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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Velleman Components NV v. Velleman Associates

Case No. D2003-0120

 

1. The Parties

The Complainant is Velleman Components NV, Gavere, Belgium.

The Respondent is Velleman Associates, London, England.

 

2. The Domain Name and Registrar

The disputed domain name <velleman.com> is registered with Network Solutions, Inc. Registrar.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 17, 2003. On February 17, 2003, the Center transmitted by email to Network Solutions, Inc. Registrar a request for registrar verification in connection with the domain name at issue. On February 24, 2003, Network Solutions, Inc. Registrar 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. 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").

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 February 25, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was March 17, 2003. The Response was filed with the Center on March 14, 2003.

The Complainant delivered a reply, which the Administrative Panel read and has taken into account.

The Center appointed Edward C. Chiasson Q.C. as the sole panelist in this matter on March 19, 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.

By registering the subject domain name with the Registrar, the Respondent agreed to the resolution of disputes pursuant to the Policy and Rules.

 

4. Factual Background

The following information derives from the Complaint.

The Complainant is a company established in 1989, that has been using the trade name and service mark <velleman> throughout the world as a brand of electronic components and products for more than 13 years.

The Complainant has operated a website at "www.velleman.be" as well as "www.velleman.info" since October 14, 1996.

Beginning at least as early as April 23, 1997, and continuing, the Respondent has used the website "www.velleman.com", but this site remains "under construction".

On October 25, 2000, the Complainant received an e-mail stating:

"Our client, Mr. Velleman is not yet ready to build his website so it will not change in the near future. If your company wish to buy the domain name than Mr. Velleman may consider an offer."

On May 23, 2002, the complainant sent a letter with the following content:

"On October 25, 2000, we received an e-mail from you with the following content: "Our client, Mr. Velleman is not yet ready to build his website so it will not change in the near future. If your company wish to buy the domain name than Mr. Velleman may consider an offer.". Since then and until today, your website has been "under construction". We would like to request to transfer the domain name against payment of out of pocket expenses provided it is a reasonable and documented amount. We are looking forward to hearing from you as soon as possible, if possible in the next week. Kind regards"

On June 28, 2002 the Respondent replied that it was not interested in selling the subject domain name.

The website to which the subject domain name resolves remains "under construction".

The following information derives from the Response.

The Respondent is Paul Velleman (trading as Velleman & Co., formerly Velleman Associates) and he would not object if the Complainant were to apply to change the title of the Complainant to properly name the Respondent. (No such application was made.)

The Respondent does not dispute that the Complainant is a company established in 1989, and that it has been using the name "Velleman" as a trade name and service mark of electronic components since then.

Since approximately 1981, the Respondent has been trading under the name <Velleman> as a consultant in property (real estate) investment and agency, either alone or with partners. His business names since 1981 have been as follows:

- 1981 – 1990 Collins Velleman
- 1991 – 1996 Velleman Associates
- 1997 – 2000 Velleman & Co.
- 2000 – 2001 Ross Jaye Velleman
- 2001 to date Velleman & Co.

The Respondent’s business name has an established reputation in his field at both national and international level.

In 1997, the Respondent decided to register a domain name which reflected his trading name. He was not aware, at that time, of the existence of the Complainant which operates in a very different market area to the Respondent and which, at that time, may not have had the advertising exposure which currently it has. The Respondent registered only one domain name for his own use. He had no intention of selling it.

The Respondent decided to register the subject domain name because of its international relevance and its potential as an asset to his business. In 1997, few of the Respondent’s clients used the Internet, but he had the foresight to realise that this would not always be the case. From about the date of registration there has been a website related to the subject domain name, consisting of a front page with the name "Velleman" and "under construction" on it.

In approximately 1998, the Respondent set up an e-mail address relating to the domain name, property@velleman.com. This e-mail address appears on his business stationery. In about 2001, when the Respondent started trading as Velleman & Co., he set up a second e-mail address, paul@velleman.com. This is an essential means of communication between him and his clients.

The Respondent’s intentions have always been to develop a website at to which the subject domain name would resolve at an appropriate time, when he can gain optimum market and advertising value from doing so.

The relevance of a website as a marketing tool to the property industry did not develop as quickly as might have been anticipated in 1997. It is only recently that it could be expected to have any significant impact on the Respondent’s business. This is the primary reason that the website has remained "under construction" to date.

With hindsight, the Respondent regrets that he did not develop the site earlier because it might have avoided this proceeding, but he still plans to develop it at a time which will be optimal to his business. In the meantime, the Respondent will continue to use e-mail addresses associated with the domain name.

In October 2000, the Complainant sent an e-mail to the Respondent via the Registrar. By that time the Respondent no longer occupied its offices at the address to which the communication was sent having vacated them in August 1998. The Complainant received an e-mail reply from the Registrar’s office which suggested that the Respondent may consider an offer for the sale of the subject domain name.

The copy of the e-mail annexed to the Complaint does not include the original message.

The Respondent recalls that it included a suggestion that the Complainant wished to buy the domain name as it was about to set up a business in the United States. The Respondent had no wish to sell, but may have been willing to consider an offer which would have adequately reflected the value of the subject domain name to him as a business asset. No such offer was made. There was no further communication between the parties until mid-June 2002. The Respondent assumed that the matter was closed.

In June 2002, the Respondent received a letter from the Complainant which had been sent to the Respondent’s former offices. He replied that he had no wish to sell the subject domain name. By this time the e-mail addresses associated with the domain name were an essential part of the Respondent’s business identity.

The Respondent accepts the Complainant’s assertion that the domain name, <velleman.be> was registered by the Complainant on October 14, 1996, but does not accept that the domain name <velleman.info> was registered at that time. From a WHOIS search conducted on March 11, 2003, it would appear that <velleman.info> was not registered by the Complainant until September 14, 2001.

From a further WHOIS search, it also appears the Complainant has registered other domain names, not mentioned in itscomplaint, including <vellemanusa.com> registered on December 6, 2001, and <vellemanus.com> registered on March 30, 2001

Despite having the opportunity to register the subject domain name in October 1996, or at any time until the Respondent’s registration in April 1997, the Complainant chose not to do so.

The following information derives from the Complainant’s reply.

Although the Respondent asserts that it changed its address, it continued to show the address on communications.

On October 26, 2000, the Complainant wrote to the Respondent stating:

"Dear Sir, Thanks for the reply but can you help us? The name "Velleman" is internationally registered by us and the problem is a lot of people just use "www.velleman.com" to reach us. When they see that web is still under construction they are not happy. Can you make on your web the remark: the business of <velleman.com> or indicate that there is also a "www.velleman.be" version.

Thanks for the reply";

The Respondent replied on October 26, 2000:

"Our client Mr. Velleman may be prepared to allow you a small banner advert on his website at a cost of Ј150 (sterling) per month for a minimum of a 5 month contract. I await hearing from you.

Regards."

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has a trade name and service mark and asserts that the Respondent registered the subject domain name for the purpose of selling it for more than the legitimate costs of registration. No use has been made of the subject domain. These facts show that the Respondent does not have a legitimate interest in the subject domain and that it has acted in bad faith.

In its reply, the Complainant stated:

"…the complainant still wants a settlement is this matter. A possible solution is that the complainant would buy the domain name from the respondent and provide the hosting, so that the respondent can keep his e-mail addresses xxx@velleman.com. In that case, the complainant would point the e-mail address to a mail server of the respondent’s choice. This option would mean that the respondent gets a free domain name and hosting of the DNS e-mail record;

Another possibility is that the respondent keeps the domain name, but makes a host record "www.velleman.com" that will refer to the complainant’s website "www.velleman.be".

B. Respondent

The Respondent contends that the Complainant has not provided proof that it has a service mark and that it must do so. The Respondent asserts that the Complainant has not established that the Respondent does not have a legitimate interest in the subject domain name. He denies bad faith and states that the Complainant has not established bad faith either at the time of registration or subsequently. Non-use alone cannot establish bad faith.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove that:

(i) the domain name is identical or confusingly similar to a service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the domain name;

(iii) the domain name has been registered and 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 the website or location.

These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.

Reference is made to a number of previous domain name dispute and domestic court decisions. While these are neither controlling nor binding on this Administrative Panel, reference to them often is of assistance.

A. Identical or Confusingly Similar

The Complainant offers little to support the contention that it has a service mark. The Respondent appears to concede the point – "The Respondent does not dispute that the Complainant is a company established in 1989, and that it has been using the name "Velleman" as a trade name and service mark of electronic components during that period" – but argues that the Complainant has failed to meet its obligation to provide proof of its alleged service mark.

Neither party addressed whether the subject domain name is identical or confusingly similar to the alleged service mark, although the Complainant states: "[d]espite of the respondent’s name being similar to the complainant’s, the fact remains that the site is pretended to be ‘under construction’ for several years…." It is unclear whether this is a reference to the Respondent’s name or the subject domain name.

As a result of the ambiguous position of the Respondent, the Administrative Panel is prepared to proceed on the basis that the Complainant does have the service mark "velleman". It is identical to the subject domain name except for the addition of .com, which is of no consequence.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Complainant relies on the Respondent’s lack of use of the subject domain name based on the fact that the website to which it resolves remains under construction to support a conclusion that the Respondent does not have a legitimate interest in the subject domain name. Lack of use can support an inference leading to such a conclusion, but in this case the Respondent has provided a history of his business and stated why he registered the subject domain name. There is nothing in the record to controvert his position.

The Complainant appears also to seek to support its contention on the basis of the position it takes concerning bad faith. That issue is dealt with below.

The Administrative Panel is not satisfied that the Complainant has met the requirements of paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The Complainant contends that the Respondent registered the subject domain name with the primary "…purpose of selling, renting, or otherwise transferring [it] to the complainant for valuable consideration in excess of [his] out-of-pocket costs…." as noted in the Policy. The information to support this contention is in communications referred to in the Complaint.

The first of these is dated October 25, 2000. It states: "Our client Mr. Vellman is not ready to build his website so it will not change in the near future. If your company wish to buy the [subject] domain name then Mr. Velleman may consider an offer".

The Respondent emphasizes the verb "may". The Respondent notes that the communication was not from him, but from the Registrar. He also asserts that the communication was in response to a communication from the Complainant and recalls that it contained an offer to buy the subject domain name. In addition, the Respondent states that he "…may have been willing to consider an offer which would have adequately reflected the value of the domain name to him as a business asset", which suggests that he was aware of the exchange at the time.

The presentation in the Complainant inferred that the October 25, 2000, was unprovoked, but on its face it appears to be responsive – it appears to answer to a query concerning the lack of construction of the website. The originating communication is not included.

In the Complaint the Complainant it appeared that the on May 23, 2002, the Complainant replied by letter to the October 25, 2000. There was no explanation for the delay. It sought the transfer to it of the subject domain name on payment of the Respondent’s out-of-pocket expenses. The Respondent replied on June 28, 2002, stating that it had just received the Complainant’s letter and that "[w]e are not interested in selling our domain name but thank you for your interest.

In its reply which was delivered late in this proceeding, the Complainant referred to additional communications, which included its immediate response to the October 25, 2000, communication. The response seeks an accommodation in use, not a demand that the Respondent not use the subject domain name. The Complainant’s additional remarks which are noted above, also seek an accommodation.

It is salutary that the Complainant would like to see a co-operative resolution of the dispute, but the information does not advance its case in this proceeding.

The information overall is incomplete and does not establish that the Respondent registered the subject domain name with the intention of selling it. Taken at best, it contains an expression of possible interest in selling the subject domain name, which was communicated not by the Respondent, but by the Registrar and concludes with a refusal to sell with no counter-offer.

In addition, the Complainant asserts that there is bad faith because the registration prevents it from registering the subject domain name. As noted by the Respondent, the Complainant had that opportunity, but did not take advantage of it. In any event, there is no basis on the facts of this case – both parties have the same name - for concluding that either party has a greater initial right to register than the other.

The Administrative Panel is not satisfied that the Complainant has met the requirements of paragraph 4(a)(iii).

The Complainant’s reply was delivered late in this proceeding. Because it did not advance the Complainant’s case, the Respondent was not invited to comment on whether the Administrative Panel should consider the information.

 

7. Decision

Based on the information provided to it and on its findings of fact, the Administrative Panel concludes that the Complainant has not established its case. The Complaint is dismissed.

 

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Edward C. Chiasson, Q.C.
Sole Panelist

Date: March 21, 2003