WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Logitech International S.A. and Logitech, Inc. v. Registrant Anticybersquatting@Mail.com 987654321
Case No. D2002-0863
1. The Parties
The Complainants in this administrative proceeding are Logitech International S.A., a company incorporated in Switzerland of CH 1143 Apples, Switzerland ("1st Complainant") and Logitech, Inc., a company incorporated in California of Fremont, CA 94555-3614, United States of America. ("2nd Complainant").
The Complainantsí authorized representative is Baker & McKenzie, Solicitors, of 14th Floor, Hutchison House, 10 Harcourt Road, Hong Kong, SAR of China.
The name of the Respondent in this proceeding is said to be "Registrant email@example.com 987654321" of Hong Kong 852, SAR of China.
2. The Domain Name and Registrar
The domain name in issue is <wingmangamers.com> ("the Domain Name").
The Registrar of the Domain Name is OnlineNic, Inc. (d.b.a. China-Channel.com), of 7th Floor, Guo Mao Building, Hu Bin Nan Lu, Xiamen, The Peopleís Republic of China ("OnlineNic").
3. Procedural History
The WIPO Arbitration and Mediation Center ("the Center") received on September 13, 2002, an e-mail version of the Complaint and on September 16, 2002, hard copies of the Complaint and accompanying documents. The Center verified that the Amended Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"). The Complainant made the required payment to the Center. On September 23, 2002, the Center formally notified the Respondent that this administrative proceeding had been commenced, and that date is the formal date of the commencement of this administrative proceeding.
On September 13, 2002, the Center transmitted via e-mail a request for registrar verification in connection with this case. On September 17, 2002, OnlineNic transmitted via e-mail to the Center its Verification Response, stating that the registrant is "Registrant firstname.lastname@example.org 987654321" of 31/F, Dotcom House, Admiralty HK, Hong Kong 852 and that the Administrative and Technical Contacts are "Administrator anticybersquatting@mail .com 987654321" and the Billing Contact is "Registrant Anticybersquatting@mail.com 987654321".
No Response has been filed by the Respondent. The Center sent notification of the Complaint to the Respondent by e-mail to the e-mail addresses provided by OnlineNic. The notification to the Respondent at the one address appears to have been received, but the second address was described as having "transient non-fatal errors" and that connection was "refused by wingmangamers.com". A package sent to the Respondentís address via FedEx courier was returned to the Center stating as the reason for its return "Incorrect address". It is, of course, the Respondentís responsibility to provide accurate addresses Ė so far as the Center is concerned, it complied with paragraph 2(a) of the Rules. Notification of Respondent Default was sent on October 15, 2002, and appears to have been successfully transmitted to the Respondent.
On October 18, 2002, this Panelist was appointed by the Center. The Panelist has filed a Statement of Acceptance and Declaration of Impartiality, and his decision is scheduled to be forwarded to the Center by November 1, 2002.
4. Factual Background
(a) The 1st Complainant is the registered proprietor of the following trademark in Hong Kong:
(b) The 2nd Complainant is the registered proprietor of the following trademarks in the U.S.A.:
(c) The Domain Name was registered on February 17, 2002.
5. Partiesí Contentions
The Complainants assert, inter alia, as follows:
(a) The Complainants are international market leaders in the design, manufacturing and marketing of human interface devices (and supporting software), which are products that link people to the Internet. The Complainantsí interface devices include input and point devices (such as mice, trackballs, touch pads and keyboards), multimedia speakers, Internet video cameras, and gaming accessories.
(b) The Complainantsí products are sold and promoted under and by reference to brands including the WINGMAN mark for gaming accessories, and its customers include top-tier PC manufacturers. The Complainantsí WINGMAN gaming accessories which include joysticks, game pads, racing systems and mice generated US$34.6 million of the Complainantsí revenue in 2001. The Complainants enjoy a strong and growing brand presence in more than 65,000 traditional retail outlets located in over 100 countries. As a result of advertising and promotion, the Complainantsí brands (including WINGMAN) have come to symbolise goodwill of enormous value. Around 3% of the Complainantsí total revenue is dedicated to advertising WINGMAN products.
(c) The Logitech group of companies was founded in 1981. Its global headquarters is in California, U.S.A. and the Group also maintains regional headquarters in Switzerland, Taiwan and Hong Kong (where the Respondent is based). The Complainants have manufacturing facilities in Asia and offices in major cities in North America, Europe and Asia Pacific. The 1st Complainant is a Swiss public company traded on the Nasdaq National Market System and in Switzerland . The Complainantsí operations have grown substantially, now employing around 4,500 people worldwide.
(d) The Complainants achieved worldwide sales of US$943.5 million in the financial year ending March 2002, representing a 23.9% growth in sales at a time when most PC-related companies are experiencing a decrease in revenue.
(e) Prior to May 8, 2002, the registrant of the Domain Name was "registrant email@example.com 987654321" ("Previous Registrant"). The Complainants verily believe, for reasons stated in paragraph (h) below, that the Respondent and the Previous Registrant are in collusion, if not one and the same.
(f) The Complainants had themselves previously registered the Domain Name in March 2000, and ran a website at "www.wingmangamers.com" during the period of registration. On March 19, 2002, the Complainantsí Director of Internet Marketing tried to renew the registration only to discover that it had been registered by the Previous Registrant.
(g) The Respondentís website (addressed by the Domain Name) appears inactive. Visitors to the website are automatically redirected to a search site at "domainlanding.targetwords.com". The website was also inactive while registered to the Previous Registrant, with visitors being redirected to an Internet service providerís website at "www.linksponsor.com".
(h) The Complainantsí solicitors first attempted to contact the Previous Registrant of the Domain Name. However their inquiries revealed that the Previous Registrant and the Respondent are not proper legal entities, and their registration details in respect of the Domain Name are fictitious. A summary of the enquiries made follows:
(1) Searches of the public register of company names under Registrantkids@m-a-i-l.com and firstname.lastname@example.org on April 2, 2002, under email@example.com on July 17, 2002; and under ĎRegistrant firstname.lastname@example.org 987654321í on September 18, 2002, revealed that no companies by these names are registered in Hong Kong. The Companies Registry does not provide search result extracts where there is no registration.
(2) Searches of the Business Registration Office register on April 2, 2002, July 17, 2002, and September 18, 2002, indicated that no businesses by the names of the Previous Registrant and the Respondent are registered in Hong Kong.
(3) Searches of telephone directories in Hong Kong on July 16, 2002, and September 18, 2002, indicated that there are no telephone listings for the Respondent and the Previous Registrant.
(4) The Complainantsí solicitors sent the Previous Registrant a cease and desist letter by registered post on April 23, 2002, requesting among other things, that the Previous Registrant immediately cease the use of Complainantsí WINGMAN mark in any form.
(5) The Previous Registrant did not respond to the said letter within the time stipulated in that letter or at all. The cease and desist letter was subsequently returned to the Complainantsí solicitors by Hong Kong Post, with a notation on the envelope that the "Dotcom House" address, which is shared by the Respondent, did not exist.
(6) The Complainantsí solicitors subsequently made several unfruitful attempts to contact the Previous Registrant by email at email@example.com. A cease and desist letter was emailed on April 26, 2002. On May 8, 2002, the Complainantsí solicitors received an email from a person at "Mickey Rourke [firstname.lastname@example.org]" (the same email alias for the Respondent), requesting that their original email be resent, and stating that the email address, email@example.com, was "dead". The Complainantsí solicitors resent their cease and desist letter to "Mickey Rourke [firstname.lastname@example.org]" that same day and then received an email the next day requesting that the letter be resent again. The Complainantsí solicitors complied with the further request, but received an "undeliverable" message from the System Administrator.
As noted above, no Response has been filed.
Before embarking on a discussion of the Complainantsí case, the Panel wishes to draw attention to the failure of the Respondent (and the Previous Registrant) to comply with the terms of the OnlineNic Registration Agreement. Clause 6 of that Agreement specifically requires, as part of the registration process that a would-be registrant provides certain information and updates that information. To quote from Clause 6:-
"This information includes (1) your full name, postal address, e-mail address voice telephone number, and fax number if available; (2) the name of an authorized person for contact purposes in the case of a registrant that is an organization, association, or corporation; (3) Ö".
(Similar details to those set out in (1) are also required for the Technical, Administrative and Zone Contacts).
The Respondent in this case is clearly in breach of Clause 6(1) by (i) failing to identify any legal person as registrant, (whether human or some form of corporate body), (ii) providing a fictitious address, and (iii) failing to provide an e-mail address, a voice telephone number and a fax number if available.
Clause 6 of the Registration Agreement also includes the following:-
"You acknowledge that willfully providing inaccurate information or willfully failing to update information promptly will constitute a material breach of this Agreement and will be a basis for cancellation of your domain name."
Furthermore, paragraph 3 of the ICANN Policy provides, in its final sentence, the following:-
"We may also cancel, transfer or otherwise make changes to a domain name registration in accordance with the terms of your Registration Agreement or other legal requirements."
While one can understand why Registrars may not as a practical matter be in a position to cancel or transfer domain names, the registrants of which are in material breach of their registration agreement, without the prior institution of administrative proceedings under the Policy, in the Panelistís opinion, the existence of such a material breach places a heavy onus on a registrant to justify his, her or its conduct under the Policy.
Nevertheless, under the Policy the onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the policy, as follows:
(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 respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
As to element (i), the Domain Name adds the word "gamers" to the Trademark. The Trademark is, on the evidence put forward by the Complainants, well-known in relation to accessories for use in playing computer games. In those circumstances, members of the public who use the Complainantsí products bearing the Trademark will inevitably be confused into believing that the Domain Name has been set up for WINGMAN game players. The Panelist is satisfied that the Domain Name is confusingly similar to the Trademark.
As to element (ii) of paragraph 4(a) of the ICANN Policy, the Respondent has done nothing to demonstrate that he, she or it has any rights or legitimate interests in the Domain Name. There is nothing to suggest that any of the circumstances mentioned in paragraph 4(c) of the ICANN Policy apply (i.e. before notice of the dispute preparation to use the Domain Name, being commonly known by the Domain Name or making a legitimate non-commercial or fair use of the Domain Name). The facts put forward by the Complainant suggest that the Respondent's interest in the Domain Name was primarily to snap up the Domain Name, the original registration of which had inadvertently been allowed by the Complainants to lapse. In the absence of any justification from the Respondent of his activities in relation to the Domain Name, the Panelist concludes that the Complainant has established element (ii).
So far as element (iii) is concerned it is sufficient that the Complainant demonstrates that one of the four circumstances mentioned in paragraph 4(b) of the ICANN Policy applies. In the present proceeding, however, none of those four circumstances reflects the limited activity of the Respondent. However, those circumstances do not constitute an exhaustive list of instances of registration and use in bad faith.
The Domain Name was in the Panelistís opinion, registered in bad faith by the Previous Registrant (whoever he, she or it may have been) by failing to state a genuine name and address. The Panelist also considers the Previous Registrant registered the Domain Name in bad faith, in that he, she or it being based in Hong Kong knew or ought to have known of the Complainants and more particularly of the Trademark.
In this proceeding, as in many earlier decisions under the UDRP, the Respondent has made no active use of the Domain Name. However, the facts of this case closely parallel an earlier decision, Telstra Corporation Limited v. Nuclear Marshmallows (WIPO Case No. D2000-0003), where the Panelist held that the Respondentís passive use of the domain name constituted use in bad faith within the requirement of paragraph 4(a)(iii) of the Policy. In the language used by the Panelist in the Telstra case, the following circumstances lead to the same conclusion of use in bad faith in the present proceeding:-
(i) the Complainantsí trademark has a strong reputation and is widely known, as evidenced by its substantial use in Hong Kong and in other countries;
(ii) the Respondent has provided no evidence whatsoever of any actual contemplated good faith use by he, she or it of the Domain Name;
(iii) The Respondent has taken active steps to conceal his, her or its true identity, by operating under a name that is not a registered business name;
(iv) The Respondent has actively provided, and failed to correct, false contact details, in breach of the registration agreement, and
(v) Taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active us of the Domain Name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainantsí rights under trademark law.
The Panelist therefore concludes that the Domain Name was registered and has been used in bad faith.
In the light of the findings in paragraph 6 above, the Panelist concludes that:-
- the domain name <wingmangamers.com> is confusingly similar to the trademark WINGMAN of the Complainants;
- the Respondent has no rights or legitimate interests in the domain name;
- the domain name has been registered and is being used in bad faith.
Accordingly, the Panelist orders that the Domain Name <wingmangamers.com> be transferred to the 1st Complainant, Logitech International S.A.
Dated: October 30, 2002