WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
EM Applications Limited v. APT Inc
Case No. D2007-1844
1. The Parties
The Complainant is EM Applications Limited, London, United Kingdom of Great Britain and Northern Ireland, represented by Taylor Wessing, United Kingdom of Great Britain and Northern Ireland.
The Respondent is APT Inc, New York, New York, United States of America, represented by Reed Smith LLP, United States of America.
2. The Domain Names and Registrar
The disputed domain names <emapplication.com>, <emapplications.net> and <emapplications.org> are all registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2007. On December 14, 2007, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain names at issue. On December 24, 2007, and December 26, 2007, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of all three domain names and providing the contact details. 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 December 24, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 13, 2008. On January 12, 2008, the Respondent’s authorized representative requested an extension to file its Response. The Center granted an extension until January 18, 2008. The Response was filed with the Center on January 18, 2008.
The Center appointed Alistair Payne as the sole panelist in this matter on January 28, 2008. 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.
The Complainant sought leave to submit a supplemental filing in response to previously unforeseen information present in the Respondent’s Response on January 21, 2008. The Complainant subsequently filed an additional submission on January 22, 2008. The Panel ruled to accept this supplemental filing in the interests of justice. The Respondent filed a request to dismiss Complainant’s supplemental filing on January 31, 2008. The Panel, through Procedural Order No. 1 granted the Respondent until February 7, 2008, to provide further statements regarding Complainant’s supplemental filing. No such response was forthcoming from the Respondent.
4. Factual Background
The Complainant supplies investment risk solutions to securities firms and asset managers. EM Applications was incorporated in England in 1991. The Complainant has traded under the name EM Applications since 1996. The Complainant has registered the domain name for <emapplications.com> since 1997. The Respondent registered the earliest of the three Disputed Domain Names on February 23, 2001. The Complainant’s Managing Director previously was the owner of APT UK Limited which operated under a license from the Respondent in Europe until the relationship was terminated in 1994. The Complainant and the Respondent have been involved in litigation in relation to a license agreement made between them. The Respondent was awarded a Default Judgment as a result of this dispute granting an injunction preventing the Complainant from enforcing parts of this license.
5. Parties’ Contentions
The Complainant contends that the Disputed Domain Names are identical and confusingly similar to marks in which the Complainant has rights. The Complainant points to the fact that it has not licensed the Respondent to carry on any activities under its name and as such contends that the Respondent has no rights or legitimate interests in the Disputed Domain Names. The Complainant also contends that given the previous relationship between the parties, the Respondent was aware of the Complainant’s business and as such the Disputed Domain Names were registered to prevent the Complainant from reflecting its rights in the Domain Names and to create a likelihood of consumer confusion. As such the Complainant contends that the Domain Names were registered and are being used in bad faith.
In its supplemental filing the Complainant also submitted that it was not attempting to stifle the Respondent’s free speech and is merely acting to protect its reputation in its marks and trading name.
The Respondent purports to have registered the Disputed Domain Names in order to host a copy of the Default Judgment from proceedings between the two parties for viewing by interested parties. The Respondent contends that as the Disputed Domain Names were registered to provide publicly available information to interested parties they have a legitimate interest in the three domain names. The Respondent contends that it has never misused the Complainant’s trademark. The Respondent denies that it registered the Disputed Domain Names to prevent the Complainant from reflecting its trademark rights in the corresponding domain name or for the purpose of renting or selling the Disputed Domain Names. Finally, the Respondent denies that it registered the Disputed Domain Name to disrupt the Complainant’s business or intentionally attract customers to its website for commercial gain by creating confusion between the Disputed Domain Names and the Complainant’s trademark rights.
6. Discussion and Findings
If the Complainant is to succeed, it must prove each of the three elements referred to in Paragraph 4(a) of the Policy, namely that:
(i) the Disputed Domain Names are 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 Disputed Domain Names; and
(iii) the Disputed Domain Names have been registered and are being used in bad faith.
The Panel will proceed to establish whether the Complainant has discharged the burden of proof in respect of each of the three elements referred to in Paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
The Complainant does not have a registered trademark for EM APPLICATIONS, however the Policy applies to both registered trademark rights and unregistered service marks or trade names in which a party has developed common law rights (See Imperial College v. Christophe Dessimoz, WIPO Case No. D2004-0322). In order to prove that common law rights exist for EM APPLICATIONS the Complainant must show that the name has become a distinctive identifier for its business. The Panel notes that the Complainant registered a domain name for <emapplications.com> in August 1997, and there is evidence of the Complainant’s business presence on this website since August 2000.
The Panel accepts the evidence provided which indicates that the Complainant had an established presence in the risk solutions market in 2001, having traded by that time for at least five years under the name EM APPLICATIONS. The Panel, therefore, accepts that the Complainant had common law rights in EM APPLICATIONS at the date that the Respondent registered the Disputed Domain Names.
Two of the Disputed Domain Names <emapplications.net> and <emapplications.org> are identical to the Complainant’s unregistered trademark rights and the third Disputed Domain Name <emapplication.com> differs by only one letter and is accordingly confusingly similar to this mark. As such, the Complainant has, satisfied Paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel accepts that the Complainant has rights and legitimate interests in the name EM Applications as a consequence of consistent use of the name and mark since 1996. The Complainant has not licensed or authorized the Respondent to use the Disputed Domain Names and the Respondent has not provided the Panel with evidence to suggest that it is commonly known as EM Applications or any similar name. The Complainant has, therefore, established a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Names.
The Respondent initially asserted through its’ lawyers correspondence in January 2007 that that it had merely registered the Disputed Domain Names and that none of them resolved to active websites or lead anywhere. Subsequently the assertion changed to a claim that it registered the three Disputed Domain Names with the intention of providing interested parties with a copy of the Default Judgment which arose from a dispute between the Respondent and the Complainant and that therefore the domain names were used for the purposes of legitimate non-commercial criticism.
A respondent may have a legitimate interest in registering a domain name for the purposes of a non-commercial criticism site under Paragraph 4(c)(iii) of the Policy. However the respondent must be making a legitimate non-commercial or fair use of the name without an intention to make a commercial gain or to misleadingly divert consumers. (See Howard Jarvis Taxpayers Association v. Paul Mc Cauley, WIPO Case No. D2004-0014).
In cases concerning non-commercial criticism sites Panels have previously found that the use of a negative modifier or even an “innominate” modifier in a domain name for a criticism site can be justified, particularly where the Respondent is not a directly competitive trading entity. In this case the Respondent registered identical or confusingly similar domain names to the Disputed Domain Names without using any modifier at all. It is very difficult to see how a direct competitor’s use of an identical domain name is going to qualify as “fair” or “legitimate” under Paragraph 4(c)(iii) of the Policy.
Further, two out of the three Disputed Domain Names registered in fact <emapplications.org> and <emapplications.net> never resolved to the Default Judgment or to any kind of criticism site. The third <emapplication.com> did so according to the Respondent, but no evidence has been provided by the Respondent to prove that the Default Judgment was in fact available on the website.
Had the Respondent really had the intention of creating a legitimate criticism site it could easily have used a domain name which was evocative of Complainant’s domain name but also contained some kind of distinguishing element, more particularly in circumstances where the Respondent and Complainant are direct competitors. Further it seems odd that the Respondent would go to the lengths of protecting the site by password if all it wanted to do was to make legitimate criticism. Finally, the Respondent certainly did not require all three Disputed Domain Names for the purposes of maintaining a legitimate non-commercial criticism site.
In these circumstances the Panel is not satisfied that the Respondent has satisfied the requirements of Paragraph 4(c)(iii) of the Policy. The discrepancy in the Respondent’s explanation for its registration of the Disputed Domain Names, particularly in light of its position as a direct competitor of the Complainant detracts from the credibility of the Respondent’s assertion that it is merely passively holding the Disputed Domain Names. In the Panel’s view the Respondent has not rebutted the prima facie case made out by the Complainant and the Panel, therefore, concludes that the Complainant has satisfied Paragraph 4(a)(ii) of the Policy
C. Registered and Used in Bad Faith
For the reasons set out above the Panel does not accept the Respondent’s submission; that it registered or used the Disputed Domain Names for the purposes of a legitimate non-commercial criticism site.
The Complainant submits that Paragraph 4(b)(ii) of the Policy is satisfied. However this paragraph requires that a respondent is engaged in a pattern of conduct which indicates an intention to prevent trademark owners from reflecting their trademark in a corresponding domain name. There is no evidence to suggest that the Respondent in this case has engaged in such a pattern.
The Complainant also submits that Paragraph 4(b)(iii) is satisfied. Under this paragraph it must be shown that a respondent registered a domain name with the intention of disrupting a complainant’s business.
As already noted above, the Panel is not satisfied that the Disputed Domain Names were registered for legitimate purposes. The Respondent is in direct competition with the Complainant and in these circumstances it has not provided a consistent and credible explanation as to why it registered the Disputed Domain Names. The inconsistencies in the Respondent’s evidence (as noted above) erodes the reliability of the Respondent’s assertion that it was acting in good faith when it registered the Disputed Domain Names. Further it would appear that, in return for abandoning the Disputed Domain Names, the Respondent sought to solicit information from the Complainant in relation to an unrelated matter in dispute between the parties. This use of the Disputed Domain Names as a bargaining chip does not support the Respondent’s claim that it registered the Disputed Domain Names in good faith. Considering all of these circumstances the Panel infers that the Respondent registered the Disputed Domain Names to disrupt the Complainant’s business. Consequently, the Complainant has satisfied Paragraph 4(b)(iii) of the Policy.
The Complainant has, therefore, also met the requirements of Paragraph 4(a)(iii) of the Policy.
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 names <emapplication.com>, <emapplications.net> and <emapplications.org>, be transferred to the Complainant.
Dated: March 6, 2008