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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Telecom House, Inc. v. Chin-Fu Lo
Case No. D2003-0032
1. The Parties
The Complainant is Telecom House, Inc. of California, United States of America, represented by Kia Kamran of United States of America.
The Respondent is Chin-Fu Lo, Talink International Corp. of Taipei, Taiwan, Province of China.
2. The Domain Name and Registrar
The disputed domain name <telecomhouse.com> is registered with Network Solutions, Inc.
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 15, 2003. On January 16, 2003, the Center transmitted by email to Network Solutions, Inc. ("NSI") a request for registrar verification in connection with the domain name at issue. On January 22, 2003, NSI transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. On January 23, 2003, the Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
3.2 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 23, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was February 12, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 13, 2003.
3.3 The Center appointed Cecil O.D. Branson, Q.C. as the sole panelist in this matter on February 18, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. Absent exceptional circumstances, a deadline of March 4, 2003, was set in accordance with paragraph 15 of the Rules for Uniform Domain Name Dispute Resolution Policy by which a decision would be forwarded to the Center.
4. Factual Background
4.1 The Complainant is an international telecommunications service provider with a registered service mark for "TELECOM HOUSE" issued by the United States Patent and Trademark Office (USPTO) under # 2622459 on September 17, 2002, in International Class 38 for telecommunication services, namely local and long distance transmission of voice, data, graphics by means of telephone, telegraphic, cable and satellite transmissions. The First Date of Use and First Date of Use in Commerce is established at October 1997. Respondent registered the disputed domain name on March 15, 2000.
5. Parties’ Contentions
5.1 The Complainant says that it makes active and wide-ranging use of the "TELECOM HOUSE" mark on the Internet, including the use of the "TELECOM HOUSE" mark in association with Internet websites accessed at the URLs "www.telecomhouse.net" and "www.thouse.com". Telecom House registered the domain names <telecomhouse.net> and <thouse.com> on July 11, 2000, and November 19, 1997, respectively. Complainant also says that it had at some time prior to March 15, 2000, registered the domain name, <telecomhouse.com> and that it lapsed due to an error allegedly made by its agent, but does not say when these occurred other than they were prior to the Respondent’s registration.
5.2 Complainant pleads that the Respondent has no rights or legitimate interests in the domain name pursuant to Policy paragraph 4(a)(ii). In doing so, it relies on the absence of any evidence of Respondent’s use of the phrase "telecom house" or any phrase similar thereto or the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services, nor is there any evidence that Respondent has been commonly known by the mark "TELECOM HOUSE" or any mark similar thereto, nor any evidence that Respondent is making legitimate non-commercial or fair use of the domain name.
5.3 Complainant pleads that Respondent registered the domain name and is using it in bad faith contrary to paragraph 4(a)(iii) of the Policy for the following reasons:
5.3.1 Respondent intentionally 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 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.
5.3.2 Respondent will attempt to attract for financial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or location or of a product or services on the Respondent’s website or location.
5.4 The Respondent did not reply to the Complainant’s contentions.
C. No Other Submissions
5.5 The Panel has not received any other requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties (taking note of the Respondent’s default in responding to the Complaint).
6. Discussion and Findings
6.1 The Complaint was submitted on the basis of the provisions of the Registration Agreement in effect between the Respondent and NSI, which incorporates, by reference, the Policy by way of NSI’s domain name dispute policy in effect at the time of the dispute. The Policy requires that domain name registrants such as Respondent submit to a mandatory administrative proceeding regarding third-party allegations of abuse of domain name registration (Policy, paragraph 4(a)).
6.2 The Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply or participate in any other fashion is not due to any omission by the Center (see Procedural History, above).
6.3 Under paragraph 5(e) of the Rules, if a Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
6.4 Paragraph 15(a) of the Rules addresses the principles to be used in rendering a decision:
"A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
6.5 In order to obtain the relief requested under the Policy, Complainant must prove in the Administrative Proceeding that each of the three elements of paragraph 4(a) are present:
6.6 Domain Name Registered by the Respondent is Identical or Confusingly Similar to a Trademark or Service Mark in which the Complainant has Rights
While it is not clear whether the Complainant relies on both its registered service mark and common law rights, this will be assumed. There is a long line of authority which says that the time at which the domain name at issue is registered is the material time at which the Complainant must establish its rights under the Policy, paragraph 4(a)(i). The rationale for this conclusion is expressed thusly in John Ode d/ba ODE and ODE - Optimum Digital Enterprises v. Intership Limited, WIPO Case No. D2001-0074, by a three-person Panel:
There are ample authorities supporting the view that a trademark that did not exist at the time the disputed domain name was registered cannot serve as the basis for a claim under the ICANN Policy, since it is impossible for the domain name to have been registered in bad faith.
But there are other decisions which say that paragraph 4(a)(i) does not require that the trademark be registered prior to the domain name.
With respect to those Panels which have found otherwise, this Panel is not prepared to rule out the possibility of registration in bad faith where the material trademark did not exist at the time the disputed domain name was registered. Without making any determinations at this time, I can envisage circumstances, including merger cases, which might lead to a different conclusion such as a cybersquatter deliberately registering a domain name, prior to a registered trademark being obtained or before common law rights have been established in the mark being asserted. The Panel finds that the first element as set out in paragraph 4(a)(i) of the Policy has been proved.
6.7 No Right or Legitimate Interest
There having been no Response filed by the Respondent, this Panel is prepared to accept the assertions made by the Complainant, taking into consideration all of the material circumstances of this case.
6.8 Registration and Use of Domain Name in Bad Faith
I find that the evidence in this case before me falls short of proving bad faith registration. There is no evidence that the Respondent had any knowledge of the Complainant when it registered the domain name. It should be noted that the certificate of registration from the USPTO indicates that the mark in question is registered on the supplemental register and that "No claim is made to the exclusive right to use ‘telecom’, apart from the mark as shown." This is understandable, the word being generic in nature. Further, there is no evidence of international use, and certainly nothing about use of the name in Taipei, beyond the assertion in the Complaint that "Telecom House makes active and wide-ranging use of the ‘telecomhouse’ mark on the Internet, including the use of the ‘telecomhouse’ mark in association with Internet web-sites accessed at the URL "www.telecomhouse.net" and "www.thouse.com".
Further, there is no evidence that the Respondent registered the domain name in question with the intent to sell it to the Complainant, to disrupt its business, or to prevent it from registering its trademark, or to confuse customers. While there was evidence of an exchange of correspondence between the Complainant and the Respondent its timing and the equivocal nature of its contents are not in my view sufficient to prove bad faith registration.
6.9 For the above reasons, this Panel finds that the domain name <telecomhouse.com> was not registered in bad faith.
7.1 For the foregoing reasons, the Panel finds that the Complainant has not satisfied the applicable standard of proof in respect of the three necessary elements, which is a preponderance of the evidence.
7.2 The ruling of this Panel is that the registration of the domain name <telecomhouse.com> not be transferred to the Complainant.
Cecil O.D. Branson, Q.C.
Dated: February 24, 2003
1. Telaxis Communications Corp. v. William E. Minkle, WIPO Case No. D2000-0005; Meteor Mobile Communications v. Frank Dittmar, WIPO Case No. D2000-0524; Highlight Communications AG v. Auto Systems Inc., WIPO Case No. D2000-0512; Passion Group Inc. v. Usearch, Inc., eResolution Case No. AF-0250; Magic Software Enterprises Ltd. v. Evergreen Technology Corporation, WIPO Case No. D2000-0746; ecast Inc. v. Ecorp.com, eResolution Case No. AF-0308; VBW Kulturmanagement und Veranstaltungsges. m.b.H. v. Ohanessian M, WIPO Case No. D2000-0675; Open Systems Computing AS v. Alberto degli Alessandri, WIPO Case No. D2000-1393; Foresight Corp. v. Servos, eResolution Case No. AF-0473; e-Duction, Inc. v. John Zuccarini, d/b/a The Cupcake Party & Cupcake Movies, WIPO Case No. D2000-1369; Sealstore.com LLC v. Sealpool Ltd., NAF Case No. FA96535; John Ode d/ba ODE and ODE - Optimum Digital Enterprises v. Intership Limited, WIPO Case No. D2001-0074; Ez Commerce Global Solutions Inc. v. AlphaBase Interactive et al, WIPO Case No. D2002-0943; Phoenix Mortgage Corporation v. Tom Toggas, WIPO Case No. D2001-0101; Josй de Jesus Velбzquez Jimйnez v. Velazquez-Perez, CPA, WIPO Case No. D2001-0342; Sealstore.com LC v. Sealpool, NAF Case No. FA96535; Diamond Shamrock Refining & Marketing v. CES Marketing Group, NAF Case No. FA96766; Business Architecture Group, Inc. v. Reflex Publishing, NAF Case No. FA97051.
2. Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827; VISIVA S.r.L. v. VISIVA di Rocca Sergio, WIPO Case No. D2001-1130.