WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Puky GmbH v. Ignatius Agnello
Case No. D2001-1345
1. The Parties
The Complainant is PUKY GmbH, Fortunastraße 11, 43489 Wülfrath, Germany.
The Respondent is IGNATIUS AGNELLO, 9A Rutgers Road, Piscataway, NJ 08854, USA.
2. The Domain Name and Registrar
The Domain Name in dispute is <puky.com>. The Registrar of the domain in dispute is Register.com, Inc.
3. Procedural History
The Complaint was received by World Intellectual Property Organization Arbitration and Mediation Center (WIPO) by email on November 12, 2001, and in hardcopy form on November 14, 2001. WIPO has verified that the Complaint satisfies the formal requirements of the Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules") and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.
The Complaint was properly notified in accordance with the Rules, paragraph 2(a). Register.com, Inc. has confirmed that <puky.com> ("the Domain Name") was registered through Register.com, Inc. and that Ignatius Agnello is the current registrant. The Registrar has further confirmed that the Policy is applicable to the Domain Name.
On November 23, 2001, WIPO notified the Respondent of the Complaint in the usual manner and informed the Respondent inter alia that the last day for sending its Response to the Complainant and to WIPO was December 13, 2001. WIPO received a Response on December 13, 2001. WIPO issued a Response Deficiency Notification on December 13, 2001, and on December 14, 2001, the requisite Amendment to the Response was received by WIPO. On December 19, 2001, WIPO received a Request from the Complainant to make a further submission. The Panel sees no reason to admit any further submissions.
The Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
No further submissions were received by WIPO or the Panel, as a consequence of which the date scheduled for the issuance of the Panel’s Decision is January 4, 2002.
4. Factual Background
The Complainant is a German manufacturer of vehicles for children. It operates internationally and distributes its products all over the world. Its home page is to be found at <www.puky.de>.
The Complainant is the proprietor of trade mark registrations of or including the word "PUKY" dating back to 1957.
The Respondent resides in Piscataway, New Jersey, USA. He registered the Domain Name on March 27, 2000, and it is not in dispute that the Domain Name has never been connected to an active web site of the Respondent.
In June 2001, the Complainant tried to purchase the Domain Name from the Respondent. The Respondent replied "I am willing to sell the Domain Name puky.com for US$50,000, 50% to be wired in advance and the balance 50% on signing of a purchase agreement. If you are interested, let me know. Regards, Ignatius".
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical to the Complainant’s trade mark "PUKY". It contends that the Respondent has no rights or legitimate interests in the Domain Name. It asserts that it has made enquiries and has been unable to establish that the Respondent owns any trade mark, company name etc pertinent to the Domain Name. It says that the Complainant has neither licensed nor otherwise permitted the Respondent to use the trade mark. It asserts that the Respondent is not engaged in any business activities that utilise the Domain Name nor, to the best of the Complainant’s belief, is the Respondent commonly known by the disputed Domain Name.
So far as the Complainant has been able to establish, the Respondent does not use nor has it made any preparations to use the Domain Name in connection with a bona fide offering of goods or services. It asserts that a clear proof of lack of intent of a bona fide use is that the web site has not changed since registration of the Domain Name. It observes that "PUKY" is an invented word and as such is not one which traders would legitimately choose unless seeking to create an impression of an association with the Complainant.
The Complainant contends that the Domain Name was registered and is being used in bad faith. It points to paragraph 4(b)(i) of the Policy and, on the basis of the email quoted above demanding US $50,000 for the Domain Name, it asserts that the Domain Name was clearly registered by the Respondent primarily for the purpose of selling the Domain Name to the Complainant for a sum well in excess of his out of pocket expenses.
In anticipation of an argument from the Respondent that there has been an extensive delay between registration of the Domain Name on the one hand and the demand for the substantial sum of money on the other, the Complainant asserts that the absence of any activity on a web site connected to the Domain Name demonstrates the lack of any actual interest of the Respondent in the Domain Name. In the view of the Complainant that inactivity indicates the lack of any legitimate interest in the Domain Name.
The Respondent does not dispute that the Domain Name is identical to the Complainant’s trade mark. However, the Respondent asserts that he does indeed have rights and legitimate interests in respect of the Domain Name. He says that he ventured into the business of real estate development with a view to developing a proposed elder care facility in Southern India. The name of the proposed project is PURKHON KI YADEN. The Domain Name is derived from the first two letters of PURKHON and the initial letters of KI and YADEN.
He produces a document briefly outlining the nature of the proposal. It is undated. It is headed "PURKHON KI YADEN…Ancestral Memories". He also produces a Service Agreement dated April 15, 2000, between the Respondent and Softpride Systems Inc., a New Jersey Corporation. By this agreement, Softpride agrees to provide web site design services "for PURKHON KI YADEN (PUKY.COM)". The Agreement is signed and dated. The Respondent also produces an invoice dated January 28, 2000, from American Speedy Printing Centers. The Invoice is addressed to "PURKHON KI YADEN c/o Ignatius Agnello" and one of the items described on the invoice is 200 brochures – PURKHON KI YADEN at a price of US $350.
The Respondent contends that he initiated the proposed development of the real estate project in January 2000, and says that PURKHON KI YADEN is expected to commence operations by mid 2003. The plan is for the web site to be launched on the internet by the end of the year 2002.
He contends that the primary purpose for the registration of the Domain Name was in order to host the web site for PURKHON KI YADEN.
The Respondent asserts that he had no intention of registering the Domain Name in order to sell it and he exhibits two email exchanges in May 2000, demonstrating third party offers to purchase the Domain Name, which he turned down.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The Domain Name is identical or confusingly similar to a trade mark 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 Domain Name has been registered and is being used in bad faith.
Identical or confusingly similar
The point is not in issue. The Domain Name comprises the Complainant’s trade mark and the generic .com suffix. The Panel finds that the Domain Name is in substance identical to a trade mark in which the Complainant has rights.
Respondent’s Rights or Legitimate Interests
Paragraph 4(c) of the Policy is addressed to respondents and is headed "How to demonstrate your rights to and legitimate interests in the Domain Name in responding to a Complaint". It goes on:
"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the Domain Name for purposes of paragraph 4(a)(ii):
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 and services; or
ii) you (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trade mark or service mark rights; …".
The Complaint does not indicate when the Complainant first drew the attention of the Respondent to the nature of the Complainant’s Complaint. Certainly, it was not before June 2001, when a Mr. Kelly, not obviously having anything to do with the Complainant, but nonetheless acting on behalf of the Complainant, sought to purchase the Domain Name.
The documents attached to the Response (assuming that they are not forgeries) demonstrate clearly that the Respondent has been planning to trade under the name PURKHON KI YADEN since at least as early as January 28, 2000, being the date of the invoice referred to above. The Service Agreement of April 15, 2000, demonstrates that as of that date, the Respondent was planning to develop a web site for PURKHON KI YADEN and using the Domain Name for that web site.
In the face of that evidence, the Panel finds that the Complainant has failed to prove that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Having come to the conclusion that the Complainant has failed to prove that the Respondent has no rights or legitimate interests in respect of the Domain Name, the Complaint fails. It is therefore not strictly necessary for the Panel to address the bad faith claim.
However, if, as the Panel has found on the evidence before it, the Respondent’s intentions at the time of registration of the Domain Name were bona fide, no amount of subsequent bad faith behaviour by the Respondent can render the Complaint successful.
The fact that the Respondent has made a demand for a very substantial sum of money in response to Mr. Kelly’s request to purchase the Domain Name is not of itself evidence of bad faith. There is no evidence to suggest that he knew whom Mr. Kelly was representing. There is nothing to suggest that the Respondent had ever heard of the Complainant. The fact that the Complainant trades in the US is not enough; and if the Respondent had not heard of the Complainant or its trade mark at the time of registration of the Domain Name, the bad faith claim cannot succeed.
The size of the demand made of Mr. Kelly may simply indicate what the Respondent believes to be a fair sum given the demand for the Domain Name and the Respondent’s investment in it. It could also be that the Respondent, as he says, is not interested in selling it and simply put a ridiculous figure on it to make Mr. Kelly go away. The fact that the Respondent failed to deal with the $50,000 demand in his Response surprised the Panel, but in light of the above considerations, the Panel regards it as of no consequence.
The delay in developing the site might have been of assistance to the Complainant if the Respondent had not had a rational explanation for his choice of the Domain Name.
If the Complainant is correct, this can only be because the evidence put in by the Respondent is forged. The Panel has nothing before it to enable it to come to any such conclusion.
The Panel finds that the Complainant has failed to prove that the Domain Name was registered in bad faith and is being used in bad faith.
The Complaint is dismissed.
Dated: January 3, 2002