WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jorgen Kruuse A/S v. Donna Lawhorn
Case No. DBIZ2002-00181
1. The Parties
The Complainant in this administrative proceeding is Jorgen Kruuse A/S, a public limited company, registered and incorporated under the laws of Denmark with principal place of bussines at Marslev Byvej 35, DK- 5290 Marslev, Denmark. The Complainant is represented by Maria Thestrup, Sandel, Løje & Wallberg Frederiksgade 7, DK-1265 Copenhagen.
The Respondent is Donna Lawhorn, 212 Old Bluefield Road, Princeton, WV 24740, United States of America. The Respondent is represented by Zane Lawhorn, 212 Old Bluefield Road, Princeton, West Virginia 24740, United States of America.
2. The Domain Name and Registrar
The domain name at issue is <buster.biz>. The domain name is registered with Registrars Tucows, Inc., Canada ("the Registrar").
3. Procedural History
The Complaint was received on April 27, 2002 (email), and May 6, 2002 (hard copy), by the World Intellectual Property Organization Arbitration and Mediation Center ("the Center"). The Complaint was made pursuant to the Start-up Trademark Opposition Policy for <.biz> adopted by NeuLevel Inc. and approved by ICANN on May 11, 2001 ("the STOP"), and the Rules under that Policy ("the STOP Rules").
The STOP is incorporated into the Respondentís registration agreement with the Registrar. Respondent is obliged to submit to and participate in a mandatory administrative proceeding in the event of a Complaint concerning the domain name registered.
Having verified that the Complaint satisfied the formal requirements of the STOP and the STOP Rules, the Center, on May 23, 2002, transmitted by post-courier and by email a notification of Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Complaint was also emailed to the Registrar and ICANN.
The Respondent was advised that a Response to the Complaint was required within 20 calendar days. The Respondent was advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email. A Response was filed by the Respondent on June 6, 2002 (email), and June 11, 2002 (hard copy).
The Center invited Dr. Torsten Bettinger to serve as Sole Panelist in the case. It transmitted to him a statement of acceptance and requested a declaration of impartiality and independence.
Dr. Torsten Bettinger advised his acceptance and forwarded to the Center his statement of impartiality and independence.
On July 1, 2002, the Center forwarded to the Panel by courier the relevant submissions and the record.
The Panel has independently determined and agrees with the assessment of the Center that the Complaint meets the formal requirements of the STOP, the STOP Rules and the WIPO Supplemental STOP Rules.
The language of the administrative proceeding is English. The Complainant has paid the necessary fees to the Center. The Ticket Number assigned by the Registry operator under the STOP Rules has been confirmed.
4. Factual Background
The Complainant is among the world's leading suppliers and manufactures of products for veterinary use and sells a range of more than 8.500 items to wholesalers and veterinarians in more then 100 countries world-wide. The Complainant is the registered proprietor of the Spanish, UK and Danish registered trademark consisting of the word "BUSTER" " in a particular script with decorative additions added. The trademark registration is in Class 5, 10, 18 and 20 including pharmaceutical preparations, veterinary and a range of medical articles for small animals.
The Respondent is a Resident of the United States of America.
5. Partiesí Contentions
The Complainant contends that the domain name <buster.biz> is identical to Complainantís Danish, Spanish and UK trademark registrations. The Complainant argues that "it has made a preliminary search, which indicates the Respondent does not have any rights or legitimate interest in the contested domain name".
The Complainant also points out that the Respondent did not file an IP-Claim and that "this indicates that the Respondent did not have any rights to the word "BUSTER".
The Complainant further states that the Respondent does not carry out any activities under the domain name <buster.biz>. The Complainant argues that the fact that the Respondent had chosen to register the domain name in spite of Complainants IP-Claim and Notification by Neulevel of its trademark rights in the word "BUSTER" is "in itself a clear proof of bad faith."
The Respondent contends that it registered the domain name <buster.biz> with the intent to be used in the Respondentís business offering services to the Internet community such as web-hosting, search engine submission, domain registrations, and related services.
The Respondent contends that it has never heard of Jorgen Kruuse A/S at the time of submission of the domain name for registration and that the domain name was not registered for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant.
The Respondent alleges that she indicated in a telephone conversation with the Complainantís representative that there should be no conflict with the name or confusion.
The Respondent presents a copy of an e-mail correspondence between the Complainantís representative and the Respondentís representative before this proceeding was initiated.
The Respondentís representativeís e-mail reads as follows:
If you would be willing to reimburse me for my expenses associated with this domain I will transfer the domain to your client. $ 100.00 US should cover the costs associated with the registration, maillings, etc.
The Complainantís representativeís e-mail reads as follows:
"Dear Donna Lawhorn,
thank you for your offer.
My client has provided the necessary documentation for its legal rights to the name BUSTER, and I see no reason for my client to pay $ 100.000 US.
Sanel, Løje & Wallberg
The Respondent requests the Complaint be dismissed and requests that the panel consider a decision of reverse domain name hijacking.
6. Discussion and Findings
Under STOP, the Complainant must show:
(a) That the domain name is identical to the Complainantís trademark or service mark (Paragraph 4(a)(i)).
(b) That the Respondent has no rights or legitimate interests in the domain name.
(c) That the domain name was either registered or used in bad faith (Paragraph 4(a)(iii)).
a) Identity with a mark in which the Complainant has rights
The Panel notes that the Complainantís trademark consists of "Buster" in a particular script with decorative additions added. The domain name in issue consists of the same combination of letters but necessarily does not have the decorative additions. Since the Policy requires that the domain name be identical to a mark in which the Complainant has rights, the Panel has to decide whether in spite of the differences mentioned between mark and domain name the trademark and the domain name at issue might nonetheless be regarded identical within the meaning of Paragraph 4 (a) (i) STOP.
The Panel notes that two STOP-decisions have already dealt with that issue. In the case Fiat Auto S.p.A. v. Italienska bil, WIPO Case No. DBIZ2001-00030 the Panelist Dr. Gerd F. Kunze had to decide the question whether the fact that the Complainantís trademark "ALFA ROMEO " consisting of two words should be regarded a identical to the Respondentís domain name <alfaromeo.biz>, written together. Referring to a decision of the Board of Appeal in an opposition procedure against the registration of a Community Trademark (R 133/00, dated February 1, 2000), where in application of the principle of Art. 5(2) of the Paris Convention the use of "HAPPYDAY" was held not to alter the distinctive character of the mark HAPPY DAY and pointing to the fact that the difference between the trademark "ALFA ROMEO" and the domain name <alfaromeo.biz> only stemmed from the rules and technical necessities of the domain name , the Panelist decided that <alfaromeo.biz> and the trademark "ALFA ROMEO" should be considered identical in the meaning of Paragraph 4 (a) (i) of the STOP.
In another decision the Panelist William R Cornish had to deal with the question whether the Complainant's mark "Qtech" in a particular script with some decorative additions should be regarded as identical to the Respondentís domain name <qtech.biz>. Referring to an argument put forward by Advocate-General Jacobs in a decision on the point in the European Community (LTJ Diffusion v. Sadas (January 17, 2002, European Court of Justice on reference from the Tribunal de Grande Instance, Paris, decision of the full court awaited), the Panelist found it necessary to give a restricted meaning to the concept of "identity" in the sense of Paragraph 4 (a) (ii) of the STOP and argued that there should be identity between marks only where an average consumer would regard them as the same, in the sense that any differences, whether of addition, omission or modification, were "minute or wholly insignificant".
The Panel follows the reasoning in the these decisions. In the present case however the Panel has serious doubts whether the differences between the Complainantís trademark can be regarded as "minute or wholly insignificant". As the matter in this case can be determined by reference to other requirements to be established by the Complainant, the Panel does not have to decide this issue.
b) Legitimate rights or interests in respect of the domain names
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 she is in the business of Internet advertising, Web-Hosting, Domain Registrations and Internet Service Providing and that she registered the disputed domain name for these business purposes. The Respondent further alleges that she intends "placing business content on the site once this proceeding has ended."
As the Complainant, which is a supplier and producer of products for veterinary use is active in a completely different field of business, such use of the domain name would clearly be a bona fide offering of services according to Paragraph 4 (c) (ii) of the STOP and would thus establish a legitimate interest in the domain name at issue in the meaning of Paragraph 4 (a) (ii) of the STOP.
However, neither party has presented any evidence supporting their allegations. 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
Under the STOP Procedures, the "Notice of a .biz Intellectual Property Claim" form is sent to every potential registrant where there is a pre-filed IP Claim. The form contains the following notice to potential registrants:
"According to our records you have applied for the above listed .BIZ domain name. The purpose of this E-mail is to formally notify you that the domain name for which you applied matches one or more Intellectual Property (IP) Claims that were received by the .BIZ Registry. In other words, one or more intellectual property owners believe that they have intellectual property rights in the domain name for which you have applied. You should be aware that if you choose to continue the application process, your domain name registration may be challenged under several Internet Corporation for Assigned Names and Numbers (ICANN)-approved dispute resolution mechanisms, including the Start-up Trademark Opposition Policy (STOP) http://www.neulevel.BIZ/countdown/stop.html and the Uniform Dispute Resolution Policy (UDRP) http://www.icann.org/udrp/udrp.htm."
This written Notice is followed by detailed instructions on how to proceed, in spite of the IP Claim, and several pages of details on the nature of the existing claim, the owner, the field of use, and the contact information. Only after reading all this, and electing to proceed anyway can the .biz registrant complete his or her application for the domain name.
Regarding this specific registration procedure of ".BIZ" the Panel accepts the Complainantís allegation that the Respondent was put on notice prior to registration of the domain name that a potential STOP claim existed from an intellectual property owner and thus was aware of the Complainantís trademark registration for the word "BUSTER".
However, the mere fact that the Respondent was aware of the Complainantís trademark for "BUSTER" is not sufficient to establish bad faith. The alleged use of the domain name by the Respondent, if accepted as true, does not give any rise for either a finding of a trademark infringement nor the conclusion that the domain name has been registered in bad faith. On the other hand, the Respondentís allegations are prima facie reasonable and the Complainant has not presented any evidence to contradict them. The only evidence which the Complainant has put forward of the Respondentís alleged bad faith, is the fact that:
a) the Respondent was aware of the Complainantís trademark
b) the Respondent has no rights in the name "BUSTER".
This, of course, is not enough to establish any of the circumstances mentioned in Paragraph 4(b) nor does it otherwise indicate that the Respondent registered or used the domain name in bad faith.
7. Reverse Domain Name Hijacking
The Respondent has articulated a claim of reverse domain name hijacking in its Response.
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 Rule 15(e).) To prevail on such a claim, Respondent must show that Complainant knew of either the 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. See, e.g., Sydney Opera House Trust v Trilynx Pty. Ltd., WIPO Case No. D2000-1224 (October 31, 2000).
The Panel agrees that the Complaint was misconceived. The Complainant has not even made a minimal effort to establish plausible grounds for bringing the Complaint under the Policy. The Complaint is based almost solely on a claim that the Respondent did not have any rights in the name "BUSTER" and no intention to use the disputed domain name.
However neither the Complaint nor the Response were able to completely clarify the background of this dispute. The Complainant did not even mention in its Complaint that there was e-mail correspondence with the Respondent and a telephone conversation with the Respondent representative. The Respondent states that there was a telephone conversation between the Complaintís representative and the Respondentís representative in April 2002 but did not provide any further details of its content. The Respondentís provides print outs of a an e-mail in which she offered the transfer of the domain name at issue if "the Complainant would be willing to reimburse her for the expenses associated with this domain name stating that $100,00 US should cover the costs associated with the registration, mailings etc". This e-mail was answered by the Respondentís representative stating that the Complainant has provided the necessary documentation of its legal rights to the name "BUSTER" and sees no reason to pay $100,000 US for his client.
The Panel finds it difficult to draw any conclusions from these facts as to the background of this dispute and the Complainantís intentions. The Panel is therefore not prepared to make a finding of Reverse Domain Name Hijacking.
In the light of the foregoing, the Panel decides that the Respondent has a legitimate interest in the domain name and it has not been established that she registered or used the domain name in bad faith.
Accordingly, the Panel rejects the Complainantís request for transfer of the domain name in dispute.
Dr. Torsten Bettinger.
Dated: July 23, 2002