DECISION

William E. Strum v. Nordic Net Exchange AB

Claim Number: FA0112000102843

PARTIES

The Complainant is William E. Strum, Cabin John, MD (“Complainant”) represented by Karl W. Means, of Shulman, Rogers, Gandal, Pordy & Ecker, P.A.  The Respondent is Nordic Net Exchange AB, Lulea, SWEDEN (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <netx.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.

Richard Hill as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on December 12, 2001; the Forum received a hard copy of the Complaint on December 13, 2001.

On December 14, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <netx.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. 5.0 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 December 14, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 3, 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@netx.com by e-mail.

A timely Response was received and determined to be complete on January 3, 2002.

Additional submissions were received on January 9, 2002, and January 11, 2002.

On January 21, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill as Panelist.

On January 25, 2002, the Panel issued the following order:

The Panel has examined the pleadings and evidence submitted in case FA 102843, <netx.com>.

In accordance with Paragraph 12 of the ICANN Rules, the Panel requests the parties to provide by Thursday January 31, 2002 the following:

1) The Complainant is to provide evidence that it sent a cease and desist letter and that such letter was returned. Copies of the letters and any non-delivery notices must be provided.

2) The Respondent is to provide evidence that it has written to Mr. W. E. Strum or his counsel.  Copies of the letters and any replies must be provided.

Attention is drawn to Paragraph 14(b) of the Rules, under which the Panel may draw such inferences as it considers appropriate from any failure to comply with this request.

In addition, on the same date, the Forum sent the following communication to both parties:

The Respondent did not send the registration for the NETX Company referenced in his Additional Response under 3(h).  The Panel has requested that the Respondent now provide this registration within five business days.  Please provide a copy of this registration no later then February 1, 2002.  You must also provide a copy to the Complainant.

On January 31, 2002 the Complainant provided the information requested by the Panel.  There was no response from the Respondent.

On February 1, 2002, the Forum again sent a request to Respondent, asking for the requested information.  The request was sent by E-Mail, Fax, and physical mail.  The Respondent was given a deadline of February 15, 2002, to provide the requested information.

On the same date, at the request of the Panel, the Forum extended the deadline for filing of the decision to February 22, 2002.

As of February  21, 2002, no response was received from the Respondent.

RELIEF SOUGHT

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that it adopted and began using the trademark NET X on December 12, 1994 for computer services.  The mark was registered in the USA on May 29, 2001.

Complainant contends that the Respondent has no rights or legitimate interests in the contested domain name because:

· The Respondent cannot satisfy any of the factors of paragraph 4(c) of the ICANN Policy.

· The Respondent maintains no accessible web site at the contested domain name, and thus makes no use of the domain name in connection with any bona fide offering of goods or services.

· The Respondent is not commonly known by the contested domain name.

· The Respondent cannot show that it is making a legitimate use of the contested domain name.

Complainant contends that the Respondent has registered and used the contested domain name in bad faith because:

· It has not made use to date of the contested domain name.

· The registration information provided to the Registrar was false with respect to the telephone number and Registrant’s business address.

B. Respondent

The Respondent’s initial response is reproduced in extenso here:

Dear Michelle,

Unfortunately I just received your emails regarding "this case". My obvious statements are as follows:

1. I have many times in writing told Mr W E Strum that netx.com is used but not currently as an accessable [sic] web site and that the domain name are under no sircumstances [sic] for sale or transferable.

2. The domain name has been owned during a long period of time and are protecting an IPR with a current value at 3 mUSD (in the books of one of the IPR owner ship co's [sic]).

3. The first company we registred 1996 is a Swedish Co:

Organisationsnr Företagsnamn (Firma) Företagsform Län Status

556533-8166 NETX Nordic Net Exchange Aktiebolag  AB  01

the business is to own, build and offer trading in securities services globaly [sic] to brokers nad [sic] banks within the capital market.

4. We also registred [sic] a UK based co during 2000 Netx.com Ltd

I don't know why Mr W E Strum is running this show? Please let me know if I you need anything else from me.

Kind regards

Anders Halldin, Partner

C. Additional Submissions

Complainant

In its additional submission of January 9, 2002 the Complainant contends that the Respondent’s Response is not a proper Response and should be declared inadmissible by the Panel.  The reasons given are:

· The Response violates paragraph 5(b)(i) of the Rules because it fails to respond specifically to the Complaint.

· The Response violates 5(b)(ii) of the Rules because it does not contain the name and coordinates of the Respondent, and because it is not clear on what basis the author of the Response is connected to the Registrant.

· The Response violated 5(b)(iii) of the Rules because it does not specify the preferred means of communication.

· The Response violates 5(b)(iv) of the Rules because it does not indicate a preference for panel type.

· The Response violates 5(b)(vi) of the Rules because it does not indicate if any other legal proceedings have been commenced or terminated.

· The Response violates 5(b)(vii) of the Rules because it does not state that a copy of the Response has been sent to Complainant.

· The Response violates 5(b)(viii) of the Rules because it does not include the statement required in conjunction with the signature of the Respondent.

· The Response violates 5(b)(ix) of the Rules because it does not include evidence to support the allegations it makes.

Respondent

On January 11, 2002, the Respondent submitted an additional response, in which it stated that Mr. Anders Halladin is a board member and founder and partner of NETX Nordic Net Exchange AB, as shown in the registration evidence for that company.  However, the referenced registration evidence was not attached.  The Respondent failed to provide the referenced registration despite the requests made by the Forum on January 25 and February 1.

The Respondent provided a complete mailing address and noted that since the proceedings were being conducted by E-Mail, he had not received any signed documents.

FINDINGS

The Complainant holds, since 29 May 2001, a valid US trademark for “NET X”.  Although the Complainant has not presented any evidence to that effect, the Panel is willing to accept its assertion that it used that mark in commerce, and thus had a US common law trademark, as early as December 12, 1994.

Respondent registered the contested domain name on October 7, 1996.

Respondent has not provided any evidence to support its claim of valid registrations in Sweden and the UK for companies which incorporate the string “NETX” in their company name.  And this despite two requests from the Forum that it provide such evidence.  Indeed, the Panel has allowed over four weeks for the Respondent to supply the requested information, but he has not done so.

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 and 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) 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.

Before addressing the substantive issues, the Panel must rule on the procedural issues raised by the Complainant, in particular its request to declare inadmissible the initial Response.

Procedural Issues

According to paragraph 10 of the Rules:

(a) The Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules.

(b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.

…

(d) The Panel shall determine the admissibility, relevance, materiality and weight of the evidence.

The Complainant is correct when it states that the initial Response violates a number of mandatory conditions of paragraph 5 of the Rules.  However, it is clear from 10(d) that the Panel is free to determine whether any such violations should result in the Response being judged inadmissible or instead simply consider the deficient Response on its merits, holding that the Respondent has weakened its case if it does not comply with the provisions of the Rules.

In light of 10(b), this Panel rules that ruling a Response inadmissible because of formal deficiencies would be an extreme remedy not consistent with the basic principles of due process, and this especially considering that in this case the Respondent is neither a lawyer nor a native English speaker.

The Panel thus rules the Response admissible.

Identical and/or Confusingly Similar

It is clear that the domain name <netx.com> is identical or confusingly similar to the Complainant’s trademark NET X.

Rights or Legitimate Interests

To support its argument that the Respondent’s lack of use of the contested domain name indicates that the Respondent has no rights or legitimate interest in that domain name, the Complainant cites WIPO case D2000-0003 <telstra.org>, WIPO case D2000-0119 <ccom.com>, WIPO case D2000-0004 <americanvintage.com>, and the Forum’s case FA 94798 <muggles.org>.

In the cases D2000-0003 and D2000-0004 there was no response.  Thus those cases must be distinguished from the present case.  Indeed, in the absence of a Response, the Panel is entitled, in accordance with Paragraph 14(b) of the Rules, to draw such inferences as it considers appropriate from the failure to respond.  That is, in the absence of a Response, the Panel is free to make inferences from the very failure to respond and thus to assign greater weight to certain circumstances than it might otherwise do.  In the present case, the Respondent states that it is using the contested domain name, but not as a publicly accessible web site.

The case D2000-0199 cites D2000-0004 to support its finding that lack of use denotes bad faith registration.  But, as noted above, there was no response in D2000-0004, so that case must be distinguished from the present case.

The last case cited, FA 94798, must also be distinguished from the present case, because in that case the respondent argued “that he registered the domain name for personal use and to maintain a personal Web Site thereon because he has personally been commonly known by the nickname "muggles" by his family and friends since childhood and he has simply not had the time to construct such a site as of the date of the response, June 26, 2000”.  It is clear that a claim of legitimate interest based on a childhood nickname is not in any way comparable to a claim based on a company registration and actual business activity, which is the Respondent’s claim in the present case.

Thus this Panel holds that the case law cited by the Complainant is not pertinent to this case.

The Complainant argues that the fact that the Respondent fails to meet any of the factors of paragraph 4(c) of the Policy is sufficient to prove lack of legitimate interest.  However, those factors are given “in particular but without limitation”, so it is not sufficient to prove that the Respondent does not meet those particular factors.  On the contrary, in accordance with 4(a) of the Policy, the Complainant has the burden to prove that the Respondent has no rights or legitimate interest in a broad sense.

Complainant has, in this case, met that burden of proof by showing that the Respondent does not appear to be operating any sort of legitimate business, and is not otherwise using the contested domain name.

The Respondent has alleged that it is operating a business, but has failed to provide any evidence to support that contention.  Worse, the Respondent’s behavior (failure to respond to the Panel’s requests) is not consistent with the behavior of a legitimate business.

In accordance with Paragraph 14(b) of the Rules, the Panel may draw such inferences as it considers appropriate from any failure to comply with its requests for information.

In this case, the Panel infers from the Respondent’s failure to reply that the Respondent has no legitimate interest in the contested domain name.

Registration and Use in Bad Faith

In accordance with Paragraph 14(b) of the Rules, the Panel may draw such inferences as it considers appropriate from any failure to comply with its requests for information.

In this case, the Panel infers from the Respondent’s failure to supply the registration certificate that he referenced in his Response that such a certificate is not available.  That is, the Panel infers that the Respondent supplied misleading information to the Panel.

Giving misleading information to the Panel is clearly an example of bad faith behavior.

Although there is no evidence of any of the circumstances of Paragraph 4(b) of the Policy, those circumstances are given “in particular and without limitation”.  That is, the Panel is free to hold that other factors may be evidence of registration and use in bad faith.

In this case, there is evidence of the following:

· The Respondent is hard to reach and does not always reply to communications, even when served by multiple methods (E-Mail, FAX, physical letter).

· The Respondent has made misleading statements concerning his business activities.

After carefully weighing all the evidence available, the Panel holds that the Respondent has registered and is using the contested domain name in bad faith.

DECISION

The Panel holds that the Complainant has proven that the contested domain name <netx.com> is confusingly similar to its trademark NET X, that the Respondent has no rights or legitimate interests in the contested domain name, and that the Respondent has registered and used the contested domain name in bad faith.  The Panel orders the contested domain name <netx.com> to be transferred to the Complainant.

Richard Hill, Panelist

Dated: February 21, 2002

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