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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Elvstrom Sails A/S v. Moniker Privacy Services

Case No. D2008-0393

1. The Parties

The Complainant is Elvstrom Sails A/S, of Aabenraa, Denmark, represented by Lett Law Firm, Denmark.

The Respondent is Moniker Privacy Services, Pompano Beach, Florida, United States of America.

2. The Domain Name and Registrar

The disputed domain name <elvstromsails.com> is registered with Moniker Online Services, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 12, 2008. On March 13, 2008, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On March 28, 2008, Moniker Online Services, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. Accordingly the Center sent an email communication to the Complainant on March 31, 2008, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Further the Center requested the Complainant to state whether there are any ongoing legal proceedings as required under paragraph 3(b)(xi) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”). On April 14, 2008, the Center acknowledged receipt of the hard copies to the Complaint and reminded the Complainant that the outstanding deficiencies regarding the Rules paragraph 3(b)(xi) had not been cured and as such the Complaint could not be notified. April 17, 2008, the Center sent another reminder to the Complainant advising that the Center would proceed to notify the Complaint as submitted if the Complainant abstained from submitting an amendment to the Complaint by April 21, 2008. In an email communication of April 21, 2008, having not received the requested amended Complaint, the Center advised the Complainant as follows:

“We refer to our email communication of April 17, 2008, to which we have received no reply from you by the requested date of April 21, 2008.

Accordingly, we will proceed as foreshadowed on the basis of the following two assumptions:

1. That you are declining the Center’s invitation to amend your Complaint so as to formally include as a named Respondent the underlying registrant (“City-Pass FCDCI”) as disclosed by the registrar to the Center in reply to our registrar verification request. Rather, we assume (also from your statement of April 14, 2008 “as far as I’m concerned the Complaint should therefore now be complete”) that you are choosing to name in the Complaint only the listed registrant of record as indicated in the Whois at the time the Complaint was filed with the Center (ie “Moniker Privacy Services”); and

2. That the Complainant is not involved in any on-going legal proceedings with the Respondent pertaining to the disputed domain name, or which are otherwise of relevance to the present UDRP dispute. If that is not the case, or if the situation changes, you are requested to advise the Center as soon as possible.

The Center for its part, with a view to undertaking reasonable steps to ensure effective notice of the Complaint to the Respondent(s), will notify both Moniker Privacy Services and City-Pass FCDCI. The Center further wishes to indicate that it accepts no responsibility (in the event of Decision being obtained in the Complainant’s favor) for any enforcement difficulties that may arise as a result of the Complainant’s apparent decision not to formally include the disclosed underlying registrant as a named Respondent in the Complaint. Any determination as to the appropriate Respondent(s) in this case will be a matter for the independent Panel to consider (on appointment) in rendering its Decision.

We shortly expect to proceed with the formal notification of your Complaint”.

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Complaint to both the Moniker Privacy Services and the underlying registrant, City-Pass FCDCI, and the proceedings commenced on April 21, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 11, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 13, 2008.

The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on May 19, 2008. 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

According to the Complainant, it is a Danish company that has made sails under the brandname ELVSTROM for about thirty years.

The nominated Respondent is a privacy service that protects the identity of domain name registrants from general public enquiry across the Internet.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant says it is the holder of all trademark rights related to the name ELVSTROM and ELVSTROM SAILS globally, and has been so for the last three decades.

The Complainant says it is the holder of several other domain names that include the ELVSTROM trademark.

The Complainant makes no detailed contention in its filed Complaint as to any Respondent rights or legitimate interests in respect of the disputed domain name.

The Complainant says that the disputed domain name was registered and is being used in bad faith. The Complainant is a world leader in the development and production of sails and has ongoing business in the entire western hemisphere. The Respondent shows a maritime environment on the website of the disputed domain name, creating a false impression of being a site related to the Complainant. The use of Danish language on the site furthers this impression. The domain name is available for sale and the Respondent thereby intentionally attempts to attract a buyer for commercial gain.

The remedy requested by the Complainant is transfer to it of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy (the “Policy”) states that the Respondent is required:

“to submit to a mandatory administrative proceeding in the event that a third party (a ’complainant’) asserts to the applicable Provider, in compliance with the Rules of Procedure, that:

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith.”

A. Identification of Respondent

Moniker Privacy Services is a privacy service that, it is understood, records the name and contact details provided to it by the true registrant of a domain name, but arranges for different details to be displayed to enquirers. A Respondent may have legitimate reasons to conceal its identity, or it may be trying to avoid administrative proceedings against it. In this case, the registrar, Moniker Online Services, LLC has disclosed to the Center the purported contact details of the true registrant as being City-Pass FCDCI, with an address in France.

Paragraph 1 of the Rules defines “Respondent” as the holder of a domain name registration against which a complaint is initiated. The Center notified the Complaint to the Respondent named by the Complainant, Moniker Privacy Services, and also prudently sent it to City-Pass FCDCI at the address provided.

The Complainant, however, chose to nominate and proceed against solely Moniker Privacy Services, notwithstanding the registrar having disclosed a different registrant of record. Despite the advice and urging of the Center, the Complainant did not name City-Pass FCDCI as Respondent. The Center verified the Complainant’s stance in this matter by writing to it, saying: “... we assume (also from your statement of April 14, 2008 “as far as I’m concerned the Complaint should therefore now be complete”) that you are choosing to name in the Complaint only the listed registrant of record as indicated in the Whois at the time the Complaint was filed with the Center (i.e., “Moniker Privacy Services”)”; to which the Complainant did not reply.

Sending the Complaint to the address of City-Pass FCDCI, while prudent, does not, of itself, have the effect of making City-Pass FCDCI formally a Respondent. The Respondent is the entity against which the Complaint is initiated. The Complainant insists that its Complaint is complete, has declined an invitation to add City-Pass FCDCI as a Respondent, and has named solely Moniker Privacy Services. Changing this to (or to include) City-Pass FCDCI in the face of the Complainant’s determination otherwise would be more than should be done through the Center’s or the Panel’s pencil particularly in view of substantive obligations on the Complainant to make its case against the relevant Respondent under paragraph 4(a) of the Policy. Moniker Privacy Services must in the circumstances stand as the Respondent.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to prove that the disputed domain name is confusingly similar to a trademark in which it has rights. First the Complainant must show that it has rights in a trademark. The Complainant merely says that it has global rights in the trademarks ELVSTROM and ELVSTROM SAILS but produces no evidence in the form of either registration documents for the trademark or proof of sufficient common law usage. Irrespective of the obvious identity between the domain name <elvstromsails.com> and the stated trademarks ELVSTROM and ELVSTROM SAILS, the Complainant cannot succeed under paragraph 4(a)(i) of the Policy, and therefore at all, since it has not on the present record proved it has any rights in either trademark.

C. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no right or legitimate interest in the disputed domain name. Since this requires the proving of a negative, the Complainant may be expected to make out a prima facie case to that effect. It is then for the Respondent to refute the prima facie case by showing that it does have rights in terms of paragraph 4(c) of the Policy.

The Complaint as filed incorporates the proforma statement that the Respondent has no rights or legitimate interests in respect of the domain name. Beyond that, the Complainant has made no attempt to set out a prima facie case stating why any Respondent has no such rights or legitimate interests. Irrespective of the identity of the correct Respondent in this case, there is nothing of substance in the filed Complaint for said entity to refute in the terms of paragraph 4(c) of the Policy. The Complainant cannot succeed under this heading.

D. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to prove that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

According to the Complainant’s evidence, the disputed domain name was registered and used to establish a token website partly in the Danish language, being the language of the Complainant’s own website. The relevant Moniker Whois page indicates that the domain name may be for sale. If the domain name is for sale at a profitable price, higher that the initial registration costs, and the Respondent was found to lack any rights or legitimate interests in the domain name, such conduct may be within the concept of paragraph 4(b)(i) of the Policy and may constitute bad faith registration and use. “You” and “your” in Paragraph 4(b)(i) - (iv) of the Policy refer, however, to the Respondent, and there is no evidence on the present record implicating Moniker Privacy Services in bad faith registration and use.

Conclusions

The process established under the Policy is intended to be transparently fair to all Parties to a dispute. Among other considerations, the Panel is expected to observe all of the Rules, of which the following are immediately pertinent:

“10. General Powers of the Panel

(b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.”

and:

“15. Panel Decisions

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

In respect of paragraph 10(b) of the Rules, it could be said in this case that the true registrant has not been given a fair opportunity to present its case because it has not been formally named as a Respondent by the Complainant. The Center afforded the Complainant the opportunity to amend the Complaint so as to name the registrar-disclosed registrant, and when this was declined, confirmed to the Complainant on April 17, 2008, that it “will notify the Complaint as submitted”. There is nothing to indicate that it was ever in the mind of the Complainant to join City-Pass FCDCI as a Respondent.

In respect of paragraph 15(a) of the Rules, the Panel has decided the Complaint on the basis of the statements and documents submitted. Paragraph 12 of the Rules empowers the Panel, in its sole discretion, to request further statements or documents from either Party. The Panel interprets paragraph 12 of the Rules as to be used sparingly, for instance, to redress a significant power imbalance between Parties, or to seek clarification of conflicting evidence. Paragraph 12 is not seen to mean that a Party, particularly one legally represented, should be advised by the Panel on how to present its case, and Panels commonly do not do so (e.g., The Knot, Inc. v. Ali Aziz, WIPO Case No. D2008-0033). As Panelist The Honorable Sir Ian Barker QC said as long ago as 2000 in the decision in Grove Broadcasting Co. v. Telesystems Communications Ltd., WIPO Case No. D2000-0703 (a refiled Complaint), “A Complainant should “get it right” the first time and should have provided all the information necessary to prove its case from the material contained in the Complaint and its annexes alone”. The present Panel is strengthened in its interpretation of the Policy and the Rules in this respect by the scale of the deficiencies in the Complaint and by the clear email message to the Center from the Complainant’s representative to the effect that its case was complete.

The Center offers every assistance to a Complainant before, during and after the filing process. A model Complaint is available at the WIPO Center website. The online filing facility leads the Complainant through the process with detailed information as to the substance and supporting documentation expected at every step. The Policy, Rules and WIPO Supplemental Rules are readily available. There are pointers to the comprehensive Legal Index of WIPO UDRP Panel Decisions and to every published decision. Questions by email are invited. The Center cannot be expected to do more.

In summary the Complainant has failed in this case to proceed against the relevant registrant; has failed to prove that is has rights in a trademark; has failed to establish a lack of rights or legitimate interests in the domain name on the part of any Party; and has not proved bad faith against the nominated Respondent.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Dr. Clive N.A. Trotman
Sole Panelist

Dated: June 2, 2008