WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
S�ci�te des Technologies de l’Aluminium du Saguena Inc. v. Success Inc.
Case No. D2008-0268
1. The Parties
The Complainant is S�ci�te des Technologies de l’Aluminium du Saguena Inc., Chicoutimi, Canada, represented by L�ger Robic Richard, g.p., Canada.
The Respondent is Success Inc., California, United States of America, represented by Patel & Alumit, PC, United States of America.
2. The Domain Name and Registrar
The disputed domain name, (the “Domain Name”), is registered with F (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 21, 2008. On February 22, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 25, 2008, 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.
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 March 6, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 26, 2008. The Response was filed with the Center on March 26, 2008.
The Center appointed Tony Willoughby as the sole panelist in this matter on April 3, 2008. 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.
Having read the Complaint and noted that it was unusually lengthy, the Panel conducted a word count on the substantive section of the Complaint (Section V) and found that it exceeded, by some margin, the word limit set out in the Supplemental Rules, paragraph 10. The Panel deals with this issue in Section 6 below.
4. Factual Background
The Complainant is a Canadian Corporation. It was incorporated in 1989 under the name Soci�t� des Technologies de l’Aluminium S.T.A.S. Ltee. and acquired its current name on January 28, 2004. It originally focused all its activities in the aluminum industry, but has since broadened its activities into the design and marketing of a wide range of sophisticated equipment.
The Complainant is the registered proprietor of two Canadian trade mark registrations, namely:
No. 670,744 STAS (design) applied for on October 22, 2004 and registered on August 22, 2006 for a variety of goods and services.
No. 684,544 STAS (word) applied for March 21, 2006 and registered on March 23, 2007 for a variety of goods and services.
The registration documentation in respect of each of those marks claims first use in Canada on May 1, 1989.
According to the Registrar’s Whois database the Domain Name was first registered on May 18, 1998.
The Domain Name is connected to a Sedo Parking page featuring sponsored links to various sites ranging from hotel/travel sites to sites dealing with “Bape Sta Shoes”. One of the links is to a biographical site relating to Nathalie Stas.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the Domain Name is identical or confusingly similar to STAS, the name and mark which it has used for nearly 20 years and in respect of which it has built up common law or unregistered trade mark rights and in respect of which it has the Canadian registered rights referred to in the preceding section.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name, citing the examples of what shall constitute rights or legitimate interests for this purpose as set out in paragraph 4(c) of the Policy and contending that none of them is applicable in this case.
Finally, the Complainant contends that the Domain Name was registered and is being used in bad faith.
The Complainant produces the results of its researches into the ownership history of the Domain Name and claims that the Respondent acquired the Domain Name in or around October 2005. The Complainant also contends that the Whois record for the Domain Name, which includes offers for sale, shows that the Respondent acquired the Domain Name for the purpose of selling it at a substantial profit within the meaning of paragraph 4(b)(i) of the Policy.
The Complainant produces evidence to show that there have been many other cases under the Policy in which the Respondent and entities associated with the Respondent have been held to have registered and used domain names in bad faith. The Complainant contends that this constitutes evidence of a pattern within the meaning of paragraph 4(b)(ii) of the Policy.
The Complainant also contends that the parking of the Domain Name on a “parked domain monetization” site constitutes bad faith registration and use within the meaning of paragraph 4(b)(iv) of the Policy.
B. Respondent
The Respondent, while identified to be Success Inc on the Whois record, is claimed in the Response to be one Karim Yomtobian (nickname Steven Yomtobian), who operates under a number of different trading names, one of which is Success Inc.
The Respondent denies that he registered the Domain Name with any bad faith intent. He produces evidence to show that he (in the name of Steven Yomtobian) registered the Domain Name in 1998 (not 2005 as asserted by the Complainant) and contends that he registered it for a company of his named Flower Market.
The Respondent claims that when he registered the Domain Name he was unaware of the existence of the Complainant and points out that while the Complainant contends that its mark is a famous mark, there is no relevant evidence before the Panel as to the Complainant’s reputation and goodwill. All the evidence produced to demonstrate the Complainant’s common law rights relates to the past year or so. There is no evidence to show the Complainant’s status at the time when the Respondent purchased the Domain Name. The Respondent also points out that the Complainant’s fame is in a very specialist field.
The Respondent does not contest the existence of the Complainant’s registered trade mark rights, but contends that they came into existence many years after he acquired the Domain Name. The Respondent denies the existence at the date of acquisition of the Domain Name of the unregistered rights claimed by the Complainant, there being no evidence to support any such rights.
The Respondent denies that he has no rights or legitimate interests in respect of the Domain Name. He produces evidence to show that in December 1998 and in January 1999 the Domain Name was being used to redirect visitors to an adult content website, which the Respondent claims constituted a bona fide offering of services within the meaning of paragraph 4(c)(i) of the Policy.
The Respondent denies that the Domain Name was registered and is being used in bad faith, his fundamental point being that the Complainant had no relevant rights when he registered the Domain Name and that in any event he was unaware of the existence of the Complainant at that time.
6. Discussion and Findings
In the analysis, which follows, the Panel treats as one Respondent, Success Inc., and Steven (a.k.a. Karim) Yomtobian, the individual who purchased the Domain Name for US$70 on May 18, 1998 along with all the intervening registrants of the Domain Name. This fits the evidence of the Respondent who claims that the Domain Name has been under the control of Mr. Yomtobian throughout; it also fits the evidence of the Complainant who has satisfactorily proved that they are all very closely associated; it also matches the findings of many of the panelists who have handled the several previous WIPO and NAF UDRP cases involving Mr. Yomtobian and his businesses.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, 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 in bad faith and is being used in bad faith.
However, in pursuing a complaint under the Policy and seeking to prove the above elements, the Complainant is required to comply with the Rules and the Supplemental Rules.
The Supplemental Rules specify a word limit of 5,000 words for the Complaint and it is generally accepted by panelists that that limit applies to the substantive section of the Complaint, namely, in this case, Section V.
In this case Section V of the Complaint comprises in excess of 5,700 words. It exceeds the word limit by over 14%. The Panel does not regard that as a minor breach, which can readily be ignored.
Ordinarily such defects are identified by the Center before the Complaint reaches a panelist, but on rare occasions these defects slip through the net. This is one such case.
In Boutique Tristan & Iseut Inc. v. B & B,WIPO Case No. D2007-1816, where a similar issue arose, the panel in that case had this to say:
“In its Response, the Respondent points out that the Complaint exceeds the word limit of 5,000 words stipulated in the Supplemental Rules by a very significant margin. Even if the word limit is intended only to cover the substantive section of the Complaint (Section V), the word count is excessive, that section on its own amounting to well over 6,300 words.
Manifestly, the Complaint is non-compliant in this regard. The Panel’s options are (i) to reject the Complaint out of hand; (ii) to remit it back to the Complainant to render it compliant (i.e. reduce the word count); (iii) to ignore the deficiency and proceed to a decision. If (i) is to be treated as a dismissal ‘without prejudice’, the distinction between (i) and (ii) may simply be as to whether or not a new filing fee will become payable.
The Panel understands that ordinarily issues of this kind are dealt with by the Center before the papers are passed to a panel, hence the verification by the Center (recited above) that the Complaint satisfies the various formal requirements. However, in this case, unusually, the defect passed unnoticed and the Complaint slipped through the net.
In this particular case the Respondent, while making objection to the deficiency, has nonetheless responded fully to the Complaint and the members of the Panel have all read the papers put before them. In these circumstances, and having regard to the Panel’s unanimous view as to the outcome of this case on the merits, the Panel believes that no useful purpose would be served by the Panel in not proceeding to a decision on the merits.”
In this case, while the Respondent has not taken the point, the Panel has decided that the fairest result all round is to dismiss the case without prejudice to the Complainant re-filing the Complaint in a compliant form. Had the Panel felt confident that the Complaint should not succeed, the Panel would have proceeded to a decision in favour of the Respondent as the panel did inWIPO Case No. D2007-1816. However, the Panel does not have that confidence on the material before him. The Respondent correctly points out that at the time he registered the Domain Name, the Complainant was engaged in a very narrow specialist field, it had no registered rights and no evidence of any kind has been produced by the Complainant to justify a finding of pre-existing common law rights. The Respondent denies having had any knowledge of the Complainant at the relevant time. On the face of it, that might ordinarily have been expected to result in a dismissal of the Complaint with prejudice.
However, the Respondent’s position on the evidence before the Panel is very unsatisfactory. He has an appalling track record in matters of this kind. There appear to have been no less than 12 previous decisions under the Policy in which directly or indirectly he has been found to have been implicated in the registration and use of domain names in bad faith. While he correctly points out that a track record of that kind does not lead inexorably to a similar finding in this case, it does raise the question as to why he registered the Domain Name and it is noteworthy that his evidence contains no explanation for his choice of the letters “stas”. He says that he registered it for his business, “Flower Market”, but he then proceeds to use it for an adult site. It may be that “Flower Market” is or was a business engaged in that field, but there is no evidence on the point and the adult site to which the Domain Name linked bore an entirely different name. “Stas” is not a name or acronym having any obvious connection with the Respondent. In the view of the Panel, if the Respondent is to distinguish his registration and use of the Domain Name from his history under the Policy, an explanation for his choice of the Domain Name is called for.
The Panel concludes that in these most unusual of circumstances the interests of justice are best served by denying the Complaint in the instant proceeding, but allowing the Complainant to re-file the Complaint in a form, which complies with the Supplemental Rules. In so doing, the Panel wishes to stress the requirement for compliance of party filings both with the Rules and with the Supplemental Rules. Moreover, such a Complaint would (if re-filed) give the Respondent a further opportunity of addressing the issue as to why he selected the Domain Name in the first place. The Panel would regard any such re-filed Complaint as an exception to the general rule as stated in Creo Products Inc. v. Website In Development,WIPO Case No. D2000-1490 (and the other cases cited in paragraph 4.4 of theWIPO Overview). In the view of the Panel any such re-filed Complaint could be accepted by a dispute provider without application of the prima facie refiling assessment set out in Creo Products Inc. v. Website In Development,WIPO Case No. D2000-1490.
7. Decision
For all the foregoing reasons, the Complaint is denied, but without prejudice to the Complainant’s right to re-file the Complaint in a compliant form.
Tony Willoughby
Sole Panelist
Date: April 14, 2008
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