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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PrintForBusiness B.V v. LBS Horticulture
Case No. D2001-1182
1. The Parties
Complainant is PrintForBusiness B.V, a corporation organised and existing under the laws of The Netherlands.
According to the WHOIS information, Respondent is LBS Horticulture, Lancashire, United Kingdom. However, the actual user of the domain name is said to be a company called Consumable Products, Ltd., United Kingdom.
2. The Domain Name and Registrar
The domain name at issue is <print4business.com>.
The registrar is Melbourne IT Ltd, Melbourne, Australia.
3. Procedural History
A Complaint was submitted to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on September 27, 2001, and subsequent in hard Copy on October 2, 2001. The WIPO Center sent an "Acknowledgement of Receipt of Complaint" to the parties on October 2, 2001. An amendment of the Complaint was filed on October 19, 2001.
On October 15, 2001, a Request for Registrar Verification was transmitted to the Registrar, Melbourne IT Ltd. On October 16, 2001, the Registrar confirmed that they were in receipt of the Complaint sent to them by the Complainant and that the domain name <print4business.com> was registered with them and was in "active"status. The Registrar forwarded at the same time the requested WHOIS details.
A Formal Requirements Compliance Checklist was completed by the assigned WIPO Center Case Administrator on October 23, 2001. The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in compliance with the requirements of the Uniform Dispute Resolution Policy ("the Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999 (the "WIPO Supplemental Rules").
The fees for a single-member Panel were paid on time and in the required amount by the Complainant.
All formal deficiencies having been cured, on October 23, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent by the required means, setting a deadline of November 12, 2001, by which the Respondent could file a Response to the Complaint.
On November 15, 2001, having received no Response from the designated Respondent, the WIPO Center transmitted to the parties a Notification of Respondent Default.
Between November 15 and November 29, 2001, there was some fax and e-mail correspondence between the parties in the case, a representative for the actual user of the domain name and the WIPO Center, the content of which will be touched upon below.
On December 3, 2001, the WIPO Center invited Knud Wallberg to serve as a panelist in the Case, and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence.
Having received Knud Wallberg’s Statement of Acceptance and Declaration of Impartiality and Independence, the WIPO Center transmitted on December 7, 2001, to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Knud Wallberg was formally appointed as the Sole Panelist. The Projected Decision Date was December 21, 2001.
The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and WIPO Supplemental Rules.
The Administrative Panel shall issue its Decision based on the Complaint, the Policy, the Rules, the WIPO Supplemental Rules, but without the benefit of a Response from the Respondent.
4. Factual Background
The Complainant is the owner of the domain name called <printforbusiness.com> registered on March 4, 2000.
The Complainant has also filed an application for an European trademark called "PrintForBusiness – printforbusiness.com", dated September 15, 2000, in classes n°16, 35, 37, 38 and 42, concerning services of printing, reprography and transmissions of any documents.
The Respondent is owner of the domain name <print4business.com> registered on June 3, 2000.
5. Parties' Contentions
The contested domain name <print4business.com> is phonetically identical with the domain name <printforbusiness.com> belonging to the Complainant.
The Web site corresponding to the disputed domain name is able to give and/or to promote printing, reprography and transmission services, which are covered by trademark and rights of the Complainant.
This Web site <www.print4business.com> offers services that would be executed by a reprography firm called "CP FORMSTYLE", which is not the legal registrant of the disputed domain name. In fact, the Respondent (LBS HORTICULTURE) has no particular or well-known activities in the printing matters.
The use of the contested domain name is going to disrupt the business of the Complainant who has developed a European printing on line project.
Actually a subsidiary company of the Complainant called "PRINTFORBUSINESS France" has been registered in FRANCE, under number R.C.S. PARIS B 433 213 246, concerning activities of reprography by internet. This company is in operation since August 15, 2000.
The Web site <www.printforbusiness.com> is in operation.
By registered letter dated December 14, 2000, with receipt dated December 19, 2000, the Complainant, by way of its Law Counsels, has warned the Respondent of its rights on the domain name called <printforbusiness.com> and notified to the Respondent that the similarity between "print4business" and "printforbusiness" is prejudicial to its business interests.
In order to find a compromise agreement and not to mediation procedure, the Complainant has offered to the Respondent to buy the contested domain name.
The Respondent did not respond to this offer and the web site <www.print4business.com> is still running without neither modifications nor warnings destined to the customers and/or visitors.
Because of similar printing activities, by using the domain name, the domain name registrant intentionally attempted to attract for financial gain, Internet users to the registrant’s 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 the registrant’s web site or location or of a product or service on the registrant’s web site or location.
As mentioned above in section 3, the Respondent has not filed a Response in accordance with the Rules, Para. 5, within the prescribed time limit. See below as to the Panels discussions and findings on the procedural matters.
6. Discussion and Findings
A representative of the company that is said to be the actual user of the domain name, namely Consumable Products Ltd, approached the WIPO Center after the expiry of the date set for filing a Response and requested whether they could be allowed to file a Response. The WIPO Center explained the applicable rules, and said that it was up to the discretion of the Panel to decide on the matter.
In this respect the Panel notes the following:
It follows clearly from the definition of the parties to a case under the UDRP that the "Respondent means the holder of a domain name registration against which a complaint is initiated".
Neither the Policy nor the Rules allow any other parties to become party to the proceedings. However, both the Complainant and the Respondent can be represented by another person, if this person is authorised to act on behalf of either of these parties.
In this case Respondent is LBS Horticulture. The representative of Consumable Products Ltd. has not provided any evidence that they have been authorised by the Respondent to act on their behalf, nor have they provided any other type of information that could suggest that they can act on behalf of the Respondent, i.e. the registered holder of the domain name.
For this reason the Panel finds that it cannot allow the said company to become party to these proceedings.
According to Paragraph 15(a) of the Rules the Panel shall decide a Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
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 a trademark or service mark in which the Complainant has rights; and
2) that the Respondent has no legitimate interests in respects of the domain name; and
3) the domain name has been registered and used in bad faith.
Identical or Confusingly Similar
The Complainant has applied to register a figurative mark containing the word PrintForBusiness as a Community Trademark. The application has not yet matured into a registration and the rights of the Complainant are therefore not conclusive. The mark has been in use for some time and is also identical to the Complainant’s Company Name. On this background the Panel finds that it cannot reasonably question the rights of the Complainant to the mark PrintForBusiness.
The domain name <print4business.com> is phonetically identical and is visually very similar to the said mark, except for the addition of the suffix .com. The domain name is thus confusingly similar to the trademark PrintForBusiness in which the Complainant has rights.
The prerequisites in the Policy, Paragraph 4(a)(i) are therefore fulfilled.
The Complainant has not licensed or otherwise permitted Respondent to use its trademark or to apply for any domain name incorporating the mark. Further, the Respondent has not demonstrated that he has any prior rights or legitimate interests in the domain name. Since Respondent has not filed a response the Panel will not go into further elaboration as to whether such legitimate interest actually could exist or not.
The prerequisites in the Policy, Paragraph 4(a)(ii), cf. 4 (c) are also considered fulfilled.
Paragraph 4(a)(iii) of the Policy further provides registration and use in bad faith. Paragraph 4(b) regulates, by way of example, the kind of evidence that is required.
The onus of proving bad faith lies with the Complainant. The contested domain name was registered before the Complainant applied to register the trademark PrintForBusiness. Further there is no indication or proof that the Complainant had used the mark before the registration of the contested domain name in such a way that the Respondent knew or should have known of any such use. The fact that Complainant had registered the domain name <printforbusiness.com> at this point in time is not sufficient to establish use of the mark.
In light of the correspondence between the parties to these proceedings, the Panel finds it appropriate to stress that the UDRP procedure is only designed to deal with cases concerning bad faith registrations of domain names within the rather limited frame of the Policy, and is not designed to address situations where the use of a domain name infringes the rights of another party in general. The question of whether the activities performed on the website www.print4business.com infringes the rights of the Complainant or not is not in itself decisive for the assessment of whether the prerequisites of Paragraph 4(a) are fulfilled. The Panel does thus not find that the activities for which the domain name is used eo ipso show that the Respondent has intentionally attempted to attract Internet users to their website by creating a likelihood of confusion with the Complainants mark.
Consequently, the Panel finds that it has not been proven that the domain name was registered and is being used in bad faith. The prerequisite of bad faith in Paragraph 4(a)(iii) of the Policy is not fulfilled.
In view of the above circumstances and facts the Panel finds, that the domain name registered by Respondent is identical or confusingly similar to the trademark in which the Complainant may have rights, that the Respondent has not shown to have any rights or legitimate interests in respect of the domain name, but that it has not been proven that the domain name has been registered and is being used in bad faith.
Consequently the Complaint is denied.
Dated: December 21, 2001