WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vector Software Datenverarbeitung GesmbH v ArtRampage.com
Case No. DBIZ2002-00033
1. The Parties
The Complainant is Vector Software Datenverarbeitung GesmbH, an Austrian corporation with its principal place of business in Vienna, Austria. The Complainantís authorized representative is its Managing Director, Dr Daniel Reischer.
The Respondent is ArtRampage.com, of Richmond, California, United States of America. The Respondent is represented by Mr. John Chui, of the same address as the Respondent.
2. The Domain Name and Registrar
The domain name at issue is <vector.biz> ("the domain name"). The domain name is registered with R & K Global Business Services, Inc. of Little Rock, Arkansas, United States of America ("the Registrar"). The domain name was registered by the Respondent on March 27, 2002.
3. Procedural History
The Complaint was received on April 25, 2002 (by email) by the W.I.P.O. Arbitration and Mediation Center ("the Center"). The hard copy of the Complaint was received by the Center on April 29, 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"), 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 May 14, 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 advised the Respondent that a Response to the Complaint was required by June 3, 2002. A written Response was duly received by the Center on June 2, 2002.
The Center invited Warwick Alexander Smith, of Auckland, New Zealand, to serve as Sole 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 28, 2002 appointed him as the administrative Panel in this administrative proceeding.
The Center has forwarded to the Panel, by courier, the relevant submissions and the record. In terms of Rule 15(b) of the STOP rules, in the absence of exceptional circumstances, the Panel is required to forward its decision by July 12, 2002.
With the exception of certain minor deficiencies in the wording of the statements required to be included in the Complaint pursuant to sub Rules (xii) and (xiii) of STOP Rule 3(c) (which have no significance to the decision in the case), 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.
The Complaint shows that the Complainant filed an IP Claim, and that the Complainant was provided by the Registry Operator with a ticket number. Under the system of random allocation of priority to IP claimants, the Complainant has first priority to commence this administrative proceeding. The Center has confirmed that there is one additional IP claimant in the queue.
4. Factual Background
The Complainant says that it has a national registration for the trademark VECTOR in Austria, in international Classes 9 and 42, under Registration No 200 579 dated November 22, 2001. A document in the German language which the Complainant produced as an annexure to its Complaint, is said to evidence that trademark registration. No translation of the document has been provided, but the Respondent does not take issue with the fact or detail of the Complainantís claimed ownership of the Austrian trademark.
The Complainant also claims to have an international registration for the VECTOR trademark with the World Intellectual Property Organization, covering the following countries: Croatia, Hungary, Poland, Czech Republic, Romania, Slovakia, Slovenia, and Switzerland. The international registration is again in Classes 9 and 42, and the registration date is January 31, 2002. The Complainant has produced another annexure, this time in the French language, which is said to evidence this international registration.
The Complainant says that it has used the VECTOR mark as its company name in Austria, since 1980, and that a number of subsidiary corporations have been established in other countries since then, with names incorporating the word "Vector". The Complainant referred specifically to "Vector" corporations registered in Germany (1999) and Poland (September 11, 2001). The Complainant refers to contracts with various "Vector Business Partners" in several other countries, for the general purpose of selling and supporting Vector products. It does not identify those other countries.
The Complainant says that its mark is used for a standard application software for use by car dealers and car repair shops, and for all services related to that software, including installation, education, and ongoing support. The application software is said to be used by about 1,000 car dealers in 8 countries, and the Complainant says that there are several contracts with car and truck manufacturers relating to the use of the application software in their dealer networks in a number of countries. Again, those countries are not identified in the Complaint.
At the present time, it appears that the Complainantís commercial operations are restricted to Europe. However, the Complainant says that in the near future it plans to launch the Vector products worldwide, using regional business partners. Presently, it appears that the Complainant markets its software only in the German language Ė it says that translations of the software into the English and French languages are "in progress".
The Respondent says that, since 1999, it has established a design studio on-line at "www.ArtRampage.com," from which it has been providing a range of services which include Vector graphics, bitmap graphics, traditional graphics, banner design, identity design, interface design, website design, and a long list of other graphics and design-related services. The Respondent has produced copies of pages from its website at <ArtRampage.com>, downloaded on May 31, 2002, which appear to confirm that the Respondent operates a business supplying computer-produced graphics to the business community.
The Respondent says that the generic English word "Vector" is a descriptive term in computer graphics. It says that the word refers to the control point in Postscript-based drawings, and that Adobe Illustrator, MacroMedia FreeHand, and Coral Draws are the three leading Vector graphic programs currently in use by a majority of digital artists. The Respondent says that it has offered "Vector" graphics in page layouts, logo designs, and illustration services since 1989. It says that major software publisher Broderbund has commissioned it for well over 100 "Vector" illustrations over a 2 year period, and that the Respondent has won various awards for its "Vector" illustrations.
The Respondent says that it is currently in the process of developing a network of internet portals for each of its various individual services in the general field of business graphics, and that its purpose in requesting the domain name was to build a category-specific "Vector" graphics website. The operation of the STOP and the STOP Rules has prevented the Respondent from developing such a website pending the resolution of administrative proceedings relating to the domain name. The Respondent says that it has a large collection of "Vector" graphics in its portfolios. It says it is fully prepared to develop a website at Vector.biz "in a matter of weeks".
The Respondentís website at <ArtRampage.com> is in the English language, whereas a copy of the Complainantís website at <Vector.at> (the Austrian ccTLD) which was produced by the Respondent, is written in the German language.
5. The Partiesí Contentions
The Complainant says that:
1. The domain name is identical to its trademark VECTOR.
2. Prior (unspecified) investigations made be the Complainant on the mark VECTOR have not produced evidence of the domain name registrant as owner of any such trademark or service mark. Therefore the Respondent has no rights or legitimate interests in respect of the domain name.
3. At the time of filing the Complaint, the Respondent was not making use of, or any demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services.
4. The domain name does not currently resolve to any website or other on-line location.
5. As the Respondent is already the owner of an active home page (at <ArtRampage.com>) it would have been easy to forward internet traffic for the domain name to this active home page, if this had been the Respondentís intention. The home page at <ArtRampage.com> shows that the Respondentís core business includes website design, domain branding, naming strategy consultation, website update and maintenance, and web hosting, and these capabilities support the inference that the Respondent has not registered the domain name for the purpose of forwarding internet traffic to the website at <ArtRampage.com>.
6. The Respondent is not commonly known by the name "Vector".
7. The foregoing factors lead to the assumption that the main interest of the Respondent in registering the domain name, was to block others from registering the domain name, and that it "has to be assumed" that the Respondent has registered the domain name in bad faith.
The Respondentís Contentions
1. The Respondent accepts that the domain name is identical with the Complainantís VECTOR trademark.
2. The legitimacy of the Complainantís VECTOR trademark is in European countries, whereas the registration of the domain name is entirely conducted within United States commerce. The Complainant does not have a United States trademark, and does not market its products in the United States. Its country-specific European trademark is an unknown trade name in commerce in the United States.
3. The Complainant does not use the English language in its commerce.
4. The name "Vector" is an extremely common English word, with various meanings and applications. A google search engine search on the word "Vector" produced over 5,000,000 hits. The word "Vector" is non-exclusive, descriptive, and generic, and is less protectable and effective as a trademark because it lacks distinction. There are 996 "Vector" trademarks pending, registered, and/or cancelled in the United States, 52 such registrations in Europe, and another 124 such registrations in Canada. An overwhelming number of Vector trademarks registered worldwide are identical to the Complainantís mark, but would not be considered as infringing that mark.
5. There are 29 or more "Vector" domain names in various ccTLDs registered around the world, none of which provides a basis for the Complainant to allege infringement of its trademark. Therefore the use of the domain name should be regarded as a proper use of a generic English word.
6. The fact that the Respondent does not have a "Vector" trademark is not a sufficient basis for concluding that the Respondent has no rights or legitimate interests in respect of the domain name.
7. The Respondent has been making and/or is about to make a genuine commercial use of the domain name (in the manner described under the heading "Factual Background" above), and therefore has a legitimate interest in respect to the domain name.
8. The future development of a website linked to the domain name, as a "Vector" graphic design studio, is appropriate and should not be considered a conflict to the Complainantís trademark or business.
9. The Respondentís website at <ArtRampage.com> contains a site search engine. A search of the ArtRampage site returns 7 hits on the word "Vector", and the use of the word on the <ArtRampage.com> site should have been apparent to the Complainant before it filed its Complaint.
10. The Complainant has produced no evidence of bad faith on the part of the Respondent.
11. The Complainantís interest in the domain name is no more than to use it as a "pointer" for its established website at <vector.at>.
12. There is nothing about the services provided by the Respondent through the website at <ArtRampage.com> which, considered with all other factors, would justify an inference of bad faith registration or use.
13. The Complainant has presented no evidence that the Respondent has been guilty of any of the kinds of bad faith described at paragraph 4(b)(i) Ė (iv) of the STOP.
14. The Complaintís business is unlikely to be confused with the Respondentís design services.
15. The Complainant has "undermined this proceeding" by concealing the fact that it is already the registered proprietor of the domain name <vector.at>, which is successfully reflecting the Complainantís Austrian trademark and European origins.
6. Discussion and Findings
Under STOP, a Complaint can only be filed by an "IP Claimant" who had 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 another 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 Paragraph 4(c) of the STOP 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 behaviour 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.
Where there is more than one IP claimant, the Administrative Panel must decide whether, in light of its findings on each of the elements of Paragraph 4(a) of the STOP, any further challenges under the STOP are to be permitted in respect of the domain name. In making that decision the Panel is required to follow the criteria set out at paragraph 4(l)(ii) 1 Ė 3 of the STOP.
The Panel deals first with 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 Respondent accepts that the domain name is identical to the Complainantís Austrian-registered trademark. This part of the Complaint is established.
Paragraph 4(a)(ii) of the STOP Ė Registrant has no rights or legitimate interests in respect of the domain name
Because of the Panelís view of the evidence directed to bad faith registration or use (STOP Paragraph 4(a)(iii), it is not strictly necessary for the Panel to consider this ground of the Complaint, in order for the Panel to conclude that the Complaint should be dismissed. However, this is a situation where there are multiple IP claimants, and it is therefore necessary under subparagraphs 4(l)(ii) 2 and 3 of the STOP to consider whether the Respondent has demonstrated that it has "legitimate rights" to the domain name.
First, it is common ground that the Respondent does not enjoy any trade or service mark rights in the domain name, and that it has not been commonly known by the domain name (therefore subparagraphs (i) and (iii) of Paragraph 4(c) of the STOP have no application).
What the Complainant asserts, is that, because its prior investigations into the use of the mark VECTOR have not brought forward evidence of the Respondent as owner of any such trade or service mark, the Respondent has no rights or legitimate interests in respect of the domain name. With specific reference to Paragraph 4(c)(ii) of the STOP, the Complainant also asserts that at the time of filing the Complaint, the Respondent was not making use of, or making demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services.
In this case, the Respondent goes to some lengths to point out that the word "vector" is generic, and that (in one of its meanings) it is descriptive of a form of computer graphics. On the Respondentís account, it is clear that a number of software houses are using the descriptor "vector" to describe their graphics programs.
The Respondent says that it has supplied "vector" graphics in the course of its business, for nearly 13 years. However, the Respondent has not produced any documents showing how it was using the word "vector" before it had notice of the present dispute. The web pages from the <ArtRampage.com> website which it produced were all downloaded well after this administrative proceeding commenced.
The Respondent asserts that its sole purpose in requesting the domain name was to build a category-specific website (a matter said to be strategically important to the Respondent), and that it is "fully prepared" to develop <vector.biz> in a matter of weeks. However it has not produced any contemporaneous business plan or other document evidencing that that was its intention before it had notice of the present dispute.
From what the Respondent has produced, it appears that the word "vector" has not been used on its own Ė it has been used in an adjectival way, in combination with words such as "graphics", "illustrations", or "drawing". The Panel considers it likely that such use as the Respondent may have made of the word "vector" in its business over the years would probably only have been as part of a longer expression such as "vector graphics", or "vector illustrations".
The word "vector" is not on its own sufficient to describe the Respondentís business or any of its services. Only the wider expressions seem to the Panel to be apt to do that. In those circumstances, and in the absence of sufficient evidence from the Respondent to the contrary, the Panel is not prepared to regard the use of the wider expressions as a use of the domain name in connection with a bona fide offering of goods or services, within the meaning of paragraph 4(c)(iii) of the STOP.
For the foregoing reasons, the Panel is not prepared to find that the Respondent has a legitimate interest in respect of the domain name, or that it has demonstrated that it has a legitimate right to the domain name.
Paragraph 4(a)(iii) of the STOP Ė Domain name registered or being used in bad faith
The Panel cannot find any evidence of bad faith registration or use by the Respondent, and the Complaint must for that reason be dismissed.
The Panel finds that none of the express instances of bad faith exemplified in paragraph 4(b) of the STOP have been proved.
First, there is no evidence that the Respondent registered the domain name primarily for the purpose of selling, renting, or otherwise transferring it to another party (paragraph 4(b)(i) of the STOP).
Secondly, there is no evidence that the domain name was registered primarily for the purpose of disrupting the business of any competitor of the Respondent (paragraph 4(b)(iii) of the STOP) Ė there is no allegation that the Complainant and the Respondent are in competing businesses.
Thirdly, there is no evidence of an attempt by the Respondent to attract, for commercial gain, internet users to a website or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of such website or location or of a product or service on such website or location (paragraph 4(b)(iv) of the STOP). The Complainantís business activities appear to be confined to Europe Ė there is no evidence of the Complainant having any commercial presence in the United States, where the Respondent resides. The Complainantís business appears to involve the supply of a particular software application specifically designed for the motor trade. There is no suggestion of any likely confusion between the Complainantís business activities, and the multi-media, graphic design, website development, and web applied design services offered by the Respondent.
It is apparent from the Complaint that the Complainantís software is not yet available in the English and French languages. That suggests to the Panel that an internet browser looking for a website of the Complainant on the internet, would most likely be looking for a German language website, similar to that operated by the Complainant at <Vector.at>. All of those circumstances point away from any inference that the Respondent may have been attempting to create a likelihood of confusion with the Complainantís mark when it applied to register the domain name.
The only possible bad faith circumstance which the Complainant could possibly seek to argue under STOP paragraph 4(b), is that the domain name was registered in order to prevent the Complainant from reflecting the mark in a corresponding domain name. But there is simply no evidence of that. Under the STOP and the STOP Rules, it is impossible to draw any inference from the Respondentís failure to establish a website or other on-line location linked to the domain name Ė the Respondent is effectively prevented from doing so pending the resolution of all administrative proceedings which may be filed under the STOP and the STOP Rules.
The facts that there are a number of different meanings of the English word "vector" and numerous trademarks and ccTLD registrations of the domain name "vector", make it difficult for the Panel to safely draw the inference of "blocking" the Complainant which the Complainant invites. Also, it appears that one of the meanings of the word "vector" does have some relevance (in conjunction with other words) to one of the Respondentís areas of business, even if the Respondent has not in the Panelís view produced sufficient to demonstrate a "legitimate right" to the domain name.
There is no evidence of any "cease and desist" letter or other step having been taken by the Complainant prior to the commencement of this proceeding, to ascertain the Respondentís purpose in registering the domain name.
It is not enough in all these circumstances for the Complainant to submit that "it has to be assumed" that the domain name was registered in bad faith. Without more, the Panel is simply unable to infer that the domain name was registered in order to prevent the Complainant from reflecting its mark in a corresponding domain name, or was otherwise registered in bad faith.
Reverse Name Hijacking
There is a faint suggestion in the Response that the Complainant, in failing to disclose that it is the registrant of the Austrian ccTLD <vector.at>, has been guilty of an attempt at reverse domain name hijacking (the allegation is that the Complainant has "undermined the proceeding" by "concealing" that fact). Any such suggestion is rejected. The Panel has found that the Complainant has rights in a trade mark which is identical to the domain name, and it is not clear to the Panel how the Complainantís ownership of the Austrian ccTLD affects the remaining questions under Paragraph 4(a) of the STOP, namely whether the Respondent has a legitimate right or interest in the domain name, and whether it acted in bad faith in registering the domain name.
For the above reasons, the Panel decides that:
(a) The Complainant has legitimate rights to the domain name; and
(b) The Respondent has failed to demonstrate legitimate rights to the domain name; but
(c) The Complainant has failed to demonstrate that the domain name was registered by the Respondent in bad faith.
Accordingly, pursuant to paragraph 4(l)(ii)(3) of the STOP, and Rule 15(e) of the STOP Rules, the Complaint is dismissed, but on the basis that subsequent challenges against the domain name under the STOP shall be permitted. In accordance with paragraph 4(l)(ii)(3) of the STOP, no such challenge may be brought by, or on behalf of, the Complainant.
Warwick Alexander Smith
Dated: July 12, 2002