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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Systea GmbH v. Marketpoints.com New Media Branding Services/DNS Administrator

Case No. D2006-0324

 

1. The Parties

Complainant is Systea GmbH, Linden, Germany, represented by an internal representative.

Respondent is Marketpoints.com New Media Branding Services/DNS Administrator, San Francisco, California, United States of America, represented by Eyetooth Branding and Trademark, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <systea.com> is registered with eNom.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 15, 2006. On March 17, 2006, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On March 21, 2006, eNom transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 23, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 12, 2006. The Center received by fax, on April 13, 2006, Respondent’s submission denominated as its Response. The Center acknowledged this submission and noted that, because it was submitted after the deadline, the Panel would decide in its sole discretion whether to consider this late submission.

On April 19, 2006, Complainant submitted a supplementary filing in response to the Response.

The Center appointed Geert Glas as the sole panelist in this matter on April 20, 2006. 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.

On April 24, 2006, the Panel informed the Center that the contact details of the registrant of the disputed domain name on eNom WHOis were different from the contact details stated in the case file. The Center requested eNom to clarify this matter in an e-mail dated April 26, 2006. On May 3, 2006, eNom replied that Respondent did not transfer the domain name, but had merely changed the contact details of its account. eNom then reverted the contact details back to what they were prior to the change.

 

4. Factual Background

Complainant is a German limited company incorporated in March 1999, and is in the business of designing and manufacturing a series of ready-built pc-systems under the SYSTEA brand.

Complainant owns a Community trademark on the SYSTEA sign, registered on March 17, 2005 (registration no. 003326725). In addition, Complainant applied for a United States trademark on December 1, 2005.

Respondent is a United States company which is in the business of conceiving new names for new entities.

On March 20, 2005, Respondent registered the disputed domain name (hereafter “the disputed domain name”).

 

5. Parties’ Contentions

A. Complainant

Firstly, Complainant asserts that the disputed domain name is identical to Complainant’s Community trademark SYSTEA sign.

Secondly, Complainant asserts that Respondent does not have any rights or legitimate interests in the disputed domain name. Complainant bases its assertion on the following grounds:

1. the word SYSTEA is a fantasy name which has no meaning in any language.

2. Complainant has applied for registration of and has used the SYSTEA name prior to Respondent’s registration of the disputed domain name.

3. Respondent is not known under the disputed domain name and has never used the SYSTEA name in connection with the bona fide sale of goods or services and has no apparent intention of doing so (it being understood that Respondent’s current use of the disputed domain name as a “bait” to attract customers to its website is not a legitimate interest).

Finally, Complainant asserts that the disputed domain name was registered and is being used in bad faith. Complainant bases its assertion on the following findings:

1. upon being contacted by Complainant, Respondent offered to sell the disputed domain name for 13,500 USD, an amount clearly in excess of its out-of-pocket expenses.

2. Respondent registered and uses the disputed domain name to divert and attract internet users to its commercial website, by placing banners advertisements for Respondent’s website and the websites of commercial partners.

3. Respondent must have been aware, not only of Complainant’s rights in the SYSTEA mark, but also of third parties’ use of the SYSTEA mark (e.g. the websites “www.systea.it” and “www.systea.net”, operated by, respectively, an Italian and a French company).

4. Respondent provided incorrect contact details to eNom . A notice was sent to Respondent’s post address, but was returned, marked “insufficient address”. E-mails regarding the disputed domain name also remained unreplied. No fax number has been provided and the telephone number is permanently linked to an answering machine and bears the access code of a different city in the United States.

Consequently, Complainant asserts that all three elements of paragraph 4(a) of the Policy have been fulfilled and requests that the disputed domain name be transferred to Complainant.

B. Respondent

Firstly, Respondent asserts that it has legitimate interests in the disputed domain name. Respondent states that it registered the disputed domain name in the context of its legitimate business of selling domain names in conjunction with the conception of names for start-up companies. It states that the disputed domain name is a desirable domain name for its business, as SYSTEA is the Latin plural for “systems”.

Secondly, Respondent asserts that the disputed domain name has neither been registered nor used in bad faith. Respondent bases this assertion on the following grounds:

1. Respondent stresses that it has registered the disputed domain name in the context of its legitimate business and that it never offered the domain name for sale to the general public or to trademark holders (but merely to its target clients, i.e. start-up companies). Respondent refers to the disclaimer on its website that states that “you must be building a new and legitimate mark in good faith. If you have already begun use of a mark […] you are generally ineligible to acquire that domain name”.

2. Respondent denies having been contacted by Complainant concerning the disputed domain name but only concerning one of its other domain names, i.e. <grandroyale.com>.

3. Respondent does not use the disputed domain name to divert and attract internet users, as the disputed domain name does not contain (i) any malicious traffic redirection, (ii) any information confounding of competing products or services, or (iii) any pornographic or illegal content.

4. the contact details provided in the Whois information are correct, which is evidenced amongst others by Complainant’s successful attempts to contact Respondent via e-mail concerning the <grandroyale.com> domain name. Moreover, the telephone number is not permanently an answering machine.

Respondent concludes that it has not violated the Policy and requests the Panel to make a finding of reverse domain name hijacking.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel on the principles the Panel must use in determining the dispute:

A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable

Paragraph 4(a) of the Policy states that, for the Complaint to be granted, Complainant must prove each of the following:

- that the domain name registered by Respondent is identical or confusingly similar to the trademarks or service marks in which Complainant has rights; and

- that Respondent has no rights or no legitimate interests in respect of the domain name; and

- that the domain name has been registered and is used in bad faith.

A. Procedural Findings

On the basis of paragraph 10(b) of the Rules, which requires each Party to be given a fair opportunity to present its case, the Panel decides to consider the Response of April 13, 2006 notwithstanding the fact that it was submitted one day after the due date for the Response. See, amongst others, Bianjade Enterprises Pty Ltd v. Leigh Michael Connelly, WIPO Case No. DAU2003-0003.

The Panel, however, rejects Complainant’s unsolicited supplemental filing of April 19, 2006. The Policy establishes a truncated procedure which only allows the submission of one Complaint and one Response and thus ensures a rapid and cost effective resolution of domain name challenges. At the same time, the Policy provides the Panel with the flexibility to seek additional submissions if the Panel feels that it cannot decide on the basis of the information submitted. The proper way for a party to obtain such additional submissions is to first seek the consent of the Panel, with an explanation of why a supplemental filing is warranted. As Complainant was aware of the Policy and Rules at the time of the filing of its Complaint, the Panel sees no reason to allow the supplemental filing. See, amongst others, Custom Bilt Metals v. Conquest Consulting, WIPO Case No. D2004-0023.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires Complainant to prove that the disputed domain name “is identical or confusingly similar to a trademark or service mark in which the complainant has rights”.

Complainant owns a Community trademark on the SYSTEA sign (registration no. 003326725). Respondent does not challenge these trademark rights in its Response.

For purposes of the assessment of this first element of paragraph 4(a) of the Policy, it is irrelevant that Complainant’s trademark was not registered in the country in which Respondent operates. In Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358, the panel confirmed that the identity or confusing similarity must be assessed regardless of the country of registration of that trademark. As stated in several WIPO cases, “the essence of the Internet is its world wide access” (see Bennett Coleman & Co. Ltd. v. Steven S Lalwani, WIPO Case No. D2000-0014, and Bennett Coleman & Co Ltd. v. Long Distance Telephone Company, WIPO Case No. D2000-0015.

It is furthermore well-established in UDRP case law that the addition of the generic top-level domain name “.com” is irrelevant when determining whether a disputed domain name is identical to a trademark (see, amongst others, Microsoft Corporation v. N.R. Vinod, VinSoft, WIPO Case No. D2004-0310, and Infospace.com, Inc. v. Registrar Administrator Lew Blanck, WIPO Case No. D2000-0069.

For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.

C. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires Complainant to prove that Respondent has “no rights or legitimate interests in respect of the domain name”.

Complainant asserts that Respondent is not holding any rights or legitimate interests in the disputed domain name.

As it is often impossible for a complainant to prove a negative (i.e. that a respondent has no rights or legitimate interests in the disputed domain name), UDRP case law has consistently held that a complainant must only demonstrate prima facie that no rights or legitimate interests are present, whereupon the burden of proof shifts to the respondent. See, amongst others, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455, and Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110, and De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005.

Respondent argues that its business of selling domain names to start-up companies is a legitimate business. Although the Panel agrees that the business of registering domain names with the intent to resell them is not illegitimate per se, (see, amongst others, Regency Homes, L.C. v. RegencyHomes.com, WIPO Case No. D2004-0412) the Panel must not assess whether Respondent’s business is legitimate but rather whether Respondent has any rights or legitimate interests in the disputed domain name.

Respondent claims to have such legitimate interests in the disputed domain name as it claims that the sign SYSTEA is the Latin plural for “systems”, which would make it a generic term. However, as far as the Panel can verify, the Latin equivalent for the word “system” is SYSTEMA, of which the plural is SYSTEMAE. Respondent’s argument can therefore not be withheld.

Respondent fails to submit any further evidence of its rights or legitimate interests.

The Panel therefore finds that Complainant has satisfied its prima facie burden of proof so that paragraph 4(a)(ii) of the Policy has been satisfied.

D. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires Complainant to prove that the disputed domain name “has been registered and is being used in bad faith”.

The use of the word “and” implies that the Policy requires Complainant to prove bad faith in both (i) the use and (ii) the registration of the disputed domain name. See amongst others, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Paule Ka v. Paula Korenek, WIPO Case No. D2003-0453.

Paragraph 4(b) of the Policy provides for a non-exhaustive list of examples which are not only evidence of, but conclusively establish that, the domain name has been registered and is being used in bad faith.

“Registration of the disputed domain name primarily for the purpose of selling the domain name registration to Complainant or to Complainant’s competitors, for valuable consideration in excess of out-of-pocket costs.” (paragraph 4(b)(i) of the Policy)

Respondent does not dispute that it offered the disputed domain name for sale both (a) on the placeholder website to which the disputed domain name resolves as (b) in reply to Complainant’s solicited offer (in which Complainant however did not identify itself).

Furthermore, it is evident from Respondent’s website that Respondent is in the business of selling domain names and that in order to profit from such business, Respondent is offering the domain names for valuable consideration in excess its out-of-pocket costs directly related to these domain names.

Respondent however argues that this sale of domain names, and in particular the sale of the disputed domain name, does not constitute evidence of bad faith. Respondent refers to the disclaimer it includes on the placeholder website, which states:

This domain may be available to newly forming entities. […] Eligibility to acquire and use under US trademark law, as well as contracts and transfers, are executed at Registrant’s expense using the trademark firm Eyetooth.com. Registrant will not respond to a direct inquiry. Type name in subject of email to legal@eyetooth.com for prompt reply. This domain is not available for purchase by parties who have previously used this textstring as a mark in commerce, with possible exception where one’s mark use began after the date the name was acquired by Registrant. Contract of sale authorizes reclamation in the event of misrepresentation by acquiring party”.

Respondent’s argument is that the domain name is not sold to the public since a buyer first needs to be found eligible before it will be sold the domain name.

It is undisputed that the disputed domain name is offered for sale on a publicly accessible website. Moreover, in Venturum GmbH v. Coventry Investments Ltd., DomainCollection Inc.,WIPO Case No. D2003-0405, the Panel held that the use of a disclaimer is insufficient if it appears from the evidence that the disclaimer was not de facto complied with.

The Panel finds that evidence points to the contrary. The exhibits show that the condition stated in Respondent’s disclaimer is not being enforced. From e-mails submitted by Complainant, it appears that the interested buyer is merely requested to state that he is an eligible buyer. Respondent does not appear to perform any research on the correctness of this statement.

The provision of false contact data

Respondent’s bad faith is further demonstrated by the false contact information he provided to his registrar. See, amongst others, Oxygen Media, LLC v. Primary Source WIPO Case No. D2000-0362.

Respondent could not be contacted on the contact details listed in the eNom’s WHOis. Respondent could only be contacted via e different e-mail. Moreover, as appears from eNom’s May 3, 2006 e-mail, Respondent chose to change all its account details, including the name of the account holder, rather than correcting the false contact details.

Based on the case record, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.

 

7. Reverse Domain Name Hijacking

As Respondent’s defence cannot be accepted, the Panel rejects Respondent’s claim of reverse domain name hijacking.

 

8. 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 <systea.com> be transferred to Complainant.


Geert Glas
Sole Panelist

Dated: 15 May 2006

 

Источник информации: https://internet-law.ru/intlaw/udrp/2006/d2006-0324.html

 

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