WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SES ASTRA S.A. v. AstraNet-HSI
Case No. D2002-1095
1. The Parties
The Complainant is SES ASTRA S.A., Chateau de Betzdorf, 6815 Betzdorf, Luxembourg, represented by Mr. Martin Gutwillinger, Dennemeyer & Associates (S.A.), Luxembourg.
The Respondent is AstraNet-HSI, 10713 Woodsdale Dr., Silver Spring, MD 20901, United States of America.
2. The Domain Name and Registrar
The disputed domain name is <ses-astra.net> (the "domain name"). It is registered with The Registry at Info Avenue dba IA Registry (the "Registry").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 29, 2002. The Center received a hard copy of the Complaint on December 2, 2002.
On December 2, 2002, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue. On the same day, the Registrar transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant of the domain name and providing the contact details for the administrative, billing, and technical contacts. The Registrar also confirmed that the domain name is registered with The Registry at Info Avenue dba IA Registry.
The Center verified that the Complaint, together with the amendment to 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 4, 2002. In accordance with the Rules, paragraph 5(a), the due date for the Response was December 24, 2002.
On December 9, 2002, Ms. Lynda Johnson, administrative and technical contact for the domain name, sent an e-mail to the Center, stating that she "had [her] name and address stolen for this illegal purpose and [she knew] nothing about the domain in question." On December 11, 2002, the Center replied to Ms. Johnson and provided general information about the UDRP procedure.
No further communication was received from the Respondent or from Ms. Johnson. Accordingly, the Center notified the Respondentís default on December 26, 2002.
The Center appointed Fabrizio La Spada as the sole Panelist in this matter on January 8, 2003. The Panel finds that it was properly constituted. 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.
4. Factual Background
The Complainant is the owner of the following international trademarks: "astra", No. 526 974 registered in classes 9 and 16; "astra", No. 527 780 registered in class 38; "astra & pyramide design", No. 702 523 registered in classes 9, 16 and 38; "astranet", No. 663 149 registered in classes 16 and 38; "astra-net & design" No. 680 090 registered in class 38. The Complainant provided the Panel with certificates of registration, as well as printouts from the WIPO search system. The earliest of these registration is for the word mark "astra" in classes 9, 16 and 38 (registration No. 526 974 and No. 527 780), registered in 1988.
The Complainantís trademarks are registered in the name of Société Européenne des Satellites SA, Château de Betzdorf, 6832 Betzdorf, Luxembourg. This is the former name of the Complainant. The Complainant has provided the Panel with an extract of the register of commerce of Luxembourg, which shows that the name of the Complainant was changed to SES-Astra on November 9, 2001. The Complainant has filed a request for registration of this change-of-name with the Benelux trademark office. This request covers all the above mentioned trademarks.
The Complainant also owns the domain name <ses-astra.com> registered on May 28, 1998.
The domain name was registered by the Respondent on July 25, 2002. The administrative and technical contact details indicate: Ms Johnson Lynda, AstraNet-HSI, 10713 Woodsdale Dr, Silver Spring, MD 20901, United States of America.
At the time the Complainant was filed, the domain name resolved to a website offering satellite Internet services under the "astra-net & design" trademark. The website prominently displayed the Complainantís trademarks and contained the following indication: "ASTRA is a trademark of SES ASTRA." On December 4, 2002, date of commencement of these proceedings, the contents of the <ses-astra.net> website were no longer accessible.
5. Partiesí Contentions
The Complainant alleges that the domain name is identical to its company name "SES-Astra" in the word elements. It also submits that the domain name is identical to its domain name <ses-astra.com> and that the Respondent only used another top level domain with the intention to copy the Complainantís domain name. Moreover, the Complainant points out that its famous trademark "Astra" is used in the domain name.
The Complainant contends that the Respondent has no rights or legitimate interest in respect of the domain name. It submits that the Respondent is not known by the domain name and does not make any legitimate non-commercial or fair use of the domain name without intent for commercial gain. In this respect, the Complainant points out that the Respondent is using the domain name to offer services but that this use is not bona fide. Indeed, the Respondent offers "satellite Internet services available via Astra" and displays the Complainantís registered trademarks "Astra", and "Astra-Net & Pyramide Logo.". The Complainant stresses that it never gave its consent to such use of its registered trademarks by the Respondent. The Complainant argues that the fact that the Respondent displays these trademarks on its website is an indication that it was aware of the Complainantís trademarks and company name.
Finally, the Complainant alleges that the Respondent intentionally attempted to attract for commercial gain Internet users to its website, by creating a likelihood of confusion with the Complainantís trademarks and company name as to the source, sponsorship, affiliation or endorsement of the Respondentís website. In the Complainantís opinion, the only alternative explanation of why the Respondent registered the domain name would be that the Respondent wanted to prevent the Complainant from reflecting its trademarks in a corresponding domain name or wanted to disrupt the Complainantís business.
On the basis of these elements, the Complainant seeks the transfer of the domain name.
The Respondent has not filed any response to the Complaint and has not answered the Complainantís contentions in any other manner.
The only element on record is an e-mail of December 9, 2002, from Ms. Lynda Johnson to the Center. In this e-mail, Ms. Johnson, who is mentioned as administrative and technical contact for the domain name, stated that she had never heard of AstraNet before she received a copy of the Complaint. She added that she had her name and address "stolen for this illegal purpose" and that she knew nothing about the domain name.
6. Discussion and Findings
In accordance with Paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements are satisfied:
1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section A); and
2. The Respondent has no rights or legitimate interests in respect of the domain name (see below, section B); and
3. The domain name has been registered and is being used in bad faith (see below, section C).
Paragraph 4(a) in fine of the Policy states that the burden of proving that all these elements are present lies with the Complainant.
The Panel notes that, pursuant to Paragraph 15(a) of the Rules, it shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
A. Is the Domain Name Identical or Confusingly Similar to a Trademark in Which Complainant has Rights?
This question raises two issues: (1) does the Complainant have rights in a trademark or service mark; and (2) is the domain name identical or confusingly similar to such trademark or service mark.
As regards the first question, the Complainant has produced evidence in the form of certificates of registration that it is the owner of several trademarks including the words "astra", "astranet" or "astra-net" in several countries, including many European countries.
As to the second question, the Panel finds that the domain name is confusingly similar to the Complainantís trademarks. First, the domain name wholly incorporates the trademark "astra" (see, e.g., Reliant Energy, Inc. v. Brent Graeter, Case No. D2001-0246). Moreover, although the top level domain (in this case ".net") is generally not considered for purposes of likelihood of confusion under the Policy (see, e.g., SBC Communications Inc. v. eWorldWideWeb, Inc., WIPO Case No. D2002-0608), the Panel finds that in this case it increases the confusion with the Complainantís trademarks, since the Complainant also owns "astra-net" and "astranet" trademarks.
The Panel therefore finds that the domain name is identical to a trademark in which the Complainant has rights.
B. Does the Respondent Have Rights or Legitimate Interests in the Domain Name?
The Complainant submits that the Respondent has no rights or legitimate interests in the domain name. The Respondent alleges that he has registered the domain name in order to use it in the establishment of a historic warehouse style eatery restaurant.
According to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
"(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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."
On the basis of the statements and documents submitted, the Panel is satisfied that the Respondent has no rights or legitimate interests in the domain name, for the following reasons.
First, there is evidence on record that, before any notice of the Complaint, the Respondent was using the domain name in connection with the offering of goods and services: At the time the Complaint was filed, the domain name resolved to a website where the Respondent was offering satellite Internet access by "SES ASTRA-Satellite DSL Service." However, the Panel finds that this offering of services was not a bona fide offering under paragraph 4(c)(i) of the Policy. Indeed, the Respondent was offering services under the Complainantís trademarks, which were reproduced on the website. The Complainant alleged that it never authorized the Respondent to use its trademarks. The Respondent has not disputed this contention and there is no evidence to show that the Respondent was a licensee of the Complainant or was otherwise authorized to use the Complainantís trademarks on its website or to otherwise offer services.
Second, there is no indication in the statements and/or documents submitted that the Respondent has been commonly known by the domain name.
Third, the Respondent was not making a noncommercial or fair use of the domain name. On the contrary, it offered services for commercial gain.
In accordance with the elements set out above, the Panel finds that the Respondent has no rights nor legitimate interests in respect of the domain name.
C. Is There Evidence of Registration and Use of the Domain Name in Bad Faith?
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith. In particular, Paragraph 4(b)(iv) provides as an instance of registration and use in bad faith circumstances in which:
"by using the domain name, you [Respondent] 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."
For the reasons set out below, the Panel is satisfied that the Respondent has registered and used the domain name in bad faith.
The statements and documents on record clearly establish that the Respondent attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainantís trademarks as to the source, sponsorship, affiliation, or endorsement of your website. Indeed, the Respondent not only registered a domain name which, as set out above, is confusingly similar to the Complainantís trademarks, but also chose, as its domain name, a name which is identical to the Complainantís company name. In addition, the Respondent was precisely offering, on its website, products under the Complainantís trademarks, without being authorized to do so.
In addition, the Panel notes that the administrative and technical contact for the domain name, Ms. Johnson, expressly stated that she had never heard of AstraNet (which is the name of the Respondent and registrant of the domain name) and that she had her name and address "stolen for this illegal purpose." The Panel considers that Ms. Johnson either is or is not the registrant/Respondent. If she is the Respondent, the Panel finds that she admitted bad faith by referring to an "illegal purpose." If she is not the Respondent, this means that the Respondent provided false contact details to the Registrar, which is indicative of bad faith (see, e.g., Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775).
Therefore, the Panel finds that the domain name was registered and used in bad faith.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <ses-astra.net> be transferred to the Complainant.
Fabrizio La Spada
Dated: January 24, 2003