WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Actebis Holding GmbH v. peacock.com Corporation

Case No. DBIZ2001-00005

 

1. The Parties

The Complainant is Actebis Holding GmbH, a German corporation with its principal place of business in Soest, Germany. The Complainant is represented by Ms. Birgit Hein, attorney of Arnsberg, Germany.

The Respondent is peacock.com Corporation, a Hawaiian corporation of Wailua. HI, U.S.A. The Respondent is represented by Mr. John C. Filosa and Mr. Bradley R. Weissenberger of Baker & McKenzie, Chicago, IL, U.S.A.

 

2. The Domain Names and Registrar

The domain name at issue is <peacock.biz>. The domain name is registered with Network Solutions, Inc. of Herndon, VA, U.S.A. ("the Registrar"). The domain name was registered on November 19, 2001.

 

3. Procedural History

The Complaint was received on December 7, 2001, (email) and December 12, 2001, (hard copy), by the World Intellectual Property Organization and Mediation Center ("WIPO Center"). The Complaint was made pursuant to the Start-up Trademark Opposition Policy for <.biz> adopted by Neulevel Inc. and approved by ICANN on May 11, 2001, ("the STOP") and the Rules under that Policy ("the STOP Rules"). Some amendments to the Complaint were required and an amended Complaint was submitted before notification to the Respondent.

The STOP is incorporated into the Respondentís registration agreement with the Registrar. Respondent is obliged to submit to and participate in a mandatory administrative proceeding in the event of a Complaint concerning the domain name registered.

Having verified that the amended Complaint satisfied the formal requirements of the STOP Policy and Rules, the WIPO Center on January 3, 2002, transmitted by post-courier and by email a Notification of Amended 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 advised that any Response should be communicated, in accordance with the STOP Rules, by four sets of hard copy and by email. A Response was filed by the Respondent on December 31, 2001, (email) and January 8, 2002, (hard copy). Because the Response was filed before the official commencement of the administrative proceedings the Respondent was asked by WIPO Center whether that Response should be considered as final. On January 4, 2002, Respondent advised that it could.

The WIPO Center invited the Honorable Sir Ian Barker QC of Auckland, New Zealand to serve as Sole Panelist in the case. It transmitted to him a statement of acceptance and requested a declaration of impartiality and independence. The STOP requires that Complaint be determined by a sole Panelist.

The Honorable Sir Ian Barker QC advised his acceptance and forwarded to the Center his statement of impartiality and independence. The Panelist finds that the Administrative Panel was properly constituted in accordance with the STOP Rules and the WIPO Supplemental STOP Rules.

On January 30, 2002, WIPO Center forwarded to the Panel by courier the relevant submissions and the record. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel is required to forward its decision by February 14, 2002. Because of the necessity to call for translations of certain documents, the decision date is put forward to February 18, 2002.

The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the STOP, the STOP Rules and the WIPO Supplemental STOP Rules.

The language of the administrative proceeding is English. The Complainant has paid the necessary fees to the WIPO Center. The Ticket Number assigned by the Registry Operator under the STOP Rules has been confirmed.

The Complainant claims to be a "limited partner" of the company Peacock GmbH & Co. KG. The Complainant claims the right to file the Complaint because of certain documents in the German language which were exhibited to the Complainant, but not translated into English, which is the language of the administrative proceeding. The Panel had to call for translations since it seemed that these documents were crucial to the Complainantís rights to file the proceeding. The Panel should not have been placed in the position of having to ask for these translations, which should have been provided right at the start, since they were an essential part of the Complainantís proof of its right to bring an administrative proceeding. The Panel required that these translations be filed by February 8, 2002. They were filed by that date and have been assessed by the Panel.

 

4. Factual Background

The registrations of:

(a) German trademark 2056107 registered February 4, 1994

(b) International trademark 615860 registered February 10, 1994

(c) U.S. trademark 2014700 registered November 12, 1996

are for the mark "Peacock" and are held in the name of Peacock AG, an entity which was merged into Peacock GmbH & Co. KG. No notice of assignment from Peacock AG to Complainant appears on the trademark registers.

Respondent has filed for a U.S. trademark 76166176 for the services "designing and implementing network websites and web pages for others". In prior registered German trademarks for "Peacock Challenger", "Peacock Diano", "Peacock Independer" and "Peacock Take", the service "design of web pages for the Internet" is included.

The Respondent offered to sell the domain name <peacock.com> to the Complainant for US$25,000 on June 22, 1999. No offer to sell the <peacock.biz> name has been made. Respondent registered <peacock.com> on July 29, 1995.

 

5. Partiesí Contentions

Complainant:

The Complainant is entitled to file this Complaint because of its arrangements with the trademark owner. The mark is identical to the domain name. The Respondent has no rights in the mark and has registered it in bad faith.

Confusion has arisen between the parties. Some 20 emails a week destined for the Complainant have reached Respondent. Complainant is one of the largest software and hardware distributors in Germany, Europe and the U.S.A. The Respondent tries to monopolize all TLDs relating to "peacock" and to sell them, amongst others, to the Complainant.

Respondent:

Complainant has no rights in the mark "peacock". Complainant does not claim or provide any evidence that it owns any registration in the mark "peacock" or has used such mark in commerce. Complainantís only basis for asserting rights in the mark "peacock" is by virtue of being a "limited partner" in Peacock GmbH & Co. KG, which company was subsequently merged with Peacock AG, the listed registrant for United States Registration No. 2014700 and the other "peacock"-related marks cited by Complainant.

Complainantís status as a limited partner in Peacock GmbH & Co. KG is not a sufficient basis for its assertion of rights in the mark "peacock". Generally, a limited partner provides funding to a partnership in exchange for priority in participation in the profits of the partnership and preferred tax treatment. As a limited partner, Complainant may not, by definition, participate in the decision-making activities or control of a partnership, and is not the owner of any particular property in a partnership. Furthermore, neither the general partner nor the purported trademark owners are alleged to have authorized this STOP action by Complainant. Therefore, Complainant lacks any basis or standing to bring this STOP action.

However, assuming that Complainant has some legitimate basis for bringing this Complaint, Respondentís domain name <peacock.com> is not identical or confusingly similar to Complainantís mark "peacock" and its use thereof. Respondent owns a United States trademark application for the mark "PEACOCK.COM" in International Class 42 for "[c]omputer services, namely, designing and implementing network websites and web pages for others". Respondentís application for the mark "PEACOCK.COM" has been approved for publication by the United States Trademark Office. Respondent has been able to distinguish the mark "PEACOCK.COM" and any relevant goods and services from all prior "peacock"-related trademarks, including Peacock AGís United States Registration No. 2014700 in International Class 9. Simply put, the United States Trademark Office has found that Respondentís use of the mark "PEACOCK.COM" does not encroach upon the rights of any owner of a "peacock"-related trademark, and that Respondentís use of the mark "PEACOCK.COM" is entitled to the protection afforded by a United States trademark registration.

Respondent registered the domain name <peacock.com> on July 29, 1995, and has made bona fide use of the mark "PEACOCK.COM" in commerce in association with Respondentís products and services since October 12, 1995. Given that Complainant, as part of its routine and customary trademark policing practices, should have known of Respondentís registration and open and obvious use of the mark "PEACOCK.COM" and the domain name <peacock.com> for well over six (6) years, it has not notified Respondent of any objections thereto or otherwise brought any claim with respect to Respondentís use of the mark "PEACOCK.COM" or the domain name <peacock.com>, Complainant has acquiesced in Respondentís use of the mark "PEACOCK.COM" and the domain name <peacock.com>. Complainant has therefore surrendered the right to bring this late claim against Respondent as relates to the domain name <peacock.biz>, an integral part of which is the designation "peacock".

Respondent was established as a corporation under the name peacock.com Corporation" on October 12, 1995, under the laws of the State of Hawaii. Mr. Everett Peacock owns 99.5% of the equity in Respondent. Mr. Peacock is 43 years old, and his family name has been "Peacock" for his entire life. True and correct copies of Mr. Everett Peacockís birth certificate, United States passport and Hawaii driverís license were provided in the Response.

Respondent provides an Internet portal and website, as well as related software development and website services (e.g., managed services, hosting, various other web-related business and e-business products and services) under the mark "PEACOCK.COM". Respondent has made bona fide use of the mark "PEACOCK.COM" in commerce in association with such products and services since October 12, 1995.

Even absent any use of the mark "PEACOCK.COM" by the Respondent, Respondent is entitled to its registration and use of the domain name "PEACOCK.COM". The Chairman and CEO of peacock.com Corporation is Everett Peacock, and the President of peacock.com Corporation is Gregory Peacock. It is well-settled that a person who makes bona fide use of his name as part of a domain name has rights and legitimate interests in such domain name, and is entitled to maintain ownership and use of the domain name even in light of the existence of a prior trademark that constitutes the root of the relevant domain name. See, e.g. G.A. Modefine S.A. v A.R. Mani (WIPO Case No. D2001-0537, July 20, 2001).

Respondent denies Complainantís allegations of bad faith registration and use of the domain name <peacock.biz>. Complainant rests its entire bad faith argument on two premises: (1) that likelihood of confusion, as alleged by Complainant, somehow constitutes bad faith registration of the domain name <peacock.biz>; and (ii) that Respondentís response to Complainantís offer to purchase the domain name <peacock.com> somehow constitutes bad faith that can be translated to the present domain name <peacock.biz>.

Complainant cannot prove bad faith in the registration or use of the domain name <peacock.biz> by asserting that there is likelihood of confusion, whether actual or alleged, between its mark and the domain name <peacock.biz>. Complainant has misapplied unfair competition and trademark law to the present STOP action, and has missed the point regarding bad faith registration of domain names.

Complainant has not alleged that Respondent has ever offered for sale the domain name <peacock.biz> that is the subject of this present STOP action. Since there has been no offer to sell the domain name <peacock.biz>, there is no bad faith in registration or use of the domain name <peacock.biz>. Furthermore, Complainant argues that Respondentís response to Complainantís prior offer to purchase the domain name <peacock.com> somehow translates to bad faith under this STOP action. Not only has Complainant failed to offer any proof that Respondent offered to sell the domain name <peacock.biz>, but the offer to sell a domain name is not necessarily proof of bad faith use or registration of a domain name. A party that has rights or legitimate interests in respect of a domain name may rightfully sell such domain name, and that such sale or offer for sale does not constitute bad faith.

 

6. Discussion and Findings

Under the STOP, a Complaint can only be filed by an "IP Claimant" who had filed an IP Claim for a particular alphanumeric string. If that string has been registered as a <.biz> domain name, Neulevel, the Registry Operator of the <.biz> gTLD notifies the IP Claimant and invites it to initiate a STOP proceeding within 20 days. Neulevel determines priority orders if there are multiple claimants on a randomized basis (STOP Paragraph 4(2)(i)). Only the priority claimant will be invited to initiate a STOP Complaint, which is allocated a "ticket number" which allows dispute resolution providers to verify whether a STOP Complaint is filed by the priority claimant. The service provider (in this case WIPO Center) is required to advise the Panelist if a given domain name in dispute is subject to more than one claim. In the present case there is another IP claim.

Under the STOP, the Complainant must show:

(a) That the domain name is identical to the Complainantís trademark or service mark (Paragraph 4(a)(i)).

(b) That the Respondent has no rights or legitimate interests in the domain name.

(c) That the domain name was either registered or used in bad faith (Paragraph 4(a)(iii)).

A Respondent may demonstrate a right or legitimate interest in a domain name. Circumstances similar to those under the Uniform Domain Name Dispute Resolution Policy of ICANN (the UDRP) can be invoked by a Respondent.

Likewise, the instances of bad faith exemplified in UDRP can be invoked by a Complainant. However, because the STOP Policy and Rules come into play shortly after registration of a domain name, the focus of attention will be on bad faith at the time of registration.

In the present case, the disputed domain name is identical with some of the marks owned by Peacock AG. However, the problem is whether the Complainant has sufficient standing to bring the Complaint. The STOP refers to the Intellectual Property Claims Service, which notifies a trademark holder that a second-level domain name has been registered in which that holder, called a Claimant, "claims intellectual property rights".

An applicable dispute under Paragraph 4(a)(i) of the STOP speaks of a domain name "identical to a trademark or service mark in which the Complainant has rights". Consequently, the onus is on the Complainant if it is not the registered holder of the mark, to provide that it has sufficient rights given to it by the holder to justify its lodging of a Complaint. Obvious examples could include licensees, assignees, mortgagees.

In the present case, all that has been alleged is that Complainant is a member of a "special partnership" with the trademark holder, which is enough to entitle it to enforce the holderís rights. The Panel agrees with the Respondentís counselís summation of the usual rights and limits of "special partnerships" under U.S. law, which is similar to those in other common law jurisdictions with which this Panelist is familiar. However, the situation for a limited partnership may differ under German law. In the Panelís view it is doubtful whether the documents submitted by the Complainant either justify the Complainantís claim to standing or specify the nature of and the rights attaching to a special partnership under German law.

Be that as it may, even if the Complainant could succeed in showing it has locus standi, the Complaint must fail. It is clear that the Respondent has been carrying on business in Hawaii under the name of <peacock.com> for some years. The principal shareholder in the Respondent (its founder) has always been known by the surname of Peacock. Respondent has a U.S. trademark application for <peacock.com>. Whether this mark can be challenged by the Complainant is irrelevant. Such an attack could be mounted only in the U.S. Courts. The fact that the U.S. Trademark Office has published the application can only help the Respondent, given the normal screening processes applicable before an application for trademark is advertised.

The evidence about the alleged offer to sell <peacock.com> is irrelevant to the present application involving <peacock.biz>. It is interesting to note that Complainant has not sought to utilize the UDRP to have <peacock.com> transferred to it, although the name has been held by Respondent for seven (7) years. Although equitable doctrines such as Ďlachesí or Ďsleeping on rightsí encountered in common law jurisdictions do not apply under the STOP, a bad faith finding against a Respondent becomes harder to sustain for a Complainant who has taken no action in respect of a disputed domain name for a period like 7 years. The Complainant must have known that Respondent owned peacock.com in June 1999.

The Complaint has not been made out on the second criterion under the STOP. It is therefore dismissed.

 

7. Decision

For the foregoing reasons, the Panel declines to order the transfer of the disputed domain name to the Complainant.

In accordance with Paragraph 4(l)(ii)(2) of the STOP and Paragraph 15(e)(ii) of the STOP Rules, the Panel decides that no subsequent challenges under the STOP against the disputed domain name shall be permitted.

 


 

Hon. Sir Ian Barker Q.C.
Sole Panelist

Dated: February 14, 2002