WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Sysgo Real-Time Solutions GmbH v. WebMaster

Case No. D2002-0766

 

1. The Parties

The Complainant is SYSGO Real-Time Solutions GmbH, having its place of business in Klein-Winternheim, Germany. The Complainant is represented by George Meyer-Spasche of Clifford Chance Pünder, Frankfurt, Germany.

The Respondent is WebMaster, PO Box 273362, Boca Raton, FL 33427, United States of America.

 

2. The Domain Name and Registrar

The domain name at issue is <sysgo.com>.

The Registrar with which the disputed domain name is registered is Go Daddy Software, Inc, 14455 North Hayden Road, Suite 226, Scottsdale, AZ 85260, United States of America.

 

3. Procedural History

On August 16, 2002, a Complaint was received by the WIPO Arbitration and Mediation Center ("Center") via email for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution ("the Policy"), adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999. The hard copy of the Complaint was received on August 30, 2002.

On August 29, 2002, the Registrar responded to a request for verification of the disputed domain name <sysgo.com> confirming:

- That the Respondent was the current registrant of the disputed domain name

- The details of the Respondent

- That the Policy applied to the disputed domain name

- That the disputed domain name was registered with the Registrar

- That the disputed domain name would remain locked during the Administrative Proceeding

- That the language of the registration agreement was English.

On September 2, 2002, the Center transmitted a Notification of Complaint Deficiency to the Complainant as a result of several technical deficiencies. A revised Complaint was received by email on September 2, 2002. The hard copy was received on September 9, 2002

On September 10, 2002, the Center transmitted a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent. The Respondent was advised that a Response was required within 20 calendar days i.e. by September 30, 2002.

No Response was received and on October 2, 2002, the Center transmitted a Notification of Respondent Default to the Respondent.

On October 10, 2002, the Center advised the parties that an Administrative Panel had been appointed, consisting of a single member. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the WIPO Supplemental Rules.

The Panel has independently determined and agrees with the assessment of the Center that the Complaint meets the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999, ("the Rules") and the WIPO Supplemental Rules.

 

4. Factual Background

The Complainant company was founded in 1992. It states that it has used its trademark SYSGO continuously since 1992 in respect of the development, implementation and customization of system software for embedded and real-time systems.

On July 18, 2002, the Complainant applied to register the trademark SYSGO in Germany. It has also registered the domain name <sysgo.de>.

The Respondent registered the disputed domain name <sysgo.com> on March 10, 1999. The website <sysgo.com> is being used as a pornographic site.

 

5. Partiesí Contentions

A. The Complainant

The Complainant claims that the disputed domain name is identical to its trademark SYSGO and that the addition of the generic top level domain ".com" is inconsequential.

The Complainant alleges that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services before notice of the dispute and is not preparing to do so. It claims that the Respondent selected and used the disputed domain name with the intent to attract for commercial gain Internet users to the Respondentís website.

The Complainant states that as SYSGO is an invented word, it is not one that an owner of an adult website would naturally choose unless seeking to trade off the reputation of the Complainant; the disputed domain name bears no relationship to the business of the Respondent and the Respondent is not commonly known by the domain name, nor has it acquired any trademark or service mark rights to the name.

The Complainant claims that the mark SYSGO is well known in countries outside of Germany, as the Complainant has a considerable number of customers in the United States of America and elsewhere.

The Complainant also alleges that the Respondent is in the business of registering trademarks as domain names. It also claims that the Respondent registered the disputed domain name under a pseudonym, "WebMaster" and provided only a PO Box address in the contact details. The Complainant states that the investigations carried out by an internet security service provider revealed the true owner of the domain name to be: Mark McConnell, Diamond Net, Inc, 141 NW 20TH St, Boca Raton, FL 33431, United States of America.

B. The Respondent

The Respondent did not file a Response.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to:

"decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable".

The burden for the Complainant, under paragraph 4(a) of the Policy, is to show:

- That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- That the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

- That the domain name has been registered and is being used by the Respondent in bad faith.

Domain name is confusingly similar or identical to a trademark or service mark in which the Complainant has rights

The Complainant has applied to register the trademark SYSGO in Germany. This application is still pending. The Complainant claims to have been using the mark SYSGO continuously since 1992, although no evidence was provided of this. Also, the Complainantís trademark application for the trademark SYSGO in Germany was not filed until July 2002 Ė almost three years after the registration of the disputed domain name.

The Panel has itself viewed the Complainantís website at <sysgo.de>. The content on the website confirms that the Complainant was established in 1992. It also details a client list which includes Aerospatiale, Alcatel, DaimlerChrysler, DASA, IBM, NEC, Philips, Raytheon and Siemens and a comprehensive range of software products and services which are provided under the name SYSGO.

It is well established that the Policy applies to unregistered as well as registered marks.

Given the paucity of the evidence provided by the Complainant, this issue is finely balanced. On balance, however, and from its own view of the Complainantís website, the Panel finds that the Complainant has shown sufficient reputation in its unregistered trademark and that the disputed domain name is confusingly similar to the trademark SYSGO in which the Complainant has rights.

Respondent has no rights or legitimate interests in respect of the domain name

The second burden on the Complainant is to establish that the Respondent has no rights or legitimate interest in the disputed domain name. The difficulty for Complainants seeking to prove this element of the Policy is that they are required to prove a negative. No trademark or other searches have been provided showing that the Respondent is not commonly known by the disputed domain name. The Complainant has, however, provided a search indicating that the Respondent registered the disputed domain name under a pseudonym. Neither the name of the Respondent nor the Respondentís "true" name bears any resemblance to <sysgo.com>.

The Policy also outlines (paragraph 4(c)) circumstances which, if found by the Panel to be proved, shall demonstrate the Respondentís rights or legitimate interest in the domain name. These circumstances are:

(i) Before any notice to the Respondent of the dispute, the Respondentís use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services; or

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

(iii) The Respondent is making a legitimate non-commercial 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.

There is no evidence that subparagraphs (ii) or (iii) above have any application to this situation.

Nor does the Panel accept that this situation falls within subparagraph (i). While the Respondent plainly used the disputed domain name in respect of its pornographic website before any notice of this dispute, the Panel does not accept that such use was bona fide. The Panel accepts the Complainantís allegation that the domain name <sysgo.com> is not one which has any natural descriptiveness of or association with a pornographic website. The Complainant has provided evidence that the Respondent has registered fourteen other domain names that are identical or similar to other unrelated partiesí registered or pending trademarks. All of these websites contain (the same) pornographic material. There is no obvious connection between the domain names selected and the material on the websites.

In light of this pattern of conduct by the Respondent, the Panel is prepared to find that the use of this domain name is not bona fide and that the Respondent has no right or legitimate interest in the disputed domain name.

Domain name has been registered and is being used in bad faith

Paragraph 4(b) of the Policy states:

"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) Circumstances indicating that you have registered or you have acquired the 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) You have registered the 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 you have engaged in a pattern of such conduct; or

(iii) You have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."

It is well established that these circumstances of bad faith are not an exhaustive list.

The Panel finds that the Respondentís actions fall within paragraph 4(b)(iv) above, i.e. that the Respondent used Complainantís trademark as a domain name in order to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainantís mark.

The Complainant is located in Germany. The Respondent lives in the United States of America. There is no direct evidence that the Respondent knew of, or should have known of, the Complainant. The Complainant has simply asserted that the Respondent would have known of it as it had a number of clients in the United States of America. Ordinarily, this type of bare assertion would be insufficient.

However, in this situation the Respondentís knowledge and intention may be determined inferentially from the surrounding circumstances. These circumstances include the following:

(a) The Complainantís trademark is an unusual, invented word. It seems unlikely that the Respondent independently conceived of the disputed domain name comprising this trademark.

(b) There is no apparent connection between the trademark SYSGO and the content of the website at <sysgo.com>.

(c) The Respondent has engaged in a pattern of activity of registering third partiesí trademarks as domain names. The Complainant annexed to its Complaint a schedule setting out examples of other instances where the Respondent has registered third partiesí trademarks as domain names. This schedule comprised eight examples where the Respondent has registered domain names that are similar or identical to third partiesí registered trade marks and six instances where the Respondent has registered domain names which are similar or identical to third partiesí pending trademarks. As noted earlier, each of these fourteen sites contains pornographic material. The same pornographic material appears on each of the sites.

It is clear that the Respondent is deriving commercial gain from these pornographic sites. Internet users pay per minute to view pornographic material on the sites.

The Panel therefore accepts that by using the disputed domain name the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainantís trademark SYSGO.

Finally, the Panel also notes that the failure of the Respondent to file a Response and the fact that the Respondent apparently registered the disputed domain name under a pseudonym also tend to point to the fact that the disputed domain name was registered in bad faith.

The Panel therefore concludes that the Respondent registered, and is using, the disputed domain name in bad faith.

 

7. Decision

For the foregoing reasons, the Panel decides that:

(a) the disputed domain name is confusingly similar to a trademark in which the Complainant has rights;

(b) the Respondent has no legitimate right or interest in respect of the disputed domain name;

(c) the domain name was registered and is being used in bad faith.

Accordingly, the Panel orders that the disputed domain name <sysgo.com> be transferred to the Complainant.

 


 

Andrew Brown QC
Panelist

Dated: October 25, 2002