WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Creo Inc. v. Creo Communication AS dba Creo (sponsorbyrŚet)
Case No. DBIZ2002-00160
1. The Parties
The Complainant is Creo Inc. of 3700 Gilmore Way, Burnaby, British Columbia, Canada, represented by Seann W. Hallisky, Esq. of Christensen OíConnor Johnson Kindness PLLC of Seattle, Washington, United States of America.
The Respondent is Creo Communication AS dba Creo (sponsorbyrået), of Parkveien 33, N-0258, Norway represented by Børre Sig. Bratsberg, of Advokatfellesskapet Bratsberg, Oslo, Norway.
2. The Domain Name and Registrar
The disputed domain name is <creo.biz> and the Registrar is Ascio Technologies Inc. of Copenhagen, Denmark.
3. Procedural History
This is an administrative proceeding in accordance with 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 the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .BIZ ("the WIPO Supplemental STOP Rules").
The Complaint was filed at the WIPO Arbitration and Mediation Center ("the Center") by email on April 27, 2002, and in hard copy on April 30, 2002. Its receipt was acknowledged on May 7, 2002. That day the Complainant filed a supplementary submission by email attaching a complete Exhibit E in place of the incomplete exhibit inadvertently included the Complaint. On May 23, 2002, the Center asked the Registrar to indicate the specific language of the registration agreement. On May 28, 2002, the Registrar stated that the language of the Registration Agreement is English. On June 3, 2002, the Center determined that the Complaint complied with all formal requirements of the STOP Rules.
That day the Center formally dispatched copies of the Complaint by post/courier (with enclosures) to the Respondent at the address as recorded with the Registrar and by email (without attachments). The Center included with that material a letter dated June 3, 2002, containing notification of the commencement of this administrative proceeding, with copies (of the Complaint without attachments) to the Complainant, the Registrar and ICANN.
The last day specified by the Center for a Response was June 23, 2002. A Response was filed by email on June 20, 2002, and in hard copy on June 21, 2002. On June 24, 2002, the Center acknowledged receipt of the Response.
On July 1, 2002, the Center formally notified the parties of the appointment of Alan L. Limbury as panelist, Mr. Limbury having submitted a Statement of Acceptance and Declaration of Impartiality and Independence. That day the Center transmitted the case file to the Panel and notified the parties of the projected decision date of July 15, 2002.
The Panel is satisfied that the Complaint complies with the requirements of the STOP Rules and the WIPO Supplemental STOP Rules; payment was properly made; the Panel agrees with the Centerís assessment concerning the Complaintís compliance with the formal requirements; the Center discharged its responsibility under paragraph 2(a) of the STOP Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint; a Response was filed within the time specified in the STOP Rules and the Panel was properly constituted.
The language of the proceedings was English, being the language of the Registration Agreement.
4. Factual Background
The Complainant was founded in 1983 as an electro-optical developer. The name and trademark/service mark CREO has been used by Complainant, its predecessors and licensees in the United States since 1985 in conjunction with the business of manufacturing and selling imaging systems for the prepress, printing, printed circuit board, electronic, semiconductor and flat panel display industries, and providing installation and repair, training and technical consultation and product support services.
The Complainant is the registered proprietor of numerous trademark registrations in the United States and elsewhere (including Norway) for the mark CREO and CREO stylized. The earliest U.S. registration dates from February 3, 1987, and is incontestable. The earliest registration in Norway was on April 2, 1998.
Complainant is the registrant of the domain names <creo.com> and <creo.info>.
On August 3, 2001, Complainant filed IP Claim No. 39234 under the STOP.
Respondent was incorporated in January 1996 under the name Sponsorbyrået AS. It formally changed its name to Creo Communication AS on September 27, 2001, since when all of its operations, services, communication and correspondence have been conducted under the name CREO.
Respondent provides consultant services within the market for strategic communication, sponsoring, partnership marketing, advertising and events. It clients (all of whom were notified of the name change in September 2001) include several of Norwayís largest companies within insurance, banking, pharmaceuticals, real estate, beverage production, building contractors and automobile importers.
Since the name change, Respondent has been operating a website under the domain name <creo-cpm.no>.
The disputed domain name was registered in the name of the Respondent on March 27, 2002.
5. Partiesí Contentions
Complainant has prior rights in the mark CREO since its trademark registrations date from February 1987 and its common law rights date from 1985, prior to the incorporation of Respondent in 1996.
The disputed domain name is identical to Complainantís trademark CREO.
Respondent has no rights or legitimate interest in the disputed domain name: it owns no intellectual property rights in that name; it advertises its goods and services at <www.sponsorbyrat.no> and <www.creo-cpm.no>; it did not file an IP Claim for CREO; it was incorporated long after Complainant used its mark in the United States and elsewhere.
The disputed domain name was registered in bad faith: Respondent had full knowledge of Complainantís trademark rights because Respondent must have received notification of Complainantís IP Claim before proceeding with its registration application. See Gene Logic, Inc. v. Cho Kyu Bock, NAF Case No. FA103042, which states that when a domain name is registered in conflict with an IP Claim, mere registration of the conflicting domain name constitutes bad faith under the STOP Rules.
Further, Respondent registered the disputed domain name in order to prevent Complainant from expressing its registered trademark in a corresponding domain name. It has made no use nor demonstrable preparations to use the disputed domain name, which has been on "hold" due to the Complainantís IP Claim and the Registry Operatorís policies.
The decision to change the company name was partly to avoid confusion with the Norwegian company Sponsorservice AS and partly to find a name more descriptive of Respondentís business concept of creative communication. The name CREO was taken from the latin word creo, meaning "create, make, develop, produce, generate, process, cause, breed".
Respondent applied to register the disputed domain name because its currently used domain name <creo-cpm.no> is phonetically hard and not very intuitively accessible. Respondent had no knowledge of Complainant or its marks at the time.
The disputed domain name was not registered in bad faith. Respondent has been unable to use it because it has been on "hold". This should not be held against Respondent.
6. Discussion and Findings
STOP Rule 15(a) requires this Panel to decide this Complaint on the basis of the statements and documents submitted and in accordance with the STOP, the STOP Rules and any rules and principles of law that it deems applicable.
Complainant is required by paragraph 4 (a) of the STOP to prove each of the following three elements: --
(a) the domain name is identical to a trademark or service mark in which Complainant has rights;
(b) Respondent has no rights or legitimate interests in respect of the domain name; and
(c) the domain name has been registered or is being used in bad faith.
Rights in a trademark
Complainant clearly has rights in the registered trademark CREO in numerous countries.
The disputed domain name is identical to Complainantís trademark CREO. Complainant has established this element of its case.
Complainant bears the onus of proof on this, as on all issues. It is irrelevant in these proceedings whether Complainant has prior or superior trademark rights to those (if any) of Respondent in the mark CREO. The relevant issue is whether Respondent has any rights or legitimate interests in the disputed domain name.
Respondent has conclusively demonstrated, under STOP Rule 4(c)(iii), that it has rights and legitimate interests in respect of the disputed domain name by reason of its being commonly and officially known in Norway, since September 2001, by the corporate name Creo Communication AS.
Complainant has failed to establish this element.
Complainant incorrectly contends that Gene Logic, Inc. v. Cho Kyu Bock, NAF Case No. FA103042, states that when a domain name is registered in conflict with an IP Claim, mere registration of the conflicting domain name constitutes bad faith under the STOP Rules. While drawing that conclusion on the facts of that case, the learned panelist stated stated:
"The Panel, however, wishes to make clear that not every situation where there is a Notice of conflict under the STOP Policy would always result in this outcome. Each case should be considered on all of the facts and circumstances, since good faith is necessarily a question of intent, actual or constructive knowledge, and the likely effect of the actions of the parties."
Respondent has refuted any possible claim of bad faith that could be made because Respondent has been known by a corporate name including the word Creo since prior to notice of this dispute. Respondent did not act in bad faith in proceeding to register the disputed domain name despite notice of Complainantís IP Claim because Respondent had a legitimate interest in the disputed domain name and was entitled to take the view that its operations do not conflict with Complainantís trademark coverage, in Norway or elsewhere.
Complainant has failed to establish this element.
Reverse domain name hijacking
STOP Rule 1 defines 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 STOP Rule 15(d). To prevail on such a claim, Respondent must show either that Complainant knew of Respondentís unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith: Sydney Opera House Trust v. Trilynx Pty. Ltd., WIPO Case No. D2000-1224 and Goldline International, Inc. v. Gold Line WIPO Case No. D2000-1151 or that the Complaint was brought in knowing disregard of the likelihood that Respondent possessed legitimate interests: Smart Design LLC v. Hughes, WIPO Case No. D2000-0993.
Before the Complaint was filed, Complainant clearly knew that Respondent was known as CREO as part of its corporate name. However, the Panel regards the Complaint as misconceived rather than as being brought in bad faith: Complainant failed to understand that this administrative proceeding is not concerned with an examination of which party has the better right to the trademark or domain name. Under these circumstances a finding of reverse domain name hijacking would be inappropriate.
Pursuant to paragraphs 4(i) of the STOP and 15(d) of the STOP Rules, the Panel finds that this dispute is not within the scope of paragraph 4(a) of the STOP and accordingly the Complaint is dismissed.
Alan L. Limbury
Dated: July 4, 2002