WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

HIPERTEX, S.A. v. LAMBDA SOFTWARE SOLUTIONS BV

Case No. D2001-0332

 

1. The Parties

1.1 Complainant: HIPERTEX, S.A., of Uruguayan nationality, with a place of business at Marcos Sastre 2828, CP 12100, Montevideo, Uruguay.

The authorized representative for the administrative proceeding is

Mr. Alejandro A.M. Anderlic of Estudio OíFarrell, Avda. de Mayo 651, piso 3, 1084 Buenos Aires, Argentina.

1.2. Respondent: LAMBDA SOFTWARE SOLUTIONS BV, with a place of business at Hanzeweg 70, Deventer, 7418 , Switzerland.

 

2. The Domain Name and the Registrar

2.1. The subject of the complaint is the domain name "burma.com".

2.2 The registering entity for the domain name is Networks Solutions, Inc., located at 505 Huntmar Park Drive, Hendon, Virginia 20170, USA.

 

3. Procedural History

3.1. A complaint was submitted to the WIPO Arbitration and Mediation Center (hereinafter called "the Center") on 12 March 2001 in accordance with the "Uniform Domain Name Dispute Resolution Policy" (hereinafter called "the Uniform Policy") as adopted by ICANN on October 24, 1999, and in accordance with the Rules for the Uniform Policy that ICANN likewise adopted.

3.2 The Complaint was notified to Respondent, Network Solutions, Inc. and ICANN on March 16, 2001.

3.3 On 5 April 2001, the Center sent to Respondent a Notification of Respondent Default.

3.4 On 20 April 2001, WIPO appointed Luis H. de Larramendi as panelist and provided him with a complete copy of the dispute related documentation on the same date.

 

4. Factual Background

4.1. The complainant, HIPERTEX, S.A., is the owner of registrations of the trademark BURMA in the following countries:

- Uruguay. Registration No. 166033 renewed on July 22, 1991.

- Argentina. Registration No. 1643317 granted on

September 5, 19.. (Date illegible on copy of certificate of registration provided).

- Bolivia. Registration No. 66073-C granted on 10 June 1998.

- Colombia. Registration No. 96 068389 granted on

27 September 1997.

- Chile. Registration No. 491245 granted on 29 April 1998.

- Ecuador. Registration No. 78960 granted on 24 August 1999.

- Peru. Registration No. 34382 granted on 20 March 1997.

All these trademark registrations cover goods in International Class 25.

The complainant has also registered the domain name "burma.com.uy".

4.2. The respondent registered the domain name "burma.com" on 9 March 2000, according to the Registrarís whois database. The domain name registration status is "active".

4.3 Upon entering the web site www.burma.com one finds an advertising page called domainman.com with a link to access the list of services rendered under that domain. Under that link and still within the www.burma.com web site there is a legend that reads: "Your resource for successful domains on the World Wide Web. These commercial domains have been developed specifically for their commercial appeal. With the continued exponential growth of the Web population the value of domain names that are easy and obvious for consumers to use will increase at a steady rate well into the future. The owners of the domains listed on these pages may consider serious offers of purchase at this time."

Upon accessing www.domainman.com web site through the corresponding banner one may then note that a number of domain names are offered for sale, classified under "corporate" domains, "geographic" domains and "premium" domains. By entering the URL corresponding to any of the domain names offered for sale at www.domainman.com, the same content as in www.burma.com web site may be found.

 

5. Partiesí Contentions

5.1. Complainant

The complainant contends:

- that the domain name in dispute is identical to the trademark BURMA owned by the complainant;

- that the respondent has no rights or legitimate interests in the domain name "burma.com", as none of the means described in the Uniform Policy for evidencing such a right or legitimate interest is given;

- that the respondent has registered the domain name "burma.com" in bad faith and is using it in bad faith, inasmuch as that domain is being offered for sale, together with many others, at www.domainman.com web site, which is accessible through www.burma.com web site where it is specifically stated that those domain names have been developed for their commercial appeal.

5.2. Respondent

The respondent has not submitted any response, although it may be seen from the file that the complaint was sent to all contact addresses provided by the respondent to the Registrar.

 

6. Discussion and Findings

6.1. Applicable Rules

Paragraph 15a) of the Rules instructs the Panel to render its decision on the basis of:

- the statements and documents submitted by the parties;

- the provisions of the "Uniform Policy" and of the "Rules" themselves; and

- any rules and principles of law that it deems applicable.

6.2. Admissibility of the Complaint pursuant Paragraph 4a) of the Uniform Policy

Paragraph 4a) states the following conditions:

- the domain name registered by the respondent must be identical or confusingly similar to a trademark or service mark in which the complainant has rights.

- the respondent must have no rights or legitimate interest in respect of the domain name; and

- the domain name must have been registered and used in bad faith.

6.2.1. Domain Name Identical or confusingly similar to Complainantís trademark

Leaving aside the first level generic component ".com", the subject matter of the domain name in dispute is identical to complainantís BURMA trademarks.

6.2.2. Right or Legitimate Interest in the Disputed Domain Name

As the respondent has not submitted any response, the analysis of the existence or non-existence of right or legitimate interest in the disputed domain name can only be conducted in the light of the facts provided by complainant and of the criteria laid down in paragraph 4c) of the Uniform Policy.

According to those criteria, the owner of the domain name in dispute would have to be able to show that one or more of the following circumstances was given:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Starting out from these premises, the panel reaches the following conclusions:

- The only use that is being made of the domain name "burma.com" consists of the offer to sell it, together with many other domains, through www.domainman.com web site.

- The word BURMA does not correspond to the corporate name of the respondent, nor is there anything to show that the respondent might be known under the name BURMA.

- In view of the fact that many domain names are being offered for sale at the aforementioned web site and of the fact that the respondent also owns other domain names that do not appear to have any connection whatsoever with its own name and business, it can only be concluded that the respondentís interest in obtaining the domain name lay solely in then being able to sell it.

- The panel therefore considers that it is adequately proved that the respondent has no rights or legitimate interests in the domain name in dispute.

6.2.3. Registration and use in Bad Faith of the Domain Name "burma.com"

Paragraph 4b) of the Rules sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith as follows:

(i) the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant for valuable consideration in excess of the respondentís documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct: or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent 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 complainantís mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.

The panel considers that the instant case matches at least the first of the aforementioned criteria given that, in the absence of any other explanation from the respondent, the circumstances clearly indicate that the respondent registered the domain name "burma.com" with the sole apparent aim of selling it. In this regard it is to be noted that many other domain names are similarly being offered for sale at the web site www.domainman.com, which is entered through and advertised in the www.burma.com web site.

This circumstance constitutes in itself evidence of registration and use in bad faith, according to the findings of the panel in WIPO decisions D2000-0001, D2000-0378 and D2000-0402, among others.

The offer to sell the domain name in dispute at a web site specializing in that activity constitutes evidence of registration and use in bad faith under paragraph 4b)(i) of the Uniform Policy, given that, although the respondent may not have specifically set a price, it is evident that domain names offered for sale in this way could only be acquired at a price higher than the cost resulting from their registration, since the practice of selling domain names as a commercial venture would otherwise be nonsensical.

It is to be noted that the respondent has never put the domain name "burma.com" to any specific use, in the sense of endowing the corresponding web site with a legitimate offer of goods or services or other specific content. The content of that web site is, instead, the announcement that the domains in question are for sale.

The fact that the domain name in dispute continues to appear, at the present time, among those offered for sale through the aforementioned web site amounts is, in the opinion of this panel, evidence not only of registration in bad faith but also of use in bad faith.

Lastly, as the respondent has not submitted any response, it has not disputed the validity of any of the evidences submitted by the complainant nor has it contested the latterís arguments. Nor has it provided, logically, any plausible explanation for having chosen the domain name in dispute.

 

7. Decision

The panel considers that the complainant has proved the three circumstances described in paragraph 4a)(i), (ii) and (iii) of the Uniform Policy and therefore decides that the domain name "burma.com" should be transferred to the complainant.

 


 

Luis H. de Larramendi
Sole Panelist

Date : May 15, 2001