WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
NetNation Communications Inc v. Netnation Europe
Case No. DBIZ2002-00038
1. The Parties
The Complainant is NetNation Communications Inc, a corporation registered in Delaware, United States of America, but having its principal place of business in Vancouver, Canada. The Complainantís authorized representative in the Administrative Proceeding is John H Cho.
The Respondent is Netnation Europe, of Rotterdam, The Netherlands. The Respondent has been represented in the proceeding by Mr. Arno Vis.
2. The Domain Name and the Registrar
The domain name at issue is <netnation.biz> ("the domain name"). The domain name is registered with CSL Computer Service Langenbach GmbH dba <Joker.com>, of Düsseldorf, Germany ("the Registrar").
3. Procedural History
The Complaint was submitted by the Complainant to the WIPO Arbitration and Mediation Center ("the Center") on April 25, 2002, (email copy) and April 30, 2002, (hard copy).
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 ("the STOP Rules"), and the WIPO Supplemental Rules for Start-Up Trademark Opposition Policy for ".biz" ("the 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 satisfied itself that the Complaint complied with the STOP Rules and the Supplemental STOP Rules, on May 27, 2002, the Center sent to the Respondent a notification of STOP Complaint and Commencement of Administrative Proceeding, together with a copy of the Complaint. The Notification of STOP Complaint and Commencement of Administrative Proceeding, nominated May 27, 2002, as the formal date of the commencement of the Administrative Proceeding. The last day for sending a Response to the Complaint, was June 16, 2002.
Thereafter, there was a confused period during which a Mr. Ari Goldberger communicated with the Center indicating that he was representing the Respondent in the proceeding. As early as June 16, 2002, Mr. Goldberger claimed to be acting for the registrant of the domain name, although he named his client as dotPartners, LLC. For some weeks, Mr. Goldberger continued to advise the Center that "the Respondent" was requesting a transfer of the disputed domain name to the Complainant. Mr. Goldberger asked that the Administrative Proceeding be suspended while arrangements were made to transfer the disputed domain name to the Complainant.
On September 12, 2002, Mr. Arno Vis of the named Respondent, Netnation Europe, sent an email to the Center advising that the Respondent had no intention to release its claim on the disputed domain name.
After some investigation of Mr. Goldbergerís position, the Center advised him (also on September 12, 2002) that, as he did not appear to be representing the Respondent in the proceeding, the Center would have to proceed with the appointment of an Administrative Panel.
On September 13, 2002, Mr. Vis emailed Mr. Goldberger, seeking clarification as to which party he was representing. The email told Mr. Goldberger "you are not representing Netnation Europe." Mr. Vis asked if Mr. Goldberger was representing the Complainant, NetNation Communications, Inc. Mr. Goldberger replied the same day, indicating that his client was not the Complainant, but dotPartners Limited. Perhaps stating the obvious, Mr. Goldberger commented "there must be some confusion." A minute or two later on September 13, 2002, Mr. Goldberger finally advised the Center that his client is not involved in the proceeding.
By email dated September 13, 2002, (received at 6.08 a.m. according to the copy provided to the Panel by the Center), Mr. Vis sent an email to the Center confirming that Netnation Europe is both the correct Respondent and the second IP claimant in the queue under the STOP IP Claims procedure. For convenient reference this email is hereafter referred to as "the 6.08 email." In the 6.08 email, Mr. Vis asserted that the only reason the Respondent had not responded earlier to the Complaint was because the Center had requested that the Respondent should "get into all the nonsens [sic] NetNation Communications has put there." Mr. Vis went on to say that the Respondent "could not afford the legal aid necessary to do that." The Respondent decided not to respond at all. However, Mr. Vis drew attention in the 6.08 email to various matters which are referred to in more detail later in this decision which were said to provide a complete answer to the Complaint. His principal submission was that the Respondent had itself procured the registration of the mark NETNATION, and that evidence of that registration could be found in a corresponding administrative proceeding relating to the <netnation.info> domain name.
Later on September 13, 2002, the Respondent (through Mr. Vis) sent a further email to the Center advising the Center "to use all documents we have sent you in the <netnation.info> case. They are sufficient for showing our rights to this domain." This email appears to have been received by the Center at 9.51am on September 13, 2002, and for convenient reference, it is hereafter referred to as "the 9.51 email."
Also on September 13, 2002, the Center issued a Notice of Respondent Default.
On September 18, 2002, the Respondent sent another email to the Center ("the September 18 email"), making further submissions which were directed both to the merits of the Complaint and to its reasons for not submitting a Response within the time prescribed by the STOP Rules.
The Center 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 September 26, 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 has forwarded to the Panel the record in the case.
Both parties having made submissions to the Center on the issue of whether the Respondentís late filings should be received and considered by the Panel, on October 9, 2002, the Panel determined that it would receive and consider the Respondentís late filings described above as the 6.08 email, the 9.51 email, and the September 18 email, and also receive and consider the evidence of Benelux trademark registration number 657264 for the wordmark NETNATION, which the Respondent had produced in the administrative proceeding relating to the <netnation.info> domain.
The Panel allowed the Complainant to file a Statement in Rebuttal, setting out its submissions in response to those late filings. It has done so, and its Statement in Rebuttal has been read and considered by the Panel.
On October 24, 2002, the Respondent sought leave to file a Response to the Complainantís Statement in Rebuttal, and, by Procedural Order No 2 made on October 24, 2002, the Panel permitted it to do so.
The Respondent submitted its Reply within the time allowed by Procedural Order No 2, and that Reply has been read and considered by the Panel.
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 one of the languages 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, and the Complainant has priority to commence this Administrative Proceeding. The Center has advised that there is a further IP claim in the queue.
4. Factual Background
The Complainant describes its services as including the "telecommunication of information (including, without limitation, web pages), computer programs and any other data, electronic mail services, providing user access to the Internet (service providers), providing telecommunications connections to the Internet or databases, and telecommunication gateway services." It is based in Vancouver, Canada, but says that it has invested much time and cost in establishing an international reputation as one of the worldís leading web-hosting companies. It says it has a well-established reputation in the member states of the European Union, and some of the promotional material which it produced shows that it has contact addresses in a number of European cities (including Amsterdam), as well as New York, San Francisco, Toronto, and Sydney, Australia. The same promotional material describes the Complainant as "Canadaís #1 Web Host."
The Complainant has produced evidence that it (or related companies) is/are the registered proprietor(s) of a trademark consisting of a globe device featuring the North American continent, with two capital "Nís" superimposed over the right hand side of the globe, followed by the word "NetNation." The two capital "N"ís are in a stylized form, with the second (white) "N" partially overlapping the first (black) "N".
The first of the registered device marks referred to in the Complaint, was a Community Trademark filed on August 31, 1999, in International Classes 38 and 42. The specification for the Class 38 registration conforms generally with the Complainantís own description of its services as described above. The proprietor of this trademark is NetNation Communications UK Limited.
The Complainant has also produced a certificate showing the same "NetNation" device mark registered with the United States Patent and Trademark office. In this case, the mark was registered on February 20, 2001, and the proprietor is shown as Netnation Communications (Canada) Inc, with a Vancouver address which appears to be the same as that of the Complainant. The registration is in international class 42, for the provision of web-hosting services for others "on a computer server for global computer network."
The same mark appears to have been registered in Canada on October 19, 2000, but the Panel has not been provided with full details of this registration (no registered proprietor, class, or specification).
The Complainant asserts that it owns the "exclusive rights" to this device mark, and that assertion has not been challenged by the Respondent. However, the Complainant apparently has no registered rights in the wordmark NETNATION Ė it says that an application for the name alone has been filed and approval of it is pending. It did not state in its Complaint where that application had been filed, or give its present status, but from the Statement in Rebuttal it appears that applications for registration of the wordmark NETNATION have been filed by the Complainant in the United States and Canada. The Complainant says in the Statement in Rebuttal: "As a future precaution, the Complainant intends to file for the "NetNation" word trademark separately in the European Union upon conclusion of this case."
The Complainant says that it has been using "the trademarks" since approximately June 1995. In support of that, it has produced a WHOIS database extract showing that it registered the domain <netnation.com> on June 29, 1995. It has also produced a number of 1996 documents (which appear to be invoices, statements or other business records), in which the Complainant is described as "NetNation Internet."
It says that it has consistently used the ™ or ® symbols (as appropriate), to give notice that it claims ownership of the marks and that they are not intended to be generic.
In addition to <netnation.com>, the Complainant says it owns numerous other "NetNation" domain names, including <netnation.net>, <netnation.org>, <netnation.info>, and a number of netnation registrations in various ccTLDs.
In its Complaint, the Complainant said that the directors/managers of the Respondent were former resellers of the Complainant, and that it was the Complainant who first introduced them to the "NetNation" name and trademarks, in 1999. The Complainant said in its Complaint that the relationship became disagreeable, and that eventually all business relationships between the two parties were severed.
The Respondentís Reply shows that it is a corporation incorporated in the Netherlands in October 1998. It is the proprietor of the "netnation" domain names in the Belgian and Netherlands ccTLDs. An extract from the relevant Whois database shows that the domain name <netnation.nl> was registered on August 25, 1997. It appears that the Respondent did not acquire the <netnation.be> domain name until some time in 1999.
On August 18, 1999, the Respondent applied to register the wordmark NETNATION in the Benelux Trademarks Office, in international classes 38 and 42. The Class 38 specification was for services of an Internet Service Provider, and the class 42 specification was for web-hosting; registration of domain names under the authority of a third party. The Respondentís application was successful, and it was duly registered as proprietor of the wordmark NETNATION in the Benelux countries. The effective date of that registration was August 18, 1999, some 13 days before the Complainant registered its European Community "NETNATION and device" mark.
The Complainant does not dispute that the Respondent is the registered proprietor of the wordmark in the Benelux countries Ė its argument is that the Respondent is not entitled to that registration.
In its Complaint, the Complainant produced copies of web pages from the websites operated by the Respondent at "www.netnation.nl" and "www.netnation.be." Both pages appear to be dated March 30, 2000, and they are in the Flemish or Dutch languages. Nevertheless, it is possible to discern from the web pages that the Respondent was then operating domain name and/or website hosting services through these websites which appear to have been substantially similar to some of the Complainantís services.
In its Statement in Rebuttal, the Complainant says that in 1997, it wished to enter the market in the Netherlands. For that purpose it entered into an arrangement with an organization called Multi-Target, and Multi-Target was permitted to register the <netnation.nl> domain name. This domain name was routed to the Complainantís own Domain Name Server, and Multi-Target conducted business for the Complainant under the names "Netnation Nederland", and "Netnation Europe."
In 1998, the Complainant says that Mr. Vis, trading under the name "Dilemma", took over from Multi-Target, and became the Complainantís new reseller in the Dutch market. At the same time, it says that the consent to use the <netnation.nl> domain name and the name "Netnation" were transferred to Dilemma.
It is common ground that Netnation Europe and the business entity known as "Dilemma", have the same owners (including Mr. Vis), and the same physical address. However, the Respondent says that they have different suppliers and totally different business models. They are distinct legal entities according to Mr. Vis.
The Complainant says that the Respondentís use of the <netnation.nl> domain name was allowed only on the assumption that Netnation Europe and Dilemma were effectively one and the same operation, under the control of Dilemma.
In the early stages (1997 and 1998), it appears that there was no formal re-seller arrangement between the Complainant and its re-sellers: the arrangements were set up in some fairly informal way, online. By early 1999, the Complainant says that the complexities of its business had grown to the point where that was no longer considered sufficient. It introduced a written form of re-seller agreement at about that time.
The Complainant has produced a copy of a re-seller agreement with Dilemma dated March 17, 1999. Generally, this agreement provides for Dilemma to act as re-seller of the Complainantís products, and allows the re-seller to use the Netnation name, logo, website content, and design. That use was permitted for the sole purpose of re-selling the Complainantís web-hosting services, and the use had to be pre-approved by the Complainant. The re-seller was not given any other rights or licenses, and upon termination of the agreement (which could be effected on giving one monthís notice), the re-seller was obliged to stop using the Complainantís name, logo, website and content.
In its Statement in Rebuttal, the Complainant says that it decided in 1999, to enter the Belgian market. For that purpose, it was necessary to register the <netnation.be> domain name, and the Complainant says that the registrant of a domain name in the Belgian ccTLD generally needs to be a resident of that country (or one of the Benelux countries). Hence the Complainant permitted the Respondent to effect the registration. According to the Complainant, it allowed the Respondent to register the <netnation.be> domain name in the belief that the Respondent was effectively carrying out the obligations of Dilemma under the March 1999 written agreement, and would be bound by the terms of that agreement.
The Complainant says that a registered Benelux trademark was also necessary to acquire the <netnation.be> domain name, and it acknowledges in its Statement of Rebuttal that it allowed the Respondent to register the word NETNATION as a Benelux service mark. It says that this arrangement was "strictly under the re-seller arrangement only and the limited purpose was to allow the Respondent to carry out the Respondentís obligations as the Complainantís re-seller."
The Respondent, in its Statement in Reply, gives a somewhat different account of the partiesí past business dealings. First, it denies that it bought any business from Multi-Target. It says that Mr. Vis and his partner, Mr. Kruit, took over the established web-hosting company "Netnation Europe" from one Ramon Spaan in 1997. It acknowledges that one of the owners of Multi-Target was also an owner of Netnation Europe, but asserts that they were quite different companies.
The Respondent says that it never saw evidence of any formal relationship between the Complainant and the entity (described as "Netnation Europe") which it acquired in 1997. As the Respondent put it in its Reply: "There was a website and there was business done; that was it." The business being done by Netnation Europe did apparently include business with the Complainant.
It is common ground that (after it was incorporated) the Respondent never signed any formal agreement with the Complainant. It acknowledges that it did re-selling business with the Complainant, and it says that it tried to work towards a long lasting relationship with the Complainant. However it denies that it is in any way bound by the agreement signed by Mr. Vis on behalf of Dilemma in March 1999.
The Respondent says that, for more than 2 years, the Complainant accepted its business without any problem, and at one point the Respondentís (i.e., Netnation Europeís) credit card was being billed at the rate of more than $10,000 per month.
The Respondent says that, in the fall of 1999, a representative of the Complainant visited it to discuss proposals for a longer term business relationship. Those proposals came to nothing, however, and in February 2000, the Complainant gave Mr. Vis one monthís written notice terminating the re-seller agreement. In the Complainantís eyes, there was only one re-seller agreement, and that was the written agreement with Dilemma.
The Complainant has produced a copy of a cease and desist letter which was sent to Messrs. Vis and Kruit on March 17, 2000. The Complainant says that Messrs. Vis and Kruit ignored the cease and desist letter, and have generally carried on using the Complainantís name and logo.
No copies of the websites at the Belgian and Dutch "netnation" domain names have been produced, which are more recent than the March 30, 2000, copies. The Respondent says in its Reply that it replaced the reproduction of the Complainantís logo which then appeared on its websites, within a week after having been asked to do so.
The Complainant asserts in its Statement in Rebuttal that it intends to seek the nullification of the Respondentís Benelux trademark registration. It says that it has tried before to do so, but, due to incompetent legal representation, the attempt had to be postponed. It explains that it has taken some time for it to arrange resources to resume that proposed litigation (and also an action against the Respondent for passing off), but that it intends to pursue the action once this Administrative Proceeding has been resolved.
A final matter under this heading, is that the Complainant has produced evidence that in December 2000, the Respondent registered the Belgian domain name <domainpeople.be>. DomainPeople, Inc, is a wholly-owned subsidiary of the Complainant, and it operates as an ICANN-accredited domain name registrar. The <domainpeople.be> domain name resolves to the Respondentís website at "www.netnation.nl", which contains an order form for domain name registrations.
In its Reply, the Respondent did not answer the allegation about the "domainpeople" registration. However, it did make allegations to the effect that DomainPeople, Inc had refused to release the Respondentís clientsí domain names at about the time that the Complainant terminated the re-seller arrangements with Mr. Vis, making it impossible for the Respondentís clients to transfer those domain names.
5. The Partiesí Contentions
1. The contested domain name is identical to the trademarks in which the Complainant has rights in the United States, Canada, and the European Union.
2. The Complainant has not licensed the Respondent to use its marks or the domain name either in Europe or elsewhere.
3. The Complainantís registration of its Community trademark gives the Complainant exclusive rights to use the trademarks in the European Union, including the Benelux countries. The European Union registration has seniority over any subsequent registration of a trademark by the Respondent that is the same as, or confusingly similar to, the Complainantís trademark.
4. The registration of a domain name based on the infringement of anotherís trademark precludes the registrant from claiming any rights to, or legitimate ownership of, that domain name.
5. The Complainant has been allocated first priority IP claimant status by the Registry Operator. First priority claim status supercedes any claim to, and even any registration of, the domain name by a registrant who has no rights to or ownership of the necessary trademarks to such a domain name.
6. The Respondent has been using the exact and identical name, logo, and other trademarks as the Complainant, and has been passing itself off as the Complainant (or as being associated with the Complainant), with the express purpose of poaching business from the Complainant.
7. The Respondent has applied to register the domain name to disrupt the Complainantís business, and to steal the identity of the Complainant in order to acquire customers through deception.
8. The Respondent has registered the domain name for the purpose of attempting to attract, for commercial gain, Internet users to the Respondentís website or other online location, by creating a likelihood of confusion with the Complainantís trademarks as to the source, sponsorship, affiliation or endorsement of the Respondentís website or services.
9. The Panel should look behind the Respondentís proprietorship of the Benelux NETNATION trademark, and conclude that the acquisition of the mark was illegitimate and insufficient to constitute a right or legitimate interest in the domain name. The Respondent, as a re-seller of the Complainantís products, was bound by the terms of the March 1999 written re-seller agreement, to discontinue its use of the "Netnation" name after the termination of its re-seller arrangements with the Complainant. It had no right to retain ownership and the use of the NETNATION mark.
10. In addition to wrongful use of the Complainantís trademark, name, and logo, the Respondentís actions in registering <domainpeople.be> are a further indicator of the Respondentís bad faith.
11. The Complainantís proposed infringement proceedings against the Respondent, are "highly likely" to succeed. The Respondent will eventually have to relinquish the domain name to the Complainant.
1. The Respondent is the registered proprietor of the earliest registration of the mark NETNATION, and it is the only party to have registered the wordmark NETNATION. Its rights as registered proprietor of that mark are sufficient to decide the Complaint in the Respondentís favour.
2.The Respondent emphasizes that it never had any written contract with the Complainant. It says that, unlike Dilemma, it was under no legal obligation to relinquish the use of the "Netnation" name when its own relationship with the Complainant was terminated in early 2000.
3. When Messrs. Vis and Kruit took over the existing Netnation Europe business in 1998, they acquired free use of the <netnation.nl> domain name, and proceeded to use that domain name with the Complainantís acquiescence, for approximately two years between 1998 and 2000. During that period, the websites at the <netnation.nl> (and later <netnation.be>) domain names were hosted on the Complainantís Domain Name Server, and it was always open to the Complainant to delete any material on the Respondentís websites which it found legally objectionable. The Complainant did not do so, and the inference should be drawn that it did not believe that it was entitled to take that action.
4. Overall, the Respondent emphasized that Dilemma and Netnation Europe are completely separate entities with different businesses. The Respondent says that the mere fact that those entities have common owners does not mean the Complainant can invoke the provisions of a written agreement signed by one of those parties, in order to resolve its dispute with the other.
6. Discussions and Findings
General Procedures Under the STOP and the STOP Rules
Under the 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 IP 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.
When application is made to register a particular alphanumeric string as a domain name in the ".BIZ" gtld, the Registry Operator notifies the applicant if an IP claim has been lodged which matches that alphanumeric string. The applicant for registration of the ".BIZ" domain name is given particulars of the IP claim, including the IP Claimantís identity and contact details, and the nature of the right which the Claimant has asserted. The applicant is then asked to elect whether to cancel the application for registration, or to proceed with it in the knowledge that an administrative proceeding (such as the present one) may follow. If the applicant fails to make an election, his or her application is taken no further.
What the Complainant must Establish under the STOP
Under the 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. Examples of circumstances available to a Respondent to demonstrate that it has a "right or legitimate interest", are provided in Paragraph 4(c) of the STOP, as follows:
(i) [Where the Respondent is] the owner or beneficiary of a trade or service mark that is identical to the domain name; or
(ii) [Where,] before any notice to [the Respondent] of the dispute, [the Respondent] has used or made 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) [Where 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.
This is not an exhaustive description of the circumstances which might constitute rights or legitimate interests in a domain name.
Paragraph 4(b) of the STOP sets out the following examples of bad faith registration of use:
(i) Circumstances indicating that [the Respondent has] 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 [the Respondentís] documented out-of-pocket costs directly related to the domain name; or
(ii) [Where the Respondent has] registered the domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name; or
(iii) [Where the Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) Where, by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to the Respondentís 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 [the Respondentís] website or location or of a product or service on [the Respondentís] website or location.
Application of the STOP in this Proceeding
Paragraph 4(a)(i) of the STOP Ė Domain Name Identical to a Trademark or Service Mark in which Complainant has rights
The Panel is not satisfied that any of the Complainantís registered marks are identical to the domain name. The registered marks are all logo, or device, marks, and, while the word "Netnation" is clearly a very prominent feature of the registered marks, that does not make the marks identical to the domain name.
However, the Panel is satisfied on the balance of probabilities that the Complainant does enjoy common law rights in the mark "Netnation." The Complainantís 1995 registration of the <netnation.com> domain name, and the various 1996 business records which it produced showing that it is generally referred to as "Netnation Internet", are sufficient to persuade the Panel that it is probable that the mark NETNATION has become distinctive of the Complainantís services in the minds of relevant consumers, at least in Canada and some other countries where the Complainant carries on business and where the mark is not owned by others. Material produced by the Complainant, and not challenged by the Respondent, shows that the Complainant is the number 1 web-hosting service in Canada, and it seems to the Panel to be likely that, if a competitor attempted to operate a web-hosting service in Canada under the name "Netnation", the Complainant would succeed in a passing off action.
For the foregoing reasons, the Panel finds this part of the Complaint proved.
Paragraph 4(a)(ii) of the STOP Ė Respondent has No Rights or Legitimate Interests in Respect of the Domain Name
The Panel is not satisfied that the Complainant has proved that the Respondent has no rights in respect of the domain name. The Complaint must fail on that account.
The (substantial) difficulty standing in the Complainantís path, is that paragraph 4(c) of the STOP expressly includes, at subparagraph (i), ownership of a "trade or service mark that is identical to the domain name", as a circumstance which (if it is proved) shall demonstrate the Respondentís right or legitimate interest in the domain name for the purposes of paragraph 4(a)(ii) of the STOP. In this case, leaving aside the generic expression ".biz", the Respondentís Benelux-registered service mark is quite clearly identical to the domain name.
The Complainantís answer is to ask the Panel to look behind the Benelux registration, and conclude that the Respondent was not entitled to obtain (or more accurately retain) the Benelux registration of the NETNATION mark. The Panel is not prepared to embark on that sort of inquiry in a summary Administrative Proceeding such as this.
Generally, this Panel would be very loath to look behind a registered trademark and find that it did not constitute a right or legitimate interest for the purposes of this paragraph of the STOP. There might be some cases where a Panel would be prepared to make such a finding, but in this Panelistís view such cases would be rare. In this case, the evidence is nowhere near clear enough for the Panel to make such a finding, and it declines to do so.
First, the Complainant belatedly acknowledged in its Statement in Rebuttal that it consented to the Respondent registering the trademark NETNATION in the Benelux Trademarks Office. While the Complainant says that the intention was that the Respondent would only remain the registered proprietor of the mark while it remained a re-seller of the Complainantís products, trademark registers do not generally acknowledge such limitations. The public is entitled to deal with the party shown on the register as the registered proprietor of the mark, as the party who is exclusively entitled to use the mark within the territory in respect of the services described in the specification.
Secondly, it appears that the Respondent did acquire ownership of the <netnation.nl> domain name, and use the "Netnation" mark in its business, well in advance of the introduction of any general form of written contract between the Complainant and its re-sellers. There is no evidence that, when the Respondent acquired ownership of the <netnation.nl> domain name and began using the NETNATION mark, it did so on some basis which would have required it to relinquish that domain name to the Complainant if and when it ceased to be a re-seller of the Complainantís products. When the matter is properly examined in an appropriate forum, it may be found to be the case that the Respondent was under some such obligation. However, there is insufficient evidence before the Panel in this Administrative Proceeding for it to resolve issues of that kind.
Whether Dilemma and Netnation Europe were truly separate entities as the Respondent contends, can only really be tested in a Court or other appropriate forum. As far as this Administrative Proceeding is concerned, there is evidence that the Respondent existed as an independent corporation from October 1998, and that it was already by then using the "Netnation" name in its business activities. The Complainant has produced no clear evidence of when or how the Respondent allegedly accepted the terms which were later agreed in writing between the Complainant and Dilemma, and the Respondent denies that it accepted those terms. That is not a dispute the Panel can resolve in an Administrative Proceeding such as this.
The Complainant has failed to prove this ground of the Complaint, and the Complaint must therefore be dismissed. The consequence is that, for the purposes of this proceeding and paragraph 4(l) of the STOP, the existence of the Benelux NETNATION registration is sufficient for the Respondent to demonstrate that it has legitimate rights to the domain name.
In light of the foregoing findings, there is no need for the Panel to consider the issue of bad faith registration or use (paragraph 4(a)(iii) of the STOP).
For the above reasons, the Panel decides that:
(a) The Complainant has legitimate rights to the domain name; but
(b) The Complainant has failed to demonstrate that the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) Respondent has demonstrated that it has legitimate rights to the domain name.
Accordingly, pursuant to paragraph 4(l)(ii)(2) of the STOP, and Rule 15(e) of the STOP Rules, the Complaint is dismissed and no subsequent challenges against the domain name under the STOP shall be permitted.
Warwick Alexander Smith
Dated: November 1, 2002