WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Simon Docker d/b/a Sat-Europa Group v. Jan Saggiori
Case No. D2004-0301
1. The Parties
The Complainant is Simon Docker, doing business as Sat-Europa Group in Southampton, United Kingdom.
The Respondent is Jan Saggiori, an individual located in Chene-Bougeries, Switzerland.
2. The Domain Names and Registrars
The domain names at issue are <sat-europa.com> and < sateuropa.com>, which are registered with Network Solutions, LLC and Register.com respectively.
3. Procedural History
The Complaint was received by WIPO with the WIPO Arbitration and Mediation Center (the “Center”) on April 26, 2004. On April 26, 2004, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name <sat-europa.com>. On May 13, 2004, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name < sateuropa.com>.On April 27, 2004, Network Solutions, LLC and on May 13, 2004, Register.com transmitted by email to the Center their verification responses confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center requested the Complainant to cure deficiencies in the Complaint on April 28, 2004 and on May 12, 2004, respectively. The original Complaint had wrongly identified the Registrar and did not indicate that the Complaint had been forwarded to the Registrar. On May 14, 2004, the Complainant filed an amended Complaint. The Center has 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 June 10, 2004. In accordance with the Rules, paragraph 5(a), the due date for the Response was June 30, 2004. The Respondent filed a Response on June 30, 2004.
The Center appointed Mark Partridge as the sole panelist in this matter on July 14, 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
Complainant markets direct satellite television products in the United Kingdom (hereinafter “UK”). The Complainant has used SAT EUROPA as its trading name and identity since 1998.
Complainant acts as the UK distributor for the manufacturer TechniSat. Complainant’s main website “www.sateuropa.co.uk”, reaches approximately 30,000 users per month, who are mainly referred by TechniSat. Complainant registered the domain name <sateuropa.co.uk> on August 29, 2000.
The nature and manner of Complainant’s use of the mark SAT EUROPA is demonstrated in the record by several advertisements, including:
(1) An undated print ad promoting the sale of TechniSat products in the UK. This ad includes the line “dealers visit www.sateuropa.co.uk/trade/ or call 0845 130 3111”.
(2) A print ad for Spice Platinum, an adult entertainment channel. This ad states “SAT Europa Official UK Spice Platinum distributor”. This appears to have been published in “What Satellite & Digital TV” dated April 2004.
(4) A print ad for the sale of TechniSat and Telestar satellite television products in the UK. The ad invites readers: “For more info or to order online www.sateuropa.co.uk.”. The ad also has displays the mark SAT EUROPA. This states that it is valid as of April 22, 2004.
(5) A print ad for Spice Platinum that displays the domain name <sateuropa.co.uk> and the mark SAT EUROPA. This states that it was correct as of April 14, 2004.
(6) A business card displaying the mark SAT EUROPA.
Respondent operates a business selling satellite related products in the European market. Respondent’s principal website is found at “www.smartsatellite.net”. The home page prominently displays the mark SMART SATELLITE with content in English, French or Finnish. Smart Satellite is located in Finland.
The Respondent had registered the disputed domain names, <sat-europa.com> and <sateuropa.com> on June 21, 2000, prior to Complainant’s registration of <sateuropa.co.uk>. These domain names redirect Internet users to the Smart Satellite website under the “www.smartsatellite.com”.
5. Parties’ Contentions
Complainant contends that it owns trademark rights in SAT EUROPA and the domain names are confusingly similar to that mark. Complainant contends that Respondent’s conduct is not legitimate and constitutes bad faith as a deliberate attempt to attract Internet users looking for Complainant’s similar services.
Respondent denies Complainant’s claims and asserts that Complainant lacks enforceable rights in SAT EUROPA, that the domain names and trademark are not confusingly similar, that the Respondent makes bona fide use of the domain names and that Respondent registered and used the domain names in good faith.
Respondent also contends that the Complaint was brought in bad faith, in an attempt at Reverse Domain Name Hijacking and to harass the domain-name holder.
6. Discussion and Findings
Paragraph 4(a) of the Policy establishes three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent’s domain name has been registered and is being used in bad faith.
The Complainant bears the burden of proof on each of these issues.
The Policy adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, (with implementing documents approved on October 24, 1999), was created to resolve disputes concerning allegations of abusive domain name registration. This Policy is intended to address clear cases of cybersquatting. Legitimate disputes over likelihood of confusion are beyond the scope of the current Policy. See Avnet, Inc. v. Aviation Network, Inc., WIPO Case No. D2000-0046 (March 24, 2000). Moreover, other legal issues are also beyond the scope of the Policy.
Here, Complainant suggests that it may have a copyright infringement claim against Respondent. The Panel, however, will confine itself to making determinations necessary to resolve this administrative proceeding and not address issues outside the scope of the proceeding. See Lockheed Martin Corporation v. Ning Ye, WIPO Case No. D2000-1733 (May 17, 2001).
A. Identical or Confusingly Similar
There is no dispute over the fact that the domain names are identical in material part to the alleged mark of the Complainant. Instead, the issue is whether Complainant has established trademark rights or service mark rights in the mark at issue.
Trademark rights may be established by presenting evidence of a valid trademark registration. That is not the case here, as Complainant has not alleged ownership of any trademark registrations and the Respondent has submitted evidence to the contrary that there is no UK trademark registration for SAT EUROPA.
However, it is not necessary that a Complainant hold a valid registration to establish rights in a mark. Under UK law and under the cases decided under the Policy, the Complainant may demonstrate common law trademark rights if it can show the reputation and goodwill in the mark as used in its products or services and the association of the mark in the mind of the purchasing public with the Complainant’s particular business. See Polaron Engineering Limited v. Yeremia Prihandono, WIPO Case No. D2004-0106 (May 8, 2004).
Specifically, in the UK, a “common law trademark” is defined as “an unregistered mark used by its proprietor in the course of trade, the unauthorized use (or imitation) of which by another trader will lead to passing off”. See Margaret Drabble v. Old Barn Studios Limited, WIPO Case No. D2001-0209 (March 26, 2001) (finding common law rights in the personal name of the author). If the common law trademark is descriptive, it may be protected if it has acquired secondary meaning indicating the Complainant as the source of goods or services so identified. See Margaret Drabble v. Old Barn Studios Limited, WIPO Case No. D2001-0209 (March 26, 2001).
Here, Complainant has presented minimal evidence of the use of SAT EUROPA as a common law trademark. Although it claims that SAT EUROPA has been its “trading name and identity” since 1998, there is no evidence of the manner or extent of such use. The adoption of a trade name does not necessarily constitute trademark use or result in protectable trademark rights. The earliest record presented of Complainant’s use is the registration of the domain name <sateuropa.co.uk> on August 29, 2000. The advertising materials submitted are more recent, showing service mark use in 2004.
It is fundamental that a Complainant cannot prevail on a cybersquatting or trademark infringement case unless it can demonstrate that its rights in the alleged mark are prior to the Respondent's use of the name objected to. Otherwise, the Respondent would have a legal right to use the name and there could not be a finding of bad faith registration or use. Here, Complainant has failed to allege or demonstrate protectable trademark use prior to Respondent’s registration of the disputed domain names.
Even if we view the submitted evidence in the light most favorable to Complainant and assume that it in fact has prior use of the mark SAT EUROPA in the manner shown in the record, the use demonstrated appears to be limited to the UK. As noted above, the advertising materials are directed to the UK. In fact, the Complainant in its own website indicates that it is involved “in the servicing and development of products for the UK market” and has become “one of the most well-known and respected names in UK distribution and retail”. In short, the Complainant has not shown that its reputation extends to Switzerland where the Respondent is located or outside the UK, and its own materials suggest that any reputation it has is limited to the UK market. Given the finding of the Panel under the third element in this proceeding, it is not necessary to make a final determination under this element.
B. Rights or Legitimate Interests
Under Paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate a registrant’s rights to and legitimate interest in the domain name:
(1) demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to the dispute; or
(2) an indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights; or
(3) legitimate noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark.
Here, Respondent uses the name and mark Smart Satellite for offering goods and services. The disputed domain names are merely used to redirect Internet users to the Smart Satellite url and site. Such use does not create any right in the names. It is a more difficult question whether such use is legitimate. That determination, in my view, depends on whether the registration and use is made in good faith or not. Using an infringing domain name to redirect Internet users to a non-infringing site should not be deemed a legitimate use. To find otherwise would defeat the intent of the Policy by allowing bad faith registrants to avoid liability simply by redirecting users to a legitimate, competitive site.
Here, because the Respondent’s business, Smart Satellite, has its own website, located at “www.smartsatellite.net”, Respondent’s use of the disputed domain names to redirect users to its website is not necessarily legitimate bona fide use. However, as the Complainant was not able to show that the domain names were registered in bad faith, it is not necessary to make a finding as to whether the Respondent has rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on Respondent’s website or location.
Here, the Panel finds that there is no evidence to show that Complainant had any reputation under the mark SAT EUROPA outside the UK at the time Respondent registered the domain names. Rather, the evidence submitted, including Complainant’s statements on its own website, suggest that Complainant’s reputation in the mark, if any, would be limited to the UK at the time Respondent registered the disputed domain names and would not have extended to Switzerland where Respondent resides.
Moreover, even with respect to the UK, Complainant held no trademark registration, so it is not clear how a foreign registrant located in Switzerland and affiliated with a Finnish company, would even know about the use of the name SAT EUROPA by a UK distributor before the Complainant registered the alleged mark as its domain name for use on the Internet.
The fact that the parties are in the same industry increases the potential that Respondent may have known about Complainant’s name. If the names involved were highly distinctive, that conclusion might necessarily follow and be sufficient to create a compelling inference of bad faith. Here, however, Respondent has presented substantial evidence to show common use of SAT and EUROPA as descriptive terms. Even the evidence presented by Complainant shows concurrent use of SAT in the satellite television industry. Respondent’s selection of SAT EUROPA is an apt and appropriate choice for Respondent’s online satellite television product service. Further, it does not appear that Respondent directs its services to the UK where Complainant operates (although UK Internet users could, of course, find Respondent's site on the Internet).
The Panel concludes that based on the evidence in this case it is more likely than not that Respondent registered the domain names in good faith to help describe the nature of its services and to lead Internet users to its business without regard to Complainant, and did not do so for the deliberate purpose of trading on confusion with Complaint or to disrupt the business of a competitor, based on the following circumstances of the case: 1) the limited scope of Complainant’s alleged rights; 2) the lack of any UK or other registration to give notice of those claimed rights; 3) Respondent’s registration of the domain names before Complaint's registration of its domain name; and 4) the different geographic locations of the parties.
The Respondent seeks a finding of reverse domain name hijacking. Paragraph 15(e) of the Rules specifically provides that “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 an abuse of the administrative proceeding”. See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, WIPO Case No. D2001-0916 (October 12, 2001).
Although it is concerning that the Complainant misstated that it registered its domain name before the Respondent registered its domain names, this does not appear to be a deliberate attempt to deceive. Further, the Panel finds that Complainant had a colorable claim and that the Complaint did not constitute an abuse of the administrative proceeding.
Complainant has failed to show that the domain names, <sat-europa.com> and < sateuropa.com> were registered and used in bad faith. Therefore, Complainant’s request for relief is denied.
Date: July 29, 2004