WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Golay Buchel & Cie SA v MegaWeb.com Inc
Case No. D2001-0829
1. The Parties
The Complainant is Golay Buchel & Cie SA, Avenue de Rhodianie 60, 1000 Lausanne 3, Switzerland.
The Respondent is MegWeb.com Inc., of 1201 North Market Street, 18th Floor, Willmington, DE 19801, USA.
2. The Domain Name and Registrar
The domain name on which the Complaint is based is <golay.com>.
The registrar with which the domain name is registered is Tucows, Inc. of 96 Mowat Avenue, Toronto, Ontario M6K 3M1, Canada.
3. Procedural History
3.1 The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution Policy (the "Policy") approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), also approved by ICANN on October 24, 1999 and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
3.2 The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by e-mail and in hardcopy on June 26, 2001, and, following verification of the registration of the domain name and other details with the Registrar on June 28, 2001, the Respondent was notified of the Complaint and the commencement of administrative proceedings, together with a copy of the Complaint, on July 3, 2001, both by email and post/courier. Notification was received by the Center on July 8, 2001, that its e-mail communication to the Respondent could not be delivered. The communication to the administrative contact at 'email@example.com' appears, however, to have been successful.
3.3 Having received no response from the Respondent within the specified time in the Notification of Complaint, the Center issued a Notification of Respondent Default on August 1, 2001, by e-mail. Again, on August 1 and August 6, 2001, the Center was notified that this communication could not be delivered by email.
3.4 On August 8, 2001, the parties were notified of the appointment of the administrative panel and the projected decision date.
3.5 In light of the above, the Panel finds that
- The Complaint was filed in accordance with the requirements of the Rules and the WIPO Supplemental Rules.
- The Respondent was properly notified of the Complaint and of its Default in lodging a Response in accordance with the Rules, Paragraph 2(a): see 3.2 and 3.3 above.
- The Panel was correctly constituted.
- No communication has been received from the Respondent at any time during these proceedings, although the Panel would have been prepared to receive and consider such a communication up to the date of finalization of the decision.
3.6 In the absence of a response by the Respondent, the Panel now proceeds to determine the dispute on the basis of the Complaint under Paragraph 5(e) of the Rules.
4. Factual Background
4.1 The Complainant is a Swiss company which was originally founded in 1887 by Louis Auguste Golay and is now part of a group of 25 companies headed by Golay Buchel Holding SA, a public company introduced to the Swiss Stock Exchange in 1985. It has subsidiaries in New York and Los Angeles, as well as in 11 other countries and employs about 1900 persons. Its principal business is the supply of jewelry, watches and luxury goods. See generally Complaint, paragraph 2.1.
4.2 The Complainant owns a number of Swiss, US and International trade mark registrations in respect of precious metals, jewelry and related products that consist of the names "GOLAY", "GOLAY BUCHEL", LOUIS GOLAY" and "LOUIS-AUGUSTE GOLAY": see Exhibits 22 to 32 to the Complaint. Most of these registrations appear to be of comparatively recent origin (2000 and 2001), the oldest ones going back to 1991 (Swiss and International registrations for "GOLAY BUCHEL"). The Complainant also states that it has used its trademarks in the USA since 1989, exhibiting a brochure (Exhibit 33) for September 1989. This uses the name "GOLAY BUCHEL", but it is unclear how extensively this advertising occurred, and the same is true of the other exhibits of advertising (Exhibits 32-38) which appear to refer mainly to Switzerland.
4.3 According to the WHOIS database of Open SRS/Tucows Inc., the Respondent is listed as the Registrant of the domain name <golay.com> (Exhibit 6). The record was created on October 9, 1998 and was last updated on May 28, 2001, expiring on October 28, 2001. Hostmaster, Hostmaster www37.net of 1201 North Market Street, 18th Floor, Willmington, DE 19801, USA is listed as the administrative and billing contact, and the technical contact is Hostmaster, Hostmaster www37.net of P.O, Box 480167, Los Angeles, CA 90048, USA.
4.4 The Complaint alleges that it contacted the Respondent by letter on November 27, 2000, with a request that the domain <golay.com> should be transferred to it (Exhibit 50). The Complaint alleges further that the Respondent refused to accept this letter, and that consequently the Complaint in the present proceeding was filed.
5. Partiesí Contentions
The Complainant seeks transfer to it of the domain name <golay.com>, and in support of this contention addresses each of the elements described in Paragraph 4(a) of the Policy as follows.
- With respect to the element described in Paragraph 4(a)(i) of the Policy, the Complainant submits that the disputed domain name is identical to its registered trade marks GOLAY as well as confusingly similar to its registered trade marks GOLAY BUCHEL, LOUIS GOLAY and LOUIS AUGUSTE GOLAY, being marks in which the Complainant has rights. It asserts further that the name "GOLAY" is well known internationally, as a mark of distinction for jewelry.
- With respect to the element described in Paragraph 4(a)(ii), the Complainant submits that there is no evidence of any right or legitimate interest by the Respondent in the domain name. It states that the Respondent is in no way affiliated with the Complainant, that it does not carry on a business under the domain name and that the domain name resolves only to a website at 'www.megago.com', which provides various possibilities for searching for specific keywords that resolve to webpages carrying advertising banners for various other businesses. The Complainant asserts further that the domain name and the "MegaGo" website are ultimately controlled by Mr. Eitan Zviely who has a long record of acquiring domain names for the purpose of using them to divert Internet traffic to his websites and advertisements.
- With respect to the element described in Paragraph 4(a)(iii) of the Policy, the Complainant submits that the Respondent has registered and used the domain name in bad faith. It asserts further that this bad faith is evidenced in a number of ways that come within the categories listed in Paragraphs 4(b)(ii), (iii) and (iv) of the Policy, namely the creation of a likelihood of confusion between the domain name and the Complainantís trade marks, conduct that disrupts the Complainantís business, and a pattern of conduct aimed at preventing the owner of a trade mark from reflecting the mark in a corresponding domain name.
As noted above, the Respondent has not filed a Response to the Complaint. Under Paragraph 5(e) of the Rules, it is provided that if a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based on the Complaint. As no exceptional circumstances have been brought to the Panelís attention, it proceeds to make the findings below on the basis of the material contained in the Complaint.
6. Discussion and Findings
In accordance with Paragraph 4(a) of the Policy, the Complainant has the burden of demonstrating three elements.
6.1 That the Complainant has rights in a trade or service mark with which the respondentís domain name is identical or confusingly similar
As noted in paragraph 4.2 above, the Complainant has provided evidence of its trade mark registrations within Switzerland and the United States of America, as well as internationally through WIPO. It has also provided some limited evidence of the history of its business, and of advertising that it has carried out in the USA and Switzerland. Accordingly, the Complainant has satisfied the first part of Paragraph 4(a)(i) of the Policy, namely that it has rights in a trade or service mark.
The next question is whether the disputed domain name is identical or confusingly similar to the Complainantís marks. In this regard, the domain name and registered trade marks consisting of the word "GOLAY" are virtually identical, with the only differences being the addition of the suffix ".com" in the domain name. Even if these differences were sufficient to make the domain name not identical to the "GOLAY" trademarks, there can be little doubt that the domain name is confusingly similar to these marks, and it is noteworthy that previous panels have reached the same decision with respect to similar small differences: see, for example, World Wrestling Federation Entertainment, Inc. v Michael Bosman, WIPO Case No. D1999-0001 (January 14, 2000) (worldwrestlingfederation.com and WORLD WRESTLING FEDERATION) and InfoSpace.com, Inc. v Registrar Administrator Lew Blanck, WIPO Case No. D2000-0069 (April 3, 2000) (WWWINFOSPACES.COM and INFOSPACE). In the present case, the second part of the requirements of Paragraph 4(a)(i) of the Policy has therefore been satisfied in relation to the "GOLAY" trademarks.
In the light of this finding, it is strictly unnecessary to consider the position of the domain name vis-à-vis the other trademarks that incorporate the name "GOLAY". However, the Panel is prepared to accept the submission of the Complainant that confusing similarity arises here as well. The word "GOLAY" is a strong and distinctive element of these trademarks, and, in the circumstances, the Panel is satisfied that the domain name is confusingly similar to these. In this regard, the Panel refers, with approval, to the statement of principles governing this question that were made by the Panel in Jordan Grand Prix Ltd. v Gerry Sweeney, WIPO Case No. D2000-0233.
6.2 That the Respondent must be shown to have no rights or legitimate interests in the Domain Name
Paragraph 4(c) of the Policy sets out certain matters to which a Respondent can point as demonstrating rights or legitimate interests in a disputed domain name for the purposes of paragraph 4(a)(ii). These include:
"(i) before any notice to you [the Respondent] 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 noncommercial 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."
In the present proceeding, there is no evidence that the Respondent has used the domain name <golay.com> in connection with any bona fide offering of goods and services (Paragraph 4(c)(i)). Nor is there any evidence of "demonstrable preparations" to use the domain name in that way (Paragraph 4(c)(i)), while it is clear that there has been no licence or authorization given by the Complainant to the Respondent to use the name or mark "GOLAY" or any of the other trade marks containing this name.
Likewise, there is no evidence before the Panel that indicates that the Respondent has ever carried on a business under the name "GOLAY" or any variant of this expression, or that it has been commonly known by that name (Paragraph 4(c)(ii)). Indeed, it seems clear that the domain name is used simply as a means of diverting Internet users to view other sites that appear to be controlled by, or associated with, the Respondent.
Finally, there is no evidence before the Panel that indicates whether any of the factors referred to in Paragraph 4(c)(iii) are applicable.
The matters referred to in Paragraph 4(c) of the Policy are not an exhaustive statement of what may constitute rights or legitimate interests in a domain name, and it is therefore open to a Respondent to point to other evidence that may show this. In the present proceeding, there has been no Response or evidence presented by the Respondent, and the Panel, under Paragraph 14(b) of the Rules, is entitled to draw from such default such inferences as it considers appropriate. The Panel therefore concludes that the Complainant has established this element of Paragraph 4(a) of the Policy, namely that the Respondent has no rights or legitimate interests in the disputed domain name.
6.3 That the Respondent registered and is using the Domain Name in bad faith
Paragraph 4(b) of the Policy lists certain factors which, if found by the Panel to be present, shall be evidence of registration and use of a domain name in bad faith. This is not an exclusive list, and includes:
"(i) circumstances indicating that you [the Respondent] have registered or you have 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location."
It will be noted that, under Paragraph 4(a)(iii) of the Policy, both registration and use of the domain name in bad faith are required. Of the factors listed in paragraph 4(b) above, (i)-(iii) relate specifically to registration (and acquisition) of the name, while (iv) relates to use following registration. However, in view of the fact that these factors are stated to be inclusive, it follows that there can be other factors that can be relied upon to point to bad faith, both in registration and in use. In this regard, it is worth noting an early decision of an Administrative Panel to the effect that registration in bad faith followed by a passive holding of a domain name when there is no way in which it could be used legitimately can amount to use in bad faith: Telstra Corporation Ltd. v Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000). In addition, it would be both mistaken and artificial to confine Paragraphs 4(b)(i)-(iii) solely to the time of registration: presumably, it would also be a use of a disputed domain name in bad faith to do so, after registration, with one of the purposes outlined in those paragraphs. Support for this view is to be found in several Panel decisions: see, for example, Estée Lauder Inc. v estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No D2000-0869 (September 25, 2000) and E. & J. Gallo Winery v. Hanna Law Firm, WIPO Case No. D2000-0615 (August 3, 2000).
In the present proceeding, the Complainant raises a number of matters that go to the questions of registration and use in bad faith under Paragraph 4(a)(iii) of the Policy, namely the factors referred to in Paragraph 4(b)iv), (iii) and (ii) respectively. These matters can be dealt with briefly:
Likelihood of confusion: Paragraph 4(b)(iv):
In the absence of any submissions by the Respondent, the Panel accepts the contention of the Complainant that the Respondent registrant of the domain name is, indeed, linked to or controlled by Mr. Eitan Zviely and his associated companies. It accepts further that Mr. Zviely has a past history of registering large numbers of domain names that are the same as, or are confusingly similar to, well known trade marks, and that these domain names frequently resolve to other websites and advertising controlled by Mr. Zviely that are quite unrelated to the owners of these trade marks. Accordingly, it is open to the Panel to conclude that there is evidence here of an intention on the part of the Respondent to attract Internet users for commercial gain by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of its website.
Disruption of the business of a competitor: Paragraph 4(b)(iii)
It is not clear, on the evidence presented by the Complainant, that it and the Respondent are in competition with each other for the purposes of satisfying the requirement contained in Paragraph 4(b)(iii).
Pattern of conduct: Paragraph 4(b)(ii)
In addition to the evidence provided by the Complainant of multiple registrations of domain names based on well known marks, there is also evidence that the Respondent, in the person of Mr. Zviely, has also been the subject of law suits in the USA with respect to this kind of activity: see Complaint, paragraph 53 and Exhibits 48 and 49. In the absence of any submissions from the Respondent, it is open to the Panel to conclude that there is sufficient evidence presented here to establish a pattern of conduct of the kind described in Paragraph 4(b)(ii) of the Policy. See further Ty, Inc., Complainant v. O.Z. Names, Eitan Zviely, WIPO Case No. D2000-0370 (June 27, 2000).
The Panel finds that the Complainant has established its case with respect to each of the elements stated in Paragraph 4(a) of the Policy.
The Administrative Panel accordingly directs that the registration of the domain name <golay.com> should be transferred to the Complainant.
Dated: August 22, 2001