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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
prosieben media AG v. CPIC Net Syed Hussain
Case No. D2000-1517
1. The Parties
Complainant is ProSieben Media AG, Medienalle 7, 85774 Unterföhring, Germany.
Respondent is CPIC Net Syed Hussain, 15 5th Street, Closter, NJ 07624, USA.
2. Domain Name and Registrar
The Domain Name at issue is "prosiebensat1.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 ProSieben Media AG’s Complaint in hardcopy on November 15, 2000 (and by e-mail on November 4, 2000). It is not known to the Panel whether an Acknowledgement of Receipt of Complaint was sent by the Center to the Complainant.
On November 13, 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 16, 2000, Network Solutions, Inc. transmitted via e-mail to the Center, Network Solutions’ Verification Response, confirming that the Registrant was CPIC NET, that the Administrative Contact and Billing Contact was Hussain, Syed, CPIC NET, and that Network Solutions’ 5.0 Service Agreement was in effect. Paragraph 8 of this Service Agreement incorporates the Policy by reference.
It is not known to the Panel whether a Formal Requirements Compliance Check was completed by the Center. The Panel, however, assumes that the Center has 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 21, 2000 a Notification of Complaint and Commencement of Administrative Proceeding was transmitted to Respondent. In this notification the Center advised that the Response was due by December 10, 2000. This communication was sent to the Respondent by means of post/courier (with enclosures) to the address mentioned in the Registrar Verification, by fax (with enclosures) to the fax number mentioned in the Registrar Verification, and e-mail (Complaint without attachments) to two different e-mail accounts mentioned in the Registrar Verification.
On December 15, 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 means of post/courier and e-mail.
On December 18, 2000 in view of Complainant’s designation of a single panelist, 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 the same date Mr Schanda’s Statement of Acceptance and Declaration of Impartiality and Independence was sent to the Center. On December 18, 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.
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, the fax number used by the Center and the e-mail addresses also used by the Center. The communications also had been sent to firstname.lastname@example.org.
From the evidence of Annex 5 (e-mail correspondence with Respondent received from email@example.com) 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 Respondent 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 the owner of a German wordmark registration for the term "PRO 7" with priority as of April 1, 1998 (see Annex 1 to the Complaint). The term "Sieben" is the word for the number "7" in German language.
Complainant, on June 27, 2000, publicly announced that it will merge with SAT.1 SatellitenFernsehen GmbH, Germany, and by this merger, will form the biggest German TV-Company. It was also announced by the merging companies that the new enterprise will be given the name "ProSiebenSAT.1 Media AG".
The marks "PRO 7", "ProSieben" and "SAT.1" are notorious to the Panel. From the allegations in the Complaint, as well as from his own experience with these marks, the Panel concludes that these marks are well known trademarks at least in the German speaking countries of Europe.
Respondent is not a licensee of Complainant, nor is he otherwise authorised to use the Complainant’s marks.
The Domain Name had been registered on June 27, 2000 (see Annex 2 to the Complaint).
5. Parties Contentions
Complainant contends that Respondent has registered the Domain Name which is confusingly similar to Complainant’s common law mark "ProSiebenSAT.1" and confusingly similar to Complainants registered trademark "PRO 7", 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
By publicly announcing its new company name and trade mark "ProSiebenSAT.1" Complainant has acquired common law rights in this mark (see WIPO Case No D2000-0433). The relevant part of the Domain Name, "prosiebensat1", is confusingly similar to this common law mark.
The relevant part of the Domain Name, "prosiebensat1", is also confusingly similar to the Complainant’s registered trademark "PRO 7", since in German language the number "7" equals to the word "Sieben", and the term "ProSieben" is fully incorporated in the relevant part of the Domain Name (see WIPO Case No D2000-0050).
The Domain Name therefore is confusingly similar to marks in which the Complainant has rights.
(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 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 with 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 in 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 convincingly demonstrated circumstances indicating that the Domain Name has been registered and is being used in bad faith by the Respondent.
The Domain Name has been registered on the very day the Complainant publicly announced its merger with SAT.1 SatellitenFernsehen GmbH and the new brand name of this enterprise ("ProSiebenSAT.1"). It seems most likely that Respondent was aware of this news when registering the Domain Name on the very same day of this press release. This gives ground for the assumption that the purpose of the registration was to prevent the Complainant from reflecting its new brand name in a corresponding domain name (Paragraph 4(a)(ii) of the Policy) and/or for the purpose of selling, renting, or otherwise transferring it to the Complainant (Paragraph 4(a)(i) of the Policy).
Mr Hussain on behalf of the Respondent actually offered the Domain Name for sale by e-mails dated August 31, 2000 and September 4, 2000 (see Annex 5 to the Complaint). In his e-mail dated August 31, 2000 Mr Hussain expressly connects his invitation to make a purchase offer with the fact that "a big media company is starting new business under these names". In his e-mail dated September 4, 2000 he suggested a purchase price USD 12.500 for the Domain Dame in question and another domain name. This amount obviously exceeds his out-of-pocket-costs for the registration of these two domain names.
This assumption of having registered and using the Domain Name in question in bad faith is also supported by the fact that the Respondent has also engaged in other domain name registrations, which have been considered to have been filed in bad faith by other WIPO Panels (see WIPO Case No D2000-0433 and WIPO Case No D2000-0189).
From all this evidence the Panel is convinced that the Domain Name has been registered and is being used in bad faith as provided by Paragraph 4(a)(iii) of the Policy.
In light of the foregoing, the Administrative Panel decides that the Domain Name registered by Respondent is confusingly similar to Complainant's marks, that Respondent has no rights or legitimate interests in respect of the Domain Name, and that Respondent’s Domain Name has been registered and is being used in bad faith.
Accordingly, pursuant to Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, the Administrative Panel requires that the registration of the Domain Name "prosiebensat1.com" be transferred to Complainant.
Dr. Reinhard Schanda
Date: January 17, 2001