WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AIMS Pty Ltd v. Banyin Lee
Case No. DBIZ2001-00001
1. The Parties
1.1 The Complainant is AIMS Pty Ltd, with it principal place of business being 1798 Albany Highway, Kenwick, Western Australia, 6107, Australia.
1.2 The Respondent is Banyin Lee of 24/38 Onslow Road, Shenton Park, Western Australia, 6008, Australia.
2. The Domain Name and Registrar
The domain name upon which this Complaint is based is <aims.biz> (the "Disputed Domain"). The registrar of the Disputed Domain as at the date of the Complaint is Melbourne IT d/b/a Internet Names Worldwide.
3. Procedural History
3.1 The Complaint was submitted for decision in accordance with the Start-up Trademark Opposition Policy ("STOP") for .BIZ, adopted by NeuLevel, Inc. and approved by Internet Corporation for Assigned Names and Numbers ("ICANN") on May 11, 2001, in accordance with the Rules for Start-up Trademark Opposition Policy for .BIZ, adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001 (the "STOP Rules") and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .BIZ (the "WIPO Supplemental STOP Rules").
3.2 The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") via email on December 6, 2001 and in hard copy on December 14, 2001. The fees prescribed under the STOP Rules and the WIPO Supplemental STOP Rules and the STOP Schedule of Fees have been paid by the Complainant. The Complainant stated that a copy of the Complaint together with the cover sheet had been sent or transmitted to the Respondent on December 7, 2001, in accordance with paragraph 2(a) of the WIPO Supplemental STOP Rules.
3.3 On December 12, 2001, the Center sent the Complainant via email an Acknowledgement of Receipt of Complaint.
3.4 The Center sent the Notification of STOP Complaint and Commencement of Administrative Proceeding on December 17, 2001, to the Respondent (including the domain name registrant, administrative contact, technical contact, zone contact and billing contact, as required by Paragraph 2(a) of the STOP Rules) by post/courier (with enclosures) and by email (without attachments), and to the Complainantís representative by e-mail. The Center sent a copy of the Complaint (without attachments) on December 17, 2001, to the Internet Corporation for Assigned Names and Numbers (ICANN) and the Registrar, Melbourne IT.
3.5 On December 27, 2001, the Respondent forwarded an email to the case manager appointed by the Center for the proceeding, requesting the name of the panelist involved. On January 4, 2002, the case manager forwarded an email to the Respondent advising that the last day for the Respondent to send his response is January 6, 2002, and that no panelist will be appointed before that date. The case manager further advised the Respondent that if he decides not to submit a response, he will be considered in default and an Administrative Panel will still be appointed to review the facts of the dispute and to decide the case.
3.6 The Respondent failed to file a Response in the time allowed and has not filed a Response to date as far as the Panel is aware.
3.7 A Notification of Respondent Default was sent by the Center to the Respondent and the Complainantís representative by email on January 9, 2002. This notified the Respondent that it had failed to comply with the relevant deadline for the submission of its Response in the domain name dispute.
3.8 The Panel submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center by email on January 23, 2002.
3.9 The Center sent a Transmission of Case File to the Panel by email on January 30, 2002. The documentation was received in hard copy by the Panel on February 1, 2002, in Sydney, Australia.
3.10 In accordance with Paragraph 4(a) of the STOP Rules, the Center has verified that the Complaint satisfies the formal requirements of the STOP, the STOP Rules and the WIPO Supplemental STOP Rules. The Panel has reviewed the Complaint and is satisfied with the Centerís assessment that the Complaint satisfies the formal requirements of the STOP, the STOP Rules and the WIPO Supplemental STOP Rules.
3.11 All other procedural requirements appear to have been satisfied.
4. Factual Background
4.1 Activities of the Complainant and the Complainantís Trademarks
The following is asserted as fact by the Complainant and remains uncontested.
The Complainant is a proprietary limited company incorporated on July 16, 1986, organised and existing under the laws of Australia.
The Complainant acquired the trading name AIMS from a partnership previously established by the same proprietors in 1980, which traded as Aircraft Industrial Marine Services. This name soon became abbreviated to AIMS, and this abbreviation has since been used exclusively as the Complainantís customer base has moved away from the aircraft and marine industries.
4.2 The Complainantís trademarks
The following information is asserted as fact in the Complaint and remains uncontested.
The Complainant states that it is the owner of registrations for Australian trademark registration no. 586530 registered 1988 to Bonyu Pty Ltd (the Complainant states that Bonyu Pty Ltd is an affiliated company of the Complainant) and Australian trademark registration no. 438483 registered 1994 to the Complainant. The Complainant states that the marks comprise distinctive representations of the word "AIMS".
The Panel has undertaken a search (as authorised by Paragraph 10 of STOP Rules) of the Australian Trademark Online Search System ("ATMOSS"). ATMOSS is a database, which has been designed to allow public searching of the Australian Trademarks Office computer database. The search undertaken by the Panel has determined the following:
- Australian trademark registration no. 586530 was registered on September 14, 1992. The owner of the mark is identified as the Complainant. The mark consists of the word "AIMS" in bold "Fancy" font; and
- Australian trademark registration no. 438483 was registered on December 20, 1985. The owner of the mark is identified as the Complainant. The mark consists of the word "AIMS" in bold "Composite" font with an arrow pointing from right to left through the word "AIMS". The mark was assigned to the Complainant by Bonyu Pty Ltd on February 1, 1989.
The Complainant states that it has also established unregistered trademark rights in the word "AIMS" independent of the manner of its representation, by the Complainantís active use of the word AIMS as its business name since the Complainant was established in Perth, Western Australia in 1986 which has created considerable goodwill in that name throughout a widespread area.
4.3 The Complainantís Use of trademarks
The following information is asserted as fact in the Complaint and remains uncontested.
The Complainantís trademarks have been used since their registration in the following business activities of the Complainant:
- trading from Perth, Adelaide, Darwin and Melbourne branches and from reseller outlets in New Zealand and Malaysia;
- manufacture, design and supply of a range of industrial hardware and software products sold world wide;
- supply of a range of software drivers to communicate with various DCS and PLC control systems to countries including America, Switzerland, South Africa, Malaysia, Indonesia, Thailand, Ghana, Tanzania, New Zealand and England;
- promotion of its trademark on its existing Web site < www.aims-wonderware.com.au>;
- use in its application for Quality Endorsement, certified from 1995 (certificate No. QEC 5224 reproduced in ANNEX 5);
- use of the word AIMS in all the Complainant's product literature and;
- distribution of an AIMS Newsletter to over 1000 companies every 2 months;
- supply of Engineering Support to the Armed Forces, including supply to the Australian Navy in carrying out critical works on the Collins Class Submarines;
- manufacture of a wide range of temperature sensing devices for the industrial market;
- supply of product to the Middle East and Malaysia and to a worldwide mineral processing organisation for its plants in Western Australia; and
- sole distribution of the following products in Western Australia, South Australia and the Northern Territory:
(a) Wonderware Software Products;
(b) Foxboro Industrial Hardware; and
(c) Eurotherm Industrial Products.
4.4 Activities of the Respondent
As stated above, no Response to the Complaint has been filed.
The Complainant asserted that the Respondent has been one of several IT professionals employed by the Complainant on a contract basis. The Complainant states that the basis of the contract has not given the Respondent any licence or other legal right to the use of the name AIMS or any similar name.
5. The Complainantís contentions in the Complaint
5.1 The Complainant asserts that each of the elements specified in Paragraph 4(a) of STOP are made out.
5.2 In reference to the element in paragraph 4 (a)(i) of STOP, the Complainant asserts that the substantive portion of the Disputed Domain is identical to the word represented in the Complainantís registered trademarks (Australian Trademark Registration no. 586530 and 438483) and is also identical to the unregistered trademark utilised by the Complainant in its trading name AIMS and the company name AIMS Pty Ltd.
The Complainant further asserts that the fact that the mark [sic] is not in active use by the Respondent does not preclude a finding of infringement.
5.3 In reference to the element in paragraph 4 (a)(ii) of STOP, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Disputed Domain. The Complainant further asserts that the Respondentís own name bears no relationship to the domain name, the Respondent has never to the Complainantís knowledge traded under the name AIMS or any similar name, whether by authority of the Complainant or otherwise. The Complainant asserts that the Respondent has been one of several IT professionals employed by the Complainant on a contract basis. The Complainant states that this employment has not given the Respondent a licence or other legal right to use the Disputed Domain or any similar domain.
In support of this assertion the Complainant further asserts that there is no web site that is hosted using the Disputed Domain or any sub-domain, indicating that no business activity is being conducted by the Respondent using the Disputed Domain in connection with a bona fide offering of goods and services.
5.4 In reference to the requirements of Paragraph 4 (a)(iii) of STOP, the Complainant asserts that the Respondent has registered the Disputed Domain in bad faith for the primary purpose of selling the Disputed Domain to the Complainant for valuable consideration which was presumed to be in excess of the documented out-of-pocket costs directly related to the Disputed Domain.
In support of this assertion, the Complainant asserts that on November 21, 2001, the Respondent offered the Disputed Domain to the Complainant for a negotiable amount. The Complainant asserts that on the same day the Complainant contacted the Respondent and advised that the offer was rejected and the Complainant would be pursuing the Disputed Domain through the proper legal channels.
On November 22, 2001, an email from the Respondent was received by the Complainant agreeing to transfer the Disputed Domain to the Complainant for no financial gain. The Complainant annexes a copy of the email dated November 22, 2001, to evidence this. The Complainant submits that this email constitutes an admission of the superior right of the Complainant to the Disputed Domain.
6. Discussion and Panel Findings
At the outset, the Panel notes that the Complainant asserts that the Complaint has been lodged, despite the Respondentís current offer to transfer the Disputed Domain for no financial gain, because the Respondent is precluded by Paragraph 17 of the STOP Rules from transferring the Disputed Domain whilst another challenge exists. The Panel agrees that Paragraph 17 of the STOP Rules has that effect and that the Complaint is therefore properly pursued.
This section is structured by reference to the elements required by paragraph 4(a) of the STOP Policy. In order to be successful, the Complainant has the burden of proving, on the balance of probabilities, that all three elements are present. As noted above, the Respondent has failed to file a Response to the Complaint within the time limits allowed and, as far as the Panel is aware, has not filed a Response at all. Accordingly, all assertions in the Complaint are uncontested and, under Paragraph 5(e) of the STOP Rules, the Panel is required to decide the dispute based upon the Complaint alone. Notwithstanding this rule, in order to be successful, the Complainant still bears the burden of proving, on the balance of probabilities, that all three elements of Paragraph 4(a) of STOP are present, and this Panel reserves the right to rely upon Paragraph 10 of the STOP Rules to avail itself of such publicly available material as it deems appropriate to corroborate or substantiate any assertions made in the Complaint and Response (if any).
6.1 Domain Name identical or confusingly similar to Complainantís trademark
The Disputed Domain is <aims.biz>. The Complainant owns two trademark registrations in Australia for stylised versions of the word "AIMS" and also appears to the Panel to have common law trademark rights in the word AIMS. The Panel does not regard the .biz gTLD as performing any differentiating function and therefore is satisfied that the Disputed Domain is identical to a trademark in which the Complainant has rights. Accordingly, the Panel finds that the Complainant has proven Paragraph 4(a)(i) of STOP.
6.2 The Respondent has no rights or legitimate interests in the Domain Name
The Complainant asserts that the Respondent has no legitimate rights or interest in the Disputed Domain.
Paragraph 4(c) of STOP lists a number of circumstances which, if proven to exist by the Respondent, can be taken to demonstrate a Respondentís rights or legitimate interests in the Disputed Domain. The Panel has seen no evidence to support an inference that any of these circumstances exist. The mere act of registering a domain name does not grant the registrant a legitimate interest in the domain name.
The Respondent has provided no evidence that it has entered into licensing arrangements with the Complainant to use the word "AIMS" or derivatives of this word. Without evidence to the contrary, the Panel cannot presently see any legally sound basis upon which an assertion that the Respondent has a right or legitimate interest in the Disputed Domain might be made.
Having regard to the foregoing, and to Annex 6 to the Complaint (in which the Respondent appears to concede that he has no legitimate rights to the Disputed Domain), the Panel finds that the Respondent has not demonstrated that Paragraph 4(c) of STOP applies and finds that the Complainant has discharged its onus in proving on the balance of probabilities that the Respondent has no rights or legitimate interests in the Disputed Domain. Accordingly, the Complainant has made out paragraph 4(a)(ii) of STOP.
6.3 The Domain Name in dispute has been registered or is being used in bad faith.
The Panel notes that Paragraph 4(c)(iii) of STOP requires the Complainant to demonstrate that the Disputed Domain was registered or used in bad faith.
In order to show bad faith registration by the Respondent, the Complainant asserts that the Disputed Domain was registered for the primary purpose of selling it to the Complainant who is the owner of the registered trademark "AIMS" for valuable consideration in excess of documented out-of-pocket costs directly related to the Disputed Domain. The Respondent has provided no evidence that it has acted in good faith in registering the Disputed Domain.
The Panel finds that, prior to any notice of this dispute, registration of the Disputed Domain by the Respondent was primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain registration to the Complainant or to a competitor of the Complainant for valuable consideration in excess of the documented out-of-pocket costs directly related to the Disputed Domain. This finding is based upon evidence that:
(a) the Complainantís operation of its business under the company name "AIMS Pty Ltd" and their registration of "AIMS" as a trademark predates registration of the Disputed Domain;
(b) the Respondent has been one of several IT professionals employed by the Complaint. The inference has been made that the Respondent was likely to be aware at the time of registration of the Disputed Domain that the Complainant would have intended to expand the intellectual property rights of its registered trademarks by tapping in to the newly launched .BIZ domain names and register the Disputed Domain;
(c) the Disputed Domain does not currently resolve to any website or other online location thereby creating support for an inference that the Respondent is not interested in using the Disputed Domain except to block others from registering it, or to transfer it to the Complainant or a competitor of the Complainant; and
(d) the Respondent offered to sell the Disputed Domain to the Complainant for a negotiable amount, which was presumably in excess of the costs of registration of the Disputed Domain.
Although it is not necessary for a Complainant to show bad faith registration and use under STOP (as is required by the corresponding provision of the UDRP from which STOP is derived), the Panel notes that it has long been accepted that mere registration of a domain name may be sufficient to constitute a blocking Ďuseí of a domain name.
The Panel finds, in any event, that the Complainant has made out paragraph 4(a)(iii) of STOP.
A second IP claim for the Disputed Domain exists; accordingly, the Panel must determine whether any subsequent challenges are to be permitted using the criteria set out in Paragraph 15(e) of the STOP Rules. The underlying principle implemented in that provision is that, provided that a Complainant has made out its case under the STOP Rules, no later-in-time IP Claimants are to be permitted. If the Respondent had succeeded, the Complaint would be dismissed, but if the Complainant and the Respondent had both failed to establish their rights under the STOP Rules, the later claimant would be permitted to proceed with its claim.
The Panel has determined in this case that the Respondent has not demonstrated that he has any legitimate rights to the Disputed Domain and the Complainant in this case has demonstrated that :
(a) it has legitimate rights to the domain name;
(b) the Respondent has no legitimate rights; and
(c) the Respondent registered the domain name in bad faith.
Therefore, pursuant to Paragraph 15(e) of the STOP Rules, no subsequent challenges against the Disputed Domain are permitted under STOP.
The Panel has found that all of the requirements of paragraph 4(a) of STOP have been proven by the Complainant. The Panel also determines that pursuant to Paragraph 15(e) of the STOP Rules no subsequent challenges under STOP against the Disputed Domain shall be permitted. Accordingly, and for the purposes of paragraph 4(i) of STOP, the Panel requires that the domain name <aims.biz> be transferred by Melbourne IT to the Complainant.
Philip N. Argy
Dated: February 14, 2002