WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pesola Praezisionswaagen AG v. Registral.com, LLC
Case No. D2001-1117
1. The Parties
The Complainant is Pesola Praezisionswaagen AG of a/s Rolf Strohmeier, Rebmattli 19, CH-6340 Baar, Switzerland, represented by Florence Lucas of Gowling, Lafleur, Henderson, LLP of Montreal, Quebec, Canada.
The Respondent is Registral.com, LLC of 27026 Nichols Sawmill Road, Magnolia, 77355 , Texas, United States of America, represented by Mr. Sahar Sharid.
2. The Domain Name and Registrar
The disputed domain name is <pesola.com>.
The Registrar is Internet Names World Wide of Melbourne, Australia .
3. Procedural History
This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").
On September 10, 2001, the Center received an email from "Admin"[firstname.lastname@example.org] attaching a "Response to <pesola.com> complaint". The Complaint was received by the Center in hard copy on September 12, 2001, and by email on September 26, 2001. The Complaint was acknowledged on September 17, 2001. Next day registration details were sought from the Registrar. On September 19, 2001, the Registrar confirmed that the disputed domain name is registered in the name of the Respondent at the address mentioned above; that the Policy applies to the disputed domain name and that the language of the Registration Agreement is English.
On October 1, 2001, the Center satisfied itself that the Complaint complied with all formal requirements (including payment of the prescribed fee) and that day formally dispatched copies of the Complaint by post/courier (with enclosures) to the Respondent at the address as recorded with the Registrar and by email (without attachments). The Center also sent copies of the material by the same methods to the person named by the Complainant as the Respondentís representative, Howard M. Neu Esq.; by email to <email@example.com> and to <firstname.lastname@example.org>. The Center included with that material a letter dated October 1, 2001, containing notification of the commencement of this administrative proceeding, with copies (of the Complaint without attachments) to the Complainant, the Registrar and ICANN.
The last day specified by the Center for a Response was October 21, 2001. No further communication from the Respondent was received within the time specified in the Rules for a Response. On October 23, 2001, the Center notified the parties of the Respondentís default. On October 24, 2001, the Center received two emails from <email@example.com> referring to its Response of September 10, 2001. On October 24, 2001, the Center sought clarification from <firstname.lastname@example.org> and received an email from that address as follows:
"My name is Sahar Sarid, I used to work for Registral.Com LLC. Registral.com LLC is now a non active company, but still owns a few domains. As the person who still in charge of those domains I submitted a response on Sept 10th. Mr Howard Neu is not related to these proceedings in any way, and you may stop sending him e-mails relating to this dispute. If I know the Rules good enough, I can submit my response/s by e-mails and not by regular mail. Please let me know, thanks, Sahar."
On October 25, 2001, the Center acknowledged receipt of the "pre-commencement" Response and asked the parties to ignore the notice of default.
The Complainant elected to have the case decided by a single-member Administrative Panel ("the Panel") and on October 26, 2001, the Center notified the parties of the appointment of Alan L. Limbury as panelist, Mr. Limbury having submitted a Statement of Acceptance and Declaration of Impartiality and Independence. On October 26, 2001, the Center transmitted the case file to the Panel and notified the parties of the projected decision date of November 15, 2001.
The Panel is satisfied that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules; payment was properly made; the Panel agrees with the Centerís assessment concerning the Complaintís compliance with the formal requirements; the Center discharged its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint; the "pre-commencement" Response was filed within the time specified in the Rules and the Panel was properly constituted.
The language of the proceedings was English, being the language of the Registration Agreement.
4. Factual Background
Complainant's business is the manufacture and sale of spring scales and dynamometers. Its products are sold in North America. It owns trademark registrations in many countries including the United States, Canada and Switzerland for marks comprising the word PESOLA or for a design incorporating that word. The trademark PESOLA was first used by Complainant in Switzerland in 1964. It was registered by Complainant's representative as a word mark in the United States on November 5, 1985, having been first used in commerce in that country on March 20, 1976. In Canada, the word mark PESOLA was first used in 1976 and was registered on March 13, 1987.
On June 9, 1999, Complainant registered the domain name <pesola.net> and on June 29, 1999, <pesola.org>. It uses these in connection with its main website at <www.pesola.ch>.
The disputed domain name <pesola.com> was initially registered on January 4, 1998, with Network Solutions, Inc. ("NSI") by a Canadian entity named ABC Corp., apparently controlled by a Mr. Saluja Rameet. Following correspondence between Complainant's Canadian representative and Mr. Rameet, that registration was not renewed when it expired in January 2000. Complainant made efforts to secure the registration for itself. Although registration of the disputed domain name had expired, NSI on March 5, 2001, placed it on "hold-pay". Complainant was informed that NSI would delete the registration on April 5, 2001, when it would go out to the public for anyone to register on a "first come, first served" basis.
Complainant arranged through another registrar, Verio.net, that Complainant would try to register on April 4, 2001, and that Verio.net would follow up in order to secure the domain name for Complainant.
On April 3 and 4, 2001, Complainant tried to register the disputed domain name through both Verio.net and NSI but it was registered on April 5, 2001, in the name of commbine.com LLC of 27026 Nichols Sawmill Road, Magnolia 77355 Texas, United States of America (Complaint Ex. 11). The name of the registrant was subsequently changed to that of Respondent. (Complaint Ex. 18). Complainant asserts that Respondent registered the disputed domain name shortly after it had received notice from a domain name monitoring service that the name had been made available by NSI.
On May 8, 2001, the disputed domain name led to a website "being redesigned", offering a search facility through <7search.com> and links to other sites (Complaint Ex. 20).
On May 14, 2001, there were several exchanges of emails. First, Complainantís Canadian representative (without revealing that he was writing in that capacity) enquired of <email@example.com> whether he could buy the disputed domain name (Complaint Ex. 14). An almost immediate reply was received from Sal.S <firstname.lastname@example.org> with a "reply to" address of Sal. S. <Sal@commbine.com> saying:
The domain is not for sale and in development, it is part of MyFamilyName.Com (TM) network,
If you would like to make an offer, let me know and Iíll forward it for consideration.
Registral.com.LLC" (Complaint Ex. 14).
An offer of US$1,000 (Complaint Ex. 14) was rejected thus:
"our value in the domain for us is estimated at US$8000
Still, we rather develop it with connection to MyFamilyName.com (TM) then sell.
If you wish to make an offer that is around our value please let me know and I'll forward for consideration."(Complaint Ex. 14).
Complainantís representative then revealed to <email@example.com> that he was representing the trademark owners of PESOLA for USA, Canada and Europe. He said:
"If we cannot agree with you for a reasonable settlement for PESOLA.COM, we will simply go to WIPO and ask them to give us back what is ours.
The WIPO procedure would cost us US$1500, as proof of good faith I am ready to offer you the same amount" (Complaint Ex. 14).
This message was returned as undeliverable (Complaint Ex. 14). However, about an hour later Sal S. wrote:
"I'm sorry but there was a typo in my last e-mail to you.
`The value of this domain for us is estimated at US$18,000 and not US$8000.
Still and regardless, we are not interested in selling the domain and it is not for sale.
If you wish to make an offer, Iíll do my part and forward it for consideration." (Complaint Ex. 14)
On or about May 15, 2001, Mr. Sahar Sarid of Registral.com LLC, in response to and attaching the message which had previously been returned as undeliverable, wrote a lengthy email to Complainantís representative citing many cases under the Policy and including the statements:
"As our usage pertains to legitimate interest with connection to a trademark application that was filed on Feb 14th, 2001, and our registration was made without knowledge of your clients trademarks, and the fact that even though you asked to buy the domain it was never for sale and still is not for sale, therefore our registration was not made in bad faith and neither will our usage be in bad faith."
"As our usage will be in the arena of providing genealogical services within our MyFamilyName.com (TM) offering, we would not be infringing the scope of the trademark your client holds."
"In light of the above, I believe your clients would be best advised to admit that this is a nonproprietary domain name, it is not coined or fanciful term and that any negotiation should proceed as per any normal acquisition and that is by finding a common agreement rather than threats of abusing the arbitration system." (Complaint Ex. 15).
On May 15, 2001, the web page at the disputed domain name contained references to "Other Pesola Families from WhitePages.com", "Other Pesola Sites" (including those of David A. Pesola, MD and Nick Pesolaís Neon Accent) and "Interesting Stats about Pesola".
A formal "cease and desist" letter on behalf of Complainant was sent to the registrant Commbine.com on May 17, 2001, by telecopy and by personal service, the latter being effected on June 8, 2001, on "Vice President Shunit Sarid" (Complaint Ex. 16).
Respondentís then representative, Howard M. Neu Esq., responded to the "cease and desist" letter on May 22, 2001, referring to his clients earlier lengthy e-mail (mentioned above) and asserting that the domain was neither registered nor is being used in bad faith, but rather as a legitimate business use by his clients. His letter ended:
"We sincerely believe that we will successfully defend any such claim, but, by the same token, are willing to settle this matter at a reasonable price." (Complaint Ex. 17).
By June 17, 2001, the site at <pesola.com> contained a much wider range of links to other sites while retaining the links to "other Pesola families and friends from WhitesPages.com" and "other interesting Pesola sites" (Complaint Ex. 20).
By June 18, 2001, the name of the registrant had been changed to that of Respondent, Registral.com LLC (Complaint Ex. 18).
Further changes to the site had been made by August 14, 2001, but the search facililty of <7search.com> and the link to "other pesola families and friends" remained.
5. Partiesí Contentions
Complainant requests the Panel to direct that <pesola.com> be transferred to the Complainant upon the following legal grounds:
Identity or confusing similarity
The disputed domain name is identical to Complainant's well-established PESOLA trademark and incorporates it in its entirety. The mark is not a generic name in respect of spring scales and dynamometers and is not the name in any language of any of the wares or services for which Complainant uses and proposes it. Accordingly, it has been accepted in several countries as a distinctive trademark.
The Respondent has no legitimate interests in the disputed domain name.
Respondentís only interest is to sell, rent, or otherwise use the disputed domain name for profit.
Respondent has previously been guilty of cybersquatting, since it has been involved in such illegal actions with South China Morning Post Publishers Limited (WIPO Case No. D2000-0707), Garth Brooks (NAF Case No. FA0011000096097) and Fisher Controls International Inc. (NAF Case No.FA0102000096749).
Accordingly, Respondent could not have any intent (or any ability) to use the disputed domain name in any legitimate manner, in conjunction with any bona fide offering of goods or services.
Respondentís assertion that it has legitimate genealogical interests in the <pesola.com> domain name is without merit.
<pesola.com> and <myfamilyname.com>ís common website does not provide any information about PESOLA family and does not have any link to a website in respect of genealogical services. MyFamilyNames was introduced in response to ICANN Policyís complainants. Respondent modified its website several times since the <pesola.com> domain name registration in May 4th, 2001, but never offered a link to a genealogical site.
Respondent owns at least four other domain names that one could argue correspond to family surnames: <ebbay.com>, <mcaughan.com>, <sarid.com> and <googel.com>. It defies logic and reason to believe that Respondent has registered these domain names as part of a legitimate genealogical network. The small number of individuals with the EBBAY, MCAUGHAN, SARID or GOOGEL surname renders such an argument unbelievable. Respondent has registered them in an attempt to profit off them since Respondent has linked the domain names to bounty-paying third-party search engines such as well-known <whitepages.com> and <7 search.com> and not to any genealogical site.
Respondent is not commonly known by the domain name and registered the <pesola.com> domain name only in April 2001. According to Respondentís assertions, its only interest in the PESOLA name is as a surname for its MYFAMILYNAME genealogical website. Respondent has acquired no trademark or service mark rights in any name remotely similar to the disputed domain name.
In light of this above prior conduct, Respondent is not making a legitimate non-commercial or fair use of <pesola.com> domain name.
The disputed domain name was registered and is being used in bad faith.
Respondent has previously been found under ICANN Policy to have registered Internet domain names in bad faith. Today, Respondent continues its cybersquatting activities, in bad faith, through the <pesola.com> domain name.
Respondentís only plausible reason for registering the <pesola.com> domain name was for the purpose of selling, renting or otherwise transferring it to another, for an amount of valuable consideration in excess of Respondentís costs. Such is Respondentís business. Repondent is engaged in the sale of domain names.
One of Respondentís business interests involves trafficking in Internet domain names. According to a Washington Post Article (Ex. 26), Mr. Sarid is a young computer programmer whose interests include "think[ing] of Internet domain names that he [can] buy for the standard $70 fee and sell at a huge profit to large corporations.(Ö)"
Respondent claims it has not directly offered the domain name to Complainant. In fact, Respondent knows very well the rules of ICANNís Policy since its has failed before the arbitration Panel at least three times in relation to the illegal appropriation of a domain name (See South China Morning Post Publishers Limited, Garth Brooks and Fisher Controls International Inc. cases). That is why Respondent is prepared to make answer to any claim against its domain name registrations and furnished a ready-made response to Complainant in its May 14, 2001, emails.
Instead of making a direct offer, Respondent wrote that the value of the disputed domain name was estimated at US$18, 000 and invited Complainant to make its offer. Considering the Respondent does not have any legitimate interest in the disputed domain name, that Respondent invited Complainant to bid on it and was ready to sell it for US$18 000, Respondentís aim was to sell it to Complainant or any other entity interested in it.
The amount of US$18 000 is disproportionate and in excess of Respondentís out-of-pocket costs directly associated with the disputed domain name.
The Respondent has engaged in a pattern of conduct of registering domain names to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, which is evidence of registration and use in bad faith: Gamesville.com, Inc. v. John Zuccarini, FA 95294 (Nat. Arb. Forum August 30, 200).
Respondent has a history of registering temporarily lapsed or infringing domain names. Again, Respondent has previously been found under the Policy to have registered in bad faith <southchinamorningpost.com>, <garthbrooks.com> and <fisher.com> domain names.
Respondentís current business plan now appears focused on registering the recently-lapsed Internet domain names of others. As example, Respondent owns <ebbay.com>, <mcaughan.com>, <sarid.com> and <googel.com> domain names. The manner in which Respondent has utilized these domain names indicates that, in each instance, Respondent uses them in bad faith.
Respondentís <ebbay.com> domain name is subject to potential challenge by eBay Inc., operators of the famous web auction site. <google.com> is subject to potential challenge by GOOGLE, Inc., the company that owns the famous GOOGLE trademark and runs the significant and well-established Internet search engine <google.com>. Those domains are a good source of potential misdirected traffic and a good source of search-engine "bounties" for Respondent.
In an attempt to create a cover for its <ebbay.com> and GOOGLE.com sites, Respondent has - just as it has for <mcaughan.com>, <sarid.com>, <fisher.com>, <garthsbrooks.com>, <southchinamorningpost.com> and <pesola.com> Ė included text referring to the site as an alleged genealogical site. Like those sites, the <pesola.com> site is nothing more than a portal for performing searches using a bounty-paying search engines.
Respondent is in the business of providing links to third party search engines and receiving a bounty payment each time one of the Respondentís domain names is used to access such a search engine. Typing a search term into the space provided at Respondentís <pesola.com> and <myfamilyname.com> sites and hitting the "search button" will result in a search being performed by search engine. This is evidenced by the fact that typing a search term into the Query and hitting return will produce search results that come from the search engine. As reflected on the <7Search.com> website, Respondent receives a bounty payment from the search engine (four cents $0.04) each time such a search is performed via entry from one of Respondentís websites.
<mcaughan.com>, <sarid.com>, <ebbay.com>, <google.com> and <pesola.com> directly access the same bounty-paying third-party search engine.
Respondent registered the <pesola.com> domain name to intentionally attract, for commercial gain, Internet users to its website, or other online location, by creating a likelihood of confusion with Complainantís well-established PESOLA trade-mark as to the source, sponsorship, affiliation and endorsement of Respondentís website.
B. The Respondent
Complainant was repeatedly told the domain was not for sale, after that they have used the Policy to threaten us and try to negotiate a deal. Is this what the Policy has come down to? A tool used by companies to negotiate and hijack domain names when they feel like it?
As Complainant states they were making deals with the Registrar to get the domain name, which is clearly against the principle of first come first served. We cannot understand why WIPO proceedings werenít initiated with the previous owner and why we were threatened with WIPO action.
The <pesola.com> site does have links to other pesola-related information.
We are losing cases because of past decisions against us although we clearly state, time and again, that our domains are not for sale and if they are, they are generic and we have the right to sell them. We ask this panel to consider our pleadings here and serve justice. Complainant acted in bad faith to try and buy the name from us without indicating they own a trademark for the name. After finding it is not for sale and we are not willing to sell, they threatened action under the Policy in order to negotiate to what they wanted to pay.
We are trying to run an Internet business based on family domain names such as <fisher.com>, <pesola.com>, <googel.com>, <ebbay.com> and others. In the process, we are getting caught with trademarks issues by companies who will not take "no" for an answer. Our network cannot be built without the budget to do so, and this may take some time. The more we spend on litigation, the less we have to invest in our future business, and longer it will take to create our network.
Also one would think that <ebbay.com> and <googel.com> were only purchased because they are typo names of famous sites, they were bought because they are family names in an automatic process. We bought our family-based domain names from lists of family names. Overall we bought over 1,600 family based domain names. Most of them are not popular names since all the good and popular names were gone, mostly by a company name Mailbank (<mailbank.com>), which runs an email based service, based on family domain names.
At the time of purchase Registral.com LLC was an active company with plans to develop a family-based domain name network. There was absolutely no bad faith registration of our side with registering this domain name. Also they were told that the name is not for sale, they just didn't like that answer. Using WIPO and the Policy to BID to your price is no way to do business!!
6. Discussion and Findings
Under paragraph 15(a) of the Rules, the Panel must decide this Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
To qualify for cancellation or transfer, a Complainant must prove each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Identity or confusing similarity
Essential or virtual identity is sufficient for the purposes of the Policy: see The Stanley Works and Stanley Logistics, Inc v. Camp Creek. Co., Inc. (WIPO Case No. D2000-0113), Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd. (WIPO Case No. D2000-0802); Nokia Corporation v. Nokiagirls.com a.k.a IBCC (WIPO Case No. D2000-0102) and Blue Sky Software Corp. v. Digital Sierra Inc. (WIPO Case No. D2000-0165).
The Panel finds the disputed domain name is identical to Complainantís trademark PESOLA. That mark is neither generic nor descriptive but is a coined or fancy word distinctive of the goods of Complainant in markets which include that of the United States of America.
The Complainant has established this element.
Complainant has not authorized Respondent to use its trademark nor to register the disputed domain name. Respondent is not known by the disputed domain name.
In its e-mail communication with Complainantís representative on or about May 15, 2001, (Complaint Ex. 15), Respondent asserted that it had filed an application to register a trademark prior to registration of the disputed domain name. Had that been so, it could have had an important bearing on the issue of legitimacy. The Respondent has had sufficient experience of administrative proceedings under the Policy to have been fully aware of the benefit to be gained by proving that it had filed a trademark application for a mark comprising or containing the word PESOLA before notice to it of this dispute. Respondent has provided no such evidence and the Panel concludes that this was a concoction.
The Panel finds that notice to Respondent of the disputed domain name was given to Respondent on May 14, 2001, when Complainant's representative, by e-mail, threatened to initiate WIPO proceedings (Complaint Ex. 14). That Respondent so understood this e-mail is demonstrated by the content of its reply on or about May 15, 2001 (Complaint Ex. 15), which contained references to numerous decisions under the Policy and arguments, many of which are repeated in its Response.
Prior to receiving notice of the dispute on May 14, 2001, and thereafter, Respondent has used the domain name to provide links to other sites and, most prominently, to offer direct use of the <7search.com> search engine. Internet users seeking Complainant's website arriving at Respondent's website <www.pesola.com> would be likely immediately to realize that they had reached the wrong destination. They would be confronted by an opportunity to enter another domain name into the <7search.com> search facility prominently provided by Respondent. Many would be likely to try another variation of the PESOLA name in an endeavour to arrive at Complainantís website. Respondent has received four cents for each occasion upon which such a search was conducted.
The panel concludes, on all the material provided by the parties (including the similar uses by Respondent of the domain names <ebbay.com>, <googel.com>, <sarid.com>, and <mcaughan.com>) that the generation of revenue from Internet users thus mistakenly arriving at the website was one of the purposes for which the website was established and for which the disputed domain name was registered. This is not use of the disputed domain name in connection with a bona fide offering of goods or services nor is it fair use, without intent for commercial gain misleadingly to divert consumers. Nor is this a non-commercial use of the disputed domain name.
The panel finds the Complainant has established this element. The Respondent has no rights or legitimate interest in the disputed domain name.
Bad faith registration and use
Complainant has not asserted that there is any connection between Respondent and ABC Corp. or Mr. Rameet.
Despite Respondent's protestations that the disputed domain name was not and never has been for sale, the Panel is satisfied, having reviewed all the relevant communications from Respondent and its representative, that the prospect of selling the disputed domain name for profit was always in Respondent's mind, from the moment the disputed domain name was registered. Every communication by or on behalf of Respondent, even those most strenuously stating that the disputed domain name was not for sale, nevertheless kept open the prospect of such a deal being done. The value placed by Respondent on the disputed domain name more than doubled as soon as it became apparent that the person interested in acquiring it was Complainant.
Paragraph 4 (b)(i) of the Policy provides that it shall be evidence of both bad faith registration and bad faith use if it be established that sale at a profit to Complainant or a competitor of Complainant was the primary purpose of registering the disputed domain name. The Panel finds that sale at a profit was one of the purposes of Respondent when the disputed domain name was registered, but that this was not the primary purpose. Nevertheless, since the circumstances set out in paragraph 4 (b) of the Policy are not exhaustive, the Panel finds that the disputed domain name was registered in bad faith in that it was registered opportunistically for the purposes of generating "click-through traffic" revenue from Internet users mistakenly believing they were travelling to Complainant's site and for sale at a profit to Complainant or to anyone else prepared to pay Respondent's price, should the opportunity arise.
The Panel finds that, by using the disputed domain name to generate "click-through traffic" revenue from Internet users mistakenly believing they were travelling to Complainant's site, Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating the likelihood of confusion with Complainant's mark as to the source of Respondentís website. Such use is evidence of both bad faith registration and bad faith use: Policy, paragraph 4(b)(iv).
Having regard to Respondent's registration of the domain names <ebbay.com> and <googel.com> and to Respondent's utterly unconvincing explanation as to their selection, the Panel finds that another of the purposes of Respondent in registering the disputed domain name was in order to prevent the owner of the PESOLA trademark from reflecting that mark in a corresponding domain name, and that Respondent has engaged in a pattern of such conduct. This is evidence of both bad faith registration and bad faith use under paragraph 4 (b)(ii) of the Policy.
The Panel finds that the Respondent has acted in bad faith both in registration and use of the disputed domain name.
The Complainant has established this element.
Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel directs that the domain name <pesola.com> be transferred to Complainant.
Alan L. Limbury
Dated: November 13, 2001