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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Online Motorsport Ltd v SuperSite. Net, Inc
Case No. D2000-1494
1. The Parties
The Complainant is Online Motorsport Ltd of PO Box 126, Newton Abott, Devon TQ12 4YH UK.
The Respondent is SuperSite. Net, Inc. of 750 N Mary Aven, Sunnyvale CA 94086 USA
2. The Domain Names and Registrar
The domain names with which this dispute is concerned are <onlinemotorsport.net> and <onlinemotorsport.com>.
The Registrar with which the domain names are registered is Network Solutions Inc.
3. Procedural History
3.1 A Complaint was submitted electronically and in hard copy to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on November 1, 2000 and November 6, 2000 respectively.
3.2 On November 16, 2000 the Registrar verified:
(i) that domain names are registered with it;
(ii) that the current registrant of the domain names is the Respondent;
(iii) that the Policy applies to the domain names;
(iv) that the domain names are each in "active" status;
3.3 On December 7, 2000, all formal requirements for the establishment of the Complain having been checked by the WIPO Center and found to be in compliance with the applicable ICANN Policy, ICANN Rules ("the Rules") for Uniform Domain Name Dispute Resolution Policy ("the Policy"), and WIPO's Supplemental Rules the WIPO Center sent the Notification of Complaint and Commencement of Administrative Proceeding for each domain name as follows.
(i) by courier, by facsimile and by e-mail to Respondent, the Administrative Contact and the Technical Contact;
(ii) by e-mail to the postmaster at the domain name.
3.3.1 The record shows that the Center has satisfied the provisions of each of paragraphs (i)(A), (B), (ii)(A), (ii)(B) and (iii) of the Rule 2(a);
3.3.2 The Panel therefore finds that the obligation imposed on the Center with respect to Notification of the Complain and the Commencement of the Administrative Proceeding has been satisfied.
3.4 The Administrative Proceeding having commenced on December 7, 2000 the Response was due on December 26, 2000.
3.5 No Response was filed and Notification of Respondent default was sent to Respondent and to Respondent's Technical Administrative and Billing Contact on December 27, 2000
3.6 Panelist D.J. Ryan, having filed the Statement of Acceptance and Declaration of Impartiality and Independence, was appointed as sole panellist on January 15, 2001.
4. Factual Background
4.1 The domain names were each registered on June 24, 1999.
4.2 Complainant is a United Kingdom Private Limited Company. Complainant asserts that it has carried on business by itself and its predecessor since 1999 building and developing race cars and providing consultancy services to the Motor Sport Industry.
4.3 Complainant asserts that during September, 2000 it reached agreement with Garry Wong, President of SuperSite Inc to transfer the domain names to it. Complainant further asserts that before this could be done Respondent went into liquidation and is now unable to make contact with Respondent with the result that the transfer process has come to a holt.
5. Parties’ Contentions
5.1 Complainant contends that:
- the domain names "match" its trade mark
- Respondent has no similar trade mark or use for the domain names
- Respondent has held the domain name for sixteen months and has made no use of the domain name or Internet services
5.2 Respondent has not filed any response.
6. Application of Rule 12
6.1 The complaint as filed included no evidence of Complainant's proprietorship of or interest in the words "onlinemotorsport" as a trade mark (as distinct from its corporate name) nor did it contain any evidence or assertions of absence of legitimate rights or interests on the part of the Respondent or of registration or use of the domain name in bad faith. The complaint as filed therefore failed on all grounds. Nevertheless as Complainant was not at that time legally represented and might wrongly have assumed that in the light of the alleged settlement a decision of the panel could be issued as a matter of formality the panel afforded the Complainant the opportunity to remedy the situation by requesting the Complainant, pursuant to Rule 12 of the Rules to provide evidence as to:
- use by Complainant of "onlinemotorsport" as a trade mark (as distinct from merely as its corporate name).
- correspondence or other communications between the Complainant and the Respondent.
- evidence of the alleged agreement between Complainant and Respondent.
- evidence that Respondent is in liquidation and any attempts which have been made by Complainant to have the liquidator complete the settlement.
6.2 On March 1, 2001 Complainant replied, through its solicitors, as follows:
"We are instructed by Online Motorsport Limited and have your Order No1.
We attach a series of emails passing between the respective Companies.
Those emails demonstrate -
1. the agreement reached,
2. the liquidation of SuperSite.
Our client has no address or knowledge of the identity of any liquidator appointed. Our client endeavoured to proceed with the agreement but Data packages sent to SuperSite were returned as undeliverable. Do you require images of those returns?
We are not aware of any claim with any registration authority by any person purporting to be a liquidator of the SuperSite. Accordingly we submit that the evidence of the emails is sufficient to establish the agreement reached and the liquidation of SuperSite.
We submit that, given the geographical locations of the parties, the cost to our client of obtaining more formal evidence of the liquidation would be disproportionate to this mediation. We further submit that, in the light of clear documented evidence of SuperSite's agreement to the deal, any liquidator appointed over the Company would be bound to have knowledge of it.
As to the evidence of trading use of the name by our client, whilst that can be collated, it is all in real paper form and will have to be converted into images if still required.
However we submit that on the basis alone of the email evidence of the agreement between the companies there should be a finding in our clients favour.
If the panel member does not concur on that last submission, we request additional time for the filing of the 'trading' evidence."
7. Discussion and Findings
To succeed in its complaint, Complainant must show that each of the conditions set out in paragraph 4(a) of the Policy are satisfied. Namely that:
(i) the domain name is identical or confusingly similar to a trade mark or a service mark in which the Complainant has rights
(ii) the Respondent has no rights or legitimate interests in the domain name.
(iii) the domain name has been registered and is being used in bad faith.
7.1 The onus is on Complainant to prove that each of these three elements are present.
Identical or Confusingly Similar Trade Marks
7.2 Complainant has failed, notwithstanding the further opportunity afforded to it by the Panel, to produce any evidence of use of "onlinemotorsport" as a trade mark. The fact that that expression appears in its corporate name does not, without more, constitute evidence of use as a trade mark. Furthermore, in view of the fact that the alleged trade mark is aptly descriptive of the field in which Complainant operates and the goods and services which it supplies substantial evidence of use and the establishment of the reputation and secondary meaning is required before trade mark rights can be established. Clearly Complainant has failed to do this.
7.3 As to Complainant's request for additional time for filing of the "trading" evidence Complainant has already been afforded an opportunity to do this by the Panel's first procedural order. The terms of the Policy, the provisions of the rules and previous Panel decisions make it clear that the Panel should call for or permit further submissions beyond those provided for in the Policy only in exceptional circumstances. See for example Rapido TV Ltd v. Jan Duffy-King (Case D2000-0449), Gordon Sumner p/k/a Sting v. Michael Urvan (Case D2000-096) and Document Technologies Inc., v International Electronic Communications, Inc. (Case D2000-0270). Complainant's further request is therefore denied.
Respondent's rights and legitimate interests and use and registration of the domain name in bad faith
7.4 Complainant having failed to show that the domain name is identical or confusingly similar to a trade mark in which it has rights the complaint fails and it is unnecessary to consider the further requirements of paragraph 4(a)(ii) and (iii) of the Policy. However, for the record the Panel finds that the Complainant has failed to establish either of these grounds. The chain of e-mail messages attached to Complainant's solicitors letter of March 1, 2001 indicates that Complainant negotiated with Respondent for the purchase of the domain names and that Respondent finally agreed to transfer the domain names to Complainant for the sum of $3,000.00. There is however no indication and no suggestion in this correspondence or in Complainant's submissions that Respondent was without rights or legitimate interests in the domain name or that it had used and registered the domain name in bad faith.
7.5 The function of the Panel is to determine whether or not the Complainant has made out its case under the three heads of paragraph 4(a) of the Policy. It is not for the Panel to determine whether or not a legally binding agreement has been reached or to assist Complainant in giving effect to any such agreement. It is further to be noted that in this case, if Respondent is in fact in liquidation, then presumably any rights or interests which Respondent possessed in the domain names now vest with the liquidator for the benefit of the creditors.
8.1 The Panel finds that Complainant has failed to establish any of the grounds set out in paragraph 4(a) of the Policy.
8.2 The Complaint is therefore denied.
Dated: March 14, 2001