WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Em@ilco International B.V. v. Erik Krols
Case No. D2000-1416
1. The Parties
The Complainant is Em@ilco International B.V., Koninging Wilhelminalaan 1, 3818 HN Amersfoort, The Netherlands, represented by Mrs. S. M. Kaak of Clifford Chance LLP, Amsterdam, The Netherlands ("Complainant").
The Respondent is Mr. Erik Krols, Lagos de Fanabé 1.029, Adeje Tenerife, Spain ("Respondent").
2. The Domain Name and Registrar
The dispute concerns the domain name "emailco.com".
The Registrar is Register.com, Inc., 575 8th Avenue, New York, NY 10018, USA.
3. Procedural History
The WIPO Arbitration and Mediation Center ("the Center") received the Complainant’s Complaint in electronic form on October 12, 2000, and in hard copy on October 17, 2000.
The Center verified that the complaint was filed in accordance with the requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules for the Policy ("the Rules"), and the Supplemental Rules for the Policy ("the Supplemental Rules").
Complainant made the required payment to the Center.
On October 20, 2000, the Center transmitted via e-mail to the Registrar a request for registrar verification in connection with this case. On October 25, 2000, the Registrar transmitted via facsimile to the Center, the Registrar’s Verification Response, confirming that (1) Register.com is the Registrar of the Domain Name, (2) Erik Krols (the Respondent) is the registrant, (3) Icodos SA / Peter van den Ackerveken is the Administrative, Technical and Zone Contact, (4) the Policy is applicable to the Domain Name, and (5) the Domain Name is in "Active" status.
On October 30, 2000, the Center received a first Amended Complaint in electronic form. On November 1, 2000, the Center received a second Amended Complaint in electronic form and in hard copy on November 7, 2000.
The formal date of the commencement of this administrative proceeding is November 7, 2000.
On November 7, 2000, the Center transmitted Notification of Complaint and Commencement of Administrative Proceeding, together with a copy of the Complaint, to the Respondent via e-mail and via post/courier to the address identified in the Registrar verification response. The Center advised that (1) the Respondent’s Response was due by November 26, 2000, (2) in the event of default the Center would still appoint a Panel to review the facts of the dispute and to decide the case, (3) the Panel may draw such inferences from the Respondent’s default as it considers appropriate, (4) the Complainant had elected for the matter to be decided by a single panelist.
The Respondent communicated with the Center via e-mail on November 10, 2000 and filed the Response via e-mail and fax on November 17, 2000. A hardcopy of the Response was received by the Center on November 20, 2000.
On November 30, 2000, in view of the Complainant’s designation of a single panelist the Center invited Mr. P-E Petter Rindforth to serve as a panelist.
Having received Mr. Rindforth’s Statement of Acceptance and Declaration of Impartiality and Independence, the Center, on December 5, 2000, transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Rindforth was formally appointed as the sole Panelist. The Projected Decision Date was December 19, 2000. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules.
Accordingly, the Administrative Panel shall issue its Decision based on the second Amended Complaint, the Response, the Policy, the Rules, and the Supplemental Rules. The case before the Panel was conducted in the English language.
4. Factual Background
The Complainant is the owner of the Benelux trademark registrations "EM@ILCO" (No 642 114, dated September 28, 1998) and "em@ilco" and device (No 638 189, dated October 20, 1998), for services in international classes 35 and 38.
The Complainant is also the owner of the word mark "EMAILCO", filed with the Benelux Trademark Office under registration No 967 921, dated June 30, 2000 for goods/services in classes 9, 35, 36, 37, 38 and 42, and has filed an application on August 1, 2000 for international registration (designating France, Spain, United Kingdom, Sweden and Germany) for the word mark "EMAILCO" under No B 1905. Finally, the Complainant is the holder of the domain name emailco.nl.
On July 6, 2000, the Complainant sent a letter to the company Lotuz Azul SA, as a Whois search indicated Lotuz Azul as the holder of the Domain Name, with the Respondent as the administrative contact. In the letter, the Complainant asked Lotuz Azul to transfer the Domain Name immediately. On July 11, 2000, the Respondent, in his capacity of director of Lotus Azul informed the Complainant that it wished to continue using the Domain Name and would not transfer the Domain Name to the Complainant with immediate effect.
The Complainant filed the first Complaint on October 3, 2000 – against Lotus Azul. The Respondent informed the Complainant on October 7, 2000 that the Domain Name had been transferred to another company, Icodos SA., which was also indicated by the Whois database of the Registrar. The Complainant filed a second Complaint, against Icodos SA on October 12, 2000. Upon receiving the Complaint against Icodos SA, the Registrar informed the Center that the right holder of the Domain Name is the Respondent.
The Respondent registered the Domain Name on March 29, 2000. The Respondent is an associate and co-partner of Icodos SA, a Spanish company registered on April 27, 2000. He is also the owner of the company Lotus Azul SA.
According to the Articles of Association of Icodos SA, the purposes of the said company are, among other, "activities related to networks and the Internet, their development and commissioning, and the creation and maintenance of web sites… Advice on e-mail business projects" (Annex 1 of the Response).
5. Parties’ Contentions
The Complainant contends that the trademarks EMAILCO and EM@ILCO are valid trademarks and subject to trademark protection, since the word ‘emailco’ is an invented word and does not represent a word which is found in an English language dictionary, and that the Domain Name is clearly identical with or confusingly (visually, aurally and conceptually) similar to the Complainant’s trademarks.
The Complainant also contends that the Respondent has not submitted any evidence that he has a right or legitimate interest in the Domain Name. The Respondent has never used the Domain Name in bona fide commerce and has never been commonly known under the Domain Name. Neither has the Respondent made any preparations to use the domain name, nor is he making a legitimate non-commercial or fair use of the domain name. The website under "www.emailco.com" has not been active and is still not active, but is offered for sale via GreatDomains.com. The Complainant further contends that it has not licensed or otherwise permitted the Respondent to use any of its trademarks, nor has it licensed or otherwise permitted the Respondent to apply for or use any domain name incorporating any of those trademarks.
The Complainant contends that the Domain Name is registered and used in bad faith, as it was not registered to be used for an active web site, but to be sold for a large amount of money. The Domain Name was listed for sale with GreatDomains.com on July 11, 2000, for the amount of $ 30 000, and Icodos SA (to which the Respondent is connected) offered the Complainant to buy the Domain Name on July 19, 2000, for the amount of EUR 55 000.
The Complainant refers to the Policy, as well as to Robert Ellenbogen v. Mike Pearson (Case No. D2000-0001), arguing that evidence of registration and use of a domain name in bad faith are that the holder of the domain name has "acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark… for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name" (Paragraph 4b(i) of the Policy). The case, as well as the Policy, shows that by soliciting offers through the GreatDomains.com web site and by requesting EUR 55 000 for the Domain Name, the Respondent has acted in bad faith.
Further, bad faith is proved by the fact that the Whois database contains incorrect information as to the identity of the registrant of the Domain Name and the Respondent also incorrectly changed the information in the Whois database immediately after the Complainant notified Lotus Azul SA and the Respondent (in his capacity as director of Lotus Azul SA) that it would file a Complaint. Register.com has confirmed to the Complainant and to the Center that the information in the Whois database can be independently amended by the registrant through a system called ‘my domain manager’.
The Respondent has used this possibility with the result that the information in the
Whois database was and is incorrect. Apparently, the Respondent, in co-operation with Lotus Azul SA and Icodos SA, changed the Whois information to deceive the
Complainant as to the identity of the registrant of the Domain Name so as to avoid legal proceedings.
The word "emailco" is a perfectly understandable combination of two common words, which can both be found in a dictionary. "Email" is well known in the whole world, even in the Spanish language, and "co" is the commonly used abbreviation for "company" in the English language and for "compañía" in the Spanish language.
At the time of registration of the Domain Name, the Respondent had never heard of a Dutch company or trademark named Em@ilco, which is obviously not a commonly known trademark. The domain names ‘emailco.net’, ‘emailco.co.uk’ and ‘emailco.co.za’ are all in possession of different companies or persons. The fact that the domain name "emailco" exists with lots of domain extensions emphasizes the argument that this domain name in question is a logical combination of two common words and that the trademark is not commonly known.
Even the fact that the Complainant’s website is only available in the Dutch language is an indication that Complainant only targets the Benelux market, and certainly not the international market.
The Complainant filed its Benelux and International word mark application several months after the Respondents registration of the Domain Name, and after six weeks of negotiations between the parties.
The Respondent states that one of the main purposes of Icodos SA is to advise other companies in their Internet projects by making use of email permission databases, a purpose stated in the Articles of Association of the company (Annex 1 of the Response).
As the Domain Name is the common abbreviation for the "Email Company", the Respondent has a legitimate interest in "emailco.com".
The Respondent and associates have also registered other e-mail related domain names, such as "emailcy.com", "pleasemailme.com", "emailmycoupon.com", proving the Respondent’s legitimate interest in the domain name.
The Respondent states that he has not been able to use the Domain Name, with reference to the pending dispute and the threat from the Complainant to claim damages if the Domain Name was used.
The Respondent denies that the Domain Name was registered in bad faith, as there was no international trademark registration at the time of the Domain Name registration, but only a Benelux device/sign mark, not commonly known.
The Respondent further states that the Domain Name has been registered for five years, which shows the Respondent’s interest of having a short and descriptive name that emphasizes Respondent’s email orientated practices. The purpose of the registration was therefore not to sell the Domain Name.
The Complainant made the first contact and offer to buy the Domain Name from the Respondent, offering 50 000 Guilders (EUR 25 000). The Respondent refused to accept the offer, as the estimated value and the Respondent’s interest in the Domain Name was greater than that. The counter offer of EUR 55 000 should be seen as a normal way of doing business, and the amount should be compared to the value of the Domain Name in respect of the future business plans for Icodos SA. The Domain Name was offered for sale via GreatDomains.com only as a way to use the escrow services of the said company / web site.
The Respondent refers to Manchester Airport PLC vs Club Club Limited (Case No D2000-0638) in which is stated that "selling a domain name is not prohibited by the…Policy…" , only "if the other elements of the…Policy are also violated, namely trademark infringement and lack of legitimate interest".
As to the ownership of the Domain Name, the Respondent explains that the Domain Name was to be owned by Icodos SA, but as this company was not yet registered on March 29, 2000, one of the co-founder – Mr Erik Krols – registered the Domain Name using his credit card (at that time a company card on Lotus Azul SA, also owned by the Respondent).
6. Discussion and Findings
According to Paragraph 4 (a) of the Policy, the Complainant must prove each of the following:
(i) that the Respondent’s Domain Name 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 is being used in bad faith.
1. Identical or Confusing Similarity
The Complainant refers to a number of trademark registrations/applications for EM@ILCO, however only two Benelux national registrations can be considered in this case – No 624 114 EM@ILCO and No 638 189 em@ilco and Device – as the other trademarks are still pending applications and/or filed/registered after March 29, 2000, (the date of the Respondent’s registration of the Domain Name).
According to the Certificate of Registration for No 638 189 (Annex 8 of the Complaint), the Device part (the letter Q, an envelope and circles/arrows) dominates the visual appearance of the mark and the word "em@ilco" only forms a minor part. Therefore, the Panel concludes that the said mark and the Domain Name may be similar, but is in doubt whether they are confusingly similar.
Regarding the Benelux registration No 624 114 EM@ILCO, the Panel however concludes that the Domain Name "emailco.com" is identical or almost identical to the said trademark.
2. No Rights or Legitimate Interest
The Respondent has no rights to use the Complainant’s trademark, and is not an authorized agent or licensee of the Complainant’s products, services or trademarks.
The Respondent has not proved that he has, before any notice to him of the dispute, used the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services. The Respondent has argued that the Domain Name was registered to be used for an e-mail service from the company Icodos SA., and that the Domain Name is "the common abbreviation for the ‘Email Company’". However, with the exception of the documented purpose of Icodos SA to "advice on e-mail business projects" in general (Annex 1 of the Response), the Respondent has not proved any demonstrable preparations to use the Domain Name, and the Panel has seen no documentation that the Respondent or his associated companies has or has planned to advertise as Emailco, the Email Company or similar.
The Respondent is not commonly known by the Domain Name, nor has he made any legitimate non-commercial fair use of the same.
The Panel therefore concludes that the Respondent has no rights or legitimate interests in respect of the Domain Name.
3. Registered and Used in Bad Faith
According to the Registrar, the Respondent and domain name holder in this case is Mr. Erik Krols. As confirmed by both the Complainant and the Respondent, Mr Krols is closely connected to the companies Lotus Azul SA and Icodos SA., both having appeared in the Registrar’s Whois database as the holders of the Domain Name.
The Complainant argues that the Respondent has used the Registrar’s "my domain manager" facilities in order to confuse and deceive the Complainant as to the identity of the holder of the Domain Name so as to evade legal proceedings. However, the Respondent has offered a plausible explanation why the Domain Name was registered in the Respondent’s name, using the company credit card of Lotus Azul SA and the later connection between the Respondent and Icodos SA. Therefore, the confusing official information from the Registrar’s Whois database may have delayed the process, but it seems that there are pure practical reasons behind and can, according to the Panel, not be taken as evidence of registration and use in bad faith.
The Respondent has argued that the Domain Name has been registered for five years (page 7 of the Response), however no documentation to prove that information has been submitted. Instead, all other documentation in this case – including arguments submitted by the Respondent (pages 5 and 8 of the Response) – states that the date of registration for the Domain Name is March 29, 2000.
The Respondent has argued that the Complainant made the first offer to buy the Domain Name for 50 000 Guilders (EUR 25 000). This information has however not been confirmed in any documentation available to the Panel. However, it is confirmed that the Respondent (through Icodos SA) offered to sell the Domain Name to the Complainant for EUR 55 000. At the same time, the Domain Name was offered for sale on the web site of GreatDomains.com. The Respondent sent a price fixing policy of the Domain Name, dated June or July 19, 2000, (the Complainant states July 19, whereas the document itself – according to Annex 13 of the Compalaint – is dated June 19, 2000). In the said document, the Respondent - referring to the price policy of GreatDomains.com - points out a number of reasons for the amount:
"it is a..com name – has the highest value… length of the name… commercial impact – what does the name say about the company behind it. I think that we may safely state that the name says it all. Because it aims already at a certain industry…"
The letter from the Respondent goes on arguing the value of a ".com" domain name for advertising and branding, etc. No reference whatsoever in the document is made to the value of the Domain Name for the specific business of the Respondent or his associated companies, other than as a domain name for sale.
The Respondent has stated that he has not been able to use the Domain Name, with reference to the pending dispute. The Panel concludes, however, that the Domain Name has in fact been used as it has been offered for sale, by a direct offer to the Complainant as well as by a general offer via GreatDomains.com. This use has continued throughout the negotiations and the dispute. It is proved, and not denied by the Respondent, that the Respondent - has offered to sell the Domain Name to the Complainant for an amount well in excess of the Respondent’s out-of-pocket costs directly related to the Domain Name.
The business of the Complainant is similar to the alleged business of Icodos SA (closely related to the Respondent), and the Respondent seems to have had knowledge of the e-mail service market, prior to the registration of the Domain Name.
The Panel therefore concludes that the Domain Name was registered primarily for the purpose of selling, renting, or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant. As stated by the Respondent, by referring to the Case No D2000-0638, selling of domain names is prohibited by the Policy if also the other elements – trademark infringement and lack of legitimate interest – are violated.
In light of the foregoing, the Panel concludes (a) that the Domain Name "emailco.com" is identical or confusingly similar to the Complainant’s registered trademark EM@ILCO, (b) that the Respondent has no rights or legitimate interests in respect of the Domain Name and (c) that the Respondent has registered and used the Domain Name in bad faith.
Therefore, pursuant to paragraphs 4 of the Policy and 15 of the Rules, the Panel orders that the Domain Name "emailco.com" be transferred to the Complainant, Em@ilco International B.V.
P-E Petter Rindforth
Dated: December 19, 2000