WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Eclipse International N.V. v. Luma, Inc. Case No. D2009-0380 1. The Parties
The Complainant is Eclipse International N.V. of Turnhout, Belgium, represented internally.
The Respondent is Luma, Inc. of North Carolina and California, 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 March 23, 2009. On March 24, 2009, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On March 24, 2009, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing additional contact details not provided in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on April 3, 2009. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 employed reasonably available means calculated to achieve actual notice to the Respondent of the Complaint, and the proceedings commenced on April 15, 2009. Many of the communications sent by the Center were returned as undeliverable. In accordance with the Rules, paragraph 5(a), the due date for Response was May 5, 2009. The Respondent did not submit any response by that date. Accordingly, the Center notified the Respondent's default on May 6, 2009. That day, a communication on behalf of the Respondent was received by the Center. The Panel has disregarded that communication in reaching its decision.
The Center appointed Alan L. Limbury as the sole panelist in this matter on May 18, 2009. 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 disputed domain name appears to have been first registered on August 6, 1995. In responding to the Center's request for verification, the Registrar informed the Center that the disputed domain name was created on October 1, 2004. It is unclear whether and, if so, on what date it was transferred to the Respondent from a prior registrant.
The Complainant registered the trademark LUMA in the European Community on October 31, 2008, No. 989876, with a priority date based upon a prior registration in the Benelux on September 2, 2008, No. 1165227, in relation to, inter alia, advertising and business management. 5. Parties' Contentions A. Complainant
The Complainant relies on its registered trademark LUMA and alleges that the disputed domain name is identical to that mark and that the Respondent has no rights or legitimate interests in the disputed domain name, which was registered and is being used in bad faith.
The annexures to the Complaint and the Amended Complaint consist of the Whois record for the disputed domain name, showing the two creation dates, August 6, 1995 and October 1, 2004; a letter authorising the Complainant's representative to conduct these administrative proceedings on its behalf; copies of the Policy, the Rules and the Supplemental Rules; and a copy of its European Community trademark registration certificate No. 989876.
The Complainant says it has made a prima facie case establishing the Respondent's lack of rights and legitimate interests by asserting that the Complainant has never been in contact with the Respondent; that “from the file it follows” that neither the former registrant nor the Respondent have any rights or legitimate interests in the disputed domain name; and that none of the circumstances described in the Policy, paragraph 4(c) is present.
As to bad faith, the Complainant says the domain name registration prevents the Complainant from further reflecting the mark in the corresponding domain name and that “this attitude” shows the Respondent has engaged in “a pattern of such malicious conduct”. Further, the disputed domain name clearly disrupts the business of the Complainant and, by using the disputed domain name, the Respondent attempts to attract, “maybe for commercial gain” Internet users, by creating a likelihood of confusion with Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of its website or of a service on its website.
The Complainant also says that the circumstances of the present case show that the transfer to the Respondent of the domain name constitutes bad faith registration and that the Complainant has established that the Respondent is now using the domain name in order to prevent the Complainant from further reflecting its trademark in a corresponding domain name in the “.com” domain, “as was done before the transfer to the Respondent”. B. Respondent
The Respondent did not reply within time to the Complainant's contentions. 6. Discussion and Findings
Under the Policy, paragraph 4(a), the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to a 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 respondent is not obliged to participate in a proceeding under the Policy but if it fails to do so, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the complainant. Reuters Limited v. Global Net 2000, Inc,WIPO Case No. D2000-0441. See also Microsoft Corporation v. Freak Films Oy,WIPO Case No. D2003-0109; SSL INTERNATIONAL PLC v. MARK FREEMAN,WIPO Case No. D2000-1080; and ALTA VISTA COMPANY v. GRANDTOTAL FINANCES LIMITED et al.,WIPO Case No. D2000-0848. A. Identical or Confusingly Similar
The Policy, paragraph 4(a)(i) embodies no requirement that a complainant's trademark rights must have arisen before the disputed domain name was registered. Thus, the Panel finds in this case that the disputed domain name is identical to the Complainant's registered LUMA mark since the top level domain “.com” is to be disregarded. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525 and Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429.
The Complainant has established this element. B. Rights or Legitimate Interests
Although the timing of the Complainant's acquisition of trademark rights is not relevant under paragraph 4(a)(i), it is relevant for the purposes of paragraphs 4(a)(ii) and 4(a)(iii). See, e.g., Nãofumomais, Clínica de Homeopatia Antitabágica, Lda. v. Re-Surgir - Consultores em Desenvolvimento Individual e Organizacional, Lda.,WIPO Case No. D2004-0399; Valve Corporation v. ValveNET, Inc., ValveNET, Inc., Charles Morrin, WIPO Case No. D2005-0038.
In light of the Panel's finding under the next heading, it is unnecessary to consider this element. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy. Three of those circumstances require consideration here, namely whether:
(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 the respondent 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 website 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 website or location or of a product or service on its website or location.
The essence of a complaint under the Policy is an allegation of bad faith targeted at the complainant. This requires a respondent to have actual knowledge of the existence of the trade mark owner or of the trademark. As one learned panelist has put it: “If the registrant is unaware of the existence of the trade mark owner, how can he sensibly be regarded as having any bad faith intentions directed at the complainant?”. The Way International, Inc. v. Diamond Peters, WIPO Case No. D2003-0264. See also Asset Marketing Systems, LLC v. Silver Lining,WIPO Case No. D2005-0560.
“Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant's non-existent right. […] However, in certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. This often occurs after a merger between two companies, before the new trademark rights can arise, or when the respondent is aware of the complainant's potential rights, and registers the domain name to take advantage of any rights that may arise from the complainant's enterprises.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 3.1.
There is no evidence here that the Respondent had the Complainant or its mark in mind when registering or using the disputed domain name. There are no circumstances here that would permit a finding of bad faith registration notwithstanding that the trademark rights arose after the domain name was registered.
The mere fact that the previously-registered disputed domain name prevents the Complainant from reflecting its subsequently registered trademark in a corresponding domain name does not give rise to any inference that this was the Respondent's purpose in registering the disputed domain name. The Complainant alleges that “this attitude” shows the Respondent has engaged in “a pattern of such malicious conduct” yet the material before the Panel says nothing about the Respondent's attitude. There is no evidence of any pattern of conduct on the part of the Respondent. Proof of a pattern is essential to a finding of bad faith under paragraph 4(b)(ii).
The Complainant says the disputed domain name clearly disrupts its business (without stating what the Complainant's business is) but the Complainant does not claim the Respondent is a competitor nor does it assert that disrupting the Complainant's business was the Respondent's primary purpose in registering the disputed domain name. Proof of such purpose is essential to a finding of bad faith under paragraph 4(b)(iii).
There is no evidence that the disputed domain name has been used with the intent to create confusion required under paragraph 4(b)(iv). Such intent requires proof of the Respondent's awareness of the Complainant or its mark. There is no material before the Panel from which any such inference can properly be drawn.
Accordingly, the Panel declines to find that the disputed domain name was registered and is being used in bad faith.
The Complainant has failed to establish this element. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Alan L. Limbury
Sole Panelist
Dated: May 22, 2009
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