WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Brisk Tabor a.s. v. Unilever Plc.
Case No. DBIZ2002-00025
1. The Parties
The Complainant in this administrative proceeding is Brisk Tabor a.s., a joint stock company established in the Czech Republic at the Regional Court at Ceske, Budejovice, 390 02 Tabor having a contact address at Vozicka 2068 390 02, Tabor, Czech Republic.
The Respondent is Unilever Plc., having an address at Unilever House, Blackfriars, London EC4P 4BQ, United Kingdom.
2. The Domain Name and Registrar
The domain name in dispute is <brisk.biz>.
The Registrar with which said domain name is registered is Virtual Internet, PLC (hereinafter "the Registrar"), United Kingdom.
3. Procedural History
On April 24, 2002, the Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by e-mail. The hard copy of the Complaint was received by the Center on April 26, 2002.
In accordance with paragraph 4(a) of the Rules for Start-up Trademark Opposition Policy for .BIZ (the "STOP Rules"), the Center reviewed the Complaint to verify that the Complaint satisfied the formal requirements of the Start-up Trademark Opposition Policy for .BIZ (the "STOP"), the STOP Rules and the WIPO Supplemental STOP Rules and that payment in the required amount had been paid by the Complainant.
On May 10, 2002, the Center sent a STOP Complaint Deficiency Notification to the Complainant by e-mail. Said Deficiency Notification inter alia notified the Complainant of the following formal deficiencies in the Complaint:-
- that the Complaint did not describe the grounds on which it was made, as required by STOP Rules, paragraph 3 ( c)(ix);
- that the Complainant had not indicated that it owns or has rights in a trademark;
- that the Complainant had not shown that the domain name in issue is identical to the Complainantís trademark;
- that the Complainant did not provide an indication that the Respondent has no rights or legitimate interests in using the domain name in question;
- that the Complainant had not indicated how it alleged that the registration of the domain name by the Respondent was made in bad faith, nor had it demonstrated the basis on which it alleged that the domain name had been used or is being used in bad faith.
On May 15, 2002, the Complainant made further submissions and in the course of further e-mail correspondence with the Center the Complainant made further brief submissions by e-mail on June 10, 2002.
On June 19, 2002, the Center sent a Notification of STOP Complaint and Commencement of Administrative Proceeding to the Respondent by post/courier (with enclosures), facsimile (Complaint without attachment) and by e-mail (Complaint without attachments). A copy of said Notification was sent to the authorized representative of the Complainant by e-mail. Further copies of said Notification were sent to the Internet Corporation for Assigned Names and Numbers ("ICANN") and to the Registrar by e-mail.
Said Notification of Complaint and Commencement of Administrative Proceeding inter alia advised the Respondent that this Administrative Proceeding had commenced on June 19, 2002, and that the Respondent was required to submit a Response to the Center on or before July 9, 2002.
No Response was received from the Respondent.
On July 10, 2002, the Center sent a Notification of Respondent Default to the Respondent by e-mail. A copy of said Notification of Respondent Default was sent to the Complainant by e-mail.
On July 29, 2002, after having received a Statement of Acceptance and Declaration of Impartiality from him in accordance with paragraph 7 of the STOP Rules, the Center proceeded to appoint James Bridgeman as the Administrative Panel. A Notification of Appointment of Administrative Panel and Projected Decision Date was sent to the Parties by e-mail. On the same day the case file was transmitted to the Administrative Panel.
In the view of the Administrative Panel, proper procedures were followed and this Administrative Panel was properly constituted.
4. Factual Background
The Complainant manufactures spark and glow plugs for the automotive industry under the trademark BRISK. It has registered the trademark BRISK in a number of jurisdictions under the Madrid Agreement, including Algeria, China, Hungary, Germany, Cuba, Italy, Portugal, Poland, Switzerland, Slovenia, Croatia, Yugoslavia, Austria, Egypt, Liechtenstein, Korea (North), Belgium, Netherlands, Luxembourg, Spain, Romania, Slovakia, Bulgaria, France, Russian Federation, Ukraine, Khazakstan, Belorussia, Macedonia, Bosnia-Herzegovina. The Complainant is the owner of further registrations in the Czech Republic, Finland, Slovak Republic, United Kingdom, United States of America, Israel and Chile.
The Complainant has been using the domain name <brisk.cz> since July 3, 1997.
5. Partiesí Contentions
The Complainant submits that this dispute is properly within the scope of the STOP and that the Respondent is required to submit to this Administrative Proceeding in accordance with paragraph 4(a) of the STOP on the grounds that:
i. the domain name <brisk.biz> is identical to a trademark or service mark in which the Complainant has rights; and
ii. the Respondent has no rights or legitimate interests in respect of the said domain name; and
iii. the said domain name was registered or is being used in bad faith.
In support of these allegations, the Complainant submits that it is the owner of the above referenced registered trademarks. The Complainant submits that BRISK is its trademark and is incorporated into its company name.
The Complainant submits that the Respondent has no rights or legitimate interests in the said domain name. The Complainant submits that the Respondent has numerous domain names but does not use the word BRISK as a second level domain name in any of them. In support of this argument the Complainant has set out a list of 35 ccTLD and gTLD domain names, which the Complainant submits are owned by the Respondent, none of which incorporate the word BRISK.
The Complainant submits that it has been using the <brisk.cz> domain name since July 3, 1997.
The Complainant submits that it aims to strengthen its image and promote the BRISK trademark on its products throughout the world.
In the Complaint, on the issue of bad faith, the Complainant submits that the Respondent does not use the trademark BRISK on its www sites and in particular on its site at "http://www.unilever.com". The Complainant does not refer to the BRISK trademark in the text for any of its products.
The Complainant submits that, having obtained the registration of the <brisk.biz> domain name, the Respondent intends to use the publicís knowledge of the Complainantís trademark to obtain a commercial profit.
The Complainant submits that it will be a great disservice to its business interests if this Administrative Panel should rule against its claim.
No Response was filed by the Respondent.
6. Discussion and Findings
In accordance with paragraph 4(a) of the STOP Policy, the Complainant must prove that:
(i) the domain name in dispute is identical to a trademark or service mark in which the Complainant has rights; and
(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.
On May 10, 2002, the Respondent was notified by the Center that the Complainant as filed had a number of formal deficiencies in the Complaint. The deficiencies were both formal and substantive.
While the Complainant has provided substantial evidence to establish its ownership of a large portfolio of registrations for the BRISK trademark, it has provided only brief submissions in support of its case that the Respondent has no rights or legitimate interests in the said domain name and on the issue of bad faith.
On the other hand, the Respondent has failed to make any submissions whatsoever.
Even though there was no Response filed in these Administrative Proceedings, the onus nonetheless rests on the Complainant to satisfy each of the above mentioned elements in paragraph 4(a) of the STOP.
In Rodale, Inc. v. Resource Marketing, WIPO Case No. DBIZ2002-00156, (July 7, 2002) the panel referred to the UDRP case EAuto, L.L.C. v. EAuto Parts, WIPO Case No. D2000-0096, (April 9, 2000) when considering the obligation on the administrative panel under the STOP and stated that the STOP requires the panel to satisfy itself that the facts support a finding for a complainant on each of the three factors listed in STOP Paragraph 4(a) supra. It was further stated that the duty of the panel to carefully scour the record is all the stronger when a Respondent has either defaulted or is appearing pro se, without legal counsel.
Paragraph 15(a) of the STOP Rules requires this Administrative Panel to decide this Complaint on the basis of the statements and documents submitted and in accordance with the STOP, the STOP Rules and any rules or principles of law that it deems applicable. As no statements or documents were submitted on behalf of the Respondent, this Administrative Panel is restricted to considering the evidence and submissions filed by the Complainant.
It is clear from the exchange of e-mail correspondence between the Center and the Complainant relating to the formal deficiencies in the Complaint, that there were some difficulties, at least initially arising from the fact that the procedure was in the English language. This Administrative Panel has taken this into account in considering the submissions made by the Complainant.
The Complainants Rights and the Domain Name
The Complainant has submitted copies of its numerous trademark registrations for the BRISK trademark.
The domain name <brisk.biz> is clearly identical to the Complainantís registered trademarks.
The Complainant has satisfied the first element of the test in paragraph 4(a) of STOP.
The Respondents Rights or Legitimate Interests in the Domain Name
In a number of decisions under the UDRP, panels have accepted that because there is a difficulty in proving a negative, once the Complainant makes the allegation that the Respondent has no rights or legitimate interests in a domain name the onus of proof on that element of the test shifts to the Respondent.
This Administrative Panel is willing to take the same approach under the STOP Policy and to find that the Complainant has satisfied the second element of the test in paragraph 4(a) of STOP since the Respondent has failed to file any Response in this Administrative Proceeding.
In formulating its submissions, the Complainant has not specifically alleged any of the grounds of bad faith listed in paragraph 4 (b) of STOP. These grounds are non-exhaustive and are expressly stated to be "without limitation".
The essence of the Complainantís argument is that the Respondent intends to use the publicís knowledge of the Complainantís trademark to obtain a commercial profit. This is essentially an allegation that any future use of the domain name by the Respondent would be an act described in paragraph 4(b)(iv) of the STOP viz. that "by using a domain name, [the Respondent has] intentionally attempted to attract for commercial gain, Internet users to [the Respondentís] web site or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation or endorsement of [the Complainantís] web site or location or of a product or service on [the Respondentís] web site or location."
In support of this allegation the Complainant has submitted that the Respondent does not use the BRISK trademark and has no rights or legitimate interests in the <brisk.biz> domain name. The Complainant on the other hand, has an established reputation in the use of the BRISK trademark and has had an established presence on the Internet since July 3, 1997, using the <brisk.cz> ccTLD.
It is clear that the Complainant has a substantial portfolio of trademark registrations and that it has made substantial investment in protecting this trademark in a large number of jurisdictions throughout the world including the United Kingdom, where the Respondent is established. In the view of this Administrative Panel, the Respondent had both actual and constructive knowledge of the Complainantís rights and reputation in the BRISK trademark when it applied to register the <brisk.biz> domain name.
The Complainant has had an established presence on the Internet for more than five years at the <brisk.cz> ccTLD address. Presumably, if the Respondent undertook any searches against the BRISK name prior to its application to register the said domain name, it would have been alerted to the existence of the Complainant and the Complainantís www site.
There is no evidence before this Administrative Panel that the Respondent has any right or legitimate interests in said domain name or any right to use the BRISK trademark.
On the basis of the only evidence before this Administrative Panel, it would appear that any use of the said domain name by anyone other than the Complainant, would take unfair advantage of the Complainantís established reputation in its trademarks in numerous jurisdictions including the United Kingdom, where the Respondent is established. The Respondent would therefore profit from the Complainantís reputation as alleged by the Complainant. In the view of this Administrative Panel the registration of a domain name with such an intention would amount to bad faith.
This allegation has not been refuted by the Respondent and furthermore this Administrative Panel may take an inference from the fact that the Respondent has not filed a Response in this Administrative Proceeding.
This Administrative Panel considers that, in the absence of any Response or explanation from the Respondent, the Complainant has satisfied the burden of proof and has established on the balance of probabilities that the Respondent has registered said domain name in bad faith.
With specific reference to paragraph 4(i) of the STOP and paragraph 15 of the STOP Rules this Administrative Panel finds that the Complainant has established that the domain name <brisk.biz> is identical to a trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of said domain name and said domain name has been registered in bad faith.
This Administrative Panel hereby directs that the registration of said <brisk.biz> domain name shall be transferred to the Complainant.
Dated: August 12, 2002