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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Adamovske Strojirny v Tatu Rautiainen
Case No. D 2000-1394
1. The Parties
The Complainant is Adamovske Strojirny, a.s. Mirova2, Adamov, 67904 Czech Republic, represented by Jan Cermak, assistant to general manager.
The Respondent is Tatu Rautiainen, Nuotiopiha1 B 21, 02500 Espoo, Finland,
2. The Domain Name and Registrar:
The Domain Name at issue is <adast.com>. The Registrar is Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, VA. 20170 USA.
3. Procedural History:
The Complaint was filed with the WIPO Arbitration and Mediation Center (the Center) by e-mail on October 16, 2000, and a hardcopy was received by the Center on October 20, 2000. The Center acknowledged the receipt of the Complaint on October 17, 2000.
On October 17, 2000 the Center sent to Network Solutions, Inc. a request for verification of registration data. On October 29, 2000, Network Solutions, Inc. confirmed to be the Registrar, that Tatu Rautiainen is the Registrant of the domain name "adast.com", and that the domain name registration "adast.com" is in "Active Status".
WIPO verified that the Complaint satisfies the Rules and the Supplemental Rules and that payment was properly made. The Panel is satisfied this is the case.
On November 8, 2000, the Complaint was properly notified in accordance with the Rules, paragraph 2(a), and the administrative proceedings commenced. Since no communication was received from the Respondent within the time limit set, the Center sent a default notification to the Complainant, on November 30, 2000.
On December 8, 2000, 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.
No further submissions were received by the Center or the Panel. The date scheduled for issuance of the Panel’s decision is December 21, 2000.
4. Factual Background
The Complainant is an internationally active company in the field of printing and bookbinding machinery. In 1992 it has become a joint stock company and in 1993 two subsidiaries were founded, namely Adast blansko a.s., a producer of paper cutters and developing automates of offset plates, and Adast - Systems a.s., a producer of fuel dispensers and control systems for the dispensers. It exports 70% of its total production to more than 70 countries and disposes of a net of dealers all over the world, including e.g. ADAST America Inc. and ADAST Deutschland GmbH. In Finland ADAST Finland OY, Helsinki sells the products of the Complainant, manufactured by the Complainant and its affiliates in the Czech Republic.
The Complainant is the owner of trademark registrations for three different marks, consisting of a combination of a graphic symbol with the words "ADAST", "ADAST dominant" and "ADAST maxima", respectively. The marks have been registered for a wide range of goods, in particular for printing and bookbinding machinery, in many countries, including Finland, and for many years (the combined mark ADAST since the early sixties), as documented in Annexes 10, 11 and 12 to the Complaint. The combined mark "ADAST dominant" is being used for offset printing presses, the combined mark "Adast maxima" for paper cutters, and the combined mark "ADAST" as well as the word "ADAST" as the main common multipurpose housemark of the Complainant. The word "ADAST" as such is not registered as a word mark and the Complainant does not pretend to have acquired trademark rights in it by use of that word in Finland or elsewhere.
These facts are evidenced by the attachments to the Complaint and, in the absence of any submission of the Respondent to the contrary, the Panelist is satisfied that the documents submitted by the Complainant are truthfully reflecting the factual circumstances of the case.
The Complainant administers a sophisticated and informative website under the domain name "adast.cz". where the combined mark "ADAST word with graphical symbol" is shown prominently.
On April 5, 2000, the Marketing Manager of the Complainant sent Respondent a letter, asking the Respondent for what purpose he had registered the "ADAST.com" domain name. The Respondent answered per email on June 15, 2000, confirming that the domain is not active and informing the Complainant that he had no plans to use it in the near future. He added: "In case you are interested in buying or renting the domain I would be happy to receive your proposal". Dr. Jan Cermak, Assistant to the General Manager of the Complainant wrote on June 29, 2000 per mail the following to the Respondent:
"First of all we have to inform you, that the brand mark ADAST is property of ADAMOVSKE STROJIRNY, and that it is registered worldwide. However, we are prepared to buy the <adast.com> domain. We regret to say that we can not offer more than the sum of one thousand US dollars. In case we will not reach an agreement on the matter, we are ready to employ our previously registered domains instead."
The Respondent answered on July 12, 2000:
"Thank you for your offer. Unfortunately I have decided not to sell the domain adast.com."
The Respondent registered on May 12, 1999, the domain name <adast.com>. with Network Solutions. The domain name has not been activated by the Respondent.
5. Parties’ Contentions
Complainant submits that (1) the domain name <adast.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.
The Respondent has failed to submit any statement. He has therefore not contested the allegations of the Complaint.
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) Confusing similarity with a mark in which the Complainant has rights
The domain name "adast.com" is not identical with marks of the Complainant, but consists of the word, which is their main identifying element. The graphic symbol, which is a part of the Complainant's mark, cannot be pronounced and the terms "dominant" and "maxima", which are part of the trademarks ADAST dominant and ADAST maxima, are descriptive. Whilst the word ADAST has been created as a combination of the first three letters of the word "ADAMOVSKE" and the first two letters of the word "STROJIRNY", it is clearly a coined word with no meaning and therefore inherently distinctive. This is particularly true for the Finnish language, but also for e.g. English, French or German. The Complainant has submitted the results of a trademark search in the trademark register in Finland, which show that the word ADAST is exclusively registered by the Complainant. Consequently no third person has trademark rights in that word.
The domain name <adast.com> consists of the word "adast", which is identical with the main distinctive element of Complainant's marks, and the generic tld indicator "com", which cannot be taken into consideration when judging confusing similarity. Based on general principles of trademark law that domain name is therefore confusingly similar with the Complainant's trademarks. This is also the case, when considering the particular circumstances of use on the Internet. Persons searching for the Complainant on the Internet will normally expect to find the Complainant under its principal identifier "adast". However, when attempting to find the Complainant in the "com." domain, in which many actual or potential clients of the Complainant, in view of its international activity, would expect the Complainant to be present, they will be informed that there is no website existing under that term. They may become discouraged and search no further for Complainant's website.
The domain name <adast.com> is therefore confusingly similar with trademarks in which the Complainant has rights in many countries, including Finland.
2) Legitimate rights or interests in respect of the domain name
As said before, the Respondent's domain name <adast.com> is not a descriptive word, in which the Respondent might have an interest. The Complainant has not consented to the Respondent's use of the domain name. Simple stocking of the domain name by the Respondent does not create any right or legitimate interest in the domain name.
Furthermore, none of the circumstances listed under 4c of the Policy, possibly demonstrating rights or legitimate interests, are given. The Respondent has, in correspondence with the Complainant, admitted that he does not use (commercially or non-commercially) the domain name and that he has no plans to use it in the near future; clearly, he has not been commonly known by the domain name. Also, he indicated no circumstances whatsoever that would show a legitimate interest in the domain name.
Therefore, in the absence of any submission of the Respondent, the Panel concludes that the Respondent has no rights or legitimate interests in the domain name "adast.com".
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 section 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 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.
Even if the Respondent refused to sell the domain name <adast.com> for US $ 1000, the Panel is satisfied that this test is complied with. Having been contacted for the first time by the Complainant, and as soon as he had received Complainant's letter, inquiring about the purpose of his registration of the domain name "adast.com", the Respondent, in his email dated June 15, 2000, informed the Complainant that he would be happy to receive Complainant's proposal for buying or renting the domain name.
Respondent's immediate offer for sale and his information that he did not use the domain name and had no plans to use it, without giving any reasons why he had registered the domain name, are clear indications that he was aware of the mark and trade name of the Complainant and its Finish dealer ADAST OY, when he registered the domain name "adast.com". In the absence of any submission of the Respondent to the contrary, and in the absence of any use of the domain name "adast.com" by the Respondent since his registration in May 1999 the Panelist is therefore satisfied that the Respondent did not happen to invent the fantasy word "adast" for using it as a domain name in the ".com" domain without any knowledge of the Complainant's rights.
Only when the Complainant replied that it could offer not more than US $ 1000 and if no agreement was possible on that basis it would prefer to employ the previously registered domains instead, the Respondent was not interested in selling, without giving any reasons.
With this blunt refusal and his continued hold on the domain name <adast.com> without making any legitimate use of it, the Respondent continues to block the Complainant from using its identifier "adast" in the ".com" gtld. In addition to his original offer to sell the domain name the Respondent, which is a clear evidence of registration and use in bad faith, the Respondent therefore continues preventing the Complainant from reflecting its principal identifier "adast" in the corresponding domain name "adast.com". In the absence of any submission of the Respondent in this procedure, this behavior is a strong indication that the Respondent hoped to sell the domain name for a higher price (to the Complainant or to a competitor of the Complainant).
The Respondent failed to submit any argument in favor of good faith registration or good faith plans to use the domain name <adast.com>. The Panel therefore concludes that the allegation of the Complainant that the Respondent has registered and is using the domain name in bad faith is sustained.
The Panel decides that the Complainant has proven each of the three elements of paragraph 4a of the Policy.
The Panel requires that the registration of the domain name <adast.com> be transferred to the Complainant.
Dr. Gerd F. Kunze
Date: December 20, 2000