WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Irish Institute of Purchasing and Materials Management v. Association for Purchasing and Supply, Owen O�Neill
Case No. D2001-0472
1. The Parties
The Complainant in these Administrative Proceedings is the Irish Institute of Purchasing and Materials Management a limited company organized and existing under the laws of Ireland having its registered office at 5 Belvedere Place, Dublin 1, Ireland.
The Respondent is the Association for Purchasing and Supply, Owen O�Neill of John Player House, South Circular Road, Dublin 8, 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 R (hereinafter "the Registrar")
3. Procedural History
On March 30, 2001, the Complaint was received by the WIPO Arbitration and Mediation Center (hereinafter "the Center") by e-mail and the hard copy was received on April 2, 2001.
On April 3, 2001, the Center sent an acknowledgement of receipt of the Complaint to the Complainant by e-mail.
On April 6, 2001, the Center sent a request for Register Verification to the Registrar. On April 11, 2001, the Registrar responded to the Center and stated that it was 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 and the technical contact for the said domain name; confirmed that the Uniform Domain Name Dispute Resolution Policy (hereinafter "the Policy") applied to the said registration and that the said registration was active.
On April 12, 2001, the Center reviewed the Complaint and was satisfied that the Complaint 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 April 12, 2001, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding relating to the said domain name to the Respondent by post/courier (with enclosures) and by e-mail (Complaint without attachments). A copy of said Notification was sent to the authorized 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 April 12, 2001, and that the Respondent was required to submit a Response to the Center on or before May 1, 2001.
On April 30, 2001, the Respondent filed a Response and on May 1, 2001, the Center sent an Acknowledgement of Receipt (Response) to the Respondent.
On May 8, 2001, the Center invited James Bridgeman to act as Administrative Panel in these proceedings.
On May 8, 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 May 8, 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 May 22, 2001. On the same date, the case file was transferred to the Administrative Panel.
In the view of the Administrative Panel, the proper procedures were followed and the Panel was properly constituted.
4. Factual Background
The Complainant was established as a non-profit organization in 1971. It was incorporated in Ireland in 1975. The Complainant is a professional association for purchasing and supply executives in the Republic of Ireland. The Complainant has over 1,500 members and students nationally and internationally. The Complainant provides educational, training and resource services to its members. In particular, it operates diploma and certification programs and organizes various seminars, conferences and events throughout the year to keep its members in touch with latest developments in purchasing and supply.
The Complainant publishes the monthly publication The Report on Ireland in association with NTC Publications and NCB Stockbrokers. The Report on Ireland is a near term indicator of economic activity in the manufacturing sector in Ireland. The Complainant is also associated with the publication of a magazine entitled IPS (International Purchasing and Supply) Magazine which is published every two months and is distributed free of charge to the Complainant�s members.
The Complainant has established numerous affiliations with similar international organizations, including the International Federation of Purchasing and Materials Management which is based in Austria.
In 1997, the Complainant registered the domain name and established a web site at that address.
The Respondent was formerly an employee of the Complainant from 1993 to 1996 and he served on the National Council of the Complainant for a number of years.
The Respondent subsequently commenced business as the Association for Purchasing and Supply otherwise known as APS (hereinafter referred to as "APS") in 1997 and this name was registered as a business name with the Irish Companies Registration Office in 1998. More recently the Respondent has initiated a project called the International Institute for Purchasing and Materials Management. The Respondent registered said domain name on July 4, 2000 in connection with this project.
5. Parties� Contentions
A. Complainant
In support of its application for transfer of the said domain name, the Complainant claims to have invested a significant amount of time and money in developing, marketing and promoting its presence on the Internet at the said country code (ccTLD) domain address . The web site has emerged as an integral part of the Complainant�s operations, as it allows the Complainant to constantly keep in contact with, and update, its members online and attract potential new members. The Complainant�s web site has allowed it to offer its services to a wider spectrum of businesses and organizations, and enabled the Complainant to offer new facilities such as an online discussion group forum and a sourcing database.
The Complainant submits that the Respondent offers similar, if not identical services to the Complainant including training and educational services.
The Complainant has submitted a print out of a web site established by the Respondent accessible via said domain name and comments that the only content posted was an advertisement for the services of the Respondent's said APS business.
On October 24, 2000, the Complainant sent a letter to the Respondent by facsimile and post, informing him of its intention to initiate a complaint under the Policy and Rules, if he did not transfer said domain name to the Complainant. The Respondent replied in writing on the same day, and alleged that the Complainant�s claims were unfounded.
The Respondent registered the business name with the Irish Companies Registration Office on October 24, 2000, the same day that the Complainant informed the Respondent of its intention to initiate a complaint under the Policy and Rules.
At some point in time after October 24, 2000, the Respondent amended the content contained on the web site, and began to use the site to promote the services of a new organization called the (hereinafter "the International Federation") by way of a banner advertisement and link to the web site maintained by the Respondent to promote his business trading as APS.
The Complainant, along with other organizations, is an affiliate of the International Federation of Purchasing and Management Materials. This is an international forum for purchasing, materials management, logistics, supply chain management and strategic sourcing and it maintains a web site at . The Respondent applied for membership of this International Federation in mid 2000. The Federation informed the Respondent that the Complainant had already been appointed the official member of the International Federation for Ireland, and the International Federation referred the Respondent back to the Complainant. The Complainant submits that the Respondent has registered a domain name and has arranged that the said domain name defaults to the Respondent�s web site at .
The Complainant submits that the said domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights and states that during the last thirty years, the Irish Institute of Purchasing and Materials Management has established and built up a substantial reputation in its name and initials. Due to its extensive use of the marks the and the , such marks have acquired substantial reputation and recognition in Ireland and internationally among similar institutions and members and are immediately associated with the Complainant by persons within the relevant industry.
In accordance with Section 10 (4)(a) of the Irish Trade Marks Act 1996, the Complainant has acquired rights in these unregistered trademarks and service marks and the , Under Section 10(4), the Complainant has unregistered trademarks in its name and initials, and claims to be entitled to take steps to prevent any other party from registering the Complainant�s name and initials as trade marks in Ireland for educational, training and management services.
In addition, due to the Complainant's extensive reputation, goodwill and investment in its name and initials, the Complainant is deemed to have attained common law rights under Irish law in those marks and would be entitled to bring an action for passing off against any party which sought to infringe those rights.
The Complainant submits that there have been numerous other UDRP panel decisions where it has been held that the relevant complainant's common law rights in marks satisfied the test as set out in paragraph 4 of the Policy viz. Adobe Systems Incorporated v. Domain OZ (WIPO Case No. D2000-0057), Oxygen Media, LLC v. Primary Source (WIPO Case No. D2000-0362) and ESAT Digifone Limited v. Michael Fitzgerald Trading as Telco-Resources (WIPO Case No. D2000-0602).
The Complainant submits that the domain name is identical or confusingly similar to the Complainant�s unregistered trademark and service mark and that the addition of ".com" element is not a distinguishing factor and should be disregarded. It has already been noted that the services of the Respondent are identical, if not similar, to the Complainant's services, i.e. education, training and business management, and that the Respondent's APS business is in direct competition with the Complainant.
The Complainant further submits that the Respondent has no rights or legitimate interests in respect of the said domain name . The Complainant submits that the Respondent has not been commonly known by the domain name. Furthermore, due to the fact that the Respondent was formerly in the employment of the Complainant, he was fully aware of the Complainant�s extensive use and rights in its name and initials. The Respondent was also aware of the Complainant�s established goodwill and reputation in its name and initials.
The Complainant submits that the Respondent did not register the business name until after the Respondent had been notified of the Complainant�s intention to make a complaint under the Policy. Furthermore, the Respondent altered the web site in order to attempt to legitimize its registration and use of the domain name.
The Complainant submits that it was not aware of the establishment of any before October 24, 2000.
The Complainant submits that the web site now promotes the services of the , however, there is still no significant content present on the web site. The Complainant submits that the Respondent has developed only a bare presence on the web site in an attempt to justify his initial bad faith registration of the domain name. The Complainant submits that it is unlikely that the Respondent intends to offer any bona fide service through his web site.
The Respondent has no registered trademark or service mark under Irish law, nor does he possess any legitimate intellectual property rights in the name of the International Institute for Purchasing and Materials Management or the initials .
The Complainant submits that the said domain name was registered and is being used in bad faith. The Complainant submits that it has not entered into any licensing arrangement or joint venture with the Respondent in relation to any aspect of the Complainant's business, including the registration of Internet domain names. Initially after leaving the employment of the Complainant, the Respondent was still a member of the National Council of the Complainant. However, the Respondent was later asked to absent himself from the National Council as he had established a competing association and accordingly the Complainant was concerned that this would inevitably result in a conflict of interest. The Complainant submits that it has had little communication with the Respondent since he left its employment and membership of its Council, and under no circumstances has it entered into any formal relationship with the Respondent.
The Complainant believes that, among other things, the Respondent is deliberately preventing the Complainant from operating a web site incorporating one of its common law marks and is seeking to mislead the existing and potential members and students of the Complainant.
In support of the Complainant's allegation that the Respondent actions were and are in bad faith, the Complainant refers to the decision of the learned panel in Tourplan (e-Resolution Case No. AF-0096) wherein the establishment of a web site by a former employee at a domain name which incorporated the company name of his former employer was held to be sufficient evidence of bad faith under the Policy, even where no offer of sale of the site had been made by the Respondent. This finding was re-affirmed in the WIPO Panel decision in ESAT Digifone Limited v. Michael Fitzgerald Trading as Telco-Resources (WIPO Case No. D2000-0602).
The Complainant submits that as the domain name and the name of the organization being promoted by the Respondent on his web site are confusingly similar, if not identical, to the common law marks of the Complainant, there is a strong likelihood that the existing and potential members and students of the Complainant will assume that the Respondent's web site is controlled by or endorsed by the Complainant in circumstances where the Complainant has no control over the content or presentation of such a site. Thus, the Complainant would be unable to prevent any harm to its valuable reputation and goodwill, which may be caused by such confusion.
The Complainant submits that if the Respondent sought to operate a bona fide service on the web site, the registration by the Respondent of the said domain name and the establishment of a web site offering such services under a confusingly similar domain name would constitute a deliberate attempt to disrupt the business of a competitor.
The Complainant also contends that as the Respondent is a former employee of the Complainant and he was aware of the Complainant�s common law marks, this fact rules out the possibility that the Respondent's use of the domain name was in some way honest, accidental or in good faith. The Respondent�s use of the Complainant�s mark is deliberate and in bad faith.
The Complainant further submits that the Respondent registered the said domain name with a view to preventing the Complainant from operating a web site incorporating one of its common law marks. The Complainant contends that this has been done, either in the hope of disrupting the Complainant�s business or attempting to profit from an association with the marks.
In Tuxedos By Rose v. Hector Nunez (NAF Case No. FA0007000095248) it was held the fact that the Respondent and the Complainant were direct competitors in the tuxedo sales and rental market, meant that the respondents registration of domain names which were confusingly similar or identical to the Complainants' common law marks primary purpose was to disrupt the business of the competitor and clear evidence of bad faith.
In SGS Société Génénale de Surveillance S.A. v. Inspectorate (WIPO Case No. D2000-0025) it was held that as the Respondent and Complainant were direct competitors, that the registration by the respondent of the disputed domain names, which were confusingly similar or identical to the complainants' marks, were made in bad faith.
The Complainant has submitted that the web site has always prominently displayed the banner advertisement of the Respondent and linked to his homepage. It has already been observed that the Respondent is a direct competitor of the Complainant as they each provide identical, if not similar, services in a common market.
In Easyjet Airline Company Ltd v Andrew Steggles (WIPO Case No. D2000-0024) the respondent had placed a link on his web site at the disputed domain address to the web site of a competitor of the complainant. The administrative panel held that due to such actions by the Respondent, the domain name used as the address for the web site was primarily registered to disrupt the business of the Complainant and therefore it was registered and used in bad faith. The Complainant submits that the actions of the Respondent in casu in relation to the domain name address are identical to the actions of the Respondent in the Easyjet case and it would follow that the Respondent�s registration of the disputed address was, and is, primarily for the purpose of disrupting the Complainant's business and also clear evidence of bad faith.
As the Respondent has also registered the domain name and has not even sought to use that site for a legitimate purpose, the Complainant submits that such unexplainable pattern of behavior by the Respondent provides further evidence that Respondent registered and is using both domain names in bad faith. To the Complainant�s knowledge, the Respondent has no registered trademark or service mark under Irish law, nor does he possess any legitimate intellectual property rights in the initials .
In conclusion, it would appear that the Respondent�s only objective in registering both domain names was to intentionally attempt to attract for financial gain, internet users to the Respondent�s web site or other on-line location, by creating a likelihood of confusion with the Complainant�s marks. The Complainant contends that this has been done, either in the hope of disrupting the Complainant�s business or attempting to profit from an association with the mark.
The Complainant also contends that the Respondent sought to prevent the Complainant from reflecting its mark in a corresponding domain name and that the domain name was registered for the purpose of disrupting the business of the Complainant being a competitor.
B. Respondent
The Respondent submits that he successfully completed a Diploma in Purchasing and Materials Management in Waterford Regional Technical College, Ireland in 1992. At that time, the Respondent also served, on a voluntary basis, with the South East Branch of the Complainant and was elected as a representative to the National Council of the Complainant.
The Respondent claims that while he was employed by the Complainant between 1993 and 1996, he was engaged in the co-ordination of activities of the Complainant and developed innovative workshops and events. He was instrumental in the establishment of the Complainant�s distance learning option for its diploma course. The Respondent�s work also entailed liaising with the International Federation.
In 1996, the Respondent left the employment of the Complainant to set up his own business. The Respondent submits that he left on good terms and was re-elected to the Complainant�s National Council at the subsequent Annual General Meeting and he continued to serve on a voluntary basis.
When the Respondent left the Complainant�s employment, he set up a training company called Logistics Training and Consultancy Limited, the sole activity of which was to provide alternative public training seminars and consultancy services to individuals and organisations in Ireland. The Respondent subsequently changed his focus and established the APS business in 1998 to provide a broader range of services. APS is membership based. The Respondent maintains a web site for his APS business located at . The Respondent has been trading successfully as APS for three years and has a customer and membership base in excess of 200. Logistics Training and Consultancy Limited no longer trades.
The Respondent submits that when his new business was up and running, he resigned from the National Council of the Complainant in order to avoid any potential conflict of interest. The Respondent has had little or no contact with the Complainant since then.
The Respondent comments that in its 26 year history, the Complainant has not seen fit to register either of the said marks. The Respondent submits that until September of last year, it appears that the Complainant only saw fit to register one domain name in relation to its business, being , "ie" being the ccTLD for Ireland. The Complainant conducts all or almost all of its business in Ireland. The Respondent states that the Complainant only saw fit to register in September 2000, after it became aware of the Respondent�s ownership of the domain name the subject of this dispute.
The Respondent submits that having successfully developed the business of APS in Ireland, in or about early April 2000, he enquired about the possibility of gaining membership of the International Federation. At that time there was no formal application process and membership essentially required the imprimatur of any existing member within the country in question. However, the Respondent understands that the Complainant (the resident member of the International Federation for Ireland) vetoed the application of the Respondent.
Following this refusal by the International Federation, the Respondent sought alternative methods to create an international network for those interested in sharing and learning from those participating in purchasing and materials management in other countries. The Internet was an obvious medium for such a forum and the Respondent therefore sought, in good faith, to secure an appropriate domain name.
The Respondent chose the name "International Institute for Purchasing and Materials Management" as the working title for this new initiative as it properly describes the nature of the Respondent�s business.
As regards the "international" character of the Respondent's business, the Respondent submits that unlike the Complainant, the Respondent�s business would be focussed internationally and not on the Irish market. The Respondent claims that since the establishment, the has already gathered membership and support from 20 different countries/regions around the globe viz. Australia, Brazil, Chile, Croatia, Finland, France, Germany, Great Britain, India, Ireland, Italy, Malaysia, New Zealand, Northern Ireland, Norway, Slovakia, Spain, Sweden, Switzerland, and the USA. Among those registered to-date with the International Institute for Purchasing and Materials Management are students, consultants, material managers, buyers, academics, company directors, export managers and operations managers. The Respondent has offered to provide the Panel with contact details for its membership base.
The Respondent submits that the primary objects of the Respondent�s organization are the sharing international experience, learning, academic excellence and the promotion of best practice. The Respondent considered that these goals were best reflected by the word "Institute".
The Respondent considered that a new organisation of this kind would not succeed if it tried to work outside the common parlance and understanding of the profession. The Respondent found for example, that a search on the Internet returned approximately 145,000 search results for the phrase "purchasing and materials management". The Respondent argues that this indicates a universal and common understanding of the terminology. The Respondent submits that this terminology is used by the only other global organisation in this sphere viz. the International Federation as well as other national institutes such as the Malaysian Institute for Purchasing and Materials Management.
In these circumstances, the Respondent submits that he chose, in good faith, to register the said domain name because a domain name would obviously be far too long as an Internet address. Therefore, the Respondent investigated whether an abridged version was available. The domain names , and were available so the Respondent purchased the ".com" address as he felt it was the most globally recognised prefix for an international organisation offering online services to those in the purchasing and materials management industry world-wide.
The Respondent states that he did not register or at this time even though both names were then available. The Respondent notes that the Complainant subsequently registered on September 5, 2000, after becoming aware of the Respondent�s registration of .
The Respondent submits that since the Complainant is a non-profit organisation, in the unlikely event that the Complainant would wish to extend its services beyond Ireland, its choice of a domain name with the general Top Level Domain (gTLD) ".org" would be appropriate as ".org" domain names are typically used by non-profit organisations. The Respondent claims that he registered both and on the same day, July 4, 2000, and he claims to have registered on the following day in good faith with a view to establishing an international forum for purchasing and materials management to complement . The Complainant submits that the International Federation is a non-profit organisation which uses the domain name and has recently acquired the domain name . The Respondent refers to the Complainants comments regarding the International Federation and the registration by the Respondent of the domain name and argues that the Complainant has implied that the International Federation regards the Respondent as "squatting" on that domain name. In the ten months that the Respondent has held the domain name , the International Federation has not indicated any difficulty with the Respondent holding the domain name and the Respondent does not anticipate any such difficulty. The Respondent states that it may well be possible to develop mutually beneficial links between the International Federation's web site and the Respondent�s web site.
The Respondent submits that the Complainant is incorrect in alleging that the Respondents APS�s services are still predominantly displayed on the web site. APS never promoted its services on the site but he did for a period previously provide a link to the APS web site. This made it perfectly clear to users of the site that the APS web site was independent of the . The link was provided to APS in good faith to acknowledge the seed capital and resources provided by APS in developing the International Institute for Purchasing and Materials Management.
As regards use of the domain name prior to notification of this dispute, the Respondent received its first notice of the Complainant�s interest in the name when he received a letter from the Complainant dated October 24, 2000.
Although the Respondent was primarily focused on developing the web site, prior to October 24, 2000, the Respondent did take preliminary steps to establish a web presence at the domain name . To this end, in July/August 2000, the Respondent entered discussions with a firm of consultants regarding the establishment of a web site at the domain and these discussions also included training of the Respondent in the creation and maintenance of the web site.
The Respondent also obtained permission to use material from Professional Purchasing Magazine on the web site. In this regard, the Respondent has submitted a memorandum dated September 4, 2000, from said firm of consultants which the Respondent claims clearly illustrates that the Respondent was working towards developing content, preparing a business plan and organising a formal launch for the web site some months before the Respondent became aware of the Complainant�s challenge to the Respondent�s use of the domain name.
The Respondent claims that it was only upon receipt of the Complainant�s letter of October 24, 2000, that the Respondent realised the Complainant�s concerns. In light of the significant time and effort the Respondent was putting into developing the web site and having taken the advice of consultants from September 4, 2000, the Respondent immediately moved to a "holding page" at the address accessible via said domain name, to demonstrate his intention of establishing the . To further protect the position of the International Institute for Purchasing and Materials Management in the event of any proceedings subsequently being issued on foot of the Complainant�s letter, the Respondent at the same time registered the business name . He claims to have been perfectly entitled to do so under the Registration of Business Names Act, 1963.
The Respondent claims that the placing of a holding page on the web site and the registration of the business name were done in good faith with a view to protecting the Respondent�s position pending the issuance of ICANN proceedings by the Complainant. While the Respondent did not regard the claims made in the Complainant�s letter as having any merit and he responded accordingly, the Respondent nevertheless at all times intended to fully defend any proceedings. The Respondent had at all material times intended to place substantial content on his web site as is evidenced by the memorandum from the said consultants of September 4, 2000. The Respondent claims that the Complainant�s letter merely precipitated the bona fide actions of the Respondent.
The Respondent first received official notification of these Administrative Proceedings on March 30, 2001, some six months after the Complainant�s initial letter and the Respondent continued in the development of all aspects the business in the intervening period. However, since the proceedings have been initiated, the Respondent has been forced to cease his development plans for the and his business on his web site at . The Complaint is damaging to the progress of the establishment of the and has forced a state of "limbo" to exist in relation to further development of the www site pending the decision of this Administrative Panel. Further, the Complaint has forced the Respondent to incur unforeseen costs in defending the Complaint and therefore drawing on reserves that would otherwise be available to develop the .
As to the Complainant's claim that the said domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights, the Respondent contends that both the name and in the initials would be likely to encounter problems with registration under Section 8(1) of the Trade Marks Act 1996. In its 26 year history, the Complainant has never registered its alleged trade marks in Ireland or elsewhere and the Respondent concludes that the failure to secure any such registrations indicates the inherent weakness of the marks concerned and that they are probably not registrable.
The Respondent submits that the Complainant has not registered the business name and does not normally trade under the name unless additional and accompanying reference is made to its full title . The Complainant has provided no evidence of use of the initials without accompanying reference to the full name of the Complainant. The Respondent contends that the use of the initials would be meaningless to the general public and to international players in the purchasing and materials management industry in the absence of accompanying reference to the full name of the Complainant.
The Respondent further submits that the Complainant does not ordinarily promote itself as and the letters have not acquired a distinctive character in relation to the Complainant. For example, the Complainant is also commonly known as , , , , and . Further, in an international context within the purchasing and materials management industry, the letters would not be likely to trigger an association with the Irish Institute.
The Respondent trades under the name and . The Complainant�s name is . The only common words between the two names are and which are purely descriptive terms in common parlance in the industry and not capable of distinguishing one entity from another. The key distinguishing factors between the names and between the business models of the two organizations are the geographic indication of the respective business focus of the two entities, International for the Respondent and Irish for the Complainant. The two entities are focussed on different geographical markets.
The Complainant has provided no evidence of any confusion between the Complainant and the Respondent�s web site . The Respondent has received no communications from any parties who confused the International Institute with the Complainant. The Complainant merely claims in its Complaint that the International Institute is "immediately associated with the [Irish] Institute by persons within the relevant industry" but offers no substantiation whatsoever for this claim.
The main publication of the Complainant is the International Purchasing and Supply Magazine, published under the title IPS without any obvious reference to .
The Respondent refers to the decisions of the administrative panels in E.I. du Pont de Nemours and Company �v- Avant Garde Composition (WIPO Case No. D2000-0130) and I Inc. v. Infospace Technology Co. Ltd. (WIPO Case No. D2000-0074) in support of his claim relating to the generic character of the Complainants trademark and service mark.
The Respondent submits that in the present case, the Complainant has established no evidence of confusion in the record.
The Complainant quotes several ICANN decisions in support of its case. Notwithstanding that previous decisions of the Panel are not binding, for the sake of completeness, the Respondent contends that each of the decisions cited can be distinguished. For example:
ESAT Digifone Ltd �v- Michael FitzGerald t/a Telco-Resources (WIPO Case No. D2000-0602) This case was not defended by the Respondent and has therefore little persuasive value. The complainant had a registered trademark and several pending trademarks in the name "DIGIFONE". This was a clear cyber-squatting case with no claim of legitimate rights by the Respondent.
Adobe Systems Inc �v- Domain OZ (WIPO Case No. D2000-0057) and Oxygen Media LLC �v- Primary Source (WIPO Case No. D2000-0362). The Respondent submits that neither of these cases was defended by the respective respondents and all allegations of the complainants were therefore accepted by the administrative panels involved. The first case involved abuse of the trademark which is an extremely well-known brand world-wide. The second case involved blatant typo-squatting. In both cases, the complainants had extensive pending trade mark applications and the existence of unregistered rights was not a deciding factor in the Panel�s decision in light of the clear and substantial worldwide reputations of the complainants in their trade marks.
The Respondent claims that the Complainant�s alleged trademarks are purely descriptive and have not acquired any secondary meaning and are therefore incapable of protection under Irish trade mark law. In particular, the Complainant has failed to establish any secondary meaning in the initials . Therefore the Complainant has no recognized rights in the initials . The Respondent is not passing itself off as the Complainant in any way. When used in the context of the Respondent�s international business, there is no likelihood of confusion with the Complainant�s business and the Complainant has failed to demonstrate any such confusion.
In response to the allegation that Respondent has no rights or legitimate interests in respect of the domain name, the Respondent states that the Complainant is predominantly an "offline" traditional organization involved in the training and education of its members in Ireland. The Complainant has, since 1997, operated a web site located at. In order to register a ".ie" domain name, the applicant must demonstrate a "real and substantive connection with Ireland". The Complainant conducts all or almost all of its business in Ireland and has no establishment outside of Ireland or significant focus on business outside of Ireland. Its members are almost exclusively either individuals located in Ireland or business with a presence in Ireland. and Materials Management.
Until the Complainant became aware of the Respondent�s registration and use of the name , the Complainant had taken no steps to secure the domain names , or even though these domain names were available until July 2000. The Respondent contends that the failure of the Complainant to register these domain names indicates that the Complainant had at no stage before the establishment of the Respondent�s demonstrated any interest in the said domain name or in promoting itself outside of Ireland. This point is further evidenced by the fact that the Complainant only registered after becoming aware of the Respondent�s ownership of . The fact that remains dormant to this day is a further indication that the Complainant has no interest in using the domain name or in promoting itself outside of Ireland. Further, the Respondent has not produced any evidence of confusion in Ireland or abroad between the Complainant and the Respondent.
The Respondent argues that the Complainant cannot be allowed to use its domain name in the ccTLD ".ie" as a grounds for creating a monopoly in all gTLD�s. Using this rationale, any ".ie" domain holder could challenge the legitimate use of an identical domain name using a gTLD even though no cybersquatting is taking place. This approach if taken to its natural conclusion would produce widespread unfair competition on the Internet in relation to descriptive and initial-type domain names.
The Respondent therefore submits that the primary motivation of the Complainant in issuing this Complaint is to stifle the development of the Respondent�s international business.
The domain name was not registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant.
The domain name was not registered in order to prevent the Complainant from reflecting the mark in a corresponding domain name and, in connection therewith, the Respondent has not engaged in a pattern of such conduct. If the Respondent wished to prevent the Complainant trading under domain names involving the initials , the Respondent could easily have registered, for example, or but it did not do so at that time. The Complainant already uses the domain name and has recently registered (which remains dormant) and is therefore more than adequately covered in terms of establishing a web presence. The Respondent�s position in relation to has been explained. The International Federation is a non-profit organization which uses the domain names and . The International Federation has not indicated any difficulty with the Respondent holding the domain name and the Respondent does not anticipate any such difficulty. The Complainant�s reference to the domain name is not therefore relevant to this current dispute.
The Complainant quotes Tourplan (Case No. AF-0096) in support of its allegation of bad faith. The Respondent submits that this case is not binding on this Administrative Panel and argues that in any event Tourplan can be distinguished as the former employee in that case had been dismissed by the Complainant on bad terms and had established a web site in direct competition with that of the complainant. The Respondent in the present administrative proceedings left the Complainant�s employment several years ago on good terms and the Respondent has not sought to establish a web site in competition with the Complainant.
The Respondent in his business using the domain name is not a competitor of the Complainant and, by very definition, could never become a competitor of the Complainant. To this end, the reference by the Complainant to the cases of Tuxedo By Rose (NAF Case No. FA0007000095248), SGS (WIPO Case No. D2000-0025) and Easyjet (WIPO Case No. D2000-0024) are irrelevant to the present case as they were decided on the basis of direct competition and there was clear evidence of bad faith.
The Complainant�s contention that the Respondent is deliberately preventing the Complainant from operating a web site incorporating one of its common law marks is rejected. As shown above, the Complainant already has a web site located at . Since this dispute came to light, the Complainant subsequently registered another domain name at . This latter domain name remains dormant and does not even point Internet users to the ".ie" site of the Complainant. The Respondent feels it is reasonable to presume that the Complainant would take a similar approach to the domain name if this Administrative Panel was to find in the Complainant�s favour in this case.
The Complainant�s contention that the Respondent is seeking to mislead or cause confusion among the existing and potential members and students of the Complainant is also rejected. This allegation is given without any supporting evidence whatsoever. Anyone visiting the Respondent�s web site would clearly know that the web site is in no way connected with the Complainant. Existing members and students of the Complainant are aware of the Complainant�s Internet address and there is no confusion or association between the Complainant and the Respondent.
The Complainant makes a similarly unfounded claim that the Respondent is attempting to disrupt the business of a competitor. No evidence is provided in this regard. The Complainant and the Respondent are not competitors and the domain name was not registered by the Respondent primarily to disrupt the Complainant�s business. Indeed, the Respondent has even offered membership of its International Federation to the Complainant to demonstrate this fact. The Respondent�s motivation for registering the domain name is fully explained above. The domain name is not and has not been used to compete with the Complainant. The domain name is being used to fill a gap in the market for an international electronic medium for players in the purchasing and materials management industry to exchange information and share learning experiences. The Complainant does not compete in this area.
The Complainant has also failed to illustrate any bad faith on the part of the Respondent in the use of the said domain name . The Respondent had taken steps to develop significant content on the web site at the address well before the Complainant indicated any difficulty with the domain name. Before the Respondent received any notice of the dispute, there is evidence of the Respondent�s demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services.
The actions of the Complainant in instituting these proceedings are an attempt to stifle the development of a novel international business forum by an acknowledged expert in purchasing and materials management.
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 Respondents have 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.
The Complainant�s Rights
The domain name in issue in these proceedings is and in order to succeed on the first limb of the test in paragraph 4 of the Policy, the Complainant must establish that this domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The use of the letters are in issue here and not the Complainant�s company name nor the Respondent's business name .
The Complainant uses the letters as part of its ".ie" domain name and claims to have otherwise established a goodwill in the use of these letters in association with its services. On the print-out of the Complainant�s web site, submitted by the Complainant, the Complainant refers to itself throughout as . On the other hand, although the Complainant refers to itself as in the Complaint. This is incorrect as the copy of the Short Certificate of Incorporation of a Company submitted in the Complaint clearly states that the Complainant's corporate name is in fact . The letters do not appear in its registered company name.
The Respondent has submitted that the Complainant has not registered as a business name or as a trademark and does not normally trade under the name unless additional and accompanying reference is made to its full title . Other than this use as a domain name and the statements on the web site referring to itself as the Complainant has provided no evidence of use of the initials without accompanying reference to the full name of the Complainant. The Respondent contends that the use of the initials would be meaningless to the general public and to international players in the purchasing and materials management industry in the absence of accompanying reference to the full name of the Complainant.
The issue of whether the trademark and service mark is generic and/or unregistrable is not relevant to these Administrative Proceedings as these proceedings are only concerned with the domain name . The letters do not make a word and have no meaning and therefore by definition are not descriptive. The decisions of the learned panelists in E.I. du Pont de Nemours and Company v. Avant Garde Composition (WIPO Case No. D2000-0130) and In CRS Technology Corporation �v- Condenet, Inc., (NAF Case No. FA0002000093547) are not relevant here.
It would have been preferable to have had more evidence of use of the letters by the Complainant to distinguish its goods and services. This Administrative Panel considered if there was sufficient evidence of such use. On balance this Administrative Panel accepts that the Complainant has established that it has acquired common law rights in the use of the letters as an unregistered trademark and service mark in association with its business on the Internet and otherwise as claimed by the Complainant. The Complainant clearly uses the letters as its domain name and continually refers to itself as the on the web site at that address. Furthermore, the Respondent has acknowledged such other use, albeit with the reservation that such other use has been in association with the words .
Identical or Confusingly Similar
The domain name at issue is clearly identical to the said unregistered trademark and service mark in which the Complainant has rights.
The Respondent�s Rights or Legitimate Interests in the Domain Name
As regards the Respondent�s rights or legitimate interest in the said domain name, this Administrative Panel is satisfied that the Respondent was aware that the Complainant had used the designation to distinguish its services. Furthermore, while the Respondent argues that he is not interested in the same market as the Complainant, it is clear to this Administrative Panel that while the Respondent may be interested in a wider international market, this would at some level overlap with the domestic Irish market in these services. This overlap would bring the Respondent into conflict with the Complainant�s common law rights in the use of the letters to distinguish its services in Ireland.
Furthermore, despite the argument by the Respondent that the Complainant's activities are based in the domestic market, the Complainant has submitted that it has an international membership and both parties are agreed that the Complainant is a member of the International Federation.
It is also significant that the Respondent did not register the said domain name until July 4, 2000, whereas the Complainant had an established web site at since 1997.
This Administrative Panel has considered the circumstances set out in the Policy whereby a Respondent can establish such rights and legitimate interest in the said domain name and although the Respondent has furnished a detailed Response in these Administrative Proceedings he has not gone any way to answer the prima facie case made by the Complainant. The Respondent has not shown that he has used or made any demonstrable preparations to use the said domain name or a name corresponding to the said domain name in connection with a bona fide offering of goods or services before any notice to the Respondent of the dispute. The Respondent has furnished a letter from a firm of consultants to the effect that the Respondent had entered into discussions during July and August 2000, regarding the establishment of a web site at the Respondents domain address. The Respondent has also provided a memorandum dated September 4, 2000, from a consultant giving the Respondent permission to use material from a magazine entitled Professional Purchasing. Nontheless, this Administrative Panel is not satisfied that such use could be bona fide insofar as the choice of the said domain name and the use of said domain name as an address for a web site would inevitably result in confusion with the Complainant's unregistered trademark and service mark and the Complainant's pre-existing web site at .
Neither has the Respondent shown that he (as an individual, business, or other organization) has been commonly known by the said domain name, even if the Respondent has acquired no trademark or service mark rights. On the contrary it is clear that the Complainant has been using this designation for a number of years and has established common law rights in the said designation. Furthermore, there is no question that the Respondent is 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, because the Respondent is clearly engaged in commercial activity.
Furthermore, the Respondent did not register the letters as a Registered Business Name until October 24, 2000, the day on which the Respondent received a letter from the Complainant advising him of the Complainant�s intention to commence these Administrative Proceedings.
It follows that the Respondent has no rights or legitimate interest in the said domain name.
Registered and Being Used in Bad Faith
As regards the question of whether the said domain name was registered and is being used in bad faith, this Administrative Panel is satisfied that the Respondent chose a domain name which he knew was identical to a service mark in which the Complainant had rights at common law. He is a former employee and National Council member of the Complainant. The Complainant has not entered into any licensing arrangement or joint venture with the Respondent in relation to any aspect of the Respondent�s business including the registration of Internet domain names.
When choosing said domain name the Respondent nonetheless chose to register a domain name which he must have been aware was likely to cause confusion in the Irish marketplace. If the Respondent was genuinely interested in building an institute as he claims to be, it would surely be in his own interest as well as in the interest of the Complainant that such confusion be avoided. It is noteworthy that the Respondent has set out in his submissions that he considered a number of alternatives before deciding on the said domain name.
Furthermore, the Complainant has established that the said domain name links to the Respondents APS web site. It is accepted by both parties that the Respondent carries on a commercial business trading as the or . The Respondent claims to have carried on business under these names since 1998 and that he has a customer base of more than 200 members. This Administrative Panel therefore accepts that this linking is likely to divert customers of the Complainant to the Respondent�s site. It was not until after October 24, 2000, the date on which the Respondent was advised of the Complainant�s intention to initiate these Administrative Proceedings that the Respondent amended the content of his web site to promote his project. He nonetheless chose to register a domain name identical to the unregistered trademark and service mark and this was done in the knowledge that his former employer, an organization on which the Respondent had been a National Council member, had registered and was using the ccTLD domain name as its web address since 1997.
This Administrative Panel is also conscious that the Respondent is presenting APS and the project as though they are separate entities. These are merely business names of the Respondent and his claims that APS provided funding for the project is difficult to understand, since they are each merely trading names for his own businesses.
This Administrative Panel is not concerned with the Respondent�s registration of the domain name .
In the view of this Administrative Panel the Complainant has satisfied the third limb of the test in paragraph 4 of the Policy. In reaching this conclusion, this Administrative Panel notes that the Respondent is a former employee of the Complainant and the circumstances in this case are to some extent similar to those prevailing in Tourplan (e-Resolution Case DeC AF-0096) and ESAT Digifone Limited v. Michael Fitzgerald Trading as Telco-Resources (WIPO Case No. D2000-0602).
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 a trademark and service mark in which the Complainant has rights, that the Respondent has no rights or legitimate interest in respect of said domain name and that the Respondent has registered and is using said 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: May 30, 2001
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