WIPO

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Eurotech S.p.A v. Resource Marketing

Case No. DBIZ2002-00026

 

1. The Parties

The Complainant is Eurotech S.p.A, a company incorporated under the laws of Italy, having its principal place of business at Via Linussio, 33020 Amaro (UD), Italy. The Complainantís authorized representative is Kivial s.a.s di Danelon Luca & C, Piazzale Cavedalis, 6/2, 33100 Udine, Italy.

The Respondent is Resource Marketing of 111 N. Benbow Rd, Greensboro, NC 27401, United States of America. The Respondentís authorized representative is Preston Wilson, Legal Team Member, Resource Marketing.

 

2. The Domain Name and Registrar

The disputed domain name is <eurotech.biz>.

The Registrar with which the disputed domain name is registered is Enom, Inc, 16771 N.E. 80th Street, Suite 100, Redmond, WA 98052, United States of America ("Registrar").

 

3. Procedural History

The Complaint was submitted for decision 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 Complaint was received by the WIPO Arbitration and Mediation Center ("the Center") via e-mail on April 24, 2002, and in hard copy on April 26, 2002.

On May 16, 2002, the Center sent a Notification of STOP Complaint and Commencement of Administrative Proceeding to the Respondent.

On June 5, 2002, a Response was received via email. The hard copy version was received on June 11, 2002.

On July 10, 2002, the Center transmitted a Notification of Appointment of Administrative Panel and Projected Decision Date to the parties.

In accordance with Paragraph 4(a) of the STOP Rules, the Center has verified that the Complaint satisfies the formal requirements of the STOP, the STOP Rules and the WIPO Supplemental STOP Rules. The Panel has reviewed the Complaint and is satisfied with the Centerís assessment that the Complaint satisfies the formal requirements of the STOP, the STOP Rules and the WIPO Supplemental STOP Rules.

 

4. Factual Background

The Complainant

The Complainant is an Italian company founded in 1992, which deals with computer design and development. It claims that it is one of the leaders in the field of embedded high performance digital systems for industrial, telecommunication and scientific applications.

The Complainant has registered the trademark EUROTECH in Italy and in the United States of America.

The Respondent

The Respondent states that it is an Internet based company which specializes in marketing products on the Internet. It acknowledges that one of its divisions, Domains Invest, registers and sells ".com" and ".net" domain names.

The Respondent registered the disputed domain name on March 27, 2002.

 

5. Partiesí Contentions

A. The Complainant

As noted earlier, the Complainant has registered the trademark EUROTECH as a mark in Italy and in the United States of America. It states that it is able to demonstrate use of the mark EUROTECH in the United States of America since 1997 and it annexed a copy of an invoice dated November 28, 1997, as evidence of this.

The Complainant claims that the mark EUROTECH is clearly associated with Europe. It alleges that any resident of the United States of America (such as the Respondent), has no right to register or use such a trademark as a domain name since such use could deceive and confuse visitors to the site as to the place of origin of whatever is contained on that site.

The Complainant also claims that the Respondent has no intention of using the disputed domain name for itself. The Complainant notes that the Respondent has registered the domain name <domainsinvest.net>. It alleges that the website at <domainsinvest.net> demonstrates that the Respondent is a company which carries on business as a trader of domain names.

The Respondentís website at <domainsinvest.net> states:

"Resource Marketing Inc.,  is in a unique situation with several years experience in the domain market. Our expertise comes from handling domain sales every weekÖ

We currently own and resale (sic) over 700 domain names and counting. It really is not the quantity of domains we own but the tremendous quality. Over 450 of these domains are three letter domains. These are considered the most valuable and sought after domains on the net. 

We are leaders.

We've found and acquired hundreds of domains and take this expertise to the next level. Investors invest in domains which Resource Marketing find and acquire. Resource Marketing then markets the domains and sale (sic) the domains at high prices. The average price we sale (sic) domains for is $500 dollars. Investors invest $100 per domain with a minimum investment of $1,000 (10 domain names)   Our experience means you are guaranteed a high 50% return on your investment in a short twelve month period. For example if you invest in 100 domains at $1000 you will receive $1500 back in a year. If you invest $10,000 you will receive $15,000 back in a year. You gain $5000 and we do all the work. 

Ö

The point is that we don't buy domains that are fictitious or "made up" words. We buy domains that have a very relevant and important use for businesses around the globe. Our collection of three letter domains proves that we are indeed going after only the most valuable domains.

You as an investor can rest assured that your money is going to a worthwhile place. Currently Resource Marketing is accepting investors offering a high 50% return on investment in a year. This offer will not last long. Once we obtain the money to purchase approximately 10,000 domain names we will not accept anymore investors at the high 50% return rate.

In the end you must realize domain names are extremely valuable, but only certain domains. Only certain people are capable of finding those certain domains. It is not because we are smarter than anyone in particular who is buying domains, but it is because we have the technology to find great names. We use software to scout out the best names and to jump on them like monkeys.

So come, join us. We have your seat at the table all warmed up. Click here to invest instantly "http://www.domainsinvest.net/newform.cfm"."

Based on this description of the Respondentís business activities, the Complainant alleges that the Respondentís intention in registering the disputed domain name was to resell it at a profit.

B. The Respondent

The Respondent claims that it "uses multiple domain names to offer multiple products and services." It states that in 2001, it created a division called Domains Invest to assist it to find and acquire domain names.

The Respondent acknowledges that Domains Invest also registers and resells <.net> and <.com> domain names. However, it states that because of the laws pertaining to <.biz> domain names, the Respondent does not allow Domains Invest to advertise <.biz> domain names for sale. It will only consider selling <.biz> domain names "if the interested party is willing to compensate it for its expenses in developing the domain."

The Respondent claims that in February 2002, it notified its division Domains Invest of its need for a domain name for an on-line portal. The portal was to be used to post information on new technical products developed by European businesses. It claims that as a result, Domains Invest identified <eurotech.biz> and the Respondent registered this domain name for its portal site.

The Respondent claims that it has an interest in the "emerging European economy" and that although it is an American based company, it does not limit itself to America. The Respondent claims that it is expanding its services to Japan and Europe and it points to the fact that it recently registered the domain name <eurofinance.biz> "for the purposes of working with European financial service providers."

The Respondent claimed that it expected to start advertising the portal by the middle of July and that it generally takes the Respondent around three months to develop business for a domain name before the domain is activated for consumer use.

The Respondent claims that the goods and services in respect of which the Complainantís EUROTECH trademarks are registered (hardware and software) are in no way similar to the products and services that will be offered by the Respondent. The Respondent acknowledges that it was fully aware of the Complainantís EUROTECH trademark registrations, but took the view that the services that it intended to offer that <eurotech.biz> would have no similarities to the services offered by the Complainant and that it was unlikely that consumers would confuse the disputed domain name as being related to a business operated by the Complainant.

The Respondent also notes that the Complainant does not own the domain names <eurotech.com>, <eurotech.net> or <eurotech.org>, which are all registered by third parties.

The Respondent annexed to its Response two documents which it alleged demonstrated preparations to use the disputed domain names. These documents comprised two screenshots (from a test site) entitled "Eurotech.biz European Technology". The first screenshot comprised a registration form for consumers interested in paying a certain sum each month to be kept up to date with the latest technology products from Europe. The second screenshot was a registration form inviting European businesses to pay to advertise their products and services via the <eurotech.biz> portal to "millions of consumers in and outside of Europe". Neither screenshot has ever been posted on a "live" website.

The Respondent also annexed a copy of an invoice in respect of "our incurred cost in having software developed for <eurotech.biz>". The invoice is dated April 12, 2002, and bears the statement:

"This invoice is for the work done by Tower Graphics & Printing for the online portal for the website eurotech.biz. You have 30 days to test the software and have us make any changes you feel are necessary.

We apprecate (sic) your business and look forward to working with you again."

This statement appears to have been "stickered" on to the invoice subsequent to the printing of the original invoice, as it is slightly out of alignment with the rest of the document.

 

6. Discussion and Panel Findings

Domain name is identical to a trademark or service mark in which the Complainant has rights

Under the STOP proceedings, a STOP Complaint may only be filed when the domain name in dispute is identical to a trademark or service mark for which a Complainant has registered an Intellectual Property IP claim form. Therefore, every STOP proceeding necessarily involves a domain name that is identical to a trademark or service mark in which a Complainant asserts rights. (The existence of the .biz generic top-level domain (gTLD) in the domain name is not a factor for purposes of determining that a domain name is not identical to the mark in which the Complainant asserts rights.)

The Panel finds that the disputed domain name is identical to the trademark "EUROTECH" in which the Complainant has demonstrated rights.

No rights or legitimate interests in respect of the domain name

Paragraph 4(c) of the STOP sets out certain circumstances that, in particular but without limitation, demonstrate the Respondentís rights or legitimate interest in the disputed domain names:

(i)that the Respondent is the owner or beneficiary of a trade or service mark that is identical to the disputed domain name; or

(ii)before any notice to the Respondent of the dispute, the Respondent has used or made demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(iii)that the Respondent, as an individual, business or other organization, has been commonly known by the disputed domain name, even if the Respondent has not acquired any trademark or service mark rights.

Of these, only paragraph 4(c)(ii) could potentially have any relevance to this situation.

The Respondent alleges that it has made demonstrable preparations to use the disputed domain name before any notice of the dispute. The Respondent claims to be "an Internet based company which specialises in marketing products on the Internet". However, there is no evidence that the Respondent markets any products (other than domain names) via the internet. This is consistent with the description of Resource Marketing, Inc.ís activities on the Respondentís website <domainsinvest.net>:

"Domain names are our business... period. We buy, sell, and trade. Everyday we talk with people around the globe from Japan to Germany, Korea to the UK. There's hardly a continent we haven't done business with. Resource Marketing has friends in Australia, pals in Canada, big clients in Europe, and domain buyers all over the United States. But we're also a local operation - in fact we pride ourselves upon being "the global company - with a local presence". Resource Marketing believes that regardless of geographical, linguistic or cultural factors all our customers should expect and receive the very finest service we can offer."

(emphasis added)

As noted above, the Respondent has annexed certain documents to substantiate its claim that it is developing the website <eurotech.biz> as a portal. These are:

(a) The screenshots from the test site; and

(b) An invoice from Tower Graphics & Printing.

The Panel has reservations about this evidence.

In respect of the draft webpages, the date is partially visible: it begins "6/5". This could be either May 6, 2002, or June 5, 2002. The domain name was only registered on March 27, 2002, and the Respondentís evidence was that its first step in notifying its division Domains Invest of the need for a domain name was in February 2002. The Complainant filed its Complaint on April 24, 2002. Therefore, it seems that whatever the date these screenshots were at least printed after notice to the Respondent of the Complaint. They cannot constitute evidence that the Respondent made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services before any notice to the Respondent of the dispute.

The Panel also has concerns about the invoice from Tower Graphics & Printing. The invoice is for 231 hours of "database development, web graphics and html design" and represents a significant sum. It is dated April 12, 2002 Ė just over two weeks after the disputed domain name was registered. In the Panelís view, it seems unlikely that this volume of work should have been undertaken within such a short period of time.

The invoice also states that Tower Graphics & Printing have undertaken 67 hours of work in respect of "web graphics" for the site. The draft screenshots supplied by the Respondent are extremely simple. There are no graphics to speak of. If sophisticated graphics had in fact been developed for the Respondent, the Panel would have expected these to have been supplied in support of the Response.

Further, the Panel has suspicions about the following statement which appears on the invoice:

"This invoice is for the work done by Tower Graphics & Printing for the online portal for the website eurotech.biz. You have 30 days to test the software and have us make any changes you feel are necessary.

We apprecate (sic) your business and look forward to working with you again."

This statement appears to have been added to the invoice subsequently Ė it is slightly out of alignment with the rest of the document, and it does not match the layout of the rest of the document. The Panel is not convinced that this statement formed part of the original invoice as rendered.

The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name.

Domain name was registered or is being used in bad faith

Under the STOP, Complainant must only show either bad faith registration or bad faith use, not both as are required under the UDRP. The STOP provides that:

"The following circumstances, in particular but without limitation, if found by the Panel to be present, shall be considered evidence of the registration or use of a domain name in bad faith:

i. Circumstances indicating that you have registered the 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 your documented out-of-pocket costs directly related to the domain name; or

ii . You have registered the domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name; or

iii. You have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

iv. By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."

This is not an exhaustive list of the circumstances that can amount to bad faith.

The Panel has found this aspect of the case difficult. It acknowledges that there are other parties who own the domain names <eurotech.com>, <eurotech.net> and <eurotech.org>. Furthermore, the Panel does not accept the Complainantís assertion that the trademark EUROTECH is clearly associated with Europe and therefore that any resident of the US has no right to register or use such a domain name. That is a superficial proposition which does not withstand any scrutiny. There is no principle of trademark law that requires that only Europeans use or register trademarks containing the word EURO.

However, overall the Panel considers that the trademark was registered in bad faith for the following reasons:

(a) The Respondent acknowledges that it is in the business of trading <.com> and <.net> domain names. Although it denies selling <.biz> domain names, as noted earlier, the Respondentís website states that its sole business is dealing in domain names:

"Domain names are our business Ö period. We buy, sell and trade."

In circumstances where this is the sole business of the Respondent and it has over 700 domain names, then the Respondent can be expected to be thoroughly familiar with the rules governing domain names including both the UDRP and the BIZ.STOP procedures. The Respondent can be expected to take considerable care not to register domain names in circumstances where there are IP rights holders and the circumstances of registration and use may amount to bad faith.

(b) Under the STOP procedure, the Respondent was specifically put on notice of the Complainantís trademarks. In electing to proceed, it did so with full knowledge that there was a claimant with IP rights in the trademark EUROTECH.

(c) The Panel has found the Respondentís own explanation for why it registered the domain name to be implausible. The Respondent claims that it has an interest in the "emerging European economy". The European economy can hardly be described as "emerging". Nor did the Respondent produce any evidence to verify this interest. The Respondentís claim that it was about to operate a portal, contradicts the statements on its website that "domain names are [its] business Ö period."

(d) The Respondentís website <domainsinvest.net> contains a number of statements as to the return on investment which can be obtained from investing in its business (of selling domain names). The Respondent states that it is "offering a high 50% return on investment in a year." This could only be achieved by selling domain names in excess of its out-of-pocket costs incurred in registering these.

As indicated above, the Panel does not accept the Respondentís contention that it has a legitimate right or interest in the disputed domain name. The Panel is prepared to find that the Respondentís intention in registering the disputed domain name was 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 its documented out-of-pocket costs.

The Panel therefore finds that the disputed domain name was registered in bad faith.

 

7.Decision

The Panel finds that:

(a) The disputed domain name is identical to a trademark or service mark in which the Complainant has rights;

(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(c) The disputed domain name was registered in bad faith.

The Panel therefore orders a transfer of the disputed domain name, <eurotech.biz>, to the Complainant.

 


 

A H Brown QC
Sole Panelist

Dated: July 23, 2002