WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DeRisk IT Ltd v DeRisk IT, Inc.
Case No. D2000-1288
1. The Parties
The Complainant is DeRisk IT Ltd of Marlborough House, 2 Chesil Street, Winchester, Hampshire, SO23 0HU, United Kingdom.
The Respondent is DeRisk IT, Inc. of 50 Featherbed Lane, Flemington, New Jersey, 08822, United States of America.
2. The Domain Names and Registrar
The domain names to which this dispute relates are derisk-it.com, derisk-it.net and derisk-it.org. The Registrar for all three of these domain names is TUCOWS.com, Inc.
3. Procedural History
The Complaint in this administrative proceeding was submitted for determination pursuant to the Uniform Domain Name Dispute Resolution Policy approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (Policy) and in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (Rules) and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy, adopted by the World Intellectual Property Organization (WIPO) effective from December 1, 1999 (Supplemental Rules).
The Complaint was received by the WIPO Arbitration and Mediation Center (Center) by email on September 29, 2000 and by regular United States mail on October 3, 2000.
The Center forwarded a request for Registrar Verification to TUCOWS.com on October 3, 2000. The Registrar replied to the Centerís request on October 5, 2000 verifying that:
(a) it had received a copy of the Complaint from the Complainant as required by paragraph 4(b) of the Supplemental Rules;
(b) TUCOWS.com, Inc is the Registrar for the domain names in dispute;
(c) the Respondent is the current registrant of the domain names in dispute;
(d) the Respondentís full contact details;
(e) the Policy is applicable in relation to the disputed domain names; and
(f) the disputed domain names are currently active, but "on hold", to ensure no change of ownership or registrar for the duration of the dispute.
The Center sent its Notification of Complaint and Commencement of Administrative Proceeding to the Respondent on October 6, 2000.
The Respondent sent its Response to the Center by email on October 16, 2000 and by hard copy on October 18, 2000.
The Center reviewed the Response and issued a Response Deficiency Notification to the Respondent on October 20, 2000 requesting a remedy by October 25, 2000 of the following deficiencies:
(a) The Response was not submitted in electronic format as required by paragraph 5(b) of the Rules; and
(b) The Response did not contain the full statement specified in paragraph 5(b)(viii) of the Rules; and
(c) The Response had not been signed by the Respondent or its authorized representative, as required by paragraph 5(b)(viii) of the Rules.
The Respondent sent an email to the Center on October 20, 2000 claiming that it was unaware of the requirements of paragraph 5(b)(viii) of the Rules, in particular the statement which needed to be included in the Response.
The Panel notes that no further correspondence is contained in the Case File relating to the Response Deficiency Notification.
The Center sent a Notification of Appointment of Administrative Panel and Projected Decision Date to the Complainant and the Respondent on November 9, 2000 which formally appointed Philip Argy as the sole panelist.
The Center sent by email a Transmission of Case File to the Panel, Complainant and Respondent on November 9, 2000. The hard copy was sent on November 11, 2000 and received by the Panel on November 13, 2000.
4. Factual Background
The Complainant was incorporated as a limited liability company under the laws of the United Kingdom on November 22, 1999. According to its business plan it was set up to consult with businesses who are setting up new computer and information technology software or systems. The stated objective of its consultancy services is to mitigate against the inherent risks involved in system and software implementation and integration. Consulting broadly in the field of computer software and systems, the Complainant advises business organisations on whether a new or changed system is appropriate for its intended application and how it will perform and integrate, prior to deployment.
The Complainant does business under the name DeRisk IT Ltd and operates under the trade and service mark "DERISK IT". The evidence presented to the Panel by the Complainant does not establish whether the Complainant has registered this trade and service mark. Accordingly the Panel has drawn the inference from the absence of definitive evidence from the Complainant as to this point and the Respondentís contention (as part 3.7 of the Response) that the Complainant had not as at July 6, 2000 registered the mark, that the Complainant had not registered the mark at the time in question.
While the Complainantís registered business premises are located in the United Kingdom and initial customer contact was European-based, on April 15, 2000 the Complainant created its Internet website located at http://www.deriskit.com. This provided global exposure for the Complainantís business.
By May 2000 the Complainant was conducting its business, about which time one of its principals, Mr Ken Veitch, had discussions about the specifics of the business with a principal of the Respondent, Mr Nigel Powell. Annex C to the Complaint evidences a confidential disclosure agreement executed by both these persons on or about May 25, 2000 in relation to earlier discussions about the Complainantís documents, processes and procedures.
The Respondent was incorporated under the laws of Delaware, USA and maintains its principal operations in the United States of America. Its business name is DeRisk IT, Inc. It is the registered trade and service mark owner of "DERISK IT" in the United States of America. The Respondent first used its mark in business trading on June 29, 2000 and thereafter registered the mark on July 6, 2000.
On July 12, 2000 the Respondent filed a trademark application of the domain names in dispute and presently promotes its business via the Internet website http://www.derisk-it.com (and .net and .org suffix variations).
The Respondent offers information technology (IT) testing and computer system consultancy to all types of commercial companies and business structures. The stated objective of the Respondentís business is to eliminate risks in the integration processes that lead up to implementation of computer software and systems. By its IT testing methods, the Respondent demonstrates exactly how a system will perform and integrate prior to deployment.
The Panel regards the business activities of the Respondent as identical in substance to those of the Complainant. According to the evidence of both parties, the similarity of business activities is not contested.
5. Partiesí Contentions
The Panel notes that at part 11 of the Complaint there is specific reference to the grounds set out in paragraph 4(a) of the Policy. In part 12 of the Complaint the Complainant asserts that these three requirements are met by the following facts:
That the Respondent is using a corporate name, trade name, service mark and Internet website address that is confusingly similar to those of the Complainant and is copying content from the Complainantís Internet website with an intention to attract financial gain by creating a likelihood of confusion amongst Internet users as to the source, sponsorship, affiliation or endorsement of its Internet website and services there offered;
That the Complainant is the senior user of the trade name and service mark "DERISK IT" and as such has rights in this trade name and service mark in certain parts of the world, including, but not limited to, the United Kingdom and the United States of America, which are superior to those of the Respondent; and
That the Respondent has registered and is using the disputed domain names in bad faith, in that the Respondent has registered and is using the disputed domain names primarily in connection with an intentional and improper attempt to pre-empt the Complainantís entry into the United States market and, in so doing, is disrupting the Complainantís business plan.
In relation to the Complainantís assertions, the Respondent answers each as follows:
(a) The Respondent does not intend to do business in Europe and that its business plans relate only to the United States of America (and associated countries as listed in parts 3.10 and 4.1 of the Response). In view of this the Respondent has registered the trade and service mark "DERISK IT" within the United States only. The Respondent states that it chose not to register the mark in the rest of the world. Furthermore the Respondent claims that it was already in business before contact and meetings with the Complainant and that it was always open with the Complainant about its intention to do business in the United States.
(b) The Respondent does not specifically address the assertion of the domain names being confusingly similar to the Complainantís corporate name, trade name, service mark and Internet website address, but does offer an analogous example on the World Wide Web where two similar domain name sites operate side-by-side without adverse interaction. The Respondent cites http://www.softwarelab.com and http://www.software-lab.com as its example. As for copying of the Complainantís Internet website content, the Respondent says that the Complainant has itself taken content from another Internet website and that the Respondentís Internet website is based on common IT technical terms developed using Microsoft FrontPage 4.0, whereas the Complainant has used Microsoft FrontPage 3.0.
(c) The Respondent contends that it is not using the domain names in bad faith as they are part of a business process which is operating with a valid connecting United States of America registered trade mark.
6. Discussion and Findings
Paragraph 15(a) of the Rules directs the Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable".
The onus is on the Complainant, under paragraph 4(a) of the Policy, to prove:
(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 interests in respect of the domain name; and
(c) that the domain name has been registered and is being used in bad faith.
Domain names identical or confusingly similar to Complainantís marks
The Complainantís trade and service mark DERISK IT and the Respondentís three domain names in issue are, for all intents and purposes, identical. The addition of the suffixes .com, .org and .net to the domain names is of no consequence in terms of differentiation. The Complainantís DERISK IT mark and trade name is visually and orally the same as the domain names derisk-it.com, derisk-it.org and derisk-it.net.
In the opinion of the Panel, the addition of the hyphen ("-") fails to alleviate the confusing similarity and accordingly the Complainant satisfies the requirements of paragraph 4(a)(i) of the Policy.
Respondent has no rights or legitimate interests in the disputed domain names
Paragraph 4(c) of the Policy provides a non-exhaustive collection of circumstances which, if found by the Panel to be proved on a review of all the facts and evidence presented, will suffice to demonstrate a Respondentís legitimate interest in a domain name for the purposes of paragraph 4(a)(ii) of the Policy. These circumstances are that:
1. before any notice to the Respondent of the dispute, the Respondentís 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 of goods or services; or
2. the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
3. the Respondent is making a legitimate non commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Use of disputed domain names in connection with bona fide offering of goods or services
The Complainant first put the Respondent on notice of the domain names dispute on September 29, 2000, by forwarding a copy of the Complaint. While the Rules prescribe that the Center alone is to forward the Complaint to the Respondent after review and approval, for the purposes of determining the date of notice, September 29, 2000 remains the relevant date.
The Complainant registered its domain names (deriskit.com, deriskit.org and deriskit.net) on April 15, 2000, whereas the Respondent registered the disputed domain names on July 12, 2000. By the Respondentís own admission (at part 3.8 of the Response) it was aware of the launch of the Complainantís Internet website "sometime in May 2000" and one of its principals, namely Mr Nick Powell, had had discussions with a principal of the Complainant, Mr Ken Veitch, on or about May 25, 2000 in relation to the Complainantís documents, processes and procedures, as evidenced by the confidential disclosure agreement (Annex C to the Complaint).
The Complainantís case is that the Respondent did not use or make any demonstrable preparations to use any of the disputed domain names in connection with a bona fide offering of goods and services until it was placed on notice of the Complainantís registered domain names and service mark.
In the Panelís estimation, although the Respondent has been using the disputed domain names in connection with an offering of services, the Respondentís offering is not in good faith. The evidence shows that the Respondent was aware of the Complainantís business specifics at the very least by execution of the confidential disclosure agreement on May 25, 2000 (see Annex C to the Complaint) and was aware generally of the use of the Complainantís domain names in May 2000 (according to part 3.8 of the Response). The offering of services in connection with the disputed domain names by the Respondent is in bad faith. It is based on a business strategy which has been appropriated by the Respondent from discussions with the Complainant with a view to the Respondent cornering the Complainantís market in the United States.
Accordingly the mitigating circumstances in paragraph 4(c)(i) of the Policy are not present.
Commonly known by the domain name
It is the opinion of the Panel, based on a determination of the "relevance, materiality and weight of the evidence" before it in accordance with paragraph 10(d) of the Rules, that the Respondent is not commonly known by the disputed domain names. On account of the earlier (April 15, 2000 as opposed to July 12, 2000) registration of domain names, which for all intents and purposes are identical to the disputed domain names, by the Complainant and the Respondentís admission that all of its business to date has been derived through "cold calling companies" (see part 3.10 of the Response) and not its Internet website, the Respondent fails to satisfy paragraph 4(c)(ii) of the Policy.
Legitimate non-commercial or fair use of the domain name
According to the evidence before the Panel, there is nothing to suggest otherwise than that the Respondentís business relating to the disputed domain names is purely for its commercial advantage and gain. Therefore the Respondent does not come within the circumstances contemplated by paragraph 4(c)(iii) of the Policy
In summary, on the evidence the Panel has before it, the Panel finds that the Respondent did not as at July 12, 2000, and does not now have any right or legitimate interest in the domain names in dispute.
Domain name has been registered and is being used in bad faith
Paragraph 4(b) of the Policy sets out some circumstances which, if found to be present by the Panel, are evidence of the registration and use of the name in bad faith. These circumstances are non-exhaustive. The Panel considers circumstances (ii) to (iv) inclusive to be relevant to the issues in this dispute.
Registering a domain name to prevent the owner of a trade or service mark from reflecting the mark in a corresponding domain name
There is some conflict in the evidence as presented by each party as to ownership and seniority of rights in the trade and service mark "DERISK IT". The facts are, however, that the Complainant was "doing business under" the corporate name "DERISK IT" and using the "trade name and service mark "DERISK IT" from 22 November 1999" (at part 12 of the Complaint). This is not contested by the Respondent. Accordingly from this time the Complainant had enforceable Common Law rights associated with the trade and service mark "DERISK IT". The Respondent emphasises that it had formally registered the mark, "DERISK IT", for the service of computer consultancy in the United States on 6 July 2000 (see the registration notification at Annex D to the Complaint). This does not lessen the seniority of the Complainantís rights in this mark. Clearly, on July 12, 2000, when the Respondent registered the disputed domain names, the Complainant had rights of ownership associated with the mark reflected in the disputed domain names. It follows that the basis for deemed bad faith as set out in paragraph 4(b)(ii) of the Policy is made out.
The Panel stresses that determination of the issues of trade or service mark rights and possible infringement is outside the scope of its jurisdiction. It appears from the evidence presented in the Case File that at times the parties have confused this issue with the domain name dispute which is properly the subject of this administrative proceeding.
Registering a domain name primarily for the purpose of disrupting the business of a competitor
The Panel finds that the evidence satisfies the grounds for bad faith as set out in paragraph 4(b)(iii) of the Policy for the following reasons:
- The Respondent was privy both to the specific business plans of the Complainant at the very least by May 25, 2000 (as set out in the confidential disclosure agreement - Annex C to the Complaint) and to the domain name use by the Complainant of deriskit.com (.org and .net) as early as May 2000 (see part 3.8 of the Response).
- There is no evidence suggesting that the Complainant was to confine its business to Europe, as is contested by the Respondent, and, at any rate, the Respondent admits that it would undertake work in Europe "if specifically asked to by a company we [the Respondent] are currently working with" (see part 3.1 of the Response).
- There is no sign-post or other notice on the Respondentís Internet website differentiating it from the Complainantís business. In fact the Respondent draws attention to this by including a provision in its "Proposed Resolution" (see part 4 of the Response) seeking such a measure.
From the foregoing the Panel concludes that the Respondent was aware of the Complainantís business (which was not expressly to be restricted to the European market) prior to its registration of the confusingly similar disputed domain names (on July 12, 2000). Moreover its primary purpose in registering the disputed domain names, chosen when the Respondent found deriskit.com (.org and .net) had been taken (see part 2.3 of the Response) was to disrupt the Complainantís business and exposure in the United States computer consultancy market.
Intentionally attempting to attract, for commercial gain, Internet users by creating a likelihood of confusion as to affiliation between websites
As discussed in the previous section, the Respondent has no sign-posts or notices on its Internet website differentiating its business from that of the Complainant, despite the Complainant, to the knowledge of the Respondent, having commenced its business and registered its domain names prior to the Respondent.
While the evidence is conflicting, the intention of the Respondent in attempting to attract Internet users can be inferred from its prior knowledge of the Complainantís Internet website in May 2000 (as admitted at part 3.8 of the Response).
The commercial gain to be derived by the Respondent in attracting Internet users and customers is apparent. The Respondent nowhere denies that it is a commercial enterprise.
The likelihood of confusion is established quite readily by the abundant similarities between the parties. They share almost identical trade names, they provide computer consultancy services and the domain names are aurally identical and virtually orally identical. With no sign-post or notice differentiating the two businesses on the Respondentís Internet website, the likelihood of confusion is high.
The most potent evidence of bad faith exhibited by the Respondent is found in its coding of keywords in the metatags for its Internet website. A comparison of the metatags (see Annexes I-1 and I-2 to the Complaint) for the Complainant and the Respondent reveals striking similarities and incongruencies. These are:
- Other than changing "UK" to "USA", adding several extra metatag keywords (such as "test, testing, test tool, test tools") and including its own contact and principalsí names (for example, "Nigel Powell") in place of those for the Complainant, the Respondent has copied the Complainantís keyword metatags word for word and in the very same order;
- Curiously, the Respondentís copying of keywords has included the words "Euro", "EMU"and "European Monetary Unit". These Eurocentric inclusions appear to contradict the Respondentís stated intention (at part 3.1 of the Response) not "to do business in Europe"; and
- The Respondent has even gone so far as to copy the keyword "XXX" - a keyword which is in no way referable to computer consultancy, but is found in the Complainantís metatag keywords; and
- The Respondent has included the keyword "deriskit" - the Complainantís domain name. This is a blatant attempt by the Respondent to lure those searching the web away from the Complainantís Internet website to its own.
Accordingly the evidence establishes the grounds of bad faith on the part of the Respondent in registering and using the disputed domain names as set out in paragraph 4(b)(iv) of the Policy.
Additional points to note
The Panel also makes the following general remarks about this matter:
- Both Complainant and Respondent appear at times in the Complaint and Response respectively to confuse the issue properly the subject of this administrative proceeding - namely, a dispute as to domain name registration - with arguments based on allegations of breach of confidence, breach of copyright, passing off and breach of trade mark. The evidence relating to these matters has largely been ignored except to the extent to which it bears on the issue of the Respondentís bona fides.
- No weight was given to spurious evidence put forward by either party. The Panel particularly has in mind the evidence relating to a supposed phone call from a Chase Manhattan Bank employee on the evening of September 27, 2000. Such evidence, which cannot be proved by any independent means, does little to assist in discerning the issues to be resolved and should be viewed with extreme caution.
- Both parties placed particular emphasis on perceived Ďcopyingí by the other of content from other Internet websites onto their own respective Internet websites. Again such an issue is properly one to be determined in terms of copyright law and is outside the ambit of this administrative proceeding. The Panel does note, however, that the assertion by the Respondent (at part 3.9 of the Response) that the Complainant had copied content onto its Internet website from www.software-lab.com is curious as, according to the whois information for this latter website, the registrant is Mr Ken Veitch, a principal of the Complainant.
- The Panel finds that the evidence evinces more than just a sense of disingenuity on the part of the Respondent. The evidence points quite strongly to the Respondentís bad faith in the establishment of its computer consultancy business and accompanying use of the disputed domain names.
The Panel finds 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 derisk-it.com, derisk-it.org and derisk-it.net be transferred by the Registrar to the Complainant.
Philip N. Argy
Dated: December 3, 2000