WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nike, Inc. v. Crystal International
Case No. D2002-0352
1. The Parties
1.1 The Complainant is Nike, Inc., an Oregon Corporation with its principal place of business in Beaverton, Oregon, United States of America.
1.2 The Respondent is Crystal International located at RM609 HyoCunB/D Seo Cho Dong, 1425-10 Seo Cho Ku, Seoul, Republic of Korea.
2. The Domain Names and Registrar
2.1 The Domain Names at issue are: <nikepark.com>, <nikepark.net>, <nikemen.com>, <nikegolf.net>, <nikeshops.com>.
2.2 The Domain Names are registered with Tucows, 96 Mowat Avenue, Toronto, Ontario, Canada.
3. Procedural History
3.1 A Complaint was submitted by the Complainant to the World Intellectual Property Organization Arbitration and Mediation Center ("the Center") on April 15, 2002 in hard copy and on April 19, 2002, by email. The Center sent an Acknowledgement of Receipt of Complaint to the Complainant on April 16, 2002. The Complainant paid the required fee.
3.2 On April 18, 2002 the Center sent Request for Registrar Verification to the Registrar requesting verification of registration data. The Registrar confirmed, inter alia, that it is the Registrar of the Domain Names and that the Domain Names are registered in the Respondentís name.
3.3 The Center verified that the Complaint satisfies the formal requirements of the ICANN 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").
3.4 On April 22, 2002, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint, with a copy to the Complainant. This notification was sent by the methods required under Paragraph 2(a) of the Rules.
3.5 On May 17, 2002 the Center sent a Notification of Respondent default as no Response was submitted.
3.6 On June 6, 2002 the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Cecil O.D. Branson, Q.C. (the "Sole Panelist"). The Center notified the parties of the appointment of a single-member Panel consisting of the Sole Panelist.
3.7 The Sole Panelist finds that the Panel was properly constituted and appointed in accordance with the Rules and WIPO Supplemental Rules.
4. Factual Background
4.1 Complainant, Nike Inc. is a leading sports and fitness company, designing, manufacturing and marketing a broad range of footwear, apparel and equipment. It operates a variety of retail shops throughout the world, maintains an active presence on the Internet, primarily through its <nike.com> website where it promotes and sells its goods and services and provides information about its business activities.
4.2 Complainant asserts that it owns numerous trademark registrations worldwide for its NIKE trademark, including United States Registrations nos. 978,952, 1,153,938, 1,243,248, 1,277,066 and 1,214,930 covering a broad range of goods and services. The Complainant also says it owns a French trademark registration for the mark NIKE PARK in connection with apparel, entertainment and retail services (Serial No. 98 716 571), and that it owns numerous registrations for the mark NIKE GOLF, including United States Registration No. 1944436 (Classes 18 and 25; bags, footwear and clothing); Mexican Registration Nos. 443269 (Class 18, bags), 435128 (Class 25; footwear, clothing and headwear); Canadian Registration Nos. 482728 (bags, footwear, clothing, headwear); and United Kingdom Registration No. 2039330 (clothing and footwear). Copies of the trademark registrations mentioned above were exhibited to the Complaint. While all the U.S. trademarks mentioned are registered to Nike, Inc., this does not appear to be the case with the Mexican, French, and United Kingdom marks where the trademark owner in each case is shown as Nike International Ltd., a Bermuda corporation.
5. Partiesí Contentions
5.1 Complainant says that the Respondent appears to have registered the Domain Names at issue on the following dates: <nikepark.com> July 4, 1999; <nikepark.net> July 4, 1999; <nikemen.com> July 17, 1999; <nikegolf.net> July 9, 1999; <nikeshops.com> February 16, 2002.
5.2 The Complainant argues the first element of paragraph 4(a) of the Policy, solely on the basis of confusing similarity. In doing so, it stresses that the Respondentís Domain Names each contain, as their central and most distinctive element, Complainantís registered and world famous NIKE trademark to which, in each instance, are added terms, each of which is readily associated with Complainantís products, services, and/or business, and which sometimes combine to form an additional trademark of Complainant.
5.3 With regard to the rights or legitimate interests of the Respondent, the Complainant asserts that there is no discernible legitimate interest in the "Nike" designation, and it does not appear that the Respondent has ever been commonly known by the "Nike", "Nike Park", "Nike Golf", "Nike Men", or "Nike Shops" designation. Further, the Complainant asserts that Respondent has never used a trademark or service mark similar thereto by which it may have come to be known and that any such use by Respondent would likely have constituted legally actionable infringement and dilution of Complainantís world famous trademark, nor has Respondent made use of the Domain Names in connection with any business or non-commercial use of the Domain Names. The Complainant concludes that it is far more likely that Respondent is but one of many "cybersquatters" seeking to profit from Complainantís world famous trademark.
5.4 That part of the Complainantís submission in the Complaint directed specifically to the element of bad faith registration and use is set out, verbatim, below.
"1. Respondent registered the domain names in bad faith, since he knew at the time of the fame and Complainant's ownership of its NIKE trademark [sic]. Respondent could readily foresee that people would assume the domain names to be connected with Complainant, that the public would seek out this sites [sic] in the hope of finding Complainant's site, and that Complainant would therefore wish to own and use it.
2. Moreover, Respondent's use and registration of these domain names has prevented Complainant from using its own world-famous trademark in these domain names. This conduct constitutes bad faith registration and use of the domain names under controlling law and precedent.
3. Lastly, Complainant has previously taken action against Respondent to recover domain names Respondent has appropriated. See Nike, Inc. v. Crystal International, (WIPO Case No. D2001-0102) (returning domain names nikewomen.com, nikeshop.net, nikeshop.org, nike-shop.com, nike-shop.net, and inike.net to Complainant.) Respondent has demonstrated a pattern of behavior in incorporating Complainantís trademarks in its domain names in bad faith."
5.5 Respondent has failed to respond to Complainantís contentions as found in the Complaint.
C. No Other Submissions
5.6 The Panel has not received any other requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties (taking note of the Respondentís default in responding to the Complaint).
6. Procedural Order
6.1 The form and content of the Complaint prompted this Panel to issue a Procedural Order, a copy of which is annexed to this decision. Complainantís Response to the Procedural Order filled in some of the gaps which had been identified in the Complaint, including the relationship between the named Complainant and NIKE International Ltd., the discrepancy in the different contact information given for the Respondent in the Complaint, and the reason for the Complainant not seeking the transfer of the Domain Names in this case at the same time as those in WIPO Case No. D2001-0102 between the same parties Ė the Complainant says that it was not then aware of them.
6.2 Other aspects of the Complainantís Response to the Procedural Order are set out later in this decision.
7. Discussion and Findings
7.1 The Complaint was submitted on the basis of the provisions of the Registration Agreement in effect between the Respondent and NSI, which incorporates, by reference, the Policy by way of NSIís domain name dispute policy in effect at the time of the dispute. The Policy requires that domain name registrants such as Respondent submit to a mandatory administrative proceeding regarding third-party allegations of abuse of domain name registration (Policy, paragraph 4(a)).
7.2 The Panel is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply or participate in any other fashion is not due to any omission by WIPO (see Procedural History, above).
7.3 Under Rule 5(e) of the Rules, if a Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
Paragraph 15(a) of the Rules addresses the principles to be used in rendering a decision:
"A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
It has been said that inferences ought not to be drawn from the default of a Respondent in filing a Response other than those that have been established or can be inferred from the facts presented by the Complainant and that, as a result of the default, have not been rebutted by any contrary assertions of evidence. See: Terabeam Corp. v. Colin Goldman, WIPO Case No. D2001-0697. Evidence, not mere assertions, must be presented even in the case of a Response not being filed. This is in accord with those Rules material to this issue. Rule 5(e), in requiring that the decision be "based upon the Complaint" in the absence of a Response, must mean a Complaint which complies with Rule 3(b)(ix) which requires that a Complaint shall "[d]escribe, in accordance with the Policy, the grounds on which the complaint is made including, in particular, . . . (3) why the domain name(s) should be considered as having been registered and being used in bad faith". The provision in question goes on to advise the Complainant that the description should, for the bad faith elements, "discuss any aspects of Paragraphs 4(b) and 4(c) of the Policy that are applicable." This I take to mean, as the circumstances set out in 4(b) are not exclusive, that any aspects of the particular circumstances being relied on to prove these elements in the subject case should be discussed. No such meaningful discussion can take place in a proceeding such as this without consideration of the admissible evidence led in support of the elements which are being advanced. That evidence is required is clear from the general power given to Panels in para. 10(d) which mandates us to "determine the admissibility, relevance, materiality and weight of the evidence." Complaints are determined on the basis of the evidence the parties themselves choose to put before the Panelist. It is not an inquisitorial system and therefore not for the Panel to undertake such a role. See: Randgold Resources Limited and Randgold & Exploration Co.Ltd. v. Pico Capital Corp., WIPO Case No. D2001-1108; Ascendes Corporation dba MarketTouch v. Market Touch Limited, WIPO Case No. D2001-1186. I have, therefore, not conducted a search of the web-sites to which the Domain Names in question resolve. To require Panels to conduct extensive searches of their own will likely result in a breach of Rule 10(b) which mandates that "the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case." Also, the material time for identifying whether anything is posted on the web-site in question is not after the proceedings have been commenced.
In order to obtain the relief requested under the Policy, Complainant must prove in the Administrative Proceeding that each of the three elements of paragraph 4(a) are present:
(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
7.4 The Panel finds that this element has been proved.
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
7.5 Due to my findings about the third element, the Panel need not address this.
(iii) that the Domain Name has been registered and is being used in bad faith
7.6 I will focus on bad faith use in dealing with this element and will assume that bad faith registration has been proved. Here, there is no evidence that Respondent has attempted to sell the Domain Names for profit, has engaged in a pattern of conduct depriving others of the ability to obtain Domain Names corresponding to their trademarks, is a competitor of Complainant seeking to disrupt its business, or is using the Domain Name to divert Internet users for commercial gain. Nor is there such conduct as cyberflying, failing to provide correct or any contact information, not responding to communications which might reasonably be thought to compel a Response, being disingenuous in his or her assertions, or failing to make any preparations to use the Domain Names over an extended period of time. Lack of bona fide use on its own is insufficient to establish bad faith, where there is no evidence that Respondent has participated in such conduct as mentioned above. See: Société des Produits Nestlé S.A. v. Pro Fiducia Treuhand AG, WIPO Case No. D2001-0916.
In the Complainantís submission number 2 as set out in para. 5.4 above it asserts that "Respondent's use and registration of these domain names has prevented Complainant from using its own world-famous trademark in these domain names. This conduct constitutes bad faith registration and use of the domain names under controlling law and precedent." But, what was this use? There must be something beyond mere registration and it should be a use at the time of the commencement of the UDRP proceedings. It is the opinion of this Panel that mere continuous ownership is not sufficient. There are a number of cases involving what could be characterized as well-known or famous names where Complainants failed to recover a confusingly similar Domain Name for one reason or another, including Koninklijke Philips Electronics N.V. v. Manageware, WIPO Case No. D2001-0796, Mattel Inc. v. Kim Dong Jin, NAF Case No. 114462, Koninklijke Philips Electronics N.V. v. Relson Limited, WIPO Case No. D2001-0003; and PRL USA Holdings, Inc. v. Polo, WIPO Case No. D2002-0148. Although a distinguished Panelist has said that whether a trademark is "well known" or "famous" is outside the mandate of UDRP Panels. (See: Ingersoll-Rand Co. v. Frank Gully, WIPO Case No. D2000-0021). The name "Nike" is not fanciful. She was the ancient Greek goddess of victory.
In paragraphs 8 and 9 of the Procedural Order this Panel touched upon some of the legal concepts seen as applicable in proving a UDRP case. I now think it helpful to elaborate upon them as they concern the bad faith element.
An Administrative Panel must not deal with propositions not asserted. (See The Estate of Gary Jennings and Joyce O. Service v. Submarine and J. Ross, WIPO Case No. D2001-1042.). It is for the Complainant to plead the issues and to support them with some arguments and evidence. (Jones Apparel Group, Inc. v. jonesapparelgroup.com, WIPO Case No. D2001-0719; Chambre de Commerce et díIndustrie de Rouen v. Marcel Stenzel, WIPO Case No. D2001-0348; Club Monaco Corporation v. Charles Gindi, WIPO Case No. D2000-0936; Tyco International Services AG and Tyco International (U.S.) Inc. v. Paul Quinn, WIPO Case No. D2000-1740; and Arturo Salice S.p.A. v. Paul Izzo & Company, WIPO Case No. D2000-0537; Simply stating the reasons will not normally be sufficient to meet the Complainantís burden of proof. (Ferrari S.p.A v. Pierangelo Ferrari, WIPO Case No. D2001-1004; Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493; Corneliani F. Ili Claudio e Carlalberto Corneliani S.p.A. v. Corantos s.r.l., WIPO Case No. D2000-0759. Assertions that any use of the Domain Name by another party would likely mislead or deceive the Complainantís customers, without evidence, is not of much use. (Captín Snooze Management Pty. Ltd. v. Domains 4 Sale, WIPO Case No. D2000-0488).
7.7 The use of the conjunctive "and" in para. 4(a)(iii) of the Policy means that both bad faith registration and bad faith use must be proven by the Complainant. See: World Wrestling Federation Entertainment Inc. v. Michael Bosman, WIPO Case No. D99-0001; Dow Jones & Company, Inc. v. The Hephzibah Intro-Net Project Limited, WIPO Case No. D2000-0704; The Chancellor, Masters and Scholars of the University of Oxford v. D.R. Seagle, WIPO Case No. D2000-0308; Baby Creysi Of America, Inc., et al v. Asesoria en Computo Integral, et al WIPO Case No. D2000-0237; British Sky Broadcasting Limited v. Domain Reservations, WIPO Case No. D2000-0507; Global Media Resources SA v. Sexplanets aka SexPlanets FreeHosting, WIPO Case No. D2001-1391 (<sexplanets.com>). The complementary provision under the STOP Policy reads "has been registered or has been used in bad faith". If "and" meant "or" under the UDRP, why was "or" used for STOP?
7.8 In Telstra Corporation Ltd v. Nuclear Marshmallows, WIPO Case No. D2002-0003 a distinguished Panelist held that the concept of a domain name "being used in bad faith" is not limited to positive action; "inaction is within the concept." He continued as follows:
". . . what circumstances of inaction (passive holding) other than those identified in paragraphs 4(b)(i), (ii) and (iii) can constitute a domain name being used in bad faith? This question cannot be answered in the abstract; the question can only be answered in respect of the particular facts of a specific case. That is to say, in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the Administrative Panel must give close attention to all the circumstances of the Respondentís behaviour. A remedy can be obtained under the Uniform Policy only if those circumstances show that the Respondentís passive holding amounts to acting in bad faith."
7.9 Evidence which proves bad faith use comes primarily from three sources. Communications between the parties, particularly statements made by a Respondent, demonstrate bad faith use. Cease and desist letters relating to the alleged offending use have been effective in drawing out the Respondent. What is posted on a web-site, often but not always the site to which the Domain Name resolves, performs the same function, e.g. where the web-site advertises a competing product, displays pornographic material, or links to such web-sites. On the other hand, if there was a possible fair use or a disclaimer on the web-site, the result may be otherwise. Another way of proving bad faith use through evidence is to obtain particulars about the Respondent and its enterprises, past history, reputation and ownership of other Domain Names, not the subject of the case at hand. There are other evidentiary indicia such as false contact information, making untruthful statements in a Response, and the like. In this case, although it had two opportunities to do so, the Complainant failed to produce any such evidence. In this regard it should be noted that my Procedural Order included the following specific question:
"7. When was the site entered, and what were the contents thereof, including disclaimers if any?"
The Complainant did not address this question.
7.10 The Complainant, in its Complaint in this case, says:
"On August 7, 2000, Complainant sent a letter to Respondent placing Respondent on notice of his ongoing trademark infringement and dilution of Complainant's trademarks, and seeking transfer of Respondent's domain name. Complainant's letter also offered to reimburse Respondent for his out-of-pocket costs in registering the domain name. (see Annex F). Respondent never responded."
The Complainant says that it relies on that letter to prove the instant case. In the letter it is asserted that "your registration and ownership of these domain names constitutes trademark infringement, and violates the newly enacted United States Cyber Piracy Prevention Act of 1999. NIKE hereby requests that you transfer this name to NIKE immediately." For this purpose the sender of the letter encloses transfer documents for signature. The only name, <nikewoman.com>, covered by that letter, was one of those dealt with in WIPO Case No. D2001-0102, decided March 19, 2001, but that letter was not mentioned in the decision in that case between these same parties. Under the circumstances, it is difficult for this Panel to conclude that the Respondent in the instant case should have a finding of bad faith use made against it for not having responded to a much earlier letter about names dealt with in another case.
7.11 The Complainant asserts that its victory in the earlier case, Nike, Inc. v. Crystal International, WIPO Case No. D2001-0102 should be used against the same Respondent in this case. It has been held that previous decisions which decide an element favourable to Complainant in the instant case are not particularly helpful as they will have undoubtedly turned upon the evidence before the deciding Panel. See: Harrods Limited v. Virtual World Internet, WIPO Case No. D2002-0396. The earlier decision between the parties to the instant case does not identify the evidence provided by the Complainant in support of bad faith use sufficiently to be of help here.
7.12 In its Response to the Procedural Order the Complainant says that it did not attempt to contact Respondent before initiating the UDRP action and provides no evidence that it attempted to view the web-sites to which the Domain Names in issue resolve but rather merely asserts that:
"Under the current UDRP Rules, Complainant is under no duty to contact Respondent before filing a UDRP action. Moreover, Complainant believes that its previous letter and the decision in WIPO D2001-0102 provide Respondent sufficient notice that its registration of domain names incorporating Complainantís NIKE trademark violates the U.S. Anti-Cyberpiracy Prevention Act ("ACPA"), and infringes Complainantís rights under numerous international laws."
". . . Complainant notes that the ACPA would apply to Respondent regardless of Respondentís nationality. The ACPA provides an in rem cause of action against the property of the domain name itself. Thus, the nationality of the domain nameís owner is irrelevant."
Other than noting that the letter, in addition to the in rem aspect of ACPA, threatens "significant financial penalties", and that the Registrar is Canadian, this Panel takes no issue with the Complainantís belief as expressed above. However, it is not my remit to apply the ACPA nor "numerous international laws". The jurisdiction of this Panel is to be found wholly within the UDRP with the only remedy being a transfer or cancellation of the Domain Names in respect of which this matter is submitted. In sum, Complainant appears not to place any meaningful reliance on active use of the Domain Names in question subsequent to their registration, nor upon passive use as this Panel understands it to be necessary as laid down in Telstra Corp. Ltd. v. Nuclear Marshmallows WIPO Case No. D2000-0003, and other cases which have followed it.
7.13 Para. 4(a)(iii) requires proof that "your domain name Ö is being used in bad faith". Without appropriate evidence of use, either active or passive, this Panel cannot find this element to have been proved by the Complainant. Speculation based on assertions does not amount to proof, the onus of which is on the Complainant.
For the foregoing reasons, the Panel decides that the Complainant fails in its request that the Domain Names <nikepark.com>,<nikepark.net>,<nikemen.com>, <nikegolf.net>, and <nikeshops.com> be transferred to the Complainant from the Respondent.
Cecil O.D. Branson, QC
Dated: August 2, 2002
pursuant to Rule 12 of the WIPO Supplemental Rules
Nike, Inc. v. Crystal International
Case No. D2002-0352
1. Upon reviewing the Complaint in this case the Panelís initial view was that it ought to be disallowed as being deficient in its content. A good number of Panels, including this one, have said that an Administrative Panel must not deal with propositions not asserted. It is for the Complainant to plead the issues and to support them with some arguments and evidence. Simply stating reasons will not normally be sufficient to meet the Complainantís burden of proof. More particularly, it has been held by a Panel that the mere assertion that any use of the Domain Name by another party would likely mislead or deceive the Complainantís customers, without evidence, is not of much use. With these general admonitions in mind, this Panel is concerned about the failure of the Complaint to address a number of material facts which ought to be within its knowledge.
2. It is noted that the sole Complainant in this case is Nike Inc. However, the Complaint and Annexes thereto shows that the Mexican, French and United Kingdom trademarks mentioned are owned by Nike International Ltd., a Bermuda corporation. The Complaint does not disclose any relationship between Nike International Ltd. and Nike Inc., either generally or specifically regarding any licensing agreements for trademarks. Generally, in the Complaint, the Complainant whenever it refers to its name states it as being simply "Nike". Nowhere is there any explanation of the place of Nike International Ltd. within the corporate structure, nor is there any mention of licence agreements concerning the use of any trademarks. Nike International Inc. is not mentioned at all. If the Mexican, French and United Kingdom marks are considered material by the Complainant, the aforesaid information should have been provided.
3. The Complainant, in its Complaint says as follows:
On August 7, 2000, Complainant sent a letter to Respondent placing Respondent on notice of his ongoing trademark infringement and dilution of Complainant's trademarks, and seeking transfer of Respondent's domain name. Complainant's letter also offered to reimburse Respondent for his out-of-pocket costs in registering the domain name. (see Annex F). Respondent never responded.
Here, it should be noted that the Complaint says:
7. All information known to the Complainant regarding how to contact the Respondent is as follows:
RM609 HyoChunB/D SeoChoDong
Seoul, 137-070 KR
Despite this, in an earlier paragraph, relying on Network Solutions, Inc.ís Whois database, in addition to the above contact information it is shown that the Respondent can be contacted through an e-mail address "email@example.com". The August 7, 2000, letter directed to Joowan Lee has an altogether different address in Seoul, Korea. This discrepancy is not explained.
4. The August 7, 2000, letter refers to a single Domain Name, <nikewoman.com>. In the letter a belief is expressed that "your registration and ownership of these domain names [sic] constitutes trademark infringement, and violates the newly enacted United States Cyber Piracy Prevention Act of 1999. NIKE hereby requests that you transfer this name to NIKE immediately." Is it the Complainantís contention that the United States Cyber Piracy Prevention Act of 1999 applies to a Korean national? If so, why? The August 7th letter encloses transfer documents for signature. Do those documents include any of the names under consideration in the case before this Panel, i.e., WIPO Case No. D2002-0352, or does it relate only to the name <nikewoman.com> despite the reference to "these domain names" above?
5. The name <nikewoman.com> was one of those dealt with in WIPO Case No. D2001-0102, the decision for which was given on March 19, 2001. Is it Complainantís submission that the Respondent in this case No. D2002-0352 should have a finding of bad faith use made against it for not having responded to the August 7, 2000, letter about another name, particularly given the length of time intervening, and WIPO Case No. D2001-0102 in which a decision was rendered on March 19, 2001, well before the commencement of the case before this Panel?
6. In light of the above, there are further material facts which should be within the knowledge of the Complainant which have not yet been disclosed. These include the following:
1. Why were no proceedings taken against the Respondent in 2001 for the four names registered in July 1999, when as the Complainant states that it "has been careful to prevent conflicting uses from emerging" in regard to its trademark and similar second-level Domains. The Registrar of most of the names involved in the 2001case was the same and at least one of the names before that earlier Panel was registered on the same day as <nikemen.com> in this case Ė July 17, 1999.
2. There is no evidence of the attempts "to contact Respondent at all available addresses", other than the August 7, 2000, letter? Were they by telephone, email, in-person or by registered mail?
3. Was the Respondentís contact information correct?
4. What were the contents of such communications? Did they require an answer?
5. Why was nothing done between August 7, 2000, and April 9, 2002, the date of filing of the Complaint in this case?
6. Have any of the names in question been used? If so, when, and for what purpose?
7. When was the site entered, and what were the contents thereof, including disclaimers if any?
8. What attempts were made to ascertain whether Respondent owns other names than those involved in this case and WIPO Case No. D2001-0102?
9. If so, how many does it own and what are they?
10. It is not clear from Complainantís submission concerning bad faith whether it is relying on any one or more of the four stated circumstances of evidence of registration and use in bad faith set out in paragraph 4b of the UDRP, or whether it is relying on other bases on which this Panel is expected to find bad faith registration and use.
11. The third, and last, paragraph under the Complainantís submission in regard to Respondentís bad faith reads as follows:
Lastly, Complainant has previously taken action against Respondent to recover domain names Respondent has appropriated. See Nike, Inc. v. Crystal International, (WIPO Case No. D2001-0102)(returning domain names nikewomen.com, nikeshop.net, nikeshop.org, nike-shop.com, nike-shop.net, and inike.net to Complainant.) Respondent has demonstrated a pattern of behavior in incorporating Complainantís trademarks in its domain names in bad faith.
Is this argument directed to paragraph 4b(ii) of the UDRP? If so, is the Complainant taking the position that, despite the requirement in paragraph 4a(iii) of proof that the Domain Name has been registered and is being used in bad faith, that this language should be read disjunctively? What, for instance, if the Respondent registered the names in question in bad faith but did nothing more?
1. Is the Complainant relying on WIPO Case No. D2001-0102 as a precedent which this Panel ought to follow, as the parties were the same and the names bore some similarity to those in issue our case? If so, what was submitted in the Complaint in the earlier case, as the decision in that case does not spell out the bases on which bad faith registration and use was argued.
7. As stated above, the preliminary decision of this Panel was to disallow the claim on the basis of numerous deficiencies in the pleadings. These Complaints are determined on the basis of the evidence the parties themselves choose to put before the Panel. It is not an inquisitorial system and therefore not for the Panel to undertake such a role. See Rengold Resources Limited and Rengold & Exploration Co. Ltd. v. Pico Capital Corp., WIPO Case No. D2001-1108 and Ascendes Corporation dba MarketTouch v. Market Touch Limited, WIPO Case No. D2001-1186. In a similar vein, it must be recognized that Complainants, having the onus of proof upon them, ought to give considered thought to the drafting of the Complaint, taking into account that there is no right of reply if a Response is filed and, further, that a Response may not be filed. In the latter case, the Panel must decide on the basis of the record as presented. Yet, in a case such as this, not to order transfer of the Domain Names in question, has been thought by some to be too draconian a penalty for bad pleading. I would dissent from this as a general proposition as a Respondent is entitled to review the Complaint and make a decision based thereon that it need not file a Response where the case has not been adequately proved. Previous Panels have dealt with these situations in a number of ways such as a strong criticism of the way in which the case was presented, but ordering a transfer of the name in any event, or ruling against the Complainant without prejudice to the Complainant refiling its Complaint with better pleadings and evidence, or as this Panel is inclined to do, seek better particulars. To go ahead and order transfer of the names in the face of deficient pleadings and evidence could tarnish the integrity of the process, and encourage others to do so. Nor do I think that dismissing the case outright, with or without comment with regard to whether a refiled Complaint can be made would be appropriate. This could delay unnecessarily a final resolution of the matter with the extra expense of starting afresh without knowing whether the refiled Complaint would be accepted.
8. Paragraph 15(a) of the Rules instruct Panels to "decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable". This, in my view, is exemplified by article 18 of the UNCITRAL Model Arbitration Law, sometimes referred to as the "Magna Carta of Arbitration Procedure" which says "The parties shall be treated with equality and each party shall be given a full opportunity of presenting his case." An equivalent statement is to be found in virtually all national arbitration laws and the rules of all major international arbitration institutions including WIPO in article 38(b) of its Arbitration Rules.
9. This Panel therefore orders that the Complainant be given an opportunity to respond both specifically and generally to the concerns and questions above in writing delivered to the WIPO Center no later than Tuesday, July 16, 2002. The Respondent will be served with a copy of this document at the same time, and shall then have until 12 noon GMT on Wednesday, July 24 to file a Response both to the Complaint as originally filed by the Complainant and to any further supplemental material filed in response to this Procedural Order. Both filings shall include any exhibits or other documentation necessary to support the submissions made. The time for the filing of the Panelís decision in this matter will have to be adjusted accordingly. Exhibits not available in electronic form shall be faxed to the Center, with hard copies to follow by courier. The Panel will disregard in their entirety any late filed submissions.
10. This Panel will enter into its final consideration of this matter after the time period above has expired and, barring extenuating circumstances, propose to render a final decision by August 5, 2002.
Cecil O.D. Branson, QC
Dated: July 4, 2002