WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TDC A/S v. Hiran Costa Verges
Case No. DBIZ2002-00015
1. The Parties
The Complainant is TDC A/S, a Danish Corporation with its principal place of business in Copenhagen, Denmark. The Complainant is represented by Elizabeth Atkins and Darryn Geliebter, of Duane Morris LLP, of New York City, United States of America.
The Respondent is Hiran Costa Verges, of Santiago, Chile. The Respondent represents himself in this proceeding.
2. The Domain Name and Registrar
The domain name at issue ("the domain name) is <tdc.biz>. The domain name is registered with Dotster Inc., of Washington, United States of America ("the Registrar").
3. Procedural History
The Complaint was submitted by the Complainant on April 19, 2002 (email), and April 22, 2002 (hard copy), following advice given by the .BIZ Registry to the Complainant on April 6, 2002, that a domain name had been registered matching the domain name contained in the Complainantís IP claim (No 5479). The Registry advised that the domain name had been placed on a 30-day Registry "hold", beginning on April 8, 2002.
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 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").
The STOP is incorporated into the Respondentís registration agreement with the Registrar, and the Respondent is therefore obliged to submit to and participate in a mandatory administrative proceeding in the event of a Complaint being filed concerning the domain name.
Having verified that the Complaint satisfied the formal requirements of the STOP and the STOP Rules, the Center, on April 29, 2002, transmitted by email a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent. A copy of this document was also emailed to the Registrar and to ICANN.
The Notification of Complaint and Commencement of Administrative Proceeding was sent to the Respondent by post/courier (with enclosures), and by email (without attachments). The Notification of Complaint and Commencement of Administrative Proceeding advised the Respondent that the last day for submitting a Response was May 19, 2002.
The Center dispatched with the Notification of Complaint and Commencement of Administrative Proceeding, a copy of the Complaint. The hard copies of the documents (including the annexures to the Complaint) were sent by post/courier to the address for the Respondent provided in the Neulevel Whois database. However it appears that the Respondent had changed addresses Ė in any event, Federal Express returned the hard copy of the Complaint to the Center on May 15, 2002, with advice that the given mailing address was incorrect. (The Complainantís attempt to serve a hard copy of its Complaint at the address provided by the Respondent when registering the domain name, had also been unsuccessful).
However, the Respondent did receive an email copy of the Complaint, and he communicated with the Center on May 16, 2002. Following an exchange of emails with the Center, the Respondent notified the Center on May 18, 2002 that his address had changed. He provided a new physical address, and sent a Response by email to the Center within the time period stipulated in the Notification of Complaint and Commencement of Administrative Proceeding. That Response made it clear that the Respondent had not seen the annexures to the Complaint.
The Respondent did not submit a hard copy of his Response. He advised the Center that he did not have money to send the hard copy by courier or pay the expensive fax fees that he stated were normally charged in Chile.
The Response contained allegations of reverse domain name hijacking.
By emails dated May 23 and May 29, 2002 the Complainant requested leave to file a Reply. The Center advised the Complainant that it would be a matter for the Administrative Panel, when appointed, to decide whether or not a reply would be permitted.
The Center then invited Warwick Alexander Smith, of Auckland, New Zealand, to serve as Panelist in the case. Warwick Alexander Smith having duly completed a form of acceptance and a Declaration of Impartiality and Independence, the Center on June 12, 2002, appointed him as the administrative Panel in this administrative proceeding. The Panel considers that he has been properly appointed under the STOP Rules and the WIPO Supplemental STOP Rules.
The Center then forwarded to the Panel, by courier, the relevant submissions and the record.
Before dealing with the Complainantís request for leave to file a reply, the Panel came to the view that it would be appropriate for the Respondent to have copies of the annexures to the Complaint, and to file a brief Supplemental Statement limited strictly to the material contained in the exhibits to the Complaint. The Panel directed the Center to provide the Respondent with fax copies of the exhibits to the Complaint, and requested the Respondent, under Rule 12 of the STOP Rules, to provide a Supplemental Statement (limited to comment on those exhibits) by June 28, 2002. The Complainantís Request to file a Reply, and a Request by the Respondent (contained in his Response) for production of certain documents said to be in the possession of the Complainant, were deferred for further consideration following receipt of the Supplemental Statement. There being exceptional circumstances in terms of Rule 15(b) of the STOP Rules, the Panel extended the time for forwarding its decision.
The Respondent sought clarification of the Panelís Request for a Supplemental Statement, and that clarification was provided by the Panel, by Addendum to the Request under Rule 12 of the STOP Rules. The Respondent provided the Supplemental Statement, in the form requested, on June 27, 2002.
The Panel then made further Requests under Rule 12 of the STOP Rules, as follows:
1. The Complainant to file a Reply by July 8, 2002.
2. The Complainant to provide copies of communications passing between the Complainant (or any agent of the Complainant) and the Respondent before the commencement of the Administrative Proceeding, touching on the question of the sale (or possible sale) of the domain name by the Respondent. The Panel requested the Complainant to provide any such documents by July 8, 2002.
3. The Respondent to file an Answer to the Complainantís Reply, limited strictly to matters contained in the Reply, by July 12, 2002.
The time for the Panel to provide its decision was further extended to July 17, 2002.
The Complainantís authorized representatives duly submitted the Reply, and copies of the correspondence requested, on July 3, 2002. The Respondent submitted his Answer to the Reply, on July 10, 2002. The Panel has considered all of the documents filed by the parties.
The Panel 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.
No other legal proceedings relating to the domain name have been notified to the Panel.
The Complaint shows that the Complainant was provided by the Registry Operator with a ticket number, with first priority to commence a proceeding under the STOP and the STOP Rules. There are no other IP claimants in the queue.
4. Factual Background
The Complainant is a large telecommunications company with its principal office in Denmark. It has carried on business since November 14, 1990, originally under the name Tele Danmark Communications A/S, and, since May 7, 2001, under the name TDC A/S.
The Complainant has produced a translation of an extract from the Danish Register of Trademarks, showing that it is the owner of a Danish trademark registration for TDC. The application for registration of TDC was made on November 30, 2000, and it appears from the trademark certificate produced by the Complainant that the registration date was January 22, 2001. The Danish registration of TDC covers a wide variety of goods and services in international Classes 9, 16, 35, 36, 37, 38, 41, and 42, including services generally related to the telecommunications industry (e.g., services in Class 38).
The Complainant has also made applications to register TDC as a goods and service mark in both the United States (application filed May 29, 2001) and the European Community (application filed December 15, 2000). The United States application seeks registration of TDC in Classes 9, 16, 35, 36, 37, 38, 41, and 42, and refers to the Complainantís bona fide intention to use the mark in commerce between Denmark and the United States in connection with the goods and services mentioned. A right of priority based on the Danish application of November 30, 2000, has been sought in both the United States and EC applications. The European Community application seeks registration of the mark in the same classes mentioned above.
There is no suggestion that the Complainant has been involved in trade or commerce in Chile, where the Respondent resides, or in the United States, where one of the TDC trademarks was filed.
The Complainant says that, prior to filing the Complaint, it made inquiries through its agent in local business databases, which showed that Hiran Costa Verges did not exist as, or operate any business under, a name using TDC in any manner. The Complainant also says that its agent found no evidence of a website or other online presence being established which would use the domain name, nor any evidence of advertising, promotion or display to the public of the domain name.
The Complainant asserted in its Complaint that the Respondent demanded an unspecified amount in excess of US$15,000 when asked to transfer the domain name. The Complainant did not produce any details of its pre-complaint investigations, and it was the Respondent who first produced copies of the emails which passed between the Complainantís agent and himself. The Respondent did not have copies of all of these emails Ė those that he did not produce were produced by the Complainant in response to a request from the Panel to do so.
The email exchange commenced with an email from the Complainantís agent, Mr. Frank Kelly, dated April 9, 2002. In that email, Mr. Kelly stated that he was interested in acquiring the domain name. He asked if it would be available for purchase, and if so, at what price.
The Respondent replied the same day advising that, "due to the various requests we have had, I would appreciate it if you could send us an offer for the domain name".
The next step was an email from Mr. Kelly to the Respondent on April 10, 2002, advising that Mr. Kelly had unsuccessfully sought to access a website at the domain name. He asked whether the Respondent was planning on using it, and what the Respondentís business was. He also asked how much the Respondent wanted for the name.
The Respondent replied briefly on April 10, 2002, advising that the domain name was not for sale.
Later that day, Mr. Kelly sent an email inquiring about the apparent change of heart, and stating that he wanted the name and simply needed some additional information before he could place a value on it.
The final email in the sequence was from the Respondent to Mr. Kelly, again on April 10, 2002. The Respondent explained that he had advised Mr. Kelly that the domain name was not for sale, simply because, "We have had many requests since yesterday to acquire the domain name. Some more serious that others, so I hope you understand that when people asking more than I want to tell them, I simply cut off communications until I know theyíre serious about buying the domain name." The Respondent went on to advise that, so far, the highest offer received for the domain name had been US$15,000.
The Respondent says that he is the co-owner (with his brother) of a website at www.ringzone.net. The Registrant of this website is indeed a Mr. Rodrigo Verges, with an address and contact details in Belgium. (It is apparent from the record in the case that the <ringzone.net> website has at least as much connection with Mr. Rodrigo Verges and Belgium, as it does with the Respondent and Chile). This website is in the English language, and it is dedicated to selling and promoting the works of the author JR Tolkien. The Respondent asserts that the <ringzone.net> website is also known as the "Tolkien Distribution Channel". He says that he and his brother have been conducting business since 1999 over the internet, and that the ringzone website is known worldwide as one of the top Tolkien-related movie-news and merchandise providers.
The Respondent says that the domain name was registered to conduct the business part of the <ringzone.net> website, "in a more professional manner, in a gTLD that better reflects the nature of the content ie, selling Tolkien-related items through and in unison with <ringzone.net>, but with a shorter and more attractive alternative for our thousands of monthly customers seeking to buy Tolkien-related merchandise over the web".
The Respondent says that the phrase "Tolkien Distribution Channel" has been the header of the web page at www.ringzone.net for almost 3 years. He says that since this information has been available to the Panel and to the Complainant since May 19, 2002, (the date of the Respondentís Response), he is sure that both the Panel and the Complainant have had sufficient time to thoroughly examine the website, and must have seen the header, which contains the phrase. However, the Respondent does not explain how an examination of the website after May 19, 2002, could assist in proving that the website had that header prior to the Respondent becoming aware of the present dispute. Nor is it explained why not all of the web pages at www.ringzone.net have the expression "Tolkien Distribution Channel" in the header (the pages for "Shop", "Interactive" and "Boards" do not have that expression in their respective headers).
The Respondent says that he has expended a very substantial amount of time and money in developing the "Tolkien Distribution Channel", and that he has "long made preparations" to use the domain name for the business part of the website at <ringzone.net>. He says that he has not been able to use the domain name for that purpose, solely because of the "hold" procedures which have been invoked under the STOP.
The Respondent refers to the Argentine economic crisis "and other events", and says that the whole region including Chile has become economically unstable. As the Respondent put it in his answer to the Complaintís reply: "Most people [are] very eager to sell their precious property to be able to survive. The Respondent is one those people." With that background, the Respondent acknowledges that he felt tempted by Mr. Kellyís offer, but, because of the time and money he and his brother had invested in the project, he felt reluctant to make a decision "and sent Mr. Frank Kelly an email asking if he could send an offer for the domain". The Respondent says that, had he been offered a significant amount of money to cover past expenses and to allow him to secure a stable future, he could have then discussed it with his brother, to see if it might not have been better to sell the domain name to Mr. Kelly to pay for debts and for the high hosting fees paid for the website at <ringzone.net>.
In his Answer to the Complainantís Reply, the Respondent acknowledges that he "came up with the idea" to tell Mr. Frank Kelly that a previous offer of $15,000 USD had been received. That way, he says he could be sure that Mr. Frank Kelly was serious about buying the domain name, at a price that seemed tempting enough to let the domain name go, however under the amount the Respondent and his brother had spent so far for www.ringzone.net or the Tolkien Distribution Channel or TDC.
As the Respondent puts it in his answer to the Complainantís Reply, he wanted to make sure that if he sold the domain name, it would be at a price that could solve his financial problems and those of his family. The (apparently false) reference to having received a previous offer of US$15,000 was made by the Respondent as a business strategy to push up the price for the domain name.
The Respondent made no mention of this process in any of the documents filed by him in this administrative proceeding. On the contrary, near the top of page 7 of his Response, he stated that he did not know until he received a copy of the Complaint (on April 23, 2002) that the company TDC A/S even existed.
Annexed to his Response, the Respondent produced a copy of an email exchange between himself and the Registrar. This exchange appears to be dated May 5, 2002 (when the Respondent clearly had notice of the Complaint). The Respondent asked the Registrar for an explanation as to why the 3 three-letter domains he had successfully registered (the domain name, <amr.biz>, <msp.biz>) were not appearing in his domains list. The Registrar responded that the domains might be under dispute due to trademark issues, and that it did not look as if Dotser had the authority to enter them into the database. The Respondent was invited to contact firstname.lastname@example.org for further information.
5. The Partiesí Contentions
1. The domain name is identical to the Complainantís trademark TDC, and is confusingly similar to that trademark.
2. The Respondent registered the domain name with knowledge that it had no legitimate right to the use of the domain name. The Respondent acted in bad faith, both in registering the domain name and in using the domain name.
3. The Complainantís agentís inquiries did not reveal any business conducted by the Respondent under the name TDC or any other name with the initials or incorporating TDC.
4. The email exchanges between Mr. Kelly and the Respondent are evidence that the Respondent registered the domain name primarily for the purpose of selling it to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondentís documented out-of-pocket costs directly related to the domain name (STOP, paragraph 4(b)(i)),
5. Panelists in a number of ICANN arbitration panel decisions have based decisions to transfer ownership of domain names, on a likelihood of confusion.
6. To establish that he enjoys a right or legitimate interest in the domain name, the Respondent would have to prove one or more of the circumstances listed in paragraph 4(c) of the STOP. The Respondent has not met that test. Specifically, the Respondentís evidence of subjective plans to use the domain name on the website at <ringzone.net>, do not rise to the level of activity necessary to meet the "legitimate interest" test.
7. The Respondentís refusal to provide the Complainantís agent with any information about his business interest in the domain name, is evidence of his lack of any right or legitimate interest in the domain name.
8. The Respondentís registration of the domain name alone constitutes bad faith use. The Complainant refers to the well-known WIPO decision in Telstra Corp Limited v Nuclear Marshmallows (Case No D2000-0003), in support of the contention that passive holding can in certain circumstances constitute bad faith use of a domain name. The Respondentís failure to develop a website or other online presence (or show that one is in the process of being established) which would use the domain name, coupled with his offer to sell the domain name at a figure far in excess of registration costs, is evidence of bad faith registration and use.
9. Generally, the Complainant submits that an offer to sell, combined with the absence of any legitimate use of the domain name, is sufficient to establish registration and use in bad faith.
1. In his Supplemental Statement and in his Answer to the Complainantís Reply, the Respondent acknowledges that the Complainant is the owner of the registered trademark TDC in Denmark, and that it is the proprietor of the application for that mark which is pending in the European Community. However, the Respondent challenges the status of the Complainantís application to register the mark in the United States, saying that it has been the subject of a "final refusal" decision, and that the Complainantís only recourse is to appeal that decision.
2. The Danish trademark registration is limited in its sphere of influence to Denmark.
3. The mark TDC is not distinctive Ė it is comprised of three common letters in the English language, and it has not acquired any secondary world-wide meaning.
4. Third party use of TDC is widespread. Dozens of firms are known throughout the world under the name TDC (referring to the WIPO case D2001-0388 Ė GA Modafine SA v Mani.Com).
5. The Complainant has itself registered several other .BIZ names, including <tdc-as.biz>. The domain name is not vital for the Complainantís business.
6. For the reasons outlined under the heading "Factual Background", the Respondent, as co-owner with his brother of the website <ringzone.net>, has a right or legitimate interest in the domain name.
7. The Respondent has conducted business and is known in relation to the TDC acronym.
8. There will be no confusion between the business operated through the website at www.ringzone.net and the Complainantís business.
9. The Complainant does not conduct business in Latin America, or in Chile, which is where the Respondent resides. The Respondent could not reasonably be expected to know of the existence of the Complainantís trademark.
10. The Respondent never actually offered the domain name to Mr. Kelly. It was Mr. Kelly who attempted to convince the Respondent to sell the domain name, knowing that the difficult economic circumstances in Chile would provide a temptation for the Respondent to sell.
11. Because Mr. Kelly never disclosed his association with the Complainant, there is no evidence of the Respondent having offered to sell the domain name to the Complainant or to a competitor of the Complainant (paragraph 4(b)(i) of the STOP).
12. The sum of US$15,000 was very low, and under the real out-of-pocket costs of the design and hosting fees paid by the Respondent and his brother over the last 2 years, in "preparing this project".
13. The Respondent declined to disclose personal information about his business to Mr. Kelly, because of his perception that the information was sensitive, and that disclosure could result in (unspecified) disastrous consequences.
14. Although the Respondent had not in fact received any earlier offer of US$15,000 as suggested in his email to Mr. Kelly, the false reference to that earlier offer was a legitimate business tactic designed to force the price (of the domain name) up.
15. The Respondentís failure to develop a website or other online presence linked to the domain name, is caused entirely by the operation of the STOP, and in particular the fact that the domain name is effectively placed on hold until this administrative proceeding has been determined.
16. The Complainant attempted to deceive the Respondent, by concealing the true identity of its agent, and attempted to deceive the Panel in failing to disclose in its Complaint that the "offer" of US$15,000 was made by the Respondent to a person who, as far as the Respondent was concerned, had no connection with the Complainant.
17. Searches conducted on the Internet using search engines, have located numerous instances where the words "Tolkien", "distribution", and "channel" have been used in the same site.
6. Discussion and Findings
Under STOP, a Complaint can only be filed by an "IP Claimant" who has 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. If there are multiple claimants, Neulevel determines priority orders on a randomized basis (STOP Paragraph 4(l)(i)). Only the priority claimant is 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 the 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 no other IP claim.
Under STOP, the Complainant must show:
(a) That the domain name is identical to a trademark or service mark in which the Complainant has rights (Paragraph 4(a)(i)).
(b) That the Respondent has no rights or legitimate interests in respect of the domain name (Paragraph 4(a)(ii).
(c) That the domain name has been registered or is being 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 Dispute Resolution Policy of ICANN (the UDRP) can be invoked by a Respondent. The specific circumstances available to a Respondent to demonstrate a "right or legitimate interest" are:
(i) [The Respondent is] the owner or beneficiary of a trade or service mark that is identical to the domain name; or
(ii) Before any notice to [the Respondent] of the dispute, [the Respondentís] 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
(iii) [The Respondent] (as an individual, business, or other organization) has been commonly known by the domain name, even if [the Respondent has] acquired no trademark or service mark rights. (STOP, Paragraph 4(c)).
It is to be noted that this is not an exhaustive description of the circumstances which might constitute rights or legitimate interests in a domain name.
Likewise, the examples of bad faith set out in Paragraph 4(b) of the UDRP can be invoked by a Complainant, although there are some differences under the corresponding Paragraph 4(b) of the STOP (the most important of which is that, under the STOP, it is not necessary for a Panel to find that the Respondent has engaged in a pattern of such behavior before the Panel can find that a domain name was registered in order to prevent a Complainant from reflecting its mark in a corresponding domain name).
Because the STOP and the STOP Rules come into play shortly after registration of a domain name, the "bad faith" issue is normally judged as at the time of registration. Because of the "lock" placed on the use of the domain name under the STOP, there is no scope under the STOP for drawing inferences from a Respondentís failure to develop a website linked to the domain name.
The Panel now addresses the three matters the Complainant must establish under Paragraph 4(a) of the STOP.
Paragraph 4(a)(i) of the STOP Ė Domain Name Identical to Trademark or Service Mark in which Complainant has rights
The Complainant has proved that it is the registered proprietor of the trademark TDC in Denmark. The Respondent accepts that that is so.
That trademark is clearly identical to the domain name, and that is all the Complainant needs to do to prove this part of its Complaint. Whether or not the Complainant has any significant reputation for its goods or services beyond Denmark, or whether the Respondent could have been expected to know of the Complainantís registered trademark, are not matters having relevance to this part of the Complaint. To the extent that those matters might be relevant at all, they would be relevant to the questions of whether the Respondent has a right or legitimate interest in the domain name, and whether the Respondent has registered or used the domain name in bad faith.
Paragraph 4(a)(ii) of the STOP Ė Whether the Respondent has a right or legitimate interest in the domain name
A number of cases decided under the UDRP have taken the view that, once a Complainant has established that it has a trademark which is identical to the domain name in issue, and that it has not conferred any rights on the Respondent, the evidentiary burden of proof shifts to the Respondent to show that it comes within one of the situations described in paragraph 4(c) of the Policy, or that it otherwise enjoys a right or has a legitimate interest in the domain name.
In this case, it is clear that the Complainant has not conferred any rights on the Respondent. Looking at the totality of the evidence, including the Respondentís Response, Supplemental Statement, and Answer to the Complainantís Reply, the Panel finds that the Respondent does not enjoy any right, or have any legitimate interest, in the domain name. The Panel reaches that conclusion for the following reasons.
1. The Respondent has produced no evidence whatsoever of any use of (or demonstrable preparations to use) the expression "TDC" in connection with a bona fide offering of goods or services, before the present dispute arose. He says that he or his business has been known by the name TDC, but no documents dating from a time before the dispute became known to him have been produced to corroborate that contention. It appears that the longer expression "Tolkien Distribution Channel" is now used in the header of some of the web pages at " www.ringzone.net, but there is no evidence of prior use of the shorter expression "TDC". Nor is it clear when the longer expression "Tolkien Distribution Channel" was first included in the headers on some of the web pages (but not all) at www.ringzone.net.
2. The Respondent has not produced any documents showing that, prior to his knowledge of the present dispute, plans were already in existence to develop a website or other online presence linked to the domain name. It appears that the website at www.ringzone.net is run by the Respondent based in Chile and his brother based in Belgium, so one might have expected that there would have been some written communications between the co-owners if such plans had existed. If there had been, it is hard to see why the Respondent would not have produced them.
3. The Respondent is plainly well aware of the procedures provided by the .BIZ Registry under the IP claim service. Under the procedures adopted by the .BIZ Registry, the Respondent must have been informed of the Complainant and the nature of its IP Claim, at some stage well before his domain name was placed "on hold" on April 8, 2002. Yet the Respondent says that he had never heard of the Complainant before he received Notice of the Complaint on April 23, 2002.
4. The Respondent goes to some lengths to say that he, in Chile, could not be expected to have any knowledge of the Complainant and its Danish trademark. And yet his own evidence makes it quite clear that the business operated by the Respondent with his brother is run through an English-language website which appears to have connections with Belgium as well as with the Respondent in Chile.
5. The Respondentís talk of an economic crisis in Latin America, and his own alleged financial difficulties, seem to the Panel to be exaggerated. The Respondent claims to have difficulty in affording the costs of fax or courier transmission of documents from Chile to the Center, and yet his evidence is that the website he operates with his brother is visited by "thousands" of customers. His own evidence shows that he has also made recent applications for two other three-letter domain names in the .BIZ gTLD.
6. The Panel cannot accept the Respondentís explanations of the email exchange with Mr. Frank Kelly. First, the email exchanges occurred on April 9 and 10, 2002, at a time when the domain name registration had already been placed "on hold" by the .BIZ Registry (that occurred as from April 8, 2002). Paragraph 8 of the STOP provides that a domain name registrant may not transfer a domain name registration that is subject to the Policy to another holder, until all pending or prospective challenges pursuant to the Policy have been resolved. The Panel finds that, on the balance of probabilities, the Respondent was aware on April 9 and 10 that the domain name registration was "on hold" and that it was not open to him to transfer the domain name to Mr. Kelly. Instead of telling Mr. Kelly that the domain name could not be transferred pending the resolution of any administrative proceedings lodged pursuant to the Complainantís IP claim, the Respondent dealt with Mr. Kellyís approach by asking him to make an offer for the domain name. While the Respondent clearly became suspicious when Mr. Kelly asked him what his plans were and what he was doing, the Respondent later impliedly revived his invitation by volunteering that he had obtained an offer of US$15,000 for the domain name.
7. It is not at all clear to the Panel why the Respondent could not have told Mr. Kelly in the email exchange that the domain name was intended to be used in conjunction with the well-known "Tolkien Distribution Channel", if that were in fact the case. The Panel does not understand the Respondentís references to possibly "disastrous" consequences of such a disclosure, or the references to his personal safety in his Answer to the Complainantís Reply. If the Respondent was already well-known under the name "TDC", it is not apparent to the Panel what downside there would have been in giving that information to Mr. Kelly. The Respondent did publicly announce (on the website at www.ringzone.net at some time before his Response was submitted on May 19, 2002), that he and his brother were about to establish a website at <tdc.biz>. The Respondent has not informed the Panel when that advice was first placed on the website, but at least it establishes that, within a relatively short timeframe after the exchange of emails with Mr. Kelly, the Respondent and his brother had no qualms about announcing their intention to launch a website linked to <tdc.biz>.
The Respondent refers to the decision in WIPO case D2001-0388 (GA Modafine SA v. Mani.com), in support of the proposition that the initials "TDC" were in common use worldwide long before the Complainant obtained registration of TDC as a trademark in Denmark. However, the Modafine SA v Mani.com case does not help the Respondent Ė it was a case where the Respondent demonstrated to the Panel that he was doing no more than using his own surname, and that he had been doing so for a substantial period prior to the dispute. The respondent in that case was commonly known by the name "Mani", and he was fully entitled to use that name on the Internet. In this case, the Respondent has shown no similar connection with the name "TDC".
For the foregoing reasons, the Panel is satisfied that the Complainant has shown that the Respondent has no right or legitimate interest in the domain name.
Paragraph 4(a)(iii) of the STOP Ė Domain name registered or being used in bad faith
The Complainant in its Complaint invokes paragraph 4(b)(i) of the STOP, as a ground on which the Panel might find that the domain name has been registered or is being used in bad faith.
Paragraph 4(b)(i) applies where a Registrant has registered a domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Registrantís documented out-of-pocket costs directly related to the domain name.
The Complainant does not expressly invoke any of the bad faith circumstances described in subparagraphs 4(b)(ii), (iii) or (iv) of the STOP, but it does plead generally that the Respondentís mere act of registering the domain name, and its passive holding of the domain name since registration, amount to bad faith registration or use under the STOP.
Paragraph 4(b)(i) of the STOP is directed to the Respondentís state of mind at the time of registration of the domain name. It will be recalled that, under the IP claims service procedures, when an IP claim has been filed which consists of an alphanumeric string which is identical to a domain name sought by an applicant, the applicant is given notice of the IP claim, and the nature of that claim. The applicant is then given the option of electing to abandon the application for registration, or to proceed with it in the knowledge that an administrative proceeding such as the present proceeding might ensue.
In the Panelís view, the likelihood is that the Respondent knew of the Complainant and its IP claim, and made a conscious decision to proceed with the application for registration in the face of that IP claim.
With that background, the Panel turns to consider the email exchange between Mr. Kelly and the Respondent. First, it does not matter for the purposes of paragraph 4(b)(i) of the Policy whether or not the Respondentís language is to be categorized as an "offer" to sell. The real issue is what the exchange of emails tells the Panel about the Respondentís intentions at the time he registered the domain name. In this case, it is clear that, after the initial approach, the Respondent invited Mr. Kelly to make an offer for the domain name. His subsequent reference to having received an offer of US$15,000 for the domain name can only be construed as an indication to Mr. Kelly that the Respondent was interested in receiving an offer, but that it would need to be higher than US$15,000.
The Respondent has not produced any evidence of his own financial circumstances, let alone those of his partner in the business. In those circumstances the Panel is not disposed to accept the Respondentís explanation that his difficult financial circumstances left him with no choice but to give serious consideration to selling the domain name. It does not sit easily with the Respondentís references in his Response to "our thousands of monthly customers seeking to buy Tolkien-related merchandise over the web", and the Respondentís business being "known worldwide as one of the top Tolkien-related movie, news and merchandise providers". There is no evidence from the Respondent that his financial circumstances were any worse on April 9 and 10, 2002 than they were when he applied to register the domain name. If he was contemplating a sale at the latter point in time, it seems likely that he would also have had the prospect of selling on his mind at the time of registration.
Nor does the Panel accept the Respondentís contention that the US$15,000 represented no more than the actual out-of-pocket costs directly related to the domain name. The Respondent appears to be including in his calculations the costs of hosting the website at www.ringzone.net. Those costs cannot be taken into account, because the documented out-of-pocket costs which are relevant to paragraph 4(b)(i) of the STOP are only those related to the domain name.
The only issue under paragraph 4(b)(i) which the Respondent reasonably raises, is the absence of evidence from the Complainant that the offer was made to the Complainant or to a competitor of the Complainant. However, the Panel has already found that, as a matter of probability, the Respondent was aware of the Complainant and its IP claim, at the time the Respondent elected to complete registration of the domain name. The Respondent would also have known of the "on hold" procedures adopted under the STOP. He may or may not have appreciated that, pending the resolution of any dispute proceedings, the only party to whom the domain name could be transferred would be the Complainant in those proceedings.
It is apparent from the Respondentís own evidence that he is aware that the Complainant is the owner of a number of other domain names including <tdc.com> and <tdc-as.biz>. It is clear to the Panel that the Respondent is a relatively sophisticated internet user, who runs an apparently thriving business through the website at www.ringzone.net, and who has made application for at least two other .BIZ domain names. It seems improbable to the Panel that the Respondent would not have ascertained who held the registration for <tdc.com>, before he proceeded with his application to register the domain name.
At the end of the day the Panel cannot say with certainty that the Respondentís intention when he applied to register the domain name, was to sell it to the Complainant or to a competitor of the Complainant. However, paragraph 4(b)(i) of the STOP, and the other subparagraphs of paragraph 4(b), are only examples of situations which will amount to bad faith registration or use. They are not an exhaustive list, and, in the circumstances of this case, the Panel finds that the combination of circumstances listed above as indicating the Respondentís lack of any right or legitimate interest in the domain name, and what the Panel regards as the likelihood that the Respondent registered the domain name for the primary purpose of attracting offers for it from others who had a greater claim to it than he, are sufficient to evidence bad faith registration of the domain name by the Respondent.
The Panel therefore finds that the Complainant has proved the three elements required to be established under paragraph 4(a) of the STOP. The domain name must therefore be transferred to the Complainant.
Reverse Domain Name Hijacking
It follows that the Panel does not find any basis for the Respondentís allegations of reverse domain name hijacking. It is not disputed that the Complainant is the bona fide holder of a trademark registration for the domain name in Denmark, and it does not appear to be disputed by the Respondent that any investigations the Complainant carried out to try to locate any business the Respondent may have been carrying on under the name "TDC" would not have yielded any result. That is probably sufficient to deal with the Respondentís allegations of reverse domain name hijacking.
However, the Respondent has placed considerable emphasis on the Complainantís alleged deceit in having its agent approach the Respondent without disclosing the identity of his principal, and its alleged impropriety in not putting the emails between Mr. Kelly and the Respondent before the Panel. While the Panel can appreciate the Respondentís irritation at these matters, and the Panel was itself somewhat surprised that the Complainant did not produce the email exchanges at the outset, the Panel does not consider that those matters could constitute reverse domain name hijacking. The use of an agent to conduct anonymous inquiries is not unusual in cases such as this, and the Complainant was well aware throughout that the Respondent could put the email exchanges before the Panel if he so wished.
For completeness, the Panel also refers to the status of the Complainantís American application to register the TDC mark. Of course the American application was not an essential part of the Complainantís case Ė the Danish registration of TDC was sufficient for the Complainant to satisfy the requirements of subparagraph 4(a)(i) of the STOP, and the focus thereafter is on the Respondentís actions. That said, the Panel finds itself without sufficient information to make any decision relating to the American application: the Respondent says that the application has been finally refused, whereas the Complainant says that it has until October 2002 to negotiate certain amendments to the application with the Trademarks Examiner. There is not sufficient information for the Panel to determine that issue, and no need for it to do so.
The allegation of reverse domain name hijacking is rejected.
For all the foregoing reasons, the Panel decides that the domain name <tdc.biz> registered by the Respondent is identical to the trademark and service mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name, and that the Respondent has registered the domain name in bad faith. Accordingly, pursuant to paragraph 4(i) of the STOP, the Panel requires that the registration of the domain name <tdc.biz> be transferred to the Complainant.
Warwick Alexander Smith
Dated: July 17, 2002