WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Adobe Systems Incorporated v. Null
Case No. DBIZ2002-00247
1. The Parties
The Complainant is Adobe Systems Incorporated of 345 Park Avenue, San Jose, California, 95110, United States of America, which is represented in the present proceeding by its Corporate Counsel and Assistant Secretary, Daniel C Poliak, Legal Department, Adobe Systems Incorporated, 801 N 34th Street, Seattle, Washington, 98103, United States of America.
The Respondent is Null, 102-1506 Bijeon DongaMongnyeon Apt., Pyeongtaek, Gyeonggi, 450150, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name is <epaper.biz> and the registrar is DomainPeople Inc, Suite 1440-555 West Hastings Street, Vancouver, BC, V6B 4N6, Canada.
3. Procedural History
3.1 The Complaint was received by email by the WIPO Arbitration and Mediation Center (the "Center") on May 26, 2002 and in hard copy on May 24, 2002.
3.2 On May 30, 2002 (resent June 4, 2002 and June 17, 2002), the Center requested verification of the registration details of the domain name from the Registrar, DomainPeople, and this verification was received by the Center on June 22, 2002.
3.3 On June 14, 2002, the Center completed a check of whether the Complaint complied with the formal requirements of the Start-up Trademark Opposition Policy for .BIZ ("STOP"), the Rules for Start-up Trademark Opposition Policy for .BIZ ("STOP Rules") and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .BIZ ("WIPO Supplemental STOP Rules").
3.4 On June 17, 2002, the Respondent was notified of the STOP Complaint and Commencement of the Administrative Proceedings and was sent a copy of the Complaint and attachments. This was sent by post/courier and email to the addresses appearing under the Registrant and Administrative Contact for the domain name registration. In accordance with the Rules, the date for the filing of a Response was set at July 7, 2002.
3.5 No Response was received by the Center and on July 9, 2002, the Center sent the Respondent a Notification of Respondent Default by email.
3.6 On July 23, 2002, after receiving the required Statement of Acceptance and Declaration of Impartiality from the proposed panelist, the Center notified the parties of the appointment of Staniforth Ricketson as the single member Administrative Panel in the proceeding. The date for transmission of the Panelís decision to the Center was set at August 6, 2002, in accordance with paragraph 15 of the STOP Rules.
3.7 After perusing all the materials filed in the proceeding, the Panel finds that the relevant requirements of the STOP, the STOP Rules and WIPO Supplemental STOP Rules have been complied with.
3.8 In accordance with paragraph 11 of the STOP Rules, the language of the proceedings is English (this being the language of the registration agreement).
4. Factual Background
4.1 The following matters appear to be uncontested.
4.2 According to the Complaint, the Complainant, Adobe Systems Incorporated, is a Delaware corporation, with its principal place of business at 345 Park Avenue, San Jose CA 95110-2704. Founded in 1982, the Complainant builds and supplies software solutions for Web and print publishing. It is stated to be the second-largest US-based personal software company, with annual revenues of $US1.2 billion, with 2,800 employees worldwide and with operations in North America, Europe, the Pacific Rim, Japan and Latin America (Complaint, paragraph 13).
4.3 The Complainant is the owner of US Registered Trade Mark No 2,151,180 for the word mark EPAPER registered on April 14, 1998, in respect of goods within class 9 (document management and archival system, namely, a set of computer programs that control an optical scanner for the purpose of document acquisition, indexing, archival, annotation, search and retrieval, and transmission via network facsimile or hard copy) (Complaint, paragraph15 and Exhibit C).
4.4 On or around August 2, 2001, the Complainant filed a .biz Intellectual Property Claim Notification ("IP Claim") with its Registrar NameEngine, Inc, providing details of its trade mark rights in relation to EPAPER.
4.5 On March 27, 2002, the domain name <epaper.biz> was registered by the Respondent (Complaint, Exhibit A, WHOIS printout).
5. Partiesí Contentions
A successful complaint brought under STOP must establish the elements that are listed in paragraph 4(a). The Complainant in the present proceeding addresses these elements as follows:
- As to the first element (domain name identical to a trade or service mark in which the Complainant has rights), the Complainant refers to its US registered trade mark for the word EPAPER referred to in 4.3 above. It asserts further that the trade mark EPAPER is used in connection with goods and services that are sold and distributed throughout the United States of America, South Korea and numerous other countries as well as over the Internet, and exhibits a representation of the mark that appears on the Adobe web site at "http://www.adobe.com" (Complaint, Exhibit D). In this regard, the Complainant appears to be asserting that, in addition to any rights that it may have in the US registered trade mark, it has rights in the unregistered trade mark in a number of countries, arising from its use of the trade mark. On the question of identity, the Complainant submits that this requirement is clearly satisfied, when the .biz extension in the domain name is disregarded (Complaint, paragraph 23).
- As to the second element (Respondentís lack of rights or legitimate interests in domain name), the Complainant states, on information and belief, that the Respondent has not been commonly known by either the EPAPER trade mark or the <epaper.biz> domain name and that it has not been licensed or otherwise authorized to use the Complainantís mark (Complaint, paragraph 26). It submits further that the domain name cannot be otherwise identified or related to a legitimate interest of the Respondent (Complaint, paragraph 27). By contrast, it asserts that the EPAPER name is closely associated with the Complainant and that consumers would have an expectation that the <epaper.biz> domain name will direct them to a web site controlled by the Complainant, not by the Respondent.
- As to the third element (bad faith by the Respondent in the registration or use of the domain name), the Complainant argues that the Respondent would have been made aware of the Complainantís rights through the IP Claim notification service when it (the Respondent) applied to register the <epaper.biz> domain name. Nonetheless, with this knowledge the Respondent continued with its application, which the Complainant asserts is evidence of its bad faith, referring here in support to the UDRP Panel decision in Gene Logic Inc v Cho Kyu Bock, NAF Case No. FA00103042 (March 4, 2002). In support of its assertions on the question of bad faith use registration and use, the Complainant points to the lack of evidence of any use of the domain name prior to registration in relation to a bona fide offering of goods or services or any legitimate non-commercial use of the name (Complaint, paragraphs 29-31).
As noted above, the Respondent has filed no Response in the proceeding. Under paragraph 5(e) of the STOP Rules, in such a case the Panel is to decide the dispute based on the Complaint. Furthermore, under paragraph 14(b) of the Rules, when a party defaults in complying with any of the requirements of the Rules, the Panel is entitled to "draw such inferences therefrom as it considers appropriate".
6. Discussion and Findings
Under paragraph 4(a) of STOP, the Complainant must prove the presence of each of the elements listed in that paragraph.
Domain name identical to trade or service mark in which the Complainant has rights (sub-paragraph 4(a)(i))
The Complainant has provided evidence of its registered US trade mark EPAPER, and this will suffice for the purposes of showing that it has "rights" in a trade or service mark. The Complainant makes further assertions about the rights it has in the trade mark EPAPER as an unregistered mark not only in the USA but in a number of other countries. However, there is no evidence provided of the scale, extent and longevity of the usage of this mark, apart from Exhibit D, which indicates its usage on the Complainantís web page. Accordingly, there is insufficient evidence for the Panel to reach any conclusions as to the rights that the Complainant may have more generally in relation to the unregistered trade mark EPAPER. Nonetheless, the existence of its US registration satisfies the first of the requirements listed in sub-paragraph 4(a)(i).
As to the second requirement in sub-paragraph 4(a)(i), that of identity between the domain name and the Complainantsí mark, this is also satisfied: the domain name <epaper.biz> is clearly the same as the trade mark EPAPER, and, for the purpose of this comparison, it is appropriate to disregard the .biz suffix in the domain name.
Accordingly, the Complainant has satisfied the requirements of sub-paragraph 4(a)(i).
Lack of rights or legitimate interests of Respondent in domain name (sub-paragraph 4(a)(ii))
Paragraph 4(c) refers to various matters that can be shown by a Respondent that will be evidence of rights or legitimate interests in a domain name by a Respondent, including ownership of an identical trade mark, the use of the domain name or a corresponding name in connection with a bona fide offering of goods or services, or that the Respondent has been commonly known by that name. As noted above, the Respondent has not filed any response in the proceeding, and the Complainant has found no evidence of any use of the domain name by the Respondent to sell any goods or services or any use in relation to a business operated by the Respondent. Furthermore, it is clear that the Complainant has not consented to the Respondent to using the domain name or to apply for its registration. In the absence of any evidence filed by the Respondent, the Panel is entitled to draw the inference that he has no rights or legitimate interests in the domain name.
Accordingly, the second element of paragraph 4(a) is established.
Bad faith in registration or use of the domain name (sub-paragraph 4(a)(i))
Unlike the Uniform Domain Name Dispute Resolution Policy, there is no requirement to show bad faith at both the stages of registration and use of a disputed domain name: the presence of bad faith at either stage will suffice. In determining this, it is relevant to consider whether any of the circumstances listed in paragraph 4(b) of the Policy are present.
In the present proceeding, there is no evidence from the Respondent concerning his intentions and reasons for registering the domain name, and in such a case the Panel is entitled to draw such inferences from this default as it thinks appropriate. The most relevant factor here is that the Respondent must have had knowledge of the Complainantís interest in the domain name <epaper.biz> by virtue of its IP Claim, but nonetheless continued with his application to register the name. A further relevant matter is the complete lack of evidence relating to any use of the domain name by the Respondent, or of any preparations by him to use it, in relation to any business, or any other evidence indicating that he had some legitimate interest in the domain name. In the light of all this, the Panel concludes that there is sufficient evidence here to draw the inferences that the circumstances referred to in sub-paragraphs (ii) and (iii) are present, and to find that the registration of the domain name was made in bad faith.
In addition, even if the registration was not made in bad faith, it is difficult to "conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate" (Fiat Auto S.p.A. v Italienska bil, WIPO Case No. DBIZ2001-00030). Any use of the domain name must inevitably divert Internet users who want to locate the makers and suppliers of EPAPER products, and would mislead them into thinking that they had reached a webpage operated by the Complainant (with obvious disappointment, when they find they have not done so). It is noteworthy that under STOP it is not open to a Respondent to rely upon an intention of fair non-commercial use as a means of showing a legitimate interest in the domain name and thereby as a counter to an allegation of bad faith registration and use.
Accordingly, the Panel finds that the third element of paragraph 4(a) is established.
The Panel concludes that the Complainant has satisfied each of the elements of paragraph 4(a) that need to be shown by a successful Complainant under the STOP.
It therefore directs that the domain name <epaper.biz> should be transferred to the Complainant.
Dated: August 1, 2002