WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Best Price Computers Ltd v. Poweroid HK, Admin Domain
Case No. D2002-0713
1. The Parties
The Complainant is Best Price Computers Ltd ("Best Price Computers"). It is a computer hardware supply company incorporated in the United Kingdom in 1996 and trading from premises at Poweroid House, 7A Eldon Way Industrial Estate, Hockley, Essex SS5 4AD. The Complainant is represented in the proceeding by its authorised representative, Mr. Clinton Lee of Best Price Computers.
The Respondent is identified as Poweroid HK, Admin Domain of GPO Box 8558, HK 00000, Hong Kong, SAR of China. These details have been extracted from the Whois database search and accordingly no indication is given as to the true status of the entity that is the Respondent. The Respondent has defaulted following service of the complaint upon it. Accordingly no Respondent reply has been received.
2. The Domain Name and Registrar
The domain name the subject of the dispute is <poweroid.com>. The registrar with which the domain is registered is MelbourneIT Limited of Level 2, 120 King Street, Melbourne 3000, Australia.
The date on which the disputed domain name was registered is July 19, 2002. It was then registered in the name of Poweroid HK, which is taken to be Hong Kong. The Registrar response indicates that the organisation name is Poweroid HK with an address of GPO Box 8558, Hong Kong 00000.
3. Procedural History
On July 29, 2002, the Complaint was received by email.
On July 30, 2002, Registrar Verification was requested.
On August 6, 2002, the Registrar responded to the verification request.
On August 9, 2002, the Complaint was received in hard copy.
On August 12, 2002, a formal Notification of Complaint and Commencement of Administrative Proceeding was notified.
On September 3, 2002, a Notification of Respondent default was issued.
On September 9, 2002, a Notification of Appointment of Administrative Panel and projected decision date was advised.
An Administrative Panel of John Katz QC of Auckland, New Zealand as sole panelist was notified. The panelist having accepted the appointment and having considered the papers delivers the following Administrative Panel Decision.
4. Factual Background
The Complainant, Best Price Computers, is a computer hardware supplier company incorporated in the United Kingdom in 1996 under the style Best Price Computers Limited. Its trading address is Poweroid House, Hockley, Essex, United Kingdom.
Best Price Computers has an email address of <bestpricecomputers.ltd.uk>.
Best Price Computers previously created the name Poweroid which it adopted and used in connection with its business after satisfying itself there were no conflicting trade marks such as would deny it use of the trading name.
Best Price Computers established the domain name <poweroid.com> on June 6, 2000, and an associated domain <poweroid.co.uk>. Both resolve to the website <bestpricecomputers.ltd.uk>. That website advertises and promotes Best Price Computers' business. It uses the name Poweroid to promote some of its PCs.
For reasons which are stated as being an administrative error the domain name <poweroid.com> was allowed to lapse and was not renewed on expiry of the original term (presumed to be in or about June 2002).
Best Price Computers has promoted its brand name or trading style in the United Kingdom and internationally. Whilst it apparently has not registered trade marks or service marks it has used and promoted the name extensively and has made a substantial investment in it.
There is no other entity known to use the name or style Poweroid.
The Respondent registered the disputed domain name on July 19, 2002. The Whois database records show the domain name "owner" as Poweroid HK of GPO Box 8558, Hong Kong 00000. The administrative contact details are the same and the email contact is given as <email@example.com>. The domain name servers are given as <ns.bigdragon.com> and <ns2.bigdragon.com>.
The domain resolves to a portal site "www.roar.com" which derives revenue through the sending of traffic to it.
The Respondent has defaulted so little is known about it. It appears not to trade. It is not known by the name Poweroid. That name would not appear to have any particular association or affiliation with the Respondent nor to be a name likely to be associated with it in English, Cantonese or Mandarin.
5. The Parties' Contentions
The Complainant Best Price Computers contends that the Respondent has by adventitious conduct found that the Complainant had inadvertently allowed its domain name (which it had been using) to lapse and the Respondent thereupon registered the name afresh itself.
The Respondent has no particular or genuine interest in such a domain name and is using it to divert traffic intended for Best Price Computers and to derive commissions at the same time through the traffic routed to the Respondent's domain.
When contacted by Mr. Lee of Best Price Computers the Respondent replied that domains are registered on a first come first served basis and that it had registered the domain for its own needs. It investigated whether Poweroid was a trade mark in Hong Kong which it was not. It shortly after offered to sell the name to Best Price Computers for the sum of US$18,500.
Best Price Computers says that the disputed name is the same or similar to its common law trade mark and that the Respondent has no genuine interest in it. As it is not a generic word and the Respondent is simply seeking to capitalise on the oversight in not renewing the registration, the Respondent has registered and is using the name in bad faith.
Lastly, Best Price Computers says that based at least on one previous decision involving the same Respondent, WIPO Case No. D2001-1005 <reverso.com> the Respondent makes a business of registering other people's trade marks as domain names and then attempts to sell them to the rightful owner. It is noted that the exact same amount as here was claimed as the sale price in decision WIPO Case No. D2001-1005 <reverso.com>.
The Respondent having defaulted no reply is available from it. Whilst it appears as if the email communications of the Complaint may not have been received due to technical communication problems, the Federal Express courier packages have been sent and appear to have been received. The Panelist proceeds on the basis that the Respondent has been fully notified of the Complaint and the associated documentation.
Although the Respondent has defaulted with respect to the Complaint, it did however respond to an email from Best Price Computers and its two email responses are in evidence (see Annexure 4 to the Complaint).
In its email of July 26, 2002, after having received a threat from Best Price Computers of an intention to proceed under the ICANN UDRP procedure, the Respondent through an unidentified person sent an email in which it was stated:
"Let the point be made that domains are registered on FIRST COME FIRST SERVE basis.
1. We have registered this domain for our needs. Poweroid is not a trade mark in Hong Kong. We have thoroughly investigated this.
2. Our initial investment for a product naming and pre-production mold (sic) charges are already spent, we as a measure of good faith wanted to recover that amount, but instead you have sent us threatening email."
The email ended by indicating the Respondent would defend its rights in the Hong Kong Courts and claim costs and damages.
Then, on an apparently unsolicited basis, the Respondent forwarded another email to Best Price Computers on July 28, 2002, in which it was stated:
We have spent a lot of money on developing moulds and for naming products on Poweroid.
We are willing to give you back the www.poweroid.com domain if you are willing to pay us for these expenses. The total is US$18,500. Please confirm acceptance of this by urgent reply."
There are no further emails in evidence and the present complaint was filed by Best Price Computers on July 29, 2002, by email.
6. Discussion and Findings
The Policy adopted by ICANN is directed towards resolving disputes concerning allegations of abuse of domain name registrations.
As part of the process the Complainant must provide evidence and submissions in support of its Complaint. The expectation is that the Complainant will provide such supporting evidence as is necessary to make out its case under all three heads in paragraph 4(a) of the Policy. The Respondent is given full opportunity to respond.
In this instance the Respondent has defaulted. Whilst it is not considered that conventional common law notions of burden of proof have any particular relevance under the Policy, it is accepted that a Complainant must make out its case as also must a Respondent. No particular burden lies either way.
Rule 4(a) of the Policy sets out three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abuse of domain name registration and to obtain relief. These elements are that:
(i) The Respondent's domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The Respondent's domain name has been registered and is being used in bad faith.
Each of the three elements must be proved by a Complainant to warrant relief.
As to the first ground, the domain name <poweroid.com> is identical to the common law trade mark of Best Price Computers', Poweroid. The addition of the .com suffix adds nothing by way of difference or distinguishing feature as has been held on many previous occasions by the present and other Panelists.
Ground 4(a)(i) is accordingly made out.
As to the second ground, that there are no rights or legitimate interests possessed by the Respondent, the Respondent does not appear to have any business or trading operation known as or by reference to the trade mark Poweroid.
Curiously, the Respondent's emails refer to its "needs" and to a "product naming and pre-production mold (sic) charges" which it wished to recover. No particulars are given. Its "needs" are not identified. Its business is not stated. Just two days later it offered to sell the domain name back to Best Price Computers.
There is simply no basis to assume any legitimate interest by the Respondent. None of the possible available grounds that are set out in the Policy could arguably be raised.
Accordingly Ground 4(a)(ii) is made out.
As to the third ground, this requires that the name be registered and used in bad faith. As has previously been said in other Panelist's decisions, both elements must be made out.
Best Price Computers relies in part on the conduct of the apparent same Respondent in the decision WIPO Case No. D2001-1005 <reverso.com>. That appears to involve the same Respondent. The Whois database details recorded above in this decision would raise a sufficient inference that the present Respondent is the same or is closely associated with that in decision WIPO Case No. D2001-1005.
The decision by the eminent Panelist in decision WIPO Case No. D2001-1005 at page 5 also refers to a common identity in the name of a Mr. Shunit who the present Panelist observes appears to be the sender of the email of July 28, 2002. The sender reference is shown as "S. Shunit" <firstname.lastname@example.org>. Compare this with the detail set out at page 5 in paragraph 13 of the Panelist's decision in the earlier WIPO Case No. D2001-1005.
Further, although not of itself a major factor, this Panelist observes the unusual choice of email address given by the Registrant to Whois, namely <email@example.com>. The omission of the dashes in the unique identifier name tells something about the Respondent and its presumed intentions.
It is also noted that the domain servers are shown as <ns.bigdragon.com> and <ns2.bigdragon.com>. In the decision in D2001-1005 they were the same, after a change had taken place.
The Policy clearly states that an offer to sell the name is not of itself objectionable and not evidence of bad faith if all that the Respondent is seeking is reimbursement for documented out-of-pocket costs directly related to the establishment of the domain name.
There is no basis to assume that the claim for US$18,500 bears any relationship to documented out-of-pocket expenses and indeed no justification for the figure has been provided.
The Respondent's site resolves to "www.roar.com". That is an active site which is in use and is utilised for the purposes of obtaining revenue through communications routed through that site. That factor also tells against the Respondent and suggests that the site is being used to generate income and for the purposes of disrupting traffic that would otherwise be destined to Best Price Computers.
Given the facts discussed elsewhere in this decision the conclusion is irresistible that this Respondent has taken the fortuitous opportunity (for which it likely was on the lookout) to find a domain name which had lapsed or was inadvertently not renewed and then register it itself and offer it back to the former registrant. It therefore follows that the Respondent's registration was in bad faith. As the site was and remains active it is also being used in bad faith.
Accordingly, both limbs under the third ground are made out.
For the reasons set out above the Panelist finds:
(a) The domain name <poweroid.com> registered by the Respondent is identical to a trade mark to which the Complainant Best Price Computers has rights; and
(b) The Respondent does not have any rights or legitimate interests in respect of the domain name; and
(c) The Respondent's domain name was registered and is being used in bad faith.
Accordingly, pursuant to clause 4(i) of the Policy, the Panelist requires that the registration of the domain name <poweroid.com> be transferred to the Complainant Best Price Computers Ltd.
John Katz QC
Dated: September 17, 2002