WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Victory Team Est. v. Egill Johannes Skarning and Norsk Magedans Forening
Case No. D2001-1506
1. The Parties
1.1 The Complainant is Victory Team Est. (Establishment), a legal entity registered in Dubai.
1.2 The Respondents are Egill Johannes Skarning, an individual whose address is given as Fabakkveien 8, 4812 Kongshamn, Aust-Agder, Norway and Norsk Magedans Forening, an association whose address is given as Postboks 148, 4852 Faervik, Norway, and whose authorised representative is Trond Atle Skarning, an individual of the same address.
2. The Domain Names and Registrars
2.1 The domain names upon which this Complaint is based are <victoryteam.com> and <victoryteam.net>. The registrar of the domain name <victoryteam.com> as at the date of the Complaint is Enom, Inc. ("Enom"). The registrar of the domain name <victoryteam.net> as at the date of the Complaint is Namesecure.com ("Namesecure").
3. Procedural History
3.1 The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution Policy approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 (the "Policy"), in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, also approved by ICANN on October 24, 1999 (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect as of December 1, 1999 (the "Supplemental Rules").
3.2 The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") in hard copy on December 14, 2001, and by email on January 24, 2002. The fees prescribed under the Supplemental Rules have been paid by the Complainant. The Complaint stated that a copy of the Complaint had been sent or transmitted to the Respondent as prescribed by the Supplemental Rules and that a copy of the Complaint had been sent or transmitted to the concerned registrars of the domain names in dispute.
3.3 On January 16, 2002, the Center sent the Complainant an Acknowledgment of Receipt of Complaint.
3.4 The Center sent a Request for Registrar Verification to each of Enom and Namesecure on January 18, 2002, by email. Network Solutions, Inc. ("NSI") (on behalf of Namesecure) responded to the Centerís request by email on January 21, 2002, confirming:
(a) that NSI had received notice that a complaint had been filed against the registrant of the subject domain name(s);
(b) that Egill Johannes Skarning was the current registrant of the <victoryteam.net> domain name in dispute;
(c) that Namesecure was the registrar for the <victoryteam.net> domain name in dispute;
(d) Egill Johannes Skarningís contact details;
(e) the language of the Service Agreement was English; and
(f) that the <victoryteam.net> domain name in dispute was active in status;
Enom responded to the Centerís request by email on January 24, 2002, confirming:
(a) that Enom was not in receipt of a copy of the Complaint sent to it by the Complainant;
(b) that Enom was the registrar for the <victoryteam.com> domain name in dispute;
(c) that Norsk Magedans Forening was the current registrant of the <victoryteam.com> domain name in dispute;
(d) Norsk Magedans Foreningís contact details;
(e) that the Policy applies to the <victoryteam.com> domain name in dispute;
(f) that the domain name in dispute was in "Lock" status; and
(g) that the language of the registration agreement as used by the registrant was English.
3.5 The Panel notes that neither Namesecure nor Enom state in their response to the Centerís Request for Registrar Verification that they were in receipt of a copy of the Complaint. The Complaint states, at paragraph 18:
"A copy of this Complaint has been sent to the concerned registrars on 2001-11-25Ö".
Whether or not the Complainant did send a copy of the Complaint to the concerned registrars, and, if so, whether or not the Complaint did reach the registrars, the Panel is satisfied that no unfairness has resulted to the Respondents through Namesecure and Enom not stating that they were in receipt of a copy of the Complaint at the time they responded to the Centerís Requests for Registrar Verification.
3.6 The Center received an Amendment to Complaint from the Complainant on January 24, 2002, the same day on which it received the electronic copy of the Complaint. The cover letter to this Amendment stated that:
"we have adjusted the first page and the 4th page, so it now are easier to connect the names and the Respondents";
and the amended Complaint states:
"Öthe Respondent in this administrative proceeding is:
Egill Johannes Skarning (<victoryteam.net>)
Norsk Magedans Forening (<victoryteam.com>)."
3.7 The Panel notes that in the hard copy of the Complaint which was first received by the Center, the Complainant did not appear to be entirely clear as to who was or were the Respondent(s) in this Administrative Proceeding. Furthermore, the Panel notes that according to the Complaint, the registrar of the <victoryteam.com> domain name changed from Melbourne IT to Enom, Inc. In the original Complaint, the Respondent of both domain names in dispute is stated to be "Egill Johannes Skarning" and, on the following line, "Trond Atle Skarning". There are also certain confused references to the "Norsk Magedans Forening", and this phraseís English translation, apparently the "Norwegian Belly Dancers Association", and speculation as to whether "Egill Johannes Skarning" and "Trond Atle Skarning" are members of the same family.
3.8 The Panel does not propose to speculate as to the ownership of the domain names in dispute at the time of the Complaint, or what has happened to the domain names since then, nor as to when or why the registrars of these domain names may have changed. The Panelís own check of the whois database has found the currently recorded particulars to be consistent with the Amendment to the Complaint referred to in paragraph 3.7 above, namely, that the current registrant of <victoryteam.com> is Norsk Magedans Forening, and the representative of this entity is Trond Atle Skarning, and the current registrant of <victoryteam.net> is Egill Johannes Skarning. The Panel therefore elects to accept the Amendment to the Complaint received by the Center on January 24, 2002.
3.9 The Center sent the Notification of Complaint and Commencement of Administrative Proceeding on February 4, 2002, to the Respondent by post/courier, facsimile and email, and to the Complainant by email.
3.10 The Center received an email message from Trond Atle Skarning on February 4, 2002, stating:
"ÖI am not the owner of victoryteam.netÖI do not have anything in common with Egill Johannes SkarningÖI demandÖnot to be involved in the case against victoryteam.net."
The Center responded to this email on February 5, 2002, stating:
"As the Complainant has indicated in its Complaint a link between the Registrants of the two disputed domain names, the Center is going to consider it as a single Administrative Proceeding."
3.11 The Panel has already noted that some confusion had existed up to this point in the Administrative Proceeding regarding the disputed domain names and their registrants. In light of the fact that Trond Atle Skarning later provided a Response relating to both the domain names <victoryteam.com> and <victoryteam.net> (as authorised representative of Norsk Magedans Forening), the Panel considers that the Centerís response to the above email was acceptable. The Panel will therefore treat this as a single Administrative Proceeding and will treat Trond Atle Skarning (as authorised representative of Norsk Magedans Forening) and Egill Johannes Skarning as, respectively, the Respondents.
3.12 The Center received from each of the Respondents on February 23, 2002, a Response, both of which relate to the two domain names in dispute. Notwithstanding the unusual nature of this Administrative Proceeding, the Panel will consider both Responses received from the Respondents in making its decision.
3.13 The Center acknowledged receipt of the Responses by email on February 25, 2002, and received hard copies of the Responses on February 27, 2002.
3.14 The Center sent a Notification of Appointment of Administrative Panel and Projected Decision Date to the Respondent and the Complainantís representative by email on March 1, 2001.
3.15 The Center sent a transmission of case file to the Panel by email on March 1, 2001. The documentation was received in hard copy by the Panel on March 7, 2001, in Sydney, Australia.
3.16 The Center sent to the Panel on March 13, 2002, an email from the Complainant to the Center attaching a document entitled "Complainantís Reply to Responses filed by Respondents". The Panel also received from the Center emails from the Respondents to the Center, both of which asked for the right to respond to the Complainantís further submission, in the event that the Panel agreed to consider this further submission.
3.17 The Panel notes that the normal procedure in Administrative Proceedings under the Policy is that the Panel reaches its decision based on the partiesí submissions in the Complaint and the Response, together with such enquiries as the Panel considers appropriate under Paragraph 10 of the Rules. In the event that the parties make further submissions, whether or not the Panel considers these further submissions is entirely at the discretion of the Panel. In this instance, the Complainantís supplementary submission does not respond to any new issues raised by the Responses, and the Panel can see no benefit in considering any submissions other than the Complaint and Responses. The practice of submitting numerous replies, rebuttals and supplementary submissions is to be discouraged. Only in rare circumstances, such as there being fresh evidence not earlier available, or a point is raised in a response that the Complainant could not have anticipated nor dealt with, will this Panel contemplate admitting and considering any supplementary filings from the parties.
3.18 All other procedural requirements appear to have been satisfied
4. Factual Background
4.1 Activities of the Complainant
The following information is asserted as fact in the Complaint.
The Complainant is a legal entity registered in Dubai 1996, after a Decree issued by the Ruler of Dubai. From its early start in 1988/86, the Victory Team has been a department and a project, directly administrated and operated under the Rulers Court of Dubai. The Victory Team is a sports team who competes in the World Championship Circus for Offshore high power race boats; the Ďplaceí of business is characteristic by the main races during the season i.e. Italy, Germany, Turkey, Norway, Fujairah, Dubai, Abu Dhabi etc.
4.2 The Complainantís trade marks
The Complainant also asserts that the name and the trademark "Victory Team" is the property of its owner as well as the trade name of the Victory Team.
The Complainant does not rely upon any registered trademarks but on their common law rights, by having a legal entity and a legal registration from 1986, based on the mark Victory Team. Furthermore, the Complainant states that the Victory Team mark has achieved international recognition and that the Victory Team mark has come to be recognized by the general public as indicating an association with the sport and with the Complainant. As a result, the Complainant asserts that they have common law rights in the Mark, which are sufficient for the purposes of this Complaint.
The Complainant also:
- lists the Offshore high power race boats titles won by the Victory Team;
- provides details of the Victory Teamís headquarters in Dubai;
- provides television viewing figures and statistics for the sport of Offshore high power race boats racing; and
- lists the domain name registrations containing the words "Victory Team" held by the Complainant
by way of evidence of international recognition of the Complainant and public awareness of the Victory Team trademark.
4.3 Activities of the Respondent
Despite the fact that fairly extensive Responses were received by the Center from both Respondents, no information is given in these documents as to the activities of Norsk Magedans Forening, Trond Atle Skarning or Egill Johannes Skarning.
5. The Complainantís contentions in the Complaint
5.1 The Complaint asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.
5.2 In reference to the element in paragraph 4(a)(i) of the Policy, the Complainant alleges that <victoryteam.com> and <victoryteam.net> are directly identical and confusingly similar to the Victory Team mark.
5.3 In reference to the element in paragraph 4(a)(ii) of the Policy, the Complainant alleges that the Respondents have no rights or legitimate interest in the domain name in dispute because, inter alia:
a) the Respondents have shown that they neither have any activities nor any business associated to these registrations;
b) the Respondents have confirmed that they bought these domain names only with the purpose of selling them;
c) at its first contact with the Respondents on May 10, 2000, the Respondents had no web pages at all under these names; and
d) the Respondents have pointed out that they represent a non-existent "Belly Dancer Association" and further states that they are "The real Victory Team".
5.4 In reference to the requirements of paragraph 4(a)(iii) of the Policy, the Complainant alleges that the Respondents have proven their bad faith by re-directing the domain names in dispute to a competitor of the Complainant, the Italian team Jolly Motor. The Complainant further alleges, inter alia, that the Respondentsí bad faith is evidenced by the following facts:
a) one of the Respondents directly offered on May 13, 2000, to sell the domain names in dispute for the price of US$90,000 and then that Respondent offered a discount if a deal was done rapidly, the discounted price being US$36,000;
b) this demonstrates "the purpose of why the Respondents have bought the disputed domain names and that the Respondents clearly have been trying to earn a large amount of money for just registering these names";
c) the Respondentsí intentions from the start have been to intentionally disrupt the Victory Teamís operation by redirecting these names to the competitor of the Complainant, Jolly Motors;
d) the Respondents started in June 2000, a sports web site at the URL "www.victoryteam.com";
e) "Norsk Magedans Forening" means in English "The Norwegian Bally [sic] Dancing Associations", which, to the Complainantís knowledge, is not an existing association, and the Respondents have also represented that either they or their association is "The real Victory Team"; and
f) during the course of negotiations between the Complainant and the Respondents concerning the price at which the Respondent might sell the disputed domain names, the Respondents stated that they could not accept an amount lower than $6,000 due to the amount of work, direct cost and efforts involved in creating the "www.victoryteam.com" web site, and the cost of moving the traffic to that site to another site. The Complainantís representative offered to accept any proven cost and offered to send a certified accountant to verify such cost, but the Respondents did not accept this proposal.
6. The Respondentsí contentions in the Responses
<victoryteam.com>: Response of Trond Atle Skarning, as representative of Norsk Magedans Forening
6.1 Trond Atle Skarning, in his above Response, asks the Panel to make a finding of reverse domain name hijacking. In support of this request, this Respondent states that:
a) the Complainant is "in this just for the money, which the complainant proves by having the official website of the Victory Team Dubai, <victoryteamdubai.com> put up for sale at GreatDomains.comÖ..the complainant wants to make as much money as possible by selling his domain names to the highest bidder";
b) he has never been in contact with the complainant, either by email, phone or fax;
c) that Norsk Magedans Forening is a legal association in Norway;
d) that the sport of Offshore high power race boats racing is not well known in Norway or around the world.
<victoryteam.net>: Response of Egill Johannes Skarning
6.2 Egill Johannes Skarning, in his above Response, also asks the Panel to make a finding of reverse domain name hijacking. In support of this request, this Respondent states that:
a) the Complainant approached the respondent on several occasions by email and phone and directly offered to buy these domain names;
b) the Complainant does not have any legal rights connected to the mentioned domains, and the respondent has not on any point or grounds acted in bad faith; and
c) the Complainant had put his own name, <victoryteamdubai.com> up for sale at the domain auction, GreatDomains.com;
7. Discussion and Panel Findings
7.1 This section is structured by reference to the elements required by paragraph 4(a) of the Policy. In order to be successful, the Complainant has the burden of proving, on the balance of probabilities, that all three elements are present.
7.2 Domain Name identical or confusingly similar to Complainantís trademark
The domain names in dispute are <victoryteam.com> and <victoryteam.net>. The Complainant claims that it has common law trade marks of the words "Victory Team" through being a legal entity known as the Victory Team, and that these marks have gained extensive international recognition as a result of the popularity of the sport in which the Complainant participates - Offshore power boat racing.
There is no requirement in the Policy, the Rules or the Supplemental Rules, that a trademark which a complainant in an Administrative Proceeding relies upon must be a registered trademark. The Panel notes that the Complainant in this case has provided extensive evidence of the distinctiveness and public recognition of the words "Victory Team" in association with the Complainant and the sport of Offshore power boat racing, such as television viewing figures and information regarding the titles won by the Complainant. Whilst this sport may not be as widely followed around the world as football, for example, the Panel is satisfied that on the balance of probabilities, there is sufficient recognition of the Complainantís legal name to accord common law trade mark protection to the words "Victory Team". Therefore the Panel does not agree with the Respondentsí contention that the Complainant does not have any legal rights connected to the domain names in dispute.
The domain names in dispute incorporate the words "Victory" and "Team", and are identical to the Complainantís trademarks, the only difference being the gTLD suffixes ".com" and ".net" and the lack of spaces between the words. In the view of the Panel these differences are incapable of differentiating the domain names in dispute from the Complainantís trade marks, and the Panel therefore finds that the domain names in dispute are identical to the Complainantís common law "Victory Team" marks. The Panel notes that the Respondents do not argue that the domain names in dispute are not identical or confusingly similar to the Complainantís trade mark.
Accordingly, the Panel finds that Complainant has proven paragraph 4(a)(i) of the Policy.
7.3 The Respondent has no rights or legitimate interests in the Domain Names
As noted, above, the Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name for the reasons set out in paragraph 5.4 above.
Despite the fact that both Respondents submitted a Response, neither Respondent has asserted in the Responses any circumstances which might demonstrate their rights or legitimate interests in the domain names in dispute, although Trond Atle Skarning does claim in his Response that: "Norsk Magedans ForeningÖis legal and the rightfully owner of <victoryteam.com>.
The only evidence before the Panel that any of the circumstances described in paragraph 4(c) of the Policy might apply in this case is that the Complaint refers to a "sport-portal" or web site operated by one or both of the Respondents at the "www.victoryteam.com" URL in June 2000, a print-out of which is annexed to the Complaint. In any event, this URL no longer resolves to a sports web site, but rather to what appears to the Panel to be a Norwegian individualís personal home page. The "www.victoryteam.net" URL resolves to a "File not Found" error page produced by Freeservers.com.
The Respondents have not asserted any rights or legitimate interests in the disputed domain names, and the Panel finds it difficult to conceive of any basis on which the Respondent could assert such rights or legitimate interests in the domain names.
On balance the Panel finds that the Respondents have no rights or legitimate interests in the disputed domain names. Accordingly, the Complainant has proven paragraph 4(a)(ii) of the Policy.
7.4 Domain Name has been registered and is being used in bad faith
The Panel notes that paragraph 4(a)(iii) of the Policy requires both registration in bad faith and use in bad faith. Paragraph 4(b) of the Policy provides:
"The following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith".
As previously discussed, one of the domain names in dispute, <victoryteam.com> does resolve to an active web site, and the Panel is satisfied that one of the Respondents has in the past used it for the "sport-portal" web site referred to in the Complaint. With regard to the second of the disputed domain names, <victoryteam.net>, there is no evidence before the Panel that this domain name has ever been used. However, as previously stated, this domain name resolves to a Freeservers.com error page, which states:
"The page or file your are looking for "http://www.victoryteam.net/index.html" is not here. Possible reasons: You may have spelled the URL incorrectly; This site may have been removed due to a violation of Freeserverís Acceptable Use Policy. This site may have been moved to a different server."
In some cases, the Panel has found that it is unnecessary to consider the "registration" and "use" limbs of this requirement separately, as the "use" element has been found not to require positive action, inaction being within the concept. In this case, the fact that the domain name <victoryteam.net> resolves to the web page described above, and the possibility that a site or page may have been removed due to a violation of Freeserverís Acceptable Use Policy, is sufficient to satisfy the "use" element of this requirement.
Therefore, it is appropriate for the Panel to consider whether the two domain names in dispute have been registered and used by the Respondents in bad faith.
7.5 The Panel accepts the assertions made in the Complaint, in respect of the requirement of paragraph 4(a)(iii) of the Policy, and considers that the Respondents have registered and used the domain name in bad faith. Paragraph 4(b) of the Policy states:
"Öthe following circumstancesÖif found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:Ö
(i) circumstances indicating that you have registered or you have 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 trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name;"
Annex 9 to the Complaint is a letter from Egill Johannes Skarning to the Complainantís representative, Lars Olaf Kanngard, the translation of which states:
"ÖVictoryteam.com has been valuated to $60,000 and Victoryteam.net is being valuated to $30,000, butÖIím willing to sell both the Domain names to a price based on a discount of 60% <victoryteam.com> for $24,000 and <victoryteam.net> for $12,000. The conditions are that this will be conducted without delay (quick deal) and that the sales are conducted via GreatDomains in USA and that the buyer pays all the cost to transfer the namesÖ".
Annex 10 to the Complaint is a copy of a letter from a representative of Jolly Motor International SPA, which, according to the Complainant, is another Offshore power boat racing team which competes against the Complainant, and which states:
"ÖVictoryteam.com and Victoryteam.net whom now end up on our web portal "www.jollymotor.net". We have not given the registrant to these names the approval to redirect these names to our webportal and hope that this letter will assist you in the legally efforts to immediate get the redirection to end."
In the Panelís view, the circumstances shown to exist by the above two communications place this case squarely within paragraph 4(b)(i) of the Policy. The Panel rejects the assertion of Egill Johannes Skarning that the domain names in dispute had been valued at the figures quoted, and for this reason he rejected the offers made by the Complainant. Furthermore, neither Respondent explains why the disputed domain names at one point resolved to a web site operated by a direct competitor of the Complainant.
The only substantive response of the Respondents to the Complainantís contention that the domain names were registered and used in bad faith is to state that the Complainant is the registrant of the domain name <victoryteamdubai.com> which was currently up for sale at GreatDomains.com. Trond Atle Skarning states in his Response:
"The respondent find it hard to be accused of acting in bad faith, when the complainant wants to make as much money as possible by selling his domain names to the highest bidder."
The Panelís investigations into this point revealed that the current registrant of the domain name <victoryteamdubai.com> is an entity named Proconsult, and this web site currently resolves to the Complainantís official web site, at the URL "www.victory-team.com." This is not consistent with the Respondentsí assertion that the Complainant had put this domain name up for sale at GreatDomains.com.
In the Panelís opinion, the Respondents registered the domain names in dispute with the intention of selling them to the Complainant (or a third party) for sums vastly greater than those expended by the Respondents in registering the names or creating any web site or pages at those URLs.
7.6 The Panel is of the view that the domain names in dispute were registered and are or were being used in bad faith by the Respondents at least at the time of the Complaint. Accordingly, the Panel finds that the Complainant has proven paragraph 4(a)(iii) of the Policy.
8.1 The Panel has found that all of the requirements of paragraph 4(a) of the Policy have been proven by the Complainant. Accordingly, and for the purposes of paragraph 3(c) of the Policy, the Panel orders that the domain names <victoryteam.com> and <victoryteam.net> be transferred by Enom and Namesecure to the Complainant.
Philip N. Argy
Dated: March 15, 2002