WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

CITGO Petroleum Corporation v. Matthew S. Tercsak

Case No. D2003-0003

 

1. The Parties

The Complainant is CITGO Petroleum Corporation, a company with its principal place of business at 6130 S. Yale Avenue, Tulsa, Oklahoma, United States of America (hereinafter "the Complainant"). It is represented by the law firm Doerner, Saunders, Daniel & Anderson, L.L.P., of Tulsa, Oklahoma.

The Respondent is Matthew S. Tercsak, residing at 10014 University Boulevard, Orlando, Florida, United States of America (hereinafter "the Respondent").

 

2. The Domain Name and Registrar

The domain name at issue in this proceeding is <mystik.com>.

The Registrar is Network Solutions, Inc., of Herndon, Virginia, United States of America (hereinafter "the Registrar").

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") by email on January 3, 2003, and in hard copy on January 9, 2003.

On January 7, 2003, the Center transmitted to the Registrar by email a request for registrar verification in connection with the domain name at issue. On January 13, 2003, the Registrar transmitted its verification response to the Center by email. This response listed the registrant of the disputed domain name as "mystik" and further provided the contact details for the administrative, billing, and technical contacts.

On January 16, 2003, the Center determined that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with Paragraphs 2(a) and 4(a) of the Rules, the Center notified the Respondent of the Complaint on January 16, 2003, and the proceedings formally commenced as of that date. In accordance with Paragraph 5(a) of the Rules, the due date for the Response was February 5, 2003. The Respondent did not submit a Response by that date. Accordingly, the Center issued a Notification of Respondent Default on February 6, 2003.

On February 11, 2003, the Respondent belatedly filed a Response by email. Mr. Tercsakís cover email to the Center stated:

I was led to believe that I had 30 days from commencement to present my case. I fed-ex [] my response 2/10/03. Please do not make a ruling until you have heard my case. I have legally owned and operated a legal e-commerce site at this domain for 6 years. I cannot afford to lose my company due to domain hi-jacking.

The Center acknowledged receipt of the Respondentís belated Response on February 12, 2003. The Center correctly informed the Respondent that the Panel, once appointed, would decide whether to admit and consider the Response. On February 13, 2003, the Center received a signed original of the Response.

The Center appointed D. Brian King as the Sole Panelist in this matter on February 13, 2003. The undersigned Sole Panelist has submitted a Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with Paragraph 7 of the Rules.

The Panel notes that the Complaint was properly notified to the Respondent by the Center on January 16, 2003. The Centerís Notification stated that the Respondent had 20 calendar days to submit a Response and expressly identified February 5, 2003, as the deadline for sending a Response to the Center.

Notwithstanding the Respondentís failure to submit his Response in a timely fashion, the Panel deems it appropriate to exercise its discretion under Paragraph 10 of the Rules to admit and consider the Response. The Response, containing attached documentary evidence, was received by the Center prior to the appointment of the Panel and was properly transmitted to the Complainant. The Panel concludes that consideration of the Response will serve the interests of justice, by affording the Respondent a full opportunity to be heard, and that, in the circumstances here, such consideration will neither prejudice the Complainant nor engender delay in the proceedings. Accordingly, the Response will be admitted and its contents will be taken into account by the Panel.

 

4. Factual Background

The facts relevant to the current dispute are set out in the Complaint and the Response. Considering the evidence attached thereto, the Panel finds the following facts to have been established.

The Complainant is an oil company engaged in the business of refining, transporting and marketing transportation fuels, lubricants, petrochemicals, refined waxes, asphalt and other industrial products. It was incorporated in the early 1900s under the name "Cities Service Company"; in 1965, it changed its name to "CITGO Petroleum Corporation" and currently trades under that name. Among the goods produced and marketed by the Complainant is a line of products carrying the name "MYSTIK."

The Complainant is the holder of registered trademarks for the name "MYSTIK" and for variants thereof. The Complainantís first registration of the name with the United States Patent and Trademark Office took place in 1955. Since then, the Complainant has registered the mark "MYSTIK" in sixteen other countries. See Complainantís Exhibit 4.

The Respondent, Matthew Tercsak, is the president of Mystik, Inc., a company incorporated in the State of Florida on June 5, 1998, (see Respondentís Exhibit A). He presently operates a retail store called "Mystik" in Orlando, Florida, selling menís and womenís clothing, smoking products, jewelry, artwork and other goods. The evidence shows that the Respondent received a license to sell tobacco products, issued in the name of "Mystik," from the State of Florida on October 18, 1995, (see Respondentís Exhibit E). The evidence further indicates that he has carried on business under the name "Mystik" since that time.

The contested domain name, <mystik.com>, was registered on July 16, 1997, (see Complainantís Exhibit 1). It appears that the domain name was initially registered by a third party and then acquired by the Respondent. The domain name resolves to an active website advertising products for sale and describing the Respondentís store. In particular, the website highlights a selection of decorative pipes used for smoking. The website states that the business has been in operation since "circa 1995" (Respondentís Exhibit I), and the evidence indicates that the website has been used in connection therewith since about 1997.

On October 16, 2002, the Complainantís counsel sent a cease and desist letter to Respondent Tercsak. In that letter, counsel noted the Complainantís trademark registration of the "MYSTIK" mark and asserted that the Respondentís use of the mark in its domain name violated U.S. trademark and anticybersquatting laws. While acknowledging that the Respondent "may have initiated [the] domain name registration without being aware of our clientís trademark," the letter demanded the transfer of the domain name within ten days to the Complainant, which would "pay any fees associated therewith" (Complainantís Exhibit 7).

The Respondent replied to the cease and desist letter on November 12, 2002. His letter states, in pertinent part (Respondentís Exhibit H):

I would like to correct your clientsí misconception that Mystik.Com is a cyber squatting site. . . . For the past several years, my company has operated a full retail / wholesale business at this domain. Furthermore, My Company has made a significant investment into the marketing and promotion of Mystik.com since 1998. We have continually advertised on a local, state and national level for the past several years. This continuous promotion has garnished us with an average of 10,000 users per month. It was only with recent compromises to our security software, were we forced to[] temporarily deactivate this domain.

We are currently scheduled to[] re-launch Mystik.com in December 2002. If your client wishes to[] acquire this e-commerce domain site; then I hope both parties can come to a fa[ir] and amicable solution.

The record shows no further exchanges of correspondence between the parties after the Respondentís November 12 letter. On January 3, 2003, the Complainant initiated the present proceeding.

 

5. Partiesí Contentions

A. Complainant

The Complainant contends in its Complaint that the three elements of Paragraph 4(a) of the Policy have been met.

First, the Complainant alleges that the contested domain name is identical or confusingly similar to its "MYSTIK" mark. It argues that the disputed domain name, <mystik.com>, incorporates its "MYSTIK" mark in whole. The Complainant further contends that web users seeking its "MYSTIK" products are likely to access the Respondentís website inadvertently by typing in <mystik.com>. Although the Complainant acknowledges that the products offered for sale by the Respondent and by itself are substantially different, it nevertheless argues that at least an initial consumer confusion will arise.

Second, the Complainant argues that the Respondent has no rights or legitimate interests with respect to the disputed domain name. It states that no license or permission has been given to the Respondent to use the Complainantís "MYSTIK" mark. The Complainant further argues: (i) that, "[u]pon information and belief," the Respondent "has not been commonly known by its domain name"; (ii) that the Respondent has not used the domain name in connection with a bona fide offering of goods or services, in particular because the products sold on the website include "drug paraphernalia which are commonly used to smoke marijuana, hashish, and other illicit substances"; and (iii) that the Respondent has not made any legitimate noncommercial or fair use of the domain name (Complaint, at page 8).

Finally, the Complainant submits that the Respondent registered and is using the disputed domain name in bad faith. The Complainant contends that bad faith can be inferred from several circumstances. These include the Respondentís alleged failure to make consistent or continuous active use of the website, as well as his refusal to transfer the domain name in response to the Complainantís cease and desist letter. In the latter regard, the Complainant argues that despite its demand, the Respondent has "chosen to cling to the domain name with the threat of extorting unmerited funds from Complainant" (Complaint, at page 9). The Complainant further alleges that the Respondent is tarnishing the Complainantís mark by using the domain name to sell products that can be used in connection with illicit drugs.

B. Respondent

The Respondent denies that the disputed domain name, <mystik.com>, is identical or confusingly similar to the Complaintís "MYSTIK" mark. He argues that because the products offered by his company and the Complainantís are plainly different, no consumer confusion can result.

The Respondent further contends that he has rights and legitimate interests in the disputed domain name. The Respondent suggests that his company has been doing business under the name "Mystik" since 1995, that he has been using the disputed domain name in connection with his business for the last six years, and that this use is in connection with a bona fide offering of goods and services.

The Respondent denies that he has registered or is using the disputed domain name in bad faith. In this regard, he relies on the circumstances already noted above and asserts that his business sells legal products in a legal manner.

Finally, the Respondent contends that the Complainant is attempting to gain ownership of the <mystik.com> domain name through reverse domain name hijacking. He notes that the Complainant had the opportunity to register the disputed domain name at any time prior to 1997, and that it still has the opportunity to register an available variant of that name. By declining to do so and instead seeking the transfer of <mystik.com>, the Respondent argues, the Complainant has not proceeded in good faith.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove each of the following elements in order to obtain relief:

(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

The Complainant bears the burden of proof on each of these elements.

Before turning to an analysis of these elements, it is necessary to address a preliminary issue, that being the identification of the Respondent in the Complaint. The Complaint identifies the Respondent as Matthew S. Tercsak, while the WHOIS database shows the registrant of the disputed domain name as "Mystik" (see Complainantís Exhibit 1). Thus the Complaint, on its face, appears to name the incorrect Respondent. However, in his Response, Mr. Tercsak has identified himself as the President of Mystik, Inc., and has acknowledged his ownership or control over the disputed domain name. Accordingly, on the basis of these factors, it appears that Mr. Tercsak is indeed the proper Respondent in this case.

With this issue resolved, the Panel turns to an examination of the three elements that the Complainant must prove in order to be entitled to relief in accordance with Paragraph 4(a) of the Policy.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name is identical to the Complainantís registered trademark "MYSTIK." The addition of the designation ".com" in the domain name does not render it non-identical. See The State of the Netherlands v. Goldnames Inc., WIPO Case No. D2001-0520 (WIPO June 3, 2001), at page 4. Accordingly, the first element of Paragraph 4(a) of the Policy has been met by the Complainant.

The Respondent argues that no consumer confusion can result from his use of the domain name because the products he offers for sale are markedly different from those sold by the Complainant under the mark "MYSTIK." However, because the domain name is identical to the Complainantís registered mark, this assertion, even if true, would not suffice to defeat the Complainantís showing on the first element of Paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists three circumstances that are sufficient to demonstrate a Respondentís rights or legitimate interests in a domain name:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

These three circumstances are set out disjunctively in the Policy, such that meeting any of them is sufficient to establish a Respondentís rights or legitimate interests in the domain name at issue.

The Respondent in this case argues that he has done business since 1995 under the name "Mystik," and that he has used the disputed domain name, since about 1997, in connection with his business. He thus asserts, in essence, that he meets the requirements of Paragraph 4(c)(ii) of the Policy, as well as the circumstance identified in Paragraph 4(c)(i).

Paragraph 4(c)(ii) of the Policy requires that the Respondent has been "commonly known" by the domain name at issue. It does not define the term "commonly known," nor does it specify at which date the Respondent must have been so known. Previous Panels have held that various kinds of uses of a name can constitute being "commonly known" and that, in particular, use in a business context is sufficient (but not necessary) to support such a finding. See AST Sportswear, Inc. v. Steven R. Hyken, WIPO Case No. D2001-1324 (WIPO March 26, 2002), at page 5 (use of name by Respondent in professional context); Penguin Books Ltd. v. The Katz Family and Anthony Katz, WIPO Case No. D2000-0204 (WIPO May 20, 2000), at page 7 (Respondent known for years by nickname "Penguin"). With respect to the point at which the Respondent must have been "commonly known" by the disputed name, the consensus in the cases is that the Respondent must already have been so known at the time of registration or acquisition of the domain name at issue. See Royal Bank of Canada v. RBC Bank, WIPO Case No. D2002-0672 (November 20, 2002), at page 8; Rothschild Bank AG, N M Rothschild & Sons Limited and Rothschild Continuation Holdings AG v. Rothchild Corporation and Rothchild Internet Development Corporation SA de CV/ Joseph Martin Rothchild, WIPO Case No. D2001-1112 ( January 15, 2002), at page 9.

In this case, the evidence shows that the Respondent began doing business under the name "Mystik" in late 1995 (see Respondentís Exhibit E). He has used the domain name <mystik.com> in connection with his business since about 1997, and in 1998, he formally incorporated his business as Mystik, Inc. (see Respondentís Exhibit A).

It follows that the Respondent has been "commonly known" by the disputed domain name within the meaning of Paragraph 4(c)(ii) of the Policy. He has used the name in the context of his business and has been so known, at least to the customers of that business, since before the disputed domain name was registered and obtained by him. Accordingly, the Respondent must be deemed to have a legitimate interest in the domain name <mystik.com>.

The Complainantís argument on the absence of a legitimate interest focuses on two points: the allegation "[u]pon information and belief" that the Respondent has not been commonly known by the domain name; and the suggestion that the Respondentís use of the name is illegitimate because the products marketed via the website are illicit. The first allegation is simply incorrect, for the reasons already discussed. As to the second argument, the Complainant has failed to show that the Respondentís business is illegal or illicit under the law of the place of establishment or otherwise. On the contrary, the evidence indicates that the Respondentís business is properly licensed and registered in the State of Florida (see Respondentís Exhibits A and E).

For the foregoing reasons, the Panel concludes that the Complainant has not met the second element required under Paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

In light of the finding in Section B above, the Panel is not required to decide the issue of bad faith registration and use. However, for the sake of completeness, the Panel considers it appropriate to address briefly the Complainantís allegations in this regard.

The circumstances relied upon by the Complainant in asserting bad faith are essentially threefold: (i) the Respondentís alleged failure to make consistent or continuous use of the domain name; (ii) his refusal to transfer the domain name upon demand, allegedly accompanied by the "threat of extorting unmerited funds from Complainant"; and (iii) the illicit nature of the products sold via the website (Complaint, at pages 9 and 10). On the evidentiary record, none of these allegations has been sufficiently proven.

Contrary to the first allegation, it appears from the evidence that the Respondent has made more or less consistent use of the disputed domain name. While the Respondentís website appears to have been temporarily non-operational in late 2002, the evidence indicates that it was operational again at least by February 2003 (see Respondentís Exhibit I). As to the second allegation, while it is true that the Respondent refused to transfer the domain name in response to the demand letter sent by the Complainantís counsel in October 2002, such refusal is in itself insufficient to support a finding of bad faith. Moreover, on a fair reading of the Respondentís letter in response to the demand (Complainantís Exhibit 7, second document), it cannot be inferred that a claim for inappropriate compensation was made. Finally, it has not been shown that the Respondentís products are illegal or otherwise illicit, as already noted, nor has it been shown that the Respondent has used the domain name with the intent of tarnishing the Complainantís trademark. Accordingly, even if the Complainant had succeeded in showing the absence of rights or legitimate interests in the disputed domain name on the Respondentís part, the Complainantís allegations regarding bad faith registration and use would not have been sustained on the evidence here.

The Panel appreciates that the Complainant disapproves of some of the products marketed by the Respondent and finds it uncomfortable that these are being sold through a web site carrying the name "Mystik." It bears emphasis, however, that the ICANN Policy is "a limited tool for acting against certain types of cybersquatting." AST Sportswear, Inc., WIPO Case No. D2001-1324, at page 4. In the present case, the terms of the Policy afford no relief to the Complainant, which must be left to its remedies, if any, under the applicable national laws.

D. Respondentís Allegation of Reverse Domain Name Hijacking

As noted earlier, the Respondent alleges in his Response that the Complainant is guilty of reverse domain name hijacking. That term is defined in Paragraph 1 of the Rules as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name." In the present case, the Panel finds that the Complainant, while ultimately unsuccessful, did not lack a good faith basis for bringing its Complaint. Accordingly, the Respondentís charge of reverse domain name hijacking is rejected.

 

7. Decision

For the foregoing reasons, the Complaint is denied.

 


 

D. Brian King
Sole Panelist

Dated: February 28, 2003