WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BIC Deutschland GmbH & Co KG v. Paul Tweed
Case No. D2000-0418
1. The Parties
Complainant is BIC Deutschland GmbH & Co KG, located at Rosserstrasse 6, D-65835 Liederbach, Federal Republic of Germany. Complainant is represented by Philippe van Eeckhout, Societé Bic, 14 rue Jeanne dīAsničres, 92611 Clichy Cedex.
Respondent is Mr Paul Tweed, an individual whose address is indicated as PO BOX 391, Praha 1, 11121 Czech Republic. Mr. Tweed is current registrant of the TIPPEX.COM and TIPP-EX.COM domain name registrations and is the Administrative, Technical, Zone and Billing Contact for those two domain names, with an indication of the e-mail address as "paultweed@HOTMAIL.COM" and stating "Please send an email (FAX) please send an e-mail."
2. The Domain Names and Registrar
The domain names at issue are "TIPPEX.COM" and "TIPP-EX.COM" which domain names are registered with Network Solutions, Inc (NSI) Herndon, Virginia, United States of America.
3. Procedural History
A Complaint was received by the World Intellectual Property Organization Arbitration and Mediation Center (the WIPO Center) in electronic form on May 11, 2000, and in hardcopy together with Exhibits on May 15, 2000.
On May 11, 2000, a Verification Request was sent to Network Solutions and on May 14, 2000, a Verification Response was received which 1) confirmed that Network Solutions was in receipt of the Complaint sent by the Complainant, 2) confirmed that Network Solutions is in fact the Registrar of the domain name registrations, 3) confirmed that Paul Tweed is the current registrant of the TIPPEX.COM and
TIPP-EX.COM domain name registrations, 4) provided the full contact details (postal and e-mail addresses) available in the WHOIS database concerning Mr. Tweed and indicated him as the administrative, technical, zone and billing contact, 5) confirmed that Network Solutions 4.0 Service Agreement is in effect, and 6) that the two domain names are in "Active" status.
The WHOIS Query Results attached to the Complaint indicate that the domain names were registered on September 16 and 17, 1998, respectively. The Network Solutionsī Verification Response indicated that Network Solutionsī 4.0 Service Agreement is in effect. This Service Agreement provides, inter alia, that Registrant agrees to be bound by the terms of the Registration agreement and the terms of NSIīs Domain Name Policy, that Registrant agrees that Network Solutions at its sole discretion may change or modify the Dispute Policy at any time, that Registrantīs maintaining the domain name after changes or modifications to the Dispute Policy becomes effective constitutes Registrantīs continued acceptance of these changes or modifications and that Registrant agrees that if the registrations are challenged by a third party, the Registrant will be subject to the provisions specified in the Dispute Policy.
Having verified, on May 15, 2000, that the complaint satisfied the formal requirements of the Policy and the Rules, a Notification of Complaint and Commencement of Administrative Proceeding was transmitted the same day to Respondent by post/courier (with enclosures) under the address: Paul Tweed, PO Box 391, Praha 1, 11121 Czech Republic and also per e-mail (without enclosures) to three e-mail addresses (Mr. Tweedīs, "firstname.lastname@example.org" and "email@example.com"). A copy was also communicated by e-mail to the authorised representative of Complainant as well as to ICANN and Network Solutions. The Center advised Respondent that the last day for sending a Response was June 4, 2000.
As regards the e-mail addresses "firstname.lastname@example.org" and postmaster@tipp-ex com, the Mail Delivery Subsystem indicated that the message could not be delivered for 5 days and was to be deleted from the queue. The postal mail to Mr. Tweed was returned on May 18, 2000, with an indication that the addressee was unknown.
Respondent did not submit any Response. Accordingly, the Center sent to Respondent a Notification of Respondent Default on June 9, 2000.
On June 9, 2000, in view of Complainantīs designation of a single panelist, the Center invited Mr. Henry Olsson to serve as a panelist. Having received on June 14, 2000, Mr. Olssonīs Statement of Acceptance and Declaration of Impartiality and Independence, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Olsson was formally appointed as the Sole Panelist. The Projected Decision Date was June 28, 2000.
The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and WIPO Supplemental Rules.
Respondent has not made any formal Response to the Complaint. The Administrative Panel shall therefore, according to Rule 14 proceed to a decision on the Complaint on the basis of the Complaint, the evidence presented, the Policy, the Rules and the Supplemental Rules.
4. Factual Background
The Complaint is based upon the following registrations of the trademark TIPP-EX, namely:
i) International trademark TIPP-EX No 552,731, registered on April 24,1990, (with validity for 20 years) to cover, in international class 16, paper and products in paper, correction material etc. This trademark registration was as from September 22, 1999, transferred from TIPP-EX GMBH to the Complainant.
ii) Canadian trademark TIPP-EX No TMA 302,390, registered on May 3, 1985, and renewed in 1999 with expiry date of May 3, 2015, to cover stationery products and correction material, etc. On August 27, 1999, the Complainant was entered in the register as the owner of this trademark.
iii) United States trademark No 1,547,318, registered on July 11, 1989, to cover various paper and correction products.
iv) United States trademark No 838,393, registered on November 7, 1967, to cover typewriter transfer paper in sheet form.
In respect of the two United States trademark registrations Complainant has indicated that "change of name has been applied for, but is still in process".
Copies of these registrations appear in Exhibit 1 to the Complaint.
It appears from the Network Solutionsī Verification Response of May 14, 2000, that Respondent is the current registrant of the domain names TIPPEX.COM and TIPP-EX.COM. The Response also shows that Respondent is the Administrative, Technical Zone and Billing Contact for those domain names.
5. Parties Contentions
Complainant contends a) that the domain names TIPP-EX and TIPPEX are identical or confusingly similar to the trademarks TIPP-EX in which Complainant has rights and that the domain name is a servile copy of the trademarks owned by Complainant, b) that it is clear that the Respondent is in bad faith since he also registered at least 22 other domain names, some of which incorporate famous third party trademarks (indicated in Exhibit 2 to the Complaint), c) that there is no relation between Respondent and Complainant and that Respondent is not a licensee of Complainant, nor has he otherwise obtained an authorisation to use Complainantīs trademark, d) that the domain names do not resolve to a web site or other on-line presence; since the Respondent has no rights or legitimate interests in respect of the domain name, those have been registered in bad faith, and e) that the domain names were registered in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, and that the domain name registrant has engaged in a pattern of such conduct.
On the basis of these contentions, Complainant requests, in accordance with Paragraph 4(b)(i) of the Policy, that the Administrative Panel issue a decision that the domain names be transferred to Complainant.
Respondent has not submitted any Response and is in default.
6. Discussions and Findings
Paragraph 15 of the Rules prescribes that the 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 the case of Default by a Party, Rule 14 prescribes that if a Party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, these Rules, the Panel shall draw such inferences therefrom at it considers appropriate. In this case Respondent has not submitted any Response and consequently has not contested any of the contentions by the Complainant. The Panel will therefore have to operate on the basis of the factual statements contained in the Complaint and the documents available to support the contentions.
Applied to this case, Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
1) that the domain names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights, and
2) that Respondent has no rights or legitimate interests in the domain names, and
3) that the domain names have been registered and are being used in bad faith.
In the following section the Panel discusses each of these elements:
a) Identity or Confusing Similarity
The Domain Names are TIPPEX.COM and TIPP-EX.COM. The Network Solutionsī Verification Response shows that Respondent is the current registrant of those Domain Names, which are in Active status.
TIPP-EX (also in the form "Tipp-Ex") is a registered trademark of Complainant, who has submitted Certificates of Registration relating to International, Canadian and United States registrations of that trademark.
The Domain Name TIPP-EX.COM is nearly identical to the trademark registered and used by Complainant TIPP-EX (and Tipp-Ex). The only difference is the suffix "COM" which is meant to indicate, at least in principle, that the domain names are intended to be commercial. In the view of this Panel this is an irrelevant distinction which does not change the likelihood of confusion.
The Domain Name TIPPEX.COM is also nearly identical to the trademark registered and used by Complainant, the only difference being the suffix "COM" and the fact that the first element of the Domain Name is not hyphenated. The Panel considers also in this case that the Domain Name is nearly identical to the trademark registered and used by Complainant and that the distinction does not change the likelihood of confusion.
On the basis of these findings and due to the fact that the allegations of Complainant are undisputed, the Panel finds that in fact the domain names registered by the Respondent are confusingly similar to the trademark in which Complainant has rights.
b) Rights or Legitimate Interests
Complainant has not licensed or otherwise authorised the Respondent to use Complainantīs trademark and there is no relationship between Respondent and Complainant.
By not submitting a response Respondent has failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the domain names.
Therefore, on the basis of the arguments and the evidence brought by Complainant, the Panel finds that Complainant has sufficiently established that Respondent has no right or legitimate interest in the domain names.
c) Registration and Use in Bad Faith
Exhibit 2 to the Complaint contains a list of domain names allegedly registered by Respondent and some of which obviously incorporate third party trademarks. Complainant contends that this shows that Respondent is in bad faith; in this connection Complainant also indicates that the Domain Names in this case do not resolve to a web site or other on-line presence. The Respondent has failed to address these contentions.
Complainant furthermore contends that the domain names were registered in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name. According to paragraph 4(b)(ii) of the Policy this shall be taken as an evidence of registration and use in bad faith provided that it can be said that Respondent has engaged in a pattern of such conduct.
The number and the character of the other domain name registrations held by Respondent and the fact that the Domain Names in this case do not refer to any web site or other on-line presence is in the view of this Panel uncontested evidence that the domain names in question have in fact been registered and used in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name.
The Panel thus concludes that the domain names TIPPEX.COM and TIPP-EX.COM have been registered and are being used in bad faith.
In the light of the foregoing, the Administrative Panel considers that the Domain Names TIPPEX.COM and TIPP-EX.COM registered by Respondent are confusingly similar to Complainantīs trademarks TIPP-EX (also in the form "Tipp-Ex"), that Respondent has no right or legitimate interest in respect of the Domain Names and that Respondentīs Domain Names have been registered and are being used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy and in accordance with the request by Complainant, the Panel requires that the Domain Names TIPPEX.COM and TIPP-EX.COM be transferred to Complainant.
Dated: June 20, 2000