WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Net-Com AG v. Jacques Favre, Patrice Collette Associates
Case No. D2000-0635
1.1. The Complainant is Net-Com AG whose registered office is at 1 Hettlicher Masch, 49084 Osnabrueck, Germany represented by Klauswilhelm Mueller, RAe Wedegärtner Bösch Boving Müller, 23/25 Wassermanstrab e, D-49074 Osnabrueck, Germany.
1.2. The Respondent is Jacques Favre, Patrice Collette Associates whose registered office is at Chemin du Vieux Pressoir 3, CH-1197 Prangins, Switzerland represented by Me Olivier Brunisholz, 5 Cours des Bastions, CH-1205 Geneva, Switzerland.
2. Domain Name and Registrar
2.1. The domain name in issue is "TOURISMA.COM".
2.2. The Registrar is REGISTER.COM, Inc. whose registered office is at 575 8th Avenue, 11th Floor, New York, New York, 10018 USA.
3. Procedural History
3.1. The Complaint was dated June 9, 2000, and was received by the WIPO Arbitration and Mediation Center ("WIPO Center") by e-mail on June 28, 2000, and by hard copy on June 20, 2000. The Complaint was submitted pursuant to the Uniform Domain Name Dispute Resolution Policy implemented by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999, ("Uniform Policy") and under the Rules for the Uniform Domain Name Dispute Resolution Policy implemented by ICANN on the same date ("Uniform Rules"). The WIPO Center sent an Acknowledgment of Receipt to the Complainant by e-mail dated June 26, 2000.
3.2. The WIPO Center dispatched a Request for Registrar Verification to the Registrar by e-mail on June 23, 2000. By fax to the WIPO Center dated June 26, 2000, the Registrar confirmed that:
3.2.1. it had not received a copy of the Complaint from the Complainant;
3.2.2. it was the Registrar of the domain name the subject of the Complaint;
3.2.3. the current registrant of the domain name is the Respondent and that the status of the domain name was "active";
3.2.4. the agreement with the Respondent provides that, as registrant of the domain name, the Respondent agrees to be bound by the Uniform Policy incorporated therein;
3.2.5. the administrative and billing Contact for the domain name is the Respondent; and
3.2.6. it also provided postal, telephone, facsimile and e-mail contact details for the administrative, technical, zone and billing Contacts.
3.3. Following payment of the filing fee and verification that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, the WIPO Center on June 28, 2000:
3.3.1. issued a Notification of Complaint and Commencement of Administrative Proceeding by e-mail and courier to the Respondent and to the technical and zone contacts for the domain name to the addresses provided by the Registrar; and
3.3.2. sent copies of this Notification of Complaint by e-mail to the Complainant, the Registrar and ICANN.
3.4. This Administrative Panel ("the Panel") finds 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".
3.5. The Response to the Complaint was due to be filed by July 18, 2000. However, by an e-mail dated July 11, 2000, Counsel for the Respondent requested an extension until July 28, 2000, for filing the Response, given the complexity of the issues in hand. By an e-mail to Counsel for the Respondent and Counsel for the Complainant dated July 13, 2000, the WIPO Center exercised its discretion and granted the Respondent an extension of time to file its Response until July 28, 2000.
3.6. The Response to the Complaint was filed by the Respondent by e-mail and courier and was received by the WIPO Center by e-mail on July 28, 2000, and in hard copy on July 31, 2000, within the time specified in the Notification of Complaint.
3.7. By an e-mail dated August 8, 2000, Counsel for the Complainant submitted an additional pleading in which the Claimant purported to clarify the "Factual and Legal grounds" to its Complaint. The WIPO Center received the additional pleading in hard copy on August 10, 2000. By an e-mail dated August 10, 2000, Counsel for the Respondent submitted a response to the "Factual and Legal grounds" of the additional pleading of the Complainant. The WIPO Center received the Respondentís additional response on August 10, 2000. Although the rules do not provide a right to put in further material of this nature the Respondent appears to accept that, providing his additional response is also considered, no objection is taken. These further submissions have therefore been taken into account.
3.8. The Panel was constituted on August 8, 2000, with a single panelist, Nick Gardner. A Statement of Acceptance and Declaration of Impartiality and Independence has been filed by the Panelist.
3.9. The date scheduled for the Panel to render its decision is August 22, 2000. The case before the Panel was conducted in the English language.
3.10. Having reviewed the Case File in this matter, the Panel concurs with the assessment by the WIPO Center that the Complaint complies with the formal requirements of the Uniform Policy and Uniform Rules.
4. Factual Background
4.1. The Complainant is described as being "a joint-stock company". On December 7, 1999, the German Patent and Mark Office at Munich, Germany registered the trade and service mark "TOURISMA" no 399 56 866 for the Complainant. The goods and services in connection with which the mark is used are, according to the Complainant: Telecommunications, travel arrangement and temporary accommodation.
4.2. On or around April 16, 1999, the second level domain "TOURISMA" was registered under the top level domains ".de",".at" and ".ch" by the Complainant. Since July 1999, the Complainant has been using these domains for offering goods and services as mentioned above.
4.3. The Respondent applied for and obtained registration of the "TOURISMA.COM" domain name on March 10, 2000, such registration being effected in the name of the Respondent.
4.4. The Complainant notified the Respondent by letter with return receipt dated May 6, 2000, that the Complainant had registered rights in the trade and service mark "TOURISMA".
5. Partiesí Contentions
The Complainantís contentions may be summarized as follows:
5.1. Each of the three elements specified in paragraph 4(a) of the Uniform Policy are applicable to the domain name the subject of this dispute.
5.2. In relation to element (i) of paragraph 4(a) of the Uniform Policy, the Complainant contends that the domain name is identical to the Complainantís trade and service mark.
5.3. In relation to element (ii) of paragraph 4(a) of the Uniform Policy, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain name in issue and has failed to articulate any rights in or legitimate reason for registering the domain name.
5.4. In relation to element (iii) of paragraph 4(a) of the Uniform Policy, the Complainant contends that the Respondent appears to have registered the domain name "TOURISMA" in bad faith. The Complainant cites that the Respondent is not currently using the domain name for any legitimate purpose and offered to sell the domain name to the Complainant for US$ 75,000, an activity which corresponds to that listed in paragraph 4(b)(i) of the Uniform Policy as evidence of bad faith registration and use of a domain name.
The Respondentís contentions may be summarized as follows:
5.5. The Respondent denies that each of the three elements specified in paragraph 4(a) of the Uniform Policy are applicable to the domain name the subject of this dispute.
5.6. In relation to element (i) of paragraph 4(a) of the Uniform Policy, the Respondent admits that the registered domain name is identical to the Complainantís mark. However, the Respondent challenges the Complainantís right to exclusively own the mark.
5.7. In relation to element (ii) of paragraph 4(a) of the Uniform Policy, the Respondent argues that the fact the Respondent is not currently using the domain name is not indicative of bad faith. The Respondent has expressed intentions and possibilities of using the domain name in connection with an offering of services in the tourism market.
5.8. In relation to element (iii) of paragraph 4(a) of the Uniform Policy, the Respondent has not registered and is not using the domain name in bad faith. The Respondent is in the practice of developing innovative business plans, specifically in relation to the hotel trade market. The Respondent is therefore not profiteering from the bare sale of domain names. The Respondent admits that he did make an offer to sell the domain name following an enquiry from the Complainant, but contends that this does not demonstrate his primary purpose in registering the domain name was to sell it to the Complainant.
6. Discussion and Findings
6.1. The Panel has reviewed the Complaint and the Response and the documents annexed thereto. In the light of this material and matters that are either expressly conceded or are, on the evidence, not challenged, this Panel finds as set out below.
6.2. The domain name "TOURISMA.COM" is identical to the registered mark dated December 7, 1999. This is conceded.
6.3. It is convenient to say at this stage that the exchange of pleadings between the parties had become increasingly vitriolic, each side rendering accusations at the other. The Complainant in its supplemental pleading states, in terms, that the Respondentís response is untrue and that the exhibited documents are either manufactured or do not carry the date that is attributed to them. The increasingly heated exchange has culminated in the Complainant rather oddly suggesting that the figure of US $75,000 asked by the Respondent for the domain name is unrealistically low, hence showing the Respondent could not have been intending to use it himself.
6.4. This Panel does not believe it is the function of this procedure to resolve disputes of this nature Ė if there is to be a dispute as to the validity of documents relied on by the Respondent or other evidential matters that should be brought before a competent court. The Panel will proceed on the basis that the documents are genuine and dated as stated.
6.5. It should also be said that much of the dispute between the parties has been directed at the question of whether or not the Respondent had bona fide sought to develop what he says is his plan (for a tourist related portal site) before it received notice of the Complainantís rights (i.e. before May 6, 2000). As a result the parties have focused on the Respondentís activities in seeking (he says) to set up his web site, with effect from March 18, 2000, onwards. That is a matter the Panel considers of peripheral relevance. The Panel considers that the key question in this case is was the Respondentís registration (on March 10, 2000) effected in bad faith? The Complainant has to establish this before the Panel needs to consider whether subsequent use was also in bad faith.
6.6. It should also be said at this stage that there are various references in the pleadings to a previous owner of the domain name. These are not fully explained and it is not clear to the Panel what (if anything) took place prior to March 2000 in this regard. The Panel discounts this issue.
6.7. Clearly, the word "Tourisma" is a variant of the word "tourism" which (in English and other languages) is a well-known and widely used word. It is not, so far as the Panel can see, contended by either party that the word "Tourisma" itself has any meaning in any language. It nevertheless seems to the Panel to be a word that could have been independently derived by more than one person and is in any event either generic or very close to being generic when used in relation to travel services. Whether it was in fact independently derived by the Respondent is in issue. The Panel is in effect invited (without any evidence) to infer that following the Complainant having commenced its activities in 1999, the Respondent opportunistically registered the TOURISMA.COM name knowing of the Complainantís business. Against this, the Respondent states "the Respondent had never heard of the Complainant before the latter contacted him to try to buy the domain name".
6.8. The exact nature and extent of the Complainantís activities are not clear to the Panelist as other than the statement that the Complainant is using the domain name, the Complainant has provided no evidence as to the extent of its use. This does not assist the Panel in determining precisely what reputation the Complainant has in the term "TOURISMA". The Panel notes that the Complaint is silent as to turnover figures, sales activity, details of customers or other material that would assist more usefully in this area. Given this lack of detail, the Panel is not prepared simply to infer that the Respondent must have known of the Complainantís business.
6.9. It should also be mentioned that, even if the Respondent did know of the Complainantís business, questions might arise as to what extent a business carried out under or by reference to what might be said to be a generic or almost generic word entitles the proprietor of such a business to assert that any registration by a third party of a domain name using the word necessarily constitutes "bad faith".
6.10. The mere fact that the Respondent does not, at present, offer any goods or services under the domain name is not in the Panelís view conclusive of the domain name having being registered in bad faith. The subsequent discussions which have taken place since the domain nameís registration between the Complainant and the Respondent are not conclusive proof of the Complainantís contention that the Respondent must have registered the domain name in bad faith. The subsequent suggestion by the Respondent that he might sell the name for US $75,000 or more was in response to a clear request from the Complainant stating "do you have plans with it, or is it possible to buy it?" The Panel is not in any event satisfied the offer to sell was made in bad faith but it certainly does not establish that the original registration was made in bad faith.
6.11. The ex-post facto analysis by the Complainant of what the Respondent must have known, or should have checked, when he effected the registration does not alter this conclusion. The burden of proof here is on the Complainant and the Panel does not consider it has discharged it.
7.1. In the light of the above findings, the Panelís decision is as set out below.
7.2. The Panel concludes in the Complainantís favor that it has an identical trademark within the meaning of paragraph 4(a)(i) of the Policy.
7.3. The Panel is unable to conclude on the evidence the extent of any further reputation the Complainant has in the name "Tourisma". The word is an obvious variation of a generic term.
7.4. The Panel is not satisfied that the evidence before it establishes that the domain name was registered in bad faith, as required by paragraph 4(a)(iii) of the Policy. The Panel takes the view that under the Policy the burden of proof falls upon the Complainant and that in this case he has failed to provide sufficient evidence as to his reputation in the brand name "Tourisma" to enable the Panel to conclude the Respondent must have registered the name in bad faith.
7.5. In light of the above finding the Panel does not need to determine whether or not the Respondent itself has any rights or legitimate interests in the domain name (paragraph 4(a)(ii) of the Uniform Policy) or whether the Respondentís use of the name (if any) is use in bad faith. The Panel expresses no views on these matters.
7.6. The Panel, therefore, declines to find that the domain name should be transferred or cancelled.
7.7. No further action is required to implement the Panelís decision.
Dated: August 22, 2000