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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Also Holding AG v. Netdojo
Case No. D2001-1470
1. The Parties
1.1 The complainant is ALSO Holding AG of Seestrasse 55, CH-6010 Kriens, Switzerland ("Complainant").
1.2 The respondent is NetDojo of 1346 The Alameda #7, PMB 288, San Jose, CA 95126, United States of America ("Respondent").
2. The Domain Name and Registrar
2.1 The domain name upon which the Complaint is based is <also.com> ("Disputed Domain"). The registrar of the Disputed Domain as at the date of the Complaint is TUCOWS, Inc. of 96 Mowat Avenue, Toronto, ON, M6K 3M1, Canada ("Registrar").
3. Procedural History
3.1 A complaint was made by the Complainant about the Disputed Domain pursuant to the Uniform Domain Name Dispute Resolution Policy approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 ("Policy"), in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, also approved by ICANN on October 24, 1999 ("Rules") and the World Intellectual Property Organisation ("WIPO") Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect from December 1, 1999 ("Supplemental Rules").
3.2 The Complaint was received by the WIPO Arbitration and Mediation Center ("Center") by e-mail on December 20, 2001, and hardcopy on December 28, 2001. WIPO is approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") as a dispute-resolution service provider. The fees prescribed under the Supplemental Rules have been paid by the Complainant.
3.3 The Registrar advised the Center that under clause 7 of the agreement between the Respondent and the Registrar for the registration of the Disputed Domain ("Registration Agreement"), the Respondent agreed to be bound by the Policy. The Disputed Domain was first registered on March 25, 1996, to IMV Internet. It was allegedly "transferred" during 1999 to the Respondent. There is no explanation as to how the Respondent signified its agreement to the Policy. The Panel has not seen a copy of the Registration Agreement but has proceeded solely on the Registrar’s advice that the Respondent agreed to be bound by the Policy. Were it not for that fact, the Complaint would have been dismissed as incompetent.
3.4 Under paragraph 4 of the Policy, the Complaint is a dispute for which the Respondent must submit to a mandatory administrative proceeding. In the administrative proceeding, the Complainant must prove that each of the elements in paragraph 4 of the Policy are present. Under paragraph 1 of the Policy, the mandatory administrative proceeding must be conducted in accordance with the Rules and the Supplemental Rules.
3.5 On December 21, 2001, the Center sent the Complainant an Acknowledgment of Receipt of Complaint.
3.6 The Center sent a request for registrar verification to the Registrar on December 28, 2001, by email. The Registrar responded to the Center’s request on December 28, 2001, by email, stating:
(a) the Registrar had not received a copy of the Complaint from the Complainant;
(b) the Disputed Domain is registered with the Registrar;
(c) the Respondent is the current registrant of the Disputed Domain;
(d) the Disputed Domain is on hold in the Registrar’s system to ensure that no changes occur to the ownership or registrar for the duration of the dispute;
(e) the Respondent’s contact details; and
(f) the Policy applies to the Disputed Domain.
3.7 Despite paragraph 3.6(a), paragraph 18 of the Complaint stated that a copy of the Complaint was sent or transmitted to the concerned registrar on December 20, 2001, by e-mail to <email@example.com>.
3.8 The Center sent the Notification of Complaint and Commencement of Administrative Proceeding and the Complaint on January 11, 2002, to the Respondent by post/courier and by email, and copied to the Complainant by email and to the Registrar.
3.9 The Respondent failed to file a response in the time allowed and has not filed a response to date as far as the Panel is aware.
3.10 A notification of Respondent Default was sent by the Center to the Respondent, and copied to the Complainant’s representative, by email on February 4, 2002. This notified the Respondent that it had failed to comply with the relevant deadline for the submission of its response in the domain name dispute.
3.11 The Center sent a Transmission of Case File to the Administrative Panel by email on February 13, 2002. The complete case file was not received in hard copy by the Panel until February 18, 2002, in Sydney, Australia.
3.12 All other procedural requirements appear to have been satisfied.
4. Factual Background
4.1 Activities of the Complainant
The following information is asserted as fact in the Complaint and remains uncontested.
The Complainant is a Swiss company ruled and registered under Swiss law. Since 1984 in Switzerland and 1995 in Germany, the Complainant has done and continues to do business in the fields of computer distribution, computer system engineering and IT logistics.
4.2 The Complainant’s trade marks
The following information is asserted as fact in the Complaint and remains uncontested.
The Complainant states that it is the holder of several registrations for the trademark "ALSO", granted by the Swiss Federal Institute of Intellectual Property. The Complainant states that the trademark "ALSO" number 373895 is effective in 30 countries listed in the Complaint. The Complainant also states that it holds rights over the trademark "ALSO" number 432585 and the trademark "ALSO" number 465601. Annexed to the Complaint is an extract from the trademark register of the Swiss Federal Institute of Intellectual Property showing the Complainant as the proprietor of trademark number 432585.
The Complainant states that it holds rights over the tradenames "ALSO Holding AG", "ALSO ABC Trading AG", "ALSO Comsyt AG" and "ALSO Finanz AG".
The Complainant states that since 1984 and at the time of the Complaint, all of the Complainant’s business activities are identified by the Complainant’s "main trademark ALSO".
4.3 Activities of the Respondent
No response to the Complaint has been filed.
No information as to the activities of the Respondent is contained in the Complaint.
5. The Complainant’s contentions in the Complaint
5.1 The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.
5.2 In reference to the element in paragraph 4(a)(i) of the Policy, the Complainant asserts that the Disputed Domain is identical in wording to the trademark "ALSO" number 373895 and the trademark "ALSO" number 432585 and confusingly similar to the trademark "ALSO MPC" number 465601.
5.3 In reference to the element in paragraph 4(a)(ii) of the Policy, the Complainant asserts that, to the best of the Complainant’s knowledge, the Respondent has no rights or legitimate interests in respect of the Disputed Domain. The Complainant asserts that the Respondent is not commonly known by the Disputed Domain, has not acquired trademark or tradename rights and has no legitimate non-commercial rights in the Disputed Domain.
5.4 In reference to the requirements of paragraph 4(a)(iii) of the Policy,
the Complainant asserts that the Respondent has registered the Disputed Domain
in bad faith because the Respondent is not using the Disputed Domain and nor
has it been used in connection with any bona fide offering of goods and services
since its registration in 1996. Furthermore, the Complainant asserts that the
Respondent and the former holder of the Disputed Domain have both failed to
respond to the Complainant’s attempts to communicate and deal with each of them
before making the Complaint. The Complainant cites WIPO
Case D2000-0132 (Flammarion SA v Lee Ha-won) as authority to support
the Complainant’s proposition that "inaction, or even a passive holding of a
domain name registration can constitute using a domain name in bad faith."
6. Discussion and Panel Findings
6.1 This section is structured by reference to the elements required by paragraph 4(a) of the Policy. As noted above, the Respondent has failed to file a Response to the Complaint within the time limits allowed and, as far as the Panel is aware, has not filed a Response at all. Accordingly, all assertions in the Complaint are uncontested and, under paragraph 5(e) of the Rules, the Panel is required to decide the dispute based upon the Complaint alone. Notwithstanding this rule, in order to be successful, the Complainant still bears the burden of proving, on the balance of probabilities, that all three elements are present, and this Panel reserves the right to rely upon paragraph 10 of the Rules to avail itself of such publicly available material as it deems appropriate to corroborate or substantiate any assertions made in the Complaint and Response (if any). There has been no need to do so in this particular case.
6.2 Domain Name identical or confusingly similar to Complainant’s trade marks
The Disputed Domain is <also.com>. The Complainant is in the business of computer distribution, computer system engineering and IT logistics. All of the Complainant’s business activities are identified by at least one "ALSO" trademark. The Complainant has rights in at least two trademarks which are identical to the Disputed Domain and at least one trademark which is similar.
The Panel is satisfied that the Disputed Domain is confusingly similar if not identical to trademarks and service marks in which the Complainant has rights. Accordingly, the Panel finds that the Complainant has proven paragraph 4(a)(i) of the Policy.
6.3 The Respondent has no rights or legitimate interests in the Domain Name
The Complainant asserts that the Respondent has no rights or legitimate interests in the Disputed Domain.
Paragraph 4(c) of the Policy lists a number of circumstances which, if proven to exist by the Respondent, can be taken to demonstrate a Respondent’s rights or legitimate interests in a domain name. The Panel has seen no evidence to support an inference that any of these circumstances exist. The mere act of registering a domain name does not grant the registrant a legitimate interest in that domain name.
Without evidence to the contrary, the Panel cannot presently conceive of any legally sound basis upon which an assertion that the Respondent has a right or legitimate interest in the Disputed Domain might be made.
The Panel finds that the Respondent has not demonstrated that paragraph 4(c) of the Policy applies and that the Complainant has discharged its onus in proving on the balance of probabilities that the Respondent has no rights or legitimate interests in the Disputed Domain. Accordingly, the Complainant has made out paragraph 4(a)(ii) of the Policy.
6.4 Domain Name has been registered and is being used in bad faith
In order to show bad faith registration and use by the Respondent, the Complainant asserts that:
(a) the Disputed Domain has not been used by the Respondent, or the former holder of the Disputed Domain, since its inception in connection with any bona fide offering of goods or services; and
(b) neither the Respondent, nor the former holder of the Disputed Domain, ever responded to the Complainant’s pre-complaint communications.
The Respondent has provided no evidence that it has acted in good faith in registering or using the Disputed Domain.
No explanation is before the Panel as to why the Respondent registered or uses the Disputed Domain.
The Complainant relies on WIPO Case D2000-0132
(Flammarion SA v Lee Ha-won) to support its proposition that inaction
or passive holding of a domain name registration can constitute using a domain
name in bad faith. In that case the Panel found the respondent’s holding of
the domain name registration and failure to transfer it to the complainant prevented
the complainant from registering the complainant’s own well-known trademark
as the complainant’s domain name and was tantamount to a "blocking" use of the
domain name in bad faith by the respondent.
In WIPO Case D2000-0003 (Telstra Corporation
Limited v Nuclear Marshmallows) the Panel stated "in considering whether
the passive holding of a domain name, following a bad faith registration of
it, satisfies the requirements of paragraph 4(a)(iii) [of the Policy] the Panel
must give close attention to all the circumstances of the Respondent’s behaviour.
A remedy can be obtained under the Policy only if those circumstances show that
the Respondent’s passive holding amounts to acting in bad faith."
In the present case:
(a) the Panel finds that the Respondent does not conduct and nor has it or its predecessor conducted any commercial or non-commercial business activity in which it uses or is in any way connected with the Disputed Domain;
(b) the Panel finds no existence of, or intention to create, any web site or other on-line presence which uses or will use the Disputed Domain; and
(c) neither the Respondent nor its predecessor replied to any correspondence from the Complainant prior to the Complaint being filed, and the Respondent has not responded to the Complaint to provide any evidence that might rebut the Panel’s findings in paragraph (a) or (b).
The Complainant submits that the foregoing, in the light of its extensive reputation in Europe, is evidence of bad faith on the part of the Respondent. Despite the Panel’s concerns about the Respondent’s silence, there is no evidence to indicate that the Respondent, based on the west coast of the USA, should necessarily have been aware of the Complainant. Absent evidence showing the Respondent’s awareness of the Complainant or its trademarks (none of which are registered in USA), and absent evidence that the Complainant conducts business in a way that is likely to have brought its trademarks to the Respondent’s attention, the Panel has to give the Respondent the benefit of the considerable doubt, especially where the disputed domain comprises an ordinary English word.
In this case the Panel cannot infer bad faith from the paucity of evidence presented by the Complainant and therefore, despite some misgivings about the Respondent’s conduct, declines to do so. The Complainant has therefore not made out paragraph 4(a)(iii) of the Policy.
The Complainant has failed to prove all of the requirements of paragraph 4(a) of the Policy. Accordingly, the Panel dismisses the Complaint.
Philip N. Argy
Dated: February 28, 2002