WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SES Astra S.A. v. Transcom ISP/Design Technology Ltd.
Case No. D2002-0745
1. The Parties
Complainant is SES Astra S.A., Château de Betzdorf, Luxembourg ("Complainant").
Respondent is Transcom/Design Technology Ltd., Berkshire, England ("Respondent").
2. The Domain Names and Registrar
The domain names at issue are , and.
The Registrar is B, Inc., Baltimore, United States of America.
3. Procedural History
A Complaint was submitted by e-mail to the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on August 8, 2002, with a hardcopy on August 13, 2002. The Center sent an Acknowledgement of Receipt of Complaint to the Complainant on August 12, 2002.
On the same day a Request for Registrar Verification was transmitted to the Registrar, and the Registrar confirmed that it was in receipt of the Complaint and that it was the Registrar of the domain names. The Registrar forwarded the requested WHOIS details.
A Formal Requirements Compliance Checklist was completed by the Center and the Panel has independently determined and agrees with the assessment of the 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.
On August 14, 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 September 3, 2002, by which the Respondent could file a Response to the Complaint.
After this the parties and the Center were engaged in detailed discussions on some technical and formal questions, which were, however, all solved.
On August 28, 2002, the Center received the Response in the case.
The 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 Center transmitted on September 2, 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 Response, the Policy, the Rules, and the WIPO Supplemental Rules.
4. Factual Background
Complainant�s Business and Trade Marks
SES Global is quoted on the Luxembourg Stock Exchange and the Frankfurt Stock Exchange, and is engaged in the business of global satellite communications. SES Global was born on November 12, 2001, out of the combination of ASTRA, Europe�s leading provider of satellite capacity for direct-to-home reception, and AMERICOM, one of the leading Fixed Satellite Services operators based in the United States of America.
SATLYNX, formed by SES Global and Gilat Satellite as a joint venture, provides European two-way broadband satellite services.
The Complainant has applied for the following United Kingdom and Benelux trade marks (the "Trade Marks"): TRADE MARK COUNTRY APPLICATION NUMBER SPECIFICATION OF GOODS AND SERVICES DATE OF APPLICATION
SATLYNX
United Kingdom
2297633
Telecommunications; Satellite telecommunications services; satellite television programme broadcasting; all these services with the exception of mobile uplink services
March 15, 2002
SATLYNX
Benelux
1007386
Telecommunication Services by Satellite; Satellite Television Broadcasting; Setting for Disposal Equipment allowing distribution and satellite television industry
March 15, 2002
The above trade mark applications have not, to the knowledge of the Complainant, been the subject of any challenge. Copies of printouts evidencing the applications from the United Kingdom Trade Marks Registry and from the Compumark Database respectively, were attached to the Complaint.
SATLYNX Domain Names
SES Astra, a subsidiary of SES Global, registered the domain name on March 26, 2002, and recently acquired from a third party the domain name (registered on October 6, 2001). Such acquisition took place on June 5, 2002, the same day as the publicized launch of SATLYNX. SES Astra has also registered the domain names and .
Respondent
Design Technology Ltd. has been actively trading as Transcom ISP since June 18, 1993, with primary interests within the satellite access technologies for its ISP activities and customer user base.
5. Parties� Contentions
A. Complainant
The Complaint is based on the following grounds:
The Domain Names are Identical or Confusingly Similar to the Complainant�s Trade Marks
By virtue of the presence of the word "SATLYNX" in the domain names, the domain names at issue contain a word which is identical to the Trade Marks.
The Respondent�s Lack of Legitimacy
There is no evidence to suggest that the Respondent has any rights or legitimate interests in , or . To the best of the Complainant�s knowledge, the Respondent:
(a) has not used or engaged in any demonstrable preparations to use any of the domain names or a name corresponding to any of the domain names in connection with a bona fide offering of goods and services which relate to "SATLYNX"; and
(b) is not commonly known by any of the domain names; and
(c) is not making a legitimate non-commercial or fair use of any of the domain names, without intent for commercial gain to misleading divert consumers or to tarnish the trade mark or service mark.
Moreover, the Complainant submits that the Respondent should be considered as having no rights or legitimate interests in , or . Any visitor to any of the domain names in question is simply met with a logo depicting a hot beverage and the quote, "What�s Brewin�?" The links available on the page merely inform the visitor of the Respondent�s services under the name of TRANSCOM ISP. Given the pre-eminent status of both the two companies which have formed the joint venture SATLYNX, and the notoriety of the Trade Marks in the telecommunications industry, none of the domain names is one which another trader would legitimately choose unless that trader sought to:
(a) create an impression of an association with the Complainant;
(b) create an impression of an association with the SATLYNX joint venture;
(c) attract business from the Complainant; and/or
(d) misleadingly divert members of the public.
Respondent will never be capable of using any of the domain names in issue for a legitimate purpose as the pre-eminence of the joint venture SATLYNX, the companies forming the same, and of the Trade Marks is such that members of the public will always assume that there is an association between the Respondent and SATLYNX and/or between the Respondent and the Complainant, and/or between the Respondent and the Trade Marks.
The Complainant has not licensed or otherwise permitted the Respondent to use the Trade Marks or any other trade marks incorporating the SATLYNX mark. The Complainant has not licensed or otherwise permitted the Respondent to apply for or use any domain name consisting of or incorporating the Trade Marks. For these reasons, the Complainant contends that the Respondent has no rights in respect of the domain name at issue.
Evidence of Bad Faith
The Complainant submits that the domain names in issue were registered and are being used in bad faith by the Respondent.
By virtue of the pre-eminence and reputation of the joint venture SATLYNX, the parties forming the same, and the Trade Marks, members of the public around the world are likely to mistakenly believe that the registrant of the , and domain names is related to the Complainant or is in some way associated with the Complainant. The fact that the Respondent offers no goods or services that relate to or incorporate "SATLYNX" suggests that members of the public would certainly not be seeking a website belonging to the Respondent, which further underlines the fact that members of the public would be likely to be so misled.
The domain names in question were registered after the well-publicized press release of July 9, 2002, which announced the formation of SATLYNX . This in itself suggests that the Respondent must have been aware of the prominence of SATLYNX in the telecommunications industry, and that the Respondent therefore consciously proceeded, with full knowledge of the Complainant�s goodwill in SATLYNX, to register the domain names in question.
Furthermore, the Respondent was utilized as a consultant for the Complainant in the months prior to the launch of SATLYNX (May 2001 to February 2002), which would naturally provide opportunities for its officers to become aware of the formation of SATLYNX. Indeed, the Respondent also learnt expressly of the creation of SATLYNX by virtue of a telephone call on or about April 17, 2002. Given all of the above, the Complainant submits that the Respondent must have been aware that in registering the domain names he was misappropriating the valuable intellectual property of the owner of the Trade Marks.
The Respondent�s registration of the domain names at issue has prevented the Complainant from registering those domain names which correspond to the Complainant�s Trade Marks contrary to Paragraph 4(b)(ii) of the Policy. Given that no use of the mark SATLYNX is made in any of the domain names in question, it is further submitted that the domain names were registered in circumstances which indicate that the Respondent acquired the domain names primarily for the purpose of diverting members of the public who search for a domain related to the Complainant, to the Respondent�s own business, TRANSCOM ISP.
In support of its allegations of bad faith the Complainant relies upon the following facts and matters:
(a) the domain names were registered on June 21, 2002;
(b) in or around the beginning of July 2002, the Complainant discovered that the domain names and had been registered by the Respondent;
(c) On July 11, 2002, the Complainant�s authorised representative SJ Berwin wrote to the Respondent objecting to the registration of the domain names and and requesting that such domain names be transferred to the Complainant.
(d) On July 11, 2002, the Respondent replied stating that it had registered the above domain names, as well as on the basis of a "presumption that [the Complainant] had no interest in [the domain names in question]". In its letter the Respondent made no claim that the domain names in question were being used for anything pertaining to SATLYNX, and thereby tacitly accepted that it had no interest whatsoever in the mark SATLYNX.
(e) The Respondent�s letter suggested that the Respondent had spent money on marketing, advertising and development, but still offered no legitimate reason for registering domain names which incorporated the Trade Marks; the Respondent neither trades under the name SATLYNX, nor provides any goods or services which incorporate or even refer to SATLYNX.
(f) Furthermore, the Respondent acknowledges in his letter that he was employed by the Complainant as a consultant in the months leading up to the launch of SATLYNX. Indeed, even if the Respondent did not learn of the intention to form SATLYNX during such employment, the Respondent was expressly told of such an intention in a telephone call from the Complainant on April 17, 2002, prior to the registering by it of the domain names that are the subject of the Complaint.
(g) The Respondent audaciously "informed" the Complainant�s authorised representative SJ Berwin, in its letter of July 12, 2002, "that the domains / .info / .org / .us are available to the international public for registration".
(h) To date the Respondent has used the domain names only for websites which consist of a depiction of a hot beverage together with the logo, "What�s Brewin�?" and the only links on each website are concerned solely with TRANSCOM ISP goods and services. It is submitted that this supports the Complainant�s position that the Respondent registered the domain names at issue for the purpose of diverting the general public, who look for SATLYNX services, to its own services and/or for the purpose of trading off the Trade Marks and/or misleading and confusing the general public, in breach of Paragraph 4(b)(i) of the Policy.
(i) Furthermore, in its letter of July 12, 2002, the Respondent refers to "issues relating to account payments to [the Respondent]". While no admissions are made as to the validity of this statement, such issues are entirely separate from the issues pertaining to this Complaint, and certainly would not in any event justify the registration of domain names in bad faith; domain names which the Respondent has no rights or legitimate interests in. Indeed, any such registrations in response to any separate issues, such as those referred to above, would necessarily indicate that the domain names in question had been registered in bad faith.
(j) As discussed above, the Respondent has no rights or legitimate interests in using the domain names at issue. This is partly due to the pre-eminence in the industry in question of the Trade Marks. Adoption of a domain name consisting of a famous or pre-eminent mark is also a factor evidencing bad faith. For example, in Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403, the Panel held that the disputed domain name was so obviously connected with the Complainant and its products that:
"its very use by someone with no connection with the Complainant suggests opportunistic bad faith".
This reasoning is directly analogous to the Complaint. The Respondent is not authorised to use the Trade Marks and is in no way connected to the Complainant. It is submitted that the Panel should conclude that the domain names were registered and are being used in bad faith.
Therefore, having regard to all the facts and circumstances, the Complainant submits that the domain names were registered, and are being used in bad faith.
B. Respondent
The Respondent refutes the statements and allegations in the Complaint.
Respondent notes thatMr. William Smith was the founder of Design Technology Ltd. / Transcom ISP in 1993, and has therefore not recently joined the company as stated in the Complainant. The accusation that Mr. Smith was aware of Complainant's company formation during his time as consultant on an unrelated project at the Complainants premises is dismissed, since this formation was unknown to anyone within or outside the Complainant�s premises during that period, until advised by representative of the Complainant in April 2002.
Whether the Domain Names are Identical or Confusingly Similar to a Trade Mark or Service Mark in which the Complainant has Rights
The word SATLYNX is generic in terminology and has been utilized by a company known to the industry in this generic manner, (the same company from which SES Astra obtained the name on June 12, 2002) as well as being known in the industry from January 2001.
Further the Panel should be aware of the generic usage of the term �lynx� relative to �links�. Examples of this are provided in the attached schedule for the terms �hotlynx � hotlinks�, �coollynx � coollinks� and can be applied to any situation where lynx is commonly exchanged for links.
The Respondent rejects the Complainant�s reference to identity or confusing similarity when the Complainants have themselves excluded the Respondent�s business from the services that apply to the said applied trade mark.
Respondent�s Rights or Legitimate Interests in Respect of the Domain Names
The Respondent confirms that before the Respondent received any notice of the dispute, there is evidence of the Respondent�s use of, or demonstrable preparations to use, the domain names in connection with a bona fide offering of goods or services.
The Respondent is making a legitimate commercial and fair use of the domain names, without an intent for commercial gain to misleadingly divert consumers or to tarnish the trade marks at issue.
In February 2001, the Respondent, during its course of business, represented its services at the Dubai Gitex trade show, with assistance from the Department of Trade and Industry, and actively promoted its upcoming satellite capabilities. One such representative that approached the Respondent was Fiber Link Networks based in Beirut, Lebanon, who had recently formed a division of its company called SATLYNX, with an associated press release. The division is still indicated on their website as having been formed in January 2001. The Respondent had dealings by means of provision of free equipment to Fiber Link Networks at that period in time, with the attached zero value invoice dated March 10, 2001, thereby proving its knowledge of the name SATLYNX in February 2001.
After completion of the assignment in February 2002, SES Astra appointed the Respondent as a channel partner for the SES Astra BBI 2 way service for the United Kingdom. Consistent dialogue between the two parties gave complete indication that the Respondent had entered into the 2 way mobile and fixed communications market place at that time, and hence the introduction of the division that addresses the business sector of mobile communications at and . At this time, no one, including the SES point of contact, was aware of the incorporation of a new division in SES or the name thereof. The name SATLYNX was known to the Respondent from February 2001.
In March 2002, the Respondent designed and commissioned a new website directly relevant to the provisioning of mobile 2 way satellite internet services, and on June 2, 2002, the names "un registered" by SES and known to the Respondent since February 2001, were applied, as well as other generic domains, such as . The services detailed in this site have been promoted and utilized between March 2, 2002, and June 2, 2002, without exhibiting the name SATLYNX except by means of search engine registrations and customer awareness of our facilities.
The Respondent has been actively trading with success, on the site , and is also known as and .
Whether the Domain Names have been Registered and are being Used in Bad Faith.
The domain names were not registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to the Complainant, as the alleged owner of the trade mark or service mark, or to a competitor of the Complainant, for valuable consideration in excess of the Respondent�s out-of-pocket costs directly related to the domain names.
The domain names were not registered in order to prevent the Complainant from reflecting the mark in a corresponding domain name and, in connection therewith, the Respondent has not engaged in a pattern of such conduct.
Complainant and the Respondent are not competitors and the domain names were not registered by the Respondent primarily to disrupt the Complainant�s business, as the Complainant has indicated that the trade mark does not apply the business of the Respondent.
The domain names were not registered by the Respondent in an intentional attempt to attract for commercial gain, Internet users to the Respondent�s web site or other on-line location, by creating a likelihood of confusion with the Complainant�s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent�s web site or location or of a product or service on the Respondent�s web site or location.
The Complainant advises that the trade mark has been applied for under reference 2297633 dated March 15, 2002, but not obtained. In addition, the section under specification details services excluding mobile uplink services, an area which is directly defined within the site to which the domain names refer. This is indicated in a copy of the referenced website at within the appendices of the Complaint. Therefore, the Respondent cannot be deemed to be using the domain names in bad faith, as the Complainant has clearly defined the areas to which the trade mark SATLYNX does not apply, thereby themselves eliminating conflicts of interest relative to the trade marks.
The Complainant�s statement that the Respondent utilized the names in order to divert the public to its own site is rejected, as the site does not contain the applied trademarked name. The company referred to by the Complainant had only just commenced operations, therefore the �public� would not be aware of it. According to advice received directly from SES Astra, services would not be launched until September 2002; therefore there is no public to divert.
As detailed by the Complainant, the applied trade mark is not relevant to mobile satellite unlinking, so any traffic appearing at the Respondents site in error would not find services available from the Complainant, and therefore there can be no confusing or misleading information, or passing off of the Complainant�s business.
Reverse Domain Name Hijacking
The Respondent therefore requests in accordance with the Rules, that the Panel consider making a finding of reverse domain name hijacking. The fact that the Complainant excluded the services offered by the Respondent from the trade mark application dated March 23, 2002, is evidence that the Complainant had advance knowledge of the Respondent�s trading characteristics prior to the trade mark application.
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 trade mark 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 to Complainant�s Rights
The Complainant has filed for registration of the trade mark SATLYNX in the Benelux on March 15, 2002, and in the United Kingdom on April 14, 2002. The Complainant has also furnished evidence that the mark has been in use prior to the registration of the contested domain names on June 21, 2002. The Complainant has thus established rights that can be invoked under the Policy. See Danish Re Underwriting Agencies ApS v. A/S Det Kjobenhavnske Reassurance-Compagni, WIPO Case No. D2000-1096.
The Respondent also claims that the word SATLYNX was used before Complainant filed for their trade marks by a Lebanese company. The printouts of the web sites presented to the Panel do not show with sufficient clarity that this was the case. The printouts are dated through the automatic settings of the computer and these dates are after the date of Complainant�s trade mark filings. There is a mere reference to a press release apparently dated 2001, and some handwritten dates appear on other printouts presumably put in by the Respondent. This information may show some use in Lebanon does not qualify as proof that Complainant�s rights in the Benelux and in the United Kingdom are invalid. See Welltec ApS v. Dave Gardner, WIPO Case No. D2000-1145.
The contested domain names contain the mark in its entirety with the addition of the .biz, .org and .info gTLD denominations.
For the purposes of this proceeding the domain names are thus identical to the trade mark in which the Complainant has rights.
The requirements set out in the Policy, Paragraph 4(a)(i) are therefore fulfilled.
Rights or Legitimate Interest
The Complainant has not licensed or otherwise permitted the Respondent to use its trade mark 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.
Respondent claims that SATLYNX is a generic term or rather an abbreviation of SATTELITE LINKS. Respondent has presented evidence that the suffix �LYNX is sometimes used as a substitute for �LINKS such as in CoolLynx and HotLynx. However, as pointed out above no definite proof of the actual use of the word SATLYNX was presented to the Panel, and the Panel is not otherwise aware of such use. Therefore the Panel cannot find that any non-commercial or fair use of the domain name has been or is being made.
Paragraph 4(a)(ii) of the Policy is also considered fulfilled.
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.
It is undisputed that the Respondent was used by the Complainant as a consultant from May 2001, to February 2002. Respondent has further confirmed that they knew of the formation of the new joint venture to be named SATLYNX at least in April, 2002.
Respondent has also stated that they were fully aware that Complainant had only registered the domain name when they registered the contested domain names and that this fact should make the registrations "fully justified".
All these facts make it clear to the Panel that the registration of the domain names was done with full knowledge of Complainant�s activities and their use of the mark SATLYNX and thus done in bad faith. In this respect is not a defense for the Respondent that Complainant initially had only registered the domain name when they registered the contested domain names.
The Panel further notes that the domain names are all in active use. The Respondent states that the domain names are used in good faith and for non-conflicting services. The corresponding web sites refer to Respondent�s general business activities including "remote satellite links", which, in the view of the Panel, are activities that are at least similar to that of the Complainant. The domain names are thus used for commercial purposes in a way that will be able to attract internet users to their web sites when they are actually looking for information on or services from Complainant. This will inevitably create confusion with Complainant�s mark since it could indicate affiliation or endorsement of the sites by Complainant.
Consequently, the Panel finds that the precondition set forth in Paragraph 4(a)(iii) of the Policy is also met.
Reverse Domain Name Hijacking
Reverse Domain Name Hijacking is defined in the Rules as using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name. Given the circumstances described above the Panel dismisses Respondent�s claim on this point.
7. Decision
In view of the above circumstances and facts the Panel finds that the domain names , and registered by the Respondent are identical to the trade mark in which the Complainant has rights, that the Respondent does not have any rights or legitimate interests in respect of the domain names, and that the domain names have been registered and are being used in bad faith.
Consequently, the Panel decides that the domain names be transferred to the Complainant.
Knud Wallberg
Sole Panelist
Dated: September 16, 2002
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