WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Digital Vision, Ltd. v. Advanced Chemill Systems
Case No. D2001-0827
1. The Parties
The Complainant: Digital Vision, Ltd., India House, 45 Curlew Street, London SE1 2ND, United Kingdom.
The Respondent: Advanced Chemill Systems, 43153 Business Park Drive, Temecula, California 92590, United States of America.
2. The Domain Name and Registrar
The domain name in issue is (hereafter "the domain name").
The domain name was registered with Network Solutions, Inc., 505 Huntmar Park Drive, Herndon VA 20170, United States of America.
The domain name was registered on September 2, 1997.
3. Procedural History
(1) The Complaint in Case D2001-0827 was filed on June 26, 2001, in email form, and a hardcopy was received on June 27, 2001.
(2) The WIPO Arbitration and Mediation Center has found that:
- The Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules for the Dispute Resolution Policy;
- Payment for filing was properly made;
- The Complaint complies with the formal requirements;
- The Respondent was properly notified of the Complaint in accordance with the Rules, paragraph 2(a);
- A Response to the Complaint was not filed;
- The Respondent was appropriately notified of default; and
- The Administrative Panel was properly constituted.
As Panelist, I accept these findings.
(3) As Panelist, I submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
(4) There have been neither further submissions nor communications from the Complainant and Respondent, or their representatives, after the appointment of the Panel.
(5) The language of the proceedings is English.
4. Factual Background
A. The Complainant
The Complainant runs a business providing royalty-free photographic and other images. A portion of its business is in the online provision of digital images.
The Complainant is the proprietor of a "DIGITAL VISION" mark, which has been a registered service mark in the United States since December 23, 1997, and, which the Complainant asserts has been used in commerce since at least as early as 1995. The Complainant also owns a Community Trademark Registration of a stylized version of the mark DIGITALVISION, effective March 23, 1998. (Hereafter these marks will be termed the "DIGITAL VISION marks"). The Complainant has expended substantial revenue in connection with the advertising and promotion of the DIGITAL VISION marks. Using these marks, the Complainant is the world�s premier publisher of high quality, royalty free imagery and moving footage, servicing customers in over seventy (70) countries worldwide.
Since at least as early as March 25, 1999, the Complainant has been promoting services, which also are identified under the service mark DIGITALVISIONONLINE, on its website located at the URL, . The Complainant uses the DIGITAL VISION and DIGITALVISIONONLINE marks for what has become the world�s premier royalty-free source of photographic and moving images. The Complainant promotes its marks, services and website extensively by featuring them in print advertising, catalogs, brochures and other promotional materials, as well as in activities, such as trade shows. The site is one of the most popular websites in the stock photography industry, receiving thousands of visitors weekly. The website also has won a number of awards.
B. The Respondent
According to the Whois database of the concerned registrar, NSI, the Respondent in this administrative proceeding is Advanced Chemill Systems, of the address given above. No Response was filed and so no further information is known about the Respondent.
C. The Domain Name
The domain name resolves correctly to a basic site that is headed "DV Interactive Media". It provides no other functionality or services.
5. Parties� Contentions
A. The Complainant�s Assertions
The Complainant submits that the Respondent's domain name is identical or confusingly similar to the Complainant�s mark.
The Complainant submits that the Respondent has no legitimate interest or rights in the domain names for the following reasons:
� The Respondent neither has priority rights in the name, nor is it affiliated with the Complainant, nor is it otherwise authorized to use Complainant�s mark. See See Quixtar Investments, Inc. v. Smithberger, WIPO Case No. D2000-0138, April 19, 2000, (only arguable basis for claim that domain name owner has legitimate interests would be if he could show he has prior rights in the name, or was affiliated with an entity he has registered).
� The domain name does not correspond to a company name or product of the Respondent. In fact, the Respondent is engaged in the business of producing equipment for the flat panel display industry, printed circuit board industry and chemical milling industry. DIGITAL VISION is not an apt descriptive or suggestive term for the Respondent�s business, nor has the Respondent ever used it in connection with that business.
The Complainant submits that the Respondent registered the domain name and is using it in bad faith for the following reasons:
� On information and belief, the Complainant asserts that the Respondent registered the disputed domain name for the purpose of selling the domain name, for valuable consideration to at least one of Complainant�s competitors. Specifically, Respondent attempted to sell the domain name to a competitor of Complainant named . In correspondence with the competitor, the Respondent admitted that the domain name was receiving "overwhelming" numbers of inquiries for Complainant, and that Respondent was attempting to sell the domain name with the intent to profit from Complainant�s fame.
� On February 15, 2001, counsel for the Complainant sent a letter to Respondent, via "Express Mail," informing it that DIGITAL VISION is a federally registered mark of the Complainant, and demanding that the Respondent permanently cease all use of the domain name and transfer the domain name to the Complainant. Counsel for the Respondent replied on March 7, 2001, claiming that the Respondent had purported legitimate rights in the domain name. Counsel for the Complainant responded on March 16, 2001, requesting proof of the Respondent�s claims. Neither Respondent nor its counsel ever replied to the Complainant�s counsel�s March 16, 2001 letter. This failure to provide any proof of legitimate use is evidence of bad faith. See Encyclopaedia Britannica v. Zuccarini, WIPO Case No. D2000-0330, June 7, 2000, (failure to respond to a Complainant�s effort to make contact provide "strong support for a determination of bad faith registration and use").
Accordingly, the Complainant requests that the Panel order that the domain name be transferred to the Complainant.
B. The Respondent�s Assertions
The Respondent has not filed a Response.
6. Discussion and Findings
Paragraph 4.a. of the UDRP requires the Complainant to make out three elements:
a) The Complainant has rights in a trade or service mark, with which Respondent�s domain name is identical or confusingly similar (paragraph 4.a.(i)); and
b) The Respondent has no rights or legitimate interests in respect of the domain name (paragraph 4.a.(ii)); and
c) The Respondent registered and is using the domain name in bad faith (paragraph 4.a.(iii)).
A. The Complainant has rights in a trade or service mark, with which Respondent�s domain name is identical or confusingly similar
There are two requirements that a Complainant must establish under this paragraph; that it has rights in a trade or service mark, and that the domain name is identical or confusingly similar to the marks.
The Complainant has provided the registration documents for its DIGITAL VISION marks, within the USA and the EU. Registration for these marks postdate the domain name registration; however, Paragraph 4.a.(i) does not require that the trade mark be registered prior to the domain name. This may be relevant to the assessment of bad faith pursuant to Paragraph 4.a.(iii), which is considered below. I conclude therefore that the Complainant has satisfied the first requirement of Paragraph 4.a.(i). As to the second requirement, the domain name is identical to the trademark, except for the addition of a space between the two words in the domain name. Since it is not possible to render spaces in the domain name system, many cases have concluded domain names to be identical to trade marks in similar circumstances. I conclude that the second element of Paragraph 4.a.(i) is made out.
I conclude therefore that the Complainant has satisfied the requirements of paragraph 4.a.(i) of the UDRP.
B. The Respondent has no rights or legitimate interests in respect of the domain name
The Complainant asserts that the Respondent has no rights or legitimate interest in the domain name, as required under paragraph 4.a.(ii) of the UDRP. It makes a number of specific arguments on this point, as provided above in section 5. In essence it argues that the Respondent has not shown prior use or licensing of the name.
Although no Response was filed, the panel considers it necessary to analyze whether any of the defenses provided in Paragraph 4.c. might apply as the initial burden rests with the Complainant to demonstrate a lack of legitimate interest. Paragraph 4.c. of the UDRP provides the following examples to the Respondent:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.
There is some evidence that the domain name was previously used in the bona fide offering of goods and services, pursuant to Paragraph 4.c.(i). In a letter to the Complainant�s attorneys, the Respondent�s attorneys indicated that the Respondent had previously offered goods and services under the domain name. It is unfortunate that the Respondent made no Response to this proceeding, since it is difficult to assess the veracity of the claim made by the Respondent�s attorneys. Attorneys are free to make largely unsubstantiated claims in response to letters of demand. Of itself therefore I consider that the attorney�s letter is insufficient evidence to invoke the protections of Paragraph 4.c.(i).
There is further evidence of a legitimate interest, again provided by the Complaint. The Complaint indicates that the "[�] Respondent is engaged in the business of producing equipment for the flat panel display industry�." This type of business clearly is one that might legitimately style itself "digitalvision". Again however, in the unfortunate absence of a Response it is impossible for me to assess whether the Respondent has actually ever been in this business, or has ever used the name. I therefore consider this to be insufficient evidence of rights or legitimate interest.
As a result I conclude that the Respondent has no rights or legitimate interest in the domain name. I conclude that the Complainant has satisfied the requirements of paragraph 4.a.(ii) of the UDRP.
C. The Respondent registered and is using the domain name in bad faith
The final issue is that of bad faith registration and use by the Respondent. For paragraph 4.a.(iii) to apply, the Complainant must demonstrate the conjunctive requirements that the Respondent registered the domain name in bad faith and continues to use it in bad faith.
Even in the absence of a Response, I conclude that the Complainant has not made out its case. Although there is some evidence of bad faith use, there is absolutely no evidence of bad faith registration. The domain name was registered in September 1997, and the Complainant began its own online business in March 1999. By its own admission the Complainant did not register its marks until December 1997, some four months after the domain name registration. As a result it is difficult to conceive of how the Respondent could have known of the Complainant at the time of domain name registration, and therefore to have registered the domain name in bad faith. I conclude that the Respondent did not register the domain name in bad faith.
I therefore conclude that the Complainant has not satisfied paragraph 4.a.(iii) of the UDRP.
7. Decision
The Complainant has not made out all of the elements of paragraph 4.a. of the Uniform Domain Name Dispute Resolution Policy.
Pursuant to Paragraph 4.i. of the Uniform Domain Name Dispute Resolution Policy and Rule 15 of the Rules for the Uniform Domain Name Dispute Resolution Policy, the requested remedy is denied.
I hereby order that the domain name remain registered to the Respondent.
Dan Hunter
Sole Panelist
Dated: September 23, 2001
Full & Egal Universal Law Academy