WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

VZ VermögensZentrum AG v. Anything.com

Case No. D2000-0527

 

1. The Parties

The Complainant is VZ VermögensZentrum AG, a corporation organized under Swiss law, with its principal place of business at Beethovenstrasse 24, 8002, Zürich, Switzerland.

The Respondent is Anything.com, PO Box 309, Ugland House, George Town, Grand Cayman, KY, KY. No street address for the Respondent is known.

 

2. The Domain Name and Registrar

The domain name at issue is "vz.com". The domain name is registered with Network Solutions Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170, United States of America ("NSI").

 

3. Procedural History

A complaint was submitted electronically by the Complainant to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") on June 5, 2000. The hard copy had been received by WIPO Center on May 30, 2000. An acknowledgment of receipt was sent by WIPO Center to the Complainant on June 4, 2000.

On June 6, 2000 a request for Registrar verification was transmitted by WIPO Center to NSI to:

Confirm that a copy of the complaint had been sent to it by the Complainant as required by WIPO Supplemental Rules for Uniform Dispute Resolution Policy, paragraph 4(a).

Confirm that the domain name at issue is registered with NSI.

Confirm that the person identified as the Respondent is the current registrant of the domain name.

Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrarís WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact for the domain name.

Confirm that the Uniform Domain Name Dispute Resolution Policy is applicable to the domain name at issue.

Indicate the current status of the domain name.

By email dated June 8, 2000, NSI advised WIPO Center as follows:

NSI had received a copy of the complaint from the Complainant.

NSI is the Registrar of the domain name registration "vz.com".

The Respondent, Anything.com, with the postal address as shown above, is the current registrant of the said domain name. The technical, zone, administrative and billing contact is:

Administration, Domain, roleaccount@YAHOO.COM
1101 North Kings Highway, Suite 403
Cherry Hill, NJ 03034
USA

Phone: +1 212 937 2077

NSIís 4.0 Service Agreement is in effect.

The domain name registration "vz.com" is in "Active" status.

With effect from January 1, 2000, NSI adopted the policy for Uniform Domain Name Dispute Resolution adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN"). As can be deduced from the advice of NSI that the domain name in question is still "active", the Respondent has never requested that the domain name at issue be deleted from the domain name database. The Respondent has not sought to terminate its agreement with NSI. Accordingly, the Respondent is bound by the provisions of NSIís Domain Name Dispute Resolution Policy, i.e., the ICANN policy.

Having notified the Complainant of a deficiency in its Complaint on June 13, 2000 and having been satisfied with the Complainantís rectification of the deficiency, WIPO Center on June 16, 2000 transmitted to the Respondent a notification of Complaint and Commencement of Administrative Proceedings. A copy of the Notification of Complaint was also emailed to NSI and ICANN.

The Respondent was advised that a Response to the Complaint was required within 20 calendar days (i.e., by July 11, 2000). It was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email.

On July 5, 2000 (by email) and July 11, 2000 (hard copy) the Respondent filed a Response with WIPO Center. An acknowledgement of receipt was forwarded by WIPO Center on July 6, 2000.

The Complainant elected to have its Complaint resolved by a single member Panel. In its reply, the Respondent elected, in accordance with the Rules, to have a three-member Panel. Both parties have paid the amounts required of them to WIPO Center.

On August 8, 2000, WIPO Center invited the Honorable Sir Ian Barker QC of Auckland, New Zealand, to chair the Panel in this case. It had already invited Professor David E. Sorkin of the John Marshall Law School, Chicago, USA and Dr. Thomas Legler of Python Schifferli Peter and Partners, Geneva, Switzerland, to be Panelists. It transmitted to all Panelists a statement of acceptance and requested a declaration of impartiality and independence.

The Panelists duly advised their acceptance of appointment and forwarded to WIPO Center their statements of impartiality and independence. On August 10, 2000, the Complainant and the Respondent were notified of the appointment of the Panel. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplementary Rules.

On August 10, 2000, WIPO Center forwarded to the Panelists by courier the relevant submissions and the record. These were duly received by them. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel is required to forward its decision by August 23, 2000.

The Panel has independently determined and agrees with the assessment of WIPO Center that the complaint meets the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999 ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules").

The language of the administrative proceeding is English, being the language of the registration agreement.

On August 12, 2000 the Panel instructed WIPO Center to request a reply from the Complainant to the Respondentís Response. However, on August 12, 2000 the Complainant sought leave, on its own motion, to file a Response. In the circumstances of the Panel having requested a Reply within two working days of notification, the Panel has treated this document as a Reply and has considered it accordingly.

 

4. Factual Background

Established in 1992, the Complainant is a Zürich-based firm offering financial consultancy advice, planning and management. It has offices in Zürich, Bern, Basle and Münich.

Although its registered company name is VZ VermögensZentrum AG, the Complainant is commonly known by the initials "VZ", which it uses extensively as its logo. Company literature, promotions, newsletters, advertising etc. all feature this logo, which has a registered script service mark. According to the extensive selection of publications annexed to the Complaint, the Complainant is usually referred to by the letters "VZ".

Over 100,000 individuals subscribe to the Complainantís newsletter, "vznews". 2,300 have entrusted "vz Asset Management" with assets in excess of 1.2 billion Swiss francs and 20,000 have used the services offered under the "vz" service mark.

The Complainant is unable to register the URLs www.vz.ch or www.vz.de because registration rules adopted by registrars in Switzerland and Germany require a minimum of three letters in the distinctive part of the domain name. Consequently, the Complainantís registered domain names are "vermoegenszentrum.ch" and "vermoegenszentrum.de".

The Complainant holds the Swiss-registered word mark "VZ VermögensZentrum" (No. 454482, issued on September 29,1998), and the trademark and design "VZ" as script (logo) in colors (No. 451681, issued on May 26, 1998). In both cases, registration was granted by the Swiss Federal Institute of Intellectual Property.

The Respondent states in its website www.anything.com that "anything.com companies are on-line, commerce-driven businesses with the names and design that guarantee instant success". In its Response, it claims that its business strategy is to develop generic and/or easy-to-remember domain names into viable websites to sell products and services. It had developed, for example, websites such as "secret.com", "equity.com" and "MD.com". It claims to have developed "vz.com" after committing "valuable resources" to create "Virtual Zone", a website that offers visual reality software and products and features a unique virtual reality game for Internet visitors.

A search by the Complainant of the Registrarís WHOIS database shows that the Respondent had registered at least 50 domain names, none of which had any likeness to the Respondentís company name. The Respondent does not deny this.

In its Reply, the Complainant alleged that the Respondentís website "VirtualZone.com" does not offer any original or unique content. It is said to consist of a home page and other pages which offer links to other websites which are bona fide offerings in connection with virtual reality. The Complainant alleges that the same information could be obtained by typing "virtual reality" into any search engine.

The Respondent did not react to a request from the Complainant to disclose its reasons for holding the domain name in question.

The Respondent changed the disputed domain entry after the request from the Complainant to disclose its legitimate reasons for using the name. The Respondent then set up its "VirtualZone" website and redirected the disputed domain name to that site.

The Complainant does not object to the Respondentís use of "VirtualZone.com", "vz.net" and "vz.org" because these names on their own do not affect the Complainant nor tarnish the Complainantís service mark. The Complainantís website is of a company offering services and products to customers in the countries where it does business.

The Respondent is not a licensee of the Complainant, nor is there any suggestion that it is known by the name "VZ".

 

5. Partiesí Contentions

The Complainant submits that the domain name is identical with the Complainantís mark. The Respondent alleged in effect that there was no similarity with any trademark. However, the Complainant in reply pointed to its registered service mark for the logo "VZ".

The Complainant submits that the Respondent has no rights or legitimate interest in the domain name because there is no connection proved between the Respondent and the domain name and no legitimate reasons for the Respondentís use thereof were offered when sought by the Complainant.

The Respondent claimed that before it was advised of the proceeding, it undertook demonstrable preparations to develop the Virtual Zone website, which is related to virtual reality. It relied upon the decision of the Panel in Zero International Holding GmbH & Co. Kommanditgesellschaft v. Beyonet Services and Stephen Urich, (Case No. D2000-0161, May 12, 2000) as authority for a finding in favor of a Respondent which had registered a domain name that was "short, simple and easy to remember". The Respondent claims that it has done far more than other successful Respondents in other cases, who have achieved only "perfunctory preparations" to develop a website.

The Complainant replies that the Respondent has shown no evidence of any connection with the expression "vz", such as to give the expression a secondary meaning. Nor can it see why consumers are likely to associate "vz" with a website concerning virtual reality.

The Complainant alleges that the Respondent has registered and used the disputed name in bad faith. Although the Respondent did not offer to sell the domain name, it is, on its own admission, a domain name speculator by reason of its claim to sell websites "with names that guarantee instant marketability and success". Add to this the Respondentís refusal to reply to the Complainantís inquiry about any legitimate use of the domain name and the incomplete nature of the website "vz" which the Respondent began to use only after it had received a notice from the Complainant.

The Respondent claims that its domain names are "generic", a fact which ICANN decisions have shown does not evidence bad faith. The letters "vz" could stand for any number of things, or nothing at all: whilst the letters may have some meaning in Switzerland, there is not the same level of recognition in other countries, such as would be held by a trademark such as "Christian Dior". The Respondent claims that it is more probable that it registered the domain name for use on its VirtualZone website, rather than to sell the name to the Complainant or anyone else.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable".

The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:

That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

That the Respondent has no legitimate interests in respect of the domain name.

The domain name has been registered and used in bad faith.

The Panel holds that the disputed domain name is identical with the Complainantís service mark "vz".

A majority of the Panel considers that the Respondent has no legitimate interests in respect of the domain name for the reasons:

  1. The Respondentís website at "virtualzone.com" (which the Panel has inspected) consists only of a home page and several other pages which are a compilation of links to other websites, including some bona fide offerings. There is no apparent connection between these offerings and the Respondent, other than the linkage information. The Respondent has equated the "VZ" website with the VirtualZone website.
  2. The Respondent is not commonly known by the name of "VZ".
  3. The Respondent has no legitimate rights or interests in the mark "VZ", such as a license conferred by the Complainant.
  4. The quoted reasoning of the learned Panelist in WIPO Decision Libro AG v. NA Global Link Limited (D2000-0186) is considered appropriate here:

"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."

One member of the Panel disagrees with the conclusion that the Respondent lacks legitimate interests in the domain name. Panelist Sorkin would reject the broad rule set forth in Libro AG v. NA Global Link Limited, quoted above, and instead would follow the decision in Allocation Network GmbH v. Steve Gregory (WIPO Case No. D2000-0016), which held that under appropriate circumstances the offering for sale of a domain name can itself constitute a bona fide offering of goods or services for purposes of paragraph 4(c)(i) of the ICANN policy.

The Panel considers, on balance, that the Complainant has not proved the registration of the domain name in bad faith. The name was registered as one of a list of generic names, some being combinations of 2 letters or 3 letters. The Complainantís mark is not one known worldwide as, for example, the letters "BP". From the evidence, the mark "VZ" is well known only in Switzerland and to some extent in Germany and has been registered only in Switzerland. There are two inferences to be drawn from the domain name registration. Either:

  1. the Respondent, as a "wholesaler" of catchy names for domain sites, registered "vz", along with other 2 or 3 letter combinations in the hope of being able to sell the combination of letters to someone wanting a catchy logo or easily-remembered mode of recognition by the public; or
  2. the Respondent was or should have been aware of the Complainantís logo and registered the domain name "vz.com" with the aim of negotiating a sale to the Complainant at a later date.

There is no evidence to support the latter inference. Accordingly, the Panel must fall back on the onus of proof which remains throughout on the Complainant.

The Complainant has provided no evidence:

  1. that the Respondent in the Cayman Islands knew or should have known of the Complainantís service mark in Switzerland;
  2. that the Respondent was even aware of the Complainantís existence; and
  3. that the Respondent chose the domain name for the purpose of making a profit from a sale of the domain name to the Complainant.

The setting up of the "vz.com" site after a letter of demand from the Complainant had been received and the lack of reply to the letter inquiring into the Respondentís legitimate use of the domain name are factors leading to an inference of use in bad faith, as distinct from registration in bad faith.

The limits of the ICANN Uniform Dispute Resolution Policy are well known. Accordingly, this Panelís decision should not be read as a substantive one on the merits of any trademark infringement claim that might be taken in a national court.

 

7. Decision

Because, in the opinion of all members of the Panel, the Complainant has not discharged the onus in respect of the third criterion in Paragraph 4(a) of the ICANN Policy, the Panel decides that the domain name "vz.com" should not be transferred to the Complainant.

 


 

Hon. Sir Ian Barker QC
Presiding Panelist

Professor David Sorkin Dr Thomas Legler
Panelists

Dated: August 22, 2000