WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Henning Mediation & Arbitration Service Inc. and eNeutral Inc. v. Corblet Corporation

Case No. D2003-0441

 

1. The Parties

The Complainants are Henning Mediation & Arbitration Service Inc. and its subsidiary eNeutral Inc., both being companies registered in Atlanta, Georgia, United States of America. The Complainants are represented by Thomas, Kayden, Horstemeyer & Risley, LLP of Atlanta, Georgia.

The Respondent is Corblet Corporation, a company registered in Palm Beach, Florida, United States of America.

 

2. The Domain Name and Registrar

The domain name at issue in this proceeding is <eneutral.com>. The Registrar is Network Solutions, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 6, 2003. On June 10, 2003, the Center transmitted by email to Network Solutions, Inc. a request for registrar verification in connection with the domain name at issue. On June 16, 2003, Network Solutions, Inc. transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant of the disputed domain name and providing the contact details for the administrative, billing, and technical contacts. The Center has verified that the Complaint satisfies 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 17, 2003. In accordance with the Rules, paragraph 5(a), the due date for the Response was July 7, 2003. The Response was filed with the Center on July 8, 2003.

The Center appointed D. Brian King as the sole panelist in this matter on July 15, 2003. The Panel finds that it was properly constituted. The undersigned Sole Panelist has submitted a Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

The facts relevant to the present matter are set out in the Complaint. Considering the evidence attached thereto, and the fact that the Response does not contest most of the allegations in the Complaint, the Panel finds the following facts to have been established.

Complainant Henning Mediation & Arbitration Service Inc., by itself and through its subsidiary eNeutral Inc. (collectively "Henning" or "Complainant"), provides dispute resolution services in the State of Georgia and internationally (see Exhibit A to Complaint, para. 6). Henning has registered the mark ENEUTRAL with the United States Patent and Trademark Office. Henning applied for registration on August 18, 2000, and registration was granted on January 29, 2002 (see Annex 4 of Exhibit A to Complaint). The evidence indicates that Henning began using the ENEUTRAL mark in January 1999, and that it has been using the mark in interstate commerce since approximately July 2001 (see id.).

In order to provide on-line dispute resolution services, Henning created a website in the second half of 2000, with the assistance of the Respondent, which website was to use the domain name <eneutral.com>. The Respondent was to provide a server to host Henningís website under this domain name (see Exhibit A to Complaint, para. 9).

In October 2001, Henning applied to register the domain name <eneutral.com>. At that time, a dispute appears to have arisen between the parties concerning the manner in which the domain name would be registered. On October 15, 2001, the registration was amended to list Henning as the registrant and eNeutral personnel as the administrative and billing contacts (see Annexes 7 and 8 of Exhibit A to Complaint).

However, in about December 2001, registration of the domain name was transferred to the Respondent (see Annex 9 of Exhibit A to Complaint). Henning contends that this occurred without its authorization. On April 9, 2003, Henning wrote to the Respondent and demanded that the domain name be re-registered to Henning (see Annex 10 of Exhibit A to Complaint; para. 13 of Exhibit A). The Respondent failed to transfer the domain name to Henning at that time.

The Respondent did not file a Response in these proceedings by the deadline of July 7, 2003. However, on July 8, 2003, the President of Corblet Corporation, Robert Gibson, sent a communication to the Center, which reads as follows:

Corblet Corporation is a small web application development company that developed and has hosted eNeutral.com for some years with no payments beyond the first year.

There was no attempt on our part to take title to the domain name. As I tried to make clear to Mr. Henning, it was through errors by his own staff that he lost control over the domain name.

In spite of the caustic nature of the exchange in the attached fax [referencing a fax from himself to Henning of pril 14, 2003], it was never my intention to hold Mr. Henningís domain name hostage. In fact, I tried to transfer the domain name to Mr. Henning. However, I was informed by my VIP representative that the name was locked, and that I had to let this proceeding run its course.

Therefore, unless there is anything I can do to facilitate an earlier resolution, I will wait instructions following the default.

To Summarize:

I have no interest[] in the domain name "eNeutral.com".

I have never taken action to deprive Mr. Henning of "eNeutral.com".

I will not challenge the finding of default in favor of Mr. Henning.

I do, however, reserve the right to enforce our financial claims.

Notwithstanding this communication, the Complainant has not withdrawn the Complaint, and the disputed domain name has not been transferred.

 

5. Partiesí Contentions

A. Complainant

The Complainant relies on the above facts and contends, inter alia, that the three elements of Paragraph 4(a) of the Policy have been met.

The Complainant argues that the contested domain name is identical or confusingly similar to the Complainantís registered ENEUTRAL mark. In this regard, the Complainant points out that the domain name <eneutral.com> incorporates the Complainantís mark in its entirety.

The Complainant further argues that the Respondent has no legitimate rights or interests with respect to the contested domain name, since the Complainant has a registered service mark on the name ENEUTRAL and has also established common law trademark rights by virtue of extensive use of the mark since January 1999. The Complainant argues further that the Respondent has no prior rights in the ENEUTRAL mark and has not been authorized to use the mark. Lastly, it argues that the Respondent has made no legitimate use of the domain name, but rather that ownership of the domain name was improperly transferred to the Respondent by its President, Mr. Gibson, without Henningís permission.

Finally, the Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant bases its argument on the following allegations: (1) in October 2001, when Henning applied to register the domain name, Mr. Gibson attempted to alter the domain name registration, naming himself as administrative and technical contact for the domain name; (2) later, around December 2001, the Respondent or its President transferred registration of the domain name to itself and took control of Henningís website, without Henningís authorization; and (3) the Respondent failed to transfer the domain name back to the Complainant in response to its demands.

B. Respondent

The Respondent has made no submissions other than the July 8, 2003, communication quoted in its entirety above. Although that response was not timely submitted, the Panel finds it appropriate to consider it in evaluating this case.

The Respondentís July 8 communication accepts that the disputed domain name should be transferred to the Complainant. It further states that the Respondent "will not challenge the finding of default in favor of" the Complainant.

 

6. Discussion and Findings

Paragraph 4(a) of the UDRP Policy requires the Complainant to prove each of the following elements in order to obtain relief:

(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.

The Complainant has the burden of proving each of these elements. They will be examined in turn below.

As an initial matter, the Panel notes that the Respondentís communication of July 8, 2003, constitutes a concession that arguably provides a sufficient basis for resolving this case without the necessity of making any further factual findings. See, e.g., Interbrew S.A. v. Adanb, WIPO Case No. D2000-1365 (April 4, 2001); Juventus F.C. S.p.a. v. SergioBragança, WIPO Case No. D2000-1466 (December 20, 2000); Deutsche Bank AG v. Carl Seigler, WIPO Case No. D2000-0984 (November 4, 2000). Nonetheless, in light of the fact that the domain name has not been transferred, and in the interest of reaching a definitive resolution of this matter, the Panel deems it prudent to make findings on the merits of the case.

A. Identical or Confusingly Similar

The domain name at issue incorporates in its entirety the service mark registered and used by the Complainant. The addition of the designation ".com" is insufficient to make the domain name non-identical. As a result, the Panel is satisfied that the Complainant has met the first element under Paragraph 4(a).

B. Rights or Legitimate Interests

The Panel is further satisfied, on the evidence presented, that the Respondent has no rights or legitimate interests in respect of the domain name. Indeed, the Respondent does not contend that this is the case.

In particular, the Panel finds that none of the three circumstances that are identified in Paragraph 4(c) of the Policy as indicative of legitimate rights or interests is present here.

First, the Panel considers that the Respondent is not using the domain name in connection with a bona fide offering of goods or services. Indeed, the Respondent does not appear to be using the domain name either to promote itself or to offer services of its own. Rather, it continues to "host" the Complainantís Ė now allegedly outdated Ė website contrary to the Complainantís wishes.

Second, there is no evidence to suggest that the Respondent has "been commonly known" by the domain name at issue. Again, the Respondent does not appear to have used the name in connection with its own business.

Third, there has been no "non-commercial or fair use" of the domain name. It is presently being used for commercial purposes, albeit in connection with the Complainantís and not the Respondentís business.

The final question is whether the Respondent was aware of the Complainantís rights in the mark ENEUTRAL before obtaining ownership of the domain name <eneutral.com> in about December 2001. In this regard, the Panel notes that the Respondent provided services in connection with establishing Henningís website under this domain name. The partiesí contractual relationship commenced in around July 2000 Ė by which stage the Complainant appears to have been using the ENEUTRAL mark for at least one and one-half years (see Annexes 3 and 4 of Exhibit A to Complaint). Moreover, by the time the domain name was transferred to the Respondent in late 2001, the Complainant had applied to the United States Patent and Trademark Office to register the mark. In light of the role that the Respondent played with respect to the Complainantís website, as well as the timing thereof, it is clear that the Respondent must have been aware of the existence of the Complainantís rights in the mark at the time of registration of the domain name to itself.

For the foregoing reasons, the Panel concludes that the second element under Paragraph 4(a) has been established in the present case.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four non-exclusive indicia of bad faith:

(i) circumstances indicating that the Respondent has registered or 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 trademark or service mark or to a competitor of that the Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or

(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the Respondentís website or location, or of a product or service on the website or location.

For purposes of the Policy, a finding of any one of the four circumstances listed in Paragraph 4(b) will be sufficient to establish registration and use in bad faith. Furthermore, the Panel notes that those four circumstances are not exclusive, and that other circumstances may likewise lead, in a particular case, to a finding of bad faith registration and use. See CCA Industries, Inc v. Bobby R. Dailey, WIPO Case No. D2000-0148 (April 26, 2000), at page 3.

The element of bad faith presents a close question on the facts here, since it appears that the registration of the disputed domain name by the Respondent took place in the context of an unrelated financial dispute between the parties. Nevertheless, the Panel is on balance persuaded that bad faith registration and use have been sufficiently established, in light of the following circumstances.

First, the Complainant has presented evidence giving rise to a reasonable inference that the Respondent attempted to register the domain name to itself on two separate occasions, both occurring after the Respondent began to provide web services to the Complainant in connection with the website <eneutral.com>. Second, as noted above, the Respondent acted as the Complainantís server provider. As such, it is clear that the Respondent must have been aware of the Complainantís use of and rights in the mark when it registered the domain name in its own name in December 2001. Third, the Respondent failed to transfer the domain name promptly to the Complainant when so requested. In light of these factors, as well as the Respondentís concession that the disputed domain name should be transferred to the Complainant, the Panel concludes that the requirements of Paragraphs 4(a)(iii) and 4(b) of the Policy have been satisfied.

As a final matter, the Panel notes that there appears to be a dispute between the parties about payment for services allegedly rendered by the Respondent to the Complainant (see the Respondentís Response and attachment thereto). This dispute is clearly outside the scope of the present procedure, and the Panel expresses no view whatsoever on the merits of such dispute.

 

7. Decision

For the foregoing reasons, the Panel determines that the Complaint succeeds and directs that the domain name <eneutral.com> be transferred to the Complainant.

 


 

D. Brian King
Sole Panelist

Dated: July 18, 2003