WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dr. Pfaff GmbH v. Charles Eaton
Case No. D2002-0320
1. The Parties
Complainant is Dr. Pfaff GmbH, Munich, Germany ("Complainant").
Respondent is Charles Eaton, Cambridge, Massachusetts, United States of America ("Respondent").
2. The Domain Name and Registrar
The domain name at issue is .
The Registrar is Network Solutions, Inc. ("NSI").
3. Procedural History
A Complaint was submitted by e-mail to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on April 3, 2002, with a hard copy following on April 18, 2002. The WIPO Center sent an Acknowledgement of Receipt of Complaint to the Complainant on April 9, 2002.
On April 12, 2002, a Request for Registrar Verification was transmitted to the Registrar (NSI), and on April 17, 2002, the Registrar confirmed that it was in receipt of the Complaint and that it was the Registrar of the domain name. The Registrar forwarded the requested WHOIS details.
A Formal Requirements Compliance Checklist was completed by the WIPO Center and the Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy ("the Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), as approved by ICANN on October 24, 1999, and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the WIPO Supplemental Rules"), in effect as of December 1, 1999. The Complainant paid on time and in the required amount the fees for a single member Panel.
On April 19, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent by the required means, setting a deadline of May 9, 2002, by which the Respondent could file a Response to the Complaint.
On May 2, 2002, Complainant submitted a Supplemental Filing, the receipt of which was acknowledged at the same day by the WIPO Center. Since this submission was filed well before the deadline for the Response, the Panel has decided to allow it.
On May 13, 2002, having received no Response, the WIPO Center sent a Notification of Respondent Default to the Parties.
The WIPO Center then invited Mr. Knud Wallberg to serve as Panelist in the case, and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence.
Having received the Statement of Acceptance and Declaration of Impartiality and Independence from Mr. Knud Wallberg, the WIPO Center transmitted on May 23, 2002, to the parties a Notification of Appointment of Administrative Panel and the Projected Decision Date.
The Panel finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the WIPO Supplemental Rules.
The Administrative Panel has thus issued its Decision based on the Complaint, the supplemental filing by the Complainant, the Policy, the Rules, and the WIPO Supplemental Rules but without the benefit of a Response from the Respondent.
4. Factual Background
Complainant's business and trademarks
No general information on Complainant�s business activities has been provided.
The trademark "DOC it" is registered and used for goods and services in international classes 9, 16 & 42 in Germany and in a number of other European countries via the Madrid Agreement and the Madrid Protocol. Copies of the registration certificates were provided as Annex to the Complaint.
Respondent
The Respondent has not furnished the Panel with any detailed information on his activities.
5. Parties� Contentions
A. Complainant
This Complaint is based on the following grounds:
Identical or similarity
The domain name is identical to the trademark DOC it in which the Complainant has rights.
The Respondent�s domain name in question is . The main identifier of the domain name � docit - is essentially identical to the trademark of the Complainant. The minimal distinction in which the domain name has no space character between doc and it, but this difference is based on a nature of domain registrations generally. A domain can not be used because of technical facts. A domain name must not have a space character.
No rights or legitimate interests in respect of the domain name
The Respondent has no legitimate interests in respect of the domain name .
The Complainant�s German trademark DOC it! was officially registered more than three years prior to the registration of the Respondent�s domain: the trademark was registered on January 24, 1997. The Complainant�s IR-Trademark was officially filed on July 13, 1999, and registered with the priority of the German trademark. The Respondent�s domain name was registered on June 14, 2000.
From the initial point in time (April 2, 2001) at which the Complainant called up the Respondent�s internet page under the domain until the present time, nothing ever appeared on this internet page except the words "Under Construction" and the message "This site is currently under construction. Please check back at later time." On October 9, 2001, the Complainant contacted the Respondent by fax sent to the Respondent�s fax number, inquiring about the Respondent�s intentions and plans concerning the Internet page and the domain name. The Respondent never replied.
On November 21, 2001, the Complainant sent a second facsimile to the respondent again requesting information regarding the Respondent�s use of the domain name. The Respondent did not respond.
In view of Complainant�s trademark registrations and Respondent�s failure to present any justification for use of the domain name, and this despite Complainant�s efforts to contact the Respondent, the Complainant can only conclude that Respondent has no legitimate interests or rights to this domain name.
Registration and use in bad faith
The trademark of the Complainant was already registered when the Respondent filed an application for registration of the domain name .
The Respondent did not answer to the letters of the Complainant, which set forth the Complainants rights.
Currently, one can still read only the words �Coming soon" combined with a short message on the Internet page called up by this domain name. Since the first data-recall facility on April 4, 2001, there have been no changes of note.
The domain was registered on June 14, 2000. Over one and a half year there were no changes and nothing could be seen at this page except the message �Coming soon...".
All these facts indicate that the Respondent never had had a serious interest in using the domain. Additionally, the Respondent knew of the Complainant�s rights during the registration period and subsequent to the registration period. The Respondent neither answered Complainant�s correspondence nor made any efforts to resolve the problem created by his domain name use.
B. Respondent
As already stated the Respondent has not filed a response.
6. Discussion and Findings
According to Paragraph 15(a) of the Rules, the Panel shall decide a Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) 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
2) that the Respondent has no rights or legitimate interests in respect of the domain name; and
3) that the domain name has been registered and is being used in bad faith.
Identical or Confusingly Similar
The Complainant�s mark "DOC it" is a distinctive word that is registered and has been used in a number of European countries.
The contested domain name contains the mark in its entirety with the addition of the .com gTLD denomination.
The domain name is thus quasi-identical to the trademark in which the Complainant has rights.
The requirements set out in the Policy, Paragraph 4(a)(i) are therefore fulfilled.
Legitimate Interest
The Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for any domain name incorporating the mark.
Further, the Respondent has not demonstrated that he has any prior rights in the domain name and no evidence has been put before the Panel that shows that Respondent was commonly known by the domain name before that time or that non-commercial or fair use of the domain name has been or is being made .
The requirements of the Policy, Paragraphs 4(a)(ii) have also been met.
Bad Faith
Paragraph 4(a)(iii) of the Policy further provides that the Complainant must prove registration and use of the domain name in bad faith. Paragraph 4(b) sets out, by way of example, the kind of evidence that may be put forward.
The burden of proof of bad faith lies with Complainant. The trademark is neither registered nor used in the country where Respondent is a resident namely the United States of America. Complainant has not offered evidence that could suggest that Respondent had or should have had knowledge of Complainants rights when he registered the contested domain name.
Under these circumstances the Panel finds that it cannot be considered to be bad faith that Respondent upholds the registration even after he has been made aware of Complainants rights to the mark in other countries.
It should also be noted that the mere fact that you, when approached by someone, show a willingness to sell a domain name does not in itself constitute bad faith.
Consequently, the Panel finds that the requirements set forth in Paragraph 4(a)(iii) of the Policy are not met. See University of Maryland University College v. Nucom Domain Brokers &Urban Music Underground Club, WIPO Case No. D2002-0081 (April 29, 2002) with additional references.
7. Decision
In view of the above circumstances and facts the Panel finds that the domain name registered by the Respondent is identical to the trademark in which the Complainant has rights, that the Respondent does not have any rights or legitimate interests in respect of the domain name, but that it has not been shown that the domain name has been registered and is being used in bad faith.
Consequently, the Panel decides that the Complaint shall be dismissed.
Knud Wallberg
Sole Panelist
Dated: June 3, 2002
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