WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
METRO SB - Handels AG v. Legal & Services
Case No. DBIZ2002-00011
1. The Parties
1.1 The Complainant is METRO SB Ė Handels AG, of Neuhofstrasse 4, CH-6341 Baar, Switzerland.
1.2 The Respondent is Legal & Services of 2201 Fern Street, 2 C Apartment A, New Orleans, Louisiana 70118, United States of America.
2. The Domain Name and Registrar
2.1 The domain name in issue is <active.biz> (the "Domain Name").
2.2 The Registrar is Intercosmos Media Group d/b/a directNIC.com, New Orleans, Louisiana 70130, United States of America.
3. Procedural History
3.1 The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by e-mail on April 16, 2002, and in hard copy on April 24, 2002.
3.2 On April 22, 2002, the Center sent a Deficiency Notification to the Complainant. The Complainantís response to the Deficiency Notification was received on April 23, 2002. On May 24, 2002, the Center sent a second Deficiency Notification to the Complainant. The Complainantís response to this Deficiency Notification was received on May 29, 2002. On June 19, 2002, the Center requested the Complainant to amend its Complaint on the basis of a technical deficiency. An amendment to the Complaint was received on June 27, 2002.
3.3 The Center has verified that the Complaint satisfies the formal requirements of the Start-up Trademark Opposition Policy (the "STOP"), the Rules for Start-up Trademark Opposition Policy ("STOP Rules") and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .biz ("WIPO Supplemental STOP Rules") and that payment was properly made. The Administrative Panel (the "Panel") is satisfied that this is the case.
3.4 On July 15, 2002, a Notification of STOP Complaint and Commencement of Administrative Proceeding was sent to the Respondent advising that any response must be filed by August 5, 2002.
3.5 On August 7, 2002, the Respondent was sent a Notification of Default, advising that the Respondent had failed to file a response within the allotted time.
3.6 On August 20, 2002, a Notification of Appointment of Administrative Panel and Projected Decision Date (the "Appointment Notification") was sent to the Complainant and the Respondent. The Appointment Notification informed the parties that the Panel would be comprised of a single Panelist, Nick Gardner, and advised that the decision should be forwarded to the Center by September 3, 2002.
4. Factual Background
4.1 It is convenient to state at this stage that the Panel has been provided with almost no useful information at all. The Complaint as originally filed comprised little more than a print out of the standard pro forma complaint form with a few details inserted and important sections not completed at all. After notification of default by the Center (see above) the Complainant has sought to correct these deficiencies but has done so in an extremely perfunctory manner with little useful information being provided as to the substance of the Complaint. No Response has been filed.
4.2 The Complainant identifies itself as an affiliate of METRO AG, the latter being based in Düsseldorf, Germany.
4.3 The Complainant claims to be the owner of several trademark registrations for the word "ACTIVE".
4.4 The Complainant provided evidence that it is the registered proprietor in Germany and in Austria, Benelux, France and Italy (under the Madrid Protocol), of a device mark which comprises of the word "ACTIVE" and a triangular shape to the left of the word.
4.5 The Complainant does not provide any further useful information regarding its business activities or how it has used the term "ACTIVE" or the extent of its reputation in the term.
4.6 According to a WHOIS search, the Respondent registered the Domain Name with Intercosmos Media Group on March 27, 2002.
5. The Partiesí Contentions
A. The Complainant
5.1 The substance of the Complaint is short. The Complainant's contentions may be summarised as follows.
5.2 The Complainant has rights in the word "ACTIVE" by virtue of its trademark registrations, of which the above trademark registrations are examples.
5.3 The Complainant asserts that the Complainantís trademark (the Complainant does not specify which one) is well known, both in Germany and throughout the world, particularly for its sports equipment. No evidence is provided to support this assertion.
5.4 The Complainant contends that the goods sold under "the famous trademark logo" have a "very good reputation". The Complainant does not provide any further evidence as to the claimed reputation.
5.5 The Domain Name is identical to trademarks in which the Complainant has rights.
5.6 The Respondent has no rights in the word "ACTIVE". The Complainant asserts this on the basis that it says the Respondent has no registered trademarks of the word "ACTIVE".
5.7 The Respondent has no right or legitimate interest in the Domain Name. In this respect, the Complainant alleges that there is no connection between the Respondentís business and the Domain Name. No details are provided as to the Respondentís business activities.
5.8 The Respondent registered and is using the Domain Name in bad faith. In this respect, the Complainant relies upon the Respondentís use of an e mail account (this appears in relation to the administrative contact in the WHOIS search) at "www.homeville.com" which the Complainant asserts contains sexual content.
5.9 The Respondent registered the Domain Name to:
(i) "disrupt the business of a competitor"; and/or
(ii) "attract commercial gain from the Complainantís famous trademark"; and/or
(iii) "prevent the Complainant as the owner of the trademark(s) from reflecting the mark in a corresponding domain name".
5.10 No response has been received from the Respondent.
6. Due Process
6.1 Where, as in this case, a Respondent does not submit a Response and the file does not contain any communication from the Respondent, the rules of due process require the Panel to verify, to the extent possible, that the Respondent is aware of the present proceedings. The Panel is satisfied, on the basis of the file documents, that this is the case.
6.2 A hard copy of the Complaint was sent by the Center to the Respondentís address as mentioned in paragraph 1, by courier and by email on July 15, 2002.
7. Discussion and Findings
7.1 This whole Complaint seems to the Panel to be misconceived Ė the Complainant appears to be under the impression that it has to do no more than pay the relevant fee, fill in a form initiating the Complaint and, providing it can show some sort of trademark right, it will automatically be entitled to transfer of the Domain Name. That is incorrect. The Complainant has to show, by credible evidence, on the balance of probabilities, that it satisfies the applicable requirements of the STOP. It seems to have made only the most perfunctory attempt to do so. To the extent that matters have been raised by the Complainant for consideration the Panel considers them in this section.
7.2 Paragraph 15(a) of the STOP Rules provides that the Panel is to "decide a Complaint on the basis of the statements and documents submitted in accordance with the STOP, these Rules and any rules and principles of law that it deems applicable".
7.3 Paragraph 4(a) of the STOP requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:
(i) the domain name is identical to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered or is being used in bad faith.
7.4 For the Complainant to succeed, the Complainant has to show that the Domain Name (absent the domain suffix) is identical to a trademark or service mark in which the Complainant has rights.
7.5 The protected mark under the trademark registrations put forward by the Complainant, is not simply the word "ACTIVE". The mark is a device mark comprising a stylised triangle with a circle "cut out" of it, with written underneath the word "ACTIVE". The further submissions by the Complainant that it has some sort of rights or reputation in the word "ACTIVE", which is an ordinary English word, are so vague and unsubstantiated as to be incapable of assessment.
7.6 The question of the extent to which a device mark which incorporates a text string can be said to be "identical" to a domain name (which inevitably has to be a text string) has been considered in a number of cases (see DBIZ2002-00116 for a discussion of these issues). In the present case the Panel is doubtful that the Domain Name can be said to be identical to the device mark relied upon by the Complainant, which isthe only trademark in which the Complainant has established it has rights. However in view of the Panelís findings below it is not necessary to determine this issue conclusively.
Respondentís rights or legitimate interests in respect of the Domain Name
7.7 There is no evidence before the Panel to demonstrate that the Respondent lacks a right or legitimate interest to register the Domain Name, which is an ordinary English word. The fact that the Complainant owns a device mark in Europe which includes such a word, combined with vague and unsubstantiated allegations that the Complainant has a reputation in the word does not establish the Respondent has no rights or legitimate interests in the word. In principle, where an ordinary English word such as "active" is chosen as a domain name, and no evidence is provided as to how or why that name was chosen, it falls upon the Complainant to show at least some sort of affirmative case as to why the Respondent does not have any right to use such a word. An assertion that the Respondent does not have the right because it does not have any corresponding trademark is misconceived Ė ownership of a trademark is not a prerequisite to being entitled to use an ordinary word as a domain name.
7.8 The Complainant simply fails to show any case at all that the Domain Name was registered in bad faith.
7.9 In support of the Complainantís bad faith assertion, the Complainant refers to the Respondent having an e mail account at a website at "www.homeville.com". In fact the e mail account shown on the WHOIS search is "firstname.lastname@example.org". It is far from clear to the panel what relevance a web site at that address would have to matters concerning a completely different domain name. In any event no evidence as to the content of that web site is given. This allegation seems to be irrelevant and is not remotely close to the bad faith envisaged by the STOP.
8.1 In light of the above findings, the Panelís decision is set out below.
8.2 So far as paragraph 4(a)(i) of the STOP is concerned, the Panel is doubtful that the Domain Name is identical to a trademark or service mark in which the Complainant has rights Ė however it is not necessary to determine this conclusively given the Panelís findings under paragraphs 4(a)(ii) and (iii) below;
8.3 So far as paragraph 4(a)(ii) of the STOP is concerned, the Complainant has not established that the Respondent does not have rights to and/or a legitimate interest in respect of the Domain Name which is an ordinary English word.
8.4 So far as paragraph 4(a)(iii) of the STOP is concerned, the Complainant has failed to establish that the Domain Name was registered in bad faith or that it is subsequently being used in bad faith.
8.5 The Panel therefore declines to find that the Domain Name should be transferred.
8.6 Accordingly, the Panel dismisses the Complaint.
Dated: September 3, 2002