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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Isrotel Ltd. v. Roro Corporation
Case No. D2003-0211
1. The Parties
The Complainant is Isrotel Ltd, a public company registered in Israel, Tel-Aviv 68125, Israel.
The Respondent is Roro Corporation, Kyonggi 480-013, of Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name is <isrotel.com> and is registered with Tucows, Inc., Toronto, Canada.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 18, 2003. On March 19, 2003, the Center transmitted by email to Tucows, Inc. (the registrar) a request for registrar verification in connection with the domain name at issue. On the same day Tucows, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. These comprised the same postal address for the registrant and for the administrative and technical contacts, as well as email addresses for the administrative and technical contacts. Tucows, Inc. have also confirmed that, pursuant to section 7 of their Registration Agreement, the Uniform Domain Name Dispute Resolution Policy (the "Policy") applies to the domain name in issue. They have also confirmed that the domain name in issue is on Registrar Lock during the administrative proceeding (subject to expiration in the normal way at the end of the registration term).
In response to a notification by the Center on March 20, 2003, that the Complaint was administratively deficient, the Complainant, on the same day, filed an amendment to the Complaint. The Center thereafter verified that the Complaint, together with the amendment to the Complaint satisfied the formal requirements of the Policy, the Rules and Supplemental Rules governing administrative proceedings for the resolution of disputes under the Policy.
In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 24, 2003. The Notification of Complaint and a copy of the Complaint with attachments were sent to the Respondent by courier (on March 24, 2003) at the only postal address available to the Center. Copies of the Notification and Complaint were also sent by email on the same day. The courier was unable to deliver the Complaint, which was returned to the Center.
In accordance with paragraph 5(a) of the Rules, the due date for the Response was April 13, 2003. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default to the parties by e-mail April 14, 2003.
No communication from the Respondent has been received by the Center.
The Center appointed Jon Lang as the sole Panelist in this matter on April 24, 2003. The Panel finds that it has been 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 paragraph 7 of the Rules.
4. Factual Background
The factual background to this dispute is set out in the Complaint. In the light of the evidence contained in and attached to the Complaint, and the lack of any submission from the Respondent contesting the assertions of the Complainant (or otherwise), the Panel finds the following facts to have been established:
The Complainant is the owner and manager of several hotels in Israel and for several years has used the name ‘ISROTEL’ which has become a well known and reputable name in Israel and elsewhere;
The Complainant is the owner of several trademarks concerning the name ‘ISROTEL’ including trademark No. 92305 ("ISROTEL") registered in class 42 (hotel management and operation etc) in accordance with the Israeli Trademarks Ordinance. This trademark was applied for in April 1994;
The Complainant activated a web site in 1994, under the domain name <isrotel.co> and is also the registrant of the domain name <isrotel.co.uk>.
In 2000, the Complainant attempted to register <isrotel.com> but it had already been registered by a third party. Following legal proceedings against the registrant, a settlement was reached providing for the registrant to transfer its rights in the domain name to the Complainant. This did not happen; instead on June 24, 2001, the domain name was registered by the Respondent.
Prior to the commencement of this Complaint, the Complainant made efforts to contact the Respondent using contact information contained in the Registrar’s ‘Whois’ database, sending letters by registered mail and email, including a letter dated April 10, 2002, which is at annex 6 to the Complaint.
5. The Parties’ Contentions
The Complainant relies on the matters set out above and in their Complaint, and asserts that each of the three elements of paragraph 4(a) of the Policy have been met, namely that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Taking each of these requirements in turn, the Complainant asserts:
(i) that the domain name is identical or confusingly similar to the trademark;
<isrotel.com> is clearly identical or confusingly similar to the trademark "ISROTEL" which is registered and owned by the Complainant and is also the Complainant’s company name;
(ii) that the Respondent has no rights or legitimate interests in the domain name;
the word ‘ISROTEL’ is an invented word (from ‘Israel’ and ‘hotel’) and is not one that traders would choose unless seeking to create an impression of an association with the Complainant; and that the Complainant has not permitted the Respondent to use the mark "ISROTEL";
(iii) that the domain name has been registered and is being used in bad faith;
a) the lack of response to the Complainant’s attempts to contact it, including by telephone, raises a suspicion that false information was provided at the time of registration which would be in breach of paragraph 2(a) of the Policy;
b) the trademark "ISROTEL" is one of the best known in Israel and is widely known around the world and it is inconceivable that the Respondent would not be aware of this and that it is probable that the Respondent’s choice of domain name was made in the light of such reputation;
c) the domain name <isrotel.com> does not resolve to a web site or other on-line presence and any realistic or potential use of it would misrepresent an association with the Complainant and its goodwill resulting in passing off, breaches of Israeli consumer protection legislation and trademark infringement;
d) that where other circumstances indicative of bad faith are present, the act of merely holding the domain name as opposed to actively using it, can amount to bad faith for the purposes of paragraph 4(a)(iii) of the Policy; that such circumstances include the reputation of the Complainant’s trademark and inability of the Respondent to provide evidence of actual or contemplated good faith use by it of the domain name;
e) that the Respondent does not appear to meet any of the circumstances set out in paragraph 4(c) of the Policy ‘How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint.’
Despite having been notified of the Complaint by the Center in accordance with the Rules (and the Complainant having made its own prior attempts to elicit a response from the Respondent without success), the Respondent has not submitted a Response. Indeed the Center’s file shows no communication from the Respondent whatsoever.
6. Discussion and Findings
The Panel finds that the Respondent has been properly notified of the Complaint. The Panel finds in relation to each of the three elements of Paragraph 4(a) of the Policy (in respect of which the Complainant has the burden of proof), as follows:
A. Identical or Confusingly Similar to a trademark
The domain name in issue is <isrotel.com>. The Complainant, at annex 4 of its Complaint, has provided evidence that it is the registered provider of the registered trademark "ISROTEL". The Panel finds that the distinguishing part of the domain name i.e. ‘isrotel’, is identical or alternatively confusingly similar to the Complainant’s registered trademark "ISROTEL" and that the domain name in its entirety is confusingly similar to the Complainant’s registered mark or alternatively identical to it.
B. Rights or Legitimate Interests in the domain name
Paragraph 4(c) of the Policy, ‘How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint’, provides a non-exhaustive list of circumstances which, if proved, would demonstrate rights or a legitimate interest in a domain name for the purposes of paragraph 4(a)(ii) of the Policy. The circumstances listed in paragraph 4(c) of the Policy are:
"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
There is no evidence of any of these circumstances existing and no evidence of any other circumstances that could support an assertion that the Respondent does have rights to, or legitimate interests in the domain name in issue. The domain name does not resolve to a web site or other on-line presence and the Complainant has not permitted the Respondent to apply for a domain name incorporating its trademark "ISROTEL" (or do anything else in relation to it). Despite attempts to do so, the Complainant has been unable to bring about any dialogue with the Respondent in relation to the domain name in issue and, given the fact that the Respondent has failed to submit a Response in these proceedings, there is a complete absence of evidence as to why the Respondent applied for and holds the domain name, or how it uses or might use the domain name in the future.
The Complainant, on the other hand, has made extensive use of the trademark "ISROTEL".
On the evidence before the Panel, it finds that the Respondent has no rights or legitimate interests in the domain name. It is worth mentioning that the partial phonetic similarity between the name of the registrant (RORO Corporation) and the domain name is, in the Panel’s view, irrelevant and in any event insufficient in itself to raise any presumption of rights or legitimate interests in favor of the Respondent in the domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out a non-exhaustive list of four sets of circumstances which, if found proved by the Panel, would be evidence of registration and use of the domain name in bad faith:
"(i) circumstances indicating that you have registered or you have 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 that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location."
Paragraph 4(a) (iii) requires both bad faith registration and use in bad faith.
The Panel finds the first requirement to be established. There is no evidence of any association with the Complainant. The Complainant has made extensive use of the trademark "ISROTEL" for a number of years. There is no evidence however that the Respondent has ever used the name ‘Isrotel’ prior to registration or at all, or that it has or ever has had a legitimate interest in the name ‘Isrotel’.
Paragraph 2 of the Policy provides:
"Your Representations. By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that (a) the statements that you made in your Registration Agreement are complete and accurate; (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights."
The Complainant’s corporate name and trademark is known in a number of jurisdictions as evidenced by the examples of its advertisements at annex 3 to its Complaint. The Complainant’s business includes international tourism. It has had an on-line presence at "www.isrotel.com" since 1994, and is also the registrant of the domain name <isrotel.co.uk>.
Under paragraph 2 of the Policy, a registrant bears the responsibility of investigating whether its domain name registration infringes or violates another’s rights. Given the wide use made of the "ISROTEL" trademark by the Complainant, the Respondent should have known that the Complainant had or could have rights concerning the domain name <isrotel.com>. Of course it is possible for a registrant to investigate the possibility that a registration would infringe or violate another’s rights and then to dismiss that possibility, but here there is no evidence of any investigation being made by the Respondent. Accordingly, the Panel finds that for the purposes of Paragraph 4(a)(iii) of the Policy, the Complainant has established registration in bad faith.
As to the second part of the requirement under paragraph 4(a) (iii), (use in bad faith), there is no positive evidence of ‘use’ in the general sense of the word at all, let alone use in bad faith. However, there have been many decisions of past administrative panels that have established that inactivity can amount to use in bad faith in some circumstances. Decision D2000-0003, Teltsra Corp Ltd v. Nuclear Marshmallows is an often quoted and followed decision in this regard. In Telstra, ‘use in bad faith’ was interpreted as ‘continuing to act in bad faith’. Indeed, the non-exhaustive list of circumstances which are indicative of bad faith registration and use (paragraph 4(b) of the Policy) clearly envisages inactivity or a passive holding of a domain name satisfying the requirements of paragraph 4(b) in certain circumstances. Thus it is not necessary to point to any positive use of the domain name (in bad faith) and it is permissible, instead, to look at whether the Respondent is continuing to act in bad faith. The question in this case is whether the Respondent’s inactivity, following a registration in bad faith, is enough in all the circumstances for it to be held, for the purposes of paragraph 4(b) of the Policy, to be use of the domain name in bad faith. In the circumstances of this case, the Panel finds that it is. The circumstances that lead to this finding are as follows:
a) pursuant to paragraph 2 of the Policy, the Respondent warranted that the statements made in its Registration Agreement were complete and accurate. It seems unlikely that this representation would not impose a continuing obligation on the registrant to ensure the continued accuracy of statements made at the time of registration, but in any event, the Registration Agreement of Tucows, Inc. imposes, at paragraph 18, an obligation on the part of the registrant to ‘..update us promptly as such information changes…’ The ‘information’ for these purposes includes contact details. Clearly it is for the Respondent to ensure that it can be contacted. Given this responsibility and the fact that attempts have been made to contact the Respondent since, at the latest, April 10, 2002 (the date of the Complainant’s letter at annex 6 of the Complaint), a serious question must be raised about the information provided to Tucows, Inc. on registration and/or the Respondent’s willingness to answer bona fide questions in relation to its registration and the rights of third parties, and to participate in these Administrative Proceedings.
b) the Respondent’s failure to provide any explanation whatsoever for its interest in the domain name, despite numerous opportunities for it to do so, and its failure to participate in these proceedings must raise the presumption that there is indeed nothing it could justifiably submit that would support a case that it was not using the domain name in bad faith, (or that it had any rights or legitimate interests in the domain name).
In the light of these circumstances, including those mentioned above in relation to evidence of bad faith registration, the Panel concludes that the Respondent’s continued holding of the domain name does satisfy the requirement that the domain name ‘is being used in bad faith’ and therefore finds that the requirements of paragraph 4(a)(iii), in their entirety, have been satisfied.
In the light of the above findings, the Panel concludes that the Complainant has proved each of the three elements of paragraph 4(a) of the Policy and in accordance with Paragraphs 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the domain name <isrotel.com> be transferred to the Complainant.
Dated: May 7, 2003