WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Zero International Holding GmbH & Co. Kommanditgesellschaft v. Beyonet Services and Stephen Urich

Case No. D2000-0161

 

1. The Parties

The Complainant is Zero International Holding GmbH & Co. Kommanditgesellschaft of Bremen in Germany. Two Respondents are identified in the Complaint, namely Beyonet Services of Pennsylvania in the United States and Stephen Urich also of Pennsylvania in the United States. It has become apparent that it is common ground that the First Respondent, Beyonet Services, is not a separate legal entity but is merely a trading name for the Second Respondent, Mr. Urich. We therefore refer below simply to "the Respondent" or "Mr. Urich".

 

2. The Domain Name(s) and Registrar(s)

The domain name in issue is "zero.com"; the Registrar is Network Solutions, Inc.

 

3. Procedural History

3.1 The Complaint was dated March 13, 2000, and received by the WIPO Arbitration and Mediation Center (the "Center") on March 15, 2000. A formal amendment to the Complaint was filed on March 17, 2000, clarifying the wording that appears in paragraph 15 of the Complaint as to mutual jurisdiction. Nothing turns on this amendment so far as this panel is concerned.

3.2 A Response to the Complaint was filed on the 10, April 2000. The Respondent, in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") requested a three person administrative Panel. Pursuant to this request a three person Panel was constituted on April 28, 2000, comprising Gervaise Davis III, Geert Glas and, presiding Panelist, Nick Gardner. Statements of acceptance and declaration of impartiality and independence have been filed by all Panelists.

3.3 The date scheduled for the Panel to render its decision is May 12, 2000.

3.4 The Complainant is represented by Dr. Detmar Schäfer of attorneys at law Boehmert & Boehmert of Bremen. The Respondent is represented by John R. Rittelmeyer of attorneys at law Hartzel & Whiteman of Raleigh, North Carolina, United States.

3.5 On April 20, 2000, the Complainant, by its attorneys, lodged what was described as an Answer to the Response dated April 7, 2000. The Respondent by his attorneyís e-mail of April 23, 2000, objected to the filing of this Answer as being a deviation from the rules. In doing so, the Respondent correctly pointed out that the Rules do not provide for a further pleading of this nature and that it is for the Panel in its sole discretion to request any additional information. The Respondent further asked that if the Panel should allow the Answer to be considered it be afforded the opportunity to file an additional pleading to deal with what he says are demonstrably false statements in the Answer.

3.6 The Panel has reviewed the "Answer" provided by the Complainant in order to determine its admissibility or otherwise. Had the Answer raised significant new matters which were likely to be of material relevance to the Complaint the Panel would, in its discretion, have admitted the Answer but allowed the Respondent a corresponding supplemental pleading. As it is, the Panel concludes that no material new matters are raised by the Answer. The Panel therefore concludes that the Answer filed on April 20, 2000, should not be considered.

 

4. Factual Background

4.1 The Complainant is described as the holding company of what it describes as the "Zero Group, a multinational clothing company which sells fashion and accessories throughout Europe in its own label stores". The Complainant states that it intends to expand its business world wide. The Complainant owns a number of national domain names in Europe, including zero.de, zero.at, zero.dk, zero.be and a number of other Ďzeroí domain names corresponding to other European jurisdictions.

4.2 The Complainant relies upon a number of registered trade marks. The earliest of these is a German registered trade mark 1009879 which was applied for on August 1, 1980. This mark is considered separately in Section 6 below.

4.3 The other trade marks relied upon by the Complainant are a number of marks registered in various European countries for the word "Zero". These were obtained pursuant to various applications. For present purposes the relevant factor, in relation to all of these other marks, is that the earliest application date in question was November 27, 1992 which is a date which postdates the Respondentís obtaining of the domain name in dispute (see below).

4.4 The Respondent applied for and obtained registration of the zero.com domain name on June 10, 1992, such registration being effected in the name of Beyonet Services.

 

5. Partiesí Contentions

A. Complainant

The Complainantís contentions may be summarised as follows:

5.1 The zero word mark as used by the Complainant is highly reputed and has been extensively used by the Complainant for online and normal business.

5.2 The domain name "zero.com" is identical with the Complainantís zero marks.

5.3 The Respondent has no right or legitimate interest in respect to the domain name zero.com. In relation to this allegation, the Complainant alleges that:

a) the Respondent has never established a world wide web page under the domain name zero.com;

b) no commercial activity has been made through zero.com. In this regard the Complainant says that if, and insofar as the zero.com has been used as, or as part of an e-mail address, e-mail usage of a domain name cannot be regarded as legitimate.

5.4 The English word zero is not generic and the Respondent was merely quick enough to gain the name on a first come, first served basis when he registered it in 1992.

5.5 The Respondent registered and uses the name in bad faith. Specifically it was the Respondentís intention from the date of registration to make money out of the domain name in dispute. In this regard the Complainant relies upon certain correspondence there has been between the Complainant and the Respondent which we refer to below, and the Respondentís refusal of an offer of DM5,000 for the transfer of the domain name. The Complainant also, as we understand it, relies upon the fact that registration of a domain name within the ".com" top level domain was only intended for commercial entities. The Complainant argues that this means bodies which have a separate legal personality and hence does not include registration by individuals. The Respondent relies upon Mr. Urichís registration in the name of "Beyonet Services" as being indicative of bad faith in this regard given that ĎBeyonet Servicesí is not a separate legal entity.

B. Respondent

The Respondentís contentions may be summarised as follows:

5.6 That this is a clear case of reverse domain name hijacking where the Complainant is harassing the Respondent in a calculated effort to unfairly deprive him of a name that he has owned and used for nearly 8 years.

5.7 The Respondent has been a long time Internet enthusiast and professional network engineer whose registration of the name was bona fide following on from his activities in these fields.

5.8 The Respondent chose the name because it was a common word, short, simple and easy to remember.

5.9 In the 7 years that the Respondent has owned the name it has been used for primarily e-mail and file transfer functions associated with his profession as a computer network engineer.

5.10 The domain name zero.com is the only name that the Respondent has ever registered.

5.11 The Respondent had never heard of the Complainant at the time he effected the registration.

5.12 The Respondent has never made any demand of money from the Complainant and the only discussions that have occurred concerning the sale of the domain name have been bona fide following instigations by the Complainant of the possibility of purchasing the domain name.

5.13 The 1980 German trade mark relied upon by the Complainant has not been previously raised or relied upon by the Complainant and suffers from a number of irregularities. Specifically, it is said it reflects an assignment of the registration to the Complainant on May 17, 1999 (one week after the Complainant filed German proceedings in the Bremen Court) and that the duration of protection of the original registration was never extended beyond an initial 10 year period.

5.14 The Respondent has a longstanding demonstrable and legitimate interest in zero.com and has used it bona fide during the period in which it has been registered. The Respondentís registration was itself in good faith and his subsequent use has been in good faith.

5.15 The Respondent claims that the Complainant has proceeded in bad faith. In this regard the Respondent also relies upon an attempted invocation by the Complainant of the earlier NSI procedure, its institution of what is said to be a frivolous trade mark infringement law suit before the German Court in Bremen and the commencement of this Complaint procedure.

 

6. Discussion and Findings

6.1 The Panel has reviewed the Complaint and the Response, the documents annexed to the Complaint and the material filed with the Response including Affidavits from the Respondent and from Mr Rittelmeyer, the Respondentís attorney. In the light of this material and matters that are either expressly conceded or are, on the evidence, not challenged, this Panel finds as set out below.

6.2 The domain name zero.com is identical to the registered marks dated December 1992 and thereafter. This is conceded.

6.3 So far as German trade mark 1009879 is relied on by the Complainant, that trade mark is a device mark for the stylised form of the word zero as shown on the registration, rather than the word zero itself. As such, this Panel is not satisfied that this trade mark gives relevant rights in the word zero. This Panel is not able to offer any view on the further matters raised by the Respondent in relation to this mark, namely as to whether or not the mark is still subsisting and whether the Complainant is or was at the relevant time the proprietor of the mark. The consideration of such matters would involve determination of matters of German law.

6.4 The exact nature and extent of the Complainantís activities are not clear to us, as relatively little detail has been provided. On the basis of what we have seen we will accept, in the Complainants favour, that it has been carrying out trading activities both in its shops and via its web-sites under and by reference to the name zero.

6.5 The Respondent has bona fide carried on his profession as a network engineer.

6.6 The word zero is a common word which is short, simple and easy to remember and may well have been registered by any number of people for any purposes.

6.7 Since the date of registration the domain has been used by the Respondent primarily as part of an e-mail address. Such use has been on a significant (although not extensive) scale in connection with the Respondentís professional and personal interests.

6.8 There is no evidence the Respondent has registered any other domain names.

6.9 The Respondent had not heard of the Complainant at the time he effected the registration.

6.10 The Respondent has never operated a website under or by reference to the domain name.

6.11 The only discussions that have taken place between the Complainant and the Respondent about the possibility of payment from the Complainant to the Respondent in return for transfer of the domain name have followed on from an initial "cease and desist" letter dated September 28, 1998 written by the Complainantís attorneys which concluded with the sentence "In case you are owner of valid rights, please provide us with documents evidencing your valid and enforceable legal position. Our client then would like to enter into negotiations about conditions of the assignment."

 

7. Decision

7.1 In the light of the above findings, the Panelís decision is as set out below.

7.2 We conclude in the Complainantís favour that it has some reputation in the word zero at least in those European Countries where it has shops (Germany, Austria, Denmark, Belgium and the Netherlands).

7.3 So far as paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy (the "Policy") is concerned, it is conceded that the domain name registered by the Respondent is identical to the Complainantís trade marks. It is not clear to this Panel whether or not the Complainant had any relevant trade mark rights (other than the device mark discussed at section 6.3 above) at the date the Respondent effected the registration. If this were the only point in issue, it would have been necessary for this Panel to seek further information. As it is, the further reasons set out below enable the Panel to reach its decision.

7.4 So far as paragraph 4(a)(ii) and (iii) of the Policy are concerned, the Panel concludes that the Respondent did have a legitimate interest in respect of the domain name and his registration was not effected in bad faith. The word "zero" is a common English word. Although any number of organisations (including the Complainant) may have trade mark rights in such a word (and indeed the Respondent has produced evidence of numerous US trade marks which include or comprise the word "zero") that does not preclude the Respondent effecting registration of a common word on the "first come, first served" basis which was available. The Respondentís reasons for doing so, namely that it was short, simple and easy to remember provide an entirely reasonable and proper explanation for the Respondentís choice of this word. The Panel further notes that the Respondent has not, on the evidence, registered any other domain names, and had never heard of the Complainant at the time he effected the registration.

7.5 Against this background, the two further matters relied upon by the Complainant as constituting bad faith need to be considered. The first of these is the allegation that a ".com" domain name should only have been registered by commercial organisations. In this regard, the Complainant relies upon a early "RFC" by J. Postel about the operation of the ".com" domain series which stated that "the domain is intended for commercial entities, that is companies". The Panel does not think it right to attribute significance to a single sentence in a document of this nature. Whatever the intention may have been at the time the ".com" domain was established, this Panel does not believe that the ".com" series of domain names is any longer reserved for commercial organisations or is exclusively to be used by commercial bodies that have separate legal personalities. It is, we believe, a matter of general knowledge (which we can properly take account of) that there are no specific restrictions upon registration within the ".com" domain name series and registration of such names is widely effected by both individuals and partnerships, as well as bodies which have separate legal personalities. In any event, and so far as relevant, we find that the Respondentís registration was effected with a view to him using that registration as part of the commercial activities he, as an individual, was undertaking. The fact that he undertook those activities by reference to a trading name (Beyonet Services) does not render the registration objectionable and it is, in our opinion, very far from the type of "bad faith" contemplated by the Policy.

7.6 The second matter relied upon by the Complainant in this regard is the fact that the Respondent has never established a web site by reference to the domain name. This is conceded. The evidence establishes that the Respondent has used the domain name in relation to e-mail and file transfer operations associated with both his personal activities and his profession as a network engineer. Although the World Wide Web is one of the most successful and widespread manifestations of the use of the Internet and the domain name system, it is by no means the only possible use. As the Respondentís activities indicate, the Internet can be used for many other purposes, e-mail and file transfer operations being two examples. We do not accept that the Complainantís contention that registration of a domain name which is only to be used for such purposes is in some way improper and constitutes bad faith.

7.7 We also conclude that the Respondentís continuing use of the domain name has been carried out in good faith. It has been used in association with his ongoing legitimate business activities. In this regard, the Complainant has relied upon the negotiations that have taken place between the Complainant and the Respondent. All of those negotiations have been consequent upon the original cease and desist letter referred to at section 6.11 above. As indicated, that letter invited the Respondent if he had rights in the name to take part in negotiations. The fact that the Respondent and Complainant then had discussions does not constitute bad faith. There are many cases where the parties to a dispute will, as a matter of prudence and common sense, seek to establish whether or not the dispute can be resolved by payment irrespective of the rights of the parties. It cannot be the case that the mere discussion of a possible settlement itself constitutes bad faith. No doubt there will be circumstances where the nature of the proposal made in such discussions is evidence of bad faith. However, the panel concludes that the present case is very far from that type of situation.

7.8 The Complainant attached particular significance to one letter which was written on behalf of the Respondent during the course of these negotiations in which the Respondent made clear that if he were to subsequently to sell the domain name to a third party, he would ensure that the third party was aware of the Complainantís allegations. The Complainant has, it would appear, taken this as evidence of an improper threat by the Respondent to sell the domain name elsewhere. We do not believe that interpretation is justified. The letter in question seems to us to be no more than a proper indication that if, for whatever reasons, the domain name was subsequently transferred, the person to whom it was transferred would be made aware of the Complainantís allegation that it had prior rights in the name "zero". There is nothing objectionable in that.

7.9 Accordingly, this Panel unanimously concludes that the measure sought in the Complaint cannot be granted within the framework of the Uniform Domain Name Dispute Resolution Policy.

7.10 The further matter we are asked to consider, by the Respondent, is whether the Complainantís activities themselves constitute reverse domain name hijacking which is defined under the ICANN Rules as "using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name".

7.11 We have considered this issue at some length. There are a number of matters relied upon by the Respondent in this regard including, in particular:

a) the alleged improper reliance by the Complainant upon the earlier German trade mark number 1009879;

b) the Complainantís institution of proceedings in the German Court in Bremen;

c) an earlier allegedly improper attempt by the Complainant to invoke the NSI dispute procedure;

d) the nature of the correspondence that has taken place between the parties;

e) the alleged improper refusal by the Complainant to keep certain matters confidential; and

f) the superior size and resources of the Complainant and its long term campaign against the Respondent.

7.12 We decline to find that the Complainantís activities constitute reverse domain name hijacking. In order for us to make a determination in this regard, we reached the conclusion that we would need to obtain further evidence in relation to a number of the above matters including for example evidence as to German law and procedure. It may well also be that we would have needed to stay our determination until the German Court in Bremen had made a ruling. None of these factors seem to us to be desirable in the context of providing a prompt resolution to this Complaint. Accordingly, we do not conclude that the Complainantís behaviour constitutes reverse domain name hijacking within the meaning of the ICANN Rules.

7.13 No further action is required to implement the Panelís decision.

 


 

Nick Gardner
Presiding Panelist

Gervaise Davis and Geert Glas
Panelists

Dated: May 12, 2000