WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Centennial Communications Corporation and Centennial de Puerto Rico v. Centennial
Case No. D2000-1385
1. The Parties
The Complainant is: Centennial Communications Corporation, 1305 Campus Parkway, Neptune, New Jersey 07753 (USA) and Centennial de Puerto Rico, P.O. Box 71514, San Juan, Puerto Rico 00936-8614. Complainant is represented by: David M. Silverman and Heidi C. Pearlman, Cole, Raywid & Braverman, L.L.P., 1919 Pennsylvania Ave., N.W., Suite 200, Washington, D.C. 20006 (USA).
The Respondent is Centennial, 600 Meadowland Park, Suite 270, Secaucus, New Jersey 07094 (USA). Respondent is represented by Michael R. Koblenz, Mound, Cotton & Wollan, One Battery Park Plaza, New York, New York 10004 (USA).
2. The Domain Name and the Registrar
The domain name in dispute is: . The registrar is Network Solutions Incorporated, 505 Huntmar Park Drive, Herndon, Virginia 20170.
3. Procedural History
This dispute is to be resolved in accordance with the Uniform Domain Name Dispute Resolution Policy (the Policy) and Rules (the Rules) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Center�s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules).
The Complaint was filed on October 16, 2000. On October 18, 2000 the Center requested that the registrar, NSI, check and report back on the registrant for the domain name . On October 29, 2000, NSI reported to the Center that the registrant was the Respondent: Centennial, 600 Meadowland Park, Suite 270, Secaucus, New Jersey 07094, USA.
On November 2, 2000 the Center forwarded a copy of the Complaint to Respondent by registered mail and by e-mail, and this proceeding officially began. Respondent�s Response was received by the Center on November 17, 2000. Per the Rules Section 5, Respondent elected to have a decision by a three (3) member Panel.
The members of the Panel submitted Declarations of Impartiality and Independence and the Center proceeded to appoint the Panel on January 18, 2001.
The Panel finds the Center has adhered to the Policy and the Rules in administering this proceeding.
This Decision is due by January 31, 2001.
4. Factual Background
The Complainant is a wireless communications service provider in the United States and Puerto Rico founded in 1988. It offers service in the United States, Puerto Rico and other parts of the Caribbean. Complainant claims revenues of half a billion U.S. dollars for the fiscal year ending May 31, 2000.
The Respondent, Centennial, identifies itself as Centennial Networks LLC, a Delaware, USA corporation which serves as a holding company for the companies ICENet, Asia2net and EliteCore. It was organised on July 15, 1997. Respondent states its goal is to create "an international internet gateway for companies interested in doing business in India and Asia."
The Respondent registered the disputed domain name on June 8, 1997. In about August 1998 the Complainant requested the Respondent to transfer the domain name. There is no evidence as to what transpired between the parties at that time, save that the domain name was retained by the Respondent.
The Complainant approached the Respondent again in Spring 2000 seeking transfer of the domain name. The Respondent indicated that it was only prepared to do so for a consideration in kind (facilities and services) valued at approximately US $190,000.
5. The Parties� Contentions
Complainant�s Contentions:
- Complainant is the owner of a service mark registration for Centennial Wireless and of pending service mark applications for Centennial Digital, Centennial Communications and Centennial, all to be used in the field of domestic public cellular radio telecommunications equipment and services.
- John Francke, the administrative contact for the disputed domain name , works for both Eclipse Micro Computer, Inc. and IceNet, the latter being an Internet service Provider in Puerto Rico.
- IceNet is one of Complainant�s customers.
- To the best of Complainant�s knowledge, the url www. has never been used in connection with a bona fide offering of goods and services. It links to a web site advertising an "Asia2Net" summit which purportedly took place in Mumbai, India on December 13, 1999.
- The website at the disputed domain name was last updated on December 16, 1999. The Respondent is not operating a business under the disputed domain name nor under the linked "Asia2Net" name.
- On information and belief, the domain name was acquired primarily for the purpose of transferring it for valuable consideration well in excess of the Respondent�s out-of-pocket costs.
- The disputed domain name is confusingly similar to Complainant�s registered and pending service marks. Complainant has not licensed or otherwise permitted Respondent to use Complainant�s service marks, nor has Complainant licensed or otherwise permitted Respondent to apply for or use any domain name incorporating those marks.
- Respondent�s registration of the disputed domain names was in bad faith because Respondent had constructive and actual notice of Complainant�s service mark rights.
Respondent�s Contentions
- Centennial Networks LLC was incorporated for the purpose of serving as a parent company for business ventures in India and Asia. The other companies in the group are ICENet, Asia2net and EliteCore.
- The summit meeting held on December 13, 1999 in Mumbai was organized by Asia2net acting on behalf of its parent company, Centennial Networks LLC.
- Centennial Networks LLC used the domain name long before being notified of this dispute, and has dedicated a substantial amount of time and resources investigating and exploring various business ventures in India and Asia.
- In February of 2000, a Memorandum of Understanding was signed concerning an internet service venture between a major company in India, KingFisher.Com Ltd.Net, EliteCore and Eclipse Micro Computer, the latter a company with common ownership with Centennial Networks LLC.
- Respondent is a legitimate company in the process of developing Internet access and networking service for companies interested in the Indian and Asian markets.
- Respondent is entitled to use the disputed domain name because Respondent offers goods and services sufficiently different from those of Complainant, ie, Respondent deals with internet access and networking while Complainant is a wireless communications provider.
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 and is being used in bad faith.
Identical or confusing similarity
The Domain Name comprises the word �centennial� which is an essential element of the name of the Complainant and which, from the newspaper reports and advertisements exhibited to the Complaint, appears to be the abbreviation by which the Complainant is commonly known in Puerto Rico. In the field of media related services, the co-existence of companies trading under the name Centennial could give rise to confusion.
The test under sub paragraph 4(a)(i) is a relatively easy one for the Complainant to meet. It is simply there to establish a good faith basis for the Complaint. The Policy does not call for proof of exclusive rights or indeed registered rights.
The majority decision of the Panel is that the Domain Name is confusingly similar to a trade mark or service mark in which the Complainant has rights.
Rights or legitimate interest of the Respondent
While it is clear from the terms of paragraph 4(a) of the Policy that the overall burden of proof is on the Complainant, the introductory paragraph to paragraph 4(c) of the Policy advises a Respondent how to demonstrate its rights to and legitimate interests in the domain name in responding to a Complaint. The paragraph goes on to set out a non-exhaustive list of circumstances which, if the Respondent can prove any of them to the satisfaction of the Panel, will establish the relevant rights and/or legitimate interests of the Respondent.
The two sub paragraphs of paragraph 4(c) of the Policy which could be relevant here are sub paragraphs (i) and (ii) which read as follows:-
"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business or other organisation) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights."
The Domain Name was registered on June 8 1997, the Registrant/Respondent being named "Centennial". There is no contemporary independent evidence as to what the Respondent was doing at that time under the name Centennial. The Respondent points to the fact that Centennial Networks LLC was organised on July 15, 1997 shortly after registration of the Domain Name under the laws of the State of Delaware and was incorporated for the purpose of serving as a parent company for business ventures in India and Asia. The Respondent says that it was designated as the holding company for inter alia Icenet. Centennial Networks LLC created a web page advertising a summit meeting in Mumbai and both parties have exhibited extracts of the website at www. featuring a Centennial Networks LLC logo. There is no evidence as to when the Respondent started work on this website and there is no evidence as to what the Respondent and/or Centennial Networks LLC were doing under the name Centennial, between the date of formation of the company and the creation of the website.
The Complainant draws attention to the fact that John Francke, being the contact name for the registration of the Domain Name, is a director of Icenet which is a company based in Puerto Rico and whose offices are situated down the road from the Complainant in San Juan, Puerto Rico. The Complainant argues that the Respondent knew or must have known of the Complainant and its interest in the name Centennial and adopted it for itself without license and without justification.
The Policy is only designed to deal with clear cases of cybersquatting. This procedure is not a convenient forum for resolving borderline disputes and/or cases involving material conflicts of fact.
The majority decision of the Panel is that while the Panel understands the concerns of the Complainant, the fact of the matter is that the Respondent is named Centennial and the Domain Name has been used by an entity named Centennial Networks LLC. The paucity of evidence over the interim between the date of registration of the Domain Name and the commencement of work on the website is partly down to the Respondent which could have provided further information. It is also partly down to the Complainant, who was in negotiation with the Respondent as long ago as August 1998, when the Complainant first approached the Respondent with a view to purchasing the Domain Name. If the Complainant seriously believed that the Respondent had no rights to the name Centennial as at that date, one would have expected the Complainant to have produced evidence of the situation as at that date. The Complainant did not do so. The only evidence in relation to that exchange back in 1998 emanates from the Respondent. There is no evidence before the Panel that the Complainant even asserted its rights against the Respondent back in 1998.
From an evidentiary point of view, the situation is very unsatisfactory. However, the overall obligation of proving the matters set out in paragraph 4(a) of the Policy is down to the Complainant. In the circumstances, the majority decision of the Panel is that the Complainant has failed to prove that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Bad Faith
The fact (if it be a fact) that the Respondent has used the name Centennial in the domain name because it liked the name, knowing it to be part of the name of the Complainant, is not conclusive evidence of bad faith.
While the examples of bad faith registration and use set out in paragraph 4(b) of the Policy are not exhaustive, they are indicative of the types of behaviour regarded by the architects of the Policy to be the main contenders for findings of bad faith. They are:"(i) circumstances indicating that you have registered or you have 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 complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have 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 you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
The only hard evidence put forward by the Complainant in support of its bad faith allegation is the refusal of the Respondent to part with the Domain Name for anything other than valuable consideration well in excess of the Respondent�s out of pocket expenses.
The size of the financial demand is irrelevant unless extortion was the Respondent�s intent at the time of registration of the Domain Name. For the Complainant to establish that the Respondent registered the Domain Name primarily for the purpose of extorting money from the Complainant, the Complainant has to produce a lot more evidence than it has produced to date.
The Domain Name was registered in June 1997. The first approach in relation to transfer of the Domain Name was made not by the Respondent, but by the Complainant. If the Respondent had registered the Domain Name with a view to selling it to the Complainant, one would have expected the Respondent to have entered into negotiations at that stage. Since there is no evidence on the topic, the Panel is left to assume that the Respondent did not do so. Nothing then happened until the Complainant again approached the Respondent, this time two years later in Spring 2000. The majority decision of the Panel is that this is not the scenario that one would expect in relation to a Domain Name which was registered primarily for the purpose of sale.
Of course it may be, as the Complainant alleges, that the website is and always was a sham. If it was, then the Complainant�s position is a strong one. Suffice it to say, however, that for the majority of the Panel, the evidence is not strong enough to make a finding of bad faith.
Additionally, there is nothing about the content of that website which leads the majority of the Panel to believe that there was any intention on the part of the creator of that site to benefit unfairly from any association with the Complainant. Nor does it believe that any visitor to that site will be in any way deceived into believing that the Complainant has any association with the site.
In the result, the majority of 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.
7. Decision
The Complaint is dismissed
Tony Willoughby
Panelist
Tyrus R. Atkinson, Jr.
Panelist
Dated: January 31, 2001
Dissent
I respectfully dissent from the Decision of the Panel majority. I believe the Complainant has demonstrated the Respondent does not have legitimate rights and interests in the disputed domain name , and that Respondent registered and was using the domain name in bad faith.
Respondent bases its claims to conducting business using the disputed domain name on the operations of Centennial Networks LLC, a company it styles its "holding company". However, I find the record shows this is not an operating company, and the website for the disputed domain name is not an operating web site: Respondent merely uses the disputed domain name to pass traffic through to its website at Asia2netcom, which in turn only claims to have hosted a "summit" in Mumbai in December, 1999.
Respondent registered the disputed domain name on June 8, 1997, ie, one month before Respondent created the company, Centennial Networks LLC. The subsequent act of business Respondent points to for the company and the disputed domain name, the alleged "summit" in Mumbai, occurred two and a half years later. Otherwise, the Response only talks about grand plans for India and Asia, but there is nothing to connect even the vague talk to the company Centennial Networks LLC.
At its Annex 9, Complainant shows that Centennial Networks LLC was not in good standing as a corporation in the State of Delaware as of September 21, 2000. In its Response, Respondent shows a certificate of good standing for the corporation as of November 10, 2000. The Respondent does not deign to instruct the Panel about this discrepancy which in my opinion allows the Panel to infer that Respondent had let the corporation lapse and then rushed to reinstate it after the corporation became its hope of proving some type of legitimate rights or interests in the disputed domain name in this proceeding.
In its Annex H, Respondent makes much of an ambitious February 2000 Memorandum that talks about plans for internet development in India. The problem is that the Memorandum has nothing to do with the company Centennial Networks LLC or the disputed domain name . The only connection is Respondent�s vague assertion, without back-up evidence, that Centennial Networks LLC is affiliated with Eclipse Micro Computer Inc. and EliteCore, which are mentioned in the Memorandum.
The Complainant alleges, and Respondent does not dispute, that the administrative contact for the disputed domain name , Mr. John Francke, is a director/manager of ICENet in Puerto Rico. According to Respondent�s own Response, ICENet Puerto Rico is an internet service provider and a client of Complainant.
Respondent asserts (Response, p. 4) that the name "centennial" is generic and thus Respondent was free to use the name. Presumably Respondent hopes this also excuses it from explaining to the Panel how it came to associate the name with communications services. I believe this is a specious and bad faith argument on Respondent�s part. As Respondent no doubt knows, the name "centennial" is arbitrary when applied to telecommunications services, and the Panel is entitled to be informed about when, how and why Respondent came to use it in this context .
It seems highly likely to me that Mr. Francke, with ICENet in Puerto Rico down the street from Complainant and a client of Complainant, registered the disputed domain name and later created the company Centennial Networks LLC with the intention of profiting from the good will of the supplier company he knew so well. It may well also have been Mr. Francke�s intention ultimately to sell the domain name back to his supplier. All of this is proscribed by the Policy�s bad faith provisions (4(b)(i) and (iv).
In any case, Mr. Francke and Centennial Networks LLC have not demonstrated legitimate rights or interests in the disputed domain name. Their hurried and unconvincing attempts to contrive some rights and interests ex post only serve to underscore the lack of same.
Dennis A. Foster
Presiding Panelist
Full & Egal Universal Law Academy