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WIPO Domain Name Decision: D2000-1740
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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tyco International Services AG and Tyco International (US) Inc v. Paul Quinn
Case No. D2000-1740
1. The Parties
The Complainants are Tyco International Services AG of Schwertsrasses 9, Schaffhausen, Switzerland CH-8200 and Tyco International (US) Inc of One Tyco Park, Exeter, New Hampshire O3833, United States of America.
The Respondent is Paul Quinn of 81 Sheelin Road, Caherdavin Park, Limerick, Ireland.
2. The Domain Name and Registrar
The domain name on which the Complaint is based is <tycoventures.com>.
The registrar with which the domain name is registered is BulkRegister.com, 7 East Redwood Street, Third Floor, Baltimore, MD 21202, United States of America.
3. Procedural History
3.1 The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution Policy approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 ("the Policy") in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, also approved by ICANN on October 24, 1999 ("the Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect as at December 1, 1999 ("the Supplemental Rules").
3.2 The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") on December 13, 2000.
3.3 The Center has stated in its "Formal Requirements Compliance Checklist" dated December 21, 2000 that:
- The Complaint was filed in accordance with the requirement of the Rules and the Supplemental Rules.
- Payment for filing was properly made.
- The Complainant has complied with the formal requirements.
3.4 The Panel accepts these findings and itself finds that:
- The Complaint was properly notified in accordance with the Rules, paragraph 2(a), having been sent to the Respondent by Post/Courier and E-mail on December 21, 2000.
- Having received a response from the Respondent within the specified time in the Notification of Complaint, the Center noted a number of deficiencies in the response and requested that these deficiencies should be remedied in a Response Deficiency Notification dated
January 3, 2001.
- On January 30, 2001, the Center issued to both parties a Notification of Appointment of Administrative Panel and Projected Decision Date. The notification informed the parties that the Administrative Panel would be composed of a single member and that, in the absence of exceptional circumstances, the decision of the Panel was to be forwarded to the Center by February 12, 2001.
- The Administrative Panel was properly constituted.
3.5 On February 13, 2001, the Panel made a request of the Complainants pursuant to paragraph 12 of the Rules. A response to this request was filed by the legal representative of the Complainants on February 16, 2001.
4. Factual Background
4.1 According to the Complaint (para 12(a)), the First Complainant is the owner of the TYCO and TYCOVENTURES marks and the Second Complainant is the exclusive licensee of these marks. No details are provided in the Complaint as to whether and where these marks are registered, but the Complaint goes on to state that both Complainants (collectively referred to as "Tyco") are the world’s largest manufacturer, installer and providers of fire protection systems and electronic security services, have a strong leadership position in disposable medical products, plastics and adhesives, and are the world’s largest manufacturer of flow control valves. It goes on to state that Tyco operates in more than 80 countries around the world and has fiscal revenues in excess of $22 billion. It states further that Tyco has used the mark TYCO in the United States and elsewhere around the world since 1977 in relation to the above mentioned goods and services, and that there has been extensive promotion of the mark, particularly in the past two years. Following a request from the Panel pursuant to paragraph 12 of the Rules (see above), the Complainants advised that they have registrations for the TYCO trade mark in some 11 countries in a large number of classes and have applied for registration in another 60, including the USA, European Community, Canada and Australia. The dates of these registrations, where obtained, are not referred to.
4.2 The Complaint also relates that on March 14, 2000 Tyco sent out a press release announcing the creation of a venture capital operation to identify and to invest in companies with a focus on communications, healthcare and emerging technologies. This operation was called Tyco Ventures and has operated under the mark TYCO VENTURES since that date. The response to the Panel’s request (see above) does not indicate whether any registrations of this mark have occurred or whether any applications for registration are in train. No supporting documentation in relation to the creation of Tyco Ventures or its operations has been provided to the Panel.
4.3 According to the freedomainreservation.com Whois database, the Respondent is listed as the Registrant and Administrative and Technical Contact for the domain name <tycoventures.com> (Complaint, Annexe A), having been registered on March 14, 2000 for a period of two years. This registration was created with Bulkregister.com.Inc (Complaint, Annexe B).
4.4 The only information before the Panel concerning the Respondent is that he is resident in Ireland (Response).
5. Parties’ Contentions
The Complainants address each of the elements described in paragraph 4(a) of the Policy as follows.
- With respect to the element described in paragraph 4(a)(i), the Complainants assert that they have valid and subsisting rights in the TYCO and TYCO VENTURES marks. As noted above, there is evidence of the registration of the TYCO mark in a number of countries and that applications for registration have also been made in a far larger number of countries. The Complainants further state that the TYCO mark has been used, both in the USA and elsewhere, since 1977 and has been widely advertised and promoted. It does not seem that the mark TYCO VENTURES has been registered anywhere at this stage, but the Complainants assert that it has been used since March 14, 2000. Under this heading of their Complaint, the Complainants do not state whether they regard the domain name <tycoventures.com> as being identical or deceptively similar to TYCO or TYCO VENTURES or both, and on what basis this is put. However, under the following heading (which deals with paragraph 4(a)(ii) of the Policy) they assert that the disputed domain name is identical to the TYCO VENTURES mark (leaving aside the word.com as being of no legal significance). This would suggest, then, that their case is put on the basis of identity or deceptive similarity to the TYCO VENTURES mark rather than the older TYCO mark. However, in other parts of the Complaint both marks are referred to interchangeably and the Panel has therefore considered the arguments in relation to identity and deceptive similarity in relation to both marks (see below).
- With respect to the element described in paragraph 4(a)(ii), the Complainants submit that there is no evidence of any right or legitimate interest by the Respondent in the domain name <tycoventures.com>. The Respondent owns no trade mark or service mark registration for TYCO or TYCO VENTURES and has no consent from the Complainants to register or use a domain name comprising the TYCO mark. The domain name does not resolve to any website or online presence, and it is asserted that there has been no legitimate or commercial use of the name.
- With respect to the element described in paragraph 4(a)(iii) of the Policy, the Complainants assert that the disputed domain name was registered by the Respondent in March 2000, soon after the Complainants had announced the establishment of the Tyco Ventures operation and its adoption of the TYCO VENTURES name. They also refer to several attempts by the Respondent to sell the disputed domain name to them for a sum in excess of the out of pocket expenses of registration, and that this points to the Respondent’s registration and use of the disputed domain name in bad faith.
As noted above, the Respondent has filed an incomplete Response to the Complaint, but has not rectified the deficiencies notified to him by the Center. The latter are of a procedural character, and as to matters of substance the Respondent makes the following submissions.
The name Tyco Ventures.com was available for registration on a first come first served basis and, as at March 14, 2000, Tyco had "not made any attempt to register this name". The Respondent therefore did not see any reason why he should not register the name as "in this free market economy it is not a crime to do so." He goes to state that he was subsequently contacted by Tyco and offered to sell the domain name for its "market value". He denies acting in bad faith and asserts that Tyco should have acted more quickly to obtain the name for itself, asking why (rhetorically) he should now have to hand it over without receiving market value for it.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant has the burden of demonstrating three elements.
6.1 That the Complainant has rights in a trade or service mark with which the Respondent’s Domain Name is identical or confusingly similar
As noted in paragraph 4.1 above, the Complainants have only provided evidence of registration and applications for registration of its mark TYCO. Registration is an obvious means by which a Complainant can demonstrate its rights in a trade or service mark, but it is quite possible that unregistered marks may be protected by virtue of their usage and reputation. In the case of the TYCO mark, the Complainants have provided some evidence as to the length of the use of this mark and the volume of sales made under it, and the Panel is prepared to conclude that this is a mark in which the Complainants have rights.
In the case of TYCO VENTURES, however, it is far from clear what rights have arisen in this mark since the creation of the Tyco Ventures operation since March 2000 and where this usage has occurred. Where a mark is unregistered, it is incumbent upon a Complainant to show clear evidence of use and reputation to support its assertion that it has rights and interests in that mark. In the present case, this has not been done and there is only the bare assertion by the Complainants that such usage has occurred. On the basis of the material before it, the Panel is not able to conclude that Complainants have "rights" in the unregistered mark TYCO VENTURES. Accordingly, it is not possible for the Complainants to establish the next part of their case, namely that the disputed domain name <tycoventures.com> is identical to TYCO VENTURES.
On the other hand, it is still relevant to consider whether the disputed domain name can be regarded as identical or deceptively similar to the TYCO mark. As stated above, it is not clear that the Complainant has framed its case with respect to TYCO rather than TYCO VENTURES. However, on the basis that the Complainants have provided some evidence of registration and use of the TYCO marks, it would be artificial for the Panel to exclude the latter from its consideration. Clearly, there is not identity between the TYCO mark and the disputed domain name <tycoventures.com>, but the question of deceptive similarity is more arguable. The Complainants have not advanced any specific submissions on this point, and the Panel is therefore left to draw its own conclusions. On the one hand, it can be argued that there is deceptive similarity between TYCO and <tycoventures.com>, on the basis that the word TYCO comes first in the disputed domain name and is a strong component of the name, with the word "ventures" being of a more common or descriptive character. Moreover, it seems clear that the TYCO mark has been extensively used in many countries, and there are large sales that have occurred under this mark. On the other hand, <tycoventures.com> is a much longer name than TYCO and the "tyco" loses its prominence when it is run together as the one word with "ventures". Ideally, the Panel would have preferred to have before it fuller evidence from the Complainants on the extent of usage of the TYCO mark and specific submissions on the issue of deceptive similarity. On balance, however, the Panel is prepared to conclude that sufficient deceptive similarity between the mark TYCO and the disputed domain name <Tycoventures.com> has been made out for the purposes of paragraph 4(a)(i).
6.2 That the Respondents must be shown to have no rights or legitimate interests in the Domain Name
Paragraph 4(c) of the Policy sets out certain matters which a Respondent can point to as demonstrating rights or legitimate interests in a disputed domain name for the purposes of paragraph 4(a)(ii). These include:
"(i) before any notice to you [the Respondent] of the dispute, your use, 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; or
(ii) you (as an individual, business, or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial 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."
In the present proceeding, there is no evidence that the Respondent has used the domain name <tycoventures.com> in connection with any bona fide offering of goods and services (subpara (i)). Nor is there any evidence of "demonstrable preparations" to use the domain name in that way (subpara (i)). Likewise, there is no evidence before the Panel that indicates that the Respondent has ever carried on a business under the name "Tycoventures" or any variant of those words, or that it has been commonly known by that name (subpara (ii)). Furthermore, there is no evidence that on which the Panel can make any assessment of the matters referred to in subpara (iii), i.e. whether the Respondent has made or is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to mislead customers or to tarnish the trade mark at issue.
The matters referred to in paragraph 4(c) are not an exhaustive statement of what may constitute rights or legitimate interests in a domain name, and it is therefore open to a Respondent to point to other evidence that may show this. In the present proceeding, all that the Panel has before it in this regard is the assertion by the Respondent that he was free to register the domain name in the absence of any prior registration by the Complainants and that this somehow gives him some kind of legitimate interest in the name. This is a bootstraps argument that can hardly satisfy the requirements of paragraph 4(a)(ii) of the Policy. The Panel therefore concludes that the Complainants have established this element of paragraph 4(a) of the Policy, namely that the Respondent has no rights or legitimate interests in the disputed domain name.
6.3 That the Respondent registered and is using the Domain Name in bad faith
Paragraph 4(b) of the Policy lists certain factors which, if found by the Panel to be present, shall be evidence of registration and use of a domain name in bad faith. This is not an exclusive list, and includes:
"(i) circumstances indicating that you [the Respondent] have registered or you have 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 or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location."
It will be noted that, under paragraph 4(a)(iii) of the Policy, both registration and use of the domain name in bad faith are required. Of the factors listed in paragraph 4(b) above, (i)-(iii) relate specifically to registration (and acquisition) of the name, while (iv) relates to use following registration. However, in view of the fact that these factors are stated to be inclusive, it follows that there can be other factors that can be relied upon to point to bad faith, both in registration and in use. In this regard, it is worth noting an early decision of an Administrative Panel to the effect that registration in bad faith followed by a passive holding of a domain name when there is no way in which it could be used legitimately can amount to use in bad faith: Telstra Corporation Ltd v Nuclear Marshmallows WIPO Case D 2000-0003. In addition, it would be both mistaken and artificial to confine paragraphs (i)-(iii) solely to the time of registration: presumably, it would also be a use of a disputed domain name in bad faith to do so, after registration, with one of the purposes outlined in those paragraphs. Support for this view is to be found in several Panel decisions: see, for example, Estee Lauder Inc v estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No 2000-0869 and E & J Gallo Winery v Hanna Law Firm, WIPO Case D2000-0615.
In the light of the above, the Panel makes the following findings:
- With respect to the factor mentioned in subpara 4(b)(i), the Complainants point to a number of indications that the Respondent registered the disputed domain name for the purpose of selling or transferring it for valuable consideration in excess of out of pocket expenses. In particular:
- The date of registration of the disputed domain name <tycoventures.com> was soon after the date on which the Complainants announced its adoption of the name TYCO VENTURES.
- There was an alleged offer by the Respondent to sell the domain name to Tyco in March 2000 shortly after this date (Complaint, (c), p 8). This is confirmed by the Respondent himself in an email to a Tyco executive dated October 26, 2000 (Complaint, Annexe E), in which he says that "you guys [the Complainants] did not want it [the domain name] at the time."
- In the same email message on October 26, 2000, the Respondent repeated his offer to sell the domain name, stating that he was also currently in talks with a third party that was interested in purchasing it. He went on to state that he did not want to start an "auction" between the Complainants and the unnamed third party, but that "whoever sends in the best first offer" would receive the name.
- On November 13, 2000, the Respondent again telephoned Tyco and offered to sell the domain name for $12,000 (Complaint, p 9), although no supporting evidence of this offer is provided.
- In light of the above, there is sufficient evidence to support a finding of registration and use of the name <tycoventures.com> in bad faith under paragraph 4(b)(i): to similar effect, see World Wrestling Federation Entertainment v Bosman, Case No D99-0001 and Ellenbogen v Pearson Case No D2000-0004.
- It is unnecessary to consider the other heads of bad faith listed under paragraph 4(b).
- The Complainants have therefore established that the Respondent registered and used the disputed domain name in bad faith for the purposes of paragraph 4(a)(iii) of the Policy.
The Panel finds that the Complainants have established their case with respect to each of the elements stated in paragraph 4(a) of the Policy.
Having reached this conclusion, however, the Panel must observe that the Complainant’s case nearly foundered upon the requirement in paragraph 4(a)(i). In each instance where a complainant is seeking removal of a registered domain name under this Policy, it must clearly establish its "rights" in the marks that are alleged to be identical or deceptively similar. Where registrations of marks have been affected or are in train, evidence of these should be provided, with some indication of the duration of the registration. Where use and reputation are asserted as the basis of rights in an unregistered mark, evidence of these matters should be given, not mere assertions. In the present case, it should have been possible to provide evidence of the launching of the Tyco Ventures operation and the general usage of the mark in relation to this enterprise. Had this been done, it is likely that the Panel would have been able to make clear findings on the requirements of identity or deceptive similarity as between the mark TYCO VENTURES and the disputed domain name <tycoventures.com>. In the absence of such material, it was necessary for the Panel to resolve the Complaint by reference to the question of whether there was deceptive similarity as between the TYCO mark and the disputed domain name, and on this point it would have helpful to have had the benefit of specific submissions from the Complainant. In a case such as this, it is not enough to rely simply on the fact that the Respondent’s conduct is clearly impeachable under the other parts of paragraph 4(a), in the expectation that this will then carry the day. The precondition for a Panel making a decision is that the Complainants have shown their rights in a mark or marks on which it is then possible to reach conclusions with respect to the questions of identity or deceptive similarity.
The Administrative Panel accordingly directs that the registration of the domain name <tycoventures.com> should be transferred to the Complainants.
Dated: February 19, 2001