WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hay & Robertson International Licensing AG v. C. J. Lovik
Case No. D2002-0122
1. The Parties
The Complainant is Hay & Robertson International Licensing AG, Klosters, Switzerland. Its authorized representative is Mattli Hew Meisser Weinmann, Davos-Platz, Switzerland.
The Respondent is C. J. Lovik, Spokane, WA, USA.
2. The Domain Name and Registrar
The domain name at issue is .
The Registrar is Intercosmos Media Group, Inc. 650 Poydras street, Suite 2311, New Orleans, LA 70130, USA.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center ("the Center") by e-mail on February 5, 2002 and a hardcopy was received by the Center on February 7, 2002. The Center acknowledged the receipt of the Complaint on February 8, 2002.
On February 11, 2002 the Center sent to Intercosmos Media Group a request for verification of registration data. On February 18, 2002, Intercosmos confirmed that it is the Registrar, that the Respondent is the Registrant of the domain name , and that the Respondent is also the administrative, billing and technical contact.
WIPO verified that the Complaint satisfied 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) and that payment was properly made. The Panel is satisfied this is the case. On March 12, 2002, the Complaint was properly notified in accordance with the Rules, paragraph 2(a), and the administrative proceedings commenced.
Since no communication was received from the Respondent within the time limit set, the Center sent a default notification to the Respondent, on April 4, 2002.
On April 17, 2002, the Center notified the Parties that an Administrative Panel, composed of a single member, Dr. Gerd F. Kunze, had been appointed and that the Panelist had duly submitted a "Statement of Acceptance and Declaration of Impartiality and Independence" to the Center.
No further submissions were received by the Center or the Panel. The date scheduled for issuance of the Panel�s decision is May 1, 2002.
4. Factual Background
A. Complainant
The Complainant is the owner of registered trademarks for the word ADMIRAL for clothing, in particular sports clothing, which it licenses to manufacturing companies. In the United Kingdom trademark rights for ADMIRAL go back at least to 1950 and in Spain the trademark ADMIRAL has been registered since 1965. In 1965 the trademark ADMIRAL has also been internationally registered under the number 293 441 for "Pantalons et maillots de bain, vêtements et confections en général". The international registration covers, amongst others, France, Germany, Hungary, Italy, Portugal and Switzerland. These trademark registrations and their ownership by the Complainant are evidenced by copies of registration certificates and extract from the registers of the United Kingdom, Spain and the International Bureau of WIPO in Geneva.
The trademark ADMIRAL is being used under license of the Complainant in different countries for sports wear, especially for football/soccer clothing and leisure wear, such as pants, sweaters, t-shirts and other kinds of clothing, shoes and boots, hats and caps. In particular, in Canada and in the United States the trademark ADMIRAL is used under license of the Complainant for sports wear for soccer teams, as evidenced by copies of websites of "Admiral Canada", Markham Ontario , and "Admiral Soccer", a division of High 5 Sportswear, Inc, USA ().
B. Respondent
The Respondent registered on September 13, 2001, the domain name .
5. Parties� Contentions
A. Complainant
The Complainant submits that (1) the domain name is identical or confusingly similar to a trademark or service mark, in which the Complainant has rights; (2) the Respondent has no rights or legitimate interests in respect of the domain name; (3) the domain name was registered and is being used in bad faith.
B. Respondent
The Respondent has failed to submit any statement. It has therefore not contested the allegations of the Complaint and the Panel shall decide on the basis of Complainant�s submissions, and all inferences that can reasonably be drawn therefrom (Rule 14(b) of the Policy).
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the domain name of the Respondent be transferred to the Complainant:
1) the domain name is identical or confusingly similar to a trademark or service mark ("mark") in which the Complainant has rights; and
2) the Respondent has no rights or legitimate interests in respect of the domain name; and
3) the domain name has been registered and is being used in bad faith.
1) Confusing Similarity with a Mark in which the Complainant has rights
The domain name is identical with the trademark "ADMIRAL" in which the Complainant has rights (the generic tld indicator ".info" cannot be taken into consideration when judging identity or confusing similarity).
2) Legitimate Rights or Interests in respect of the Domain Name
The Respondent has no connection or affiliation with the Complainant, who has not consented to the Respondent's use of the domain name, which is identical with its trademark. Simple stocking of the domain name by the Respondent does not create any right or legitimate interest in the domain name.
Furthermore, none of the circumstances listed under 4(c) of the Policy, possibly demonstrating rights or legitimate interests, are given. The Respondent does not use (commercially or non-commercially) the domain name and he has not submitted to have an intention to use it in the near future. He has not been commonly known under that domain name. Also, he did not submit any circumstances that might show a legitimate interest in the domain name.
In the absence of any submission of the Respondent, the Panel therefore concludes that the Respondent has no rights or legitimate interests vis-à-vis the Complainant in the domain name .
3) Registration and Use in Bad Faith
For a Complainant to succeed, the Panel must be satisfied that a domain name has been registered and is being used in bad faith. The question is therefore, whether the passive holding of the domain name can be considered to be registration and use in bad faith, taking into account all circumstances of the present case.
In that context, it has been convincingly argued in Telstra Limited v. Nuclear Marshmallows, WIPO Case No. D2002-0003, that inaction of the Respondent is within the concept of Paragraph 4(a) of the Policy.
The Complainant has submitted the following facts and arguments to support its claim that the Respondent has registered and is using the domain name in bad faith:
During the sunrise period for the new ".info" domain, in which only trademark owners, who submitted proof of their corresponding trademark registration, were allowed to register domain names in the ".info" domain, the Respondent has registered 360 domain names consisting of words, which generally are either generic or purely descriptive, for which he clearly could not (and did not) submit any proof of trademark ownership. As evidenced by the Complainant, the Respondent is listed in as one of the champions of registrants of domain names in the ".info" sunrise period, who in breach of the rules set by the Registrar registered these domain names without any proof of corresponding trademark rights. Thus he blocked third persons, who were interested in registering one of these domain names, when the ".info" domain was opened for registration by the public. This unfair behavior of the Respondent is strong evidence that he acted in bad faith, when registering the domain name in September 2001. Such assumption is backed by the fact that, as evidenced by the Complainant, ADMIRAL soccer wear is advertised in Canada and in the United States on the Internet (where it is expressly mentioned that ADMIRAL is a trademark which is used under license).
In the absence of any submission of the Respondent to the contrary, the Panelist is therefore satisfied that the Respondent, when he registered the domain name , was aware that ADMIRAL is a registered trademark.
Since the Respondent is known to have registered hundreds of domain names in the ".info" domain, and apparently is not exercising any business under any of these domain names, including the domain name , the only reason for these registrations can reasonably be his intention to try and sell these domain names to interested persons. As concerns the domain name , which is identical to a trademark, in which the Complainant has rights, these circumstances indicate that the Respondent has registered the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name to the Complainant or to a competitor of the Complainant for valuable consideration in excess of his out-of-pocket expenses (paragraph 4(b)(i) of the Policy). In the absence of any submission of the Respondent to the contrary, the Panelist is therefore satisfied that the Respondent has registered and is using the domain name in bad faith.
7. Decision
The Panel decides that the Complainant has proven each of the three elements of paragraph 4(a) of the Policy.
Pursuant to paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel requires that the registration of the domain name be transferred to the Complainant.
Dr. Gerd F. Kunze
Sole Panelist
Dated: April 29, 2002
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