WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Streamtel Corporation SRL v. Ton Kamminga Case No. D2010-0423 1. The Parties
The Complainant is Streamtel Corporation SRL of Varese, Italy, represented internally.
The Respondent is Ton Kamminga of De Kwakel, Netherlands. 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 18, 2010. On March 19, 2010, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the disputed domain name. On March 22, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 30, 2010. In accordance with paragraph 5(a) of the Rules, the due date for Response was April 19, 2010. On March 30, 2009 and April 12, 2010, email communications were filed with the Center in the name of the Respondent's company, TonKa Video BV ~ Space Lynx. The Center notified the Respondent's default on April 20, 2010.
The Center appointed Brigitte Joppich as the sole panelist in this matter on April 30, 2010. 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 paragraph 7 of the Rules.
On May 3, 2010, the Panel issued Procedural Order No. 1 to the parties, requesting the Complainant within five days as of the date of the Order to provide evidence that it owns trademark rights in the mark STREAMTEL under paragraph 4(a)(i) of the Policy, noting also that Annex 2 to the Complaint merely contains an excerpt from a letter in Italian language that seems to indicate that a certain Luca Zanetti owns a trademark STREAMTEL. The Complainant filed a reply to Procedural Order No. 1 on May 8, 2010, and the Respondent submitted a communication in relation thereto on May 11, 2010. 4. Factual Background
The Complainant is a high tech company providing digital television transmission and reception solutions as well as related services. A certain Luca Zanetti, General Manager of the Complainant, is the registered owner of the Italian trademark No. 905561 STREAMTEL & design, registered in classes 9, 35, 38 and 42 (hereinafter referred to as the “STREAMTEL-Mark”).
The disputed domain name was registered on September 12, 2009 and has been used in connection with a website inter alia warning Internet users not to conduct any business with the Complainant stating that
- the Complainant's business is “all FAKE”,
- the Complainant does not deliver any products ordered and paid by customers, and
- the Respondent lost EUR 6,200 while doing business with the Complainant.
The website includes the Complainant's STREAMTEL-logo. 5. Parties' Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The domain name and is identical or confusingly similar to the STREAMTEL-Mark as the domain name and website are clearly referring to the Complainant's registered name and logo.
(2) The Respondent has no rights to or legitimate interests in the disputed domain name, as the STREAMTEL-Mark is used worldwide only by the Complainant.
(3) The Respondent is supposed to use the disputed domain name to cause damage to the Complainant's STREAMTEL-Mark, to use off-shore hosting and DNS to avoid legal proceedings, to cooperate with a former employee of the Complainant, who is now vice-president of a competitor. Furthermore, the Complainant states that the content at the website at the disputed domain name is false and that the disputed domain name has been registered illegally and unfairly with a view to competition on the Internet and Google. B. Respondent
The Respondent did not reply to the Complainant's contentions by filing a formal response.
However, documents and correspondence between the Complainant and the Respondent's lawyer together with an explanatory note were filed with the Center, evidencing that the Respondent acquired allegedly deficient products from the Complainant at a price of EUR 6,200. The Respondent tried to get the purchase price back, plus compensation for damages from the Complainant in the total amount of EUR 10,000. In one of his letters, the Respondent's lawyer states that the Respondent registered and used the disputed domain name because the Complainant had not reimbursed the Respondent for ten months.
In his communication dated April 12, 2010, the Respondent states that he asked the Complainant for compensation in the amount of EUR 10,000 in November 2009 (EUR 6,200 for satellite receivers, which did not meet their specifications, EUR 1,300 for lawyer's costs, and EUR 2,500 as compensation “for all the frustration”), and received compensation of EUR 8,050 from the Complainant (EUR 6,200 for the satellite receivers and EUR 1,850 for lawyer's costs). The Respondent further states that there are still EUR 2,500 missing and that the compensation from the Complainant was not enough to cover all the costs, and to compensate for the frustration, sleepless nights and work the Respondent had to put into the website. Therefore, the Respondent decided to put the domain name up for sale, using it “in a war against this criminal organization and Mr. Zanetti in person”.
The Respondent finally contends that the name “Streamtel” is not the exclusive property of Mr. Zanetti, as a Swedish company with the same name exists. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to the complainant's trademark; 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. Identical or Confusingly Similar
The disputed domain name fully incorporates Luca Zanetti's STREAMTEL-Mark. Luca Zanetti is the General Manager of the Complainant, and in his reply to Procedural Order No. 1 (that he filed on behalf of the Complainant) he stated that the Complainant owns trademark rights in the mark STREAMTEL. The Panel considers this statement as evidence of an exclusive trademark license conferring trademark rights under the UDRP upon the Complainant (cf. WIPO Overview of WIPO Panel Views on Selected UDRP Questions).
The mere addition of the common or generic words “is” and “fraud” following the Complainant's trademark does not eliminate the similarity between the STREAMTEL-Mark and the domain name. Although a minority of panels argue that a domain name consisting of a trademark and a negative term is not confusingly similar because Internet users are not likely to associate the trademark holder with a domain name consisting of the trademark and a negative term, the majority of panels accept that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of common or generic words, even if they have a pejorative meaning (cf. Koninklijke Philips Electronics N.V v. Selling Domains Best,WIPO Case No. D2002-1041 - ; Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662 - ; A & F Trademark, Inc. and Abercrombie & Fitch Stores, Inc. v. Justin Jorgensen,WIPO Case No. D2001-0900 - ; Berlitz Investment Corp. v. Stefan Tinculescu,WIPO Case No. D2003-0465 - ; Wachovia Corporation v. Alton Flanders,WIPO Case No. D2003-0596 - et al; Direct Line Group Limited v. Purge I.T. Limited, Purge I.T.,WIPO Case No. D2000-0583 – ). This applies in particular as both parties are located outside English speaking countries, where people often are not fluent in English and may not recognize the negative connotation of the word attached to the trademark.
Furthermore, it is well established that the specific top level domain name generally is not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant's trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374).
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant's STREAMTEL-Mark and that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the respondent of the dispute, the use by the respondent 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) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among panelists that a complainant has to make only a prima facie case to fulfil the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of proving that the respondent has rights or legitimate interests in the disputed domain name will then shift to the respondent.
The Complainant has asserted that the Respondent, to the Complainant's knowledge, has no rights or legitimate interests in the disputed domain name as the STREAMTEL-Mark is used solely by the Complainant and by nobody else worldwide.
The Respondent has not submitted a forward reply and thus did not deny these assertions in any way and therefore failed to prove any rights or legitimate interests in the disputed domain name.
However, the Respondent used the disputed domain name in connection with a website inter alia warning Internet users not to conduct any business with the Complainant, stating that the Complainant's business is “all FAKE”, that the Complainant does not deliver products ordered and paid for by customers, and that the Respondent lost € 6,200 while doing business with the Complainant. These allegations might constitute a legitimate interest in the disputed domain name based on freedom of speech or fair use. Although the criteria determining whether a claim of freedom of speech justifies the use of a third party's trademark in a domain name have not been definitely established, this Panel finds that the Respondent's right to express his views does not extend to registering a domain name that is confusingly similar to the owner's registered trademark or conveys an association with such mark (cf. WIPO Overview of WIPO Panel Views on Selected UDRP Questions; Skattedirektoratet v. Eivind Nag,WIPO Case No. D2000-1314; Myer Stores Limited v. Mr. David John Singh,WIPO Case No. D2001-0763; Triodos Bank NV v. Ashley Dobbs,WIPO Case No. D2002-0776; The Royal Bank of Scotland Group plc, National Westminster Bank plc A/K/A NatWest Bank v. Personal and Pedro Lopez,WIPO Case No. D2003-0166; Kirkland & Ellis LLP v. DefaultD, American Distribution Systems, Inc.,WIPO Case No. D2004-0136). As discussed further below, the Panel also finds that the motive for registering the disputed domain name appears to have been other than for purposes of free speech.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the domain name under paragraphs 4(a)(ii) and 4(c) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of such paragraph 4(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration 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 the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a patteruct; 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 circumstances mentioned in paragraph 4(b) of the Policy are not exclusive. The Complainant must show that the domain name was registered in bad faith and is being used in bad faith (cf. Telstra Corporation Limited. v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Telstra Corporation Limited v. Adult Web Development and Telstraexposed,WIPO Case No. D2002-0952; Prada S.A. v. Mr. Chuan Sheng Wang,WIPO Case No. D2003-0758).
With regard to the Respondent's bad faith registration, the Respondent himself provided evidence that he was doing business with the Complainant before registering the disputed domain name and therefore registered the disputed domain name with full knowledge of the Complainant's rights. The Panel is satisfied that in this specific circumstances of this case the Respondent registered the disputed domain name in bad faith under paragraph 4(a)(iii) of the Policy.
With regard to bad faith use, the Complainant alleges inter alia that the Respondent has been using the disputed domain name damage to the Complainant's STREAMTEL-Mark, that the Respondent is using off-shore hosting and DNS to avoid legal proceedings, that he is cooperating with a former employee of the Complainant, who is now vice-president of a competitor, that the content at the website at disputed domain name is false, and that the disputed domain name was registered illegally and unfairly. The Respondent states that he received only insufficient compensation from the Complainant. The Panel finds that the Respondent has been acting in bad faith: he acquired the disputed domain name after his business relationship with the Complainant went wrong, primarily to browbeat the Complainant and to force him to pay compensation for damages allegedly suffered. Even if the Respondent did not register the domain name to sell it to the Complainant in the first place, his motives were to pressurize the Complainant, which is to be regarded as bad faith use under the Policy.
Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant satisfied the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
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.
Brigitte Joppich
Sole Panelist
Dated: May 13, 2010
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