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Givi Srl and G. Visenzi Motomarket Srl v. Anup Shahi [2005] GENDND 1317 (11 July 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

Givi Srl and G. Visenzi Motomarket Srl v. Anup Shahi

Case No. D2005-0392

1. The Parties

The Complainants are Givi Srl and G. Visenzi Motomarket Srl, of Flero (BS), Italy, represented by Alessandra Sberna, Italy.

The Respondent is Anup Shahi, of Richmond, British Columbia, Canada, represented by Richard Uditsky of Mendelsohn, Montréal (Québec) Canada.

2. The Domain Name and Registrar

The disputed domain name <givi.com> is registered with NameScout Corp.

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 14, 2005. On April 15, 2005, the Center transmitted by email to NameScout Corp. a request for registrar verification in connection with the domain name at issue. On April 18, 2005, NameScout Corp. 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”).

3.2 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 22, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 12, 2005. The Response was filed with the Center on May 10, 2005.

3.3 The Center appointed Anthony R. Connerty as the sole panelist in this matter on May 24, 2005. 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.

3.4 On June 6, 2005, Pursuant to Rule 12, the Panel by Procedural Order No.1:

(i) requested that the Complainants respond to certain matters set out in the Response and in the accompanying affidavit of Mr. Shahi, such response, together with any supporting evidence, to be sent electronically to the Center, with copies sent electronically to the Respondent’s attorneys, by Friday, June 10, 2005, at the latest,

(ii) provided that, if he so wished, the Respondent may respond to the Complainants electronically to the Center, with a copy to the Complainants, by Friday June 17, 2005, at the latest, and

(iii) extended the projected decision date to June 24, 2005.

3.5 In compliance with Procedural Order No.1, the Complainant duly served a Response together with various documents on June 10, 2005, and the Respondent served its Response dated June 16, 2005.

4. Factual Background

4.1 The Complainants are two sister companies incorporated in Italy. The companies are concerned with the production, sale and advertising of motorcycle accessories. Those companies are within the GIVI group of companies, and both have rights to use the GIVI trademark. Annexed to the Complaint are copies of GIVI trademarks dating back to 1993, and registered in various countries including Italy, the United Kingdom, Brazil, Argentina, Malaysia, Singapore, the United States of America, Taiwan, Province of China and the Philippines. The Complaint is based on the various worldwide registrations of the GIVI trademark.

4.2 The domain name which is the subject of the Complaint, <givi.com>, was registered in February 1998, and renewed in January 2004.

4.3 The Complainants lay particular stress on the fact that the Respondent offered to sell that domain name for US$150,000.

4.4 The Respondent, Anup Shahi, is the President of Givi Technology Systems Inc., of Richmond, British Colombia, Canada. The company was incorporated under the Canada Business Corporations Act on January 20, 1998. Prior to the filing of an application for incorporation, Anup Shahi instructed his attorneys to have a search carried out to determine whether that corporate name was available for use in connection with a business relating to computer programming and servicing of clients: “The report did not reveal the existence of any registrations or pending applications in Canada for the trademark GIVI in the name of either of the Complainants.”

5 The Parties’ Contentions

5.1 In their Complaint dated the April 14, 2005, the Complainants say that the domain name is identical or confusingly similar to trademarks in which they have rights. They say that the Respondent has no legitimate interests in respect of the domain name “since he is not using the domain name in connection with any activity related to the name GIVI and the www.givi.com web page has been redirected to the domain www.jjdsystems.com …”

5.2 Further, the Complainants say that they have reason to believe that “the Respondent registered the domain name in bad faith since when, on May 3, 2002, he was asked if he wished to sell it he replied asking the sum of USD 150,000.”

5.3 Annexed to the Complaint are copies of two e-mails. One is dated May 3, 2002, and is sent by Mr. Coleman to Respondent’s email address. It says. “Hi . I have recently noticed that the web address www.givi.com is no longer hosting a website. As the registered owner of this address. I would like to know if you wish and to sell it and if so how much. I appreciate any information you can offer.”

5.4 The second email is dated May 15, 2002. It refers to <givi.com> domain name and reads: “Hello. Sorry, I couldn't get back to you, yes we would be interested to sell the domain for $150,000. Let me know if you are considering it.” It bears the name Anup Singh.

5.5 The Response dated May 10, 2005, is cross-referenced to an affidavit of Anup Shahi dated May 6, 2005. In relation to the identical or confusingly similar allegation, the Response states that the trademark registrations owned by the Complainants all relate to the production, sale and promotion of motorcycle accessories “which are in no way related or similar to the computer software and computer services sold and provided by the Respondent. In addition, the complainants have never owned any Canadian registrations for the trademark trademark GIVI…”

5.6 In relation to the allegation concerning rights or legitimate interests in respect of the domain name, it is said that Anup Shahi, is the President of Givi Technology Systems Inc, which company was incorporated under the Canada Business Corporations Act on January 20, 1998. Prior to the filing of the application for incorporation, Anup Shahi instructed his attorneys to carry out a search as to whether that corporate name was available for use in connection with a business relating to computer programming and servicing of clients. It is said that the word “GIVI” was derived “from Anup Shahi’s grandmothers’s name, which is Givi Legha.”

5.7 The Response states that when Anup Shahi requested a search for the corporate name he had no knowledge of the existence of the Complainants or of the trademark GIVI. The report did not reveal the existence of any registrations or pending applications in Canada for the trademark GIVI. Since its incorporation in January 1998, GIVI Technology Systems Inc. has continuously carried on in Canada “the business of designing and selling computer software and providing computer maintenance services.”

5.8 On February 11, 1998, Anup Shahi registered the domain name <givi.com>. Since that time the domain name has been used for hosting a website operated by GIVI Technology Systems Inc. In December 2004, Anup Shahi incorporated J. J. D. Systems Inc. In the same month the domain name <www.jjdsystems.com> was registered. Developers were engaged to revise both websites but those developers “used the same hosting directories on internet.ca, which resulted in givi.com and jjdystems.com pointing to the same pages, giving the impression that the domain name in givi.com was no longer in use.” However, this was rectified in April 2005, and except for short period of time between February and April the domain name <givi.com> “has been in active use for hosting a website operated by GIVI Technology Systems Inc…. Accordingly, the Respondent does have a legitimate interest in respect of its domain name givi.com”.

5.9 Dealing with the registration and use in bad faith, the Response states that the Complainants were aware as early as May 2000, that the disputed domain name was being used to host a website operated by GIVI Technology Systems Inc. In that month “arrangements were concluded between GIVI SRL and the Respondent for a direct link to GIVI SRL’s domain name www.givi.it to appear on the website operated by the Respondent in conjunction with the domain name <givi.com>. This arrangement remained in place until October 31, 2001.” The explanation for this arrangement is given in paragraph.16 of the affidavit Anup Shahi: “During the early part of 2000, I notified GIVI SRL that inquiries were being received on my company's website for motorcycle product being marketed by them, all of which inquiries were forwarded by me to GIVI SRL.” Between May 2000 and October 2001, a monthly charge was made for the web page link. Copies of the invoices are annexed to the affidavit.

5.10 During the same period Anup Shahi received several verbal offers from representatives of Givi SRL to purchase the domain name, which offers were always refused by him “because of the fact that such domain name was in active use to host the website operated by GIVI Technology Systems Inc. On May 3, 2002, Anup Shahi received another inquiry from GIVI SRL, by e-mail, as to whether he was prepared to sell the domain name <givi.com>. As the Respondent had no intention of selling its domain name, an e-mail response was sent on May 15, 2002, indicating an unrealistic sale price of $150,000 in the hope that this would stop Givi SRL from making any further inquiries regarding the purchase of the Respondent’s domain name… Such goal was achieved in that thereafter, the Complainants made no further inquiries as to whether the Respondent would be prepared to sell its domain name.”

5.11 The Response completes this aspect of the matter by stating that “By having taken no further action against the Respondent since receipt of its response on May 15, 2002, the Complainants have acquiesced to the legal existence of the domain name <givi.com>.”

5.12 The Respondent therefore requested the Panel to refuse to order the transfer to the Complainants of the disputed domain name.

Procedural Order

5.13 An offer to sell a disputed domain name for US $150,000 could constitute evidence justifying an order to transfer (assuming that the other relevant conditions of the Policy are satisfied).

5.14 However, in this case there are two elements which seemed to require an explanation: first, the fact that the Complaint process was not started until some three years after the offer to sell for $150,000; and second, the arrangement for rental of the web page link.

5.15 A Panel is entitled to request “ further statements or documents from either of the Parties “: paragraph 12 of the Rules.

5.16 On June 6, 2005, pursuant to paragraph 12, the Panel issued the Procedural Order referred to earlier requesting that

“the Complainants respond to the matters set out in the Response and in the affidavit of Mr. Shahi (in particular the matters set out in paragraphs 19 to 25 of the Response, and in paragraphs 16 to 24 of the affidavit of Anup Shahi), dealing especially with the following points, namely:

(i) The fact that the Complaint was not issued until some 3 years after the offer to sell the disputed domain name for $150,000,

(ii) The payment of a monthly charge for the web page link”.

5.17 In their Response served pursuant to the Procedural Order, the Complainants dealt first with the three-year delay. They said that they were unaware of the UDRP procedure until March 2005, and prior to that had been unwilling to embark upon an expensive legal process.

5.18 In 2000 the Complainants became aware of the “www.givi.com” website, but took the view that the Respondent was making a legitimate use of the disputed domain name hosting the web page of his Company GIVI Technology Systems Inc., and therefore the Complainants were conscious that “they could not raise any objection.”

5.19 On April 6, 2000, Mr. Anup Shahi sent an e-mail message informing the Complainants that he was receiving an average of 20 messages per day from customers looking for motor cycle accessories. He offered to give GIVI SRL a banner or advertisement on his web page for a fee. That message was a further confirmation for the Complainants “that many people in the world identified the domain givi.com with the company GIVI SERL and trademark GIVI rather than with the small local company GIVI Technology Systems Inc.”

5.20 The Complainants feared that Mr. Shahi might seek a considerable fee, and they therefore sought to conceal their real interest. Finally, the parties reached an agreement for a direct link with the “www.givi.com” website for a monthly fee of $35. The Complainants received three invoices dated June and December 2000 and April 2001. Following that third invoice, the Complainants discovered that the web page was empty, and remained so until it was directed to “www.jjdsystems.com”. There were no further invoices. The Complainants supposed that the Respondent had no interest in keeping the disputed domain name. In about mid-2001, they asked the director of their US branch, Mr. Collins, to contact Mr. Shahi in relation to a possible purchase of the disputed domain name. The Complainants dispute the statement in paragraph 22 of the affidavit of Mr. Shahi, to the effect that between May 2000 and October 2001, several verbal offers to purchase of domain name were made by representatives of the Complainants.

5.21 The offer made by the director of the US branch was refused by Mr. Shahi “not because the domain name was in active use … but because the sum offered, an amount between $1,000 and $2,000 was considered by him too low.”

5.22 Following the refusal of Mr. Shahi to sell at a reasonable price, the Complainants decided to wait until the expiry of the disputed domain name registration. They hoped that the Respondent would not exercise the right to renew, he “having no legitimate interest in the disputed domain name….since said domain name was no longer in active use.” However, the Respondent renewed the registration at the beginning of 2002, and the Complainants decided to make a further purchase offer. But in order to conceal their strong interest in the domain name, which might encourage Mr. Shahi “to ask a considerable amount to sell the disputed domain name, on May 3, 2002, Mr. Collins sent an e-mail message to Mr. Anup Shahi using the pseudonym Peter Coleman ...” However, “probably Mr. Anup Shahi understood that the message was from the Complainants…and hoping to obtain a conspicuous gain he indicated as selling price the amount of $150,000. Following the preposterous request of Respondent, the Complainants desisted from any further attempt to find an agreement with the Respondent.”

5.23 In the Conclusions to their Response served pursuant to the Procedural Order, the Complainants state that “GIVI is a world leader Company in the motorcycle accessories field and GIVI trademark is registered in many different countries in the world and is commonly known. GIVI customers in the world spontaneously associate the name GIVI with the domain name <givi.com> and address to this domain name their requests concerning motorcycle accessories. GIVI TECHNOLOGY SYSTEMS INC. is a local Canadian entity not universally and commonly known by the name GIVI; they could have well registered the domain name <givitechnology.com> better reflecting their trade name and better responding to the kind of business conducted.”

A. Respondent’s Reply

5.24 In the Respondent’s Reply of June 16, 2005, to the Complainants’ Response of June 10, 2005, it is first contended that the desire not to become involved in expensive legal proceedings is “not a valid excuse for the Complainants’ delay in taking any action after they became aware of the existence of the disputed domain name. Nor is ignorance of the UDRP a valid explanation for the Complainants’ delay to act in this matter.”

5.25 The Respondent notes the acknowledgement by the Complainants that “the Respondent registered the domain name <givi.com> in good faith and had a legitimate interest to do so.”

5 .26 It is contended that there is no basis for the alleged fear on the part of the Complainants that Mr. Shahi might attempt to profit from the situation: had he any underlying motives, he would not have forwarded the e-mail inquiries relating to motorcycle products, and would not have proposed the direct link.

5.27 The Reply notes the acceptance in the Complainants' Response of various statements contained in the affidavit of Mr. Shahi: that inquiries concerning motorcycles were forwarded to GIVI SRL; that arrangements were concluded for a direct link on the “www.givi.com” website to “www.givi.it”, the Complainants’ Italian website; that GIVI Technology charged a monthly charge for that website link. Further, it is alleged that the Response confirms the truthfulness of the matters set out in paragraph 22 of the Shahi affidavit, namely that several verbal offers were made to purchase the domain name for sums ranging between $1,000 and $2,000.

5.28 The Reply denies the allegation that the web page was empty, states that except for a short period in 2005, the domain name was in continuous use for hosting the Respondent's website, and reiterates that several verbal offers were made to purchase the domain name.

5.29 The Respondent says that the statement in the Complainants’ Response to the effect that no further attempts were made to acquire the domain name following the $150,000 offer “confirms the position taken by Anup Shahi in paragraph 24 of his affidavit, as no further offers were made by GIVI SRL, not even a counter offer”. In paragraph 24, Mr. Shahi had said that, because he had no intention of selling the domain name, his offer to sell at “an unrealistic sale price of $150,000” was made in the hope it would stop GIVI SRL from making any further inquiries regarding purchase.

5.30 In paragraph 22 of the Reply, the Respondent asserts that the Complainants “have acquiesced to the legal existence of the domain name <givi.com> having taken no further action against the Respondent subsequent to May 15, 2002.” And it is said that it was always open to the Complainants to register a domain name <givimotorcycle.com>.

5.31 The Respondent points out that it was the Complainants who approached the Respondent with offers to purchase, and asserts that the Respondent has always had a legitimate interest in the disputed domain name and had at all times acted in good faith towards the Complainants.

5.32 The Respondent repeats that, apart from a short period in 2005, the domain name has been in active continuous use for hosting the website operated by the Respondent, and that therefore “the Respondent did not act in bad faith in renewing the registration of such domain name.”

6. Discussion and Findings

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following three elements:

i) 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,

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.

A. Identical or Confusingly Similar: Paragraph 4(a)(i)

The Complainants have submitted evidence that they are the owners of GIVI trademark registrations in many countries around the world.

The Respondent does not dispute that.

It is perfectly clear that the disputed domain name <givi.com> is identical or confusingly similar to trademarks in which the Complainants have rights.

The Panel is satisfied that the Complainants have proved the first of the three requirements.

B. Rights or Legitimate Interests: Paragraph 4(a)(ii)

Paragraph 4(c) provides examples of circumstances that can demonstrate in favour of a Respondent the existence of rights or legitimate interests in a domain name:

(i) use of the domain name in connection with a bona fide offering of goods or services;

(ii) the fact that Respondents have commonly been known by the domain name;

(iii) legitimate non-commercial or fair use of the domain name.

Burden of proof

Whilst the burden is on a complainant to prove each of the three requirements contained in Paragraph 4(a) of the Policy, it has been generally accepted in WIPO decisions that there is a lesser burden of proof on a complainant in relation to the rights and legitimate interest requirement of Paragraph 4(a)(ii): it is difficult for a complainant to prove a negative. The relevant facts are likely to be within the knowledge of a respondent. If therefore, the complainant raises a prima facie case, it is said that the burden shifts to the respondent to prove that he does have a legitimate right or interest. See, for example, Croatia Airlines v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

Preliminary matter

Before considering the Paragraph 4(a)(ii) requirement, the Panel should deal with a preliminary matter.

In the Procedural Order Response of June 16, 2005 the Respondent says that “it is noted that the Complainants have acknowledged that the Respondent registered the domain name <givi.com> in good faith and had a legitimate interest to do so.”

Reference is made to Paragraph B2 of the Complainants’ Procedural Order Response. Paragraphs B1 and 2 state:

“1. At the beginning of year 2000, the Complainants realised that their customers all over the world, especially in the USA, identified the Company GIVI SRL and the trademark GIVI with the domain name givi.com, rather than with the domain name givi.it, longer before registered by the Complainants. In such occasion the Complainants came to know that the disputed domain name was no longer available since it had been registered by the Respondent. For this reason in February 2000 the Complainants registered the domain giviusa.com

2. At that time the Respondent was making a legitimate use of the disputed domain name hosting the web page of his Company GIVI TECHNOLOGY SYSTEMS INC., therefore the Complainants was conscious that they could not raise any objection.”

It is difficult to see how those paragraphs can be construed as meaning that the Complainants have conceded that the domain name had been registered in good faith and that the Respondent had a legitimate interest in registering that domain name: particularly bearing in mind that “legitimate interest” and “registration in bad faith” relate to two of the three requirements of Paragraph 4(a).

Research by the Panel

The WIPO Overview of WIPO Panel Views on Selected UDRP Questions states that “A panel may visit the Internet site linked to the disputed domain name in order to obtain more information about the respondent and the use of the domain name. The panel may also undertake limited factual research into matters of public record if it feels that it needs that assistance in reaching a decision. If the panel feels that it requires further information to make a decision in a proceeding then it can issue a panel order to the parties”

The Complainants’ Italian website, “www.givi.com”, states that:

“Mr. Giuseppe Visenzi established GIVI about twenty-five years ago. A talented rider, he distinguished himself in a series of motorcycle races in the sixties, winning third place in the World Championship for 350 in 1969.

After leaving the race world, his passion for motorcycles, together with his determination brought him to commit himself in the planning and realization of motorcycle accessories establishing the Company GIVI, which in a very short time has become one of the most important and competitive producers of motorcycle accessories, nationally and worldwide.”

It is a reasonable inference that “GIVI” derives from the name of the founder of the GIVI Company, Giuseppi Visenzi.

Later, the website says that:

“GIVI is a leading company in the production of motorcycle accessories. Its production facilities are located in Italy, Flero, nearby Brescia. The production site covers an area of 14.000 m2 with more than 100 employees.

In its production plants GIVI controls production starting from the design, development, product engineering and the final distribution stage.

Our staff, qualified and competent, makes use of the most modern and efficient technologies in the fields of planning and industrial automation, in order to develop products with an innovative design and the best quality/price relation.

A wide range of accessories expressly created or adapted to the new motorcycle models has made GIVI an industry leader. The brand that is now present in more than 40 Countries, with direct branches in the USA, UK, Austria, France, Germany, Malaysia and Spain.”

Respondent’s Case

In the Response and in the Affidavit of Anup Shahi it is said:

(1) That GIVI Technology Systems Inc. was incorporated under the Canada Business Corporations Act on January 20, 1998;

(2) That the domain name <givi.com> was registered on February 11, 1998;

(3) That the GIVI name derives from the name of Anup Shahi’s grandmother, Givi Legha.

Conclusion

The Panel has considered it appropriate in this case to look at matters in some detail. Since the Complainants have failed in respect of the third requirement as discussed below, the Panel need not consider whether the Complainants have met the second requirement of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith: Paragraph 4(a) (iii)

Paragraph 4(b) of the Policy states:

“ For the purposes of Paragraph 4(a)(iii), 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 you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”

Is it possible that the Respondent was aware of the Complainants’ existence? On the evidence available to the Panel, that possibility clearly exists, as the Panel found in GIE Batigere and SA Batigere v. Sociedad Batigere, WIPO Case No. D2001-0665: “The Panel accepts as possible - and indeed probable - that the Respondent was unaware of the Complainants’ existence or products and did not know of the Complainants’ mark when the domain name at issue was registered on March 20, 2001.”

In those circumstances, the first limb is not satisfied: namely that the registration was in bad faith.

That is sufficient to deal with the third requirement, even if the Panel were to consider that subsequently the use converted to a bad faith use as a result of the offer to sell.

Whilst it is not necessary to do so, the Panel considers it appropriate, given the somewhat unusual facts of this case, and given the fact that the Panel sought further information from the parties, to go on to deal with subsequent use and the offer to sell.

Offer to sell:

It is not disputed that the Respondent offered to sell the disputed domain name for $150,000.

It is clear from the provisions of Paragraph 4(b)(i) that an offer to sell the domain name for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name is not only evidence of, but can conclusively establish that, the domain name has been registered and is being used in bad faith: CBS Broadcasting, Inc. v. Gaddoor Saidi, WIPO Case No. D2000-0243.

In that case it was said that “The only exception to this is where the Respondent can show that it has rights to or legitimate interests in the domain name at issue. Avnet, Inc. v. Aviation Network, Inc., WIPO Case No. D2000-0046.”

However, an offer to sell is not necessarily evidence of bad faith. For example, the panelist in SOUTHBank v. Media Street, WIPO Case No. D2001-0294, David Williams QC, had this to say on the effect of delay:

“The fact that ‘southbank.com’ was registered by the Respondent on July 22, 1996, three and a half years before the allegation of attempted sale to the Complainant supports the likelihood that the Respondent did not register the name primarily to sell to the Complainant or to prevent the Complainant from reflecting its trademark in a corresponding name.

If the Respondent had registered the name specifically to target the
Complainant, it is reasonable to assume that it would have contacted the
Complainant much closer to the time of registration.”

In addition, on the facts of this case there are two other matters, which could have provided a defence for the Respondent.

“Unrealistic sale price”

First, the statement in the affidavit of Anup Shahi that “since I had no intention of selling the domain name, I sent an e-mail response on May 15, 2002, indicating an unrealistic sale price of $150,000, in the hope that this would stop GIVI SRL from making any further inquiries of me regarding the purchase of the domain name <givi.com>

However, it could be argued that there are three difficulties with that explanation: First, Anup Shahi could simply have stated that the domain name was not for sale.

Second, and more importantly, $150,000 may not have been an “unrealistic” price: it was a price which a major international company like GIVI - whose brand “is now present in more than 40 Countries, with direct branches in the USA, UK, Austria, France, Germany…” - may well have been prepared to pay. Third, it appears that Mr Shahi did indeed expect to receive a response to his offer to sell at $150,000. In the Respondent’s Reply of 16 June at paragraph 21 it is stated that “not even a counter offer” was made.

Delay / acquiescence:

The second matter which might have provided the Respondent with a defence - had it been necessary - is the period of delay between the offer to sell at $150,000 and the commencement of the WIPO proceedings (delay was mentioned above in the context of an offer to sell in the SOUTHBank v. Media Street, WIPO Case No. D2001-0294).

It was the period of delay between the offer to sell at $150,000 and the commencement of the proceedings (coupled with the web page rental) which caused the Panel to invite the Complainants to respond to the Response of May 10, 2005.

Pursuant to the Procedural Order, the Complainants then explained the reason for the delay: unwillingness to become involved in an expensive lawsuit and the fact that they were unaware until comparatively recently of the existence of the UDRP process that allowed them to “issue a Complaint in a simple, fast and economic way.”

The Respondent counters that by:

(1) saying that unwillingness to embark on a law suit is no excuse for the delay, and that ignorance of the UDRP process is likewise not a valid explanation for that delay (paragraph 4 of the Response of June 16, 2005), and

(2) relying again on the acquiescence argument put forward in the Response of May 10, 2005 (paragraph 22 of the June 16, 2005 Response).

The Panel is not convinced that the “ignorance of the law is no excuse” argument has any relevance in a domain name dispute resolution process (the point is in any event linked to the delay argument, which is dealt with below).

But would the delay argument assist the Respondent? Could the Respondent have relied on the delay argument as a defence to a contention that the offer to sell at $150,000 is evidence of registration and use in bad faith - as made clear in the CBS Broadcasting case?

Does acquiescence, and other similar equitable doctrines such as estoppel and waiver, have a role to play in the Policy? [Even if they do, the Respondent would need to show that some detriment or prejudice has been suffered, and there is no evidence of that].

Paragraph 15 of the Rules states that a Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy “ and any rules and principles of law that it deems applicable.”

Equitable principles and the Policy:

The question arose in Edmunds.com, Inc. v. Ult. Search Inc., WIPO Case No. D2001-1319. The panel concluded that equitable doctrines do not apply. The Panel said

“The Respondent raises an allegation that equitable doctrines prevail under the Policy and that, because the Complainant was dilatory in allowing registration to lapse, it has no equity and that relief should be denied to it. The Panel cannot accept this submission. Although the concept of ‘rights’ under the second criterion in the Policy may include some kind of equitable right conferred on a Respondent by a Complainant, there is no room for general equitable doctrines under the Policy such as would be possessed by Courts in common law jurisdictions. These doctrines, if applicable, could include, for example, laches (which would operate against a Complainant tardy in asserting its rights after it had known of an offending domain name) or ‘unclean hands’ by a Complainant.”

Whilst the Panel in that case was dealing with equitable rights in the context of

Paragraph 4(a)(ii), what is said in that case in relation to equitable principles must be of general application in relation to the Policy.

The Panel would therefore have rejected the submission based on acquiescence.

Conclusion:

The Panel finds that the registration itself was not in bad faith. Even if there had subsequently been a use in bad faith, that would not be sufficient to satisfy the requirements of Paragraph 4(a)(iii) of the Policy.

7 Decision

The Panel is not satisfied that the Complainants have proved all three requirements of Paragraph 4(a) of the Policy, and the Complaint is denied.

Anthony R. Connerty
Sole Panelist

Date: July 11, 2005