WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Arjen Verkaik v C
Case No. D2001-1502
1. The Parties
Complainant is Arjen Verkaik, RR 3, Elmwood, Ontario, N0G 1S0, Canada, represented by Johan N. Jovanovic, Attorney at Law Factor & Partners, LLC, 1327 W. Washington Blvd., Suite 5G/H, Chicago, IL 60607, USA, hereinafter referred to as "Complainant".
Respondent is C, 11076 E. Kiva Ridge, Tucson, Arizona 85748, USA, represented by Dale F. Regelman, Law Office of Dale F. Regelman, P.C., 4231 S. Fremont Ave., Tucson, AZ 85714, USA, hereinafter referred to as "Respondent".
2. Domain Name and Registrar
The Domain Name in dispute is .
The registrar for the disputed domain name is Tucows Inc., 96 Mowat Avenue, Toronto, Ontario, M6K 3M1, Canada.
3. Procedural History
The essential procedural history of the administrative proceeding is as follows:
(a) Complainant filed a complaint via e-mail, received by the WIPO Arbitration and Mediation Center ("WIPO") on December 28, 2001, and hard copy by courier mail, received by WIPO on January 4, 2002.
(b) On January 3, 2002, WIPO transmitted a Request for Registrar Verification to the registrar, with the registrar�s Verification received by WIPO on January 4, 2002.
(c) Amended Complaint was received via e-mail on January 11, 2002, and in hard copy on January 28, 2002.
(d) On January 29, 2002 WIPO transmitted Notification of the Complaint and Commencement of the proceeding to Respondent.
(e) On February 15, 2002, Respondent submitted a Response by email, and by courier mail on February 19, 2002. WIPO notified acknowledgement of Receipt of Response on February 19, 2002.
(f) On March 7, 2002, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). The same day the undersigned transmitted by fax the executed Statement and Declaration to WIPO.
(g) On March 8, 2002, Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. The date scheduled for the Panel to render its decision to WIPO is March 22, 2002.
4. Factual Background
(1) Complainant
The Complainant is a Canadian individual. Complainant registered the trademark SKYART before the United States Patent and Trademark Office on March 2, 1999. The mark is registered for printed matter featuring the sky and weather, namely, art prints, stationery, posters, greeting cards and books, in class 16, and for stock photography services related to the weather, namely, leasing the reproduction rights of photographic images to others and providing meteorological, photographic and editorial consultation in connection therewith, in class 42.
Complainant has not presented information about his goods and services, in connection with which he has used the mark SKYART.
(2) Respondent
Respondent is an American company. Respondent has not presented information about their services except mentioning that they sell, among other things, photographs of Southern Arizona sunsets.
On the web pages Respondent is described as" a production and consulting company whose prime assets are our professional experience and our network of talented freelancers".
5. Parties� Contentions
A. Complainant
The Complainant contends as follows:
Complainant has been using the mark SKYART in association with its goods and services in the United States and between the United States and Canada since July 1979, and the registration dated March 2, 1999, is based on this use.
Long after the Complainant�s use of the mark, Respondent registered the Domain Name. Complainant contacted Respondent, who was not using the Domain Name at the time, and requested the Domain Name to be transferred to Complainant.
Respondent has not used the mark SKYART, and therefore has no superior rights to it as he had no connection whatsoever with the mark.
Respondent started to use the Domain Name in connection with goods and services identical to those of Complainant only after discussions with the Complainant and after being fully aware of Complainant�s rights in and to the mark SKYART.
The use of the Domain Name was done as an intentional attempt to attract, for commercial gain, internet users to the website , by creating a likelihood of confusion with the Complainant�s mark SKYART as to source, affiliation, endorsement therewith.
The Respondent�s use of the Domain Name to promote goods and services identical to those of Complainant was made in bad faith, as Respondent was fully aware of the rights of Complainant in and to the mark SKYART.
Respondent has refused to transfer the Domain Name, and has after correspondence with Complainant replaced the materials, but the diversion continues to draw out customers that are otherwise searching for Complainant to intentionally divert customers from Complainant. All such efforts have been made in bad faith and in knowing disregard for the rights of Complainant.
B. Respondent
The Respondent contends as follows:
Respondent�s principal, Peter Crown, has been photographing Southern Arizona skies for many years, and the Respondent sells, among other things, photographs of Southern Arizona sunsets. In connection with this, the phrase SKYART has been used on a website since 1995.
At the time of registration of the Domain Name, Mr. Crown had never heard of either Arlen Verkaik or Skyart Inc., and was unaware of Complainant�s alleged use of the mark SKYART.
When contacted by Complainant in 1998, Respondent informed Complainant that Respondent had used SKYART in commerce since 1995, and Complainant acknowledged that he did not hold any trademark registrations for SKYART. Mr. Crown at Respondent believed that the matter had been solved, and Respondent did not hear from the Complainant for another two years.
After registering the trademark in 1999, Complainant renewed his demand for transfer of the Domain Name in 2000. In this correspondence, Complainant repeatedly provided a corporation, Skyart Inc, not the Complainant, as the holder of the registered trademark.
Respondent has chosen not to use the Domain Name until the dispute with Complainant could be resolved, and therefore Complainant has not shown, and cannot show, that Respondent is using the Domain Name to initially create a likelihood of confusion with Complainant�s registered trademark.
Respondent�s use of SKYART in a web site as early as 1995 clearly and unequivocally demonstrates that Respondent has a right/legitimate interest in the Domain Name. Respondent used the feature SKYART in commerce long before his first communication with Complainant. Mr. Crown registered and intended to use the Domain Name in connection with a bona fide offering of goods.
Complainant fails to show that Respondent registered and is using the Domain Name in bad faith.
The facts and circumstances clearly demonstrate that Respondent registered the Domain Name in good faith for a proper purpose. Thereafter, Complainant has unreasonably demanded that Respondent surrender that Domain Name. In reality, this matter comprises Reverse Domain Name Hijacking.
Complainant has proceeded in bad faith since the inception of this controversy. Only after contacting Mr. Crown did Complainant file an application for trademark registration, even though Complainant asserts that he has been using the mark since 1979.
Complainant states that Respondent was contacted in 1999, but the correct year is 1998. There was no communication between the parties in 1999. This is relevant because those dates demonstrate Complainant�s bad faith, as Complainant first contacted Mr. Crown prior to filing an application for registration of SKYART. The assertions that the corporation Skyart Inc., owns the mark further prove Complainant�s bad faith.
The conclusion is that Complainant fails to prove the required elements to support the requested transfer of the Domain Name. Complainant�s lack of diligence is the actual cause of this controversy, and Complainant should not be rewarded for his twenty-year lack of diligence.
6. Discussion and Findings
The Panel has reviewed the Complaint, the Amended Complaint, and the Response, the documents annexed to the Complaint and the Response including the Affidavit from Mr. Crown. In the light of this material the Panel finds as set out below:
Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy lists three conditions that a complainant must satisfy in order to succeed. The Complainant must satisfy that:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests in respect of such domain name; and
(iii) The domain name has been registered in bad faith and is being used in bad faith.
A. Identical or Confusingly Similar to a Trademark or a Service Mark
Complainant registered the mark SKYART on March 2, 1999. The relevant part of the Domain Name is SKYART. It is not contested that this is identical to the registered trademark SKYART.
Respondent argues that Respondent had rights to the mark SKYART before the Complainant�s registration in 1999, and Complainant argues that he has used the mark since 1979. This argument will be dealt with below under the second criteria. When deciding identity or similarity between the Domain Name and a trademark, this Panel is of the opinion that priority of time or possible rights to a mark for both parties does not influence on the decision under the first criteria.
Accordingly, the Panel find that the Domain Name is identical to a trademark or service mark in which the Complainant has rights.
B. Rights or Legitimate Interests in the Domain Name
In this respect, Complainant has to prove that Respondent has no rights or legitimate interests in the Domain Name. Complainant does not expressly assert that Respondent does not have rights or legitimate interests in the Domain Name. However, this can be interpreted from the Complainant�s contention that Respondent had no connection whatsoever with the mark SKYART prior to securing the website.
At present the Domain Name leads to a web page that acts as a holder of web sites.
Respondent states that they have been using the word SKYART since 1995. Respondent has not provided any documentation to prove this. In his affidavit, Respondent�s principal Mr. Crown�s states that the Domain Name was registered and intended for use in connection with a bona fide offering of goods.
Annex 5 to the Complaint contains a printout of the previous content of the web page . According to this is a "source for fine art prints, digital images and screensavers. Sunset, clouds, storms, horizon glow, and other inspiring celestial images".
On Respondent�s home pages one of their services is described as selling digital and photo images of Southwest scenes, especially the sky.
In using the Domain Name in connection with the abovementioned offering of art prints and photo images of the sky, the Respondent in fact has a legitimate interest in the domain name. According to Mr. Crown�s affidavit, Respondent elected to forgo use of the Domain Name until the dispute with Complainant could be resolved. The Panel has no reason to believe that the intended use of the Domain Name is other than in connection with the offering of among other things, photographs of the sky. This is supported by the content of the web pages at , which are developed by Mr. Crown, and which refer to other similar web pages of the Respondent.
In view of these circumstances, the Panel cannot find that Complainant has sufficiently established that Respondent has no rights or legitimate interests in the Domain Name according to Paragraph 4 (a) (ii).
C. Registration and use in bad faith
As the Complainant has failed to establish that Respondent has no rights or legitimate interests in the Domain Name, the complaint must be rejected. Hence, it is not strictly necessary for the Panel to discuss the requirements for registration and use in bad faith according to Paragraph 4 (a) (iii).
However, the Panel still wishes to make some comments to this issue. Complainant is not a commonly known entity. Although Complainant and Respondent come from neighbouring countries, it is not obvious that the alleged use of the mark SKYART by Complainant was known to Respondent before Complainant contacted Respondent.
Paragraph 4 (a) (iii) requires that both the registration and the use of the Domain Name were done in bad faith. It seems clear to the Panel, based on the findings under the second criterion above, that Complainant has not proved bad faith registration or use of the Domain Name.
D. Reverse Domain Name Hijacking
The Respondent claims that the Complainant is guilty of reverse domain name hijacking. Reverse domain name hijacking is defined in paragraph 15 (e) of the Rules as filing the complaint "in bad faith, for example in an attempt to harass the domain-name holder".
To establish reverse domain name hijacking, Respondent must show knowledge on the part of the complainant of the Respondent�s right or legitimate interest in the Domain Name and evidence of harassment or similar conduct by the Complainant in the face of such knowledge; Sydney Opera House Trust v. Trilynx Pty. Limited, (WIPO Case No. D2000-1224) and Plan Express Inc. v Plan Express (WIPO Case No. D2000-0565).
The Panel concludes that there is insufficient evidence in the pleadings and supporting correspondence to sustain a finding of bad faith on the part of Complainant.
7. Decision
The Complainant has not proved that Respondent does not have rights or legitimate interests in the Domain Name.
Accordingly, pursuant to paragraph 4(a)(i) of the Policy, the Administrative Panel denies the Complaint.
Peter G. Nitter
Sole Panelist
Dated: March 19, 2002
Full & Egal Universal Law Academy