WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ECT Euro Continental Transit v. John D. Coryat
Case No. DBIZ2002-00171
1. The Parties
Complainant in this proceeding is ECT Euro Continental Transit, S.A., Calle Coballo 60-62, 08940 Cornella de Llobregat, Barcelona, Spain.
Respondent is NA, John D. Coryat, P.O. 520683, Longwood, FL 32752, United States of America.
2. Domain Name and Registrar
This dispute concerns the domain name <ect.biz>.
The Registrar with which the domain name is registered is Intercosmos Media Group, Inc. D.B.A. Directnic.com.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received the STOP complaint on April 27, 2002. The notification of STOP complaint and commencement of administrative proceeding was sent on May 16, 2002. The response was received on the same day. The notification of the appointment of the Panel was sent on May 31, 2002. The file was transmitted to the Panelist on the same day.
4. Factual Background and Partiesí Contentions
A. The Trademark
The complaint is based on the ECT trademark. Complainant owns the ECT wordmark nį1668365, registered in Spain on November 2, 1993.
Complainant is also owner of the Spanish country code domain name <ect.es>.
B. The complaint
In its complaint Complainant alleges that the disputed domain name is identical with its trademark.
Further, Complainant alleges that Respondent has no right or legitimate interest in the domain name as he does not possess any kind of interest in the initials "ECT".
Complainant alleges that Respondent has registered and is using the domain name in bad faith, as Respondent must have been aware of Complainantís trademark. Complainant also alleges that Respondent registration of the domain name under the anonymous identity NA is a proof of bad faith. Finally, Complainant alleges that Respondent is in bad faith as he is a computer expert who already owns other domain names and different e-mail addresses.
C. The Response
In his response Respondent recognizes that he has no right to the ECT trademark.
However, Respondent alleges that he has legitimate interests in the domain name as he rents the disputed domain name to one of his client who processes electronic commerce transactions.
Respondent alleges that he has registered the domain name in good faith as he is neither competing with Complainantís business nor cybersquatting. Respondent further alleges that he has registered the domain name under an anonymous identity to protect himself from unwanted junk mail.
5. Discussion and Findings
(a) Identical or Confusing Domain Name
There is no doubt that the domain name <ect.biz> is identical to the complainantís "ECT" trademark as the top level domain name .biz is not a distinguishing feature.
(b) Respondentís Rights or Legitimate Interests in the Domain Name
Under provision 4 (c) ii of the STOP Policy a Respondent can demonstrate his right or legitimate interest in a domain name by showing "use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services".
Respondent alleges that he has registered the disputed domain name and programmed a web site for one of his clients who process electronic commerce transaction. The domain name was allegedly registered for that client using the abbreviation "ECT" for the first letters of the words Electronic Commerce Transactions. Further, Respondent alleges that he will charge his client with hosting and transaction fees in the near future, which implies this clientís use of the website located at the disputed domain name. Such activity if it were established would clearly be a professional activity for Respondent as a computer expert, and Respondentís client appears in any event not to be a competitor of Complainant, which is active in the carriage of goods. Therefore, Respondentís alleged activities in relationship with the disputed domain name could be
a bona fide offering of services according to the STOP policy. However, neither party has proven their allegations. Therefore, as Complainant bears the burden of proof to show the lack of legitimate interests and the bad faith of Respondent, and as no sufficient evidence has been adduced in regard of Respondentís lack of legitimate interests, Complainant will be deemed to have failed to substantiate its allegations
(c) Domain Name Registered and Used in Bad Faith
Complainant alleges that Respondent must have been aware of its trademark rights. In Fisher Communications, Inc. v. Escape Ventures, Inc., WIPO Case No. DBIZ2001-00041 the Panel stated that "when registering a .biz Domain name containing a mark in which Respondent has no prior rights, a respondent has some responsibility to investigate whether any party has trademark rights in the alphanumeric string contained in the domain name". However, this responsibility is limited to what is reasonable according to the circumstances. In the case MGM Mirage v. Young Joon Choi, WIPO Case No. DBIZ2001-00036, the Panel decided that "a registrant should take reasonable steps to ensure that its domain name will not infringe upon the rights of another party, including a search of the United States Trademark Register if the registrant is from the United States". Complainant holds a registered trademark only in Spain. If a search of the United States Trademark register had been done by Respondent who is a U.S. resident, Complainantís trademark would not have been found. Further, Respondent alleges that Complainant does not appear on a google.com search for the letters "ECT". Therefore, Complainantís claim that Respondent registered the domain name in bad faith, willingly violating its trademark rights, must be rejected.
Complainant alleges that Respondentís registration of the domain name under an anonymous identity is a sign of bad faith. Respondent alleges that he registered the domain name under an anonymous identity to protect himself from spam e-mails. In the case Rug Doctor LP v. Coldwell Banker Burnet, WIPO Case No. DBIZ2001-00047, the Panel decided that "in the face of a Whois record comprising a false name and address, the Panel had no difficulty in concluding that the registration was made for a bad faith purpose". It is important to note that in the present case Respondent did not mislead the Registrar by providing false information. The correct contact information has been provided by the Respondent under the "Administrative Contact Name", in accordance with the information contained in the Registry WHOIS Data.
Complainant alleges that the fact that Respondent is an experienced computer expert who owns other domain names and web addresses is a sign of bad faith. Nevertheless, according to the annexes filed by Complainant, the domain names registered by Respondent are domain names pertaining to Respondentís business as a computer expert. Some of those domain names and web addresses, such as <coryat.com>, <coryat.us> and <firstname.lastname@example.org>, in fact refer to Respondent himself. Therefore, the registration of those domain names and the creation of those e-mail addresses are not a sign that Respondent is engaged in a pattern of registering domain names in violation of other peopleís trademark rights. On the contrary, the contents of these sites show a bona fide offering of service by Respondent. Even if Respondent did not annex evidence of his legitimate use of the disputed domain name to its Response, there is no prima facie evidence of a registration and use in bad faith of the disputed domain name.
In the light of the foregoing, the Panel decides that the disputed domain name is identical to Complainantís trademark. However the Respondent has alleged legitimate interests in the domain name and it has not been established that he did not have those or that he otherwise registered the domain name in bad faith.
Accordingly, the Panel rejects the Complainantís request for transfer of the domain name in dispute.
Dated: June 13, 2002