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G.G. Properties Ltd. v. AA Technologies, aka Gartner for Information Technology, Gartner Egypt and GGE.com [2005] GENDND 1421 (30 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

G.G. Properties Ltd. v. AA Technologies, aka Gartner for Information Technology, Gartner Egypt and GGE.com

Case No. D2005-0533

1. The Parties

The Complainant is G.G. Properties Ltd., Stamford, Connecticut, United States of America, represented by Ibrachy & Dermarkar, Cairo, Egypt.

The Respondent is AA Technologies, aka Gartner for Information Technology, Gartner Egypt and GGE.com, Giza, Egypt, represented by Ashraf A. Soliman, Cairo, Egypt.

2. The Domain Name and Registrar

The disputed domain name <gartneregypt.com> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2005. On May 18, 2005, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On May 20, 2005, Network Solutions, LLC 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 Amended Complaint on June 14, 2005. The Center verified that the Complaint, together with the Amended 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 June 22, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was July 12, 2005. The Response was filed with the Center July 7, 2005.

On July 22, 2005, the Complainant made a late submission of an amended annex to the Complaint. The Respondent was notified on July 25, 2005, of the Center’s acknowledgment of receipt of supplemental filing.

The Center appointed Anders Janson, Dawn Osborne and Mohamed-Hassam Loutfi as panelists in this matter on August 17, 2005. The Panel finds that it was properly constituted. Each member of 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 G.G. Properties Ltd. of Stamford, Connecticut, United States of America. The Complainant is the owner of the trademark GARTNER which is either registered or has applications pending in over 70 countries worldwide. The GARTNER mark is used worldwide in connection with information technology services, market analysis, business consulting and business management. Further, the Complainant registered the domain name <gartner.com> on March 15, 1994, and has since then registered among others, the domain names <gartner.com.gt>, <gartner.dk>, <gartner.nu> and <gartnergroup.biz>.

The Respondent is AA Technologies, aka Gartner for Information Technology Egypt, (GGE.com) and Gartner Egypt, with its offices in Giza, Egypt. The Respondent registered the domain name <gartneregypt.com> on May 13, 1999.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights and that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant contends that the disputed domain name has been registered and is being used in bad faith. The Complainant asserts that the Respondent has no right to use the trademark GARTNER, and by doing so, has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website which is linked to the disputed domain name by creating a likelihood of confusion with the Complainant’s mark.

The Complainant has asserted that the Respondent is not, and has never been, an agent of the Complainant, nor has it had a license or authorization from the Complainant to use the GARTNER mark. The Complainant has, however, provided the Respondent with a letter, denoting GGE.com, an affiliated entity of the Respondent, as “its sole representative in Egypt”. The letter was issued for the sole purpose of presenting a bid for a government tender and a copy has been presented as evidence thereof.

The Complainant finally contends that the domain name <gartneregypt.com> should be transferred to the Complainant.

B. Respondent

The Respondents contends that the Complainant is not the legitimate owner of the trademark GARTNER as it has claimed, and that the Complainant has failed to provide evidence to support this supposition. The Respondent claims that “Gartner Group Company (Worldwide)” is the holder of the trademark GARTNER. The Respondent contends that the Complainant has no capacity or right to lodge the Complaint.

The Respondent contends that the Respondent was engaged as the Complainant’s representative in Egypt in August 1999, and has provided evidence in support of this in the form of a copy of a letter, which is identical to the letter submitted by the Complainant. The Respondent contends that it is an agent for the Complainant, and that the Respondent is entitled to use the trademark GARTNER.

The Respondent has asserted, and provided evidence that the Respondent on September 12, 1999, registered a company in Egypt under the name “Gartner Company for Information Technology”.

The Respondent has further asserted, and provided evidence in support of, that the Respondent has acted on behalf of Gartner in Egypt. The Respondent has amongst other things been included with its telephone and fax number in the Complainant’s list of Additional Sales Offices in the year 2000. The Respondent asserts that it is entitled to use the Complainant’s trademark and the Respondent has registered the disputed domain name in good faith.

The Respondent contends that the Complaint should be denied.

6. Preliminary Procedural Issues

First, the Panel must discuss the procedural issue of the Complainant’s supplemental filing of July 22, 2005. The Complainant has submitted an amendment to Annex 3, originally containing a list of countries in which the Complainant holds trademark registrations. The amendment contains a compilation of a number of trademark registrations. The Complainant justified the supplemental filing by referring to the fact that gathering the compilation took longer than anticipated.

The Panel notes that there are no express provisions made for supplementary filings by either party, except in response to a deficiency notification or if requested by the Center or the Administrative Panel. It is in the Panel’s sole discretion to determine whether to admit and consider the supplementary filing in rendering its decision, and whether to order further procedural steps, if any.

The Panel notes that the Policy and the Rules do not provide the parties with any right to file replies on their own volition. The purpose is to have the parties file single submissions, in order to have a swift and cost effective dispute resolution.

Previous panels have held that additional submissions are inappropriate, for the above mentioned reasons, except in limited circumstances, such as discovery of evidence or where new case decisions were not reasonably available at the time of the party’s initial submission (Tribeca Film Center, Inc. v. Lorenzo Brusasco-MacKenzie, WIPO Case No. D2000-1772 and Pacific Fence & Wire Co. v. Pacific Fence and Jim Paradise, WIPO Case No. D2001-0237).

Here the Complainant explains why it did not file the evidence due to the fact that it took longer than anticipated to gather trademark registrations in 46 countries and that the Complainant wanted to file the Complaint with the Center as soon as possible.

Since the trademark registration details are crucial to a decision under the Policy, the Panel feels that the supplementary filing should be considered. However, it is clear from the findings set out below that the Respondent is not prejudiced thereby.

7. Discussion and Findings

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

(i) that the disputed domain names registered by the Respondent are 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 disputed domain names; and

(iii) that the disputed domain names have been registered and are being used in bad faith.

The Complainant’s rights in the trademark has been disputed by the Respondent. However, as the Complaint does not meet the third element of the Policy (bad faith, as discussed below), it is not necessary for the Panel to reach a conclusion under the first element of the Policy.

Likewise, and for the same reason, it is not necessary for the Panel to reach a conclusion under the second element of the Policy.

As to the third element of the Policy, bad faith, the Complainant has asserted that the Respondent has no authorization to use the trademark GARTNER.

However, both Parties have asserted and have provided evidence in support of the fact that the parties have conducted business together. The Panel finds this fact established. However, the Panel notes that from the evidence given herein from both parties, it is not possible to form an opinion as to the scope nor the purpose of the parties’ joint collaboration or the existing situation.

Further, the Respondent has contended that it was authorized to use the trademark. The Complainant has contended the opposite. To support these diametrically opposed contentions, both parties have, inter alia provided evidence in support of their contentions in the form of copies of the same letter and some other material.

The Panel must conclude that neither party have presented evidence that conclusively supports its own contentions, nor conclusively contradicts the opposing party’s contentions.

The aim of the Policy is to stop bad-faith registration of domain names. The UDRP does not cover trademark infringements. This UDRP decision is accordingly not intended to prejudice the Complainant if it wishes to file an infringement case under relevant national law. This case may be a complicated trademark dispute which needs to be determined by national courts under national law with the benefits of full due process and cross-examination of witnesses. It is not the kind of dispute with clear facts indicating bad faith that the UDRP was designed for.

The Panel, therefore, concludes that the Complainant has not established that the Respondent has registered and used the disputed domain name in bad faith.

The Panel, therefore, holds that the Complainant has failed to established element (iii) of the Policy’s paragraph 4(a).

8. Decision

For all the foregoing reasons, the Complaint is denied.

Anders Janson Presiding Panelist
Dawn Osborne Panelist	Mohamed-Hossam Loutfi Panelist

Dated: August 30, 2005