WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ementor ASA v. Ryan Zotovich
Case No. D2001-0266
1. The Parties
The Complainant is Ementor ASA, of Post-box 6824 St. Olavsplass 0130 Oslo, Norway.
Represented by: Wikborg, Rein & Co., of Post box 1513 Vika 0117, Oslo, Norway.
The Respondent is Ryan Zotovich, of 24348 San Juan Rd., Carmel, California 93923, United States of America.
Represented by: Koenig & Associates of 220 East Figueroa Street, Santa Barbara, California 93101, United States of America.
2. The Domain Names and Registrar
The domain name with which this dispute is concerned is <ementor.com>.
The Registrar with which the domain name is registered is Network Solutions, Inc.
3. Procedural History
3.1 A Complaint was submitted electronically and in hard copy to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on February 20, 2001 and February 21, 2001 respectively.
3.2 On February 28, 2001 the Registrar verified:
(i) that the domain name is registered with it;
(ii) that the current registrant of the domain name is the Respondent;
(iii) that the Registrar's Version 5 Service Agreement is in effect.
(iv) that the domain name is in "active" status;
(v) that the Administrative Contact, the Technical Contract and the Billing Contact for the domain name is Zotovich, Ryan (RZJ28) , eva14@AOL.COM, ementor, 24348 San Juan Rd., Carmel, CA 93923. 408 624 7397 (FAX) 408 624 7397.
3.3 On March 2, 2001, all formal requirements for the establishment of the Complaint having been checked by the WIPO Center and found to be in compliance with the applicable ICANN Rules ("the Rules") for Uniform Domain Name Dispute Resolution Policy ("the Policy"), and WIPO's Supplemental Rules, the WIPO Center sent the Notification of Complaint and Commencement of Administrative Proceeding for the domain name as follows.
(i) by courier, by facsimile and by e-mail to Respondent, the Administrative Contact and the Technical Contact and to Respondent's representative.
(ii) by e-mail to the postmaster at the domain name.
3.3.1 The Panel finds that the obligation imposed on the Center with respect to Notification of the Complaint and the Commencement of the Administrative Proceeding has been satisfied.
3.4 The Administrative Proceeding commenced on March 2, 2001 and the Response was due on March 21, 2001.
3.5 A Response was filed dated March 21, 2001. The Response was received by WIPO Center by e-mail on March 22, 2001 and in hard copy on March 26, 2001. The Response therefore appears to be formally out of time. The time of receipt at WIPO Center in Geneva was 4.03am on Thursday March 22, 2001. Rule 2(f) of the Rules provides that a communication made by the Internet shall be deemed to be made on the date the communication was transmitted. As the transmission was initiated in California the Panel finds that the Response was transmitted on March 21, 2001 and is therefore timely made.
3.6 Panelist Desmond Ryan, having filed a Statement of Acceptance and Declaration of Impartiality and Independence, the Panel was appointed on April 4, 2001.
4. Common Complaint
4.1 The Complaint as filed was in respect of three domain names namely:
<ementor.com> registered by Ryan Zotovich;>
<ementor.net> registered by Jessie Galland>; and
<ementor.org> registered by Jessie Galland>.
In response to a query from WIPO Center as to the relationship between the owners of the respective domain names, Complainant's replied on March 1, 2001 as follows:
"- The Respondents have the same physical address.
- The Respondents have the same telephone number.
- The Respondents have the same e-mail address.
- The Respondents both own domain names related to the mark "Ementor" "
4.2 Rule 3(c) of the Rules provides that a complaint may relate to more than one domain name provided the domain names are registered by the same domain name holder. That is not the case here. The domain name holder in the dot.com domain is Ryan Zotovich, and the holder in the dot.net and dot.org domains is Jessie Galland. Although the facts stated by Complainant in paragraph 4.1 above would suggest that there is a connection between the two domain name holders, they are not one and the same. Mr Zotovich has filed his Response on behalf of himself and Jessie Galland and there appears to be a working relationship between them, but there is nothing in the material of record to indicate that they are partners or that they are both part of the same corporate or other entity.
4.3 The situation here is distinguished from that in the case of CSA International v. John O. Shannon and Care Tech Industries, Inc. Case D2000-0071, where the record showed that the personal Respondent John O. Shannon was President, Chief Executive Officer and Principal Shareholder of the corporate Respondent. In that case, this Panel was prepared to look beyond the corporate veil the corporate Respondent and determined the matter on the basis that the domain names were registered by the same domain name holder. Similarly cases D2000-0057 – Adobe System Inc. v. Domain OZ", D2000-0161 – Zero International Holdings GmbH v. Beyonet Services and Stephen Urich and D2000-0886 –AltaVista Co v. Stoneybrook dealt with cases where the Panel determined that behind a fictitious name there was the same person. That is not the case here, as the domain names are owned respectively by separate natural persons.
4.4 On the face of the record there is no such common relationship here and the Panel is therefore of the opinion that the provisions of Rule 3(c) cannot be applied.
4.5 The Panel therefore proceeds to determine only the matter of the first-mentioned domain name <ementor.com> and the First Respondent, Ryan Zotovich.
5. Factual Background
5.1 The domain name was registered on 25 February, 2000.
5.2 Complainant is a Norwegian corporation which, Complainant asserts, is one of the largest consultant companies in Norway, employing over 1,200 employees. Complainant is part of the Merkantildata Group of Companies, operating in Norway, Sweden and Denmark and on or about September 28, 2000, companies within that Group which had previously operated under other names changed their names to names consisting of, or including the word "Ementor". Complainant, previously known as Avenir ASA, became Ementor ASA.
5.3 Complainant is the registered owner of Danish trade mark No. VR 2000 05655 filed August 25, 2000 and of corresponding applications for registration in Norway filed October 10, 2000 and October 20, 2000 and in the European Community of February 13, 2001.
5.4 Complainant is the registrant of the domain name <ementorasa.com> and of a number of country code domain names comprising the word "Ementor".
5.5 Respondent by his response and supporting declaration under oath asserts that he is an individual doing business under the name "Ementor" in San Jose, California. The record shows (Respondent Exhibit "A"), that on or about October 3, 1997 Respondent and a number of other individuals each having the surname Zotovich registered the name "enotes, Ementor" as the business name of a partnership. Respondent asserts, and the record confirms, (Respondent Exhibit "B") that Jessie Galland, the second-named Respondent in the Complaint, registered the domain names <ementor.net> and <ementor.org> on August 19, 1997, and
October 5, 1999 respectively. As noted in paragraph 4.2 above, no other information is available as to the connection, between Respondent Zotovich and Respondent Galland. However, nothing turns on that for the purpose of this proceeding.
5.6 On August 23, 2000 one Lars Nottehed, acting as agent for an undisclosed principal, wrote to Respondent by e-mail as follows:
"Dear Mr Zotovich,
I am contacting you since you are indicated as the owner of the internet address ementor.com.
I am currently working for a client in Norway that is considering to change its name of their purely Scandinavian business. We are evaluating several different name alternatives currently. One of the decision criteria is the possibility to get the .com address and I would therefore like to ask you if you would be interested in selling the ementor.com name and what your price would be. As far as I can see the address is currently not in use.
You will reach me either via mail or at +46-709-314434 (mobile), or +47-233116700 (office).
I would very much appreciate if you could come back to me today.
Lars Nottehed" (Respondent Exhibit "E").
5.7 There then followed a chain of correspondence (Complainant Appendix 8), and telephone discussions, between Kurt Koenig, representing Respondent, and Marius Gisvold, representing Complainant. In the course of that correspondence, Mr Koenig wrote to Mr Gisvold on September 2, 2000 stating, inter alia:,
"While it may appear these names are not up and running, in fact the domains are being used on an intranet/internal basis only and cannot be viewed by the general public at this time. We are currently working on launching a fully active site at this location in the very near future.
Mr Zotovich had not purchased the names with an interest in selling such names. However, as my office is very familiar with domain name transactions we certainly cannot dismiss the possibility of such a sale to the right buyer. We do not have a price in mind at this time as it was not Mr Zotovich's intent to sell the names. We have received a flurry of offers from around the world some or all of which may have come through the same source."
In his reply of September 5, 2000 Mr Gisvold stated:
"Further to last weeks telephone exchange, we have now tried to coordinate efforts on this side. You (or rather Mr Zotovich) have received mails from at least three different sources all originating from our clients, which are a company called Avenir. Avenir sells consultancy services in the Scandinavian countries, and has abt. 500 employees.
Avenir desires to use "Ementor" as its trade name for the future. The right to do so is already protected in the jurisdictions where Avenir has business, and the relevant domain names have also been secured. The client has a wish to secure the domain name "ementor.com" purely to avoid any misunderstandings among customers and potential customers or mismailing.
We are totally unaware of the going market price for the kind of rights held by your client. If we are to proceed please give us some kind of indication. You may call the undersigned at the office (+47) 22 82 75 00, at home (+47) 22 49 97 78 or on the cellphone (+47) 908 92 661. The time difference, we believe, is 9 hours."
On October 9, 2000 Mr Gisvold requested Mr Koenig to submit to Respondent an offer of US$ 10,000 "in consideration of the rights to <ementor.com>".
5.8 Respondent did not reply to this offer. Respondent declares on oath that he did not reply because he had already indicated a lack of interest in selling. (Respondent's declaration of Ryan Zotovich).
5.9 Respondent asserts, and declares on oath, that the web sites to which the domain name is addressed were established to promote group sharing and publishing of files relating to certain college and university classes. The web sites were password protected and were accessible through "deep linking", rather than through a homepage.
6. Applicable Dispute
6.1 This dispute is one to which the Policy applies. By registering the domain name, Respondent accepts the dispute resolution policy adopted by the Registrar. The Registrar's current policy set out in its domain name registration agreement is the Policy.
6.2 To succeed in its Complaint, Complainant must show that each of the conditions of paragraph 4(a) of the Policy are satisfied, namely that:
(i) the domain name is identical or confusingly similar to a trade mark or service mark in which Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in the domain name;
(iii) the domain name has been registered and is being used in bad faith.
The onus of such showing is on Complainant.
7. Parties' Contentions
7.1 Complainant contends that it has, by virtue of its use and registration of the trade mark "Ementor" in Scandinavian countries, established rights in that name and that the domain name is identical to that trade mark.
7.2 Complainant contends that Respondent has no rights or legitimate interests in the domain name and that he cannot have such rights or interests by reason of Complainant's rights in the trade mark. Complainant contends that Respondent is not actively using the domain name in any commercial enterprise or non-commercial activity.
7.3 Complainant does not directly contend that Respondent has registered and is using the domain name in bad faith, however, such contention is implicit in Complainant's contention that Respondent would be willing to sell the domain name for the right price, that the domain name is preventing the Complainant from reflecting its trade mark in all possible corresponding domain names and that Internet users who type <ementor.com> would be likely to be confused.
7.1 Respondent rejects Complainant's claim to rights in the trade mark "Ementor" and points to the fact that his adoption and use of the domain name pre-dates the adoption and use of the "Ementor" trade mark by Complainant.
7.2 Respondent contends that he had never heard of Complainant until he received the letter of August 23, 2000 from Complainant's representatives and that in fact, it was not until the following October that Complainant adopted the name "Ementor".
7.3 Respondent contends that he has prior established rights and legitimate interests in the domain name by virtue of his adoption of the business name "Ementor" and the carrying on of business under that name since at least as early as September 1997.
7.4 Respondent further contends that there is no evidence of bad faith registration or use of the domain name under any of the heads of paragraph 4(b) of the Policy or otherwise.
7.5 Respondent contends that Complainant is guilty of attempted reverse domain name hijacking by using the Policy in bad faith to attempt to deprive Respondent of his domain name. Respondent contends that Complainant having failed to acquire the domain name through an offer to purchase has filed the Complaint in order to force Respondent to relinquish the name. Respondent cites in support prior Panel decisions in Sydney Opera House Trust v. Trilynx Pty Ltd. D2000-1224, Smart Design LLC v. Hughes, D2000-0993 and Goldline International Inc. v. Gold Line, D2000-1151. Respondent contends that Complainant is guilty of bad faith in proceeding with the Complaint in full knowledge of Respondent's prior use and claims to legitimate interest and absence of bad faith.
7.6 Respondent requests the Panel to order transfer to him of Complainant's "Ementor" domain names on the basis of a bad faith finding.
8. The Panel's Findings
Identical or Confusingly Similar Trade Mark
8.1 The Panel is satisfied on the record that Complainant's use and registration of the name and trade mark "Ementor" in Scandinavian countries has established trade mark rights in those countries. Accordingly, as a matter of literal construction, paragraph 4(a)(i), Complainant has shown that the domain name is identical or confusingly similar to a trade mark in which it has rights. That alone, however, is not sufficient for Complainant to succeed.
Rights or Legitimate Interests
8.2 On the face of the record, it appears that Complainant's first adoption of the name and trade mark "Ementor", occurred well after Respondent commenced to use the name "Ementor" in relation to its business. Respondent has established that prior to any notice to him of the Complainant, he was using the name in the bona fide offering of his services and accordingly, quite apart from anything else, Respondent satisfies the provisions of paragraph 4(c)(i) of the Policy. Accordingly, Complainant has failed to show that Respondent has no rights or legitimate interest in the domain name, and the Complaint must therefore fail.
Bad Faith Use and Registration
8.3 In the light of the Panel's findings under paragraph 8.2, it is unnecessary to consider whether Complainant has established bad faith use and registration of the domain name. However, in view of Respondent's allegation of reverse domain name hijacking and abuse of process, the Panel records its finding that there is no evidence of bad faith use or registration of the domain name by Respondent.
Reverse Domain Name Hijacking
8.4 Although Complainant has failed to show absence of legitimate right or interest or registration and use in bad faith on the part of Respondent, the Panel is not satisfied that the record shows a deliberate attempt on the part of Complainant to proceed in bad faith to attempt to deprive Respondent of his domain name. Complainant may have misconceived the nature of the Policy. Although it should have been apparent to Complainant and its advisors from the chain of correspondence referred to in paragraphs 5.6 to 5.8 that Respondent's claim to the domain name was superior in time to Complainant's trade mark rights, Complainant may have been mislead by the fact that the domain name did not appear to lead to an active web site.
8.5 A finding of bad faith and abuse of process and the making of a declaration under Rule 15(e) requires the discharge of a high onus of proof. The Panel is not satisfied that that standard of proof has been met and on balance therefore, the Panel is unable to find that the Complaint was brought in bad faith.
8.6 Even if the Panel had so found, it could not of course, order the transfer of Complainant's existing domain name registration to Respondent, since it had no power to do so under Rule 15(e) of the Policy.
9.1 The Panel decides and orders:
(i) Respondent has demonstrated rights and legitimate interests in respect of the domain name.
(ii) Complainant has failed to show that the domain name has been registered and is being used in bad faith.
(iii) The Complaint is dismissed.
Dated: April 10, 2001