WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Zurich Insurance Company v. Sara Lee/DE N.V.
Case No. DBIZ2002-00145
1. The Parties
The Complainant is Zurich Insurance Company, of Mythenquai 2, PO Box 8022 Zurich, Switzerland represented by Harbottle & Lewis, Solicitors, of Hanover House, 14 Hanover Square, London, W1S 1HP, United Kingdom.
The Respondent is Sara Lee/DE N.V. of Vleutensevaart 100, 3532 AD Utrecht, The Netherlands.
2. The Domain Name and Registrar
Domain Name is <relax.biz> ("the Domain Name").
The Registrar is Namebay SAM, of 24 bd Princesse Charlotte, MC 98000, Monaco.
3. Procedural History
The Complaint was received by WIPO in electronic form on April 27, 2002, and a hard copy on May 15, 2002. WIPO has verified that the Complaint satisfies the formal requirements of the Start-up Trademark Opposition Policy ("the STOP Policy") and the Rules relating thereto and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.
On May 16, 2002, WIPO notified the Respondent of the Complaint in the usual manner and a Response was received by WIPO on June 4, 2002, in electronic form, and on June 7, 2002, as a hard copy.
The Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
4. Factual Background
(1) The Domain Name was registered by the Respondent on March 27, 2002. On April 3, 2002, the Complainant was notified that the Domain Name, which matched its IP claim for the trade mark ĎRELAXí, had been registered by the Respondent.
(2) The trade mark "RELAX" in which the Complainant alleges it has rights has been registered widely. The earliest such registration appears to be Swiss Registration No. 418752 dated April 5, 1995. The Complainantís registrations are all in respect of a variety of services related to the insurance industry.
(3) The Complainant is an internationally famous insurance company.
(4) The Respondent, a Dutch company, is a member of the similarly famous Sara Lee group of companies and is the registered proprietor of, inter alia, Benelux Trade Mark No. R302931A in respect of the trade mark "RELAX" in Class 30, dated July 2, 1965, i.e. some 30 years earlier than the earliest of the Complainantís registrations. "RELAX" has also been widely registered as a trade mark by the companies in the Sara Lee group of companies, and is used as a brand name for coffee and tea.
(5) The Complainant was unable, before filing the Complaint, to find "evidence of any trade mark registrations or applications by the Respondent in respect of the name RELAX", despite the existence of the extensive portfolio disclosed by the Response.
5. Partiesí Contentions
(i) In the light of the foregoing factual background, the Panelist does not propose to recite the Complainantís contentions, which are either speculative or based on inferences which derive from its failure to detect the existence of any of the Respondentís trade mark registrations.
The Respondent states that:
(i) It intends to use the Domain Name in the near future;
(ii) It has absolutely no intention of selling or transferring the Domain Name to a third party;
(iii) "RELAX" is seen as one of its key brands.
6. Discussion and Findings
According to paragraph 4(a) of the STOP Policy, the Complainant must prove 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 has been registered or is being used in bad faith.
There is no doubt that the Domain Name is identical to the trade mark "RELAX" in which the Complainant has rights, and the Complainant has established (i).
However, given the extensive, and in many cases much earlier registrations of "RELAX" by the Respondent and the fact that the trade mark forms one of its key brands, it is plain that the Respondent has rights and legitimate interests in respect of the Domain Name, and that the Complainant has failed to establish element (ii).
Finally, there is no evidence that the Respondent registered or has used the Domain Name in bad faith. On the contrary, registration of the Domain Name by the Respondent was a wholly legitimate act. It is the Complainantís misfortune that the Respondent "got there first".
The finding that the Complainant has failed to establish either of elements (ii) or (iii) above is sufficient for dismissing this Complaint.
Paragraph 4(l) of the STOP Policy requires the Panelist to decide, in accordance with the criteria there set out, whether to allow any further challenges. Having decided that the Complainant has failed to establish its case, two options are open to the Panelist, as set out in paragraph 4(l)(ii)(2) and (3) of the STOP Policy.
"2. In the event that you [i.e. the Respondent] demonstrate that you have 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(s) that is/are the subject of the Panelís decision shall be permitted.
3. In the event that you do not, or are unable to demonstrate legitimate rights to the domain name(s), and the Complainant is unable to demonstrate either (a) it has legitimate rights, or (b) the domain name(s) was/were registered in bad faith, the Panel will dismiss the complaint, and decide that subsequent challenges under this Policy against the domain name(s) that is/are subject of the Panelís decision shall be permitted. Such challenges under this Policy, however, may not be brought by the same Complainant."
A finding in accordance with (2) above would exclude any further challenges. The Respondent has clearly demonstrated that it has "legitimate rights" to the Domain Name, and accordingly it is appropriate to order that no subsequent challenges to the Domain Name under the STOP Policy shall be permitted.
The Complaint is dismissed.
In accordance with STOP Policy paragraph 4(1)(ii)(3), the Complainant having failed in the Complaint and the Respondent having proved to the satisfaction of the Panel that it has legitimate rights in respect of the Domain Name, the Panel orders that no subsequent challenges to the Domain Name under the STOP Policy shall be permitted.
Dated: July 3, 2002