WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

LIBRO AG v. NA Global Link Limited

Case No. D 2000-0186

 

1. The Parties

Complainant is LIBRO AG, a corporation organized under the laws of Austria, having its principal place of business in Industriestrasse 7, 2352 Guntramsdorf, Austria (Complainant).

The Respondent is NA Global Link Limited, a company incorporated in Hong Kong with limited liabilities and having a business place at 1722 Junction Avenue, Suite C, San Jose, California 95112-1011, U.S.A. (Respondent).

 

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

The domain name at issue is "libro.com". The registrar is Network Solutions, Inc. ("NSI"), 505 Huntmar Park Dr., Herndon, Virginia 20170 U.S.A.

 

3. Procedural History

On March 15, 2000, Complainant submitted a Complaint to the World Intellectual Property Organization Arbitration and Mediation Center ("Center") pursuant to the Uniform Domain Name Dispute Resolution Policy ("UDRP") implemented by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999, and under the rules for the UDRP implemented by ICANN on the same date ("UDRP Rules").

The Complaint and Exhibits were received by the Center in hardcopy on March 20, 2000. The Center acknowledged receipt of the Complaint by e-mail and post, both sent on March 23, 2000.

On March 23, 2000, a Request for Registrar Verification was transmitted to NSI. In an e-mail to the Center dated March 24, 2000, NSI confirmed that it is the Registrar for the domain name "libro.com" and that it had not received the Complaint.

On March 31, 2000, the Center sent a Complaint Deficiency Notification to the Complainantís authorized representative by facsimile and e-mail. In the notification the Center requested the Complainantís representative to send proof that payment had been made and to submit the Complaint in electronic form and four copies as required by UDRP Rules, Paragraph 3 (b) and Supplemental Rules, Paragraph 3 (c).

On April 2, 2000, the Complainant transmitted the Complaint in the required form and submitted the fee.

Having verified that the Complaint satisfied the formal requirements of the UDRP and the UDRP Rules, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to Complainantís authorized representative by facsimile and e-mail; to Respondent by post, facsimile and e-mail; and to ICANN and NSI. The Center advised the Respondent that the Response was due by April 26, 2000.

On April 8, 2000, the Center received an undeliverable message via e-mail that the Respondentís e-mail address had permanent fatal errors. In an e-mail to the Center dated April 10, 2000, the Respondent acknowledged receipt of the Complaint and requested translation of documents that were not in English.

In an e-mail dated April 13, the Center responded that according to the UDRP Rules, Paragraph 11, the Panel had the right to order that any documents submitted in languages other than the language of the administrative proceeding, be accompanied by a translation in whole or in part in the language of the administrative proceeding but that such a request did not affect the obligation under the rules to file a Response by the deadline.

On April 19, 2000, Respondent sent to the Center a Response to the Complaint, which was received by the Center on April 27, 2000.

On April 28, in view of the Complainantís designation of a single panelist, the Center invited Torsten Bettinger of Bettinger & Abel, Munich to serve as a Panelist in this Administrative Proceeding.

On May 2, 2000, the Center issued to the Panelist a Request for Declaration of Impartiality and Independence. Having received the Panelistís Declaration of Impartiality and Independence, on May 2, 2000, the Center issued a Notification of Appointment of Administrative Panel and set a decision date, with the Panelistís deadline for issuing a decision as of May 16, 2000.

The Center transmitted the case file to the Panelist on May 2, 2000. The case file was received by the Panelist on May 3, 2000.

 

4. Factual Background

Complainant has provided evidence of its ownership of the following marks:

1. "LIBRO", registration No. 139 780, registered with the Austrian Patent and Trademark Office for a term of 10 years from February 28, 1992, for "paints, varnishes, lacquers for painters and artists in class 2; and apparatus for recording, transmission or reproduction of sound and images, magnetic data carriers, recording discs" in class 9; and "horological and chronometric instruments" in class 14; and "paper, adhesives paint brushes, typewriters and office requisites (except furniture), instructional and teaching material (except apparatus), plastic materials for packaging, playing cards, printerís type" in class 16; and "traveling bags, umbrellas, parasols and walking sticks" in class 18; and "mirrors, picture frames, goods of wood, cork, reed, cane or plastics" in class 20; and "games and playthings, gymnastics and sporting articles" in class 28; and for "printed matter, books and calendars" in class 16 on the basis of a proof of secondary meaning.

2. "LIBRO", international registration No. 640 498, registered for a term of 10 years from July 27, 1997, in the Benelux countries, Croatia, France, Germany, Hungary, Italy, Liechtenstein, Poland, the Czech Republic, Slovakia, Slovenia and Switzerland for "apparatus for recording, transmission or reproduction of sound and images, magnetic data carriers, recording discs" in class 9; and "horological and chronometric instruments" in class 14; and "paper, adhesives paint brushes, typewriters and office requisites (except furniture), instructional and teaching material (except apparatus), plastic materials for packaging, playing cards, printerís type" in class 16; and "games and playthings, gymnastics and sporting articles" in class 28.

The Complainant has filed an application for registration of the LIBRO mark with the United States Patent and Trademark Office on December 18, 1999.

The Respondent had registered the domain name on March 29, 1999. Respondent apparently uses the domain name "libro.com" to redirect users to its website at "restaurants.com", that is Internet users who try to access the "www.libro.com" address are automatically redirected to the "restaurants.com" website.

     

 

5. Partiesí Contentions

A. Complainant

Complainant alleges that "LIBRO" is "famous in its market" and "has acquired strong secondary meaning because of Complainantís heavy advertising and exclusive use of the mark in association with books, music, paper supplies and other products" in Austria.

The Complainant alleges that it is "the market leader in Austria for books, music, stationery, new media and video" and that the Respondentís registration has diminished the Complainantís capacity to distinguish and to identify Complainantís products on the Internet.

The Complainant asserts that:

(1) the domain name "libro.com" is confusingly similar to the trademark "LIBRO" in accordance with Article 4a(i) of the UDRP;

(2) the Respondent has no rights or legitimate interest in respect of the domain name "libro.com" as provided in Article 4a(ii) in connection with Article 4c of the UDRP;

(3) the domain name "libro.com" was registered and used in bad faith as provided in article 4(a) (iii) in connection with article 4 (b) of the UDRP because the Respondent listed the domain name with the Internet domain name auction service "greatdomains.com" and offered the domain name for sale for US $ 25,000. It contends that the Respondent has "obviously registered the domain name with the intention of selling or otherwise transferring the domain name to Complainant for a valuable consideration in excess of Respondentís out-of-pocket costs directly related to the domain name."

B. Respondent

Respondent contends that the allegation by the Complainant is "a kind of reverse domain name hijacking".

It disputes Complainantís argument that it registered and used the domain name in bad faith and alleges that Complainantís trademark "LIBRO" is the common word for "book" in the Spanish and Italian languages and is used extensively by third parties.

Respondent contends that it registered the domain name "libro.com" at the same date as the domain name "juego.com" which is the common word for "game" in the Spanish language. It claims that it chose to register the domain name because it was descriptive for services in relation to books and that the registration was made with the intent of establishing a virtual book store.

It contends that no one has the exclusive right over the use of this word in the Internet.

 

 

6. Discussion and Findings

This Panelistís jurisdiction is limited. Pursuant to Paragraph 4(a) of the UDRP, a domain can be transferred only where the complainant has proven that each of the following three elements is present:

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

(2) the domain name holder has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

This Panelist finds that while Complainant satisfies the first and the second requirement, the record does not support a finding of the third requirement.

6.2 Confusing Similarity

It is beyond dispute that the Complainant has satisfied the first requirement. The domain name registered by Respondent is identical to the registered trademarks owned by Complainant. The addition of ".com" is not significant in determining similarity.

 

6.2 Respondentís rights or legitimate interest in the domain name

Paragraph 4 (a) (ii) of the UDRP asks whether the Respondent has any rights or legitimate interests in respect of the domain name. Under Paragraph 4 (c) of the UDRP, Respondent may demonstrate that it has a right or legitimate interest to a domain name for the purpose of Paragraph 4 (a) (ii) by providing evidence of any of the following circumstances:

(1) demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to the dispute;

(2) an indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights;

(3) legitimate noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark

The Complainant argues that the Respondent has no trademark rights in the word "LIBRO" in any country and contends that the Respondent fails the test of Paragraph 4 (c) UDPR because it has never used the domain name "libro.com" in bona fide commerce.

The Respondent asserts that it registered the domain name because it is the Spanish and Italian word for "book" and with the intention of using the domain name for establishing a virtual book store.

The question to be answered by the Panelist is whether the mere registration of a generic name without making preparations to use the domain name for the bona fide offering of goods or services is sufficient to demonstrate the rights or legitimate interests required by Paragraph 4 (a).

Respondent has not provided any evidence of facts that indicate that it has made preparations to use the domain name for the alleged purpose. It is clear from the record that the domain name is currently used to redirect visitors to a website at <restaurant.com>. There is no evidence such as business plans, correspondence, reports or other forms of evidence before the Panelist that show that Respondent is engaged in any activities to use the domain name <libro.com> for the bona fide offering of goods or services.

The Panel finds that the mere speculative idea for a bona fide business application of a generic domain name does not fall within any of the circumstances listed under Paragraph 4 (a) UDRP as evidence of rights or legitimate interests.

While in principle the registrations of descriptive names are perfectly legal in most countries and may constitute considerable value, the mere speculation in generic domain names without showing any demonstrable evidence of plans for the bona fide use is not sufficient to prove legitimate interest in a domain name. Speculation itself is not recognized under the UDRP as a legitimate interest and the UDRP should not be interpreted to hold that mere speculation in domain names is a legitimate interest.

Under these circumstances and on this record, it is concluded that Respondent has no rights or legitimate interests in the domain name "libro.com" and that the requirement of the UDRP Paragraph 4 (a) (ii) is satisfied.

 

6.3. Bad Faith

While Complainant satisfies the first and the second requirement, it cannot be established from the information at hand, that Complainant exhibited the requisite "bad faith" of Paragraph 4 (a) (iii) UDRP.

The UDRP is very narrow in scope; it covers only clear cut cases of "cybersquatting" and "cyberpiracy", and does not cover every dispute that might rise over domain names (see, for example, Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy (October 24, 1999), available at <http:www.icann.org/udrp/udrp-second-staff-report-24oct99.htm> which states: "Except in cases involving Ďabusive registrationsí made with bad faith intent to profit commercially from othersí trademarks (e.g. cybersquatting and cyberpiracy) the adopted policy leaves the resolution of disputes to the courts and calls for registrars not to disturb a registration until those courts decide. The adopted policy establishes a streamlined, inexpensive administrative dispute-resolution procedure intended only for the relatively narrow class of cases of "abusive registrations".)

Respondentís explanation that it selected the domain name because it is the Spanish and Italian word for "book" appears prima facie acceptable. It is a fact that registrations of generic words have acquired considerable commercial value and represent an important asset in electronic commerce especially in a trade sector where product marketing through the Internet has become vitally important as it is for the book industry.

The Complainant has not provided any evidence of facts which might indicate that Respondent knew or should have known of Complainantís trademarks and registered the domain name with the intent of capitalizing on Complainantís trademark interests or even that Respondent was aware of Complainantís existence when it registered the domain name.

It is noted that on this record the Complainant has no trademark rights in the U.S.A and has not started commercial activities on the U.S. market.

The record also shows that the Respondent has registered and acquired the domain name "juego.com" which is also a descriptive term in the Spanish language.

Under these circumstances it is not likely that the Respondent has chosen the domain name with the intent to profit or otherwise abuse Complainantís trademarks, but, in contrast, it appears reasonable to believe that the Respondentís allegation that it has registered the domain name for making profit from descriptive character of this domain name is correct.

Complainant has offered no evidence to contradict this claim. In the absence of additional evidence specifically on issue of bad faith and the reasonably plausible explanation given by the Respondent as to why the domain name was chosen, it cannot be imputed that Respondentís intent was to sell and transfer the domain name to the Complainant.

Therefore, since it has not been demonstrated that the domain name "libro.com" was chosen by Respondent at the time of registration with the intent to profit or otherwise abuse Complainantís trademark rights, I conclude that Complainant has not met its burden of proof under Paragraphs 4 (a) (iii) of the UDRP.

 

7. Decision

For all of the foregoing reasons, the Panelist decides that the domain name "libro.com" should not be transferred to the Complainant.

The Panelistís decision should not be read as a substantive decision on the merits of any trademark infringement claim Complainant ultimately may choose to bring in court under applicable national law, where likelihood of confusion and dilution can be taken into account, irrespective of the intentions of the Respondent in registering the domain name. That issue, however, which would raise difficult questions as to the extent of territorial trademark rights protection in the Internet, is outside the scope of this decision.


Torsten Bettinger
Sole Panelist

Dated: May 16, 2000