WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
E.G.O. Elektro- Gerätebeau GmbH v. Spacetel Communications
Case No. DBIZ2002-00266
1. The Parties
The Complainant in this proceeding is E.G.O. Elektro-Gerätebeau GmbH, Oberderdingen, Germany.
The Respondent is Spacetel Communications, Paris, France.
2. The Domain Name and Registrar
The domain name at issue is <ego.biz>
The Registrar is Alldomains.Com, Inc.
3. Procedural History
The STOP Complaint was received by WIPO Arbitration and Mediation Center ("the Center") by e-mail on June 10, 2002, and in hardcopy on June 14, 2002. The Center has verified that the Complaint satisfies the formal requirements of the Start-up Trademark Opposition Policy ("the STOP"), the Rules for Start-Up Trademark Opposition Policy ("STOP Rules") and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .biz ("WIPO Supplemental STOP Rules").
On June 17, 2002, the Center notified the Respondent of the Complaint by e-mail and courier and informed the Respondent inter alia that the last day for sending its Response was July 7, 2002.
This time limit is mentioned in the following way :
"the last day for sending your Response to the Complainant and to us is July 7, 2002"
(WIPO Notification of June 17, 2002, p. 2 Nį 5 in fine).
A Response dated July 7, 2002, and signed by an "Avocat à la Cour" in Paris was received by e-mail on July 9, 2002, 5.30 p.m. and in hard copy on July 15, 2002.
The Panel has to decide whether the Response can be taken into consideration.
First, the Panel notes that July 7, 2002, is a Sunday, which is not a working day either in France, in Germany or in Switzerland, seat of the WIPO Arbitration and Mediation Center. Therefore the time-limit was reported to the following day, July 8, 2002.
Second, the Notification of Respondent Default was issued on July 9, 2002, 2.36 p.m. Therefore, the notification was in good order, since by that time (a) the time-limit reported to July 8, 2002, had lapsed without a Response having reached the WIPO Arbitration and Mediation Center; (b) the e-mail announcing that Respondent was filing a Response is posterior of two hours and fifty-four minutes on the same day July 9, 2002.
However, there is no indication in the file transmitted to the Panel of the date of the mailing of the Response in Paris.
Therefore, considering that the Response is signed by a lawyer and dated by her hand of July 7, 2002, the Panel decides to take the Response into consideration. Further, the Panel notes that even if the Response were to be considered to have been filed after the time-limit, the Panel should still have regard for the registration of Respondentís French trade mark EGO (a combined figurative and word trade mark) Nį 934 85 388, which was published in the Bulletin officiel de la Propriété Industrielle 1994, 23.
The Panel has been appointed on July 16, 2002, and file has been transmitted to the Panelist same day.
4. The Partiesí Contentions
A. Complaintís Contentions
In its complaint, the Complainant alleges that :
Complainant is owner of many national as well as international registrations of the trade mark 'EGO'. As an example, Complainant mentions the word mark 'EGO' No. 1 165 476 registered with the German Trademark Office on October 10, 1990, the protection of which ends on April 30, 2010. The mark is used and protected for various kind of electrical devices and apparatus.
The Complainant also owns the word mark 'EGO' No. 706 128 registered with the German Trade Mark Office on September 6, 1957, with a term of protection ending on October 30, 2003, and it mentions the international registration of the mark 'ego' No. 2 R 221 829.
Further, the Complaint is also based on the use of Complainant's company name 'E.G.O.' as stated in the registration of the company name with the local Registry Court. Complainant is allegedly one of the leading companies producing and selling electrical devices, and its marks and company name are allegedly well known among its potential customers.
The second level domain of the disputed domain name is identical to the Complainant's marks and company name. Respondent has no rights or legitimate interests in respect of the domain name and has registered the domain name in bad faith.
Complainant has with fax dated April 24, 2002, informed Respondent of its existing marks and company name and has asked Respondent to provide information as to the legal basis on which the domain name has been registered. Respondent has not given any information and has not transferred the domain, although Complainant had announced legal steps including filing a STOP-Complaint.
Respondent, who has not made any use of the mark 'ego' or the domain name at issue, has obviously registered the domain name without having done any kind of prior research with respect to existing marks that could lead to a domain name conflict. Respondent has also failed to produce any kind of evidence showing legal rights or legitimate interests in using the domain name. Under these circumstances the inaction by Respondent allegedly constitutes bad faith registration and use (see Kate Spade. LLC v. Darmstadter Designs, WIPO Case No. D2001-1384).
B. Respondentís Contentions
The Respondent only answers that they have rights on the French trade mark, "EGO" registered September 28, 1993, for products and services of Classes 09, 38, 41 and 42.
The Complainant and the Respondent are not competitors and the domain name was not registered by the Respondent to disrupt the Complainantís business : SPACETEL COMMUNICATIONS develops an activity of services in press, minitel and internet services ; EGO, the complainant is a firm specialized in fabrication and selling of products for various kind of electrical devices and apparatus .
In French language, EGO is a common word, very usually used.
5. Discussion and Findings
Under the STOP, Para. 4 (b), some circumstances are to be considered evidence of the registration or use of a domain name in bad faith.
I.registration 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 documented out-of-pocket costs directly related to the domain name; or
II.registration of the domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name; or
III.registration of domain name primarily for the purpose of disrupting the business of a competitor; or
IV.by using the domain name intentional attempt to attract, for commercial gain, Internet users to a web site or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship affiliation, or endorsement of Respondentís web site or location of a product or service on its web site or location.
As a defense, the STOP provides that the Respondent shall demonstrate his rights on legitimate interests by showing that he is the owner of a trade and service mark which is identical to the domain name at issue.
In the event, the Respondent has shown that it is the owner of the French trade mark EGO combined with a figurative element of a handshake, French Reg. Nį 93485388. The verbal element of that trade mark is identical to the Complainantís marks. The Respondentís trade mark was registered as long back as in 1993.
Therefore, the Respondent has shown a prima facie valid defense against the Complaint. It might well be that, in an ordinary court case, the rights of the Complainant might be deemed to have priority on the rights of the Respondent. However, within the narrow precinct of the STOP, there appears to be no reason to transfer the domain name to the Complainant.
By application of Para. 4 (b) and (c) of the STOP, the Panel declines to order the transfer of the domain name <ego.biz> to the Complainant.
Dated: July 30, 2002