WIPO Domain Name Decision D2002-0171 for telekomaustria.com

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Telekom Austria AG v. William L. Stanley

Case No. D2002-0171

 

1. The Parties

The Complainant is Telekom Austria AG an Austrian Corporation of Vienna, Austria. The Complainant is represented by Dr. Andreas Manak of Haarman Hemmelrath Hügel, Attorneys at Law of Vienna, Austria.

The Respondent is William L. Stanley. The Respondent�s address as provided by the Registrar�s Whois database is Kueniglbergstrasse, 46, Vienna, Austria. The Respondent did not file a Response but has filed certain proceedings against the US Department of Commerce in which his address is given as 9503 Blue Creek Lane, Austin, TX, USA.

 

2. The Domain Name and Registrar

The domain name at issue is .

The domain name is registered with Versign/Network Solutions Inc., of Virginia, U.S.A. ("the Registrar"). The domain name was registered by the Respondent on December 18, 1999.

 

3. Procedural History

A Complaint submitted by the above Complainant was received on February 20, 2002, (email) and February 26, 2002, (hard copy) by the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center").

On March 1, 2002, a request for Registrar verification was transmitted by the WIPO Center to the Registrar, requesting it to:

- confirm that a copy of the Complaint was sent to it by the Complainant as required by WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy, paragraph 4(b);

- confirm that the domain name is registered with it;

- confirm that the Respondent is the current registrant of the domain name;

- provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), email address(es)) that are available in its WHOIS database for the domain name registrant, technical contact, administrative contact and billing contact, for the domain name;

- confirm that the Uniform Domain Name Dispute Resolution Policy applies to the domain name;

- indicate the current status of the domain name;

- indicate the specific language of the registration agreement as used by the registrant for ;

- indicate whether the domain name registrant has submitted in its Registration Agreement to the jurisdiction at the location of the principal office of the Registrar for court adjudication of disputes concerning or arising from the use of (i.e The United States District Court for the Eastern District of Virginia, Alexandria Division).

By email dated March 4, 2002, Network Solutions Inc., advised WIPO Center as follows:

- Network Solutions Inc., is the Registrar of the domain name registration .

- William Stanley of TelekomA, Kueniglbergstrasse 46, Vienna, Austria is shown as the "current registrant" of the domain name. TelekomA at the same address is shown as the administrative, billing and technical contact.

- The domain name registration is currently in "active" status.

- The Registrar has currently incorporated in its agreements the Uniform Domain Name Dispute Resolution Policy ("UDRP") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") (hereinafter simply the "Policy").

- The language of the Registration agreement is English.

- The domain name registrant has submitted his Registration agreement to the jurisdiction of the principal office of the Registrar for court adjudication of disputes concerning or arising from the use of domain names.

By virtue of the registration agreement, the Respondent is bound by the provisions of the Policy.

On February 21 and 26, 2002, the Respondent advised the WIPO Center that he had not been advised of the administrative proceeding and that he had been talking to the Complainant�s legal department on a daily basis. On March 1, 2002 he advised WIPO Center that:

a) he did not wish to participate in the UDRP process initiated by the Complainant which he did not recognise as a legal deciding authority;

b) he would be filing federal suit;

c) he was the rightful owner of the disputed domain name which, amongst many functions, operates as a primary and secondary domain server. He threatened the Registrar with legal proceedings.

Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"), the WIPO Center on March 5, 2002, transmitted by post-courier, facsimile, and by email a notification of the Complaint and Commencement of Administrative Proceedings to the Respondent as named in the Complaint.

The Complainant elected to have its Complaint resolved by a sole panelist; it has duly paid the amounts required of it to the WIPO Center.

The Respondent was advised that a Response to the Complaint was required within 20 calendar days. The Respondent was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email. The Respondent did not file a Response. On March 22, 2002, his attorney advised the WIPO Center that the Respondent had on March 21, 2002, commenced proceedings against the US Department of Commerce in the US District Court for the Western District of Texas. In these proceedings, the Respondent challenged the Policy and the policy-making role of ICANN. He sought from the WIPO Center a stay of the present administrative proceedings.

The WIPO Center invited the Honorable Sir Ian Barker QC of Auckland, New Zealand to serve as Sole Panelist in the case. It transmitted to him a Statement of Acceptance and requested a declaration of impartiality and independence.

The Panelist duly advised acceptance and forwarded to the WIPO Center an executed declaration of impartiality and independence. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules. On April 5, 2002, the Complainant sought to file further submissions in response to the Respondent�s email. The Panel has determined not to receive these submissions in view of the fact that the Respondent has chosen not to file a response.

On April 3, 2002, WIPO Center forwarded to the Panel by courier the relevant submissions and the record. The projected decision date is April 17, 2002.

The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules and the Supplemental Rules.

 

4. Factual Background

The Complainant is a provider of mobile and fixed line networks for Internet, data, image and multimedia communications. It serves 3.2 million access lines in Austria with a market share in that country of 63% of voice telephony measured in traffic volume. It has Internet and mobile communications business in Czech Republic, Croatia and Slovenia. It has 18,560 employees and a Group turnover of 3.9 billion EUR in 2000. A subsidiary is the largest provider of mobile communications in Austria with 2.8 million customers. Prior to liberalization of European telecom markets, the Complainant was for many years the only telecom provider in Austria. It owns an Austrian trademark registered in 1995 for TELEKOM AUSTRIA.

The website connected to the disputed domain name contains the legend "TelekomA Terms and Conditions of Use" and statements about abuse of the site. There are no offers, contact details or other customer information provided.

Prior to commencing the administrative proceeding, the Complainant contacted the Respondent with a view to his transferring the domain name to the Complainant or reimbursement of registration fees. In his various responses to the Complainant, the Respondent refused to transfer the domain name. His assertions include the following:

(a) The disputed domain name "� which among other functions (including Telekom history) operates as the primary and secondary name server for many profitable domains and businesses, wholly owned companies and joint venture companies in many countries".

(b) He was still willing to negotiate a transfer when he returned to Austria in March but sought an assurance that no legal steps be taken for 30 days after discussions. (The Complainant claims that it refused to agree with this stipulation.)

(c) Complainant had "shut down" his Internet service in Austria and forced him to manage his business from elsewhere.

(d) He is a part-time resident of Austria.

(e) He is involved in a software development project in Austin, Texas, USA.

(f) He threatened legal action against the Complainant and/or the Registrar.

(g) He was capable, confident, able and experienced to defend himself against large corporations.

 

5. Parties� Contentions

Complainant:

- The domain is identical to the Complainant�s trade mark TELEKOM AUSTRIA, except that the domain name adds the generic top-level domain ".com". According to Mobilkom Austria AG v Herbert Zajic, WIPO Case No. D2001-0466, the addition of the generic top-level domain ".com" is without legal significance in determining similarity.

- The Respondent has no rights or legitimate interests in the domain name. The Complainant gave him none. Furthermore, the Respondent cannot bring himself within Paragraph 4(c) of the Policy because:

(i) The Respondent does not make legitimate non-commercial or fair use of the domain. The website connected to the domain contains only the rather obscure "Telekom A Terms and Conditions of Use" reference and the comments on "abuse". The terms and conditions are not connected to any offer. The website contains neither contact details nor other company service-information.

(ii) The "terms and conditions" were placed on the website in an attempt by the Registrant to demonstrate that the domain name is being used according to Paragraph 4(c) of the Policy. However, according to Paragraph 4(c) the domain name has to be used in connection with a bona fide offering of goods or services. Such offering has not been demonstrated. The website informs about terms and conditions for a service that does not appear to exist. Therefore, the domain name is not used in connection with such bona fide offering of goods or services.

(iii) The Respondent is also not commonly known by the domain name.

- The domain name was registered and is being used in bad faith because:

(i) According to the WHOIS information, the Registrant is an Austrian resident because of the Austrian address given. The Respondent also announced his intention to "return" to Austria. The Respondent because of his connection with Austria, must know that, in registering the domain name , he violated the trademark rights of the Complainant.

(ii) The Respondent�s knowledge of Complainant�s name and trademark can also be deduced from his email in which he used the phrase "� after the way your company treated me �".

(iii) Prior to the commencement of this administrative proceeding, the Complainant contacted the Respondent, informed him of the legal situation and offered to refund the registration fees in return for the Respondent transferring the domain name to the Complainant. The Respondent refused and replied aggressively claiming prior unfair treatment of him by the Complainant.

(iv) In his first reply to Complainant, the Respondent stated that he conducts a business by means of the domain and that he acts as a (host) provider. If correct, the Respondent is a competitor of the Complainant which also conducts business as (host) provider. The Respondent � as an Austrian part-time resident � must have known of the name and mark of the Complainant. He registered the domain name primarily for the purpose of disrupting the business of a competitor. Knowledge of the Respondent of the Complainant�s name and mark can be inferred from the Respondent�s statement that he had had contact with the Complainant in the past.

(v) Respondent�s use of the domain name is an attempt to attract, for commercial gain, Internet users to the website of the Respondent, by creating a likelihood of confusion with the Complainant�s famous name and mark. Users could assume sponsorship of, affiliation to, or endorsement by the Complainant of any product or service on the Respondent�s website.

(vi) The Respondent did not register the domain for business use but in order to prevent the Complainant from reflecting its name and trademark in a corresponding domain name. Alternatively, he acted out of retaliation reasons in order to gain � in case of a transfer of the domain � a benefit from the Complainant.

(vii) The Respondent�s emails lead to the conclusion that he registered the domain name for the purpose of transferring the domain name registration to the Complainant, for valuable consideration in excess of his expenses relating to the domain name. The Respondent declares in his one email, (Annex 13) that he refused to sell the domain to a company from Poland. This does however not exclude the conclusion that he registered the domain name primarily for the purpose of transferring it to the Complainant against valuable consideration.

(viii) The Respondent will not "just surrender the domain" but is willing to open his mind to "reasonable suggestions". This statement implies that he registered the domain in order to transfer it to the Complainant against a valuable consideration in excess of his registration expenses.

Respondent:

The Respondent has filed no Response but supplied a copy of his claim in a US Court against the US Department of Commerce. The Panel cannot accept this pleading in lieu of a Response. Respondent could have addressed all the Complainant�s assertions as detailed in the Complaint. He chose not to do so. The Panel cannot accept allegations recorded in a Statement of Claim presented outside this case proceeding, whether or not accompanied by documentary evidence or affidavits, which could have been filed in support of a Response in the present case. The Respondent clearly stated that he does not accept the Panel�s jurisdiction. The pending suit in the US is res inter alios acta.

 

6. Effect of US Court Proceedings

Paragraph 18 of the Policy permits a Panel, in its discretion, either to suspend or terminate the administrative proceeding or else proceed to a decision in the event of any legal proceedings initiated prior to or during an administrative proceeding "in respect of a domain name dispute that is the subject of the complaint".

The legal proceedings commenced by the Respondent in the United States are not filed against the Complainant or the Registrar but against the US Department of Commerce solely. One of the causes of action refers to the present domain name dispute. Because Paragraph 18 of the Policy refers to proceedings "in respect of a domain name dispute that is the subject of the Complaint", the Panel considers that Paragraph 18 applies where both Complainant and Respondent are parties to legal proceedings which seek to assert or prevent use of the disputed domain name between a trademark owner and a domain name registrant (e.g. Proceedings under the United States Anti-Cybersquatting Consumer Protection Act).

Even if the term �legal proceedings� were to be interpreted more liberally, the Panel does not consider that the present administrative proceedings should be suspended or terminated. The Court in question has no jurisdiction over this Panel or the WIPO Center. The proceedings constitute a challenge to ICANN and the Policy in terms of US constitutional law. One would expect them to take some time to be completed by jury trial as requested in the pleading. The Respondent chose not to participate in the administrative proceeding and present his side of the story to the Panel. Accordingly, the Complainant is entitled to have its Complaint considered by the Panel, which declines to suspend or terminate the administrative proceeding.

 

7. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to:

"decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, these rules and any rules and principles of law that it deems applicable".

The burden for the Complainant, under paragraph 4(a) of the Policy, is to show:

- that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- that the Respondent has no legitimate rights or interests in respect of the domain name; and

- that the domain name has been registered and is being used in bad faith.

The disputed domain name is identical to the Complainant�s registered trademark. The first criterion is proved.

As to the second criterion, the Complainant gave the Respondent no legitimate rights or interests in respect of the domain name. Paragraph 4(c) of the Policy sets out matters which a Respondent is entitled to raise which, if found by a Panel to be proved based on an evaluation of all evidence presented, should demonstrate a Respondent�s rights or legitimate interests to a domain name. The Respondent here has chosen not to submit anything to the Panel in support of any defence he might have under Paragraph 4(c) of the Policy. Consequently, the inference remains that because the Complainant gave the Respondent no rights to the name, he has none. The second criterion has been established.

The Panel is prepared to infer bad faith registration and use by the Respondent for the following reasons:

(a) As a part-time resident of and a visitor to Austria and a person with an address there, he must have been aware of the Complainant and its activities which impinge on the daily lives of Austrian residents who use telephones. Although the Complainant now faces competition, it was a monopoly supplier of telecom services for many years and its brand must have been apparent to most telephone users.

(b) The Respondent�s website offers no goods or services.

(c) The Respondent has clearly indicated that he is not prepared to transfer the domain name to the Respondent for repayment of registration costs. The inference is that he would only contemplate a transfer for a greater consideration. The Panel is in no position to determine Respondent�s motivation for this stance. There is no evidence of any bad treatment of him at the hands of the Complainant.

(d) Registration by the Respondent of the disputed domain name would make the internet user believe that Complainant had endorsed or sponsored the Respondent who was therefore in some way connected with it. This could disrupt Complainant�s business.

 

8. Decision

For the foregoing reasons, the Panel decides:

(a) That the domain name is identical to the trademark to which the Complainant has rights; and

(b) That the Respondent has no rights or legitimate interests in respect of the domain name; and

(c) That the domain name has been registered and is being used in bad faith.

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name be transferred to the Complainant.

 

 

Hon. Sir Ian Barker QC
Sole Panelist

Dated: April 11, 2002

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