WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Neonet AB v. Neonet (TM) Ltd.
Case No. D2001-1285
1. The Parties
The Complainant in this administrative proceeding is NeoNet AB (publ) based at Kungsgatan 33, SE-103 93 Stockholm, Sweden, represented by Gunnar Hjalt, Awapatent AB, PO Box 45086, SE-104 30 Stockholm, Sweden.
The Respondent is Neonet (TM) Ltd. at PO Box 102, Lappeenranta, 53101, Finland.
2. The Domain Name and Registrar
The domain name at issue is <neonet.com> ("the Domain Name"). The Domain Name is registered with Tucows Inc., 96 Mowat Avenue, Toronto, ON, M6K 3MI, Canada.
3. Procedural History
The Complainant filed a complaint ("the Complaint") with the World Intellectual Property Organization Arbitration and Mediation Center ("the Center") electronically on October 23, 2001, and by hard copy on October 26, 2001.
On October 29, 2001, the Center acknowledged receipt of the Complaint.
On October 29, 2001, the Center transmitted to Tucows Inc. a request for registrar verification in connection with this case so as to:
- confirm that the Domain Name at issue is registered with Tucows Inc.;
- confirm that the person identified as the Respondent is the current registrant of the Domain Name;
- provide full contact details, i.e. postal address(es), telephone number(s), facsimile number(s), e-mail address(es) available in the Registrar's Who is database for the registrant of the disputed Domain Name, the technical contact, the administrative contact, and the billing contact for the Domain Name.
The same day, Tucows Inc. responded to the Center's request for registrar verification and confirmed that Tucows Inc. is the registrar of the Domain Name. It indicated that the Domain Name was registered in the name of Neonet (TM) Ltd., PO Box 102, Lappeenranta, Kymi 53101, Finland and that the administrative and technical contact is the seat of Neonet (TM) Ltd.
On October 31, 2001, the Center verified that the Complaint met the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules").
The panel has reviewed the documentary evidence provided by the Parties and the Center and agrees with the Center's assessment that the Complaint complies with the formal requirements of the aforementioned Rules.
The administrative proceeding commenced on November 2, 2001. The same day, the Complaint was notified to Respondent.
On November 22, 2001, Respondent filed a Response, the receipt of which was acknowledged by the Center the day after.
On December 10, 2001 the Center received a Supplement to the Response, which was acknowledged by the Center on December 12, 2001.
Upon receipt of the necessary declaration of independence and impartiality of each member of the present panel, the Center appointed on December 13, 2001, Prof. Charles Gielen (presiding panelist), Diane Cabell and Knud Wallberg as members of the administrative panel.
4. Factual Background
According to the Complainant the company of the Complainant was incorporated in 1996 and the trademark Neonet was applied for in France on February 1, 2001 and in Denmark and Germany on January 31, 2001. According to the Complainant the mark has been used since 1999. No proof of such use was given and no document from which the incorporation of the company under the name Neonet appears was filed. The company offers institutional investors and broker-dealers trading access to multiple stock markets and provides direct access to multiple equity markets.
Respondent files a document from which it appears that the company Neonet Ltd. was incorporated in St. Petersburg, Russia, on October 11, 2000. A trademark application for Neonet was filed in Russia on July 18, 2000. Respondent files as Annex 13 a copy of an agreement between its predecessor, Neo Ltd. and Forum Enterprises LLC., a US company entered into on July 24, 2000 according to which the Domain Name, originally in the name of Forum Enterprises LLC, was assigned to Neo Ltd.
According to the Whois database the record for the Domain Name was created on December 21, 1999.
5. Parties' Contentions
Complainant alleges that the Domain Name is identical to the trademarks registered and used by Complainant. It is pointed out that Respondent does not carry any legitimate business under the trademark Neonet and has no registration in the commercial register in Finland. Respondent furthermore uses other domain names with a similar website content. There is no activity under the Domain Name and there is no legitimate interest. Furthermore the Domain Name is registered and used in bad faith. An offer for sale of the Domain Name to Complainant of $ 30.000 was made and furthermore Complainant points at decision D2000-0406 in which the Domain Name was mentioned in the context of another bad faith case.
Respondent does not dispute that the trademark Neonet is identical to the Domain Name.
However it asserts that it has legitimate rights with regard to the name Neonet, briefly because its use predates any rights to and/or use of Neonet by Complainant. In this context Respondent points at a printout of the Swedish Patent and Registration Office database (Annex 19) according to which the name Neonet of Complainant was registered on May 9, 2000 and according to which the company of the Complainant acted under the name Neotrading beforehand. It also draws the attention to the registration date of the Domain Name (being December 21, 1999) and the agreement of assignment of July 24, 2000. The registration of this Domain Name predates the date on which the company of Complainant was registered under the name Neonet and the dates on which Complainant applied for registration of Neonet as a trademark. Respondent also possessed a registration of the domain name <neonet.spb.ru> (see Annex 16) that predates any use or registration of Neonet by Complainant. Respondent also alleges prior use of the Domain Name since 1994.
Furthermore Respondent states that in view of the predated registration of the Domain Name, this name is not registered or used in bad faith. Furthermore the email correspondence filed by Complainant as Annex 6 in which discussion about possible assignment of the Domain Name took place, was not sent on behalf of Respondent and Respondent denies having authorised the Business Service Ltd. and/or Vladimir Shadrunov to act on its behalf.
6. Discussion and Findings
To succeed in its Complaint, Complainant must show that each of the conditions of paragraph 4(a) of the Policy are satisfied, namely that
1. the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
2. Respondent has no rights or legitimate interests in the Domain Name, and
3. the Domain Name has been registered and used in bad faith.
These three elements will be considered below.
6.1. Identity or confusing similarity
Respondent does not dispute that the Domain Name is identical with Complainants' trademark. The panel finds that the Domain Name and the trademarks of Complainant are identical.
6.2. Rights or legitimate interests
The panel is of the opinion that Respondent gave convincing evidence that the Domain Name was registered by its predecessor prior to any use or registration of Neonet as a commercial name, brand name or trademark by Complainant. Complainant did not give any evidence of its allegation that the name Neonet has been used by it since 1996. From the evidence filed by Respondent it becomes clear that Complainants' commercial name is registered only since May 9, 2000 (see Annex 19 Response). There is no proof whatsoever of any use and/or registration of Neonet by Complainant before the first registration and/or use by Respondent. The panel concludes that condition 2 is not fulfilled.
6.3. Bad Faith
According to paragraph 4(a)(iii) of the ICANN Policy, it is incumbent on Complainant to prove that Respondent has registered and is using the Domain Name in bad faith. The panel is of the opinion that the circumstances indicate clearly that there is no case of bad faith. On the contrary, the registration of the Domain Name predates any use and/or registration of Neonet by Complainant. Even if an offer for sale of the Domain Name would have been made by Respondent, an amount of $ 30.000 would be quite understandable under these circumstances. In view of the findings of the panel with respect to the question of legitimate interests on the side of Respondent, a decision on the question whether or not the negotiations on assignment of the Domain Name were authorised by Respondent does not need to be made.
For the foregoing reasons, the panel concludes and decides that the Complaint is denied.
Prof. Dr. Charles Gielen
Dated: January 2, 2002