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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Alm. Brand af v. Com-municate Inc.
Case No. D2002-0801
1. The Parties
The Complainant in this proceeding is Alm. Brand af 1972, Copenhagen Ø, Denmark.
The Complainant is represented by Knud Wallberg of Sandel, Løje & Wallberg Frederiksgade 7, P.O. Box 9006, DK-1265 Copenhagen K, Denmark.
The Respondent in this proceeding is Com-municate Inc. Dublin D7, Ireland, John Clements, authorized representative.
2. The Domain Name and Registrar
The disputed domain name is <almbrand.com> (the "Disputed Domain Name").
The Registrar is Intercosmos Media Group d/b/a directNIC.com, 650 Poydras Street, Suite 2311, New Orleans, Louisiana 70130, United States of America.
3. Procedural History
This administrative proceeding was brought in accordance with the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy") and the ICANN Rules of Uniform Domain Name Dispute Resolution Policy ("Rules") by a Complaint filed with the WIPO Arbitration and Mediation Center (the "Center") on August 26, 2002, by electronic mail, and on August 29, 2002, by hardcopy. On August 27, 2002, the Center acknowledged receipt of the electronic copy of the Complaint and requested registrar verification as to the identity of the current registrant of the Disputed Domain Name, and undertook certain related correspondence with the Complainant concerning the same. The Center ultimately determined that the Complaint met all the formal requirements of the Policy, and its Rules and the WIPO Supplemental Rules, and on September 2, 2002, the Center notified the Complaint and Commencement of Administrative Proceeding. On September 9, 2002, the "Notification of Complaint and Complaint" was returned from Respondent's postal address, but on September 18, 2002, Respondent submitted its Reply by electronic mail, which the Center confirmed receipt on September 19, 2002.
On September 27, 2002, the undersigned was appointed as a sole panelist in accordance with paragraphs 6 and 7 of the Rules.
In the view of the Panelist, the proper procedures under the Rules and the Policy were followed, and the following decision is rendered based on the record submitted.
4. Factual Background
Complainant is the parent company of the "Alm.Brand Group" a financial group based in Denmark, and active in the fields of reinsusurance and insurance. It has from 1997 on registered European marks for "Alm.Brand" both as word marks and figurative marks in class 36 (insurance, financial and monetary affairs). Complainant has also registered the domain names <almbrand.dk>, <almbrand.net> and <almbrand.org> as well as many other domain names containing the word "Almbrand".
Respondent, Com-municate Inc., appears to be a company with offices in Dublin, Ireland involved in the registration and/or operation of websites. Respondent registered the Disputed Domain Name <almbrand.com>. The site established at the Disputed Domain Name contains hard-core pornographic photos and links to various pornographic sites. In its August 28, 2002, e-mail to Complainant, Respondent stated that it had established other porn sites. Respondent in that e-mail also assured that it was unaware of Complainant, or of a company with Complainant's name at the time it registered the Disputed Domain Name. Respondent went on to state that the "Almbrand" name was created as part of a "party game" by amalgamating the initial of four individuals (AL, MB, RA and ND) into a porn theme. The result is the phrase:
All Lust Must Be Rough And Nearly Dirty
The acronym for which is "ALMBRAND". The above phrase figures prominently on the Disputed Domain Name site.
Further facts, to the extent pertinent, are discussed below.
5. The Parties’ Contentions
Complainant contends that the Disputed Domain Name is "identical or quasi-identical" to its registered "Alm.brand", marks, as both the "com" suffix and the internal period (".") should be disregarded in context of a second level domain name. Complainant adds that the reason it did not originally register the Disputed Domain Name was that it had been prior registered by a Danish cyber-squatter and that it is likely that the original registrant did not renew the registration and it was "re-registered" by Respondent.
Complainant avers that the Respondent's phrase "All Lust Must Be Rough And Nearly Dirty" is an unnatural constellation of words "constructed" with the intention of providing some facial justification for the choice of the Disputed Domain Name. As a consequence Respondent is alleged to have no legitimate interest in the Disputed Domain Name, and Complainant asserts that the use of such name for a porn site tarnishes Complainant's reputation and marks.
On the basis of the above Complainant maintains that the Disputed Domain Name was both registered and used in bad faith.
Respondent essentially alleges that it registered the Disputed Domain Name innocently; that prior to the Complaint it was unaware of a company with the name Alm.Brand, as the Complainant company is essentially unknown in Ireland, and that it has no knowledge of the Disputed Domain Name having previously been registered by a Danish cyber-squatter. Respondent further states that it has not registered or used the Disputed Domain Name in bad faith and, in particular, has not engaged in any of the illustrative bad faith activities listed at paragraph 4 (b) of the Policy.
Respondent acknowledges that it does not hold a trademark in connection with the Disputed Domain Name, but maintains that the "almbrand" name used by it is an acronym, and that while the phrase from which the acronym is derived may not make immediate sense "it has meaning to the Respondent".
6. Discussion and Findings
The Policy, in its paragraph 4 (a), provides that the Complainant must prove each of the following:
i. The Respondent’s Domain Name is identical or confusingly similar to a trade or service mark in which Complainant has rights, and
ii. The Respondent has no rights or legitimate interests in respect of the Domain Name; and
iii. The Domain Name has been registered and used in bad faith
i. Identical or Confusingly Similar
The Disputed Domain Name is substantially identical to the Complainant's marks and company name, but for the period between "Alm" and "Brand". Respondent proffers a confused argument to the effect that "Alm" is itself a contraction, and that Complainant could more logically make use of a dash ("Alm-brand") in its domain name as the period cannot be inserted at that place in the domain name. These arguments are irrelevant; the Disputed Domain Name is, at a minimum, confusingly similar to the marks in which Complainant has rights.
ii. Respondent's Rights or Legitimate Interests in the Domain Name
Complainant maintains that the phrase from which Respondent has purportedly developed the acronym in the Disputed Domain Name is an unnatural constellation of words, created to give some facial explanation for the use of the "Almbrand" name. Complainant further cites WIPO Case D2000-0471, Reuters v. Teletrust, as authority for the Panel to disregard such artificially constructed acronyms.
Respondent acknowledges that it has no trademark rights to the "Almbrand" name, stating that it did not consider it necessary to register for such. Respondent does not cite any clear basis on which it might have rights in the Disputed Domain Name, and the name can hardly be said to have a necessary or logical connection with Respondent's pornography business. A purported party game acronym does not give Respondent any rights in a trademarked name.
The Panel thus determines that Respondent does not have any rights or legitimate interest in the Disputed Domain Name.
iii. Registration and Use in Bad Faith
Complainant has the burden of demonstrating Respondent's bad faith in registering and using the Disputed Domain Name, and it is on this burden that this decision turns. A finding of bad faith requires some determination as to Respondent's knowledge and intent. Many ICANN cases involve circumstances, or contain circumstantial evidence, which permits bad faith readily to be determined, not a few cases contain direct evidence of bad faith use or registration of a domain name. But this is not the case here.
The Complainant's assertions of bad faith here are partially circumstantial, but mainly based on conclusory statements and deductions. Complainant asserts that the Disputed Domain Name was initially registered by a Danish cyber-squatter and that "[w]hat most likely happened" is that the registration lapsed, and was picked up by Respondent. But Complainant cannot submit any evidence for these assertions. Complainant argues that Respondent, had it been in good faith, could have made a trademark search of the Disputed Domain Name. Complainant also points to Respondent's apparent false phone and fax numbers in its WHOIS details as indicia of a bad faith desire by Respondent to conceal its identity. Complainant annexes many press articles and other materials mentioning Complainant as evidence that Respondent must have known of Complainant when it registered the Disputed Domain Name (this material is not entirely convincing as it is largely from the specialized insurance press which would presumably not be read by porn site operators). Complainant's essential argument is that the overall circumstances, notably the purportedly coincidental choice of the name "Almbrand" for a porn site, make Respondent's bad faith an obvious deduction.
But Respondent counters with assertions and denials on key points. Respondent asserts that it knew nothing of a prior registration by a Danish cyber-squatter. Rather Respondent cleaves to its explanation that the Disputed Domain Name was arrived at by serendipity, through a "party game" to develop a porn theme slogan. Somewhat more plausibly, Respondent maintains that it had never heard of Complainant and its trademark prior to the filing of the Complaint, and that Complainant and its marks are largely unknown in Ireland. Respondent denies any bad faith behavior, "as the website was set-up before awareness that the Complainant existed".
Thus, Respondent carefully denies potentially key elements of a bad faith finding, notably that it had knowledge of Complainant's or its name and marks when it set up the site making use of the Disputed Domain Name. As strong evidence of Respondent's bad faith is not available, the Complaint seeks in part to "piggyback" on the Respondent's use of a domain name "quasi-identical" to Complainant's marks and Respondent's absence of any legitimate rights, in order to state that it is therefore "evident" that Respondent is in bad faith. But this effort also shows some misunderstanding as to the level of proof required; "[b]ad faith is not proven by a showing that Respondent lacks any rights or legitimate interests in the Domain Name. That is a separate and distinct factor, with its own proof requirements". WIPO Case No. D2000-0270, Document Technologies, Inc. v. International Electronic Communications, Inc. Findings under the first two elements of Paragraph 4 (a) of the Policy may well be pertinent to a finding of bad faith, but they are not sufficient. See, WIPO Case No. D2000-0869, Estée Lauder Inc. v. este lauder.com.
The ICANN process is designed to be a fast track, "on the papers", inexpensive process. This process finds its limitations where, as here, a party's intent and knowledge as at specific times are in question. See WIPO Case No. D2002-0511, Quoteseek Corporation v. Internet Marketing Group. In a full scale legal proceeding the parties and the Panelist would engage in fact finding to test the conclusory allegations and denials of the Complaint and Reply; that is not possible here. Respondent expressly denies key factors or findings necessary to a determination of its bad faith. Some of Respondent's denials are more plausible than others, but the Panelist does not have a basis to reject them. It may even be that Respondent has carefully crafted its Reply to test the Complainant's burden, while avoiding any detail which might be indicative of bad faith, but this Panelist cannot go behind the pleadings to determine that. The Panelist in the Quoteseek case, above, put it pithily: "Complainant has the burden of proof; in a pure swearing match the tie goes to the Respondent." Id.; accord, WIPO Case No. D2000-1772, Tribeca Film Center, Inc. v. Lorenzo Brusasco-Mackenzie.
It follows that in this ICANN proceeding, also, Complainant has failed to meet its burden of demonstrating that Respondent registered and used the Disputed Domain Name in bad faith.
The Disputed Domain Name, <almbrand.com> is confusingly similar to trademark(s) in which Complainant has rights, and Respondent lacks rights or legitimate interest in the said Name, but the Complainant has been unable to prove that Respondent registered and is using the same in bad faith. Accordingly, the undersigned panelist concludes that the Disputed Domain Name, <almbrand.com>, should not be transferred to the Complainant.
Nicolas C. Ulmer
Dated: October 11, 2002
1. That e-mail was in reaction to the Complaint, and it together with Complainant's reply thereto was forwarded to the Center, and referred to in Respondent's Answer, it is accepted as evidence in this file.
2. The Panelist here further considered the exceptional procedure of ordering a further round of briefing, which a Panelist has discretion to do under the Rules, but determined that it would be highly unlikely to resolve this fundamental proof issue.