WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Supremo n.v./s.a v. Rao Tella (supremo.com)
Case No. D2001-1357
1. The Parties
The Complainant is Supremo n.v./s.a, a Belgian corporation with its principal place of business at Brugge, Belgium. The Complainant is represented by Mr. Yves Tombeur.
The Respondent is "supremo.com", Rao Tella of Ann Arbor, MI, U.S.A. The Respondent is represented by ESQwire.com Law Firm of Cherry Hill, NJ, U.S.A. The Respondent was shown in a WHOIS database as "supremo.com" with the same address as that of Mr. Tella. No explanation has been offered as to why registration was not effected in the name of Mr. Tella.
2. The Domain Name and Registrar
The domain name at issue is <supremo.com>. The domain name is registered with Bulk Register.com, Inc. of Baltimore, MD, U.S.A. The name was registered on November 19, 1998.
3. Procedural History
The Complaint submitted by Supremo n.v./s.a was received on November 14, 2001, (electronic version) and November 21, 2001, (hard copy) by the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center"). An amended Complaint was submitted before any notification to the Respondent.
On November 20, 2001, a request for Registrar verification was transmitted by the WIPO Center to the Registrar, requesting it to:
- Confirm that a copy of the Complaint had been sent to it by the Complainant as required by WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"), paragraph 4(b).
- Confirm that the domain name at issue is registered with the Registrar.
- 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), email address(es), available in the Registrarís WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact for the domain name.
- Confirm that the Uniform Domain Name Dispute Resolution Policy is in effect.
- Indicate the current status of the domain name.
By email dated November 21, 2001, the Registrar advised the WIPO Center as follows:
- It had received a copy of the Complaint from the Complainant.
- It is the Registrar of the domain name registration <supremo.com>.
- <supremo.com> is shown as the "current registrant" of the domain name. Mr. Tella is the administrative, technical and billing contact.
- The Uniform Domain Dispute Resolution Policy applies to the registration.
- The domain name registration <supremo.com> is currently Ďon Registrar lockí.
The Registrar has currently incorporated in its registration agreements the Uniform Domain Name Dispute Resolution Policy adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") (hereinafter simply the "Policy").
The advice from the Registrar that the domain name in question is still Ďon Registrar lockí indicates the Respondent has not requested that the domain name at issue be deleted from the domain name database. The Respondent has not sought to terminate the agreement with the Registrar. Accordingly, the Respondent is bound by the provisions of the Policy. The Respondent has not challenged the jurisdiction of the Panel.
On November 22, 2001, the WIPO Center notified the Complainant that the Complaint did not correctly identify the Respondent: the initial Complaint identified Mr. Tella as the Respondent rather than "supremo.com", the latter of which is listed as the registrant of the domain name. On November 23, 2001 (by email) and November 26, 2001 (in hard copy) the Complainant amended the Complaint to specify "supremo.com" as the Respondent.
Having verified that the Complaint, as amended, satisfied the formal requirements of the Policy and the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"), the WIPO Center on November 27, 2001, transmitted by courier and by email a notification of the Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Complaint was also emailed to the Registrar and ICANN.
The Respondent was advised that a Response to the Complaint was required within 20 calendar days. The Respondent was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email.
After having been granted an extension of time, a response was received by the WIPO Center from the Respondent on December 19, 2001 (electronic) and December 22, 2001 (hard copy). Although the Complainant had requested a single Panelist, the Respondent requested a three-person Panel.
The WIPO Center invited the Honorable Sir Ian Barker QC of Auckland, New Zealand to serve as Presiding Panelist in the case. It invited Professor David Sorkin of Chicago, IL, U.S.A, and Ms. Dawn Osborne of London, U.K., to be Panelists. It transmitted to each of them a statement of acceptance and requested a declaration of impartiality and independence.
All Panelists duly advised acceptance and forwarded to the WIPO Center an executed declaration of impartiality and independence. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules. Both parties have paid the appropriate fees to WIPO Center.
On February 6, 2002, WIPO Center forwarded to the Panel by courier the relevant submissions and the record. In terms of Rule 15(b), in the absence of exceptional circumstances, the Panel was required to forward its decision by February 20, 2002.
The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules and the Supplemental Rules.
4. Factual Background
Complainant was incorporated in Belgium in 1989. It trades in green/raw coffee all over the world, supplying many large corporations such as Nestlé, Kraft, and Sara Lee. Its current annual turnover is about 25 million EUR.
It owns no registered trademarks for the name "supremo" but claims that it has acquired a "common law" mark for the name by virtue of its worldwide dealings with coffee producers and coffee users in various countries, plus extensive advertising and its attendance at trade fairs and the like.
Respondent is a website developer who operates a number of websites. He claims that he registered the domain name in November 1998 because "supremo" is a common Spanish word which he considered would be good for a search engine. The Complainant exhibited a series of communications to and from the Respondent regarding sale of the name to Complainant. These negotiations which were not concluded, were initiated by the Complainant.
5. Partiesí Contentions
The following is taken from the Complaint.
The disputed domain name is identical with the Complainantís "common law" mark. Respondent has not used the disputed domain name and has sought to sell it to the Complainant for up to US$40,000. The Respondentís website has been "under construction" for a substantial period. It recently advertised itself as "The Gateway to Software Resources" with six links to other sites. The site is not used as a search engine. Respondent has "parked" the domain name, using it as a magnet for visitors via what is now a "Domain Park" called "Applied Semantics", until recently known as "Oingo".
Respondent holds many other domain names, many of which are inactive or marginally active. Respondent has been involved in other "arbitrations" where his defence has been similar.
Respondent has no right given by the Complainant to use the name. He registered and is using the domain name in bad faith.
The following is taken from the Response.
Complainant, having no registered trademark for a common descriptive term ("supremo" means "supreme" in Spanish), has no enforceable rights. This generic term is not exclusively associated with the Complainant, but is incorporated into 24 active U.S. trademarks and appears on 450,000 internet web pages.
There is no evidence that Respondent knew of the Complainant at the time of registration of the domain name and therefore no evidence that the domain name was registered in bad faith. Respondent could have no notice of Complainantís mark since it was never registered. Respondent had never heard of Complainant at the time of registration.
Respondent is a website developer. It was the Complainant which initiated discussions with him to sell the name. This does not indicate bad faith in the circumstances.
Complainantís mark, being descriptive of the Complainantís products, would not be registrable because it lacks distinctiveness.
Respondent has a legitimate interest pursuant to Paragraph 4(c)(i) of the Policy, in that Respondent intends to use the name site as a search engine. His interest in that regard is real in that it was formed before the dispute commenced. In any event, Respondent had a right to use a common generic name.
Because "supremo" is not a made-up word, it does not impinge as a distinctive mark on the average person.
Complainant has not offered evidence of the reputation and goodwill it has developed for the mark.
A pattern of owning other domain names is only evidence of bad faith where such registration was done to prevent owners of marks from reflecting those marks in corresponding domain names (Policy, Paragraph 4(b)(i)).
Complainant has engaged in Reverse Domain Name Hijacking and an appropriate declaration should be made by the Panel. Complainant is guilty of "cyber-bullying".
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to:
"decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable".
The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:
- That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
- That the Respondent has no rights or legitimate interests in respect of the domain name; and
- That the domain name has been registered and used in bad faith.
In the judgment of the Panel, the disputed domain name is identical to the Complainantís alleged common law mark, assuming that the Complainant has proved its entitlement to one. However, the evidence from the Complainant is hardly strong enough to establish a common law mark in the United States (where the Respondent is domiciled) and in other common law jurisdictions where such a mark is recognized. Rather, the evidence suggests that "supremo" is a term used in many marks and websites without any particular connotation with the Complainant.
It is unnecessary to consider the second criterion in the Policy because, in the view of the Panel, even if the Complainant were able to establish the first criterion (which the Panel seriously doubts), there is just no evidence or justifiable inference that the Respondent registered this generic name in bad faith. The evidence of the fame of the Complainant and its "common law" mark in the United States is sketchy, to say the least.
Various WIPO decisions have shown that one cannot infer that just because a mark is well-known in its home country, the mark is well-known in another country where the domain name registrant resides (See VZ Vermögens Zentrum AG v Anything.com (WIPO D2000-0527), KCTS Television Inc v Get-on-the-Web Ltd (WIPO D2001-0154) and Village Resorts Ltd v Lieberman (WIPO D2001-0814) as examples).
In the above cases and in other comparable WIPO decisions, the Complainant owned a trademark in its own country, unlike the present Complainant.
The Panel therefore considers that the Complainant has not proved bad faith registration. It is therefore unnecessary to consider anything further, other than the Respondentís claim for declaration of reverse domain name hijacking. The Complaint is therefore denied.
7. Reverse Domain Name Hijacking
Such a claim under Rule 15(e) is frequently made by Respondents but a finding of Reverse Domain Name Hijacking is rarely granted. To prevail in such a claim, Respondent must show that Complainant knew of Respondentís unassailable right or legitimate interest or of the clear lack of Respondentís bad faith registration and use but nevertheless brought the Complaint in bad faith (See Sydney Opera House v Trilynx Pty. Ltd (WIPO D2000-1224) and Koninklije KPNNV v Telepathy, Inc. (WIPO D2001-0217)).
In the Panelís view, this case is similar to the second precedent cited above. It differs in that the Complainant there at least owned a registered mark. In the Panelís view, this Complaint had no prospect of success. Evidence sufficient to establish a "common law" mark in the Respondentís country of origin was non-existent. The name was a generic one used in many trademarks and websites. It should have been apparent to the Complainant that it could not prove all the elements required by the Policy.
The Panel therefore is prepared to make the appropriate declaration.
The Panel decides:
(a) The Complaint is denied;
(b) The Complainant is guilty of reverse domain name hijacking.
Hon. Sir Ian Barker QC
Professor David Sorkin
Dated: February 15, 2002