WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sintef v. S
Case No. D2001-0507
1. The Parties
The Complainant is Stiftelsen for industriell og teknisk forskning ved Norges tekniske høgskole � SINTEF, 7465 Trondheim, Norway, represented by Mr. Øyvind Hennestad, Legal advisor, SINTEF, Norway ("Complainant").
The Respondent is "s". S is a business name of an unidentifiable business entity with the address Domain for sale at www.BuyD, 4936 Fairmont Ave. Ste 200, Bethesda, MD 20814-6022, USA ("Respondent").
2. The Domain Name and Registrar
The dispute concerns the domain name .
The Registrar is TierraNet, Inc., San Diego, California, USA.
3. Procedural History
The WIPO Arbitration and Mediation Center ("the Center") received the Complainant�s Complaint in electronic form on April 5, 2001 and in hard copy on April 26, 2001, identifying BuyDomains Inc as the Respondent.
The Center verified that the complaint was filed in accordance with the requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules for the Policy ("the Rules"), and the Supplemental Rules for the Policy ("the Supplemental Rules").
Complainant made the required payment to the Center.
On April 11, 2001, the Center transmitted via e-mail to the Registrar a request for registrar verification in connection with this case. The same day, the Registrar transmitted via e-mail to the Center, the Registrar�s Verification Response, confirming that (1) TierraNet is the Registrar of the Domain Name, (2) the Registrant is s and "Domain for sale at www.BuyD" is part of the Registrant�s address, (3) s, BuyD, WebReg is the Administrative, Technical and Zone Contact, (4) the Policy applies to the Domain Name, and (5) the Domain Name is in "Active" status.
On April 24, 2001, the Center transmitted a Complaint Deficiency Notification to the Complainant, informing that the Respondent/Registrant is s, not BuyDomains, Inc.
On April 25, 2001 (e-mail) and April 26, 2001 (hard copy), the Center received the Complainant�s amendment, now stating s as the Respondent.
On April 30, 2001, the Center transmitted the Notification of Complaint and Commencement of Administrative Proceeding, together with a copy of the Complaint, to the Respondent via e-mail and via post/courier to the address identified in the Registrar verification response. The Center advised that (1) the Respondent�s Response was due by May 19, 2001, (2) in the event of default the Center would still appoint a Panel to review the facts of the dispute and to decide the case, (3) the Panel may draw such inferences from the Respondent�s default as it considers appropriate, (4) the Complainant had elected for the matter to be decided by a single panelist.
The Respondent did not submit a timely Response. Accordingly, the Center sent to the Respondent a Notification of Respondent Default on May 21, 2001.
On May 25, 2001, in view of the Complainant�s designation of a single panelist the Center invited Mr. P-E Petter Rindforth to serve as a panelist.
Having received Mr. Rindforth�s Statement of Acceptance and Declaration of Impartiality and Independence, the Center, on May 29, 2001, transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Rindforth was formally appointed as the sole Panelist. The Projected Decision Date was June 11, 2001. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules.
The Administrative Panel shall issue its Decision based on the Complaint (including amendments), the Policy, the Rules, the Supplemental Rules, and without the benefit of any Response from the Respondent. The case before the Panel was conducted in the English language.
4. Factual Background
The Complainant in this administrative proceeding is Stiftelsen for industriell og teknisk forskning ved Norges tekniske høgskole � SINTEF, a research foundation established by the Council of Professors at Norges tekniske høyskole (NTH), Norway, on January 26, 1950.
The name of the foundation is registered in the Norwegian Register of Business Enterprises since November 23, 1988, the year such registration became mandatory in Norway (Annex 5 of the complaint).
The Complainant has used its name without changes since 1950, and is also the holder of the domain name (Annex 6 of the Complaint).
The Domain Name was registered on August 10, 2000.
No specific information is provided about the Respondent�s business activities.
5. Parties� Contentions
A. Complainant
The Complainant contends that the Domain Name is identical to the name SINTEF in which the Complainant has rights, and that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Complainant further contends that the Domain Name is (registered and) being used in bad faith, as the Respondent has offered to sell the same for USD 3688, a rate far above the ordinary registrar charge. The Respondent has no other purpose for its registration than to offering the name for sale, and the Complainant � offering its services world-wide � will suffer from the Respondent�s exploitation of the name.
B. Respondent
The Respondent has not contested the allegations of the Complaint.
6. Discussion and Findings
According to Paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the Respondent�s Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The relevant part of the Domain Name is "sintef", and the Panel concludes that "sintef" is identical to SINTEF, being the acronym of Stiftelsen for industriell og teknisk forskning ved Norges tekniske høgskole (the full name of the Complainant).
As stated above, the Complainant is the owner of the registered trade name SINTEF - Stiftelsen for industriell og teknisk forskning ved Norges tekniske høgskole. Trade names are protected internationally under the Paris Convention for the Protection of Industrial Property in Article 8, 9 and 10biz. The function of a trade name differs from a trademark in that a trade name distinguish the owners entire business, independently of any goods or services he may offer. For various reasons � further specified and discussed in the Interim report of the Second WIPO Internet Domain Name Process (WIPO2), Paragraph 287 � 330, trade names as such are, however, not the subject of the current Policy.
The Complainant is not the owner of any registered trademark or service mark for SINTEF. As stated in Jeanette Winterson v. Mark Hogarth (Case No D2000-0235) and other cases, the Policy is not limited to registered trademarks, also unregistered marks are sufficient for the purposes of paragraph 4(a)(i) of the Policy.
The question is: Has the Complainant established unregistered trademark rights to the SINTEF part of his trade name?
The Panel finds that the Complainant offers rather limited information on the use of SINTEF. However, the Panel has considered the following facts:
- SINTEF may be considered as the distinctive part of the trade name
- The Complainant use the acronym SINTEF in communication to the public (Annex 4 and 6 of the Complaint)
- SINTEF has been used to identify the Complainants research services for more than 50 years
According to Norwegian company name and trademark law and practice (WIPO2, Annex XIII, page 18, paragraph 46) "company names can also be protected as trademarks through registration or use", and this panel agrees with what was said by the administrative panel in Skattedirektoratet v. Eivind Nag (Case No. D2000-1314) which stated that "Norwegian Trademark Law also recognizes rights on unregistered marks on the condition that they have acquired distinctiveness through use".
The Panel therefore concludes that the Complainant has established trademark rights (common law rights) to SINTEF by use. The Domain Name is identical to the Complainant�s trademark SINTEF.
There is no evidence that the Respondent has rights to use the Complainant�s trademark, or is an authorized agent or licensee of the Complainant�s products, services or trademark. The Respondent has further failed to produce evidence of any other legitimate interests in respect of the Domain Name.
The Complainant must also prove that the Domain Name has been registered and is being used in bad faith. Again, the Panel finds that the Complainant has not filed any extensive arguments or documentation to prove the requirements of paragraph 4(a)(iii) of the Policy. The Complainant only states that the Domain Name is offered for sale "at a rate far above ordinary rates" and has provided a copy of an e-mail (Annex 7 of the Complaint) from pricerequest@buyd informing that the Domain Name is for sale for "currently USD $3688.00", with the additional message:
"This name is now available to be purchased by the public so please make sure you are the first to secure it".
As the e-mail message begins with the phrase "Thanks for your inquiry", it is obvious for the Panel that the Complainant has made the first approach. The Complaint gives no further information on the circumstances (dates, etc) or reasons for this approach, however the Panel concludes, from the reply by BuyD, that the Complainant has not made an offer to buy the Domain Name but rather made an inquiry in general terms whether the Domain Name was available.
From the information given by the Registrar, it seems to the Panel that the Respondent � by referring to himself as "s" with the address "Domain for sale at www.BuyD" - has not only taken an active step to conceal his true identity, but also indicating that the Domain Name was registered for the only purpose of selling the same.
Given the above circumstances, the Panel concludes that the Respondent has registered the Domain Name primarily for the purpose of selling the Domain Name to the Complainant or to a competitor to the Complainant, for a valuable consideration in excess of the Respondent�s out-of-pocket costs directly related to the Domain Name. Accordingly, also the test of paragraph 4(a)(iii) of the Policy has been met.
7. Decision
The Panel concludes (a) that the Domain Name is identical to the Complainant�s common law trademark SINTEF, (b) that the Respondent has no rights or legitimate interest in the Domain Name, and (c) that the Respondent has registered and used the Domain Name in bad faith.
Therefore, pursuant to paragraphs 4 (i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant SINTEF - Stiftelsen for industriell og teknisk forskning ved Norges tekniske høgskole.
P-E Petter Rindforth
Sole Panelist
Dated: June 9, 2001
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