WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
International Communications Industries Association, Inc. v. Avolution
Case No. D2004-0139
1. The Parties
The Complainant is International Communications Industries Association, Inc., of Fairfax, Virginia, United States of America ("the Complainant"), represented by Deborah Price Rambo, United States of America.
The Respondent is Avolution, of Mississauga, Ontario, Canada ("the Respondent").
2. The Domain Name and Registrar
The disputed domain name <avolution.org> ("the Domain Name") is registered with All West Communications Inc. dba AWRegistry ("the Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 20, 2004. On February 23, 2004, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 26, 2004, the Registrar 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 February 27, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was March 18, 2004. The Response was filed with the Center on March 18, 2004.
The Center appointed Tony Willoughby as the Sole Panelist in this matter on March 29, 2004. The Panel finds that it was properly constituted. 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 a Virginia corporation with its principal place of business in Fairfax, Virginia, United States of America. The Complainant operates a website at "www.avolution.info." One of the Frequently Asked Questions featured on the site is "what does AVolution mean?". The answer provided reads as follows:
"AVolution ™ is the name of a $1.2 million awareness campaign to promote the talents and services of the audio visual (AV) communications industry. The AVolution name combines ĎAVí and Ďevolutioní to define an industry that has evolved dramatically. As AV technology has evolved, so have the complexities of designing and integrating AV systems used in the boardroom or the classroom, at a staged event or most public venues. The tag line provides further definition, Ďwhen sight and sound power ideas and information, thatís AVolution.í"
The Respondent, a Canadian resident, registered the Domain Name on or about July 22, 1999.
On January 14, 2003, the Complainant conducted a search of the Registrarís Whois database in relation to the Domain Name.
On January 16, 2003, the Complainantís representative sent an email to the Respondent at the email address on the Whois database in the following terms:
"Dear Ms. Jurgowiak:
I am a patent/trademark attorney and have been asked by one of my clients to express to the owner of the <avolution.org> domain name my clientís interest in purchasing the subject URL.
I found your name and email address in the domain name records as the administrative contact for <avolution.org>. This is intended to be an amicable inquiry. My client has no claim against or conflict with your organization.
It would be greatly appreciated if you would reply to this inquiry at your early convenience.
The Respondent did not respond to that email. On January 22, 2003, the Complainant filed trademark applications in the United States for registration of the service mark AVOLUTION in word and device form. In June 2003, AVOLUTION was launched by the Complainant at InfoComm in Orlando.
5. Partiesí Contentions
The Complainant contends that the Domain Name is substantially identical to the Complainantís service mark AVOLUTION which is the subject of pending applications for service mark registrations in the US Patent and Trademark Office and the European Community Trademark Office. The US applications were filed on January 22, 2003, and are pending. The mark applied for is for the following services, namely "promoting the interests of the audio-visual (AV) industry."
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. This aspect of the Complaint is brief and reads as follows:
"(i) The Respondent should be considered as having no rights or legitimate interests in respect of <avolution.org>.
(ii) On information and belief, before any notice was given to the Respondent of the dispute, there is no evidence of the Respondentís 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.
(iii) On information and belief, for the four years that Respondentís domain name has been of record, it has not been used to identify an active website.
(iv) On information and belief, Respondent has not been commonly known by the domain name.
(v) On information and belief, Respondent conducts no business nor does it have operations of any kind under the name ĎAVOLUTION.í
(vi) On information and belief, the Respondent has made no legitimate non-commercial or fair use of the domain name.
(vii) When a message is sent to the e-mail address at Respondentís "under construction" website, the sender is informed that the message cannot be delivered.
(viii) Complainant has repeatedly attempted to contact Respondent at the postal address, telephone number, facsimile number, and e-mail address set forth in Respondentís registration. Nothing has been received in reply except for Ďundeliverableí messages, such as described above."
Finally, the Complainant contends that the Domain Name was registered and is being used in bad faith. This aspect of the Complaint is briefer still and reads as follows:
"(i) On information and belief, some of the critical information in Respondentís domain name registration is incorrect.
(ii) Respondentís domain name registration was recently renewed, at which time the Respondent was obligated to correct this information.
(iii) By failing to do so, Respondent knowingly violated its Registrarís Supplemental Rule requiring registrants to keep such information accurate."
The Respondent draws attention to other uses of Ďavolutioní on the Internet and points in particular to websites at "www.avolution.com", "www.avolution.net" and "www.avolution.biz." The Respondent contends that the fact that the Domain Name is identical or confusingly similar to AVOLUTION "cannot be grounds for the Complaint."
The Respondent points out that currently the Domain Name connects to a site hosted by Netfirms. The Respondent states that it will never be used in the service area in which the Complainant is engaged.
As to the assertion that the Respondent has no rights or legitimate interests in respect of the Domain Name, the Respondent has this to say:
"- respondentís rights and legitimate interests in respect of the <avolution.org> domain name originate from the Master thesis work done prior to, and successfully defended in 1996, at the Technical University of Wroclaw, Wroclaw, Poland (http://www.pwr.wroc.pl/eng/main2.html). Thesis title: A cost-effective INTRANET implementation as a company-wide information management system - the case of the Toronto Transit Commission;
- the research done at the time and continuing to this day centers around the distinction between evolutionary and revolutionary processes, and a recognition that accelerated/artifitial evolution Ďavolutioní induced through intelligence deserves further research, as opposed to the natural/Darwinian evolution;
- since 1996 at least the term Ďavolutioní has been in public domain and used/discussed in certain academic settings at the University of Wroclaw, Wroclaw, Poland and the Athabasca University, Alberta, Canada;
- the Complainantís representative soliciting uses in January 16, 2004, to sell the <avolution.org> domain name clearly stated in their initial email the following: ĎMy client has no claim against or conflict with your organizationí; (meaning: <avolution.org>) (see schedule/appendix 1)
- the respondent demonstrated legitimate interests in the <avolution.org> domain name by not willing to sell it for a potential financial gain and by ignoring completely the initial and subsequent solicitations from the Complainantís representatives until it was escalated into this complaint;
- scientific ideas, such as that for which <avolution.org> domain was registered and reserved for future use to the benefit of scientific community and general public, need time to be developed and then presented, especially by people leading professional and not academic lives;
- the respondentís rights and legitimate interest to the <avolution.org> domain name is further demonstrated by the fact that registration fees were and will continue to be paid."
The Respondent observes that the bad faith allegation made by the Complainant is based solely on the fact that the Respondentís contact details on the Registrarís Whois database are not up to date. The Respondent points out that the information was correct at the time that the Complainant first checked the Whois database on January 14, 2003, and that it was also correct as at the date of the latest renewal of the Domain Name registration in July 2003. Since then, the Respondent has moved from one address in Mississauga, Ontario to another address in Mississauga, Ontario. The Respondent asserts that the phone and email contact/particulars remain the same and that the information on the Whois database is sufficiently correct for interested parties to make contact with the Respondent. In particular, nobody appears to have had any difficulty in corresponding with the Respondent in relation to this Complaint.
The Respondent contends that if anybody is acting in bad faith it is the Complainant, which had already acknowledged in its opening email to the Respondent in January 2003, that it "has no claim against or conflict with [the Respondent]."
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that
(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 interest in respect of the Domain Name; and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith.
If the Complaint fails, the Panel has to have regard to paragraph 15(e) of the Rules and in particular the following sentence namely:
"If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at reverse domain name hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its Decision that the Complaint was brought in bad faith and constitutes and abuse of the Administrative Proceeding."
Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as meaning "using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name."
A. Identical or Confusingly Similar
The Domain Name, absent the generic domain suffix, is very similar to the Complainantís claimed service mark AVOLUTION. Indeed, for present purposes, the Panel is prepared to accept that it is identical.
On this topic the real issue is as to whether or not the Complainant has rights in that service mark. The Complainant has filed trademark applications, but applications of themselves, give no rights at all. In the absence of registered rights, it is incumbent upon the Complainant to establish unregistered rights. In common law countries, such as the United States, this is commonly done by way of producing evidence of a trading goodwill. The Complainant has produced no evidence of that kind beyond extracts from its own website.
The Panel contemplated dismissing the Complaint under this head. However, having visited the Complainantís website, it is plain that the mark is in use and, in the view of the Panel, the test under this head should not be a difficult one for a trademark/service mark user to satisfy.
The Panel finds that the Domain Name is substantially identical to a service mark in respect of which the Complainant has rights.
B. Rights or Legitimate Interests
The Panel has little or no information on the Respondent. Is it a business? Is it an alias? The Panel does not know. Since the date of registration the Respondent has made no active use of the Domain Name and while the site to which the Domain Name is connected is said to be "under construction" the Panel has been provided with little or no information as to what the site will contain.
The Respondent refers to a thesis completed in 1996, at the Technical University of Wroclaw, Poland. A link is provided to the universityís website, but the Panel was unable to locate the thesis in question.
Whether or not the Respondent has rights or legitimate interests in respect of the Domain Name, the Panel is not in a position to assess. Given that the obligation is upon the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the Domain Name, it ought to follow that the Complaint fails for lack of the relevant proof. However, it is not necessary for the Panel to decide this dispute on such a narrow point. The key issue is bad faith.
C. Registered and Used in Bad Faith
The Policy is designed to deal with cybersquatting. Cybersquatting is defined in the first WIPO Internet domain name process as the practice of registering for domain names the trademarks of other persons or enterprises. The underlying purpose of the cybersquatter is to damage the Complainant in some way (whether it be by way of extortion of money or interfering with the Complainantís business) or in some other way to take unfair advantage of the Complainantís trademark or service mark. Commonly, Complainants assert bad faith along the lines of one or more of the examples set out in paragraph 4(b) of the Policy, all of which contemplate at time of registration of the domain name in issue an intention by the registrant to adopt for the domain name in issue the Complainantís trademark or service mark.
In this case the Complainant has made no such allegation. Indeed, as the Respondent points out, when the Complainantís representative first contacted the Respondent in January 2003, the Complainantís representative expressly stated "this is intended to be an amicable inquiry. My client has no claim against or conflict with your organization." There is no suggestion from the Complainant that when the Respondent registered the Domain Name it had any intention of causing any damage to the Complainant or taking advantage of the Complainant or its trademarks in any way at all. Indeed, at time of registration of the Domain Name, the Complainant had not even contemplated the use of (let alone used) its service mark. In other words, there is no suggestion that the Respondent is a cybersquatter.
Instead, the Complainant complains that the Respondentís bad faith lies in a failure to keep its contact information up to date. However, the Complainant does not specify precisely which information is incorrect. All that the Complaint has to say on the topic is "on information and belief, some of the critical information in Respondentís domain name registration is incorrect." In response, the Respondent has pointed out that it has moved address but that that move took place after the last renewal in July 2003.
If failing to keep contact information fully up to date were enough to give rise to bad faith registration and use for the purpose of paragraph 4(a)(iii) of the Policy, one would imagine that there must be literally hundreds of thousands of domain name registrations vulnerable to attack.
In this case, whilst some of the information is now out of date, some of it has remained constant, namely the telephone number and the principal email address. The Complainant complains of receiving "undeliverable" messages in response to repeated attempts to contact the Respondent, but the only reply of this type identified by the Complainant was one received in response to an email sent to the Respondentís website email address, not the email address on the Whois database. At no stage has anybody, whether it be the Complainant back in January 2003, or the Center, in the conduct of this administrative proceeding, had any difficulty in reaching the Respondent.
Even if, which the Panel doubts, the lodging of false Whois information can of itself constitute bad faith registration and use for the purposes of paragraph 4(a)(iii) of the Policy, the lodging of the false information must surely have to have been willful. In this case, at worst, the Respondent has simply failed to notify the Registrar of a change of address. The Panel has no hesitation whatever in finding that that cannot of itself constitute bad faith registration and use for the purposes of paragraph 4(a)(iii) of the Policy.
7. Reverse Domain Name Hijacking
While the Respondent has not used the term "reverse domain name hijacking" in the Response, the Respondent has asserted bad faith on the part of the Complainant in filing this Complaint.
When the Complainant, which has the benefit of legal representation, filed this Complaint, it knew that the Domain Name had been registered long before it had come up with its service mark. It knew that it had no basis for complaint against the Respondent and said as much when it tried to purchase the Domain Name from the Respondent in January 2003.
This, to the Complainantís knowledge, was never a case of cybersquatting. The Panel declares that the Complaint was brought in bad faith and constitutes an abuse of the Administrative Proceeding.
The Complaint is dismissed.
Dated: March 31, 2004