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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Oneline AG v. John Walker
Case No. D2001-0671
1. The Parties
The Complainant is Oneline A.G., a registered German corporation of Steinfeldstraße 3, 39179, Barleben, Germany.
The Respondent is John Walker of PO Box 46029, Herne Bay, Auckland 1002, New Zealand.
2. The Domain Name and Registrar
The Domain Name is <oneline.com>, and is registered by eNom Inc., of 16771, 80th Street, Suite 100, Redmond, WA 98052, USA.
3. Procedural History
(1) The Complaint in Case D2001-0671 was filed on May 18, 2001, and was notified to the Respondent on June 7, 2001.
(2) The WIPO Arbitration and Mediation Center has found that:
- the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules for the Uniform Domain Name Dispute Resolution Policy;
- payment for filing was properly made;
- the Complaint complies with the formal requirements;
- the Complaint was properly notified in accordance with the Rules, paragraph 2(a);
- a Response to the Complaint was filed in due time; and that
- the Administrative Panel was properly constituted.
As Panelist, I accept these findings.
(3) As Panelist, I submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
(4) The date scheduled for issuance of a decision is July 25, 2001.
(5) No extensions have been granted or orders issued in advance of this decision.
(6) The language of the proceedings is English.
4. Factual Background
(1) The Respondent registered the domain name at issue on April 4, 1998.
(2) The Complainant applied to register the trademark, "Oneline", in Germany on February 2, 2000, for a variety of services and goods in Classes 36-38 and 42 concerned with the marketing and sale of telecommunications and business equipment and services. On July 20, 2000, the mark was registered in that country. Subsequently, the World Intellectual Property Organisation issued a Certificate of Registration of the mark for these services and goods in a considerable number of countries under the Madrid Agreement and Protocol.
(3) An application to register the mark has been filed by the Complainant in the United States Patent and Trademark Office on March 19, 2000. The Respondent has produced evidence of thirteen applications to that Office for trademarks consisting of or including the word "Oneline", only one of which has been made by the Complainant. He also demonstrates that in Canada, "Oneline Direct" has been registered by an unassociated company.
5. Parties’ Contentions
The Complainant asserts the following:
(1) Its corporate name has been used to form a trademark to which the domain name in dispute is (but for the TLD) identical.
(2) The Respondent has no rights or legitimate interests in respect of the domain name (see UDNDRP, Paragraph 4(c)). He has not used, or made demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services.
(3) On the contrary, the Respondent has registered the domain name and is using it in bad faith. It has been made available on the resale market and on two occasions has been offered to the Complainant for excessive sums of money.
The Respondent asserts the following:
(1) The Complainant has not established that the domain name at issue gives rise to confusing similarity to its trademark. No evidence of actual use of the latter in trade is provided. The mark is substantially descriptive of the services and goods for which it is mainly registered – a reason why it is present in numerous other US applications and perhaps why none of those has yet been registered.
(2) The Respondent registered the domain name and two others with the intention of offering telecommunications systems which converged onto one line. Failures in the Internet and information technology markets prevented him from developing the sites. His registration was made without knowledge of the Complainant or its business and was in the circumstances perfectly legitimate.
(3) The Respondent's conduct does not establish evidence of bad faith within the meaning of the UDNDRP, Paragraph 4.
6. Grounds for Decision
Under the UDNDRP, no complaint can succeed unless there is an applicable dispute in accordance with the three-fold test specified in Paragraph 4(a). The first of these requirements is that the Respondent's domain name in issue is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights. The Policy was introduced to deal, not with those who register, acquire, use or deal in attractive domain names in general, but with those who include in a domain name a trademark with the result that some potential uses of the domain could realistically lead to confusion with that mark. This factor and the special interest which it may give the Complainant in having the domain name itself without having to pay an above-cost sum for it justify the remedies available under the Policy. But those remedies are open only when the other two elements in the three-fold test are also made out – bad faith and no legitimate right or interest.
Given the summary nature of the Dispute Resolution procedure, there must be clear evidence that the domain name to which the Complainant objects will be identified with its trademark or will be confused by the public through similarity to that mark. It is not necessarily enough that the Complainant may hold relevant trademark registrations in or for one or more countries, let alone that it has made applications to register marks which have not yet succeeded. A Complainant's case is inevitably strengthened where there is substantial evidence of actual use of its mark. In this case, no such evidence is proffered. Likewise it is necessary to take account of the inherent distinctiveness of the mark as an indication of the source of a Complainant's goods or services. Here, as the Respondent has submitted, "oneline" encapsulates a desirable characteristic of the services and goods for which the Complainant has acquired, or is seeking, registration of the mark. Because of this nature it is not immediately recognizable as a trademark. It is accordingly doubtful whether the Complainant has satisfied even the first requirement of the three-fold test.
In any case, it is in my opinion clear that the Complainant has not made out the requisite of bad faith on the part of the Respondent There is no evidence from which it can be inferred that, at the time when the Respondent registered the domain name at issue, the Complainant had adopted or had registered the equivalent mark anywhere in the world or had evidenced any intention of doing so. There is thus nothing to contradict the Respondent's assertion that he had never heard of the Complainant. Whatever may have happened between Complainant and Respondent at a later stage, at the date of domain name registration there is no basis for saying that the Respondent obtained the domain in bad faith directed at the Complainant. Yet the UDNDRP, Paragraph 4(b) explicitly states that bad faith must be made out at this initial point in time as well as during use. In addition, no sufficient case has been presented that the Respondent obtained his registration without right or legitimate interest to do so.
For these reasons, the Panel decides, in accordance with the Uniform Domain Name Dispute Resolution Policy, Paragraph 4, that the Complaint should be dismissed.
William R. Cornish
Dated: July 25, 2001