WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Systima Limited v. Willie Byrne
Case No. D2001-0300
1. The Parties
The Complainant is Systima Limited, a company incorporated in Ireland under company registration number 236411 and having its principal place of business at 31A Westland Square, Dublin 2, Ireland.
The Respondent is Mr Willie Byrne, The Covers, Dunboyne, Co. Meath, Ireland
2. The Domain Name and Registrar
The domain name in issue in these Administrative Proceedings is . The registrar with which the domain name is registered is T Inc. of 96 Mowat Avenue, Toronto, Canada (hereinafter "the Registrar").
3. Procedural History
On March 1, 2001 the Complaint was received by the WIPO Arbitration and Mediation Center ("the Center") by e-mail and the hard copy was received on March 2, 2001.
On March 2, 2001 the Center sent an acknowledgement of receipt of the Complaint to the Complainant by e-mail.
On March 8, 2001 the Center sent a request for Registrar Verification to the Registrar. On March 12, 2001 the Registrar responded to the Center by e-mail and stated that it was in not yet in receipt of the Complaint sent by the Complainant, confirmed that it is the registrar of the said domain name , confirmed that the Respondent was at that time the registrant of the said domain name, provided contact details for the Respondent including the administrative contact, the technical contact and the billing contact for the said domain name, and confirmed that the Uniform Domain Name Dispute Resolution Policy ("the Policy") applied to the said registration and that the said registration was currently "on hold" within the Registrar's system.
The Center reviewed the Complaint and was satisfied that the Complainant complied with the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter "the Rules") and the WIPO Supplemental Rules for Uniform Dispute Resolution Policy ( hereinafter "the Supplemental Rules") and that the appropriate fees had been paid by the Complainant.
On March 15, 2001 the Center sent a Notification of Complaint and Commencement of Administrative Proceeding relating to the said domain name to the Respondent and to the solicitor identified in the Complaint as representing the Respondent, by post/courier (with enclosures), facsimile (Complaint without attachments) and by e-mail (Complaint without attachments). A copy of said Notification was sent to the authorised representative of the Complainant by e-mail. Further copies of said Notification were sent to the Internet Corporation for Assigned Names and Numbers ("ICANN") and to the Registrar.
Said Notification of Complaint and Commencement of Administrative Proceeding inter alia advised the Respondent that the Administrative Proceedings had commenced on March 15, 2001 and that the Respondent was required to submit a Response to the Center on or before April 3, 2001.
On April 3, 2001 as no Response had been filed by the Respondent, the Center sent by e-mail, a Notification of Respondent Default to the Respondent and to the solicitor identified in the Complaint as representing the Respondent. A copy of said Notification was at the same time sent to the Complainant.
On April 5, 2001 the Center invited James Bridgeman to act as Administrative Panel in these proceedings.
On April 10, 2001 having received a Statement of Acceptance and Declaration of Impartiality from the said James Bridgeman the Center proceeded to appoint this Administrative Panel consisting of a single member.
On April 10, 2001 the Center sent a Notification of Appointment of Administrative Panel and Projected Decision Date to the parties and advised that absent exceptional circumstances, the Administrative Panel was required to forward his decision to the Center by April 23, 2001. On the same date, the case file was transferred to the Administrative Panel.
On April 12, 2000 the authorised representative of the Complainant sent an e-mail directly to the Administrative Panel contrary to Paragraph (8) of the Policy. Said e-mail stated that there was a letter attached thereto. This Administrative Panel, acting through the Center, advised the parties that the communication was in breach of rule 8 and that he did not intend to open or consider the said attachment. The Complainant withdrew the letter.
In the view of the Administrative Panel, the proper procedures were followed and the panel was properly constituted.
4. Factual Background
The Complainant was incorporated on July 28, 1995 under the name Field Software Services Limited. The Complainant is a Dublin-based software company offering programming, systems integration and consultancy services. The Complainant specialises in the IBM mid-range platform providing AS/400 software services to its clients focussing on Enterprise Resource Planning software designed to assist enterprises with sales, order processing, accounts payable, accounts receivable and logistics among other functions.
In late 1999, for commercial reasons, it was decided to change the name of the Complainant company. The word was devised and adapted, as satisfying a number of pertinent criteria, namely, that the new corporate name should be a single, memorable word (for ease of use on the Internet as both a www site and e-mail address), that it should have an international flavour and in particular, should be easy for foreign clients to recognise and pronounce and finally, that the name should evoke a link with the information technology industry and systems technology.
The Complainant conducted two key searches to ensure that the name was available; firstly, it carried out a search in the Irish Companies Registration Office to establish that the name was acceptable to the Registrar and secondly, it carried out a search to establish whether both domain names and were available. Having confirmed that the name could be registered as a company name and that both domain names were available, the Complaint took steps to change its company name and instructed an Irish ISP to obtain the required domain name registrations.
On November 25, 1999, the Complainant�s change of name was entered on the register of companies at the Companies Registration Office. The Complainant subsequently registered as a registered business name under the Registration of Business Names Act, 1963. A copy of the Certificate of Incorporation on Change of Name, the original Certificate of Incorporation and the Certificate of Business Name has been furnished to this Administrative Panel in support of these claims. Shortly, thereafter, the Complainant notified its bank, suppliers and customers of the re-branding of the company.
5. Parties� Contentions
A. Complainant
The Complainant requests this Administrative Panel to issue a decision that the contested domain name be transferred to the Complainant.
The Complainant submits that since the Complainant changed its corporate name on November 25, 1999, the name has been used by the Complainant to identify its services and to distinguish the Complainant�s from those offered by its competitors. Since the change of name, the Complainant has consistently used the unregistered service mark on its company letterhead, invoices and other company documents. Additionally, the Complainant�s management and staff carry and issue business cards with the name . Furthermore, the information technology community in Ireland and the Complainant�s customers know and refer to the Complainant as . To illustrate this claim the Complainant has submitted a copy of the IBM Computer Users Association directory of members 2000 which refers to the Complainant simply as .
The Complainant submits that the name is exclusively distinctive of the Complainant. In support of this proposition, the Complainant has furnished a copy of the Irish telephone directories for the years 2000/2001 indicating that there are no entries other than for the Complainant under that designation.
In December 1999 the Complainant took steps to register both and through an Irish ISP. The Complainant has submitted a copy invoice from said ISP in respect of these registrations. The invoice was dated
December 31, 1999 and was in respect of the registration fees for the domain names for the year December 17, 1999 to December 17, 2000.
In August 2000 the Complainant commenced development of its web site. On
August 28, 2000, the Complainant was shocked to discover that the domain name was registered in the name of a third party. In response to queries from the Complainant, the ISP advised the Complainant by letter dated
October 18, 2000 that the Complainant's registration of said domain name had been cancelled and the said domain name had subsequently been registered by a third party. The Complainant has not furnished any explanation for this.
The Complainant has developed a www site at . However, the Complainant submits that in the light of the dispute over the said domain name, the Complainant's site has not proceeded to full interactive status.
The Complainant submits that the said domain name is identical or confusingly similar to the Complainant's unregistered service mark. A simple comparison of the domain name and the service mark in which the Complainant asserts common law rights indicates that the domain name and the service mark are identical.
The Complainant further submits that the Respondent has no rights or legitimate interest in the said domain name. The Complainant asserts that, on the evidence, the Respondent made no demonstrable preparations to use the domain name in connection with any bona fide offering of goods and services. Despite registering the domain name in April 2000, the Respondent made no attempt to establish a www site at the domain name. It was not until after the Respondent had been notified of the dispute regarding the domain name that the Respondent hosted a www site at the address. The Complainant has submitted a print-out of what it claims to be the content of a page of the Respondent�s said www site on which the Respondent offers time recording software.
The Complainant submits that it is particularly relevant that after having been notified of this dispute, the Respondent established a www site accessible via the said domain name purporting to offer time-recording software. The Complainant submits that this use of the domain name amounts to a misrepresentation that the software offered is part of the services provided by Complainant and accordingly, is likely to cause confusion in the minds of the public and likely to lead the public to believe that the services offered are connected with those of the Complainant. The Complainant submits that such use amounting to misrepresentation cannot be held to be a legitimate use of the domain name for bona fide purposes particularly as the Respondent established his www site only subsequent to being notified in writing of the Claimant�s claim to the domain name.
Furthermore, the Complainant submits that the statements on the Respondent's www site are not bona fide. In order to establish whether the offer of a time-recording system was bona fide, the Complainant e-mailed info@ (the contact address given on the Respondent�s www site) requesting details of the advertised time-recording system and as of the date of the filing of the Complaint, no response had been received to the request for further information; the failure to respond is, in the Complainant�s view, indicative of the Respondent�s lack of bona fides.
The Complainant submits that the Respondent is not commonly known by the domain name (or a name corresponding to the domain name). In contrast, the Complainant claims to be commonly known by the name . The Complainant confirms that it has not consented to any use of the said name by the Respondent.
The Complainant submits that it entered into correspondence with the solicitors for the Respondent and in the course of this correspondence, the Respondent failed to advance any evidence that would support a finding that the Respondent has any legitimate rights in the said service mark. The Complainant has furnished copies of the letters exchanged in this correspondence.
The Complainant submits that in both Mondich v. Brown (WIPO Case No. D 2000-0004, February 16, 2000) and Alcoholics Anonymous World Services Inc. v. Lauren Raymond (WIPO Case No. D 2000-0007, March 6, 2000), the administrative panels held that it was reasonable to draw inferences from a party�s silence and in particular, a failure on the part of the Respondent to provide evidence of a legitimate interest in the disputed domain name supported the contention that the Respondent had no such legitimate interest.
As to the requirement to prove that the said domain name was registered and is being used in bad faith, the Complainant submits that the Respondent failed to provide correct contact information. This has been held to be a mark of bad faith in the administrative panel decision in Telstra Corporation Limited v. Nuclear Marshmallows (WIPO Case No. D2000-0003, February 18, 2000).
In support of this submission the Complainant has furnished copies of searches of the Registrar�s WHOIS database on November 20, 2000. Instead of the correct details, the Complainant submits that the following information was posted on the WHOIS Database in respect of the registration: Registrant: Domains for Sale This domain is for sale Send me an email with our bid Let�s start the bidding as (sic) #10,000 Going Once! Going Twice! 0 UK
The Administrative Contact was given as the following: MASTER, WEB buythisdomain@ This domain for sale Send me an email with our bid Let�s start the bidding as (sic) #10,000 Going Once! Going Twice! 0 UK 0
Details for the Technical Contact comprised the following: MASTER, WEB buythisdomain@ 0 0, 0 0 UK 0
The Billing Contact was shown as follows: Domains for Sale This domain is for sale Send me an email with our bid Let�s start the bidding as (sic) #10,000 Going Once! Going Twice! 0 UK
The Complainant submits that it is clear that, in applying for registration of the said domain name, the Respondent failed to provide full and accurate details to the Registrar. The failure by the Respondent to comply with its contractual requirements is evidence of the Respondent�s bad faith and in particular, evidence of a conscious and deliberate attempt to conceal the Respondent�s true identity. To the extent that minimal contact details (restricted to a country name) were provided they were incorrect and misleading in that they indicated that the Respondent was resident in the UK. Following a request to the Registrar, the WHOIS search details were updated.
The Complainant submits that details provided by the Respondent at the time of application for the said domain name indicate a clear intention on the part of the Respondent, at the time of registration, to sell the domain name for a considerable profit. Paragraph 4(b)(i) specifies, without limitation, that the following is evidence of the registration and use of a domain name in bad faith:
"circumstances indicating that you (the respondent) have 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 complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name;......"
The Complainant submits that this principle was applied by the administrative panel in Robert Ellenbogen v. Mike Pearson, (WIPO Case Decision in Case No. D 2000-0001, February 17, 2000) in which the respondent�s willingness to sell the domain name in dispute for an amount in excess of out-of-pocket expenses was held to be evidence of bad faith. In The Board of Regents of the University of Nebraska v. Bill Saedlo, (WIPO Case No. D 2000-0154, April 20, 2000), the Administrative Panel summarised the position as follows:
"with respect to the issue of registration and use in bad faith, it is now well established that the act of registering a trademark as a domain name and then offering to sell the name to the rightful trademark owner constitutes commercial use. See Robert Ellenbogen v. Mike Pearson, Case No. D00-0001; Intermatic Inc. v. Toeppen, 947 F. Supp. 1127 (ND Ill. 1996); Panavision International v. Toeppen, 141 F.3d 1316 (9th Cir. 1998). Further, as the WIPO Panel found in Ellenbogen and as set forth in Paragraph 4(b)(i) of the Policy, the act of registering and then offering to sell a domain name supports a determination of "bad faith".
Further authority for the proposition that an offer to sell domain names constitutes a use in commerce is to be found in World Wrestling Federation Entertainment Inc. v. Bosman (WIPO Case No. D99-0001, January 14, 2000) and Serta Inc. v. Maximum Investment Corporation (WIPO Case No. D 2000-0123, April 18, 2000).
Furthermore the Complainant submits that in British Telecommunications plc v. One in a Million Ltd [1998] FSR 265, [1999] 1 WLR 903, [1999] FSR 1, the English Court of Appeal held that the only possible reason why anyone, not connected with the plaintiffs in that case, would wish to use a domain name incorporating their trade marks or names would be to pass himself off as part of a plaintiff�s group or to pass of products as those of the plaintiff. The Complainant submits that the Irish High Court reached a similar conclusion in Local Ireland Limited v. Local Ireland-Online Limited (Unrep. High Court, Herbert J. October 2, 2000.)
Given the distinctive quality of the name , it is the Complainant�s contention that it is inconceivable that anyone typing the URL into a browser would expect to access anything other than the Complainant�s web site. The Complainant has submitted evidence that one of its clients had this expectation.
The Complainant submits that the evidence indicates that the Respondent registered the said domain name with the sole or primary intent to make a profit by selling it either to the Complainant or to a third party thereby supporting the proposition that the Respondent has never used, and never intended to use, the domain name for bona fide business purposes.
The Complainant further submits that none of the factors supporting a legitimate claim to use of the domain name as set out in Paragraph 4(c) of the Policy can be said to apply to the Respondent. Accordingly, the Complainant submits that the Respondent has no rights or legitimate interests in the domain name and that the requirements of Paragraph 4(a)(ii) of the Policy are met.
The Complainant submits that the information posted by the Respondent as contact details for the registration of the domain name indicate that the Respondent regarded the sum of �10,000 as the minimum price at which it would transfer domain name. Following the request by the Complainant to the Registrar, the public information on the registrant of the said domain name was updated. Nonetheless, WHOIS searches conducted on November 24, 2000 and
January 29, 2001 showed that although the Administrative and Billing Contacts were shown as the Respondent, the e-mail address remained buythisdomain@. The Complainant submits that the statement incorporated into the said e-mail address indicates a continuing intention on the part of the Respondent to sell the domain name and, by inviting bids, to do so at a profit in excess of the Respondent�s out-of-pocket expenses. This continuing intention to sell the domain name confirms that the Respondent�s www site, purporting to offer time recording services, is not a bona fide business but merely a device to attempt to defeat the Complainant�s legitimate claim.
Given the distinctive nature of the name its association with the Complainant�s business and the lack of any credible explanation from the Respondent, the Complainant submits that the Respondent�s conduct has been directed at the illegitimate exploitation of the Complainant�s name and reputation and attempting to extract an exorbitant sum for a domain name in which the Respondent has no legitimate rights, with the express threat (as evidenced by the references on the WHOIS facility to auctioning the domain name to the highest bidder) to sell the name at a profit.
The Complainant asserts that is a uniquely distinctive name (in Ireland, at the very least) and that the Complainant has sufficient reputation to support a claim for unregistered common law rights in the name. The Complainant asserts that it has sufficient goodwill and reputation in the mark which is uniquely distinctive of the Complainant to sustain an action in passing-off.
B. Respondent
There was no Response filed by the Respondent.
6. Discussion and Findings
Paragraph 4(a) of the Policy places on the Complainant the onus of proving that: (i) the domain name in dispute 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 said domain name; and
(iii) the said domain name has been registered and is being used in bad faith.
It is clear that the Complainant has adapted the name as its corporate name and service mark and from the evidence submitted with the Complaint, the Complainant has established rights in the use of that mark in the provision of computer software services in the field of enterprise resource planning. It is also clear that the said domain name is identical to the said service mark. The Complainant has therefore satisfied the first element in the test.
As regards any rights or interest the Respondent may have in the said domain name, the Complainant has provided evidence that said service mark is a word which was invented by the Complainant to serve as a corporate name and service mark. The Complainant has provided an explanation of the criteria which were applied by the Complainant in setting about the selection of this word. Furthermore the Complainant has furnished evidence that the said service mark was being used in the Irish software industry when the Respondent registered the said domain name. The Complainant has not granted the Respondent any rights to use the said domain name. The Respondent has not provided any explanation of how he came to decide upon this word and incorporate into a domain name.
Paragraph 4(c)(i) of the Policy provides that a respondent can demonstrate rights or legitimate interests in a domain name for purposes of para. 4(a)(ii) of the Policy by showing 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, before the respondent has any notice of the dispute. The Complainant has established that the Respondent did not establish its www site at the domain address until after he had received notice of the dispute.
There is no indication from the evidence before this Administrative Panel that the Respondent has ever been known by the said domain name so as to claim rights or a legitimate interest in accordance with Paragraph 4(c)(ii) of the Policy. It seems clear from the fact that the Respondent has advertised the said domain for sale and has purported to present a www site offering computer software services, that there is no question of the Respondent making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue so as to claim rights or legitimate interest under Paragraph 4(c)(iii) of the Policy.
This Administrative Panel is satisfied that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interest in the said domain name and in the absence of any explanation forthcoming from the Respondent, this Administrative Panel decides that the Complainant has satisfied the second element of the test in Paragraph 4(a) of the Policy.
As to the question of bad faith, this Administrative Panel accepts the Complainant argument that there is ample evidence that the Respondent has registered said 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 the Respondent�s documented out-of-pocket costs directly related to the domain name. Paragraph 4(b)(i) of the Policy provides that this can be taken as evidence of registration and use in bad faith by the Respondent.
In reaching this decision this Administrative Panel is conscious that given the explanation provided by the Complainant as to how and why the service mark was invented by the Complainant, it would seem to this Administrative Panel that in the absence of any Response from the Respondent the inference must be taken that the Respondent was aware of the Complainant's reputation at the time he registered the said domain name. That being the case, it would seem to follow that in offering the said domain name for sale via the messages incorporated into the contact details on the Registrar's WHOIS database, the Respondent on the balance of probabilites registered and maintained the said domain name registration with the intention of selling it to the Complainant.
This Administrative Panel is satisfied therefore that the Complainant has made out a prima facie case that the Respondent registered and is using said domain name in bad faith.
7. Decision
With specific reference to Paragraphs 4(i) of the Policy and 15 of the Rules this Administrative Panel decides that the domain name is confusingly similar to the Complainant's service mark, that the Respondent has no rights or legitimate interest in respect of that domain name and that the Respondent has registered and is using that domain name in bad faith. Accordingly, this Administrative Panel decides that said domain name should be transferred to the Complainant.
James Bridgeman
Sole Panelist
Dated: April 23, 2001
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