LeitsätzlichesDie für einen erfolgreichen Antrag vorausgesetzte Bösgläubigkeit muss der Antragsteller dezidiert nachweisen. Eine Bösgläubigkeit des Domain-Inhabers kann aber nicht allein daraus geschlossen werden, dass er selbst keine Rechte an der Bezeichnung hat. Auch eine Umleitung der Domain auf ein anderes Angebot wie etwa Amazon genügt nicht. Der Antrag wurde deshalb abgelehnt.
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fall Nummer: D2002-0815
Entscheidung vom 13. November 2002
1. The Parties
The Complainant is QuakeAID, ... United Kingdom.
The Respondent is Solid Domains ..., USA.
2. The Domain Name and Registrars
The disputed domain name is <quakeaid.com>.
The Registrar of the disputed domain name is Register.com, 575 Eighth Ave., 11th Floor, New York, N.Y., United States of America.
3. Procedural History
On August 30, 2002, the WIPO Arbitration and Mediation Center (the Center) received the Complaint by e-mail. On the same date, the Center transmitted to the Complainant by e-mail an Acknowledgement of Receipt of Complaint. A copy of the Complaint was transmitted to the Respondent by post and e-mail, with copies to the concerned registrars. A hard copy of the Complaint was received by the Center on September 6, 2002.
Also on August 30, 2002, the Center transmitted by e-mail to Register.com, a request for Registrar Verification in respect of this case. The Registrar replied on September 6, 2002, as follows:
(1) as of September 6, the Registrar had not received a copy of the Complaint from the Complainant, as required by paragraph 4(b) of the Supplemental Rules;
(2) the Domain Name was presently registered with Register.com;
(3) its WHOIS data base showed the Respondent at the above address as the current registrant of the Domain Name and also the administrative contact. The technical and zone contacts were shown as NameBargain.com with the address Domain Registrar, 575 Eighth Avenue, 11th Floor, New York N.Y.;
(4) the Policy applied to this Domain Name;
(5) the Domain Name will remain locked during the pending administrative proceedings;
(6) the Registrant has submitted to the Registration Agreement at the location of the principal office of the Registrar;
The Center verified that the Complaint satisfied the formal requirements of the ICANN 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").
On September 10, 2002, the Center sent via e-mail to the Respondent a Notice of Complaint and Commencement of Administrative Proceedings. A copy was sent to the Complainant in a similar manner. The Respondent was advised that a Response to the Complaint was required within 20 calendar days (i.e.,by September 30, 2002). The Respondent was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by e-mail.
Having received no communication from the Respondent by the due date, the Center sent a Notification of Default by e-mail on October 1, 2002, to the Respondent. A copy was sent to the Complainant.
On October 9, 2002, the Center invited the undersigned to serve as a Panel in this case. The panelist advised the Center of his acceptance and forwarded by facsimile on October 11, 2002, an executed Statement of Acceptance and Declaration of Impartiality and Independence. On October 15, 2002, the Center sent to the panelist by courier all relevant documents in the case file.
The Panel has independently determined that the Complaint meets the formal requirements of the Rules and Supplementary Rules. It was satisfied that the Respondent was properly notified that a Complaint had been launched, and that the Respondent was notified of its failure to submit a response within the time period allowed.
In the course of reviewing the Complaint, the Panel issued an Administrative Panel Procedural Order under paragraph 12 of the Rules. The Panel requested that the Complainant submit documentary or other evidence as to the nature of and extent of use of the alleged trademark in the period prior to January 27, 2001, the date the Respondent registered the domain name, and to include copies of any material documentation relative to the case. The Complainant was requested to make its submission to the Center within five days, with a copy to the Respondent. This request was met. The Respondent was invited to provide any evidence that it considered relevant within a further five day period. No response was received from the Respondent within the time provided.
4. Factual Background
The Complainant is a company limited by guarantee, and incorporated on November 8, 1999, in England and Wales, under the Companies Act 1985. Its registered office is located in Horsham, West Sussex, England. The venture was founded in July 1998 by Mr. Greg Lloyd Smith and his wife Katerina Theohari-Smith. The objective of the company was the provision of humanitarian support and relief to earthquake victims throughout the world. In addition, the company has acted as a resource of information on earthquakes, provided funding for research into the cause of earthquakes and the possibility of early warning, as well as education relating to safety issues, including preventative measures in the location and construction of dwellings and commercial buildings.
The Complainant is not organized for the private gain of any person. It solicits paid memberships and donations to raise funds for relief, and conducts surveys on site to determine aid requirements in effected areas. It promotes networking with other organizations of similar interest at an international level.
By way of education, the company distributes to schools and universities educational materials on earthquakes and their effects. In addition the Complainant publishes a quarterly electronic newsletter entitled "QUAKEAID" distributed to its members.
The Compainant established at an early date a general appeal fund for victims of earthquakes throughout the world. Moreover it has established special appeal funds in instances where powerful earthquakes have injured many persons and taken many lives. Such special funds were established in respect of the severe earthquakes in northwestern Turkey (August 16, 1999), the north and west areas of Athens, Greece (September 7, 1999) and the island of Taiwan where buildings were toppled in the capital Taipei (September 21, 1999). Reference to these special funds was noted in the Complainantâ€™s QUAKEAID newsletter of August 2000.
On October 12, 1999, the company obtained registration of a domain name <quakeaid.org>. This domain name continues to be registered and used by the Complainant to the date of commencement of these proceedings.
Subsequently, on July 9, 2000, the Complainant secured registration of two further domain names, <quakeaid.net> and <quakeaid.com.> through Network Solutions, Inc. (now Verisign, Inc.). The Complainant paid the sum of seventy dollars (U.S.), covering registration of the two domain names for one year terms, expiring on July 8, 2001. The Complainant intended to re-direct these two domain names to <quakeaid.org> to insure that any person wishing to reach its website would be able locate it easily, regardless of which domain name was entered into their browser.
Inadvertently, when the year had passed, the Complainant failed to pay the renewal fee on either of the two registrations obtained in the previous year. This omission was not recognized until August 15, 2001. By immediate payment, the registration of <quakeaid.net> was revived. However, the Complainant was informed that the <quakeaid.com> name was no longer in its account. Investigation revealed that the domain name <quakeaid.com> had been registered by the Respondent on January 27, 2001, i.e., at a date when the Complainantâ€™s identical domain name was already registered. Communications by way of complaint to the provider were not answered.
The Complainant arranged an indirect approach to the Respondent through a broker, proposing the purchase of the domain name for twenty-five hundred pounds. It is not clear whether this figure was disclosed to the Respondent.. However by this approach the Compainant learned that the Respondent was not accepting any offers for its domain name.
On April 9, 2002, the Complainant filed an application, no. 2297394, to register its trademark "QuakeAID" in the United Kingdom Register of Trademarks, in class 41 for educational research, and class 42 for humanitarian relief.
On the same date, the Complainant filed an application, no. 78120371, to register the mark "QUAKEAID" in the United States Patent and Trademark Office, in International class 041 and United States classes 100, 101 and 107. The wares were defined in the application as "Education; providing of training and education relating to earthquakes, preventative measures and safety issues". Both first use and first use in commerce were stated in the application to be November 8, 1999. At the date when this Complaint was submitted, neither application had yet proceeded to registration.
From a date unspecified by the Complainant, it is said that. when the Domain Name is entered in a search, the result is not a website that features the Respondentâ€™s name. Instead, there is an automatic and instantaneous forwarding of the inquiring party to the web page of <amazon.com>. Amazon is a well known company. It operates a website that permits persons around the world to purchase merchandise through the Internet. Examination of the Amazon website discloses no reference on its website to the Registrant or the disputed Domain Name. The Complainant provides no further information.
5. Partiesâ€™ Contentions
The Complainant contends that:
- the domain name in issue, <quakeaid.com> is identical to and/or confusingly similar to a trademark or service mark in which the Complainant has rights;
- the Respondent has no rights or legitimate interests in respect of the domain name;
- the domain name was registered and has been used in bad faith.
The Complainant seeks the transfer of the domain name from the Respondent to the complainant in accordance with paragraph 4 (b)(i) of the Policy.
No response was filed by the Respondent to the allegations raised in the Complaint.
6. Discussion and Findings
In view of the Respondentâ€™s failure to meet the requirements of paragraph 5 of the Rules, the Panel is entitled to draw inferences that: (a) the Respondent does not deny the facts which the Complainant asserts, and (b) the Respondent does not deny the conclusions which the Complainant asserts can be drawn from those facts.
It is well established that the reference to rights in paragraph 4(a)(i) of the Policy includes both registered marks and unregistered marks. Registration is not a precondition to a finding rights in a mark. While the Complainant has referred to two pending applications for registration of its mark, these applications raise no presumption of entitlement to rights. However if the Complainant can show that its common law mark has become distinctive through use in any country, it will be accepted that it has rights to satisfy the first requirement in these proceedings.
The panel is satisfied that the applicant has used "quakeaid" as a common law service mark. It is used not only in lower case letters but also in capital letters and in the form "quakeAID".and "Quakeaid" The case is unusual in view of the fact that the corporate name is simply the one word and the repetition would seem to reinforce the distinctiveness of the mark. Of course, when spoken the variations are not apparent.
It does not appear to be clear at what point of time the rights need to have come into existence. Should this be by the date of the Complaint or by the date of the Respondentâ€™s registration? As pointed out in a recent thoughtful decision in a WIPO case, goodwill can be generated very quickly by way of mass advertising and promotion. (See GOVIA Limited v. Keith Painter, WIPO Case No. D2002-0199). The use of the mark in appeals for funds as well as aid for humanitarian relief provided in response to disasters would attract attention to the mark in more than the affected countries that would often be distant. The mark would know no geographic boundries.
In the present case, the use of the trade or service mark is said to have commenced from the date of incorporation. More than a year and a half passed before the Respondent registered the disputed Domain Name and two and a half years before the Complaint was filed. It appears that the Respondent did not make any bona fide use of its registered Domain Name before re-directing the name to <amazon.com>. A search of the on-line Data base established by the United States Trademark Office disclosed only the Complainantâ€™s application and no other listing of "quakeaid" for any wares or services.
Having reviewed the evidence, on the balance of probabilities, the panel finds that prior to the date when the Respondent obtained the disputed Domain Name, the Complainant would have had sufficient goodwill to succeed in a passing off action had the Respondent begun activity similar to that performed by the Complainant. The panel finds that the Complainant has rights in its common law right.
The Respondentâ€™s Domain Name and the Complainantâ€™s trademark are virtually identical, both visually and phonetically. The use of lower case lettering in the Domain Name is not a distinguishing characteristic. The inclusion in the Domain Name of the gTLD "com" is non-distinctive because it is required for registration of the Domain Name. Therefore the Panel finds that the Domain Name is identical or confusingly similar to the Complainantâ€™s mark, pursuant to paragraph 4(a)(i) of the Policy.
The Complainant has the onus of proving the absence of rights or legitimate interests on the part of the Respondent. The Complainant asserts that the Respondent was not affiliated with or licensed by the Complainant, neither when it registered the Domain Name at a time when the Complainant held an earlier and active identical domain name, nor at any prior to this Complaint. This assertion has not been denied by the Respondent.
Under paragraph 4(c) of the Policy , the Respondent may demonstrate that it has rights or legitimate interests in the domain name in issue by showing that one or more of the following circumstances: (i) its use of, or preparations to use, the contested domain name in connection with a bona fide offering of wares or services; (ii) the fact that it has been commonly known by the domain name; and (iii) its legitimate non-commercial or fair use of the domain name. The Respondent has not provided evidence of any such circumstances, nor of any other circumstances which would suggest a right or legitimate interest.
In these circumstances, the panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove that this Domain Name has been registered and is being used in bad faith. Here the Complainant is in a difficult position because the Respondent has filed no evidence whatsoever and the Complainantâ€™s own information is scant when it comes to proving bad faith.
Paragraph 4(b) of the Policy lists examples of four circumstances that would amount to evidence of the registration and use of a domain name in bad faith by the Respondent. The following is an adaption of the wording of these example to suit this case, with comment on each:
"(i) circumstances indicating that the Respondent had registered the Domain Name primarily for the purpose of selling, renting or otherwise transferring it to the Complainant or its competitor for consideration";
In the present case there is no evidence to prove that at the date the Respondent registered the Domain Name, that the Respondent knew of the Complainantâ€™s earlier registration. The Respondent could have no advanced knowledge that the Complainantâ€™s registration would lapse some five months later. Moreover when an inquiry was made to the Respondent, the latter displayed no interest in selling, the report given by the broker being "The owner is not accepting any offers for this domain name." There is no evidence that the broker learned anything else about the Respondent or its past activity.
"(ii) the Respondent registered the Domain Name in order to prevent the Complainant from reflecting its trademark in a corresponding domain name, provided that the Respondent had engaged in a pattern of such conduct";
There is no evidence that the respondent has engaged in a pattern of such conduct.
"(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor";
The Complainant favours this ground as the most likely primary purpose of the Respondent. However, no evidence has been produced showing that activities of the Complainant have been disrupted, members lost or disturbed or complaining, nor diminished donations nor other adversity. The Complainant asserts that no bona fide offering of goods or services has followed registration by the Respondent. But the Complainant has not provided evidence that the Respondent has been offering goods or services of any kind before the Complaint was filed? Would it have not been possible determine the significance of the re-direction of the Domain Name and whether the actions of either party as a result would become a competitor.
"(iv) by the use of the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its Domain Name or other on-line location. The objective would be to create confusion with the Complainantâ€™s mark and so suggest that the Respondent is a source, sponsorship, affiliation or endorsement of its service or product".
There is no evidence that the Respondent had in any way attempted to create confusion as to the source of origin, sponsorship, or ownership of the domain name. Nor has the Complainant provided any evidence that would support an allegation that the Respondentâ€™s action in redirecting the domain name was intended to yield commercial gain or advantage.
In the opinion of the Panel, there is insufficient evidence to establish bad faith, applying any of the four examples of circumstances to indicate bad faith on the part of the Respondent. However these four examples do not exhaust other criteria
Careful consideration has been given to authorities in which bad faith has been inferred after long periods of non-use and the domain name consists of a name which can only sensibly refer to the Complainant, that there is no obvious justification for the Respondentâ€™s selection of the domain name, and the Respondent had defaulted. For example see: (Sony Kabushiki Kaishia v. sony.net, WIPO Case no, D2000-1075) and (Cellular One Group v. Paul Brien, WIPO Case No. D2002–0028). However the Panel believes the present case does not fall into that group of authorities.
Accordingly the Panel finds that the Complainant has failed to provide evidence that would prove that the Respondent has registered and is using the Domain Name in bad faith.
The Panel finds that the Domain Name in dispute is identical or confusingly similar to the trademark or service mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Name, but that Complainant has not proved that Respondent has registered and used the disputed Domain Name in bad faith.
Accordingly, the Panel directs that the disputed Domain Name should not be transferred to the Complainant.