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Generic Top Level Domain Name (gTLD) Decisions |
Euro Suisse International Ltd. v.
ElectroScan Impedus GmbH
Claim Number: FA0201000104195
PARTIES
Complainant
is Euro Suisse International Ltd.,
Moscow (“Complainant”) represented by Sarah
M. Wolf, of Arent, Fox, Kintner,
Plotkin & Kahn. Respondent is Christyna Puzluska of ElectoScan Impedus GmbH, Berlin (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <esil.com>,
registered with Tucows, 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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on January 31, 2002; the Forum received
a hard copy of the
Complaint on February 4, 2002.
On
January 31, 2002, Tucows, Inc. confirmed by e-mail to the Forum that the domain
name <esil.com> is registered
with Tucows, Inc. and that Respondent is the current registrant of the
name. Tucows, Inc. has verified that
Respondent is bound by the Tucows, 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
February 5, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of February 25, 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@esil.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification,
the Forum transmitted
to the parties a Notification of Respondent Default.
On
March 4, 2002, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the Forum appointed The
Honorable Charles K. McCotter,
Jr. (Ret.) as Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the Forum has discharged its responsibility
under Paragraph 2(a) of
the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to
employ reasonably available
means calculated to achieve actual notice to
Respondent.” Therefore, the Panel may
issue its decision based on the documents submitted and in accordance with the
ICANN Policy, ICANN Rules,
the Forum’s Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response
from Respondent.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
1.
The disputed domain name <esil.com>
is confusingly similar to
Complainant’s mark EURO SUISSE INTENATIONAL LTD. and ESIL. The domain name <esil.com> is identical to Complainant’s ESIL mark. Therefore, the disputed domain name does not distinguish itself
from Complainant’s trademarks.
2. Prior to allegedly establishing ElectroScan Impedus GmbH, a name that incorporates “esil,” Respondent has not
been known as <esil.com>.
Further, the passive use of <esil.com>
combined with the offer to the sell the domain name to Complainant does
not demonstrate a use of the disputed domain name in connection
with a bona
fide offering of goods and services nor is a legitimate noncommercial or fair
use. Therefore, Respondent cannot
demonstrate its rights to and legitimate interests in <esil.com>.
3. Respondent’s history of cybersquatting coupled with Respondent’s offer to sell the
disputed domain name to Complainant for $60,000 is evidence that Respondent
has
registered and used the disputed domain name in bad faith.
B.
Respondent
No
Response was received.
FINDINGS
Complainant is a subsidiary of the
international company Binatone, a leading manufacturer of household
appliances. Complainant has been in
business for more than four decades and has been known by consumers as EURO
SUISSE INTENATIONAL LTD. since
April 1, 1993.
Consumers have referred to Complainant as ESIL as early as December,
1996. Complainant has spent more than
$141,000 in the past five years advertising and promoting its products and
services. Complainant has won
recognition and acclaim as the champion of the Hong Kong Electrical Appliances
Design and Innovation Competition.
Complainant registered and began using
the domain name <esil.com> on October 13, 1996. Complainant used the domain name to redirect
users to its commercial headquarters website.
Complainant has spent considerable sums in printing costs incorporating
its ESIL mark. Complainant also
incorporated ESIL in its employees’ e-mail, “@esil.com.”
Due to miscommunication, Complainant lost
<esil.com> to the public domain on January 12,
2000. Sahar Sarid of Registral.com
registered <esil.com> on January 12, 2000. After months of attempting to regain its
rights to <esil.com> through Network Solutions, Complainant
contacted Mr. Sarid, stating that it was interested in the disputed domain
name. Mr. Sarid offered to sell <esil.com> to Complainant for $60,000.
Discusions between Mr. Sarid and Complainant continued for seven
months before January 30, 2002, when the disputed domain name was transferred
to the
current registrant, ElectroScan Impedus GmbH, with Christyna Puzluska as
the listed contact.
Complainant asserts that Mr. Sarid still
maintains control of <esil.com>. According
to Complainant, this type of transferring and cybersquating behavior by
Respondent is not new.
The website connected with the domain
name in dispute is currently “under construction” and displays a third party
search engine.
DISCUSSION
Paragraph 15(a) of 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.”
In view
of Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the Complainant's
undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate
pursuant to paragraph 14(b) of
the Rules.
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; and
(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
For nearly nine years, Complainant has
been known as EURO SUISSE INTENATIONAL LTD. and it has been known by its
abbreviation ESIL
for the last five years, therefore, Complainant has
established its rights in both marks. See
Keppel TatLee Bank v. Taylor,
D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of
the said name [“keppelbank.com”] in connection with
its banking business, it
has acquired rights under the common law); see also McCarthy on Trademarks and Unfair Competition, § 25:74.2, Vol. 4
(2000) (The ICANN dispute resolution policy is “broad in scope” in that “the
reference to a trademark or service
mark ‘in which the complainant has rights’
means that ownership of a registered mark is not required–unregistered or
common law trademark
or service mark rights will suffice” to support a domain
name complaint under the policy).
The <esil.com>
domain name is identical to
Complainant’s ESIL mark. Since use of a
generic Top-Level Domain is a requirement for registration of a domain name,
the gTLD “.com” that follows the Complainant’s
mark does not distinguish the
disputed domain name from ESIL. See
Pomellato S.p.A v. Tonetti,
D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to
Complainant’s mark because the generic top-level domain
(gTLD) “.com” after the
name POMELLATO is not relevant); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22,
2000) (finding that "the addition of the generic top-level domain (gTLD)
name ‘.com’ is . . . without
legal significance since use of a gTLD is required
of domain name registrants").
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Rights or Legitimate Interests
Respondent has failed to file a Response
in this matter. Therefore, the Panel
may presume that Respondent has
no rights or legitimate interests in <esil.com>. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as
an admission that they have no
legitimate interest in the domain names).
Based on the evidence provided,
Respondent’s only use of the disputed domain name was to offer to sell it to
Complainant for as much
as $60,000.
This use is not evidence of a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i). See J. Paul Getty Trust v. Domain 4 Sale
& Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or
legitimate interests do not exist when one has made no use of the websites
that
are located at the domain names at issue, other than to sell the domain names
for profit).
Complainant alleges that Respondent’s
purported company name is actually an alias to protect the actual disputed
domain name owner,
Sahar Sarid. Because there is no evidence presented to
the contrary, the Panel may accept Complainant’s assertion as true. See Talk City, Inc. v. Robertson,
D2000-0009, (WIPO Feb. 29, 2000) (“In the absence of a response, it is
appropriate to accept as true all allegations of the Complaint”). Thus the Panel concludes that Respondent is not commonly known as <esil.com> and Respondent has failed to satisfy Policy ¶
4(c)(ii). See Hartford Fire Ins. Co. v. Webdeal.com, Inc.,
FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights
or legitimate interests in domain names because
it is not commonly known by
Complainant’s marks and Respondent has not used the domain names in connection
with a bona fide offering
of goods and services or for a legitimate
noncommercial or fair use); see also 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).
Currently, the disputed domain name hosts
an “under construction” splash page and it is believed to have always been
“under construction.” This is hardly a
demonstration that Respondent is making a legitimate noncommercial or fair use
of the disputed domain name. Thus,
Respondent has failed to satisfy Policy ¶ 4(c)(iii). See BMW AG v.
Loophole, D2000-1156 (WIPO Oct. 26, 2000) (finding no rights in the domain
name where Respondent claimed to be using the domain name for a
non-commercial
purpose but had made no actual use of the domain name).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Registration and Use in Bad Faith
Respondent has passively held the
disputed domain name and its only apparent use was to offer it to Complainant
for $60,000. This is evidence that
Respondent’s registration is in bad faith as pursuant to Policy ¶ 4(b)(i). See
America Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat.
Arb. Forum Mar. 16, 2000) (finding bad faith where Respondent offered domain
names for sale); see also Grundfos
A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (failure to use the domain
name in any context other than to offer it for sale to Complainant amounts
to a
use of the domain name in bad faith); see also Randstad Gen. Partnet, LLC v. Domains For Sale For You, D2000-0051
(WIPO Mar. 24, 2000) (finding bad faith where the Respondent offered the domain
name for sale on its website <internetdomains4u.com>
for $24,000).
Respondent registered and used a domain
name that is identical to Complainant’s mark.
Respondent registered the disputed domain name the same day Complainant
mistakenly lost ownership control of the same disputed domain
name. Furthermore, Respondent was not commonly
known as <esil.com> at the time it registered the domain name in
dispute. This behavior by Respondent is
evidence that it registered and used the disputed domain name in bad faith as
outlined in Policy ¶
4(b)(iv). See Reuters Ltd. v. Global Net 2000, Inc.,
D2000-0441 (WIPO July 13, 2000) (finding bad faith where the Respondent
attracted users to a website sponsored by the Respondent
and created confusion
with the Complainant’s mark as to the source, sponsorship, or affiliation of
that website).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that the requested relief
be hereby granted.
Accordingly, it is Ordered that the
domain name <esil.com> be transferred from Respondent
to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.) as Panelist
Dated: March 11, 2002
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