WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
IPL Information Processing Limited v. Domain Admins
Case No. D2004-0782
1. The Parties
The Complainant is IPL Information Processing Limited, of Bath, United Kingdom of Great Britain and Northern Ireland, represented by Marks & Clerk Solicitors, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Domain Admins, of Warsaw, Poland.
2. The Domain Name and Registrar
The disputed domain name <adatest.com> is registered with OnlineNic, Inc. San Francisco, United States of America.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 28, 2004 via email and on October 6, 2004, as a hardcopy. On September 29, 2004, the Center transmitted by email to OnlineNic, Inc a request for registrar verification in connection with the domain name at issue. On October 8, 2004, OnlineNic, Inc. 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 Registrar informed the Center, however, that it had not received a copy of the Complaint. The Complainant provided the Registrar with a copy of the Complaint which receipt the Registrar acknowledged via email on October 8, 2004.
Furthermore, the Registrar informed the Center, that the Respondent did not submit in its Registration Agreement to the jurisdiction at the location of the principal office of the Registrar for adjudication of disputes concerning or arising from the use of the domain name at issue. In response to a notification by the Center on October 13, 2004, that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 18, 2004.
On October 19, 2004, the Center verified that the Complaint together with the amendment to 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”).
Also on October 19, 2004, the Center formally notified via email and as a hardcopy via courier the Respondent of the Complaint in accordance with the Rules, paragraphs 2(a) and 4(a), and the proceedings commenced. In accordance with the Rules, paragraph 5(a), the due date for the Response was November 8, 2004.
One of two emails sent to the two available email addresses of the Respondent’s by the Center was returned as undeliverable at the same day. It was the same with the hardcopy version of the Complaint.
On October 24, 2004, the Center received a reply to its email of October 19, 2004, in which the disputed domain name was offered for sale. On October 30, 2004, the Center forwarded this email to the Complainant’s attorney and asked him whether the proceeding shall be suspended to reach a settlement. On November 5, 2004, the Complainant’s attorney asked the Center to suspend the proceedings for a 30 days period which the Center confirmed on November 8, 2004.
On November 19, 2004, the Complainant’s attorney requested the Center for immediate re-institution of the proceedings.
On November 25, 2004, the Center informed the Respondent via email on the re-institution of the proceedings and that a response to the Complaint had to be sent to the Center until November 29, 2004.
The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 30, 2004.
The Center appointed Christian Schalk as the sole panelist in this matter on December 13, 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 paragraph 7 of the Rules.
The Panel agrees with the Center’s assessment concerning the Complainant’s compliance with the formal requirements. The Complaint was properly notified to the Respondent in accordance with paragraph 2(b) of the Rules.
The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found necessary to request further information from the parties.
The language of the proceedings is English.
4. Factual Background
a) The Complainant is engaged in the development and commercialisation of computer software. Since 1991, the Complainant has marketed a software testing product under the name “Adatest”.
b) The Complainant is owner of the European Community Trademark No. 151,043 ADATEST, application date April 1, 1996, registration date May 28, 1998, covering goods and services in the International classes 9, 16 and 42.
The domain name at issue was registered on July 1, 2004.
c) When the Complainant learned about the registration of the disputed domain name, the Complainant attempted to contact the Respondent by telephone and by email. However, neither method was successful. The telephone number was disconnected and the email was returned because it was undeliverable.
The Complainant wrote then to the Respondent in order to set out its rights and interests in the domain name at issue. Furthermore, it asked the Respondent to explain what if any interest it has in the name. In the same letter the Complainant informed the Respondent also that in the event it was not able to explain what rights it had in the domain name at issue, it should provide the Complainant with a written undertaking that it would cease all use of the disputed domain name and transfer the ownership of it to the Complainant. However, although the letter was sent by courier to the Respondent’s address given in the WHOIS information for the Domain Name, the address was found to be non-existent and the letter was returned to the Complainant.
d) On September 30, 2004, the Center received the following reply to its email it sent a day before to the Complainant to acknowledge the receipt of the Complaint and in which the Respondent was copied in:
We do not usually sell domain names, but if you want to buy this domain name this is for sale for $ 400 US.
Email us if interested.”
The Center received the same email on October 24, 2004, as a reply to its email in which it notified the Complaint and the commencement of the administrative proceeding to the Respondent.
Although the email address from which both offers were sent was different from the email addresses mentioned in the contact details of the disputed domain name, the Panel finds that the sender of the both emails is identical with the Respondent or that both emails have been at least authorised by the Respondent since both emails directly replied to emails sent by the Center to the Respondent before.
e) Subsequent negotiations between both parties after the suspension of the procedure as a reaction to this email were unsuccessful.
5. Parties’ Contentions
The Complainant asserts that the domain name at issue is identical to its ADATEST – trademark since the top level domain “.com” should be disregarded as being of generic nature.
Furthermore, the Complainant believes that the Respondent has no legitimate rights or interest in respect of the disputed domain name since the name ADATEST is not generic or descriptive nor does it have any particular meaning and as such it is not a name which traders would legitimately choose unless to create the impression of an association with the Complainant. Moreover, the domain name at issue has been created by the Complainant itself.
The Complainant contends that it has not licensed or otherwise permitted the Respondent to use the ADATEST trademark nor has it licensed or permitted the Respondent to register or use any domain name incorporating the ADATEST trademark.
The Complainant believes also that the disputed domain name was registered and is being used in bad faith.
The Complainant submits that the Respondent uses the domain name at issue to attract for commercial gain Internet users to its website which displays and offers access to pornographic material. In this context the Complainant believes that internet users attempting to find information about the Complainant’s ADATEST product are likely to be confused when faced with a website displaying and offering access to pornographic material under the disputed domain name which contains the ADATEST trademark. The Complainant submits that Internet users may believe that the website is in some way connected to or affiliated with the Complainant. Therefore, it is the Complainant’s opinion that such use of the domain name at issue is detrimental to the goodwill and reputation of the Complainant’s trademark.
The Complainant asserts further that by virtue of the significant use and reputation of the trademark, members of the public as well as persons in the industry would believe that the entity owning the disputed domain name was in some way associated with or connected with the well known business of the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The jurisdiction of the Panel is limited. As the parties are from separate jurisdictions, national law is not generally determinative for the purpose of decisions under this policy. The Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law it deems applicable (Paragraph 15(a) of the Rules). Pursuant to Paragraph 4(a) of the Policy, a domain name can be transferred only where the Complainant has proven that each of the following three elements is present:
A) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
B) The domain name holder has no “rights or legitimate interest in respect of the domain name”; and
C) The domain “has been registered and is being used in bad faith.”
It is essential to dispute resolution that fundamental due process requirements be met. Such requirements include that a respondent has notice of proceedings that may substantially affect its rights. The Policy, and the Rules, establish procedures intended to assure that a respondent is given adequate notice of proceedings initiated against him, and a reasonable opportunity to respond (Paragraph 2(a) of the Rules).
In this case, the Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply is not due to any omission by the Center.
Since the Respondent has not contested the allegations of the Complainant, the Panel shall decide on the basis of the Complainant’s submissions, and all inferences that can reasonably be drawn therefrom (See Bayerische Motorenwerke AG v. Dariusz Herman, Herman DOMCREATE et co., WIPO Case No. DNAME2004-00001).
A. Identical or Confusingly Similar
a) The Panel finds that the Complainant has established that it has trademark rights in the word ADATEST in the European Union (EU). The scope of protection of European Community Trademarks has been extended to the new EU member states when they joined the EU on May 1, 2004. Poland, where the Respondent lives is one of the 10 new EU member states. The domain name at issue was registered after that date.
b) Ignoring, as the Panel is entitled to do, the generic “.com” Top Level Domain, the disputed domain name is identical with the Complainant’s word mark (see also: Deutsche Post AG v. MailMij LLC, WIPO Case No. D2003-0128). Even if the “.com” Top Level Domain would be regarded as a element which distincts the disputed domain name from the Complainant’s trademark, the result would be the same since many cases under the Policy have held that “essential” or “virtual” identity is sufficient for the purposes of the policy (see also: Köstrizer Schwarzbierbrauerei v. Macros-Telekom Corp., (WIPO Case No. D2001-0936), Laboratoire Pharmafarm (SAS) v. M. Sivaramakrishan, (WIPO Case No. D2001-0615) with further references). Therefore, the Panel finds that the domain name at issue is identical with the Complainant’s ADATEST word mark.
B. Rights or Legitimate Interests
According to the material brought before the Panel and in the absence of a response to the Complaint, the Panel finds that the Respondent cannot demonstrate legitimate rights in the disputed domain name for the following reasons:
a) The Respondent has not provided any evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the domain name.
b) The Complainant has not authorised the Respondent to use its trademark nor to register the disputed domain name which is identical to the Complainant’s trademark. There is also no evidence that the Respondent is known by the domain name at issue.
c) Furthermore, the word “ADATEST” appears to be an invented word, and as such it is not one traders would legitimately choose unless seeking to create an impression of an association with the Complainant.
C. Registered and Used in Bad Faith
Complainant contends that Respondent registered and uses the domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). The Policy paragraph 4(b) sets forth four non exclusive criteria for the Complainant to show bad faith registration and use of domain names:
1) 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 owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or
2) the 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 the Respondent has engaged in a pattern of such conduct; or
3) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
4) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location of a product.
According to the material before the Panel and in the absence of a response to the Complaint, the Panel finds that the disputed domain name has been registered and used by the Respondent in bad faith in accordance with paragraph 4 (b) (i) of the Policy for the following reasons:
a) It is a well-established principle under UDRP case law (See Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022) and under the Policy (see Section 2), that the domain name registrant represents and warrants to the registrar that, to his knowledge the registration of the domain name will not infringe the rights of any third party. In this case, the Panel believes that the Respondent must have been aware of the Complainant’s trademark when he registered the disputed domain name. Even a simple search, carried out in a common search engine like Google, which is accessible to everyone and free of charge, reveals hundreds of hits mentioning the Complainant’s services. Therefore, the Panel finds that the Respondent registered the disputed domain name in bad faith.
b) The Panel believes that the amount of US$ 400.- for which the Respondent offered the disputed domain name for sale, exceeds the Respondent’s out of pocket expenses related to the domain name at issue. It is common knowledge that the cost of registering domain names have become very modest and therefore, much less than the amount requested by the Respondent. Moreover, the Respondent has offered the disputed domain name for sale after it became aware of the Complainant’s trademark rights and even after it was notified by the Center on the commencement of the UDRP – proceeding.
Therefore, the Panel finds that the Respondent primarily registered the domain name at issue in order to sell it to the Complainant since it did not use this domain name in connection with bona fide offering of goods and / or services nor did it make of it a non commercial fair use (See August Storck KG v. Origan Firmware, WIPO Case No. D2000-0576).
c) The Respondent has actively provided inaccurate contact details when it registered the domain name at issue or failed to correct false contact details. The Complainant used the contact details given in the WHOIS information for the disputed domain name when it tried to contact the Respondent. However, the telephone number was disconnected, the email was undeliverable and a letter sent via courier was returned because the address was found to be non-existent. It was the same when the Center tried to sent the hardcopy version of the complaint and the notification of the commencement of the administrative proceedings to the Respondent.
Therefore, the Panel finds that the Respondent is in breach of the registration agreement (See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003) and may have acted so to frustrate or at least to delay any attempts to transfer the disputed domain name to the Complainant.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <adatest.com> be transferred to the Complainant.
Dated: December 27, 2004