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Westec Interactive Security, Inc. v. Express Post Ltd (Westec Division) [2005] GENDND 1802 (7 October 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Westec Interactive Security, Inc. v. Express Post Ltd (Westec Division)

Case No. D2005-0811

1. The Parties

The Complainant is Westec Interactive Security, Inc., Gainesville, Virginia, United States of America (“the Complainant”), represented by Wiggin & Nourie, P.A., of the United States of America.

The Respondent is Express Post Ltd (Westec Division), St. Petersburg, Russian Federation (“the Respondent”) represented by Konsul Ltd., of the Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <westec.com> (“the Domain Name”) is registered with Nicco Ltd (“the Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2005. On August 1, 2005, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 17, 2005, 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 August 24, 2005.

One of the deficiencies identified by the Center was that, in the absence of an agreement with the Respondent, the Complaint should have been in the Russian language. On August 19, 2005, the Respondent’s representative indicated that the Respondent had no objection to the language of the proceeding being English and on August 22, 2005, the parties entered into an agreement to that effect.

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 August 25, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was September 14, 2005.

On September 9, 2005, the Center received by email from the Votum Mutual Assurance Company of the Russian Federation a request that this administrative proceeding be brought to a close. The company claims to be the Respondent’s insurer and asserts that the proceeding constitutes a breach of various Russian Federation legal provisions ranging from the Constitution itself to the Russian Federation Law on Trade Marks.

Nonetheless, the Response was filed with the Center on September 14, 2005.

The Center appointed Tony Willoughby as the sole panelist in this matter on September 29, 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.

The Panel does not propose to consider further the intervention from the Votum Mutual Assurance Company. The Respondent signed up to the Policy when registering the Domain Name and has actively participated in the proceeding by agreeing to the language change and by filing a Response. The Panel has nothing before it to satisfy it that this proceeding should be terminated.

4. Factual Background

On September 1, 1982, Westec Security Inc, a Californian company apparently unconnected with the Complainant, applied for and subsequently obtained registration of the trade mark WESTEC in the United States for electronic burglar and security alarms. Westec Security Inc, has subsequently obtained broader trade mark protection for the mark in the United States but all within the field of security systems.

On November 1, 2000, the Respondent registered the Domain Name.

On February 5, 2001, the Respondent applied for and subsequently obtained registration of the service mark, WESTEC, in the Russian Federation for services relating to the processing of information.

On October 29, 2004, the Complainant entered into an exclusive licence with Westec Security Inc. by virtue of which it acquired the exclusive right in the United States to use the service mark, WESTEC, in relation to commercial, governmental and institutional applications in the field of security systems, but not in relation to residential applications, which is the preserve of another company, Westec Franchising Inc..

The Panel notes that it has not been provided with any information as to when the Complainant was incorporated, nor has it been provided with any information as to how (if at all) these various Westec companies inter-relate.

On January 31, 2005, the Respondent licensed the use of its Russian Federation WESTEC service mark to a company named Diamond Crown Inc..

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is identical to the WESTEC service mark in respect of which it acquired exclusive rights in October, 2004. It contends that its customers are confused as a result of its use by the Respondent and it notes that the Respondent’s registration of the Domain Name precludes it from using the Domain Name.

It contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. It asserts that the Respondent is not using the Domain Name to connect to any active website. It contends that the only ‘use’ that the Respondent has made of the Domain Name has been to offer it for sale. It asserts that it has not been able to discover any relevant intellectual property rights in the name of the Respondent.

The Complainant contends that the Respondent registered the Domain Name in bad faith and is using it in bad faith within the meaning of paragraph 4(b)(i) of the Policy. It asserts that the Respondent registered the Domain Name with the intention of selling it to the Complainant at a profit. It asserts that when it approached the Respondent and offered to purchase the Domain Name for $500, the Respondent replied that that was not enough.

B. Respondent

The Respondent contends that the exclusive licence which gives the Complainant the exclusive right to use the WESTEC trade mark is not sufficient for the purpose of paragraph 4(a)(i) of the Policy. The person who has the rights in the trademark is the trade mark owner. The Respondent also points out that the Complainant acquired its rights some years after the Respondent registered its trade mark in the Russian Federation.

The Respondent points to its trade mark registration of the mark WESTEC as evidence of its rights in respect of the Domain Name. The Respondent has also produced a copy of a licence to use the trade mark that it granted in January, 2005, to a third party.

The Respondent repeats the above to demonstrate that it did not register and has not been using the Domain Name in bad faith. The Respondent denies that it has ever offered to sell the trademark and denies also that it has ever had any communication with the Complainant. The Respondent draws attention to the fact that the Complainant has produced no evidence of the offer for sale or its alleged communications with the Respondent.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove that

(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) The Domain Name has been registered in bad faith and is being used in bad faith.

A. Identical or Confusingly Similar

Clearly, the Domain Name is identical to the trademark, WESTEC, in respect of which the Complainant has an exclusive right to use. Is that enough for paragraph 4(a)(i) of the Policy?

For the purposes of this Complaint the Panel is prepared to accept that exclusive rights under a trade mark licence are sufficient to constitute rights for the purpose of paragraph 4(a)(i) of the Policy, but the Panel confesses to some disquiet that the Complaint contained no supporting document from the trade mark owner. The Panel would have preferred to have seen a consent from the trade mark owner to the Domain name being transferred to its licensee.

B. Rights or Legitimate Interests

There being nothing before the Panel to suggest that the Respondent’s Russian Federation trademark registration of the mark WESTEC is anything other than genuine, manifestly the Respondent has rights in respect of the Domain Name. The Panel might well have come to a different conclusion if there were any suggestion that the Respondent had registered the trade mark after having acquired knowledge of the Complainant’s interest in the name, but that was not the case. Indeed, the Respondent’s trade mark registration pre-dates the Complainant’s rights by some years.

The Complainant has failed to establish to the satisfaction of the Panel that the Respondent has no rights or legitimate interests in respect of the Domain Name.

C. Registered and Used in Bad Faith

It is worth noting that if, as was the case here, a Complainant is going to assert that the Respondent offered the Domain Name to it for a profit, the Complainant must surely produce evidence of the offer or at least explain why no such evidence has been produced.

Here, the Complainant produced no evidence of the offer for sale. Nor did the Complainant explain why the evidence was not available. In the circumstances, the bad faith claim was bound to fail.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Tony Willoughby
Sole Panelist

Date: October 7, 2005