WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Schweizerische Bundesbahnen SBB v. Gerrie Villon Case No. D2009-1426 1. The Parties
Complainant is Schweizerische Bundesbahnen SBB of Berne, Switzerland, represented by Homburger AG, Switzerland.
Respondent is Gerrie Villon (predominant former owner of Small Black Box, Ltd.) of London, the United Kingdom of Great Britain and Northern Ireland, represented by Heuking Kühn Lüer Wojtek, Germany. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 27, 2009. On October 28, 2009, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On October 28, 2009, Network Solutions, LLC transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on November 2, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 22, 2009. By email dated November 9, 2009, Respondent proposed the suspension of these proceedings pending negotiation with Complainant regarding a possible settlement. By email dated November 12, 2009, Complainant's counsel rejected that proposal for a suspension. By email to the Center dated November 18, 2009, newly-appointed counsel for Respondent requested a 10-day extension of the due date for filing a Response. By email dated November 19, 2009 counsel for Complainant objected to the grant of an extension, and alternatively stated that the maximum period for an extension should be three days. The Center, by email dated November 19, 2009, granted an extension for the filing of a Response of five days, until November 27, 2009. Respondent filed its Response a few hours past midnight on November 28, 2009, referring to certain technical difficulties in email transmission. On November 29, 2009 Respondent filed a corrected version of its Response, referring to renumbering of certain exhibits and inclusion of a missing exhibit. The brief delay in submission of the Response, and corrected Response, are not material to this proceeding. The Panel accepts the corrected Response.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on December 7, 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.
By email dated November 30, 2009, Complainant submitted a supplemental letter accepting an evidentiary correction to its Complaint based on information in the Response, and suggesting that its error did not prejudice its legal argument. Because this supplemental letter merely confirms information presented and substantiated by Respondent, the Panel does not accept this supplemental submission. 4. Factual Background
Complainant has registered the word trademark and service mark SBB on the register of the Swiss Federal Institute of Intellectual Property (hereinafter “Swiss Trademark Office”). Complainant asserts a “priority” date of the earliest registered mark back to 1902, registration number 431221. Although the records of the Swiss Trademark Office show, in “Remarks”, “Gebrauchspriorität: 1902” (i.e., use priority) the record of registration shows the “Trademark register entry date” as September 26, 1996 (and filing date of March 29, 1995), in International Classes (ICs) 12, 16, 35, 38, 39 & 42. The goods and services covered by registration 431221 include transportation of persons and goods, transport vehicles, advertising and telecommunications.1 Complainant has registered SBB through the Madrid System, registration number 808034, dated July 24, 2003, with effect in six jurisdictions (Austria, Benelux, Germany, France, Italy and Liechtenstein). Complainant has asserted registration of the SBB mark in the United Kingdom, registration number 1533536, but has not submitted evidence to substantiate that registration.2
Complainant is the Swiss Federal Railway, Switzerland's biggest travel and transportation company, that transports several hundred million passengers and millions of tons of freight annually. Complainant is organized “under public law as a special form of special stock company” pursuant to specific Swiss federal legislation. SBB is the acronym for the German-language form of its name, Schweizerische Bundesbahnen. Complainant operates a commercial Internet website at address (URL) “”. The term SBB appears on Complainant's trains, and is used as the acronym for Complainant throughout the Swiss Federal Railway system.
Complainant considers SBB to be well-known in Switzerland based on the large volume of persons using and being familiar with the national train system. Complainant considers SBB to be well-known outside Switzerland because of the substantial number of tourists who have used it services.
According to the Registrar's verification, Respondent is registrant of the disputed domain name. According to that verification, the record of registration of the disputed domain name was created on January 3, 1998. A company owned and controlled by Respondent, V-On Ltd., acquired the disputed domain name from a Swiss entity on or about November 22, 1999, in contemplation of the formation of another company, Small Black Box, Ltd., which was formed under the law of England and Wales on February 8, 2000. Respondent predominantly owned and controlled Small Black Box, Ltd. As of November 24, 2003, the disputed domain name was registered in the name of Small Black Box, Ltd. (Domain Tools domain history furnished by Complainant.) According to an official UK Companies House report submitted by Complainant, Small Black Box, Ltd., as a corporate entity, was dissolved on January 20, 2004. In mid-March 2008, the registrant of the disputed domain name was changed to the individual Respondent, Gerrie Villon, the former predominant owner of Small Black Box, Ltd. Modification of the identity of the registrant included a change of address (to that presently shown in the Registrar's verification).
Small Black Box Ltd. registered the word and design trademark “SBB” (in stylized bold letters) on the register of the Office for Harmonization in the Internal Market (OHIM) for the European Community, registration number 1591999, without opposition, on July 16, 2001, in ICs 9, 25, 35, 41 & 42.
Respondent is a London-based multimedia producer with extensive professional experience creating Internet websites, music and television productions. Respondent's work includes the development of Internet-based advertising presentations for major multinational corporations (e.g. Volkswagen, General Electric and EMI).3 Respondent works primarily under the corporate framework of V-On Ltd., an enterprise predominantly owned and controlled by Respondent. Respondent works within other enterprise formats depending upon the requirements of specific projects. Such projects include the development of sophisticated custom software.
Respondent is the owner of approximately 14 domain names, some of which are held for the benefit of clients, some of which are held for Respondent's own use. There is no indication on the record of this proceeding that any of such domain names are held without the permission of the client.
According to a detailed corporate presentation provided by Respondent, Small Black Box, Ltd. was formed as an Internet software development company that would provide a hosting platform enabling non-expert software users to manage Internet websites, as well as to facilitate customization of websites by IT experts. The SBB logo prominently appears on the cover of the corporate presentation. A synopsis of the corporate objective from the presentation reads:
CREATING SMALL BLACK BOXTM
Small Black Box was born out of the coming together of professionals who had experienced the problems facing the Web industry at first hand. Our solution to the problem was to create a framework in which functionality could be completely separated from design. We created the “defining line”.
This means that Designers can now design and back-end programmers are able to create reusable functionality components.
If design elements are not enmeshed in code then the designer is free to modify and maintain any part of the design. Conversely if functionality is not ‘polluted' with design elements then the same piece of functionality can be created once and redeployed in subsequent projects.
To complete the picture we also found that it was useful to separate the general IT Infrastructure set-up and administration of the end solution. This once again avoided compromising the end solution to the existing IT framework.
Using our technology we can provide solutions which take away the unnecessary burden from the IT staff. Hosting hardware and software remotely allows us to create an environment that is more robust and secure than one that could be created in-house. With our company looking after the housekeeping of a system, IT staff can concentrate on tasks core to the strategy of the company such as development, planning and e-business.4
Respondent has indicated that Small Black Box, Ltd. was a victim of the dot-com crash. By 2003 it had accumulated over GBP 200,000 in debt, and its operation was suspended. Respondent indicates that parts of the computer software developed in the Small Black Box, Ltd. project continued to be used by V-On Ltd., and that Respondent has always contemplated the possibility of renewing the project, either under the name of V-On, Ltd. or Small Black Box, Ltd.
In 2007, Respondent sought from Sedo an appraisal of the value of the disputed domain name . By letter dated August 28, 2007, Sedo estimated the value at GBP 150,000. According to the Sedo appraisal, three letter domain names with a “.com” gTLD extension have sold at a relatively high price.
The disputed domain name is parked at a “link farm” type home page hosted by Sedo. The links that are furnished vary depending on the geographic location of the Internet user. The links for a Swiss or European user may include reference to Complainant, and they also include references to other travel and related services, and to unrelated goods and services. Since Complainant operates the Swiss Federal Railway, there are not obvious “competitors” for the provision of Swiss rail services, at least in the passenger market. To the extent that Complainant provides travel-related services beyond the transportation of passengers by train, there are links to potential competitors.
Complainant initially indicated that the link farm associated with the disputed domain name received 15,000 visitors per day. However, Respondent challenged that allegation, observing that Complainant's evidence indicated that the number of visitors was approximately 15,000 per month. According to Respondent, it has received a total of approximately EUR 1,000 from Sedo based on click-throughs from the link farm.
By letter dated September 25, 2007, Complainant contacted Respondent objecting to the content of the website identified by the disputed domain name. In that letter, Complainant stated, “We would contemplate an out-of-court settlement in this matter and are willing to purchase the domain on fair terms.” By return correspondence, Respondent disagreed with Complainant's characterization of its use of the disputed domain name, and offered to sell that domain name to Respondent for a price in the range of GBP 210,000.
Anticipating a possible defense by Respondent, Complainant referred to decisions by the Commercial Court of Vienna (Handelsgericht Wien) (March 19, 2002) and a subsequent appeal to the Oberlandesgericht Wien (August 23, 2002) involving a suit brought against Small Black Box, Ltd. by a competing software developer (name redacted) with respect to the disputed domain name. Those decisions were provided by Complainant in the original German language with no accompanying translation.5 The decisions essentially confirm the general factual background presented by Respondent with respect to its initial acquisition and use of the disputed domain name. The Court of Appeals confirmed the decision of the lower court rejecting the cause of action. The plaintiff had argued on the basis of Austrian unfair competition law that it had a superior claim to the disputed domain name over Respondent. The Court of Appeals disagreed, referring to the “first-come, first-served” manner in which domain names are allocated, Respondent's legitimate interest in using the disputed domain name, and holding that the plaintiff had no better right to the disputed domain name than Respondent.
The Registration Agreement in effect between Respondent and Network Solutions, LLC, subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use. (Policy, paragraph 4(a)). 5. Parties' Contentions A. Complainant
Complainant asserts that it has rights in the trademark and service mark SBB as evidenced by registration at the Swiss Trademark Office, and based on use in commerce, principally in Switzerland. Complainant argues that its SBB trademark and service mark is well-known in Switzerland and among foreign visitors to Switzerland.
Complainant alleges that the disputed domain name is identical to its trademark.
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant argues that because Respondent has used the disputed domain name solely for the purpose of establishing a link farm, this does not demonstrate rights or legitimate interests. Complainant further argues that even if Small Black Box, Ltd., at one point had a legitimate interest in the disputed domain name, that such interest terminated with the dissolution of the company in 2004. Complainant argues that “there is no way how Small Black Box could have transferred to V-On or Respondent any legitimate interest Small Black Box may have had in its own name.” Complainant states that even if Respondent acquired trademark rights in SBB from Small Black Box, Ltd., any such trademark would no longer be effective for lack of use (i.e. non-use for more than five years).
Complainant argues that Respondent registered and used the disputed domain name in bad faith. Complainant argues that Respondent first acquired the disputed domain name between March 7, 2008 and March 27, 2008, and that at that time Respondent was aware of Complainant's trademark rights. Complainant alleges that Respondent has acted in bad faith by using the disputed domain name in connection with establishing a link farm that, for commercial gain, associates Respondent's website with Complainant's well-known trademark. Complainant argues that most Internet users entering the disputed domain name in an Internet browser would be searching for Complainant. Complainant further contends that Respondent registered and has used the disputed domain name for the purpose of selling it to Complainant or a third party, and has offered the disputed domain name on a link associated with its website for a listed price of GBP 50,000.
Complainant further argues that that the predecessor owner of the registration to Respondent, V-On, Ltd., acquired and used the disputed domain name in bad faith. Complainant argues that the predecessor to Respondent also used the disputed domain in connection with a link farm similar to the one operated by Respondent.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant. B. Respondent
Respondent has not challenged that Complainant holds rights in the SBB trademark and service mark as stated in the Complaint, and has not challenged that the disputed domain name is identical to the trademark.
Respondent argues that it has rights or legitimate interests in the disputed domain name. Respondent contends that at all times it owned or controlled the business entity that acquired the disputed domain name in 1999 (V-On, Ltd.), and subsequently the business entity that became the registrant, Small Black Box, Ltd., and that the change of registrant information to Respondent (as an individual) in 2008 was necessary as a consequence of the dissolution of the corporate entity previously listed as the registrant. Respondent indicates that transfers of assets (such as the disputed domain name) between commonly controlled enterprises is a common and accepted practice in the business community.
Respondent alleges that it has been commonly known by the disputed domain name, having developed a business, services and product using that name, and acquired trademark and service mark rights in that domain name. Respondent argues that its registration and use of the disputed domain name is legitimate based on Respondent's good faith development of a business, as established by evidence submitted in this proceeding.
Respondent argues that parking the disputed domain name and offering it for sale does not evidence bad faith registration and use. Respondent contends that changed circumstances since the initial registration of the disputed domain name allow it to seek to sell a valuable asset remaining from an otherwise-failed business venture. Respondent argues that it obtains modest fees from maintenance of the link farm, and that Complainant is a paid user of the link farm service. Respondent argues that Complainant does not have a monopoly over all legitimate uses of the three letter term “sbb”.
Respondent alleges that Complainant is engaged in reverse domain name hijacking because Complainant was aware of facts establishing its legitimate interests in the disputed domain name.
Respondent requests the Panel to find against Complainant, including a finding of reverse domain name hijacking. 6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
Respondent had notice of the Complaint and its counsel filed a Response. Although Respondent was granted an extension for filing its Response shorter than that it requested, the Panel considers that the Center acted within the reasonable scope of its discretion in establishing the duration of the extension. The Panel finds that Respondent had adequate notice of the proceedings and a reasonable opportunity to respond.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) respondent's domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondent's domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief. A. Identical or Confusingly Similar
Complainant has provided evidence of ownership of trademark and service mark registrations for the mark SBB at the Swiss Trademark Office. Complainant has provided evidence of extensive and long-standing use of that mark in commerce in Switzerland, where the Panel accepts that the SBB mark is well-known. Complainant has provided evidence of registration of the SBB mark through the Madrid System with effect in Austria, Benelux, Germany, France, Italy and Liechtenstein. The Panel determines that Complainant has rights in the SBB mark.
The disputed domain name is identical to Complainant's mark within the meaning of the Policy. B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c)).
The Panel finds that Respondent has presented substantial evidence of its establishment of rights and legitimate interests in the disputed domain name based upon its formation of a corporate enterprise (Small Black Box, Ltd.), a substantially developed business plan to provide goods and services under the term “SBB” further to which significant investment was made, and registration of the term “SBB” as a Community Trade Mark (CTM) in 2001. The Panel is satisfied that Respondent has been commonly known by the disputed domain name, and has acquired trademark and service mark rights.6 As Respondent has pointed out, Complainant would appear to be aware of these facts from two Austrian court decisions furnished by Complainant that describe Respondent's activities through 2002 in considerable detail. In any event, in the circumstances the Panel is satisfied that Respondent has succeeded on the present record in establishing a right or legitimate interest in the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy.
In the Panel's view, Complainant's only potentially plausible argument for establishing lack of rights or legitimate interests on the part of Respondent is that the formal identity of the registrant of the disputed domain name was changed in March 2008 from Small Black Box, Ltd. to Gerrie Villon. Complainant's theory is that when the formal identity of the registrant changed all rights and legitimate interests in the disputed domain name that might have accrued on behalf of the transferor were extinguished, and that Respondent should now be treated as a “disinterested” registrant of the disputed domain name seeking to take unfair advantage of Complainant.7
Here, this Panel is satisfied that Respondent is the individual who preponderantly owns and controls V-On, Ltd., the transferor of the disputed domain name to Small Black Box, Ltd., and he is the individual who preponderantly owned and controlled Small Black Box, Ltd. (which transferred the disputed domain name to him). The fact that Respondent controlled the transferor and transferee of the disputed domain name in each instance is evident from the Austrian court decisions furnished by Complainant. It is evident that Complainant knew of this common control relationship when it initiated this dispute.
In this Panel's view, the transfer of a domain name or trademark between commonly-controlled persons does not act of itself to extinguish rights and legitimate interests that may have accrued in that domain name or trademark. Business enterprises commonly assign and transfer trademarks among commonly controlled entities for a variety of reasons. The assignees and transferees of those marks do not generally abandon prior rights and interests that have accrued in those marks. In the Panel's view, Complainant has presented no compelling legal grounds in the present case for distinguishing the treatment of assignment or transfer of domain names from the treatment typically accorded trademarks. In the absence of some exceptional circumstance, there is no reason to conclude that transfers of domain names between commonly-controlled entities extinguishes pre-existing rights or legitimate interests in those domain names.
The Panel is persuaded that on the record in these proceedings Respondent is the successor in interest to the rights and legitimate interests of Small Black Box, Ltd. and V-On, Ltd. in the disputed domain name. There is continuity and identity of ownership among these parties. From the Panel's perspective, each have or had rights and a legitimate interest in the term or mark SBB, and rights and a legitimate interest in the disputed domain name.
Accordingly, the Panel finds that Complainant has failed in these Policy proceedings to establish that Respondent has no rights or legitimate interests in the disputed domain name, and for that reason it is unnecessary for the Panel to address the issue of bad faith registration and use.
The Panel notes that the Policy is limited in its subject matter scope. It does not address trademark infringement, as such, but rather abusive domain name registration and use. A registrant may establish rights or legitimate interests in a domain name based on use of the domain name (or mark) in one country or region, yet use that domain name in a way that infringes a third-party trademark in another country or region. Ordinary claims of trademark infringement are a matter for the courts. C. Reverse Domain Name Hijacking
Paragraph 1 of the Rules defines Reverse Domain Name Hijacking as follows:
Reverse Domain Name Hijacking means using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.
Paragraph 15(e) of the Rules provides:
If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Respondent has argued that Complainant filed a frivolous Complaint representing a blatant attempt at Reverse Domain Name Hijacking. Respondent has argued that Complainant was not concerned about passing off, but rather acquiring the disputed domain name.
Complainant by its own account was aware of Respondent's capacities in connection with registration and transfer of the disputed domain name, the existence of a trademark registration at OHIM, and the existence-in-fact of a substantial (if failed) business venture under the disputed domain name. These facts might reasonably have dissuaded Complainant from initiating this proceeding. However, Complainant's cause of action was not so far from legal plausibility as to be considered abusive. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Frederick M. Abbott
Sole Panelist
Dated: January 11, 2010
Full & Egal Universal Law Academy