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WIPO Arbitration and
Mediation Center
ADMINISTRATIVE PANEL
DECISION
Pro Dive Pty Ltd and Pro Dive International Pty Ltd v. Tony Lennartsson
Case No. D2004-0097
1. The Parties
The Complainants are Pro
Dive Pty Ltd (First Complainant) and Pro Dive International Pty Ltd (Second
Complainant), Ultimo, Australia, represented by Baker & McKenzie, Australia.
The Respondent is Tony
Lennartsson, Stockholm, Sweden, represented by ESQwire.com Law Firm, United States of America.
2. The Domain Name and
Registrar
The disputed domain name
<prodive.com> is registered with CSL Computer Service Langenbach GmbH
dba Joker.com.
3. Procedural History
The Complaint was filed
with the WIPO Arbitration and Mediation Center (the "Center")
on February 5, 2004, by email, hardcopy of which was received on February 9, 2004.
On that same date, the Center transmitted by email to CSL Computer Service
Langenbach GmbH dba Joker.com a request for registrar verification in connection
with the domain name at issue. On February 10, 2004, CSL Computer
Service Langenbach GmbH dba Joker.com 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 but advised, however, that the Respondent had not submitted in its Registration
Agreement to the jurisdiction at the location of the principal office of the
Registrar for court adjudication of disputes concerning or arising from the
use of the domain name. In response to a notification by the Center on February 12, 2004,
that the Complaint was thereby administratively deficient, the Complainants
filed an amendment to the Complaint on February 13, 2004 by email,
hardcopy of which was received on February 16, 2004. The Center verified
that the Complaint together with the amendment to 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 17, 2004.
In accordance with the Rules, paragraph 5(a), the due date for the Response
was March 8, 2004. The Response was filed with the Center on March 8, 2004,
by fax, on March 9, 2004, by email, and by hardcopy on March 15, 2004.
The Center appointed the
undersigned as the sole panelist in this matter on March 18, 2004.
The Panel finds that it was properly constituted. The Panel has submitted the
Statement of Acceptance and Declaration of Impartiality and Independence on
March 17, 2004, as required by the Center to ensure compliance with
the Rules, paragraph 7, and rendered his decision within the time-limit
granted.
4. Factual Backgroun
The
Complainants present themselves as related companies which are both members
of the PRO DIVE group of companies in Australia: the First Complainant is the
current operating company of the PRO DIVE business whilst the Second Complainant
is included as a co-complainant because it is the registered owner of a number
of the trademark registrations on which this Complaint is based.
The Complainants explain
that the PRO DIVE business was established in Australia in 1969 and has
since expanded to several countries around the world through partnerships with
local organisations, including in the UK and Europe. As for Sweden in particular,
the Complainants work with five partners: My Planet, Globetrotters, Tours Pacific,
World Wide Travel and Work and Travel. These partners represent the Complainants
and display under the PRO DIVE name at trade shows in Scandinavia, in particular
in Sweden. Moreover, PRO DIVE business is recognized around the world as a leader
in all aspects of scuba diving education and training, the Complainants submit.
The Complainants have several
trademark registrations in Australia for the PRO DIVE mark (see Annex 13
to the Complaint, all registered between 1981 and 1994).
In addition, the Second
Complainant registered the domain name <prodive.com.au> in July 1996
and the Complainants' have operated a website at this domain name since July 1996
(Annex 14 to the Complaint).
5. Parties' Contentions
A. Complainants
The Complainants submit
the following:
(i) The Respondent's <prodive.com>
domain name is identical or confusingly similar to the PRO DIVE mark.
The Complainants have rights
in the PRO DIVE mark and a substantial reputation in their PRO DIVE mark, both
in Australia and Europe.
The use of the lower case
format and the addition of the ".com" are not significant in determining
whether the domain name is identical or confusingly similar to the mark (see,
inter alia, CBS Broadcasting Inc. v. Worldwide Webs, Inc., WIPO
Case No. D2000-0834). Moreover, it is not necessary for the Complainants
to have trademark registrations in the Respondent's country (Infospace.com
Inc. v. Infospace Technology Co. Ltd., WIPO
Case No. D2000-0074).
The Complainants have registered
trademarks in Australia as well as common law rights in the PRO DIVE mark in
Europe through their use and promotion of the mark there. This reputation is
sufficient to satisfy the requirement for the Complainants to prove their rights
in the PRO DIVE mark.
(ii) The Respondent has
no rights or legitimate interests in respect of the <prodive.com> domain
name.
First, there is no evidence
of a bona fide offering of goods or services by the Respondent in connection
with the disputed domain name which would legitimize its registration of the
Complainants' mark as a domain name. In fact, the Respondent has made no use
of the domain name since it was registered in 1996. Panels have held that non
use for a number of years can support a finding of a lack of right or legitimate
interest in the domain name (Kate Spade, LLC v. Darmstadter Designs,
WIPO Case No. D2001-1384).
Second, there is no evidence
that the Respondent is known by the name "Pro Dive." The Respondent's
personal name is Tony Lennartsson and nothing at the website or in investigations
has indicated that Tony Lennartsson currently uses a business name which incorporates
"Pro Dive." The Respondent has no trademark rights in the name and
has no current company or business name under the name. It is furthermore not
associated with the Complainants in any way, and is neither authorized nor licensed
to use the PRO DIVE mark in any form.
Third, there is no evidence
that the Respondent is undertaking legitimate non-commercial or fair use of
the <prodive.com> domain name.
(iii) The <prodive.com>
domain name was registered and is being used in bad faith.
The Respondent has made
no use of the domain name since it was registered in 1996 other than to
place an "Under Construction" notice on the website or to place a
yellow background (Annex 12 to the Complaint). Panels have held that non-use
or passive use is evidence of bad faith, particularly over a long period of
time (Georgia Gulf Corporation v. The Ross Group, WIPO
Case No. D2000-0218).
The Respondent has registered
multiple domain names that are registered marks of others and is a known cybersquatter.
This has been held by panels to be evidence of bad faith (see i.a. TV
Globo Ltda. v. Green Card Transportes e Eventos Ltda., WIPO
Case No. D2000-0351).
The Complainants approached
the Respondent when it became aware of registration of the <prodive.com>
domain name in 1999. The Respondent indicated at that stage that he was a scuba
diver and was intending to begin business under the name "Pro Dive."
The Respondent as a scuba diver ought to have known about the Complainants'
reputation in the PRO DIVE name and mark in Europe, including Sweden. The Respondent
has failed to use the name despite a further four years having passed since
this correspondence. This indicates that, together with having no legitimate
interest in the name, the Respondent is continuing to hold the name to prevent
the owner of the trademark from reflecting the mark in a corresponding domain
name. The Respondent has clearly engaged in a pattern of such conduct and has
held the domain name with the knowledge that it infringes the rights of another.
This also constitutes evidence of bad faith.
Additionally, the Respondent
has held the domain name at stake for a number of years without it resolving
to a website. While a number of years may be sufficient to allow for preparation
of a business, the failure to make such preparations in the time since registration
constitutes bad faith registration and use (Chernow Communications,
Inc. v. Jonathan D. Kimball, WIPO Case
No. D2000-0119; Kate Spade, LLC v. Darmstadter Designs, WIPO
Case No. D2001-1384, already mentioned above).
Based on the foregoing,
the Complainants request that the disputed domain name be transferred in their
favour.
B. Respondent
The Respondent's submissions
are as follows:
(i) The Complainants have
no enforceable rights under the Policy because their mark is generic or descriptive.
PRO DIVE is a generic,
or at best, a descriptive term because it describes the essential features of
the Complainants' service, namely professional dive instruction and, therefore,
does not provide rights under the Policy under any circumstances (see i.a.
Pet Warehouse v. Pets.Com, Inc., WIPO
Case No. D2000-0105; Interactive Television Corporation v. Noname.com,
WIPO Case No. D2000-0358).
(ii) The Respondent has
rights and a legitimate interest in the disputed domain name.
Because PRO DIVE is a common
generic or descriptive term, and is not exclusively used by the Complainants,
the Respondent, ipso facto, has rights and a legitimate interest in the
disputed domain name.
The principal that the
mere ownership of a common term domain name should, in and of itself, establish
the owner's rights and legitimate interest has been recognized by several UDRP
panels (see i.a. Shirmax Retail Ltd. v. CES Marketing, Inc., e-Resolution
Case No. AF-0104; Zero International Holding GmbH & Co. Kommanditgesellschaft
v. Beyonet Services and Stephen Urich, WIPO
Case No. D2000-0161; Primedia Special Interest Publications, Inc. v.
John L. Treadway, WIPO Case No. D2000-0752;
First American Funds, Inc. v. Ult.Search, Inc., WIPO
Case No. D2000-1840).
Moreover, the Respondent
acquired the disputed domain name to use for a planned professional dive instruction
business (Annex 2 to the Response). It is well established that the intent to
use a domain name for a business constitutes use in connection with a bona
fide offering of goods or services, pursuant to paragraph 4(c)(i) of
the Policy, which is identical to paragraph 4(c)(ii) of the Policy (see
i.a. Asphalt Research Technology, Inc. v Anything.com, WIPO
Case No. D2000-0967).
As a matter of fact, if
the Respondent has not yet developed its website this is simply due to financial
considerations (see Annex 2 to the Response). It has been expressly held that
a legitimate interest is established where economic circumstances preclude the
implementation of a respondent's business plan (The Jolt Company v.
Digital Milk, Inc., WIPO Case No. D2001-0493).
The Policy does not require actual use to satisfy a Respondent's legitimate
interest. It is the Respondent's intent to use the domain name at the time of
registration that matters (Casual Corner Group, Inc. v. Young, NAF Case
No. 95112; Smart Design LLC v. Carolyn Hughes, WIPO
Case No. D2000-0993). Registration of a domain name is not even illegitimate
where a Respondent has no specific planned use at the time of registration (Koninklijke
KPN N.V. v. Telepathy, Inc., WIPO Case
No. D2001-0217).
The Respondent has worked
as a professional dive instructor in the past, and is presently attending school
to advance his background in the diving field (Annex 2 to the Response).
There can be no doubt as to the legitimacy of the Respondent's intent to use
<prodive.com> for a business. He certainly did not take advantage at all
of the Complainants' interest in purchasing the disputed domain name, which
further corroborates that his intent is to use the domain name, not to sell
it. Moreover, the Respondent has owned a company known as ProDive and is thus
"known by the domain name," satisfying paragraph 4(c)(ii) of
the Policy.
Finally, the Complainants
unsolicited inquiry to purchase the domain name - without raising an objection
(Annex 3 to the Response) - constitutes a tacit admission of the Respondent's
legitimate interest in the disputed domain name (see i.a. Prom Software,
Inc. v. Reflex Publishing, Inc., WIPO
Case No. D2001-1154).
(iii) The Complainants
have not demonstrated that the domain name in dispute was registered and is
being used in bad faith.
There is absolutely no
evidence that the Respondent registered the disputed domain name to sell to
the Complainants; on the contrary, the Respondent refused Complainants' offers
to purchase it. Absent direct proof that a descriptive term domain name was
registered or acquired solely for the purpose of profiting from Complainants'
trademark rights, there can be no finding of bad faith registration and use
(Ultrafem, Inc. v. Warren Royal, supra).
PRO DIVE is an extremely
common descriptive term, appearing on over 16,000 third party web pages unrelated
to the Complainants (Annex 1 to the Response). Where a complainant's mark is
a common term with substantial third party use, as it is here, the complainant
must proffer evidence that demonstrates that respondent has specifically targeted
complainant.
On the Complainants' argument
that the Respondent failed to yet develop a website at <prodive.com> is
evidence of bad faith, an explanation has been provided for why the Respondent
has been unable to do. Namely that he has had financial difficulties and was
forced to file for bankruptcy for the company. As noted above, decisions under
the Policy have held that a Respondent's legitimate interest is intact, notwithstanding
its failure to launch a business plan due to financial issues.
For the above-mentioned
reasons, the Respondent concludes that the Complainants have failed to meet
their burden of proof under the Policy and the Complaint must, therefore, be
dismissed.
6. Discussion and Findings
Paragraph 4(a) of
the Policy sets forth three requirements, which have to be met for the Panel
to order the transfer of the disputed domain name to the Complainants. Those
requirements are that:
(i) Respondent's domain
name is identical or confusingly similar to a trademark or service mark in which
the Complainants have rights; and
(ii) Respondent has no
rights or legitimate interests in respect of the domain name; and
(iii) Respondent's domain
name has been registered and is being used in bad faith.
The Complainants must prove
in the administrative proceeding that each of the aforesaid three elements is
present so as to warrant relief, according to paragraph 4(a) of the Policy.
The Panel has to decide
the Complaint on the basis of the statements and documents submitted and in
accordance with the Policy, the Rules and any rules and principles of law that
it deems applicable, pursuant to paragraph 15(a) of said Rules.
It may be pointed out that
the Respondent has not raised any issue about the fact that there are two Complainants
to the Complaint (Magna International Inc. and Donnelly Corporation v. Brian
Evans, WIPO Case No. D2002-0898).
There are circumstances in which a complainant properly acts on behalf of affiliated
enterprises with rights in a mark. Decisions under the Policy have recognized
that complex intra-enterprise relationships and/or licensing arrangements may
determine the ownership or control of a particular mark. Conversely, the assertion
of rights in a mark has been denied where a party is unable to demonstrate the
requisite ownership or control interest. In some cases, parties acting as complainant
have been specifically identified as co-complainants in the proceeding. Practice
in this regard has not been consistent. The Panel accepts the designation of
both entities as Complainants without suggesting a uniform practice on the issue
of joinder of complaining parties under the Policy and Rules (see Asprey
& Garrard Limited and Garrard Holdings Limited v. www.24carat.co.uk/domainnames.html,
WIPO Case No. D2001-1501).
A.
Identical or Confusingly Similar
The Respondent argues that
the Complainants lack rights in the mark PRO DIVE because it is generic or descriptive.
Firstly, the Panel would
like to observe that, unlike one of the cases cited by the Respondent (Pet
Warehouse v. Pets.Com, Inc., WIPO Case
No. D2000-0105) and some other relevant decisions (see e.g. CharterAuction.com,
Inc. v. Pacific Luxury Air, WIPO Case
No. D2003-0801), the Complainants have established trademark registrations
for the PRO DIVE mark (see Annex 13 to the Complaint).
Several administrative
panels have held that the argument, such as the one raised by the Respondent
in this case relating to weakness of the trademark, may have some merit, but
continue, that only the test set out in paragraph 4(a)(i) of the Policy
has to be satisfied, namely that it remains for the Complainant to prove that
the disputed domain name is identical or confusingly similar to the trademark
concerned, however strong or weak the "rights" may be (TPI Holdings
Inc. v. JB Designs, WIPO Case No. D2000-0216;
Action Sports Videos v. Jeff Reynolds, WIPO
Case No. D2001-1239; see also Rollerblade, Inc. v. CBNO and Ray Redican
Jr., WIPO Case No. D2000-0427).
Further, it has been held
and confirmed that rights under the Policy can exist in trademarks which are
descriptive and which have no secondary meaning (Emmanuel Vincent Seal trading
as Complete Sports Betting v. Ron Basset, WIPO
Case No. D2002-1058, citing Action Sports Videos v. Jeff Reynolds referred
to above).
In this matter, the Panel
considers without hesitation that the Complainants have satisfied the test of
paragraph 4(a)(i) of the Policy, i.e. that the domain name <prodive.com>
is identical to their trademark PRO DIVE
B. Rights or Legitimate
Interests
Paragraph 4(c)
of the Policy provides a non-exclusive list of circumstances, if found by the
Panel to be proved based on its evaluation of all evidence submitted, shall
demonstrate rights to or legitimate interests in the domain name in dispute.
Those circumstances are described as follows:
(i) before any notice to
you of the dispute, your use of, or demonstrable preparations to use, the domain
name or 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.
The Complainants have alleged
that the Respondent has no rights or legitimate interests in respect of the
domain name at issue. This shifts the burden to the Respondent to show by concrete
evidence that it has rights or legitimate interests in respect of the domain
name at issue according to paragraph 4(c) of the Policy cited above (Document
Technologies, Inc. v. International Electronic Communications, Inc., WIPO
Case No. D2000-0270). "Concrete evidence" constitutes more
than mere personal assertions. Evidence in the form of documents or third party
declarations should be furnished in support of such assertions (Do The Hustle,
LLC v. Tropic Web, WIPO Case No. D2000-0624
cited in Kate Spade, LLC v. Darmstadter Design, WIPO
Case No. D2001-1384).
The failure of the Respondent
to produce evidence sufficient to rebut Complainant's allegations entitles the
Panel to conclude that the Respondent has no such rights or legitimate interests
in respect of the domain name at issue (Ronson, Plc v. Unimetal Sanayi ve
Tic.A.S., WIPO Case No. D2000-0011;
Parfums Christian Dior v. QTR Corporation, WIPO
Case No. D2000-0023 cited in Chernow Communications, Inc. v. Jonathan
D. Kimball, WIPO Case No. D2000-0119).
After having carefully
examined the evidence presented by the Respondent under the form of a written
"declaration" (Annex 2 to the Response) and related submissions (see above
at 5(b)(ii), p. 6-7), the Panel does not give much credit thereto, especially
after having considered instances where the Respondent has been associated with
a number of UDRP complaints either directly or through the businesses "ControlAltDelete"
and "PDS"(see Annex 11 to the Complaint; see also above at 5(a)(iii),
p. 7) and having been described as having "established a pattern of registering
domain names comprised of the trademarks of others for the purposes of ransoming
them back to their rightful owners" (Vattenfall AB v. P D S, WIPO
Case No. D2000-0359, <vattenfall.com>) and the Respondent himself
has been described as "a known cyber squatter who registers the trademarks
of others as domain names" (Arla, ekonomisk förening v. P D S and
Tony Lennartsson, WIPO Case No. D2000-0151,
<arla.com>).
In sum, the Respondent
has not submitted convincing evidence that any of the circumstances enumerated
in paragraph 4(c) of the Policy would be present in this matter.
C. Registered and Used
in Bad Faith
Paragraph 4(b)
of the Policy provides a non-exclusive list of circumstances that evidence registration
and use of a domain name in bad faith. Any of the following behaviors is sufficient
to support a finding of 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 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 your website or location or of a product or service on your
website or location.
The arguments submitted
by the Respondent that it has not registered and used the domain name <prodive.com>
in bad faith do not convince the Panel, mainly for the same reasons set out
above under section B.
To the extent necessary,
the Panel confirms previous decisions that held that passive use is evidence
of bad faith, particularly over a long period of time - which is obviously the
case in this case - (Georgia Gulf Corporation v. The Ross Group, WIPO
Case No. D2000-0218) and that a Respondent who registered multiple domain
names that were registered marks of others and was a known cybersquatter is
further evidence of bad faith (see i.a. TV Globo Ltda. v. Green Card
Transportes e Eventos Ltda., WIPO Case
No. D2000-0351). Those decisions fully apply to the present case.
The Complainants have thus
met the requirements set out in Policy, paragraph 4(b).
7. Decision
For all the foregoing reasons,
in accordance with paragraphs 4(i) of the Policy and 15 of the Rules,
the Panel orders that the domain name <prodive.com> be transferred to
one of the two Complainants that the Complainants assign.
Christophe Imhoos
Sole Panelist
Dated: April 1, 2004