WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
GKN Plc. v. Gkn
Case No. D2002-0373
1. The Parties
1.1 The Complainant is GKN Plc., a United Kingdom Private Limited Company located in Redditch, Worcestershire, United Kingdom. The Complainant is represented in this proceeding by Woodcock Washburn, LLP.
1.2 Respondent is described in the domain name registration records for <gkn.com> as Gkn, with an address at 300 South Great Road, Lincoln, Massachusetts, United States of America. The material filed in this proceeding shows that Respondent is also known as GKN Geoknowledge Corp., with an address at 6 Taft Road, Franklin, Massachusetts, United States of America. Respondent has not filed a Response in this proceeding.
2. The Domain Name and Registrar
2.1 The domain name at issue is <gkn.com> (the "Domain Name").
2.2 The Domain Name is registered with Network Solutions, Inc. ("NSI").
3. Procedural History
3.1 This proceeding was initiated under and is being conducted pursuant to:
(a) the Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, and approved by ICANN on October 24, 1999;
(b) the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") adopted by ICANN on August 26, 1999, and approved by ICANN on October 24, 1999; and
(c) the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect as of December 1, 1999 (the "Supplemental Rules").
3.2 Complainant filed the Complaint with the World Intellectual Property Organization Arbitration and Mediation Center ("the Center") in hard copy on April 22, 2002, and by e-mail on April 25, 2002, in accordance with the Rules and the Supplemental Rules. Complainant paid the required filing fees on April 23, 2002.
3.3 On April 23, 2002, the Center forwarded an e-mail to NSI requesting verification of key information regarding the registration of the Domain Name (the "Registration"). On April 25, 2002, NSI forwarded an e-mail to the Center confirming the information requested by the Center, including the fact that the Domain Name is registered in the name of Respondent.
3.4 On April 26, 2002, the Center verified that the Complaint complied with the formal requirements of the Policy, the Rules and the Supplemental Rules. The Panel agrees with the Centerís determination that the Complaint complied with those requirements.
3.5 After confirming that the Complaint satisfied the Policy, the Rules and the Supplemental Rules, on April 26, 2002, the Center forwarded to Respondent notice of the commencement of this proceeding, including a copy of the Complaint. That material was forwarded:
(a) by courier to the addresses specified in the Registration for the Respondent and Respondentís technical contact;
(b) by facsimile transmission to the technical contact specified in the Registration; and
(c) by e-mail to the e-mail addresses specified in the Registration for Respondent, Respondentís administrative and billing contact, and Respondentís technical contact.
3.6 On May 20, 2002, Respondentís legal counsel forwarded to the Center an e-mail requesting an extension of the time limit for filing the Response, advising that Complainantís legal counsel had consented to the extension.
3.7 Also on May 20, 2002, Complainantís legal counsel forwarded to the Center a copy of an e-mail communication to Respondentís legal counsel, which, among other things, confirmed Complainantís consent to extending the deadline for filing the Response until May 24, 2002.
3.8 On May 22, 2002, the Center forwarded to counsel for Respondent and Complainant an e-mail confirming extension of the deadline for filing the Response to May 24, 2002, as requested by Respondent and Complainant.
3.9 Respondent did not file a Response on May 24, 2002, or thereafter. On May 27, 2002, the Center forwarded to Respondentís counsel and Complainantís counsel, by e-mail, Notification of Respondent Default. No communications have been received from Respondent since that date.
3.10 Complainant elected to have the dispute decided by a single member Administrative Panel. On June 4, 2002, the Center invited Robert A. Fashler to serve as Sole Panelist. On the same day, Robert A. Fashler forwarded to the Center a Statement of Acceptance and Declaration of Impartiality and Independence confirming that to the best of his knowledge and belief, there are no facts or circumstances, past or present, which could arise in the foreseeable future, that need to be disclosed as they might be of such a nature as to call into question the Panelistís independence in the eyes of one or both of the parties to this proceeding.
3.11 On June 7, 2002, the Center constituted the Panel in accordance with the Policy, the Rules and the Supplemental Rules.
3.12 On June 7, 2002, the Center forwarded to Complainant and Respondent Notification of Appointment of Administrative Panel and Projected Decision Date, appointing Robert A. Fashler as the Sole Panelist.
4. Factual Background
4.1 Complainant is an automotive and aerospace engineering business active internationally. It makes and sells, among other things, drive line systems products, powder metal components, power-take-off shafts and wheels for off-highway applications, helicopters, and aviation components.
4.2 Complainant uses the trademark GKN (the "Word Mark") and a stylized depiction of the Word Mark (the "Design Mark"). In the Design Mark, the letters GKN are depicted in a manner that runs them together with the result that it is not entirely clear whether the first letter is "G" or "C".
4.3 The Complaint does not distinguish between the Word Mark and the Design Mark. It treats them as one and the same. The Panel does not consider the Word Mark and the Design Mark to be the same. However, in the absence of a Response, the Panel accepts that at least some of the usage of GKN asserted by Complainant was use of the Word Mark.
4.4 Complainant holds four registrations for the Design Mark and one registration for the Word Mark in the United States Patent and Trademark Office for a variety of products and services that are consistent with Complainantís business. The four registrations for the Design Marks issued in 1984, 1986, 1990 and 1992, respectively. The registration for the Word Mark issued in 1981. The registration for the Word Mark claims first use in the United States in 1968. Three of the registrations for the Design Marks claim first use in 1969 and 1973. The registration for the Word Mark claims first use in commerce in 1968. Complainant owns approximately 50 registrations for the Word Mark or the Design Mark in the United Kingdom and many other registrations for the Word Mark or the Design Mark around the world.
4.5 The Complaint asserts first use of GKN as a trade-mark in US interstate commerce at least as early as 1968, but does not specify whether that use involved either or both of the Word Mark or the Design Mark. Complainant makes no specific assertions and provides no specific evidence of the extent or manner of usage of GKN in any country between 1968 and the date that the Complaint was filed.
4.6 Complainant asserts that it has invested effort, money, skill and other resources in the trademark GKN and that GKN is recognized worldwide as indicating goods emanating from Complainant. However, Complainant makes no specific assertions and provides no specific evidence of distinctiveness, goodwill, reputation or recognition.
4.7 Respondent registered the Domain Name on December 9, 1994.
4.8 The contact information set out in the Registration is not accurate. It gives Respondentís name as Gkn and provides an address and telephone number at which Respondent cannot be reached. However, the e-mail address for Respondentís administrative contact, Kim Wyke <email@example.com> is accurate. Complainant has successfully contacted Respondent through that e-mail address.
4.9 Respondent has never used the Domain Name for an active website. Respondent uses the Domain Name in at least one e-mail address.
4.10 At some time before March 4, 2002, Mr. Peter Kindt Rohde, who was then an independent consultant assisting Complainant, contacted Respondentís administrative and billing contact, Mr. Wyke, by e-mail with the following message:
"I like your domain name and I con not seem to see your site. Would you be interested in selling it to me?" (sic)
4.11 There is no evidence that Mr. Rohde informed Respondent that Mr. Rohde was, in fact, making the contact on behalf of Complainant.
4.12 The Complaint is not clear on exactly what happened immediately after Mr. Rohde contacted Respondent. However, it appears that there was no further communication with Respondent until March 4, 2002, when Complainantís counsel wrote a letter to Respondent. That letter notified Respondent of Complainantís US trade-mark rights. The letter referred to a previous offer by Complainant to purchase the Domain Name for $5,000 and indicated that the offer was open until March 19, 2002. Complainant does not provide any additional evidence of such an earlier offer. To the contrary, in Section V.  C.(ii)(a) of the Complaint, Complainant describes the offer as if it was made for the first time in the letter of March 4, 2002. The Panel accepts and relies upon that latter statement in preference to the contradictory statement set out in the letter from Complainantís counsel dated March 4, 2002.
4.13 On March 18, 2002, Mr. Wyke made a telephone call to Complainantís counsel responding to the March 4, 2002, letter from Complainantís counsel. During that telephone conversation, Mr. Wyke told Claimantís counsel that:
(a) he had received counselís letter of March 4, 2002, by e-mail;
(b) the street address set out in the Registration for Respondent had ceased to be accurate about five years earlier;
(c) Mr. Wykeís current address is 135 Dudley Road, Wayland, Massachusetts;
(d) the Domain Name was inactive and Respondent had no future plans for using the Domain Name;
(e) Respondent was interested in selling the Domain Name and intended to solicit bids from third parties interested in purchasing the Domain Name.
4.14 Also on March 18, 2002, Mr. Wyke sent an e-mail to Mr. Rohde stating:
"It has been some time since your original request, but a while back you had inquired about the possibility of acquiring the domain name GKN.COM.
A bid process is being developed for sale of this domain and I would like to understand if you are still interested."
4.15 By a letter dated March 27, 2002, Complainantís counsel wrote to Mr. Wyke. Among other things, the letter confirmed the facts recited above in paragraph 4.13 of this Decision and objected to Mr. Wykeís stated intention of offering the Domain Name for sale to any party other than Complainant. The letter reiterated Complainantís offer to purchase the Domain Name for $5,000 and extended the time for accepting the offer to April 3, 2002.
4.16 Mr. Wyke signed that communication as "Operations Officer, Gkn Geoknowledge Corp". On April 4, 2002, at the request of Complainant, Dun and Bradstreet conducted a search of Gkn Geoknowledge Corp. The search revealed that:
(a) Gkn Geoknowledge Corp. was incorporated under the laws of the State of Massachusetts in 1995 and was still active in April of 2002;
(b) GKN Geoknowledge Corp. is engaged in the business of geological consulting and operates from "residence of principal" (sic);
(c) GKN Geoknowledge Corp has five employees;
(d) GKN Geoknowledge Corp. has annual sales of US$210,000;
(e) repeated attempts by Dun & Bradstreet to contact GKN Geoknowledge Corp. were unsuccessful.
5. Partiesí Contentions
5.1 Complainant asserts that:
(a) the Domain Name is identical to Complainantís mark in appearance, sound, and meaning, and the Domain Name contains Complainantís entire mark;
(b) members of the public who try to find Complainantís products at <gkn.com> are likely to believe falsely or mistakenly that Respondent is the source or origin of Complainantís goods or that the Domain Name is sponsored, endorsed, approved, or licensed by Complainant or otherwise connected, associated, or affiliated with Complainant;
(c) Respondent has no rights or legitimate interest in the Domain Name because:
(i) Respondent has never made significant use of the Domain Name;
(ii) GKN is unique and inherently distinctive;
(iii) Respondent is not known as and does not operate under the name GKN;
(iv) GKN Geoknowledge Corp. has an address different from Respondentís address set out in the Registration and Complainant could not locate any information about GKN Geoknowledge Corp. additional to what Dun & Bradstreet provided, including Yellow Page listings and Internet postings;
(d) Respondent has registered and is using the Domain Name in bad faith because:
(i) Respondent has failed to maintain accurate contact information for the Registration and Mr. Wyke is receiving mail at an address in Wayland, Massachusetts;
(ii) Respondent has used the Domain Name for profit by indicating that it would be auctioned to the highest bidder;
(iii) Respondent sought compensation for the Domain Name for valuable consideration in excess of out-of-pocket expenses;
(iv) Respondent is passively holding the Domain Name without use;
(v) it is highly likely that Respondent was aware of Complainant and Complainantís rights to the mark GKN when Respondent registered the Domain Name;
(vi) Respondentís registration and continued ownership of the Domain Name must be for the purpose of depriving Complainant from using its valuable mark in a corresponding domain name; and
(vii) Respondent has intentionally attempted to confuse consumers by creating a likelihood of confusion with Complainantís mark.
5.2 Respondent has not filed a Response. Paragraph 5(e) of the Rules provides:
"If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint."
6. Discussion and Findings
Complainantís Burden of Proof
6.1 Under paragraph 4(a) of the Policy, Complainant bears the burden of proving all the following three elements:
(a) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(b) Respondent has no rights or legitimate interests in respect of the Domain Name;
(c) the Domain Name has been registered and is being used by Respondent in bad faith.
The First Element
6.2 The first element of the test established by Paragraph 4(a)(i) of the Policy has two components, namely:
(a) Complainant has rights in a particular trademark or service mark; and
(b) the Domain Name is identical or confusingly similar to that trademark or service mark.
6.3 Complainant has established rights in the Word Mark and the Design Mark by virtue of use and registration.
6.4 The second level of the Domain Name is identical to the Word Mark. The second level of the Domain Name is not identical to the Design Mark, but it is not necessary to consider whether or not the second level of the Domain Name is confusingly similar with the Design Mark as nothing turns on that issue.
6.5 The Panel finds that Complainant has satisfied the requirements of Paragraph 4(a)(i) of the Policy in that Complainant has rights in the Word Mark and the second level of the Domain Name is identical to the Word Mark.
The Second Element
6.6 The second element of the test set out in Paragraph 4(a)(ii) of the Policy requires Complainant to prove that Respondent has no rights or legitimate interests in respect of the Domain Name.
6.7 It is relatively difficult for any complainant to prove that a respondent has no rights or legitimate interests in a domain name. For the most part, that information is known to and within the control of the respondent. Accordingly, the burden on a complainant in respect of this element must be relatively light. Nonetheless, Complainant must provide some information tending to show that Respondent has no rights or legitimate interests. That obligation is not altered by Respondentís failure to file a Response. See Love Your Neighbour v. EMC a/k/a Dennis Cail, Nat. Forum FA0106000097345; Computer Connection v. Gamble Parts Dart Inc. WIPO Case No. D2001-0783, and County Book Shops Limited v. Guy Loveday, WIPO Case No. D2000-0655.
6.8 Complainant asserts that Respondent has never made any significant use of the Domain Name since it was registered on December 9, 1994. However, Complainantís own evidence demonstrates that Respondent is currently using the Domain Name in at least one e-mail address, namely <firstname.lastname@example.org>. That is the e-mail address provided in the Registration for Respondentís administrative and billing contact, Kim Wyke. It is reasonable to assume that that address was functional when the Registration was made in 1994. It was still functional on March 4, 2002, when Complainantís counsel sent a letter to Mr. Wyke via that e-mail address.
6.9 The Complaint does not provide any factual basis for concluding that that e-mail address was not used by Respondent between the date that the Domain Name was registered and the date that the Complaint was filed. Complainant appears to be relying upon a very narrow interpretation of domain name use, equating it with use in a URL for an active website. However, use of a domain name in an active e-mail address is genuine use of the domain name. The Dun & Bradstreet report on GKN Geoknowledge Corp. indicates that the Respondentís business is relatively small, having no more than five employees. It is reasonable to expect that some of those employees also would use an e-mail address that incorporated the Domain Name. However, neither party has provided evidence or even made assertions on such usage. Having regard to Complainantís evidence and the relative size of Respondentís business, the Panel is unable to conclude that Respondent has never made significant use of the Domain Name in e-mail addresses since the time it was registered.
6.10 Complainant says that, to the best of its knowledge and belief, Respondent is not known as and does not operate under the name GKN. However, Complainantís evidence does show that:
(a) Respondentís administrative and billing contact, Kim Wyke, is actively using the Domain Name as an e-mail address in connection with a corporation named GKN Geoknowledge Corp.;
(b) GKN Geoknowledge Corp. is an active corporation incorporated in 1995 under the laws of the State of Massachusetts, engaged in the business of providing geological consulting services, having 5 employees, operating from a personal residence, and having annual sales in the amount of US$210,000.
6.11 The Domain Name was registered in December of 1994 and GKN Geoknowledge Corp. was incorporated in 1995. Complainant did not notify Respondent of any dispute about the Domain Name until March of 2002, when Mr. Wyke was first contacted by Complainantís legal counsel.
6.12 When Mr.Wyke sent an e-mail to Mr. Rohde on March 18, 2002, and signed it "Operations Officer Gkn Consulting Corp.", he had no basis for believing that he was communicating with a representative of Complainant. There was no apparent reason for Mr. Wyke to attempt to mislead Mr. Rohde about a false association with a company named GKN Geoknowledge Corp.
6.13 The evidence is consistent with the Respondent actively carrying on business under a corporate name that features the letters GKN, namely, Gkn Geoknowledge Corp. and that Respondent has been using the Domain Name in at least one e-mail address connected with that business since at least as early as 1995.
6.14 Under Paragraphs 4(c)(i) and (ii) of the Policy, a respondent may establish that it has rights or legitimate interests in a domain name if the evidence in a UDRP proceeding proves that:
(a) before receiving any notice of the dispute, the respondentís used or made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services;
(b) the respondent has been commonly known by the domain name, even if the respondent has not acquired trademark or service mark rights in the domain name.
6.15 Respondent has not filed a Response. Hence, whether or not Respondent actually has rights or legitimate interests in the Domain Name under Paragraphs 4(c)(i) or (ii) of the Policy must be determined by reference to the Complaint and Complainantís evidence. That material falls short of proving that Respondent has rights or legitimate interests in the Domain Name under Paragraphs 4(c)(i) or (ii) of the Policy. Nonetheless, the evidence is consistent with the circumstances contemplated in those paragraphs. The evidence is also consistent with Respondent having started a geological consulting business as an unincorporated entity under the name GKN in 1994 or 1995 and subsequently incorporating that business under the name GKN Geoknowledge Corp.
6.16 Although the available evidence is not sufficient to prove that Respondent has rights or legitimate interests in accordance with Paragraphs 4(c)(i) and (ii) of the Policy, it is even less useful for proving the opposite. Having regard to all of the available evidence and information, the Panel is of the view that the incorrect contact information in the Registration is more consistent with administrative inattention than an absence of rights or legitimate interests. The Panel finds that Complainant has not satisfied its burden regarding Paragraph 4(a)(ii) of the Policy.
The Third Element
6.17 The third element of the test set out in Paragraph 4(a) of the Policy requires Complainant to prove that Respondent has registered and is using the Domain Name in bad faith.
6.18 Complainant says that Respondent has failed to maintain accurate contact information in connection with the Registration and that this proves Respondentís bad faith in registering and using the Domain Name. Complainant relies on CBS Broadcasting Inc. v. Edward Enterprises, WIPO Case No. D2000-0242. In that case, the Panel held as follows:
"In this case, the Panel finds that where (1) the mark is one that is widely known in the United States, where Respondent purportedly resides, and was widely known at the time Respondent registered the domain name at issue; (2) Respondent gave no street address for itself or its Administrative Contact in the information it supplied to the registrar; (3) Respondent failed to respond to a letter from Complainant; and (4) Respondent failed to respond to the Complaint at issue or to deny any of its allegations, that Respondentís inaction constitutes bad faith registration and use of the domain name at issue."
6.19 This Panel is of the view that the CBS Broadcasting Inc. v. Edward Enterprises case does not support the proposition asserted by Complainant. In this case, Respondent did provide the registrar with a street address for itself and its administrative contact. That evidence is not accurate at this time. However, when Mr. Wyke told Complainantís counsel that the address had not been accurate for approximately 5 years, he was also confirming that the address was accurate before that time. Complainant has not produced any evidence or made any assertions to the contrary.
6.20 As well, in the CBS Broadcasting Inc. v. Edward Enterprises case, three additional factors were present, which, when taken together with failure to provide a street address, gave rise to the conclusion that the respondent in that case registered and was using a domain name in bad faith. Two of those additional factors have not been established by the Complainant in this case. The third - failure to respond to the Complaint - is inconclusive when it does not occur in the context of other factors that show bad faith.
6.21 In any event, some of the contact information (namely, Mr. Wykeís e-mail address) was accurate and enabled Complainant to contact Respondent with relative ease. When Mr. Wyke received the first communication from Complainantís counsel, he telephoned counsel and was entirely forthright about the true facts. Mr. Wyke provide Complainantís counsel with accurate contact information. The Panel cannot conclude from the evidence submitted by Complainant that the inaccurate address of Respondent in the Registration demonstrates bad faith. As noted earlier, inaccuracies in the Registration are more consistent with administrative inattention than anything else.
6.22 Complainant asserts that Respondent demonstrated bad faith by indicating an intention to take bids for the purchase of the Domain Name. However, the evidence provided by Complainant is not consistent with any bad faith intention on the part of Respondent. The evidence appears to show that the first time that Respondent suggested a bidding process was on March 18, 2002. On that date, Mr. Wyke sent an e-mail to Mr. Rohde that responded to an earlier e-mail received by Mr. Wyke from Mr. Rohde. In that earlier e-mail, Mr. Rohde did not identify himself as a representative of Complainant. He simply enquired as to whether Respondent was interested in selling the Domain Name to Mr. Rohde. There is nothing in the evidence that would show that Mr. Wyke would have any reason to believe that he was dealing with any person other than an independent third party who had a genuine interest in purchasing the Domain Name.
6.23 Also on March 18, 2002, Mr. Wyke had a telephone conversation with Complainantís counsel responding to counselís letter to Mr. Wyke of March 4, 2002. The Complaint is not clear on whether the telephone conversation between Mr. Wyke and Complainantís counsel took place before or after Mr. Wyke sent the e-mail to Mr. Rohde. In any event, on the available evidence, it is hard to believe that Mr. Wyke would have contacted Mr. Rohde on March 18, 2002, if he did not genuinely believe that Mr. Rohde was completely independent of Complainant. Otherwise, there would be no point in making the contact.
6.24 Although Complainantís counsel had asserted to Mr. Wyke that Complainant had superior rights in the letters GKN, given all of the surrounding circumstances, Mr. Wyke cannot be faulted if he took the view that Complainant did not have viable trademark claims against Respondent. Given Respondentís use of GKN in the corporate name of a company carrying on the business of geological consulting since approximately 1995, it would be understandable if Respondent genuinely believed that it was not violating any rights of Complainant. These comments are only directed to assessing whether Respondent was acting in bad faith and are not intended to comment in any way on any legal claims that Complainant may have against Respondent outside of this proceeding. In the circumstances, it would not demonstrate bad faith for Mr. Wyke to invite Complainant and Mr. Rohde to participate in a bidding process for the purchase of the Domain Name. The evidence is consistent with Mr. Wyke not knowing that Mr. Rohde and Complainant were connected. The Panel cannot conclude that Respondent was acting in bad faith when it attempted to fetch the highest price from two parties who appeared to be independent.
6.25 Complainant asserts that Respondent demonstrated bad faith by rejecting Complainantís offer to purchase the Domain Name for $5,000 and seeking to sell it for valuable consideration in excess of out-of-pocket expenses. Complainant relies upon Kabushiki Kaisha Hitachi Seisakusho (Japan Corporation), d/b/a Hitachi, Ltd. v. Fortune International Development Ent. Co. Limited., WIPO Case No. D2000-0412. However, in the Hitachi case, the finding of bad faith did not rely exclusively on the respondentís offer to sell at a profit. The Panel in that case found that there were additional pertinent factors giving rise to the inference that the respondent was acting in bad faith, including the ownership of "many domain names that incorporate[d] the well-known marks of well-known companies". In the circumstances of this case, the Panel does not find any surrounding circumstances that would indicate that Respondent was acting in bad faith. Accordingly, the Domain Name is just an asset owned by Respondent and Respondent is entitled to realize the fair market value of that asset.
6.26 It is not clear whether Complainantís allegation that Respondent was acting in bad faith when it sought to sell the Domain Name for a profit was based upon Paragraph 4(b)(i) of the Policy. However, there is no basis for finding that Paragraph 4(b)(i) applies in this case. Under that Paragraph, a party is considered to have registered and used a domain name in bad faith if the circumstances indicate that the domain name was registered or acquired primarily for the purpose of selling, renting or otherwise transferring the domain name to the owner of a corresponding trademark or to a competitor of that party for valuable consideration in excess of the registrantís documented out-of-pocket costs directly related to the domain name. The circumstances of this case are not consistent with Respondent having registered the Domain Name for such a purpose.
6.27 The Registration was made in 1994. Respondent appears to have incorporated Gkn Geotechnology Corp. in 1995 in good faith for the purpose of carrying on a legitimate geological consulting business. Respondent has maintained that corporation in good standing since 1995. Incorporating and maintaining a company is far more expensive than registering a domain name. That is not the type of expense or effort that most cybersquatters are prepared to incur for the purpose of creating an illusion of legitimacy. In any event, Respondentís actual conduct at and since the time of registration is entirely consistent with the good faith operation of the business under a corporate name that prominently features the letters GKN. Respondent appears to have actively used at least one e-mail address that incorporated the Domain Name since 1994. Respondent held the Domain Name for nearly 8 years without attempting to sell it to Complainant or any other party. It was only after Mr. Rohde and Complainant contacted Respondent that Respondent sought to sell the Domain Name. Those circumstances are hardly consistent with the type of conduct and motivation required to establish bad faith under Paragraph 4(b)(i) of the Policy.
6.28 Complainant asserts that Respondent is passively holding the Domain Name without use and that such non-use is evidence of bad faith. Complainantís assertion is factually incorrect. The Complaint confirms that Complainant communicated with Respondent using the e-mail address <email@example.com>. That constitutes use of the Domain Name.
6.29 Complainant asserts that based on the length and extent of Complainantís use of the mark GKN, it is highly likely that Respondent was aware of Complainant and its rights to the mark GKN when Respondent registered the Domain Name. Complainant has not provided any information, whether by way of evidence or mere assertion, that shows either the extent of Complainantís use of the mark GKN or a bad faith intention on the part of Respondent. There is no factual basis upon which the Panel can conclude that Respondent was aware of Complainant or its trademarks when it registered the Domain Name.
6.30 As well, Complainantís evidence is not consistent with the additional assertions made in the Complaint that:
(a) Respondentís registration and continued ownership of the Domain Name is primarily for the purpose of depriving Complainant from using its valuable mark in a corresponding domain name; and
(b) Respondent has intentionally attempted to confuse consumers as to the source of Complainantís mark GKN by creating a likelihood of confusion with Complainantís mark.
6.31 In making those assertions, Complainant appears to be relying on Paragraphs 4(b)(ii) and (iv) of the Policy. However, those Paragraphs clearly have no application to these circumstances. Complainant has not provided any evidence or even made any assertions that would support a finding of bad faith under those Paragraphs. For example:
(a) Paragraph 4(b)(ii) would require Complainant to prove that Respondent has engaged in a pattern of registering domain names to prevent trademark owners from registering corresponding domain names, but Complainant has not even asserted that that is the case; and
(b) Paragraph 4(b)(iv) would require Complainant to prove that Respondent is attempting to attract Internet users to a website or other on-line location, but Complainant expressly asserts that Respondent has never operated such a website or location since the Domain Name was registered.
6.32 In several cases that have been decided under the Policy, it has been found that behaviour that may in and of itself be relatively neutral has lost its neutrality. This phenomenon is illustrated in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, a decision on which Complainant relies. The panelist in that case made the following observation:
"The question that then arises is 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."
6.33 That approach is helpful in assessing several forms of neutral behaviour. Whether or not behaviour reflects bad faith will often turn upon the surrounding circumstances. If the surrounding circumstances indicate bad faith, then otherwise neutral behaviour may well be an integral part of an overall scheme to register and use a domain name in bad faith. In those cases, most, if not all, of the registrantís behaviour will be in bad faith. However, in this case, the surrounding circumstances point in the opposite direction. The surrounding factual circumstances are consistent with the Respondent acting in good faith at the time of registration and thereafter.
6.34 The Panel concludes that Complainant has not satisfied its burden regarding paragraph 4(a)(iii) of the Policy.
7.1 The Panel finds that Complainant has not proven the presence of the elements required by Paragraphs 4(a)(ii) and 4(a)(iii) of the Policy.
7.2 The Panel declines to order the remedies requested by Complainant.
Robert A. Fashler
Dated: June 21, 2002