WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ESEC Management SA v. eSec A/S
Case No. DBIZ2002-00061
1. The Parties
The Complainant in this administrative proceeding is ESEC Management SA, a private limited company, registered and incorporated under the laws of Switzerland with principal place of business at Hinterbergstrasse 32, CH-6330 Cham, Switzerland.
The Respondent is eSec A/S, a private limited company with principal place of business at Marielundvej 46A, 2730 Herlev, Denmark.
2. The Domain name and Registrar
The domain name at issue is <esec.biz>.
The domain name is registered with Ascio Technologies Inc., Rejsbygade 8 A, 1759 Copenhagen, Denmark.
3. Procedural History
The Complaint was received on April 25, 2002 (e-mail), and April 30, 2002 (hard copy), by the World Intellectual Property Organization Arbitration and Mediation Center ("the Center"). 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 ("STOP") and the Rules under that Policy ("STOP Rules").
The STOP is incorporated into the Respondentís registration agreement with the Registrar. Respondent is obliged to submit to and participate in a mandatory administrative proceeding in the event of a Complaint concerning the domain name registered.
Having verified that the Complaint did not satisfy the formal requirements of the STOP and the STOP Rules, the Center, on May 23, 2002, transmitted by courier and by e-mail a notification of deficiency to the Complainant. The Complainant was advised that the Complaint did not contain
(1) the appropriate WIPO STOP Complaint Transmittal Coversheet,
(2) the Complaint was not submitted in one original and three copies, as required by STOP Rules, Para. (3 (c).
(3) the Complaint does not describe the grounds on which it is made, as required by STOP Rules, Para. 3 (c) (ix).
The Complainant transmitted an amendment to the Complaint on May 27, 2002, by e-mail and on May 29, 2002, by hardcopy. On May 27, 2002, the Center advised the Complainant that the Complaint Transmittal Coversheet still showed National Arbitration and not the Center as the Dispute Resolution Provider. On May 28, 2002, the Complainant provided a revised amendment to the Complaint.
Having verified that the Complaint satisfied the formal requirements of STOP and STOP Rules, the Center, on May 31, 2002, transmitted by post-courier and by e-mail a notification of Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Complaint was also e-mailed to the Registrar and ICANN.
The Respondent was advised that a Response to the Complaint was required within 20 calendar days. The Respondent was advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by e-mail. On May 31, 2002, the Center received an e-mail communication from the Respondent, in which it asked for the "commercial impact" of the administrative proceeding.
The Center invited Dr. Torsten Bettinger to serve as Sole Panelist in the case. It transmitted to him a statement of acceptance and requested a declaration of impartiality and independence.
Dr. Torsten Bettinger advised his acceptance and forwarded to the Center his statement of impartiality and independence.
On July 23, 2002, the Center forwarded to the Panel by courier the relevant submissions and the record.
The Panel has independently determined and 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. The Complainant has paid the necessary fees to the Center. The Ticket Number assigned by the Registry operator under the STOP Rules has been verified.
4. Factual Background
The Complainant is the registered proprietor of a registered trademark consisting of the word "ESEC" in a particular script in Class 7, including machines for manufacturing semiconductor chips and other semiconductor products in Switzerland, Korea, Hong Kong, the United States of America, Japan, Singapore, Taiwan, Indonesia, United Kingdom, Malaysia and Thailand. The Complainant is also the registered proprietor of an international registration in Germany, China, the Russian Republic and France. The Respondent did not provide a Response to the Complaint.
5. Partiesí Contentions
The Complainant states that it is "an international company with worldwide business" and has an "international and global interest in using the domain name <esec.biz>." The Complainant further contends that "ESEC" is the Complainantís company name and that "as an international company using the "ESEC" as a global trademark it had priority rights to use the term ESEC as part of any global domain name. The Complainant argues that as the Respondent is only serving the local Danish market there is no visible reason of having a higher interest to use <esec.biz> than the Complainant.
The Respondent did not provide a Response to the Complaint.
6. Discussion and Findings
Under STOP, the Complainant must show:
(a) That the domain name is identical to the Complainantís trademark or service mark (Para. 4(a)(i)) STOP.
(b) That the Respondent has no rights or legitimate interests in the domain name.(Para. 4 (a) (ii)) STOP.
(c) That the domain name was either registered or used in bad faith (Para. 4(a) (iii)) STOP.
a) Identity with a mark in which the Complainant has rights
The Panel notes that the Complainantís trademark consists of "ESEC" in a particular script with decorative additions added. The domain name in issue consists of the same combination of letters but necessarily does not have the decorative additions. Since the Policy requires that the domain name be identical to a mark in which the Complainant has rights, the Panel has to decide whether in spite of the differences mentioned between mark and domain name the trademark and the domain name at issue might nonetheless be regarded as identical within the meaning of Para. 4 (a) (i) STOP.
The Panel notes that at least two STOP-decisions have already dealt with that issue. In the case Fiat Auto S.p.A. v. Italienska bil, WIPO Case No. DBIZ2001-00030, the Panelist Dr. Gerd F. Kunze had to decide the question whether the fact that the Complainantís trademark "ALFA ROMEO " consisting of two words should be regarded as identical to the Respondentís domain name <alfaromeo.biz>, written together. Referring to a decision of the Board of Appeal in an opposition procedure against the registration of a Community Trademark (R 133/00, dated February 1, 2000), where in application of the principle of Art. 5(2) of the Paris Convention the use of "HAPPYDAY" was held not to alter the distinctive character of the mark HAPPY DAY and pointing to the fact that the difference between the trademark "ALFA ROMEO" and the domain name <alfaromeo.biz> only stemmed from the rules and technical necessities of the domain name, the Panelist decided that <alfaromeo.biz> and the trademark "ALFA ROMEO" should be considered identical in the meaning of Para. 4 (a) (i) of the STOP.
In Qtech Business Systems Pty Ltd v. Coldwell Banker Burnet, WIPO Case No. DBIZ2001-00004, the Panelist William R Cornish had to deal with the question whether the Complainant's mark "Qtech" in a particular script with some decorative additions should be regarded as identical to the Respondentís domain name <qtech.biz>. Referring to an argument put forward by Advocate-General Jacobs in a decision on the point in the European Community (LTJ Diffusion v. Sadas (January 17, 2002, European Court of Justice on reference from the Tribunal de Grande Instance, Paris, decision of the full court awaited), the Panelist found it necessary to give a restricted meaning to the concept of "identity" in the sense of Para. 4 (a) (ii) STOP and argued that there should be identity between marks only where an average consumer would regard them as the same, in the sense that any differences, whether of addition, omission or modification, were "minute or wholly insignificant".
The Panel follows the reasoning in the above mentioned decisions. In the present case however the Panel has serious doubts whether the differences between the Complainantís trademark can be regarded as "minute or wholly insignificant". As the matter in this case can be determined by reference to other requirements to be established by the Complainant, the Panel does not have to decide this issue.
b) Legitimate rights or interests in respect of the domain name
With regard to the second element the Complainant bears the burden of proving that the Respondent has no rights or legitimate interests in respect of the domain name.
The Complainant admits that Respondent is doing business under the name "ESEC" and is serving the local Danish market. The Respondentís website contained information on Respondentís business in the area of computer services. In these circumstances, and without the benefit of direct evidence of an illegitimate purpose, the Panel cannot conclude that Respondent has "no . . . legitimate interests in respect of the domain name in the meaning of Para. 4(a) STOP.
c) Domain name Registered and Used in Bad Faith
Para. 4(a)(iii) STOP requires proof that "your domain name Ö is being used in bad faith".
For the purposes of Para. 4(a)(iii) STOP, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that 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 owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; 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 Complainantís 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.
The Complainant has not produced any evidence to suggest that Respondent registered or used the Domain name for one of the above mentioned purposes or any other similar purposes. The Complainant merely states that it has "higher interests to use the Domain name <esec.biz> than the Respondent."
The Panel thus finds that the Complainant has not met the burden of proving bad faith.
In the light of the foregoing, the Panel decides that the Complainant has not established that the Respondent has no legitimate interests in the domain name <esec.biz> and that he registered or used the domain name in bad faith.
Accordingly, the Panel rejects the Complainantís request for transfer of the disputed domain name.
Dated: August 19, 2002