WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kuchler Electronics GmbH v Rocco Mancini
Case No. DBIZ2002-00005
1. The Parties
The Complainant is Kuchler Electronics GmbH, an Austrian corporation with its principal place of business in Klagenfurt, Austria. The Complainant is represented by Kenyon & Kenyon, Attorneys, of New York, NY, United States of America.
The Respondent is Mr. Rocco Mancini, of Waterbury, CT, United States of America. The Respondent represents himself.
2. The Domain Name and Registrar
The domain name at issue is <sam.biz>. The domain name is registered with Network Solutions Inc. of Dulles, VA, U.S.A. ("the Registrar"). The domain name was first registered on March 27, 2000. The Respondent claims that the name was registered to him on March 27, 2002.
3. Procedural History
The Complaint was received on April 14, 2002, by the World Intellectual Property Organization Arbitration and Mediation Center ("the Center"). The Complaint was made pursuant to the Start-up Trademark Opposition Policy for .BIZ adopted by NeuLevel Inc. and approved by ICANN on May 11, 2001, ("the STOP") and the Rules under that Policy ("the STOP Rules"). Some amendments to the Complaint were required and an Amended Complaint was submitted before notification to the Respondent. The Amended Complaint was received by the Center on April 22, 2002, (email) and April 25, 2002 (hardcopy).
The STOP is incorporated into the Respondent’s registration agreement with the Registrar. The Respondent is obliged to submit to and participate in a mandatory administrative proceeding in the event of a Complaint concerning the domain name registered.
Having verified that the Amended Complaint satisfied the formal requirements of the STOP and the STOP Rules, the Center, on April 26, 2002, transmitted by post-courier and by email a Notification of Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Notification of Complaint was also emailed to the Registrar and ICANN.
The Respondent was advised that a Response to the Complaint was required within 20 calendar days. The Respondent was advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email. A Response was filed by the Respondent on May 14, 2002 (email), and May 22, 2002 (hard copy). On May 17, 2002 (email), and May 23, 2002 (hard copy), the Complainant filed a supplementary pleading. The Respondent requested that the supplementary filing be not shown to the Panel.
The Center invited the Honorable Sir Ian Barker QC of Auckland, New Zealand to serve as Sole Panelist in the case. It transmitted to him a statement of acceptance and requested a declaration of impartiality and independence. The STOP requires that a Complaint be determined by a sole Panelist.
The Honorable Sir Ian Barker QC advised his acceptance and forwarded to the Center his statement of impartiality and independence. The Panelist finds that the Administrative Panel was properly constituted in accordance with the STOP Rules and the WIPO Supplemental STOP Rules.
On May 24, 2002, the Center forwarded to the Panel, by courier, the relevant submissions and the record. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel is required to forward its decision by June 7, 2002.
In the exercise of its discretion, the Panel decided to receive the Complainant’s supplemental filing and allowed the Respondent three working days from May 27, 2002, within which to put forward matters strictly in reply. The Respondent has provided a reply in opposition to the Complainant’s supplemental filing. Both have been considered by the Panel.
The Panel has independently determined and agrees with the assessment of the Center that the Complaint meets the formal requirements of the STOP, the STOP Rules and the WIPO Supplemental STOP Rules.
The language of the administrative proceeding is English, being the language of the registration agreement. The Complainant has paid the necessary fees to the Center. The Ticket Number assigned by the Registry operator under the STOP Rules has been confirmed.
4. Factual Background
The registrations of:
(a) U.S. trademark 1,381,044 registered February 4, 1986
(b) Austrian trademark 104,978 registered February 21, 1984
are for the mark "SAM" and are held in the name of Fritz Kuchler, the CEO and owner of the Complainant which has an exclusive licence to use the trademarks. The registrations cover various meat processing and slicing machines and weight scales.
The Respondent was given no rights to the name by the Complainant. He has not established a website. Respondent has registered some 91 names for which there are no websites. These registrations are detailed in the Complainant’s supplementary filing. Many are for 3 or 4 letter domain names with each letter separated by a hyphen, e.g. <T-I-T.net>, <M-E-A-T.com>.
5. Parties’ Contentions
The Complainant is entitled to file this Complaint because of its licence from the trademark owner. The mark is identical to the domain name. The Respondent has no rights in the mark and has registered the name in bad faith. Respondent has no bona fide business or commercial purpose. Respondent’s registration of numerous marks indicates that he is a domain name speculator. There is no record of the eBay transaction to which the Respondent referred.
The addition of .BIZ means that the domain name is not identical to the Complainant’s mark. The word ‘Sam’ is a "common surname" in the English language. Nobody would confuse the name and the mark. SAM as used by Complainant is an acronym for ‘Slicers with Advanced Microelectronics’. The mark is for a narrowly defined business.
Respondent acquired the domain name on March 27, 2002. Therefore, he has not had a reasonable time within which to develop the site. Respondent exhibits an email from eBay dated August 14, 2001, advising that a Zeiss Microscope was listed for internet sale on eBay. It was described as a ‘Scientific Application Microscope (‘SAM’) which was available to potential internet purchasers at a minimum bid of $750 plus shipping costs. eBay has since deleted any record of this transaction.
The domain name was registered for furthering the Respondent’s business of selling SAM - i.e. Scientific Application Microscopes. Concerning the numerous domain names registered by the Respondent as detailed in the Complainant’s supplementary filing, many of these have expired and are no longer in Respondent’s possession. None has been sold. Respondent intended to build functioning businesses out of these domain names but market conditions prevented this. Complainant has not shown any effect on its business by the registration of the domain name.
6. Discussion and Findings
Under STOP, a Complaint can only be filed by an "IP Claimant" who had filed an IP Claim for a particular alphanumeric string. If that string has been registered as a .BIZ domain name, Neulevel, the Registry operator of the .BIZ gTLD notifies the IP Claimant and invites it to initiate a STOP proceeding within 20 days. Neulevel determines priority orders if there are multiple claimants on a randomized basis (STOP Paragraph 4(2)(i)). Only the priority claimant will be invited to initiate a STOP complaint, which is allocated a "ticket number" which allows dispute resolution providers to verify whether a STOP Complaint is filed by the priority claimant. The service provider (in this case WIPO Center) is required to advise the Panelist if a given domain name in dispute is subject to more than one claim. In the present case, there is another IP claim.
Under STOP, the Complainant must show:
(a) That the domain name is identical to the Complainant’s trademark or service mark (Paragraph 4(a)(i)).
(b) That the Respondent has no rights or legitimate interests in respect of the domain name.
(c) That the domain name was either registered or used in bad faith (Paragraph 4(a)(iii)).
A Respondent may demonstrate a right or legitimate interest in a domain name. Circumstances similar to those under the Uniform Domain Name Dispute Resolution Policy of ICANN (the UDRP) can be invoked by a Respondent.
Likewise, the instances of bad faith exemplified in the UDRP can be invoked by a Complainant. However, because the STOP Policy and Rules come into play shortly after registration of a domain name, the focus of attention will be on bad faith at the time of registration. Likewise, the frequently-drawn inference against a Respondent of an undeveloped website cannot apply.
In the present case, the disputed domain name is identical with the marks in which the Complainant has rights as licensee. Numerous WIPO decisions concerning .com, .net and .org domain names make it clear that, when comparing a disputed domain name with a trademark, one ignores the internet suffix. The same must apply in a dispute under STOP. The first criterion is proved.
With regard to the second criterion, Complainant has given the Respondent no rights in respect of the disputed domain name. That, in itself, can be sufficient unless the Respondent can come within Paragraph 4(c) of STOP.
Here, the Respondent makes a rather lame attempt to come within Paragraph 4(c)(ii) of STOP i.e. that, before any notice of the dispute, Respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods and services. All that the Respondent has shown is that, in August 2001, he advertised a microscope for sale on the Internet. He called it a ‘Scientific Application Microscope.’ That may or may not be a recognized scientific categorization for the type of microscope he was wishing to sell. However, there is no evidence or documentation showing that:
(a) Respondent was conducting or proposing to conduct a business under the name of SAM and was not just selling one microscope in a one-off transaction.
(b) Respondent had made plans to acquire stock, market any business or set up premises. The Respondent’s explanation that SAM is an acronym for a business of dealing in microscopes, in the absence of hard evidence, is so disingenuous as to defy ready acceptance.
Nor is there any evidence that Respondent or any business of his is commonly known by the disputed domain name so as to come within paragraph 4(c)(iii) of STOP. The second criterion is therefore proved.
As to the bad faith criterion, Complainant faces the difficulty that ‘Sam’ is a well-known male forename (not a surname as Respondent claims). There have been WIPO decisions under UDRP where a Respondent has succeeded because a Panel was unable to infer that a common or generic name, the subject of a trademark registration, should have been known to the Respondent at the date of registration of the name. Sometimes, this inference cannot be drawn because the Respondent is based in a different, often distant, country from the country of the trademark registration. See Rusconi Editore S.p.A. v FreeView Publishing Inc., WIPO Case No. D2001-0875, <donna.com>, Gloria-Werke H. Schulte-Frankenfeld GmbH & Co v Internet Development Corporation and Gloria MacKenzie WIPO Case No. D2002-0056, <gloria.com>. In the latter case, Complainant gave no evidence of its presence in the United States, although it had a mark registered there. There is a similar difficulty here. Complainant has provided no evidence of the extent to which its registered marks are used and are known in the United States, Austria or indeed anywhere.
In Edmunds.com Inc. v Ult. Search Inc. WIPO Case No. D2001-1319, (<edmund.com>), the Panel was able to infer bad faith registration even when the Complainant’s U.S. trademark was not registered in the Respondent’s country. Respondent was a sophisticated operator in the domain name area. The Complainant’s activities in providing advice concerning automotive products on the Internet was well-known. The Panel considered that the Respondent should, in the circumstances, have searched the U.S. trademark register before registering the name. Its claim on a speculative basis that it would attract business by use of the domain the name ‘Edmund’ was not evidence of continuing good faith.
In the present case, the Respondent has clearly significant involvement with registering domain names, as is shown by his multiple registrations of common words – often with the letters separated by hyphens. His far-fetched explanation for the letters SAM outlined above, inclines the Panel to infer that Respondent’s main reason in registering the name was either to prevent Complainant from reflecting its mark in a corresponding domain name or else to sell or rent the disputed domain name for a profit.
The Panel considers that this is one of those cases where the Respondent, a US resident and domain name dealer, should have searched the U.S. Trademark Register before certifying to the Registrar that he was entitled to register the disputed domain name. How such a declaration can be categorized as other than reckless (i.e. made without knowing whether it be true or false) is difficult to see. This is particularly so because a registrant must be aware that he/she/it is registering the name under STOP with all such registration entails, e.g. the right of a trademark owner to challenge through the special procedure.
Under the heading ‘Your Representations’, a registrant is expressly told in the relevant document:
"It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights."
Obviously, a potential registrant cannot be expected to search all the trademark registers of the world. However, one would expect that a conscientious discharge of a registrant’s duty under STOP for a United States registrant could include a search of the US trademark register.
The UDRP decisions are not unanimous on such a requirement under that Policy. This is rightly so because each case is different. However, because of the special STOP regime, a greater burden is cast on a registrant for a .BIZ domain name. Failure to make reasonable enquiries that another’s intellectual property rights were not being infringed by the domain name registration (as in the present case), supports an inference of bad faith registration particularly when the Respondent is used to working with domain name dealers. This is important because the often short time between registration of the name and commencement of an administrative proceeding precludes the operation of other common strands of proof of bad faith registration – i.e. failure to develop a website, attempts to sell the name etc. and the other instances mentioned in Paragraph 4(b) of STOP.
Moreover, the enquiries that can be made by a registrant are much simpler under STOP. There is no room for value judgments as to whether the domain name is ‘confusingly similar’ to the mark. Under STOP, both name and mark have to be identical. Consequently, any search of the trademark register is straightforward.
The above considerations were discussed at some length in the decision of a distinguished panelist in STOP decision Gene Lugic Inc v Cho Kyu Bock (NAF Case No. FA0112000103042). The facts were different from the present case in certain respects. For instance, Complainant had provided evidence about the fame of its mark, in particular, in the country where the Respondent resided. The following quotations from that decision are expressly adopted by the present Panel with gratitude. They provide a useful guide to Panelists giving decisions under STOP:
"The only obligation a traditional ICANN/UDRP registrant has is to certify in the application for the domain name that the registrant does not believe that the registration and use of the domain name will infringe on the rights of others. This certification can be made, in good faith, even if there are known trademarks existing that use the same words as the domain, since there are many situations under the trademark laws of the world where more than one person can use the same words without infringing other registered marks. There are, of course, also cases where the registrant would be in bad faith in making this certification under the UDRP, such as where he or she knew that a registered mark existed which would likely be confused since the domain name and the registered mark were going to be used in substantially the same field of use or business, and there was a high likelihood of confusion, or where the domain name was being selected specifically because of its similarity to the registered trademark, such as by a competitor or potential competitor.
Under the STOP Policy, on the other hand, an anticipation of possible contests over the use of a domain that potentially infringed an existing trademark, the framers of the STOP Policy provided an elaborate procedure whereby the owners of registered marks could file an advance "IP Claim" with NeuLevel or other registrars indicating their trademark claim and the details concerning existing intellectual property rights, which IP Claim filing is later used as the basis for a temporary hold on any new .biz registration before accepting it, during the STOP period created by the Rules. Where such an IP Claim was filed, the registrar sends an email to any new applicant for the matching name specifically informing him or her that an existing IP Claim is on file and providing details as to the exact mark, the owner, and a description of the goods and services covered by the claimed mark, and complete contact information for the owner so that the .biz applicant could be under no illusions about the likelihood of a contest over the registration of the mark or who to contact if there were any question in his or her mind. If the .biz applicant nonetheless decides to go forward with the application, he or she has to do so under the STOP Rules after acknowledging this potential conflict, in spite of the potential for litigation, and with complete knowledge of the exact mark and the precise reasons there may be a conflict between the domain and the claimed mark. This situation is completely different than the original UDRP/ICANN rules, which contain no such provisions. This Notice may, in the proper case, almost preclude any possibility of registration in good faith of a domain name under facts and circumstances like the instant case.
Respondent has not alleged that, at the date of registration of the domain name, he was ignorant of the Complainant’s mark, as is often alleged by UDRP Respondents in his situation. He attached to his response a history of the Complainant, down-loaded from the internet, to show that SAM stands for ‘Slicers with Advanced Microelectronics’. In so doing, he unwittingly supplemented the Complainant’s almost non-existent evidence about its business. The brief outline of "Kuchler Corporate History" downloaded by Respondent shows that from small beginnings in Austria, the Complainant has supplied meat slicers in the USA since at least 1992 and that in 1998 it received an innovation award. Accordingly, Complainant’s U.S. registered mark was protecting a specialised yet significant product – i.e. meat slicers.
Respondent would have found this out had he made a trademark search before registering under the STOP. Yet, despite all the warnings, he represented to the Registrar that he was entitled to register the domain name. In all the circumstances, despite ‘Sam’ being a common personal appellation for males, the Panel infers bad faith registration.
For the above reasons, the Panel decides that:
(a) The Complainant has legitimate rights to the domain name;
(b) The Respondent has no legitimate rights to the domain name;
(c) The Respondent has registered the domain name in bad faith.
Accordingly, the Panel orders that the name <sam.biz> be transferred to the Complainant.
In accordance with Paragraphs 14(l)(ii)(1) of STOP and 15(e)(ii) of the STOP Rules, the Panel decides that no subsequent challenges under STOP against the disputed domain name shall be permitted.
Hon. Sir Ian Barker Q.C.
Dated: May 31, 2002