WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Hans Sasserath & Co. KG v. Thunayan Khalid AL-Ghanim

Case No. D2003-0729

 

1. The Parties

The Complainant is Hans Sasserath & Co. KG, of Korschenbroich, Germany, represented by Patentanwälte, Jabbusch Arendt & Siekmann of Oldenburg, Germany.

The Respondent is Thunayan Khalid AL-Ghanim, of Kuwait, represented by Mr. Steven Lieberman of Greenberg & Lieberman, Takoma Park, Maryland, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <syr.com> is registered with Address Creation.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 16, 2003. On September 17, 2003, the Center transmitted by email to Address Creation a request for registrar verification in connection with the domain name at issue. On September 25, 2003, Address Creation transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing and technical contact. The Center verified 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 26, 2003. In accordance with the Rules, paragraph 5(a), the due date for a Response was October 21, 2003. The Response was filed with the Center on October 21, 2003.

The Center appointed the Honourable Sir Ian Barker QC of Auckland, New Zealand, Dr. Massimo Introvigne of Turin, Italy and Professor David E. Sorkin of Chicago, Illinois, United States of America as panelists in this matter on November 17, 2003. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

The Complainant is the owner of trademarks for "SYR" in the European Community, the United States of America and a number of European countries.

The trademarks are registered for various items used in the Complainantís business particularly for a wide range of valves, filters, solar heating installation water-heating systems, water and thermal switches, control valves, filling assemblies and the like.

The Respondent was given no rights in the mark "SYR" by the Complainant.

The previous owner of the disputed domain name, agreed to sell the name to the Complainant for $US 6,950 on May 16, 2003. Before any transfer to the Complainant took place, the previous owner transferred the disputed domain name to the Respondent. In an email to the Complainantís representative dated June 5, 2003, the previous owner stated that "(Thunayan) is our Domain Administrator."

 

5. Partiesí Contentions

Complainant

The disputed domain name is identical to the trademarks owned by the Complainant. The Complainant has not given the Respondent any rights or interests in the disputed domain name.

The Domain name was registered primarily for the purpose of selling it to the owner of the trademark and the Respondent is using it in bad faith.

The transfer by the previous owner to the Respondent of the disputed domain name cannot cure what was a use in bad faith to a use in good faith. Furthermore, the Respondent makes use of passive holding because he has no own legitimate interest in the disputed domain name.

The previous owner and the Respondent are working in someway together. The disputed domain name was transferred by the previous owner to the Respondent, who has no own legitimate interest in it but who prevents the owner of the trademark from using the name. Because of the transfer, the Respondent should have known of the legitimate interest of the Complainant. When using the disputed domain name, the Respondent intentionally attempts to attract Internet users to his website "www.oxide.com" by a link to the disputed domain name.

Respondent

The Complainant has no enforceable trademark rights in Kuwait, the Respondentís place of origin. The existence of a foreign trademark does not put a domain registrant on notice where the registrant resides in a country other than where the trademark is registered as other WIPO cases show e.g. VZ VermögensZentrum AG v. Anything.com, WIPO Case No. D2000-0527 (Cayman Islands respondent would not have knowledge of Swiss and German trademarks); Koninklijke KPN v. Telepath, Inc., WIPO Case No. D2001-0217, (U.S. registrant could not "reasonably have been expected to know about the complainant or its Benelux trademark."); Deutsche Lufthansa SA v. Greenwald, WIPO Case No. D2001-1456, (German trademark not "so well-known in the United States."); Etam, plc v. Alberta Hot Rods, WIPO Case No. D2000-0016 (German trademark and U.S. respondent).

The term SYR is most widely known as an acronym used by Syracuse University staff and students. Most of the Google hits for SYR pertain to the University and not the Complainant. The 3-letter combination SYR has substantial third party use. Complainant does not, and cannot, have exclusive rights to it. The common 3-letter term "SYR" is subject to substantial third party use unaffiliated with Complainant. A search on the Internet search engine Google.com for the 3-letter combination SYR, yielded 3,070,000 web pages of which only 14 were affiliated to the Complainant.

The Complaint shows no evidence that the Respondent lacks a legitimate interest in the Disputed Domain name or that it registered the Disputed Domain in bad faith. SYR is a simple 3-letter combination which Respondent uses as a link to its OXIDE Internet Search site. The use of the Disputed Domain name in connection with this bona fide offering of services establishes the Respondentís legitimate interest.

The disputed domain name was not registered, and has not been used, in bad faith. The Respondent had not heard of the Complainant when he registered this simple 3-letter combination domain name. The Complainant has not proffered evidence that the disputed domain name was registered with Complainant in mind or to sell it to Complainant, or to disrupt the Complainantís business, or to prevent the Complainant from reflecting its mark in a domain name, or to confuse consumers.

Mr. Thunayan Khalik Al-Ghanim is the principal of Future Media Architects, Inc., which acquired the disputed domain name to use in connection with the Respondentís OXIDE Internet Search site. He acquired the domain name on May 16, 2003, as one of a block of domain names purchased for $65,000. His only interest in the acquisition of the disputed domain name was because it is a 3-letter combination. The Respondent had not heard of the Complainant nor its marks when it acquired the disputed domain name. Email correspondence pertaining to the sale and purchase of the disputed domain name was produced by the Respondent.

Domain names incorporating arbitrary 3-letter combinations, even those containing common dictionary words, may be registered in good faith and, per se, establish the Respondentís legitimate interest. Tenenhaus v. Telepathy Inc., NAF Case No. 94355 (complainant not entitled to exclusive use of 3-letter combination DAF); Trans Continental Records, Inc. v. Compana LLC, WIPO Case No. D2002-0105 ("use of short terms Öeven for sale, is a legitimate business."); Kis v. Anything.com Ltd., WIPO Case No. D2000-0770 (registration of 2 and 3-letter domain names found to be legitimate.) Moreover, the use of such a legitimately-acquired domain name for advertising and promotion further constitutes use in connection with a bona fide offering of goods or services, pursuant to paragraph 4(c)(i). Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031; Vernons Pools Limited v. Vertical Axis, Inc., WIPO Case No. D2003-0041.

There is no requirement under the UDRP that the meaning of a disputed domain name should have any correlation to the substance of the website it promotes. In Williams, Babbitt & Weisman, Inc. v. Ultimate Search, NAF Case No. 98813, the respondent pointed numerous generic domain names to a website offering general advertising links. The panel found that this arbitrary use of domain names established the Respondentís legitimate interest. The panel noted that "[n]either the current UDRP nor current ICANN registrar contracts preclude this type of domain name use."

The previous ownerís (PO) failure to complete a contract for the sale of the disputed domain name to the Complainant is irrelevant other than to point out that Complainant at the time was willing to buy the domain name from PO, - as opposed to making a legal claim to force him to relinquish it. It is evidence that the Complainant recognized POís rights to the domain and its lack of rights. See PROM Software, Inc., v. Reflex Publishing, Inc., WIPO Case No. D2001-1154 ("Complainant actually has established the apparent legitimacy of Respondentís interest." Ö "Complainantís current position Ė that it is entitled to a transfer of the domain name from Respondent Ė is belied by complainantís initial inquiry to Respondent as to whether the domain name might be available for sale.")

The Complainantís statement that PO had been found guilty of passive holding on a different domain name may have had some relevance to an UDRP complaint against the PO, but is absolutely irrelevant to the good faith of the Respondent.

The Respondent bought a block of domain names from the PO. He had no particular foreknowledge about the disputed domain name and therefore cannot be considered to have bought the domain in bad faith. The Respondent asked PO if any of the names being bought were disputed under UDRP. The PO stated that none of the domain names were in dispute.

Under the Policy, where a trademark is a common term, as is the case here with a simple 3-letter combination, bad faith can only be proven if there is evidence that Respondent registered the domain name "specifically to sell to the Complainant," or that the "value of [the] domain derived exclusively from the fame of [the] trademark." NAF Case No. 97682, Ultrafem, Inc. v. Warren R. Royal, Ultrafem, Inc., v. Royal, (emphasis added). There is no evidence to support such intent on the part of Respondent or fame of Complainantís mark. The substantial third party use of the word "SYR" Ė on 3,070,000 web pages Ė establishes that any value in the Disputed Domain name derives not from any alleged fame of Complainantís mark but, rather, from the fact that it is a common 3-letter combination.

The Complainant alleges that the Respondent has registered the disputed domain name for the purpose of selling it to the owner of the trademark. This is untrue, the Respondent has not sold any domains to anyone.

The Respondentís averments of fact are supported by a declaration signed by him plus exhibits.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to:

"decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, these rules and any rules and principles of law that it deems applicable."

The burden for the Complainant, under paragraph 4(a) of the Policy, is to show:

- that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- that the Respondent has no legitimate rights or interests in respect of the domain name; and

- that the domain name has been registered and is being used in bad faith.

Identical or Confusingly Similar

The disputed domain name is identical to the Complainantís registered trademarks.

Legitimate Rights or Interest

A 3-letter combination is frequently prized by domain name holders Ė particularly where, as here, the 3 letters have no particular meaning. However, as was noted by the Panel in PWC Business Trust v. Ultimate Search (WIPO Case No. D2002-0087), the UDRP was not drafted and implemented with a view to according to 2 and 3 letter domain names an inherent commercial value due to their rarity. Precedents cited in this regard by the Respondent are to be read with this principle in mind.

However, the Panel finds it unnecessary to explore the respective contentions under this heading because it has formed a clear view that the Complaint must fail on the bad faith ground.

Bad Faith

The Panel notes the line of authority from WIPO decisions cited above in the summary of the Complainantís arguments, that it cannot be assumed that registration of a trademark in Europe and the United States is notice of the trademark to a resident of Kuwait. This authority must be viewed with some caution because it would be easy for a cybersquatter to register in a jurisdiction such as Kuwait and then claim to be unaware of European and United States registrations just because of the remoteness of the place of residence supplied to a registrar. The Respondentís websites indicate that its main business is not in Kuwait.

The Respondent states in writing that the disputed domain name was one of many purchased in bulk and that its attraction was the 3-letter combination. He asserts that he knew nothing about the Complainant or its mark at the time of the purchase.

The Panel concludes that the Respondentís declaration that he knew nothing of the Complainant and its mark at the time he purchased the disputed domain name from the previous owner negates any inferences to the contrary arising out of the Complainantís case.

The Complainant has therefore not satisfied the onus of proof on this aspect of the case. It did not proffer any evidence to suggest that its mark was well-known in countries other than those where it had registered trademarks. Looking at the types of product covered by the trademarks, the inference, in the absence of contrary evidence, is that the Complainantís mark would be well-known only to engineers, architects and trades people involved in the installation and repair of heating and water systems, even in those countries where the mark is registered.

Outside of this community of water and heating specialist, the acronym SYR as a number of different meanings, as reflected in its widespread use on the web to indicate several entities and activities not affiliated to the Complainant. Both the average Internet user (and, in the absence of contrary evidence, the Respondent) would not have the Complainantís trademark primarily in mind when confronted with the 3-letter word SYR.

Accordingly, the Panel considers that bad faith registration has not been proved and that therefore the Complaint must fail.

 

8. Decision

For the foregoing reasons, the Complainant is denied.

 


 

Hon. Sir Ian Barker QC
Presiding Panelist

Massimo Introvigne
Panelist

David E. Sorkin
Panelist

Dated: December 3, 2003