WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Young Genius Software AB .v. MWD, James Vargas
Case No. D2000-0591
1. The Parties
The Complainant is Young Genius Software AB, a corporation organised under the laws of Sweden having the principal place of business at Norra Kustbanegatan 13, 416 64 Gothenburg, Sweden.
The Respondent is MWD, James Vargas of 3209 South IH-35 #1040, Austin, Texas 78741, United States of America.
2. The Domain Name and Registrar
The domain name at issue is:
and the Registrar is Network Solutions, Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center [the Center] received the Complaint on June 13, 2000 [electronic version] and on June 19, 2000 [hard copy]. The Center verified that the Complaint satisfies the requirements of the ICANN Uniform Domain Name Dispute Resolution Policy [the Policy], the Rules for Uniform Domain Name Dispute Resolution Policy [the Rules], and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy [the Supplemental Rules]. The Complainant made the required payment to the Center.
The formal date of the commencement of this administrative proceeding is June 22, 2000.
On June 15, 2000 the Center transmitted via email to Network Solutions, Inc a request for registrar verification in connection with this case and on June 20, 2000 Network Solutions, Inc transmitted by email to the Center Network Solutions, Inc's verification response confirming that the registrant is MWD and that the contact for both administrative and billing purposes is Mr James Vargas of MWD.
Having verified that Complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted on June 22, 2000 to hostmaster@VAS.NET; firstname.lastname@example.org; and email@example.com this Notification of Complaint and Commencement of the Administrative Proceeding. The Center advised that the Response was due by July 11, 2000. On the same day the Center transmitted by fax and by mail copies of the foregoing documents to: MWD, James Vargas
3209 South IH-35 # 1040
United States of America
1950 Stemmons Frwy, Ste. 3049
United States of America
No Response was received from the Respondent by the due date of July 11, 2000. On July 13, 2000 Notice of Respondent Default was sent to the Complainant and to the Respondent using the same contact details and methods as were used for the Notification of Complaint and Commencement of the Administrative Proceeding. On July 26, 2000 James Vargas sent a Response to the Complaint.
Having received on July 24, 2000 Mr David Perkins' Declaration of Impartiality and Independence and his Statement of Acceptance, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr David Perkins was formally appointed as the Sole Panellist. The Projected Decision Date was August 8, 2000. The Sole Panellist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.
Having reviewed the communication records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under para. 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent". Therefore, the Administrative Panel shall, subject to what follows, issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules.
The Belated Response of July 26, 2000
The Rules [paragraph 5] provide the form in which the Response shall be submitted, that the Response shall be submitted within twenty (20) days of the date of the commencement of the administrative proceeding - in this case, July 11, 2000 - that the Center may, at the request of the Respondent, in exceptional cases extend the period for the filing of the Response and that
"(e) if a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint."
No request was received by the Center from the Respondent to extend the time for filing the Response in this case. The Rules [paragraph 10(a)] provide that
"The Panel shall conduct the administrative proceedings in such manner as it considers appropriate in accordance with the Policy and these Rules."
Finally, the Rules [paragraph 10(b)] also provide that
"In all cases, the Panel shall ensure that the parties are treated with equality and that each Party is given a fair opportunity to present its case."
Ruling on Admissibility of the Belated Response
Does the Panel have authority to admit the belated Response in the circumstances of this case? The Panel takes the view that it has an overriding duty to do justice between the parties. On the very day that the Center transmitted the Case File to the Panel [July 26, 2000] the email from James Vargas was sent to the Center. Whilst applying the Rules simpliciter, the Panel considers it is entitled to reject the email of July 26, 2000 as too late to be admissible, the lateness [15 days] and form of the Respondent's Response has not prejudiced the Complainant nor has it delayed the Decision in this Administrative Process. Thus, although the Panel is aware of decisions of other Administrative Panels where out of time Responses have been rejected, in this case the Panel has had regard to the email of July 26, 2000 in issuing its Decision. The Notification of Respondent Default informs the Respondent that the Panel "will decide in its sole discretion whether to consider your Response (if submitted later) in deciding the case." The Panel regards this procedural decision as very much restricted to the circumstances of this particular case. The Panel's view of the relevance, materiality and weight of the evidence contained in the email of July 26, 2000 is addressed in Section 6 of this Decision (below). For the purposes of this Decision the email of July 26, 2000 is referred to as "the Response".
4. Factual background
A. The Complainant
The Complainant, Young Genius Software AB is a part of the Independent Media Group AB, which is listed on the Stockholm Stock Exchange O-List. The Group is stated to be principally concerned with the manufacture, distribution and sale of video, music and multimedia products.
The Complainant states that it is in the business of developing, publishing and selling educational software multimedia products for young children and that those CD products are known for their pedagogical and educational content. By using them children can practice their language, geographical and mathematical skills, be assisted in doing their homework and learn more about history and different cultures. The Complaint states that these products are very popular in a number of countries including France, Germany, Italy, South Africa, Spain, Sweden and the United Kingdom and that they have had a great impact on the educational market.
B. The Respondent
The Respondent states that it is "in the pornography business", that it runs a multimillion dollar enterprise, that it gets over 1,000,000 visitors a day to its website and that the site is "a celebration of sex ... it is 100% legal in the United States".
The Complainant's Trade Mark
The Complainant has provided evidence [Annex C] that it is the registered owner of Swedish Trade Mark No. 322,320 YOUNG GENIUS in Classes 28 [games and toys] and 41 [instruction and training] which was filed on January 31, 1995 and registered on March 21, 1997.
The Complainant states that it carries on business and marks all its products with the YOUNG GENIUS trademark, which mark is known both nationally in Sweden and also internationally.
The Complainant has provided evidence [Annex D] that it is the registrant of the domain names younggenius.org and younggenius.nu [both registered on January 24, 2000] and younggenius.se [registered on September 30, 1996]. The Complainant's website uses the domain younggenius.se and its YOUNG GENIUS name and mark are used on that website in connection with the promotion and marketing of its products and services.
5. Parties' Contentions
A. The Complainant
As stated [paragraph 4.6 above] the Complainant's domain name younggenius.se was registered on September 30, 1996. The Complainant states that it also applied to register in October 1998 the domain name in issue, namely younggenius.com, but for some reason that registration never matured and that on December 24, 1998 the Respondent registered the domain in issue.
The Complainant states that in October 1999 its Christmas Calendar CD game "Julens Hjältar" was distributed to more than 4,700 retailers in Sweden. That CD game was developed by the Complainant in collaboration with Swedish Television (SVT) and corresponds to a Christmas Calendar broadcast on SVT. The CD was also marketed by the Complainant through its younggenius.se website.
The Complainant's first knowledge of the Respondent's registration of the domain name in issue was the result of children and their parents complaining that when they mistakenly used the suffix .com instead of .se they found themselves at the Respondent's website where they were completely shocked to find illustrations of sexual intercourse, violence and child pornography.
The Complainant [by its Chief Executive] thereupon addressed an email to the Respondent at its Administrative Contact address jvargas@DARKBEUTY.com on December 8, 1999 in the following terms [Annex E]:
Young Genius Software AB is a company in Sweden working as a publihser [sic] of educational software for young children.
We did in October 1998 register the domain at Network Solutions, however we did not use the name, so we did not notice that our domain was solad [sic] once again.
As you can understand that the connection to our name is negative, we would like to find out a way to solve this problem.
In other words, as the Complaint explains, because the Complainant only used the .se domain name the Company was unaware until the pre-Christmas 1999 complaints from children and parents that another party - namely, the Respondent - had acquired the .com domain name which the Complainant believed it had itself registered in October 1998.
On December 9, 1999 a Swedish newspaper article [Annex G] published an item headed "Christmas Calendar can lead children to hardpornsite". Mr Macznik of the Complainant is reported as being very concerned over the situation. An English translation of part of the item in the newspaper, Aftonbladet Nya Medier, is contained in an email from James Vargas of December 10, 1999 reads:
"A year ago the company based in Gothenburg also bought the ".com" address. They had discovered the pornsite and wanted to avoid that customers ended up at the wrong page. The reason that the American page is still online is probably that the address has been sold twice in the USA."
Mr Vargas comments in relation to the above:
"The reason we are online is because you forgot to pay for the domain name. It is that simple."
At Annex H, the Complaint exhibits a number of emails from Mr Vargas to both the Swedish newspaper and the Complainant dated December 10 and 11, 1999. An email of December 11, 1999 addressed to the newspaper - and copied to the Complainant - sets out the text of the Complainant's email of December 8, 1999 [which is set out in paragraph 5.4 above] and then states:
"I e-mailed him later that day stating that we had already spent months developing the domain and could not simply shut down the domain because he didn't like what was on it. I told him that if he had simply paid for the domain this could not have happened. I offered to sell the domain name to him for $250,000 and I guess he didn't like the price so he decided to make slanderous remarks regarding my company."
At Annex H, there is an email also of December 11, 1999 from Mr Vargas to the Complainant, which reads:
"I altered my index page and added a disclaimer that we are in no way related with your company. I do not want children going to porn sites either. This is all I am willing to do for you because honestly I don't like you. If I ever hear another word from anyone at your company I am taking you to court for a defamation lawsuit. Thanks, James Vargas."
At Annex I, the Complaint exhibits a print from the Respondent's website as at June 7, 2000 which illustrates that the domain name in issue no longer contains any such disclaimer. The website contains a number of photographs variously captioned:
KARA'S ADULT PLAYGROUND - Best Hardcore Variety
ASIAN PLEASURES - Asian/Oriental Content/Japanime
EBONY FANTASY - Black Content/Urban Oriental
TEEN STEAM - Barely 18/Teenager/Small Tits Content
FETISH HOTEL - BDSM/Fetish Contents
B. The Respondent
The Respondent denies that the website to which the domain name in issue leads depicts "intercourse, violence and child pornography". It is an adult website and all the pictures at the site "are guaranteed legal from image-broker.com".
The Respondent asserts
"com is a North American commercial top level domain distinction."
None of the countries referred to in the Complaint [as being countries where the Complainant sells its YOUNG GENIUS marked products] include North America.
"We are a North American commercial company and have every right to develop this domain in any manner we see fit. Young Genius is unknown and insignificant in North America."
The Respondent asserts that the term "young genius" is a common English phrase and is not associated with a small Swedish software company by North Americans.
The Respondent states that it registered the domain name in issue
"... to honour an exceptionally talented 19 year old programmer that was working with our company aka "the young genius". No one here had ever head of Young Genius Software."
Finally, the Respondent seems to say that the domain name in issue is not what attracts over 1,000,000 hits per day to its website.
"We receive over 1,000,000 hits per day to the domain and it is NOT because of the name of the domain. Whatever traffic we could have raised directly because of the domain name would be thoroughly and utterly insignificant. Type-in traffic comprises about 1/1,000,000th of our total daily traffic."
The Respondent maintains that the Complainant's trade mark YOUNG GENIUS is not well known in that part of the international market which comprises North America and is not connected with the Complainant.
The Respondent denies that the Complainant's YOUNG GENIUS products have any reputation in North America.
The Respondent asserts that YOUNG GENIUS is incapable of being a trade mark in, presumably, North America because it is a common phrase in the English language.
The Respondent denies that the Complainant's website uses the name or mark YOUNG GENIUS.
The Respondent asserts that the respective businesses of the parties are so disparate that, despite their common use of YOUNG GENIUS in domain names, no confusion will occur amongst members of the public
Summary of the Parties' Contentions
The Complainant contends that the Respondent's domain name in issue is identical or confusingly similar to the Complainant's YOUNG GENIUS mark, that the Respondent has no rights or legitimate interests in respect of that domain name and that the Respondent has registered and is using that domain name in bad faith.
The Respondent contends that the Complainant has no rights in the YOUNG GENIUS trade mark;
alternatively, that any rights which the Complainant may have in the mark do not extend to the Respondent's business in North America;
in any event, the respective businesses are so different that common use of the YOUNG GENIUS phrase or mark in their respective domain names will not lead to confusion;
that the Respondent's registration of the domain name in issue was not made in bad faith [see, paragraph 5.14 above];
that by virtue of its established business, the nature of the words comprising the domain name in issue and its other contentions [summarised in paragraphs 5.11 to 5.20 above] the Respondent has legitimate interests and rights in respect of that domain name; and
that the name is not being used in bad faith.
6. Discussion and Findings
The Policy para 4a provides that the Complainant must prove each of the following:
- that the Respondent's domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name has been registered and is being used in bad faith.
Identical or Confusingly Similar
As to the Complainant's rights in the YOUNG GENIUS trademark, the Complainant has demonstrated its registration of the mark in Sweden. As to the fact that the Complainant has, apparently, not applied to register that mark in the United States from where the Respondent conducts its business, the Panel takes the following approach. In Cases D2000-0014 and 0015 Bennett Coleman the Panel rightly pointed to the fact that the essence of the Internet is its world-wide access. Consideration of the propriety of domain name registrations cannot be confined to comparisons with trade mark registrations or other rights in the country where the Respondent's site is hosted. It is, therefore, relevant to consider the effects of a domain name registration and use in relation to the use of identical and confusingly similar trade marks in other countries. Equally, it is not conclusive against a Complaint that the Complainant's mark could not have been registered in a particular country.
Still further, reputation in unregistered marks is, in the Panel's opinion, sufficient to constitute trade mark rights for the purpose of the Policy. Panels in a number of cases decided under the Policy have endorsed this view. By way of example, the Panel refers to Cases D2000-0131 SeekAmerica Networks and to D2000-0235 Jeannette Winterson.
The domain name in issue was registered on December 24, 1998. This post dates both the application for [January 31, 1995] and registration [March 21, 1998] of the Complainant's trade mark. It also post dates registration of the Complainant's younggenius.se domain name [September 30, 1996] and its attempt to register the domain name in issue [October 1998]. This provides additional evidence of the Complainant's rights to the YOUNG GENIUS mark.
As to identity and confusingly similarity, the Respondent's contention that .com is a North American commercial top level domain distinction is, of course, incorrect. Having found that the Complainant has rights in the YOUNG GENIUS mark, the Panel also finds that the Respondent's domain name in issue is, to all intents and purposes, identical to that mark. As to confusing similarity, the Complainant has demonstrated actual confusion in the form of the complaints received from children and parents in the 1999 pre-Christmas period [paragraphs 5.2 and 5.3 above]. Consequently, the Panel finds that the Complaint succeeds in establishing the first limb of para. 4a(i) of the Policy.
Rights or Legitimate Interests
Para. 4c of the Policy identifies circumstances which, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all the evidence presented, shall demonstrate the Respondent's rights or legitimate interests for the purposes of para. 4a(ii). Those circumstances are that
- before any notice to the Respondent of the dispute, the Respondent's use of or demonstrable preparations to use the domain name or a name corresponding to the domain name, in connection with a bona fide offering or goods or services; or
- the Respondent (as an individual, business or other organisation) has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
- the Respondent is making a legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleadingly direct consumers or to tarnish the trade mark or service mark at issue.
At the date [December 24, 1998] when the domain name in issue was registered by the Respondent a trade mark search would have revealed the Complainant's YOUNG GENIUS registration in Sweden. Similarly, a domain name search would have revealed the Complainant's prior registered [September 30, 1996] younggenius.se domain name and, hence, its products and the nature of its business. The Respondent cannot, in the circumstances, claim to fall within the bona fide requirement of para. 4c(i) of the Policy. The exercise of normal prudence before adopting the domain name at issue would have put the Respondent on notice of the Complainant's trade mark.
The Respondent has produced no evidence that it has been commonly known by the domain name in issue. Rather the reverse, the Respondent appears to state that any traffic to its website attracted by that domain name has been "utterly insignificant" [see, para. 5.15 above]. Para. 4c(ii) of the Policy, therefore, fails to apply.
Plainly, the Respondent's activities do not fall within para. 4c(iii) of the Policy. In the circumstances, the Panel finds that the Complaint also succeeds in establishing the second limb of para. 4a(ii) of the Policy.
Finally, in relation to the Respondent's contention that the Complainant does not use the YOUNG GENIUS mark in relation to its website and/or products, the Panel searched that website through the domain name younggenius.se and from the English language page of that website it is abundantly clear that the YOUNG GENIUS mark is both used and is a registered trade mark.
Para. 4a(iii) of the Policy requires that the Respondent's domain name in issue must both have been registered and be being used in bad faith. Both requirements must be met.
Para. 4b of the Policy sets out circumstances which, if found by the Panel to be present "... shall be evidence of the registration and use of a domain name in bad faith". The Policy goes on to state that those circumstances are not exhaustive of the circumstances indicating registration and use in bad faith.
Registered in Bad Faith
The Respondent registered the domain name on December 24, 1998, almost 2 years after registration of the Complainant's Swedish trade mark and over 2 years after registration of its younggenius.se domain name. In its Service Agreement with Network Solutions, Inc the Respondent represented and warranted in Clause 17(ii) that to the best of its knowledge and belief neither the registration of the domain name in issue nor the manner of its intended use would directly or indirectly infringe the legal rights of a third party. That representation and warranty is also contained in para. 2 of the Policy which forms part of that Service Agreement by virtue of Clause 8. Had the Respondent made the rudimentary checks referred to in paragraph 6.3.2 above, infringement of the legal rights of the Complainant would have been apparent.
The Respondent states that at the time when the domain name in issue was registered in December 1998 "no one here had ever heard of Young Genius Software.". This does not, however, assist the Respondent to overcome the allegation of registration in bad faith, given the representations and warranties made in the Service Agreement and the concomitant duty of the Respondent to check as to the availability of the YOUNG GENIUS name and mark at that time. In all the circumstances of this case, bad faith on the part of the Respondent in registering the domain name in issue is to be inferred and the Panel, accordingly, finds that the Complaint succeeds in establishing the first part of the bad faith requirement of para. 4a(iii) of the Policy.
Use in Bad Faith
Having been put on notice by the Complainant of its prior rights in the YOUNG GENIUS name and mark and its concern as to the damage to its business arising from the content of the Respondent's website, the Respondent has not only continued to use the domain name in issue but has also sought US$250,000.00 from the Complainant as the price for transfer of that domain name.
The Complainant has provided evidence of actual confusion [see, paragraphs 5.2, 5.3 and 6.2.4 above] and damage. Even if the Respondent's original use of the domain name in issue was not in bad faith, its continued use after December 8, 1999 has clearly been in bad faith. The Panel finds that the Complaint satisfies the second part of the bad faith requirement of para. 4a(iii) of the Policy.
For all the foregoing reasons, the Panel decides that the Complainant has proved each of the three elements of para. 4a of the Policy. Accordingly, the Panel requires that the registration of the domain name younggenius.com be transferred to the Complainant.
Dated: August 7, 2000