WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Patrick Holding ApS v. PF otherwise known as Patrick Frey
Case No. DBIZ2002-0250
1. The Parties
The Complainant in this administrative proceeding is Patrick Holding ApS, a private limited company registered and existing under the laws of Denmark having its principal place of business at Langstrupvej 8, 3480, Fredensborg, Denmark.
The name of the Respondent is PF othewise known as Patrick Frey, having an address at Watzmannstr. 10, 82319, Starnberg, Germany.
2. The Domain Name and Registrar
The domain name in dispute is <patrick.biz>.
The Registrar with which said domain name is registered is Intercosmos Media Group, Inc. d/b/a Directnic.com, New Orleans, Louisiana 70130, United States of America (hereinafter "the Registrar").
3. Procedural History
On May 21, 2002, the Complaint was received by the WIPO Arbitration and Mediation Center ("the Center") by e-mail. The hard copy of the Complaint was received by the Center on June 5, 2002.
In accordance with paragraph 4(a) of the Rules for Start-up Trademark Opposition Policy for .BIZ ("the STOP Rules") the Center verified that the Complaint satisfied the formal requirements of the Start-up Trademark Opposition Policy for .BIZ ("the STOP"), the STOP Rules and the WIPO Supplemental STOP Rules and that payment in the required amount had been paid by the Complainant.
On June 6, 2002, the Respondent filed a Response.
On June 19, 2002, the Center sent a Notification of STOP Complaint and Commencement of Administrative Proceeding to the Respondent by post/courier and by e-mail. A copy of said Notification was sent to the authorized representative of the Complainant by e-mail. Further copies of said Notification were sent to the Internet Corporation for Assigned Names and Numbers ("ICANN") and to the Registrar by e-mail.
Said Notification of Complaint and Commencement of Administrative Proceeding inter alia advised the Respondent that this Administrative Proceeding had commenced on June 19, 2002, and that the Respondent was required to submit a Response to the Center on or before July 9, 2002.
On June 26, 2002, the Center further advised the Respondent that there was no requirement for the Respondent to file a further Response and that the Response filed on June 6, 2002, would stand and be considered as the official document unless the Respondent decided to revisit the Response. The Center advised the Respondent that if the Respondent did not indicate an intention to file a further Response by July 1, 2002, the Case Manager would proceed to appoint this Administrative Panel.
No further Response was received from the Respondent and on July 16, 2002, the Center sent an Acknowledgement of Receipt (Stop Response) to the Respondent.
On July 25, 2002, after having received a Statement of Acceptance and Declaration of Impartiality from him in accordance with paragraph 7 of the STOP Rules, the Center proceeded to appoint James Bridgeman as the Administrative Panel. A Notification of Appointment of Administrative Panel and Projected Decision Date was sent to the Parties by e-mail. On the same day the case file was transmitted to the Administrative Panel.
In the view of the Administrative Panel, proper procedures were followed and this Administrative Panel was properly constituted.
4. Factual Background
The Complainant is the owner of the French registered trademark PATRICK, registration number 1371852, in classes 22, 25 and 28. Said French trademark registration formed the basis for the Complainantís IP claim. The Complainant, an entity known as Patrick International and an entity known as Patrick License A/S own a substantial international portfolio of registered trademarks for the trademark PATRICK and Device.
The Respondent described himself by his initials PF when registering the domain name and is described as such in the WHOIS database. The Respondent describes himself in the Response as a private person who intends to conduct business using the <patrick.biz> address.
5. Partiesí Contentions
The Complainant submits that this dispute is properly within the scope of the STOP and that the Respondent is required to submit to these Administrative Proceedings in accordance with paragraph 4(a) of the STOP on the grounds that
i. the domain name is identical to a trademark 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 was registered or is being used in bad faith.
The Complainant submits that it is the owner of the above referenced registration for the PATRICK trademark in France and that it has rights in the PATRICK trademark in more than 50 jurisdictions.
The Complainant submits that itself and its predecessors in title have a long established reputation in the PATRICK trademark and brand name since 1892 when the Beneteau family established a business known as The Patrick Company in France. In 1938, the company directed its efforts towards sports articles and in 1948 it concentrated entirely on the production of sports footwear.
The Complainant furthermore claims to be the owner of the domain names <patrick.dk> and <patrick.it>.
The Complainant submits that the contested domain name <patrick.biz> is identical to the Complainants trademark.
The Complainant submits that it has made a preliminary search, which indicates that the Respondent does not have any rights or legitimate interest in the contested domain name.
The Complainant states that it should be noted that the Respondent did not file an IP claim and submits that this is an indication that the Respondent does not have any rights in the name PATRICK. The Complainant submits that the Respondent has chosen to register said domain name despite the Claimantís IP Claim and the Respondent has been notified by Neulevel of this claim according to the Rules for the registration of .biz domain names.
The Complainant submits that it is a clear proof of bad faith on the part of the Respondent that he has nevertheless proceeded to register said domain name with the full knowledge of the Complainantís rights and in the absence of any rights or legitimate interest in the said domain name on the part of the Respondent.
The Respondent submits that he is a private person who does not compete with the Complainant. He intends to conduct business for his own benefit at the <patrick.biz> address.
The Respondent states that despite the Complainantís claim to have established a trade-marked brand that is well-known throughout the world, neither the Respondent nor anyone else he asked had never heard of any such brand. The Respondent further submits that at the time the STOP procedures were initiated the Respondent had never heard of the Complainant.
The Respondent rejects the Complainantís submissions that the Respondent has no rights or legitimate interest in the domain name. The Respondent rejects the Complainantís submissions that the fact that the Respondent did not file an IP claim indicates any lack of rights or legitimate interest in the said domain name.
The Respondent states that "Patrick" has been his name since birth. He claims not only to have a legitimate interest in conducting business in his own name but states that he also has a legal right so to do.
The Respondent submits that the name "Patrick" is a commonplace male personal name and as such it cannot be identified with any brand or product. The Respondent alleges that confusion already exists because the characteristics of the name "Patrick" are too general and he submits that it is highly unlikely that his own ownership of the domain name <patrick.biz> will evoke any more confusion.
The Respondent states that a search on the GOOGLE search engine produces almost 8 million results. There is a large number of individual businesses, private persons and corporations with the name PATRICK and the Respondent has submitted examples of these.
The Respondent points to the fact that the Complainantís above domain name registrations for <patrick.dk> and <patrick.it> are in ccTLDs and not in gTLDs.
Finally the Respondent refers to STOP Rule 3a and states that the Respondent submitted its Complaint 55 days after the date on which the Respondent registered the <patrick.biz> domain name. STOP Rule 3a states that the Complainant shall submit its complaint to the Provider of its choice within twenty (20) calendar days of being notified by the Registry Operator of is challenge priority in accordance with the STOP Rules and the STOP. The Respondent states that it is doubtful that the Registry Operator waited a full month before notifying the Complainant.
6. Discussion and Findings
In accordance with paragraph 4(a) of the STOP, the Complainant must prove that:
(i) the domain name in dispute is identical to a trademark 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.
The Complainantís Rights
This Administrative Panel accepts that the Complainant has established that it has rights in the trademark PATRICK, based inter alia on its French trademark registration and its extensive reputation.
As the domain name in dispute is identical to the Complainantís said trademark the Complainant has satisfied the first element of the test in paragraph 4(a) of STOP.
The Respondentís Rights
According to the information in the WHOIS database, as provided by the Complainant as an annex to the Complaint, the Respondent registered the domain name in the name "PF". The Respondent claims that he has been known by the name "Patrick" since birth.
On the face of it, the Respondentís failure to provide his full name when registering the domain name would appear to be a breach of the representations required from a registrant under STOP. Paragraph 2(a) of STOP provides that by applying to register a domain name in the start-up period, an applicant represents and warrants that the statements made in the .biz Registration Agreement are complete and accurate. This is a matter that could be relevant in considering the issue of bad faith.
Paragraph 4 (c)(iii) of STOP provides that a respondent can establish that he/she has rights or a legitimate interest in a domain name where an administrative panel finds that based on all the evidence presented, that the respondent has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights in the domain name.
Regrettably, the Respondent has not furnished any substantive evidence of his identity beyond the assertions and the certification in the Response. It is all the more regrettable since if his claim is true, such evidence would easily come to hand.
Nonetheless, in the Response the Respondent has certified inter alia that to the best of his knowledge, the information contained in the Response is complete and accurate and this includes the Respondentís statement that he has been known by the name "Patrick" since birth.
Furthermore, it has been noted by this Administrative Panel that the Administrative Contact Name, the Billing Contact Name, and the Technical Contact Name on the WHOIS database is given as "PATRICK +FREY". Furthermore the letters "purplepatrick" form part of the Respondentís e-mail address as provided on the WHOIS database. These are indications that the Respondent is correct in his claim that his personal name is Patrick.
While one may entertain suspicions as to why the Respondent registered the domain name using his initials "PF" rather than his full name, and as to why the Respondent has not furnished any actual evidence of his identity and use of the name "Patrick", there is no reason why this Administrative Panel should not accept the Respondentís claim that "Patrick" is his personal name. The onus rests on the Complainant to prove its case.
In the view of this Administrative Panel, the Complainant has failed to establish, on the balance of probabilities, that the Respondent has no rights or legitimate interest in the domain name and the application must fail.
In the circumstances, as the Claimant is required to establish each of the three elements in paragraph 4(a) of STOP, and has failed to establish the second element, it is not necessary to consider the issue of bad faith.
With specific reference to Paragraphs 4(i) of the STOP and 15 of the STOP Rules this Administrative Panel finds that the Complainant has failed to has failed to establish that the Respondent has no rights or legitimate interest in the domain name <patrick.biz> as required by paragraph 4(a)(ii) of the STOP. This Application must therefore be refused.
Dated: August 7, 2002