WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
esop GmbH v. Richard Connolly
Case No. D2001-1389
1. The Parties
The Complainant is esop GmbH, a company incorporated under the laws of Germany, having its principal place of business at Oranienstrasse 13, 65812 Bad Soden, Germany.
The Respondent is Richard Connolly, an individual resident at the address of 41 Sutter St., No1810, San Francisco, CA 94104, USA.
2. The Domain Name and Registrar
The domain name at issue is <esop.com>, which is registered with Network Solutions, Inc., ("the Registrar"), 505 Huntmar Park Drive, Herndon, Virginia 20170, United States.
3. Procedural History
A Complaint was submitted by e-mail to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on November 22, 2001, and in hardcopy on November 29, 2001. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated November 23, 2001.
On November 29, 2001, a Request for Registrar Verification was transmitted to the Registrar.
On November 29, 2001, the Registrar confirmed that it was in receipt of the Complaint sent to the Registrar by the Complainant, the domain name at issue, was registered with the Registrar and that the Respondent was the current registrant of the name. The Registrar also forwarded the requested WHOIS details, confirmed that the Uniform Domain Name Dispute Resolution Policy was in effect and stated that the domain name was in "Active" status.
Effective January 1, 2000, the Registrar adopted the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, (the "Policy"). There is no evidence that the Respondent ever requested that the domain name at issue be deleted from the domain name database. Accordingly, the Respondent is bound by the provisions of Policy.
The Panel has determined that the Complaint is in formal compliance with the requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999, (the "Uniform Rules"), and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999, (the "WIPO Supplemental Rules"). The required fees for a single-member Panel were paid on time and in the required amount by the Complainant.
No formal deficiencies having been recorded, on December 11, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, the Registrar and ICANN), setting a deadline of
December 31, 2001, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by post/courier and e-mail to the addresses indicated in the Complaint.
On January 3, 2002, having received no Response from the Respondent the WIPO Center transmitted to the parties a Notification of Respondent Default. On January 14, 2002, the WIPO Center issued to both parties a Notification of Appointment of Administrative Panel and Projected Decision Date. This Notification informed the parties that the Administrative Panel would be comprised of a single Panelist, Mr. Jonas Gulliksson.
The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and WIPO Supplemental Rules. The Administrative Panel shall issue its Decision based on the Complaint, the Policy, the Uniform Rules, the WIPO Supplemental Rules, and without the benefit of any Response from the Respondent.
4. Factual Background
The Complainant and its Registered Trademarks
The Complainant is the owner of the German trademark registrations No. 300 94 721 ESOP GMBH and No. 300 94 720 ESOP (& Design).
5. Partiesí Contentions
The domain name <esop.com> is confusingly similar to the Complainantís trademark registrations.
The Respondent has no rights in respect of the domain name.
The Respondent is not making any use of the domain name.
The domain name <esop.com> is not active since the date of registration on November 18, 1997. The Respondent has not established a web site corresponding to the domain name.
The Respondent has been asked to sell the domain name to the Complainant. The Respondent has declared that he is prepared to sell the domain name for USD100 000, which is far above a fair price. These circumstances clearly constitute bad faith.
Finally the Complainant has requested the Panel to transfer the domain name <esop.com> from the Respondent to the Complainant.
Respondent has not contested the allegations of the Complaint.
6. Discussion and Findings
According to Paragraph 15 (a) of the Rules the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4 (a) of the Policy directs that the Complainant must prove each of the following:
1) 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; and,
2) that the Respondent has no legitimate interests in respects of the domain name; and
3) the domain name has been registered and is being used in bad faith.
The domain name <esop.com> is confusingly similar the Complainantís trademark registrations.
The Respondent has not proven that he has any prior rights or legitimate interests in the domain name.
The prerequisites in the Policy, Paragraph 4 (a) (i) and (ii) are therefore fulfilled.
Paragraph 4 (a) (iii) of the Policy further provides registration and use in bad faith.
Given Respondentís failure to file a Response in this case, the Panel accepts as true all the allegations of the Complaint, vide e.g. Talk City, Inc. v. Robertson, Case No. D2000-0009 (WIPO February 24, 2000), ß d. Respondentís default does not, however, translate into an automatic ruling for the Complainant. To the contrary, the Complainant still must establish a prima facie showing that, under the Policy, it is entitled to transfer of the domain name.
The contested domain name was registered on November 18, 1997. The Complainantís trademarks were not filed at this point and there is no proof that could indicate that Respondent had any knowledge of Complainant or Complainantís possible trademark rights at this point. Because Complainant did not have any rights in the mark "esop" at the time Respondent registered the disputed domain name, Respondent did not register the disputed domain name in bad faith within the meaning of the Policy. Cf. DuWop, LLC v. Jayson Online, Case No. D2001-1315.
Further, the Panelist is of the opinion that the fact that Respondent is prepared to assign a domain name for valuable consideration is not sufficient to establish bad faith. For bad faith it is necessary that the acquisition of the domain name and use thereof is "primarily" meant for the transfer to Complainant and it is on this point that the Complainant did not give any proof.
Therefore, the panel concludes that there is no proof that the domain name was primarily acquired and used for assignment to Complainant in accordance with paragraph 4 (b)(i) of the Policy.
Having found that the Complainant has failed to meet these requirements, the Complaint must be rejected.
Complainant has failed, on this record, to satisfy Paragraph 4 (a) (iii) of the Policy. The Panel therefore denies the Complainantís request that the domain name "esop.com" be transferred from Respondent to Complainant.
Dated: January 28, 2002