WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Puls Elektronische Stromversorgungen GmbH v. NetIdentity
Case No. D2002-0205
1. The Parties
The Complainant is Puls Elektronische Stromversorgungen GmbH, represented by Jones, Day, Reavis & Pogue, Frankfurt am Main, Germany.
The Respondent is NetIdentity, Reno, United States of America.
2. The Domain Name and Registrar
The Domain Name is <puls.com>.
The Registrar is Melbourne IT Ltd, dba Internet Names Worldwide.
3. Procedural History
The Complaint was received by the WIPO Arbitration and Mediation Center ("the Center") by email on March 1, 2002, and in hardcopy form on March 27, 2002. The Center has verified that the Complaint satisfies the formal requirements of the Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") 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 Rules, paragraph 2(a). Internet Names Worldwide ("the Registrar") has confirmed that the Domain Name <puls.com> ("the Domain Name") was registered through the Registrar and that NetIdentity ("the Respondent") is the current registrant. The Registrar has further confirmed that the Policy is applicable to the Domain Name.
On April 2, 2000, 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 April 22, 2002.
The Response was received by the Center by email on April 23, 2002, and in hard copy form on April 25, 2002.
On April 30, 2002, the Center received a Supplemental Filing from the Complainant. On May 5, 2002, the Center received a Supplemental Filing from the Respondent. In light of the allegation by the Respondent that the pursuit of this administrative proceeding by the Complainant constitutes Reverse Domain Name Hijacking, the Panel takes the view that the Complainant ought to have an opportunity to respond to that allegation and has decided to accept the Complainantís Supplemental Filing insofar as it is relevant to that issue.
The Panel read the Respondentís Supplemental Filing, but it did not add anything of significance to the Response.
The Panel was properly constituted. The undersigned Panelists submitted Statements of Acceptance and Declarations of Impartiality and Independence.
No further submissions were received by the Center, as a consequence of which the date scheduled for the issuance of the Panelís Decision was May 30, 2002.
However, on May 22, 2002, the Complainant emailed the Center as follows:
"I am contrary to the appointment of Tony Willoughby, Esq., as presiding panelist. He is biased because he was also panelist in the administrative panel decision Emillio Pucci SRL v. Mailbank.com, Inc., Case No. D2000-1786 (WIPO, March 19, 2001). In that decision it was not in dispute that Mailbank.com registered the domain name knowing that this domain name was identical to thousands of surnames, but the complainant can't prove that Mailbank.com had in mind complainant's trademark. If in such a case the panel didn't find bad faith of the respondent you can forget the UDRP-Rules as a capable instrument to avoid cyber-squatting. On this account it should be appoint to administrative panel a person who is not predefined by such an administrative panel decision."
The basis of this objection appears to be that because the presiding panelist has participated in a decision on similar facts to the facts in this case, he should be precluded from participating in this case. The parties to Case No. D2000-1786 are different to the parties to this case although it appears from the evidence that the Respondent in this case is a successor in title to the respondent in the earlier case. The presiding panelist does not regard this allegation as an allegation of bias vis a vis a particular party, but simply an allegation that if he is consistent with the line he took in the earlier case, he is likely to decide against the Complainant. If this objection by the Complainant were to be upheld, all parties to all disputes would have the opportunity of objecting to the appointment of any panelist who has undertaken more than one decision. The more experienced the panelist, the more vulnerable would he/she be to attack. The presiding panelist stands by his declaration of impartiality and independence and declines to disqualify himself. In any event, as it happens, the Panel is unanimous as to the result.
4. Factual Background
From about 1980 the Complainant, a German-based manufacturer of power supply units, started using the name PULS as a trade mark for its products. It is a substantial producer of such units. (NB It should be noted that this information was first put before the Panel in the Complainantís Supplemental Filing received by WIPO on April 30, 2002. Accordingly, the Respondentís complaint that the Complaint contains no details of the extent of the Complainantís use of its trade mark is a justified one.)
The Respondent commenced business in 1996, registering surnames as domain names and offering use of those domain names for email addresses for persons with an interest in those names. The Respondent charges rental fees for usage of the domain names for that purpose.
In 1997 the Complainant registered the domain name <puls-power.com>.
In December 1998 the Complainant registered PULS as a trade mark with the German Trade Mark Office.
On March 1, 2002, the Complainant launched this Complaint. On March 8, 2002, the Respondent wrote to the Complainant. The letter referred to most of the matters raised in the Response (see below), but failed to include the Respondentís denial that it was aware of the existence of the Complainant and its trade mark prior to the launch of this administrative procedure.
The Complainant did not reply to that letter.
5. Partiesí Contentions
The Complainant points to its trade mark registration and asserts that the Domain Name and the trade mark are identical.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name. It refers to the Respondentís website homepage where the Respondent claims to have registered thousands of domain names. The Complainant observes that the Respondent has a business of registering frequently used surnames (e.g. smith, hogan and puls) as domain names and then charges people having those surnames a monthly rental to use the domain names as email addresses (e.g. firstname.lastname@example.org). The Complainant contends that such a business cannot give the Respondent any legitimate interest in respect of those domain names.
The Complainant goes on to assert that a business of this kind which involves profiting out of other peopleís names and effectively blocking those people from registering their own names constitutes bad faith registration and use of those domain names (including the Domain Name) within the meaning of paragraphs 4(a)(iii), 4(b)(i) and 4(b)(ii) of the Policy. The Complainant complains that the Respondent has no connection with the name PULS save in its capacity as registrant of the Domain Name and its sole purpose is to profit out of the name at the expense of those who do have rights or legitimate interests in respect of the name.
The Respondent states that it commenced business in 1996 and has been using the Domain Name in its business since July 12, 1996.
The Respondent owns a large number of domain name registrations, the vast bulk of them being names identified as being the most common surnames in North America and selected from telephone directories and census data.
The Respondent denies that it is a cybersquatter. Far from excluding people from using domain names featuring their surnames it enables people to share usage of such domain names. It has over 100,000 customers, seven of which with the surname PULS are currently using email addresses featuring the Domain Name.
The Respondent points out that its use of the Domain Name predates the Complainantís trade mark registration by over 2 years. The Complaint provides no evidence as to the Complainantís use of its trade mark. The Respondent states that prior to the launching of this administrative procedure the Respondent did not know of the existence of the Complainant or its trade mark.
The Respondent contends that the Complainantís pursuit of this Complaint constitutes Reverse Domain Name Hijacking. In support of this allegation the Respondent states that on March 8, 2002, following receipt of the Complaint, it wrote to the Complainant explaining the above, demonstrating that the allegation of cybersquatting was misconceived and inviting the Complainant to withdraw the Complaint. The Respondent received no reply to that letter and the Complaint has been pursued.
The Respondent contends that the pursuit of a Complaint in the knowledge that the allegations in the Complaint are misconceived must constitute Reverse Domain Name Hijacking.
C. Complainantís Response to Allegation of Reverse Domain Name Hijacking
The Complainant contends that it was justified in launching this administrative procedure and denies that the Complaint is misconceived, still less a case of Reverse Domain Name Hijacking. The Complainant repeats some of what is said in the Complaint and stresses 3 points:
a) The Complainantís trade mark rights pre-date the Respondentís registration of the Domain Name by many years.
b) The Complainantís stated purpose of renting out the Domain Name is caught by Paragraph 4(b)(i) of the Policy just as much as if the Domain Name had been offered for sale:
"Pursuant to Paragraph 4(b) UDRP an abusive intention and use of a domain name in bad faith is assumed if the domain name had been registered primarily for the purpose of selling or leasing it. It is indisputable that Respondent does not have any relation to "Puls" regarding the right to use the name. Instead, Respondent's business purpose is to have as many names as possible registered in order to technically block all other holders of rights to these names. Respondent then uses this technical blockade by providing a joint use of the domain name for high fees."
c) The Complainantís right to the Domain Name is only displaced if the Respondent is also entitled to the Domain Name and the Respondent here has no such entitlement. This argument is encapsulated in the following passage from the Supplemental Filing:
"Complainant is entitled to trademark rights to the name "Puls", which also allows him to have this name registered as domain name. Complainant only loses this right if another entitled third party had registered a domain name of earlier priority. Respondent is not such a third party as Respondent is not entitled to legitimate interests in the domain name <puls.com> pursuant to UDRP."
The Complainant observes that German and Austrian courts have supported this position:
"A German court decided, for example, that the reservation of a domain name violates competition law and public policy if the domain holder does not have a self-interest in the use but only intends to offer the domain name to other third parties (decision of the Regional Court of Duesseldorf dated July 6, 2001, -38 O 18/01-). The Austrian Supreme Court took the same position. Pursuant to Austrian jurisdiction a blocking intention violating competition law is assumed if the domain holder does not have a comprehensible self-interest in the domain name (decision of the Austrian Supreme Court dated June 12, 2001 -4 Ob 139/01x-)." (It is to be noted that the Panel was not supplied by the Complainant with copies of these decisions.)
D. Respondentís Supplemental Filing
The Respondentís Supplemental filing mainly consists of further argument and does not add significantly to the Response. Given the Panelís decision, there is no need to detail the contents of this document.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The Domain Name is identical or confusingly similar 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 in bad faith and is being used in bad faith.
If the Complaint fails, the Panel has to have regard to paragraph 15(e) of the Rules and in particular the following sentence namely:
"If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at reverse domain name hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its Decision that the Complaint was brought in bad faith and constitutes and abuse of the Administrative Proceeding."
Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as meaning "using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name."
Identical or confusing similarity
It is not in dispute that the Domain Name (absent the <.com> suffix) is identical to the Complainantís trade mark PULS. Accordingly the Panel finds that the Domain Name is identical to a trade mark in which the Complainant has rights.
Rights or legitimate interest of the Respondent
It is also not in dispute that the Respondent registered the Domain Name along with a large number of other domain names comprising surnames with a view primarily to renting them out to members of the public for email use. It is clear that at the time of registration the Respondent envisaged that the likely users for each domain name would be people having the relevant surname. The Respondentís customers for the Domain Name are all persons with PULS as their surname.
Certainly, the Respondent had no rights in respect of the Domain Name at the time of registration of the Domain Name. The Respondent had no trade mark rights (registered or unregistered), was not known by the name, conducted no business under the name and had no licence to use the name.
Did the Respondent nonetheless have a "legitimate interest" in respect of the Domain Name at that time? As a matter of language, arguably it did. While it did not propose to conduct business under the name, it expected to use the Domain Name to derive income from persons with the surname PULS. Is that a legitimate purpose?
The Panel has been unable to agree on the approach to be taken on this issue, but since the Panel is unanimous in finding an absence of bad faith, the Panel does not see the need to resolve the point.
A non-exhaustive list of what may constitute bad faith is set out in paragraph 4(b) of the Policy. All the examples given involve an intent by the Respondent when registering the Domain Name to damage the Complainant or in some way ride on the back of the goodwill of the Complainant.
While the list of examples of bad faith in paragraph 4(b) is expressed to be non-exhaustive, the Panel regards it as crucial to the success of a Complaint under the Policy that at the time of registration the Respondent at the very least had the Complainant in mind.
Here there is no evidence that the Respondent had the Complainant in mind when registering the Domain Name. The Complainant has produced no evidence to show why the Respondent might have been expected to know of the Complainant or its trade mark and the Respondent has expressly disclaimed any such knowledge. "Puls" was just one of many thousands of surnames registered as domain names by the Respondent. The Respondentís purpose was simply to target as customers people having the surname PULS.
The Panel rejects the argument of the Complainant to the effect that the offer of the Domain Name for sale or rent to third parties is contrary to paragraph 4(b)(i) of the Policy. In putting that argument forward, the Complainant has ignored the words "to the Complainant or a competitor of the Complainant", which appear in that paragraph. Were the Complainantís argument to prevail, domain name dealing would be contrary to the Policy whenever the name in question is the subject of trade mark rights somewhere in the world. That has never been the objective of the Policy. Still less is it what the Policy says.
The Panel also rejects the Complainantís argument that for the Complainantís prior Ďrightí to the Domain Name to be displaced, the Respondent has to have an entitlement to the Domain Name. While the Panel accepts that the Complainant has substantial trade mark rights to the name PULS and while arguably the Respondent has no right or legitimate interest in respect of the Domain Name, all three of the elements of paragraph 4(a) of the Policy have to be proved. The argument of the Complainant seems to be to the effect that proving the first two elements is sufficient. The fact (if it be the fact) that as a matter of German and Austrian law what the Respondent is doing is unlawful is of no consequence in this administrative procedure. The Panel has to administer the Policy, not the law of any given state. If the Complainant has a good cause of action under German and Austrian law, the Complainantís recourse is to the courts of those countries
The Panel finds that the Complainant has failed to prove that the Respondent registered the Domain Name in bad faith and is using it in bad faith.
Reverse Domain Name Hijacking
The Panel has thought long and hard about this allegation. Certainly, the Complaint was misconceived and certainly it is surprising that the Complainant persisted with the Complaint after receipt of the detailed warning letter from the Respondent. That it did so seems to have stemmed from a fundamental misunderstanding on the part of the Complainantís representative as to the scope of the Policy rather than any deliberate abuse on the part of the Complainant. At all events, the Panel is prepared to make that assumption in the Complainantís favour.
The Complaint is dismissed and the Panel makes no finding of Reverse Domain Name Hijacking.
M. Scott Donahey, Esq.
Dr Andrea Jaeger-Lenz
Dated May 31, 2002