Generic Top Level Domain Name (gTLD) Decisions

The Complainant is GSM MoU Association, a Swiss Association, of Route de Meyrin, Geneva, Switzerland, and is represented in this proceeding by Kate Szell, Lloyd Wise, Tregear & Co, Commonwealth House, 1-19 New Oxford Street, London WC1A 1LW, United Kingdom.

The Respondent is Jose Martinez of 2102 NW82 Ave, Miami, 33122, United States of America.

The domain name is <3gsm.biz> and the registrar with which the domain name is registered is Network Solutions, Inc of 505 Huntmar Park Drive, Hendon, Virginia 20170, United States of America.

3.1 The Complaint was filed and received by the WPO Arbitration and Mediation Center (the "Center") on April 26, 2002.

3.2. On May 6, 2002, the Center requested verification of the registration of the domain name and registrant details from the register (Network Solutions) and received this verification on May 9, 2002.

On May 21, 2002, the Center completed a check of whether the Complaint complied with the formal requirements of the Start-up Trademark Opposition Policy for .biz the STOP, (the "STOP") the Rules for Start-up Trademark Opposition Policy for .biz (the "STOP Rules"), adopted by NeuLevel Inc. and approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") ") on May 11, 2001, and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .biz (the "WIPO Supplemental STOP Rules").

3.3 On May 22, 2002, the Respondent was notified of the STOP Complaint and commencement of the Administrative Proceedings and was sent a copy of the Complaint and Compliance Cover Sheet. In accordance with the Rules, the date for the filing of a Response was set at June 11, 2002.

3.4 On May 29, 2002, an email communication was received from the Respondent stating that he was "not a lawyer" and "GSM" was a world standard made by the ETSU, which he had been asked to buy from Network Solutions.

3.5 On May 29, 2002, the Center replied to the Respondent’s email and advised him again of the date for lodging a Response in the proceeding.

3.6 On May 29, 2002, a further email was received by the Center from the Respondent denying bad faith or that he had asked for money for the domain name. In the same message, the Respondent also states that there was no US trade mark registration for "3gsm".

3.7 On May 30, 2002, the Center replied to the Respondent’s second email, drawing his attention to the requirements for the preparation of a response in the proper manner, and stating that his emails would otherwise be treated as his response in the proceeding.

3.8 The Respondent made no further email communication in reply to the Center’s email of May 30, 2002, and on June 12, 2002, the Center sent him a Notification of Respondent Default.

3.9 On June 24, 2002, after receiving the required Statement of Acceptance and Declaration of Impartiality from the proposed panelist, the Center notified the parties of the appointment of Staniforth Ricketson as the single member Administrative Panel in the proceeding. The date for transmission of the Panel’s decision to the Center was set at July 8, 2002, in accordance with paragraph 15 of the STOP Rules.

3.10 In accordance with paragraph 11 of the STOP Rules, the language of the proceedings is English (this being the language of the registration agreement).

3.11 After perusing all the materials filed in the proceeding and subject to one small caveat set out below, the Panel finds that the relevant requirements of the STOP, the STOP Rules and WIPO Supplemental STOP Rules have been complied with.

3.12 The caveat referred to in the proceeding paragraph concerns the Notification of Respondent Default that was sent by the Center on June 12, 2002. This stands somewhat at odds with the Center’s email of May 30, 2002, to the Respondent stating that, in the absence of a Response being filed in the "proper manner", the Respondent’s emails would be treated as his response in the proceeding. It is also relevant to note here that there is an earlier email from the Respondent dated May 7, 2002, and received before the formal notification of the Complaint that is included in the case file transmitted to the Panel.

3.13 In formal terms, the Notification of Respondent Default was correct, as the Respondent had not filed a Response in accordance with the requirements of paragraph 5 of the STOP Rules. However, it is possible that the Respondent may have thought that it was not required to do anything more by way of a Response, in view of the Center’s statement in its email of May 30, 2002, that its emails would be treated as its response in default of the filing of a more formal document. Tending against this possibility is the fact that the Center in each of its email communications to the Respondent drew the latter’s attention to the requirements of STOP, the STOP Rules and the WIPO Supplemental STOP Rules and the appropriate website addresses at which these documents could be accessed. In addition, the Center email of May 29, 2002, makes it clear that the Respondent’s emails suffered from "deficiencies" so far as a proper Response to the Complaint was concerned. In other words, it is clear that the Respondent was alerted to the need to file a Response in the proper form and the timeline for doing this, and the Panel concludes that there was no realistic possibility that the Respondent may have been confused as to the need to file a Response in the proper form.

3.14 Having said this, it does not seem open to the Panel for it to conclude that the Respondent’s emails constitute its Response in the proceeding, particularly in view of its conclusion that the Notification of Respondent Default was properly made. The requirements of paragraph 5 of the STOP Rules are clear as to what is required for the making of a Response, and it is clear that the Respondent’s emails do not meet these requirements.

3.15 The significance of this conclusion is that, under paragraph 14 of the STOP Rules the Panel is entitled to draw such inferences from any default "as it considers appropriate". On the other hand, under paragraph 10(b), the Panel is required to ensure that the Parties are "treated with equality and that each Party is given a fair opportunity to present its case". Pursuant to this paragraph, while the Panel concludes that the Respondent has been given the necessary opportunity to provide its formal Response under the Rules and has chosen not to do so, it will only be fair for the Panel to have regard to the statements contained in the Respondent’s emails and to accord them such relevance and weight as they deserve (pursuant to paragraph 10(d)).

4.1 The matters that are undisputed in the present proceedings are as follows.

4.2 The Complainant is the proprietor of trade and service mark registrations in numerous countries for the mark "GSM" (a schedule of these registrations appears in Annex 3 of the Complaint and sample registrations are set out in Annex 3).

4.3 The mark is used in relation to a telecommunications platform and telecommunications goods that make use of that platform. This technology is now used worldwide with respect to mobile phones and data services.

4.4 The Complainant is a Swiss association (founded in 1987) that consists of over 500 members worldwide involved in the telecommunications industry and the GSM mark is used by these members under license as well as by other authorized users.

4.5 Of more direct relevance to the present proceeding is the fact that mobile phone technology is rapidly developing, and one of these developments is the "third generation" or "3G" technology.

A successful complaint brought under STOP must establish the elements that are listed in paragraph 4(a). The Complaint in the present proceeding does not do this in express terms, but the following is a reasonable summary of what is submitted.

- As to the first element (domain name that is identical to a trade or service mark in which the Complainant has rights), the Complainant refers to, and provides evidence of, its extensive registrations of trade and service marks comprising the letters GSM. It is stated further (Complaint, page 6) that the Complainant has been promoting 3G technology and services under the brand "3GSM". There do not appear to be any trade mark registrations for "3GSM", but the Complaint goes on to state that the first 3GSM World Congress was held in February 2002, with overall attendance of 24,000 persons and 426 exhibitors. It is not stated in the Complaint whether this congress was organized by the Complainant, but the extract from the webpage for the Congress at Annex 6 of the Complaint implies this – it is advertised as the GSM World Congress and the "GSM" is qualified by the abbreviation "TM", while there is reference to a message from the CEO of the Complainant. The Complainant goes on to assert that "awareness of the mark 3GSM is, therefore, high" and to argue that, even if the mark had not been used, it would be an "obvious and immediately understood, development of the GSM mark". The Complainant also draws attention to its proprietorship of a number of domain names including the letters 3gsm, including <3gsm.net>, <3gsm.org>, <3gsm.info>, <3-gsm.com>, <3-gsm.net>, <3-gsm.org>, <3-gsm.biz>, and <3-gsm.info>.

- As to the second element (Respondent’s lack of rights or legitimate interests in domain name), the Complainant does not make any submissions expressly directed to this issue. However, there is the somewhat ambiguous statement (Complaint, page 7) that the Respondent is in the telecommunications business and "intends to use the domain name in that business".

- As to the third element (bad faith by the Respondent in the registration or use of the domain name), the Complainant does not expressly address this issue in the terms of the Policy, e.g. by reference to the matters referred to in paragraph 4(b). Nonetheless, the following matters referred to in the Complaint appear relevant to this general issue. In Annex 7 of the Complaint, there is an investigator’s report on the activities of the Respondent, which is alleged to show that the Respondent knew of the marks GSM and 3GSM. The Complainant then asserts that use of the domain name will be an infringement of the Complainant’s various rights in the trade mark GSM as use of the domain name will give rise to the belief that the Respondent is authorized to offer GSM services and goods. Reference is made here to Volvo Trademark Holding AB v Motordealer Limited, WIPO Case No. D2002-0036.

As noted above, no formal Response has been made. However, in a series of emails to the Center (dated May 7 and 29, 2002), the Respondent makes the following assertions.

- That GSM is a technical term that has been used for over 30 years and is an international open standard by ETSI (European Telecommunications Standards Institute)

- Networks Solutions "asked" him to buy and he did.

- There was no US trade mark registration for 3gsm when he registered the domain name

- He has never asked for money for the domain name

- GSM is "not a trade mark is a technology’

As noted above, to succeed in a Complaint brought under STOP a Complainant must prove that each of the elements listed in paragraph 4(a) is present. These elements are similar, though not identical, to those under the UDRP.

Under paragraph 4(a)(i), the Complainant must show that the domain name is identical to a trademark or service mark in which it "has rights". In the present proceeding, the Complainant has shown that it has extensive national registrations for trade and service marks comprising the letters "GSM". However, this is not identical to the domain name and these registrations must therefore be disregarded. The Complainant’s case must rest upon showing that it has rights in the unregistered trademark "3gsm", and in this regard the evidence it has adduced is not convincing. Thus, the fact that the 2002 Congress was called the "3gsm" Congress does not establish that this was use as a trade or service mark; indeed, it is not indicated in what way the mark was used and in respect of which goods or services. Likewise, the registration of the various 3gsm domain names does not necessarily indicate that these were used as trade or service marks. More evidence was therefore required in order to show that the Complainant has "rights" in the unregistered mark. Unlike the UDRP, it is not possible for a Complainant to satisfy this requirement by showing that it has rights in a mark that is confusingly similar.

In light of the above finding, it is unnecessary to consider this element. However, for the sake of completeness, it is useful to consider whether the Complainant has met the requirements of the second element.

From the evidence filed by the Complainant, it appears that the Respondent operates a business called E.I .Net that markets tools to analyze telecommunications networks, including "Lee and Hata Models for cellular, GSM, 3G and PCs" and has been engaged in the telecommunications industry since 1989 (investigator’s report at Annex 7, Complaint). It is further stated that "he registered the <3gsm.biz> domain name with a view to selling software tools and is not a domain name reseller." However, it does not appear that the Respondent has actually used the domain name in relation to his business, and there is no evidence as to whether he has made any preparations to do so. Furthermore, none of the assertions in his emails address this question. Accordingly, there is no evidence before the Panel that goes to any of the points listed in paragraph 4(c), which are concerned with matters that show the rights or legitimate interests of the respondent in a disputed domain name.

In the absence of such evidence, therefore, Panel draws the inference that the Respondent has no rights or legitimate interests in respect of the domain name.

Once again, it is unnecessary to consider this in the light of the finding with respect to the first element. But even if a contrary conclusion on this point had been reached, it is doubtful whether the third element would have been satisfied.

Under paragraph 4(a)(iii), bad faith at either the stage of registration or use will suffice, and instances of evidence of bad faith are provided in paragraph 4(b). However, none of these matters is addressed in the Complainant’s evidence. Thus, while it appears that the Respondent was prepared to enter negotiations to sell the domain name when approached by the Complainant’s investigators, it does not seem from the evidence that there are "circumstances indicating that [he]…registered the domain primarily for the purpose of selling, reselling, or otherwise transferring the domain name to the Complainant…" (paragraph 4(b)(i)). Likewise, it is speculative to suggest that the circumstances referred to in paragraph 4(b)(ii) and (iii) are made out, particularly in light of the Respondent’s assertions in his emails that he believed GSM to be a technological term and not a trade mark. Finally, there is no evidence filed by the Complainant that goes to the matters mentioned in paragraph 4(b)(iv).

Accordingly, the Panel finds that the Complainant would not have satisfied the third element of paragraph 4(a) on the basis of the evidence filed.

In light of the findings in relation to the first and third elements of paragraph 4(a), the Panel finds that the Complaint has not been established. The Complaint is therefore dismissed.

The Panel is advised that there are other IP claimants in relation to this domain name. In the light of the above findings, further proceedings may therefore be brought by these claimants in accordance with paragraph 4(l)(ii)(3) of the STOP and paragraph 15(e)(iii) of the STOP Rules.