WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Solid Information Technology Oy v. Nielsen
Case No. DBIZ2002-00243
1. The Parties
The Complainant is Solid Information Technology Oy, a limited liability company having its domicile in Helsinki, Finland, represented by Roschier Holmberg, Attorneys Ltd., Mr. Jussi Koskinen, Keskuskatu 7 A, 00100 Helsinki, Finland.
The Respondent is Mr. Jens Nielsen, Lille Colbjoernsensgade 9, 2, 1703 Copenhagen V, Denmark.
2. The Domain Name and Registrar
The domain name is <solid.biz>.
The corresponding Registrar is CSL Computer Service Langenbach GmbH (doing business as: Joker.Com), Rathausufer 16, D-40 213 Düsseldorf, Germany.
3. Procedural History
The complaint was received by WIPO Arbitration and Mediation Center (the "Center") by e-mail on May 20, 2002, and in hard copy form on May 22, 2002. A requested amendment to the complaint was received by the Center by e-mail on July 10, 2002, and in hard copy form on July 15, 2002. The formal date of the commencement of the administrative proceeding is July 16, 2002. The Center has, to the satisfaction of the Panel, verified that the complaint satisfies the formal requirements of the Start-up Trademark Opposition Policy for .biz as revised September 19, 2001 (the STOP), the Rules for Start-up Trademark Opposition Policy (the STOP Rules) and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .biz (Supplemental STOP Rules), that payment was properly made and that the complaint was properly notified to the Respondent on July 16, 2002, in accordance with Paragraph 2(a) of the STOP Rules. On the last day set for a response, August 5, 2002, there was none. A response was, however, received on August 7, 2002 (to which the Center replied on August 8, 2002), in which the Respondent apologized for the delay, explaining that he had had "computerproblems". There have been no further submissions to the Center or Panel.
On August 12, 2002, the undersigned Panelist submitted to the Center a Statement of Acceptance and Declaration of Impartiality and Independence. The Panel was properly constituted. It was required to forward its decision to the Center by August 26, 2002, in accordance with STOP Rules, Paragraph 15(b).
The Panel has been informed by the Center that there are "no other IP claimants in the queue", meaning that Paragraph 4(l) of the STOP on multiple challenges will not apply, because the disputed domain name is not subject to any more claim than the present one.
4. Factual Background
The Complainant is the owner of a trademark, registered under No. 137170 on April 5, 1995, with the Finnish Board of Patents and Registration for class 9. About this trademark the complaint contains the wording that "Ö the Complainant has registered "Solid" as a trademark Ö". According to the Complainant it is used to identify services provided in class 9 for development and maintenance of information technology. As Annex 4 to the complaint has been added a registration certificate in Finnish language, without a translation. The trademark registered is a figure mark showing a geometric figure in various nuances of gray/black with the word SOLID in "fashioned" typography underneath. There is also a disclaimer ("erottamislausuma"), according to which, in the Panelís own translation, "the registration does not convey any exclusive right to the text of the trademark" ("Rekisteröinti ei tuota yksinoikeutta merkin tekstiin").
The domain name <solid.biz> was registered with CLS Computer Service on March 27, 2002.
5. Partiesí Contentions
The Complainant bases its complaint on its registered trade name, its use by subsidiaries in a number of other countries and a supplementary trade name "Solid", said to be used "widely and globally in its appearance in various connections", such as <solidtech.com> for the Complainantís web site. It also bases its complaint on the trademark mentioned above under Section 4. It claims that the Respondent, for being a natural person, should be considered to have no rights or legitimate interests in respect of the domain name <solid.biz>, having no registered trademark or a registered trade name that includes the word "solid" and Ė to the Complainants knowledge Ė no future intentions of obtaining any registered right to the term "solid". Complainant understands this to indicate that the domain name was registered primarily for the purpose of "selling, renting or otherwise transferring the domain name registration" to the Complainant, who finds no evidence of any Registrantís own use for demonstrable preparations to use the domain name or a domain name corresponding thereto in connection with a bona fide offering of goods or services. Also, the Respondent lacks any registered right to the term "solid". As an individual he is not known by the domain name and he "has no legal right to use the Complainantís registered trade name as a domain name".
The Complainant requests that the Panel decide that the domain name be transferred to the Complainant.
For reasons given below under Section 6. A., the response is disregarded.
6. Discussion and Findings
A. Preliminary Procedural Issues
The response was received with delay. There has been no request by the Respondent for an extension of time in accordance with Paragraph 5(d) of the STOP Rules. The Panel acts under an obligation inscribed in Paragraph 10(c) of the STOP Rules to ensure that the administrative proceeding takes place with due expedition, given, however, the power at the request of a party or on its own motion to extend any period fixed in time by the STOP Rules. This power shall be used only "in exceptional cases".
The Respondent has not requested an extension, only apologized for his delay, referring to "computerproblems". This does not constitute an exceptional case. There are other means than such as are related to oneís own computer to communicate oneís opinion regarding serious matter of the present kind. The Panel consequently disregards the response and proceeds in accordance with Paragraph 14(a) of the STOP Rules to a decision on the complaint. This being so, the Panel nevertheless points out that the response is deficient also in the following respect: Its certification, referring to Paragraph 5(c)(vi) of the STOP Rules, does not correctly render the required text as prescribed in that Paragraph.
B. Substantive issues
These administrative dispute resolution proceedings only apply to domain names as related to trade marks or service marks. Consequently, what the Complainant has inferred from the existence of its trade names is here formally disregarded. Remains its trade mark registration as mentioned here above under Section 4.
According to Paragraph 4(a)(iĖiii) of the STOP Rules the Complainant must prove that each of the following three elements is present: (i) that the domain name is identical to a trademark or service mark in which the Complainant has rights, (ii) that the Respondent has no rights or legitimate interests in respect of the domain name and (iii) that the domain name has been registered or is being used in bad faith.
(i) The Panel finds that Complainantís trademark, described here above under Section 4. with its disclaimer, does not fulfill the identity criterion. The complaint does not refer to any other trademark right than the one conferred upon the Complainant by that registration with its disclaimer for the word "solid".
(ii) Given its findings under (i) the Panel would not have reason to go further onto a decision on the issues (ii) and (iii), were it not for the fact that, in view of its findings under (i) as well as when additionally taking the Complainantís allegations under (ii) and (iii) under consideration, the issue of reverse domain name hijacking comes to the fore.
There has been no evidence provided by Complainant that the Respondent has no rights or legitimate interest in respect of the domain name. The Panel finds no reason to believe that the Respondent has been aware of a Complainantís trademark. "Solid" is a generic word, a descriptive term, under disclaimer in the Finnish register, and there have been no multiple intellectual property claims about the domain name that could have made the Respondent aware of any risk of infringing any trademark right. A natural person many well register a .biz domain name in view of business activities and there is nothing in the complaint that substantiates the assertions of the Complainant about the Respondentís intentions behind the registration of the domain name or lack of preparations for use of the domain name by the Respondent. Whether the Respondent is known by the domain name or not is irrelevant under present circumstances.
(iii) The Panel finds that the Complainant has provided nothing more than suggestions and certainly no evidence about any bad faith related to registration or use of the domain name on the part of the Respondent.
C. Reverse domain name hijacking?
In view of its findings under (i) - (iii) above, the Panel now turns to the issue of reverse domain name hijacking.
Certainly, there are aggravating circumstances. First of all, the Panel notes Complainantís reference to the registration certificate presented only in Finnish language with its disclaimer. A non-Finnish-understanding Panel would easily have been misled to believe the deceptive words quoted here above under Section 6. B. from the complaint, about the trademark being "Solid", and to overlook the disclaimer. Secondly, Complainant has in part founded its claim for a transfer of the domain name on what may at best be seen as a severe lack of understanding of the STOP system, in particular, but not only (the Complainant was also called upon by the Center to amend the complaint about a formal deficiency) reflected in the Complainantís recurring reliance upon the misconception that its trade names would be of significance. Thirdly, there is the complete lack of reference to any evidence, circumstantial or other, regarding major issues, as reflected above under Section 6. B.
However, taking into account the respectability of Complainantís representing law firm, but also that any serious hijacker would reasonably have acted with more circumspection than is elucidated by the present complaint, the Panel grants Complainant and its representative in person the benefit of doubt for possibly being just unaware of the strict demands of a procedure of the present kind. Hence, the Panel finds that the Complainant is excused, so as to escape from the suspicion of reverse domain name hijacking.
The complaint is dismissed.
Dated: August 17, 2002