Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

1. The Parties

Complainant is PADMA AG, Wiesenstraße 5, CH-8603 Schwerzenbach, Switzerland. Respondent is Padma.com, 222, Sutter, Suite 601, San Francisco, CA 94108, USA.

2. Domain Name and Registrar

The Domain Name at issue is "padma.com"; hereinafter referred to as the "Domain Name". The registrar is Network Solutions, Inc.

3. Procedural History

The WIPO Arbitration and Mediation Center (the Center) received PADMA AG’s complaint on May 17, 2000. An Acknowledgement of Receipt of Complaint was sent by the Center to the Complainant, dated May 22, 2000.

On May 22, 2000 a Request for Registrar Verification was transmitted to the Registrar, Network Solutions, Inc. requesting inter alia to confirm that the Uniform Domain Name Dispute Resolution Policy applies to the Domain Name. On May 30, 2000, Network Solutions, Inc. transmitted via e-mail to the Center, Network Solutions’ Verification Response, confirming that the Registrant is padma.com and that Network Solutions’ 4.0 Service Agreement is in effect. Paragraph 8 of this Service Agreement incorporates the Policy by reference.

A Formal Requirements Compliance Check was completed by the Center on May 31, 2000. The Center verified that the Complaint meets the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules).

On May 31, 2000 a Notification of Complaint and Commencement of Administrative Proceeding was transmitted to the Respondent. In this notification the Center advised that the Response was due by June 19, 2000. This communication had been sent to the Respondent by means of post/courier (with enclosures), facsimile (complaint without attachments) and e-mail (complaint without attachments).

On June 21, 2000 having received no Response from the Respondent, the Center issued to both parties a Notification of Respondent Default. This Notification has been sent to the Respondent by the same means of communications as mentioned above. No reply by Respondent to the Notification of Respondent Default was received.

On June 23, in view of the Complainant’s designation of a single panelist, the Center invited Mr. Reinhard Schanda to serve as a Panelist and transmitted to him the Request for Declaration of Impartiality and Independence and a Statement of Acceptance.

Having received Mr. Schanda’s Declaration of Impartiality and Independence and his Statement of Acceptance on July 7, 2000, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Schanda was formally appointed as the Sole Panelist.

The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Policy, the Rules and the Supplemental Rules.

Having reviewed the communication records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under Paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore according to Paragraph 5(e) and 14(a) of the Rules, the Administrative Panel shall issue its Decision based on the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of any Response from Respondent.

4. Factual Background

The Complainant is owner of the following trademark registrations (see Annex 27 to the Complaint):

- Swiss trademark no. 245050 (word-device-mark including the term PADMA)

- Swiss trademark no. 447362 (word-mark "PADMA")

- Swiss trademark no. 380717 (word-device-mark including the term PADMA)

- US trademark no. 972,194 (word-device-mark including the term PADMA)

- US trademark no. 2,102,923 (wordmark "PADMA")

- International trademark no. R 368 501 (word-device-mark including the term PADMA with protection in Germany, Austria, BENELUX, France, Italy, Liechtenstein)

- International trademark no. 692 727 (wordmark "PADMA" with protection in various countries)

Complainant has been using its trademarks in connection with its products for several years, has been continuously advertising in the media and appeared in several monthly papers (see Annex 28 attached to the Complaint).

The Respondent is not a licencee of Complainant, nor is he otherwise authorised to use the Complainant’s mark.

By e-mail of January 22, 1999 Mr. Massimo Fuchs, acting on behalf of Respondent, offered the Domain Name to Claimant for sale (see Annex 8 to Complaint).

The Domain Name does not resolve to a website or other online presence.

5. Parties Contentions

A. Complainant

Complainant contends that Respondent has registered the Domain Name which is identical to Complainant’s PADMA mark, that Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name has been registered and is being used in bad faith. Consequently, Complainant requires the transfer of the Domain Name registration to the Complainant.

B. Respondent

Respondent has not contested the allegations of the Complaint and is in default.

6. Discussions and Findings

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

1. that the Domain Name registered by the Respondent is identical to the trademark in which the Complainant has rights; and

2. that the Respondent has no legitimate interests in respect of the Domain Name; and

3. that the Domain Name has been registered and used in bad faith.

A. Identity or Similarity of Trademark and Domain Name

The relevant part of the Domain Name is PADMA. This second level Domain Name is identical to the various word marks of the Complainant PADMA. It is therefore not necessary to determine whether the various word-device-marks of the Complainant (which include the word PADMA) are also to be regarded identical or similar to the Domain Name.

B. Rights or Legitimated Interests of Respondent in Domain Name

According to the principal negativa non sunt propanda it is sufficient for the Complainant to establish a prima facie evidence that the Respondent lacks a legitimate interest in the Domain Name (see also Eauto, Inc. v. Available-Domain-Names.com, d/b/a Intellectual-Assets.com, Inc., case no. D 2000-0120, para 6.1.).

From the evidence provided by Complainant with the Complaint nothing seems to indicate that the Respondent has any legitimate interests in respect of the Domain Name. It would have been the task of the Respondent to show such legitimate interests in the Domain Name within a Response to the Complaint. Based on the Complaint the Administrative Panel is convinced that the Respondent has no legitimate interest in respect of the Domain Name.

C. Registration and Use in Bad Faith

Complainant gave evidence (Annex 12 to the Complaint) that the person acting on behalf of Respondent, Mr. Massimo Fuchs, had been in business contact with the Complainant at least since February 6, 1994 and had been aware of the Complainant’s using of the term PADMA for their products.

Complainant also provided a hand written notice by Mr. Fuchs addressed to Complainant of April 19, 1997 stating that Mr. Fuchs had registered the Domain Name "to keep the Domain Name in friendly hands" as evidence. This is an indication that at the time of the registration of the Domain Name Mr. Fuchs, acting on behalf of the Respondent had been aware of the fact that the term PADMA is a designation used by the Complainant for its products (Annex 13 to the Complaint).

Claimant also provided evidence that Mr. Fuchs, acting on behalf of the Respondent, had offered the sale of the Domain Name by e-mail of January 22, 1999 (Annex 15 to the Complaint).

According to Paragraph 4(b) of the Policy for the purpose of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, shall be evidence of the registration and use of a Domain Name in bad faith:

(i) Circumstances indicating that Respondent has registered or has 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 trademark, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the Domain Name; or

(ii) Respondent has registered the Domain Name in order to prevent the owner of the trademark from reflecting the mark in a corresponding Domain Name, provided that Respondent has engaged in a pattern of such conduct;

[...]

From the evidence provided by the Complainant with its Complaint prima facie it seems likely that Respondent has registered the Domain Name for the purpose of transferring the Domain Name to the Complainant for valuable consideration and/or to prevent the Complainant from reflecting the mark in a corresponding Domain Name.

It would have been the duty of the Respondent to show that the registration of the Domain Name was for other purposes than those mentioned above.

Based on the information given in the Complaint and the evidence provided attached to the Complaint, the Administrative Panel therefore is convinced that the Domain Name has been registered and is being used by the Respondent in bad faith as provided by Paragraph 4(a)(iii) of the Policy.

7. Decision

In light of the foregoing, the Administrative Panel decides that the Domain Name registered by Respondent is identical to Complainant's PADMA mark, that Respondent has no rights or legitimate interests in respect of the Domain Name, and that Respondent’s Domain Name has been registered and is being used in bad faith.

Accordingly, pursuant to Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, the Administrative Panel requires that the registration of the Domain Name "padma.com " be transferred to Complainant.

Dr. Reinhard Schanda
Sole Panelist

Date: July 19, 2000