WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
W.W. Grainger, Inc. v. Tarek Soliman/iSMER
Case No. DBIZ2002-00129
1. The Parties
The Complainant is W.W. Grainger, Inc. of 100 Grainger Parkway, Lake Forest, Illinois 60045-5201, United States of America.
Represented by Aimee M. Nolan, Esq. Corporate Counsel, W.W. Grainger, Inc.
The Respondent is Tarek Soliman, of 123/78 Marylebone High Street, London WIM 4AP, United Kingdom.
Respondent is represented by Peter Norton, of Bazley White & Co, Northumberland House, 303-306 High Holborn, London WC1V 7JZ, United Kingdom.
2. The Domain Name and Registrar
The domain name with which this dispute is concerned is: <ball.biz>.
The Registrar with which the domain name is currently registered is Domain Bank, Inc. of 23 West 4th Street, Bethlehem, PA 18015-1603, United States of America.
3. Procedural History
3.1 This is a proceeding under the Start-up Trademark Opposition Policy and Rules ("STOP") for the .Biz domain. Complainant having duly filed notice of an IP claim and intent to file a STOP Complaint, the Complaint was filed with the WIPO Center ("the Center") on April 26, 2002, by e-mail and on April 30, 2002, in hard copy.
3.2 On May 9, 2002, the Centre checked the Complaint for formal compliance with STOP and the STOP Rules.
3.3 The Center, having determined that all formal requirements had been met, sent the Notification of Complaint and Commencement of Administrative Proceeding on May 9, 2002, by courier and by e-mail to Respondent and to the registrar.
3.4 The communication of the Complaint satisfies the provisions of Rule 2(a) of the STOP Rules and the Panel is satisfied that Respondent received due notice of the Complaint.
3.5 The Administrative Proceeding commenced on May 9, 2002, and the Response was due on May 29,2002.
3.6 The Response was received by the Center on May 28, 2002, by e-mail and on May 30, 2002, in hardcopy.
3.7 Sole Panelist, Desmond J. Ryan, having filed the Statement of Acceptance and Declaration of Impartiality and Independence, the Panel was appointed on June 13, 2002.
4. Factual Background
4.1 The domain name was registered with the registrar in question, on March 27, 2002.
4.2 Complainant is a U.S. corporation which claims to be the leading North American distributor of industrial maintenance and repair equipment and cleaning products. The trade mark "BALL" has been used extensively in respect of a wide range of cleaning and finishing products by Complainant and its predecessor in business since 1951 (Complaint Annex 4).
4.3 Complainant has registrations of the trademark "BALL" in USA, Canada and Mexico covering a wide range of cleaning, polishing and finishing products, lubricants, air fresheners, insecticides and other products of that nature (Complaint Annex 3).
4.4 Respondent is the registrant of 128 domain names, the majority of which connote an Islamic or Middle Eastern connection comprising words such as "muslim", "haj", "halal", together with additions or orthographic variations (Complaint Annex 8). Each of these registrations shows Respondent as the owner of the domain name with, in some cases, the word "ismer" added. No other information is available in relation to Respondent or to "ismer" save that in the Response, the Respondent sometimes refers to "ismer" as a third party which is a partnership under UK law and sometimes, by implication, as the Respondent. Respondent states that "the Respondent is a small partnership with legitimate standing under UK law".
5. Applicable Dispute
5.1 This dispute is one to which the STOP applies. Complainant duly registered an IP claim and duly filed the Complaint on receipt of notice of the registration of the domain name. As applicant for the domain name Respondent would have received notice of Complainantís IP claim and details of its trademarks.
5.2 To succeed in its Complaint, Complainant must show that each of the conditions of paragraph 4(a) of the STOP are satisfied, namely that:
(i) the domain name is identical to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered or is being used in bad faith.
6. The Partiesí Contentions
6.1 Complainant contends that:
(i) the domain name is identical to Complaintís registered trademark Ball;
(ii) Respondent does not appear to have any relationship or affiliation with any person or company having the name Ball and has no apparent trademark or other rights in relation to that name;
(iii) Respondentís action in registering over 120 domain names, some of which incorporate the company names of famous businesses or which are generic or common names, indicates a pattern of behaviour by Respondent of registering domain names for which he has no legal or corresponding trademark rights in order to prevent the owner of the trademark from reflecting that mark in a corresponding domain name.
6.2 Respondentís contentions may be summarised as follows:
(i) he doesnít dispute that Complainant has rights in the trademark "BALL" but contends that that is not sufficient to prove Respondentís bad faith or lack of legitimate right or interest;
(ii) Complainant cannot claim exclusive right to the trademark Ball, there are many other companies having the word "ball" as a trademark or as part of their company name;
(iii) the word "ball" is a generic word and there are other companies which own domain names which include the word "ball";
(iv) "ismer" stands for "internet sport and media resources" and in the logo adopted by ismer the dot in the "i" is a ball (Response Exhibit 8);
(v) it is inconceivable that a web user visiting the <www.ball.biz> site would expect to find Complainantís site or that there would be any confusion between Respondentís future sports content and Complainantís mark;
(vi) the domain names cited by Complainant do not incorporate the names of famous businesses but words which are generic and are held awaiting development on behalf of a project called the "Zam Zam Cooperative Project" or, in the case of domain names incorporating the words "berkeley-Square" they relate to an area where Respondent has property interests;
(vii) Respondent has never sought to sell or transfer any domain names for gain;
(viii) the partners of "ismer" are active in various internet services including hosting and running of an internet cafe and that he and his colleagues have previously been involved in organizing sporting events including one involving participation of national foot ball teams;
(ix) Complainant has attempted to use unfair competition and misuse of trademark law in order to obtain the domain name and Respondent requests a finding of reverse domain name hijacking.
7. Discussion and Findings
7.1 The Panel finds, and Respondent does not contest, that the domain name is identical to the trademark in which Complainant has rights.
Rights and Legitimate Interests
7.2 Complainant has produced prima facie evidence that Respondent has no connection with any person or organization having a name or trademark which includes or refers to the word "ball". Respondent has failed to rebut Complainantís prima facie showing. Respondentís asserted interest in matters of sport is insufficient to establish a right or interest in the word "ball". Complainant is not assisted by the production of the alleged letterhead of "iSMER" (Respondent Exhibit 8). "iSMER" is, according to Respondentís submission, a third party and in any event the submission of a blank letterhead showing a picture of a soccer ball cannot be held to demonstrate a right or interest in the word "ball".
7.3 Respondent has failed to demonstrate any right or interest based on any of the circumstances enumerated in paragraph 4(c) of the STOP or any other circumstances which could justify Respondentís claim to a legitimate right or interest.
Bad Faith and Registration
7.4 The Complainant bases its allegation of bad faith on the fact that Respondent has registered over 120 domain names none of which resolved to active websites and some of which include the name of famous businesses. Complainant contends therefore that Respondent has engaged in a pattern of registering domain names for which it has no legal or corresponding trademark rights and, at least in the present case, in order to prevent the trademark from reflecting the mark in a corresponding domain name. Complainant cites in support a number of prior Panel decisions including, Helen Folsade Adu v Quantum Computer Services Inc., WIPO Case No. D2000-0794, which involved similarly to the present case, registration by Respondent of a bank of over 200 domain names some of which contained generic words, others of which contained well known names or marks.
7.5 Although the mere registration and passive holding of a large bank of domain names does not prove bad faith, it is an indicator of bad faith where the domain in question is a well established trademark and Respondent cannot establish any basis for a claim to legitimate right or interest. Ordinarily, however, it would be necessary to take into account the fact that Respondent is located outside the area in which Complainantís trade is principally carried on. However in the case of complaints under the STOP, there is an added element which is not present in the case of claims under the UDRP.
7.6 Under the STOP procedures the owner of a trade mark was afforded the opportunity to file a notice of an intellectual property claim. That was done by Complainant in this case. Notice of the intellectual property claim is then sent to applicants for domain names which incorporate the mark, the subject of the notice. The applicant can then either proceed in the face of the knowledge of the trademark or withdraw.
7.7 There cannot be any question therefore that in this case Respondent proceeded in the face of knowledge of Complainantís trademark rights. To so proceed, in the absence of any claim to rights or legitimate interests in the domain name, constitutes bad faith. See for example, Rodale Inc. v Cass Foste, WIPO Case No. DBIZ2002-00148 and Gene Logic Inc. v Cho Kyu Bock, FA103042. The Panel therefore finds that the domain name was registered in bad faith.
8.1 The Panel finds and orders that:
(i) the domain name is identical to a trademark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in the domain name;
(iii) the domain name was registered in bad faith;
(iv) the domain name shall be transferred to Complainant.
Dated: July 5, 2002