WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Sage Group Plc v. Internet Commerce, Inc.
Case No. D2003-0236
1. The Parties
The Complainant is The Sage Group Plc of Newcastle-upon-Tyne, United Kingdom of Great Britain and Northern Ireland, represented by Appleyard Lees of United Kingdom of Great Britain and Northern Ireland.
The Respondent is Internet Commerce, Inc., of Las Vegas, Nevada, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 25, 2003. On March 27, 2003, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On March 27, 2003, Intercosmos Media Group d/b/a directNIC.com 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 April 8, 2003. A further amendment was received on April 14, 2003. The Center verified that the Complaint, together with the amendments 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 April 17, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was May 7, 2003. The Respondent was informed that if his response was not received by that date, he would be considered in default. The Center would still appoint an Administrative Panel to review the facts of the dispute and to decide the case. The Respondent did not submit any response. Accordingly, the Center notified the Respondent�s default on May 8, 2003.
The Center appointed Dr. Vinod K. Agarwal as the sole panelist in this matter on May 19, 2003. 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. The Administrative Panel is required to give its decision by June 2, 2003.
4. Factual Background
From the Complaint and the various annexures to it, the Administrative Panel has found the following facts:
Complainant�s activities
The Complainant is the largest supplier of business management software and related products and services to SME�s in the world. It offers market-leading products in United States and other countries. The Complainant is the registered owner of the trademarks SAGE, SAGE STERLING, SAGE SOVEREIGN, SAGE PROFIT, SAGE INSTANT, SAGE INSTANT PAYROLL, SAGE INSTANT ACCOUNTING, SAGE FINANCE, SAGE BUSINESS ADVANTAGE, SAGE ENTERPRISE, SAGE SYBEL, etc. for the above and other products. The said trademarks have been registered by the Complainant for various software in different years. These marks have been used for the range of goods and services including computer software, printed matter, business information and consultancy services, legal services, and telecommunication services using computers. They are registered in the United Kingdom, Ireland, Canada, Switzerland, Iceland, France, New Zealand and Australia.
Respondent�s Identity and Activities
The Respondent did not reply to the Complainant�s contentions. Hence, the Respondent�s activities are not known.
5. Parties� Contentions
A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Uniform Policy are applicable to this dispute.
In relation to element (i), the Complainant contends that it is the owner of the registered trademark "SAGE" in respect of compute software. The Complainant and its associated companies hold a large number of domain names incorporating the mark "sage". Domain names and are in use as web sites providing information relating to the Complainant�s organization. A combination of the words "sage" and "uk" gives the domain name .
In relation to element (ii), the Complainant contends that the Respondent (as an individual, business, or other organization) has not been commonly known by the domain name as the Respondent is known as "Internet Commerce Inc" and its predecessor and affiliate was known as Telmex Management Services (Telmex). Further that the Respondent is not making a legitimate or fair use of the said domain name. The Respondent registered the domain name for the sole purpose of selling the same or misleading and misdirecting the public to undesirable sites.
Regarding the element at (iii), the Complainant contends that the main object of registering the domain name by the Respondent is to sell it to the Complainant or to mislead the general public.
B. Respondent
The Respondent did not reply to the Complainant�s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The 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 in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The present dispute pertains to the domain name . The Complainant is the registered owner of the trademark SAGE in many countries, including the United Kingdom. The said trademark SAGE has been used in the domain name of the Respondent. The Respondent has only added "uk". The inclusion in the domain name of the suffix "UK" does nothing to distinguish it from the trademark. The Complainant is also a UK-based organization. Thus, the domain name indicates a relationship between the Complainant�s mark and the domain name in question. There is no doubt that the domain name is confusingly similar to the trademark of the Complainant. The Administrative Panel finds that the domain name is confusingly similar to the registered trademark of the Complainant.
B. Rights or Legitimate Interests
According to Paragraph 4(c) of the Policy, the Respondent may demonstrate its rights to or legitimate interest in the domain name by proving any of the following circumstances:
(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 a 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 Respondent has not filed any response in this case. Based on the default and the evidence in the Complaint, it is presumed that the above circumstances do not exist in this case and that the Respondent has no rights or legitimate interests in the disputed domain name. See also Pavillion Agency Inc. et al v. Greenhouse Agency Ltd. et al, WIPO Case No. D2000-1221. "SAGE" is the registered trademark of the Complainant. It is evident that the Respondent can have no legitimate interest in the domain name. Further, in view of the fact that the Complainant has not licensed or otherwise permitted the Respondent or its predecessor and affiliate Telmex Management Services to use its trademark or to apply for or use the domain name incorporating said trademark and that nobody would use the word "SAGE" unless seeking to create an impression of an association with the Complainant, the Administrative Panel finds that the Respondent has no rights or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of the domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, internet users to its 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 its web site or location.
The contention of the Complainant is that the present case is covered by the first circumstance. During January 2003, the Complainant became aware that the domain name was being used to offer escort services and other services of an adult nature, or, as stated on the web site, a "brand new form of global staffing agency, a mix of traditional Secretarial and I.T. temping agency with Escorts, Hosts, Translators creating our famous "SEXETARIE". This and other information submitted by the Complainant leads to the presumption that the said domain name was registered and used by the Respondent in bad faith. The Administrative Panel agrees with the said contention of the Complainant and concludes that the registration of the said domain name amounts to the registration and use of the domain name in "bad faith".
7. Decision
In light of the forgoing findings, namely, that the domain name is confusingly similar to the trademark or service mark in which the Complainant has a right, that the Respondent has no rights or legitimate interests in respect of the domain name, and that the domain name was registered in bad faith and is being used in bad faith, the Administrative Panel directs that the domain name be transferred to the Complainant.
V. K. Agarwal
Sole Panelist
Dated: May 26, 2003
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