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Generic Top Level Domain Name (gTLD) Decisions |
Eurosat Distribution Limited v. Intertech
Servies c/o RF Networks
Claim Number: FA0208000117904
PARTIES
Complainant
is Eurosat Distribution Limited,
London, UNITED KINGDOM (“Complainant”) represented by Sarah Woolway, of Morgan
Cole Solicitors. Respondent is Intertech Services d/b/a RF Networks LLC, Dallas, TX, USA (“Respondent”) represented by Scott J. Stubbs.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <eurosat.com>,
registered with Network Solutions, Inc.
PANEL
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in
serving as Panelist in this
proceeding.
Fernando Triana, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on August 8, 2002; the Forum received
a hard copy of the
Complaint on August 9, 2002.
On
August 14, 2002, Network Solutions, Inc. confirmed by e-mail to the Forum that
the domain name <eurosat.com>
is registered with Network Solutions, Inc. and that the Respondent is the
current registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
Inc. 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
August 21, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of September
10, 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@eurosat.com by e-mail.
A
timely Response was received and determined to be complete on September 10,
2002.
Complainant’s
additional submissions were received on September 13, 2002.
Respondent’s
additional submissions were received on September 13, 2002.
On September 30, 2002, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Fernando Triana,
Esq., as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
states that it is a company registered in the United Kingdom since April 25,
1988, and has used the name Eurosat Distribution
Limited since its
incorporation. Complainant asserts that it established goodwill in the mark
Eurosat in the satellite industry.
According
to Complainant, it owns the following domain names registrations:
<eurosat.co.uk>, <eurosat.biz>, <eurosateastern.co.uk>,
<eurosatyorkshire.co.uk>, <eurosatscotland.co.uk>,
<eurosatsouthern.co.uk> and <eurosatlondon.co.uk>.
Complainant
further contends that it is the owner of the trademark registration No.
2,017,928 in the United Kingdom, registered on
April 19, 1995, for the
trademark EUROSAT, to cover goods of International Class 9, namely “satellite
receivers and parts and fittings
therefore.”
Likewise,
Complainant applied for registration of the trademark EUROSAT before the United
Kingdom Trademark Office, to cover: “Apparatus
for recording, transmission or
introduction of sound or images; DVD players; DVD recorders; electrical and
electronic apparatus for
use in reception of satellite, terrestrial or cable
broadcasts; radio signal antennae; apparatus for de-coding encoded signals;
apparatus
for the transmission and reception of sound and images; modems;
satellite and digital television ancillary equipment; apparatus for
use in
positioning of satellite broadcast receiving dishes; apparatus for use in
telephony; parts and fittings for the aforesaid
goods”. This trademark
application was filed on February 13, 2002 and was assigned No. 2,292,639.
On this
basis, Complainant concludes that the domain name <eurosat.com> is
identical to its UK trademark registration.
Additionally,
Complainant asserts that the Respondent has never traded under the mark EUROSAT
and the only use is made through the
domain name at issue. Complainant states
that Respondent does not own any trademark registration for the mark EUROSAT
and therefore
lacks of rights or legitimate interests in respect of the domain
name.
Complainant
also contends that the Respondent registered and uses the domain name subject
of the controversy in bad faith for the
reasons set forth below.
Complainant
explains that in or around June 1997, it became aware that an advertisement had
been placed in the magazine “What Satellite
TV” by a business called “Techsat”,
which made reference to the domain name <eurosat.com>. Through the
website, Techsat was offering for sale, satellite television products.
According to Complainant, this situation constituted
infringement of its
trademark EUROSAT and caused confusion among the consumer public. This use is
an infringement under §10 (1) of
the United Kingdom Trade Marks Act 1994, which
provides: “A person infringes a
registered trade mark if he uses in the course of a trade a sign which is
identical with the trade mark in relation
to goods or services which are
identical with those for which it is registered”.
Complainant
entered into correspondence with Techsat, claiming trademark infringement.
Complainant asserts that it requested that
the domain name be transferred to
it, but Techsat refused to do so. After various correspondence, Techsat’s
solicitors stated in
a letter dated June 25, 1997, the following: “Although our client’s web-site is currently
being used to promote the sale of satellite television equipment this position
will change
over the next fortnight or thereabouts. Our client is taking steps
to transfer all product promotion to a different site. Once this process is complete the existing
eurosat.com site will be used for information purposes only to convey, for
example, the
latest news in the satellite field.”
According
to Complainant, Techsat and the Respondent are one and the same. The Whois
directory reveals that Respondent owns the domain
name at issue since May 11,
1996 and it has never been transferred.
Complainant
states that due to the response given by Techsat on June 25, 1997, it did not
seek further redress through the Courts.
However, Complainant could evidence
that Respondent’s website has, until recently, borne the following notice: “Sorry this website is due for a much needed
update and will not be available for now.”
In or around July 2, 2002, traffic to the
Respondent’s website was diverted to the website accessed via the domain name
<afternic.com>
and the domain name <eurosat.com> was offered
for sale. The asking price was US$10,000. Complainant contends that this is in
direct contravention to the UDRP Policy
¶ 4(b)(i), since US$10,000 exceeds the
out of pocket expenses directly related to the domain name.
Complainant
believes that Respondent registered the domain name at issue and maintained its
registration in order to prevent Complainant
from registering the domain name.
Although Respondent was aware that the domain name infringed Complainant’s
trademark, it refused
to transfer it to Complainant on the basis that it
planned to change the content of the website, but it never did so. Respondent
has not made a legitimate use of the domain name and is preventing Complainant
from making use of a domain name over which it has
a legitimate interest.
Finally,
Complainant states that on July 2, 2002, its representatives wrote to
Respondent setting out the nature and extent of the
Complaint and requested
that the domain name <eurosat.com> be transferred to Complainant.
Respondent did not answer such correspondence. Complainant’s representatives
attempted to contact
Respondent’s registrant but received notification from the
registrant’s postmaster that the message was undeliverable as the destination
address was unknown. Complainant also attempted to contact Respondent’s
administrative contact but the telephone number obtained
from the Whois
directory was incorrect. In these circumstances, Complainant submits that the
fact that Respondent is not responding
to any communication and the details
submitted to Whois are incorrect is clear evidence of bad faith.
B.
Respondent
In
its response, Respondent contends that although the domain name <eurosat.com>
is similar to part of Complainant’s trade name and its United Kingdom
trademark, it also corresponds to Respondent’s trademark EUROSAT
applied for
registration in the United States and registered in Tunisia.
Respondent
asserts that Complainant once held a United States trademark on EUROSAT for a
proposed satellite receiver deal in the mid
1990’s, but the trademark was
cancelled under Section 8, Title I of the Trademark Act of 1946, on January 1,
2001. Respondent states that Complainant does not have known products marketed
in the United States and that Complainant’s products are strictly positioned
toward European audiences.
Respondent
also sets forth that the term EUROSAT stands for “Europe” and “satellite” and
has been applied to various other commercial
offerings. Disney uses the term in
Europe to identify its roller coaster and a company in Italy used the domain
name <eurosat.it>.
According
to Respondent, in 1997 Complainant offered to swap the <eurosat.com>
domain name for <eurosat.org>, which shows that Complainant was not
concerned about the use of the EUROSAT mark but with the
use of the .com TLD.
Respondent
contends that it has legitimate rights and interests in the domain name at
issue, since it is identical to Respondent’s
commercial product offering,
Eurosat Wireless, a point to multi-point wireless UNI band wireless
distribution network in the United
States that is uplinked via satellite to
distribution points in Europe. To this end, Respondent applied for registration
of the EUROSAT
mark before the United States Patent and Trademark Office, on
July 18, 2002. First use of the mark in commerce was June 31, 2002
(sic).
Respondent
further contends that it is the registered owner of the domain names <eurosat.net>,
<eurosat.org>, <eurosat.us>,
<eurosat.info> and
<eurosat.org.uk>.
Additionally,
Respondent asserts that it has a valid trademark registration for EUROSAT in
Tunisia, dated July 29, 1997, to identify
satellite transmissions related to
equipment sales and operations.
Respondent
also states that its commercial offering is substantially dissimilar to
Complainant’s. According to Respondent, Complainant’s
trademark is registered
strictly for use in the sale of actual material electrical apparatus and not
for a service offering. Further,
the geographical areas do not overlap.
Respondent
sets forth that there has not been bad faith in the use of the domain name.
Upon receiving the initial correspondence from
Complainant, in 1997, Respondent
removed the objectionable material in a timely manner and agreed to use the
domain name for generic
satellite industry news and not to offer products
confusingly similar to Complainant’s. Respondent contends that it moved all
disputed
product offerings to a different domain name, <techtronics.com>.
Respondent believes that this indicates that it did not have
intention of
infringing on Complainant by attempting to falsely deceive potential costumers
by attracting them to Respondent’s website.
Further,
Respondent asserts that it registered the domain name <eurosat.com>
at nearly the same time when Complainant began using the word EUROSAT in its
business. At that time, Complainant was unknown to Respondent
and the rules
that govern domain names were much less defined. Taking into account the length
of time that Respondent has owned the
domain name at issue and the length of
time that Complainant has owned the UK trademark, Respondent considers that
Complainant can
not claim “long standing use and historic nature” as an argument
against Respondent. Therefore, no “opportunistic bad faith” can
be shown. Due
to the existence of the Disney’s Eurosat and the Italian Eurosat, Respondent
believes that it could have made active
use of the disputed domain name without
causing confusion with Complainant.
Finally,
Respondent contends that in year 2001, an employee of Respondent accidentally
listed the domain name for sale. However, the
mistake was discovered and the
offer was removed. At that time, Complainant initiated again correspondence
with Respondent regarding
the domain name. According to Respondent, it is
interesting that the asking price of the domain name was only one-third of the
cost
for Complainant to file this complaint. During the seven (7) years of
negotiations between the parties, Respondent alleges that it
offered to sell
the domain name to the Complainant for substantially less than the cost of this
proceeding, offered to share the
domain name by posting portal links to both
companies and has cooperated in dealing with each an every concern raised by
Complainant.
As a consequence, Respondent sets forth that there has not been
bad faith in the use of the domain name involved when Complainant
offered to
let Respondent use <eurosat.org> in exchange for <eurosat.com>.
C.
Additional Submissions
In
its additional submission, Complainant states that Respondent has not provided
proof of ownership of rights over the trademark
EUROSAT in United States and
Tunisia. With respect to the trademark in Tunisia, Respondent has not provided
the registration number
or any documentary proof of its registration or
application. In the case of the application in the United States, Respondent
does
not have any registered trademark rights and has not shown evidence of
unregistered rights. The application was filed thirty (13)
days after
Complainant contacted Respondent requesting the transfer of the domain name <eurosat.com>.
According to Complainant, the only EUROSAT trademark registration that has
existed in the United States is the one obtained by Complainant
that
subsequently lapsed. Likewise, Respondent has not shown evidence of the use in
commerce of the trademark EUROSAT, as stated
in his response and in the
trademark application in the United States.
With
respect to Respondent’s allegation that Complainant offered to swap
<eurosat.org> for <eurosat.com>, Complainant contends that
it never occurred and there is no evidence to the contrary. Complainant
considers that it has always requested
Respondent to cease the use of the trademark
EUROSAT as part of a domain name or in any other way in connection with its
business
as such infringes Complainant’s rights. Complainant states that during
1997, the company Techsat moved into the more mainstream satellite
market and
the advertising of products through the domain name at issue caused costumer
confusion. In order to rectify such situation,
Complainant offered to pay
Respondent’s registration fees for another domain name, not including the mark
EUROSAT.
In
relation with the domain names that are listed as registered by Respondent in
its response, Complainant asserts the following:
·
<eurosat.net>:
The domain name is registered by Scott Stubbs, Eurosat, RF Networks, and not
Respondent. The domain is not actually
in use and when attempting to access,
the following error appears: “HTTP error
504. 504 no response from server”.
·
<eurosat.org>: The registrant of the domain name is also Scott Stubbs, Eurosat, RF Networks, and
not the Respondent. The domain name is not in use and the following error
appears when attempting
to access to it: “HTTP
error 504. 504 no response from server”.
·
<eurosat.us>: The owner of this domain name is Chris Tay and not
Respondent. The domain is not actually in use and when attempting to access, the following
error appears: “HTTP error 504. 504 no
response from server”.
·
<eurosat.info>: The registrant of this domain name is Chris Tay
and not Respondent. The domain is not in use as when attempting
to access it
the following error appears: “HTTP error 504. 504 no response from
server”.
·
<eurosat.org.uk>: The owner of this domain name is Chris Tay and
not Respondent. Traffic to this domain is diverted to <easypace.com>.
Furthermore,
Complainant asserts that the domain name <techtronics.com>, to which
Respondent alleges that it moved all disputed
offerings, is registered by
Techtronics (European) Limited and not by Respondent. However, Respondent has
not offered any explanation
or evidence of its relationship with the
aforementioned registrants.
Complainant
also states that Respondent has not filed evidence of its offerings to sell to
Complainant or share with it the domain
name subject of the controversy.
Likewise,
Complainant clarifies that the asking price of the domain name <eurosat.com>
as posted by a domain name auctioneer was of US$10,000. In order to buy the
domain name, Complainant would had to pay also the register
fee with the
auctioneer.
Finally,
Complainant contends that the references to Disney’s and Italy’s Eurosat are
not relevant as they are not related with the
satellite field where Complainant
has rights by virtue of its registered trademark.
Respondent
In
its additional submission, Respondent insists that it holds a trademark
registration for EUROSAT in the Republic of Tunisia, and
attaches a copy of the
trademark certificate No. EE97-1133. Respondent has held the trademark since
August 29, 1997.
With
respect to the multiple registrants of the domain names listed by Respondent as
owned by it, Respondent states that it has several
business units that operate
as semi-autonomous entities. Given the extended time line of the eurosat issue
(1997 to present) some
of the domain names and supporting documents referenced
are entitled to different business units of Respondent, some of which are
active, and some of which are not. According to Respondent, the parent company
is Techtronics Europe Limited, formed in 1998 by a
merger of Techsat (formerly
Intertech Services), owned by Chris Tay, and Supervision, a United Kingdom
based company. In 1999 Techtronics
purchased a Texas company called BT Holdings
owned by Scott Stubbs. The name was changed to RF Networks in order to better
identify
its position in the data delivery market. Respondent is RF Networks
LLC, a wholly owned subsidiary of Techtronics Europe Limited.
In summary, the
business names Techtronics, Techsat, Intertech Services and RF Networks are all
references to business units, past
and present, of Respondent. The individual
Chris Tay is currently a board member of the larger Techtronics Europe Limited.
The individual
Scott Stubbs is currently COO of RF Networks.
Respondent
contends that Complainant willfully and knowingly allowed the United States
Trademark Office to lapse its EUROSAT trademark
due to inactivity and age. Some
year and a half after such cancellation, Respondent applied for the mark. This
is all in accordance
with the applicable United States trademark law.
As
to the date of first use of the EUROSAT trademark in the market, Respondent
asserts that the United States trademark application
is an evidence that such
first use was made on July 31, 2002. Such statement was made under oath in the
United States Application
form and therefore it is true and correct and not
willfully false, under penalty of fine and/or imprisonment.
Regarding Complainant’s
offer to swap <eurosat.com> for <eurosat.org>, Respondent
insists that the evidence of such offer is the letter sent by Respondent’s
solicitors on June
25, 1997, stating the following: “The eurosat.com domain was first registered by our
client [Respondent] in the USA in May of 1996. That month you approached our
client
with the suggestion that the site be transferred to yours in exchange
for an undertaking by your client to register another site
for the use of our
client, this to be named eurosat.org. The proposal was unacceptable to our
client then and remains so now.” Respondent urges Complainant’s solicitors to
review their client’s correspondence. Although the cited letter was in response
to
a previous letter from Complainant’s solicitors dated June 11, 1997,
Respondent notices that Complainant failed to submit such letter.
Further,
Respondent contends that the offers to share the domain name <eurosat.com>
was extended to Complainant by Karl King, principal and board member of
Techtronics Europe Limited during one of the several telephone
conversations
held in 1997.
Concerning
the fact that various “eurosat” domain names owned by Respondent are not in
use, Respondent states that its has purposely
and systematically removed all
content from these sites in the hopes that doing so would work toward a lasting
and mutually satisfactory
resolution to this dispute with Complainant.
Respondent expects that this matter may be resolved by the National Arbitration
Forum
and hopes that both parties will adhere to the ruling without need to
further legal remedy.
Respondent
acknowledges Complainant’s trademark registration in the United Kingdom for
EUROSAT but also points to its own trademark
EUROSAT in Tunisia and its
application in the United States. The UK trademark rights of Complainant carry
no greater weight than
those of Respondent in Tunisia and the United States.
Respondent finally calls the attention of the Panel to the dissimilar nature
of
the product lines between the parties, their geographically separate markets
and the fact that Complainant willfully allowed its
rights to the mark EUROSAT
in the United States expire, as evidence that the United States geography is
not of concern to Complainant.
FINDINGS AND 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.”
Likewise,
paragraph 10 (d) of the Rules for Uniform Domain Name Dispute Resolution
Policy, provides that “[t]he Panel shall determine
the admissibility,
relevance, materiality and weight of the evidence.”
In the
present case, the Panel wants to place emphasis in the importance of the
evidence filed by the parties to prove their assertions,
which has been studied
to determine its relevance and weight in arriving to a decision. The Panel
wishes to clarify that the statements
that have been accompanied by evidence
have been given more importance than the mere statements made by the parties
without further
demonstration of their existence.
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) the 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.
Identical and/or Confusingly Similar
Complainant
has filed evidence of its trademark registration of EUROSAT in the United Kingdom,
to cover “satellite receivers and parts
and fittings therefore, goods of
International Class 9, under Certificate No. 2,017,928 dated April 19, 1995.
Likewise, Complainant
applied for registration of the trademark EUROSAT to
cover “Apparatus for recording, transmission or introduction of sound or
images;
DVD players; DVD recorders; electrical and electronic apparatus for use
in reception of satellite, terrestrial or cable broadcasts;
radio signal
antennae; apparatus for de-coding encoded signals; apparatus for the
transmission and reception of sound and images;
modems; satellite and digital
television ancillary equipment; apparatus for use in positioning of satellite
broadcast receiving dishes;
apparatus for use in telephony; parts and fittings
for the aforesaid goods”, included in International Class 9, before the United
Kingdom Trademark Office, on February 13, 2002.
To
the extent of this administrative proceeding, the Panel will only consider the
registered rights held by Complainant over the mark
EUROSAT.
Therefore,
the Panel notes that the domain name <eurosat.com> includes the
Complainant’s registered trademark in its whole.
With
respect to the “.com” suffix, it has been repeatedly accepted by UDRP Panels
that the existence of the “.com” generic top-level
domain (gTLD) in the
disputed domain name is not a factor for purposes of determining that a
disputed domain name is not identical
or confusingly similar to the mark in
which the Complainant asserts rights. See Lumena s-ka zo.o. v.
Express Ventures Ltd., FA 94375 (Nat. Arb. Forum May 11, 2000) (stating
that: “In
the strictest sense, the domain name <lumena.com> is not identical to the
trademark Lumena. The former includes a top level
domain ".com" while
the word Lumena stands alone in the latter. However, where the addition of it
top-level domain is the
only difference, the top-level domain that appeared in
the domain name was the one that most closely described that nature of the
trademark (i.e.; ".com" representing a commercial enterprise). The virtual
identicality seemed sufficient to satisfy the
first element of paragraph 4
(a)(i) of the Policy”). Therefore,
this Panel will not take into consideration the suffix “.com” when deciding
over the similarity between the signs.
Based
on the foregoing, the Panel finds that the domain name at issue is identical to
the trademark over which Complainant has rights.
Rights or Legitimate Interests
Paragraph 4(c) of the UDRP, determined that the following
circumstances, in particular but without limitation, if found by the Panel
to
be present, shall demonstrate the Respondent’s rights or legitimate interests
to the domain name:
(i)
Before any
notice to Respondent of the dispute, it has used or made demonstrable
preparations to use the domain name or a name corresponding
to the domain name
in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business,
or other organization) has been commonly known by the domain name, even if he
has acquired
no trademark or service mark rights; or
(iii) Respondent is making a legitimate
noncommercial or fair use of the domain name, without intent for commercial
gain to misleadingly
divert consumers or to tarnish the trademark or service
mark at issue.
Complainant has contended that Respondent lacks of rights or
legitimate interests on the domain name at issue. On the contrary, Respondent
has asserted that he has rights and legitimate interests over the domain name,
on the basis of a commercial offering of a telecommunications
service under the
name EUROSAT.
Respondent has shown evidence of a
trademark registration for EUROSAT in the Republic of Tunisia, to cover goods
of International
Class 9, under Certificate No. EE97.1133, dated July 29, 1997,
in the name of Techtronics Europe Limited, domiciled in the United
Kingdom. The
Panel notes that the registrant of the mentioned trademark is not Respondent.
Although Respondent attempted to explain
the relationship between a number of
companies and individuals involved with the Respondent, the Panel finds that no
evidence has
been filed to prove such connection. Therefore, the Panel cannot
accept that all such companies and individuals are really the same,
based
solely on the mere statement made by Respondent in this regard. As a
consequence, the trademark registration shown by Respondent
as an evidence of
its rights over the mark EUROSAT can not be taken into consideration in this
Administrative Proceeding.
Notwithstanding, even if such trademark
registration was owned by Respondent, it is not sufficient evidence of the
rights or legitimate
interests over the domain name in dispute, in the part of
Respondent. Due to its nature, a trademark registration grants its owner
an
exclusive right over the trademark, in the jurisdiction where the registration
took place. Outside such jurisdiction, the owner’s
rights cannot be enforced.
The exception to this rule involves the notorious trademarks, but the evidence
filed by the parties in
this proceeding does not lead the Panel to conclude
that EUROSAT is a notorious trademark. The global nature of the Internet makes
it impossible to assure that every trademark owner gets a domain name that
reflects its trademark, since there may be various registrants
in different
countries, with trademark rights over identical signs. Therefore, the trademark
registration must be accompanied by
other elements to constitute an evidence of
rights and legitimate interests over a domain name.
This global nature of the Internet leads
the Panel to conclude that it is irrelevant if the parties have different
markets where their
products or services are offered. Respondent states that
since its commercial offering takes place in the United States and
Complainant’s
offer is made in the United Kingdom, there would be no risk of
confusion among the public as to the owner of the disputed domain
name. The
Panel believes that this is not acceptable. The Internet is a global network
that can be accessed virtually from any part
of the world by any person who can
use a computer. Therefore, a person in Namibia can enter the Internet looking
for the website
of a company in China or attempting to purchase products
offered by someone in America. The Internet has erased the borderlines existent
in the physical world. Consequently, a domain name owned by a company in the
United States of America can be accessed by a person
in the United Kingdom or
elsewhere without any limitation, and the user will not take into consideration
the fact that the company
is based in a different country from his own. In the
field of e-commerce, local companies get to offer their products or services
to
clients around the world who would be unreachable in other circumstances. That
is the purpose of the Internet and the boundaries
that traditionally tied
business have disappeared. Due to the foregoing, the fact that there is no
overlapping between the markets
where Complainant and Respondent usually
perform is not relevant in the Internet era.
Respondent attempts to reinforce its
argument when pointing to a trademark held by Complainant in the United States
over the sign
EUROSAT, which was canceled by the United States Patent and
Trademark Office on 2001. According to Respondent, this evidences that
Complainant lacks of interest in the United States market and therefore any
risk of confusion disappears. Due to the aforementioned,
the alleged lack of
interest of Complainant in Respondent’s country is not relevant considering the
worldwide coverage of the Internet.
The trademark application before the
United States Patent and Trademark Office for the mark EUROSAT on behalf of RF
Networks is not
considered as an evidence of rights over such sign, and the
Panel will only take into account the registered trademark rights evidenced
by
the parties. Likewise, the Panel notes that Respondent has not filed evidence
of any common law rights over the mark EUROSAT in
any jurisdiction. Although
according to the printout of the database of the United States Patent and
Trademark Office, Respondent
first used the trademark EUROSAT in commerce in
June 29, 2002, the Panel notes that such first used was made five (5) years
after
it was informed by Complainant of its rights over the mark EUROSAT and
more than six (6) years after the registration of the domain
name <eurosat.com>,
over which Respondent alleges to have strong interests and rights from many
years ago.
In the present case, Respondent intends
to prove its legitimate interests over the <eurosat.com> domain
name, by asserting the following:
“The
domain name ‘eurosat.com’ is identical to the Respondent’s commercial product
offering, Eurosat Wireless, a point to multi-point
wireless UNI band wireless
distribution network in the United States that is uplinked via satellite to
distribution points in Europe. The
service is an expanded “long-distance” service using voice over IP technology
coupled to local wireless distribution that ties
a customer’s wireless data
access to the Internet to inexpensive international long distance phone
service.”
The existence of this commercial offering
for a product named “Eurosat Wireless” was not sufficiently demonstrated by
Respondent,
beyond its mere statements. Consequently, the Panel finds that
Respondent has failed to prove that it has used or made demonstrable
preparations to use the domain name or a name corresponding to the domain name
in connection with a bona fide offering of goods or
services.
Additionally, Respondent did not file any
evidence neither proving that it is commonly known by the name EUROSAT, nor
proving that
it is making a legitimate noncommercial or fair use of the domain
name, without intent for commercial gain to misleadingly divert
consumers or to
tarnish the trademark or service mark at issue.
Far from demonstrating the above, the
Panel finds that Respondent is not using the disputed domain name and has not
done so for a
long time. This is evidence of the lack of interest in the part
of Respondent in the domain name <eurosat.com>, which contradicts
its statements in the sense that there is a commercial offering under the name
EUROSAT.
On the contrary, Complainant has
evidenced its rights and legitimate interests in the domain name at issue and
has shown that it is
known with the name EUROSAT in the market and that is has
made use of such mark in connection with a legitimate and bona fide offering
of
goods, as evidenced by entering some of its websites under the domain names
<eurosat.co.uk> and <eurosat.biz>, which
were visited by the Panel
on October 10, 2002.
With respect to the <eurosat.biz>
domain name, it could be stated that Complainant already holds a domain name in
a gTLD related
with commercial business. Notwithstanding, the Panel believes
that it is expected that Complainant, as legitimate owner of the EUROSAT
trademark, wants to have its trademark reflected in the most commonly known
gTLD, due to the fact that the “.biz” suffix has been
recently launched and is
not as popular at this moment as the “.com” domain.
Respondent contended that Complainant
lacked of interest over the disputed domain name, since it offered to swap the
domain name <eurosat.com> for <eurosat.org> in 1997.
However, no evidence has been filed to prove that such offer really existed.
Even if the offer was
extended by Complainant to Respondent, the Panel wishes
to remind that the domain names system has been divided into groups, identified
with different suffixes, depending on the activity or nature of the registrant.
Accordingly, the “.com” and “.biz” suffixes are thought
out for those devoted
to commercial activities; the “.org” suffix can be registered by non-governmental
organizations; the “.gov”
suffix is limited to governmental entities, and so
on. As a consequence, being Complainant a commercial company, it is expected
that
it wanted to have its trademark reflected in a “.com” domain name instead
than in a “.org” one. Furthermore, Complainant would not
meet the requirements
to register a “.org” domain name and it would contradict its commercial nature.
In any case, if the offer existed,
Respondent refused it but proceeded to
register the domain name <eurosat.org>, in an attempt to establish rights
over the sign
EUROSAT and almost precluding any possibility of an amicable
agreement with Complainant to solve this controversy. The Panel concludes
that,
even if the offer to swap the disputed domain name by the <eurosat.org>
domain name existed, it is an evidence of the
interest of Complainant in owning
the domain name that completely reflected its trademark, accompanied by the
suffix “.com” that
was in accordance with its commercial activity; its lack of
interest in the <eurosat.org> domain name is an evidence that acts
in
favor of Complainant and not against it.
As to Respondent’s assertion, in the
sense that there are other entities in the world using the word EUROSAT, such
as Disney and other
Italian company, the Panel finds that such cases are
irrelevant to this proceeding. The cases mentioned by Respondent refer to
businesses
that are not connected in any way with Complainant’s activities,
e.g., the satellite field. This is not the case in the present dispute,
where
both Complainant and Respondent are involved in the business of satellites and
telecommunication products, which creates a
clear risk of confusion among the
consumer public when attempting to access the legitimate owner of the EUROSAT
trademark in the
Internet. This reasoning made by Respondent is not accepted by
the Panel as an evidence of its legitimate interests in the domain
name subject
of the controversy.
The above leads the Panel to conclude
that Respondent does not have rights or legitimate interests on the domain name
<eurosat.com>.
Registration and Use in Bad Faith
According
to paragraph 4(b) of the UDRP, 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 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
or service mark or to
a competitor of that Complainant, for valuable
consideration in excess of Respondent’s documented out-of-pocket costs directly
related
to the domain name; or
(ii)
Circumstances
indicating that Respondent has 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 Respondent has engaged in a pattern of
such conduct;
or
(iii)
Circumstances
indicated that Respondent has registered the domain name primarily for the
purpose of disrupting the business of a competitor;
or
(iv)
Circumstances
indicating that, by using the domain name, Respondent has intentionally
attempted to attract, for commercial gain, Internet
users to his web site or
other on-line location, by creating a likelihood of confusion with the
Complainant's mark as to the source,
sponsorship, affiliation, or endorsement
of his web site or location or of a product or service on his web site or
location.
Complainant has contended that Respondent
registered and uses the domain name at issue in bad faith. Respondent alleges
that it has
acted in good faith and its behavior during the years of
negotiation with Complainant demonstrates so.
In this regard, the Panel notes that the
contacts between the parties date from 1997, approximately one year after the
registration
of the domain name was made by Respondent. Respondent states that
it “originally registered the domain name eurosat.com at nearly the same
time that Complainant began using it in their business – in 1996”. This
assertion is not correct since Complainant contends that it was incorporated in
1988 under the name “Eurosat Distribution Limited”
and it has been using such
name since then. Although Complainant did not file any evidence to prove this
fact, Respondent did not
contest such statement. Also, Complainant’s trademark
EUROSAT is registered in the United Kingdom since April 19, 1995 and the
evidence
has been filed by Complainant with its Complaint. Therefore, when
Complainant first contacted Respondent, its rights over the mark
EUROSAT were
solid enough. However, Respondent failed to transfer the domain name under
controversy to Complainant although it had
been duly informed of the
preexistent rights of Complainant and was perfectly aware of its own lack of
rights and legitimate interests
in the domain name. This behavior is an
evidence of Respondent’s bad faith in the registration and use of the domain
name at issue.
After the negotiations began, Respondent
attempted to obtain rights over the EUROSAT trademark by many different ways,
without success.
As explained, the Tunisian registration is not owned by
Respondent and there is no evidence of use of the EUROSAT sign by Respondent
in
connection with a bona fide offering of goods or services, as it states.
The Panel notes that Respondent, after
several correspondence with Complainant, posted a notice in its website with
the following
legend: “Sorry this website
is due for a much needed update and will not be available for now.” Evidence in this respect has been
filed by Complainant. This lack of use of the domain name shows that Respondent
lacks of interest in the
domain name, as already concluded, and has the domain
name active with the purpose of preventing the owner of the trademark from
reflecting the mark in a corresponding domain name. This has been accepted by
previous Administrative Panels. See Am. Home Prods. Corp. vs. Ben
Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (stating “The Panel is disturbed
by the Respondent's registration of the contested domain name followed
by its
continued retention, particularly here in the absence since late May 1999 (a
period of approximately 1 ½ years to the date
of the Complaint), of
implementing an operational website resolvable through that name. The Panel
views such holding as being a continuing
denial to the Complainant of its
right, as a trademark owner of the marks "SOLGAR" and "solgar
vitamins", to
reflect its mark (both registered and unregistered) in a domain
name; hence, further reflecting bad faith registration and use”).
Complainant attempted to contact
Respondent prior to filing the Complaint and found out that Respondent’s
registrant was unavailable
and its administrative contact’s telephone number,
provided by the Whois database, was incorrect. Additionally, the letter sent by
Complainant to Mr. Chris Tay on July 2, 2002, to his address in the United
Kingdom, was never answered. Such statements made by Complainant
were never
contested by Respondent. These circumstances are evidence of bad faith, since
Respondent has posted false or incorrect
contact information in the Whois
database, and thus making it difficult for any interested party to enter into
contact with Respondent,
particularly when a dispute arises. In this respect,
Jerome Gilson and Anne Gilson LaLonde[1]
state, referring to the Anticybersquatting Consumer Protection Act, which is
applicable to Respondent as a United States company
and/or citizen, that “[t]he
ACPA suggest that providing “material and misleading false contact information”
when applying for a domain name, intentionally
failing to maintain accurate
contact information, or having a pattern of providing false contact information
should lead a court
to find bad faith. Cyberpirates commonly provide false
information in order to evade detection and service process.”
Likewise, Respondent’s lack of response
to Complainant’s demands (i.e. Complainant’s letter dated July 2, 2002)
evidence that Respondent
was unwilling to solve this matter with Complainant
and refused any possibility of an amicable negotiation between the parties. It
is odd for the Panel that Respondent did not answer the communications sent by
Complainant before initiating this administrative
proceeding, although Respondent
has stated that Mr. Chris Tay “is currently a board member of the larger
Techtronics Europe Limited”.
Additionally, Respondent did answer the
communications sent to it by the National Arbitration Forum when this
proceeding commenced
and it even sent an e-mail to Complainant requesting an
extension of the term to file a Response to the Complaint.
Further, Respondent posted the domain
name <eurosat.com> for sale through a domain name auctioneer.
Although Respondent alleged that “an employee of Respondent accidentally listed
the domain
name for sale along with several unused domain names”, there is no
evidence that such offer for sale was mistakenly made and the
Panel finds it
difficult to believe that such an “accident” could occur in a serious company and
in respect with a domain name over
which it allegedly has high interest.
Moreover, the Panel notes that according to the printout of the domain name
auctioneer’s website
filed by Complainant, the seller of the domain name was
Chris Tay, who according to Respondent is one of the board members of
Techtronics
Europe Limited. Mr. Tay is also listed as the Administrative
Contact for the domain name <eurosat.com> in one of the Whois
printouts filed by Complainant with the Complaint. If the Respondent’s assertions
are true, Mr. Tay is not a
simple employee of Respondent, but one of its
directors. Without evidence to the contrary, the Panel concludes that such
offer came
from Respondent and constituted an evidence of bad faith since the
asking price was of US$10,000, a sum that exceeds by far the documented
out-of-pocket costs directly related to the domain name, moreover when the
domain name has not been posted any content for a long
time. Several previous
Panels have found that this conduct is an evidence of registration and use of a
domain name in bad faith.
See Wal-Mart Stores, Inc. v. Kenneth E. Crews,
D2000-0580 (WIPO Aug. 30, 2000) (stating: “Respondent has offered the disputed
domain name for sale to the public on a commercial
website (GreatDomains.com)
in the business of auctioning domain names. There is nothing inherently
wrongful in the offer or sale
of domain names, without more, such as to justify
a finding of bad faith under the Policy. However, as the proprietor of the
auction
website used by Respondent advises its potential clients, the fact that
domain name registrants may legitimately and in good faith
sell domain names
does not imply a right in such registrants to sell domain names that are
identical or confusingly similar to trademarks
or service marks of others
without their consent. In several earlier administrative proceedings conducted
under the Policy, this
sole panelist has determined that offers to sell to the
public at large domain names that are identical or confusingly similar to
marks
of others may constitute bad faith within the meaning of paragraph 4(a)(iii) of
the Policy. This is based on the nonexhaustive
character of the express list of
bad faith factors in paragraph 4(b) of the Policy, and the lack of a
justification for awarding
financial gain to persons for the mere act of
registration of the marks of others”).
Therefore, the Panel finds that
Respondent registered the domain name at issue with the intention of preventing
Complainant from registering
a domain name with its trademark EUROSAT
accompanied with the “.com” suffix, which is the expected way in which
consumers look for
Complainant in cyberspace. Likewise, Respondent has
registered the domain name for sale for valuable consideration in excess of its
documented out-of-pocket costs directly related to the domain name. All these,
being Respondent perfectly aware of the existence
of Complainant’s legitimate
rights over the mark EUROSAT since at least 1997.
The above leads the Panel to conclude
that Complainant met its burden of proof in demonstrating that Respondent
registered and uses
the domain name at issue in bad faith.
DECISION
Complainant’s request is hereby GRANTED
and therefore the Panel orders that the domain name <eurosat.com>
be TRANSFERRED to Complainant.
Fernando Triana, Esq., Panelist
Dated: October 11, 2002
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