WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Netomat, Inc. v. Joachim Schaub
Case No. D2003-0402
1. The Parties
The Complainant is Netomat, Inc., of New York, New York, United States of America, represented by Davis & Gilbert LLP of United States of America.
The Respondent is Joachim Schaub, of Stolberg, Germany.
2. The Domain Name and Registrar
The disputed domain name <netomat.org> is registered with Go Daddy Software, Inc ("Go Daddy").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 26, 2003. On May 26, 2003, the Center transmitted by email to Go Daddy a request for registrar verification in connection with the domain name at issue. On May 28, 2003, Go Daddy transmitted by email to the Center its verification response confirming that the Respondent was listed as the registrant and, also stating that "Joachim Schaub" was listed as the registrant of the disputed domain name (the Complainantís whois search shows the registrant simply as "Schaub" but the technical and administrative contact is shown as Joachim Schaub). Go Daddy also provided the contact details for the administrative, billing, and technical contacts. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 6, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was June 26, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on June 30, 2003.
The Center invited Antony Gold to be the sole panelist in this matter and, following submission by him of a Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7, he was appointed sole panelist on July 9, 2003.
4. Factual Background
The Complainant asserted, and provided evidence in support of the following facts. Unless otherwise specified, the Administrative Panel finds these facts established.
The Complainant started business in either 2000 or 2001 (its evidence on the exact date it began business is unclear). It has an active presence on the Internet, and has registered two domain names incorporating the word NETOMAT, namely <netomat.com> - registered on September 24, 1998, and <netomat.net>, registered on June 15, 1999. How the dates of registration pre-date the date on which the Complainant started business is not explained in the Complaint.
The Complainant has developed an online multimedia product called NETOMAT. It is also the proprietor of a US registered trade mark (registration number 2642010) for NETOMAT which is registered in respect of, amongst other matters, providing access to online downloadable software for use in browsing the Internet and providing a search engine for obtaining data on the Internet. The Complainantís trade mark was applied for on April 5, 2001, and registered on October 29, 2002.
The Respondent is an individual based in Germany. The Respondent registered <netomat.org> on December 26, 2002. The Complainant has not given the Respondent permission to use the NETOMAT mark.
5. Partiesí Contentions
The Complainant is required to prove that each of the three elements specified in paragraph 4(a) of the Policy are applicable to the domain name which is the subject of this dispute. Specifically, the Complainant must establish: -
(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 interests in the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
In relation to paragraph 4(a)(i) of the Policy, the Complainant contends that the domain name is virtually identical and confusingly similar to the Complainantís registered trade mark NETOMAT. This trade mark was registered on October 29, 2002, but has been used by the Complainant since 2000. The Complainant also contends that it has expended significant amounts of time and expense developing and promoting its services under its registered trade mark, and as a result, it says that all goodwill attaching to the trade mark NETOMAT is associated with the Complainant, and that the public associates the trade mark exclusively with the Complainant.
In relation to paragraph 4(a)(ii) of the Policy, the Complainant submits that the web site maintained by the Respondent, and to which the domain name forwards, makes no use or mention of the NETOMAT trade mark, and that the site contains pornographic material. The Respondent registered that domain name less than two months after the Complainantís NETOMAT trade mark proceeded to registration. The Complainant contends that the Respondent has never been commonly known by, or associated with, the trade mark, either before or after his registration of the domain name. The Complainant asserts that it has no association with the Respondent and has not authorised the Respondent to use the trade mark.
In relation to paragraph 4(a)(iii) of the Policy, the Complainant submits that by registering the domain name shortly after the Complainant registered its trade mark, the Respondent is preventing the Complainant from reflecting its trade mark in a corresponding domain name under the .org top level domain. The Complainant contends that the domain name is being used by the Respondent to intentionally deceive and confuse the Complainantís current and potential customers, and Internet users in general, who may be searching for the Complainantís web site. The Complainant submits that the Respondent is using bad faith practices to take advantage of the Complainantís public trust and to divert Internet traffic to the Respondentís pornographic affiliates for its commercial gain. The Complainant asserts that the Respondentís actions abuse the good name of the Complainant, damage its reputation and disrupt its business, which has an adverse effect on Internet users and the Complainant.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The domain name in issue is <netomat.org>. The relevant part of this domain name is "netomat". The Panelist finds that this part of the domain name is identical to the Complainantís US trade mark and, it being usual to ignore the top level designation comprised within a domain name, the Panelist also finds that the whole of the domain name is identical to the Complainantís trade mark. The Complainant has adduced evidence, which confirms that the trade mark was registered on October 29, 2002, and that the domain name which is the subject of these proceedings was registered by the Respondent on December 26, 2002. Accordingly, it is established that the Complainant has trade mark rights that pre-date the registration of the domain name. Since the trade mark on which the Complainant relies is identical to the domain name, the Complainant has established that it has rights in the word NETOMAT.
It is noted that the Complainantís evidence adduced to bolster its assertions under paragraph 4(a)(i) of the Policy is deficient in a number of respects. By way of example, the Complainant has sought to argue that all goodwill associated with its NETOMAT trade mark properly belongs to it, and that the public associates the trade mark solely with the Complainant. There is no credible evidence adduced to support this assertion.
B. Rights or Legitimate Interests
The Complainant refers to its web site at <netomat.com> and <netomat.net> through which it supplies NETOMAT branded goods and services, in support of its submissions under paragraph 4(a)(ii) of the Policy. The Panelist does not consider the Complainant is required to establish its own legitimate interests in the domain name under this part of the Policy. These arguments are more relevant to paragraph 4(a)(i) of the Policy.
The Complainant also refers to the pornographic content of the Respondentís web site, citing this as evidence of the Respondentís lack of rights or legitimate interest in the name. This content is considered further below, as the Panelist considers this to be more relevant to the question of the Respondentís bad faith registration and use.
The Complainant states that there is no indication that the Respondent has ever been commonly known as, or associated with, the Complainantís trade mark. It claims that the domain name is being used in a confusing and deceptive manner to mislead Internet users searching for the Complainantís web site. Save for a single screen shot revealing pornographic content at the web site accessible through the domain name on a single date, the Complainant has not provided any evidence in support of this. However, there is no evidence to suggest that the Respondent has any legitimate interest in the domain name and the Respondent has not taken up the opportunity to seek to rebut the Complainantís assertions.
Paragraph 4(c) of the Policy contains a number of circumstances, which shall constitute evidence of the Respondentís rights to, and legitimate interests in, the domain name. These include making demonstrable preparations to use the domain name in connection with a bona fide offering of goods and services, and making legitimate non-commercial or fair use of the domain name without intent for commercial gain. As the Respondent has not contested any of the Complainantís allegations and there is no evidence to suggest that any of the circumstances set out in paragraph 4(c) might be applicable, the Administrative Panel finds that the Complainant satisfies paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraphs 4(b)(i) to (iv) of the Policy set out a non-exhaustive list of circumstances which, if found to be present, may constitute evidence of registration and use in bad faith. These include circumstances indicating that the Respondent has acquired the domain name primarily for the purpose of selling it to the Complainant trade mark owner, registering the domain name in order to prevent a trade mark owner from reflecting the mark in a corresponding domain name (provided that the registrant has engaged in a pattern of such conduct), registering the domain name primarily to disrupt a competitorís business, and intentionally attempting to attract, for commercial gain, Internet users to the registrantís web site.
The Respondentís failure to submit a Response is of relevance to paragraph 4(b)(iii) of the Policy. Paragraph 14 of the Rules states that the Administrative Panel may draw such inferences from the failure of a party to comply with any provision under the Rules, as it considers appropriate. Paragraph 5(e) of the Rules requires the Panel, in these circumstances, to decide the dispute based upon the Complaint. Accordingly, the Administrative Panel still has the responsibility of determining which of the Complainantís assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts; see Reuters Limited v. Global Net 2000, Inc WIPO Case No. D2000-0441 (July 13, 2000).
The Complainant has made a number of assertions about the Respondentís activities, which it claims are relevant to the registration and use of the domain name in bad faith. The Administrative Panel considers that not all of these assertions have been proved as a matter of fact. In particular, it is of note that the Complainantís evidence of the alleged use to which the Respondent has put the name, which it cites in support of its arguments under paragraph 4(a)(ii) of the Policy, is unsatisfactory. The Complainant alleges that the web page to which the disputed domain name resolves contains a number of links to various pornographic web sites, the activation of which (according to the Complainant) can "mouse-trap" an Internet user in a series of adult-content pop-up windows.
The evidence annexed to the Complaint, purportedly in support of this claim, is a single screen shot of the Respondentís web site containing pornographic material. No evidence is provided in support of the Complainantís contention in relation to the series of links, which it claims are offered through the site, nor as to any changes in the appearance of the Respondentís site. Further, it is apparent from the single screen shot that the page has forwarded to a site called "www.milfsearch.com", the name of which appears at the top of the screen shot. According to the Complainant, the screen shot is dated May 21, 2003, the day before the date on which the Complaint is signed. The Panelist has noted that the domain name currently resolves to a blank page, and that the siteís pornographic content appears to have been removed. It would have been desirable for the Complainant to have been able to explain changes to the siteís appearance, and to have explained the inconsistency between the way in which the Respondentís site was described in the Complaint, and the appearance of the site in its own evidence.
The Complainant states that the Respondent registered the domain name shortly after the Complainantís US trade mark proceeded to registration and that the Respondentís registration of the domain name is preventing the Complainant from reflecting its trade mark in a corresponding domain name under the top-level .org domain. The Panelist infers from the Complainantís choice of wording that it is seeking to establish that the circumstances outlined in paragraph 4(b)(ii) of the Policy are applicable. However, in order for this to be established, it would be necessary for the Complainant to show that the Respondent had engaged in a pattern of such conduct, and the Panelist finds no evidence to suggest that this is the case.
It is also noted that no attempt appears to have been made by the Respondent to sell the domain name to the Complainant or one of its competitors, either for valuable consideration in excess of its out of pocket expenses or at all, as set out in paragraph 4(b) (i) of the Policy. It is also noted that the Complainant does not appear to have made any attempts at settlement of this matter with the Respondent prior to instituting these proceedings, since no evidence of any communication between the Complainant and the Respondent has been produced. Similarly, there is nothing to suggest that the Respondent is a competitor of the Complainant, as envisaged by paragraph 4(b)(iii).
The Complainant goes on to suggest that the domain name is being used by the Respondent to intentionally deceive and confuse Netomatís current and potential customers, and Internet users, who may be searching for the web site that corresponds to the Complainantís trade mark. But no evidence of actual instances of confusion has been provided.
Whilst it is acknowledged that the circumstances set out in paragraph 4(b) are a list of non-exhaustive factors that may constitute evidence of bad faith registration, it would have assisted the Complainantís case if it had more specifically asserted the specific circumstances constituting evidence of bad faith on which it was seeking to rely, and provided further evidence in support of those contentions by reference to the criteria set out in paragraph 4(b).
Turning finally, and specifically, to sub-paragraph 4(b)(iv) of the Policy, the thrust of this sub-paragraph is that bad faith can be evidenced if the Respondentís use of the domain name has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation or endorsement of the website or location or a product or service of its website or location.
In order for the criteria contained in paragraph 4(b)(iv) to be relevant, the Respondent must have had knowledge of the Complainantís rights. However, the Complainant has a US trade mark, and the Respondent is an individual based in Germany. Little evidence has been adduced by the Complainant of use of the mark outside of the US. Similarly, the Complainant has provided limited promotional material in support of its claim that it owns goodwill (and, presumably, common law rights) in relation to its trade mark for NETOMAT, and that the public associates this trade mark with the Complainant. Such evidence as has been filed does not support the Complainantís contention that the public associates the word NETOMAT solely with the Complainant nor does it attempt to establish that a German individual would have been aware of such goodwill.
Further, the Complainant seeks to rely upon its continued public use of the trade mark since 2000 in order to establish its rights in the name NETOMAT. It is noted that the trade mark on which the Complainant relies was filed in 2001, the same year in which (according to the Complainantís own promotional material appended to the Complaint) the Complainant company was launched. The Complaint does not provide any evidence in support of the use of the mark prior to the Complainantís incorporation in order to substantiate its claim that the Complainant has continually used the mark in connection with its business since 2000. The Complainant fails to distinguish between the commercial use of the name NETOMAT by the Complainant (presumably since its incorporation in 2001) and the earlier use of the name, even though it asserts that goodwill has attached to that name since 2000.
Nonetheless, having considered the evidence filed by the Complainant, the Panelist concludes that the Complainant has satisfied the bad faith requirement. The Panelist finds, in all the circumstances, in particular the Respondentís registration of the domain name less than two months after the registration of the Complainantís trade mark, the evidence, albeit limited, provided by the Complainant to suggest that the site to which the domain name resolved contained, at some point, pornographic content (with no discernible or justified connection to the Complainant) and the Respondentís failure to challenge the Complainantís assertions that the domain name was registered and is being used in bad faith.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <netomat.org> be transferred to the Complainant.
Dated: July 21, 2003