|Entscheider||Abbott, Frederick M., Barker, Sir Ian (Presiding), Turner, Jonathan|
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
186K.Net, Co v. Christopher Rinaldi
Case No. D2002-0027
1. The Parties
The Complainant is 186K.Net, Co. a Florida corporation with its principal place of business at Boca, Raton, Florida, United States of America. The Complainant is represented by Michael I. Santucci, P.A. of Fort Lauderdale, Florida, United States of America.
The Respondent is Mr. Christopher Rinaldi of London, United Kingdom. He is represented by Masons, Solicitors, London, United Kingdom.
2. The Domain Name and Registrar
The domain name at issue is <186k.org>. The domain name is registered with Tucows, Inc. of Toronto, Canada ("the Registrar").
3. Procedural History
The Complaint submitted by 186K.Net, Co. was received on January 14, 2002 (hardcopy), and February 6, 2002, (email) by the WIPO Arbitration and Mediation Center ("the Center").
On January 30, 2002, the Registrar in reply to the Centers request for Registrar verification dated January 29, 2002, advised as follows:
- A copy of the Complaint had been sent to it by the Complainant as required by WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"), paragraph 4(b).
- The domain name at issue is registered with the Registrar.
- Mr. Rinaldi of Solihull, West Midlands, United Kingdom, is the registrant of the domain name.
- The Respondents full contact details, (i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrars WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact for the domain name) were provided.
- The Uniform Domain Name Dispute Resolution Policy ("the Policy") was in effect.
The Registrar has incorporated the Policy in its registration agreements.
The advice from the Registrar that the domain name in question is on hold status indicates the Respondent has not requested that the domain name at issue be deleted from the domain name database. The Respondent has not sought to terminate the agreement with the Registrar. Accordingly, the Respondent is bound by the provisions of the Registrars dispute resolution policy, i.e., the Policy. The Respondent has not challenged the jurisdiction of the Panel.
Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"), and after having received Complainants response to complaint deficiencies, the Center on February 11, 2002, transmitted by courier and by email a notification of the Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Complaint was also emailed to the Registrar and ICANN.
The Complainant elected to have its Complaint resolved by a three-person panel. It has duly paid the amount required of it to the Center.
The Respondent was advised that a Response to the Complaint was required within 20 calendar days. The Respondent was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email. The Respondent filed a Response by email on March 22, 2002, and by hard copy on March 27, 2002. The Respondent had previously sought and been granted an extension of time for filing a Response.
The Center invited the Honourable Sir Ian Barker QC of Auckland, New Zealand to serve as Presiding Panelist in the case. It also invited Mr. Jonathan Turner of London, United Kingdom and Professor Frederick M. Abbott of Tallahassee, FL, United States of America to be panelists. It transmitted to all Panelists a Statement of Acceptance and requested a Declaration of Impartiality and Independence.
All Panelists duly advised acceptance and forwarded to the Center an executed declaration of impartiality and independence. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.
On April 17, 2002, the Center forwarded to the Panel by courier the relevant submissions and the record. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel was originally required to forward its decision by May 1, 2002.
The Panel has independently determined and agrees with the assessment of the Center that the Complaint meets the formal requirements of the Rules and the Supplemental Rules.
On April 25, 2002, the Respondents solicitor informed the Center that the parties were close to agreement. In the light of this information the Panel ordered the parties to inform the Center on or before May 3, 2002, whether an agreement had been reached. Failing which the Panel would proceed to a decision. By emails of May 2, 2002, both parties requested suspension of the proceeding, following which the Center suspended the proceedings until July 2, 2002. By email of July 3, 2002, the Complainants attorney informed the Center that the Complainant wished the proceedings to continue. Accordingly, the Panel revised the due date for the decision to July 10, 2002.
4. Factual Background
The Claimant is the owner of the United States registered service mark for "186K", registration number 2452395 registered February 27, 2001. The mark is in Class 42 for hosting the website of others on a computer server for a global computer network and the design of custom computer software for others. It claimed in its application to the US Trademark Office to have used the mark 186K from August 1998. It has filed an additional application in respect of the same mark for numerous further other uses in advertising and information technology in electronics.
The Respondent has been at all material times a senior employee in a group of companies now ultimately owned by the Lattice Group Plc (Lattice). Until October 2000, he was an employee of BG Energy Holdings Limited but in June 2000 he had been seconded by that company to FPL Telecom Limited. In October 2000 his contract of employment was transferred to FPL Telecom Limited ("FPL"). FPL on November 7, 2000, changed its name to 186k Limited (186kL).
Respondent was one of the employees of that company who formulated the development and marketing of the 186kL brand and procured the registration of the domain name <186k.org> on behalf of FPL (now 186kL).
186kL is the company in the Lattice Group developing a national fibre optic network in Great Britain and providing broadband network services to commercial operations such as carriers, ISPs and ASTs. At present the network runs to about 2000 kilometers and connects about 20 major centers across Great Britain. Substantial funds have been committed to this business. The total invested to date is some 450m. A branding consultancy devised the 186K brand as being reflective of the fibre optic network which transmits data at the speed of light ie, 186,000 miles per second. 186kL is not engaged in the sphere of business covered by the Complainants existing trademark registration.
Neither the Respondent nor FPL, 186kL nor any other Lattice subsidiary or affiliate is engaged in any commercial activities in the United States. Complainant acquired the domain names <186k.com> and <186k.net> in August 1998. The Respondent (on behalf of what is now 186kL) acquired the <186k.org> domain in July 2000. The Respondent and his employers do not seek to acquire the Complainants names which they acknowledge were legitimately acquired by the Complainant in 1998.
Lattice has established a separate company, Lattice Intellectual Property Limited, (LIPL) to hold its existing and future intellectual property rights. On October 16, 2000, LIPL applied for a UK trademark for "186k". The Complainant filed a Notice of Opposition on November 8, 2001, and the Respondent a counter-statement on February 12, 2002. The application now awaits determination. The Complainant did not mention these trademark proceedings in its Complaint as it is required to under the Policy. LIPL has applied to the UK Patent Office for a number of trademarks for the 186K brand.
The Complainant has filed an action in the US District Court in the Southern District of Florida against Lattice, 186kL and a company with an address in the British Virgin Islands called Fastnet Caloosahatchee Communications Limited ("FCC") alleging, inter alia, infringement of the Complainants registered service mark, false designation of origin, unfair competition and bad faith domain name registration. This proceeding is defended and has not been resolved.
The Complainant admits that the domain name is not presently in use by 186kL pending resolution of the suits. Respondent sees not much point developing <186k.org> at present for that reason.
5. Request for Stay or Dismissal of Proceedings
The Respondent submits that this is a good faith dispute between competing rightsholders and that the Complainant would be bound to fail under paragraph 4(a)(ii) of the Policy. It submits that 186K Limiteds rights will be confirmed in the trademark opposition proceedings which were not disclosed by the Complainant but which were initiated prior to the administrative proceeding.
On the basis of the decision, Readygo Inc. v Michael Lerner Productions, WIPO Case No. D2000-0298, Respondent submits that there ought to be a suspension of the administrative proceedings. In the Readygo case, the Respondents trademark rights were in issue in proceedings before the Trademark Trial and Appeal Board in the US a similar body to that which will rule on the application for a trademark by 186kL in the United Kingdom. The Respondent also submits that the Complainant chose to commence the suit in Florida, prior to commencing these proceedings, even when that suit includes the same subject matter as the present WIPO proceeding in that it there alleges that the disputed domain name was registered in bad faith.
There are a number of WIPO decisions on whether a stay should be ordered in these circumstances. The facts are different in almost all the cases and it is not easy to elicit any principle. Where the parties to the Court proceedings are not the same as those in the WIPO proceedings, there is usually no order for suspension or dismissal. For example, Telkom Austria AG v Stanley, WIPO Case No. D2002-0171. There, Respondent had initiated US Federal Court proceedings naming as sole defendant, the US Department of Commerce. The Respondent sought to have declared the ICANN and the UDRP procedure unconstitutional for a variety of reasons: in the course of his Court pleading he referred to Telekom Austrias challenge to his registered domain name <telekomaustria.com> and asserted that the UDRP was unconstitutional. It was clear that he had presumed knowledge of the brand of the large Austrian telecommunications company. He had not filed a Response but had relied on his Court proceeding as a defense to the UDRP proceedings.
In the present situation, the parties are similar, if one assumes that Mr Rinaldi is merely an agent for his employer. However, this Panel, as will be seen later in the decision, is clearly of the view that the Complaint cannot succeed. There is no reason for the Panel to avoid adjudicating this matter. If the Complainant succeeds in the United States, presumably the Courts there will have jurisdiction to require the Registrar to transfer the name.
6. Parties Contentions
The disputed domain name is identical to the Complainants registered service mark.
The domain name was registered in order to prevent the owner from reflecting the mark and corresponding domain name but it is unknown if the Respondent has engaged in a pattern of such conduct, or if he had registered it primarily for the purpose of selling or renting the domain name to a competitor of the Complainant. The Respondent registered or acquired the domain name primarily for disrupting the business of the Complainant and intends to use it to attempt to attract for financial gain internet users to the Respondents website thus creating a likelihood of confusion. The Respondent has no rights to the mark and has made no demonstrable preparation to use or use of the domain name and is not currently using it in connection with a bona fide provision of goods or services.
The Respondent has registered the domain name in bad faith since it was registered on July 28, 2000, long after the Complainant registered its mark. Passive use of the domain name is evidence of bad faith. Respondent should have been aware the Complainants mark prior to registering the domain name.
The name 186K, was suggested by a branding consultancy to be reflective of 186kLs fibre optic network which transmits data at the speed of light ie, 186,000 miles per second. 186kLs business is fundamentally different from the Complainants, both in terms of services offered and geographical location of customers. Neither the Respondent, 186kL nor any other Lattice subsidiary is engaged in any commercial activities in the United States utilizing the trademark 186K or the domain <186k.org>. It is a principle of trademark law that, where two commercial organizations acquire rights in the same mark, these rights may exist concurrently. There is no subordination of trademark rights as suggested by the Complainant.
The Respondent has rights and interests in the domain name in that he is an employee and agent of 186kL and will, if this administrative proceeding is unsuccessful, transfer the domain name to LIPL which will license the use of the domain name to 186kL.
LIPL has applied to the UK Trademark Office as mentioned earlier. Complainant will not succeed on its opposition there in that it has produced no evidence in the trademark proceedings nor has it demonstrated that it has used the 186K name in the United Kingdom or that it has supplied goods and services in the United Kingdom under that name. Further, the Respondent, has rights in the unregistered service mark of 186K, built up through a substantial investment and provision of services.
The Respondent did not register the domain name in bad faith but as the result of the recommendation of branding consultants. There are substantial difference in the business of the Complainant and of 186kL. The Complainants business is small in comparison and appears to trade only on the website: whereas, 186kL enters into high value commercial agreements not suitable for conclusion via a website. 186kL uses the <186.co.uk> site namely as a marketing and profile-raising vehicle.
The reason why the disputed domain name is not presently used is that there is pending litigation both in the UK and in Florida and there is no point in developing the website until that litigation has been decided.
7. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to:
"decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable".
The burden for the Complainant, under paragraph 4(a) of the Policy, is to show:
- that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
- that the Respondent has no rights or legitimate interests in respect of the domain name; and
- that the domain name has been registered in bad faith.
In the view of the Panel, the disputed domain name is identical to the Complainants mark.
With regard to the second criterion, the Panel considers that although the Complainant gave the Respondent no right, the Respondent as agent for Lattice does have legitimate rights or interests in respect of the domain name as 186kL has a substantial business which does not appear to conflict with that of the Complainant.
As to bad faith the following are contained in the Policy:
"For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainants mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."
It should be noted that the circumstances of bad faith are not limited to the above.
The Panel considers that it has not been proved that the Respondent knew of the Complainants mark at the date of registration. Whatever the evidence about continuing use in bad faith, the Complainants onus is to demonstrate by inference or otherwise bad faith at the time of registration. No such inference is possible in this case.
There is no evidence that the Complainants mark, whilst known in the United States, is well-known outside that country, particularly in the United Kingdom where the Respondent is resident. A similar view was reached by a 3-person panel in KCTS Television Inc. v Get-on-the-Web Limited, WIPO Case No. D2001-0154. There, the call sign of a television station operating in the North-Western United States (which call sign happened also to be a US-registered trademark) could not be presumed to have been known to a domain name registrant in England. (See also VZ Vermögens Zentrum SA v Anything.com, WIPO Case No. D2000-0527 to similar effect.)
The name 186kL was chosen after a branding consultant had recommended it. 186K refers to the speed of light, 186k miles per second. It was thought an appropriate name for the business being developed. There was no intention from which can be inferred that a small computer firm in the US was being targeted.
The Panel accordingly decides that the Complaint in respect of the domain name <186k.org> be denied.
Hon. Sir Ian Barker QC
Mr Jonathan Turner
Dated: July 10, 2002