WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Empresa Nacional de Telecomunicaciones, S.A. v. Nordnet
Case No. DBIZ2002-00212
1. The Parties
The Complainant is Empresa Nacional de Telecomunicaciones, S.A., a company incorporated in Chile with business office in Av. Andrés Bello 2687, piso 13, Las Condes, Chile (hereinafter, the Complainant).
The Respondent is Nordnet with registered address Chateau de la Bonnerie, Croix, 59510, France (hereinafter, the Respondent).
2. The Domain Name and Registrar
The domain name at issue is <123.biz>. The Registrar of the domain name is Nordnet.
3. Procedural History
The Complaint was submitted for decision in accordance with the Start-Up Trademark Opposition Policy for .biz (the "STOP"), the Rules for Start-up Trademark Opposition Policy for .biz (the "STOP Rules"), adopted by Neulevel Inc. and approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on May 11, 2001, and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .biz (the "WIPO Supplemental STOP Rules").
The Complaint was received by e-mail by the WIPO Arbitration and Mediation Center (the "WIPO Center") on April 28, 2002, being received in hardcopy on May 6 & 7, 2002. On May 7, 2002, the WIPO Center sent an Acknowledgement of Receipt of Complaint to the Complainant.
On May 30, 2002, the WIPO Center sent a notification of STOP Complaint & Commencement of Administrative Proceeding, setting a deadline of June 19, 2002, by which the Respondent should submit a response to the Complaint.
On May 31, 2002, the WIPO Center received an email from the Complainantís authorized representative whereby the Complainant suggests the submission of emails proving Respondentís intentions of offering for sale the domain name.
On June 20, 2002, the WIPO Center received further communication from the Complainant regarding the above-mentioned emails of the Respondent. The emails at issue were also sent to Respondent in accordance with the STOP Rules.
On June 20, 2002, the WIPO Center notified both parties of the Respondent Default.
On July 4, 2002, the WIPO Center appointed a single member panel (Jose Carlos Erdozain).
The language of the proceeding is English.
4. Factual Background
The Complainant has filed an intellectual property claim ("IP Claim") pursuant to the instructions and the format provided by NeuLevel.
The Respondent has registered the Domain Name on March 27, 2002.
The Complainant has registered in Chile the distinctive sign "123" in several Classes and with different additional words (e.g. <decompras123.cl> or <goles123.com> inter alia). These trademarks have also been registered in various countries of Latin America (e.g. Costa Rica, Mexico, Ecuador, Peru or Haiti) and in the European Community (see Annexes 1, 3 and 4).
The word "123" is also being used in Complainantís web sites (see Annex 5).
The Complainant has registered many domain names with the word "123".
The Complainant offers Internet services as ISP, covering a market of million of persons.
The Complainant has filed evidence enough in my opinion of its notoriety and presence in the telecommunications market.
The Respondent has not responded to the Complaint, nor has it demonstrated the areas or activity of specialization. Nevertheless, I have accessed its web site and Nordnet seems to be dedicated to the area of sale of culture and entertainment products (CDs, DVDs, books, etc.). It belongs to the Wanadoo Group.
The Respondent has not filed any evidence in connection with trademark registrations or legitimate interests regarding the name "123", nor has he proved the use of the distinctive sign "123" by itself.
5. Partiesí Contentions
5.1 Complainant contends that:
(a) The Respondent has not developed any activity, nor a project at all based on <123.biz>, owning no registered trademark, given to what Nordnet could not apply for any IP Claim.
(b) The Respondent has offered the Domain Name for sale.
(c) The Respondentís purchase of the Domain Name constitutes an unfair competition act that goes against the elementary principles of good faith and capitalization of the efforts of the Complainant.
(d) The Respondent does not offer through its web site any product or service related with the name "123".
5.2. Respondent did not respond to the Complaint
Duly notified of the Complaint, the Respondent did not respond.
6. Due Process
Where, as in this case, a Respondent does not submit a Response and the file does not contain any communication from the Respondent, the rules of due process require the Panel to verify, to the extent possible, that the Respondent is aware of the present proceedings. The Panel is satisfied, on the basis of the file documents, that this is the case.
A hard copy of the Complaint has been sent by the WIPO Center to Respondentís postal address by courier and electronically to its e-mail address. The WIPO Center has therefore discharged its responsibility under Paragraph 4(a) of the STOP Rules to notify Respondent of the Complaint.
The Panel therefore assumes that Respondent has received these documents, but chose not to respond.
7. Discussion and Findings
Under the STOP Rules a Complaint can only be filed by an "IP Claimant" who had filed an IP claim for a particular alpha-numeric string. If that string becomes registered as a .biz domain name, NeuLevel notifies the IP Claimant and invites it to initiate a STOP Proceeding within 20 days. The service provider (in this case the WIPO Center) is required to advise the Panelist if a disputed domain name is subject to more than one claim. In this case, such advice has been given to the Panelist.
Under STOP the Complainant must prove (Paragraph 4(a)):
(a) that the domain name is identical to a trademark or service mark in which the Complainant has rights; and
(b) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) that the Domain Name was either registered or used in bad faith.
4(a)(i) Identity of trademarks
The Complainant has submitted enough evidence about the identity of its registered trademarks with the Domain Name at issue. There can be no doubt that the Domain Name is identical to the trademarks of the Complainant.
In conclusion, the requirement of Paragraph 4(a)(i) is met.
4(a)(ii) Absence of Respondentís rights or legitimate interests in the Domain Name
Because of the Panelís view of the evidence directed to bad faith registration or use [STOP Paragraph 4(a)(iii)], it is not strictly 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.
Having had accessed to the Respondentís web site, this Panel has checked that the Respondent offers some services with the word "123" included (e.g. "123achat", "123immo" or "123cartouche"). I have searched in the whois database and the domain names <123achat.com>, <123immo.com> and <123cartouche.com> were registered in 1998 and 1999, belonging to French companies that are presumably well positioned in the view of the information of the whois database. The fact that the Complainant has registered trademarks in Chile and in an extensive part of Latin America and Central America does not mean necessarily that the Respondent does not have any right to use the word "123" in other territorial areas where it can have a notorious presence or activity. On the other hand, it cannot be said that the Respondent, who is in default, has demonstrated that it has "legitimate rights" to the domain name within the meaning of Paragraphs 4(l)(ii).
4(a)(iii) Respondentís registration or use of the Domain Name in bad faith
As to the bad faith requirement, the Complainant has also failed to prove the bad faith of the Respondent. The Respondent is using words with "123" and the Respondent owns also different domain names with the word "123", domain names that have been registered in 1998 and in 1999. As a result, there is no reason to believe that the Respondent is using the Domain Name in bad faith in a first approach to the matter.
However, the Complainant considers that the bad faith requirement is proved by some emails that have been sent and received to and from the Respondent, where, in the Complainantís opinion, the Respondent offers for sale the Domain Name. It should be stressed that according to the STOP, in order to demonstrate the bad faith the Complainant has to file evidence indicating that inter alia the Respondent has registered the Domain Name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name. It should be noted then that the STOP requires the purpose of registering the Domain Name primarily for sale, renting, etc. In my opinion, the emails submitted by the Complainant after the filing of the Complaint, do not prove that the Respondent has registered the Domain Name primarily, that is, mainly or principally, with the purpose of offering it for sale to the Complainant.
Moreover, the Complainant has not filed any other evidence which can demonstrate that the Respondent can be included in any of the circumstances set forth in Paragraph 4(b) of the STOP.
Therefore, the domain name <123.biz> was not registered, nor is it being used in bad faith.
On the basis of the foregoing, the Panel decides that the Complaint should be dismissed. However, 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 challenge may be brought by, or on behalf of, the Complainant.
Jose Carlos Erdozain
Dated: July 18, 2002