WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SDMO Industries v. Coldwell Banker Burnet
Case No. DBIZ2001-00016
1. The Parties
The Complainant is SDMO Industries, 12 bis, rue de la Villeneuve, 29200 Brest, France.
The Respondent is Coldwell Banker Burnet an entity with a mailing address at 270 - 4611 Viking Way, Richmond, BC, V6V 2K9, Canada.
2. The Domain Name and Registrar
The Domain Name at issue is <sdmo.biz>.
The Registrar is Registrars.com having its principal place of business at Vancouver, British Columbia, Canada.
3. Procedural History
The STOP Complaint was filed with the WIPO Arbitration and Mediation Center (the Center) on December 10, 2001, in electronic format and on December 18, 2001, in hard copy.
On January 9, 2002, the Center requested an amendment to the Complaint, which was filed on January 10, 2002, by e-mail and on January 11, 2002, by fax.
The Center verified that the Complaint satisfied the formal requirements of the Start-up Trademark Opposition Policy for .biz, adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001 (the STOP), 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).
The Panel has independently determined and agrees with the assessment of the Center that the Complaint is in a formal compliance with the afore-mentioned rules.
The Panel fees were paid on time in the required amount by Complainant.
On January 21, 2002, the Center notified the STOP Complaint and the administrative proceeding commenced.
Since no response was received by the Center within the time limit set, i.e. by February 10, 2002, the Center sent a notice of default to the Respondent on February 15, 2002.
On March 13, 2002, the Center notified the Parties that an Administrative Panel composed of a single member, Dr. Thomas Legler, had been appointed and that the Panelist had duly submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center.
4. Factual Background
The Complainant is the holder of the French trademark no. 1632724 filed on July 12, 1990, and renewed on June 23, 2000. The respective trademark and design shows the name "SDMO" and two diagonal bars with a stylised letter "S" (Annex 3 of the Complaint).
The Complainant does not give any information as to its commercial activities. However, the trademark classes 4,7,9,11,37 and 39 in which the trademark in question is registered reflect that SDMO Industries is active in the power industry (oil, electricity etc.).
Respondent bears the name Coldwell Banker Burnet. However, there is no such entity at the address given in WHOIS. The telephone number listed in WHOIS belongs to "Infinite Communication" (see also Sarna Kunststoff Holding AG v. Coldwell Banker Burnet, WIPO Case No. DBIZ2001-00038).
This administrative Panel has also been appointed to treat two other cases where the same entity Coldwell Banker Burnet registered domain names which in fact are trademarks of other complainants.
5. Parties Contentions
Complainant contends that the domain name at issue is identical to Complainantís trademark. It submits that the domain name <sdmo.biz> is strictly identical to the trademark "SDMO" in which the Complainant SDMO Industries has rights since 1990.
During the registration process, the Complainant declared IP claims in order to obtain this Domain Name whereas the Respondent did not claim any such rights. It further does not show having any trademark right on the name "SDMO".
Moreover, according to the Complainant, this Domain Name should be considered as having been registered in bad faith by Respondent since the same Respondent appears as registrant of more than twenty seven domain names in which the Complainantís representative had an interest.
The Complainant is furthermore of the opinion that the Respondent has registered the Domain Name for the purpose of selling it to the rightful owner.
The Complainant sets out that it tried to contact Coldwell Banker Burnet, but received only an answer from its sister company "DollarDomainName.com".
This company answered on December 4, 2001, to a request made by Complainantís representative of the day before as follows (Annex 4):
The domain names in which you registered was registered through our sister company.
This is their answer for domain names being registered by us.
At this time there are number of .biz domains that have been submitted to the .biz registry in the ownership name of Jay Tan (Managing partner of New Extensions). This alternate information was submitted for pre-registrations records containing a corruption or incompleteness of data. In such cases the .biz registry was unwilling to accept such records in their real-time pre-registration system. We submitted the pre-registration in our name for the sole purpose of acquiring these domains on our clients behalf.
We are in the process of reverting the registrant information at the .biz registry from Jay Tan to the proper ownership information. As the .biz registry has only just gone live to public operations they are dealing with a large volume of inquiries and processing. Therefore it may take us some time to correct all the registrant updates that need to be completed.
We apologize for any inconvenience this has caused and assure you that we have taken this measure in good faith. All efforts are being made to correct this information as soon as possible. We will honour all requests for updating of DNS information for any of these domains.
Customer Service Department
In an e-mail of December 4, 2001, Complainantís representative invited the company DollarDomainName.com to take the necessary steps to correct various registrations wrongly made in the name of Coldwell Banker Burnet (Annex 4).
The same day DollarDomainName.com answered as follows (Annex 5):
" Dear Sir,
Unfortunately, I have contacted the registrar in regards to your questions and they have stated that they have mixed up the registration information in which we submitted to them.
We are now waiting for the API to correct this information so you have nothing to worry about. Your clients are listed as the registrants in our database, therefore, the information will be corrected to that of which was provided at time of pre-registration".
The Complainant further states that the Respondent has no rights in respect of the domain name <sdmo.biz> and concludes that it has been registered in bad faith.
B. The Respondent
The Respondent failed to submit a Response.
6. Discussion and Findings
Pursuant to paragraph 4 (a) of the STOP, Complainant has to prove each of the following three elements to obtain a finding that the Domain Name should be transferred to the Complainant:
(1) the domain name is identical to a trademark or service mark in which the Complainant has rights,
(2) the Respondent has no rights or legitimate interests in respect of the domain name, and
(3) the domain name has been registered or is being used in bad faith.
Identity with a mark in which the Complainant has rights
Under the STOP proceedings a Complaint may only be filed when the domain name in dispute is identical to a trademark or service mark for which a complainant has registered an IP claim form.
In the present case, Complainant submitted a trademark and design showing the word "SDMO" and a logo with two bars and a stylised "S" near to its name.
This stylised element does however not influence the impression that the very trademark is SDMO.
Moreover, the existence of the ".biz" generic Top Level Domain ("gTLD") in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights.
In view of the foregoing, the Administrative Panel concludes that the domain name <sdmo.biz> is identical to the trademark and design in which the Complainant has rights in respect of the Domain Name.
Rights or Legitimate Interests in respect of the Domain Name
The Complainant asserts that Respondent has no rights or legitimate interests. The Respondent did not file a Response and made therefore no assertion of rights or legitimate interests in respect of the Domain Name. Consequently, the Panel is entitled to infer that Respondent has no such rights or interests (see Alcoholics Anonymous World Services v. Lauren Raymond, WIPO Case No. D2000-0007 and Ronson PLC v. Unimetal Sanayi ve Tic. A.S., WIPO Case No. D2000-0011). Moreover, the Respondent has no connection or affiliation with the Complainant who has not consented to the Respondentís use of the Domain Name. Simple storing of the Domain Name by the Respondent, as this is the case here, does not create any rights or legitimate interests in the Domain Name. Therefore, the Panel concludes that the Respondent has no rights or legitimate interests with regard to the Domain Name <sdmo.biz>.
Bad Faith Registration or Bad Faith Use
Pursuant to the STOP, Complainant must show either bad faith registration or bad faith use. In the present case, Respondent has registered <sdmo.biz> without having either used it or having tried to offer it for sale. Here, as in most cases likely to be brought under the STOP, there has been no use. The question is therefore whether based on the circumstances of the case the Administrative Panel arrives at the conclusion that the Respondent registered the domain name in bad faith. In the present case, as set out hereinabove, the Respondent gave inaccurate and misleading contact information to the Registrar and failed to explain in the proceeding this conduct. The explanations given by Respondentís sister company "DollarDomainName.com" were not clear at all and do not show an act of good faith. Moreover, as it has been mentioned before the Respondent has applied for many other domain names in the .biz gTLD which are identical to third partiesí trademarks showing hereby a systematic pattern of conduct (see also WIPO Case No. DBIZ2001-00038). Hence, the Respondent has registered the Domain Name in bad faith.
Pursuant to Paragraph 4(i) of the STOP, the Panel requires that the domain name registration <sdmo.biz> be transferred to the Complainant.
Dr. Thomas Legler
Dated: March 18, 2002