WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Mars, Incorporated v. Vanilla, Ltd.

Case No. D2000-0586

 

1. The Parties

Complainant is Mars, Incorporated, a Delaware corporation located in McClean, Virginia, USA.

Respondent, Vanilla, Ltd., appears to be a business located in Roy, Utah, USA.

 

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

The disputed domain name is "aquarian.com".

The registrar is Network Solutions, Inc., Herndon, Virginia, USA

 

3. Procedural History

This action was brought in accordance with the ICANN Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Policy") and the ICANN Rules for Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Rules").

The complaint was filed on May 1, 2000. The Respondent has been notified of the complaint, but has filed no response. Mark V.B. Partridge was appointed as single panelist.

It appears from the communications records in the case file that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, I shall issue a Decision based on the Complaint, the Policy, the Uniform Rules, the WIPO Supplemental Rules, and without the benefit of any response from Respondent.

 

4. Factual Background

For over forty years, Mars, Incorporated (and its predecessors-in-interest), through Kal Kan Foods, Inc., its wholly-owned subsidiary, and other of its subsidiaries and divisions throughout the world (collectively, "Mars"), has been and continues to be engaged in the manufacture, distribution, advertising, promotion and sale of pet food and related products throughout the world. One of Marsí many pet food brands, AQUARIAN, has been manufactured and sold by Mars for over twenty-five (25) years. Mars owns numerous worldwide trademark registrations for the trademark AQUARIAN.

The disputed domain name was registered on or about February 9, 1999, by Vanilla Ltd., P.O. Box 434, Roy, Utah 84067. Despite Respondentís Utah post office box address, the telephone number listed for the administrative contact for Respondent was a New York, New York cellular (mobile) phone number (917-294-6623), a New York, New York facsimile number (212-253-4216), and a mailing address in United Arab Emirates. It appears that Vanilla Ltd. also was the registrant of 3,481 other domain names, including sport-wire.com, ugandadaily.com, thailanddaily.com, balkansnews.com, chilereports.com, nikkeidaily.com, hamburgpost.com, milwaukeetoday.com, asianfilm.com, arubaradio.com and osakavideo.com, all of which are identical or confusingly similar to trademarks owned by third parties.

On September 10, 1999, trademark counsel for Mars sent a letter to Respondent, asserting Marsí rights in its registered trademark. On February 16, 2000, Marsí counsel, attempted to contact Respondent by electronic mail requesting that Respondent contact her to discuss Marsí interest in purchasing the domain name aquarian.com. That same day, Ms. Doyle telephoned Respondent and left a voicemail message for Charlotte Gomez, Respondentís administrative contact listed on NSIís Whois database. To date, there has been no response to these inquiries. Subsequent attempts to contact Respondent were also unsuccessful.

 

5. Partiesí Contentions

Complainant contends that Respondent has registered and used the domain name "aquarian.com" in bad faith.

Respondent has failed provide any response or evidence to rebut Complainantís contentions.

 

6. Discussion

To obtain relief under the ICANN Uniform Domain Name Dispute Resolution Policy, Paragraph 4(a) of the Policy requires the complainant to prove each of the following:

(a) 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; and

(b) that the respondent has no rights or legitimate interest in the domain name; and

(c) the domain name has been registered and used in bad faith.

A. Similarity Between Domain Name and Trademark

The domain name is identical to Complainantís trademark.

B. Respondentís Legitimate Interest In Domain Name

Under the Policy, legitimate interests in a domain name may be demonstrated by a showing that: (i) before any notice of this dispute, respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; (ii) respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or (iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue. Policy 4(c).

Here, it appears Respondent is not now using, nor has it ever used, the domain name "aquarian.com" in connection with a bona fide offering of goods or services. Second, there is no evidence that Respondent is commonly known by the domain name "aquarian.com". Third, there is no evidence of any noncommercial or fair use by Respondent of the domain name "aquarian.com". Moreover, the fact that Respondent registered at least 3,400 other domain names suggests the conclusion that Respondent is a cybersquatter that registered the aquarian.com domain name for illegitimate purposes. See, e.g,, Panavision Intíl, L.P. v. Toeppen, 945 F. Supp. 1296, 1303, affíd, 141 F.3d 1316, 1325 (9th Cir. 1998) (granting summary judgment against domain name registrant in "business" of registering trademarks as domain names and selling domain names to trademark owners).

C. Bad Faith Registration and Use

The Policy enumerates several non-exclusive circumstances that constitute evidence of bad faith registration and use of a domain name, including, among others: (i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling the domain name registration to the complainant who is the owner of the trademark or to a competitor of that complainant for valuable consideration in excess of the out-of-pocket costs directly related to the domain name; or (ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided respondent has engaged in a pattern of such conduct. Policy 4(b).

It appears that Complainant has met its burden of proof under Paragraph 4(b)(ii) of the Policy, considering the effect of Respondentís conduct in registering numerous domain names that prevent others from using their trademark as a domain name.

One of the issues presented here is whether there has been bad faith "use" of the domain name. How can bad faith use be established when there appears to be no active use of the domain name? Some Panels have resolved this obstacle by concluding that passive holding can be bad faith use when the other circumstances warrant. Here, the circumstances warrant a finding of bad faith use. It appears that Respondent has warehoused thousands of names that correspond to the trademarks of others. By holding the disputed domain name without providing any justification, it has "used" the domain name to prevent Complainant from having a ".com" domain name that corresponds to its mark.

It is troubling when a registrant fails to respond to inquires from a potential complainant or fails to participate in the dispute resolution process. Although a registrant has no obligation to respond to or acknowledge unsolicited inquires from others about its domain name, a lack of response raises the possibility that the contact information is incorrect or that the registration was obtained for a bad faith purpose. Therefore, one expects that a good faith registrant would provide some reply to reasonable inquires. In general, we should not read too much into such failure, since the lack of response may be explained by lack of receipt or loss of the inquiry. Here, however, complainant made repeated attempts through various means to contact the registrant. The lack of response under these circumstances certainly raises suspicions.

When registering a domain name, a registrant agrees to abide by the registrarís dispute resolution policy. Paragraph 4 of the Policy states that the registrant is "required to submit to a mandatory administrative proceeding" for certain types of disputes. The burden of responding is low. Counsel is not required. The Policy clearly states the types of evidence that can be presented to show a legitimate interest in the domain name to defeat the claim. Submissions can be sent electronically. Thus, anyone capable of completing the submission process required to register a domain name should be capable of submitting a response.

The dispute resolution service providers give repeated and ample notice of the dispute, and the Rules appropriately inform a registrant that the Panel may draw such inferences as it deems appropriate from the registrantís failure to respond. In short, there is substantial motivation for a good faith registrant to file a response and no readily apparent excuse not to respond. Indeed, the Policy implies that a good faith registrant has a duty to respond, since it is "required" to submit to the policy. Under these circumstances, the failure to participate in the proceeding is suggestive of bad faith and a lack of legitimate interest in the mark.

Here, there is no evidence of a legitimate interest in the domain name. Similarly, there is no evidence to suggest that Respondent selected the domain name for a good faith purpose. The evidence presented leads to a contrary conclusion. I also find that Respondentís repeated lack of response suggests a bad faith purpose. Although I can conceive of good faith uses of "aquarian" that would not involve an abusive registration, I believe it would be improper to give a defaulting registrant the benefit of the doubt and assume good faith when the evidence suggests the opposite. I disagree with the view that a lack of response calls for greater scrutiny of the evidence or increases the level of proof to be required from the Complainant. A registrant should not be rewarded for its failure to submit to these proceedings. Likewise, a complainant should not be disadvantaged when the registrant defaults.

 

7. Decision

Based on the foregoing, I find in favor of Complainant and conclude that the domain name "aquarian.com" should be transferred to Complainant, Mars, Incorporated.

 


 

Mark V. B. Partridge
Presiding Panelist

Dated: September 1, 2000