WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dynamic Cassette International Ltd. v. Kombud
Case No. D2002-0262
1. The Parties
Complainant is Dynamic Cassette International Ltd, Marsh Lane, Boston, Lincolnshire, PE21 7TX, United Kingdom. Complainant’s authorised representative is Mr. James Vaughan, at the same mailing address as Complainant.
Respondent is Kombud, ul. Konstytucji 3 Maja 2, Lomza, PL 18-403, Poland.
2. Domain Name and Registrar
The domain name at issue is <jettec.com>. Registrar is Verisign Network Solutions, Inc., 487E Middlefield Road, Mountain View CA 94043, United States of America.
3. Procedural History
The World Intellectual Property Organization Arbitration and Mediation Center ("the Center") received a Complaint from Complainant by e-mail on March 19, 2002, and in hardcopy on March 21, 2002. On March 26, 2002, the Center issued an Acknowledgement of Receipt of Complaint.
On March 27, 2002, the Center requested a Registrar Verification to Registrar, which was received by Registrar on March 28, 2002.
According to the Registrar Verification:
- Network Solutions, Inc. is the Registrar of the domain name at issue;
- Registrant is Kombud with the address indicated above for Respondent;
- Administrative and Billing Contact is Zbigniew, Zurawski, Centra Sp. z.o.o.Loteryjki 71, Warszawa, 01-937, Poland, with e-mail address: firstname.lastname@example.org;
- Technical Contact is Jacek, Atcom, Grochowska 316/320, Warszawa, 03-839, Poland Kaska, with e-mail address: email@example.com and;
- The status of the domain name registration is active;
- The language of the Service Agreement is English;
- The domain name registrant has submitted in its Registration Agreement to the jurisdiction at the location of the principal office of the Registrar for court adjudication of disputes concerning or arising from the use of the domain name.
Having established the usual Formal Requirements Compliance Checklist, the Center issued, on April 4, 2002, a Notification of Complaint and Commencement of Administrative Proceeding which was duly notified to Complainant, to the Registrar and to ICANN. To Respondent, the Notification was transmitted by post/courier (with enclosures), by facsimile and by e-mail to the e-mail addresses of Respondent as well as to those of Administrative, Billing and Technical Contact and also to the additional contact that Complainant had mentioned, Mr. Jacek Komorowski, with e-mail address: firstname.lastname@example.org.
According to the Package Tracking Results the shipments (airway bill numbers indicated) were delivered to their three receipients (Zbigniew Surawski, Kombud and Atcom). The telefax reports indicate that the transmission to Kaska Jacek also went through. As regards the e-mails the Mail Delivery Subsystem indicated that the mail to email@example.com did not go through. No such indications were given concerning the other e-mails relating to the Notification.
On April 4, 2002, the Center received an e-mail from Mr. Komorowski in which he said that he had problems in understanding all the matters about this case and would like to receive the documents in Polish. The same day the Center replied to his e-mail, inter alia advising him that the Registration Agreement is in English, that under Paragraph 11 of Uniform Domain Name Dispute Resolution Policy ("the Policy"), English shall be used as the language of the proceedings in the case unless otherwise agreed by the Parties and that he might, in case he had difficulties in understanding the material, ask a professional translator to assist him. The Center also indicated that the message from Respondent had been copied by it to Complainant.
On April 22 and 25, 2002, the Center received a communication from Mr. Komorowski in e-mail and hardcopy form, respectively, "regarding the facts about the domain name" in which Mr. Komorowski – while indicating that he had absolutely no right to act on behalf of KOMBUD – made some observations relating to the domain name. The Center informed Mr. Komorowski that it would forward the communication to the Panel at whose discretion it was to determine if it would take the communication into consideration in rendering its decision.
At the request of the Panel, the communication from Mr. Komorowski was forwarded, on May 27, 2002, to the Panel and also transmitted to Complainant.
The Center invited Mr. Henry Olsson to serve as a Panelist in the Case. Having received Mr. Olsson´s Statement of Acceptance and Declaration of Impartiality and Independence, the Center issued, on May 22, 2002, a Notification of Appointment of Administrative Panel and Projected Decision Date, which was June 5, 2002.
The Sole Panelist finds that the Administrative Panel has been properly appointed in accordance with 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").
4. Factual Background
Complainant is a company which has for six years been manufacturing compatible ink jet supplies.
No particular information is available concerning Respondent’s activities.
5. Parties´ Contentions
Complainant first submits that the dispute is properly within the scope of the Policy and that the Administrative Panel has jurisdiction to decide the dispute as the Registration Agreement under which the domain name at issue is registered incorporates the Policy.
Complainant alleges that it has been using "Jet Tec" as a brand name during the years in which it has conducted manufacturing activities. According to a copy of a Trade Marks Database Enquiry issued by the UK Patent Office and submitted by Complainant, the Community Trade Mark "JET TEC" was registered under number E1291889 on August 27, 1999, for Dynamic Cassette International. Limited in Classes 2, 9 and 16.
Complainant furthermore contends, first, the domain name <jettec.com> uses a text that is identical to Complainant’s registered trademark and that the domain name Registrant has never been commonly known as the domain name; in the belief of Complainant the sole purpose of the registration of the domain name was to profit from the sale of the domain name to Complainant.
Complainant has referred to copies of an e-mail correspondence between Mr. Vaughan and Mr. Komorowski. The first e-mail, of November 14, 2001, to firstname.lastname@example.org and email@example.com stated that Complainant was making arrangements for the registration of the URL "www.jettec.com" as this was the brand name for Complainant’s products and that Complainant was the owner of the trademark "Jet Tec". In the e-mail Mr Vaughan also stated that he believed that the recipient of the e-mail had already registered the domain name but that it was not currently in use and requested that the domain name be transferred to Complainant as it would like to make immediate use of this.
On November 28, 2001, Mr. Komorowski replied stating inter alia: "How you probably know Im owner of Centra Company and domain www.jettec.com. to. We bought this domain 3.5 years ago and now Im able to discuss about future for the domain. I waiting for your proposal." On December 4, 2001, Mr. Vaughan, in a e-mail to Mr. Komorowski, repeated his suggestion that the domain name be signed over to Complainant and asked for some information about the company Centra and for Mr. Komorowski´s telephone number to discuss the issue.
After a new reminder from Mr. Vaughan on February 8, 2002, Mr. Komorowski repeated, in an e-mail of the same day, that he was waiting for proposals and also gave some indications about the company Centra. Thereafter, in an e-mail of February 9, 2002, Mr Vaughan offered US$ 1,000 for the domain name and also offered to send the payment in any way preferred by Mr. Komorowski. On February 15, 2002, Mr. Komorowski sent an e-mail to Mr. Vaughan stating "I don’t be conceal that Im disappointed about your offer. I was have to much better proposal and I dont sold because I waiting for DCI only. Dont forget that Centra is trade firm and domain name is ordinary article to sold or to buy. Im waiting for serious offer".
On March 4, 2002. Mr. Vaughan sent an e-mail to Mr. Komorowski stating that he was taking legal advice regarding the matter and that, according to the Policy, Complainant as the owner of the Jet Tec brand name were entitled to the legitimate use of the domain name www.jettec.com, Complainant had grounds for complaint under several of the criteria mentioned in the Policy. Mr. Vaughan stated that the initial offer still stood and that he requested the transfer of the domain name; otherwise he could continue with an official complaint.
In an e-mail of March 15, 2002, Mr Komorowski stated: "I and my lawyer are sure that registered domain name was not in bad faith. How you know this domain all time is dead but my proposal of sold is live still. You are lucky that Centra was registered domain name first but not someone unknown because I feel that we are able to agreement soon. I am bide for serious offer."
Invoking the contents of this e-mail correspondence and other factual circumstances indicated above but without elaborating further on the reasoning behind the contentions, Complainant contends that a) the domain name is identical or confusingly similar to a trademark or a service mark in which Complainant has rights, b) Respondent has no rights or legitimate interests in respect of the domain name and, c) the domain name is registered and is being used in bad faith.
In accordance with Paragraph 4(i) of the Policy and for the reasons described in the Complaint - and summarised above – Complainant requests that the domain name at issue be transferred to Complainant.
In accordance with Paragraph 3(b)(xiii) of the Policy, Complainant agrees to submit, only with respect to any challenge that may be made by Respondent to a decision by the Administrative Panel to transfer or cancel the domain name that is the subject of the Complaint, to the jurisdiction of the courts where the principal office of the concerned Registrar is located.
Respondent has submitted no formal Response but, as mentioned above, Mr. Komorowski has submitted certain statements to the Center, in particular a statement dated April 22, 2002. In that statement, Mr. Komorowski, in his capacity as President of the Board of Centra Sp. z.o.o., explains certain circumstances in connection with the registration of the domain name. He contends that the domain name at issue was registered "with the involvement of KOMBUD as commissioned by Centra" and that the domain name was registered and purchased by Centra solely to promote the brand on the Polish market. At the same time Mr. Komorowski states that "I would like to emphasise that I have absolutely no rights to act on behalf of KOMBUD. I am, however, authorised to represent CENTRA, the present owner of the www.jettec.com domain."
Under the following heading the Panel discusses if and to what extent that statement can be taken into consideration in deciding this case.
6. Discussions and Findings
Paragraph 15 of the Rules prescribes that the Panel shall decide a Complaint on the basis of the statements made and documents submitted and in accordance with the Policy, these Rules and any principles of law that it deems applicable.
The Service Agreement relating to the disputed domain name registration incorporates the Policy which is consequently applicable to this case.
The Registrar Verification indicates Kombud as the Registrant of the domain name at issue, mentioning the names of Messrs. Surawski as Administrative and Billing Contact and Kaska Jacek as Technical Contact, respectively. No mention is made of Mr. Komorowski in the Registrar Verification nor is any indication given to the effect that the company Centra would be the owner of the domain name at issue. The Panel therefore has to operate on the basis of what the Registrar Verification states about the Registrant of the domain name at issue. Consequently, for the purposes of this case, the Panel considers Kombud as the Registrant and the proper Respondent.
The Panel notes that the Notification of Complaint and Commencement of Administrative Proceeding was delivered by DHL to Kombud at its address in Warsaw on April 5, 2002, at 14.25. The Panel therefore concludes that the Complaint has been properly communicated to Respondent in accordance with the Rules.
The statement of April 22, 2002, by Mr. Komorowski does not meet several of the requirements which the Policy establishes for a statement to be considered as a proper Response on behalf of Respondent. Most important, the statement is not signed by any person representing Respondent; on the contrary, Mr. Komorowski stresses that he "has absolutely no rights to act on behalf of KOMBUD", that is, on behalf of Respondent. If the statement were to be a proper Response, it would have been easy for Mr. Komorowski to have the statement signed by, or made on behalf of, Respondent. Furthermore, there are no indications that the statement has been transmitted to Complainant, as required under Paragraph 5 (b)(vii) of the Policy, nor does the statement contain the mandatory signed certification as required under Paragraph 5(b)(viii) of the Policy. The Panel wishes to underline that those requirements are not empty formalities; on the contrary they are there in order to ensure a fair and transparent proceeding.
For these reasons which have been set out now the Panel does not consider the statement of April 22, 2002, as a Response submitted by Respondent in this case.
Respondent therefore has to be considered as being in Default.
In the case of a Default by a Party, Paragraph 14 of the Rules prescribes that if a Party, in the absence of exceptional circumstances, does not comply with a provision of, or a requirement under, these Rules, the Panel shall draw such inferences therefrom as it considers appropriate.
The Panel will consequently have to operate and consider the case on the basis of the factual circumstances contained in the Complaint and the documents available to support these contentions.
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
- that the domain name registered by Respondent is identical or confusingly similar to a trademark or a service mark in which Complainant has rights;
- that Respondent has no rights or legitimate interests in the domain name, and:
- that the domain name has been registered and is being used in bad faith.
In the following parts of the Decision the Panel discusses each of those elements.
Identity or Confusing Similarity
In this regard, Complainant has, according to Paragraph 4(a)(i) of the Policy, to prove that the domain name at issue is identical with or confusingly similar to a trademark or a service mark in which Complainant has rights.
The domain name at issue is <jettec.com>
According to the Trade Marks Database Enquiry submitted by Complainant, Dymanic Cassette International Limited is the registered owner of the trademark "JET TEC" as a Community Trademark.
The domain name differs from the trademark in that the two parts of the trademark (JET TEC) are brought together in the domain name (jettec) and that the notion ".com" is added.
In particular when they are pronounced, the trademark and the domain name are very similar, and the addition of the notion ".com" is not such that it removes the likelihood of confusion between the mark and the domain name. The Panel therefore concludes that there exists in fact a confusing similarity between the domain name and Complainant’s registered trademark.
Rights or Legitimate Interests
In this regard, Complainant has, according to Paragraph 4(a)(ii) of the Policy, to prove that Respondent has no rights or legitimate interests in the domain name.
Little is known in this case about the interest that Respondent might have in the domain name, for which, according to the information from the WHOIS database, the record was created on August 25, 1998. Complainant has stated that the domain name has not been used and that the Respondent has never been commonly known under the domain name. Kombud, who is the proper Respondent in this case, has been given the opportunity to contest these contentions but, as no formal Response has been submitted, has not done so.
Otherwise, the only documents available to support Complainant´s contentions are the various e-mails exchanged between Complainant’s representative and Mr. Komorowski concerning the possible transfer of the domain name to Complainant. In those e-mails Mr. Komorowski acted as if he represented the Registrant at least in the sense that he negotiated the price for the transfer of the domain name. The Panel notes in particular the e-mail of February 15, 2002, in which Mr. Komorowski states that he did not sell the domain name, "because I waiting for the DCI only". Mr. Komorowski also indicated that Centra is a trade firm and that the domain name is an ordinary article to be sold or bought.
Regardless of on whose behalf Mr. Komorowski was acting in the e-mail exchange, this correspondence together with the fact that the domain name does not seem to have been put to any use suggests that the main interest that may be attached to the domain name is the transfer of it for an amount of money to be negotiated.
On the basis of these considerations the Panel finds it to be established that Respondent has no rights or legitimate interests in the domain name in the sense of the Policy.
Registration and Use in Bad Faith
In this regard, Complainant has, according to Paragraph 4(a)(iii), to prove that Respondent’s domain name has been registered and is being used in bad faith. Paragraph 4(b) then mentions a number of circumstances which, in particular but without limitations, shall, if found to be present by the Panel, be evidence of registration and use of a domain name in bad faith.
The Panel has already noted that the domain name at issue does not seem to have been put to any use other than as a subject matter for which a transfer price could be negotiated like in the case of trade in any other object. The Panel also notes that Complainant, according to its own statement, has used the trademark "JET TEC" for six years but that the trademark seems to have been registered only in August 1999. The Record for the domain name at issue was created in August 1998. On the other hand, the Panel considers it to be established that there must have been some knowledge about Complainant and its activities at the time the registration of the domain name at issue, as Mr. Komorowski – regardless of whether he acted as the formal representative of the Respondent or not - would otherwise have had no reason to mention, as he did in the mail of February 15, 2002, that "I was waiting for DCI only."
As mentioned, Kombud, which is the proper Respondent in this case, has been given ample opportunity to contest Complainant´s allegations in the way prescribed by the Policy and the Rules but has chosen not to do so and has thus not provided any arguments which would counter Complainant´s allegations.
On balance, taking into account the materials present in the case, as well as the absence of any formal Response by Respondent to the contentions by Complainant, the Panel concludes that, the circumstances in the case are sufficient to establish that the domain name has in fact been registered and is being used in bad faith, as mentioned in Paragraph 4(a)(iii) and 4(b)(i) of the Policy.
On the basis of the foregoing considerations the Panel concludes that the domain name <jettec.com> is confusingly similar to Complainant’s trademark JET TEC, that Respondent has no rights or legitimate interests in the domain name and that the domain name has been registered and is being used in bad faith.
Pursuant to Paragraph 4(i) of the Policy and in accordance with the request by Complainant, the Administrative Panel requires that the domain name <jettec.com> be transferred to Complainant.
Dated: May 28, 2002