Complainant is Mathiesen S.A.C., of Santiago, Chile, represented by Cristobal Baeza, of Chile.
Respondent is Allan Mathiesen, of Gentofte, Denmark, represented by Magnusson Law Firm, of Denmark.
The disputed domain name <mathiesen.com> is registered with Network Solutions, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2009. On January 23, 2009, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On January 23, 2009, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing additional contact details. The Center sent an email communication to Complainant on January 26, 2009 providing the additional contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on January 27, 2009. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on February 6, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 26, 2009. The Response was filed with the Center on February 25, 2009.
The Center appointed Jeffrey D. Steinhardt as the sole panelist in this matter on March 10, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Complainant owns trademark registrations in the Republic of Chile for the mark “MATHIESEN” in international classes 1 through 35 and 39 under registrations numbers 448197, 448198, and 448199, with renewal numbers 736632, 736957 and 736631, respectively, granted on various dates in October 2005.
Publicly available records show that the disputed domain name was registered on March 23, 1999. Archives of pages from the site to which the disputed domain name routes display names and information about members of Respondent's family.1
Complainant avers that it is part of an international conglomerate named Grupo Mathiesen, a company which for over sixty years has distributed raw materials and manufactured products in the chemical, plastic, mining, veterinary, food cellulose, and paper industries. Complainant avers that it has a network of commodities distribution throughout Latin America.
Complainant avers that it possesses various trademark registrations for the mark “MATHIESEN” throughout Latin America in international classes 1 through 35 and 39. More specifically, Complainant lists several registrations in Chile and claims that those registrations were made in 1992 and 1995, with subsequent renewals.2
Complainant avers that it possesses numerous domain name registrations for variants on the word “Mathiesen”, although most are in combination with other words or spelled differently. The Complaint provides no details respecting the dates of registration.
In support of the first element of the Policy paragraph 4(a), the Complaint states in a fragmented sentence that “It is clear and evident how the disputed domain name, www.mathiesen.com, is identical to the trademark in which MATHIESEN S.A.C.” The Complaint includes no elaboration or legal argument on this issue.3
“The Respondent, Mr. Allan Mathiesen, has no rights or legitimate interests in respect of the domain name “www.mathiesen.com”. Currently, and as far as the Complainant's knowledge goes, the domain name has remained idle and unused since its acquisition by the Respondent. He has acquired no other trademark or service mark rights in his country or other countries.”
“The Complainant has not licensed, consented or otherwise authorized the Respondent to use her name, nor to permit others to do so. The Respondent does not transact in goods or services related to the Complainant.”
“The actual contents of the disputed domain name remain blank, as they have always been, thus establishing a clear presumption of bad faith on the Respondent. This shows that the domain name was registered primarily for the purpose of selling, renting other otherwise transferring the domain name registration to the owner of the service mark involved, in this case, the mark MATHIESEN legally owned by MATHIESEN S.A.C.”
“The Administrative Panel has previously issued decisions with similar factual backgrounds with this case.”
Complainant continues by citing three WIPO panel decisions and stating that they “are detailed and contained” in an annex to the Complaint, without developing legal arguments concerning their application to this proceeding.
On the basis of the above representations, Complainant seeks transfer of the disputed domain name.
Respondent makes several arguments, and submits substantial documentary proof in support of its contentions. In light of the Panel's conclusions, it is unnecessary to describe all of Respondent's contentions in detail.
Respondent's most fundamental contentions are that (1) he was given the name “Allan Mathiesen” upon birth; (2) that the purpose of registration of the disputed domain name was to host a website for family members; and (3) that the website to which the disputed domain name routes has been in continuous use since 1999. Therefore Respondent contends, Respondent is making a legitimate non-commercial and fair use of the domain name, “without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark(s) or service mark(s) at issue”.
Respondent also disputes the applicability of the cases cited by Complainant. Respondent cites several cases, explaining that the cases stand for the proposition that an individual has a legitimate interest in a domain name corresponding to that person's name.
Respondent also disputes Complainant's allegations of bad faith, noting that Respondent did not register in order to prevent Complainant from reflecting the mark in corresponding domain name, or to disrupt a competitor's business, and that Respondent has not attempted to sell the domain name.
Respondent also notes that Complainant incorrectly states that the disputed domain name is not, and has not been, used for an active website. Respondent alleges that Complainant's own domain name registrations were made only recently, well after 1999, when Respondent registered and began using the disputed domain name.
The Rules require the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a).
Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(1) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the disputed domain name has been registered and is being used in bad faith.
The Panel agrees with Complainant that the disputed domain name is identical to the MATHIESEN trademarks, in which Complainant has rights.
Panels disregard the gTLD suffix in determining whether a disputed domain name is identical or similar to a complainant's marks. See e.g., HUK-COBURG haftpflicht-Unterstützungs-Kasse kraftfahrender Beamter Deutschlands A.G. v. DOMIBOT (HUK-COBURG-COM-DOM), WIPO Case No. D2006-0439; VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-13l5.
The Panel concludes, therefore, that Complainant has established the first element of paragraph 4(a) of the Policy.
The Panel finds, however, that Complainant fails to establish that Respondent has no rights or legitimate interests in the disputed domain name, as required under the second element of paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes:
(1) the use of the domain name in connection with a bona fide offering of goods and services;
(2) being commonly known by the domain name; or
(3) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.
A complainant must show a prima facie case that a respondent lacks rights or legitimate interests. See e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
In this case, the Panel finds that the Complaint's summary allegations fail to establish a prima facie case that Respondent lacks rights or legitimate interests, as explained below.
Complainant makes essentially two factual allegations in its attempt to establish that Respondent lacks rights or legitimate interests. First, Complainant alleges that Respondent's website is blank, idle, and has been unused. That these allegations are misleading and inaccurate can be easily confirmed by, inter alia, viewing publicly available archives of the website, for example, through use of “www.archive.org”.4 The Panel therefore rejects as inaccurate Complainant's first factual premise.
Second, Complainant contends that Respondent has no trademarks or authorization to use his own given name.5 The Panel is aware of no authority suggesting that Respondent requires trademarks or authorization. Panels have in fact determined that even where a complainant possesses trademarks, respondents do not require license or authorization to use family names in a domain name genuinely intended for noncommercial use. See e.g., Gail Guarulhos Indústria e Comércio Ltda. v. Kevin Watson, WIPO Case No. D2006-0655.
Moreover, Complainant makes no allegation or attempt to establish that Respondent's name is not genuine or that some other reason precludes Respondent from using his given name.
Complainant appears to assume that its trademarks entitle it to pre-empt any use of the term “Mathiesen” in a domain name by others. Such an interpretation directly contradicts the plain meaning of Policy paragraph 4(c)(ii) and cases which have applied it. See, e.g., Gail Guarulhos Indústria e Comércio Ltda., supra; Ken's Foods Inc. v. kens.com, WIPO Case No. D2005-0721.
The Panel finds that Respondent has established that the disputed domain name is in fact his given name.6 On the record before it, the Panel concludes that Respondent has a right and legitimate interest in the disputed domain name. Moreover, readily available public records demonstrate that the disputed domain name has been used as a website of a personal nature for Respondent's family.
Consequently, the Panel concludes that the Complaint fails to fulfill the requirements of Policy paragraph 4(a)(ii).
Complainant therefore falls short of establishing its entitlement under the Policy to transfer of the disputed domain name.
In the interests of the integrity of administrative proceedings under the UDRP, the Panel will nonetheless continue to address whether the present Complaint fulfills the required third element under paragraph 4(a) of the Policy. As elaborated below, the Panel also finds that Complainant fails to establish that Respondent registered and is using the disputed domain name in bad faith under paragraph 4(a).
Paragraph 4(b) of the Policy provides a list of circumstances that suggest bad faith registration. That list is not exhaustive, however, and panels may draw inferences about bad faith registration or use in light of the circumstances, such as whether the complainant has particularly strong trademark rights, whether there is a lack of response to the complaint, and whether there exists a lack of conceivable good faith uses for the domain name.
Indeed one of the cases often cited for the above proposition, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, is cited by Complainant. As with the only other two cases cited in the Complaint, however, there is no explanation of which particular legal proposition Complainant believes is supported by the cited authorities.
As discussed above, the Complaint's factual allegations that Respondent's website is blank, idle, and has been unused lack credibility and contradict publicly accessible information. Those factual allegations are also credibly contradicted by the annexes to the Response. The Panel therefore declines to accept Complaint's allegations of non-use on the basis that the allegations are inaccurate.
Complainant's only other contention to support its claim of bad faith is a recital quoting portions of Policy paragraph 4(b)(i), that the disputed “domain name was registered primarily for the purpose of selling, renting, other otherwise transferring the domain name registration to the owner of the service mark involved, in this case, the mark MATHIESEN legally owned by MATHIESEN S.A.C.” It is not enough simply to repeat the language of the Policy; it is Complainant's responsibility to adduce evidence relevant to its contention that Respondent registered and uses the disputed domain name in bad faith.
Complainant offers no evidence in support of this summary allegation. In short, the Complaint identifies no circumstances under paragraph 4(b) of the Policy, or otherwise, that might support a showing of bad faith.
The Panel finds that the other two cases cited by Complainant, Sarah Kozer v. Sarah Kozer, WIPO Case No. D2004-0328. and Cortefiel S.A. v. The Gallery Group, WIPO Case No. D2000-0162, are inapposite. First, both cases involved respondent defaults. Second, in neither case was there proof, as exists on the record here, that the disputed domain name corresponded precisely to the respondent's actual name. Finally, the timing of registration by the respondents in both cases raised inferences of bad faith; in the present case, there is no allegation that Respondent's registration ten years ago of the disputed domain name had any relation to Complainant or its trademark rights.
In contrast, Respondent cites some of the many cases ruling that individuals have legitimate interests in domain names corresponding to their names, including Société des Produits Nestlé S.A. v. Pro Fiducia Treuhand AG, WIPO Case No. D2001-0916; G. A. Modefine S.A. v. A.R. Mani, WIPO Case No. D2001-0537; and José de Jesus Velázquez Jiménez v. Velazquez-Perez, CPA, WIPO Case No. D2001-0342.
The Panel finds on the basis of the record that: (1) the disputed domain name is based upon Respondent's given name and has been used for noncommercial, family purposes, and (2) there is no evidence in this proceeding of bad faith by Respondent.
The Panel concludes that the Complaint also fails to meet the requirements of Policy paragraph 4(a)(iii).
Paragraph 15(e) of the Rules provides:
“If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
Complainant's attorney, in accordance with the Rules, paragraph 3(b)(xiv), wrote in the Complaint at paragraph 21 that “[t]he Complainant certifies that the information contained in this Complaint is to the best of the Complainant's knowledge complete and accurate […] and that the assertions in this Complaint are warranted under the Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.”
The Panel does not see how that certification properly could have been made.
Before filing this proceeding, there was apparently no attempt to confirm whether Respondent possessed a legitimate interest in using his given name. Nonetheless, the Policy is clear that being commonly known by the disputed domain name is a clear ground establishing a respondent's right or legitimate interest. Complainant has therefore disregarded the mandatory rules governing this dispute, in particular, Policy paragraph 4(c)(ii).7
As also explained above, Respondent registered the disputed domain name corresponding to his given name ten years ago, and has seemingly used the disputed domain name with a live website since then. The Complaint fails to present any basis for suggesting that Respondent's conduct was or is in bad faith, and misrepresents readily available facts respecting how (and whether) the website is and has been used.
The misleading factual allegations of the Complaint present the Panel with inaccurate and incomplete information, in contradiction of the certification quoted above. This contradiction is combined with a failure of diligence and the absence of the Complaint to present any arguments or authorities which might underpin a legal position that is contrary to the plain meaning of the Policy.
The Panel concludes, therefore, pursuant to paragraph 15(e) of the Rules, that the Complaint constitutes an abuse of the administrative proceeding. See e.g., Société des Produits Nestlé S.A., supra; Miguel Torres, S.A v. The Torres Group, WIPO Case No. D2001-1200; and G. A. Modefine S.A., supra.
For all the foregoing reasons, the Complaint is denied.
The Panel further declares that the Complaint constitutes an abuse of the administrative proceeding.
Jeffrey D. Steinhardt
Dated: March 23, 2009
1 The Panel has undertaken limited factual research by viewing online, and in online archives, pages to which the disputed domain name resolves. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 4.5. Respondent also included in its Response screen shots of content from the website.
2 While stating that it has appended to the Complaint records reflecting those original registrations, the Complaint includes only documents reflecting three renewal registrations, without proof of the original registrations or any records reflecting the other twelve alleged registrations.
3 Given Complainant's unusually brief and summary style of presenting its contentions, the Panel sets forth its contentions in this decision verbatim.
4 Respondent also annexed to his Response pages from the website. Those pages and the ones viewable in online archives display information about members of Respondent's family.
5 Mathiesen is not an unusual name. Merely in Santiago, Chile, where Complainant is located, a quick search of online phone directories reveals at least 5 individuals named Mathiesen. See “http://blancas.amarillas.cl/”
6 Respondent annexed to his Response a copy of his “Daabsattest” (birth or baptismal certificate).
7 The Complaint also omits the schedule of documentary evidence required by the Rules, paragraph 3(b)(xv).