the Respondent did not intend to sell the Domain Name, but changed his mind after he had received requests from prospective purchasers of the Domain Name. He then set out to invite offers for the sale of the Domain Name and it was in that context that through his US lawyers he commissioned the advice and searches referred to above.
His initial round of offers for sale in July 2000 failed to elicit any satisfactory offers, hence the offer made to the Complainant’s trade mark attorney in August 2000.
The Respondent observes that the Complainant uses the term Fastnet as an acronym to define Fund Administration Service and Technology Network. He points out that this is completely different from the highly descriptive, if not generic and common use of the term "Fastnet" to mean "fast-internet connection". He observes that Microsoft Corporation uses the highly descriptive term Fastnet on its world wide web MSN home page. He points out that a simple search on the internet reveals an abundance of Fastnet uses by different entities on different goods/services. He concludes by pointing out that these uses are different from his initial intention in connection with the famous Fastnet Lighthouse.
The Respondent characterises the Complaint as an apparent attempt to reverse hijack the Domain Name.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
If the Complaint fails, the Panel has to have regard to paragraph 15(e) of the Rules and in particular the following sentence namely: -
"If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at reverse domain name hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its Decision that the Complaint was brought in bad faith and constitutes and abuse of the Administrative Proceeding."
Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as meaning "using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name."
Identical or confusing similarity
The Domain Name is identical to the Complainant’s trade mark or service mark, FASTNET. The fact that the Complainant’s rights in FASTNET are not exclusive is irrelevant, as is the fact that Fastnet is a famous geographical location.
Accordingly, the Panel finds that the Domain Name is identical to a trade mark or service mark in which the Complainant has rights.
Rights or legitimate interest of the Respondent
The Respondent claims that what inspired his acquisition of the Domain Name and the "clearisland" domain names was the geographical proximity to him of the landmarks, the Fastnet lighthouse and Clear Island. He says that his original intention was to use the Domain Name for a website devoted to the Fastnet lighthouse. If that is true, he has a legitimate interest in respect of the Domain Name.
The Complaint proceeds under the misapprehension that the Respondent acquired the Domain Name in June 2000. This is because the Complainant misunderstood the Whois search exhibited to the Complaint. An entry indicating the date that the record was created accurately identified the date that the record was amended to record a change of registrar. It was not the date that the domain name was registered.
The Complaint contains no evidence as to the fame of the Complainant’s trade mark/service mark, FASTNET, in June 1997 when the Respondent acquired the Domain Name. Indeed, the only reference in the Complaint to the Complainant’s Irish rights in the name is a statement to the effect that those rights date from November 1997, several months after the Respondent’s acquisition of the Domain Name.
Accordingly, there is nothing before the Panel to suggest that the Respondent’s explanation is untrue and the Panel finds that the Complainant has failed to show that the Respondent has no rights or legitimate interest in respect of the Domain Name.
For the bad faith allegations to succeed, as the Complaint acknowledges, the Respondent has to have been aware of the existence of the Complainant’s trade mark or service mark at the time of acquisition of the Domain Name.
There is no evidence before the panel to suggest that the Respondent had heard of the Complainant’s business under the name, FASTNET, by June 1997. Indeed, given that the development of that business only commenced in 1996 and that the Irish rights in the name only date from November 1997, the Panel believes it to be most unlikely that the Respondent would have heard of it by June 1997.
Additionally, whether or not the Respondent was aware of the Complainant’s interest in the name, the Panel has already found that the Respondent’s explanation for acquiring the Domain Name is credible and legitimate. Attempting to sell a legitimately acquired domain name is not of itself illegitimate, whatever the price being sought.
In light of the above, the Panel finds that the Complainant has not proved that the Respondent registered the Domain Name in bad faith and is using the Domain Name in bad faith.
Reverse Domain Name Hijacking
The Panel does not believe that this Complaint was made in bad faith. It was made on the back of the honest, but mistaken belief that the Respondent’s offer to sell the Domain Name to the Complainant for a very large sum of money came only a few months after the Respondent had acquired the Domain Name.
In light of the foregoing, the Complaint is dismissed.
Dated: November 15, 2000