WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Whirlpool Properties Inc. v. Palne Gyurkovits
Case No. DBIZ2002-00007
1. The Parties
The Complainant is Whirlpool Properties Inc., a corporation organised under the laws of the state of Michigan, United States of America with its principle place of business at 500 Renaissance Drive, Suite 101, St Joseph, MI 49085, United States of America.
The Respondent is Palne Gyurkovits of Tolna, Hungary.
2. The Domain Name and Registrar
The domain name is <whirlpool.biz> and the registrar is Dotster.com.
3. Procedural History
The electronic version of the Complaint was filed on April 10, 2002, in accordance with the Start-up Trademark Opposition Policy ("STOP") for .BIZ, adopted by NeuLevel, Inc. and approved by Internet Corporation for Assigned Names and Numbers ("ICANN") on May 11, 2001, in accordance with the Rules for Start-up Trademark Opposition Policy for .BIZ, adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001 ("STOP Rules"), and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .BIZ ("WIPO Supplemental STOP Rules"). The hardcopy of the Complaint was received on April 17, 2002. An amendment to the Complaint was received by the WIPO Arbitration and Mediation Center ("Center") on April 15, 2002.
In accordance with Paragraph 4(a) of the STOP Rules, the Center verified that the Complaint satisfies the formal requirements of the STOP Policy, the STOP Rules and the WIPO Supplemental STOP Rules.
Payment in the required amount was received by the Center.
On April 29, 2002, the Center formally notified the Respondent by post/courier and email of the Complaint and of the commencement of this administrative proceedings and sent copies to the Complainant, the Registrar and ICANN.
On March 16, Mr. Jozsef Pal (who claims to be a director of the entity "DOMAIX Kft") emailed NeuLevel requesting that the registrant details be changed to "Jozsef Pal, organisation: DOMAIX Kft". That same day NeuLevel emailed Mr. Jozsef Pal advising that the registrant details could be changed if he is awarded the domain name (by the Panel). The Panel notes that the email address used by Mr. Jozsef Pal is the same as the email address for the Respondent.
On April 30, 2002, and May 10, 2002, the Center received emails from Jozsef Pal, stating that the domain name had been registered in the name of the Respondent in error, and that the correct name of the registrant is "Domaix Kft". Mr. Jozsef Pal states that Enikoe Palne Gyurkovits (the Respondent) is "one of the owners" of Domaix Kft and was responsible for applying for registration of the domain name.
Mr. Jozsef Pal indicated that the Response to the Complaint would be filed in the name of Domaix Kft as Respondent.
The Center advised Mr. Jozsef Pal on May 9, 2002 that the Center would continue with the domain name dispute based on the registrants details as they appear in the NeuLevel WHOIS database.
A Response was filed on May 16, 2002. The Center notes that the Response names "DOMAIX Plc. (Palne Gyurkovits Eniko)" as the respondent, and that the address provided is the same as that for the Respondent, Palne Gyurkovits.
On June 5, 2002 the Center contacted John Swinson and requested that he act as Panelist in this case. Mr. Swinson accepted to act as Panelist in this case and submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
On June 12, 2002, the parties were notified that Mr. Swinson had been appointed as the Sole Panelist.
The language of the proceeding was English.
The Panel is satisfied that the Complaint was filed in accordance with the requirements of the STOP Rules and WIPO Supplemental STOP Rules; payment was properly made; the Panel agrees with the Centerís assessment concerning the Complaintís compliance with the formal requirements; the Complaint was properly notified to the Respondent in accordance with paragraph 2(a) of the STOP Rules; an administratively deficient Response was filed; the administrative Panel was properly constituted.
4. Factual Background
The Complainant is the owner of the registered trademark "WHIRLPOOL".
The Respondent has registered the domain name <whirlpool.biz>.
5. Partiesí Contentions
The entire "factual and legal grounds" section of the Complainantís submissions is as follows:
"Whirlpool Properties, Inc., or its related companies, is the owner of the WHIRLPOOL trademark, service mark and trade name worldwide for various home appliances, portable appliances and related services. Specifically, Whirlpool Properties, Inc. is the owner of the WHIRLPOOL trademark registration in the USA, R/N 0581480, dated October 27, 1953. The application submitted for the <whirlpool.biz>domain name by Whirlpool Properties is based upon the named trademark registration.
The domain name <whirlpool.biz>is identical to all registrations for WHIRLPOOL owned worldwide by the Complainant. Upon information and belief, the Respondent does not own any trademark or service mark registrations for WHIRLPOOL in the world and has no rights in the mark WHIRLPOOL. Therefore, the Respondent should be considered as having no rights or legitimate interests in respect of the domain name that is the subject of this Complaint. Thus, the domain name <whirlpool.biz>was registered in bad faith.
Relevant documentation supporting the claim of ownership of the WHIRLPOOL trademark worldwide, is provided as Annex 3."
The supporting documentation shows that the Complainant is the owner of a U.S. registered trademark for "WHIRLPOOL", with a claimed date of first use prior to 1906. The supporting documentation also includes a trademark status report that lists trademark registrations for "WHIRLPOOL" in many countries, including Turkey and Hungry.
The Respondent has not filed a Response in accordance with the STOP Rules for the reasons set out below.
A Response was filed by "Domaix PLC. (Palne Gyurkovits Eniko)" which in summary stated that "whirlpool" is a generic word for a jacuzzi or bath. The Response states that a "Microjet Whirlpool System/Whirlpool bath" is "OUR PRODUCT".
This Response also states that "We are preparing the commercial use of the domain name <whirlpool.biz> and state, that the products we will offer will differ from Complainantís products." The Response also states that Domaix PLC is not a competitor of the Complainant. The Response denies that the disputed domain name was registered in bad faith.
As discussed below, the Panel has decided to disregard the Response submitted by DOMAIX Plc.
6. Discussion and Findings
Preliminary Procedural Issue - Whether the Response should be considered?
The first issue is whether the Panel will consider the administratively deficient Response of May 16, 2002. Under the STOP Rules, the Panel has the discretion of determining the admissibility, relevance, materiality and weight of the evidence. See STOP Rules 10(a) and 10(d).
A written Response is submitted by "DOMAIX PLC (Palne Gyurkovits Eniko)" or "DOMAIX PLC (Palne Gyurkovits Eniko is one of the founder/owner)". However, the Response is not signed by the Respondent, but is signed by Mr. Jozsef Pal, on behalf of DOMAIX PLC. The Response has a rubber stamp impression after the signature line that names "DOMAIX PLC." Mr. Pal is listed as the "Respondentís representative" and has the same address as Domaix PLC and Palne Gyurkovits Enikoís address as listed in the WHOIS database.
STOP Rule 5(b)(vi), requires the Response to be signed by the Respondent or its authorized representative. It is not clear that Palne Gyurkovits Eniko has appointed DOMAIX PLC. or Mr. Jozsef Pal as an authorised representative.
In Talk City Inc. v. Michael Robertson WIPO Case No. D2000-0009, the Panel stated:
"After considering Respondentís February 16 e-mail, the Panel has concluded that it will not accord any weight to the facts alleged in it. That is because Respondentís e-mail did not contain any certification that the information contained in the e-mail was, Ďto the best of Respondentís knowledge complete and accurate.í Rule 5(b)(viii). Without the benefit of this certification, it is not appropriate to accept the factual assertions contained in the e-mail. Although the Panel is granted discretion to consider late Responses, it is not granted similar discretion to waive the Rule 5(b)(viii) certification requirement. Moreover, given that we still are in the early stages of the ICANN uniform dispute resolution process, it is arguably even more important than usual to insist on strict compliance with the Rules. Inconsistent approaches to the Rules will only cause a loss in confidence in the Uniform Domain Name Dispute Resolution Policy (the ĎPolicyí) and the Rules promulgated by ICANN."
STOP Rule 10(d) gives the Panel the discretion to determine the admissibility of evidence. The Response filed by DOMAIX PLC could possibly be considered as evidence rather than a Response, and the Panel could admit into evidence and consider this Response pursuant to Rule 10(d).
There is no tangible evidence in the Response filed by DOMAIX PLC that Palne Gyurkovits Eniko is associated with DOMAIX PLC. There is no exhibited assignment of the disputed domain name to DOMAIX PLC. There is no document showing Palne Gyurkovits Eniko as an owner of DOMAIX PLC.
In this case, the Panel has determined that it will decide this case without reference to the Response filed by DOMAIX PLC and Jozsef Pal because the relationship between the Respondent, Jozsef Pal and DOMAIX PLC is not clear, and there is no evidence that the Respondent has appointed either Jozsef Pal or DOMAIX PLC. as the authorised representative of the Respondent.
The Center informed Mr. Jozsef Pal that the Center would proceed with the Complaint on the basis of the parties as named in the NeuLevel WHOIS database. The Respondent chose not to file and sign a Response in the name of Palne Gyurkovits. The Panel does not consider the Respondentís non-compliance with the administrative requirements to be exceptional circumstances warranting special consideration.
In order to qualify for a remedy, the Complainant must prove each of the three elements set out in Paragraph 4(a) of the STOP Policy, as approved by ICANN on May 11, 2001, namely:
(a) the domain name is identical to a trademark or service mark in which the complainant has rights; and
(b) the respondent has no rights or legitimate interests in respect of the domain name; and
(c) the domain name has been registered or is being used in bad faith.
The onus of proving these elements is that of the Complainant.
6.1 Identical to a trademark or service mark
The Panel finds that the Complainant is the owner of the registered trademark WHIRLPOOL and that the domain name is identical to the WHIRLPOOL trademark, apart from the generic ".biz" identifier. The addition of the generic identifier ".biz" does nothing to deflect the impact of the viewer of the "WHIRLPOOL" mark.
The Complainant contends that the Respondent has no legitimate interest in the use of the domain name as the Respondent does not own any trademark or service mark registrations for WHIRLPOOL and has no rights in the WHIRLPOOL mark. This is accepted by the Panel.
There is no apparent association between the disputed domain name and Respondentís name (Palne Gyurkovits Eniko) or even DOMAIX PLC. or Jozsef Pal.
Even if the Response filed by DOMAIX PLC was considered by the Panel, the Respondent would fail on this point. The Response that was filed by DOMAIX PLC includes vague statements that it is selling or planning to sell spa products. The Response that was filed by DOMAIX PLC does not include any evidence of use, or demonstrable preparations to use, the disputed domain name.
Accordingly, the Panel finds that the Respondent does not satisfy any element of Paragraph 4(c) of the STOP Policy.
In view of the finding in relation to bad faith discussed below, the Panel does not consider it necessary to decide whether use of a generic word by a person selling a product with that characteristic is a right or legitimate interest within the meaning of Paragraph 4(a)(ii) of the STOP Policy.
6.3 Bad Faith
The Complainant contends that the Respondent registered and is using the domain name in bad faith as the Respondent does not own any trademark or service mark registrations for WHIRLPOOL and has no rights in the WHIRLPOOL mark. This is the only ground that the Complainant is relying on to show bad faith.
The disputed domain name has not been used.
The Complainant provided no evidence of any correspondence or communication between the Complainant and the Respondent.
It is possible that the Respondent registered the domain name for a purpose completely unrelated to the Complainantís trademark or to the Complainantís business. The Complainant has not presented any evidence of the Respondentís knowledge or likely knowledge of the Complainantís business or trademark.
The Panel has reviewed the helpful Gene Logic decision (Gene Logic Inc v. Cho Kyu Bock, Claim Number: FA0112000103042), which discusses notice and bad faith. The Panel does not believe that the principles in the Gene Logic decision relating to bad faith have relevance where the disputed domain name is a generic word and where there is no evidence that the Complainant and the Respondent are competitors or potential competitors.
In Credit Suisse Group on behalf of Winterthur Insurance v. Pal-Ex Kft, Claim Number: FA0112000102971, the NAF Panel stated:
"Based on the fame of the WINTERTHUR mark in the European Community, Respondent was on notice in respect to Complainant's mark. Registration of the domain name despite this fact is evidence of bad faith. See Samsonite Corp. v. Colony Holding, FA 94313 Nat. Arb. Forum (April 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration); see also Victoria's Secret v. Hardin, FA 96694 Nat Arb. Forum (March 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constitutes bad faith); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., WIPO Case No. D2000-1221 (December 4, 2000) (finding that the "domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests Ďopportunistic bad faithí"). The Panel finds that STOP ∂ 4(a)(iii) has been satisfied."
Even though no evidence was provided by the Complainant that "WHIRLPOOL" is a well-known brand in many countries, based on the Panelís limited knowledge of washing machines, the Panel is prepared to consider "WHIRLPOOL" to be a well-known and long standing brand in the washing machine field. This does not change the result in this case, because "WHIRLPOOL" is also a generic word and there is no shown association or connection between the Respondent and washing machines. In short, the Winterthur Insurance decision has limited application where the disputed domain name is a generic word.
Contrary to the Complainantís weak assertion, the fact that the Respondent does not own any trademark or service mark registrations for WHIRLPOOL is not on its own enough to show bad faith on the part of the Respondent.
There is no evidence that the Respondent registered the domain name for any of the purposes set out in paragraph 4(b) of the STOP Policy. The Complainant has not provided sufficient evidence of any of the conduct listed as evidence of bad faith in paragraph 4(b) of the STOP Policy, nor has it provided sufficient evidence of any other conduct showing bad faith on the Respondentís part for the purpose of paragraph 4(a) of the STOP Policy. Domain Bank, Inc. v Sonic Co., Ltd WIPO Case No. DBIZ2001-00014
The Panel decides that there is no evidence of bad faith. The Panel is unable to draw the required conclusions where no evidence has been presented on this issue, where the disputed domain name comprises a generic word, where the disputed domain name has not been used, and where the Complainant and Respondent are located in different countries. Domain Bank, Inc. v Sonic Co., Ltd WIPO Case No. DBIZ2001-00014
For the reasons set forth above, the Panel decides that the Complaint fails.
Dated: June 26, 2002