WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
target software solution GmbH v. NetVirtue, Inc.
Case No. DBIZ2002-00277
1. The Parties
Complainant is target software solution GmbH of Sonnenweg 20, 69254 Malsch, Germany, represented by Dipl.-Ing. Markus Richardt of Patentsanwälte Quermann & Richardt, Wiesbaden, Germany.
Respondent is NetVirtue Inc., of 21156 Hayshire Ct., Ashburn, Virginia 20147, United States of America, represented by its President, Mr. Ken Price.
2. The Domain Name and Registrar
The disputed domain name is <target.biz> and the Registrar is Network Solutions, Inc., of Dulles, Virginia, United States of America.
3. Procedural History
This is an administrative proceeding in accordance with the Start-up Trademark Opposition Policy for ".BIZ", adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001, (the "STOP"), the Rules for Start-up Trademark Opposition Policy for ".BIZ", adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001, (the "STOP Rules") and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for ".BIZ" (the "Supplemental STOP Rules").
The Complaint was filed at the WIPO Arbitration and Mediation Center (the "Center") by email on June 21, 2002, and in hard copy on June 25, 2002. Its receipt was acknowledged on June 28, 2002. At the request of the Center, the Complaint was amended on July 5, 2002, and again on July 9, 2002, so as correctly to identify the Registrar and its address and to provide that Complainant submitted to the jurisdiction of the courts of the Registrarís head office. On July 10, 2002, the Center satisfied itself that the amended Complaint complied with all formal requirements, including the payment of the correct fees, and formally dispatched copies of the amended Complaint by post/courier (with enclosures) to Respondent at the address as recorded with the Registrar and by email (without attachments). The Center included with that material a letter dated July 10, 2002, containing notification of the commencement of this administrative proceeding, with copies (of the amended Complaint without attachments) to Complainant, the Registrar and ICANN.
The last day specified by the Center for a Response was July 30, 2002. On July 26, 2002, Respondent requested an extension of time of 7 days and gave reasons why it considered the circumstances exceptional, as required by STOP Rule 5(d). That day the Center granted a 7-day extension to August 6, 2002. A Response was filed on August 2, 2002, by email and on August 5, 2002, in hard copy. Its receipt was acknowledged on August 4, 2002.
On August 13, 2002, the Center notified the parties of the appointment of Alan L. Limbury as Panelist, Mr. Limbury having submitted a Statement of Acceptance and Declaration of Impartiality and Independence. That day the Center transmitted the case file to the Panel and notified the parties of the projected decision date of August 27, 2002. The Center informed the Panel that there is a further IP Claimant in the queue regarding the disputed domain name.
On August 15, 2002, Complainantís representative sent directly to the Panel by email, with copies to Respondent and the Center, an unsolicited "Replication" dated August 13, 2002, which, among other things, argued that the time for a Response should not have been extended because there are no exceptional circumstances and therefore the Response should not be considered by the Panel.
On August 16, 2002, the Center reminded Complainantís representative that under STOP Rule 8, no party or its representative may have unilateral communication with the Panel and that the Rules make no express provision for supplemental filings, except in response to a deficiency notification or if requested by the Center or the Panel. Respondent expressed its objection to Complainantís action by email to the Center on August 17, 2002.
Under STOP Rule 5(d), a Provider has authority to extend the time for filing a Response in exceptional circumstances. The STOP Rules do not appear to permit the Panel to overrule a decision of a Provider to extend time, although STOP Rule 10(c) permits the Panel to overrule a decision of a Provider not to extend time. Accordingly there is no basis for this Panel to disregard the Response.
Neither party has a right to file supplementary submissions subsequent to the Complaint and the Response. It is for the Panel to determine whether or not to accept or request supplementary submissions, taking into account all the circumstances of the particular case. If a respondent raises matter which the complainant could not have been expected to have addressed in its complaint, admission of a reply, even an uninvited one, may be warranted in the interests of fairness: Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd., WIPO Case No. D2000-0802. See also Creo Products Inc. v. Website In Development, WIPO Case No. D2000-1490; J.P.Morgan v. Resource Marketing, WIPO Case No. D2000-0035 and Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151.
Here the Response does raise an issue that Complainant could not reasonably have anticipated, namely whether Complainant has trademark rights in the United States. Accordingly Complainantís "Replication" will be considered by the Panel.
The Panel agrees with the Centerís assessment concerning the amended Complaintís compliance with the formal requirements; the Center discharged its responsibility under paragraph 2(a) of the STOP Rules to employ reasonably available means calculated to achieve actual notice to Respondent of the amended Complaint; a Response was filed within the extended time granted by the Center under STOP Rule 5(d) and the Panel was properly constituted. The language of the proceeding was English.
4. Factual Background
Complainant is the registered proprietor of German registered trademarks Nos. 399 39 173.8 and 300 66 274.2 and Community registered trademark No. 001 837 582 for the word TARGET in classes 35, 38 and 42. As appears from the attachment to the "Replication", Complainant also has a pending U.S. registered trademark application for TARGET, No.76339129 filed on November 16, 2001.
The disputed domain name was registered in the name of Respondent on March 27, 2002.
5. Partiesí Contentions
The disputed domain name is identical to the registered TARGET trademarks in which Complainant has rights. Contrary to Respondentís assertion, Complainant does have U.S. trademark rights. Complainant has also been found by the State Court in Munich to have common law rights. That Court in May 2001 ordered a company named Target AG to change its name and transfer the domain names <target.de> and <target-ag.de> to Complainant.
Respondent does not have a trademark for TARGET.
Respondent is using neither the mark TARGET nor the disputed domain name. Respondentís website at "www.NetVirtue.com" shows Respondent is building an Internet "house of brands" using the new .biz tld. It has no goods or services to offer other than domain names it has registered. This can only mean it is registering domain names in order to resell them, contrary to the purpose of STOP to prevent such "domain grabbing" from damaging the legitimate interests of established businesses and their brands.
Since the disputed domain name does not resolve to an active website, it must be inferred Respondentís only interest in registering the disputed domain name is to transfer it for valuable consideration.
Respondentís business plans (submitted in the Response) are contradictory and do not establish a credible story, whereas Complainant has invested over the years in the mark TARGET.
Rights in a trademark
Complainantís TARGET trademark is in European countries, whereas the registration of the domain name is entirely conducted within United States. The Complainant does not have a United States trademark.
The word "target" is a generic word in the English language that has several meanings including but not limited to: an object, such as a padded disk with a marked surface that is shot at to test accuracy in rifle or archery practice; something aimed or fired at; an object of criticism or attack; a desired goal. None of these terms are directly related to Classes 35, 38 or 42.
The fact that Respondent does not have a "Target" trademark is not sufficient to conclude that Respondent has no rights or legitimate interests to the domain name. Since the word "target" is a generic word in the English language that is owned by no-one, Respondent has as much right to use it as anyone else. Registration of a domain name utilizing a common term for a business establishes Respondentís legitimate interest in and of itself.
Respondent intends to use the generic term "target" for a web site in connection with a bona fide offering of goods and services. Respondent plans to use <target.biz> as a means of marketing and selling "Target Sales & Marketing". As evidence, Respondent submits an Executive Summary and the proposed home page for the <target.biz> website. Respondentís President, Mr. Ken Price, is an accredited expert in the area E-Commerce with the ability to put the <target.biz> name to good use. He has MBA in E-Commerce Management and extensive experience in the areas of technology sales and marketing.
The burden of proof for Respondentís legitimate interest is small. All that is required is a plausible explanation. The fact that Respondentís web site is not yet fully developed does not diminish its rights in the domain name.
Respondents website at "www.NetVirtue.com" cited by Complainant is dated before Respondent received notification from VeriSign of successful registration of the disputed domain name. The domains listed on that website (<thatis.biz>, <thereis.biz>, <whatis.biz>, and <thewayitis.biz>) are all generic and common terms in the English language just like <target.biz>. Such names are hardly suited for "domain grabbing" and in any event, registration of multiple domain names is not evidence of "domain grabbing" in and of itself.
Respondent makes no offer to sell any domain names on the "NetVirtue.com" website. Respondent has not solicited the sale, rent or other transfer of the disputed domain name to Complainant or to a competitor of Complainant or any other party.
The fact that Respondentís domain name is not finished and does not resolve to an active website does not constitute "bad faith".
The Domain Name was not acquired to prevent Complainant from reflecting its trademark in a domain name; or to disrupt Complainantís business or attract customerís seeking to purchase its products, nor has the Complainant filed any evidence to prove the contrary.
The development of the Target Sales & Marketing website using the disputed domain name is wholly appropriate and does not conflict with the trademark or business of the Complainant. It is highly unlikely that Complainantís software business will be confused with the Respondents business. Complainant is not a competitor of Respondent. As such, the domain name was not registered to confuse customers.
Respondent had no knowledge of the German based Complainantís existence.
Reverse Domain Name Hijacking:
The word "target" is short and easy to spell and thus, as Complainant knows, a desirable domain name that is well suited for E-Commerce. However, the word is a common word in the English language with little or no relevance to Complainantís actual business.
Complainant acted in bad faith by trying to solicit Respondent on June 20, 2002, via e-mail for "products and services" and a "list of .biz domain names and a quote". This assertion is based on both the suspicious timing of the requests (prior to the Complaint filling) and the fact that one of the e-mails comes from the "email@example.com" address, which is also used by Complainant.
6. Discussion and Findings
STOP Rule 15(a) requires this Panel to decide this Complaint on the basis of the statements and documents submitted and in accordance with the STOP, the STOP Rules and any rules and principles of law that it deems applicable.
Complainant is required by paragraph 4 (a) of the STOP to prove each of the following three elements: --
(a) the domain name is identical to a trademark or service mark in which Complainant has rights;
(b) Respondent has no rights or legitimate interests in respect of the domain name; and
(c) the domain name has been registered or is being used in bad faith.
Identity / Rights in a trademark
The disputed domain name is clearly identical to Complainantís European and German registered trademarks TARGET, the .biz tld being irrelevant.
Under the UDRP it has been held that there are no rights conferred by an application to register a trademark. See Aspen Grove, Inc. v. Aspen Grove, WIPO Case No. D2001-0798 and Spencer Douglass MGA v. Absolute Bonding Corporation, WIPO Case No. D2001-0904. The same has been held under the STOP. See Netdoktor AS v. Jens Nielsen, WIPO Case No. DBIZ2002-00109; Rodale, Inc. v. Christianne Schelling, WIPO Case No. DBIZ2002-00130 and Jones Holding Limited v. Vitty Inc.,WIPO Case No. DBIZ2002-00265. Accordingly Complainantís U.S. application does not establish any rights in that country.
The decision of the Court in Munich provided to the Panel is in German. No translation was provided. The Panel decided not to ask for a translation because, assuming that Complainant is correct in asserting that the decision found that Complainant has common law rights in the mark TARGET, the decision cannot be relied upon to establish common law rights beyond the jurisdiction of that court.
Complainant has established this aspect of its case.
Complainantís sole ground for its contention that Respondent has no rights or legitimate interests in the disputed domain name is that Respondent has no registered trademark for the word TARGET. This is true but nevertheless fatal to Complainantís attempt to prove absence of rights or legitimate interests in the disputed domain name because under STOP paragraph 4(c), ownership of trademark rights identical to a disputed domain name is only one of several circumstances demonstrating such rights or legitimate interests.
Because there is another IP Claimant in the queue, it is necessary to determine whether Respondent has demonstrated that it has rights or legitimate interests in the disputed domain name.
Where a domain name is generic, the first person to register it in good faith is entitled to the domain name. This is considered a "legitimate interest": CRS Technology Corporation v. CondeNet, NAF Case No: FA0002000093547 and Coming Attractions v.ComingAttractions.com, NAF Case No. FA0003000094341.
Respondent has rights and a legitimate interest in the disputed domain name because the word TARGET is generic and Respondent was the first to register it in the .biz tld.
Complainant has failed to establish this element.
In Rodale, Inc. v. Kelly Britt, WIPO Case No. DBIZ2002-00152 the Panel found that bad faith cannot be inferred from registration of a .biz domain name when the complainant has a registered trademark in relation to a generic word. There is no evidence of an offer to sell the domain name to Complainant or a competitor or otherwise to interfere with Complainantís trademark or business.
All that Respondent has done is register a generic and descriptive word as a domain name. Respondentís assertions as to its plans are not persuasive because the material provided postdates the filing of the Complaint. Nevertheless, the inferences Complainant asks the Panel to draw are too far fetched, given the generic nature of the word TARGET.
There is no evidence of bad faith. Complainant has failed to establish this element.
Reverse domain name hijacking
STOP Rule 1 defines reverse domain name hijacking as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name." See also STOP Rule 15(d). To prevail on such a claim, it has been held that Respondent must show either that Complainant knew of Respondentís unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith: Sydney Opera House Trust v. Trilynx Pty. Ltd., WIPO Case No. D2000-1224 and Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151 or that the Complaint was brought in knowing disregard of the likelihood that the respondent possessed legitimate interests: Smart Design LLC v. Hughes, WIPO Case No. D2000-0993; or that Complainant knew it had no rights in the trademark or service mark upon which it relied and nevertheless brought the Complaint in bad faith: Dan Zuckerman v. Vincent Peeris, WIPO Case No. DBIZ2002-00245.
Despite Complainantís failure to elicit from Respondent a compromising response to its emails prior to filing the Complaint; despite the hopeless inadequacy of Complainantís case on legitimacy and despite the use of language in the "Replication" which could be taken to be designed to conceal from the Panel that the rights claimed in the mark TARGET in the United States amounted to no more than an application (which gives rise to no rights), the Panel is not satisfied that there are present here any of the circumstances which would justify a finding of reverse domain name hijacking. The Panel declines to make such a finding.
Pursuant to paragraphs 4(i) of the STOP and 15(d) of the STOP Rules, the Panel finds that this dispute is not within the scope of paragraph 4(a) of the STOP and accordingly the Complaint is dismissed.
No subsequent challenges under the STOP against the domain name <target.biz> shall be permitted.
Alan L. Limbury
Dated: August 19, 2002