WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Perfetti van Melle S.p.A v. Web Worm Group Ltd

Case No. D2002-0467

 

1. The Parties

The Complainant is Perfetti van Melle S.p.A,, Via XXXV Aprile, 7 Ė 20020 Lainate (MI), Italy, represented by Alessandro Biraghi, Lainate, Italy

The Respondent is Web Worm Ltd, Uskudar, Instanbul, 34 81610, Turkey, represented by U. T., Istanbul, Turkey

 

2. The Domain Name and Registrar

The Domain Name at issue is <vivident.com>. The Registrar is DotRegistrar.com, 9032 NW 12th St., Miami, FL 33172, United States of America.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the Center) by e-mail on May 16, 2002, and a hardcopy was received by the Center on May 22, 2002. The Center acknowledged the receipt of the Complaint on May 22, 2002.

On the same day, the Center sent to DotRegistrar.com. a request for verification of registration data. On May 23, 2002, DotRegistrar.com confirmed to be the Registrar, that WebWorm Group Ltd is the Registrant of the domain name <vivident.com>, that the administrative contact is U. T., WebWormGroup Ltd, and that the technical contact is Y. O., WebWormGroiup Ltd.

The Center verified that the Complaint satisfies the Rules and the Supplemental Rules and that payment was properly made. The Panel is satisfied this is the case.

On May 29, 2002, the Complaint was properly notified in accordance with the Rules, paragraph 2(a), and the administrative proceedings commenced. On June 18, 2002, the Center received a Response from the Respondent by e-mail.

On June 24, 2002, the Center notified the Parties that an Administrative Panel, composed of a single member, Dr. Gerd F. Kunze, had been appointed and that the Panelist had duly submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center.

No further submissions were received by the Center or the Panel. The date scheduled for issuance of the Panelís decision is July 8, 2002.

 

4. Factual Background

A Complainant

The Complainant is a leading confectionary products manufacturer, which amongst other products has been manufacturing and selling in a number of countries, including Turkey, where it has a subsidiary, chewing gum products under the VIVIDENT trademark and other trademarks, consisting of a combination of the word "vivident" and additional words and devices.

The Complainant is the owner of the trademark word VIVIDENT and of other trademarks, incorporating the word "vivident", such as VIVIDENT PROTEX, VIVIDENT JUNIOR and VIVDENT XYLIT, in many countries all over the world. In particular, the Complainant is the owner of registrations for the trademark VIVIDENT and for several other trademarks, incorporating the word "vivident", In Turkey. The Turkish registration for the wordmark VIVIDENT dates back to 1988. The Complainant has submitted copies of the registration certificates for its Italian, international and Turkish registrations.

According to not contested submissions of the Complainant, the chewing gum products of the Complainant have been on the market in Turkey since 1990 and have been widely advertised. The Complainant has submitted copies of packaging used for these products in Turkey. All packaging for VIVIDENT PROTEX, VIVIDENT XYLIT, VIVIDENT WHITE KARBONATLI, VIVIDENT AIR ACTION, VIVIDENT DELETE, and VIVIDENT SUGARFREE shows prominently the word VIVIDENT as main brand of the product.

B. Respondent

The Respondent registered on May 11, 1999, the domain name <vivident.com> with DotRegistrar.com. The Website of the Respondent is "under construction".

 

5. Partiesí Contentions

A. Complainant

The Complainant submits that (1) the domain name <vivident.com> is identical or confusingly similar to a trademark or service mark, in which the Complainant has rights; (2) the Respondent has no rights or legitimate interests in respect of the domain name; (3) the domain name was registered and is being used in bad faith.

B. Respondent

The Respondent submits that it did not know the Respondent or its product VIVIDENT chewing gum, when registering the domain name. It also submits to be in contact with the Australian company Vivid Entertainment Inc (website address http://www.vivident.com.au), in order to establish a European branch of this company in Istanbul, however, without offering any evidence for that submission. Furthermore, the Respondent submits that Vivid Dental in Japan wanted to buy the domain name from it and refers as evidence to e-mails submitted in Annex 1. However, the Panelist was not able to find any e-mail from this company amongst the e-mails submitted in that annex. Actually the address of the e-mails shown in that annex seems to have been mistyped into vivident.com instead vividnet.com (the address of an American Internet Serviced Provider), as the Respondent itself assumes.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the domain name of the Respondent be transferred to the Complainant:

1) The domain name is identical or confusingly similar to a trademark or service mark ("mark") in which the Complainant has rights; and

2) the Respondent has no rights or legitimate interests in respect of the domain name; and

3) the domain name has been registered and is being used in bad faith.

1) Identity or confusing similarity with a mark in which the Complainant has rights

The domain name <vivident.com> is identical to the registered and used word mark VIVIDENT of the Complainant (the generic top level domain indicator ".com", cannot be taken into consideration when judging identity or confusing similarity).

2) Legitimate rights or interests in respect of the domain name

The Respondent has no connection or affiliation with the Complainant, who has not consented to the Respondent's use of the domain name. It does not use the website, which is still under construction, in connection with a bona fide offering of goods or services. Furthermore, the Respondent has not been commonly known by the domain name and does not claim to have been. Since it has not used at all the domain name, it makes no legitimate noncommercial or fair use of the domain name.

The Complainant hints rightly to the fact that the Respondent has registered the domain name <vivident.com> three years ago and has still not started to use it. The Respondent tries to explain this non-use for three-years with the argument that it was in contact with an Australian company, in order to establish the European Branch of that business in Istanbul and that it intended to use the domain name <vivident.com> for that purpose. It does not furnish any evidence for its submission. However, even if that story were not invented, it does not justify the Respondentís registration of the domain name. No doubt, the Respondent did not ask the Australian company for its authorization, before it registered the domain name back in 1999, otherwise it would have mentioned that fact. However, if the Respondent really intended to enter into a business relationship with Vivid Entertainment Inc Australia, that intention did not give it the right to register in its own name a domain name in the ".com" domain, which is identical with the Australian companyís domain name in the Australian cctld. The Respondent may have had an interest in doing so, however such interest cannot be considered to be legitimate. The situation is comparable to the situation of the registration of a trademark by an agent or representative in its own name, dealt with in Article 6septies of the Paris Convention. That provision gives the proprietor of the mark the right to oppose and to ask for cancellation or transfer to him of the registration, if it is made without his authorization. Even if domain names are not trademarks, Art. 6septies expresses a general principle, according to which the representative is not entitled to register any right in its own name, which it intends or pretends to exercise as representative of its principal.

The Panelist is therefore satisfied that the Respondent, had no right or legitimate interest in relation to the Complainant, nor had it a right or legitimate interest in relation to the Australian Company Vivid Entertainment, to register the domain name <vivident.com>.

In the absence of any sustained submission of the Respondent, which would show a present or future legitimate interest in the domain name, the Panel, based on the arguments and evidence submitted by the Complainant, concludes that the Respondent has no rights or legitimate interests in the domain name <vivident.com>.

3) Registration and use in bad faith

For a Complainant to succeed, the Panel must be satisfied that a domain name has been registered and is being used in bad faith. The question is therefore, whether the passive holding of the domain name may be considered to be registration and use in bad faith, taking into account all circumstances of the present case.

In that context, it has been convincingly argued in Telstra Limited v. Nuclear Marshmallows, WIPO Case No. D2002-0003, that inaction of the Respondent is within the concept of Paragraph 4(a) of the Policy.

The Complainant has submitted the following facts and arguments to support its claim that the Respondent has registered and is using the domain name <vivident.com> in bad faith:

The trademark VIVIDENT of the Complainant is not only registered but has been used for more than 10 years extensively, not only internationally, but also in Turkey, for the chewing gum products of the Complainant. It is therefore inconceivable that the Respondent, having its place of business in Istanbul, was not aware of the Complainantís trademark, and not of its products, when registering the identical domain name.

By registering the name "vivident" in the ".com" domain the Respondent prevented the Complainant from registering its internationally registered and used trademark in that domain. That circumstance indicates that it has acquired the domain name primarily for the purpose of selling it to the Complainant or to one of its competitors.

Furthermore, the Panelist has noted from evidence submitted by the Complainant that the Respondent has registered and advertises on its websites "under construction" over 50 domain names in the ".com" domain which generally are either not activated or "under construction". Even the Respondentís homepage (domain http://www.webwormgroup.com) is not active in the usual manner (visitors are welcomed and are informed that the site is still to be finalized). Actually only two of these domain names refer to active websites, which both are apparently addressed to customers in Turkey. Furthermore, the Response and the websites activated by the Respondent do not contain any reference to any business of the Respondent outside Turkey (as said before, the submission that the domain name <vivident.com> was intended to be used for a European Branch of an Australian Company is not sustained). The fact that the Respondent has registered all these domain names, including the domain name <vivident.com>, in the ".com" domain and not in the respective cctld of the country, where it is doing business, adds therefore another aspect indicating bad faith of the Respondent..

Furthermore, the arguments put forward by the Respondent that the domain name <vivident> could refer to a number of companies in Australia, the USA and in Japan, speak more against than in favor of the Respondent. The Respondent submits that, when registering the domain name and still thereafter until having received the Complaint, it has been totally ignorant of the trademark VIVIDENT and the chewing gum product of the Complainant, an Italian Company with a Turkish subsidiary, despite the fact that this product has been on the market in its country for a long time and is widely advertised and known by consumers, in particular in the Istanbul region. However, the Respondent had no problems to find out about and to intend to enter into a business relationship with, respectively to have been contacted by companies located in countries as far away as in Australia and in Japan, companies, which apparently are not doing business outside their country, particularly not in Turkey and apparently have no intention to do business in Turkey.

In that context is interesting to note that the Respondent in its Response constantly writes its domain name as follows: "VividEnt", whilst clearly the domain name registration is written "vivident" and therefore, according to normal rules of pronunciation in all mayor European languages is pronounced "vivident" and not "vivident"(that may be different in Australia, based on the circumstances of the case, because the company Vivid Entertainment Inc may be sufficiently known to its customers in that country in order to be able to use the domain name <vivident.com.au> without having problems of misunderstanding and confusion by its customers in view of the normal English language spelling of the word "vivident").

As has been explained under 6.2, the Respondent had not been entitled by the Australian Company to register a domain name in the ".com" domain, which is identical with its domain name in the Australian cctld. The Respondentís attempt to justify its registration of the domain name <vivident.com> with its supposed intention to enter into a business relationship with that company, adds therefore another element to the facts speaking in favor of bad faith of the Respondent.

Under the circumstances the Panelist is satisfied that the Respondent registered the domain name and has been using it by establishing a website "under construction" with an e-mail address for contacting it, in bad faith, with the intent to profit in one way or the other from this domain name registration, by waiting for interesting offers from either the Complainant or any other of the companies mentioned by the Respondent in its Response to buy the domain name from it. The mentioning "not for sale" on the website under construction cannot be taken for serous in that context, since this is a standard text used by the Respondent for all websites "under construction" which the Respondent entertains with identical text for a substantial part of the other domain names which it has registered and is mentioning on these websites.

Furthermore, should the Respondent indeed activate its website under the domain name <vivident.com> in order to advertise activities of the Australian Entertainment company, which in Australia is advertising its activities under the cctld <vivident.com.au>, such use of the domain name in the gtld ".com" domain would lead to confusion of the Complainantís customers, who would in view of the Complainantís international business expect to find under that domain a website referring to the Complainantís well-known chewing gum product and not a website referring to entertainment activities of an Australian company.

The Panelist is therefore satisfied that the Respondent, by having registered and using the domain name <vivident.com>, either is attempting to sell the domain name in excess of its out of pocket expenses or intentionally attempts to in the future attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of its website.

 

7. Decision

The Panel decides that the Complainant has proven each of the three elements of paragraph 4(a) of the Policy.

Pursuant to paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel requires that the registration of the domain name <vivident.com> be transferred to the Complainant.

 


 

Dr. Gerd F. Kunze
Sole Panelist

Dated: July 4, 2002