WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SES Astra S.A. v. Design Technology Ltd. (t/a Transcom ISP)
Case No. D2002-1078
1. The Parties
The Complainant is SES Astra S.A., a corporation organized and existing under the laws of Luxembourg, with its principal place of business located at L-6815, Château de Betzdorf, Luxembourg ("the Complainant").
The Respondent is Design Technology Ltd. (t/a Transcom ISP), 64 Knightsbridge, London SW1X 7JF, United Kingdom ("the Respondent").
2. The Domain Names and Registrar
The disputed domain names <satlinks.biz>, <satlinks.info> and <satlinks.net> ("the domain names") are registered with BulkRegister.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 26, 2002. On November 28, 2002, the Center transmitted by email to BulkRegister.com a request for registrar verification in connection with the domain names at issue. On November 29, 2002, BulkRegister.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 2, 2002. In accordance with the Rules, paragraph 5(a), the due date for Response was originally December 22, 2002, but after a request for an extension of time that date was put back by the Center to January 11, 2003. The Response was filed with the Center on January 11, 2003.
On February 4, 2003, the Center received an application from the Complainant seeking permission to lodge a statement in reply to the Response. The application incorporated the statement in question.
The Center appointed Tony Willoughby, David Perkins and G. Gervaise Davis III as Panelists in this matter on February 6, 2003. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On February 12, 2003, the Center received a supplemental filing from the Respondent objecting to the Complainantís further application and making further submissions in the event that the Panel accedes to the Complainantís request.
4. Factual Background
The Complainant in this administrative proceeding is SES Astra S.A., a corporation organized and existing under the laws of Luxembourg, with its principal place of business located at L-6815, Château de Betzdorf, Luxembourg. It is a satellite systems operator. With associated companies and joint venture partners it has formed Satlynx, a European two way satellite broadband communication service provider. The Satlynx Network which now includes among its clients La Poste, BT Open World, Tiscali, Neosky and PSA Peugeot Citroen was launched on or about June 5, 2002.
The Complainant filed trademark applications for the mark SATLYNX (word) on March 15, 2002, in both the UK and Benelux and those registrations have now come through. The UK registration came through on January 24, 2003. It is registered in Class 38 for satellite communication services; satellite television programme broadcasting; all these services with the exception of mobile uplink services. The priority date is March 15, 2002.
In March/April 2002, the Complainant registered the domain name <satlynx.net> (March 26, 2002), <satlynx.co.uk> (April 12, 2002), and <sat-lynx.com> (April 25, 2002).
On June 21, 2002, the Respondent registered the domain names <satlynx.biz>, <satlynx.org> and <satlynx.info>.
The Complainant became aware of these registrations in July 2002, and correspondence between the Complainant and the Respondent ensued.
On August 8, 2002, the Complainant lodged a Complaint with WIPO to the effect that those domain names (<satlynx.biz>, <satlynx.org> and <satlynx.info>) fell foul of the Policy. The case was given the number D2002-0745 and a decision was issued on September 16, 2002, the Panelist directing that those domain names be transferred to the Complainant.
On August 11, 2002, the Respondent registered the domain names.
In the course of Case D2002-0745 it became apparent that the Respondent had been employed by the Complainant as a consultant and that at the time of registration of the domain names covered by that Complaint the Respondent was well aware of the existence of the Complainantís trade mark SATLYNX. The panel in that case found that use of those domain names would "inevitably create confusion with Complainantís mark since it could indicate affiliation or endorsement of the sites by Complainant."
5. Partiesí Contentions
The Complainant contends that the domain names are confusingly similar to the Complainantís trademark SATLYNX as they are visually similar and phonetically identical to that trademark.
The Complainant contends further that the Respondent has no rights or legitimate interests in respect of the domain names. It claims that there is no evidence to suggest that the Respondent has any rights or legitimate interests in any of the domain names. It asserts to the best of the Complainantís knowledge that the Respondent (a) has not used the domain names or a name corresponding to any of the domain names in connection with a bona fide offering of goods and services which relate to the name SATLINKS and (b) is not commonly known by any of the domain names and (c) is not making a legitimate, non-commercial or fair use of any of the domain names without intent for commercial gain to misleadingly divert consumers from the Complainant or to tarnish the Complainantís trademark.
The Complainant observes that while there are a number of references to the name SATLINKS scattered through the websites connected/linked to the domain names, the references are unclear and they were only placed on the websites when the Respondent realised that it was likely that a Complaint under the Policy would be filed against it. The Complainant has produced evidence to suggest that as at mid July 2002, the relevant websites of the Respondent made no mention of the name SATLINKS.
The Complainant asserts that the Respondentís use of the name SATLINKS on its website is a sham.
The Complainant contends that the Respondent registered the domain names in bad faith and is using them in bad faith within the meaning of paragraph 4(a)(iii) of the Policy. In support, the Complainant refers to the history of its domain name disputes with the Respondent, it points to the confusing similarity of the names with the Complainantís trademark and points to the lack of any genuine use of the name SATLINKS by the Respondent. It contends that the Respondent registered the domain names for the purpose of trading off the Complainantís trademarks and/or misleading and confusing the general public in breach of the Policy paragraph 4(b)(iv).
For the reasons set out below the Panel declines to admit the Complainantís Supplemental Filing save to the extent that it establishes that since the date of the Complaint the Complainantís trade mark applications have matured into registrations.
The Respondent starts by pointing out that the Policy was established to permit the expedited disposition of clear abuses. The Respondent asserts that no clear abuse is present in this case.
The Respondent asserts that the Complainant does not have trade mark rights such as to enable the Complainant to take the domain names away from the Respondent.
At the time the Response was filed the Complainantís trademark applications had not at that stage proceeded through to registration. They have since proceeded through to registration and the Panel therefore ignores that part of the Response dedicated to the fact (as was then the case) that the applications were merely applications.
The Respondent asserts that the Complainant had failed to demonstrate that the Complainant had common law rights in the name SATLYNX.
The Respondent further contends that the term SATLINK is generic in nature and nobody can have trade mark rights covering a generic term such as this. The Respondent produces evidence showing that various trademark offices around the world have refused applications for the term SATLINK.
Under this topic the Respondent finishes
"If this Panel were to decide that the Complainant could take away a domain name consisting of a generic term, a consequence would be that (i) a shoe manufacturer could obtain a trade mark on a distinctive spelling of the word "shoe" for a particular shoe product ("SHEEEEUUUUU" for example) and (ii) the shoe manufacturer could use the trade mark on the term "SHEEEEUUUUU" as a basis of taking away the domain name <shoe.com> pursuant to the UDRP based on the allegation that the word "shoe" is confusingly similar to the trade mark "SHEEEEUUUUU." This would certainly not be within the purpose and intent of the UDRP."
The Respondent contends that the Complainant has failed to sustain its burden of proving that the Respondent does not have any legitimate interest in the domain names. Moreover, without prejudice to its contention that it is under no obligation to prove anything in this respect, the Respondent does come forward with evidence which it says proves that the Respondent has legitimate rights in the domain names.
The Respondent points to paragraph 4(c)(i) of the Policy and states that the Respondent has satisfied the conditions of that sub-paragraph by engaging in the use of and preparation for the use of the domain names in connection with a bona fide offering of goods and services. The Respondent states that it presents substantial evidence to prove that the Respondent has been engaged in business activities involving satellite linking services for which the Respondent logically and reasonably obtained the domain names in question. The Respondent contends that it has been engaged in business activities involving satellite linking services for many years and produces copies of its websites dating back to 1998, in which it says it was advertising services involving satellite linking services.
As to the allegation that the Respondent has registered the domain name and is using it in bad faith, the Respondent points out that the Complainant must prove bad faith both at the time of registration and in the current use of the domain names. It asserts that the Complainant has failed to do so.
Finally, as indicated above, the Respondent filed a further submission, being a Response to the Complainantís Statement in Reply to the Response and comprising in large part a plea that the Complainantís Supplemental Filing be not admitted.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that
(i) The 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 interest in respect of the domain name; and
(iii) The domain name has been registered in bad faith and is being used in bad faith.
Before dealing with the merits of the dispute the Panel has to decide what to do in respect of the partiesí supplemental filings.
In an ideal world the Panel would not see the supplemental filings until after the Panel had seen submissions as to why the supplemental filing should be admitted, the Rules making no provision for further filing, save at the request and/or discretion of the Panel.
The Complainantís application and Supplemental Filing were combined in a single document and all members of the Panel have read that document. In those circumstances, it is difficult to Ďunreadí it. The only pertinent information of any real interest is the news that the Complainantís trademark applications referred to in the Complaint have now matured into registrations. That is material information relevant to the matter in dispute, which was not in the Complainantís possession and could not have been in the Complainantís possession at the time of the Complaint.
Having read the Complainantís Supplemental Filing, it seemed equitable that the Panel should look at the Respondentís Supplemental Filing. This constitutes in large part a powerful and, in the main, persuasive argument that the Complainantís Supplemental Filing should not be admitted. The Respondent relied on a number of cited decisions including in particular the decision in case D2000-0596. In that decision the panellist had this to say:
"If a party wishes to submit a further statement, the better practice under the Rules would be to first seek consent from the Panel, with an explanation of why a further statement is warranted. Appropriate reasons may include the existence of new, pertinent facts that did not arise until after the submission of the Complaint Ö."
While it is unfortunate that the procedure there recommended was not followed and the Panel has seen the Complainantís Supplemental Filing, the Panel regards the details of the Complainantís trade mark registrations as being "new, pertinent facts that did not arise until after the submission of the Complaint" and takes the view that that information should be admitted.
As to the rest of the Complainantís Supplemental Filing, as the Respondent accurately points out, it comprises, in the main, repetition and/or a re-working of the submissions contained in the original Complaint. Apart therefore from the exhibit featuring details of the Complainantís trademark registrations, the statement in reply has been of no assistance to the Panel and has been ignored.
As to the Respondentís Supplemental Filing, the Panel has read it but apart from the attack on the Complainantís Supplemental Filing, it contains nothing which adds to the Response in any material degree.
A. Identical or Confusingly Similar
For the purposes of paragraph 4(a)(i) of the Policy, the fact (if it be a fact) that the Complainantís trademark rights are not such as to deprive the Respondent of the domain names, is neither here nor there. The issue is simply as to whether or not the Complainant has trade mark rights and whether the domain names are identical or confusingly similar to the trade mark the subject of those rights.
In each case the domain name (absent the generic suffix) is SATLINKS and, beyond doubt, the Complainant has trade mark registrations for the mark SATLYNX.
The question remains as to whether or not the domain names are confusingly similar to the Complainantís trademark. The domain names are identical phonetically and are similar visually and the parties both claim to be engaged in the field of satellite linking services.
In those circumstances, the Panel is of the view that each of the domain names is confusingly similar to the Complainantís trademark.
The Panel notes the Respondentís example cited above in relation to a domain name featuring the word SHOE and a trademark featuring the letters sheeeeuuuuu. The Respondent asserts that it would be ridiculous if a trade mark such as that could prevent use of the word SHOE as part of a domain name. The Panel agrees. However, the purpose of paragraph 4(a)(i) of the Policy is simply to ensure that the Complainant has a bona fide basis for making the Complaint. Overcoming that obstacle does not of itself lead to transfer of the domain name. The Complainant has to prove in addition that the Respondent has no rights or legitimate interests in respect of the domain name and that the domain name was registered and is being used in bad faith. The Panel imagines that ordinarily and in the absence of strong supporting evidence it would be extremely difficult for the proprietor of the trade mark SHEEEEUUUUU to establish that a registrant of a SHOE domain name had registered it in bad faith.
B. Rights or Legitimate Interests
While it is certainly the case that Complainants have to prove each of the three elements of paragraph 4(a) of the Policy in order to succeed in a Complaint, proving that a Respondent has no rights or legitimate interests in respect of a domain name involves proving a negative and proving matters peculiarly within the Respondentís own knowledge.
Given that the onus is on the Complainant to prove the elements of paragraph 4(a) of the Policy, it may seem strange that paragraph 4(c) of the Policy, which is directed to Respondents, indicates what a Respondent may do to prove that he/she/it has rights or legitimate interests in respect of the domain name in issue. Why should a Respondent have to prove anything?
The Panel approaches the matter in this way: the burden of proof is on the Complainant, but if the Complainant is able to set up a prima facie case against the Respondent, the Respondent has a case to answer. A finding will be made against the Respondent under this head in the event that it is unable to answer the Complainantís prima facie case.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain names. It points out that the Respondent is not named SATLINKS or anything like it; further, the service it provides is provided under its name and/or its trading name, Transcom; moreover, at the time of registration of the domain names, the term SATLINKS did not appear at all on the Respondentís websites. The Complainant points to the history of its dispute with the Respondent and contends that the registration of the domain names was all part and parcel of that dispute and had nothing to do with any bona fide use or intended use of the domain names. In other words, it is a sham and designed to cause confusion, those confused being Internet users who mis-spell the Complainantís trademark.
The Panel finds that the Complainant has made out a prima facie case and that the Respondent has a case to answer.
With knowledge that that was the case facing it, the Respondent has come forward with very little in response. It shows that under its own name it has been involved in satellite linking services, but it has come forward with no evidence to explain why it registered the domain names. The only evidence that the Respondent produces is exhibit F which is an archive printout from its "www.transcom.com" website in 1998, which make reference to Transcom Satellite Services and an exhibit to its Supplemental Filing which incorporates a reference to SATLINKS, but which is undated and therefore of no assistance.
Had there not been the earlier dispute with the Complainant over the Ďsatlynxí domain names and had the Respondent come forward with more substantial evidence of its use of the term "SATLINKS", then it might well have been that the Complainant would have had a near impossible task of proving that the Respondent had no rights or legitimate interests in respect of the domain names. As it is, however, there was the earlier dispute. That and the timing of the registration of the domain names and the lack of any substantial evidence as to bona fide use or intended use of the domain names leads the Panel inexorably to the view that the registration of these domain names was simply a further step in the pre-existing dispute between the parties.
In those circumstances, the Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name.
C. Registered and Used in Bad Faith
By the same reasoning and given that the Panel has already found that the domain names are confusingly similar to the Complainantís trade mark, the Panel finds that (a) the Respondent registered the domain names without any intention of using them for any bona fide purpose and (b) there is a very real risk that in using them as the Respondent has been using them, internet users will be deceived into believing that the Respondentís websites are in some way associated with or endorsed by the Complainant.
Accordingly, the Panel finds that the domain names have each been registered in bad faith and are being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(iv) of the Policy.
In light of the foregoing findings namely that the domain names are confusingly similar to a trade mark in which the Complainant has rights and that the Respondent has no rights or legitimate interests in respect of the domain names and that the domain names were registered and are being used in bad faith, the Complaint succeeds. The Panel directs that the domain names are transferred to the Complainant.
G. Gervaise Davis III
Dated: February 17, 2003