WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fiat Auto S.p.A. v. Search Hound (ICANN)
Case No. DBIZ2001-00023
1. The Parties
The Complainant in this administrative proceeding is Fiat Auto S.p.A., Corso Agnelli 200, 10135 Torino, Italy.
The Respondent in this administrative proceeding is SEARCH HOUND, 200 Main St. – Suite # 305, Kansas City, MO 64105, U.S.A.
2. The Domain Name and Registrar
The disputed domain name is <lancia.biz>. The Registrar of the domain name is eNom.com, Inc. of Redmond, WA, USA.
By registering the subject domain name with the Registrars, the Respondents agree to the resolution of disputes pursuant to the Policy and Rules.
3. Procedural History
This is a mandatory administrative proceeding submitted for decision in accordance with the Start-up Trademark Opposition Policy for <.biz>, adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001, (the "Policy"), the Rules for Start-up Trademark Opposition Policy for <.biz>, adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001, (the STOP Rules) and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for <.biz> (the WIPO Supplemental STOP Rules).
The Administrative Panel consisting of one member was appointed on January 30, 2002, by the World Intellectual Property Organization Arbitration and Mediation Center (the "Center").
Complainant filed its Amended STOP Complaint with the Center on December 18, 2001.
On December 21, 2001, having verified that the STOP Complaint satisfied the formal requirements of the Policy and the Rules, the Center formally commenced this proceeding and notified the Respondent that the Complaint had been filed against it. On January 14, 2002, the Center issued a Notice of Default.
An examination of this material confirms that all technical requirements for the prosecution of this proceeding were met.
Neither party requested an opportunity to make further submissions and the Administrative Panel is content to proceed on the basis of the existing record.
4. Factual Background
The following information is derived from the Complainant’s material.
The Complainant is an internationally well-known company in the field of cars and the owner of several hundred trademarks which include the word LANCIA (originally the name of another world-famous company that the Complainant later incorporated) throughout the world.
There is no evidence of the Respondent’s use of or demonstrable preparations to use the subject domain name or a name corresponding to the subject domain name in connection with a bona fide offering of goods or services. The Respondent does not offer any goods or services.
The Respondent has never been known commonly in the normal course of business by the trademark, trade name or a domain name LANCIA.
The Respondent filed no material in this proceeding.
5. Parties’ Contentions
The Complainant relies on the fact that it has several hundred trademarks using the word "lancia" and says that the subject domain name is confusingly similar to its marks.
Relying on the absence of any preparation for or actual use of the subject domain name and the fact that the Respondent is not commonly associated with the word "lancia", the Complainant asserts that the Respondent does not have rights to or a legitimate interest in the subject domain name.
In the context of bad faith, the Complainant says very little about the registration of the subject domain name. It concentrates on an allegation of bad faith use and relying on a number of domain name dispute decisions asserts that passive conduct can, and in this case does, constitute bad faith use.
The Respondent asserted no contentions in this proceeding.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove that:
(i) the domain name is identical to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interest in respect of the domain name;
(iii) the domain name has been registered or is being used in bad faith.
Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:
(i) circumstances that indicate that the Respondent has registered or has 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 the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name;
(ii) registration of 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 the Respondent has engaged in a pattern of such conduct;
(iii) registration of the domain name primarily for the purpose of disrupting the business of a competitor;
(iv) by using the domain name, intentionally attempting to attract, for commercial gain, Internet users to the Respondent’s website 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 website or location or of a product or service on it or a location.
The Complainant refers to a number of previous domain name dispute decisions. While these are neither controlling nor binding on this Administrative Panel, consideration of them can be of assistance.
These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.
The resolution of this dispute takes place in the context of a consideration of the requirements of paragraph 4(a) of the Policy.
It is clear that the Complainant has well-recognized and extensive rights to the word "lancia"
The Complainant contends that the subject domain name is confusingly similar to its mark. This is not the test. Rule 4(a)(i) requires the Complainant to establish that the subject domain name is identical.
Because these are early days, the Administrative Panel is prepared to consider the issue on the basis of the material available to it and not to be constrained by the Complainant’s failure properly to address the issue.
In fact, the subject domain name is identical to the Complainant’s mark, but for the addition of <.biz>. That addition is of no consequence. The subject domain name is identical to the Complainant’s mark.
The Administrative Panel finds that the requirements of paragraph 4(a)(i) have been met.
B. Respondents Legitimate Interest
A respondent is not obliged to participate in a STOP proceeding, but its failure to do so leaves it open to inferences that flow naturally from the information provided by the Complainant. In addition, an administrative panel may decide to accept as established, facts which have a weak evidentiary base, but which are uncontested.
The Respondent’s lack of any preparation to use the subject domain name and its apparent lack of any association with it, militate toward a conclusion that it does not have a legitimate interest in the subject domain name. Its failure to respond to these facts leads to a finding that this is so.
The Administrative Panel finds that the requirements of paragraph 4(a)(ii) have been met.
C. Bad Faith
The Complainant misstates the requirements of paragraph 4(a)(iii). It does not use the words "was registered and/or is being used". It says: "has been registered or is being used". The differences can have substantive significance.
The Complainant focuses on "use" and says little about "registration".
It is clear that passive conduct can constitute bad faith use. It also is usual for a complainant to provide information that it has taken some steps to have a respondent cease and desist using a domain name in issue.
In this case, the Complainant appears to rely solely on the notoriety of its mark, on the initiation of this proceeding and the Respondent’s failure to respond. That is a questionable approach to STOP proceedings.
In a STOP proceeding there often will not have been time for a respondent to use the domain name in issue. Although, bad faith use may be established on non-use information made available to an administrative panel, it may not be appropriate to find bad faith use based on passive conduct to the extent as would be appropriate in a traditional domain name dispute case under the Uniform Domain Name Dispute Resolution Policy.
In this case, the Administrative Panel is told nothing about the Respondent’s use of the subject domain name except that it does not have a Web page associated with it. This fact coupled with the apparent lack of connection between the Respondent and the subject domain name and the asserted notoriety of the Complainant’s mark, might give support to a finding of bad faith use.
The Administrative Panel prefers to focus on the registration.
Findings that a respondent does not have a legitimate interest in a domain name that is identical to a complainant’s mark do not lead automatically to a finding of bad faith registration or use, but the facts that give rise to those findings may be relevant to a consideration of bad faith.
The relevant facts in this case are: the notoriety of the Complainant’s mark; the subject domain name is identical to it; the Respondent has not used the subject domain name and, apparently, normally is not associated with it; these facts have not been refuted by the Respondent.
Based on these facts, The Administrative Panel finds that the requirements of paragraph 4(a)(iii) have been met.
Based on the material presented to it and on its findings of fact, the Administrative Panel concludes that the Complainant has established its case. This conclusion should be read with the cautionary comments contained in this decision.
These are early days in STOP proceedings, but complainants must provide to administrative panels sufficient information on which it legitimately can be concluded that they have met their obligations to establish their cases. It also is important for parties to be aware of the differences in language and potentially of the focus of STOP proceedings as opposed to other domain name proceedings.
The Complainant asks that the subject domain name be transferred to it. The Administrative Panel so orders.
Edward C. Chiasson, Q.C.
Dated: February 11, 2002