WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION USU AG v. DMP Enterprises Case No. D2009-0761 1. The Parties
The Complainant is USU AG, Germany, represented by Hössle Kudlek & Partner, Patentanwälte, Germany.
The Respondent is DMP Enterprises, United States of America, represented by John Berryhill, Ph.d., Esq., 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 June 10, 2009. On June 10, 2009, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the disputed domain name. On June 11, 2009, 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. The Center verified that the 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 formally notified the Respondent of the Complaint, and the proceedings commenced June 22, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response July 12, 2009. The Response was filed with the Center July 13, 2009.
The Center appointed Sir Ian Barker, Thomas Hoeren and Alan L. Limbury as panelists in this matter on August 5, 2009. The Panel finds that it was properly constituted. Each member of 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 German software and IT company which, since 1977, has been in the business of providing business knowledge and business management solutions, including the designing and development of software architecture, enterprise knowledge, management of data mining, finance management software tools and enterprise analytical tools.
The Complainant owns a number of trade mark registrations for the letters USU. Its first registration in Germany, was in 1988. There are also registrations in the United States in 2001 and Canada in 2002.
The Respondent registered the disputed domain name on September 20, 1996.
The Respondent, DMP Enterprises, is the registered business name of one Daniel M Packman. The business name “DMP Enterprises” has been registered with the State of Florida since 1994. It was assigned an employer identification number by the United States Internal Revenue Service.
During 1996, the Respondent offered dial-up internet access telephone services and internet hosting. It then registered the disputed domain name. The Respondent registered the business name “DMP Enterprises/USU Net & Online Telephone” with the State of Florida in March 1997. Public notification of registration of the trading name was required.
The Respondent obtained a toll-free telephone number “1-888-USU-Online” and also operated a website accessed by the disputed domain name advertising the Respondent's telephone services.
In August 2006, the Complainant contacted the Respondent because the disputed domain name was on offer for sale on the internet browser. There were a number of iterations between the parties, culminating in an offer by the Complainant to purchase the disputed domain name on January 11, 2008, which offer the Respondent rejected. 5. Parties' Contentions A. Complainant
The Complainant contends as follows:
The disputed domain name is identical to the trade marks in which the Complainant has rights.
The Respondent has no right or legitimate interest in the disputed domain name. It was not given any by the Complainant. The Respondent has not used the disputed domain name for the bona fide offering of goods and services.
Under the disputed domain name, the Respondent displays on the internet something which looks like an offer for credit card services on first sight but the display resolves into “a mere collection of respective links”.
The disputed domain name was registered and is being used in bad faith, as can be evidenced by the offer of the Respondent to sell the disputed domain name to the Complainant on August 25, 2006 for more than US$10,000. B. Respondent
The Respondent contends as follows:
The Respondent has been using the three-letter designation “USU” in the conduct of its business since 1996. The Respondent is the registrant and user of the domain name , as well as of the disputed domain name.
The Complainant's first trade mark registration was in Germany in 1988 at a time when the Respondent in the United States had no notice of the Complainant or its mark. The Complainant's claim for rights in the United States where the Respondent is domiciled postdates registration and use of the disputed domain name by the Respondent.
The Respondent qualifies under Paragraph 4(c) of the Policy in that it has bona fide used the disputed domain name since 1996, long before notice of the Complainant's interest in 2006. The Respondent has conducted a telecommunications business through the use of the disputed domain name since 1996. It has obtained appropriate registrations from the authorities in the State of Florida where it operates. The internet archive shows that as at April 5, 1997, the Respondent had been operating as “USU Net BOCA Net” at the disputed domain name.
In June 2000 (based on the Internet Archive) there can be found a similar advertisement for the Respondent's dial-up internet access business. The archive establishes that the Respondent has long used the disputed domain name for a business corresponding to the name which the Respondent had registered in 1997 for the conduct of its business.
The Complaint was filed at a time when the Respondent was making changes to the appearance and operation of the disputed domain name. However, these changes have not proceeded.
The Respondent cites a number of cases where a respondent had been doing business through the disputed domain name for some time, such as: Windsor Fashions Inc. v. Windsor Software Corporation,WIPO Case No. D2002-0039 and, more significantly in the present case, Deutsch Welle v. Diamondware Capital Ltd,WIPO Case No. D2002-1202. In the latter case, the disputed domain name corresponded to the initials of the complainant's trade name and the registration of the disputed domain name preceded the date of any relevant trade mark registration of the complainant outside Germany.
At the time of registration, the Respondent had no knowledge or notice of the Complainant or its trade mark. The doctrine of constructive notice cannot apply when the registration of the trade mark in the United States was years after the registration of the disputed domain name.
The correspondence conducted 10 years after registration of the disputed domain name does not provide proof of any primary purpose when registration of the disputed domain name in 1996.
The Respondent was entitled to use the potential value of the 3-letter domain. Support of this proposition comes again from the Deutsch Welle case (above) where the Panel said: “The Complainant cites the Respondent's offer to sell the domain name as evidence of bad faith use of the domain. The Panel does not interpret the Policy to mean that a mere offer for sale of the domain name for a large sum of money is, of itself, proof of cybersquatting. It may, in certain circumstances, provide some evidence but it is not conclusive evidence. Indeed, some of the largest sums of money paid for domain names have been for generic names and it is clear to anyone who follows reports of domain name sales that registrations are extremely prized. In any event, in this case, the Respondent, with a substantial underlying business interest in the domain name had every reason to demand a substantial sum of money for transfer of the domain name.”
The Respondent has received many applications to buy the disputed domain name, including one from the University of Sydney Union.
The Respondent has registrations for other domain names involving the letters “usu” including , and . The Respondent has entered into a relationship with credit users to market credit cards. Such activity is perfectly legitimate. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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 disputed domain name is identical to the trade mark in which the Complainant has rights. Accordingly, the first limb of Paragraph 4(a) has been proved. B. Rights or Legitimate Interests
Although the Complainant gave the Respondent no rights to the disputed domain name, the Panel finds it proved by the Respondent that, prior to receiving the notice of the Complainant's trade mark, the Respondent had made and was making bona fide use of the disputed domain name in connection with a bona fide offering of goods and services. The Respondent has succeeded under Paragraph 4(c)(i) of the Policy.
The evidence of the Respondent shows that it has been using the disputed domain name in connection with its business since shortly after the disputed domain name was registered in 1996. The evidence is clear from the registration of a trade name, including “USU” with the Florida State authorities in 1997. The Respondent has promoted its telephone services using the style of “USU” for some years.
The evidence in this case is more compelling than in many cases when a Paragraph 4(c) defence has succeeded.
Accordingly, the Complainant has failed to prove the second limb of Paragraph 4(a) and the Complaint must fail. C. Registered and Used in Bad Faith
The Panel considers also that the Complainant has failed to prove bad faith registration and use, as required by the third limb of Paragraph 4(a) of the Policy.
It is not necessary to discuss the Policy requirement that bad faith registration must be proved separately from bad faith use since neither has been proved.
The Panel finds Respondent had no notice of the Complainant's mark when it registered the disputed domain name in 1996. The situation is similar to that in Deutsch Welle case, supra.
The Complainant's trade mark registration in the United States occurred five years after the registration of the disputed domain name, and the Panel finds nothing on the present record to establish that the Respondent registered the domain name in contemplation of Complainant obtaining rights in same. The Complainant's trademark registration is, therefore, irrelevant to any consideration of bad faith registration.
Nor can the Panel find anything justifying a finding of bad faith registration and use from the unfulfilled negotiations between the parties over the sale and purchase of the disputed domain name. A 3-letter domain name is a valuable asset and the Respondent was quite at liberty to attempt to sell this asset especially in view of the Panel's finding of Respondent's use of the domain name in connection with its business. The Respondent does have other USU domain names also associated with its business which it could have utilized even if it sold the disputed domain name. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Hon. Sir Ian Barker
Presiding Panelist
Thomas Hoeren
Panelist
Alan L. Limbury
Panelist
Dated: August 17, 2009
Full & Egal Universal Law Academy