WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
eStructure A/S v. Hagop Doumanian
Case No. D2001-1321
1. The Parties
The Complainant is eStructure A/S of Aaboulevarden 70, 8000 Aarhus, Denmark.
The Respondent is Hagop Doumanian of P O Box 80540, Las Vegas, NV 89180-0540, United States of America
2. The Domain Name and Registrar
The domain name at issue is and the Registrar is Network Solutions, Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received the Complaint on November 21, 2001 (electronic version) and on November 5, 2001 (hard copy). The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). The Complainant made the required payment to the Center.
The formal date of the commencement of this administrative proceeding was November 21, 2001.
On November 15, 2001, the Center transmitted via email to Network Solutions, Inc a request for registrar verification in connection with this case and on November 19, 2001, Network Solutions, Inc transmitted by email to the Center Network Solutions' verification response confirming that the registrant is Hagop Doumanian and that the contact for both administrative and billing purposes is Jack Doumanian.
Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted, on November 21, 2001, to the email addresses provided by the Registrar and the Complainant, the Notification of Complaint and Commencement of the Administrative Proceeding. The Center advised that the Response was due by December 11, 2001. On the same day the Center transmitted by fax and by mail copies of the foregoing documents to the postal addresses for the Respondent provided by the Registrar and as set out in the Complaint.
The Response was received from the Respondent on December 11, 2001 (electronic version) and on December 17, 2001 (hard copy). On December 12, 2001, a Notice of Acknowledgement of Receipt of Response was sent to the Complainant and to the Respondent using the same contact details and methods as were used for the Notification of Complaint and Commencement of the Administrative Proceedings.
Having received on January 4, 2002, Mr. David Perkins' Declaration of Impartiality and Independence and his Statement of Acceptance, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. David Perkins was formally appointed as the Sole Panelist. The Projected Decision Date was January 18, 2002. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.
Having reviewed the communication records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under para. 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent". Therefore, the Administrative Panel shall issue its Decision based upon the Complaint, the Response, the Policy, the Rules and the Supplemental Rules.
4. Factual background
4.1 The Complainant
4.1.1 The Complaint states that the Complainant commenced its business in 1999. On December 22, 1999, the Complainant registered the domain name . On August 10, 2000, the Complainant was incorporated as a Danish limited liability company (A/S) and was registered as such with the Danish Commerce and Companies Agency.
4.1.2 The Complainant states that it is a Pan-European provider of application hosting management focussed on a select number of market leading application platforms. The Complainant states that it is active in 5 significant markets across Europe with offices in Denmark and Germany. It provides what it describes as "scalable Implementation and Operations Methodologies".
4.1.3 No trading figures are given in the Complaint for 1999 and 2000. Turnover for 2001 is stated to be US $5 million and US $100,000 was spent on advertising and promoting the company's name and business.
The Complainant's Trade Mark
4.1.4 No registered trademarks are identified in the Complaint. However, the Complainant claims common law trade mark rights in the eStructure mark. The Complainant puts its case as follows:
"As a result of this intensive use and the substantial sum of money spent on the name, the name has become well known in this specific market and customers have come to associate the name of "estructure" with the Complainant and as a result of this use, the Complainant has obtained the rights to the name of "eStructure" as the dominant part of the domain name according to applicable Danish and international trademark rules and common law."
4.2 The Respondent
4.2.1 The Respondent states that he registered the domain name in issue on December 29, 1999, because it was generic and as such was capable of many applications. The Response gives no particulars about the business of the Respondent. The Respondent states that it has three potential uses for the domain name. First, to retain it for his son who will shortly graduate as a professional Engineer in the State of California and can use the name in association with his practice. Alternatively, the Respondent may develop the domain name himself. Third, the Respondent may decide to sell it on the open market since it is a generic name.
5. Factual background
5.1 Previous cases under the Policy involving the Respondent
The Complaint identifies three.
5.1.1 Lofo High Tech Film GmbH .v. Hagop Doumanian (WIPO Case No. D2000-1085)
The domain name in issue was . The Complainant was formerly known as Lonza-Folien GmbH. It had traded since 1928 and manufactured and sold high tech solvent case films for technically demanding applications. It was part of the Lonza Group of Companies. It filed its first LOFO trademark in December 1998, and from January 1999, sold a variety of goods under the LOFO mark (including laminating films, films for cartoons, scales and name plates, base film for photo sensitive coating, protective covers and sleeves, LCD screens and polarises, membranes for microphones and loud speakers, carrier film for enzymes; safety film, weather proof film, and optical film with high temperature resistance for LCD screens) to a value in excess of US $25 million. The Complainant owned and operated a website at .
In April 1999, the Complainant filed an application in the United States for the LOFO trademark.
No Response was filed by the Respondent. In the Response in the instant case, the Respondent explains that this was because the domain name was not sufficiently important to him. The domain name resolved to two websites both said to be owned or controlled by the Respondent. One site was , which offered domain names for sale, including the domain name in issue. The other site was described in the Complaint as containing explicit pornographic material. The registrant of was Netico, Inc but the address and contact particulars were the same as for the Respondent in the instant case, Hagop Doumanian. Between them Netico and the Respondent had over 50 domain names.
In the dialogue between the Complainant and the Respondent, the party answering on behalf of the Respondent was Jack Doumanian. As stated in paragraph 3 above, Mr Doumanian is the administrative, billing and technical contact for the domain name in issue in the instant case. After the Complainant made contact with Mr Doumanian, he agreed to stop (and did stop) the domain name resolving to the pornographic website. It continued to resolve to the site where it was offered for sale.
The Panel directed transfer of the domain name to the Complainant.
5.1.2 Diversified Gestao e Investimentos Lda .v. Krikor Doumanian (WIPO Case No. D2000-1749)
The domain name in issue was registered in March 2000. The address of the registrant, administrative and billing contact was the same as that of the Respondent in the instant case. The Complainant owned a Community Trade Mark for GILLI of June 17, 1999, for goods in Classes 18 and 24 manufactured by the Italian company, Negozi Richard Ginori Gilli. The domain name in issue resolved to the pornographic website. No Response was filed.
The Panel directed transfer of the domain name to the Complainant. In the Response in the instant case the Respondent states:
"The fact is that this case did not even involve this Respondent."
5.1.3 Paramount Stations Group of Forth Worth / Dallas Inc .v. Netico, Inc (WIPO Case No. D2001-0715)
The domain names in issue were and registered respectively in September and December 2000. The Complainant had used the KTXA mark for its television broadcasting services since 1981 and was found to have established common law rights in that mark. The domain names in issue resolved to the website. After the Complainant sent a cease and desist letter, the domain name in issue was switched to , an on-line gambling site.
Mr. Doumanian was referred to as the Respondent's agent. No Response was filed. The Panel directed transfer of the domain names in issue to the Complainant. In the Response in the instant case, the Respondent states in relation to the D2001-0715 case:
"Respondent registered generic four-letter word domain names and decided not to file a Response because the names were not that important to him. Complainant thereby won by default to the satisfaction of Respondent."
5.2 Dialogue between the Parties
The Complaint states that the domain name in issue, together with the and websites resolve to an index page entitled "HelpSearch". In June and July 2001 the Complaint states that the domain name in issue resolved to a pornographic website.
In late June 2001 the Complainant contacted the Respondent offering to purchase the domain name in issue. Mr. Jack Doumanian on behalf of the Respondent replied with an asking price of US $65,000.
6. The Parties' Contentions
6.1 The Complainant
The Complainant asserts that the domain name is essentially identical or is confusing similar to the eStructure mark in which it claims common law trademark rights. The Complainant further asserts that the Respondent has no rights or legitimate interests in the domain name in issue, since it is not used in connection with a bona fide offering of goods or services, nor is the Respondent commonly known by that domain name. Finally, the Complainant asserts that the domain name was registered and is being used in bad faith. In this respect, the Complaint points to a number of factors, namely:
- the domain name in issue resolved to a pornographic website;
- the Respondent's offer to sell the domain name for US $65,000, a sum greatly in excess of its reasonable out of pocket costs associated with that name; and
- the 3 previous cases involving the Respondent outlined in paragraphs 5.1.1 to 5.1.3 above.
6.2 The Respondent
6.2.1 The Complainant has no trademark rights in the eStructure name
The Respondent's case is as follows:
· The Complainant has no eStructure registered trade mark.
· The Complainant has produced no evidence to support its assertion that common law trademark rights in eStructure have been established since the Complainant company allegedly began trading in 1999. It should, in particular, be noted that:
- the Complainant company was not formed until August 2000;
- no trading figures for the Complainant have been provided for 1999, or 2000. The only evidence is registration on December 22, 1999, of the domain name;
- no evidence has been produced to support the assertion of widespread use and recognition in Europe;
- nor does the Complainant trade in the United States where the Respondent is located.
· The Respondent cites three cases decided under the Policy where Complaints in two were rejected for failure by the Complainant to demonstrate rights in a trademark as required by paragraph 4a(i) of the Policy.
British Heart Foundation .v. Harold A Meyer III (eResolution Case No. AF0957).
The domain name in issue was registered in February 2000. The Complainant was founded in the United Kingdom in 1961 and claimed to have acquired common law trademark rights in the BHF mark.
The Respondent offered to sell the domain name in issue to the Complainant for �20,000.00. The Complainant declined to, whereupon the Respondent redirected the domain name to the British American Tobacco's website.
The Panel held that the Complaint failed to show trademark rights in BHF.
"To succeed in a Complaint under the UDRP in relation to an unregistered mark, however, it is necessary for the Complainant to prove that the mark is in fact a trademark. Thus, the Complainant must produce evidence proving that it provides goods or services under the unregistered mark, and that it has a reputation in the provision of those goods or services under that mark such that members of the public would associate those goods or services with the Complainant and not with others not authorised by the Complainant to use that mark. That is to say, the Complainant must prove that it has a right in the unregistered mark such as would enable it to bring a legal action against a third person using the mark without its consent.
No such evidence has been provided by the Complainant in this case ... . Given the complete absence of any evidence proving that the Complainant has a reputation in the mark BHF of the type described above, it is not possible for this Administrative Panel to conclude that BHF is an unregistered trademark owned by the Complainant. Thus, this Administrative Panel finds that the Complainant has failed to prove the first requirement for a remedy under the Uniform Policy. Accordingly, this Complaint fails."
Pet Warehouse v. P Inc (WIPO Case No. D2000-0105)
The domain name was registered in June 1998 and resolved to the Respondent's website. The Complainant was in the high volume pet supply business. The Complainant had filed PETWAREHOUSE as a US Federal Trade Mark in January 1995 but had later abandoned that application. However the Complainant had used the mark for its Pet Warehouse Mail Order Catalogue since 1986.
The Respondent relied upon the absence of the Complainant having any registered PETWAREHOUSE trademark; eleven News Reports using the term to describe a kind of retail establishment; a New York company selling pet products under the PETS WAREHOUSE name some 10 years before the Complainant began its business under the PET WAREHOUSE name; use of PETWAREHOUSE by a Missouri based retail chain since 1985 (i.e. predating the Complainant's Mail Order Catalogue launched in 1986); and the Complainant's failure to provide any actual evidence of confusion from consumers.
The Panel rejected the Complaint holding that the Complainant had failed to establish rights in the service mark PET WAREHOUSE for the purpose of satisfying paragraph 4a(i) of the Policy. The Panel stated:
"There are three factors that argue convincingly against Complainant's claim to the service mark �Pet Warehouse�. First, two decisions by federal courts in the United States have found arguably similar �warehouse� - formative marks to be generic. Second, the U.S. PTO's rejection of Complainant's application for service mark registration denies a presumption of validity to its claim of exclusive rights in that mark. Third, Respondent has provided substantial evidence to undermine Complainant's claim of service mark distinctiveness."
Plan Express Inc .v. Plan Express (WIPO Case No. D2000-0565)
The domain name in issue was registered in April 1998. The Complainant's application for a registered US trademark for PLAN EXPRESS was filed subsequently in September 1998, although the Complainant had traded under that name since 1994. The Respondent made genuine attempts to develop a website but the cost involved in developing the searching algorithm for the website was too great and the Respondent eventually decided to sell the domain name to a third party for US $4,500.
Although the Complaint succeeded in satisfying the requirements of paragraph 4a(i) of the Policy, it failed under paragraph 4a(ii) by virtue of the Respondent proving demonstrable preparations to use the domain name for a bona fide activity (see paragraph 4c(i) of the Policy).
· Finally, the Respondent relies on its registration of the domain name in issue (December 29, 1999) pre-dating establishment of the Complainant Company (August 2000).
Although the Respondent asserts that the Complaint fails to make the first hurdle of paragraph 4a(i) of the Policy - indeed, the Respondent characterises the Complaint as attempted reverse domain name hijacking - for the avoidance of doubt the Response also addresses paragraphs 4a(ii) and (iii) of the Policy.
6.2.2 The Respondent has rights or legitimate interests in the domain name
Here, the Respondent's case is as follows:
· The prefix "e" does not alter the generic substance of the domain name.
· The Respondent had never heard of the Complainant Danish Company before registering the domain name in issue on December 29, 1999.
· "E" prefixed domain names are not transferred by Panellists under the Policy, except where the "e" precedes a famous mark. The Respondent then cites 10 cases which he maintains evidence that proposition. One of those 20 cases EAuto Inc .v. Available-Domain-N (WIPO Case No. D2000-0120) has clearly been cited in error, since the domain name in issue was ordered to be transferred to the Complainant. Of the Complaints in the other 9 cases, they failed under the following heads of paragraph 4a of the Policy:
Paragraphs 4a(i) and (ii) together
Phoenix Mortgage Corporation .v. Tom Toggas (WIPO Case No. D2001-0101)
Paragraph 4a(ii)
E-Auto LLC .v. EAuto Parts (WIPO Case No. D2000-0096)
EM Inc .v. Noble Scientific (WIPO Case No. D2001-0146)
Interep National Radio Sales Inc .v. Technical Staffing Corporation (WIPO Case No. D2000-0175)
Paragraph 4a(ii) and 4c(iii) together
EPLAN Software & Service GmbH & Co K.G. .v. Chad Folkening (WIPO Case No. D2000-0806) and
Ementor ASA .v. Ryan Zotovich (WIPO Case No. D2001-0226)
eMonkey SA .v. eMonkey (WIPO Case No. D2001-0897)
Paragraph 4a(iii) alone
eM Inc .v. Aspen Grove (WIPO Case No. D2001-0147)
Interep National Radio Sales Inc .v. Internet Domain Names Inc (WIPO Case No. D2000-0174)
The Respondent points to Nike Inc .v. Farruker Zia (WIPO Case No. D2000-0167) as an example of an "e" prefixed domain name - - being transferred where the "e" prefixed a well known trademark. Manifestly, this the Respondent says is not the case with the domain name in issue in the instant case.
· Where a domain name is generic - as in the instant case - the first to register is entitled to that name. The Response refers to 3 cases under the Policy as illustrative of this.
CRS Technology Corporation .v. Condenet, Inc (NAF Case No: FA002000093547). There the domain name in issue was . The Complaint failed to satisfy both paragraphs 4a(ii) and 4a(iii) of the Policy.
Coming Attractions Ltd .v. C (NAF Case No. FA0003000094341). There the domain name in issue was and the Complainant had a Class 25 registration for COMING ATTRACTIONS for clothing. Again, the Complaint failed to satisfy both paragraphs 4a(ii) and 4a(iii) of the Policy.
Canned Foods Inc .v. Ult.Search Inc (NAF Case No. FA0012000096320). There the domain name in issue was . The Complaint failed to satisfy any of the 3 requirements of paragraphs 4a(i) to (iii) of the Policy.
Footnote references are also made to two further cases.
Amana Company LP .v. Vanilla Ltd (WIPO Case No. D2001-0749). There the domain name in issue was and the Complaint failed under paragraph 4a(iii) of the Policy. The other is Lumena s-ka Z0.0 .v. Express Ventures Ltd (NAF Case No. FA0003000094375). There the domain name was and the Complaint was held to fail to satisfy both paragraphs 4a(ii) and 4a(iii) of the Policy.
· Intention to sell a domain name can constitute a bona fide use for the purposes of paragraph 4c(i) of the Policy where the domain name was registered in good faith and - as in the instant case - without actual or constructive knowledge of the Complainant's alleged common law trademark "eStructure" or the existence of its business under that name. As stated above, the domain name in issue was registered on December 29, 1999, but the Complainant was not formed until August 2000. The Respondent refers to V Z VermögensZentrum AG .v. A (WIPO Case No. D2000-0527).
There the domain name in issue was , one of more than 50 generic domain names registered by the Respondent, who maintained that the "vz" were an abbreviation for "virtual zone". The Complaint failed to satisfy the bad faith requirements of paragraph 4a(iii) of the Policy but, on a majority, the Panel found that the Respondent failed to establish rights or legitimate interests in the domain name under paragraph 4a(ii) of the Policy.
In that respect, the division of view amongst the Panellists revolved around whether an offer for sale of a domain name can constitute a bona fide offering of goods or services for the purposes of paragraph 4c(i) of the Policy. The minority considered that, in appropriate circumstances, such could establish rights or legitimate interests, applying the decision in Allocation Network GmbH .v. Steve Gregory (WIPO Case No. D2000-0016). The majority quoted and approved of the view expressed in Libro AG .v. N A Global Link Ltd (WIPO Case No. D2000-0186) that:
"� the mere speculation in generic domain names without showing any demonstrable evidence of plans for the bona fide use is not sufficient to prove legitimate interest in a domain name. Speculation itself is not recognised under the UDRP as a legitimate interest and the UDRP should not be interpreted to hold that mere speculation in domain names is a legitimate interest."
· Finally, the Respondent did not solicit offers to purchase the domain name in issue. Here, it was the Complainant who made the approach to buy.
6.2.3 The Respondent did not register and has not used the domain name in bad faith
Here, the Respondent's case is as follows.
· Answering a request to sell initiated by a Complainant is not evidence of registration or use in bad faith. The Respondent cites N.Inc .v. Easthaven Ltd (CPR Case No. CPR012). The domain name in issue was registered in November 1998. The Complainant acquired the SWEET SUCCESS registered trademark from Nestlé for candy and soft drinks, which had first been used in the United States for candy / confectionery in 1988. The Complaint failed, on the evidence, to satisfy the requirements of both paragraphs 4a(ii) and 4a(iii) of the Policy.
· Bad faith registration does not arise where, as in this case, the domain name in issue was registered (December 29, 1999) before the name of the Complainant Company (August 2000). The fact that the domain name was registered on December 22, 1999 - 7 days before the domain name in issue - was clearly no more than a coincidence.
· As to the 3 earlier decisions under the Policy relied upon by the Complainant, no Response was submitted in any of them. The Respondent's case is noted in relation to those Decisions in paragraphs 5.1.1 to 5.1.3 above.
7. Discussion and Findings
The Requirements of the Policy
7.1 The Policy paragraph 4a provides that the Complainant must prove each of the following:
- That the Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- That the Respondent has no rights or legitimate interests in respect of the domain name; and
- That the domain name has been registered and is being used in bad faith.
7.2 Paragraph 4c of the Policy identifies circumstances which, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all the evidence presented, shall demonstrate the Respondent's rights or legitimate interests for the purposes of paragraph 4a(ii).
7.3 Paragraph 4b of the Policy sets out circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Again, those circumstances are not exhaustive of the circumstances indicating registration and use in bad faith.
Trademark rights in the eStructure mark
7.4 The Panel agrees with the Respondent. The Complainant has totally failed to provide adequate evidence that it acquired common law trade mark rights in the "eStructure" mark either before registration of the domain name in issue on December 29, 1999 or at all. While, of course, each case turns on its particular facts, this Panelist concurs with the criteria for establishing common law trademark rights set out in the British Heart Foundation case (eResolution Case No. AF0957) - see paragraph 6.2.1 above. The Complaint, therefore, fails to meet the first requirement of the Policy and must be rejected.
Rights or Legitimate Interests
7.5 Although it is, therefore, unnecessary to address paragraph 4a(ii) of the Policy, this Panel favours the minority view of Panelist Sorkin in the V Z VermögensZentrum case discussed in paragraph 6.2.2 above. Namely, that in appropriate circumstances the offering for sale of a domain name can constitute a bona fide offering of goods and services for the purposes of paragraph 4c(i) of the Policy. Here, there is absolutely no evidence of bad faith registration by the Complainant of the domain name in December 1999, before the Complainant Company was formed in August 2000. The domain name is generic in character and in the absence of mala fides registration, the Panel considers that offering the name for sale constituted a bona fide activity.
7.6 The Panel does not accept there is any principle that "e" prefixed domain names are routinely not transferred by Panelists under the Policy. All cases are dependent on the particular facts involved.
Registration and Use in Bad Faith
7.7 Again, in the light of the Panel's holding in paragraph 7.4 above, no decision is called for under this head of paragraph 4a of the Policy. But, the parties should know that the Panel does not accept that the Respondent or its alter ego, Mr. Jack Doumanian, was not involved in the Diversified Gestao case (paragraph 5.1.2 above). As noted, the address of the registrant, and the administrative and the billing contact in that case was identical with the address of the registrant, the administrative and billing contact in this case.
7.8 Similar fact evidence of previous registration of third party trademarks as domain names can constitute "a pattern of conduct" for the purposes of demonstrating bad faith under paragraph 4b(ii) of the Policy and, clearly, could have been relevant in this case had the Complainant made out its case under paragraph 4a(i) of the Policy, which it has not.
Reverse Domain Name Hijacking
7.9 Notwithstanding the Panel's rejection of this Complaint for failure to show trademark rights in the eStructure name as required by paragraph 4a(i) of the Policy, the Panel rejects the Respondent's suggestion that the Complainant is guilty of reverse domain name hijacking. In this respect, the Panel adopts the test of Panelist Mr. Scott Donahey in the Plan Express case referred to in paragraph 6.2.1 above:
"The Panel finds that a Respondent must show knowledge on the part of the Complainant of Respondent's right or legitimate interest in respect of the domain name at issue and evidence of harassment or similar conduct by the Complainant in the fact of such knowledge."
7.10 Here, there is no such evidence of harassment or similar conduct. The Complainant asked if the domain name in issue was for sale. The Respondent's asking price of US $65,000 was obviously more than the Complainant was prepared to pay, hence this Complaint. To establish common law trade mark rights in a trading name in just over two years - the Complainant Company formed in August 2000 asserts that it began trading in 1999 - is perhaps a tall order but it is not impossible. In this case, the Complaint simply failed to provide adequate evidence, along the lines outlined by Panelist Christie in the British Heart Foundation case (paragraph 6.2.1 above), to establish such trade mark rights.
8. Decision
For the foregoing reasons, the Panel holds that the Complainant has not discharged the onus in respect of the first requirement of paragraph 4a of the Policy and decides that the domain name should not be transferred to the Complainant.
David Perkins
Sole Panelist
Dated: January 15, 2002
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