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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

INKE, S.A. v. Bradek Corporation and Oscar Braun

Case No. D2006-0601

 

1. The Parties

The Complainant is INKE, S.A., of Barcelona, Spain, represented by J. Isern Patentes y Marcas, S.L., Spain.

The Respondents are Bradek Corporation and Oscar Braun, of Washington DC, United States of America.

 

2. The Domain Names and Registrar

The disputed domain names <inke.com> and <inke.net> are registered with Schlund + Partner.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 12, 2006, naming Bradek Corporation as Respondent in relation to the domain name <inke.com> and Oneandone Private Registration as Respondent in relation to the domain name <inke.net>. On May 12, 2006, the Center transmitted by email to Schlund + Partner a request for registrar verification in connection with the domain names at issue. On May 23, 2006, Schlund + Partner transmitted by email to the Center its verification response confirming that the Respondent Bradek Corporation is listed as the registrant of <inke.com>, stating that Oscar Braun is the registrant of <inke.net> and providing in each case the contact details for the administrative, billing, and technical contact. Both registrants were shown by the Registrar to have the same PO Box number in Washington DC.

In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 24, 2006, naming Mr. Braun as the second Respondent. 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 Respondents of the Complaint, and the proceedings commenced on May 31, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was June 20, 2006. The Response was filed with the Center on June 20, 2006. It named Bradek Corporation as sole Respondent and responded fully to the Complaint in relation to both domain names.

Accordingly, although there are two Respondents of record (since the two domain names at issue are registered in different names) the Panel will proceed on the basis that Bradek Corporation alone is responsible for them both and will refer in this decision compendiously to both registrants as ‘the Respondent’.

On June 28, 2006, the Complainant requested permission to file an unsolicited Reply on the ground that it addressed matters raised in the Response that it could not have anticipated.

The Center appointed Alan L. Limbury as the sole panelist in this matter on June 29, 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.

The Panel is satisfied that the unsolicited Reply does address issues the Complainant could not have anticipated and accordingly has had regard to the Reply.

 

4. Factual Background

The Complainant operates a chemical plant in Spain, making active pharmaceutical ingredients which are incorporated into finished dosage products by others. It is part of the Invent Pharma group of companies. In June 2002, the United States Food and Drug Administration approved its installations.

The Complainant owns three trademark registrations in Spain for the mark “INKE, S.A.”: Nos. 0101141 registered on September 16, 1985, without designated Nice classification; 1184456 registered on July 1, 1989, in Class 5; and 2269704 registered on July 1, 2000, in Class 35.

The Respondent registered the domain names <inke.com> on February 25, 1999 and <inke.net> on November 28, 2002.

The Complainant registered the domain name <inke.es> on July 4, 2000.

 

5. Parties’ Contentions

A. Complainant

The domain names are confusingly similar to the Complainants marks.

The Respondent has no rights or legitimate interests in the domain names. The Complainant discovered in June 2000, when it tried to register a domain name identical to its company name, that both domains [sic] were registered, so it opted for the Spanish domain <inke.es>. In May/June 2004, the holder of both domains displayed a “Domain for Lease or Sale” web page in respect of ‘inke.com/.net/.us/.info and /.biz’.

The disputed domains are both redirected to a hard porn site, <mydangerousdongs.com>. Such conduct does not amount to a legitimate interest and the services are not bona fide. The Respondent is not known as INKE, is not a licensee of the Complainant and does not have the Complainant’s permission to use the trademark INKE, S.A. in a domain name. Its pornographic activity tarnishes the Complainants mark.

The domain names were registered and are being used in bad faith. Because the Complainant’s mark is distinctive, it seems clear the Respondent knew of the mark and did not reproduce it in the domain names by coincidence. They were registered in 1999 and 2002 and since then the only purpose of their holder has been selling them. Redirecting those names to a very hard core porn site demonstrates the Respondent’s unscrupulousness. All these circumstances demonstrate bad faith registration and use.

B. Respondent

The domain names are not identical or confusingly similar to the Complainant’s Spanish trading names or trademarks. The Complainant’s marks are not considered as International Marks under the Madrid Agreement Concerning the International Registration of Marks.

Even before the Complainant began to use its trade name under Spanish class 35 and before the Complainant registered the domain name <inke.es>, the Respondent used the domain names for a website called “inke shopping”, which is clearly related to its online business catalog business. On March 29, 1999, the Respondent applied to register INKE as a trademark in the United States.

The Respondent registered the domain name <inke.com> on February 25, 1999, in good faith and with the purpose of creating a United States based shopping portal. On November 28, 2002, the Respondent registered <inke.net> with the same objective. Currently the Respondent has more than 1000 contracts with USA based merchants, managed either by itself or by others. Its periodical shopping catalog is distributed by electronic mail to more then 5,000 customers in the United States. Under its affiliate agreement with Amazon.com the respondent sells the Inkй Auto Inkjet Refill System, produced by Inkй Pte Ltd of Singapore, which owns Singapore, United States and International registrations for the mark INKE.

Bad faith registration and use are denied. The Respondent has not made any solicited or unsolicited offer to the Complainant [to sell] any domain name. The Complainant’s allegations regarding redirection to a pornographic site are false and justify a finding of Reverse Domain Name Hijacking. They are based on information obtained from the “www.archive.org” website, the accuracy of which is not warranted by those who operate that site.

C. Complainant’s Reply

After the Complaint was sent to the Center, the Respondent offered to sell the domain names to the Complainant.

Prior to the sending of the Complaint the disputed domains names were redirected to the website of pornographic content “www.mydangerousdongs.com”, as stated in the Complaint. This was modified after the shipment of the Complaint.

 

6. Discussion and Findings

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the domain names the Complainant must prove that:

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

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

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

A. Identical or Confusingly Similar

This element of the Policy may be satisfied by showing trademark rights at the time of the Complaint, not necessarily at the time of registration of the domain names, although this circumstance is relevant to the other elements: Valve Corp. v. ValveNET, Inc., WIPO Case No. D2005-0038 (March 9, 2005) and the cases there cited.

The domain names wholly incorporate the distinctive feature of the Complainant’s INKE, S.A. registered trademarks, the letters S.A. merely indicating the nature of the legal entity and the .com and .net gTLDs being likewise inconsequential.

The Policy applies to trademarks registered in a single country just as it does to marks having international recognition.

The Complainant has established this element of its case.

B. Rights or Legitimate Interests

The Respondent has shown that, apart from use in the Complainant’s trademarks and as a trademark of a Singapore company, the word INKE is used as a woman’s name. The Complainant produces in Spain active ingredients used by pharmaceutical product manufacturers internationally. The Respondent operates in the United States and is not in the pharmaceutical industry. However well known within that industry the Complainant and its marks may be, it is unlikely that the Complainant and its marks are well known outside that industry. There is nothing before the Panel from which it is possible to infer that the Respondent was likely to have been aware of the Complainant or its marks when registering either of the disputed domain names.

It also appears from the evidence before the Panel that the Respondent has made at least some preparation to use the domain name in connection with a bona fide offering of goods and services, as indicated inter alia by the application by the Respondent in March 1999 to register INKE as a trademark in the United States. The Respondent’s arguments regarding bona fide use of the domain name for a website called “inke shopping” related to its on-line catalogue business, and that the Respondent sells the Inke Auto Inkjet Refill system under an affiliate agreement also appear at first instance to be plausible. However, in light of subsequent findings, it is unnecessary for the Panel to delve further into these issues.

Subsequent findings render it unnecessary for the Panel to resolve the hotly contested issue whether the domain names resolved to a hard porn site prior to the filing of the Complaint. See The Perfect Potion v. Domain Administrator, WIPO Case No. D2004-0743:

“the linking of domain names to pornographic websites can constitute bona fide offerings of services for the purposes of paragraph 4(c)(i) of the Policy and can only support a finding of bad faith for the purposes of paragraph 4(b)(iv) of the Policy if it is shown to the satisfaction of the Panel that the Respondent had the Complainant or its trademark in mind when selecting the domain name for that purpose”.

The Complainant has failed to establish this element of its case.

C. Registered and Used in Bad Faith

The <inke.com> domain name was registered in February 1999. The Complainant says it became aware of that registration in June 2000, when it tried to register the <inke.com> domain name itself, yet the Complainant did not file this Complaint until May, 2006. That unexplained period casts doubt upon the Complainant’s present contention that this domain name was registered in bad faith in 1999.

The <inke.net> domain name was registered in November 2002. In May/June 2004, both domain names were posted as being available for sale.

The Panel considers that the offering of these domain names for sale, in one case four years and in the other eighteen months after registration, does not demonstrate bad faith at the time of their registration:

“The mere offering of a domain name for sale for more than the out-of pocket costs directly related to the domain name does not constitute evidence of bad faith registration and use within Rule 4(b)(i). That sub-paragraph of the Rule requires a showing that the respondent registered or acquired the disputed domain name primarily for the purpose of selling it to the complainant or to a competitor of the complainant for a price exceeding those costs. Here, on the evidence, there was a period of over 3 years after registration before the “For Sale” sign went up, hardly evidence that the name was registered primarily for the purpose of sale” The World Phone Company (Pty) Ltd v. Telaccount Inc. WIPO Case No. D2000-1163). See also Maureen A. Healy v. Andreas Kuhlen, WIPO Case No.D2000-0698.

Still less does the Respondent’s offering to sell the domain names to the Complainant after the filling of the Complaint in 2006 demonstrate bad faith registration in 1999 and 2002.

As to bad faith use, the Panel’s finding that the Respondent has not been shown to have had the Complainant or its marks in mind when registering the domain names is fatal to any finding of bad faith arising out of links (if any) to a pornographic site.

The Complainant has failed to establish this element of its case.

D. Reverse domain name hijacking

Rule 1 defines reverse domain name hijacking as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” See also Rule 15(e). To prevail on such a claim, it has been held that a respondent must show either that the complainant knew of the respondent’s unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith: Sydney Opera House Trust v. Trilynx Pty. Ltd., WIPO Case No. D2000-1224 and Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151 or that the Complaint was brought in knowing disregard of the likelihood that the respondent possessed legitimate interests: Smart Design LLC v. Hughes, WIPO Case No. D2000-0993; or that the complainant knew it had no rights in the trademark or service mark upon which it relied and nevertheless brought the Complaint in bad faith: Dan Zuckerman v. Vincent Peeris, WIPO Case No. DBIZ2002-00245; HER MAJESTY THE QUEEN, in right of her Government in New Zealand, as Trustee for the Citizens, Organisations and State of New Zealand, acting by and through the Honourable Jim Sutton, the Associate Minister of Foreign Affairs and Trade v. Virtual Countries, Inc., WIPO Case No. D2002-0754.

Despite the unexplained period during which the Complainant was aware of the <inke.com> registration without making any complaint, the Panel is not satisfied that it would be appropriate to make a finding of reverse domain name hijacking in this case.