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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Activeworlds, Inc. v. Carnatic Trade Links Pvt. Ltd
Case No. D2001-0249
1. The Parties
Complainant: Activeworlds, Inc., 95 Parker Street, Newburyport, MA 01959, United States of America.
Respondent: Carnatic Trade Links Pvt. Ltd., Ronny Villa, 2nd Crs, Wind Tunnel Rd., Murgeshpalya, Bangalore, Karnataka, 560017, India.
2. The Domain Name and Registrar
The domain name is <activeworld.com>; the registrar is Network Solutions Inc., 505 Huntmar Park Drive, Herndon, VA 20170, United States of America.
3. Procedural History
The Complainant e-mailed a complaint to the WIPO Arbitration and Mediation Center (the Center) on February 15, 2001 about the Respondent’s domain name. The Center acknowledged the complaint on February 22, 2001. The Center received the Complainant’s submission in hard copy on February 19, 2001. It complied with the ICANN Rules and Supplementary Rules and included the appropriate fee payment.
The Center sought verification of the disputed domain name from Network Solutions Inc. (NSI) on February 23, 2001. NSI’s verification was received on February 26, 2001 confirming the Respondent holds the disputed domain name registration. The Center communicated the complaint to the Respondent on February 27, 2001 and sent copies to the Complainant, ICANN and Network Solutions Inc. The Center’s communication informed the Respondent of the administrative procedure and that the last day for a response was March 18, 2001.
The Respondent replied by the due date.
The Panel member submitted his Statement of Acceptance and Declaration of Impartiality and Independence to the Center on March 28, 2001 and was formally appointed on March 30, 2001.
The Panel has not received any additional submissions. The proceeding was conducted in English and the Panel’s decision is scheduled to issue on April 14, 2001.
4. Factual Background
The Complainant is a corporation of the State of Nevada, USA providing Internet software products and services that enable the efficient delivery of three-dimensional content over the Internet and intranets. The software allows users to create objects and structures in virtual worlds which other users can see and explore in real time. The company also serves as an application service provider and permits users to license its technology for integration into their web applications which may be hosted on Activeworlds Inc.’s server.
The Complainant and its predecessor (Circle of Fire Studios, Inc) first used the words "active worlds" on August 21, 1996 in connection with the provision of its services.
On May 6, 1999 the Complainant filed a trademark application for the words ACTIVE WORLDS. It was registered as a trademark for Classes 9, 38 and 42 on May 9, 2000. (The trademark registration cited first use as from August 21, 1996). On December 12, 2000 the Complainant filed another application for the word ACTIVEWORLDS. The application cited first use on January 22, 1998. The trademark has been accepted subject to any opposition.
According to Network Solutions Whois database the following domain names were create for the Complainant: activeworlds.com on March 4, 1998, activeworlds.org on March 30, 1999 and activeworld.net and activeworld.org on March 31, 1999.
The Respondent, Carnatic Trade Links Pvt. Ltd. is a limited liability company incorporated in Karnataka, India on October 24, 1994. Its business involves trading in computers, computer peripherals and accessories, networking products and offering services and installation, establishing active and passive networking, maintenance and support and ancillary services. It uses the trade names Activeworld Technologies and Active Infotech.
According to Network Solutions Whois database the Respondent’s domain name was created in the database on January 4, 2000.
On February 15, 2000 the Complainant contacted the Respondent offering to purchase the disputed domain name because it was similar to its company name and "in the interests of preventing confusion". The Respondent’s reply of February 16, 2000 stated that it was planning to set up a web domain for its company at that address, however, it would give the request some thought and get back to the Complainant as soon as possible.
The Respondent did not take any further action. As a consequence, the Complainant’s legal representatives demanded on March 3, 2000 that the Respondent cease and desist using the disputed domain name. On June 22, 2000 the Complainant enquired of the Respondent how much it wanted for the domain name. The Respondent replied on June 28, stating that it had no plans to sell because it has designed a web portal and has "ensured that it wouldn’t coincide [sic] with your business activities in any manner, whatsoever". In the same reply the Respondent asked what might be the upper limit of the offer. The Complainant indicated on June 30, 2000 that it might be able to pay up to $US 5000. The Respondent stated in reply on July 5, 2000 that the offer did not "even match a fraction of what we have already paid to our web developers to design our web portal" and that the sale of its domain name "is off the cards as of now, we will continue with our development plans".
On March 3, 2001, the Respondent placed an order, in the name of Active Infotech, to a service provider for hosting of its website.
5. Parties’ Contentions
The Complainant contends that:
- The Respondent’s domain name is identical or confusingly similar to the Complainant’s trademark
- The Respondent has no right or legitimate interest in the disputed domain name
- The Respondent is not a licensee of the Complainant or affiliated in any way with the Complainant
- The Respondent’s use of the mark has been without the Complainant’s authorisation or consent
- The Respondent has knowledge of the Complainant’s mark and business activities and actually assured the Complainant that the Respondent’s use of the domain name would not interfere with the Complainant’s business activities
- There is no evidence that the Respondent was making any use of the domain name in connection with a bona fide offering of goods and services
- The Respondent has not set up an active website with the domain name in over a year since it acquired the domain name. In fact, the Respondent has simply parked the disputed domain name on the "Domains Are Free.com" web site for the past year
- The Respondent is not commonly known by the disputed domain name
- The Respondent is not making a legitimate non-commercial or fair use of the domain name without the intent for commercial gain to misleadingly divert customers or to tarnish the trademarks or service marks of the Complainant
- Based on the Respondent’s conduct in connection with the domain name it is clear that it has been registered and used in bad faith
- The Respondent’s conduct indicates that it registered and acquired the domain name primarily for the purpose of selling the name for valuable consideration in excess of the Respondent’s out-of-pocket expenses directly related to the domain name.
The Respondent contends that:
- It has registered the domain name for the legitimate business need to have a web presence for its trade names Activeworld Technologies and Active Infotech and to offer bone fide goods and services
- It has established a presence among its client base by the use of the trade name and therefore has a legitimate right to use the domain address to further its business.
- The Respondent’s business activities are distinctly different from those of the Complainant and so there is no confusion expected from the use of its trade name.
- The clients of the Respondent and the Complainant are distinctly different, and thereby, there is no unfair advantage to the Respondent from the similar nature of the names
- The Complainant has not used the trade name Activeworld and thereby is making a false claim that there has been infringement on its own trademarks, which as submitted by the Complainant are different from Activeworld.
The Complainant in reply contends that:
- The Respondent’s services and products are similar to those of the Complainant as both are directed at the various computer needs in the marketplace
- The documents upon which the Respondent relies in support of its defence do not establish a legitimate use
- The Respondent’s proposed website contents is of basic design and could have been done within a few days without extensive effort or expense
- The Respondent has not designed a website but merely expressed an intent to design a website
- The Respondent has not produced any evidence or documentation that establishes a bona fide use of the disputed domain name
- The Respondent has not registered any of its trade names in full suggesting that it does not have an established business and is evidence of bad faith.
6. Discussion and Findings
In accordance with the ICANN Policy, the Complainant must prove that: (i) the Respondent’s domain name is identical or confusingly similar to a trademark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the domain name; and (iii) the Respondent’s domain name has been registered and is being used in bad faith.
(i) the Respondent’s domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
The disputed domain name is activeworld.com and it differs from the Complainant’s trademark by being the singular of the Complainant’s activeworlds. The singular version of the trademark does not make it distinctive (see Electronics Boutique Holdings Corp. v. Zuccarini, No. Civ. A. 00-4055, 2000 WL 1622760 E.D. Pennsylvania October 30, 2000 and Shields v. Zuccarini, 89 F. Supp.2d 634, No.CIV.A. 00-494 E.D. Pennsylvania March 22, 2000). While not identical the Panel finds that of the disputed domain name is confusingly similar to the Complainant’s trademark.
(ii) the Respondent has no rights or legitimate interest in respect of the domain name.
ICANN’s Uniform Domain Name Dispute Resolution Policy Rule 4 c sets out how a Respondent can demonstrate rights to and legitimate interest in the disputed domain name. The ways include, but are not limited to:
(a) before any notice to you of the dispute, your 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; or
(b) you (as an individual, business, or an organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(c) 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.
The key to (i) is in proving that before being advised of the dispute (in this case February 15, 2000) there was use or demonstrable preparations to the domain name. The Respondent admits (see page 5 of Response) that there is no evidence that he was making any use of, or demonstrable preparations to use the domain name. Separately, evidence was provided that shows some preparation for a website has now taken place but its text is clearly labelled "Copy Rights 2001". Also, it contains documents from a third party dated March 15, 2001 and April 11, 2001. The copyright date and the recently dated documents suggest that the domain use preparations do not predate the advice of the dispute.
The Respondent states that his trade names are Activeworld Technologies and Active Infortech. Also, he states (see page 5 of the Response) that he is known among his clients by his trade name. At no time has the Respondent stated (nor has any evidence shown) that he is commonly known by a shortened version of the trade names. In fact all the evidence provided by the Respondent indicates that his activities are known by the trade names in full.
The Respondent has had the domain name now for over 15 months and has not used it for any purpose. The domain name does not resolve to any web site containing legitimate non-commercial use or commercial activity by offering goods and services. The domain name is currently passively "parked" at a site Domains Are Free.com.
Within three weeks of receiving the complaint notice from the Complainant the Respondent arranged on March 3, 2001 for a service provider to host his website. A check made six weeks later still indicates that no website exists.
Based on all the evidence presented it is the Panel’s view that the Respondent has not been able to demonstrate any rights or legitimate interests to the disputed domain name.
(iii) the Respondent’s domain name has been registered and is being used in bad faith.
For the purposes of determining if there was bad faith the Panel considered the circumstances of the registration and use of the domain name as set out in 4 b of ICANN’s Uniform Domain Name Dispute Resolution Policy (UDRP) noting that it does not impose any limitation on how the registration and use of a domain name in bad faith is evidenced.
While the Complainant initiated an approach to buy the Respondent’s domain name, the Respondent did enquire as to what amount would be offered indicating "no promises but we would like to think over your offer". The Complainant offered $US 5000 to which the Respondent replied on July 5, 2000 "…your offer doesn’t even match a fraction of what we have paid as advances to our web developers to design our web portal…". Nine months later the website has still not been developed.
The Panel is of the same view as the Complainant with respect to the fact that the website development details provided by the Respondent are "of basic design and could have been done within a few days without extensive effort or expense". The paucity of information contained in the website development files certainly refutes the Respondent’s claimed that the Complainant’s offer of $US 5000 was only "a fraction of what we have paid". Also, as mentioned above, text in the some of the files has a copyright date of 2001 and other documents have March and April 2001 dates, the following year to that when the Respondent indicated that it had paid substantial advances to its web developers.
In the Panel’s view the factors in this case supporting registration and use in bad faith are:
- The very basic nature of the website development file provided by the Respondent and its references to a text copyright year of 2001 and documents containing 2001 dates completely counter the Respondent’s claim that, prior to February 15, 2000 (the date the dispute was notified) it had paid to its website developers far in excess of the $US 5000 offered by the Complainant.
- The Respondent has not used the domain name whether it be for any commercial or non-commercial purpose. Many URDP decisions have held that inaction or the lack of any legitimate good faith use suggests bad faith (see World Wrestling Federation Entertainment Inc v. Michael Bosman D1999-0001, Robert Ellenbogen v. Mike Pearson D2000- 0001, Interep National Radio Sales, Inc v. Internet Domain Names, Inc D2000-0174 and Telstra Corporation Limited v. Nuclear Marshmallows D2000-0003).
- The Respondent has not provided any independent evidence supporting its actual registration of its company and use of its trade names. Also, it appears that the Respondent has sought out the Complainant’s trademark only and has not chosen to seek domain name registrations of its company Carnatic Trade Links and its full trade names of Activeworld Technologies and Active Infotech.
In accordance with the Uniform Domain Name Dispute Resolution Policy [paragraph 4 b], the Panel finds that the Respondent registered and used the disputed domain name in bad faith.
In accordance with the Policy, Rules and prior authority the Panel has decided that the disputed domain name is identical or confusingly to the Complainant’s trademark, the Respondent has no rights or legitimate interests in respect of the domain name and the Respondent’s domain name has been registered and used in bad faith. Accordingly, the Panel requires the Respondent to transfer the domain name to the Complainant.
Dated: April 14, 2001