WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ETEX Group Société Anonyme, Eternit N.V., Eternit A.G. v. Eternit
Case No: D2002-0090
1. The Parties
The Complainants are ETEX GROUP S. A., Avenue de Tervuren 361, 1150 Brussels, Belgium, and ETERNIT N. V., Kuiermansstraat 1, 1880 Kapelle-op-den-Bos, Belgium and ETERNIT A.G., Ernst Reuter Platz, 8, 10587 Berlin, Germany.
The Respondent is ETERNIT, Servicepoint, P.O. Box 544, St. Petersburg 197046, Russian Federation.
2. The Domain Name and Registrar
The Domain Name is <eternit.com>.
The Registrar of the Domain Name is Internet Names Worldwide (INWW).
3. Procedural History
The Complaint was received by WIPO Arbitration and Mediation Center ("the Center") by email on January 29, 2002 and in hardcopy form on January 31, 2002. The Center has verified that the Complaint satisfies the formal requirements of ICANNís Uniform Domain Name Dispute Resolution Policy ("the Policy"), ICANNís Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), WIPOís Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"), and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.
The Complaint was properly notified in accordance with the Rules, paragraph 2(a). Internet Names Worldwide (INWW) has confirmed that the domain name <eternit.com> ("the Domain Name") was registered through Internet Names Worldwide (INWW) and that Eternit ("the Respondent") is the current registrant. The Registrar has further confirmed that the Policy is applicable to the Domain Name.
On February 27, 2002, the Center notified the Respondent of the Complaint in the usual manner and informed the Respondent inter alia that the last day for sending its Response to the Complainant and to the Center was March 19, 2002.
On March 19, 2002, WIPO received the Response but issued a Notification of Respondent Default on March 20, 2002, (cross communication). The Center issued an Acknowledgement of Receipt of Response on March 20, 2002. There were various exchanges of emails between the Center, the Respondent and the Complainant between March 21 and April 11, 2002, culminating in a request by the Complainant for permission to file a response to the Response. The Panel sees no reason to accede to that request. Had the Panel done so, the Respondent would have had to be given a further opportunity to file a submission. No exceptional circumstances have been drawn to the Panelís attention such as to warrant extending the established procedure.
The Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
No further submissions were received by the Center, as a consequence of which the date scheduled for the issuance of the Panelís Decision was April 30, 2002.
4. Factual Background
The Complainants are members of a Belgian-based international group of companies engaged in the production of goods for the building industry. For the purposes of this Complaint the Complainants treat themselves as being one organization and hereinafter they are referred to together as "the Complainant".
The Complainant is the proprietor of a large number of trade mark registrations around the world for the mark "ETERNIT" in Classes 17 and 19 and mainly for products related to the building industry, but among the mass of registrations disclosed the Panel could find no trace of any registration in Russia, the Respondentís home territory. The Complainant claims and the Respondent does not dispute that the commencement of the Complainantís business dates back nearly 100 years.
The Domain Name was originally registered to the Third Complainant but, in the course of 2001, and by a mistake, the Domain Name registration was allowed to lapse.
On September 6, 2001 the Domain Name was registered in the name of the Respondent.
In the course of November/December 2001, the Complainant telephoned the Respondent at the telephone number given for the Respondent in the WHOIS database and found that it was the telephone number of a lawyer. There appear to have been several conversations, but the Complainant gives no details of what transpired in those telephone conversations.
In November 2001, the promoters of the Respondent took steps to register the Respondent as a limited company in Russia. Also in November 2001, the Respondent filed trade mark applications for the mark ETERNIT in Classes 9, 35, 38, 41 and 42.
The Complaint was filed on January 29, 2002.
On February 13, 2002 the Respondentís lawyer wrote to the Complainantís representative in the following terms:
This message relates to my phone call earlier today concerning the Domain Name eternit.com.
We would like once again express our bewilderment that neither you nor your client never has contacted our client unconcealed.
Beginning from November 2001, our client has received numerous abusive phone calls. Its representative informed the enquiring parties about our clientís legitimate rights and interest in the brand "Eternit". It is more than strange that as it found out, you were that enquiring party or at least among the enquiring parties which did not disclose themselves during phone conversations. You obviously knew about our clientís rights and legitimate interests in the domain name eternit.com.
Eternit is our clientís trade mark having lawful protection in Russian Federation since November 20, 2001, covering international classes 9, 35, 38, 41 and 42. Eternit is also a trade name and a company name which is being formed since November 2001.
We urge you to seriously reconsider your position, withdraw the WIPO complaint and start negotiating on settlement. Please inform us about the name and contact details of the representative who is authorized to make decisions on all the above matters.
You can contact us at the numbers below.
5. Partiesí Contentions
The Complainant contends and it is not in dispute that the Domain Name is identical to the Complainantís trade mark.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. It claims that there is no real business conducted by the Respondent under that name.
The Complainant contends that the fame of the ETERNIT trade mark is such that the Respondent must have known of it when registering the Domain Name. It further contends that the Respondent registered the Domain Name in order to prevent the Complainant from reflecting its trade mark in a corresponding domain name and with a view to selling the Domain Name to the Complainant. In support of this the Complainant exhibits a page from the web site at <eternit.com> indicating, so the Complainant says, that the Domain Name is for sale.
At that web page, under the caption in English, "For Sale", there is a passage (also in English) reading as follows:
"The owners of this URL and web site are looking for a business partner/investor wishing to take part in the development of http://www.eternit.com Domain Name and website. If you are interested please fill out the form". The form referred to does not appear to be exhibited unless it is the section of the website below that passage, which is worded in Russian and has not been translated for the Panel.
For completeness it should be mentioned that the Complaint contains a sentence reading "the Complainant does not have complementary information about defendant (sic) as he failed to reply to the later requests therefore". However, the Panel is unable to assess the significance of those failed requests because the Complainant has provided no details of them.
The Respondent, as a formal organization, was not in existence at the date of registration of the Domain Name. The Respondent asserts that in the middle of 2001, a group of professionals engaged in the field of computer networks decided to set up their own business in Russia under the brand ETERNIT. They selected the name ETERNIT because it was close to the word meaning "Eternity", it was close to "Ethernet" and they also wanted the name to go beyond their professional sphere and in particular they wanted it "to be attune with contemporary French music they love much". The Respondent refers to various French singers who sing about "LíEternite".
The Respondent states that in or before August 2001, the group consulted patent agents who cleared the name for them. Also in August 2001, the Respondent (still an informal body but working as a consultant) contacted its customers and "started preparations for registering its intellectual property rights". They tried registering the domain name in August 2001, but for some reason unknown to them they were unable to do so. They eventually succeeded on September 6, 2001.
In November 2001, they (through an agent) filed the relevant documents with the registrar of companies in St Petersburg for registration of Eternit Limited as a company. They also applied for registration of the trade mark ETERNIT in Classes 9, 35, 38, 41 and 42, the applications being filed on their behalf by a patent agent.
The Respondent has a website and describes it in the following terms:
"At present the content of the domain in question consists of a Ďjust a little bit of this and of thatí Ė ETERNAL themes i.e. entertainment, relations and contacts. Though the most important is the search for and invitation of business partners to develop business as well as investments. In the website there is not any word relating to construction goods or construction industry".
The Respondent accepts that the Domain Name is identical to the Complainantís trade mark but says that there is no likelihood of confusion as the parties operate in wholly different business areas.
The Respondent denies that it has no rights or legitimate interests in respect of the Domain Name. It contends that all the circumstances set out in paragraph 4(c) of the Policy apply to this case.
The Respondent contends that prior to notification of the Complaint it had made preparations to use the Domain Name in relation to a bona fide offering of services in the area of creation and technical support of Ethernet local networks. It contends that it is already doing business as ETERNIT in that area Ė had it been otherwise it would not have spent money (US $1500) on the trade mark applications. It says that it is using the Domain Name in good faith neither aiming to mislead visitors to the website for commercial purposes nor with a view to discrediting the Complainantís trademark.
As to the allegation that the Respondent registered the Domain Name with a view to selling it, the Respondent points out that the Domain Name has never been for sale and that the web page to which the Complainant refers does not offer the Domain Name for sale. The Respondent points out that the web page simply invites the interest of investors.
To the extent that the Complainant is seeking to make any point in relation to the changing of the Respondentís contact details in December/January the Respondent says that those changes were made at least in part because the original contact was receiving a large number of abusive telephone calls. While the Respondent does not expressly say in the Response that those telephone calls were made by or on behalf of the Complainant, the inference is that those calls were made by or on behalf of the Complainant. On February 13, 2002 the Respondentís representative wrote to the Complainantís representative and said as much (the letter is quoted in full above).
As to bad faith the Respondent says that it has never heard of the Complainant. The Respondent points out that there is no evidence to suggest that the Complainant has a trade mark registration or any reputation or goodwill in Russia.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith.
Identical or Confusingly Similar
It is not in dispute that the Domain Name is identical to a trade mark in which the Complainant has rights and the Panel so finds.
Respondentís Rights or Legitimate Interests
The Complainantís case put at its strongest is simply that by a mistake it allowed its Domain Name registration to lapse and the Respondent, an internet entrepreneur, snapped up the registration for no purpose other than to block the Complainant and sell the Domain Name to the Complainant.
The timing fits into this scenario and by its own account the Respondent is expert in internet related business.
The Complainantís case is at the weak end of the scale, the Complainant not having made any attempt to show how or why the Respondent should necessarily have heard of the Complainant. While the Complainantís trade mark might be very well known in the building industry, the Complainant has put nothing before the Panel to demonstrate wider recognition, still less recognition in Russia.
The Respondent has sought to answer the Complaint. If the Respondentís story is true it represents a complete answer to the complaint. However, it is notable that the Respondent has produced in evidence no contemporary documentation whatever substantiating its claims as to the preparatory steps it was taking prior to November 2001.
While neither party specifies precisely when the Complainant first approached the Respondent it is the fact that the Respondentís activity in applying for company names and trade marks all commenced in the same month in which the Complainant was telephoning the Respondent (see the Respondentís letter of February 13, 2002).
The Panel observes that the Respondent ought to have been able to produce documentary evidence of its alleged dealings with (a) the patent agents conducting the clearance work in August 2001, and, of course, (b) its alleged customers.
The Panel has found this a difficult case to resolve and primarily because neither party has done all that it could have done to substantiate its case. In cases of this kind, complainants are always in something of a difficulty proving what the respondent had in mind when registering the Domain Name. However, the very least that the Complainant could have done here was to produce support for the proposition that a Russian engaged in the field of internet related matters should necessarily have heard of the Complainant or its trade mark.
While the Panel has some doubts as to the credibility of the Respondentís story, it appears to be a fact that the Respondent has formed a limited company under the name Eternit Limited and appears to have applied to register the name as a trade name. In the Panelís experience it is unusual for cybersquatters to go to these lengths in order to preserve a domain name.
The burden of proof is on the Complainant.
In the circumstances, on balance the Panel finds that the Complainant has failed to prove that the Respondent does not have rights or legitimate interests in respect of the Domain Name specifically the Complainant has failed to prove that the Respondent was not making preparations to make legitimate use of the Domain Name prior to the Respondent receiving notice of the Complainantís objections within the meaning of paragraph 4(c) of the Policy.
For the same reasons the Panel finds that the Complainant has failed to prove that the Domain Name was registered in bad faith and is being used in bad faith.
Given the Panelís uncertainty as to the credibility of the Respondentís story, the Panel observes that if the Complainant can adduce evidence to show that the Respondent has filed false evidence in defence of this Complaint, it is conceivable that a future panel might entertain a re-filed complaint, fraud being a factor which can support the re-filing of a complaint.
The complaint is dismissed.
Dated: April 30, 2002