WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AHI Invest GmbH v. Escape Ventures Inc.
Case No. DBIZ2001-00035
1. The Parties
The Complainant is AHI Invest GmbH, (Reg. No 112316 x, Commercial Court of Vienna), Rathausstraβe 15, 1010 Vienna, Austria.
The Respondent is Escape Ventures Inc., 4400 N. Scottsdale Rd, Suite 239-332, Scottsdale, AZ 85251, USA.
2. The Domain Name and Registrar
The contested Domain Name is <ahi.biz>.
The Registrar is Intercosmos Media Group Inc, d.b.a. DirectNIC.com.
3. Procedural History
The Complaint was received by WIPO Arbitration and Mediation Center ("the Center") by email on December 13, 2001, and in hard copy form on December 19, 2001. The Center has verified that the Complaint satisfies the formal requirements of the Start-up Trademark Opposition Policy ("the STOP") and the Rules relating thereto and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.
The Complaint was properly notified in accordance with the STOP.
On December 28, 2001, the Center notified the Respondent of the Complaint in the usual manner and informed the Respondent inter alia that the last day for sending its Response to the Complainant and to the Center was January 17, 2002.
On January 9, 2002, a request for extension of time to file a Response was received by the Center from the Respondent and the Center replied on that same date.
On January 26, 2002, the Response was received by the Center by facsimile, by email on January 27, 2002, and in hardcopy form on January 31, 2002.
The Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
No further submissions were received by the Center or the Panel.
4. Factual Background
The Complainant is an Austrian based company engaged in the field of real estate consulting, brokerage, development and investment services.
Since 1992, the Complainant has used the letters AHI as a prominent part of its name and since about the same date the Complainant has been the registered proprietor of trade mark registrations comprising or including the letters AHI. From the annexes to the Complaint, it would appear that the registrations are for the letters in logo form.
From the Complainantís promotional literature, copies of which were annexed to the Complaint, it is apparent that the Complainant holds itself out as "AHI" and "AHI Group", "AHI Vienna", "AHI Prague", "AHI Bratislava", "AHI Munich" etc.
The Panel accepts as a fact that the Complainant has trade mark rights (registered or unregistered) in the trade mark AHI in its field of operation.
The Respondent registered the Domain Name with the Registrar in question on November 19, 2001.
5. Partiesí Contentions
The Complainant contends that the Domain Name is identical to a trade mark in which it has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Respondent registered the Domain Name in bad faith.
In support of the claim that the Respondent has no rights or legitimate interests in respect of the Domain Name, the Complainant asserts that the Respondent has no relationship with or permission from the Complainant to use the Complainantís trade mark AHI. It goes on to observe that the Respondent does not operate a business under the name AHI nor offer any goods or services under the name AHI. It makes that assertion on the back of Google.com and Lycos.com search results. It also observes that the Respondent as an individual is not identified by the name AHI.
In support of the bad faith claim the Complainant contends that the Respondent is a domain name trader and is just a passive holder of the Domain Name. It prays in aid the Respondentís description of itself as an "internet incubator". Details are given of a large number of other domain names owned by the Respondent.
The Complainant asserts that the Respondent is the developer and distributor of a game product named Gatewar and uses the domain names <gatewar.com> and <gamemaster.com> to promote and conduct its real business.
The Complainant further asserts that the Respondent does not offer any goods or services under the trade mark, trade name or company name AHI and that on that basis the Respondent has no good faith basis for the use of the Domain Name.
From this the Complainant contends that the Respondent registered the Domain Name primarily for the purpose of selling, renting or otherwise transferring it to the Complainant or to prevent the Complainant from reflecting the mark in a corresponding domain name.
The Complainant prays in aid Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028, for the proposition that "where the domain name contains in its entirety and is for all essential purposes only, Complainantís trade mark, such trade mark as a coined word, has been in use for a substantial time prior to the registration of the domain name and is a well known mark and Respondent has no good faith basis for use of the Domain Name."
The Response is a substantial document attacking the Complainantís claim to trade mark rights in the initials AHI, asserting an extensive use of the Domain Name in connection with a bona fide offering of goods and services and denying any bad faith intent when registering the Domain Name or in using the Domain Name.
For present purposes, it is only necessary for the Panel to cite two sections of the Response, namely:
(i) in relation to the allegation that the Respondent has no rights or legitimate interests in respect of the Domain Name, the Respondent asserts that it has expended a substantial amount of time and money in the research of the business listings for the website and in the development of the <ahi.biz> logo and web page design. It produces a copy of a cheque in favour of Ballard Design for $1,000 purporting to be for <ahi.biz> logo and web design work. The Respondent asserts that it is currently using the <ahi.biz> domain in connection with a bona fide offering of goods and services. "The <ahi.biz> website provides a means to enhance the domain with updates and corrections to its directory listings and has become affiliated with Amazon.com and the FBIN Business Organisation and multiple other businesses." A copy of the web page is annexed to the Response;
(ii) "the Respondent contends that it had never heard of or known of the existence of AHI Group, prior to contact by the Complainant Ö".
6. Discussion and Findings
According to paragraph 4(a) of the STOP, the Complainant must prove that:
(i) The Domain Name is identical to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered or is being used in bad faith.
Identical or confusingly similar
While the Complainantís trade mark registrations are for the initials AHI in logo form and not, therefore, for the letters AHI per se, the essential elements of those registrations are the letters AHI. Additionally, as the Panel has already indicated above, the Complainant has adduced sufficient evidence for present purposes to establish that its use of the initials AHI to date has been such as to establish unregistered rights in the initials.
The Panel finds that the Domain Name, comprising as it does, the initials AHI and the generic domain suffix, is identical or confusingly similar to a trade mark in which the Complainant has rights.
Respondentís Rights or Legitimate Interests
While the evidence put in by the Respondent under this head could be stronger, it does appear that the Respondent is in fact making a business use of the Domain Name and was planning to do so prior to notification of the Complaint. Certainly there is nothing in the Complaint sufficient to establish that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Complainant has failed to prove that the Respondent has no rights or legitimate interests in respect of the Domain Name.
As indicated above, the Complainant prays in aid the case of Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028. In the view of the Panel, that was a very different case. In that case the trade mark in question, namely CELLULAR ONE, is and was at the material time very well known to internet users. In this case, the trade mark is AHI, which may be well known in real estate consultancy circles in Europe, but there is nothing in the evidence to establish the fame of the mark outside real estate consultancy services and outside Europe.
The Panel has no reason to doubt the Respondentís contention that it had never heard of or known of the existence of the Complainant prior to contact by the Complainant.
In those circumstances, and in the absence of any complaint as to the Respondentís use of the Domain Name, the Complaint has to fail.
While the list of circumstances indicating bad faith registration and use of a domain name set out in paragraph 4(b) of the STOP are non-exhaustive, all involve the Respondent having the Complainant in mind at the relevant time.
Accordingly, the Panel finds that the Complainant has failed to prove that the Respondent registered the Domain Name in bad faith.
The Complaint is dismissed.
Dated: March 7, 2002