WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
QAS Systems Limited v Hopewiser Limited
Case No. D2001-0273
1. The Parties
The Complainant is QAS Systems Limited, 7 Old Town, London SW4 OJT, United Kingdom, and is represented by Abel and Imray. Patent and Trade Mark Attorneys, 20 Red Lion Street, London WC1R 4PQ, United Kingdom.
The Respondent is Hopewiser Limited, Hale, Altrincham, Cheshire WA15 8DG, United Kingdom.
2. The Domain Name and Registrar
The Domain Name is <quickaddress.net>.
The Registrar is CORE Internet Council of Registrars, World Trade Centre II, 29, route de Pré-Bois, CH-1215 Geneva, Switzerland.
3. Procedural History
The Complaint was received by WIPO by email on February 21, 2001, and in hardcopy form on February 22, 2001. WIPO has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.
The Complaint was properly notified in accordance with the Rules, paragraph 2(a). The Registrar has confirmed that <quickaddress.net> ("the Domain Name") was registered through CORE Internet Council of Registrars and that Hopewiser Limited ("the Respondent") is the current registrant. The Registrar has further confirmed that the Policy is applicable to the Domain Name.
On March 7, 2001, WIPO notified the Respondent of the Complaint in the usual manner and informed the Respondent, inter alia, that the last day for sending its Response to the Complainant and to WIPO was March 26, 2001. The Response was received in hard copy form on March 23, 2001.
The Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and a Declaration of Impartiality and Independence.
No further submissions were received by WIPO or the Panel, as a consequence of which the date scheduled for the issuance of the Panelís Decision was April 26, 2001. Due to unforeseen circumstances, the Panel was unable to complete the decision in time and extended the time for issuance of the decision until April 29, 2001.
4. Factual Background
The Complainant is the registered proprietor of UK trade mark registration number 2156906 dated 29 January 1998 in Class 9 for computer software for the management and capture of addresses. The mark is a series of two marks being QUICKADDRESS and QuickAddress.
The Respondent registered the Domain Name on May 3, 2000.
5. Partiesí Contentions
The Complainant contends as follows:-
- It is the proprietor of trade mark registration number 2156906, details of which are given above, and the mark has been in continuous use by the Complainant and its predecessor since 1990.
- The Domain Name is identical to the trade mark.
- The Respondent is a direct competitor of the Complainant in the UK and elsewhere and must know that QUICKADDRESS is a trade mark used by the Complainant.
- The Domain Name is currently linked to the Respondentís website where goods of the same or a similar nature to the Complainantís goods are on offer.
- The Respondent has never been known by the Domain Name nor does the Respondent hold any trade mark or other rights in the Domain Name.
- From the circumstances it may be inferred that the Respondent has registered and is using the Domain Name primarily for the purpose of disrupting the business of the Complainant, a competitor, by diverting to the Respondentís website prospective or even existing customers of the Complainant. It may also be inferred that the Respondent, by using the Domain Name, intentionally attempted to attract for financial gain internet users to the Respondentís website by creating a likelihood of confusion with the Complainantís trade mark as to the source, sponsorship, affiliation, or endorsement of the Respondentís website or of a product or service on the Respondentís website.
- It is therefore alleged that the Domain Name was registered and is being used in bad faith.
- The fairness of the arbitration procedure is questionable. WIPO is receiving money (the fee) from the Complainant and there have been decisions under the Policy which have been contradictory and/or implausible.
- The Respondent has no record of any agreement requiring it to submit to the Policy.
- The Complainantís lawyers registered the Complaint without first discussing the matter with the Respondent or its representatives.
- The Respondent does not trade as the Complainant, nor does it seek to do so.
- The partiesí respective sites are not confusingly similar. The colours are different and the Respondentís site has the name HOPEWISER emblazoned all over it.
- The Respondent has operated in the address management market for over 19 years and has the right to describe the software as quick, fast or rapid.
- The Respondent uses the domain names fastaddress.net, rapidaddress.net and quickaddress.net to describe the functionality of the product/service provided by the Complainant. The uses are descriptive. The Respondent is holding onto these names for use on a project which it is undertaking in the near future.
- The Respondent admits that the Complainant is the registered proprietor of the trade mark identified above but claims that "quickaddress" is not the same as the mark as registered (i.e. "QUICKADDRESS" and "QuickAddress".
- The Respondent does not wish to mislead anybody and says that the number of hits received via the Domain Name would appear to be nil.
- The Respondent says that the Domain Name was pointed to the website at hopewiser.com which is the Respondentís home address without the knowledge of the directors of the company.
- The Respondent stresses that the Domain Name is purely descriptive and the name quickaddress is not used in the Respondentís web page or in its documentation or advertising.
- The Respondent says that twenty days is insufficient to enable it to review all the material filed; the Respondent has no intention of paying large sums for legal support and, for the reasons given above cannot accept the arbitration.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
Identical or confusing similarity
The Domain Name is the Complainantís registered trade mark with the addition of the generic suffix .net. The trade mark registration of the name in capital letters covers the name in all fonts. Even if that were not the case clearly "quickaddress" in lower case in use in relation to similar products/services as the registered mark will be likely to lead to confusion.
Accordingly, the Panel finds that the Domain Name is identical and/or confusingly similar to a trade mark in which the Complainant has rights.
Rights or legitimate interests of the Respondent
It is plain that the Respondent has no rights to the Domain Name beyond the right obtained by virtue of registration. The Respondent has not sought to assert that it has any right to the Domain Name as such. The Respondent does, however, claim to have a legitimate interest in the use of the term quickaddress to describe its products/services in the address management market.
This claim raises interesting and difficult issues, but given the Panelís finding in relation to bad faith it is not necessary for the Panel to make a finding hereunder.
The Policy is restricted to clear cases of cybersquatting. Examples (albeit a non-exhaustive list) are to be found at paragraph 4(b) of the Policy. All the examples there set out involve the Respondent having the Complainant in mind when registering the Domain Name. This Panel is of the view that a complaint under the Policy cannot succeed in relation to bad faith unless, at the very least, the Complainant is able to prove that at the time of registration/acquisition of the Domain Name the Respondent had the Complainant in mind.
What evidence has the Complainant produced to show that the Respondent might have had the Complainant in mind when registering the Domain Name? There is none. All that there is is the bare assertion in paragraph 12 of the Complaint, which reads as follows:
"The Respondent is a direct competitor of the Complainant in the UK and elsewhere and must know that QUICKADDRESS is a trade mark used by the Complainant."
That cannot be sufficient. The Panel is given no relevant supporting information. Had the name in issue been a name such as KODAK with both parties engaged in competition in the area of camera film, it may be that little or no further information would have been needed. However, in this case the name is a very descriptive one, one which anybody operating in this field might reasonably and innocently wish to use. There is no evidence before the Panel as to the size of the parties or their respective market shares, nor how well known they are in the area of activity concerned. The Panel does not know to what extent if at all the parties may have come into contact with one another in their business operations.
In short, the Panel has no means of knowing whether, as claimed by the Complainant, the Respondent must have known of the Complainant when it registered the Domain Name.
The onus is on the Complainant to prove the elements of 4(a) of the Policy.
The Panel finds that the Complainant has not proved that the Respondent registered the Domain Name in bad faith and is using it in bad faith.
The Complaint is dismissed.
Dated: April 29, 2001