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Generic Top Level Domain Name (gTLD) Decisions |
CMP Media LLC v. Klaus Nadler
Claim Number: FA0112000103453
PARTIES
Complainant
is CMP Media LLC, Manhassett, NY
(“Complainant”) represented by Sandra L. Grayson. Respondent is Klaus Nadler
and NetEvent GmbH, Wetzlar, Hessen, Germany (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <netevent.biz>,
registered with CORE.
PANEL
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known
conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (“the Forum”)
electronically on December 26, 2001; the Forum received
a hard copy of the
Complaint on December 26, 2001.
On
January 2, 2002, CORE confirmed by e-mail to the Forum that the domain name <netevent.biz> is registered with
CORE and that the Respondent is the current registrant of the name. CORE has verified that Respondent is bound
by the CORE registration agreement and has thereby agreed to resolve
domain-name disputes
brought by third parties in accordance with ICANN’s
Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On
January 7, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of January 28,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail,
post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts,
and to postmaster@netevent.biz by e-mail.
A
timely Response was received and determined to be complete on January 28, 2002.
On February 18, 2002, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Hon. Carolyn
Marks Johnson as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following
allegations:
Complainant
has rights in the protected mark NETWORK COMPUTING. Respondent has registered a
domain name that is identical to or confusingly
similar to Complainant’s
registered mark. Respondent has no
rights to or legitimate interests in the mark contained within the domain name
and Respondent registered and used
the domain name in bad faith.
B. Respondent makes the following
allegations:
Respondent
filed a single-page letter in Response to the Complaint. Respondent states in
this letter that NetEvent GmbH, Germany is
a Limited Company, registered under
German Laws in the city of Wetzlar and is currently rendering Internet services
in that area
with plans to expand to the European and international market.
Respondent stated an interest in the domain name. Respondent suggested
that “we
believe that this case would need probably more time to clarify the various
interests and to find possible solutions for
the parties.” Neither party
requested additional time or extension of any deadlines. Respondent did not
otherwise addresss the issue
of confusing similarity or bad faith.
FINDINGS
The record
before the Panel permits the following findings:
Complainant is a leading high-tech media
company providing essential information and marketing services to the entire
technology spectrum
and to the healthcare industry. Its diverse products and services include newspapers, magazines,
Internet products, research services, direct marketing services,
education and training,
trade shows and conferences, custom publishing, testing and consulting.
Complainant established in this
proceeding that it owns the trademark NETWORK COMPUTING. Complainant holds Registration No. 2,038,266
from the United States Patent and Trademark Office in class 16 for publications
and journals. In addition, Complainant
has international trademark registrations for NETWORK COMPUTING in Argentina,
Australia, Canada, Mexico,
New Zealand, Hong Kong, Taiwan, Italy, South Africa,
Russia, Spain, Finland, Bulgaria, Poland, Switzerland, Hungary, Czech Republic
and Benelux.
Complainant further established in this
proceeding that it owns the Trademark NetEvent under United States Registration
No. 2,114,533
in class 35 for preparing live and rerecorded interactive
business presentations using multimedia applications, which incorporate
graphics, text, audio and video for use on a global computer information
network. This trademark was first used
in commerce December 10, 1996, and was registered March 17, 1998, by Marshall
Industries, which in turn
assigned it to Complainant.
Complainant and its predecessor used the
trademark NetEvent in conjunction with providing business presentations via
online services.
Complainant alleged but provided no
extrinsic proof in support of the claim that Respondent registered NetEvent
solely for “anti-competitive
purposes or to attempt to sell it for a profit.”
The
evidence is disputed as to whether Respondent has a claim of right to use of
the NetEvent mark in Germany. Since
Respondent did not provide proof to the contrary, the Panel takes as true
Complainant’s allegations that Respondent does not
have a registered trademark
relative to NetEvent in Germany, where Respondent is located.
Respondent
states in his letter that NetEvent GmbH, Germany is a Limited Company,
registered under German Laws in the city of Wetzlar
and is currently rendering
Internet services in that area with plans to expand to the European and
international market. Respondent
did not support these claims with extrinsic
proof.
While Respondent suggested “we believe that
this case would need probably more time to clarify the various interests and to
find possible
solutions for the parties,” no party requested additional time or
an extension of any deadline and Respondent did not otherwise address
the
required elements in the proceeding.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (the “Rules”) instructs this 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.”
Paragraph
4(a) of the Policy requires that the Complainant must prove each of the
following three elements to obtain an order that
a domain name should be
cancelled or transferred:
(1)
the domain name registered by the Respondent is identical or confusingly
similar to a trademark or service mark in which the Complainant
has rights;
(2)
Respondent has no rights or legitimate interests in respect of the domain name;
and
(3)
the domain name has been registered and is being used in bad faith.
Respondent did not address the issue of similarity
in its letter to the Panel. Respondent
merely maintains that it has been doing business under the name of NetEvent
GmbH, Germany, offering “services in the area
of internet content, internet
services, internet products [and]…services to basically all information and
news platform[s] in the
market.” One could argue that the terms "net"
and "event" are generic and that therefore, Complainant should
not
have exclusive rights in NET EVENT or <netevent.biz> in Germany,
where Respondent allegedly operates. See Successful Money Mgmt. Seminars, Inc. v.
Direct Mail Express, FA
96457 (Nat. Arb. Forum Mar. 7, 2001) (finding that seminar and success are
generic terms to which Complainant cannot maintain
exclusive rights); see
also Rollerblade, Inc. v. CBNO and
Redican, D2000-0427 (WIPO Aug. 24, 2000) (finding that “genericness, if
established, will defeat a claim of trademark rights, even in a mark
which is
the subject of an incontestable registration”). Here, however, Complainant
certified that Klaus Nadler “does not have any
interest in or trademark
registration for the name. An online
trademark search which CMP conducted does not show any registration by Klaus
Nadler in Germany where it is located.”
This allegation was easy for Respondent to refute with documentary proof
of its interest in the NetEvent mark in German and Respondent
did not do so.
The Panel finds that the domain name is confusingly
similar to Complainant’s registered trademark and that
Policy
¶ 4(a)(i) has been satisfied.
Complainant
asserts that Respondent is commonly known as Klaus Nadler and not as NetEvent
or <netevent.biz> and that,
therefore, Respondent has no rights or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(c)(ii).
See Broadcom Corp. v.
Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no
rights or legitimate interests because Respondent is not commonly known by
the
disputed domain name or using the domain name in connection with a legitimate
or fair use); see also CBS
Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000)
(finding that Respondent has failed to demonstrate any rights or legitimate
interests in the <twilight-zone.net>
domain name since Complainant had
been using the TWILIGHT ZONE mark since 1959).
Under
the allegations and Respondent’s failure to bring forth proof to the contrary,
the Panel further may find that Respondent seeks
to intentionally divert
Internet users to its website for its own commercial gain and is therefore not
making legitimate noncommercial,
or fair use of the disputed domain pursuant to
Policy ¶ 4(c)(iii). See Kosmea Pty Ltd. v. Krpan, D2000-0948
(WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has
an intention to divert consumers of Complainant’s
products to Respondent’s site
by using Complainant’s mark); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb.
Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain
name to confuse and divert Internet
traffic is not a legitimate use of the
domain name).
Further,
under the allegations and Respondent’s failure to bring forth proof to the
contrary, the Panel may find that Respondent has
failed to develop a website at
the domain name and that this failure demonstrates that Respondent has no
intention of using the domain
name for a legitimate purpose, and therefore has
no rights or legitimate interests in the disputed domain name. See Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001)
(finding that no rights or legitimate interest can be found when Respondent
fails to use
disputed domain names in any way).
Respondent
asserted in its letter to the Panel that “NetEvent is an Internet company which
renders services in the area of internet
content, internet services, Internet
products [and]…services to basically all information and news platform in the
market.”(sic)
Respondent did not address its purpose in registering the
disputed domain name but merely wrote about the alleged business operation
of
NetEvent GmbH, Germany. Even if the Panel accepts Respondent’s description as
providing information about the purpose of the domain
name, the disputed domain
name’s description sets out terms for a future content of a website and a
future area of Respondent's business.
The Panel might find that Respondent is planning to use <netevent.biz> for a bona fide
service pursuant to Policy ¶ 4(c)(i). See
Canal & Image UK Ltd. v. VanityMail
Serv., Inc., FA 94946 (Nat. Arb. Forum July 18, 2000) (finding that a draft
of an unimplemented business plan was sufficient to show respondent’s
legitimate interest in the domain name); see also Tough Traveler, Ltd. v. Kelty Pack, Inc, D2000-0783 (WIPO Sept. 28,
2000) (finding that Respondent had a legitimate interest in the domain name,
<kidcarrier.com>,
as a generic term for a class of products that
Respondent sells); see also Sweeps
Vacuum & Repair Ctr., Inc. v. Nett Corp., D2001-0031 (WIPO Apr. 13,
2001) (finding bona fide use of a generic domain name, <sweeps.com>,
where Respondent used a legitimate
locator service (goto.com) in connection
with the domain name). But Respondent
has offered no extrinsic proof to refute Complainant’s allegation that “Klaus
Nadler has filed for the domain name
in question solely for anti-competitive
purposes or to attempt to sell it for a profit.”
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration
and Use in Bad Faith
Complainant urges that Respondent
registered a domain name containing Complainant’s protected trademark for the
bad faith purposes
of preventing Complainant from operating a domain name in
its own name or to attempt to sell the name to Complainant for a profit.
Respondent could have attempted to refute this allegation with objective or
subjective proof but made no effort to address these
elements. The Panel may find that the <netevent.biz> domain name is
identical to Complainant's mark and further that an Internet user seeking to
access Complainant’s business by its
name will reach Respondent’s website and
will likely believe that there is an affiliation between Respondent and
Complainant. Registration of the <netevent.biz> domain name
despite its identical nature to Complainant’s mark is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv). See Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding that bad faith registration and use
where it is “inconceivable that the respondent could
make any active use of the
disputed domain names without creating a false impression of association with
the Complainant”).
The Panel finds that Policy ¶ 4(b)(iv)
has been satisfied.
Having determined that all three required elements
for transfer of a domain name have been satisfied, it is, accordingly, Ordered
that the domain name <netevent.biz> is transferred from
Respondent to Complainant.
Hon.
Carolyn Marks Johnson, Panelist
Dated: March 4,
2002.
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