Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

The Complainant is Spreadsheet Link Limited, a company registered in England and Wales, company number 2516088, whose registered office is c/- Gorrie Whitson, 17 New Burlington Place, Regent Street, London W1X 2JP. U.K.

The Respondent is an individual by the name of Richard Weston whose address is 14 Cavendish Close, Wendover, HP22 6LZ, U.K.

The domain names, the subject of this dispute, are:

"derivity.com"

"derivity.net"

"derivity.org"

They were first registered on June 26, 1999.

The registrar of the domain names is Network Solutions Inc. of Hendon, Virginia, USA ("the Registrar").

A complaint pursuant to the Uniform Domain Name Dispute Resolution Policy ("the policy") and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") both of which were implemented by ICANN on October 24, 1999, was received by WIPO in electronic format on October 6, 2000, and in hardcopy on August 28, 2000. Payment in the required amount to the Center has been made by the Complainant.

On October 13, 2000, a request for registrar verification was sent to the Registrar requesting confirmation that it had received a copy of the complaint from the Complainant, that the domain name was currently registered with it and that the policy was in effect, and requesting full details of the holder of the domain name and advice as to the current status of the domain name.

On October 13, 2000, WIPO received a verification response from the Registrar.

On October 16, 2000, WIPO received from the Complainant a query regarding mutual jurisdiction for the adjudication of disputes concerning domain names.

On October 17, 2000, WIPO responded to the Complainant regarding mutual jurisdiction. WIPO also received communication from the Respondent about his contact details.

On October 25, 2000, there was notification of the complaint and commencement of the administration proceeding.

On November 20, 2000, WIPO notified the Respondent that he had failed to comply with the deadline indicated in the notification of complaint by not filing a submission in response.

On December 5, 2000, a notification of appointment of administrative panel and projected decision date ("the appointment notification") was sent to the Complainant and the Respondent. In accordance with the Complainant’s request, the appointment notification informed the parties that the administrative panel would be comprised of a single panelist, Mr. Clive Elliott, and advised that the decision should be forwarded to WIPO by December 21, 2000.

On December 20, 2000, the Panel noted that there was no clear evidence that the Respondent had received service of the complaint. Accordingly, a further and additional effort was made to effect service by WIPO and the deadline for a decision was extended.

On January 22, 2001 there was still no response from the Respondent and the decision was made.

The Complainant alleges the following:

The Complainant is the owner of a registered Community trade mark (word mark) "DERIVITY", registered number 977074 (filing date 5 November 1998) covering goods and services including computers, computer memories, computer programs, floppy discs, hard discs, CD-Roms, computer software; computer based training, programming services, leasing rental and hire of computer hardware, databases, on-line databases and computer programming, on-line access to and updating of databases and reference materials, writing, design and development of computer software and programs, all for use in the financial markets.

The three domain names "derivity.com", "derivity.net" and derivity.org"

are identical to the trademark in which the Complainant has rights.

To the date of the complaint, there were no web pages published at the addresses of the three domain names, and no evidence of the Respondent’s use of, or demonstrable preparations to use any of the three domain names in connection with a bona fide offering of goods or services.

It is said that this indicates that the Respondent has no legitimate interest in respect of any of the three domain names.

As no response has been filed, little is known about the Respondent or his activities.

The Complainant makes a number of assertions. It is asserted that the Respondent contacted the Complainant seeking to sell the domain names for a substantial profit. On July 27, 2000, the Respondent contacted the Complainant by email informing the Complainant that he had decided to put up for auction, among others, the three domain names that are the subject of this complaint. The Respondent informed the Complainant that he thought it courteous to give the Complainant the first refusal to purchase the domain names, giving the Complainant four days to make an offer. A copy of the e-mail was annexed to the complaint.

It is said that on August 2, 2000, the Respondent again contacted the Complainant by email informing the Complainant that the domains would go live in the next week, registered on all the major search engines. He also stated that he would offer details on a range of competitor’s products (specifically a range of FX and Derivative calculators) which compete directly with the Complainant’s products, and he specifically referred to a competitor (TheBeast.com) to which he stated he intended putting a timed link, or maybe a link of a pornographic web site.

The Complainant asserts this indicates that the Respondent registered the domain names in bad faith solely or primarily for the purpose of selling the domain name registrations of the Complainant for valuable consideration, in excess of out of pocket costs directly related to the domain names.

These assertions are not disputed, even thought he Respondent is on notice of them.

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

(i) The domain names are identical or confusingly similar to the trade mark; and

(ii) The Respondent has no right or legitimate interest in respect of the domain names; and

(iii) The domain names have been registered and are being used in bad faith.

Paragraph 4(b) of the Policy sets out four illustrative circumstances that, if proved, constitute evidence of bad faith as required by paragraph 4(a)(iii) referred to above.

Paragraph 4(c) of the Policy sets out three illustrative circumstances that, if proved, constitute evidence of a right or legitimate interest as described in paragraph 4(a)(ii) referred to above.

The domain names "derivity.com", "derivity.net" and derivity.org" are, but for the Tld component, clearly identical to the Complainant’s "derivity" trade mark. They are also, prima facie, confusingly similar if used in a related field of commercial activity.

On the basis of the evidence filed and assertions made, the Respondent is not a licensee of the Complainant, nor does he appear to be otherwise authorized to use the Complainant’s DERIVITY mark. The Complainant asserts the Respondent is intending to mislead and divert customers of the Complainant to competitors and to tarnish the Complainant’s trademark and the Complainant’s reputation by these activities. There seems to be, on the record as it stands, a basis for this concern.

In addition, the Respondent’s lack of any legitimate interest in the domain names can be inferred to some extent from the correspondence between the Respondent and the Complainant, particularly in the absence of an adequate explanation from the Respondent.

On the face of it, by registering and seeking to sell the domain names to the Complainant, the Respondent is, it seems, using the domain names in an attempt to profit, for commercial gain, by the registration of the domain names.

Several administrative panel decisions have ruled that the practice of registering domain names of well-known third parties is evidence of bad faith registration. In the absence of any attempt by the Respondent to explain the circumstances of the registration and any possible legitimate basis for his activities, it seems appropriate to draw the appropriate inferences from the facts, as presented to the Panel.

Finally, as far as the Panelist is aware, the Respondent has at no time had a legitimate offering of goods or services posted on its web pages at "derivity.com", "derivity.net" or "derivity.org".

Accordingly, no material mitigating factors are known to exist. While the picture may be incomplete, the Panelist is obliged to form a view as best he can, on the record as it stands.

In view of the above, the domain names should be transferred to the Complainant.

Clive L. Elliott
Sole Panelist