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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Iconcard S.p.A. v. Linecom

Case No. D2005-1115

1. The Parties

The Complainant is Iconcard S.p.A., Milan, Italy, represented by Studio Legale Perani, Italy.

The Respondent is Linecom, Seoul, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <iconcard.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 24, 2005. On October 25, 2005, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain name at issue. On October 26, 2005, OnlineNic, Inc. d/b/a China-Channel.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the disputed domain name. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 8, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was November 28, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 1, 2005.

As the domain name was about to expire on November 23, 2005, the Center requested that the disputed domain name to be placed on HOLD and LOCK status.

On Complainant’s requests dated December 14, 2005 and February 13, 2006, the Center suspended the administrative proceeding until February 14, 2006 and March 16, 2006.

On March 7, 2006, Complainant requested the re-institution of the administrative proceeding.

On March 10, 2006, the Center appointed Dr. Torsten Bettinger as the Sole Panelist in this matter. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant is an Italian company which offers credit card services.

Complainant is the owner of following trademark registrations and trademark applications for “ICONCARD”

Trademark	Registration Number	Registration Date	Register	Registered Classes
ICONCARD	3197076	November 23, 2004	Community Trademark	9, 16, 36
Iconcard	4344966	Pending	Community Trademark	9, 16, 36
Icon card	4344917	Pending	Community Trademark	9, 16, 36

Furthermore, the Complainant is the owner of numerous domain names including the term ICONCARD such as <iconcard.it>, <iconcard.biz>, <iconcard.info>, <iconcard.net> and < iconcard.org>.

Respondent is the registered owner of the domain name <iconcard.com> .

5. Parties’ Contentions

A. Complainant

Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy has been satisfied.

In reference to the element in paragraph 4(a)(i) of the Policy, Complainant contends that the domain name <iconcard.com> is identical to Complainant’s Community trademark registration No. 3197076 ICONCARD as well as its trademark applications ICONCARD and the domain name registrations <iconcard.it>, <iconcard.org>, <iconcard.net>, <iconcard.info> and <iconcard.biz> it being established that the addition of the top level domain such as <.com> does not affect the domain name for the purpose of determining whether it is identical or confusingly similar to a trademark.

In reference to the element in paragraph 4(a)(ii) of the Policy, Complainant states that none of the situations described in paragraph 4(c) of the Policy can be established in this case. In support of this assertion, Complainant argues that:

- Respondent has not acquired trademark rights in the mark ICONCARD;

- Complainant has not licensed or in any other way authorized the Respondent to use its trademark ICONCARD as a domain name;

- the domain name <iconcard.com> does not correspond to the business name of the Respondent;

- Respondent is not commonly known under the name ICONCARD;

In reference to the element in paragraph 4(a)(iii) of the Policy, Complainant asserts that the disputed domain names were registered or acquired primarily for the purpose of selling them to the Complainant, for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the domain name.

In support of this assertion, Complainant argues that the domain name <iconcard.com> is linked to a website which clearly indicates that Respondent intends to sell the domain name. Complainant provided a print out of a website dated September 9, 2005, which states as follows:

“Sorry to announce that this website is closed and decided to sell this domain name by auction. If you are interested in buying this domain name, please make your best bid via e-mail. Anybody can bid from US$3500 up to US$5500 for this domain, the highest bidder will get this domain. This auction is done by email. The starting price is US$3500 and if anybody reaches to US$5500, this auction will be automatically closed and the domain name will be transferred to the auction winner by using escrow service at escrow.com. This auction period is 45 days from the first bid”.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has provided evidence of a Community trademark registration consisting of the term ICONCARD.

The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors, such as the “Sleekcraft factors” – AMF Inc. v. Sleekcraft Boats, 599 F.2d 341,346 (9th Cir. 1979), usually considered in trademark infringement (See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698 <guiness.com>; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110, <ansellcondoms.com>; Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. D2001-0843, <dixons-online.net>; AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327, <attinternet.com>, <attuniversal.com>; BWT Brands, Inc. and British Am. Tobacco (Brands), Inc. v. NABR, WIPO Case No. D2001-1480, <kool.com>; Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505, <britanniabuildingsociety.org>).

The disputed domain name <iconcard.com> wholly incorporates Complainant’s community trademark ICONCARD. It is well-established that the specific top level of a domain name such as <.com>, <.org> or <.net> does not affect the domain name for the purpose of determining whether it is identical or confusingly similar pursuant to paragraph 4 (a) (i) of the Policy. (See Magnum Piering, Inc. v. The Mudjackers and Garwood & Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429). The Panel thus finds that the domain name <iconcard.com> is identical to Complainant’s trademark ICONCARD and that therefore the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy requires Complainant to prove that Respondent has no right or legitimate interest in the disputed domain name. However, it is consensus view among Panelists that if complainant makes a prima facie case that respondent has no rights or legitimate interests, and respondent fails to show one of the three circumstances under paragraph 4(c) of the Policy, then respondent may lack a legitimate interest in the domain name.

Complainant showed that Respondent has neither a license nor any other permission to use the trademark ICONCARD in which Complainant has exclusive rights. The Panel thus finds that Complainant has made a prima facie showing that Respondent has no rights or legitimate interests in the domain name <iconcard.com>.

Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain name.

The term “Iconcard” is identical with the Complainant’s company name and trademark. Before notice to Respondent of the dispute, there is no evidence of its use, 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. Further, nothing in the record suggests that Respondent is making a legitimate commercial use of the domain name or registered the domain name as a descriptive, non-source identifying domain name.

The Panel therefore accepts the Complainant’s contention that Respondent has no right or legitimate interests in the domain name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied.

C. Registered and Used in Bad Faith

Complainant alleges that Respondent has registered or acquired the domain name primarily for the purpose of selling the Domain Name registration to Complainant for a valuable consideration in excess of its out-of-pocket costs directly related to the domain name.

In fact, there are certain circumstances indicating that the Domain Name was registered or acquired primarily for the purpose of selling it to Complainant.

The term ICONCARD is obviously connected with the Complainant’s credit card services. It is therefore most likely that Respondent was aware of the Complainant’s mark at the time it registered the domain name.

Respondent offered to sell the domain name <iconcard.com> in an auction for US$3500 up to US$5500. This amount is certainly in excess of the Respondent’s out of pocket costs directly related to the domain name.

When these facts are combined with the fact that Respondent has not provided any plausible argument why it registered the Domain Name, it is possible to infer that Respondent registered the domain name <iconcard.com> knowing that it was the trademark of Complainant and had the objective to sell it to Complainant.

This fact alone is sufficient for a finding of bad faith pursuant to paragraph 4(a)(iii) of the Policy. The Panel is therefore not required to make a finding whether there are other circumstances that can be considered as evidence of bad faith.

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 <iconcard.com>, be transferred to the Complainant.

Torsten Bettinger
Sole Panelist

Dated: March, 28 2006