WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

KLM (UK) Limited v. CustomWeather, Inc.

Case No. DBIZ2002-00058

 

1. The Parties

The Complainant in this Administrative Proceeding is KLM (UK) Limited, having its registered office at Endeavour House, Stansted Airport, Stansted, Essex CM24 1QN, United Kingdom.

The Respondent is CustomWeather Inc. of 444 Sixth Street, San Francisco, CA 94103, United States of America ("USA").

 

2. The Domain Names and Registrar

The domain name in dispute is <buzz.biz>.

The Registrar with which said domain name is registered is Corporate Domains Inc. of 2711 Centerville Rd. Wilmington, DE 19808, United States of America (hereinafter the "Registrar").

 

3. Procedural History

On April 25, 2002, the Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by e-mail and in hard copy on April 26, 2002.

In accordance with Paragraph 4(a) of the Rules for Start-up Trademark Opposition Policy for .BIZ (the "STOP Rules") the Center verified that the Complaint satisfied the formal requirements of the Start-up Trademark Opposition Policy for .BIZ (the "STOP"), the STOP Rules and the WIPO Supplemental STOP Rules and that payment in the required amount had been paid by the Complainant.

On May 22, 2002, the Center sent a Notification of STOP Complaint and Commencement of Administrative Proceeding to the Respondent by courier and by e-mail. A copy of said Notification was sent to the authorized representative of the Complainant by e-mail. Further copies of said Notification were sent to the Internet Corporation for Assigned Names and Numbers ("ICANN") and to the Registrar by e-mail.

Said Notification of Complaint and Commencement of Administrative Proceeding inter alia advised the Respondent that this Administrative Proceeding had commenced on May 22, 2002, and that the Respondent was required to submit a Response to the Center on or before June 11, 2002.

The Center received a request from the Registrar described as a "Third Party Motion for a Stay of STOP Proceedings to Allow Substitution of Correct Party". In this application, the Registrar explained that the domain name in issue in these proceedings had been mistakenly associated with the Respondent when the actual applicant was a third party viz. Devlin Communications Inc.

The Registrar stated that the error occurred due to an application processing glitch and through no fault of either the Respondent or said Devlin Communications Inc. The Registrar submitted that the equitable solution to this situation was to stay the proceedings and allow the WHOIS database and application record to be amended. The Registrar further stated the it had informed Neulevel Inc., the .biz TLD Registry Operator, of the error, and that Neulevel Inc. had agreed that the equitable solution to the problem was that these Administrative Proceedings be stayed to allow the WHOIS database and the application record to be amended.

On May 22, 2002, the Center sent an e-mail communication to the Respondent advising that the above request for a stay had been received by the Center. The Center had contacted Neulevel Inc. regarding the request for the stay and the possibility of making the changes to the WHOIS database. The Center stated that Neulevel Inc. had confirmed that it would not allow any changes to the WHOIS database.

The Center advised the Respondent that in the circumstances it was not in a position to grant the stay on these Administrative Proceedings.

No Response was received by the Center and on July 2, 2002, the Center sent a Notification of Respondent Default to the Respondent by e-mail. A copy of said Notification of Respondent Default was on the same date sent to the authorized representative of the Complainant by e-mail.

On July 22, 2002, after having received a Statement of Acceptance and Declaration of Impartiality from him in accordance with paragraph 7 of the Rules, the Center proceeded to appoint James Bridgeman as the Administrative Panel. On the same day the case file was transmitted to the Administrative Panel.

On August 6, 2002, the Administrative Panel issued a procedural order details of which are set out infra.

On August 28, 2002, the Administrative Panel was advised by the Center that no further submissions had been received. In the circumstances there was no need for any further submissions from the Complainant.

In the view of the Administrative Panel, proper procedures were followed and this Administrative Panel was properly constituted.

 

4. Factual Background

The Complainant is a wholly owned subsidiary of KLM Royal Dutch Airlines, the internationally renowned airline. The Complainant operates the United Kingdom based low cost airline known as BUZZ whose planes fly to 21 destinations in Europe including Paris, Brest, Bordeaux, Caen, Dijon, Bergerac, Grenoble, La Rochelle, Limoges, Marseille, Poitiers, Toulon, Toulouse, Tours, Rouen, Berlin, Frankfurt, Dusseldorf, Murcia, Jerez and Gerona.

The Complainant is the registered proprietor of a number of registered service marks and trademarks for the word mark BUZZ viz.

Mark

Country

Number

Classes

Reg Date

Covering

BUZZ

Switzerland

487162

16,25,39,42

17/3/00

Inter alia, air transport

BUZZ

Slovak Rep

195916

16,25,39,42

20/3/00

Inter alia, air transport

BUZZ

Czech Rep

234302

16,25,39,42

25/6/01

Inter alia, air transport

BUZZ

EU

1740778

18, 28,36,41

TBC

Inter alia, air transport

BUZZ

UK

2270981

25

24/5/01

Inter alia, clothing

The Complainant has an established reputation in the use of the BUZZ service mark and has applied for further registrations of service marks comprising or incorporating the word BUZZ in numerous countries around the world.

The Complainant is the owner of over 60 domain names which include or comprise the word BUZZ including: <buzz.co.uk>; <buzz.de>; <buzz.info>; <buzzaway.com>; <buzzaway.de>; <buzzaway.co.uk>.

According to the Registrarís WHOIS database, Respondent is the registrant of the domain name <buzz.biz>. However, according to the Registrar, said domain name was in fact registered by an entity known as Devlin Communications Inc. and the Respondent was entered as the registrant in error due to an application processing glitch. This error occurred through no fault of either the Respondent or said Devlin Communications Inc.

The Registrar applied to the Center to stay these Administrative Proceedings in the belief that NeuLevel Inc. had agreed to a stay in this case to allow time for amendment of the WHOIS database and application record. There appears to have been a misunderstanding on this point. When the Center contacted NeuLevel Inc., Neulevel Inc. refused to allow any changes to the WHOIS database. In the circumstances the Center was obliged to refuse the stay and the Complainant was obliged to proceed against the organization actually registered on the WHOIS database.

This Administrative Panel was concerned to give said Devlin Communications Inc. the opportunity to make submissions. In the circumstances, in the interest of the rules of natural justice and due process, this Administrative Panel took the unusual step and issued a procedural order on August 8, 2002.

Said procedural order inter alia provided as follows:

"1. the Center shall send a hardcopy of the Complaint to the Registrar, who in turn shall immediately forward this hardcopy together with the electronic version of the Complaint (notified the Registrar on May 22, 2002) to Devlin Communications Inc., the entity the Registrar has stated is the correct registrant of <buzz.biz>;

2. this entity shall then have the opportunity to submit within 20 calendar days a written statement to the Center, the Complainant and the Registrar. The statement should include an explanation of why it should be regarded as a respondent in this case. The statement may be submitted in the form of a STOP Model Response available from the Centerís webpage. It should be submitted to the Center in electronic form and in hardcopy by express mail or courier service (signed original and three copies). The statement should also be submitted to the Complainant in electronic form and in hard copy.

3. on receipt of the statement, the Complainant shall have the opportunity to file a reply within ten (10) calendar days."

No submissions were filed by said Devlin Communications Inc.

 

5. Partiesí Contentions

A. Complainant

The Complainant submits that this dispute is properly within the scope of the STOP Policy and that the Respondent is required to submit to this Administrative Proceeding in accordance with paragraph 4(a) of the STOP Policy on the grounds that

i the domain name is identical to a trademark or service mark in which the Complainant has rights; and

ii the Respondent has no rights or legitimate interests in respect of the domain name; and

iii the domain name was registered or is being used in bad faith.

The Complainant asserts that it has substantial rights in the BUZZ service mark. The Complainant based its claims on the above referenced registered service marks and pending applications for registrations of the service mark in various jurisdictions. The Complainant also has registered the name <buzz> in various domains. The Complaint further submits that it has a valuable reputation and extensive goodwill in the BUZZ mark as a result of substantial use since its launch and this includes a reputation in the USA.

The Complainant further submits that as of the date of the Complaint in this Administrative Proceeding, the <buzz.biz> domain did not resolve to an active web site. A named representative of the Complainant attempted to contact the Respondent by e-mail, telephone and fax at the primary e-mail address, telephone contact number and fax number given on the Registrarís WHOIS database. As of the date of the Complaint in this Administrative Proceeding the Complainant had received no reply to the e-mail. The telephone number and fax number given did not work.

The Complainant caused an Internet search to be carried out against the Respondentís name on the Webferret search engine. This search revealed only one business with the name CustomWeather Inc. viz the Respondent. This is an organization based in San Francisco that describes itself as "a San Francisco-based provider of syndicated weather content" on its web site at "www.customweather.com".

A representative of the Complainant telephoned directory enquiries and obtained a telephone number for the Respondent. This number was very similar to the contact telephone number for the registrant on the Registrarís WHOIS database. The only difference between the two numbers was the last digit.

The representative of the Complainant called the number and left a message on the Respondentís voice-mail and then e-mailed the CEO of the Respondent asking if he knew anything about the <buzz.biz> domain name. The e-mail was also addressed to the primary e-mail address provided for the Respondent on the Registrarís WHOIS database.

The CEO of the Respondent replied by e-mail stating that he did not know who the registrant of the <buzz.biz> domain name was, but that the registrant had wrongly used the Respondentís profile to register over 200 .biz domain names.

The Complainant states that it understands that the person who applied to register the domain name subsequently contacted the CEO of the Respondent and claimed that the domain name was mistakenly registered in the name of the Respondent due to an administrative error.

The legal representatives of the Complainant attempted to contact both Neulevel and the Registrar in order to establish if any error had been made and what other domain name registrations have been made in the name of the Respondent. Neulevel advised by e-mail that the issue should be taken up with the Registrar directly. The Registrar replied confirming that the domain name had not been registered by the Respondent and that it would take appropriate action.

The Complainant submits that it has carried out thorough investigations and has ascertained that the Respondent has not engaged in any demonstrable preparations to use the domain name or a name corresponding with the domain name in connection with a bona fide offering of goods or service. The Respondent does not own any trademark or service mark registrations consisting of or containing the name BUZZ. The Complainant has no relationship with the registrant and has not authorized the registrant to use the Complainantís BUZZ mark.

Further, the Respondent denies any interest in the BUZZ name and believes that at worst the registration had been made fraudulently and at best in error. Consequently the Complainant submits that the Respondent has revealed no legitimate interests or rights in the domain name <buzz.biz>.

The Complainant further submits that the <buzz.biz> domain name should be considered as having been registered and used in bad faith. The Respondent has provided both false and fraudulent registrant details in an attempt to hide his or her real identity behind a veil and thwart any efforts by interested parties to make contact or bring legal proceedings. In the circumstances this constitutes bad faith.

The Complainant refers this Administrative Panel to two cases which indicate that bad faith can be inferred if the Respondent uses the name of a non-existent business entity viz. Visit America Inc. v. Visit America (NAF Case No. FA0095093) or incomplete contact details viz. McNeil Consumer Brands Inc. v. Mirweb (WIPO Case No. D2000-0612).

The Complainant submits that in the present Administrative Proceeding, the Respondent has gone one step further by fraudulently using the Respondentís name to register the <buzz.biz> domain name, as well as providing false contact details. The Complainant submits that the inference to be drawn from this is that the Registrant is hiding its identity to hide its cybersquatting and domain name hoarding activities. The only plausible reason for registering the <buzz.biz> domain name appears to be for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant or a competitor of the Complainant for valuable consideration in excess of the domain name registrantís out of pocket costs directly related to the domain name.

The Complainant further submits that as a result of numerous newspaper articles, copies of which have been submitted in the annex to the Complaint and the Complainantís international reputation, it is likely that the Respondent was aware of the Complainantís BUZZ airline prior to his registration of the <buzz.biz> domain name and that the Respondent was prompted into applying for said <buzz.biz> domain name by the Complainantís reputation in the BUZZ mark. The Complainant submits that such activity constitutes evidence of the Respondentís bad faith registration of said <buzz.biz> domain name.

B. Respondent

There was no Response filed by the Respondent.

 

6. Discussion and Findings

The Parties

The domain name was registered in the name of the Respondent in error and an entity known as Devlin Communications Inc. was the actual registrant. This error was due to an application processing glitch.

Neulevel Inc. has refused the Registrar permission to amend the WHOIS database, so the Complainant had no alternative but to proceed against the entity entered as the registrant on the WHOIS database viz. the Respondent.

This Administrative Panel has given said Devlin Communications Inc. the opportunity to make submissions in these proceedings and it has not done so.

This Administrative Panel is not in a position to ascertain the extent of the errors made in the application process. It is not clear if the errors were confined to an incorrect entry of the registrantís name only or whether the errors went further and extended to other information such as contact details.

On the evidence before this Administrative Panel there appears to be no connection between the Respondent and said Devlin Communications Inc.

As it would be inappropriate for a bona fide Complainant or registrant to be prejudiced or in any way disadvantaged by a processing mistake on the part of the Registrar or by a refusal by Neulevel to permit the Registrar to amend a clerical error, this Administrative Panel took the unusual step and gave said Devlin Communications Inc. the opportunity to make a submission. Said Devlin Communications Inc. did not avail itself of this opportunity.

Substantive Issues

In accordance with paragraph 4(a) of the STOP Policy, the Complainant must prove that:

(i) the domain name in dispute is identical to a trademark or service mark in which the Complainant has rights; and

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

(iii) the domain name has been registered or is being used in bad faith.

Identical

The Complainant has satisfied this Administrative Panel that it has rights in the service mark BUZZ.

It is obvious that the domain name in dispute is identical to the Complainantís BUZZ service mark.

Rights or Legitimate Interests

While no Response has been filed in this proceeding, in the abovementioned exchange of correspondence between the Complainant and the Respondent, the Respondent has made it clear that it has no connection with the domain name and that it appears in error as the registrant on the WHOIS database. Furthermore, the entity that registered the domain name (Devlin Communications Inc.) has failed to take the opportunity to make submissions with regard to any rights that it might claim to have in said domain name.

It is well established in the UDRP and STOP, that while the Complainant bears the burden of proof in each of the elements in the respective tests, once the Complainant has made the allegation that the Respondent has no rights or legitimate interests in the domain name, the burden of proof shifts to the Respondent to establish such rights.

It follows that the Complainant has satisfied the second element of the test in paragraph 4(a) of the STOP Policy.

Bad Faith

The Complainant has submitted that the registrant furnished incorrect and misleading contact information and has endeavoured thereby to conceal its true identity. On the one hand the contact information was incorrect, but on the other hand, it would appear that said Devlin Communications Inc. did not try to conceal its name. This Administrative Panel cannot make any determination on this issue, as the extent of the errors made by the Registrar is unknown. The errors may have been confined to an incorrect entry of the Respondentís name only or they may have gone further and extended to other information such as contact details.

This Administrative Panel is however satisfied that the registrant of this domain name was aware of the Complainantís well known reputation and business activities. The Complainantís business is primarily in Europe, but it is clear that as a result of numerous newspaper articles, copies of which have been submitted in the annex to the Complaint and the Complainantís international reputation, it is probable that the Respondent was aware of the Complainantís BUZZ airline prior to his registration of the <buzz.biz> domain name and that he was prompted into applying for said <buzz.biz> domain name by the Complainantís reputation in the BUZZ mark. In reaching this conclusion this Administrative Panel is strengthened by the fact that the Complainant has an established Internet presence and a large portfolio of registrations in various domains for the name <buzz>.

This Administrative Panel accepts the Complainantís submission that the registration of said <buzz.biz> domain name, in full knowledge of the Complainantís rights in the BUZZ service mark and its international reputation in the use of the BUZZ service mark, in circumstances where the registrant has no rights or legitimate interests in the word BUZZ as a domain name or in any BUZZ trademark or service mark, is evidence that the domain name was registered in bad faith.

Furthermore, given that all parties who have been named in these proceedings are aware of the Complainantís rights in the BUZZ service mark and given that the domain name was registered in bad faith and that no web site has been established at the domain address, any continued holding of the domain name by a party with no rights or legitimate interests in same amounts to a continuing use of the domain name in bad faith.

In the circumstances this Administrative Panel accepts that the Complainant has satisfied the three elements of the test in paragraph 4 of STOP and is entitled to the relief sought.

 

7. Decision

With specific reference to Paragraphs 4(i) of the STOP and 15 of the STOP Rules this Administrative Panel finds that the domain name <buzz.biz> is identical to a service mark BUZZ in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of said domain name and said domain name has been registered and is being used in bad faith.

This Administrative Panel therefore directs that said domain name <buzz.biz> be transferred to the Complainant.

 


 

James Bridgeman
Sole Panelist

Dated: September 14, 2002