WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Schott Glas and Nec/Schott Components Corp. v. Necschott
Case No. D2001-0127
1. The Parties
The Complainant is Schott Glas of Hattenbergstrasse 10, Mainz, Germany ("Schott") and Nec/Schott Components Corp. ("NSCC"), a Japanese joint venture, of 9-1, Seiran 2-Chome, Otsu-Shi, Shiga, Japan.
The Respondent is Necschott of 8635 W Sahara, Las Vegas, NV 89117, U.S.
2. The Domain Name(s) and Registrar(s)
The contested domain name is "necschott.com".
The registrar is Network Solutions, Inc.
3. Procedural History
The electronic version of the Complaint was filed on January 24, 2001. The hardcopy of the Complaint form was received by WIPO Arbitration and Mediation Center (the Center) on January 26, 2001.
In accordance with Paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy ("ICANN Rules") and Paragraph 5 of the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"), the Center verified that the Complaint satisfies the formal requirements of the ICANN Policy, ICANN Rules and Supplemental Rules.
Payment in the required amount has been received from the Complainant.
On January 31, 2001, the Center 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 Respondent failed to file a response by the deadline specified in Rule 5 of the ICANN Rules. On February 21, 2001, the Center sent a Notification of Respondent Default by email to the Respondent and the Complainant. The Respondent submitted an administratively deficient response after the deadline for the submission of a response had expired.
On February 23, 2001, the Center contacted John Swinson and requested that he act as panelist in this case.
On February 26, 2001, Mr. Swinson accepted to act as panelist in this case and submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
On February 28, 2001, the parties were notified that Mr. Swinson had been appointed and that a decision was to be, save exceptional circumstances, handed down on March 14, 2001.
The language of the proceeding was English.
The panel is satisfied that the Complaint was filed in accordance with the requirements of the ICANN Rules and the WIPO Supplemental Rules; payment was properly made; the panel agrees with the Centerís assessment concerning the Complaintís compliance with the formal requirements; the Complaint was properly notified to the Respondent in accordance with paragraph 2(b) of the ICANN Rules; the Respondent filed an administratively deficient response after the deadline for the submission of a response had expired; the administrative panel was properly constituted.
4. Factual Background
Schott is the owner of the following trademarks, applications and registrations:
· U.S. Registration No. 0370164 for the trademark SCHOTT;
· U.S. Registration No. 0360716 for the trademark SCHOTT;
· U.S. Registration No. 0360921 for the trademark SCHOTT;
· U.S. Registration No. 0760325 for the trademark SCHOTT;
· U.S. Registration No. 0775823 for the trademark SCHOTT;
· U.S. Registration No. 0934445 for the trademark SCHOTT;
· U.S. Registration No. 1138788 for the trademark CHRISTINENHUTTE SCHOTT ZWIESEL C;
· U.S. Registration No. 1198512 for the trademark SGH SCHOTT GERATE;
· U.S. Registration No. 1321818 for the trademark SCHOTT;
· U.S. Registration No. 1335176 for the trademark SCHOTT SCHOTT GLASS TECHNOLOGIES;
· U.S. Registration No. 1514391 for the trademark SCHOTT GERATE;
· U.S. Registration No. 1536148 for the trademark SCHOTT FIBER OPTICS;
· U.S. Registration No. 1606318 for the trademark SCHOTT SUPRAX GLAS;
· U.S. Registration No. 1962271 for the trademark SCHOTT PARENTA;
· U.S. Registration No. 1962271 for the trademark SCHOTT PARENTA;
· U.S. Registration No. 1943591 for the trademark CERAN TOPVIEW SCHOTT;
· U.S. Registration No. 1946477 for the trademark SCHOTT ZWIESEL;
· U.S. Registration No. 2164518 for the trademark SCHOTT TYPE I PLUS;
· U.S. Application No. 75635750 for the trademark SCHOTT CERAMAT;
· U.S. Application No. 75892998 for the trademark SCHOTT ML;
· U.S. Application No. 75934884 for the trademark SCHOTT GLASS MADE OF IDEAS;
· U.S. Registration No. 2394914 for the trademark SCHOTT ELECTRONIC PACKAGING;
· U.S. Application No. 75355211 for the trademark SCHOTT;
· U.S. Application No. 76072170 for the trademark SCHOTT SUPRAX;
· U.S. Application No. 76107782 for the trademark SCHOTT TOPPAC;
· German Registration No. 478294 for the trademark SCHOTT; and
· International Registration No. 2R168952 for the trademark SCHOTT
NEC Corporation is the owner of the following trademark registrations:
· U.S. Registration No. 2355088 for the trademark NEC;
· U.S. Registration No. 2035030 for the trademark NEC;
· U.S. Registration No. 1894079 for the trademark NEC;
· U.S. Registration No. 1908239 for the trademark NEC;
· U.S. Registration No. 1688830 for the trademark NEC; and
· U.S. Registration No. 1070387 for the trademark NEC.
5. Partiesí Contentions
Schott is a worldwide leader and innovator in the manufacture and sale of many types of specialized glass used on or in connection with a wide range of products ranging from consumer glass products to glass used in high technologies. Schott markets and sells its products under its numerous federal registrations of SCHOTT in the United States and throughout the world, including Europe. Schott spends millions of dollars annually promoting, advertising and marketing products under its SCHOTT trademarks.
The Respondent obtained the contested domain name shortly after Schott formed a joint venture with NEC Corporation. NEC Corporation is a world famous manufacturer of electronics and components for electronics and owns numerous trademarks, some of which are listed above.
Schott and NEC Corporation formed a joint venture named "Nec/Schott Components Corp.". The preparations to form the joint venture took over a year. The companies successfully formed the joint venture on September 8, 2000, and publicly announced the joint venture at least by October, 2000. The joint venture is in the business of manufacturing and selling hermetically sealed electrical components for use in a wide variety of products from car airbags to mobile phones. The NSCC joint venture has permission to use the SCHOTT and NEC trademarks.
The contested domain name is confusingly similar to USA and foreign registered trademarks in which Schott has rights and is identical to the common law trademark and company name Nec/Schott in which the NSCC joint venture has rights.
The Respondent filed for the contested domain name on December 15, 2000, and then placed the name up for sale on the website accessible via the contested domain name three days later on December 18, 2000.
The Respondent failed to file a Response within the time limit set in the Notification of Complaint.
During the period from February 21, 2001, to February 23, 2001, a number of administratively deficient responses were filed by email purportedly on behalf of the Respondent. Some of these emails were filed by a "B. Evans".
The emails alleged that the Respondent did not receive the Complaint by physical post. The emails also alleged that the contested domain name was the Respondentís former company name.
6. Discussion and Findings
The first issue is whether the panel will consider the administratively deficient Responses. Under the Rules, the panel has the discretion of determining the admissibility, relevance, materiality and weight of the evidence. See ICANN Rules 10(a) and 10(d).
In this case, the panel has determined that it will decide this case without reference to the uncertified Responses as (i) the relationship between the senders of the uncertified Responses and the Respondent is unclear; (ii) the person who submitted the uncertified Responses has not only failed to certify that the information contained in the Responses is complete and accurate, but it has also failed to sign the Responses; and (iii) the Responses were filed after the time limit to file the Response had expired.
The panelist also notes that the Respondent was notified by email by the WIPO Case Manager on February 21, 2001, that the hardcopy of the Complaint was returned from the postal address listed in the whois database but that the Respondent may still file a Response which may be accepted at the panelistís discretion. An email dated February 23, 2001, from " Gallifordtry@aol.com" (purportedly on behalf of the Respondent) states that the Respondent decided not to file a Response.
In any event, the decision in this case would have been the same had the panel considered the uncertified Responses when making its decision. The Respondent only made bland statements including "You are risking interfering in our business, which has been in business for 6 years" and "Our company name is our livelihood". The Respondent provided no evidence to support those statements.
In order to qualify for a remedy, the Complainant must prove each of the three elements set out in Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 ("ICANN Policy"), namely:
(a) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(b) the respondent has no rights or legitimate interests in respect of the domain name; and
(c) the domain name has been registered and is being used in bad faith.
The onus of proving these elements is that of the Complainant.
6.1 Identical or confusingly similar to a trademark or service mark
The panel finds that Schott is the owner of the registered trademark SCHOTT. The panel finds that NSCC is the owner of the common law trademark NEC/SCHOTT.
The panel finds that the contested domain name is confusingly similar to the registered trademarks owned by Schott.
The panel finds that the contested domain name is identical to the common law trademark owned by NSCC. The only difference between the domain name and the trademark is (i) the deletion of a punctuation mark and (ii) the addition of the suffix ".com".
The use or absence of punctuation marks does not alter the fact that a domain name is identical to a mark: Chernow Communications, Inc. v. Jonathon D. Kimball, WIPO Case No. D2000-0119; The Channel Tunnel Group Ltd v. Powell, WIPO Case No. D2000-0038; SeekAmerica Networks, Inc. v. Tariq Masood and Solo Signs, WIPO Case No. D2000-0131; Hewlett-Packard Company v. Cupcake City, Case No. FA0002000093562; InfoSpace.com, Inc. v. Tenenbaum Ofer, WIPO Case No. D2000-0075; EFG Bank European Financial Group SA v. Jacob Foundation, WIPO Case No. D2000-0036; Colgate-Palmolive Company v. Charles Kasinga, Case No. FA0002000094203; AT&T Corp v. WorldclassMedia.com, WIPO Case No. D2000-0553.
The addition of the suffix ".com" is an irrelevant distinction which does not change the likelihood for confusion: Microsoft Corporation v. Amit Mehrotra WIPO D2000-0053 and InfoSpace.com, Inc. v. Tenenbaum Ofer, WIPO Case No. D2000-0075.
Paragraph 4(a)(ii) of the ICANN Policy requires the Complainant to prove a negative.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the contested domain name as the Respondent:
(a) is not a licensee of Schott or the NSCC joint venture, nor is it otherwise authorized by Schott or NEC or the NSCC joint venture to use any similar marks;
(b) is not, either as an individual, business, or other organization, commonly known by the name "necschott.com"; and
(c) is not using the contested domain name in connection with a bona fide offering of goods or services, and the contested domain name is not being used as an active address.
The Respondent had the opportunity to respond and present evidence that it is a legitimate business that registered the domain name without knowledge of the Complainantís rights. The Respondent chose not to do so. The Complainant is not entitled to relief simply by default, but the panel can and does draw evidentiary inferences from the failure to respond. See Royal Bank of Canada v. D3M Domain Sales (eResolution Case No. AF-0147, May 1, 2000).
Paragraph 14 of the ICANN Rules provides that:
"(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.
(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate."
The Complainant in conducting its investigations found that the contested domain name was listed for sale on the website accessible at the address "www.necschott.com". On December 12, 2000, the website at this address stated "The domain name you have entered is for sale for $5,000 USD. Email your offer for this domain name that we are no longer using to: email@example.com". On January 19, 2001, the website at this address stated "Liquidating Domains. We are going out of business, therefore, the domain name that brought you to this site is for sale. Email our representatives at: "firstname.lastname@example.org" with your offer". However, the Complainant in conducting its investigations did not find any evidence that the Respondent was ever engaged in a legitimate business under the name NECSCHOTT. The Complainant alleges that any such claim is belied by the fact that the Respondent put the domain name up for sale within three days of its registration by the Respondent.
The panel agrees with the Complainantís assertions above, and finds that the Respondent has no rights or legitimate interests in respect of the contested domain name.
As an aside, the panel is aware of the following: The whois database search of the contested domain name lists NecSchott as the registrant of the contested domain name and Wilson, H.H. as the administrative and billing contact for the contested domain name. The contact address for both the registrants of the contested domain name and Wilson, H.H. is 8635 W Sahara, Las Vegas, NV 89117 USA. The panel notes that this address is the same as the address noted in the whois database for the respondents in the following cases:
(a) Atmel Corporation v. Entredomains, Inc., WIPO Case No. D2000-0775;
(b) Creo Products, Inc. & anor v. Website in Development, WIPO Case No. D2000-0160 and Creo Products, Inc. v. Website in Development, WIPO Case No. D2000-1490;
(c) Rona Inc. v. Merry Christmas Everyone!, Case No. WIPO D2000-1653;
(d) Astro-Med Inc. v. Merry Christmas Everyone! and B. Evans, WIPO Case No. D2000-0072;
(e) International Mobile Satellite Organisation and Inmarsat Ventures Limited (formerly known as Inmarsat Holdings Limited) (Complainants) v. Domains, EntreDomains Inc. and Brian Evans, WIPO Case No. D2000-1339;
(f) Cree, Inc. v. The Domain Name You Have Entered is For Sale a/k/a Entredomains, Inc., Case No. FA0005000094790; and
(g) Marconi Commerce Systems, Inc. v. Mr. B. Evans, Case No. FA0002000093560.
All of these cases involved domain names that were similar to names resulting from an "M&A" type activity of a company, for example, the merger of two companies, the acquisition of a company by another company, an agreement between two companies, or a change of company name.
In Creo Products, Inc. & anor. v. Website in Development, WIPO Case No. D2000-0160, an administratively deficient response very similar to one of the administratively deficient Responses filed in this case was signed by a B. Evans, who appears to be the same person who purportedly sent one of the administratively deficient Responses in this case. The panel notes that B. Evans was a joint Respondent in Astro-Med Inc. v. Merry Christmas Everyone! and B. Evans, WIPO Case No. D2000-0072 and Marconi Commerce Systems, Inc. v. Mr. B. Evans, Case No. FA0002000093560. The panel also notes that a Brian Evans was a joint Respondent in International Mobile Satellite Organization and Inmarsat Ventures Limited (formerly known as Inmarsat Holdings Limited) (Complainants) v. Domains, EntreDomains Inc. and Brian Evans, WIPO Case No. D2000-1339.
The panel notes the above cases for the record, but does not need to rely upon this apparent course of conduct to reach its decision that the Respondent has no legitimate interest in the contested domain name.
Paragraph 4(c) of the ICANN Policy sets out three elements, any of which shall demonstrate the Respondentís legitimate rights in the contested domain name. The Respondent does not meet any of the three elements set out in this paragraph.
Accordingly, the panel finds that the Complainant has no rights or legitimate interests in respect of the domain name.
6.3 Bad Faith
The Complainant contends that the Respondent registered and is using the domain name in bad faith as:
(a) three days after registering the contested domain name, the Respondent offered the domain name for sale on the website accessible by the domain name for US$5,000, a sum far in excess of its out-of-pocket costs in obtaining the contested domain name;
(b) the Respondent had constructive notice of the registered trademarks of Schott and NEC;
(c) the Respondent undoubtedly had knowledge of the Nec/Schott Components Corp. joint venture, given the wide publicity of the joint venture; and
(d) the Respondent registered the contested domain name primarily for the purpose of disrupting the business of the Complainant by preventing the NSCC joint venture from obtaining the domain name.
Prior ICANN decisions have found that offering to sell a domain name by advertising to the public at large that the domain name is for sale is evidence of bad faith and is properly regarded as an offer to sell the domain name to the Complainant or a competitor. See New York Life Insurance Company v. Arunesh C. Puthiyoth, WIPO Case No. D2000-0812, TV Globo Ltda. v. Green Card Transportes e Eventos Ltda., WIPO Case No. D2000-0351 (three panel decision); Robert Ellenbogen v. Mike Pearson; WIPO Case No. D00-0001; EMI PLC v. JASON MACE WIPO Case No. D2000-0712; EMI GROUP PLC and KHALIL EL-HOLIBY WIPO Case No. D2000-0761; Cedar Trade Associates, Inc., v. Ricks, FA0002000093633; Educational Testing Service v. TOEFL, WIPO Case No. D2000-0044; The Chase Manhattan Corporation and Robert Fleming Holdings Limited v. Entertainment Charlotte WIPO Case No. D2000-0619.
As mentioned above, it would appear that the Respondent has engaged in a pattern of conduct of registering trading names of third parties at approximately the same time that the third parties issue press releases regarding their activities. However, even though the large number of prior ICANN decisions cited above strongly suggests that the Respondent is a cybersquatter engaged in a pattern of bad conduct, the panel does not need to decide this case on that ground.
The panel finds that the Complainant has provided sufficient evidence to satisfy Paragraphs 4(b)(i) and (ii) of the ICANN Policy.
The panel finds that the Complainant has established this element.
For the reasons set forth above and pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the contested domain name be transferred to the Complainant.
Dated: March 14, 2001