The Complainant is Systemite AB of Gothenburg, Sweden, represented by Awapatent AB, Sweden.
The Respondent is SYSTEMITE Public Organization of Saint-Petersburg, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name is registered with Instantnames LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 4, 2010. On November 4, 2010, the Center transmitted by email to Instantnames LLC a request for registrar verification in connection with the disputed domain name. On November 11, 2010, Instantnames LLC transmitted by email to the Center its verification response disclosing 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 November 11, 2010, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 15, 2010.
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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 17, 2010. In accordance with paragraph 5(a) of the Rules, the due date for Response was December 7, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 9, 2010.
The Center appointed Brigitte Joppich as the sole panelist in this matter on December 14, 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. 4. Factual Background
The Complainant was established in 2000 and has been active in the field of providing open high performance platforms for the development of component-based computer systems. The Complainant’s net sales for the fiscal year 2008/2009 amounted to SEK 11,300,000. The Complainant is doing business in Scandinavia and in the European Union and is using and has marketed the word “systemite” continuously in these territories since 2000 to denominate its company and its services.
The disputed domain name was first registered on June 26, 2000 by the Complainant. In 2008, the disputed domain name was lost during a transfer to another registrar. The domain name was then re-registered on September 18, 2008 by the Respondent. It is currently used in connection with a domain parking website and is offered for sale through a public website. 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 Complainant states that the disputed domain name is identical to the word “systemite”, in which the Complainant has non-registered trademark rights in Sweden.
(2) The Respondent has no rights or legitimate interests in the disputed domain name as the Respondent does not own any right in the mark SYSTEMITE. The Complainant further contends that the Respondent does not use and has shown no intent to use the disputed domain name in the course of doing business, commercially or otherwise, but merely offered the disputed domain name for sale.
(3) The disputed domain name was registered and is being used in bad faith. The Complainant alleges that the disputed domain name is not used for commercial or any other purposes but is merely offered for sale, which shows that the disputed domain name has been registered solely for the purpose of selling it. The Complainant states that, upon request, it was asked to pay valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 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 trade mark; 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 Complainant does not own any registered trademark rights for “SYSTEMITE”.
However, it is consensus view that common law trade mark rights may be sufficient for the purposes of establishing rights under paragraph 4(a)(i) of the Policy (cf. WIPO Overview of WIPO Panel Views on Selected UDRP Questions; UITGERVERIJ CRUX v. W. FREDERIC ISLER,WIPO Case No. D2000-0575; Skattedirektoratet v. Eivind Nag,WIPO Case No. D2000-1314; Amsec Enterprises, L.C. v. Sharon McCall,WIPO Case No. D2001-0083; Australian Trade Commission v. Matthew Reader,WIPO Case No. D2002-0786; Imperial College v. Christophe Dessimoz,WIPO Case No. D2004-0322).
Given that SYSTEMITE is used as a company name and as a mark in commerce by the Complainant and by third parties referring to the Complainant, and that such rights have not been denied by the Respondent, the Panel is satisfied that the Complainant has established common law trade mark rights in the SYSTEMITE Mark, at least in the Sweden, for purposes of this proceeding.
The disputed domain name is identical to the SYSTEMITE Mark in which the Complainant has rights. It is well established that the specific top level domain name is generally 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 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 noncommercial 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 fulfill 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 substantiated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel has taken note that the Respondent’s apparent name (at least as given in the relevant WhoIs data for the disputed domain name) includes the term “systemite”, but no evidence has been provided by the Respondent to substantiate this.
The Respondent did not deny these assertions in any way.
Accordingly, the Panel finds in the circumstances that the Complainant has on balance 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 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 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.
Although unregistered or common law trademark rights may be sufficient for the purposes of establishing bad faith pursuant to paragraph 4(a)(iii) of the Policy (cf. MatchNet plc. v. MAC Trading,WIPO Case No. D2000-0205; British Broadcasting Corporation v. Jaime Renteria,WIPO Case No. D2000-0050), the Panel is, on the balance of evidence presented to it, not convinced that the disputed domain name was registered by the Respondent in bad faith in the present case for the following reasons:
The Complainant contends and provided evidence that it can rely on unregistered trademark rights in Sweden based on its use of the SYSTEMITE Mark as a company name and as a mark in commerce. Such rights predate the Respondent’s registration of the disputed domain name. However, while the Respondent is based in the Russian Federation, the Complainant has never carried out any business activities there; it is according to its own contentions doing business in Scandinavia and in the European Union only. The Complainant has not indicated either that it was known in the Russian Federation at any point of time for reasons other than doing business there. Thus, protection of the Complainant's SYSTEMITE Mark is at most limited to certain territories outside the Russian Federation, namely in Scandinavia and the European Union.
As a result, no evidence has been submitted to the Panel in support of the assumption that the public identifies the term SYSTEMITE with the Complainant in the Russian Federation, where the Respondent is domiciled. Nor has any other evidence been presented that would indicate that the Respondent was aware of the Complainant at the time of the registration of the disputed domain name or even before the Complainant asked the Respondent for a selling price with regard to the disputed domain name. Therefore, the Panel is not convinced that the Respondent registered the disputed domain name with the Complainant in mind. This finding is supported by the fact that SYSTEMITE, made up of the English term “system” and the common ending “ite”, is, while most probably not generic, on the weaker end of the spectrum of distinction, as third party use of SYSTEMITE on the Internet reveals.
The Panel acknowledges that the Respondent apparently obtained the disputed domain name only after long registration and use by the Complainant and that the Respondent (even if located in the Russian Federation) could possibly have identified the Complainant on the Internet from a simple Google search. As a result, the disputed domain name could have been obtained and offered for sale on an essentially opportunistic basis. Still, the Panel does not see this as a case of opportunistic bad faith, which previous panels relied on in cases where the domain name at issue was so obviously connected with the complainant and its products or services that already its very use by someone with no connection with the complainant clearly suggested a selection by the respondent with a deliberate intent to create an impression of an association with the complainant and thus opportunistic bad faith (cf. Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226; RapidShare AG, Christian Schmid v. Ali Private Company, Ali Kamran,WIPO Case No. D2010-0610; Société des Hôtels Méridien v. Korea Worldtravel,WIPO Case No. D2005-1215).
In any event, in these circumstances the Panel considers that the Complainant has not met the burden upon it of making out a case in relation to the third requirement of the Policy. This is so even though the Respondent failed to respond to the Complaint. All facts before the Panel considered, there is simply insufficient information before the Panel to allow it reasonably to conclude that the Complainant acted in bad faith.
Accordingly, the Panel concludes that the third requirement of the Policy has not been established. This Complaint must therefore fail. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Brigitte Joppich
Sole Panelist
Dated: December 28, 2010
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