WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

International Youth Hostel Federation v. Ivor Yevgeni Haya-Filkov

Case No. D2002-0720

 

1. The Parties

The Complainant is International Youth Hostel Federation, 1st Floor Fountain House, Parkway, Welwyn Garden City, Hertfordshire, AL8 6JH, United Kingdom.

The Respondent is Ivor Yevgeni Haya-Filkov, PO Box 121, Rarotonga, Cook Islands.

 

2. The Domain Name and Registrar

The domain name in issue is <iyhf.com> (hereafter the "domain name").

The domain name was registered with Iholdings.com, Inc. d/b/a Dotregistrar.com.

 

3. Procedural History

(1) The Complaint in this case was filed in email form on July 31, 2002, and in hardcopy on August 2, 2002. A Response was filed in email form on August 23, 2002. The Complainant filed a Supplemental Filing requesting information as to the Respondentís hardcopy filing of the information.

(2) The WIPO Arbitration and Mediation Center (the "Center") has found that:

- The Complaint was filed in accordance with the requirements of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules");

- Payment for filing was properly made;

- The Complaint complies with the formal requirements;

- The Complaint was properly notified in accordance with the Rules, paragraph 2(a);

- A Response to the Complaint was appropriately filed;

- The Administrative Panel was properly constituted.

As Panelist, I accept these findings.

(3) As Panelist, I submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

(4) The language of the proceedings is English.

 

4. Factual Background

A. The Complainant and its Mark

The Complainant is the International Youth Hostel Federation, a non-profit organization which owns, administers and runs hostels and accommodations all over the world. It owns a large number of hostels internationally.

The Complainant is the registered proprietor of the trade mark "IYHF" in Argentina in class 39. The Complainant has substantially and continuously used the name and mark IYHF throughout the world since 1932 as an abbreviation of International Youth Hostel Federation in respect of a network of hostels throughout the world.

B. The Respondent

A Response was filed. Aside from the issues discussed in section 5 below, the Response indicates that the Respondent is the natural person Ivor Yevgeni Haya-Filkov, a resident of the Cook Islands.

C. The Use of the Domain Name

The domain name resolves to a placeholder website which contains nothing except the e-mail address <ivoryhf@rd-mail.com>.

 

5. Partiesí Contentions

A. The Complainantís Assertions

The Complainant asserts that the Respondentís domain name is identical or confusingly similar to the Complainantís mark. Specifically, the Complainant asserts:

(1) The domain name <iyhf.com> registered by the Respondent is identical and confusingly similar to the Complainantís mark IYHF. Respondentís use of the IYHF mark in the domain name <iyhf.com> erroneously leads Complainantís customers to believe that Respondent is somehow associated with, endorsed by or sponsored by Complainant.

The Complainant asserts that the Respondent has no legitimate interest or rights in the domain name. Specifically, the Complainant asserts:

(1) Respondent is neither an authorized sponsor, nor a provider of IYHF goods or services, nor has it been licensed to use the mark IYHF by Complainant.

(2) The Respondent has not made any demonstrable preparations to use the domain name <iyhf.com> other than registering the domain name. The domain name resolves to a web site simply showing the e-mail address "ivoryhf@rd-mail.com". Accordingly, confused customers of the Complainant are likely to be frustrated in their efforts to reach the official IYHF web site. <rd-mail.com> is registered at 112 Lower Addiscombe Road, Croydon, CR0 6AD, United Kingdom. When the website "www.rd-mail.com" is inserted, it points directly to the World Trade Organization site "www.wto.org". None of this indicates any preparations to use the domain name.

(3) Respondent is not commonly known by the domain name <iyhf.com> and has no basis to claim that it is making a fair use of the domain name.

(4) Searches of the Yellow and White Pages (telephone directories) for the Cook Islands found no listing for a Mr. Haya-Filkov, nor did any search for the name on the Google search engine. Without proof to the contrary, it is doubtful that such a person exists.

The Complainant asserts that the Respondent registered the domain name and is using it in bad faith. Specifically, the Complainant asserts:

(1) The domain name was originally registered by Nucom.com. Nucom.com are domain name brokers specializing in 4 letter domain names. Enquiries were made by the Complainant on discovering the availability of the name. There was a response from Nucom.com dated February 28, 2002, in which it offered the domain name to lease for $500 per month or sell for $25,000. This clearly offends against paragraph 4(b)(i) of Uniform Domain Name Dispute Resolution Policy (the "Policy") as the sums surely outweigh any costs incurred. This was pointed out to the Registrant by registered post dated April 26, 2002. No response was ever received. A subsequent check of the Whois database showed the transfer of the domain name to the Respondent. An approach was made to the Respondent to see if the name could be purchased. In reply, the Respondent stated he would "only consider an offer of $15,000". If the Respondent had purchased the site from Nucom.com for the asking price, it must be questioned why he was willing to sell it for $10,000 less. If he did not purchase it for the same price as was offered to the Complainant, it must be queried as to why. On the website of Nucom.com, names that have been sold or leased are listed as such, ie: [domain name] Ė (SOLD), or [domain name] Ė (SOLD) Ė see http://wwwÖ), or [domain name] Ė (LEASED) Ė see http://wwwÖ). However, no reference to <iyhf.com> can be found on the list at all. These events are at the very least suspicious.

(2) Respondentís registration and use of the domain name <iyhf.com> in bad faith is further evidenced by Respondentís preventing Complainant from using the domain name that incorporates its famous and well-known mark IYHF in the commercial portion of generic top level domain. Respondentís actions have therefore unduly interfered with and disrupted Complainantís ability to promote its own products and services.

(3) Complainant has used the mark IYHF substantially and continuously for over 70 years on products and services throughout the world. The significant goodwill and value of the mark IYHF must be understood by Respondent and undoubtedly is what prompted its registration of the domain name. Given the fame of the mark IYHF, it is difficult to imagine that Respondentís motive in registering the domain name was anything other than to sell or otherwise transfer the domain name registration of Complainant for valuable consideration in excess of the Respondentís out-of-pocket costs directly related to the domain name.

(4) Whatever Respondentís motive in registering the domain name, it is clear that it intentionally trades off the significant goodwill and value in the mark IYHF and can be used to divert traffic intended for Complainant. Respondentís conduct also prevents Complainant from promoting its own products and services directly to the market. The result is that Internet traffic intended for Complainant will be diverted to Respondent. Respondentís use of the domain name <iyhf.com> clearly creates a likelihood of confusion with Complainantís mark. Since Respondent is not licensed to use the mark IYHF in this manner, Complainant is harmed because its valuable trademark and reputation is being placed into the hands of Respondent, over which they have no control. The public is harmed because it is likely to be confused as to the sources of any web page located at <iyhf.com>.

Accordingly, the Complainant submits that the Panel should order that the domain name be transferred to the Complainant.

B. The Respondentís Assertions

The Respondent asserts that his domain name is not identical or confusingly similar to the Complainantís mark. Specifically, the Respondent asserts:

(1) The Complainantís name is "International Youth Hostel Federation", not "IYHF".

(2) The Complainant cannot claim exclusive rights to the actual letters "I", "Y", "H", and "F", which are shared by many other companies, organizations and individuals, the Respondent being one example.

The Respondent asserts that he has a legitimate interest or rights in the domain name. Specifically, the Respondent asserts:

(1) The Respondent purchased this domain name as the initials of his own name (Ivor Yevgeni Haya-Filkov).

The Respondent asserts that he did not register the domain name or use it in bad faith. Specifically, the Respondent asserts:

(1) The Respondent has never shown bad faith with the registration of this domain name. The use of the domain name has never had anything to do with the International Youth Hostel Federation. The title of the web page is "Ivor Yevgeni Haya-Filkov" and the email address is "ivoryhf@rd-mail.com" so it is very unlikely that any visitor to the web site would think that he/she was visiting a web site that had anything to do with the International Youth Hostel Federation.

(2) It is clear from the correspondence that the Respondent has shown a reluctance to sell the domain name, not a willingness. The Complainant emailed to try to buy the domain name. The Respondent did not email it, other than responding to the emails. The fact that the Respondent was not very interested in selling the domain name is illustrated by the fact that he did not even bother to reply to their initial email of July 1, 2002, offering to buy it. The Respondent only replied to the Complainantís second email as the Complainant wrote, "I look forward to your reply as a matter of urgency". The Complainant acknowledges the Respondentís reluctance to sell the domain name when it writes, "We understand your reason for not wanting to sell the domain name <iyhf.com>", in its email of July 9, 2002.

(3) The Complainant has initiated this arbitration proceedings as a "last resort" measure, having failed to buy the domain name from the Respondent for an offer of $2000, which the Respondent did not accept.

 

6. Discussion and Findings

The Policy, adopted by the Internet Corporation for Assigned Names and Numbers on August 26, 1999, applies to domain name registrations made in the <.com> namespace. Paragraph 4.a. of the Policy requires the Complainant to make out three elements to succeed in an administrative proceeding initiated under the Policy:

1. The Complainant has rights in a trade or service mark, with which Respondentís domain name is identical or confusingly similar (Paragraph 4.a.(i)); and

2. The Respondent has no rights or legitimate interests in respect of the domain name (Paragraph 4.a.(ii)); and

3. The Respondent registered and is using the domain name in bad faith (Paragraph 4.a.(iii)).

A. The Complainant has Rights in a Trade or Service Mark, with which Respondentís Domain Name is Identical or Confusingly Similar

There are two requirements that a Complainant must establish under this paragraph; that it has rights in a trade or service mark, and that the domain name is identical or confusingly similar to the marks.

The Complainant provided the registration documents for its "IYHF" mark registered in Argentina. Though this is only one registration, this is sufficient to satisfy the initial requirements of paragraph 4.a.(i). I conclude that the Complainant, as registered proprietor of those marks, has established rights in a trademark, sufficient for the purposes of paragraph 4.a.(i). The Respondentís argument, that the name of the Complainant is "International Youth Hostel Federation" is not relevant to the determination here. A company may have many different trademarks, and the question asked here is whether the Complainant has rights in a relevant mark. It does so here.

The second requirement is that the domain name be identical or confusingly similar to the mark. The domain name is identical to the Complainantís mark. I conclude that the domain name is, for the purposes of the Policy, identical to the Complainantís trademark.

The Complainant has shown that it has rights in a trademark, and that the domain name is identical to this mark. I conclude therefore that the Complainant has satisfied the requirements of paragraph 4.a.(i) of the Policy.

B. The Respondent has no Rights or Legitimate Interest in Respect of the Domain Name

The Complainant asserts that the Respondent has no rights or legitimate interest in the domain name, as required under paragraph 4.a.(ii) of the Policy. It makes a number of specific arguments on this point, as provided above in section 5. Against this, the Respondent notes that his name is "Ivor Yevgeni Haya-Filkov" and argues that he therefore has a perfectly legitimate interest.

These assertions go to the general nature of what amounts to a "legitimate interest" and also to the specific requirements under Paragraph 4.c.(ii) of the Policy. Paragraph 4.c. of the Policy provides the following examples of ways in which the Respondent may establish a legitimate interest in the domain name:

"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."

The question is, then, whether 4.c.(ii) applies? The Respondent gives his name as "Ivor Yevgeni Haya-Filkov", and indicates that the initials of his name spell the domain name. However, the Complainant challenges this, and claims that the Respondent has not been known by the name "iyhf" and probably does not exist. A plain reading of paragraph 4.c.(ii) suggests that the Complainantís first argument is correct, and that the Respondent cannot rely on this paragraph. He presents no evidence that he has been "commonly known by the domain name". Initials, in and of themselves, are not sufficient to satisfy this paragraph. People are not generally known by their initials.

This is not the end of the matter, however, since paragraph 4.c. is only intended to present exemplars of the requirements of paragraph 4.a.(ii). The question still remains whether the Respondent has established rights or a legitimate interest in the domain name, as generally required under paragraph 4.a.(ii). Here, I think the Respondent has a better argument. As a general principle it seems to me to be unobjectionable to hold that oneís initials should be sufficient to establish a legitimate interest in a domain name. One need not be commonly known by these initials, but they still present a legitimate interest of a registrant that should be protected.

The question then is whether this general principle applies in this case. The problem is, of course, that the Complainant charges that the name "Ivor Yevgeni Haya-Filkov" is a convenient fiction, and no person by this name actually exists. This is perfectly possible, and perhaps even probable. However, the Respondent has been very careful in ensuring that all correspondence and electronic records point to a name consistent with "iyhf". The Complainantís evidence that this is a fraud is weak, amounting only to a search on the telephone directories of the Cook Islands. Any number of reasons might be advanced as to why the Respondentís name does not appear there. The evidence is with the Respondent. As a result, I conclude that the Respondent has established his legitimate interest.

Given the circumstances of these sorts of proceedings, the Respondentís name may well be a fiction. Unfortunately for the Complainant, the nature of proceedings under the Policy do not allow for a thorough investigation of the veracity of claims made (on either side) through the usual physical trial mechanisms of sworn statements, examination of witnesses, and so forth. This is perhaps unfortunate, but the Complainant has the option of bringing the matter in national court systems where these sorts of mechanisms are available. There being no good evidence that the name is a fraud, I am not prepared to conclude that the Respondent has lied here. I find that the Complainant has not satisfied its burden on this issue.

I conclude that the Complainant has not satisfied the requirements of paragraph 4.a.(ii) of the Policy. Since the requirements of paragraph 4.a. are conjunctive, there is no purpose in examining the elements of bad faith required by paragraph 4.a.(iii). The Complainant has not made out its case.

 

7. Decision

The Complainant has not made out all of the elements of paragraph 4.a. of the Policy.

Pursuant to Paragraph 4.i. of the Policy and Rule 15 of the Rules, the requested remedy is denied.

I hereby order that the domain name <iyhf.com> remain with the Respondent.

 


 

Dan Hunter
Sole Panelist

Dated: September 18, 2002