WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CzechInvest v. ISS s.r.o.
Case No. 2000-1590
1. The Parties
The Complaint is CzechInvest, Štepánská 15, 120 00 Prague 2, Czech Republic.
The Respondent is ISS s.r.o., Primátorská 40, 80 00 Prague 8, Czech Republic (new address), Na Truhlářce 4, 1800 00 Prague 8, Czech Republic (old address).
2. The Domain Name and Registrar
The Domain Name that is the subject of this Complaint is < czechinvest.com >.
The Registrar of this domain name is Networks Solutions, Inc.(NSI), 505 Huntmar Park Drive, Herndorn, VA 20170, USA.
3. Procedural History
The WIPO Arbitration and Mediation Center [the Center] received the Complaint on November 17, 2000 by email and on December 4, 2000 in hard copy.
The Center transmitted an acknowledgement of receipt on November 22, 2000 and obtained Registrar’s verification on November 29, 2000 stating that the Registrant of this Domain Name was ISS, the administrative and billing contact was Machacek Jan, ISS, Na Truhlarce 8, Prague 8, Czech Republic and technical and zone contact Klien Eric, Colossus, Inc., Box 2647, Minden, NV 89423. Having checked the Complaint and after receiving confirmation from Complainant that Respondent as stated in the Complaint "ISS s.r.o." is the same entity as "ISS", the Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy [the Policy], the Rules of Uniform Domain Name Dispute Resolution Policy [the Rules] and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy [the Supplemental Rules].
The Complainant made the required payment of USD 1,500 by a direct bank transfer. On December 13, 2000 the Center transmitted the Notification of Complaint and Commencement of this administrative proceeding. Having received no response from the Respondent within the time set in the Notification of Complaint, on January 3, 2001, the Center issued a Notification of Respondent Default.
In accordance with Paragraph 6(f) of the Rules, the Center on January 24, 2001 transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date in which the parties were notified that an Administrative Panel had been appointed, consisting of a single member, Dr. Aleš VOKÁLEK and that in accordance with Paragraph 7 of the Rules the above Panelist had submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center.
Absent exceptional circumstances, the Administrative Panel has been required to forward its decision to the Center by February 6, 2001, in accordance with Rules, Paragraph 15.
4. Factual Background
The Complainant asserted and provided evidence in support of, and the Administrative Panel finds established, the followings facts.
The Complainant is the Czech Agency for foreign investment, established by Resolution No. 786/1992 of the Minister of Industry and Trade of the Czech Republic November 1, 1992, and on the basis of the Statute of this Agency, the Complainant is using the business name CzechInvest.
On October 5, 1994 the Complainant filed a Trademark Application for "CzechInvest" with the Industrial Property Office of the Czech Republic. On the strength of this application, the combined Trademark "CzechInvest" was registered on January 2, 1997 under registration number No 196 151, with the priority date October 5, 1994. In June 1997 the "CzechInvest" Trademark was registered internationally under the registration No. 674 030 with the World Intellectual Property Organization.
Complainant’s Web site
In 1997 Complainant commissioned the Respondent - ISS s.r.o. to establish for him the web site <www.czechinvest.com>. According to Factual and Legal Grounds included in the Complaint, the Complainant was informed by Respondent, that the Complainant - CzechInvest was registered as owner of this domain name, while the Respondent - ISS was registered as the technical contact.
Later on in 1999 the Complainant discovered that the website <www.czechinvest.com> was not owned by CzechInvest but by ISS, who had previously informed the Complainant that ISS was registered only as the technical contact.
Complainant asked the Respondent to transfer this domain name to CzechInvest, but the Respondent refused. Therefore the Complainant set up a new web site at <www.czechinvest.org>.
The Complainant was using the domain name < czechinvest.com > since 1997 and this name was found on his printed business materials. He pleads injured not only in connection with this fact but also that it is disruptive to his normal business operation and that many potential clients have been lost. According to his opinion the Czech Republic is also losing many potential investors as they are unable to contact the national investment promotion agency via the Internet.
5. Parties' Contentions
Complainant contends that the Respondent’s Domain Name <czechinvest.com> is identical or confusingly similar to Complainant's registered Trademark "CzechInvest", that Respondent has no rights or legitimate interests in respect of this Domain Name and that such Domain Name was registered and is being used in bad faith.
A number of arguments are developed by Complainant, as summarized in Section 4 above, and evidence has been filed in support of these arguments.
Consequently, Complainant requests transfer of this Domain Name to Complainant.
Respondent did not submit a response within the fixed period.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets out the three elements which must be present for a proceeding to be brought against the Respondent, and which the Complainant must prove to obtain a remedy.
The Complainant must prove each the following:
(i) that Respondent's domain name is identical or confusingly similar to a trademark 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.
Identity or confusingly similarity of Domain Name and Trademark
Complainant has filed copies of decision of Industrial Property Office of the Czech Republic, dated January 2, 1997 on registration of the combined Trademark "CzechInvest" No 196 151 with the priority date October 5, 1994.
The Respondent registered in 1997 the Domain Name <czechinvest.com>. The addition "com" does not serve to identify a specific enterprise as a source of goods or services. The decisive "czechinvest" portion of this Domain Name is as a word identical to Complainant's trademark "CzechInvest". In examining "confusingly similarity", it is not relevant that some letters in the trademark "CzechInvest" are in lowercase and that others are in uppercase (whereas the domain name is only in lowercase) and that this Trademark includes the picture element. The decisive factor is that the word element in the Complainant’s trademark, "CzechInvest", is wholly incorporated in the domain name.
Therefore, Panel finds that requirement of the Policy paragraph 4(a)(i) is satisfied.
Rights or legitimate interests in respect of the domain name
Paragraph 4(c) of the Policy identifies circumstances which, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all the evidence presented, shall demonstrate the Respondent's rights or legitimate interests to the domain name for purpose of Paragraph 4(a)(ii).
Having received no response from the Respondent within the time set in the Notification of Complaint, the Panel is of the opinion that the Respondent has not provided evidence of circumstances of the type specified in Paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interests in the domain name.
According to Paragraph 5(e) of the Rules, if a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
For these reasons the Panel is of the opinion that the Respondent has no rights to or legitimate interests in respect of the domain name <czechinvest.com>.
Domain Name Registered and Used in Bad Faith
For the purposes of Paragraph 4(a)(iii), 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 domain name in bad faith:
(i) circumstances indicating that domain name has been registered or acquired by Respondent primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of Respondent documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) Respondent by using the domain name has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as the source, sponsorship, affiliation, or endorsement of Respondent's web site or location of a product or service on its web site or location.
Respondent registered the disputed domain name on the basis of Complainant's order to establish the web site at <www.czechinvest.com>. Complainant was falsely informed by Respondent that CzechInvest was the registered owner of this domain name, while Respondent was registered as the technical contact.
On the occasion of expanding of Complainant's web site through other consulting firm, Complainant discovered that the owner of the original domain name was not registered as CzechInvest, but ISS- the Respondent.
Instead of registring the domain name <czechinvest.com> in the name of Complainant, who commissioned him, the Respondent registered it in his own name. Moreover, the wording "czechinvest" is confusingly similar to the Complainant's trademark "CzechInvest" and corresponds to the name of Complainant's organization established by the Czech Ministry of Industry & Trade in 1992. The Panel determines that these activities by the Respondent constitute bad faith within the meaning of Paragraph 4(a)(iii) of the Policy.
The Panel decides that the Complainant has proved each of the three elements in Paragraph 4(a) of the Policy. Accordingly, the Panel requires that the registration of the Domain Name <czechinvest.com> be transferred to the Complainant, CzechInvest.
Dated: February 5, 2001