WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ascom Holding AG v. Domain Administrator
Case No. DBIZ2002-00078
1. The Parties
Complainant is Ascom Holding AG, a corporation organized and existing under the laws of Switzerland, with a principal place of business at Belpstr. 37, CH- 3000 Bern 14,
The Respondent in this proceeding is Domain Administrator, a subsidiary of Telemar srl, a corporation organized and existing under the laws of Italy, with a principal place of business at Via Enrico Fermi 235, IT Ė 36100 Vicenza, Italy.
2. The Domain Name and Registrar
The domain name in dispute is <ascom.biz>.
The registrar for the disputed domain name is Open SRS c/o Tucows.com Inc, 96 Mowat Ave, Toronto, Ontario Ontario M6K3M1, Canada.
3. Procedural History
The resolution of this dispute willdispute will proceed according to the provisions of the Start--up Trademark Opposition Policy for <.BIZ> (STOP) adopted by NeuLevel, Inc. and approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on May May 11, , 2001, the Rules for Start-up Trademark Opposition Policy for <.BIZ> adopted by NeuLevel, Inc. on May May 11, , 20012001, (the STOP Rules), and the World Intellectual Property Organization Arbitration and Mediation Centerís Supplemental Rules for Start-up Trademark Opposition Policy for .<.BIZ> (the Center, the Supplemental STOP Rules).
The Complaint was filed on April April 26, , 20022002, by e-mail, and on April April 30, , 20022002, in hard copy. In response to a Notice of Deficiency sent by the Center on May May 13, , 2002, Complainant filed an Amended Complaint on May May 14, , 2002, changing the Respondent from Telemar srl to Domain Administrator. On May May 16, , 20022002, the Center forwarded a copy of the Complaint to the Respondent by registered mail and by e-mail and this proceeding officially began.
Respondent sent a STOP Response to the Center on May May 31,, 20022002, by e-mail, and on June June 4, , 20022002, by hard copy.
The Administrative Panel submitted a Declaration of Impartiality and Independence on July July 1, , 2002, and the Center proceeded to appoint the Panel on July July 3, , 2002. The Panel finds the Center has adhered to STOP, the STOP Rules and the Supplemental STOP Rules in administering this Case.
The due date of this Decision is July 17, 2002.
4. Factual Background
Complainant is a Swiss company operating in the field of telecommunications. Complainant owns several registered trademarks in "Ascom" (collectively referred to hereinafter as the "Complainant Trademark"). In addition, Complainant has registered and uses the domain names, <ascom.com>, <ascom.ch> and <ascom.it> to advertise and promote its services.
Respondent is listed as the Registrant of the disputed domain name. The record of registration was created on Marchon March March 27, , 2002. Respondent has a contract to provide services to the Association of commerce, tourism and services of Vicenza (the "Association") (Exhibit 2 of the Response).
5. The Partiesí Contentions (Summarized)
- Complainant is a Swiss company which employs more than 10,000 employees worldwide in the international field of telecommunications, service automation and energy systems. It specializes in the building and operation of secure, highly reliable networks and the integration of voice and data.
- Complainant owns registered trade and service marks for "Ascom" (Annex 3 to the Complaint) and has used the mark continuously since 1987.
- Complainant has also registered the domain names, <ascom.com>, <ascom.ch> and <ascom.it> for commercial and publicity purposes (Annex 4 of the Complaint).
- Respondentís domain name is identical or confusingly similar to the Complainant Trademark and to Complainant's registered domain names. The Complainant Trademark and Complainant's domain name were registered before Respondent registered the disputed domain name.
- Respondent has neither rights nor legitimate interests in the disputed domain name. Thus, Complainant should have the first priority right to apply for the disputed domain name.
- Complainant never permitted, authorized or licensed Respondent's use of the Complainant Trademark.
- The Respondent registered the <ascom.biz> domain name in bad faith. The trademark "Ascom" is well known and established worldwide. Complainant sells a wide range of products in Italy for the telecommunications business, a field in which Respondent operates. Thus Respondent should have known about the legally protected trademark, for business as well as for common use.
- Respondent, an Italian corporation formed in November 1995, is actively engaged in computer consulting service and software development for clients in Italy and elsewhere.
One of its clients is the Association, which is well known throughout Italy as "Ascom".
- Respondent registered the disputed domain name on behalf of the Association. The Association is willing to acquire the disputed domain name, paying Respondent only the documented out-of-pocket costs directly related to registration.
- Respondent did not register the disputed domain name in bad faith. Respondent was not aware of Complainant or the Complainant Trademark.
6. Discussion and Findings
In order for Complainant to prevail and have the disputed domain name <ascom.biz> transferred to it, Complainant must prove the following (STOP, paragraphs 4(a)(i-iii):
- the domain name is identical to a trademark or service mark in which Complainant has rights; and
- the -Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name was registered or is being used in bad faith
The Panel finds that Complainant owns valid registrations of the trade or service mark "Ascom" through a World Intellectual Property Organization registration no. 561969 dated December December 20, , 1990, valid in countries as various as Algeria, Germany and China and including, notably, Italy where the Respondent is located (Complaint Annex 3) .
As a result, it is evident from the record that Complainant's valid rights in that trade or service mark came into existence prior to Respondent's registration of the disputed domain name. The disputed domain name <ascom.biz> is the same as Complainantís Trademark except for the inclusion of the gTLD "<.biz"> at the end, an inclusion which many preceding panels operating under STOP have found to be inconsequential in determining identity or similarity.
The Panel thus finds that Complainant has satisfied its burden under STOP, paragraph 4(a)(i), to show that the disputed domain name is identical to a trademark or service mark in which Complainant has rights.
No Rights or Legitimate Interests
Respondent has failed to submit to the Panel any documentation to support a finding that Respondent obtained a license, permission or consent from Complainant to use the Complainant Trademark.
Under STOP, Respondent could have established its rights in the disputed domain name by satisfying the criteria listed in STOP paragraphs 4(c)(i) or (iii), but Respondent has furnished no evidence that it owns a trade or service mark identical to the disputed domain name or that it is commonly known by the disputed domain name. Respondent's contention that it registered the disputed domain name on behalf of its client, the Association, which Respondent claims is well known in Italy as "Ascom", is not relevant to this issue. Previous panels authorized under STOP or the Uniform Policy for Domain Name Dispute Resolution have concluded that a respondent should not be allowed to assert rights in a domain name on behalf of a third party (see Seagate Tech. LLC v. TC Servs., Nat. Arb. Forum FA 102782 (February. February. 7, , 2002) and RC Ritzenhoff Cristal AG v. Hiroki Mitsuhashi, WIPO D2000-1796 (February February 19, , 2001)). While panels have recognized as an exception to the rule above instances where that third party has formally intervened in the proceeding, such is not the case here.
Respondent has not made a presentation to the Panel that Respondent has made use of the disputed domain name or that it has demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods and services (STOP, paragraph 4(c)(ii)). Again, Respondent's contention that it intended to transfer the disputed domain name to a third party is insufficient to establish Respondent's preparations to use the disputed domain name.
In view of the above, the Panel finds that Complainant has satisfied its burden under STOP, paragraph 4(a)(ii), to show that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraphs 4(b)(i) through 4(b)(iv) of STOP list specific circumstances, evidence of which Complainant may submit to the Panel, that demonstrate Respondent's bad faith registration of a domain name. Paragraph 4(b)(iii) provides as one of these circumstances, "You have registered the domain name primarily for the purpose of disrupting the business of a competitor." However, while Complainant has alleged that Respondent operates in the same field as Complainant, Complainant has neither alleged nor shown that Respondent intended to disrupt Complainant's business by registering the disputed domain name. Similarly, Complainant has failed to submit evidence to the Panel with respect to any of the other specifically listed circumstances.
While the listing above is non-exhaustive by design and allows the Panel to find other grounds for bad faith, Respondent Complainant has presented no other compelling reasons to the Panel upon which to base a finding of bad faith registration. Complainant's only argument to sustain a bad faith finding relies on the asserted worldwide fame attached to the Complainant's Trademark. While STOP panels may have reached a finding of bad faith based on a similar argument in prior cases, in this case the Panel concludes that "Ascom" is not among that relatively small group of trademarks whose international recognition is so great that a finding of bad faith domain name registration can rest substantially on that basis alone.
The Panel also is aware that, under the STOP, the Respondent was informed of the Complainantís trademark claims at the time the Respondent effected this domain name registration. However, the Panel finds the Respondent did not proceed with this registration while knowingly infringing the Complainantís trademark claims. On the contrary, it appears to the Panel that the Respondent believed it had the right to use the disputed domain name. (see e.g., W.W. Grainger, Inc. v. Torek Soliman/iSMER, WIPO Case No. DBIZ2002-00129, July 5, 2002, where it was found the Respondent knew it was infringing the Complainantís mark and made no pretense to legitimate rights or interests; and Aware, Inc. v. Cambridge, WIPO Case No. DBIZ2002-00014, July 12, 2002, where rebuttable presumption of notice was given to the STOP trademark claim notice to the Respondent at the time the disputed domain name was registered, but where bad faith instead was based on the Respondentís intent to sell the disputed domain name at a profit and to prevent the Complainant from otherwise using the domain name).
The Panel thus finds that Complainant has failed to satisfy its burden under STOP paragraph 4(a)(iii) to show that the disputed domain name was registered or being used in bad faith or being used.
The Panel has found that Complainant has failed to prove that Respondent has registered or being used the disputed domain name, <ascom.biz>, in bad faith as required per STOP at section 4(a)(iii). Therefore, pursuant to STOP section 4(i) and STOP Rule 15, the Panel orders that the disputed domain name, <ascom.biz>, remain registered to the Respondent, Domain Administrator.
Dennis A. Foster
Dated: July 1729, 2002