WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wilserv Corporation v. Willi Kusche
Case No. D2007-0004
1. The Parties
The Complainant is Wilserv Corporation of Warrenton, Georgia, United States of America, represented by Benjamin I. Fink, United States of America.
The Respondent is Willi Kusche, dba Wilserv Industries, of Bellmawr, New Jersey, United States of America.
2. The Domain Name and Registrar
The disputed Domain Name <wilserv.com> is registered with eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 4, 2007. On January 5, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name at issue. On January 8, 2007, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 10, 2007. 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”).
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 January 19, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was February 8, 2007. The Response was filed with the Center on February 8, 2007.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on February 14, 2007. 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 Wilserv Corporation is a Georgia corporation that conducts home energy consumption audits and installs insulation and other energy efficiency enhancements in buildings throughout the United States. The corporation was formed on November 8, 2002.
The Complainant offers evidence that a company called Wilserve, Inc. existed from 1984 through 1993 with the same chief executive officer who now heads the Complainant corporation. This information is not material to the current proceeding, however, since there is a nine-year gap between the dissolution of that corporation and the formation of the Complainant, and there is no evidence in the record of any marks used by the former corporation and transferred to the Complainant.
The Complainant states that it has used the WILSERV mark since its incorporation in November 2002, although its trademark registration from the United States Patent and Trademark Office (USPTO) shows first use in commerce on March 18, 2003 (the day before the Complainant filed its application for trademark registration). On January 27, 2004, the Complainant obtained United States Trademark Registration No. 2808812 for the WILSERV mark, associated with energy audit and construction services. The Complainant operates a corporate website at “www.wilserv.net.”
The Respondent Willi Kusche states that he has been doing business (apparently software development) since “at least 1982” under the name “Wilserv Industries.” The Respondent furnished a copy of pages 302 and 303 of the October 1982 issue of the magazine Creative Computing, listing “firms mentioned in this Column,” including contact information for “Willi Kusche, Wilserv Industries” at a post office box in Bellmawr, New Jersey (the same town where the Respondent is currently located). The Respondent also furnished a photocopy of an American Express business credit card in the name of a man identified in the Response as the CFO of Wilserv Industries. The card displays the business name “Wilserv Industries,” and the individual with this business affiliation is shown as a cardmember since 1986. The Response provides little information about the Respondent’s current business activities.
The Respondent registered the Domain Name <wilserv.com> on June 14, 2000, more than two years before the Complainant corporation was formed. It is undisputed that the Respondent has never created a website using the Domain Name. The Domain Name resolves to a parking website with third-party advertising links and the following statements: “This site is currently under construction,” “Please come back later,” and “This parking page is a free complimentary service provided by Active-Domain Co.”
The Respondent asserts without contradiction that he has used the Domain Name exclusively for “email forwarding,” creating email addresses in that domain for himself and a business partner for use in their business. He has, for example, used an email address in this domain for electronic communications in this proceeding.
On September 8, 2006, counsel for the Complainant sent the Respondent a cease-and-desist letter demanding transfer of the Domain Name. Counsel sent the Respondent a brief follow-up email on October 13, 2006. The Respondent acknowledges having received the September letter and says he “entered a response” to the letter on the “Contact Wilserv” page of the Complainant’s website at “www.wilserv.net.” The Complainant asserts that it did not receive any reply from the Respondent, and the Respondent does not provide a copy or description of such a communication.
5. Parties’ Contentions
The Complainant observes that the Domain Name is identical to its registered WILSERV trademark and argues that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant argues that bad faith can be found in the Respondent’s “passive holding” of the Domain Name and his failure to respond to the Complainant’s communications.
The Respondent asserts that he has used a business name corresponding to the Domain Name since 1982. He contends that he has used the Domain Name legitimately for email addresses. He dismisses the allegations of bad faith, pointing out that he registered the Domain Name more than two years before the Complainant corporation was formed and began using the WILSERV mark.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of a disputed domain name, the Complainant must demonstrate each of the following:
(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.
Under Paragraph 15(a) of the Rules,
“A 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 that it deems applicable.”
A. Identical or Confusingly Similar
The Complainant indisputably holds the registered trademark WILSERV, which is identical to the Domain Name. This satisfies the first element of the Complaint, regardless of the fact that the trademark registration postdates the Domain Name registration.
B. Rights or Legitimate Interests
The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which a respondent could demonstrate rights or legitimate interests in a contested domain name:
“(i) before any notice to you of the dispute, your 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent implicitly relies on paragraphs 4(c)(i) and (ii). He has furnished evidence that he has used the Domain Name to create email addresses corresponding to the distinctive portion of a business name, Wilserv Industries, that he has used to some extent since the early 1980s. The Policy, paragraph 4(c), does not require that the Domain Name be used for a website; using the Domain Name for business email addresses also satisfies the letter and spirit of the Policy.
However, because of the Panel’s conclusions below on the issue of bad faith, it is not necessary to determine whether the evidence in this record establishes the Respondent’s legitimate use of the Domain Name, or a name corresponding to the Domain Name, before notice of this dispute.
C. Registered and Used in Bad Faith
The Complainant does not rely on any of the instances of bad faith listed in the Policy, paragraph 4(b). As the Complainant points out, the Policy list is non-exhaustive, and the Complainant advances two other arguments for inferring bad faith: non-responsiveness and passive holding.
The Complainant argues first that the Respondent’s failure to respond to its cease-and-desist letter is sufficient to prove bad faith, citing Policy decisions in which such non-responsiveness is mentioned as evidence of bad faith, prominently Sterling Inc. v. Sterling Jewelers, Inc. and Domain Traffic, WIPO Case No. D2002-0772. But in every such case there were also other indications of bad faith, as well as a lack of persuasive evidence that the respondent had any rights or legitimate interests in the domain name at issue. In Sterling, for example, the complainant’s mark was established by the time the domain name was registered, and the respondent not only failed to respond to the complainant’s cease-and-desist letter but also subsequently changed the registration of the domain name to list the complainant as the registrant, which the panel viewed as a kind of admission. Here, the Complainant did not even exist at the time the Domain Name was registered, and the Respondent has submitted a timely response in this proceeding with substantial evidence that he has a legitimate interest in the Domain Name (in addition to the Respondent’s alleged effort to communicate a reply through the Complainant’s website). The Respondent has come forward with plausible reasons for registering and using the Domain Name, at a time when there is absolutely no reason to believe the Respondent was attempting to trade on the Complainant’s reputation. Thus, the Respondent’s failure to make an earlier reply to what he characterized as the Complainant’s “arrogant” demands does not furnish evidence of bad faith on the present record.
Second, the Complainant cites the “passive holding” doctrine articulated in decisions such as Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. These are cases where the respondent had not yet made commercial use of the disputed domain name, but the domain name was identical or confusingly similar to a distinctive and well-established mark. The panels in Telstra and in following passive holding cases concluded that it was difficult to imagine any reason for the respondent’s choice of domain name other than a bad-faith intent either ultimately to sell the domain name to the trademark owner or to exploit the goodwill associated with the mark. Here, the Respondent makes legitimate use of the Domain Name for email addresses used in his business, which is known by a corresponding name. But most importantly, the rationale of the passive holding doctrine simply does not apply to the facts of this proceeding, since the Respondent registered the Domain Name more than two years before the Complainant corporation was formed and began to use the WILSERV mark. See Diknah, S.L. v. WebQuest.com Inc., WIPO Case No. D2005-0573, and Builder’s Best, Inc. v. Yoshiki Okad, WIPO Case No. D2004-0748 (in order to find bad faith, “there must be some evidence of knowledge that the Respondent knew the domain name was identical or similar to the Complainant’s mark”). Given these facts, there can be no finding of bad-faith registration and use.
For all the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Date: February 26, 2007