WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Geac Computer Corporation Limited v. Occ Pub Assn
Case No. D2002-0424
1. The Parties
The Complainant is Geac Computer Corporation Limited of Suite 300, 11 Allstate Parkway, Markham, Ontario, Canada.
The Respondent is Occ Pub Assn of 227 East Ontario Street, #118082, Chicago, Illinois, United States of America.
2. The Domain Name and Registrar
The contested domain name is <geac.org>.
The registrar is Network Solutions, Inc., 505, Huntmar Park Drive, Herndon, VA, 20170, United States of America.
3. Procedural History
The electronic version of the Complaint was filed on May 3, 2002. The hardcopy of the Complaint form was received on May 7, 2002.
In accordance with Paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy ("ICANN Rules") and Paragraph 5 of the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"), the Center verified that the Complaint satisfies the formal requirements of the ICANN Policy, ICANN Rules and Supplemental Rules.
Payment in the required amount was received on May 7, 2002.
On May 14, 2002, the Center formally notified the Respondent by post/courier and email of the Complaint and of the commencement of this administrative proceedings and sent copies to the Complainant, the Registrar and ICANN.
In addition to the Complaint, the Complainant filed the following material: a letter dated May 22, 2002, received by email on May 22, 2002; and a letter dated June 28, 2002 (with two attachments), received by email on June 29, 2002, and in hardcopy on July 1, 2002.
An electronic version of a Response was received from Jeffrey Osbourne by the Center on June 2, 2002, and the hardcopy was received on June 6, 2002. Mr. Osbourne purports to respond to the Complaint on behalf of the Respondent and an organization known as the International Enterprise Architecture Center ("IEAC").
Mr. Osbourne responded to the Complainantís further material by: a letter dated June 30, 2002, received by email on June 30, 2002; and a covering letter and document headed "Counter-Counter Response" both dated July 4, 2002, and received by email on July 7, 2002. In the Counter-Counter Response Mr. Osbourne acknowledges "volunteer contributions" from persons named Sally Ann Hutchinson, Rebecca Levy-Goldman and Dong Na Cheng.
The Complainant elected a three member Panel. The undersigned panelists submitted Statements of Acceptance and Declarations of Impartiality and Independence.
On July 9, 2002, the parties were notified that the undersigned Panelists had been appointed and that a decision was to be, save exceptional circumstances, handed down on July 23, 2002. Due to the volume of materials and supplemental filings made by the parties, the due date for the decision was extended to August 16, 2002.
The language of the proceeding was English.
The panel is satisfied that the Complaint was filed in accordance with the requirements of the ICANN Policy Rules and Supplemental Rules; payment was properly made; the panel agrees with the Centerís assessment concerning the Complaintís compliance with the formal requirements; the Complaint was properly notified to the Respondent in accordance with paragraph 2(b) of the ICANN Rules; the Response was filed in accordance with the requirements of the ICANN Rules and Supplemental Rules; the administrative panel was properly constituted.
4. Factual Background
In the decision of GEAC Computer Corporation Limited v. NEWTEC Consulting Group Incorporated, WIPO Case No. D2001-1131 the Complainant was described in the following terms:
"Ö a Canadian based company specializing in the design, production and distribution of computer hardware and software. It has been trading for at least 30 years. It is a very substantial company in its field."
"Öthe proprietor of trademark registrations of or including the name Geac in one shape or form. One such registration is US registration number 1,955,458 registered on February 13, 1996, of the name Geac in stylized form for various computer-related products. The Complainant claims first use of the mark in 1977. The Complainant operates a website at www.geac.com. It has owned the domain name <geac.com> since 1989."
The Panel accepts that description of the Complainant.
The Respondent is the registrant of the domain name <geac.org>. It registered the domain name on December 12, 1998. It is not apparent from the material what the nature of the Respondentís activities are. It is also not apparent whether the Respondent is a legal entity recognized by the law of any country.
5. Partiesí Contentions
A large amount of the material submitted by the parties is irrelevant to the issues which it is necessary for the Panel to determine. The Panel proposes to summarize only those parts of the material that it considers relevant.
The Complainant contends as follows:
The Domain Name is identical and confusingly similar to Geacís "Geac" trademark and service mark.
The Respondent has no rights or legitimate interest in <geac.org>. The Complainant states that the Respondent has not used the domain names in connection with their business or dealings and cannot satisfy the Panel of any of the four matters listed in Paragraph 4(c) of the ICANN Policy.
The Respondent registered the Domain Name in bad faith in that the circumstances satisfy situation (i) and/or (ii) of Paragraph 4(b) of the ICANN Policy. Those purposes are evident from the number and character of domain names registered by the Respondent and Thomas Boettcher. Mr. Boettcher was at one time listed as the administrative and billing contact for the <geac.org> domain name in the WHOIS database maintained by the registrar, Network Solutions Inc, and shares a postal address with the Respondent.
The Complainant undertook searches which it says indicate that the Respondent is the registrant or administrative contact for more than 400 domain name registrations and that Mr. Boettcher is the registrant or administrative contact for more than 700 domain name registrations. Annexed to the Complaint is an extract of search results from a WHOIS database. A review of that annexure shows that the Respondent and Mr. Boettcher are listed as the registrants or administrative contacts for a large number of domain names which incorporate famous trademarks or the names of famous individuals. For example, the annexure shows that the Respondent is the registrant of <bankofchina.org>, <lordofthefly.com>, <leno.org>, <letterman.org>, and <webstersdictionary.com>.
Other factors demonstrating the Respondentís bad faith include: the Respondent and Mr. Boetccher share the same address as two other entities, Project Unison and Occidental Publishers Alliance, both of which have also registered a large number of domain names in which they do not appear to have an obvious interest, list Mr. Boettcher as their administrative contact and share an address with Mr. Boettcher and the Respondent; the Respondent had actual or constructive knowledge of the "Geac" mark when it registered the <geac.org> domain name; the Respondent failed to respond to the Complainantís requests to transfer the <geac.org> domain name in exchange for reimbursement of its out-of-pocket expenses or to inform the Complainant if its reasons for refusing to transfer the name; and the Respondent has offered no plausible explanation for its use of the "Geac" mark in the domain name.
It is not clear how Mr. Osbourne is associated with the Respondent. He purports to file the Response on behalf of both the Respondent and the International Enterprise Architecture Center ("IEAC").
In the Response, Mr. Osbourne contends:
While the registrant is the Respondent, IEAC is the owner of the domain name <geac.org>. IEAC asked the Respondent to register the domain name and to then hold it on its behalf. Mr. Boettcher was a volunteer who assisted the Respondent in the registration process.
IEAC has a legitimate interest in the <geac.org> domain name in that "GEAC" is the acronym of its governing body, the Global Enterprise Architecture Council. Since registration, the domain <geac.org> has been used for routine email correspondence by members of that governing body.
That the Respondent did not register the domain name <geac.org> in bad faith is evident from the following facts: its purpose was to further the aims of IEAC; it has never purchased domain names with an intent to resell them and has never in fact transferred of sold a domain name; it has rejected numerous unsolicited inquiries for purchase of the <geac.org> domain name from an entity called the Greater Evanston Aikido Club; it had no knowledge of the Complainantís "Geac" mark prior to registering the domain name; its failure to respond to the Complainantís communications was due to their non-receipt or impolite tone; and every domain name held by it is for a legitimate reason.
6. Discussion and Findings
In order to qualify for a remedy, the Complainant must prove each of the three elements set out in Paragraph 4(a) of the ICANN Policy, namely:
(a) the domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
(b) the respondent has no rights or legitimate interests in respect of the domain name; and
(c) the domain name has been registered and is being used in bad faith.
The onus of proving these elements is that of the Complainant.
Before addressing those issues the Panel must comment on a number of preliminary matters.
With respect to the supplemental filings of both parties, paragraph 12 of the ICANN Rules states in full:
"In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the parties."
While the supplemental filings were unsolicited, the Complaint and Response raised difficult factual issues which in the opinion of the Panel were not fully explored in those documents. Both the Complainant and Mr. Osbourne have now had an equal opportunity to file supplemental material and in the circumstances the Panel exercises its discretion to accept the supplemental filings.
In addition to the Respondent, the Complaint also named Thomas Boettcher as a respondent. Paragraph 1 of the ICANN Rules defines "Respondent" to mean:
"the holder of a domain name registration against which a complaint is initiated."
Other parts of the Rules also make it clear that the Respondent to a dispute is intended to be the domain name holder. See for example paragraph 3(b)(v).
The Complainant does not assert that Mr. Boettcher is or ever was the registrant of the disputed domain name. It is therefore not appropriate that he be named as a respondent.
Similarly, IEAC is not the registrant and is not a proper respondent to the dispute.
While not respondents to the dispute, the involvement of Mr. Boettcher and IEAC may nonetheless be relevant to its determination.
6.1 Identical or confusingly similar to a trademark or service mark
The Complainant has demonstrated that it is the owner of the trademark and service mark "Geac". A similar finding was made in the decision of GEAC Computer Corporation Limited v. NEWTEC Consulting Group Incorporated, WIPO Case No. D2001-1131 mentioned above. In any event Mr. Osbourne does not contend otherwise.
The only differences between the contested domain name and the Complainantís mark is the addition of the generic suffix <.org>.
The Panel finds that the domain name in dispute is identical to a trademark in which the Complainant has rights.
Paragraph 4(c) of the ICANN Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 ("ICANN Policy") sets out three elements, any of which shall demonstrate the Respondentís legitimate rights in the contested domain name. The Panel has determined that the Respondent does not meet any of the three elements set out in this paragraph and does not otherwise have a legitimate interest in the disputed domain name.
Mr. Osbourne contends that the Respondent has a legitimate interest through its association with IEAC. He contends that IEAC in turn has a legitimate interest because: the disputed domain name represents the acronym of its governing body, by which it has been commonly known (paragraph 4(c)(ii) of the ICANN Policy); and the disputed domain name is used by members of the IEAC governing body for email correspondence (paragraph 4(c)(iii) of the ICANN Policy).
The material contains only bare assertions on the four key facts which underlie Mr. Osbourneís contentions. Those facts are: that the Respondent holds the domain name on behalf of IEAC; that the IEAC governing body is commonly known as GEAC; that the disputed GEAC.org domain name is used by members of the IEAC governing body for email correspondence; and that that a body called the Global Enterprise Architecture Council actually exists.
The Panel requires some substantiation of each of those facts before it would be prepared to find that the Respondent has a right or legitimate interest. The Respondent has had the opportunity to provide tangible evidence rather than bare assertions, but (despite filing numerous papers) has not done so.
The Panel notes that the IEAC website, at "www.ieac.org" does exist, that IEAC does appear to be a legitimate organization, and that there is a reference to the the Global Enterprise Architecture Council on this website. That is the extent of the tangible evidence presented by the Respondent on this point.
However, there is no tangible evidence of any connection between the Global Enterprise Architecture Council and the Respondent. The legitimate interest in the disputed domain name must be a legitimate interest of the Respondent, and here, Global Enterprise Architecture Council is not the Respondent. No explanation was provided as to why the Respondent registered the disputed domain name in its name rather than in the name of the Global Enterprise Architecture Council.
No information or evidence was provided by the Respondent was to the legal status, constitution, members, address, or date of "incorporation" of the Global Enterprise Architecture Council. No minutes of meetings, documents, letterhead or brochures were provided naming the Global Enterprise Architecture Council.
As stated above, IEAC does have a website. The Respondent states, without tangible proof, that the Global Enterprise Architecture Council is the governing global body for IEAC. However, IEAC itself is also somewhat of a mystery organization. The Panel could not find any address or phone number for IEAC on the <ieac.org> website. The whois records for both <ieac.org> and <geac.org> show different registrants (Project Unison and the Respondent) both at the same address (which, from the Panelsí inquires, appears to be a mail box, rather than the address of IEACís business premises) that the Respondent has given for itself and IEAC. Both Project Unison and the Respondent give the same telephone numbers in the whois records, but those numbers are unlisted. When you dial the numbers, you reach a voice mail system that repeats the numbers; no business name is given. It is possible that the Respondent, the Global Enterprise Architecture Council and IEAC are all intertwined, with some legitimate operations.
Moreover, the Response was not filed, signed or authorized by an officer or official of IEAC. There is no evidence that IEAC was aware of, authorized or supported the filing of the Response. One would assume that IEAC management would have a significant interest in the conduct and outcome of this dispute, but there is no evidence that that is the case. Mr. Osbourne submitted correspondence and "counter-responses" on paper that included a star logo and letterhead that stated "International Enterprise Architecture Center 227 East Ontario Street, #118082 Chicago, IL 60611 USA". The letterhead does not include a telephone number, fax number or email address. On examining originals of this letterhead, it was simply produced by a word processor and the logo could easily have been downloaded from the <ieac.org> website. The letterhead was not embossed or professionally printed. Mr. Osbourne, in signing the letters, does not give his position or title in IEAC. The only evidence that the Respondent is associated with IEAC is that the whois records for <geac.org> and <ieac.org> both give the same address for the registrants. (The registrant for <geac.org> is "Project Unison").
The registrant of the disputed domain name, i.e. the Respondent, is "Occ Pub Assn" No evidence was provided by the Respondent as to its legal structure, owners or members. No evidence was provided as to the relationship between the Respondent and IEAC and GEAC. The Illinois business/corporate records do not include any listings or any evidence of Occ Pub Assn, Occidental Publishing Association or Project Unison.
The Panel considers that the Complainantís position is more credible that of the Respondent, especially in view of the less than forthright submissions of the Respondent and the number of other domain names also registered by the Respondent.
Accordingly, the Panel does not accept Mr. Osbourneís contentions and finds that the Respondent has no rights or legitimate interests in respect of the domain name.
6.3 Bad Faith
Paragraph 4(b) of the ICANN Policy states that any of the following circumstances, in particular but without limitation shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or acquired the contested domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the respondentís documented out-of-pocket costs directly related to the contested domain name; or
(ii) the Respondent has registered the contested domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a patter of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondentís web site or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the Respondentís web site or location or of a product or service on the Respondentís web site or location.
There is no suggestion that the Respondent has registered or used the domain name for the purposes described in paragraphs 4(b)(iii) or (iv) of the ICANN Policy and accordingly the Panel finds that these have not been made out.
The Panel considers that the search results annexed to the Complaint demonstrate that the Respondent has engaged in a pattern of conduct of registering trading names of third parties.
Further, while not parties to this dispute, the involvement of Mr. Boettcher, and his involvement with Project Unison and Occidental Publishers Alliance, support the conclusion of a pattern of such conduct. In this respect the circumstances are similar to those in The Nasdaq Stock Market, Inc. v. Green Angel, WIPO Case No. D2001-1010. Mr. Osbourneís asserts that the Respondent has a legitimate interest in each of the names it has registered. In support of that assertion he offers, by way of example, explanations in respect of two domain names: <bankofchina.org> and <movado.org>. In the case of <bankofchina.org> the explanation offered is that the Respondent holds the domain name on behalf of its volunteer, Mr. Cheng, who enjoys sharing historical and designs insights into the Bank of China Building in Hong Kong. Similarly, in respect of <movado.org> Mr. Osbourne explains that the Respondent holds the domain name on behalf of Ms Hutchinson, a volunteer who loves everything about Movado watches. Those explanations are unconvincing. No affidavits or sworn declarations were submitted by Mr. Cheng or Ms Hutchinson. Further, the explanations are insufficient to establish that Mr. Cheng or Ms Hutchinson, let alone the registrant, hold a legitimate interest in the domain names. The Panel notes that Mr. Osbourne offered no evidence of actual use of the <bankofchina.org> or <movado.org> domain names. (These proceedings are based on paper submissions, and the Panelists have no opportunity to observe and question witnesses. Mere hearsay without a supporting affidavit or sworn declaration is not persuasive where it is clear that the evidence is contested.)
While possible, the Panel considers it unlikely that the Respondent was not aware of the existence of the Complainantís mark prior to the domain name. The Complainantís mark is well known and as such fits the pattern of well known marks that are incorporated into domain names registered by the Respondent, Mr. Boettcher and the other entities which share their address.
In light of the above the Panel finds that the Respondent registered the domain name <geac.org> in order to prevent the Complainant from reflecting its trademark or service mark in the <.org> domain and that it has engaged in a pattern of such conduct. The Panel therefore finds that the Complainant has made out paragraph 4(b)(ii) of the ICANN Policy and the Respondent registered the domain name in bad faith.
With respect to paragraph 4(b)(i), Mr. Osbourne asserts that the Respondent has never sold or transferred a domain name and has rejected numerous unsolicited inquiries about purchasing the disputed domain name from an entity called the Greater Evanston Aikido Club. Those assertions are not supported by any evidence.
However, other than the number and nature of domain names registered by the Respondent, Mr. Boettcher and those entities which share their address, the Complainant has not provided evidence on which this Panel could find that the Respondent registered the domain name primarily for the purpose of selling it to the Complainant.
In light of the finding in respect of paragraph 4(b)(ii) it is unnecessary for the Panel to determine whether paragraph 4(b)(i) of the ICANN Policy has been made out.
The circumstances in paragraph 4(b) are not exhaustive of the circumstances in which it will be found that a respondent registered a domain name in bad faith. In The Nasdaq Stock Market, Inc. v. Green Angel, WIPO Case No. D2001-1010 the Panelist stated that evidence of the registration of a number of domain names at the same address and using different entities constituted evidence of bad faith. While it is not necessary for the Panel to decide this dispute on that basis, the facts here support a similar finding.
For the reasons set forth above and pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the contested domain name be transferred to the Complainant.
Carol Anne Been
Sandra A. Sellers
Dated: August 16, 2002