WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
VeriSign, Inc. v. Nandini Tandon
Case No. D2000-1216
1. The Parties
1.1 The Complainant is VeriSign, Inc., a Californian corporation with its principal place of business at 1350 Charleston Road, Mountain View, California 94043, United States.
1.2 The Respondent is Nandini Tandon, of C-2, Sterling Apartment, Alkapuri, Baroda, Gujarat - 390 007, India.
2. The Domain Names and Registrar
2.1 The domain names upon which this Complaint is based are "verisignindia.com" and "verisignindia.net". The registrar of the domain names as at the date of the Complaint is Network Solutions Inc, ("NSI").
3. Procedure of History
3.1 The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution Policy approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 (the "Policy"), in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, also approved by ICANN on October 24, 1999 (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect as of December 1, 1999 (the "Supplemental Rules").
3.2 The Complaint was received by the WIPO Arbitration and Mediation Centre (the "Centre") by email on September 14, 2000, and in hard copy by courier on September 18, 2000. The hard copy of the Complaint was accompanied by the fees prescribed under the Supplemental Rules. The Complaint stated that a copy of the Complaint had been sent or transmitted to the Respondent in accordance with paragraph 2(b) of the "Uniform Rules" (presumably referring to the Rules) and that a copy of the Complaint had been sent or transmitted to the Registrar in accordance with paragraph 4(b) of the Supplemental Rules.
3.3 Upon receipt of the hard copy of the Complaint on September 18, 2000, the Centre sent the Complainant an Acknowledgment of Receipt of Complaint by email.
3.4 The Centre sent a Request for Registrar Verification to NSI on September 22, 2000, by email. NSI responded to the Centreís request by email on September 28, 2000, verifying:
(a) that NSI was in receipt of the Complaint sent to it by the Complainant;
(b) that NSI was the registrar for the domain names in dispute;
(c) that the Respondent was the current registrant of the domain names in dispute;
(d) that the domain names "verisignindia.com" and "verisignindia.net" had an "active" status;
(e) the Respondentís contact details; and
(f) that NSIís 5.0 Service Agreement was in effect, and the Policy was therefore applicable to the dispute.
3.5 The Centre sent the Notification of Complaint and Commencement of Administrative Proceeding on October 2, 2000, to the Respondent by post/courier, facsimile and email, and to the Complainant by email.
3.6 The Centre received the Response from the Respondent on October 10, 2000, by email and on October 16, 2000, in hard copy. The Response indicated that the Respondent elected the dispute to be decided by the single member administrative panel. The Centre sent an Acknowledgment of Receipt of Response by email to the Respondentís representatives and by email to the Complainantís representative on October 10, 2000.
3.7 The Centre sent a Notification of Appointment of Administrative Panel and Projected Decision Date to the Respondentís representative and the Complainantís representative by email on October 26, 2000.
3.8 The Centre sent a transmission of case file to the Panel by email on October 26, 2000, (Geneva time). This did not include documentation that was not in electronic form. Such documentation was included in the hard copy case file received by the Panel in the afternoon of October 30, 2000, in Sydney, Australia.
3.9 All other procedural requirements appear to have been satisfied.
4. Factual Background
4.1 Activities of the Complainant
The following information is asserted as fact in the Complaint and remains uncontested.
The Complainant is engaged in the business of providing certification for on-line communications and transactions, Internet security services, secure email, and online payment services, among other products and services. These services are being offered at the Complainantís current website, "www.verisign.com". The Complainant is the foremost certification authority for issuing certificates of authenticity on the world wide web. The Complainant also offers Internet security services, Internet payment services and other Internet related products and services.
4.2 The Complainantís trade marks
The Complainant adopted and registered in the United States a trade mark for use with all its products and services. The mark consists of the word "verisign" with an initial "V" in the form of a check mark or tick, for which a separate application for registration has been made, and an upper case "S" in the middle of the word.
The Complainant has applied to register its trade mark in the European Community and in 19 other countries around the world.
The Complainantís trade mark was originally registered by VeriFone Inc., a subsidiary of a Delaware corporation. VeriFone has assigned the trade mark to VeriSign.
4.3 Activities of the Respondent
The following information was asserted as fact in the Response.
The Respondent is an individual who, at the relevant time, was actively considering entering into the business of digital security. The Respondent had considered entering into a relationship on a long term basis with various persons in similar business.
5. The Complainantís contentions in the Complaint
5.1 The Complaint asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.
5.2 In reference to the element in paragraph 4(a)(i) of the Policy, the Complaint asserts that the Respondent has registered domain names that are confusingly similar to a mark in which the Complainant has rights, and that the addition of a geographic term to a registered mark in the domain name does not alter the fact that the domain name is identical or confusingly similar to that mark.
5.3 In reference to the element in paragraph 4(a)(ii) of the Policy, the Complaint asserts that the Respondent has no rights or legitimate interests in the domain names in dispute. In particular, the Complainant states that the Respondent is not a licensee of the Complainant, nor is it otherwise authorised by the Complainant to use the "VeriSign" mark. The Complaint further contends that the Respondent has registered the domain names in dispute but has failed to construct a website using either domain name. The Complaint states that the holding of a domain name as a mere placeholder has been held to show that the holder has no right or legitimate interest in respect of the domain name.
5.4 In reference to the requirements of paragraph 4(a)(iii) of the Policy, the Complaint asserts that the Respondent has registered and is using the domain names in dispute in bad faith. In support of this assertion, the Complaint states that registering a domain name and failing to construct a website to which the domain name resolves constitutes bad faith use. The Complaint further alleges that the Respondent gives an address that is the address of a partner of a direct competitor of the Complainant, "Entrust". The Complaint alleges that the domain names in dispute have therefore been registered by a partner of a direct competitor of the Complainant to keep the Complainant from being able to use the domain names. The Complaint states that this constitutes registration and use in bad faith.
6. The Respondentís contentions in the response
6.1 The Response submits that the Complainant has never made any attempt to contact the Respondent and therefore there is no dispute between the parties. The Response alleges that the email the Complainant claims to have sent to the Respondent, in paragraph 20 of the Complaint, was not sent by the Complainant (through its attorney). In support of this submission, the Respondent states that firstly, the email which appears at annexure 8 of the Complaint does not contain the date and time of sending, and secondly, the email was never received by the Respondent.
The Response submits that for any dispute to come into existence it is necessary that there has first been an attempt to resolve the same. The Response states that if the dispute is not resolved amicably between the parties, only then does the question of mediation by an arbitral panel arise. The Respondent submits that the attempt on the part of the Complainant to use the dispute resolution procedure under the Policy, without first attempting to amicably resolve the dispute, is indicative of bad faith on the part of the Complainant.
6.2 The Response then goes on to address the allegations raised in the Complaint, but without admitting the validity of the Complaint filed or the existence of any dispute requiring the intervention of any arbitral authority.
6.3 The Respondent denies the allegations contained in (inter alia) paragraph 16 of the Complaint. Paragraph 16 of the Complaint sets out the reasons why the Complainant alleges that the domain names in dispute are identical or confusingly similar to the registered trade mark of the Complainant.
6.4 In relation to the allegation in the Complaint that the Respondent has no rights or legitimate interests in the domain names in dispute, the Response denies the allegation of the Complainant that it has no legitimate interest in respect of the domain names.
6.5 In relation to the allegation in the Complaint that the Respondent registered and is using the domain names in dispute in bad faith, the Respondent denies that it registered the domain names in dispute to prevent the Complainant from being able to use those domain names. The Response states that the Respondent was actively considering, at the relevant time, entering into the business of digital security, and that the Respondent therefore had considered entering into the relationship on a long term basis with various persons in similar business.
The Response states that at the time when the Complainant (presumably meaning the Respondent) was considering entering into this business, there were several reported cases of persons registering domain names and thereby preventing other persons from registering the domain name. The Response states that in accordance with this legitimate business plan, the Respondent applied for registration of the domain names for securing names for alternatives considered. The Response states that the domain names were registered as a result of this objective and specific business consideration. The Response states that it would therefore be incorrect to mention that there was any bad faith in registration of the domain name in which the Complainant could be said to be interested.
6.6 In addition to responding to the allegations made in the Complaint, the Response also states that if the Respondent had been approached with a genuine desire by the Complainant or its attorney to seek redressal in the matter, then the Complainant would have considered the issue in the most amicable manner so long as the costs incurred by it for registration of the above domain names were reimbursed. The Response further states that even now if approached appropriately, and without prejudice to its right to claim compensation with respect to the costs incurred and allegations made by the Complainant, the Respondent may consider assigning the rights in the domain names to the Complainant.
6.7 The Response submits that the Complaint should be dismissed with direction to the Complainant to give compensation to the Respondent for having a filed a vexatious Complaint.
7. Discussion and Panel Findings
7.1 Prior to addressing the question of whether the Complainant has proved the three elements required by paragraph 4(a) of the Policy, the Panel will address the "preliminary objection" referred to in paragraph 04 of the Response.
7.2 The Respondent contends, in paragraph 05, that because the Complainant has never made any attempt to contact her, there is no "dispute" between the parties, which is a condition precedent for the applicability of the Policy and the Rules. The Respondent states:
"We therefore submit that the complaint is required to be dismissed only on that ground without any further reference or action thereof and the Complainant be asked to first make attempt to resolve the issue with the respondent."
The Panel rejects this contention for two reasons.
7.3 First, and fundamentally, there is no requirement whatsoever in the Policy, the Rules or the Supplemental Rules that a potential complainant must make an attempt to resolve the dispute with the potential respondent prior to commencing the administrative proceeding established by the Policy (by sending a Complaint to an administrative-dispute-resolution service provider such as the Centre). Paragraph 3(a) of the Rules states that:
"Any person or entity may initiate an administrative proceeding by submitting a complaint in accordance with the Policy and these Rules to any Provider approved by ICANN."
No requirement exists that there should be some initial contact between the complainant and the respondent before this procedure is commenced. The Respondent is simply incorrect in stating, in paragraph 05 of the Response, "If the dispute is not resolved amicably between the parties then only there is a question of mediation by an arbitral panel arises".
7.4 Secondly, the Complaint asserts, at paragraph 20 of the Complaint, that the Complainant did contact the Respondent by email prior to the commencement of the administrative proceeding, and a copy of this email appears at Annexure 8 of the Complaint. The Respondentís email address, as given in the registrarís WHOIS database, appears in the "To:" line of the email. The text of this email, from the Complainantís representative, states that the Respondentís domain name "verisignindia.com" is identical or confusingly similar to the Complainantís trade mark, that the Respondent has no right or legitimate interest in respect of the name, and that the Respondent has registered and is using the domain name at issue in bad faith. The email goes on to offer to reimburse the Respondent's out-of-pocket expenses in respect of registering the domain name (estimated at US$300) in return for the transfer of the name to the Complainant.
7.5 Although the Respondent alleges that she never received this email, the Panel has no reason to conclude that it was not sent by the Complainantís representative. It was in the Complainantís interest for the Respondent to receive the email: had the Respondent accepted the Complainantís assertions and agreed to transfer the domain name for reimbursement of her expenses in registering it, the Complainant would have incurred less expense than the fees involved in commencing this administrative proceeding. Whilst it may be that the Respondent never did receive this email, the Complainant was in any event under no obligation to contact the Respondent before commencing the administrative proceeding. The Panel therefore rejects the Respondentís assertion that it has no "jurisdiction" to consider this administrative proceeding.
7.6 The rest of this section is structured by reference to the elements required by paragraph 4(a) of the Policy. In order to be successful, the Complainant has the burden of proving, on the balance of probabilities, that all three elements are present.
7.7 Domain Names identical or confusingly similar to Complainantís trade mark
The Respondent denies in the Response the allegation that the domain names in dispute are identical or confusingly similar to the Complainantís trade mark. The Respondent, however, does not elaborate on this by stating why she believes the domain names in dispute are not identical or confusingly similar to the Complainantís trade mark.
The domain names in dispute are "verisignindia.com" and "verisignindia.net" . The Complainant has a trade mark registration in the United States of the word "verisign" with an initial "V" in the form of a check mark or tick, for which a separate application for registration has been made, and a capital "S" in the middle of the word. As far as a comparison between the disputed domain names and the Complainantís trade mark of the word "VeriSign" is concerned, the Panel agrees with the decision in InfoSpace.com, Inc. v. Hari Prakash, WIPO Case No. D2000-0076, an administrative proceeding in which the word "india" was added to the start of "infospace.com" (over which the complainant in that proceeding had trade marks). In this case, the mere addition of the word "india" at the end of the Respondent's domain name is not sufficient to distinguish it from the trademark of the Complainant. This is consistent with this Panelís decision in AT&T Corp v. Worldclass Media.com WIPO Case No. D2000-0553 in relation to the role of geographic descriptors.
To the extent to which there are other differences between the Complainantís trade mark and the domain names in dispute, such as the capitalisation of certain letters in the trade mark, and the gTLD suffix forming part of the domain names, the Panel finds confusing similarity proven. Accordingly, paragraph 4(a)(i) is satisfied in the view of the Panel.
7.8 The Respondent has no rights or legitimate interests in the Domain Names
The Respondent denies in the Response the allegation that it has no legitimate interest in respect of the disputed domain names. The Respondent, however, does not elaborate on this, and no evidence has been put before the Panel to suggest what right or legitimate interest in the domain names the Respondent may have. The Respondent also denies that she has failed to construct a website using the disputed domain names, but again fails to produce any evidence in support of this denial. The Complainant states, and there is no evidence to the contrary, that the Respondent is not a licensee of the Complainant and nor is the Respondent authorised by the Complainant to use the "verisign" trade mark.
Paragraph 4 (c) of the Policy lists a number of circumstances which, if proven to exist by the Respondent, shall demonstrate a Respondentís rights or legitimate interests in the domain name. No evidence to suggest that any of these circumstances exist has been submitted to the Panel.
As recorded in paragraph 6.5, the Respondent admits that the domain names in dispute were registered to block anyone else in case a business relationship with the Complainant eventuated. At best for the Respondent this suggests a disavowal of any entitlement to the registration at the time of application, and certainly a disavowal of any present entitlement given that no relationship with the Complainant ever eventuated.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has proven paragraph 4(a)(ii) of the Policy.
7.9 Domain Names have been registered and are being used in bad faith
The Panel notes that paragraph 4(a)(iii) of the Policy requires both registration in bad faith and use in bad faith. Paragraph 4(b) of the Policy provides:
"The following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith".
In this case, although the Registrar of the disputed domain names has confirmed that they have an "active" status, currently the domain names do not resolve to any active website. In some cases, however, it has been found that it is unnecessary to consider the two limbs of the provision separately, as the "use" requirement has been found not to require positive action, inaction being within the concept. As such, bad faith use can be found to follow bad faith registration without more, if the Complainant can prove registration in bad faith.
7.10 In order to show bad faith registration by the Respondent, the Complainant makes two assertions, at paragraphs 18 and 19 of the Complaint: first, it contends that the Respondent gives an address that is the address of Jhaveri Infotech Pvt. Limited, a partner of one of the Complainantís direct competitors, "Entrust"; secondly, it asserts that a WHOIS search reveals that the Respondent has also registered the domain name "entrustindia.com". The Complainant alleges that this demonstrates that the Respondent has registered the disputed domain names in bad faith in order to prevent the Complainant from reflecting its trade mark in a corresponding domain name.
It appears to the Panel that the Complainant is suggesting that the Respondent is in some way involved with a company which is in turn involved with a direct competitor of the Complainant, and that the domain names have been registered in bad faith, for the benefit of one of the Complainantís competitors, to prevent the Complainant from registering those domain names.
7.11 In response to this allegation, the Respondent makes a number of statements in her response concerning the reason for which she registered the disputed domain names. The Respondent denies in the Response the allegations made by the Complainant discussed in paragraph 7.10. The Respondent does not, however, make any comment as to why the address for the Administrative Contact, Technical Contact, Zone Contact, and Billing Contact in respect of the domain names is that of Jhaveri Infotech Pvt. Limited. Other than the assertions contained in the Complaint, there is no evidence before the Panel as to the nature of this company and the business in which it is involved. The Panel infers that the Respondent is indeed connected to or involved with a competitor of the Complainant.
7.12 As noted in paragraph 7.8, the Respondent states that she was actively considering entering the business of digital security and entering into a long-term relationship with various persons in a similar business. There is no evidence before the Panel as to whether the Respondent was considering this in an individual capacity or through Jhaveri Infotech Pvt. Limited. The Respondent goes on to state that at the time of her application for the domain name in dispute there were several reported cases of persons registering domain names and thereby preventing other persons from registering them. In paragraph 09 of the Response, the Respondent states:
"Keeping in mind the above, the Respondent in accordance with its legitimate business plan applied for registration of the domain name for securing the domain names for alternatives considered. It was only with this objective and specific business consideration that the domain names were registered."
7.13 It appears to the Panel that the Respondent alleges that she registered the disputed domain names (in whatever capacity) with a view to preventing their registration by anyone else in case the Respondent and the Complainant entered into a business relationship at some time in the future.
7.14 In the Panelís opinion such an argument is not consistent with, let alone evidence of, registration of the domain names in good faith by the Respondent. The Complainant has stated, and there is no evidence to the contrary, that there is no relationship whatsoever between the Complainant and the Respondent. Furthermore, the Respondent has provided no evidence that there was any possibility or likelihood that she would be entering into a business relationship with the Complainant. As such, the Complainant finds itself in the very position it would have faced if any of the "persons" to which the Respondent refers had registered the domain names in dispute for a blocking purpose.
7.15 Had there been evidence of a bona fide prospective business relationship between the parties to this administrative proceeding before the Panel, the Panel may have concluded that the Respondent was bona fide in believing that it could have been assisting the Complainant by registering the domain names on its behalf to prevent other unscrupulous persons from doing so first. Such evidence may also have served to demonstrate that the Respondent had some interest in the disputed domain names.
However, at the time of registration, the Panel concludes that there was no bona fide prospect of any relationship between the parties to this administrative proceeding. In fact, as stated in paragraph 7.10, the Panel believes that the Respondent is in some way connected to or involved with Jhaveri Infotech Pvt. Limited, a company involved with a direct competitor of the Complainant.
7.16 In the Panelís opinion the Respondent registered the domain name either a) to prevent the Complainant from reflecting its trade mark in the word "verisign" in a corresponding domain name; b) to disrupt the business of the Complainant, which is a competitor of Jhaveri Infotech Pvt. Limited, a company with which the Respondent is in some way involved; or c) in the event that the Respondent planned to create a website or websites corresponding to the domain names, to attract Internet users for commercial gain to the website by creating a likelihood of confusion with the Complainantís trade mark.
7.17 The Panel is of the view that both of the domain names in dispute were registered and are being used in bad faith by the Respondent. Accordingly, the Panel finds that the Complainant has proven paragraph 4(a)(iii) of the Policy.
7.18 The Panel notes the Respondentís submission that the Complaint should be dismissed with a direction to the Complainant to give compensation to the Respondent for having a filed a vexatious Complaint. After careful consideration of the submissions made by the parties, the Panel finds that the Complaint was not brought in bad faith and finds no abuse of the administrative proceeding by the Complainant. For the record, the Panel notes that even in cases of complaints which are found to have been brought in bad faith, the Panel has no power to direct a complainant to give compensation to a respondent.
8.1 The Panel has found that all of the requirements of paragraph 4(a) of the Policy have been proven by the Complainant. Accordingly, and for the purposes of paragraph 3(c) of the Policy, the Panel orders that the domain names verisignindia.com and verisignindia.net be transferred by NSI to the Complainant, VeriSign, Inc.
Philip N. Argy
Dated: November 16, 2000