WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Zentralverband deutscher Konsumgenossenschaften e.V. v. eDesign Japan
Case No. DBIZ2002-00261
1. The Parties
Complainant is Zentralverband deutscher Konsumgenossenschaften e.V. represented by Rechtsanwälte CMS Hasche Sigle, Alexandra Heise, Stadthausbrücke 1-3, 20355 Hamburg, Germany, hereinafter the "Complainant".
Respondent is eDesign Japan, Okidamachi 2-1-59, Nakatsu-City, Oita-pref 871-0021, Japan, hereinafter the "Respondent".
2. The Domain Name and Registrar
The domain name in dispute is <plaza.biz>.
The registrar for the disputed domain name is Dotster Inc., 11807 N.E. 99th Street, Suite 1100, Vancouver, WA 98682, United States of America.
The essential procedural history of the administrative proceeding is as follows:
(a) Complainant initiated the proceeding by the filing of a complaint, received by the WIPO Arbitration and Mediation Center ("the Center") on May 29, 2002, by electronic mail, and in hard copy on June 12, 2002. On May 31, 2002, the Center sent an Acknowledgement of Receipt of the Complaint to the Complainant.
(b) On June 3, 2002, the Center transmitted a Request for Registrar Verification to the Registrar, with the verification from Dotster Inc. received by the Center June 4, 2002, confirming that the domain name at issue was registered through the Registrar.
(c) On June 10, 2002, the Center sent a STOP Complaint Deficiency Notification to the Complainant, and the Complainant submitted an amendment to Complaint, curing the deficiency the same day.
(d) On June 13, 2002, the Center transmitted Notification of the Complaint and Commencement of the Administrative Proceeding in WIPO Case No. DBIZ2002-00261 to the Respondent, after having satisfied itself that the Complainant had complied with all formal requirements pursuant to the Start-up Trademark Opposition Policy for .BIZ ("STOP") adopted by NeuLevel Inc. and approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on May 11, 2001, the Rules for Start-up Trademark Opposition Policy ("the STOP Rules") and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .BIZ ("the WIPO Supplemental STOP Rules").
(c) On July 3, 2002, the Respondent filed a Response, the receipt of which was acknowledged by the Center on July 5, 2002.
(d) The Center invited Mr. Peter Nitter to serve as a Panelist. Having received his Statement of Acceptance and Declaration of Impartiality and Independence, the Center formally appointed him as Sole Panelist, and the Parties were informed about this on July 12, 2002.
(e) The Administrative Panel finds that it is properly constituted and appointed in accordance with the STOP and the STOP Supplemental Rules, and shall issue its Decision based on the STOP, the STOP Rules and the WIPO Supplemental STOP Rules. The proceedings have been conducted in English.
4. Factual Background
Complainant is a German association for co-operatives, offering co-operatives legal and consulting services, and holds and protects trademark rights for the benefit of the members. Complainant is the holder of trademark registrations for the trademark PLAZA, which is being used by members of the Complainant for supermarkets and do-it-yourself markets. The domain name <plaza.de> is owned by one of the Complainantís members, namely the co-op Schleswig-Holstein e.G.
Respondent is a Japanese company operating in the Internet business, among other things selling .biz domain names. Respondent has registered the domain name <plaza.biz>.
5. Partiesí Contentions
The Complainant asserts that:
The domain name at issue is identical to Complainantís trademark PLAZA.
To the knowledge of the Complainant, the Respondent has no right or legitimate interest in respect of the domain name at issue. Neither the Complainant nor its members have granted Respondent any licenses or other rights to use its trademark, nor is Complainant aware of any relevant trademark rights of the Respondent.
The domain name at issue was registered in bad faith. The Respondent is active in the domain name business. Respondent offers various domains under the .biz domain for sale at its web pages "www.edomains.jp", "www.themail.jp", and "www.wwwmail.biz", and the Respondent therefore obviously applied for the contested domain name in order to offer it for sale.
The fact that Respondent despite its knowledge of Complainantís prior rights in the trademark PLAZA, chose to proceed with the registration of the domain name at issue without having any legitimate rights to same, indicates that the Respondent intends to prevent the Complainant from reflecting its trademark in a corresponding domain name.
Complainant has attempted to send a Cease and Desist letter via e-mail to Respondent, but did not receive any response from Respondent.
The Complainant requests the Administrative Panel to issue a decision that the contested domain name be transferred to the Complainant.
The Respondent asserts that:
The Complainant has not provided convincing proof of the extensiveness of the usage of its trademark. The registration of a word in a small number of countries should not enable a Complainant to have exclusive rights to the words and all domain names containing those words throughout the world.
Complainant has not satisfied its burden of proving that Respondent did not have any legitimate interest in the domain name.
Complainant has not presented evidence to show Respondentís bad faith in registering the domain name at issue, and has thus failed to satisfy its burden of proving this element.
The request for the transfer of the domain name at issue should be denied.
6. Discussion and Findings
Paragraph 4(a) of the STOP lists three circumstances that the Complainant has the burden of proving are present in order to succeed with the administrative proceeding:
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 such domain name; and
iii. the domain name has been registered in bad faith or is being used in bad faith.
6.1 Identity to a trademark or service mark in which the Complainant has rights
Based on the evidence, the Panel finds that the Complainant has rights to the trademark PLAZA. The STOP makes no requirements as to the geographical spread or extent of use of the Complainantís trademark.
The domain name at issue is <plaza.biz>.
The Panel considers that the suffix .biz has no influence on the consideration of similarity.
Based on this, the Panel finds that the domain name in dispute is identical to a trademark in which the Complainant has rights.
6.2 Rights or legitimate interests in the domain name
The Panel has considered the allegations by the Complainant as to the lack of rights or legitimate interests of the Respondent in respect of the Domain Name, and the Respondentís response hereto.
The Complainant has not licensed Respondent to use their trademark in any way.
The allegations by the Complainant that they do not know of any legitimate rights in the name "plaza" by Respondent, does not in itself prove Respondentís lack of rights or legitimate interests. However, as will be seen in several Panel decisions, the burden of proof on this circumstance is easily turned by such allegation from the Complainant.
In the present case, the Respondent filed a response, and thus had the opportunity to prove its rights or legitimate interests in the domain name in issue.
Respondentís statement that the planned use of the domain name is to further and expand Respondentís preexisting business activities has not been documented by any decisive evidence. The attached e-mail correspondence relates to the domain name <web.biz> or .biz TLDs in general, and does not mention the domain name <plaza.biz> at all.
Based on the above, the Panel finds that Respondent failed to prove any rights or legitimate interests in the disputed domain name, and therefore the Respondent has no rights or legitimate interests in the Domain Name.
6.3 Registration or use in bad faith
The Panel has considered Complainantís allegations and evidence with regard to the Respondentís registration and use of the Domain Name in bad faith, and the Respondentís response hereto.
Given the manner in which the NeuLevel, Inc. IP Claim/STOP Proceeding procedure works, the Respondent was certainly aware of Complainantís interest in the PLAZA trademark before electing to proceed with the completion of their registration of the Domain Name. However, this knowledge, in and of itself, cannot establish bad faith registration of the contested domain name.
This especially applies in this case where the Complainant has not put forward evidence that his trademarks are well known. "Plaza" is a common word, meaning market place or an open square.
Although Respondent, when contacted by the Complainant offered to sell the domain name to Complainant, this does not prove that the domain name was registered for the purpose of selling it to the Complainant or to a competitor of the Complainant.
The Panel finds that Complainant has not provided sufficient evidence that the domain name was registered in bad faith.
As to the use of the domain name, it is at present not connected to any active web site. The fact that Respondent sells other generic .biz domain names is not sufficient to establish bad faith use of the domain name <plaza.biz>. Complainant has not given any indications or evidences that Respondent is using the domain name in bad faith.
The Panel finds that Complainant has not produced sufficient evidence that Respondent either registered or is using the domain name in bad faith.
The Complainant has not proved that Respondent registered or is using the domain name in bad faith.
Accordingly, pursuant to Paragraph 4 (a) (iii) of the STOP, the Panel denies the Complaint.
Peter G. Nitter
Dated: July 26, 2002