WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
VAT Holding AG v Vat.com
Case No. D2000-0607
1. The Parties
The Complainant is VAT Holding AG, a corporation incorporated and registered in Kanton St Gallen under No. 3.000.029.314 and having its principal place of business at Seelistrasse, 9469 Haag, Switzerland.
The Respondent is identified as the business "Vat.com" having a postal address of care of eMphasys Technologies Inc. of PO Box 795923, Dallas, Texas, USA, but represented in this matter by a Mr. Matt Fletcher of 18111 Preston Road, Suite 200, Dallas, Texas 75252 USA.
2. Procedural History
A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on June 15, 2000, and the signed original together with exhibits were received on June 15, 2000.
On June 20, 2000, a Request for Registrar Verification was transmitted to the Registrar, DomainDirect of Toronto, Canada by email and by email reply June 26, 2000, the Registrar informed the WIPO Center:
(1) the Domain Name at in issue is registered with Open SRS;
(2) the Respondent is the current registrant of the Domain Name at issue;
(3) the full contact details of the registrant of the disputed Domain Name were provided;
(4) the Uniform Domain Name Dispute Resolution Policy (the "Policy") applies to the Domain Name;
(5) the Domain Name at issue is currently "on hold" with the Registrar, i.e. this prevents transfer of registrar or ownership; and
(6) the Registrar confirms receipt of the copy of the Complaint on June 16, 2000.
The WIPO Center determined that the Complaint satisfied the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Complainant elected to have this dispute decided by a single member Administrative Panel and paid the prescribed fees.
No formal deficiencies having been recorded, on July 3, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, the Registrar and ICANN), setting a deadline of July 22, 2000, by which the Respondent could file a Response to the Complaint.
On July 22, 2000, the WIPO Center received a Response.
On August 18, 2000, the WIPO Center appointed a single member administrative Panel comprising Mr. John Terry and set the projected decision date as September 1, 2000.
3. Factual Background
The present Domain Name was registered on December 17, 1999.
The certified Complaint states, the Respondent does not deny and the Panel accepts that the Complainant has registered and used the trade mark "VAT" in numerous countries, the trade mark being an abbreviation of the German word "VakuumApparateTechnik" and the main business of the Complainant of its subsidiaries is the development, production and selling of vacuum tubes. The Complainant asserts it is a global market leader in vacuum valves and the products are used in the semiconductor industry and research facilities in many countries.
The Complainant states and the Respondent does not deny that the Respondent has no trade marks in use or registered and characterized by the word "VAT" in respect of any particular goods or services. The Complainant asserts that the Respondent, at the date of the Complaint, is not using the Domain Name "vat.com" "except for a standardized web-page".
The Complainant states that an employee, Mr. Andrew Witkin, using his private email, addressed an inquiry to the owner of the Domain Name at issue expressing interest in acquiring the present Domain Name and an email reply on behalf of the Respondent sought an offer.
The Respondent has not identified itself as a corporation or a registered business of any kind and simply identifies itself through the designated representative, Mr. Matt Fletcher.
The Respondent states and in the absence of any contrary evidence, the Panel has no choice but to accept the Respondentís explanation that it adopted the Domain Name "vat.com" with the intent to develop "an on-line resource center for value added tax issues" and a business plan was conceived in January 2000. The business plan was pursued by engaging in joint venture discussions with many tax firms around the world. The Respondent included in the Response a copy of a logo developed in February 2000, for the Respondent and stated that the Respondent began database design and web development in March 2000.
The Respondent further states that at the date of the Complaint, the Respondent had only achieved the use of a standardized web page generated by the Respondentís Internet Service Provider (eMphasys Technologies, Inc) and that it was an interim measure until the Respondentís own site was ready for launch.
The Respondent stated that it elected to pursue a course of dialog by email with Mr. Andrew Witkin in order to try and ascertain his real commercial interest and states that no offer was ever made to sell the Domain Name in issue to Andrew Witkin.
4. Partiesí Contentions
Firstly, the Complainant contends that the Domain Name "vat.com" is identical with the Complainantís trademark "VAT" which has been registered in many countries.
Secondly, the Complainant contends that the Respondent has no rights or legitimate interests in the present Domain Name.
Thirdly, the Complainant contends that the Respondent registered the present Domain Name and used the present Domain Name in "bad faith".
Fourthly, the Complainant contends that the present Domain Name should be transferred to the Complainant.
The Respondent does not deny that the Complainant has used and registered the trademark "VAT"; the Respondent concedes that the present Domain Name "vat.com" is similar to the Complainantís name but asserts that it is not identical.
The Respondent asserts it/he has rights or legitimate interests in respect of the Domain Name.
The Respondent denies it/he has acted in bad faith but denies specifically that it/he registered the Domain Name for the main purpose of selling it.
The Respondent contends that the Complaint should be dismissed.
5. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) 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
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and,
(iii) that the Domain Name has been registered and used in bad faith.
The Panel holds that the Complainant has established element (a) of paragraph 4 in view of the trade mark registrations referred to in the Complaint. The Panel applies the principle that in assessing identity, the portion ".com" of the Domain Name is to be ignored and the comparison is to be with the characterizing part. This has been a principle applied in many prior decisions under the ICANN policy.
The onus is on the Complainant to establish prima facie the elements of paragraph 4(a). In this case, the Respondent, in its certified Response, states in clear and plausible terms its reasons for choosing and registering the present Domain Name, denies any prior knowledge of the Complainant or its business and, in a manner which is satisfactory to the Panel, explains its dealings with the email inquiries concerning possible sale of the present Domain Name to the Complainant. The time from the registration of the present Domain Name has been approximately 7 months and the delay before commencing bona fide use has been reasonably explained in the Response. The Panel finds that any prima facie basis in the Complaint is well rebutted and the Respondent satisfies the administrative Panel that it/he has rights and legitimate interests in respect of the present Domain Name. Accordingly element (H) of paragraph 4(a) is not established.
The Response has not included any specific submissions in terms of establishing any one of the particular circumstances set out in paragraph 4(c) of the Policy; if any one of the circumstances is established that is deemed proof that the Respondent having rights or legitimate interests. In this case, the Administrative Panel finds that circumstance (i) of paragraph 4(c) is established on the basis of the certified Response namely that before notice to the Respondent of the dispute, the Respondent used or had demonstrable preparations for use of the Domain Name in connection with the bona fide offering of goods or services.
In view of the above finding, it is unnecessary to consider element (iii) of paragraph 4(a) of the Policy. However, in the interest of completeness the Administrative Panel finds that the Complainant has not discharged its onus of establishing element (iii) and in particular any inclination to find a prima facie case by the Complainant on the basis that the Respondent acquired the Domain Name primarily to selling, renting or otherwise transferring the Domain Name registration is amply rebutted by the certified Response.
For the reasons stated above, the administrative Panel decides that the Complainant has not established under the policy a basis for relief and dismisses the Complaint.
Dated: August 22, 2000