WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Formway Furniture Limited v. Microfish Pty Limited
Case No. D2001-1476
1. The Parties
The Complainant in these Administrative Proceedings is Formway Furniture Limited, a New Zealand company having its registered office at Wellington, New Zealand, and carrying on business as a manufacturer of furniture products.
The Respondent is Microfish Pty Limited, an Australian company having its registered office at Level 15, 323 Castlereagh Street, Sydney, NSW2000, Australia and its principal place of business at 34 Portman Street, Zetland, NSW 2017, Australia.
2. The Domain Name and Registrar
The domain name in dispute is <formway.com >.
The Registrar with which said domain name is registered is Network Solutions, Inc. (hereinafter "the Registrar").
3. Procedural History
On December 21, 2001, the Complaint was received by the WIPO Arbitration and Mediation Center ("the Center") by e-mail and in hard copy on January 3, 2002.
On December 31, 2001, the Center sent a Request for Registrar Verification to the Registrar and on January 3, 2002, the Registrar responded, confirming that it is the registrar of said domain name <formway.com >, that the Respondent is the current registrant of the said domain name, provided details of the Administrative contact, Technical Contact and Billing Contact for said registration, confirmed that the Registrarís Network Solutions 5 Service Agreement is in effect, that the language of the Service Agreement is English, and that the said registration had an active status at that time.
In accordance with Paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and paragraph 5 of the WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("the Supplemental Rules") the Center reviewed the Complaint to ascertain whether it satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules and the Supplemental Rules and that payment in the required amount had been made by the Complainant.
On January 8, 2002, the Center sent a Notification of Complaint and Commencement of Administrative Proceedings to the Respondent. Said Notification was sent to the Respondent by Post/Courier (with enclosures), by facsimile (Complaint without enclosures) and by e-mail (Complaint without attachments). A copy of said Notification was sent to the authorised representative of the Complainant by e-mail. Further copies of said Notification were sent to the Internet Corporation for Assigned Names and Numbers ("ICANN") and to the Registrar by e-mail (without enclosures).
Said Notification of Complaint and Commencement of Administrative Proceeding inter alia advised the Respondent that the Administrative Proceeding had commenced on January 8, 2002, and that the Respondent was required to submit a Response to the Center on or before January 28, 2002.
No Response was received by the Center and on January 30, 2002, the Center sent a Notification of Respondent Default to the Respondent by e-mail. A copy of said Notification of Respondent Default was on the same date sent to the authorised representative of the Complainant by e-mail. Said Notification inter alia advised the Respondent that the Respondent was in default and that in accordance with the Rules, and the Supplemental Rules, the Center would proceed to appoint a single member Administrative Panel as designated by the Complainant, that the said Administrative Panel would be informed of the said default, and that the Center would continue to send all case-related communications to the Respondent.
On February 8, 2002, after having received a Statement of Acceptance and Declaration of Impartiality from him in accordance with paragraph 7 of the Rules, the Center proceeded to appoint said James Bridgeman as Administrative Panel. On the same day the case file was transmitted to the Administrative Panel.
In the view of the Administrative Panel, proper procedures were followed and this Administrative Panel was properly constituted.
4. Factual Background
The Complainant is the Registered Proprietor in New Zealand of Trade Mark Registration Nos 136164, FORMWAY in Class 20, 601311 FORMWAY in Class 35 and 618112 FORMWAY in Class 42 for the following goods and services:
Class 20: "Furniture including chairs, tables and desks and parts and accessories therefore".
Class 35: "Retail and wholesale services in this class relating to the provision of furniture including all office furniture, chairs, desks, tables, workstations, work benches, cabinets, chests, display boards and stands, footstools, partitions, copy holders and shelves".
Class 42: "Design services; design of furniture; design of joinery; design of interior décor; consultancy and advisory services in relation to the design of interior décor, joinery and furniture".
The Complainant has submitted evidence of these registrations in the annexes to the Complaint.
As no Response has been filed, there is no information available relating to the Respondent except for the details supplied by the Registrar relating to the registration and the information supplied by the Complainant in the Complaint.
5. Partiesí Contentions
The Complainant requests this Administrative Panel to issue a decision that said domain name <formway.com > be transferred to the Complainant.
The Complainant has provided evidence that it is the owner of the registered trademarks details of which are set out supra. Furthermore the Complainant submits that it has a well-known and well-established profile, goodwill and reputation in New Zealand and elsewhere in relation to the FORMWAY trade mark.
The Complainant states that in or about March 2000, the Complainant retained an Australian company, Webmail Internet Solutions ("WEBMAIL") to transfer said domain name <formway.com > from the original registrant (a party associated with the Complainant) to the Complainant.
In or about June 2000, the Complainant was advised by WEBMAIL that the transfer of said domain name was being actioned.
In or about September 2000, the Complainant became aware that said domain name had been transferred by WEBMAIL to the Respondent. No satisfactory explanation has been provided by WEBMAIL for its failure to transfer said domain name to the Complainant. The Complainant immediately requested WEBMAIL to transfer said domain name to the Complainant.
In or about November 2000, the Complainant was advised by WEBMAIL that the Respondent had signed the appropriate documentation to transfer said domain forename <formway.com> from the Respondent to the Complainant.
The Complainant submits that, on or about January 2, 2001, the Respondent signed the appropriate NETWORK SOLUTIONS Name Change Agreement to transfer said domain name from the Respondent to the Complainant. The Complainant has furnished this Administrative Panel with a copy of the memorandum of said agreement.
The Complainant submits that in or about the month of February 2001, the document was transmitted to the Registrar for processing. According to the Complainant, the Registrar refused to process the transfer of said domain name from the Respondent to the Complainant because the person who purported to notarise the said document did not confirm her authority to notarise the said document. According to the Complainant, subsequent investigations by the Complainant have revealed that this person was not in a position to notarise the said document.
In or about June 2001, the Respondentís Administrative Contact confirmed that the Respondent would sign a further copy of the necessary transfer document to transfer said domain name from the Respondent to the Complainant.
Despite numerous attempts to subsequently contact the Respondent by mail and electronic mail, the Complainant alleges that the Respondent has neglected or refused to transfer said domain name registration from the Respondent to the Complainant.
The Complainant submits that the Respondent has no association, rights or legitimate interests in respect of the FORMWAY trade mark or said domain name.
The continued registration of said domain name by the Respondent and the Respondentís continued neglect or refusal to transfer said domain name, despite the earlier agreement to do so, is in bad faith.
There was no Response filed by the Respondent.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the domain name registered by the Respondent 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 in question; and
(iii) the domain name has been registered and is being used in bad faith.
Identical or Confusingly Similar
This Administrative Panel accepts the Complainantís evidence that the Complainant is the Registered Proprietor in New Zealand of Trade Mark Registration Nos 136164, FORMWAY in Class 20, 601311 FORMWAY in Class 35 and 618112 FORMWAY in Class 42.
This Administrative Panel also accepts that said domain name is identical to the Complainantís said registered trademarks.
The Complainant has therefore satisfied the first element in the test as required by paragraph 4(a)(i) of the Policy.
Rights or Legitimate Interest
A more difficult issue arises with regard to whether the Respondent has any rights or legitimate interest in said domain name. The onus rests on the Complainant to satisfy each of the three elements in the test set out in paragraph 4(a) of the Policy. It has been accepted in a number of administrative panel decisions that because of the difficulty in proving a negative, in most cases, where a Complainant alleges that the Respondent has no such rights or interest in the domain name, the onus shifts to the Respondent.
The Respondent has not filed any Response in these Administrative Proceedings and for the purposes of this case, this Administrative Panel accepts that the Complainant should succeed on this point also due to the Respondentís failure.
Paragraph 4(b) of the ICANN Policy sets out the following examples of circumstances that will be considered by an Administrative Panel to be evidence of the bad faith registration and use of a domain name:
(i) Circumstances indicating that the domain name was registered or acquired 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 domain name registrantís out-of-pocket costs directly related to the domain name; or
(ii) The domain name was registered in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the domain name registrant has engaged in a pattern of such conduct; or
(iii) The domain name was registered primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, the domain name registrant intentionally attempted to attract for financial gain, Internet users to the registrantís web site or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of the registrantís web site or location or of a product or service on the registrantís web site or location.
In the view of this Administrative Panel the Complainant has not furnished any evidence sufficient to satisfy the third element of the test. For example none of the circumstances set out in Paragraph 4(b) of the Policy, set out supra, would appear to apply. It would appear that there is an agreement in writing whereby a director of the Respondent company has agreed to transfer said domain name to the Complainant and due to a technical defect in this document the Registrar has refused to transfer said domain name to the Respondent.
The Policy is not suitable for the resolution of all disputes. This has been pointed out by panelists in a number of cases including for example in Oki Data Americas, Inc. v. ASD, Inc. (WIPO Case No. D2001-0903, November 6, 2001) where the administrative panellist stated: "It is important to keep in mind that the Policy was designed to prevent the extortionate behaviour commonly known as cybersquatting. It cannot be used to litigate all disputes involving domain names."
The alleged neglect or refusal by the Respondent to finalise the formalities involved in transferring the registration to the Complainant is not sufficient to establish the third element in paragraph 4(a) of the Policy in these Administrative Proceedings. The Complainant has not furnished any explanation as to how the Respondent came to be the owner of the domain name registration and the Complainant has not furnished any information whatsoever as to how the Respondent is using said domain name, if at all.
The Complainant may well have a remedy in another forum but in the circumstances, this application must be refused.
With specific reference to Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, it is the decision of this Administrative Panel that the Complainant has failed to prove that the Respondent has registered and is using said domain name in bad faith. The Complainant must therefore fail in its application.
Dated: February 23, 2002