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Alta Berkeley Venture Partners v. AltaMart [2004] GENDND 810 (4 June 2004)

1. The Parties

The Complainant is Alta Berkeley Venture Partners, London, United Kingdom of Great Britain and Northern Ireland, represented by Faegre Benson Hobson Audley LLP, Solicitors of London.

The Respondent is AltaMart, Seoul, Republic of Korea. The Respondent is not represented.

2. The Domain Name and Registrar

The disputed domain name <altaberkeley.com> is registered with Tucows.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 21, 2004. On April 22, 2004, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On April 25, 2004, Tucows 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. The Center verified that 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 April 27, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was May 17, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 18, 2004.

The Center appointed the Honourable Sir Ian Barker QC of Auckland, New Zealand as the sole panelist in this matter on May 25, 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 is a venture capital house specializing in technology investment since 1982. It has backed over 100 companies in Europe and elsewhere, often through M&A transactions, generally of a cross-border nature. Over the last 10 years, it has assisted 20 companies to conduct national and public offerings in Europe and on NASDAQ.

It has no registered trademarks but has been well-known by the name Alta Berkeley in the United Kingdom, Europe, the United States and Israel. Since 1982, the total value of investments it has concluded has been more than US $250 million. It is the registrant of the domain name <alta-berkeley-com> the website for which provides information about the Complainant including mention of successful transactions, which it has effectuated. The Alta Berkeley brand features prominently on the website.

The Respondent does not operate a website using the disputed domain name. According to information recorded in an exchange of emails between representatives of the Complainant and the Respondent’s administrative contact in November 2003, the Respondent has registered a number of domain names using the word ‘alta’. He had 5,000 of these in 1998 but only 700 in 2003. The Respondent’s administrative contact acknowledged in an email of November 6, 2003, “I have known the alta-berkeley as a venture company”. He offered to sell the disputed domain name to the Complainant for a reasonable sum.

On March 1, 2004, the Complainant’s solicitors sent a ‘cease and desist’ letter to the Respondent, offering to pay his reasonable out-of-pocket expenses involved in acquiring the disputed domain name. These expenses were estimated at US $250. The Respondent did not reply to this letter.

5. Parties’ Contentions

Complainant

It is self-evident that the disputed domain name is identical to the common law trademark of the Complainant, with the very minor difference that there is no space between the word “Alta” and “Berkeley”. It is well-established that such minor differences are to be discounted in considering the identical or similar nature of trademarks and domain names.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. In particular, the Respondent has not demonstrated any evidence of use or demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. There is no evidence that the Respondent has been commonly known by the disputed domain name. The mark Alta Berkeley is original and fully distinctive of the Complainant’s business and there is no legitimate reason for its adoption by the Respondent.

The disputed domain name should be considered as having been registered and used in bad faith by the Respondent for the following reasons:

Exchanges between the Complainant and the Respondent indicate that the Respondent had registered or acquired the disputed name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs directly relating to the disputed domain name.

The Respondent appears to have adopted the name Alta Mart. In the exchange of e-mails, he indicated a wish to sell or lease the disputed domain name to the Complainant and has indicated that he has invested US$500,000 in his business – presumably the acquiring and selling of domain names.

On March 1, 2004, the Complainant’s lawyers wrote a ‘cease and desist’ letter to the administrative contact for the domain name which contained an offer to pay for reasonable out-of-pocket expenses that would have been incurred in obtaining the disputed domain name. No response was received to that letter.

There is no evidence that the disputed domain name was registered or being used in good faith. It is well established that “the concept of the domain name being used in bad faith” is not limited to positive action. Inaction is within the concept. (Telstra Corp. Limited v Nuclear Marshmallows, WIPO Case No. D2000-0003). This decision has been affirmed in various other decisions of other WIPO panels, including CBS Broadcasting, Inc v. LA-Twilight-Zone, WIPO Case No. D2000-0397 and Asia Pacific Breweries Limited v. Chris Kwan, WIPO Case No. D2003-0920.

6. Discussions and Findings

Paragraph 15(a) of the Rules instructs 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.”

The burden for the Complainant, under paragraph 4(a) of the Policy, is to show:

- that 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

- that the Respondent has no legitimate rights or interests in respect of the domain name; and

- that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant, having no registered trademarks, has to rely on establishing a common law mark. The evidence offered in this regard seemed to the Panel to be rather economical. Common law trademarks are often easy to infer in the cases of pop stars, authors or other prominent persons who market goods under their name. Common law marks for businesses are often demonstrated by articles in financial journals where the fame of the mark is recognized or by trade advertisements or brochures using the mark. It is not enough for the name of a person or business per se to be famous. The name of the business must be used as a mark in the marketing of the product. For a discussion of common law marks, particularly in the context of marks associated with famous persons, see the majority decision in R. E. ‘Ted” Turner and Ted Turner Film Properties LLC v. Mazem Fahmi, WIPO Case No. D2002-0251.

Here, the Complainant is assisted by the Respondent’s failure to make any submissions and the Respondent’s administrative contact acknowledgments in emails in November 2003, (a) “But I think altaberkeley.com is yours” and (b) “I have known the alta-berkeley as a venture company.” Consequently, the Panel is prepared to accept that the Complainant has a common law trademark for the words Alta Berkeley in respect of its business as a venture capital house.

Having thus found there to be a trademark, the disputed domain name is identical to it. Minor differences, such as one word instead of two, are not taken into account in forming this view. The first criterion is therefore proven.

Rights or Legitimate Interests

The Complainant gave the Respondent no legitimate rights or interest in respect of the disputed domain name. The fact, on its own, can be sufficient to prove the second criterion. Paragraph 4(c) of the Policy sets out matters which a Respondent is entitled to raise which, if found by a Panel to be proved after an evaluation of all evidence presented, could demonstrate a Respondent’s rights or legitimate interests to a domain name. None of these has been demonstrated, let alone raised. The second criterion is therefore proved.

Bad Faith

Likewise, bad faith has been patently demonstrated for the reasons outlined in the Complainant’s submissions. There is no doubt that the administrative contact, represented the Respondent. The Respondent acknowledged the reputation of the Complainant’s mark. There is no website developed. The disputed domain name is one of many harvested by the Respondent incorporating the word ‘alta’. The Respondent’s own admissions and conduct show that it registered and uses the disputed domain name for the purposes of selling it at a profit. It did not reply to the Complainant’s offer to transfer the domain name on payment of out-of-pocket expenses.

7. Decision

For the foregoing reasons, the Panel decides:

(a) That the domain name <altaberkeley.com> is confusingly similar to the trademark to which the Complainant has rights.

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

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

Accordingly, pursuant to paragraph 4(i) of the Policy and 15 of the Rules, the Panel requires that the registration of the domain name <altaberkeley.com> be transferred to the Complainant.

Hon. Sir Ian Barker QC
Sole Panelist

Date: June 4, 2004