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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
INTOCAST AG v. LEE DAEYOON
Case No. D2000-1467
1. The Parties
Complainant is INTOCAST AG, Kaiserswerther Straße 86-88, 40880 Ratingen, Germany.
Respondent is Lee Daeyoon, Hangyureh 3rd floor, 116-25 Gongduk, Mapo, Seoul, 121-020, Republik of Korea.
2. Domain Name and Registrar
The Domain Name at issue is "intocast.com"; hereinafter referred to as the "Domain Name". The registrar is Network Solutions, Inc.
3. Procedural History
WIPO Arbitration and Mediation Center (the Center) received INTOCAST AG’s Complaint in hardcopy on October 27, 2000 (and by e-mail on November 2, 2000). An Acknowledgement of Receipt of Complaint was sent by the Center to the Complainant by e-mail dated November 2, 2000.
On November 2, 2000 a Request for Registrar Verification was transmitted to the Registrar, Network Solutions, Inc. requesting inter alia confirmation that the Uniform Domain Name Dispute Resolution Policy applies to the Domain Name. On November 7, 2000, Network Solutions, Inc. transmitted via e-mail to the Center, Network Solutions’ Verification Response, confirming that the Registrant is Daeyoon Lee, and that Network Solutions’ 5.0 Service Agreement is in effect. Paragraph 8 of this Service Agreement incorporates the Policy by reference.
A Formal Requirements Compliance Check was completed by the Center on November 8, 2000. The Center verified that the Complaint meets the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules).
On November 8, 2000 a Notification of Complaint and Commencement of Administrative Proceeding was transmitted to the Respondent. In this notification the Center advised that the Response was due by November 27, 2000. This communication was sent to the Respondent by means of post/courier (DHL) to the address indicated in the Registrars Verification Response (with enclosures) and e-mail (Complaint without attachments) to email@example.com (and firstname.lastname@example.org). DHL reported delivery of these documents on November 13, 2000.
On November 29, 2000 having received no Response from Respondent, the Center issued to both Parties a Notification of Respondent Default. This Notification was sent to Respondent by e-mail (to email@example.com).
On December 5, 2000 in view of Complainant’s designation of a single member panel, the Center invited Mr. Reinhard Schanda to serve as Panelist and transmitted to him the Statement of Acceptance and Declaration of Impartiality and Independence. On December 6, 2000 Mr Schanda’s Statement of Acceptance and Declaration of Impartiality and Independence was sent to the Center. On December 11, 2000 the Center transmitted to the Parties a Notification of Appointment of Administrative Panel and Projected Decision Date in which Mr. Schanda was formally appointed as the Sole Panelist. On the same date the Center issued the Transmission of Case File to Administrative Panel.
The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Policy, the Rules and the Supplemental Rules.
On December 20, 2000 the Panel issued Procedural Order No 1. to both the Complainant and the Respondent (via the Center) inviting both Parties to provide further information and evidence to the Panel. Complainant sent a statement by e-mail dated December 21, 2000 (via the Center) to the Panel providing further evidence in Annexes 6 and 7. Respondent did not reply to the Procedural Order No 1. of the Panel.
Having reviewed the communication records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under Paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent." The only contact information given by Respondent in its registration data information in Registrar’s Whois database were the postal address used by the Center (successfully) and the e-mail address firstname.lastname@example.org also used by the Center. The communications also had been sent to email@example.com. The Domain Name does not resolve to an active web page indicating further contact possibilities. Therefore the Center followed each of the instructions of Paragraph 2(a) of the Rules.
From the evidence of Annex 7 (e-mail correspondence with Respondent received from firstname.lastname@example.org) it can be concluded that this e-mail account is active. Therefore it also seems likely that Respondent had received the various e-mail communications sent to theRespondent by the Center.
Therefore, and since Respondent has not provided a Response, according to Paragraph 5(e) and 14(a) of the Rules, the Administrative Panel shall issue its Decision based on the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of any Response from Respondent.
4. Factual Background
Complainant is owner of the following trademark registrations for the term "INTOCAST" (see Annex 6 to the Complaint):
- German registration No 1 113 651 (word mark with priority September 13, 1986)
- International registration No 534 893 (wordmark with priority September 13, 1988 in several countries including Korea)
- U.K. registration No 1360461 (wordmark)
- U.S. registration No 1 595 896 (wordmark)
- Canadian registration No 365 021 (wordmark)
- Japanese registrations No 2 317 520 and No 2 321 484
- Norwegian registration No 145 138 (wordmark)
- Danish registration No VR 6514 1991 (wordmark)
- Swedish registration No 219 817 (wordmark)
- Finnish registration No 108 798 (wordmark)
Respondent is not a licensee of Complainant, nor is he otherwise authorised to use the Complainant’s mark.
The Domain Name had been registered on March 12, 2000 (see Annex 1 to the Complaint).
5. Parties Contentions
Complainant contends that Respondent has registered the Domain Name which is identical to Complainant’s "INTOCAST" mark, that Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Domain Name has been registered and is being used in bad faith. Consequently, Complainant requires the transfer of the Domain Name registration to the Complainant.
Respondent has not contested the allegations of the Complaint and is in default.
6. Discussions and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1. that the Domain Name registered by the Respondent is identical or confusingly similar to the trademark or service mark in which the Complainant has rights; and
2. that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
3. that the Domain Name has been registered and is being used in bad faith.
(1) Identity or Similarity of Trademark and Domain Name
The relevant part of the Domain Name is "INTOCAST". This second level Domain Name is identical to the word marks of the Complainant "INTOCAST".
(2) Rights or Legitimate Interests of Respondent in Domain Name
According to Paragraph 4(c) of the Policy for purposes of Paragraph 4(a)(ii) the following circumstances, in particular but without limitation, shall demonstrate rights or legitimate interests of Respondent:
(i) Respondent’s 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, before any notice to Respondent of the dispute; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if Respondent has no trademark or service marks rights; or
(iii) Respondent is 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 trademark or service mark at issue.
For methodical reasons it is very hard for the Complainant to actually prove that Respondent does not have rights or legitimate interests in respect of the domain name, since there is no strict logical means of verifying that a fact is not given. Falsification does not equal positive proof for the lack of a fact. Many legal systems therefore rely on the principle negativa non sunt probanda. If a rule contains a negative element it is generally understood to be sufficient that the complainant, by asserting that the negative element is not given, provides prima facie evidence for this negative fact. The burden of proof then shifts to the respondent to rebut the complainant’s assertion.
In this case the Complainant by asserting that the Respondent does not have a right or legitimate interest in the Domain Name has provided prima facie evidence. Therefore it would have been up to the Respondent to demonstrate that he has rights or a legitimate interest in the Domain Name.
From the evidence provided by Complainant in the Complaint there is no indication that Respondent has any rights or interests in respect of the Domain Name according to Paragraph 4(c)(i-iii) of the Policy, or any other rights or legitimate interests. It would have been the task of the Respondent to show such legitimate interests in the Domain Name within a Response to the Complaint. Based on the Complaint the Administrative Panel is convinced that the Respondent has no rights or legitimate interest in respect of the Domain Name.
(3) Registration and Use in Bad Faith
According to Paragraph 4(b) of the Policy for the purpose of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, shall be evidence of the registration and use of a Domain Name in bad faith:
(i) circumstances indicating that Respondent has registered or has 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 trademark, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the Domain Name; or
(ii) Respondent has registered the Domain Name in order to prevent the owner of the trademark from reflecting the mark in a corresponding Domain Name, provided that Respondent has engaged in a pattern of such conduct;
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his 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 Respondents’s web site or location or of a product or service on Respondent’s web site or location.
Unlike Paragraph 4(c) there is no indication in Paragraph 4(b) that the Policy intends to place the burden of proof for a lack of bad faith on the Respondent. Unlike Paragraph 4(c) it does not invite the Respondent to demonstrate its good faith, but merely rules that the circumstances described above "shall be evidence of the registration and use of a domain name in bad faith".
Such evidence for bad faith also does not burden the Complainant with the proof of the lack of a fact, which would be contrary to the principle negativa non sunt probanda mentioned above. It is therefore obligation of the Complainant to convince the Panel that the domain name has been registered and is being used in bad faith.
The mere allegation of such bad faith on the side of the Respondent is not sufficient. Paragraph 5(e) of the Rules provides that if a Respondent does not submit a response, the Panel shall decide the dispute based upon the complaint, in absence of exceptional circumstances,. Paragraph 14(a) of the Rules provides that in the event that a Party does not comply with any of the time periods established by the Rules or the Panel, in the absence of exceptional circumstances, the Panel shall proceed to a decision on the complaint.
These rules, however, do not seem to determine that the allegations in the Complaint shall be considered as facts, without the necessity of proof of these facts. A lack of Response therefore does not remove the burden of proof from the Complainant to show its own trademarks rights and the bad faith of the Respondent.
On the other hand it seems sufficient that the Complainant shows a prima facie evidence for bad faith of the Respondent. It would then be up to the Respondent to provide evidence for good faith in registering and/or using the domain name.
In the case at hand, Complainant has not convincingly demonstrated any circumstances indicating that the Domain Name has been registered and is being used in bad faith by the Respondent.
In its Complaint and its further statement of December 21, 2000 the Complainant refers to an offer of the Respondent to sell the domain name to the Complainant. The evidence in Annex 7, however, does not support the conclusion that the Respondent has registered the domain name primarily for the purpose of selling it to the Complainant as provided by Paragraph 4(b)(i) of the Policy.
In response to the Complainant’s letter of June 5, 2000 (Annex 5a) the Respondent replied by e-mail of June 26, 2000 (Annex 3) without any offer to sell the Domain Name. Only after several further suggestions by the Complainant (Annex 7b, 7d and 7e) the Respondent declared its general willingness to sell the domain name, but without offering the domain name for a definite price to the Complainant. From the correspondence it appears that the Respondent considered the selling of the Domain Name to the Complainant only after several requests. Under the Policy, however, bad faith is evidenced only provided that the domain name has been registered primarily for the purpose of selling. From the evidence provided, the Panel is not convinced that the Domain Name has been registered primarily for the purpose of selling it to the Complainant.
In its Complaint the Complainant refers to the fact that the Respondent has not used the domain name at dispute. Under the Policy, however, this fact does not establish proof for registration and/or use of the Domain Name in bad faith.
The Complaint further refers to the fact that through the Respondent’s Domain Name registration the "Complainant is obstructed from using the domain name to implement his plans for an internet platform and to achieve a better contact to international customers and an improving market performance". This might be so. This follows from the fact that the Domain Name in dispute has not been registered by the Complainant. The Policy, however, does not consider mere (objective) obstruction as an evidence of bad faith. Only the registration of 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 [the Respondent has] engaged in a pattern of such conduct" (i.e. with the intention to obstruct) is regarded as evidence for bad faith. The Complainant has not provided any evidence for such intention to obstruct the Complainant. Complainant has not even alleged such intention in the Complaint.
In its statement of December 21, 2000 the Complainant also refers to the fact that the Domain Name had been routed to a website at www.hanacast.com and that this site showed a content which classified the Respondent as a competitor to the Complainant. The Complainant, however, has not provided any evidence for such routing or such content. These allegations are therefore disregarded by the Panel.
The Complaint also did not establish any other circumstances indicating bad faith under Paragraph 4(b) of the Policy.
The Panel therefore is not convinced that the Domain Name has been registered and is being used in bad faith by the Respondent as provided by Paragraph 4(a)(iii) of the Policy.
Since the Panel finds that not all of the elements under Paragraph 4(a) are fulfilled, the Complaint is dismissed.
Dr. Reinhard Schanda
Dated: January 17, 2001