Complainant is Dicota GmbH of Germany, represented by Lichtenstein, Körner and Partners, Germany.
Respondent is Linus Tan of Singapore.
The disputed domain name <dicota.asia> is registered with Mesh Digital Limited.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 2, 2009. On April 3, 2009, the Center transmitted by email to Mesh Digital Limited a request for registrar verification in connection with the disputed domain name. On April 9, 2009, Mesh Digital Limited transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant 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” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on April 20, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 10, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on May 12, 2009.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on May 29, 2009. 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 Panel notes that Respondent transmitted an email message to the Center (copied to Complainant) on April 11, 2009, following receipt of the Complaint as initially transmitted by Complainant, stating as follows:
i don't understand why is there a dispute?
organisation had been given the time to buy the domain, and i had spend USD750 to bid for this domain legally.
There is no subsequent correspondence from Respondent on the record of this proceeding.
Complainant has registered the word trademark DICOTA through the Madrid System, International Registration number 780822, dated February 19, 2002, based upon registration in Germany dated December 21, 1998, with designations effective, inter alia, for Japan, the Republic of Korea, The People's Republic of China and Singapore. The International Registration is in classes 9, 16 and 18, covering, inter alia, briefcases and bags adapted for containing electronic devices.
Complainant develops and manufactures cases for computer notebooks and other mobile computing equipment. Complainant sells its products around the world through a network of subsidiaries and local partners. Complainant has nine subsidiaries, four of which are located in Asia, including DICOTA Far East Ltd. and DICOTA Asia Pte. Ltd. located in Singapore. Complainant's notebook cases and related products are substantially promoted and appear to be well recognized by consumers, including in Singapore, based upon results of Google searches of the term DICOTA (searches at both <Google.com> and <Google.com.sg> return more than 5 million results, with at least the first several pages of results referring virtually exclusively to Complainant's products).
According to the Registrar's verification response, Respondent is registrant of the disputed domain name. According to a WHOIS database report provided by Complainant, the record of registration of the disputed domain name was created on August 7, 2008. According to the Registrar's verification response, Respondent registered or acquired the disputed domain name on December 3, 2008.
The URL incorporating the disputed domain name “dicota.asia” addresses what appears to be a standard form Registrar's parking page of Mesh Digital Limited. That parking page advertises a substantial number of services offered by the Registrar, but does not appear to contain links to third-party offerors of goods or services.
Complainant has provided the results from an Internet search service showing that Respondent owns 57 domain name registrations, but without any indication as to what those domain names are.
Complainant was in contact with Respondent, by e-mail exchanges initiated in December 2008, regarding the possibility of acquiring the disputed domain name. Complainant initially proposed a purchase price of USD $400, which Respondent rejected, indicating that he had invested more than USD $800 in the disputed domain name. Complainant subsequently appeared to offer USD $1000. Respondent indicated he had proof of the purchase price as it was won through bidding, and queried, “how should we proceed from here?” There is no further record in this proceeding as to why the parties did not consummate a transaction.
The Registration Agreement in effect between Respondent and Mesh Digital Limited subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use. (Policy, paragraph 4(a)).
Complainant alleges that it has rights in the trademark DICOTA and that the disputed domain name is identical or confusingly similar to its trademark. Complainant further alleges that its trademark is well-known among users of computer notebook cases, including in Singapore and elsewhere in Asia.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant states that its trademark is a fanciful term, and that Respondent has not been known by that term. Complainant indicates that Respondent did not make bona fide preparations to use the disputed domain name prior to notice of a dispute, that Respondent has not been authorized to use the disputed domain name, and that Respondent has not made legitimate noncommercial or fair use of the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith. Complainant provides evidence that Respondent has registered 57 domain names and suggests that this constitutes evidence of a pattern of cyber-squatting. Complainant argues that Respondent's offer to sell the disputed domain name for USD $1000 is evidence that Respondent registered the disputed domain name for the purpose of offering it for sale to Complainant. Complainant indicates that because its trademark is fanciful and well-known, this is evidence that Respondent acquired the name to use it for a bad-faith purpose. Complainant argues that Respondent has used the disputed domain name intentionally for commercial gain to confuse Internet users by directing them to a website operated by the Registrar which contains advertisements.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent did not reply to Complainant's contentions.
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
Respondent received notice of the Complaint and commencement of the administrative proceeding from the Center. Although it did not file a Response, Respondent communicated with the Center and Complainant subsequent to receipt of the Complaint. Respondent received adequate notice of these proceedings and had reasonable opportunity to respond.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, 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 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.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
Complainant has provided evidence of International Registration of the trademark DICOTA through the Madrid System, including in Singapore, based on a basic registration in 1998 in Germany (see Factual Background supra). Respondent has not challenged the validity of such registration. The Panel finds that Complainant has rights in the trademark DICOTA.
The disputed domain name directly incorporates Complainant's trademark, adding only the generic top-level domain (gTLD) identifier “.asia”. The addition of a gTLD does not ordinarily distinguish a domain name from a trademark from the standpoint of assessing confusing similarity under the Policy. In this case, the trademark is widely used in Asia. The gTLD “.asia” is consistent with a use of the trademark that an Internet user would reasonably anticipate by Complainant. The Panel determines that the disputed domain name is identical to the trademark from the standpoint of the Policy.
Complainant has provided substantial evidence that the DICOTA trademark is well-known among purchasers of computer notebook cases in Singapore and Asia more generally. Respondent has not challenged this evidence. For purposes of this proceeding, the Panel accepts that the trademark is well-known among the public that is familiar with the field in which Complainant sells its products.
The Panel determines that Complainant has rights in a trademark and that the disputed domain name is identical to that trademark.
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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.” (Policy, paragraph 4(c))
The sole justification that Respondent has offered for registration of the disputed domain name is that he purchased that domain name at auction. The mere fact that a domain name is available and purchased at auction does not legitimize the registration and use of that domain name, regardless of the price that is paid by the purchaser.
Respondent has not provided any evidence that he has been commonly known by the disputed domain name, or that he has made or planned to make a bona fide offer of goods or services using that name.
The placement of the disputed domain name on a standard-form Registrar's parking page does not in itself represent a “use” of the domain name that legitimizes registration by establishing legitimate noncommercial or fair use. The Registrar is making commercial use of the disputed domain name on behalf of the Respondent. The use is therefore not “noncommercial”. The use does not fall within the legitimizing category of “fair use” because it does not involve comparative advertising, nominative fair use or generic use. Nor does it serve any other generally-accepted purpose for which a third party may make fair use of a trademark. The placement of a domain name on a Registrar's standard-form parking page does not in itself constitute bad faith use of a domain name, but neither does it establish rights or legitimate interests in a domain name.
The Panel finds that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.
Paragraph 4(b) of the Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These include “(i) circumstances indicating that [the respondent] ha[s] registered or 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 [the respondent's] documented out-of-pocket costs directly related to the domain name”; “(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;” and “(iv) by using the domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site 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 [respondent's] web site or location or of a product or service on your web site or location”.
Respondent registered the disputed domain name comprising the fanciful well-known mark of Complainant. Assuming that Respondent purchased the disputed domain name at auction, there is no reason on the record of this proceeding to suggest or explain why Respondent would have paid a price in excess of standard registration fees for that unique name but for the “excess value” of the domain name representing Complainant's goodwill in its trademark. Respondent subsequently attempted to recapture its purchase price plus an increment that correspondence between the parties suggests would be around USD $250. On this basis, that Panel concludes that Respondent attempted to capture from Complainant an amount in excess of his “out-of-pocket costs” in connection with the disputed domain name, and that Respondent registered the disputed domain name with that bad faith intention.
Respondent has not, in fact, provided evidence in this proceeding of his alleged purchase price of around USD $750. In the absence of such evidence, the Panel would be justified in concluding that Respondent paid the standard registration fee, typically less than USD $20. But, it is not necessary for the Panel to draw a conclusion as to precisely the amount in excess of his out-of-pocket expenses that Respondent attempted to obtain from Complainant. Because the disputed domain name is identical to a fanciful well-known mark of Complainant and there is no evident legitimate explanation for Respondent's registration of the disputed domain name, the Panel is satisfied that Respondent acted in bad faith within the meaning of the Policy.
Complainant provided evidence that Respondent has registered 57 domain names, but has not indicated what those domain names are. As such, this evidence establishes nothing relevant to this proceeding.
Having found bad faith on the basis of Respondent's registration and offer to sell the disputed domain name to Complainant for a price in excess of his out-of-pocket expenses directly connected with the name, the Panel need not address Complainant's other allegations of bad faith.
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 <dicota.asia> be transferred to the Complainant.
Frederick M. Abbott
Dated: June 11, 2009