WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Procter & Gamble Co. v. Neuroweb Sdn Bhd
Case No. D 2001-0943
1. The Parties
The Complainant is The Procter & Gamble Company of One Procter & Gamble Plaza, Cincinnati, Ohio 45202, United States of America.
The Respondent is Neuroweb Sdn Bhd (formerly known as Neuronet (Malaysia) Sdn Bhd) of 15 @ East Wing, Rohas Perkasa, 8 Jalan Perak, 50450 Kuala Lumpur, Malaysia. The information with regards to the Respondent in this administrative proceeding is based on a database search in the Network Solutionsís Whois database conducted on July 17, 2001, copies of the printout of the database search are provided as Annex 1 to the Complaint filed.
2. The Domain Names and Registrar
The domain names in issue are:
Both domain names are registered with Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170-5139, United States of America.
3. Procedural History
A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on July 23, 2001, and was thereafter received in hardcopy form on July 25, 2001. The correct amount of administration fee was paid and this fact was recorded in item (21) of the Formal Requirements Compliance Checklist duly completed on July 27, 2001. The Center correctly verified that the Complainant satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Uniform Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and the WIPO Center Supplemental Rules for Uniform Domain Name Dispute Resolution Policy. The Center acknowledged receipt of the Complaint on July 25, 2001. Request for Registrar Verification was issued on July 26, 2001, and the Verification Response by the Network Solutions, Inc. was received on July 27, 2001. The Formal Requirements Compliance Checklist was duly completed by the Centerís Case Manager on July 27, 2001. "Notification of Complaint and Commencement of Administrative Proceeding" and a copy of the Complaint to the Respondent at the e-mail addresses provided for that purpose and to the postal address and facsimile number listed for the Respondent in the domain name registration on August 1, 2001. Copies of the Notification and Complaint were also sent to ICANN, the Registrar and the Complainant. The Respondent has failed to respond to the Complaint filed against him within 20 days of the date of receipt of the Notification of Complaint and Commencement of Administrative Proceeding. The Notification of Respondent Default was issued to the Respondent on August 22, 2001.
On September 13, 2001, having received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Susanna H.S. Leong (the "Panelist"), the Center notified the parties of the appointment of a single-member panel consisting of the Panelist. The Panelist is satisfied that the Administrative Panel was properly constituted. The date scheduled for the issuance of the Panelís decision is September 27, 2001.
4. Factual Background
The Complainant is the owner of the mark "Mbassy" and has filed a trade mark application for the mark "Mbassy" in relation to Class 41 "educational and entertainment services" on March 23, 2001, in Malaysia.
The domain names in dispute <mbassy.com> and <mbassy.net> are registered in the name of the Respondent with Network Solutions Inc. on November 24, 1999, and January 17, 2000, respectively.
In July 2000, the Respondent filed two trademark applications in Class 35 and one trademark application in Class 38 in respect of the mark "Mbassy" in Malaysia.
5. Partiesí Contentions
The Complainant asserts that he is the owner of the mark "Mbassy" and has since filed a trademark application for the said mark in relation to educational and entertainment services on March 23, 2001, in Malaysia.
In June 1999, the Complainant was desirous of creating an interactive website to strategically promote the Complainantís products to the teens market ("Mbassy Project"). The creation of the website was outsourced to Leo Burnett Advertising Sdn Bhd and Leo Burnett Cartwright Williams Direct ("Leo Burnett"). Pursuant to the award of the Mbassy Project to Leo Burnett, the Respondent was appointed by Leo Burnett to undertake the technical development of the Mbassy Project. The Complainant asserts that the mark "Mbassy" has been coined at this stage without any input from the Respondent.
The Complainant further asserts that the Respondent was entrusted with the responsibility of undertaking the technical development of the Mbassy Project and pursuant thereto, the Respondent procured the registration of the domain name <mbassy.com> ("Domain Name 1"). It is the Complainantís contention that the procurement of the registration of Domain Name 1 by the Respondent was for and on behalf of the Complainant with the consent of the Complainant and Leo Burnett.
In and about February 2000, the Respondent has ceased to be the technical supplier for the Mbassy Project. Despite numerous requests from Leo Burnett, the Respondent had failed and/or refused to relinquish Domain Name 1 to either Leo Burnett or the Complainant. On September 6, 2000, the Respondent attempted to sell Domain Name 1 to Leo Burnett via an electronic message addressed to one Lisa Watson from Leo Burnett.
The Mbassy Project was completed and was launched in February 2000. Following the launch and in view of the Respondentís refusal to relinquish Domain Name one to Leo Burnett or the Complainant, the "Mbassy" website has to be hosted at url "www.MyMbassy.com".
In July 2000, the Respondent had, without the knowledge of the Complainant and in bad faith, filed two trademark applications in Class 35 and one trademark application in Class 38 in respect of the mark "Mbassy" in Malaysia. The filing of the trademarks was made subsequent to the launch and use of the "Mbassy" mark by the Complainant.
In May 2001, the Complainant had through its solicitors, formally demanded for the transfer of Domain Name 1 to the Complainant. However, the Respondent had failed to respond to date.
It has also come to the knowledge of the Complainant that on January 17, 2000, the Respondent had also, without the knowledge of the Complainant and in bad faith, procured the registration of a second domain name <mbassy.net> ("Domain Name 2"). The Complainant asserts that to date there has been no actual or actual preparation of use in respect of the said Domain Name 2 since it was registered.
The Respondent has failed to submit a Response to the Complaint filed against him.
6. Discussion and Findings
On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Uniform Policy, (paragraphs 4(a), (b), (c)), the Administrative Panel concludes as follows:
(a) Whether the domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights?
The Administrative Panel finds that the mark "Mbassy" has been developed by Leo Burnett for the Complainant pursuant to the Mbassy Project, an interactive website to strategically promote the Complainantís products to the teens market. Since the successful completion and launch of the Mbassy Project in and about February 2000, the Administrative Panel notes that the Complainant has promoted the use of the mark "Mbassy" and by reason thereof, enjoys substantial goodwill and reputation in the said mark. Through usage of the mark "Mbassy" in relation to the services provided by the Complainant in the interactive website, the Administrative Panel finds that the Complainant has acquired rights in the said mark.
The Administrative Panel further finds that the domain names <mbassy.com> and <mbassy.net> registered in the Respondentís name and continue to be so held by the Respondent are identical to the mark "Mbassy" in which the Complainant has rights.
(b) Whether the Respondent has no rights or legitimate interests in respect of the domain names?
The Administrative Panel finds that the mark "Mbassy" did not originate from the Respondent and that at all material time, there was no evidence of actual or actual preparation of use in respect of the two domain names by the Respondent since registration. The Administrative Panel also finds that the domain name <mbassy.com> was registered by the Respondent pursuant to his capacity as the technical supplier of the Mbassy Project and that the domain name is held in the Respondentís name for and on behalf of the Complainant or his authorized representatives.
The Administrative Panel also finds that no evidence has been adduced to show that the Respondent has products or services that utilizes the mark "Mbassy" and no evidence has been adduced to demonstrate that the Respondent has rights or legitimate interests to the domain names in dispute, particularly in relation to:
(i) prior 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 by the Respondent;
(ii) the Respondent having been commonly known by the domain name, even if no trademark or service rights have been acquired;
(iii) the Respondent is 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.
(The Uniform Policy, paragraph 4 (c))
The Administrative Panel further notes that the Respondent has failed to submit a Response to the Complaint filed against him. In particular, the Respondent has failed to make submissions to demonstrate that he has rights or legitimate interests to the domain names. In accordance to the Rules for Uniform Domain Name Dispute Resolution Policy, paragraph 14, the Administrative Panel thus draws such inferences as she considers appropriate, which are that the Respondent is unable to adduce evidence to show cause that he has rights or legitimate interests to the said domain names.
The Administrative Panel thus finds that the Respondent does not have any rights or legitimate interests in the two domain names in question.
(c) Whether the domain names were registered and are being used in bad faith?
On the basis of the evidence submitted by the Complainant, in particular Annex 5 to the Complaint, the Administrative Panel finds that the Respondent did in fact attempt to sell the first domain name <mbassy.com> to one Lisa Watson from Leo Burnett via an electronic message dated September 6, 2000. In accordance to the Uniform Policy, paragraph 4(b), this fact indicates that the Respondentís reason for refusing to transfer the first domain name <mbassy.com> to the Complainant is to retain the first domain name primarily for the purpose of selling or otherwise transferring the domain name registration to the Complainant for valuable consideration in excess of out-of pocket costs directly related to the said domain name. Accordingly, the Administrative Panel finds that the first domain name <mbassy.com> is registered and retained by the Respondent in bad faith.
In respect of the Respondentís registration of the second domain name <mbassy.net>, the Administrative Panel finds that there was no evidence of actual or actual preparation of use of the domain name by the Respondent since its registration and in the absence of evidence adduced by the Respondent, the Administrative Panel infers that the circumstances surrounding the registration of the second domain name <mbassy.com> indicate that it is primarily for the purpose of selling, renting, or otherwise transferring the said domain name registration to the Complainant who is the owner of the trademark or service mark for valuable consideration in excess of any documented out-of-pocket costs directly related to the said domain name. Accordingly, the Administrative Panel finds that the second domain name <mbassy.net> is registered and is used by the Respondent in bad faith.
In accordance to paragraphs 4(i) of the Uniform Policy and 15 of the Rules, the Administrative Panel orders that the domain names in dispute, <mbassy.com> and <mbassy.net>, be transferred to the Complainant.
Susanna H.S. Leong
Dated: September 26, 2001