WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Laurence St. Ives v. Orgatech Ltd.
Case No. D2000-1588
1. The Parties
The Complainant is Mr. Laurence St. Ives, President of Western Lighting Industries Inc., trading as Orgatech Omegalux, of 3540 Valhalla Drive, Burbank, California 91505, United States of America. The Respondent is Orgatech Ltd., of Mailadmin, P.O. Box 41, St. Petersburg 191025, Russia.
2. The Domain Names and Registrar
The disputed domain name is "orgatech.com" and the registrar is Tucows.Com, Inc.
3. Procedural History
This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, in accordance with the Rules for the Policy, approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules for the Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").
The Complaint was received by the Center by email on November 17, 2000, and in hard copy on December 12, 2000. It was acknowledged on November 22, 2000. On November 24, 2000, registration details were sought from the registrar identified in the Complaint, Network Solutions, Inc. On November 30, 2000, Network Solutions Inc. informed the Center that it was not the registrar and that the registrar was Tucows.Com, Inc. On December 11, 2000, the Center notified the Complainant of this and of other respects in which the Complaint was deficient.
On December 12, 2000, registration details were sought from Tucows.Com, Inc. and on December 13 that registrar confirmed that the Respondent is the registrant of the disputed domain name; that the Policy applies by virtue of section 7 of the registration agreement, and that the domain has been put on "hold" pending the outcome of this dispute. On December 13, 2000, the Complainant submitted an amended Complaint by email and on December 18, 2000, in hardcopy. On December 13, 2000, the Center satisfied itself that the Complainant had complied with all formal requirements, including payment of the prescribed fee and formally notified the respondent by post/courier and email of the Complaint and of the commencement of this administrative proceeding and sent copies to the Complainant, the registrar and ICANN.
The last day specified in the notice for a response was January 1, 2001. On that day the response was received by the Center by email and on January 8, 2001 in hard copy. Receipt of the response was acknowledged by the Center on January 3, 2001.
On January 10, 2001 the Center appointed Alan L Limbury to serve as panelist, having received from Mr. Limbury a Statement of Acceptance and Declaration of Impartiality and Independence. That day the Center transmitted the case file to the panel and notified the parties of the projected decision date of January 24, 2001.
The language of the proceeding was English.
The panel is satisfied that the amended Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules; payment was properly made; the panel agrees with the Center’s assessment concerning the Complaint’s compliance with the formal requirements; the Complaint was properly notified in accordance with paragraph 2(a) of the Rules; the response was filed within the time provided in the Rules and the administrative panel was properly constituted.
4. Factual Background (uncontested facts)
The name ORGATECH was created in 1979, in England by the trademark owner, Laurence St. Ives, and was registered and used as a limited company name prior to use and registration in the USA. It has been used widely by the owner, for marketing office furniture, seating and organizational systems prior to its current use for lighting products.
The trade mark ORGATECH was registered on May 24, 1984, with the United States Patent and Trademark Office, Reg. No. 1,489,217 under international Class II for High Intensity Discharge Lights and Electric Uplighters, and Parts Thereof, and has been in constant business use since September 14,1984. The Trademark was (re)registered on January 25, 2000.
The Complainant has being using the domain name "orgatechomegalux.com" since 1998.
The Respondent, a web developer, is a former subdivision of a Saint-Petersburg publishing company Exponet (™ ) Ltd. On November 27, 2000, it became an independent limited liability company pursuant to a resolution of the St. Petersburg Chamber of Commerce.
On November 22, 2000, application was made to the Russian Agency for Patents and TradeMarks (Rospatent), Federal Institute of Industrial Property on behalf of the Respondent to register ORGATECH as a trademark in Russia.
5. Parties’ Contentions
The disputed domain name is identical to the registered trademark ORGATECH.
An attempt to register the dot com address "orgatech.com" was made by the trademark owner in 1999, and it was found that the name had been registered but was not in use, and was offered for sale. Being aware that a Uniform Domain Name Dispute Resolution Policy was proposed it was decided to wait until the resolution policy was operational to dispute and request transfer of the name. On researching the name to dispute the use we now find that it appears to be in use since July 2000. We advised them on Nov. 17, 2000. At that time the site was a complete copy of another site "exponet.com". We advised them of the Complaint on Nov 17, 2000. As at Dec 12th we are no longer able to get response from the sites "orgatech.com" or "exponet.com".
It is intended that the name shall be used for other products affiliated to the current company Orgatech Omegalux, and as the company is commonly known as Orgatech the use by another entity, who may not have a legitimate reason to be identified on the web by this invented name, is confusing, and prevents it's use by the trademark owner and user.
Instead of the required 3 arguments of the UDRP only the 1st argument has been formally proved by the Complainant. The other allegations, except for the first one, of the respected Complainant are not proved.
The Respondent’s pending trademark covers classes, which have nothing in common with the Complainant’s trademark, which covers one specific class and is not commonly nor widely known.
The Respondent is a web developer and offers browseable catalogue of Internet and developing Internet search facilities. The website of the Respondent is being used in good faith to offer bona fide services, namely unique navigation and email facilities.
Any common web modules of the website of the Respondent and of its former affiliate do not hide the fact that the Respondent’s website is a developed one and has unique content. It is clearly identified as to the sponsorship and contains clearly and visibly to every visitor the Respondent’s logo.
Also, the Respondent itself has the brand name «Orgatech» under which it has became commonly known to its customers, in particular through its use of the website "http://www.orgatech.com" even before the Registration of its corporate name «Orgatech».
We had no prior knowledge about the Complainant or his business. With all our sincere respect to the Complainant’s trademark and the Complainant's protectable rights, OrgaTech is a rather common business name; not associated with any specific entity alone; legitimately being used by many other entities in commerce.
Our pending trademark «OrgaTech» is based on general recognizability of what actually OrgaTech means. In Russian, it is an abbreviation of 2 words: Orga and Technique, which in combination means «office accessories», «office equipment»; and this meaning is clear to every customer of the Respondent as a close to generic word (close to what can be considered to be descriptive in trademark sphere terms).
E.g. «orgtechnica» is a word in Russian Language. It is also a brand name widely used in German speaking countries.
The domain "orgatech.com" already several years ago was in use by another entity, a German party, to which neither the Respondent nor the Complainant have any relation.
Geographically, the Respondent and the Complainant are located in different countries with relatively independent markets; the trademark of the Complainant and the pending trademark of the Respondent cover different classes; the Complainant and the Respondent are not competitors in any sphere; any confusion arising from the name is impossible from the point of view of the potential customer.
A website visitor has absolutely no reason to suppose any relationship between the Respondent and the Complainant. In principle, such a visitor could have a confusion of our website with the web site of the domain’s previous holder, but to the best of our knowledge, the latter does not have any rights in a trademark nor there was any dispute about it between us.
6. Discussion and Findings
To qualify for cancellation or transfer, a Complainant must prove each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Identity or confusing similarity
Virtual or essential identity is sufficient for the purposes of paragraph 4(a)(i) of the Policy. There is no dispute that the domain name is essentially identical to the Complainant’s trademark ORGATECH.
The panel finds the Complainant has established this element.
The Complainant has the burden of proving the absence of any rights or legitimate interests in the disputed domain name. The Complaint contends "there may not be a legitimate reason…" but puts forward no evidence or other contentions in this regard.
On the information before the panel, it appears the Respondent was formally incorporated and applied to register the trade mark ORGATECH only days after having been given notice of this dispute. Previously, as a division of another company, it had registered the disputed domain name in December 1999. Without more, there is no basis for drawing adverse conclusions from the timing of these events.
There is no reason to reject the Respondent’s assertion that it had no knowledge of the Complainant before this dispute, nor its explanation as to the significance of the disputed domain name in Russian and as to the initial similarities between the content of its site and that of the company of which it was formerly a division.
Under these circumstances the panel finds that the Complainant has not proved that the Respondent has no rights or interests in the disputed domain name.
Before leaving this topic the panel notes the Respondent’s contention that it has become known by the disputed domain name by reason of its use of that domain name for its web site. This panel does not interpret subparagraph 4(c)(ii) of the Policy as permitting legitimacy to be so demonstrated. Rather, the subparagraph requires a showing that the Respondent has been commonly known by the disputed domain name before registering the disputed domain name.
The Complainant has made no submissions on this issue and there is nothing before the panel to establish that the disputed domain name was registered or is being used by the Respondent in bad faith. The Complainant has failed to prove this element.
Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Complaint is dismissed.
Alan L Limbury
Dated: January 18, 2001