WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
GR8 Industries B.V v. Graffito / Active8 Partnership
Case No. D2005-1341
1. The Parties
The Complainant is GR8 Industries B.V, Breda, the Netherlands, represented by MerkEcht B.V., Breda, the Netherlands.
The Respondent is Graffito / Active8 Partnership, Baltimore, Maryland, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2005. On December�28,�2005, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On December�29,�2006, Network Solutions, LLC 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 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”).
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 January�11,�2006. In accordance with the Rules, paragraph 5(a), the due date for Response was January�31,�2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February�15,�2006.
The Center appointed Ross Wilson as the sole panelist in this matter on March�10,�2006. 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’s domain name was registered on February�19,�2003. On February�20,�2003, the Complainant’s GR8 INDUSTRIES trademark was registered in Benelux. Since April�28,�2004, the Complainant has operated as a brand and talent management organisation within the European Community using the name GR8 Industries. Also, its trademark GR8 INDUSTRIES has been filed at the European Trademark Office on July�22,�2005.
The disputed domain name was registered on July�23,�1995.
5. Parties’ Contentions
A. Complainant
The Complainant contends that:
i. the disputed domain name is confusingly similar to its trademark and its GR8 Industries trade name;
ii. the Respondent is not commonly known by the domain name and has not acquired trademark or service mark rights and is not making a legitimate non-commercial or fair use of the domain name;
iii. the Respondent has not made any active use of the domain name;
iv. the Respondent has not responded to the Complainant’s attempts to make contact and has concealed its identity; and
v. the domain name was registered and used in bad faith and in conflict with the registration agreement entered into between the Respondent and the Registrar.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
According to paragraph 4(a) of the Policy, the Complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant’s rights derive from its Benelux trademark GR8 INDUSTRIES registered on February 20, 2003. The Panel notes that while the disputed domain name was registered over seven years prior to the Complainant’s trademark registration, the timing difference is not relevant for the purposes of paragraph 4(a)(i) as it does not require the trademark in question to be registered first (See Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827).
Apart from the ‘.com’ extension, the Complainant’s trademark differs from the disputed domain name by addition of the generic word “industries”. As the term
‘GR8’ is the dominant part of both the trademark and the domain name, there is confusing similarity.
The Panel finds that the Complainant has proven that the domain name is confusingly similar to a trademark in which it has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out how a Respondent can demonstrate rights to and legitimate interests in the disputed domain name. In this case, the Respondent has not filed any submission or evidence in order to rebut the Complainant’s claims that the Respondent is not commonly known by the domain name and has not acquired any trademark or service mark rights and is not making a legitimate non-commercial or fair use of the domain name.
The Panel recognises that the domain name can be regarded as a common way of describing the word “great”, particularly in emails and text messaging. In fact, a Google search of the term ‘GR8’ results in 4.8 million “hits”. In the “first come, first served” basis of registering domain names, common words can be legitimately registered (See Asphalt Research Technology, Inc. v. National Press & Publishing, Inc., WIPO Case No. D2000-1005). The Panel is of the view that the Respondent has rights to the registration of the domain name.
The Panel finds that the Complainant has not demonstrated that the Respondent has no rights or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
For the purposes of determining if there was bad faith registration and use, the Panel considered the circumstances of the registration and use of the domain name as set out in paragraph�4(b) of the Policy, noting that it does not impose any limitation on how the registration and use of a domain name in bad faith is evidenced.
The Complainant bases its assertion of bad faith on the fact that the Respondent has not used the domain name, has not responded to the Complainant and has concealed its identity. The Complainant concludes that “it is impossible to conceive a good faith use of the domain name is evidence that the Domain Name was registered in bad faith and in conflict with the registration agreement entered into between the Respondent and the Registrar”.
Of considerable concern in proving bad faith in this case is the fact that the domain name was first registered in 1995 well before the Complainant’s business was established. As stated in Limited v. Alton L. Flanders, WIPO Case No. D2004-0047 “it is well established that a Complainant cannot succeed in its burden of proof of showing bad faith when registration of the domain name is antecedent to a Complainant’s trademark application or use of the mark in question”. Similarly, the Respondent’s registration of a common ‘term’ like ‘gr8’ cannot have any bad faith connotation with the Complainant (see Supremo n.v./s.a v. Rao Tella , WIPO Case No. D2001-1357). As with the word “supremo” in that case, the ‘gr8’ term is currently used in many trademarks and websites which are not associated with the Complainant.
There is no doubt that the domain name is not being used. However, that in itself does not necessarily infer bad faith. In view of the circumstances of this case the Panel is not willing to accept that failing to respond to the Complainant is an act of bad faith nor, at this stage, willing to accept as proven that the Respondent is concealing its identity noting that contact through the Respondent’s postal address was not attempted by the Complainant.
In the Panel’s view, the Complainant has not proven that the disputed domain name was registered and used in bad faith. In fact, the Panel is concerned about the Complainant’s understanding of the mandatory administrative procedures which are directed at abusive domain name registration and use. In its own words, the Complainant motivation has been “to claim back GR8.com” from the Respondent implying, in the Panel’s view, as if the Complainant obtained over-riding rights simply because it had a registered trademark albeit eight years after the domain name was registered.
The Complaint is denied due to lack of evidence of the second and third element of the Policy. The decision is of course not in any way meant to prejudge or influence an eventual national court proceeding between the parties. An eventual national court proceeding between the parties would be conducted under different procedural and substantive rules.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Ross Wilson
Sole Panelist
Dated: March 24, 2006
Full & Egal Universal Law Academy