WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Qtech Business Systems Pty Ltd v. Coldwell Banker Burnet
Case No. DBIZ2001-00004
1. The Parties
The Complainant is Qtech Business Systems Pty Ltd of Level 1, 16 Edmondstone Street, Newmarket, Queensland 4051, Australia.
The Respondent is Coldwell Banker Burnet, of 270-4611 Viking Way, Richmomd, British Columbia, V6V 2K9 Canada.
2. The Domain Name and Registrar
The domain name is <qtech.biz>, registered with Internet Domain Registrars, of Suite 1900, One Bentall Center, 505 Burrard Street, Vancouver British Columbia V7X 1M6 Canada.
3. Procedural History
(1)The Complaint in Case DBIZ2001-00004 was filed by e-mail on December 7, 2001 and by hard copy on December 18, 2001 and is made under the Start-Up Trademark Opposition Policy for.BIZ (hereafter the "STOP")
(2)The WIPO Arbitration and Mediation Center has stated that:
-the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules for the STOP;
-payments for filing were properly made;
-the Complaint complies with the formal requirements;
-the Complaint was properly notified to the Respondent on December 19, 2001, in accordance with the Rules, Paragraph 2(a);
-no Response has been received within the permitted period for filing; and
-the Administrative Panel was properly constituted.
As Panelist, I accept these statements as demonstrating proper compliance with the procedural steps laid down in the STOP.
(3)As Panelist, I have submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
(4)By Order dated 8 March 2002, the Complainant was required to file evidence of registration of the trademark on which it relies and that the evidence be notified to the Respondent, seven days being allowed for the latter to respond in relation to this evidence. The Complainant filed the requisite evidence on March 11, 2002 and forwarded a copy to the Respondent. No response from the latter was received within the specified period.
(5)The language of the proceedings is English.
4. Factual Background
The Complainant is the registered proprietor of Commonwealth of Australia Registered Trade Mark No 870669, of "Qtech" in script against a background of an incomplete oval and a small square. The registration is in Class 9 for computers and associated goods including computer software, and in Class 42 for computer programming and IT support. The registration was granted only after the lodging of this Complaint. However, under the Australian Trade Marks Act, it dates back to the date on which the application was made, March 28, 2001. In this sense it was registered prior to the domain name in issue which was registered on November 19, 2001.
5. Parties’ Contentions
The Complaint asserts that the domain name in dispute and the Complainant's registered mark are identical. It states that the Respondent has no known right or legitimate interest in holding the domain name and that accordingly the registration must have been made in bad faith.
No Response has been filed.
6. Discussion and Findings
According to Paragraph 4(a) of the STOP, the Complainant must establish each of the three following elements:
(i) that the domain name in issue is identical to a trade mark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered or is being used in bad faith.
Examples of rights or legitimate interests under (ii) may consist of the Respondent showing that it is the owner or beneficiary of an identical trade or service mark; that, before notice of the dispute, it used or prepared to use the domain name or a corresponding name in connection with a bona fide offering of goods or services; or that, as an individual, business or other organisation, it has been commonly known by the domain name.
Examples of bad faith under (iii) may consist of the Respondent being shown to have registered the domain name primarily for the purpose of transferring the registration for more than documented out-of-pocket costs directly related to the domain name; in order to prevent the Complainant from reflecting its mark in a corresponding domain name; for the purpose of disrupting the business of a competitor; or in order, through use, intentionally to attract, for commercial gain, Internet users to its web site or other on-line location by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location of a product or service on your web site or location.
In response to the Panel's order, the Complainant provided evidence of registration of the trade mark upon which it relies in these proceedings, the date and content of which is referred to in Paragraph 4 above. The Panel's order was made because proceedings under STOP are new and Complainants do not yet have much guidance on what is required of them. However, it must in future be expected that Complainants will provide adequate evidence of the marks on which they rely without intervention by the Panel. As it turned out, although the present Complainant did have a trade mark registration which predated that of the domain name in issue by several months, the registration certificate had not been issued at the time when the Complaint was lodged.
The Complainant's mark consists of "Qtech" in a particular script with the decorative additions mentioned. The domain name in issue consists of the same combination of letters but necessarily does not have the decorative additions. The STOP for .biz domain names gives special advantages to proprietors of registered trade marks when compared with rights arising under the general UDRP. In particular, so far as concerns substance, it is not necessary to prove bad faith both in the registration and in use, but only in relation to one of these. For that reason it is important to give scrupulous attention to the conditions demanded in STOP and in particular to the requirement that the mark and domain name be shown to be identical, and not merely confusingly similar (the latter condition being also included within the UDRP).
Where certain differences exist between mark and domain name, what test should determine whether they are nonetheless identical? In modern systems of trade mark law, the distinction between marks that are identical and those that are confusingly similar can be found both in relation to objections to registration of a junior mark because of the proximity of a senior mark and in relation to what constitutes infringement of a registered mark by a competitor. Notably, this is now contained in the European Community Trade Mark system and the national systems of EC Member States (see Council Community Trade Mark Regulation 40/94, Arts. 8(1), 9(1); First Council Directive on Trade Mark Law Approximation 89/104, Arts. 4(1), 5(1). In relation to infringement it also has a place in the Trade Related Intellectual Property Agreement of the World Trade Organisation, Art. 16 (1), which makes plain why the distinction is drawn. First, the Article provides that a trade mark owner must be accorded a right against using identical or similar signs for goods or services which are themselves identical or similar where such use would result in a likelihood of confusion It is then stated: "In case of the use of an identical sign for identical goods or services a likelihood of confusion shall be presumed".
Likewise, in the most significant decision on the point in the European Community to date (LTJ Diffusion v. Sadas (January 17, 2002, European Court of Justice on reference from the Tribunal de Grande Instance, Paris, decision of the full court awaited), Advocate-General Jacobs treats the case of identity as distinct from that of similarity because of the inherent likelihood of confusion in the former case. In consequence, the learned Advocate-General considers it necessary to give a restricted meaning to the concept of "identity" in respect of a conflict between trade marks. Accordingly, there should be identity between marks only where an average consumer would regard them as the same, in the sense that any differences, whether of addition, omission or modification, were "minute or wholly insignificant".
The STOP confers both procedural and substantive advantages on a trade mark proprietor who otherwise would have to satisfy the conditions of the UDRP in order successfully to object to the continued registration of a conflicting domain name. Accordingly, it seems appropriate to apply an equivalent approach to the question of what is identical under STOP. It is of course necessary to take account of the differing purpose and scope of domain names from those of registered marks. The average consumer must be taken to know that a domain name cannot be acquired with decorative elements. Accordingly, even the most blatant cyber-squatter, who sets out to appropriate the domain equivalent of a word-and-decoration mark of the Complainant's type, can get no closer than the word itself. It is probably therefore appropriate in the present case to regard the decorative motifs in the registered mark, which are undoubtedly minor, as being "minute or wholly insignificant". The matter cannot, however, be regarded as entirely beyond doubt. In other cases it may well assume a central importance.
Here, however, the matter can be determined by reference to another requirement. It is for the Respondent to show on the balance of probabilities that he has a right or legitimate interest in the domain name in issue. Where, as here, the Respondent has not entered any Response it must be taken that no justification of this kind has been made out. Such a Respondent also risks a finding that he has acted in bad faith, but only if there is sufficient support for a conclusion that he must have been intending to misappropriate the Complainant's mark in one of the forms referred to expressly in the STOP or in some closely equivalent way. In the Complaint, the Complainant is not able to suggest why such a conclusion should be drawn beyond claiming that bad faith must be inferred from absence of right or legitimate interest. The particular inadequacy of that assertion is that, so far as the state of the Australian trade marks register was concerned, the Complainant's mark was not placed upon the register until after the date of registration of the domain name. It is difficult therefore to suggest that another person, in a different country, must be taken to know of the Complainant's right from that formal source. As to knowledge which might arise from the Complainant's use of the mark internationally, no evidence is provided of the extent to which this had developed by November 2001. There is accordingly no sufficient basis in this case for concluding that the Respondent registered the domain name in question with the aim of profiting from its transfer to the Complainant or for any other prejudicial motive amounting to bad faith.
In consequence, in accordance with the STOP, Paragraph 4, the Panel declines to hold that the Complaint is made out.
William R Cornish
Dated: April 22, 2002