WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Roberts Research Group Pty Ltd v. Spacetel Communications
Case No. DBIZ2002-00166
1. The Parties
Complainant is Robert Research Group Pty Ltd, with offices at Level 6, 333 Collins Street, Melbourne, VIC, Australia, 3000, represented by Ken Roberts.
Respondent is Spacetel Communications, 37 rue Guersant, 75014 Paris, France.
2. The Domain Name and Registrar
The domain name at issue is <dialogue.biz> (the Domain Name), registered on March 27, 2002, with Alldomains.com Inc., California, United States of America.
3. Procedural History
The WIPO Arbitration and Mediation Center ("the Center") received Complainant's complaint on April 27, 2002 (electronic version), and May 6, 2002 (hard copy). The Center verified that the complaint satisfies the formal requirements of the Start-up Trademark Opposition Policy for .BIZ ("the STOP"), the Rules for the Start-up Trademark Opposition Policy ("the STOP Rules"), and the Supplemental Rules for Start-up Trademark Opposition Policy for .BIZ ("the WIPO Supplemental STOP Rules"). The formal date of the commencement of this administrative proceeding is May 15, 2002.
Having verified that the complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted on May 15, 2002, to Respondent and to Alldomains.com Inc., Notification of Complaint and Commencement of the Administrative Proceeding, by post and e-mail, in accordance with the following contact details:
37 rue Guersant,
Paris, France, 75017
5 rue Dareau
Paris, France, 75014
The Center advised that the response was due by June 3, 2002.
Respondent did not file a response by that date. Consequently, the Center issued a Notification of Respondent Default on June 5, 2002
On July 5, 2002, the Center invited Mr. Geert Glas to serve as a panelist. Having received Mr. Geert Glas' Statement of Acceptance and Declaration of Impartiality and Independence on July 5, 2002, the Center transmitted to the parties a Notification of Appointment of Administrative panel and Projected Decision Date, in which Mr. Geert Glas was formally appointed as the Sole Panelist on July 15, 2002. The sole panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the STOP Rules and WIPO Supplemental STOP Rules.
The Administrative Panel shall issue its Decision based on the complaint, the response, the evidence presented, the STOP, the STOP Rules and the WIPO Supplemental STOP Rules.
4. Factual Background
According to the information on the web site of Complainant, located at "www.robertsresearch.com.au", Complainant is a company which offers market research services. Amongst others, Complainant offers services to facilitate the transfer of information between clients and their key customers and business partners, a method it calls Dialogue Relationship Management System.
DIALOGUE was registered by Complainant as Australian trademark. The trademark was filed on November 15, 1995, for services of class 35, including market research services, and has as its registration number 678 184.
The business activities of Respondent are unknown. It appears from a trademark search attached to the complaint that Respondent does not have French, Australian or international trademark rights in the word "dialogue", but it is not known whether Respondent has other trademark rights in the word "dialogue". However, Respondent does not exploit the Domain Name, nor any other domain name with "dialogue" as its second level domain.
From the exhibits attached to the complaint, it appears that prior to this complaint, a contact was established between Respondent and Complainant, both by telephone and by e-mail, in order to try to negotiate a transfer of the Domain Name. Respondent thereby offered to sell the Domain Name, first for 10,000.00 USD, later for 5,000.00 USD.
5. Parties’ Contentions
According to Complainant, the Domain Name registered by Respondent is identical to Complainant's trademark.
Moreover, Complainant claims it has been unable to determine any rights or legitimate interest in respect of the Domain Name, because it could not find relevant information concerning the Respondent, and because Respondent does not have French, Australian or international trademark rights in the word "dialogue".
Finally, Complainant contends that Respondent registered the Domain Name in bad faith, because of the following reasons:
Firstly, Respondent is not the owner or beneficiary of a trade or service mark that is identical to the domain name. Secondly, Respondent does not use, or has not made preparations to use the Domain Name. Thirdly, Respondent has attempted to sell the Domain Name for a large sum of money. Fourthly, Respondent is not commonly known by the Domain Name.
Consequently, Complainant requests the transfer of the Domain Name to Complainant.
Respondent did not submit any response.
6. Discussion and Findings
Paragraph 15 (a) of the STOP Rules instructs the Administrative Panel as to the principles the Administrative Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4 (a) of the STOP policy directs that Complainant must prove each of the following:
1. that the Domain Name registered by Respondent is identical to the trademark or service mark in which Complainant has rights; and,
2. that Respondent has no rights or legitimate interests in respect of the Domain Name; and,
3. that the Domain Name has been registered or is being used in bad faith.
The Domain Name is <dialogue.biz>.
Complainant has trademark rights in the word "dialogue".
In view of the above, the Administrative Panel finds that the Domain Name is identical to the trademark of Complainant.
2. Rights or Legitimate Interests
In view of the difficulty for complainants to prove respondents' absence of rights or legitimate interests in a domain name, UDRP decisions have often rightly considered this burden of proof to be borne by complainants satisfied when a complainant could credibly state, taking into account all the facts of the case, that he was unaware of any element or circumstance which could be indicative of such right or legitimate interest.
In the present case, Complainant claims internet and trademark searches did not reveal that Respondent has any rights or legitimate interests in the Domain Name. Indeed, no information as to Respondent or its activities would have been obtained through an internet search. A trademark search would have showed that Respondent does not have French, Australian or international trademark rights in the word "dialogue".
On this basis, and on the basis of the Panel's verifications as to the absence of information on Respondent or its activities, the Panel is satisfied that Complainant was unaware of any legitimate interests Respondent might have.
Respondent did not submit a response demonstrating that it would have any such rights or legitimate interests.
Therefore, the Panel finds that Respondent has no rights or legitimate interests in respect of the Domain Name.
3. Registration or use in bad faith
Complainant contends that Respondent registered the Domain Name in bad faith because:
- Respondent is not the owner or beneficiary of a trade or service mark that is identical to the Domain Name.
- There is no evidence that Respondent has used or made preparations to use the Domain Name or a name corresponding to the subject domain name in connection with a bona-fida offering of goods or services, considering that the Domain Name is not active, and that Respondent confirmed during a telephone conversation with Complainant that he was unsure whether the Domain Name would be used.
- Respondent has offered the Domain Name for sale for a large amount of money, as was confirmed by Respondent in an e-mail dated April 26, 2002.
- Respondent is not commonly known by the Domain Name.
Respondent failed to submit a response in which it could have demonstrated that the Domain Name was registered in good faith.
Neither the circumstance that Respondent would not be the owner or beneficiary of a trade or service mark that is identical to the Domain Name, nor the circumstance that Respondent would not have used or made preparations to use the Domain Name or a corresponding name, nor the circumstance that Respondent would not be commonly known by the Domain Name, are as such sufficient evidence that Respondent would have registered or used the Domain Name in bad faith.
However, it appears from the exhibits attached to the Complaint that Respondent has offered the Domain Name for sale to Complainant. Respondent's e-mail dated April 26, 2002, states: "Ma proposition la plus basse concernant dialogue.biz suite à nos conversations téléphoniques avec André est de 5000 dollars US. (Dialogue est en France une marque déposée depuis 1988 mais aussi un nom générique…) Ma première proposition étant de 10000 dollars, il est possible de baisser jusqu'a 5000." (My lowest proposal concerning dialogue.biz, following our telephone conversations with André, is 5000 USD. (Dialogue is a registered trademark in France since 1988, but also a generic name) My first proposal was 10,000 USD, it is possible to lower to 5,000.)
The sums proposed are sums which are in excess of what can be considered as normal out-of-pocket costs directly related to the Domain Name. Moreover, Respondent's statement as to the French trademark, and the generic nature of the word "dialogue", suggest that Respondent is confident that if Complainant would not accept the offer, Respondent would have plenty of other opportunities to sell the Domain Name.
As a consequence, the Panel is of the opinion that this offer to sell the Domain Name to Complainant in combination with the other circumstances described above constitute sufficient indications that Respondent registered or used the Domain Name in bad faith.
Respondent failed to file any response, thereby foregoing an opportunity to offer evidence that good faith would have guided his decision to register the Domain Name.
For these reasons, the Panel considers the Domain Name was registered in bad faith.
In view of the above, the Panel decides that the domain name dialogue.biz, registered by Respondent, is identical to the DIALOGUE trademark of Complainant, that Respondent has no right or legitimate interest in respect of the Domain Name, and that Respondent has registered or used the Domain Name in bad Faith.
Accordingly, the Panel requires that the domain name dialogue.biz be transferred to Complainant.
Dated: July 22, 2002