WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Olymp Bezner GmbH & Co. KG v. Olympus Access Service
Case No. D2003-0958
1. The Parties
The Complainant is Olymp Bezner GmbH & Co. KG, Bietigheim-Bissingen, Germany, represented by Kanzlei Schiefer & Schmid, Germany.
The Respondent is Olympus Access Service, Miami, Florida, United States of America, represented by Wilmer, Cutler & Pickering, United States of America.
2. The Domain Name and Registrar
The disputed domain name <olymp.com> is registered with Network Solutions, LLC.
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 4, 2003. On December 4, 2003, the Center transmitted by email to Network Solutions, LLC, a request for registrar verification in connection with the domain name at issue. On December 8, 2003, Network Solutions, LLC, 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").
3.2 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced December 12, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response January 8, 2004. The Response was filed with the Center January 8, 2004.
3.3 The Center appointed Matthew S. Harris, Stefan Abel and Dan Hunter as panelists in this matter on February 4, 2004. 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.
3.4 On February 9, 2004, the Complainant sought to submit a supplemental filing to the Center.
4. Factual Background
4.1 The Complainant is a limited partnership registered in Germany which has continuously used the component "Olymp" as part of its name since December 8, 1952.
4.2 The Complainant is a manufacturer, distributor and seller of clothing and accessories in approximately 40 countries in Europe, Asia and Africa.
4.3 The Complainant has 18 separate registrations of the trademark OLYMP (the "Registered Trademarks") in the following countries: Member States of the European Union, Australia, Canada, China, Czech Republic, Egypt, Hong Kong, SAR of China, Hungary, Indonesia, Liechtenstein, Monaco, Morocco, New Zealand, Poland, Russian Federation, San Marino, Slovakia, Switzerland, Tunisia, Turkey and Viet Nam, of which at least some are word marks.
4.4 The Respondent was formerly the subsidiary of and is now part of Olympus Managed Health Care, Inc., a health care provider organisation incorporated in the United States. The Respondent operates its business in the United States, South America and the Caribbean.
4.5 The Respondent registered the domain name <olymp.com> (the "Domain Name") on July 19, 1996. The Respondent has not used the Domain Name since its registration and the Domain Name does not resolve to any Internet site pertaining to the Respondent.
5. Partiesí Contentions
5.1 The Complainant contends as follows:
Identical or Confusingly Similar
5.2 The Complainant relies upon its Registered Trademarks. The Domain Name is identical to the Registered Trademarks.
No Rights or Legitimate Interests
5.3 The Complainant contends that the Respondent is not commonly known by the Domain Name and has not acquired any trademark or service mark rights in respect of OLYMP.
5.4 The Complainant further contends that the Respondent has not made use of the Domain Name since it was registered in 1996.
5.5 Accordingly, the Complainant asserts that the Respondent is not making a legitimate non-commercial or fair use of the Domain Name and therefore has no rights or legitimate interests in the Domain Name.
Registered and Used in Bad Faith
5.6 The Complainant asserts that its Registered Trademarks are used in respect of its famous worldwide brand name and that the Respondent must have had constructive notice of this at the time the Respondent registered the Domain Name.
5.7 In this regard, the Complaint relies on the decision in Barneyís, Inc. v. BNY Bulletin Board, WIPO Case No. D2000-0059, as authority for the assertion that registration in bad faith can be inferred where the trademark relates to a famous brand.
5.8 The Complainant further asserts that had the Respondent performed a trademark search at the time it registered the Domain Name, it would have been placed on notice of the Complainantís Registered Trademarks. The Complainant contends that it was the Respondentís obligation to check for prior rights to the name OLYMP before registering the Domain Name.
5.9 The Complainant contends that the non-use by the Respondent of the Domain Name for a period of seven years is, in itself, sufficient evidence of registration and use in bad faith. In this regard, the Complainant relies upon the decisions in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384, Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown d/b/a Big Daddyís Antiques, WIPO Case No. D2000-0004, Nike, Inc. v. Crystal International, WIPO Case No. D2001-0102, and SAP AG v. Andrew Sparrow, WIPO Case No. D2001-0733.
5.10 Accordingly, the Complainant contends that the Respondent registered the Domain Name in order to prevent the Complainant from reflecting its Registered Trademarks in corresponding domain names.
Domain Name Identical but Not Likely to Confuse
5.11 The Respondent accepts that the Domain Name is identical to the Registered Trademarks. However, the Respondent contends that, as the Respondent and the Complainant are engaged in different business activities, there is no risk of confusion between the Domain Name and the Registered Trademarks. The Respondent relies on Grand Bay Management Company v. Allegory Investments, WIPO Case No. D2001-0874, as authority for this assertion.
5.12 The Respondent also contends that the lack of geographical overlap between its business and the Complainantís business further reduces any likelihood of confusion between the Domain Name and the Registered Trademarks. In this regard, the Respondent cites Computer Connection v. Gamble Parts Dart, Inc., WIPO Case No. D2001-0783, as authority.
5.13 The Respondent contends that it has a legitimate interest in the Domain Name as an abbreviation of its corporate name. In this regard, the Respondent relies upon previous panel decisions which have recognised a respondentís legitimate interest in a domain name which is a contraction of the respondentís full name, in the form of the respondentís initials, i.e. G.A. Modefine S.A. v A.R. Mani, WIPO Case No. D2001-0537, Deutsche Welle v. DiamondWare Limited, WIPO Case No. D2000-1202, and International Youth Hostel Federation v. Ivor Yevgeni Haya-Filkov, WIPO Case No. D2002-0720.
Registered/Used in Bad Faith
5.14 The Respondent contends that the Complainant has not provided any evidence that the brand name which is protected by the Registered Trademarks is famous worldwide. In particular, the Complainant has not shown that it sells its products incorporating the OLYMP marks in the United States, where the Respondent is located.
5.15 The Respondent further contends that the concept of "constructive notice" of a trademark by virtue of its registration does not fall within the scope of the Policy (relying on Alberto-Culver Company v. Pritpal Singh Channa, WIPO Case No. D2002-0757). The Respondent further rejects the Complainantís assertion that the Respondent was under an obligation to check for prior rights before registering the Domain Name (relying on Aegon N.V. v. Jozsef Pal, WIPO Case No. DBIZ2002-00226).
5.16 The Respondent also contends that inactive use of a domain name does not, in itself, support a finding of bad faith in the absence of additional facts which suggest that bad faith. The Respondent cites John D. Polstra & Co, Inc. v. CvsUp Ltd and John Wesley, WIPO Case No. D2001-0586, and EMAP USA, Inc. v. Dick Jurgens d/b/a Mobile Dickís Cycle Clinic, WIPO Case No. D2001-0311, in support of this assertion.
5.17 The Respondent concludes that, notwithstanding the fact that the Respondent has not used the Domain Name since it was registered, the Complainant has failed to present any evidence of bad faith on the part of the Respondent.
6. Procedural Arguments
6.1 It is convenient before setting out the various submissions of the parties, to deal with the question of whether the Panel should take into account the Complainantís supplemental filing submitted on February 9, 2004.
6.2 It is now well established from previous panel decisions that a supplemental filing will rarely be considered. In DK Bellevue, Inc. d/b/a Digital Kitchen v. Sam Landers, WIPO Case No. D2003-0780, the panel stated as follows:
"As is by now well-established, the Rules do not provide any right of reply. Parfums Christian Dior S.A. v. Jadore, WIPO Case No.D2000-0938. Although supplemental submissions may be accepted to address new legal developments, see, e.g., Pet Warehouse v. Pets.Com, Inc., WIPO Case No. D2000-0105 (April 13, 2000), or to rebut unexpected factual assertions, see, e.g., Pacific Fence & Wire Co. v. Pacific Fence and Jim Paradise, WIPO Case No. D2001-0237(June 11, 2001), they should be allowed sparingly."
6.3 The Complainant has provided no reasoning to explain why the supplemental filing should be considered in this case and, from a cursory examination of the supplemental filing, the Panel finds that this does not fall into any of the categories set out in Digital Kitchen.
6.4 Further, the supplemental filing was submitted approximately one month after the Response was filed. Paragraph 10(c) of the Policy states that "the Panel shall ensure that the administrative proceeding takes place with due expedition." Therefore, even if a supplemental submission is justified, there must be a time limit on the period in which it may be submitted.
6.5 How long should this period be? The Panel thinks that one month is far too long in cases where no explanation is given as to why it took the Complainant that long to submit its supplemental filing. This is particularly so given that under the Rules a Respondent has only 20 days from the commencement of proceedings in which to file its Response. Accordingly, the Panel is not prepared to accept the Complainantís late submission and has not considered the supplemental filing when making its decision.
7. Discussion and Findings
7.1 The Panel has reviewed the Complaint and the documents annexed to the Complaint. The Panel has also reviewed the Response. In light of this material, the Panel sets out its findings below.
7.2 The Complainant must prove each of the following elements of the Rules, which are set out in paragraph 4(a) of the Policy as follows:
(i) The domain name is identical or confusingly similar 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 the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
7.3 There are two separate elements which the Complainant must prove under paragraph 4(a)(i). Firstly, the Complainant must provide evidence that it has rights in a trademark or service mark. Secondly, the Complainant must show that the Domain Name is identical to the trade or service mark in which it has rights.
7.4 In respect of this first element, the Complainant relies upon its Registered Trademarks. Evidence of registration of these Trademarks is provided in the annexures to the Complaint. The Panel accepts that the Complainant has rights in the Registered Trademarks. Accordingly, the Complainant has made out the first element under paragraph 4(a)(i).
7.5 Turning to the second element of this sub-paragraph, the Respondent accepts that the Domain Name is identical to the Complainantís Registered Trademarks. The Panel finds that the Domain Name is identical to those of the Registered Trademarks that are word marks.
7.6 The Panel notes the Respondentís assertion that the Domain Name, although identical to the Complainantís Registered Trademarks, is not confusing because of the different core businesses and geographical focus of the Complainant and the Respondent.
7.7 This raises the question as to what extent, when considering the issue of Ďconfusing similarity,í a panel is entitled to analyse whether a complainantís rights in respect of a trademark are limited in any way, i.e. in terms of the uses to which that mark is put, or the geographical scope of the mark. In other words, does the Policy permit a panel to adopt a pure trademark analysis approach or should a panel limit itself to a straightforward comparison of the visual characteristics of the domain name against those of the trademark. This is an issue upon which the members of the Panel have expressed differing views.
7.8 However, given the Panelís finding that the Domain Name is identical to trademarks in which the Complainant has rights, it is not necessary to consider this question further in this case. Paragraph 4(a)(i) of the Policy simply requires the Complainant to prove that the Domain Name is identical or confusingly similar to a trademark in which it has rights. Once the Complainant has proved that the Domain Name is identical to its trademark, the question of whether it is confusingly similar falls away.
7.9 Accordingly, the Panel concludes that the Complainant has proved both of the elements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
7.10 The Complainant asserts that the Respondent has no rights or legitimate interests in the Domain Name because the Respondent has not used the Domain Name since it was registered in 1996. The Complainant has annexed a Ďdelivery failureí email notification to the Complaint as evidence of the fact that the Respondent is not using the Domain Name in connection with an Internet site or email address.
7.11 The Panel finds that this assertion is misconceived. The mere fact of inactivity does not preclude a respondent from having rights or legitimate interests in a domain name.
7.12 The Complainantís remaining assertions under this heading are equally without merit. They amount to nothing more than negatively framed restatements of the examples of rights/legitimate interests set out under paragraph 4(c) of the Policy. No evidence is presented in respect of these assertions.
7.13 The Respondentís full name is Olympus Access Services. The Panel accepts the Respondentís contention that it has a legitimate interest in the name "Olymp" as an abbreviation of its name. The Panel finds that this is no different in principle to the decisions in G.A. Modefine S.A. v. A.R. Mani, WIPO Case No. D2001-0537, and Deutsche Welle v. DiamondWare Limited, WIPO Case No. D2000-1202, which accepted that a respondent can have a legitimate interest in a domain name which is an abbreviation of the respondentís name in the form of his initials.
7.14 Accordingly, the Panel concludes that the Complainant has failed to prove the relevant elements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
7.15 The Complainant asserts that the fact of inactivity conclusively proves bad faith on the part of the Respondent, both in terms of registration and use of the Domain Name. The Complainant cites a number of cases in support of this assertion, including the Telstra and Nike cases referred to above.
7.16 The Respondent, conversely, contends that the Complainantís analysis of these cases is incorrect, and that the mere fact of inactivity does not, in itself, prove bad faith. According to the Respondent, the decisions in Telstra and Nike make it clear that whilst inactivity may suggest bad faith, further evidence must be adduced to support this suggestion before a finding of bad faith can be made.
7.17 The Panel agrees with the Respondentís analysis of these cases. The panel in Telstra explained that the fact of inactivity as an indication of bad faith must be considered together with all of the facts of the particular case. It is clear from that decision and subsequent decisions that inactivity can be evidence of bad faith registration and use, but that inactivity alone will rarely, if ever, be sufficient.
7.18 In this case, the Complainant has failed to provide evidence of any additional circumstances which might suggest bad faith. The Panel finds that the mere fact that the Domain Name has not been used by the Respondent is not sufficient in itself to prove bad faith.
7.19 The Complainant further asserts that it has a famous worldwide brand name and that this fame is sufficient to infer that the Respondent must have had constructive notice of the Complainantís rights in the Registered Trademarks in respect of the brand.
7.20 The Complainant alternatively asserts that the Respondent was under an obligation to conduct a search prior to registering the Domain Name, and that, had the Respondent conducted such a search, it would have been placed on notice of the Complainantís rights in the Registered Trademarks.
7.21 The concept of Ďconstructive noticeí has been raised in argument by complainants in previous cases under the Policy. It raises a number of controversial issues, namely: (i) is there a concept of constructive notice under the Policy and (ii) if the concept exists, in what circumstances does it apply?
7.22 Some panels in some cases have indicated that the concept of constructive notice may be taken into account when considering the issue of bad faith, but only in very limited circumstances. The Panel here refers to the decisions in Red Nacional de los Ferrocarriles Espanoles v Ox90, WIPO Case No. D2001-0981 (in respect of <renfe.com>), and Sibyl Avery Jackson v. Jan Teluch, WIPO Case No. D2002-1180 (in respect of <sibylaveryjackson.com>). What Renfe shows is that the application of the principle of constructive notice, even in the limited circumstances of that case, is controversial. Indeed, the presiding panelist in that case gave a dissenting opinion in which he rejected the concept of constructive notice in UDRP proceedings, stating:
"If a concept of constructive knowledge (i.e. Ďhe must have guessed and had he made the simplest of searches he would have known; he ought to have made the search, therefore he is to be taken as having knowní) is introduced into the UDRP, there is no knowing where this will all lead."
7.23 The question of whether constructive notice should be recognised at all in UDRP proceedings and the exact scope of that doctrine is one which may require further consideration in future cases. However, what is clear to the Panel is that the evidence presented by the Complainant in no way falls within the limited circumstances which characterise the decisions in Renfe and Sibyl Avery Jackson. Accordingly, the concept of constructive notice is not applicable to this case.
7.24 The Complainantís assertion that the Respondent was under an obligation to conduct a search prior to registering the Domain Name is simply a restatement of the constructive notice argument in a different form and is similarly rejected by the Panel.
7.25 For the reasons set out above, the Panel concludes that the Complainant has presented no evidence to suggest that the Respondent has registered and used the Domain Name in bad faith.
For all the foregoing reasons, the Complaint is denied.
Matthew S. Harris
Dated: February 17, 2003