WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Asociaciόn de Usuarios de Internet v. WorldWide Media Inc.
Case No. DBIZ2002-00204
1. The Parties
The Complainant is Asociaciόn de Usuarios de Internet, Mesena, 71, Bajo A, 28033 Madrid, Spain.
The Respondent is Worldwide Media Inc., PO Box 4756, Seminole, FL, 33775, United States of America.
2. The Domain Name and Registrar
The Domain Name is <internet.biz>
The Registrar is Namescout Corp., Barbados.
3. Procedural History
The Complaint was received by WIPO Arbitration and Mediation Center ("the Center") by email on April 28, 2002, and in hardcopy form on April 30, 2002. The Center has verified that the Complaint satisfies the formal requirements of the Start-up Trademark Opposition Policy ("the STOP"), the Rules for Start-Up Trademark Opposition Policy ("STOP Rules") and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .biz ("WIPO Supplemental STOP Rules") and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.
The Complaint was properly notified in accordance with the STOP.
On May 28, 2002, the Center notified the Respondent of the Complaint in the usual manner and informed the Respondent inter alia that the last day for sending its Response to the Complainant and to the Center was June 17, 2002.
On June 13, 2002, the Center received a Request from the Respondent for an extension of time in which to submit the Response. An extension of time until July 3, 2002, was granted.
On July 3, 2002, the Response was received by the Center by email and in hardcopy form on July 15, 2002.
The Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
No further submissions were received by the Center or the Panel, as a consequence of which the date scheduled for the issuance of the Panelís Decision is August 5, 2002.
4. Factual Background
The Complainant identifies itself as a Spanish association devoted to promote internet awareness among internet users. It was established in July 1995 and is registered with the Spanish Ministry of Justice as a not for profit association. The Complainant claims to be the registered proprietor of two trade mark registrations at the Spanish Trade Marks Registry. These are described as graphic trade marks, one being for INTERNET in class 38 (registration number 1158609) and the other being for INTERNET Ď99 in class 41 (registration number 2154487).
The Respondent, a corporation incorporated in Florida on March 27, 1992, claims to have been engaged since incorporation in the business of the marketing and sale of numerous internet-related goods and services.
5. Partiesí Contentions
The substance of the Complaint is short and reads (verbatim) as follows:-
"This Complaint is based on the following grounds:
- [In accordance with STOP Rules, para. 3(c)(viii) we must specify that the Complainant holds, among others, the following trademarks:
- Internet: Graphic Trademark, Class 38, number 1158609, registered with the Complainant since 1998-11-01
- Internet Ď99: Graphic Trademark, Class 41, number 2154487
- In both cases, the trademarks, which only word elements are the ones referred above, are registered with the Spanish Trademark Office (Oficina Española de Patentes y Marcas; OEPM).
- The Complainant is the Asociación de Usuarios de Internet, the Spanish Internet Users Association. It was established on July 1995, and is registered with the Spanish Ministry of Justice as a non-for-profit association.
- According to its statutes, the Complainant is devoted to its foundational goals: promoting, as a non-for-profit, the awareness and use of information society infrastructures, specially the Internet; fostering its use among both professional and individual users, and promoting the userís knowledge of both its possibilities and its legal environment, while defending the interests and rights of the users.
- In this regard, the trademark cited above, and most specially the first one, are used in connection to these general goals, in relation with studies, conferences, seminars, newsletters, complaint desks, sponsorships, yearly awards and many others.
- The Respondent does not hold any legitimate right on the name <internet.biz> nor does it hold any trademark or other intellectual property right, nor does it match or resemble its corporate name in any way.
- It is also evident that the Respondent has registered and is using the domain in bad faith in the sense of the STOP and the well-established UDRP criteria. It knew thanks to the IP Claim mechanism that it was registering a domain name matching the legitimate rights of a prospective registrant, and it did so despite the fact that there was no intention on their part to make any legitimate use of the domain. In fact it has not used it for any legitimate commercial or non-commercial use, as the domain is and has always been inactive. The only goal of such registration was, in all evidence, strategic, so as to resell it for a significantly higher price.
- This point is proven by the fact that the domain is in fact for sale on <mostwanteddomains.com> (an auction site for domains acting on behalf of the registrants) for FIVE MILLION DOLLARS!!!
- According to the STOP paragraph 4(b):
- "Circumstances indicating that the domain name(s) was/were registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration(s) to the owner of the trademark(s) or service mark(s) (normally the Complainant) or to a competitor of that Complainant, for valuable consideration in excess of the domain name registrantís out-of-pocket costs directly related to the domain name(s); "
- The lack of legitimate rights on the Respondentís side, and its bad faith are clearly shown by its behaviour, but the fact that the name is being offered for that sum and in that way makes any further elaboration unnecessary.
- Attached as Annex 4 there is a printout of the page with offering <internet.biz> for sale."
The Response is a substantial document in which the Respondent denies that the Domain Name is identical to a trade mark or service mark in which the Complainant has rights, denies that the Complainant has any rights or legitimate interests in respect of the Domain Name and denies that the Domain Name was registered or is being used in bad faith.
For reasons which will become apparent in the next section it is only necessary for the Panel to refer to one aspect of the Response namely the results of the investigations that the Respondent has made at the Spanish Trade Mark Office in relation to Complainantís trade mark registration number 1158609. The Response has exhibited to it affidavits from an investigations manager and an investigative analyst with Marksmen, a trade mark investigation firm. The investigations undertaken by these deponents indicate that graphic trade mark registration number 1158609 (INTERNET) is for a device comprising the word "internet" superimposed over a device of a lower case "i". The description of the trade mark from the records of the Spanish Trade Mark Office reads (in translation) as follows:-
"The trade mark claimed consists of a geometrical figure of a trapezoid formed by a group of 36 parallelograms, six of which are on its base and six on its height, all of them being dark; in the inferior part of this figure and crossing it on top of the inferior line, designation "INTERNET" is depicted in big sized lower case letters of thick outline and, finally, on top of the above there is another oblong figure also composed of a series of geometrical squared figures, of which the ones occupying the exterior part are partially cut by the edge of the figure where they are inserted".
The services covered by this registration are "communication services, namely data communication services".
6. Discussion and Findings
According to paragraph 4(a) of the STOP, the Complainant must prove that
(i) The Domain Name is identical to a trade mark 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.
Identical Trade Mark
In the case of each of the trade mark registrations put forward by the Complainant, the protected mark is not simply the word "internet". In the case of trade mark registration number 1158609, as can be seen from the description quoted in full under the Respondentís contentions (paragraph 5 above), the mark is a complex mark of which the word "internet" is only a part. In the case of registration number 2154487 it is apparent from the Complainantís own description of it, namely "INTERNET Ď99", that again the word "internet" only forms part of the mark as registered.
For the Complainant to succeed the Complainant has to show that the Domain Name (absent the domain suffix) is identical to a trade mark or service mark in which the Complainant has rights.
The Panel is in no doubt that the Complaint must fail on this ground. The Domain Name is manifestly not identical to either of the trade marks in which the Complainant claims to have rights.
Respondentís Rights or Legitimate Interests
In view of the Panelís decision above, it is not necessary for the Panel to consider this ground of the Complaint, in order for the Panel to conclude that the Complaint should be dismissed. However, this is a situation where there are multiple IP claimants, and it is therefore necessary under paragraphs 4(l)(ii) 2 and 3 of the STOP to consider whether the Respondent has demonstrated that it has "legitimate rights" to the Domain Name.
To demonstrate Ďlegitimate rightsí (as opposed to Ďinterestsí) in a domain name comprising a word like Ďinternetí and nothing else (apart from the domain suffix) probably calls at the very least for cogent evidence of extensive use of the Domain Name. Suffice it to say that in this case, there is no evidence of any use. The only evidence put forward by the Respondent is an affidavit stating that it has conducted a substantial amount of business via the internet. That cannot be enough. While the Panel believes the Respondentís reason for having registered the Domain Name to have been entirely reasonable, the Panel is not satisfied that the Respondent has done enough to prove "legitimate rights" to the Domain Name.
Similarly, it is not necessary for the Panel to address this issue either. Nonetheless, the Panel feels compelled to point out that as can be seen from the Complaint (the substance of which is quoted in full in paragraph 5 above) that there is absolutely no evidence whatsoever to support the bad faith claim. Even if Annex 4 to the Complaint is evidence that the Respondent is prepared to accept US$5 million for the Domain Name, given the generic nature of the name in question, it seems to the Panel that this simply reflects what the Respondent believes to be the market value of the name. In the Panelís view it is not even remotely indicative of any bad faith on the part of the Respondent.
The Complaint is dismissed, but subsequent challenges against the domain name under the STOP shall be permitted. In accordance with paragraph 4(l)(ii)(3) of the STOP, no such challenges may be brought by, or on behalf of, the Complainant.
Dated: July 25, 2002