WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Antoine Getten v. Ondrej Pastirik
Case No. DBIZ2002-00073
1. The Parties
The Complainant is Antoine Getten, Translations, 48, rue de Londres, F-75008 Paris, France.
Respondent is Ondrej Pastirik, Letna 7, 04001 Kosice, Slovakia.
2. The Domain Names and Registrar
The domain name at issue is <translations.biz> ("the Domain Name").
The registrar is Firstdomain.net ("the Registrar").
3. Procedural History
The stop complaint ("the Complaint") was filed with the WIPO Arbitration and Mediation Center ("the Center") on April 26, 2002, and the Center acknowledged receipt of the Complaint on April 30, 2002. The Center verified that the Complaint satisfied the formal requirements of 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 for .biz, adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001 (the STOP Rules), and WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .biz (the WIPO Supplemental STOP Rules).
The Panel has independently determined and agrees with the assessment of the Center that the Complaint is in formal compliance with the aforementioned rules.
The Panel fees were paid on time in the required amount by Complainant.
On May 14, 2002, the Center notified the STOP Complaint and the administrative proceeding commenced.
On May 29, 2002, the Respondent filed its Response and on June 5, 2002, the Center acknowledged receipt of the Response.
On June 12, 2002, the Center notified the Parties that an Administrative Panel composed of a single member, Dr. Thomas Legler, had been appointed and that the Panelist had duly submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center.
4. Factual Background
The Complainant is the holder of the French trademark "translations" registered for the first time on February 23, 1987, under the N° 1-396-273, extended on November 25, 1988, under the number 1-500-399 and renewed on November 24, 1998, under the number 98-760-854 (Complainant's Annex 3). The registration is valid for classes 9, 16, 28, 35, 36, 38, 41 and 42, in particular for translation services.
The Complainant is also the founder of the French limited liability company Translations Sàrl, registered in 1986 with the Paris Trade Registrar (Complainant's Annex 4). Pursuant to the Complainant, this company is well-known throughout Europe as a quality supplier of translation services to the financial, banking and insurance sectors with an annual turnover of FF 32 million for the year of 2001.
5. Preliminary Observation
The Panel noticed that the trademark "translations" has been registered in the name of Antoine Getten himself and not in the name of the company of which he indicates being the founder. Moreover, it appears, according to Complainant's Annex 4, that Mr. Antoine Getten is a minority shareholder of Translations Sàrl, which is administrated by Mrs. Getten. However, the Panel accepts that Mr. Antoine Getten may invoke in this procedure arguments, which can stricto sensu, only be invoked by Translations Sàrl. Indeed, the Complainant has sufficiently demonstrated his link to the company Translations Sàrl. It is often the case that domain names and trademarks are registered in the name of individuals working within an organization to which they are closely linked. Insofar, it must be admitted in the ICANN administrative proceedings not to follow a too formalistic approach.
This is all the more justified since in the present case the same rule may be applied to Respondent. Indeed the domain name in question has been registered on March 27, 2002 (Complainant's Annex 1), by Mr. Ondrej Pastirik, who indicates being the junior executive in the company Pro Region Slovakia S.r.o. Although his name does not appear on the excerpt from the Slovak Trade Registry, it appears that a member of the same family, Mr. Alojz Pastirik is director of the said company. Other evidence shows that Mr. Ondrej Pastirik acted in various regards for the company Pro Region Slovakia S.r.o. Accordingly, the Panel accepts that also Mr. Ondrej Pastirik may invoke arguments linked to said company.
6. Parties’ Contentions
The Complainant indicates that the registration of the trademark "translations" has allowed Translations Sàrl to build up a unique corporate identity. It considers the domain name <translations.biz> to be a very important stepping-stone for the future growth of this company and that it has substantially more rights to its use than has the Respondent.
The Complainant indicates that he is the legal holder of the trademark "translations" dating back to 1987. Furthermore, he points out that a search of the trademark database, accessible via the WIPO portal, reveals no evidence of any rights or legitimate interests on the part of the Respondent with respect to the domain name <translations.biz> (Complainant's Annex 5).
Pursuant to the Complainant, several elements show the Respondent's bad faith. The Complainant indicates that in an e-mail of April 19, 2002, the Respondent stated that before applying for the domain name, he had double-checked all trademark databases available online. The Complainant however points out that the trademark "translations" can be found via the WIPO site in as few as nine mouse clicks. A check of the major European countries would have revealed the "translations" trademark in the French Trademark Database. While the Complainant admits that it is difficult to expect the Respondent to have checked every database in the world for the trademark in question, one might reasonably expect the Respondent to have visited, at least the French trademark site, given that a search of the WIPO site using the name "Pasterik" does show that the Respondent is the registrant of <paris.info> and <strasbourg.info>, which tends to indicate a fairly substantial interest in France (Complainant's Annex 8). The Complainant therefore concludes that Respondent's claim that he checked for IP conflicts prior to filing is therefore untrue and constitutes bad faith at the time of filing for the domain name. Secondly, the Respondent intends to offer translation services through the <translations.biz> domain name which will greatly compromise the Complainant's own planned expansion of translations throughout Europe.
The Respondent and the company Pro Region Slovakia S.r.o., to which he is linked, have been active since 1996 in the field of providing of web space solutions, as well as of non internet activities, among others translations and interpreting. The Respondent indicates that in the course of the growth of web translation and web localization services the need came up to offer also electronic document translations. The Respondent indicates that it currently manages a team of translators for several European languages. For this purpose, the Respondent submits various statements from a number of translators working for Pro Region Slovakia S.r.o.
The Respondent contends that the preparations for the online translation service were commenced well before the Complaint was forwarded to it. It submits various statements in this respect (Respondent's Annex 6). The Respondent also submits a copy of a draft website evoking the look and functions of the future site of <translations.biz> (Respondent's Annex 8). The Respondent stresses that it acted duly and honestly in the domain distribution process. Being informed of possible intellectual property rights, as presented by the .biz registry, it performed trademark searches through the databases it considered comprehensive for the purpose. These included WIPO's own database and <xspot.com>, a registrar site allowing all trademark holders to apply for the names. The Respondent indicates that it did not identify any trademark as being identical with "translations". The Respondent rejects the idea to have specific interest in France although it is the holder of the domains <paris.info> and <strasbourg.info>. In any case, the Complainant's reference to these domains is irrelevant to the case and cannot serve as assertion of bad faith.
The Respondent further points out that it has never been aware of the existence of any trademark, service mark or company identical with the word "translations". The name is a generic English word and the Respondent had no intention to compromise Complainant nor disrupt his business.
The Respondent further points out that the internet user would reasonably expect a working translation service available at the address <translations.biz>. A simple reference to the Complainant's website indicates however a very low level of the Complainant's commitment to translation activities in the field of Internet (Respondent's Annex 11).
Finally, referring to WIPO Case N° D2001-0217, the Respondent asks the Panel to hold against the Complainant a finding of reverse domain name hijacking.
7. Discussion and Findings
Pursuant to paragraph 4(a) of the STOP Policy, Complainant has to prove each of the following three elements to obtain a finding that the domain name should be transferred to the Complainant.
(i) The domain name is identical to a trademark or a service mark in which the Complainant has rights;
(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.
Identity with a mark in which the Complainant has rights
Under the STOP proceedings a Complaint may only be filed when the domain name in dispute is identical to a trademark or service mark for which the Complainant has registered an IP claim form. In the present case, Complainant submitted a French trademark registration for the word "translations" which coincides with the domain name at issue. Consequently, the Administrative Panel concludes that the domain name <translations.biz> is identical to the trademark in which the Complainant has rights. The first criterion is therefore satisfied.
Rights or Legitimate Interests in respect of the Domain Name
Pursuant to Article 4(c) of the STOP Policy, the Respondent may demonstrate its rights of or legitimate interests in the Domain Name if:
(i) it is the owner or beneficiary of a trade or service mark that is identical to the domain name or
(ii) before any notice of a dispute to it, it made 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) it (as an individual, business, or other organization) has been commonly known by the domain name even if it has acquired no trademark or service mark rights.
It is clear (and the Respondent does not assert otherwise) that Respondent is not the owner or beneficiary of a trade or service mark that is identical to the Domain Name. Also, the Respondent is not commonly known by the Domain Name even if it might have a commercial interest in it. Consequently, the only question under this title is whether the Respondent demonstrated that it made preparations to use the domain name in connection with a bona fide offering of goods or services before it received any notice of the dispute.
The Respondent has submitted evidence that it is active in the field of traditional translation services for a couple of years already. From the evidence submitted, the Panel concludes that the Respondent started its preparations for a web based translation service in March 2002 at the latest (see Respondent's Annexes 6 and 8). Since the Respondent has been notified of Complainants' Complaint by May 14, 2002, the Panel is satisfied that the Respondent has demonstrated its legitimate rights in view of the preparations it made to use the domain name in connection with translation services, i.e. a bona fide offering of services in the sense of Article 4(c)(ii) of the STOP Rules.
Since the Complainant therefore failed to demonstrate that the Respondent has no rights or legitimate interests in respect of the domain name, there would be no necessity to verify the third criterion, i.e. Respondent's registration or use of the Domain Name in bad faith. However, for the sake of clarity and in presence of a multiple challenge situation (see below 9.), the Panel also verifies whether there has been a registration or use in bad faith.
According to Article 4(b) of the STOP Policy, the Complainant has to submit evidence to the Administrative Panel showing Respondent's registration or use in bad faith. The Complainant does not submit that the Respondent asked for a valuable consideration in excess of its out-of-pocket costs directly related to the Domain Name for the purpose of selling, renting or otherwise transferring the Domain Name to the Complainant (Article 4(b)(i) of the STOP Policy). Moreover, the cases of Article 4(b) (ii) to (iv) of the STOP Policy suggest an intention to cause a damage or profit from the Complainant's reputation (for instance in order to prevent the Complainant from reflecting the mark in a correspondent domain name or by disrupting the business of a competitor or by attempting to attract for commercial gain Internet users by creating the likelihood of a confusion with the Complainant's mark). Apart from the fact that the Complainant fails to submit any evidence showing that the Respondent would have acted in such a manner, the Administrative Panel is also of the opinion that the Complainant failed to demonstrate that the Respondent knew of the existence and the activity of the Complainant's translations service.
The same applies to the Complainant's argument that the Respondent violated Article 2 of the STOP Policy which provides that by applying to register a domain name in the start-up period, the registrant represents to the registrar that to its knowledge the domain name will not infringe upon or otherwise violate the rights of any third party. Indeed, the Complainant registered its trademark in France only, although it alleges broadly that its activity and the fame of its trademark would be of a European or even global character. The Administrative Panel cannot find any evidence supporting this allegation, in particular that the reputation of Complainant's mark (which simply consists of the generic term "translations") has even reached the territory of Slovakia.
It is true that pursuant to the STOP Policy, a registrant has the responsibility to determine whether its domain name registration infringes or violates someone else's rights. However, a registrant should only take reasonable steps to verify whether he might infringe upon or otherwise violate the rights of a third party. It is not incumbent upon the registrant to make a global trademark search. In the present case, the Respondent would have found no reference to the Complainant's trademark if he had made a search in the database of its country of residence, i.e. Slovakia. Moreover, also the Intellectual Property Digital Library (IPDL) accessible via the WIPO's Internet website (http://ipdl.wipo.int/) would not have brought to light any trademark registration of "translations" due to a lack of international registration by the Complainant as the Administrative Panel noticed when carrying out the respective online search. It has been well established by WIPO case-law that bad faith registration cannot be inferred where a complainant with a mark in one country has not discharged the onus of proof that Respondent in another country knew of its mark at the time of registration (see for instance VZ Vermögenszentrum AG v. Anything.com, WIPO Case No. D2000-0527). The fact that the Respondent holds among many other generic domains also the domain names <paris.info> and <strasbourg.info>, which have of course a link to the territory of France, are in the Panel's view not a sufficient proof that the Respondent should have been aware of the Complainant's existence.
Accordingly, the Panel concludes that the Complainant has failed to establish bad faith registration or use on the part of the Respondent.
8. Reverse Domain Name hijacking
The Respondent asked the Administrative Panel to find the Complainant guilty of reverse domain name hijacking based on the precedent in Case N° D2001-0217 (Response, p. 7).
The STOP Rules define in Article 1 Reverse Domain Name Hijacking as "using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name" (see also Article 15(d) of the STOP Rules).
In the present circumstances, the Panel cannot find any bad faith in the Complainant's STOP Complaint. Indeed, the Complainant has been active in the field of translations for many years and is, contrary to the Respondent and since 1987, the holder of the French trademark "translations". Moreover, in contrast to the decision mentioned by the Respondent, the Respondent's registration of the name <translations.biz> did not precede the Complainant's trademark application for "translations". Hence, the Panel cannot find any abuse of the administrative proceeding.
9. Multiple Challenge
The Panel has been informed by the Center that there is a further Complainant claiming rights on <translations.biz>. Pursuant to Article 15(e) of the STOP Rules, the Panel has to specify in its decision whether any subsequent challenges against the Domain Name, that is the subject of the Panel's decision, shall be permitted by using the criteria listed in Article 4(l )(ii) of the STOP Policy.
According to Article 15(e)(ii), in the event that the Respondent demonstrates that it has legitimate rights to the domain name, the Panel will dismiss the complaint and decide that no subsequent challenges under this Policy against the domain name that is the subject of the Panel's decision shall be permitted. This is the case here.
The Panel decides that:
(a) the Complaint is denied;
(b) no subsequent challenges under the STOP Policy against the domain name <translations.biz> shall be permitted.
Dr. Thomas Legler
Date : June 26, 2002