WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Atlantic Coast of America Corporation Ltd., v. Steven Zaharakis dba Zahara Labs
Case No. D2002-0008
1. The Parties
The Complainant is Atlantic Coast of America Corporation Ltd., an incorporation with limited liability registered at Success Commerce. Bldg. 6B, 251 Hennessy Road, Hong Kong, S.A.R., China, represented by Atlantic Coast plc, The Shareware Village, Colyton, Devon, England.
The Respondent is Steven Zaharakis dba Zahara Labs, 222 East 44th Street, New York, NY, United States of America.
Respondent is not represented.
2. The Domain Name and Registrar
The domain name with which this dispute is concerned is: <swreg.com>.
The Registrar with which the domain name is currently registered is Register.com, 575 8th Avenue – 11th Floor, New York, NY 10018, United States of America.
3. Procedural History
3.1 The Complaint was filed on January 4, 2002, in hard copy, and electronically on January 11, 2002, with the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center").
3.2 On January 11, 2002, the Registrar verified:
(i) that a copy of the Complaint had been served on it;
(ii) that the domain name is registered with it;
(iii) that the current registrant of the domain name is the Respondent;
(iv) that the Policy applies to the registration of the domain name;
(v) that the domain name is currently in "Active" status;
(vi) that the language of the registration agreement is English;
(vii) Respondent's Administrative Contact is Respondent, and the Technical Contact is Register.Com, Domain Register, 575 8th Avenue, 11th Floor, New York, NY 10018, United States of America.
(viii) No Billing Contact was notified.
(ix) The domain name was created on October 9, 1998.
3.3 On January 15, 2002, all formal requirements for the establishment of the Complaint having been checked by the WIPO Center, the Amended Complaint was found to be in compliance with the applicable ICANN Policy, ICANN Rules ("the Rules") for Uniform Domain Name Dispute Resolution Policy ("the Policy"), and WIPO’s Supplemental Rules. The Panel has checked the file and confirms the WIPO Center's finding of proper compliance with the Rules and establishment of the Complaint.
3.4 On January 15, 2002, the WIPO Center sent the Notification of Complaint and Commencement of Administrative Proceeding as follows:
(i) by courier, by facsimile and by e-mail to Respondent, the Administrative Contact and the Technical Contact;
(ii) by e-mail to the postmaster at the domain name;
3.5 The e-mail and facsimile deliveries appear to have been effected. The Panel is satisfied the responsibility on the Center imposed by Rule 2(a) of the Rules has been met and that Respondent received due notice of the Complaint.
3.6 The Administrative Proceeding commenced on January 15, 2002, and the Response was due on February 4, 2002.
3.7 A Response was filed on February 3, 2002.
3.8 The sole panelist, Desmond J. Ryan, having filed the Statement of Acceptance and Declaration of Impartiality and Independence, the Panel was appointed on February 15, 2002.
4. Factual Background
4.1 The Complaint gives no information as to the activities of the Complainant. By accessing Complainant's website at <www.swreg.org>, the Panel was able to ascertain that Complainant operates an on-line software marketing business including a secure payment registration site which it markets under the trademark SWREG.
4.2 Complainant is the registered proprietor in the United States and the United Kingdom of the following trademarks:
(i) UK Registration No. 2191163 – SWREG – Filed March 8, 1999 in class 9 in respect of "Computer software; computer programmes; Internet store systems; publications in electronic form supplied on-line from data bases or from websites on the Internet; publications and information in electronic format; electronic mail; videos, films, C.D. Roms, tapes, discs, compact discs, computer games and computer game apparatus and instructions". This application was filed in the name of Atlantic Coast plc and was assigned to Complainant on May 22, 2001.
(ii) US Registration No. 2,446,543 - SWREG - Filed March 28, 2000, in class 35 in respect of "Providing on-line retail reselling ordering services in the field of computer software rendered via a means of a global computer network". This registration was filed in the name of Atlantic Coast plc, claiming first use in commerce on December 31, 1987. The registration was assigned to Complainant on June 7, 2001.
(Complaint Annexures 3 and 4).
4.3 Complainant is the owner of the domain name <swreg.org>, first registered by Atlantic Coast plc on January 14, 1999.
4.4 Complainant asserts that: "We purchased the SWREG business from Compuserve in December 1998. During October 1998 Compuserve made it clear that it was looking for a buyer for the business". The Panel assumes that by "we", Complainant is referring to Atlantic Coast plc.
4.5 There has been actual confusion between the domain name and Complainant's domain name <swreg.org>, and Respondent has forwarded on to Complainant, email messages received by it but intended for Complainant.
4.6 In November 2001, there was correspondence between Complainant and Respondent concerning the possible purchase by Respondent of the domain name. There is dispute between the parties as to the details of this correspondence, with Complainant implying that the approach was made by Respondent and Respondent asserting that the approach was made by Complainant. The Panel has no means for resolving this question, but in any event finds it unnecessary to do so.
5. Applicable Dispute
5.1 This dispute is one to which the Policy applies. By registering the domain name, Respondent accepts the dispute resolution policy adopted by the Registrar. The Registrar's current policy set out in its domain name registration agreement is the Policy.
5.2 To succeed in its Complaint, Complainant must show that each of the conditions of paragraph 4(a) of the Policy are satisfied, namely that:
(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 the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
6. The Parties' Contentions
6.1 Complainant contends that the domain name is confusingly similar to its trademark SWREG.
6.2 Complainant further contends that Respondent has "no logical interest in such a domain name and that the name was acquired in bad faith". In support of its contention, Complainant states that "During October 1998 Compuserve made it clear that it was looking for a buyer for its business, and "we believe the respondent purchased the <swreg.com> domain name in the hope that any subsequent purchaser would buy the name off them", and that "We believe that the domain name was acquired as a spoiling tactic to demand money from the subsequent purchaser of the Compuserve <swreg> service".
6.3 Complainant produces no evidence to support these beliefs.
6.4 Respondent produces evidence that a company, Software Register Inc., was incorporated in the State of Pennsylvania on February 10, 1997, that Respondent offers on its web-site <zaharalabs.com>, software under the title "Software Register", and that a company called Unger Software Corporation produces financial analysis and planning software under the name "Methuselah" bearing the words "Version control by Software Register Inc." (Response Annexures 1, 4 and 5). There is no evidence or information in the Response of any connection or association between Software Register Inc. and Respondent save that Unger Software Corporation and Respondent appear to be located at the same physical address at 222 East 44th Street, New York. There is no indication of any use by Respondent of SWREG as a trademark or business name in relation to its dealings or those of Software Register Inc. or Unger Software Corporation.
6.5 Respondent asserts that in response to communications from Complainant it informed Complainant that the domain name was not for sale and that it had likewise rejected offers from "a large German company". Respondent Annex 3 is an e-mail from one <Robert.Dixon@corp.valueweb.com>, stating that <swreg.com> has been hosted at valueweb since October 12, 1998. There is no evidence of operation of a site at the domain name other than a print out dated December 19, 2002, (Complainant Annex 5) which consists of a logo including the word Software Register under which there is printed the words "coming soon".
7. Discussion and Findings
Identical or Confusingly Similar Trademark
7.1 Complainant has established that it has rights in the trademark SWREG both in the United Kingdom and in the USA. The domain name, save for the addition of the domain designation <.com> is identical with the trademark SWREG.
7.2 The Panel therefore finds that the domain name is confusingly similar to a trademark in which Complainant has rights and paragraph 4(a)(i) of the Policy is satisfied.
Rights and Legitimate Interests
7.3 This case is characterised by an extraordinary paucity of information and coherent submission from Complainant, and for that matter, from Respondent also.
7.4 In these proceedings the onus is on Complainant to make out each of the grounds specified in paragraph 4(a) of the Policy. To make a showing that Respondent has no legitimate right or interest in the domain name, Complainant must at least set up a prime facie case and cast upon Respondent an onus of rebuttal.
7.5 All Complainant has done is state an unsupported belief that Respondent purchased the domain name in the hope that any subsequent purchaser of Compuserve's business would buy the name from it. There is nothing on the record to raise any prima facie presumption that Respondent registered the domain name otherwise than in the ordinary course of business,
7.6 The Panel therefore finds that Complainant has failed to discharge the onus upon it of showing that Respondent has no legitimate right or interest in the domain name.
Bad Faith Use and Registration
7.7 Complainant having failed to show absence of Respondent's legitimate right or interest it is unnecessary to consider whether the domain name was registered and is being used in bad faith. However, for the record the Panel notes that Complainant has produced no evidence or coherent argument that Respondent registered or is using the domain name in bad faith. The mere assertions of belief referred to above fall far short of such evidence, and the disputed circumstances of the alleged offer for sale of the domain name provides no support for Complainant's contentions in this respect.
7.8 The Panel therefore finds, where it necessary to do so, that Complainant has failed to show that Respondent has registered or is using the domain name in bad faith.
8.1 The Panel decides and orders that:
(i) The domain name is identical or confusingly similar to a trademark in which Complainant has rights;
(ii) Complainant has failed to establish that Respondent has no rights or legitimate interests in respect of the domain name;
(iii) Complainant has failed to establish that the domain name has been registered and is being used in bad faith;
(iv) The Complaint is dismissed.
Dated: February 26, 2002