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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Amedia Limited v. Bkarato

Case No. D2008-0567

 

1. The Parties

The Complainant is Amedia Limited, London, United Kingdom of Great Britain and Northern Ireland, represented by SEQ Legal LLP, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Bkarato, Los Angeles, California, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <amedia.com> is registered with MyDomain, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 11, 2008. On April 15, 2008, the Center transmitted by email to MyDomain, Inc. a request for registrar verification in connection with the domain name at issue.

(The Panel notes here that a whois search shows “Namesdirect” as the registrar for the domain name. No such entity is, however, a registrar certified by ICANN. In answer to a request for clarification from the Center, the registrar confirmed that it had changed its name from “Namesdirect” to MyDomain, Inc. in July 2007, but continues to trade, amongst other things, under the business style namesdirect.com. ICANN’s website lists MyDomain Inc. as an accredited registrar for the .com gTLD. A formal clarification of the record to reflect this was made.)

On April 22, 2008, the registrar transmitted by email to the Center its verification response confirming that:

(a) the domain name is registered with it;

(b) the Respondent is listed as the registrant;

(c) the contact details for the Respondent included in the Complaint are correct;

(d) English is the language of the registration agreement; and

(e) the domain name is subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy”).

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”).

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 April 25, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 15, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 16, 2008.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on May 23, 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

In 2001, one Mr. Buchalet commenced a consulting and media business for clients in the biotechnology industry under the name AMEDIA. The Complainant was incorporated in 2003 and the business transferred to it. The Complainant has been providing a range of corporate and commercial services since then. In 2004, a related business was started under the name Amedia Partners SL in Barcelona Spain. At some point a business incorporated in Switzerland in 1975 also became involved in the enterprise, operating under the name Amedia & Cofinax Partners SA. There is also an Amedia Partners Inc. arm of the business in the United States of America.

Annexures 4 to 7 of the Complaint contain a range of marketing materials used by the Complainant or the various arms of its business identified above. These include letter head, business cards, logo artwork and website pages from sites operated by the Complainant. Each of these have in common the use of the name AMEDIA, sometimes alone, but usually with a device, typically this is a six leaved flower or a combination of geometric shapes on which the letter ‘A’ is superimposed and to which the word AmediA (and often the word Partners) is subscribed. Some of the letterhead and website usage also features the strapline ‘Barcelon – Geneva – London –New York’ or ‘Barcelona – Geneva – Hong-Kong – Luxembourg – New York – Paris’.

According to the Complaint, in 2003 the Complainant had turnover of GBP 20,000 and a marketing spend of GBP3,500 rising in 2007 to, respectively, GBP705,000 and GBP102,000.

There is not much information available about the Respondent.

Searches using Domain Tools included in Annex 2 to the Complaint show that on February 7, 2008, the domain name was registered to Amedia Networks of New Jersey in the United States of America, but that it had been transferred to the Respondent by February 10, 2008.

At present (and when the Complaint was filed), the domain name resolves to a generic website which essentially consists of a range of “sponsored” or other advertising links.

 

5. Discussion and Findings

First, there has been no Response. The Center has forwarded the Complaint to the Respondent by email and courier to the addresses which the Registrar has confirmed are the correct details for the domain name as registered. Consequently, the Panel is satisfied that the Center has taken all reasonable steps to bring the Complaint to the Respondent’s attention and the Respondent has had an adequate opportunity to put his, her or its case in rebuttal of the Complaint. The Panel is fortified in this conclusion as an email sent in late February 2008 by the Complainant to the Respondent’s email address as given in the whois information elicited a prompt reply from the Respondent.

In the absence of exceptional circumstances, therefore, paragraphs 5(e) and 14(a) of the Rules direct the Panel to decide the dispute on the basis of the Complaint where the Respondent does not submit a Response. This is not a simple “rubber stamping”, however, as paragraph 15(a) directs the Panel to decide a Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and principles of law that the Panel deems applicable.

Accordingly, under paragraph 4(a) of the Policy the Complainant has the burden of proof in respect of the following three elements:

(i) The domain name is 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 interests in respect of the domain name; and

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

The Panel deals with each of these elements in turn.

A. Identical or Confusingly Similar

There are two parts to this inquiry: does the Complainant have trademark rights and, if so, is the disputed domain name identical or confusingly similar to it?

The Complainant does not claim rights in any registered trademarks. For the purposes of the Policy, however, the necessary trademark rights can be found in so-called common law or unregistered trademarks: see e.g. Jeanette Winterson v. Mark Hogarth WIPO Case No. D2000-0235 and Julian Barnes v. Old Barn Studios Limited WIPO Case No. D2001-0121.

As recounted in section 4 above, the materials submitted with the Complaint demonstrate that the Complainant has used the term AMEDIA in a trademark sense on a significant scale. That usage seems mainly to have been in one of two logo forms; one with a stylized flower device, another with a device comprised of geometric shapes. It is often, but not always, used with the word “Partners” too. The scale of the use claimed is not as large as that claimed by some complainants. It is, however, sufficiently significant to have generated rights capable of protection at common law in, for example, the United Kingdom which is the Complainant’s home base (as it were). Further, the usage demonstrated includes the operation of websites in a number of countries, promoting use of the trademarks in connection with an international or global offering of the Complainant’s services.

The disputed domain name differs from these trademark rights by the addition of the gTLD, .com, and the absence of the device elements and the word “Partners” which appear in most of the trademark usage demonstrated in the Complaint. The addition of the gTLD in the domain name can be disregarded for these purposes. See for example Telstra Corporation Limited v. Ozurls WIPO Case No. D2001-0046, Ticketmaster Corporation v. DiscoverNet Inc. WIPO Case No. D2001-0252, Microsoft Corporation v. J. Holiday Co. WIPO Case No. D2000-1493.

The Complaint claims the rights subsist in the word AMEDIA alone. Given the usage demonstrated in the Complaint, it is not necessary to make a finding on this point since, as used in the logo-type devices, the term AMEDIA is a prominent and significant distinguishing feature. It is also likely to be the verbal formulation by which the trademarks are referred to by members of the public.

Accordingly, the Panel finds that the domain name is confusingly similar to the Complainant’s trademark rights in the AMEDIA and device trademarks.

B. Rights or Legitimate Interests

The second factor that the Complainant is required to establish is that the Respondent has no rights or legitimate interests in respect of the domain names.

Paragraph 4(c) sets out three examples of rights or legitimate interests for the purposes of the Policy. They are:

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

(iii) you are 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.”

This is not an exhaustive enumeration, however, of the ways in which rights or legitimate interests can be shown.

In view of the difficulty in disproving a negative, the Complainant must adduce sufficient material to raise a prima facie case under this factor and then an evidential burden shifts to the Respondent to rebut that prima facie case.

In this case, the burden of the Complaint is that the Complainant has not authorized the Respondent to use the term AMEDIA in its domain name. The term is obviously not the Respondent’s name or derived from it. Further, it has no obvious association with the Respondent or the Respondent’s claimed location as recorded in its address in registering the domain name. Thus, paragraph 4(c)(ii) does not apply.

As noted above, the domain name is actually used for a very basic type of search website which collects together a range of topics under sponsored or other advertising links. Accordingly, paragraph 4(c)(iii) is inapplicable. The Complainant also contends that this type of use is not a bona fide offering of goods and services of the kind referred to in paragraph 4(c)(i) but is rather intended to divert users looking for the Complainant.

The use of a domain name as the address for a website which is a collection of sponsored or advertising links is not in itself prohibited by the Policy. An online classified directory can be just as legitimate a business as printed classified directories. Thus, whether the use is bona fide or not falls for consideration in its context.

One of the characteristics of the Respondent’s website is that it appears to be one of the now common, automatically generated pages, almost a “parking” site. The Panel has seen the image on the home page used on other, similar websites. The website itself conveys the appearance of being a simple template to which a range of links are added by computer generation.

A second characteristic of the website is that it is associated with the domain name in the most rudimentary way: it is simply the URL and a bare label on the home page.

A third characteristic is that the domain name itself is not a common or descriptive term. It is not a term which would naturally be associated with a website of this kind. Accordingly, there is more than some force to the Complainant’s contention that the term has been adopted because its drawing power derives from its association with the Complainant’s business.

In these circumstances, the Panel considers that the Complainant has satisfied its burden of showing a prima facie case that the Respondent does not have rights or legitimate interests in the domain name. Therefore, it falls to the Respondent to displace that prima facie conclusion.

In this case, however, the Respondent has not sought to defend its rights or otherwise justify its position against the charges leveled against it by the Complainant. In particular, the Respondent has not sought to claim any rights or legitimate interests in the domain name. As discussed below in relation to the question of registration and use in bad faith, the circumstances of this case indicate there is good reason for inferring that the Respondent cannot claim that its use of the domain name is bona fide.

Accordingly, the Panel finds that the Complainant has discharged its onus of showing that the Respondent does not have rights or legitimate interests in the domain name.

C. Registered and Used in Bad Faith

The third requirement that the Complainant must demonstrate to succeed is that the disputed domain name has been registered and used in bad faith. In connection with this factor, paragraph 4(b) of the Policy provides:

“(b) Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, 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.”

As noted in paragraph 3.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, the transfer of the domain name to the Respondent around February 9 or 10, 2008 is the date at which the domain name is taken to have been registered by the Respondent and so is the relevant time for consideration of whether or not the Respondent has registered the domain name in bad faith.

A number of factors point to the conclusion that the Respondent has registered and used the domain name in bad faith.

Prior to filing the Complaint, the Complainant emailed the Respondent offering to buy the domain name. In reply, the Respondent sought a “non-negotiable price” of US$12,500. The Respondent’s email further stated:

“fyi

“Price is getting higher.

“It could be double/triple soon.

“Just according to unbalance between supply-and-demand.”

This exchange took place less than two weeks after the Respondent registered the domain name and shows a clear awareness of potential value in the domain name. As already noted, the domain name is not a descriptive term or otherwise in common usage. The awareness of potential value that the email discloses would appear to derive from its potential association with the Complainant.

Further, the email address given by the Respondent in the whois details for the domain name is the same as the email address details given by the respondent in WRc plc v. W&R Corp. WIPO Case No. D2007-1284. Unlike the present case, the respondent in that case claimed to be a corporation located in Singapore. This was found (in the absence of any response from the respondent) to be fictitious and an attempt to hide the respondent’s identity. Interestingly, the respondent in that case made the same “Price is getting higher … double/triple soon ….” warning as accompanied the offer to sell in this case. The price demanded then, however, was “only” US$3,850, not US$12,500.

The Complaint includes a list of five other domain names identical to five registrant corporate names which the Complainant alleges do not exist. Further, the Complainant’s researches disclose that the email address used by the Respondent has also been used as the contact details for some 8100 whois records relating to 7100 different domain names.

The nature of the use to which the Respondent is putting the domain name has already been described.

In these circumstances and having regard to the way in which the Respondent actually uses the domain name, there is obvious force in the Complainant’s contentions that the Respondent has registered the domain name with knowledge of the Complainant’s unregistered trademark with the intentions prohibited by either paragraph 4(b)(i) or (iv) of the Policy.

The Respondent has not made any attempt to rebut the inferences on which those contentions are based or otherwise to defend its position.

Accordingly, the Panel finds that the Respondent has registered and used the domain name in 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, <amedia.com>, be transferred to the Complainant.

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Warwick A. Rothnie
Sole Panelist

Date: June 6, 2008