WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intergr8 IT v. Sunshine/ Mr. Louis Botha
Case No. D2008-0978
1. The Parties
The Complainant is Intergr8 IT, Waverley, Johannesburg, of South Africa, represented by Adams & Adams Attorneys, South Africa.
The Respondent is Sunshine/ Mr. Louis Botha, Libradene, Boksburg, South Africa, and Sunward Park, Gauteng, of South Africa, represented by Daly Maqubela Oliphant Attorneys, South Africa.
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 June 27, 2008. On June 30, 2008, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On the same day, Network Solutions, LLC transmitted by email to the Center its verification response providing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 1, 2008 providing the registrant and contact information provided by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complaint filed an amended Complaint on July 4, 2008 citing Sunshine as an additional Respondent and stating that Sunshine is a pseudonym or trading style of Louis Botha, the initial Respondent.. 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 July 18, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 8, 2008. The Response was filed with the Center on August 5, 2008.
The Center appointed Owen H. Dean as the sole panelist in this matter on August 19, 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.
4. Factual Background
The Complainant is a network technology services and solutions company. It operates in the field of systems integration, infrastructure management and support services. The company employs system engineers who are directly involved in higher lever consulting, support and integration. The company’s core focus is on network infrastructures specializing in design, planning, deployment management and maintenance. It has offices in major South African cities including Johannesburg and Cape Town.
The Complainant is a private company which was incorporated on July, 18, 2000 under the name Scope Full 97 (Pty) Ltd and it changed its name on June, 24, 2002 to Intergr8 IT (Pty) Ltd. The Complainant, which had been a so-called “shelf company”, commenced trading in its aforementioned business by no later than March 2001. The precise date of the commencement of the trading activities and the name under which it so commenced is a matter in dispute.
The Complainant’s trading activities were at least from June 2001 conducted under the name Intergr8 IT (Pty) Ltd and it adopted Intergr8 IT, together with a logo, to designate its trading activities, which are the provision of services. During the past seven and a half years the name and mark has been used extensively and it has acquired substantial repute as designating the Complainant’s services. The Complainant has achieved the status of a Microsoft Certified Gold Partner for Advanced Infrastructure Solutions, Network Infrastructure Solutions, Information Worker Solutions, and OEM Solutions. It has been acknowledged and accredited with many awards, namely Microsoft Gold Partner of the Year, African ICT Achievers – CIO of the Year for Africa, Best Customer Experience of the Year, Network Infrastructure Solution of the Year, Security Solution of the Year for Middle East, Africa and Eastern Europe, Advanced Infrastructure Solutions, to mention a few.
On September, 26, 2001 the Complainant made application to register the trade mark INTERGR8 IT LOGO in classes 9 and 42 of the South African Trade Marks Register. The class 9 application covered, inter alia, computer hardware, while the class 42 application covered, inter alia, information technology services including development, design and creation of computer programs. The trade marks were registered under nos. 2001/16720-1. They proceeded to grant in August 2006. The subject of the registrations is a composite mark consisting of the mathematical sign for infinity, together with the words “Intergr8 It”, which are featured prominently.
The Complainant has registered and uses the following domain names, in addition to its use of the disputed domain name:
.
;
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The Complainant has used the disputed domain name since at least March 2001 in relation to its business. The precise circumstances of its use of this name are in dispute. The disputed domain name has not been used by the Respondent in the sense that he has not used it in relation to any business activities conducted by him.
The Respondent commenced an association, the precise nature of which is a matter of dispute, with the Complainant on February, 1, 2001. This association comprised inter alia the performance of services as an engineer for and on behalf of the Complainant. The Respondent’s association with the Complainant continued until December 2005 when it was terminated by the Respondent by a letter dated October, 31, 2005 headed “Resignation” which states that “I hereby wish to tender my resignation from Intergr8 IT with effect from November, 30, 2005”.
On February 9, 2001 the Respondent registered the disputed domain name which is valid until February, 9, 2009. The Respondent is listed as the administrative as well as the technical contact relating to the disputed domain name. The Respondent is so registered under an alias or pseudonym, “Sunshine”. The disputed domain name was thus registered by the Respondent after the commencement of his association with the Complainant on February, 1, 2001. The Complainant, and not the Respondent, has used the disputed domain name on an ongoing basis since it commenced operating.
On June 6, 2008 the Respondent instituted a court action against the Complainant and two of its Directors, claiming payment of certain monies, being the value of alleged outstanding share capital in the Complainant which was due to him and had not been paid to him. It is common cause between the parties that this dispute is unrelated to the present matter in the sense that it has no connection with the questions in issue in the present matter, but the fact of the institution of these proceedings is not without significance.
The disputed domain name has been maintained and managed by the Respondent and he has paid the renewal fees and costs in respect of it whenever they were due. On April, 3, 2008 the Complainant wished to make a technical change to the disputed domain name and it was unable to do so because it was not the Registrant. At that stage the Complainant entered into negotiations with the Respondent for the transfer of the disputed domain name to the Complainant. An approach was made to the Respondent by an employee of the Complainant who is known to the Respondent with a view to negotiating the transfer of the domain name. The Respondent declined to comply with this request, whereupon the Complainant instructed its attorneys to address a letter of demand to the Respondent, which was done on April, 4, 2008. Correspondence ensued between the parties’ respective attorneys and the outcome was that no settlement could be reached on the question of the transfer of the disputed domain name from the Respondent to the Complainant. This circumstance gave rise to the commencement of the present proceedings.
5. Parties’ Contentions
A. Complainant
The Complainant seeks the transfer of the disputed domain name to it on the basis of paragraph 4 of the Uniform Domain Name Dispute Resolution Policy. The Complainant’s case is sumarised below.
The Respondent was employed by the Complainant as an engineer with effect from February 1, 2001 and at that stage, to the Respondent’s knowledge, the Complainant had adopted the name and trading style Intergr8 IT and was already using the name. Such use had commenced from the beginning of January 2001. As part of his responsibilities as an engineer, the Respondent was in charge of the Complainant’s internal infrastructure. He was instructed during February 2001 by the Complainant, in his capacity as an employee, to register the disputed domain name in the name of the Complainant. The domain name was indeed duly registered by the Respondent but in his own name and not in the name of the Complainant, and it was not known to the Complainant that the disputed domain name had been registered in this manner. This only came to the Complainant’s knowledge on April, 3, 2008 when it wished to make a technical update to the domain name registration. The Respondent should have registered the disputed domain name in the name of the Complainant, rather than in his own name.
The Complainant as a business was founded by Robert Sussman, , Lance Fanaroff and Mark Stephen Levy, who were the founders and initial Directors of the company. The name and trade mark INTERGR8 IT was conceived by the founders. The Complainant commenced use of the trade mark INTERGR8 IT as of the beginning of January 2001, during the “set up” phase of the business. During this phase the name and trade mark was used extensively by the Complainant and its employees. The name and trade mark INTERGR8 IT was typically used when employing further staff members, liaising with potential clients, liaising with landlords, service providers and the like with the result that the Complainant commenced acquiring a reputation and goodwill in the trade mark as from the beginning of January 2001. The original name of the Complainant company, Scope Full 97 (Pty) Ltd was never used in the course of trade by the Complainant.
The original founders of the Complainant conceived the idea of starting the Complainant company at the end of 2000. They decided on the name “Intergr8 IT” due to the fact that it described their vision (i.e. to integrate information technology systems) but was also unique and distinctive. They particularly liked the fact that the numeral 8 is similar to the mathematical sign for infinity. In the premises, the name and trade mark INTERGR8 IT was adopted as the name and primary trading style and trade mark of the Complainant prior to the registration of the disputed domain name by the Respondent on February 9, 2001.
During the Respondent’s employment with the Complainant, he remained responsible for the Complainant’s internal infrastructure, including the registration, renewal, maintenance and management of the disputed domain name. As a result of this, the Complainant remained in ignorance of the fact that the disputed domain name had been registered in the name of the Respondent until April 3, 2008. When the Complainant became aware of the registration of the disputed domain name in the name of the Respondent, it instructed one of its employees to contact the Respondent and offered to reimburse him for paying for the registration and the annual subscription fees in return for the disputed domain name being transferred to the Complainant. The Respondent declined this offer and advised that the Complainant could consider itself lucky that he, the Respondent, had not “pointed the domain name to a pornographic website … yet”. The Respondent also stated that the Complainant must “pay its dues” and in this regard he mentioned a figure of R2 Million. After the Complainant had caused its attorneys to send a letter of demand to the Respondent and during the course of the exchange of correspondence between the attorneys, the Respondent for the first time raised the issue of the share value dispute and claimed that he had been a Director of the company.
The Complainant is suffering prejudice as a result of the registration of the disputed domain name in the name of the Respondent as it is unable to exercise control over the domain name and is faced with the possibility that the Respondent could at any moment change the registration details or set up the domain name in such a manner so as to deprive the Complainant of use of its website and/or email facility.
As confirmation of the fact that the Respondent should have registered the domain name in the name of the Complainant, the Respondent has continued to point the domain name to the Complainant’s website despite the fact that he has not been employed by the Complainant for some two and a half years. The Respondent has also chosen not to interfere with the Complainant’s email system, which system is able to operate solely on the basis of the disputed domain name registration.
The Complainant, and not the Respondent, is the true owner of the disputed domain name. The Complainant has used the trade mark INTERGR8 IT since January 2001 on an extensive scale and has acquired strong common law rights in it. It also registered the trade marks nos. 2001/16720-1 INTERGR8 IT LOGO dating from September 26, 2001. Furthermore, it has numerous other domain name registrations which are very similar to the disputed domain name.
On the other hand, the Respondent registered the disputed domain name for the Complainant, but in his own name. The Respondent has never used the domain name despite the fact that he operates a business in competition with the Complainant under the name Think IT.
The true objective of the Respondent in registering the disputed domain name was to use it as leverage against the Complainant in future. This intention has been given effect by the Respondent seeking to use the fact of the registration of the disputed domain name in his name as a lever in his shareholding dispute with the Complainant and in extracting payment of a substantial purchase price for the transfer of the disputed domain name to the Complainant.
B. Respondent
The Respondent denies the relief sought by the Complainant and his defense is sumarised below.
With effect from February 1, 2001 the Respondent was a shareholder of the Complainant and was part of its management team – he was a Director. The Respondent commenced negotiations with the founders of the Complainant during or about January 2001. The basis of these discussions was that an IT company would be started in which he, the founders and various other parties would be involved. The Respondent was part of these discussions on account of his having the necessary skills and experience in IT. Levy, Sussman and Fanaroff, on the other hand had limited IT knowledge and their role was to inject money into the company as working capital. The Respondent’s function was to secure work for the company to be started. The shelf company, Scope Full 97 (Pty) Ltd was obtained and utilised. It was agreed that the Respondent would have a small shareholding in the company. These shares were never issued to him, nor has he been paid the value of them. An employment contract was offered to the Respondent by the Complainant but he declined to sign it. Nevertheless, he worked for the Complainant and his duties included designing of network solutions, specifying correct hardware and software requirements, designing Microsoft Active Directory, designing Microsoft Exchange, designing backup and disaster recovery solutions, designing and implementing firewall solutions and proxy servers, research and development of new products and training junior engineers. His responsibilities did not include the registration, renewal, maintenance and management of the domain name or names.
He registered the domain name in his personal capacity as a shareholder of the Complainant and in that capacity he is separate and distinct from the Complainant. He is the rightful holder and owner of the domain name. While has not used the domain name himself, this fact does not give the Complainant a right to it nor is it a demonstration that he does not hold a legitimate interest in it. As he was the owner of the domain name he had no duty to disclose that it had been registered in his name, even when he severed his ties with the Complainant.
The Respondent registered its domain name in his own name as part of the setting up process of the Complainant’s business and this was done in the context of it being his contribution towards the building of the business and the furthering of the business of the Complainant. The Complainant only commenced using the name and mark INTERGR8 IT in March 2001 and it made application to register the trade mark INTERGR8 IT LOGO in September 2001. The Complainant therefore has no claim to the ownership of the disputed domain name or to require the name to be transferred to it.
The Complainant has never had a right to the disputed domain name and therefore has no claim to have it transferred to it. The Respondent has allowed the Complainant the right to use the domain name and the Complainant should therefore reimburse him for the right of such use. The fact that the Respondent has allowed the Complainant to use the domain name demonstrates that he has never had any malicious intentions in regard to it. Far from being obliged to transfer it to the Complainant after the termination of his association with it, he could, if he chose to do so, offer the domain name for sale to any other party, but he has elected not to do so.
If the registration of the domain name in the name of the Respondent and the use of the trade mark and name INTERGR8 IT by the Complainant is likely to cause confusion, the Complainant only has itself to blame for such confusion because it chose to adopt and register its mark after he had registered the disputed domain names. The Complainant had known all along that the disputed domain name was registered in the name of the Respondent.
The Respondent has not registered and used the domain name in bad faith.
6. Discussion and Findings
Paragraph 4 of the Uniform Domain Name Dispute Resolution Policy requires the Complainant to establish the following in order to succeed with its complaint:
i) The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
ii) The Respondent has no rights or legitimate interest in respect of the disputed domain name; and
iii)` The disputed domain name has been registered and is being used in bad faith.
These elements are cumulative and the Complainant must show that each one of them has been established.
Before going on to deal with the above, there are certain factual and/or legal issues which must be determined in this matter as a prelude to testing the Complaint against the aforementioned elements.
Was the Respondent an employee of the Complainant and did he register the disputed domain name in this capacity?
The evidence filed on behalf of the respective parties is in conflict and there is a dispute of fact on the papers. Ordinarily in legal proceedings such a dispute could not be resolved without referring the matter to oral evidence and having the competing witnesses being subjected to cross-examination. The Panel does not have this facility available to it and accordingly it must resolve a factual dispute of this nature as best it can on the papers.
The Complainant contends that the Respondent was an employee with effect from February 1, 2001 and that, in that capacity, he was instructed to register the disputed domain name in the name of the Complainant. The Respondent denies that he was an employee and says that, although an employment contract was offered to him, he declined to sign it. He says that he registered the disputed domain name as an independent person and that he was acting as a shareholder of the Complainant. The claim is made, without conviction or any real substantiation, that he was a Director of the Complainant. No evidence or substantiation is offered in support of this allegation. It is disputed by the Complainant that the Respondent was a shareholder. In the Panel’s view it is irrelevant as to whether the Respondent was a shareholder of the Complainant or not. A shareholder of a company has no special status and it is an irrelevant circumstance as to whether or not an individual is an employee of a company.
The Respondent accepts that he had certain responsibilities in performing his services in relation to the Complainant and he sets out his job description. When he terminated his relationship with the Complainant he tendered a letter of “resignation”. All the circumstances of the matter point to the Respondent being an employee of the Complainant and the Panel finds that on a balance of probabilities this was the case, albeit his contract of employment was unwritten or tacit.
The question then arises as to whether, when the Respondent registered the disputed domain name, he was acting as the employee or servant of the Complainant. On the premise that he was an employee of the Complainant (which has been found to be the case) it is inconceivable that an employee when, in the course of his employment, is instructed or requested to register a domain name, that it would have been intended that he should have obtained this registration in his own private capacity and in his own name. Given the adoption of the name and trade mark INTERGR8 IT by the Complainant and its registration of numerous other domain names in its own name, the conclusion is inescapable that the Respondent was meant to have registered the disputed domain name in the name of his employer, the Complainant.
When did use of the name and mark INTERGR8 IT by the Complainant commence?
Here again, there is a dispute of fact on the papers which is best resolved by oral evidence but which must be determined as best possible on the papers.
The Complainant says that, having acquired a shelf company, the founders of the business started making preparations for the company to commence its proposed business at the end of 2000. Various preparations were made for the commencement of such business in January 2001 and it is common cause that at least in March 2001 the Complainant “opened shop”. It says that it adopted the trade mark INTERGR8 IT at an early stage in this process, more particularly in January 2001 and it used this mark or name of the business in conducting the preparations to opening its doors. The Respondent denies this is so and says that the trade mark and name was only adopted later in the year when application was made to formally change the registered name of the company to Intergr8 IT on June 24, 2002. The Respondent is silent as to under which name the company is alleged to have conducted its aforementioned activities prior to making application to register the name change.
It is common cause that the company which was acquired to operate the Complainant’s business was a so-called “shelf company”. Its name was Scope Full 97 (Pty) Ltd which is an unusual and inappropriate name for a business of the nature conducted by the Complainant. Given the fact that the Respondent, as an employee, made application in early February 2001 to register the disputed domain name it is, on a balance of probabilities, likely that the name or mark INTERGR8 IT had already been adopted at that time. This conforms with the Complainant’s version of the facts and with a common sense appraisal of the Complainant’s version. The Panel therefore accepts the Complainant’s version of the facts and finds that the Complainant had adopted the mark or trading style INTERGR8 IT by January 2001. It further finds that the activities in preparation of the starting up of the business were conducted under this trading style.
Seeing that it is common cause that the Complainant commenced operating its business in March 2001, it follows that preparations must have been made prior to that date to enable it to do so. The version of the Complainant that it commenced preparations for the opening up of the business as from January 2001 thus rings true.
Can Respondent claim to be the true owner of the disputed domain name?
In the light of the finding that the Respondent was an employee of the Complainant at the time that he made application to register the disputed domain name and that he should have registered the disputed domain name in the name of the Complainant on this account, it follows that he could not validly claim that the disputed domain name is his property. That ought to be the end of the enquiry on this issue but there are additional reasons why he cannot in law advance a valid claim to ownership of the disputed domain name, notwithstanding the fact that it is registered in his name.
Both parties to the dispute are situated in South Africa and the events pertaining to the determination of the question of true ownership of the disputed domain name took place in South Africa. The registered trade marks on which the Complainant relies are registered in South Africa. It is thus appropriate that the actions of the parties should be viewed against the background of South African law read, of course, with the provisions of the Policy.
Under South African trade mark law, a registered trade mark dates from the date of application to register that trade mark. When a registered proprietor seeks to enforce his trade mark, either in the context of an opposition to another trade mark application or in an infringement situation, and the date of the inception of his rights in the trade mark are in issue, regard can be had to the date on which the use of the subject trade mark commenced, if such use was anterior to the registration date of the trade mark (see Section 36(1) of the Trade Marks Act, No. 194 of 1993 and Webster & Page, “South African Law of Trade Marks”, 4th Edition, paragraph 12.45.1). Accordingly, although the date of registration of trade marks nos. 2001/16720-1 is September 26, 2001, the rights flowing from the registration of these marks effectively commence from the date of first use of these marks. Similar considerations will apply to trade marks nos. 2007/00627-9 INTERGR8 in classes 9, 38 and 42 assuming that these marks in due course proceed to registration.
The evidence of the Complainant is to the effect that the Complainant commenced using the name or trading style and mark INTERGR8 IT in January 2001. The Complainant says that the name and mark was used during the “set-up” phase of the business and in particular that it was typically used when employing further staff members, liaising with potential clients, liaising with landlords, service providers and the like. The question arises as to whether this form of use falls within what is contemplated in Section 36(1) of the Trade Marks Act. In K-Mart (Pty) Ltd v K-Mart Corporation and the Registrar of Trade Marks (unreported decision of the Transvaal Provincial Division of the Supreme Court of South Africa, dated 18 December 1987) the court had to decide whether evidence that the Respondent had promoted and advertised its business services in South Africa by means of discussions and negotiations which had taken place with certain major retailers, although no contracts were entered into, constituted use of the trade mark K-MART. The court found that the advertising and promotion of services under the mark and the making of promotional efforts involving the offer of its services in the aforementioned manner constituted use of the mark for purposes of an application for the expungement of a registered trade mark. In the Panel’s view, the same considerations by parity of reasoning apply to the use contemplated in Section 36(1) of the Trade Marks Act. The Panel accordingly finds that the use of the trade mark INTERGR8 IT by the Complainant in January 2001 during the “set-up” phase of the business and in particular the liaising with potential clients, constituted use of the trade mark INTERGR8 IT by the Complainant for purposes of the present dispute.
It is not clear whether the use made of the trade mark INTERGR8 IT during the “set-up” period was use of the word mark simpliciter or use of the composite INTERGR8 IT logo which is the subject of registered trade marks nos. 2001/16720-1. To the extent that the use may have been on the word mark simpliciter, in the Panel’s view the provisions of Section 31(1) of the Trade Marks Act are applicable in the present dispute. In terms of this section use of a trade mark may be proved by use of the mark with additions or alterations not substantially affecting its identity. The Panel holds that use of the words INTERGR8 IT simpliciter, fall within this provision and is equivalent to use of the aforementioned registered trade marks. In any event, the use of the trade mark INTERGR8 IT simplicitor will in the Panel’s view constitute use of trade marks nos. 2007/00627-9 INTERGR8.
In conclusion on this issue, the Panel finds that the statutory rights under the Trade Marks Act in the mark INTERGR8 IT for the purpose of the present dispute under the Policy date effectively from January 2001.
On the facts as accepted by the Panel, the Respondent registered the disputed domain name in February 2001, while being an employee of the Complainant and in the knowledge that the Complainant had adopted and used the name or trading style and mark INTERGR8 IT with effect from January 2001. This is comparable to a situation where a person makes application to register a trade mark when another party has prior rights in that trade mark arising from use of that mark of which the trade mark applicant is aware. Webster & Page, op. cit, p. state the following in this regard “In Oils International (Pty) Ltd v William Penn Oils Ltd, the court came to the conclusion that the bona fide choice of a mark is sufficient to entitle applicant to make the claim to proprietorship provided for in the Act, but that, if the claim proprietorship is challenged, he must be in a position to show some sort of title to the mark in the sense that he either acquired it from someone or originated it. The concept of ‘origination’ in the view of the court was wider than invention. It covered the decision to use, as a trade mark, a well known word or phrase”.
In the evidence in the present case, the Complainant explained at some length how the founder conceived and coined the trade mark INTERGR8 IT. The Respondent offers no such evidence and is silent on how he came to adopt the disputed domain name. He also omits to state anywhere that he intended to use it in the course of conducing his own business. Indeed, in the eight years which have passed since the registration of the disputed domain name, the Respondent has made no use of it on his own behalf whatsoever. These facts belie any intention on the part of the Respondent to use the domain name as his own property. All indications are that he registered the mark for the use of the Complainant and that all and any use which has been made of the disputed domain name has been by or on behalf of the Complainant.
In these circumstances, the Panel finds that the Respondent cannot validly claim to be the owner of the disputed domain name.
What consideration, if any, was required by the Respondent for the transfer of the disputed domain name to the Complainant?
This is a further instance of a conflict on the papers and a dispute of fact which ideally ought to be resolved by hearing oral evidence.
The Complainant says that it offered to reimburse the Respondent for his costs in obtaining and maintaining the disputed domain name registration and that this offer was rejected by the Respondent who, in turn, said that he would require a consideration of R2 Million in return for transferring the disputed domain name to the Complainant. The Complainant’s evidence in this regard is corroborated by an affidavit made by one Shaun Rimer an employee of the Complainant, who conducted the communications in regard to the consideration for the transfer of the disputed domain name with the Respondent. The Respondent denies these allegations categorically. The Respondent says of his contact with Rimer that
“I advised Rimer, (amongst other things), that I would not be subjected to their hostile and bullying tactics of the Complainant and that it had no right to the domain name of which I was the rightful owner and in the event of the Complainant wanting to acquire the domain name from me, then it was welcome to effect payment for such transfer or sale of the domain name”.
The Respondent thus concedes that he attached a price to the transfer of the domain name to the Complainant. He does not limit the consideration to reimbursement of his costs.
The Panel finds on a balance of probabilities that the Respondent did stipulate a purchase consideration which was in excess of his costs, but there is no clarity as to the precise amount of such purchase consideration.
Elements of the Complaint
A. Identical or Confusingly Similar
The first element of the objection which the Complainant must establish is that, in terms of paragraph 4(a)(i) of the Policy, it must show that the disputed domain name is “identical or confusingly similar to a trade mark or service mark in which the Complainant has rights”.
The Complainant’s basis for objection to the disputed domain name is its rights in the trade mark INTERGR8 IT, which it has proved. These rights derive from the common law, by virtue of the use which has been made of the mark both as a trade mark and as a trading style, and from the Trade Marks Act by virtue of registered trade marks nos. 2001/16720-1 INTERGR8 IT LOGO as well as pending trade mark applications nos. 2007/00627-9 INTERGR8. The disputed domain name is for all practical purposes identical to the Complainant’s mark and trading style and it is axiomatic that the disputed domain name is identical or confusingly similar to the Complainant’s mark. This issue was not really disputed by the Respondent whose only comment is that the Complainant only had itself to blame for this situation arising because it, so the argument went, chose the trade mark INTERGR8 IT after the registration of the domain name.
Accordingly, the Panel finds that the first element of the objection has been established by the Complainant. B. Rights or Legitimate Interests
The second element of the objection which the Complainant must establish, in terms of paragraph 4(a)(ii) of the Policy, is that the Respondent has “no rights or legitimate interests in respect of the domain name”.
Sub-paragraph c of the aforementioned paragraph of the Policy gives a non-exhaustive list of arguments which a Respondent can advance, and if sustained, would serve to negate the allegation that he has no rights or legitimate interests in respect of the domain name. These are the following:
ii) He can show that before any notice to him of the dispute his use of, or demonstrable preparations to use, the disputed domain name or a name corresponding in connection with a bona fide offering of goods or services; or
ii) He has been commonly known by the domain name, even if he has not acquired any trade mark or service mark rights in respect of it; or
iii) He 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 trade mark or service mark at issue.
The Respondent has made no use at all of the disputed domain name, nor shown any preparations, or even intention, to use it and as a result there is no basis on which it can be contended that he is commonly known by the domain name. Accordingly, none of these potential defenses are available to the Respondent. Moreover, the Panel has already made a finding that he cannot claim to be the true owner of the domain name.
Accordingly, the second element of the Complainant’s objection has been met.
C. Registered and Used in Bad Faith
In terms of paragraph 4(a)(iii) of the Policy the Complainant must show that the disputed domain name has been registered and is being used in bad faith by the Respondent.
Paragraph b of the Policy sets out a non-exhaustive list of circumstances which will be evidence of the registration and use of the domain name in bad faith. They are the following:
i) The circumstances indicate that the Respondent has registered the domain name primarily for the purpose of selling, renting or otherwise transferring it to the Complainant who is the owner of the trade mark or service mark or to a competitor of that Complainant for valuable consideration in excess of his documented out of pocket costs directly related to the domain name; or
ii) The Respondent has registered the disputed domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name, provided that it must be shown that he has engaged in a pattern of such conduct; or
iii) The Respondent has registered the domain name primarily for the purposes 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 his website or other online location by, creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
These circumstances are stated in the alternative and establishing any one of them will be sufficient.
In the opinion of the Panel the Complainant has shown that the circumstance described in paragraph (i) above is present in this matter in that the Panel has been persuaded on the balance of probabilities that the Respondent registered the domain name primarily for the purposes of transferring it to the Complainant for a price in excess of the cost of obtaining and maintaining it as a bargaining tool for extracting other concessions or benefits out of the Complainant.
The Panel has already made a finding that the Respondent registered the disputed domain name in the course of his employment by the Complainant and with the knowledge that the Complainant had already adopted the name and trade mark INTERGR8 IT and was using it. Furthermore, the Panel has made a finding that the circumstances of the registration of the domain name by the Respondent were such that the Respondent had no valid claim to ownership of the domain name. Accordingly, the Panel finds that the Respondent registered the disputed domain name in bad faith.
Under this element of the objection the Complainant is required to show that the Respondent is, in addition, using the domain name in bad faith. At first blush establishing this requirement seems to present some difficulty since the Respondent is not using the domain name at all in the commercial or business sense. However, he is “using” it as a lever in order to extract benefits or concessions out of the Complainant.
Furthermore, David Gilmore and others v. Ermanno Cenicolla, WIPO Case No. D2000-1459 is instructive. In that case the panel found that there had been no active use of the disputed domain name by the respondent prior to the dispute, except to offer it for sale. There was no indication that such offer was for a price in excess of the costs of registration. Notwithstanding this, the panel stated that “Inaction has been determined as being within the concept of ‘use’ for the purposes of the policy”. The panel based this statement on Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and various other decisions which it cited. The panel then went on to find that
“The [r]espondent is using the domain name (albeit passively) in order to advance his aim of obtaining any such exclusive merchandise, knowing that the domain name represents the goodwill of the [c]omplainants and that, while the [r]espondent remains the registrant of the disputed domain name, the Complainants may be coerced into dealing with the Respondent …”.
The panel found such manner of use of the domain name to be use in bad faith.
The Panel finds in the present matter that the use of the disputed domain name by the Respondent in order to extract a favourable purchase price from the Complainant and as a lever to extract other benefits out of the Complainant constitutes the required use of it in bad faith. In the premises, the Complainant has established this element of the objection.
7. Decision
The Panel finds that the Complainant has established all of the required elements of the objection, which elements are cumulative, and that the objection must be upheld.
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, as requested by the Complainant.
Owen H. Dean
Sole Panelist
Date: September 9, 2008
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