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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

OTEnet Societe Anonyme v. Baou Inc.

Case No. D2005-0349

 

1. The Parties

The Complainant is OTEnet Societe Anonyme, Maroussi, Attica, Greece, represented by Irini Souli.

The Respondent is Baou, Inc., New York, United States of America, represented by Greg Lloyd Smith (President).

 

2. The Domain Names and Registrar

The disputed domain names <otenet.com> and <otenet.org> are registered with Tucows, Inc. (the “Registrar”).

 

3. Procedural History

The WIPO Arbitration and Mediation Center (the “Center”) received the Complaint on April 5, 2005, (electronic version) and on April 11, 2005, (hard copy). On April 6, 2005, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain names at issue. On April 6, 2005, the Registrar transmitted by email to the Center its verification response and confirmed that it was in receipt of the Complaint, it was the Registrar for the domain names at issue and the Respondent is listed as the registrant. Further, the Registrar provided contact details for the administrative, billing, and technical contact and confirmed that the Uniform Domain Name Dispute Resolution Policy (the “Policy”) applied to the disputed domain names. The Center verified that the Complaint satisfied the formal requirements of 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”). The Complainant made the required payment to the Center.

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 April 13, 2005. In accordance with paragraph 5(a) of the Rules, the due date for Response was May 3, 2005. The Response was filed with the Center on April 21, 2005, (electronic version) and on May 4, 2005 (hard copy).

The Center appointed Markus S. Bonair as the sole panelist in this matter on May 10, 2005. 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 paragraph 7 of the Rules.

The language of the proceeding is English.

 

Additional submissions

Paragraph 12 of the Rules stipulates that only the Panel may request further submissions from either of the parties. There is no provision in the Rules for a party to file an additional submission without leave of the Panel. In this case, the Respondent has filed an additional submission on May 17, 2005, without receiving a request from the Panel or seeking leave from the Panel to file a further submission.

A number of panels have held that additional submissions are inappropriate except in exceptional circumstances, such as the existence of new, pertinent facts that did not arise until after the submission of the Complaint or Response or arguments by the Respondent that the other party could not reasonably have anticipated, see e.g. Top Driver, Inc. v. Benefits Benifits, WIPO Case No. D2002-0972, Radan Corp. v. Rabazzini Winery, WIPO Case No. D2003-0353.

The reason for a restrictive application of paragraph 12 of the Rules is that additional submissions may delay the administrative proceeding and thereby undermine the Policy’s intention of providing a rapid and cost effective domain name dispute resolution.

In this case, the Respondent’s additional submission consists of information about its U.S. Trademark Application, namely that the application was approved by the examining attorney for publication for opposition on May 16, 2005. In this case, the Panel has decided to accept the Respondent’s additional submission as it contains a new fact that did not arise until after the submission of the Complaint or Response.

Paragraph 10(b) of the Rules directs the Panel to treat the parties with equality. In this case, the Panel does not deem it necessary to issue a Procedural Order permitting the Complainant to submit a surrebutter to the Respondent’s additional submission for the reasons set out below.

 

4. Factual Background

The Complainant was founded in 1996, by the Hellenic Telecommunications Organization (OTE). The Complainant is the subsidiary through which OTE implements its business strategy in the fields of new technologies and IP Services. The Complainant owns a number of trademark registrations incorporating the mark OTENET, inter alia;

Greek Trademark Registration No. 154229 OTENET Internet Provider & Device, in Classes 9, 16, 35-39, 41 and 42, registration date May 17, 2002.

Greek Trademark Registration No. 154230 OTENET Internet Provider & Device, in Classes 9, 16, 35-39, 41 and 42, registration date May 17, 2002.

Greek Trademark Registration No. 158667 OTENET News & Device, in Classes 9, 16, 35, 36, 38, 41 and 42, registration date February 18, 2003.

Community Trademark Registration No. 2461572 OTENET Internet Provider & Device, in Classes 9, 16, 35, 38, 39, 41 and 42, registration date November 24, 2003.

The Complainant owns the domain names <otenet.gr> and <otenet.net> since 1997, and <otenet.com.gr> since 1999.

Baou Trust, which is affiliated to the Respondent, owns;

US Trademark Application No. 78465387 OTENET, in Class 38, filing date August 11, 2004. This application has been approved by the examining attorney for publication for opposition. The application has not yet been published for opposition.

The Respondent owns the domain names <otenet.co.uk> and <otenet.ca>.

The domain names at issue, <otenet.com> and <otenet.org>, were registered the first time in January 1998.

 

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

The Complainant contends that it has used the mark OTENET since its incorporation in 1996. The mark OTENET consists of the Complainant’s parent company corporate name “OTE” and the word “NET”, which is reduced from the word “Internet”.

Since the initiation of its business, the Complainant offers, under the distinctive mark OTENET, a variety of telecommunications products and services such as basic access services, IP telecom solutions etc. By the end of 1998, the Complainant had already 25,000 dial-up subscribers, 280 customers for dedicated Internet access, it hosted approximately 100 active websites and it had designed 200 commercial websites. By December 2000, the Complainant had 94,000 active dial-up subscribers, 630 active customers for dedicated Internet access and hosted approximately 800 active corporate websites, while in 2001 its dial-up subscribers reached 156,000. The Complainant serves today more than 316,600 consumer customers (dial – up access, DSL for home users etc) and 9,950 business customers (web hosting, DSL Office, IP-VPN etc).

The Complainant further contends that it is one of the leading suppliers of IP-based services to medium-sized companies in Greece and, indisputably, the market leader in the consumer sector (over 42% market share). Since 1997, and for seven continuous years, the Complainant has been designated Best Internet Provider in Greece. The Complainant’s current sales network consists of over 1,500 points of sale in Greece.

The Complainant contends that it has also expanded its business abroad. Further, the Complainant provided to the Organization Committee for the Athens 2004 Olympic Games all IP Services, including design and hosting of the official Portal (website) of the Olympic Games.

The Complainant owns several trademark registrations which incorporate the distinctive mark OTENET.

Since 1997, the Complainant has invested more than EUR 10,775,000 to publicize the mark “OTENET”, which has been used widely in a manner to ensure its automatic identification in the minds of web users with excellence in Internet services. The Complainant’s overall turnover from 1997 to 2003 amounts to EUR 146,860,812. The Complainant also owns the domain names <otenet.gr> and <otenet.net> since 1997, and <otenet.com.gr> since 1999. It maintains since an active commercial website at these domain names.

The Complainant contends that its website is one of the most popular Greek websites with an average of 223,430 unique, national and international, visitors per month.

The domain names <otenet.com> and <otenet.org> contain the string of characters identical to the Complainant’s distinctive mark and the distinctive part of its Greek and Community trademark registrations. Actually, the domain names at issue and trademarks are virtually identical, both visually and phonetically. Furthermore, the inclusion in the domain names of the gTLDs “.com” and “.org” is non-distinctive because it is required for registration of the domain names.

Any use by the Respondent of the mark OTENET would lead to confusion and deception as customers would infer that the Complainant is associated with, endorses, sponsors or even owns the website operated under the disputed domain names. The likelihood of confusion is further heightened by the fact that the disputed domain names consist merely of the Complainant’s mark. It is most likely that web users from all around the world, in their effort to reach the Complainant’s website, will think at first to type in <otenet.com> or <otenet.org>. In that case, they will be automatically and instantaneously forwarded to the Respondent’s website at “www.mail.baou.com”, on which the Respondent shows off, without any apparent or particular reason, that “OTENET” is a trademark of Baou Trust. Such a confusion or association with the Complainant’s website and trademark unquestionably damages the Complainant’s well-established reputation and goodwill.

Despite the fact that the Complainant’s OTENET trademarks were not registered until after the registration of the disputed domain names, the first requirement set out in paragraph 4 (a) (i) of the Uniform Domain Name Dispute Resolution Policy is satisfied since the Policy applies to both registered and unregistered trademarks.

Rights or Legitimate Interests

The Complainant contends that the Respondent cannot demonstrate or establish any legitimate interest in respect of the disputed domain names, despite its desperate efforts to that end. No relationship between the Respondent and the Complainant exists that would give rise to any license, permission, authorization or other right by which Respondent could, by any way, own or use any of the disputed domain names which incorporate the Complainant’s well known trademarks.

Furthermore, the Respondent, called “Baou Inc”, has never used in a direct way or become known by the domain names <otenet.com> and <otenet.org>. Besides, no website operates under these domain names and no goods or services have ever been offered in connection with them. Following search on the website “www.google.com”, there was no reference to a company, person, product, service other than the Complainant’s name and services, so it is thefore in the Complainant’s view proven that, both on the market and on the Internet, OTENET identifies only the Complainant’s Company and its subsidiaries and that the Respondent has never used the <otenet.com> and <otenet.org> for any purpose other than as a cybersquatter.

According to the Complainant, the disputed domain names have never resolved to an active website. Users typing “www.otenet.com” or “www.otenet.org” are immediately forwarded to the web page “mail.baou.com” owned by the Respondent. Before that, any user trying to enter the disputed domain names’ addresses in order to find the Complainant’s website was directed to the Respondent’s adult website at “www.baldpussyclub.com”.

The Complainant concludes that the Respondent uses and, in essence, exploits the fame and goodwill of the Complainant’s corporate name and trademarks for the exclusive purpose of attracting/redirecting Internet users who would like to be informed of the Complainant and services to its websites for the attainment of considerable commercial gain. The Complainant’s trademark OTENET is an invented word and distinctive. The word OTENET does not have any meaning or connotation in any language other than as the Complainant’s trademark. According to the Complainant, the only rational explanation why the Respondent would acquire the disputed domain names is because it is fully aware of the Complainant’s business and trademarks and their popularity. The Respondent itself has explicitly stated that it acquired and has been using the disputed domain names for purposes of driving traffic, a large proportion of which is originated from Greece, into one of its adult websites. The above described use of the disputed domain names is not legitimate or bona fide and creates reasonable confusion to Internet users as of the origin or even the acceptance of the Respondent’s websites from the Complainant, therefore it tarnishes the Complainant’s trademark.

The Complainant argues that the same findings apply to the predecessors of the disputed domain names.

The Complainant ascertains that neither the original registrant of the disputed domain names nor any of the other entities who acquired the domain names successively had ever used these names in any other way than to divert traffic to other websites owned, designed or commercially used by them or to advertise the sale of these domain names. They have never made any preparations to use, in a legitimate way, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services. Actually, none had ever developed or shown any intentions to develop the disputed domain names. Also, none of them had ever been commonly known by the disputed domain names, neither proposed a product or service known under the name OTENET.

Under such circumstances, the Complainant purports that no legitimate rights can be found. In addition, as the panel ruled in Pharmacia & Upjohn Company v. Moreonline, WIPO Case No. D2000-0134, “if mere registration of the domain name was sufficient to establish rights or legitimate interests for the purposes of paragraph 4 (a) (ii) of the Policy, then all registrants would have such rights or interests, and no complainant could succeed on a claim of abusive registration. ”

Registration and Use in Bad Faith

The Complainant contends that it was not aware until 1999 of the fact that the domain names <otenet.com> and <otenet.org> had been registered by a third entity. Actually, on February 1, 1999, the Complainant received a letter by a corporation named “CITI Services Ltd”, a client of the Complainant at that time, where its Managing Director, Mr. Greg Lloyd Smith, proposed to transfer the domain names at issue, owned by its parent company, called “CITI Services Inc”, to the Complainant, due to the fact that they were receiving, on a daily basis, a large amount of e-mails intended for the Complainant’s clients. By all means, the transfer would take place only if the Complainant agreed to provide them a free period of services.

By a letter dated July 8, 2001, Mr. Greg Lloyd Smith, this time as the Managing Director of a corporation named “FirstNET Online”, was undertaking to transfer the above-mentioned domain names, owned by another of their subsidiaries, to the Complainant “free of charge”, on the condition that the Complainant would not pursue the amount owed to the Complainant for past services offered to “CITI SERVICES Ltd”. The Complainant replied by fax on August 30, 2001, accepting this proposition and describing the procedure to be followed. Mr.  Smith did not reply to the Complainant and therefore the transfer of the domain names never took place.

On May 20, 2003, a letter from “FirstNET Online Europe PLC”, a company set up by Mr. Greg Lloyd Smith, acting on behalf of its customer “Kestrel Trading Corporation”, was sent to the Complainant, by virtue of which FirstNET Online Europe proposed to sell the domain names in question to the Complainant at the considerably high price of EUR 7,500. By their last letter, dated July 7, 2003, the Complainant was informed that a New York based Trust had acquired the domain names.

On July 29, 2003, the Complainant found out that, when one typed in the domain names <otenet.com> or <otenet.org>, one was immediately diverted to the web pagewww.baldpussyclub.com, which contained sexually explicit material and offered links to various pornographic websites. Access to all of these sites, including access to “www.baldpussyclub.com”, was available only at a cost to the viewer. The next day, the Complainant received a letter from the Respondent by which it informed the Complainant that it had purchased the disputed domain names from Kestrel Trading Corporation and the Respondent was not interested in selling them because they had great commercial benefit of them. Inspite of this statement, the Respondent insinuated that a serious proposal would be taken into consideration.

In reply to the Respondent’s letters and its extrajudicial protest, summoning and statement dated August 8, 2003, that was served to the Complainant on August 25, 2003, and in order to reestablish that, in the Complainant’s view, it was fraudulently counterfeited by the Respondent, the Complainant proceeded to notify an extrajudicial protest, declaration and invitation, by which the Complainant invited the Respondent to cease the use and violation of the Complainant’s corporate name and trademarks and the exploitation of the Complainant’s reputation for commercial gain and proceed immediately with the transfer of the domain names <otenet.com> and <otenet.org>. The above document has not been served because the Respondent could not be found at its registered address. It should be taken into consideration that said address has been used by the Respondent itself as its formal address and, by way of illustration, it was printed on the Respondent’s stationery, was presented as the Respondent’s address in the Whois database and stated by the Respondent as its address.

On October 28, 2003, the Complainant received a letter from the Respondent, in which it clearly stated that it would transfer the disputed domain names to the Complainant for the sum of USD 10,000 plus reasonable attorney fees and costs. As the Complainant did not yield to the Respondent’s offer, the Respondent repeated its offer on January 28, 2004. One month prior to the filing of the present Complaint, the Complainant found out that the Respondent began to redirect visitors to the disputed domain names to its web page at “mail.baou.com”. Furthermore, on March 30, 2005 the Respondent proposed once more to sell the disputed domain names to the Complainant, this time for the sum of USD 5,000.

The Complainant argues that it has sound reasons to believe that the above–mentioned entities are affiliated to Baou Trust (formerly named MPC Trust) and that Mr. Greg Lloyd Smith along with his wife Mrs. Aikaterini Theohari–Smith control the situation. The Complainant, therefore, has to conclude that the disputed domain names were registered primarily for the purpose of selling the domain name registrations to the Complainant for valuable consideration in excess of the registrant’s out-of-pocket costs directly related to the domain names. The domain names were used to attract, for commercial gain,Internet traffic intended for the Complainant to webpages owned by legal entities affiliated to Baou Trust (formerly named MPC Trust) and the Respondent. According to the Complainant they were not the only well-known and established company deceived by Mr. and Mrs. Smith. Mr. and Mrs. Smith, through their corporations, have engaged in a pattern of unfair, devious and undue conduct.

The Complainant contends that the Respondent evidently acquired and was using at firstthe domain names intentionally to attract, for commercial gain, Internet users to its website “www.baldpussyclub.com”, by creating a likelihood of confusion with the Complainant’s mark OTENET as to the source, sponsorship, affiliation or endorsement of its website. In support of this argument, the Complainant refers to decisions in NIIT Ltd. v. Vanguard Design, WIPO Case No. D2003–0005, Enterbrain Inc v. Domain for Sale/Email Your Offers!, WIPO Case No. D2002-0009 and Paragon Electric Co. Inc. v. Buy this Domain d/b/a Name Register.Com, WIPO Case No. D2001-1439, where the respective panels found that adoption of a domain name containing the complainant’s mark to divert to a pornographic website raises an overwhelming presumption that the purpose of such registration and use is to attract users seeking to contact the complainant to its website. As is also cited in Enterbrain Inc v. Domain for Sale/Email Your Offers!, WIPO Case No. D2002-0009, “the fact that access to the “adult sites” is available only at a cost to the viewer, is sufficient evidence that the domain name has been used to attract Internet browsers for commercial gain.”

The Complainant contends that there is evidence in the case at issue of the Respondent’s attempt to attract Internet users to its website and trade upon the fame and reputation of the Complainant’s mark for commercial gain, since the Respondent itself has admitted that it had acquired the disputed domain names “for purposes of driving traffic into one of its adult websites” and that “they have great commercial benefit” and alleges that more than 50,000 visitors from Greece visit <otenet.com> and <otenet.org> per day, while, at the same time acknowledging that OTENET is one of the largest ISPs in Greece. This also confirms that the Respondent, the original registrant as well as the entities that successively acquired the disputed names, are fully aware of the reputation of the mark OTENET.

According to the Complainant, the Respondent’s initial use of the domain names <otenet.com> and <otenet.org> in conjunction with pornographic content tarnished and diluted the Complainant’s corporate name and mark OTENET and gave Internet users the impression that the Complainant was endorsing, was sponsoring or was otherwise affiliated with Respondent’s website.

Furthermore, the Respondent’s use of the domain names at issue to resolve to a website (“mail.baou.com”), where Email products and services, which are part of the Internet services provided by the Complainant, are offered along with a note that OTENET is a trademark of Baou Trust , constitutes use in bad faith.

The Complainant contends that even though the Respondent changed the use of the disputed domain names, so that they presently resolve to its website “www.mail.baou.com” the element of use in bad faith, as it is stated in the Policy, is still present. As is cited in Panavision Inc and Panavision International L. P. v. Ed Meyer, d/b/a Panavisions Eyewear and Sunglasses, Domains by Proxy Inc, and M.P.W. Inc. d/b/a Panavisions Eyewear and Sunglasses Inc, WIPO Case No. D2004-0002, “The Panel is cognizant of the fact that 4(a)(iii) uses the present tense when referring to use. The Panel believes that the term “is being used” does not refer to a particular point in time (such as when the Complaint is filed or when the Panel begins deliberations), but refers to the period of time following registration of the domain name at issue. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. If at any time following the registration the name is used in bad faith, the fact of bad faith use is established.”

Furthermore, the fact that the Respondent has attempted to sell both domain names at issue to a competitor of the Complainant also constitutes solid proof of the use of these domain names in bad faith.

For the above reasons, the Complainant strongly believes that Respondent’s acquisition and use of the disputed domain names meet the bad faith requirement of paragraph 4(a)(iii) of the Policy. As the panel ruled in Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000—0847, “the Policy requires a showing of bad faith registration and use.” Here, although Respondent was not the original registrant, the record shows that he acquired the registration in bad faith. The result is the equivalent of registration and is sufficient to fall within the Policy. Indeed, paragraph 4(b)(i) of the Policy treats acquisition as the same as registration for the purposes of supporting a finding of bad faith registration. The Complainant therefore concludes that bad faith acquisition satisfies the requirement of bad faith registration under the Policy.

B. Respondent

The Respondent contends that Baou Group (actually Baou Trust, a New York City domiciled family Trust), through one or more of its wholly-owned subsidiaries, including but not limited to Kestrel Trading Corporation, CITI Services Limited, CITI Services EPE Limited, FirstNET Online plc, FirstNET Online (Management) Limited, FirstNET Online, Inc., MPC Trading USA, Inc. (now Baou, Inc.), or through other corporations, has been in possession and control of the domain names at issue since January 1998.

Further, the current registrant, through rights obtained by assignation and the group’s continuous ownership and control of the domain names at issue, was effectively the first registrant of the domain names at issue.

The Respondent acquired the domain names at issue through a consolidation of assets that took place within the group in October 2003. At the time of that internal transfer of assets, Baou, Inc. was called MPC Trading USA, Inc., and has since been renamed to Baou, Inc. Likewise, at that time Baou Trust was called MPC Trust.

It is untrue, as the Complainant alleges, that the Respondent has not used the disputed domain names since registration. Periodically, when the Respondent has made changes and or upgrades to its cluster (server) network, many of its domain names (not merely the disputed domain names) have been redirected to “holding pages” that promote the domain names for sale. This happens quite regularly.

The reason for this is that the Respondent operates a domain name registration and resale business and all domain names re-directed to the “default” page show as being “for sale”. This does not mean that they are or would be sold, only that they are re-directed to the “default holding page” for a period of time. Should Google, Alexa or Archive index the domain name during that time, the content of that “holding page” will or could be captured. Regardless of that inconsistency, the disputed domain names were still operated as a free webmail service and regardless of the [http] html content shown on the URL, the email services remained and remain unchanged.

According to Customer Service for Archive.org, the reliability of their indexing service is not to be taken “as 100%”. There are numerous examples of domain names and websites not being indexed regularly or at all. The Respondent cites <youvegotpost.com> which was registered by the Respondent in December 1998. However, according to Archive.org, no domain name was published until February 2002. In the Respondent’s view, that “fact” is nonsense, since the Respondent used more than 500 domain names with the You’ve Got Post! software, including both disputed domain names <otenet.com> and <otenet.org> in connection with the provision of its free webmail service until quite recently when those rights were acquired by another company.

When the You’ve Got Post! freemail services were transferred, the Respondent developed a replacement service on http://mail.baou.com and redirected a number of domain names including the disputed domain names for use in that service. The Respondent refutes the Complainant’s allegation that the Complainant only recently became aware of the Respondent’s use of the domain names.

Since 1998, when one of the Respondent’s subsidiaries, based in Greece, operated an ISP located in the Cyclades islands region, the Complainant made an unsolicited approach to the Respondent seeking to enquire whether or not the Respondent might sell the disputed domain names, but the parties were unable to come to terms on that occasion.

Subsequently, the Complainant’s agent made an unsolicited approach to the Respondent attempting to negotiate the purchase by the Complainant of the disputed domain names. On May 27, 2003, the Complainant’s agent initiated contact with the Respondent to attempt to negotiate the purchase of the disputed domain names. The parties were unable to come to terms on that occasion.

In July 2003, the Respondent became aware of the fact that the Complainant was blocking Internet access to both disputed domain names, by the “otenet.gr” Internet users. This matter was referred to the Respondent’s Greek lawyer, who wrote to the Complainant. After numerous letters, the Complainant restored service.

During this period, which lasted from July 2003 to October 2003, the Respondent redirected the disputed domain names to one or more of its former adult websites because despite the Complainant’s blocking action, the entire world could access the domain names even if “otenet.gr” users could not. This action, which was used to cause the Complainant to restore service, did not affect the operation of the Respondent’s free webmail services to its clients. In this case, the Respondent’s action worked because service to the disputed domain names was restored shortly after the re-direction.

Therefore, the Respondent believes that the Complainant was under the impression that the Respondent was not using the disputed domain names because they were unable to access the content published by the Respondent their their network administrators blocking access to anyone using the “otenet.gr” network. The Respondent presumes that the Complainant uses the “otenet.gr” network for Internet access.

The Respondent asserts that it has continuously used the disputed domain names for purposes of providing free webmail services in 1998. On January 30, 2004, the Complainant’s agent again initiated contact with the Respondent to attempt to negotiate the purchase of the disputed domain names. The parties were unable to come to terms on that occasion.

The Complainant did not respond to requests from the Respondent pursuant their original unsolicited approach. A number of letters were sent by the Respondent and, eventually, it was presumed that the Complainant had changed its mind on account of the fact that the price set by the Respondent remained unchanged at USD 10,000 for both disputed domain names. However, in early August 2004, the Respondent was contacted by a Greek ISP, who contrary to the Complainant’s claim, obtains its Internet connection from the Complainant. Suggesting that the Greek ISP is a competitor of Complainant is therefore, in the Respondent’s view, ridiculous). In fact, the Greek ISP is a client and customer of the Complainant.

The Greek ISP made an unsolicited offer of USD 5,000 for both disputed domain names, which was accepted. The Respondent repeatedly maintained the sale price of USD 10,000. The Respondent was within its right to sell or transfer the disputed domain names to the Greek ISP and following the failed negotiations between the Complainant’s agent and the Respondent, it was decided that the Respondent would dispose of the disputed domain names and in the end the Respondent agreed to the lower price in keeping with its desire to reduce the number of domain names it maintained.

The Respondent was under the impression that the transaction was complete on August 9, 2004. The Respondent turned over control of the ‘otenet’ account via the Registrar and updated the WHOIS information to reflect the transfer to the Greek ISP.

However, on August 10, 2004, the Greek ISP backed out of the deal. The Greek ISP lost several hundred dollars in fees payable to Escrow.com. The Respondent reassumed control of the ‘otenet’ account via the Registrar and has continued to use the disputed domain names in connection with its free webmail service since that date.

The Respondent has reason to believe that the Greek ISP was acting on behalf of the Complainant in purporting to acquire the disputed domain names, when it was never its intention to do so, merely to establish the willingness of the Respondent to sell the disputed domain names. The Respondent relies upon the fact that the Greek ISP paid USD 5,000 to Escrow.com and actually took control of the ‘otenet’ domain name account via the Registrar. Only after having done so, did a representative for the Greek ISP reject the domain names. The Respondent made a formal complaint to Escrow.com and the Greek ISP was required to pay all fees in connection with the bogus transaction. The Respondent maintains that the Greek ISP was merely acting on behalf of the Complainant in preparation for this Complaint.

Regardless of the Complainant’s claim to alleged trademarks in Greece and the European Union, the Respondent has used and continues to use the disputed domain names in connection with its free webmail services since first registering the disputed domain names.

The Respondent’s use of the disputed domain names is pursuant to its terms and conditions, which include a disclaimer as to use and territory. Specifically:

“BAOUMAIL (tm) incorporating OTENET (tm) WebMail, provides free “WEBMAIL” services only. This service is directed at and intended for US-based, English speaking users.”

The Respondent established its lawful right to its mark OTENET in the United States since January 1998 through its unencumbered use of the disputed domain names.

The Respondent contends that the Complainant has been aware of the Respondent’s use of the domain names since 1998. The Complainant failed to make any objection through any forum or legal method. Even when the Complainant had direct contact with the Respondent’s lawyer in Greece, following the Complainant’s blocking of the Respondent’s domain names (from “otenet.gr” users), the Complainant failed to record any objection of the Respondent’s use of the disputed domain names.

Putting this into perspective, the Complainant has been in direct communications with the Respondent since 1998, now more than seven years, and not until April 2005, has the Complainant raised a formal objection.

The Respondent has established its right to the mark OTENET in the United States through “use”. On August 11, 2004, following the Complainant’s failed purchase through their agent, as described above, Baou Trust, parent of the Respondent, applied for U.S. Trademark, Serial No. 78/465387.

Recent communications between the U.S. Trademarks’ Examiner and the Respondent resolved a minor technical fault in the application pertaining to a written notice that was inadvertently left off one of the specimens supplied by the applicant, and it is now anticipated that the application will be “passed” for publication, opposition and then ultimately, registration.

The Respondent is convinced that, should the Complainant lodge an objection to the U.S. application for Trademark, once it has been published for opposition, as will be their right, such an effort will fail and the mark will be approved for registration because the Complainant, by their own admission, has no presence in the United States. The Respondent’s use is disclaimed to the United States.

The Respondent has established its right to the disputed domain names by virtue of its continued use of the disputed domain names in connection with its free webmail service.

There can be no public confusion, as the Complainant alleges, because both disputed domain names are redirected to “mail.baou.com” (previously “mail.youvegotpost.com” and when users arrive at the webmail website, the URL shown is “http://mail.baou.com”. Even the original URL “http://otenet.baou.com”, re-directs to http://mail.baou.com”.

The Respondent contends that it is the lawful registrant of other OTENET domain names not included in the Complaint; e.g. “otenet.co.uk” and “otenet.ca”, both of which are used in connection with the provision of the Respondent’s free webmail service.

While the Respondent has never initiated the proposed sale of the disputed domain names, the Complainant made unsolicited approaches to the Respondent in 1998 and then again in 2003, the Respondent is not prevented from selling or otherwise transferring the disputed domain names to the Complainant or their agent or any other person or organization if it so chooses.

In conclusion:

The Respondents contends that the Complainant has failed in its burden of proof to establish that the Respondent registered the disputed domain names in bad faith because:

1. The Respondent is making a legitimate non-commercial use of the disputed domain names and has operated a free webmail service since 1998. At present, the Respondent has more than 192,000 registered ‘otenet’ webmail users across four ‘otenet’ domain names; and

2. The Respondent has established its right within the United States through use of its mark OTENET and has recorded that fact through application for registration of its trademark, Serial No. 78/465387. The application, by Baou Trust, for the OTENET mark will succeed according to the Examiner; and

3. The Respondent has never initiated any approach to the Complainant in connection with the proposed sale or transfer of the disputed domain names. It is the Complainant’s agents that made initial approaches to the Respondent. It is the right of the Respondent to sell or transfer its property.

On the other hand, the Complainant has itself acted in bad-faith throughout as follows:

1. The Complainant has blocked access to the Respondent’s domain names to its [otenet.gr] users and only restored service after threats of legal action by the Respondent’s lawyer and then only after the Respondent re-directed the [http] domain name use to an adult website. This action was taken to force the Complainant to restore service; and

2. The Complainant used a Greek ISP as an agent, to offer, execute and then cancel a bogus sale of the two disputed domain names in order to show that the Respondent was willing to sell or transfer the domain names in question. This act is nonsense, but cannot otherwise be explained.

Under Policy, Paragraph 4(a), for a Complainant to succeed with its Complaint, it must establish that the three conditions therein are satisfied and according to the Respondent, in this case the Complainant has failed to do so.

The Respondent therefore asks that the Complaint be denied.

 

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must assert and prove each of the following:

i) that Respondent’s domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

ii) that Respondent has no rights or legitimate interests in respect of the domain names; and

iii) that the domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has shown that it owns several trademark registrations incorporating the mark OTENET. The Panel deems that the mark OTENET is the dominating part in the Complainant’s trademark registrations. These trademark registrations postdate the domain name registrations at issue. However, paragraph 4(a)(i) of the Policy does not require that the trademark be registered prior to the domain name, see e.g. Digital Vision, Ltd v. Advanced Chemill Systems, WIPO Case No. D2001-0827. The fact that the disputed domain names predate Complainant’s trademark registrations may be relevant to the assessment of bad faith pursuant to paragraph 4(a)(iii) of the Policy.

Further, the Complainant has filed substantial evidence of its extensive use of the mark OTENET. The Panel deems that the Complainant has shown that it has unregistered trademark rights to the mark OTENET.

The domain names at issue consist of the mark OTENET and the gTLDs “.com” and “.org”. The gTLDs “.net” and “.org” are of no significance when determining whether or not a domain name is identical or confusingly similar to a trademark or service mark. Accordingly, the Panel finds that the domain names at issue are identical to the unregistered trademark and service mark OTENET in which the Complainant has rights and confusingly similar to the Complainant’s trademark registrations.

The Panel concludes, therefore, that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

According to paragraph 4(c) of the Policy, a respondent may demonstrate its rights to or legitimate interests in a domain name by proving any of the following circumstances:

(i) before any notice to the respondent of the dispute, the respondent’s 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) the respondent is 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.

Paragraph 15(a) of the Rules stipulates that the Panel shall decide a Complaint on the basis of the statements and documents submitted.

The Respondent has stated that Baou Group (actually Baou Trust, a New York City domiciled family Trust), through one or more of its wholly-owned subsidiaries, including but not limited to Kestrel Trading Corporation, CITI Services Limited, CITI Services EPE Limited, FirstNET Online plc, FirstNET Online (Management) Limited, FirstNET Online, Inc., MPC Trading USA, Inc. (now Baou, Inc.), or through other corporations, has been in possession and control of the domain names at issue since January 1998. The Panel will refer to these companies as the “Group” below. Further, the Respondent states that it was effectively the first registrant of the domain names at issue.

The Respondent contends that it has established its right to the mark OTENET in the United States through use since 1998, and has recorded that fact through application for registration of its trademark in USA. This trademark application was filed on August 11, 2004. It is of course possible for a respondent to rely on a valid trademark registration to show rights or legitimate interests in a domain name. However, a mere registration and/or use of a trademark do, in certain circumstances, not create a right or legitimate interest in a domain name under the Policy.

The evidence filed by the Complainant shows that a company, which belongs to the Group and is situated in Greece, was a customer of the Complainant in 1998. Further, the Complainant has shown that it began using its mark OTENET in 1996. The Respondent has not rebutted this evidence and has not provided an explanation as to why it selected to register the invented word OTENET as a domain name. The Complainant’s evidence indicates that the Respondent had knowledge of the Complainant’s mark before registering the domain names at issue.

Further, the Respondent contends that it is making a legitimate noncommercial use of the disputed domain names and that the disputed domain names have operated as a free webmail service since 1998. The Respondent’s contentions are not quite persuasive since the Complainant has shown that the domain names at issue previously directed Internet users to the adult website “www.baldpussyclub.com”. In this respect, the Respondent contends that it directed the domain names at issue to its adult website to cause the Complainant to restore services and cease its blocking actions. However, the evidence before the Panel contradicts the Respondent’s contention since it shows that a company affiliated with the Respondent sent a fax with the heading “OTENET.COM AND OTENET.ORG” to the Complainant on July 30, 2003, in which it was stated that “we acquired them for purposes of driving traffic into one of our adult websites. They have great commercial benefit to us.”

Further, the Complainant has filed evidence consisting of examples of use of the domain name <otenet.com> between 1998 and 2002, which shows that this domain name has been used in several different ways, inter alia, to provide information about Aphrodite Beach Hotel and Frugal Names.

The domain names at issue are currently directed to the website “mail.baou.com” where the Respondent offers free webmail services. On the website “mail.baou.com”, it is stated “Welcome to BaouMail!”. The mere use of a domain name, by directing it to another website is not sufficient to create rights or legitimate interests, since not all such use qualifies as bona fide or fair use, see e.g. Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847.

In light of the circumstances in this case, the Panel concludes that the Respondent’s use of the domain names at issue can not constitute a bona fide offering of goods or services or a legitimate fair use. Further, the evidence before the Panel is not sufficient to support a conclusion that Respondent is commonly known by the domain names at issue.

Based on the record before the Panel, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

As stated above, the fact that the disputed domain names predate Complainant’s trademark registrations may be relevant to the assessment of bad faith pursuant to paragraph 4(a)(iii) of the Policy.

The Respondent has stated that it was effectively the first registrant of the domain names at issue.

In this case, the Complainant has shown that a company, which belongs to the Group and is situated in Greece, was a customer of the Complainant in 1998. Further, the Complainant has shown that it began using its mark OTENET in 1996, i.e. before the domain names at issue were registered. The Respondent has not rebutted this evidence and has not provided an explanation as to why it selected to register the invented word OTENET as a domain name. The Complainant’s evidence indicates that the Respondent had knowledge of the Complainant’s mark before registering the domain names at issue. The knowledge of the Complainant’s mark at the time of registration of the domain names suggests bad faith. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270 and Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441.

The Respondent contends that the Complainant made the initial approach to buy the domain names at issue in 1998, but has not filed any evidence in support of its contentions.

The Complainant has filed evidence showing that the Respondent and its predecessors have offered to sell the domain names at issue to the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain names at issue, at several occasions. This fact indicates that the domain names at issue were registered and are being used in bad faith according to paragraph 4(b)(i) of the Policy.

Further, the Complainant has shown that the domain names at issue previously directed Internet users to the adult website “www.baldpussyclub.com” and that a company affiliated with the Respondent sent a fax to the Complainant on July 30, 2003, in which it was stated that “we acquired them for purposes of driving traffic into one of our adult websites. They have great commercial benefit to us.”. The panel in Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022 stated that: “… it is commonly understood, under WIPO case law, that, whatever the motivation of Respondent, the diversion of the domain names to a pornographic site is itself certainly consistent with the finding that the domain name was registered and is being used in bad faith. ” Further, the Panel agrees with previous WIPO panels that the term “is being used” in paragraph 4(a)(iii) of the Policy does not refer to a particular point in time (such as when the Complaint is filed or when the Panel begins deliberations), but refers to the period of time following registration of the domain name at issue. If at any time following the registration, the domain name is used in bad faith, the fact of bad faith use is established. See e.g. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 , and Ingersoll-Rand Co. v. Frank Gully, dba Advcomren,WIPO Case No. D2000-0021. The Panel deems that this use of the domain names at issue was made intentionally to attract, for commercial gain, Internet traffic intended for the Complainant to the website “ www.baldpussyclub.com“, which is evidence of bad faith use.

Based on the record before the Panel, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

 

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 disputed domain names, <otenet.com> and <otenet.org>, be transferred to the Complainant.


Markus S. Bonair
Sole Panelist

Dated: May 24, 2005

 

Источник информации: https://internet-law.ru/intlaw/udrp/2005/d2005-0349.html

 

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