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THE One Retail Network (International) Limited v. DynaComware Taiwan Inc. [2004] GENDND 1239 (2 September 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

THE One Retail Network (International) Limited v. DynaComware Taiwan Inc.

Case No. D2004-0528

1. The Parties

The Complainant is THE One Retail Network (International) Limited, Queensway, Gibraltar, of United Kingdom of Great Britain and Northern Ireland, represented by Denton Wilde Sapte, United Arab Emirates.

The Respondent is DynaComware Taiwan Inc., Nankang, Taipei, Taiwan, Province of China, represented by Max Kao of the same address.

2. The Domain Name and Registrar

The disputed domain name <theone.com> (the “domain name”) is registered with Network Solutions LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2004. On July 20, 2004, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name. On July 21, 2004, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant, and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 25, 2004. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 26, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was August 15, 2004. The Response was filed with the Center on August 15, 2004.

The Center appointed Warwick Smith as the sole panelist in this matter on August 19, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant

The Complainant has been established since 1995, and it operates a furniture and home accessories retail business. The Complainant appears to have commenced its operations with the opening of a furniture outlet in Abu Dhabi in September 1996. Newspaper reports produced by the Complainant show that a second store was opened in Dubai in April 1997. The first year or so of operations in the United Arab Emirates were commercially successful – some thousands of product lines were sold through the Complainant’s stores, including kitchen, dining, living, and bathroom accessories, together with room settings and many different styles of contemporary furniture.

The Complainant’s stores were known as “THE One,” with the letters “T.H.E.” standing for ‘Total Home Experience.” The initial operation in Abu Dhabi appears to have been on a large scale – one newspaper report stated that the store would be the biggest of its kind in the United Arab Emirates.

The Dubai store was also known as “THE One,” and appears to have operated on lines similar to the original Abu Dhabi store. Generally, the business strategies appear to have focused on sourcing high quality products from around the world, cutting out “the middle man,” and providing the products in very large stores at relatively low prices.

It appears that a second Abu Dhabi store was opened in May 2001. This store was said to be “the fourth in a chain of home accessories stores launched in the UAE by partners Thomas Lundgren and Rashid Mohammed Al Mazroui.” It appears from the material produced by the Complainant, that a further store was opened in Sharjah in October 2002. A Khaleej Times article dated October 26, 2002, reported plans for further stores to be opened in Quatar and Kuwait by the end of 2002. The Khaleej Times article of October 26, 2002, quoted the Complainant’s managing director as saying: “Middle East expansion has always been core to our overall business strategy … The One offers … a variety of different themes from 108 vendors in 41 different countries ….”

The Complainant says that it has extensively advertised and promoted its trademark “THE One,” and that the mark has been prominently featured in print media including magazines such as Friday, Retail Property, Insight, Time Out, Emirates Home, The magazine 2, Identity, All Woman, Emirates Woman, Al Yaqaza, and in newspapers such as Gulf News, Gulf Today, Khaleej Times, Al Ttihad, Al Bayan, and Al-Rayah. The Complainant says that its trademark has also been advertised electronically through television and the Internet, and says that “such advertisements have been circulated worldwide using publications and electronic media.” The Complainant says that, because of its continuous advertising efforts, its trademark has become well-known worldwide and now enjoys an impeccable reputation and goodwill in the minds of the “consuming public internationally” as well as “with members of the trade world-wide.”

The Complainant’s Trademarks

The Complainant has produced evidence of numerous trademark applications and registrations, in a number of countries. One such registration is a device mark registered in Bahrain with effect from March 29, 2003, in respect of services in international class 42. This mark consists of a dark square with the words “THE ONE” in white capitals against the darker background. The word “THE” appears in large capitals with the letters going from left to right as one looks at the mark; however, the word “ONE” is in much smaller script, appearing immediately to the right of the letter “E” in the word “THE,” and vertically with the “O” of the word “ONE” at the bottom and the “E” at the top. Other registered marks include ‘THE ONE TOTAL HOME EXPERIENCE,” registered in Kuwait and Lebanon, again in respect of services in class 42, and there are various registrations of “THE ONE TOTAL EXPERIENCE” in the United Arab Emirates and in Japan. The Japanese registration is effective from August 7, 2003, and covers a variety of goods in international classes 20 and 21. Again, the registered mark is a device mark, with the word “ONE” appearing vertically as described above in respect of the Bahrain registration.

The Complainant has other registered marks incorporating the expression “The One,” including “THE ONE MUSIC,” in the United Arab Emirates. However, the only evidence of a registration outside the Middle East, is the Japanese registration referred to above.

The Complainant has produced a schedule showing the status of its various trademark registrations and applications as at July 13 2004. Apart from the Middle Eastern countries, there appear to be applications pending in the European Union for a stylized version of “THE ONE TOTAL HOME EXPERIENCE,” and applications to register that mark have also been filed in Canada and the United States. The applications were filed in the European Union on August 20, 2002, in Canada on November 8, 2002, and in the United States on April 14, 2003. Applications have also been filed in various other countries. With regard to an application for the stylized mark THE ONE TOTAL HOME EXPERIENCE in China, the Complainant has noted: “Application was filed. Awaiting particulars.” In Taiwan, where the Respondent appears to be domiciled, the Complainant’s trademark summary of its applications in classes 20 and 21 reads: “TORN [an abbreviation for the Complainant’s name] gave instructions, preparing for filing.”

The Respondent and the Domain Name

The domain name was first registered on April 23, 1995, apparently before the Complainant corporation was established. It is not clear who effected that first registration of the domain name, but it seems from the Response that it was not the Respondent.

The Respondent says that on October 19, 2001, its affiliated company Dynalab (S) Limited entered into an agreement to purchase the stock in a corporation known as TheOne Technology Group Inc. The Respondent says that one of the assets of TheOne Technology Group Inc was the domain name, but acquiring the domain name was not the main target of the transaction. The Respondent says that, due to the fact that its affiliated company which acquired the stock in TheOne Technology Group Inc. had no “MIS” manager, the domain name was controlled and managed by the “MIS” manager of the Respondent.

The Respondent has attached a copy of the document which is said to be the stock purchase agreement. The document is dated October 19, 2001, and Dynalab (S) Limited, a company established under the laws of Singapore, is described as the buyer. TheOne Technology Group Inc., a company established under the laws of the State of California, USA, is described as the “target,” and the sellers were the individual stockholders in TheOne Technology Group Inc. whose names were shown in the agreement. The agreement provided for the buyer to acquire all outstanding target shares owned by the sellers. As a result, TheOne Technology Group Inc. was to become a subsidiary of Dynalab (S) Limited.

The consideration for the sale of the sellers’ shares in TheOne Technology Group Inc., was the issue to the sellers of 4,250,000 common shares in Dynalab (S) Limited. The agreement contained detailed warranties and other clauses which one would expect in a complex commercial transaction such as that, and it appears to have been signed on behalf of all parties.

Exhibit ”B” to the agreement lists the target company’s two subsidiaries, as (i) a company whose name is described in Chinese or Japanese characters followed by “theone.com” and (ii) ”Theone.com (HK) Co Ltd.”

Clause 6.6 of the agreement for sale and purchase of stock contained an acknowledgement by Dynalab (S) Limited that it had represented to the sellers of the stock that Dynalab (S) Limited and its subsidiaries were then undergoing “a spin-off” of certain of their Business and assets, including certain Intellectual Property Rights belonging to them, into DynaComware Corporation, a company established under the laws of Japan. Under that “spin-off,” it appears that each shareholder of Dynalab (S) Limited was to be entitled to subscribe, at a nominal price, for such number of the shares of DynaComware as would be sufficient to provide the shareholder with an equal percentage of DynaComware and Dynalab (S) Limited’s share capital. Clause 6.6 provided that the sellers would also be entitled to participate in the “spin-off,” and subscribe for the shares in DynaComware.

The Respondent says that TheOne Technology Group Inc. did operate a website at the domain name, on which it demonstrated its products with respect to “work flow” systems. The Respondent says that following the stock acquisition Dynalab (S) Limited tried to maintain TheOne Technology Group Inc’s product, but the market situation was not good and the website was closed a few months later. Thereafter, it appears that the domain name has not been linked to any Internet location. The Respondent says that Dynalab (S) Limited was planning to demonstrate an internet-related new product by connecting the domain name to a website, but that the development of its new product has taken a long time.

Pre-commencement Correspondence between Complainant and Respondent

On December 17, 2003, the Complainant’s Mr. Pereira sent an email to the administrative contact for the domain name, advising that the Complainant had registered the domain name <theoneme.com>, and was “exploring the possibility” of obtaining the domain name. Mr. Pereira asked a number of questions in the email, including whether the domain was active, and whether it might be available for sale in the near future. The administrative contact for the domain name responded on the same day, referring Mr. Pereira to a Mr. Zak Chiu as the person with whom Mr. Pereira should deal. The administrative contact then passed on Mr. Chiu’s response, advising that the domain name was then idle. Mr. Chiu’s response continued: “so please offer your price then I can report to our shareholder to decide sale that or not.”

There appears to have been some telephone communications between the parties, but details of those contacts have not been provided to the panel. However, two emails have been produced by the Complainant, in which Mr. Chiu first confirmed that the Respondent would be prepared to sell the domain name for US$100,000, and then advised that the sale price could not be anything less than that price.

In its Response, the Respondent says that the Complainant aggressively pushed Mr. Chiu to make an offer for sale on the telephone, on several occasions. The Respondent says that the purpose of offering a price as high as US$100,000 was to try to prevent the Complainant from disturbing Mr. Chiu or the Respondent any further. The Respondent says that if the price were accepted, Dynalab (S) Limited could simply dispose of the domain name as an idle asset, as any business entity might do.

The Respondent says that before “the aggressive correspondences” of the Complainant, the Respondent had received many enquiries regarding the selling of the domain name, but had ignored them all. It says that it has never offered the domain name for sale, although there are many companies in the world having “the one” as a conspicuous part of their names who have asked the Respondent to assign the domain name.

In an annexure to the Response, the Respondent has provided copies of three emails in which enquiries have been made relating to the possible acquisition of the domain name. One such email, from a Mr. Jensen in November 2003, simply expressed interest in acquiring the domain name. An email from a corporation describing itself as “TheOne’s Corp.,” also in November 2003, advised that the author’s corporation was a major force in the online media industry in South Korea. The email stated that the corporation’s business was launched in December 1996, as “The One’s Corp.” The email, directed to the administrative contact for the domain name, enquired whether the Respondent intended to sell.

The final email, dated November 11, 2003, was from “Sabrina,” and stated that the author lived in Canada. The email said that Sabrina liked the domain name, but had noted that there was no website linked to it. Sabrina enquired if the Respondent would consider selling the domain name to her, and concluded: “I would be happy to pay you for holding the domain name and your troubles.”

On February 10, 2004, the Complainant’s legal representatives wrote to the Respondent. The letter asserted that the Complainant was the owner of various trademarks which included the expression “THE ONE” in several classes of goods and services, and referred to the recent offer by the Respondent to sell the domain name for $US100,000. The letter went on to refer to the Policy, and sought certain undertakings relating to passing off or any other infringement of the Complainant’s alleged rights in the trademarks. The letter also formally requested an immediate transfer of the domain name to the Complainant. The Complainant’s representatives’ letter proposed a consideration of US$1 plus out-of–pocket expenses in respect of the original registration of the domain name. In default of the provision of the undertakings and documents by February 24, 2004, the letter advised that legal proceedings, including proceedings under the Policy, would follow. The Respondent made no response, and this administrative proceeding was commenced on July 18, 2004.

5. Parties’ Contentions

A. Complainant

1. The Complainant is the rightful owner of the domain name, as the owner of several trademarks either identical to or very similar to the domain name, notably “THE ONE,” “THE ONE TOTAL HOME EXPERIENCE,” and “THE ONE MUSIC.”

2. The Respondent is not using the domain name and has no legitimate reason to hold the domain name.

3. The Respondent registered the domain name specifically for the purpose of selling the domain name to the Complainant at a gross profit. The Respondent has offered the domain name for sale to the Complainant for US$100,000.

4. The Complainant has not consented to the Respondent using its trademarks.

5. The [sic] Complainant has not made any use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services.

6. The domain name has been registered in order to prevent the Complainant from reflecting its trademarks in a corresponding domain name, and with the intention of making a huge commercial gain.

B. Respondent

1. The Respondent accepts that the domain name “seemed to be identical or confusingly similar to the conspicuous part of the trademarks or service mark … in which the Complainant has rights.”

2. Registration of the domain name provides the Respondent with world-wide rights, whereas trademark rights are only effective and enforceable in respect of the country in which they are registered.

3. The Respondent cannot know if any entities in other countries have registered trademarks containing the expression “the one” as a conspicuous part, if the Respondent does not intend to apply for such trademark.

4. The domain name was created and registered on April 23, 1995, whereas all of the Complainant’s trademarks were applied for after the year 2000. Since the Complainant’s trademark rights were created later than the domain name, the Respondent “doubts if the purpose of the Complainant to register such trademarks is to dispute” the domain name.

5. The Respondent has the right to hold the domain name by reason of the stock acquisition agreement of October 19, 2001, and the arrangement with the affiliated company Dynalab (S) Limited that the domain name should be controlled by the Respondent.

6. TheOne Technology Group Inc. did use the domain name to demonstrate its “work flow” product on a website, and for a few months after the acquisition Dynalab (S) Limited continued to operate the website established by TheOne Technology Group Inc.

7. Dynalab (S) Limited was planning to demonstrate its new internet related product by connecting the domain name to a website, but the development of the new product has taken quite a long time and the domain name has therefore been idle in the meantime.

8. TheOne Technology Group Inc. was commonly known by the domain name, and it has been acquired by Dynalab (S) Limited. As a result of the merger and acquisition, the Respondent has a legitimate property right in the domain name. Although it is not currently being used, the Respondent has a legitimate interest in it, namely the interest in using it in respect of any new product at any time.

9. Neither Dynalab (S) Limited nor the Respondent has been a competitor of the Complainant, and neither has tried to sell the domain name to any competitor of the Complainant.

10. The Respondent did not acquire the domain name for sale to any party, to disrupt any party’s business, or to confuse anyone’s trademark or service mark.

11. The threats of the Complainant, including the letter sent in February 2004, constitute reverse domain name hijacking.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving:

(i) That the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) That the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) That the domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:

(i) circumstances indicating that [the respondent has] registered or 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 [the respondent’s] documented out-of-pocket costs directly related to the domain name; or

(ii) [the 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 [the respondent has] engaged in a pattern of such conduct; or

(source, sponsorship, affiliation, or endorsement of [the respondent’s] website

(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the or location or of a product or service on [the respondent’s] website or location.

Paragraph 4(c) of the Policy sets out a number of circumstances, again without limitation, which may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, the disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:

(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or 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) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) Where [the 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.

Paragraph 15(a) of the Rules requires the 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.”

A. Identical or Confusingly Similar

The Complainant has established this part of the Complaint.

The Complainant has shown that it has rights in the stylized mark THE ONE registered in Bahrain, and in the Panel’s view the domain name is confusingly similar to that registered mark. The most prominent part of that registered mark is made up of the words “The One,” and of course those two words, together with the generic “.com” suffix, make up the domain name.

The Panel notes also that the Respondent appears to accept that the domain name is confusingly similar to various marks in which it acknowledges that the Complainant has rights.

B. Rights or Legitimate Interests, and Registered and Used in Bad Faith (Policy, paragraphs 4(a)(ii) and (iii))

The Panel is of the view that the Complainant has failed to prove that the domain name has been registered and is being used in bad faith. The Complaint must be dismissed on that account, and there is no need for the Panel to deal with the question of whether the Respondent enjoys some right or legitimate interest under paragraph 4(a)(ii) of the Policy. The Panel has reached that view for the following reasons:

B1. The domain name was first registered as long ago as April 23, 1995. The Complainant has failed to show that it was even in existence at that stage. It did not open its first retail outlet (in Abu Dhabi) until 1996. There could be no complaint, then, about the original registration of the domain name – it could not have been registered in bad faith as far as the Complainant is concerned.

B2. From the evidence produced by the Respondent, it appears most likely that the domain name was originally owned by TheOne Technology Group Inc., an American Corporation which appears to have owned subsidiary companies called “theone.com” and “theone.com (HK) Co Limited”. From the evidence produced, it appears that TheOne Technology Group Inc. had a perfectly legitimate interest in the domain name, and operated a website linked to the domain name until in or about October 2001 when the TheOne Technology Group Inc. became a subsidiary of Dynalab (S) Limited.

B3. The transaction under which Dynalab (S) Limited acquired the stock in TheOne Technology Group Inc., appears in reality to have been a merger, where the vendors’ shares in TheOne Technology Group Inc. were effectively exchanged for shares in Dynalab (S) Limited.

B4. The Panel refers to paragraph 6.6 of the stock purchase agreement, which provided amongst other things:

(i) That Dynalab (S) Limited was in the process of transferring certain intellectual property rights belonging to it and its subsidiaries, into a corporation known as “DynaComware” Corporation, a company established under the laws of Japan.

(ii) The stockholders of DynaComware Corporation would be precisely the same individuals, in precisely the same shares, as the owners of Dynalab (S) Limited itself.

(iii) The sellers of shares in TheOne Technology Group Inc., who would be entitled to receive as consideration shares in Dynalab (S) Limited, would be entitled to take stock in DynaComware Corporation on the same basis. The result would appear to be that the same persons would own all stock in both Dynalab (S) Limited and DynaComware Corporation.

B5. The overall thrust of the Respondent’s evidence, including the stock purchase agreement, appears to be that the domain name was intended to remain in the ownership of the same corporate group, which following the stock purchase transaction, would be headed by the individual stockholders in Dynalab (S) Limited. The Respondent says that, for reasons of administrative convenience, it was decided that the domain name should be registered to the Respondent, being an affiliate company within the group. The Panel is not in any position to reject that explanation.

B6. According to the Respondent, the website at the domain name was operated for a few months after the stock purchase transaction in October 2001. The Panel is not told exactly when the domain name was registered to the Respondent, and the Panel can only speculate that it was probably some time around the time of the stock purchase agreement (but certainly not before then).

B7. All of the foregoing suggests that the Respondent may well have had a legitimate interest in the domain name when it acquired the domain name. However, the Panel prefers to ground its decision on the alternative basis that the Complainant has failed to prove that the Respondent was guilty of bad faith at the time it registered the domain name. The onus of proof rests on the Complainant, and the evidence falls short of establishing bad faith.

B8. The Complainant’s primary argument for a finding of bad faith registration and use, is based on the Respondent’s offer to sell the domain name in December 2003, for US$100,000. That amount would certainly be far in excess of the Respondent’s out-of-pocket costs directly related to the domain name, and if the evidence were sufficient to establish that the Respondent had acquired the domain name primarily for the purpose of selling it to the Complainant at that figure, the Panel may well have been prepared to find bad faith registration and use of the kind described in paragraph 4(b)(i) of the Policy, established. But for paragraph 4(b)(i) to apply, the Complainant would have to show that the Respondent had the bad faith purpose at the time it acquired the domain name. The offer to sell at US$100,000 was made over 2 years after the stock purchase agreement, and the Respondent has put forward an explanation for the acquisition of the domain name as part of the corporate restructuring (of which the stock acquisition agreement formed part). The Panel is not in a position in an administrative proceeding such as this, to reject the Respondent’s explanation as false.

B9. The Respondent’s explanation of the US$100,000 figure, is that it did not really want to sell the domain name, and that Mr. Chiu provided that sale figure purely as a means of putting the Complainant off. The Respondent says that, if the Complainant had agreed to pay the US$100,000, well and good – it would have been a good price for an idle asset. But, the Respondent says, it didn’t really want to sell, and its first wish was for the Complainant to leave it alone. The Panel does have some reservations about that explanation, and particularly why it appears that the various offers and approaches made to purchase the domain name were not made until November or December of 2003. If there was such demand for the domain name, why did the Respondent not produce evidence of approaches made to it soon after the stock purchase agreement was entered into in 2001?

At the end of the day, while the Panel entertains doubts on that matter, it is not the Respondent who carries the onus of proof. The Complainant must prove each element of paragraph 4(a) of the Policy, and it has failed to do so.

B10. The Panel notes also that there does not appear to be any evidence of the Complainant’s products having been sold in Taiwan, or advertised there. From the material produced by the Complainant, the Panel’s impression is that the Complainant’s business was largely centered in the Middle East, and in particular in the United Arab Emirates. However, the Panel does not wish to put too much weight on that point. The stock purchase agreement appears to show that the Respondent is part of a corporate group with a presence in Singapore and Japan, as well as in Taiwan, and the Respondent has not expressly denied that it was aware of the Complainant and its trademarks at the time it acquired the domain name.

On the evidence as a whole, the Panel is not satisfied that the Complainant has discharged the onus of proving bad faith on the part of the Respondent at the time of its acquisition/registration of the domain name. There was some faint suggestion in the Complaint that the domain name was registered in order to prevent the Complainant from reflecting its trademarks in a corresponding domain name, but there is no evidence of that, and no evidence of a “pattern of conduct” which the Complainant would have had to prove to bring the case within paragraph 4(b)(ii) of the Policy.

7. Reverse Domain Name Hijacking

The Panel is not prepared to make a finding of reverse domain name hijacking, or bad faith on the part of the Complainant in commencing this proceeding.

Reverse domain hijacking is defined in the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” The onus of proving bad faith is on the respondent. Mere lack of success of the Complaint will not be enough. (See for example, the decision of the three-member WIPO Panel in Sustainable Forestry Management Limited v. SFM.com and James M. van Johns WIPO Case No. D2002-0545).

In this case, the Complainant was concerned with a situation where a registered domain name was obviously confusingly similar to a registered trademark which it owned. The domain name was not being used, and, as far as the Panel knows the Complainant could not have been aware of the circumstances of the stock purchase agreement dated October 19, 2001. When the Complainant approached the Respondent, it was met with a sale price of US$100,000, which on its face appeared to be excessive for a domain name which was not then being used. The Complainant’s legal representatives then wrote to the Respondent pointing out the provisions of the Policy, and at that point the Respondent had a clear opportunity to explain to the Complainant’s representatives why the Respondent had a legitimate interest in the domain name. Instead the Respondent elected to ignore that letter.

In all those circumstances, while the Complaint must fail for the reasons outlined, the situation falls far short of reverse domain hijacking, and that allegation is rejected.

8. Decision

For all the foregoing reasons, the Complaint is denied. The allegation of reverse domain name hijacking is also dismissed.

Warwick Smith
Sole Panelist

Dated: September 2, 2004