WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SuNyx Surface Nanotechnologies GmbH, v. Primmer, Phil
Case No. D2002-0968
1. The Parties
The Complainant is SuNyx Surface Nanotechnologies GmbH, Stolberger Str. 370, 50933 Cologne, Germany, represented by Mr. Rolf Claessen, SuNyx Surface Nanotechnologies GmbH, Stolberger Str. 370, 50933 Cologne, Germany.
The Respondent is Primmer, Phil, 6060 Main Street, Stouffville, Ontario L4A 1B8, Canada.
2. The Domain Name and Registrar
The disputed domain name is (the "Domain Name"). It is registered with Go Daddy Software, 14455 North Hayden Road, Scottsdale, Arizona, United States of America (the "Registrar").
3. Procedural History
The Complaint was filed by email with the WIPO Arbitration and Mediation Center (the "Center") on October 18, 2002. The Center received a hard copy of the Complaint on October 23, 2002.
On October 18, 2002, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 21, 2002, the Registrar 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. The Registrar also confirmed that the Domain Name was registered with Go Daddy Software.
The Center verified that 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"). The Sole Panelist has independently determined and agrees with the assessment of the Center that the Complaint meets the formal requirements of the Policy, the Rules and the Supplemental Rules.
In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 23, 2002. In accordance with paragraph 5(a) of the Rules, the due date for the Response was November 12, 2002.
On October 23, 2002, the Claimant sent a supplemental email to the Center. This email included an exchange of emails between the parties, ending with a message sent by the Respondent to the Claimant on October 22, 2002, containing an offer to sell the Domain Name for USD 1'500.-. The Center acknowledged receipt of this Supplemental Filing on October 24, 2002, and informed the Claimant that it would be in the sole discretion of the Panel to determine whether to admit and consider such filing and whether to order further procedural steps.
The Respondent filed a Response with the Center by email on November 5, 2002. On November 6, 2002, the Center asked the Respondent to send hard copies of his Response. The Center did not receive a hard copy of the Response.
The Center appointed Fabrizio La Spada as the sole panelist in this matter on November 29, 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 paragraph 7 of the Rules.
The language of the administrative proceeding is English, which is the language of the registration agreement.
On December 16, 2002, the Panel issued a Procedural Order No. 1, which was sent to the parties on December 17, 2002. This Procedural Order granted both parties a deadline until December 24, 2002, to file documents evidencing their allegations.
On December 20, 2002, the Complainant sent to the Center by mail additional documents, which were received by the Center on December 30, 2002.
On December 28, 2002, the Respondent sent an email to the Center, in which he stated as follows : "I see that you have not received my 4 copies plus 1 original of the response I e-mailed November 5th. I have re-posted 5 copies as outlined, to the address you have given below, to ensure all of my obligationshave been met as a respondant to retain the ownership of my domain name SunyX.com. The envelope should be arriving shortly in Switzerland, before your Jan. 6th deadline. Yours sincerely, Phil Primmer"
In response to this email, the Complainant also sent an email to the Center on January 2, 2003, providing additional comments.
On January 7, 2003, the Center received documents submitted by the Respondent. These documents consisted of a copy of the Respondent's Response, with no additional evidence.
Finally, the Respondent sent an email to the Center on January 17, 2003, containing unsolicited comments.
4. The Parties' Supplemental Submissions
The Complainant has submitted two unsolicited filings: (1) by email of October 24, 2002, and (2) by email of January 2, 2003. The Respondent has also sent to the Center an unsolicited email on January 17, 2003.
The Panel notes that no provision is made in the Policy, the Rules or the Supplementary Rules for voluntary further submissions by the parties after the Complaint and the Response. On the contrary, both the Policy and the Rules demonstrate a strong preference for single submissions (that is, the Complaint and the Response) and the Rules do not provide the parties with any right to file replies on their own volition. Article 12 of the Rules provides for further submissions only at the Panel's request, in its sole discretion.
In the present case, the Panel has granted both parties a deadline until December 24, 2002, to file any additional documents evidencing their allegations. The Complainant has not submitted anew its email of October 24, 2002, after notification of Procedural Order No. 1. However, the Panel considers that it would be excessively formalistic not to accept the Complainant's submission of October 24, 2002. This submission, which was received before the December 24, 2002 deadline, will be considered by the Panel.
On the contrary, the Complainant's email of January 2, 2003, was sent to the Center after the December 24, 2002 deadline. The Complainant has not alleged new facts, nor other circumstances that would justify the late submission. The Panel will therefore not take the Complainant's email of January 2, 2003, into account.
Likewise, the Respondent's email of January 17, 2003, was filed after the December 24, 2002 deadline. The Respondent has not set out new facts or other circumstances justifying the late submission. The latter will therefore not be considered by the Panel.
5. Factual Background
The Complainant is the owner of the trademark "sunyx", No. 301 32 516, registered in Germany on November 6, 2001 (filing date on May 23, 2001). It also owns the International Trademark No. 780 067, registered on November 23, 2001, for goods and services in Classes 1, 6, 9, 14, 17, 19, 21 and 40 including, amongst other, chemical products, metals and precious metals, articles with water and/or oil-repellent surfaces, surface treatment of materials, etc. The Complainant has further applied, in November 2001, for registration of the trademark "sunyx" in the United States of America.
On July 7, 2002, the Respondent registered the Domain Name and gave the following registrant details: Philip Primmer, PrimeWebN, This Domain is For Sale, 6060 Main Street, Stoufville, Ontario L4A 1B8, Canada.
The Domain Name is on sale on the website for an amount of USD 20'000.-.
The Respondent also registered the domain name , which is also on sale on the website for an amount of USD 20'000.-.
On July 19, 2002, Mr. Rolf Claessen, the Claimant's representative, sent an email to the Respondent, stating that he maintained a "quite large selection of model trains" and that his "favourite train is called SUNYX". He said that he wanted to buy the Domain Name for his hobby and asked the Respondent whether the Domain Name could be transferred to him.
On August 11, 2002, the Respondent answered to the Claimant by email. In his message, the Respondent indicated that the Domain Name was on sale for USD 20'000.- and that it was a "highly brandable name". It further said that hundreds of hits came daily to the test portal site that was built, "at the price of 6 to 12 cents a click". The Respondent's message contained a general invitation to check the website primewebn, which "specializes in selling very descriptive, memorable and premium Dot Com Domain Names". Finally, the email contained a list of dozens of domain names that were on sale and their respective the selling price.
6. Parties� Contentions
A. Complainant
The Complainant alleges that it is the owner of "sunyx" trademarks in several countries for goods and services including, amongst other, chemical products for use in the surface coating of materials, precious and base metals, goods and articles with water and/or oil-repellent surfaces, etc. The Complainant submits that the Domain Name is identical to these trademarks.
The Complainant further contends that the Respondent has no rights nor legitimate interests in respect of the Domain Name, because it has not used, or prepared to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services. Moreover, the Complainant alleges that the Respondent has not been commonly known by the Domain Name and has acquired no trademark or service mark rights on the Domain Name. In addition, the Complainant asserts that the Respondent is making no legitimate non-commercial or fair use of the Domain Name; on the contrary, in the Complainant's opinion, the Respondent diverts consumers for commercial gain. Finally, the Complainant points out that the Respondent is offering the Domain Name for sale for the amount of USD 20'000.-.
The Complainant also submits that the Domain Name has been registered and used in bad faith by the Respondent, because (1) it was registered primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the owner of the trademark or service mark or a competitor of the latter for USD 20'000.-, that is for valuable consideration in excess of the Respondent out-of-pocket costs; and (2) the Domain Name was registered in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name. In this respect, the Complainant states that the Respondent has engaged in a pattern of such conduct, as can be determined from the website "primewebn".
On this basis, the Complainant seeks the transfer of the Domain Name.
B. Respondent
The Respondent submits that he registered the Domain Name, as well as the domain name , for his own venture. He alleges that he had plans to use the Domain Name and the domain name in the establishment of a historic warehouse style eatery restaurant in the west harbour of Owen Sound Ontario, Canada. He explains that Sunys is the name of the main family restaurant and, next door in the rear is the after-hours, sports bar area for adults called SunyX.
The Respondent states that he already bought the premises for the restaurant and that there are many newspaper stories that refer to his plans. He attached to his Response a document showing an image of himself in front of a building and a headline stating "New life for old bulding, Phil Primmer in front of old Black Clawson Kennedy plate shop. Primmer and his wife are buying the building and the house next door". The image appears to be a partial scan of a newspaper of October 30, 2002.
The Respondent alleges that he has received several emails from Mr. Rolf Claessen (referred to as Mr. Rolf Clausen by mistake), as well as attorney's emails. These messages contained different stories, including one related to Mr. Claessen's train hobby. The Respondent explains that he did not respond to these emails, since he had legitimate use for the Domain Name.
The Respondent submits that he received legal threats from Mr. Claessen and that, late August 2002, he conceded that the latter could buy the Domain Name for the price of what the Respondent valued his marketing efforts, that is a couple thousand dollars.
Finally, the Respondent argues that he has bought the Domain Name in good faith with a "clear concrete purpose" and that the Claimant should not have the ability to deprive him of the Domain Name.
7. Discussion and Findings
In accordance with Paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the Domain Name, the Complainant must prove that each of the three following elements are satisfied:
1. The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section 7.1); and
2. The Respondent has no rights or legitimate interests in respect of the Domain Name (see below, section 7.2); and
3. The Domain Name has been registered and is being used in bad faith (see below, section 7.3).
Paragraph 4(a) in fine of the Policy states that the burden of proving that all these elements are present lies with the Complainant.
The Panel notes that, pursuant to Paragraph 15(a) of the Rules, it shall decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
7.1 Is the Domain Name Identical or Confusingly Similar to a Trademark in Which Complainant has Rights?
This question raises two issues: (1) does the Complainant have rights in a trademark or service mark; and (2) is the Domain Name identical or confusingly similar to such trademark or service mark.
As regards the first question, the Complainant has produced evidence in the form of certificates of registration that it is the owner of the trademark "sunyx", and has filed applications for registration, in several countries, including Germany and the United States of America.
As to the second question, the Panel finds that the Domain Name is identical to the trademark "sunyx", taking into account the fact that the suffix ".com" is not distinctive (see SBC Communications Inc. v. eWorldWideWeb, Inc., WIPO Case No. D2002-0608).
The Panel therefore finds that the Domain Name is identical to a trademark in which the Complainant has rights.
7.2 Does the Respondent Have Rights or Legitimate Interests in the Domain Name?
The Complainant submits that the Respondent has no rights or legitimate interests in the Domain Name. The Respondent alleges that he has registered the Domain Name in order to use it in the establishment of a historic warehouse style eatery restaurant.
According to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
"(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial 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."
On the basis of the statements and documents submitted, the Panel is satisfied that the Respondent has no rights or legitimate interests in the Domain Name, for the following reasons.
The Respondent has not alleged that it was commonly known by the Domain Name before the dispute arose, nor that it was already making a noncommercial use of the Domain Name.
The Respondent has explained that he has made preparations to use the Domain Name in connection with a bona fide offering of goods or services. However, the Respondent has not provided any evidence of such preparations. The only evidence he has submitted is a picture which makes no reference to the Domain Name or any other name containing the Domain Name or a name similar to the Domain Name. The Respondent announced in its Response that other evidence was available and would be sent to the Center. However, no evidence was included in the submission that was received by the Center on January 7, 2003.
On the contrary, the Panel considers that the evidence on record and statements by the Respondent support a finding that the latter has had the intent to sell the Domain Name since the latter's registration and did not make preparations to use it in connection with a bona fide offering of goods and/or services. Indeed, the Respondent included the sentence "This Domain is For Sale" and a reference to "PrimeWebN" in his contact details at the time he registered the Domain Name. Moreover, the Domain Name is listed on for sale for an amount of USD 20'000.-. In addition, in his email to the Claimant of August 11, 2002, the Respondent stated that the Domain Name was on sale. He added that he had built a test portal for purposes of generating revenue through traffic (between 6 and 12 cents per hit).
In accordance with the elements set out above, the Panel finds that the Respondent has no rights nor legitimate interests in respect of the Domain Name.
7.3 Is There Evidence of Registration and Use of the Domain Name in Bad Faith?
In addition to the two conditions set out above, the Complainant must prove that the Domain Name was registered and is being used in bad faith.
The Policy is aimed at addressing cases of cybersquatting, and not cases where, by coincidence, domain names have been registered that are similar to another person's trademark. The existence of bad faith on a registrant's part may be demonstrated in different ways, on the basis of the circumstances of each case. However, bad faith generally requires that the registrant was either aware of the fact that the domain name is identical or confusingly similar to a trademark in which another person has rights, or � without being specifically aware of the existence of a trademark � nevertheless intends to take advantage of the fact that the domain name may be identical or confusingly similar to another person's trademark.
In the Panel's opinion, in order to fulfill this condition, the Complainant must show either that the Respondent actually knew the trademark, or that it is likely that he knew the trademark. Moreover, depending on the facts of each case, there may also be circumstances of bad faith if the Respondent did not know (nor have reasons to know) the trademark, but nevertheless registered the Domain Name with the expectation that it would correspond to a registered trademark and the intent to sell it (or otherwise transfer it) to the owner of the trademark or a competitor of the latter.
In the present case, the Claimant has not provided evidence that the Respondent was aware of its trademarks at the time of registration of the Domain Name. In addition, it has not provided circumstantial evidence that would allow the Panel to determine that the Respondent was likely aware of the trademarks. In particular, the Complainant has not alleged nor proven that its "sunyx" trademarks were famous or well-known. It has not either provided evidence of use of the trademarks in the Respondent's jurisdiction (Canada), nor of other elements from which the Panel could infer that the Respondent knew the trademark.
However, the Panel considers that there exists sufficient elements to show that the Respondent nevertheless registered the Domain Name primarily for the purpose of selling it to the Complainant, for an amount in excess of its out-of-pocket costs.
The evidence on record (set forth above under paragraph 7.2) establishes that the Respondent registered the Domain Name primarily for the purpose of selling it. The Domain Name is offered for sale on the website for an amount of USD 20'000.-, which can be considered to be significantly above the Respondent out-of-pocket costs directly related to the Domain Name. Moreover, by email of October 22, 2002, the Respondent offered the Domain Name to the Complainant for an amount of USD 1'500.-, which the Panel also considers to be above the Respondent's out-of-pocket costs.
It should be noted that the Respondent initially offered the Domain Name to the public (on the website ), and not specifically to the Complainant or its competitors. An offer for sale was made to the Complainant, but only after the latter had enquired about a possible purchase of the Domain Name.
There is nothing inherently wrongful in the offer to sell domain names, without more, such as to justify a finding of bad faith under the Policy (see United Artists Theatre Circuit, Inv. v. Domains for Sale Inc., WIPO Case No. D2002-0005). Depending on the circumstances, it may legitimate, for example, to offer to sell domain names consisting of generic or descriptive words (SBC Communications Inc. v. eWorldWideWeb, Inc., WIPO Case No. D2002-0608). However, offers to sell a domain name to the general public may nevertheless constitute evidence of bad faith under the Policy (see United Artists Theatre Circuit, Inv. v. Domains for Sale Inc., WIPO Case No. D2002-0005). This may be the case in particular when the domain name is identical to an arbitrary or fanciful trademark, as is the case in the present matter.
Taking into account the developments set out above, the Panel considers that the elements on record are sufficient to establish bad faith under the Policy.
First, unlike the facts in SBC Communications Inc. cited above, the domain name is not generic or descriptive. On the contrary, it is a fanciful term.
Moreover, the Respondent's allegations as to the reasons for which he registered the Domain Name are contradicted by the facts on record and by his own statements. The Respondent has alleged that he intended to use the Domain Name, as well as the domain name , for a restaurant and a related after-hours area. He submitted that these two domain names are important for his business and that he needs them. However, the Respondent has not provided any evidence of plans involving the Domain Name, neither with his Response, nor within the deadline set by Procedural Order No. 1, even though he stated in his Response that evidence was available.
On the contrary, it is clear form the evidence that the Respondent had the intent to sell the Domain Name as from the latter's registration (see above, paragraph 7.2). Indeed, he included the statement "This Domain is For Sale" in the contact details provided to the Registrar. Moreover, he put the Domain Name for sale on the website , together with the domain name . The Panel considers that the contradictory and non credible explanations provided by the Respondent are an indication of bad faith.
Therefore, even though there is no evidence of actual knowledge of the trademark by the Respondent at the time of registration, the Panel finds that there is sufficient evidence on record to establish that the Respondent registered the Domain Name primarily for the purpose of selling it to the owner of the trademark.
In addition, the Panel considers that the Respondent, by using the Domain Name, is intentionally attempting to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of his website. Indeed, the Respondent set up a portal, accessible though the Domain Name. He stated in his email of August 11, 2002, that this portal yields a revenue of 6 to 12 cents a click, generated by traffic related to the Domain Name. There is no evidence that the Respondent advertises his website, nor that he otherwise is known or does business under the "sunyx" name. Therefore, the Panel finds that the Respondent generates traffic and attracts users by creating a likelihood of confusion with the Complainant's trademark.
Therefore, the Panel finds that the Domain Name was registered and is being used in bad faith.
8. 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 transferred to the Complainant.
Fabrizio La Spada
Sole Panelist
Dated: January 20, 2003
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