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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Programma Electric AB v. Daniel Yomtov
Case No. D2000-1570
1. The Parties
The Complainant is Programma Electric AB, which is a corporation organized under the laws of Sweden. Its principal place of business is in Stockholm.
The Respondent is Daniel Yomtov who is an individual who resides in Tel Aviv, Israel.
2. The Domain Names and Registrar
The disputed domain names (the "Domain Names") are:
There is some uncertainty about the dates of registration of the domain names. The Complainant has stated "The Respondent registered the domain name <programma.com> before the date mentioned in the current Whois information. The registrar BulkRegister.com has, by mistake, entered the wrong information and the exact registration date can be traced by BulkRegister.com upon request."
The registrar with whom the Domain Names are registered is BulkRegister.com of Baltimore, MD, United States of America. (‘The Registrar")
3. Procedural History
A Complaint pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules’) both of which were approved by ICANN on October 24, 1999, was received by WIPO in electronic format on November 14, 2000 and hardcopy on November 21, 2000. Payment in the required amount to the Center has been made by the Complainant.
On November 24, 2000, a request for registrar verification was sent to the Registrar requesting confirmation that it had received a copy of the Complaint from the Complainant, that the Domain Names were currently registered with it and that the Policy was in effect, and requesting full details of the holder of the Domain Names and advice as to the current status of the Domain Names.
On November 28, 2000, there was notification of the Complaint and commencement of the administration proceeding.
On December 13, 14 and18, 2000, WIPO received, by e-mail, fax and hardcopy, a request from Mr Leve, the Respondent’s representative requesting an extension of time to file the Response. An extension was granted for two weeks until December 31, 2000.
On January 4, 2001, WIPO acknowledged receipt of the Response.
On January 22, 2001, a notification of appointment of administrative panel and projected decision date ("the appointment notification") was sent to the Complainant and the Respondent. The appointment notification informed the parties that, in accordance with the Complainant’s request, the administrative panel would be comprised of a single panelist, Clive Elliott, and advised that the decision should be forwarded to WIPO by February 5, 2001.
4. Factual Background
The Respondent registered the Domain Names as follows:
<programma.org> -December 1, 1999
<programma.net> -December 24, 1999,
<programma.com> -January 20, 2000 (according to current Whois information)
The Complainant, Programma Electric AB, has been trading since 1976 and is the parent company in the multinational "Programma" Group. It is said to consist of subsidiaries in ten countries and agents and distributors in more that seventy countries worldwide, including Israel.
The Complainant is the registrant of nine domain names identical with its trademarked name "Programma". The Complainant has registered the trade mark "Programma" in Sweden since 1986, in the United States since 1986 and in Germany since 1994.
It seems that the Complainant has not registered the trade mark "Programma" in Israel.
5. Parties’ Contentions
The Complainant alleges:
"Programma" is a well-known international trade mark associated with high quality and security.
It uses its trade marked name in connection with the promotion and marketing of its products and services on its Internet web site found at [http//:www.programma.se].
An e-mail dated October 1, 1999 was sent to the Respondent regarding the Respondent’s registration of the domain name <programma.com>. The Respondent replied on October 30,1999 offering to sell the Complainant this domain name. The Complainant claims that because the Respondent offered to sell the domain name to the Complainant for a value in excess of any out of pocket costs directly related to the domain name, he has registered the domain names in bad faith.
The Complainant also says that not only did the Respondent offer to sell the domain name <programma.com>, but that he also registered the domain names <programma.net> and <programma.org> as soon as the Complainant mentioned its interest in the domain name <programma.com>.
The Complainant claims that the Respondent has engaged in a pattern of such conduct previously by registering other leading companies’ names.
The Respondent alleges:
At the time of registering <programma.com>, he was unaware of the existence of the Complainant or its business.
The Complainant does not have a registered trade mark in Israel and Israel is the sole place of business and residence of the Respondent.
The word "programma" means program in several languages and it is a descriptive term and is not unique.
The Complainant offers no proof whatsoever of any goodwill or brand recognition with respect to its goods and services in the State of Israel, and that the Complainant has appointed distributors of its products in Israel.
The database of the Canadian Intellectual Property Office yields at least two trade marks containing the word "Programma" and that there are multitudes of domain names using the "Programma" name, with which the Complainant seems unconcerned.
The Respondent denies making any offer to sell the domain names. The Respondent says that he merely inquired as to what offer the Complainant wanted to make.
The Respondent claims he has not used the Domain Names in bad faith.
6. Discussion and Findings
Para. 4(a) of the Policy requires that the Complainant must prove each of the following:
(i) The domain names are identical or confusingly similar to the trade mark;
(ii) The Respondent has no right or legitimate interest in respect of the domain names; and,
(iii) The domain names have been registered and are being used in bad faith.
Para. 4(b) of the Policy sets out four illustrative circumstances that, if proved, constitute evidence of bad faith as required by para. 4(a)(iii) referred to above.
Para. 4(c) of the Policy sets out three illustrative circumstances that, if proved, constitute evidence of a right or legitimate interest as described in para. 4(a)(ii) referred to above.
Domain Names Identical or Confusingly Similar to Trade Mark
It is clear that the Complainant has certain rights in the Programma trade mark. However, while the Complainant trades internationally, it has only secured registration in three countries and all in relation to a combined device and word mark. There is some merit in the Respondent’s contention that the Complainant’s trade mark rights should be narrowly construed. That is, on the basis that Programma has a meaning in various languages and is akin to the English word program, as in computer program.
Having said this, the fact that Programma has a meaning in certain European languages, does not necessarily render the word entirely generic/descriptive in English. This may explain why the Complainant has been able to secure trade mark registration rights in certain countries.
In addition to registration rights, it is clear from the evidence filed that the Complainant trades internationally, either through subsidiary companies or a distribution network. In relation to Israel, it appears from the evidence that the Complainant, through its various distributors, has traded in that country. However, it is difficult to ascertain the nature and extent of any such trading activities and by the same token whether the Complainant has an extensive reputation in that country.
Unfortunately, the Complainant’s evidence on its international reputation is very limited. Certain inferences can be drawn. However, on the key issue of the nature and extent of its international reputation, more compelling evidence would have been expected.
In this dispute, the Respondent has raised a reasoned and spirited defence. Its submission is that the complaint is without foundation and that the areas of activities of the parties are quite separate, and if any reputation exists in relation to the Complainant’s activities, it should be restricted to a narrow and specialised niche of high voltage electric equipment and apparatus.
Whilst the Complainant may succeed in establishing that the Domain Names and its Programma trade mark are identical, it also needs to be shown that such identity is in relation to a trade mark in which the Complainant has rights. This raises the question as to where such rights must subsist. While arguably the Complainant is able to show it has an international reputation, it has made little effort to allege and substantiate a particular reputation in Israel. This issue has a bearing on the question of bad faith, particularly as the Respondent resides in Israel and his state of mind must be judged, at least in part, against a background of whether such reputation exists in Israel, as well as internationally. This will be discussed below.
For reasons which will also become apparent below, while it is felt that this ground may have just been made out, it is not on any convincing basis and the reasons for this view will become clear when the other grounds are discussed below.
No rights or Legitimate Interests
When asking whether the Respondent has any rights or legitimate interests in the Domain Names, it needs to be borne in mind that while the Complainant has certain rights in the Programma trade mark and has likewise registered certain Domain Names with that element, so have other parties in other countries. The Complainant can certainly claim to have no exclusive right to the Programma word, particularly in areas outside its narrow business activities.
It needs to be borne in mind that the Respondent’s first domain name <programma.com> was registered before any contact between the parties. Given the descriptive nature of the term Programma, the limited evidence as to reputation and the fact that other parties have legitimate interests in the Programma name, leads the Panel to the view that it cannot be clearly stated that the Respondent had no right or legitimate interest in respect of that domain name. Accordingly, it is found that this ground has not been made out by the Complainant in relation to <programma.com>.
Having said this, the panel is not so convinced in relation to the other two domain names, <programma.net> and <programma.org>. The reasons for this view are explained below.
Domain Names Registered And Used In Bad Faith
It is common ground that the <programma.net> and <programma.org> domain names were registered after the parties were in communication and according to the Respondent such registration was "justified to protect Respondent’s rights in <programma.com>." It is unclear as to why the Respondent felt justified in registering these two additional domain names in order to protect its so-called rights. The Respondent has indicated that there was nothing untoward about his communications with the Complainant. However, it may also be reasonable to infer from the statement "How much are you willing to pay for the domain name?" an intention or willingness to sell the domain name for the right price.
In the Panel’s view, while the scales are relatively evenly balanced, the Complainant has established sufficient evidence to show that the <programma.net> and <programma.org> domain names were registered in bad faith and certainly nothing the Respondent has said had displaced this inference.
As to whether the said two domain names have been used in bad faith, it can be inferred on the facts before the panel that the Respondent’s willingness to consider selling the <programma.com> domain name and then registering the other two domain names, formed a material part of whatever purpose the Respondent had in mind. Further, the Panel is unaware of any requirement that the Respondent actually use the disputed Domain Names and mere holding of the Domain Names without lawful right can amount to bad faith.
In view of the above, the Complainant’s claim is dismissed in relation to <programma.com>, but upheld in relation to <programma.net> and <programma.org>. Accordingly, the former domain name should remain with the Respondent, while the latter two Domain Names should be transferred to the Complainant.
Dated: February 14, 2001