WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mr. Garry Peter Leigh v. Mr. Steven Harris
Case No. D2002-0940
1. The Parties
The Complainant is Mr. Garry Peter Leigh, Timelinx S.A. of Málaga, Spain, represented by Martin McCafferty of Spain.
The Respondent is Mr. Steven Harris of Sweden.
2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, Inc. Registrar.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 10, 2002. On October 11, 2002, the Center transmitted by email to Network Solutions, Inc. Registrar a request for registrar verification in connection with the domain name at issue. On October 14, 2002, Network Solutions, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 21, 2002. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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").
In accordance with the Rules, Paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 24, 2002. In accordance with the Rules, Paragraph 5(a), the due date for Response was November 13, 2002. The Respondent did not submit any response. Accordingly, the Center notified the Respondent�s default on November 18, 2002.
The Center appointed Torsten Bettinger as the sole Panelist in this matter on November 21, 2002. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, Paragraph 7.
4. Factual Background
The Complainant is a Spanish company and the owner of
- trademark registration No. 2360243 "" (and device) registered with the Spanish Patent Office on June 5, 2001, for "services for sale in particular in trade and services for sale in particular through networks world data processing"; and
- trademark registration No. 2360244 "" (and device) registered with the Spanish Patent and Trademark Office on June 5, 2001, for leisure services and recreation.
The Respondent is the registrant of the domain name .
The website available at shows the Complainant�s trademark "" (and device) and the following text:
"Timelinx consumer information
Do you belong to or con
Introducing Mr Timelinx.con
This man may have conned you out of � 1000�s.
If you have purchased a product or service displaying the Timelinx logo or name during the last two years, this site contains important consumer information that you should be aware of. Legal proceedings against Mr Garry Leigh (pictured right) have began in relation to the sale of Timelinx and various aspects of the business. Part of the contemplated action is (in the absence of payment of the balance purchase monies) an injunction to prevent use of the Timelinx name, intellectual property etc.
The following pages are designed to inform you of our position and to advise you that you may have been sold a product under fraudulent circumstances."
5. Parties� Contentions
A. Complainant
The Complainant contends that the is almost identical to "" and that the Respondent has no intention to sell goods and services under the domain name .
The Complainant asserts that the Respondent�s sole purpose is to "denigrat[e] the name of "" and the goods and services provided for under [this mark]" and that the Respondent�s assertions are "a complete fabrication with absolutely no basis in fact".
The Complainant further asserts that the Respondent is its competitor and that the website has been "created solely for the purpose of portraying Timelinx S.A. in a negative manner".
Furthermore the Complaint contends that the use of the mark "" by the Respondent on his website "is illegal and brings the company Timelinx S.A. into disrepute".
The Complainant requests that the Administrative Panel issue a decision that the domain name be cancelled.
B. Respondent
The Respondent did not reply to the Complainant�s contentions.
6. Discussion and Findings
Pursuant to Paragraph 4(a), the Complainant must prove that each of the following three elements are present if it is to prevail:
(i) The Respondent�s "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 with respect to the domain name"; and
(iii) The "domain name has been registered and is being used in bad faith".
A. Identical or Confusingly Similar
The Respondent has registered the domain name . This domain consists of exactly the same verbal elements as Complainant's protected trademark "" (and device) except that the generic top-level-domain ".com" is replaced by the top-level-domain ".info" and the domain name leaves out the graphic elements.
The Panel finds that neither the device of the trademark, which cannot be reproduced in a domain name, nor the generic Top-Level-Domain ".info" have distinguishing capacity. Whether the Complainant�s trademark and the domain name are confusingly similar in a trademark sense as regards the content of the website available at the domain name at issue is of no relevance. Paragraph 4(a)(i) merely requires that there is a confusing similarity between the domain name and the trademark irrespective of the similarities in products and services. The question to be answered by the Panel is not whether the domain name causes confusion as to source but instead whether the mark and domain name, when directly compared, have confusing similarity [See Wal-mart Stores, Inc.v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662 at p.4 (September 19, 2000)].
The Panel therefore concludes that the domain name is confusingly similar to a trademark or service mark in which the Complainant has prior exclusive rights and that the requirement of Paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
The Policy outlines (Paragraph 4(c)) circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent�s rights or legitimate interest in the domain name. These circumstances are:
(i) before any notice to the Respondent of the dispute, the Respondent�s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel notes that the Respondent operates a website that ostensibly serves the purpose of criticizing the Complainant�s business.
The Panel further notes that although free speech is not specifically listed as one of the Policy�s examples of a right or legitimate interest in a domain name, the list is not exclusive, and that the exercise of free speech on a website operated solely in criticism of a person or business can demonstrate a right or legitimate interest in the domain name under Paragraph 4(c)(iii) of the Policy.
As regards the evidential burden the Panel takes the view that as it is clear from Paragraph 4(a)(ii) of the Policy that the burden is on the Complainant to establish a prima facie case of no rights or legitimate interests in the domain name, but once the Complainant has established a prima facie case that the Respondent has no rights or legitimate interest in the said domain name, the burden then shifts to the Respondent to show that he is making a legitimate non-commercial or fair use of the domain name.
For example, if the Respondent is using a domain name that (not including the top-level-domain suffix) is identical to the trademark in which the Complainant has rights for a criticism site without the Complainant�s consent and the Complainant claims that the registration and use of the domain name is abusive and takes unfair advantage of its rights, the burden shifts to the Respondent to show that the registration and use of the domain name is in fact designed and used for free speech.
Considering this issue the Panel notes that the Respondent uses a domain name that, apart from the top-level-domain suffix and the device of the Complainant�s trademark, is identical to the trademark registered by the Complainant and that the Respondent uses the Complainant�s trademark on his website without the Complainant�s authorization. The Panel takes the view that under these circumstances the Complainant has established a prima facie case that the Respondent has no rights and legitimate interest in the domain name.
Consequently, as the evidential burden is on the Respondent to show that he is making a legitimate or fair use of the domain name, the fact that the Respondent has chosen not to submit a Response becomes decisive to the issue of whether the Respondent is making a legitimate use of the domain name. Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a Panel shall draw such inferences as it considers appropriate from the failure of a party to comply with a provision or requirement of the Rules.
The Panel finds there are no exceptional circumstances for the failure of the Respondent to submit a Response and draws from this failure the inference that the Respondent does not deny the fact that the domain name was chosen to denigrate the Complainant and to disrupt the Complainant�s business.
Accordingly it is the Panel�s view that Respondent has no rights or legitimate interests in the domain name and that the requirement of Paragraph 4(a)(ii) of Policy is satisfied.
C. Registered and Used in Bad Faith
The fact that the Respondent has chosen not to submit a Response is also relevant to the issue of whether the Respondent has registered and is using the domain name in bad faith.
The Complainant has asserted that the domain name was primarily chosen for the purpose of denigrating and disrupting his business. Paragraph 4(b) of the Policy specifies the circumstances that evidence registration in bad faith and provides that this can be asserted, if the domain was registered or acquired primarily for the purpose of disrupting the business of a competitor.
The Panel draws from the Respondent�s failure to respond to the Complainant the inference that the Respondent does not deny these assertions.
The Panel therefore concludes that Respondent registered and is using the domain name in bad faith and that also the requirement of the Paragraph 4(a)(iii) of the Policy is satisfied.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, be cancelled.
Torsten Bettinger
Sole Panelist
Date: December 12, 2002
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