WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Open Systems Computing AS v. Alberto degli Alessandri
Case No. D2000-1393
1. The Parties
The Complainant is Open Systems Computing AS, Oslo, Norway.
The Respondent is Alberto degli Alessandri, Firenze, Italy.
2. The Domain Name and Registrar
The domain name at issue is "openit.com", which domain name is registered with Network Solutions, Inc., Herndon, Virginia, United States of America.
3. Procedural History
A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on October 16, 2000, and the signed original together with four copies was received by WIPO Center on October 20, 2000. The WIPO Center sent an Acknowledgment of Receipt to the Complainant on October 17, 2000.
On October 19, 2000, a Request for Registrar Verification was transmitted to the Registrar, NSI. On October 29, 2000, NSI confirmed by e-mail that NSI was in receipt of the Complaint sent to NSI by the Complainant, the domain name "openit.com" was registered with NSI and that the Respondent was the current registrant of the name. The Registrar also forwarded the requested WHOIS details, confirmed that the Uniform Domain Name Dispute Resolution Policy was in effect and stated that the domain name was in "Active" status.
The policy in effect at the time of the original registration of the domain name at issue was Network Solutions 5.0 Service Agreement. Effective January 1, 2000, NSI adopted the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, (the "Policy"). There is no evidence that the Respondent ever requested that the domain name at issue be deleted from the domain name database. Accordingly, the provisions of Policy bind the Respondent.
The assigned WIPO Center Case Administrator completed a Formal Requirements Compliance Checklist on October 30, 2000. The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules"), as approved by ICANN on October 24, 1999, (the "Uniform Rules"), and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999, (the "WIPO Supplemental Rules"). The required fees for a single-member Panel were paid on time and in the required amount by the Complainant.
No formal deficiencies having been recorded, on October 30, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, NSI and ICANN), setting a deadline of November 18, by which the Respondent could file a Response to the Complaint.
The WIPO Center and the Respondent had some exchange of e-mails concerning how to file a response.
On November 18, 2000, the WIPO Center received the Response.
On November 28, 2000, in view of the Complainantís designation of a single panelist, the WIPO Center invited Mr. Knud Wallberg to serve as a panelist in the Case, and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence.
Having received on the same day, Mr. Knud Wallbergís Statement of Acceptance and Declaration of Impartiality and Independence, on November 28, 2000, the WIPO Center transmitted to the parties a Notification of Appointment of the Administrative Panel. The Projected Decision Date was set to December 12, 2000. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and WIPO Supplemental Rules.
The Administrative Panel shall issue its Decision based on the Complaint, the Response, the partiesí Agreement, the Policy, the Uniform Rules and the WIPO Supplemental Rules.
4. Factual Background
4.1 The Complainant and its Registered Trademarks
Open Systems Computing AS is a Norwegian based company who has a wholly owned subsidiary Open iT, Inc. The company offers a wide range of services on computer hardware and software to other businesses.
Complainant is the holder of a pending US application for the trademark OPEN IT and has used the said mark since January 1999.
4.2 The Respondent
There has been submitted no details about the Respondents business. The respondent registered the domain name in question in 1997.
5. Partiesí Contentions
The Complaint is based on the following grounds:
The domain name openit.com is identical to the trademark Open iT, a common-law and pending registered trademark owned and used by Open Systems Computing AS and its wholly owned subsidiary Open iT, Inc., in commerce since January 1999.
The Respondent should be considered as having no rights or legitimate interests in respect of the domain name openit.com because before any notice to the domain name registrant of the dispute, there is no evidence of the registrant'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 of goods or services, and the domain name registrant (as an individual, business, or other organization) has not been commonly known by the domain name, even if the registrant has acquired no trademark or service mark rights.
The domain name openit.com should be considered as having been registered
and used in bad faith because the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of that Complainant, for valuable consideration in excess of the domain name registrant's out-of-pocket costs directly related to the domain name.
In the case in issue, the Complainantís registered trademark cannot be considered confusingly similar to the Respondentís domain name, given that the Complainant and Respondent are engaged in entirely different industries (and indeed, the Respondentís proposed use of "openit.com" was also in connection with a business entirely unconnected with that of the Complainant).
Furthermore, even in case that the Complainant has established such rights, the Respondent outlines that these rights have accrued only in connection with the specific goods and services traded by the Complainant. Therefore, it is evident that the Complainant does not have any unregistered rights in the trademark OpenIt to use against the Respondent.
In this regard the Complainant assumes he is proprietor of a renowned brand, which in fact is not, as indeed the Respondent had never heard of the Complainant prior to its approach to purchase the "openit.com" domain name.
It is evident that there is no apparent basis for finding that users of the Internet or consumers will have confusion in distinguishing between the Complainant and the Respondent and their respective goods and services. Respondentís business, proposed by means of the domain name in issue, is rather different from Complainantís line of business.
The Complainant affirms that the Respondent has registered the domain name solely for the purposes of selling it. On the contrary the domain name was acquired so as to reflect in a domain name the name of the business which the Respondent was developing.
The Respondent has never contacted the Complainant to sell the domain name in issue; on the contrary, the Complainant tried to offer the purchase of the domain name several times.
It is further denied that there is no evidence of the registrantís use before the dispute; in fact the Respondent is currently using the domain name in issue and as of today the Respondent has also underwritten a number of agreements as OPENIT with other companies such as EuroGroup Ltd. and Abmedia S.r.l.
Assuming that the Respondent was not currently using the domain name "openit.com", it would not imply that Respondent has no rights and legitimate interests in respect to it. It is not a requirement, under the terms and conditions of the Registration Agreement, to make an active use of the domain name registered. By registering the domain name, Respondent is reserving a web space and creating the right of using it.
The Respondent did not acquire the domain name "primarily" for selling, renting or otherwise transferring the domain name to the Complainant or to a competitor of the Complainant; the sole purpose of the Respondent in acquiring "openit.com" domain name was in order to operate a legitimate business under such name.
The Respondentís approach to domain name acquisition is based upon, first, developing a business concept, identifying a brand, acquiring a corresponding domain name and developing a business under that name.
In this respect it must pointed out that the choice of the domain name OPENIT reflects the Respondentís intention to attract consumers evoking the possibility to have access in the Italian market ("IT", as known, means Italy).
Moreover, the Respondent is not attempting to attract for commercial gain Complainant's Internet customers to his web site or other on-line location. The Complainant and the Respondent are not competitors and the domain name was not registered by the Respondent primarily to disrupt Complainantís business.
Complainant therefore fails to give evidence and have no arguments to accuse the Respondent of having registered and using the domain name in bad faith.
Further confirmation of the aforesaid is that before the Respondent received any notice of dispute, there is evidence of 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.
Finally the Respondent has registered the domain name before the incorporation of the Complainant and, consequently, the registration of the trademark OpenIt.
6. Discussion and Findings
According to Paragraph 15 (a) of the Rules the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
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 legitimate interests in respects of the domain name; and
(iii) that domain name has been registered and used in bad faith.
Similarity to Complainantís mark
The domain name "openit.com" is identical to the pending US-trademark OPEN IT and the company name Open iT, Inc. except for the addition of .com. Complainant has not furnished proof of the actual use of the mark. The Panel wants to stress that the test under 4(a)(i) is not a test of "risk of confusion" as this principle is known and applied under trademark law. Even though the two parties operate in different business sectors article 4(a)(i) may still apply, cf. WIPO Case D2000-0104 "e-auto.com" et. al.
Respondents rights or legitimate interests
The Respondent has not proven that he has any legally protected rights in support of the domain name. Respondent mentions in the Response that they had a business plan for the OPENIT-site at the time of registration of the name and that they have made agreements with other companies concerning use of the domain name. However, Respondent has not furnished any evidence in support of this claim, so the Panel cannot base its decision on the assumption that Respondent has a legitimate interest in the domain name.
The prerequisites in the Policy, Paragraph 4(a)(i) and (ii) are therefore fulfilled.
Registration and use in bad faith
Paragraph 4(a)(iii) of the Policy further provides registration and use in bad faith.
It is uncontested that the domain name was registered in 1997, i.e. before the application and commencement of use of the trademark OpenIt. This is in itself an indication that bad faith is not present, cf. WIPO Case D2000-0005 "telaxis.com". In addition, the trademark has apparently only been used in the US and no evidence has been furnished to prove that the mark is well known or just known in other countries including in the home country of the Registrant (Respondent). From the facts of the case is seems clear that it was the Complainant who approached Respondent and asked to sell the domain name. The fact that when approached by someone you are in principle willing to discuss sale of a domain name does not in itself constitute bad faith, cf. WIPO Case C2000-0089 "pacificplate.com" et. al.
On this background the Panel finds that it has not been established that the domain name has been registered and is being used in bad faith.
The Complainant has requested transfer of the domain name.
In view of the above circumstances and facts the Panel decides, that the domain name registered by Respondent is identical to the trademark mark in which the Complainant has rights. The Respondent has not demonstrated to have any rights or legitimate interests in respect of the domain name. However, there is no proof that the Respondent has registered or used the domain name in bad faith.
Accordingly, the Panel denies the request that the registration of the domain name "openit.com" be transferred to the Complainant.
Dated: December 11, 2000