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Internationale Spar Centrale B.V. v. Scientific Process & Research, Inc. [2005] GENDND 1805 (6 October 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Internationale Spar Centrale B.V. v. Scientific Process & Research, Inc.

Case No. D2005-0603

1. The Parties

The Complainant is Internationale Spar Centrale B.V., of Rokin, Amsterdam, Netherlands, represented by Shield Mark B.V., Netherlands.

The Respondent is Scientific Process & Research, Inc., of Somerset, New Jersey, United States of America.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 10, 2005. On June 10, 2005, the Center transmitted by email to Network Solutions, LLC. a request for registrar verification in connection with the domain name at issue. On June 15, 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. 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 July 13, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was August 2, 2005. By August 2, 2005, the Respondent was in default. A first letter from Respondent, dated August 14, 2005, was filed with the Center late, requesting an extension of the term. A late Response was filed with the Center on September 5, 2005.

The Center appointed Peter G. Nitter, Keith Gymer and Angela Fox as panelists in this matter on September 22, 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

Complainant, International Spar Centrale B.V. is an international organization of supermarkets and hypermarkets. The supermarkets are called SPAR and sell among other things, private label SPAR products, both food and other items. The SPAR name has been in use since 1930.

There are numerous SPAR stores around the world, in the Netherlands, Belgium, Germany, Denmark Austria, France, United Kingdom, Spain, Italy, Finland, South Africa, Ireland, Zimbabwe, Greece, Japan, Argentina, Norway, Switzerland, Sweden, Hungary, Czech Republic, Slovenia, Australia, Poland, Russian Federation, Mauritius, Botswana, China, Croatia, India, Namibia, Singapore, Ukraine, Zambia and Cyprus.

Complainant owns a great number of trademarks consisting of or containing the mark “SPAR” in several countries around the world. Complainant has also granted licenses to local SPAR companies in the various countries where SPAR supermarkets are established. The first trademarks containing SPAR seems to have been registered in 1963.

Respondent, Scientific Process & Research, Inc. is a provider of various products, services and software.

5. Parties’ Contentions

A. Complainant

Complainant owns numerous trademarks consisting of or containing the word SPAR. The mark is a well known trademark and company name for Complainant. The domain name in dispute is identical to Complainant’s marks.

Respondent has no right or legitimate interest in the domain name. The abbreviation of Respondents name, Scientific Process & Research, Inc. is “SPR” not “SPAR”. Conversion of the ampersand symbol “&” to the letter “a” is not common. There was no need for Respondent to choose the domain name <spar.com> as they could have chosen the domain names <spandr.com> or <sp-and-r.com> instead.

Respondent is not keeping the website connected to the domain name in dispute updated, as is still refers to an exhibition held in year 2000. The website has no reference whatsoever to the use of the name SPAR as a trademark or a trading name. Respondent owns no SPAR trademarks.

Respondent has registered and used the domain name in bad faith. The website linked to the domain name does not seem to be active. After Complainant contacted Respondent with the intention of purchasing the domain name, Respondent was willing to sell the domain name for an absurd high price of 1, 200.000 USD. Respondent claimed that much money is invested in the site, but Complainant could not see that this was the case, and refused to pay such a high amount of money. The fact that Respondent asked for such a large amount shows that he is acting in bad faith and is only keeping the domain name with the intention of selling it for a high price. This is also illustrated by the fact that the website is no longer being updated.

B. Respondent

Respondent, Scientific Process and Research, Inc. has been in operation since September 1968, in the business of producing and selling engineering software for the plastics industry. Respondent has used the SPAR name since the introduction of the their SPAR/Graphics mechanical drawing system in 1974. The word “spar” is a term commonly referred to in fighting and boxing. Respondent developed a product called the “Left Hook Mixer”, tied into the fighting language of the word “spar”.

Respondent registered the domain name in July 1993, and has used and maintained it since then. The domain name <spr.com> was already taken when Respondent wanted to register a domain name. The registrar thus suggested <spar.com>. This was chosen as the Respondent has a history with the word “spar”.

The domain name and the attached website is used as primary contact point for data interchange between the company and its clients. As Respondent’s services and programs require the input of significant quantities of technical data, measurements, and drawings, Respondent actively utilizes the domain name for all of the customer support. The domain name is also hard coded into many computer programs sold, and the address is used for license management, software update services and automated error reporting. This implies that transferring the domain name will require a great deal of effort.

Respondent has never used the domain name in order to withhold it from others. Complainant does not have any trademarks in United States of America, where Respondent has been incorporated since 1968.

The asked price is not an “absurd high price”, but rather the fair market value of the asset.

6. Discussion and Findings

Procedural aspect – late Response

Both Respondent’s initial letter and the Response were filed after the term for response, on August 2, 2005. The first communication from Respondent is dated August 14, 2005, while the second is dated September 2005. Respondent stated that he did not receive the notification of the dispute before August 2, 2005, as the mailing address to which the Center sent the notice is no longer correct and the contents of their feedback mailbox are not routinely routed to Respondent’s attention. Although the incorrect contact details are the Respondent’s responsibilities, and it should have had requested an update of the whois information, it seems to be a genuine explanation and not only a pretext.

In the event of a late response, the Panel’s default course of action, pursuant to paragraph 14(a) of the Rules, is to proceed to decision based only on the complaint. The Panel may however, in its discretion, consider the Response if “exceptional circumstances” exist.

However, under paragraph 10(b) of the Rules, the Panel must ensure that the parties are treated with fairness and equality, and the Panel has the power, under paragraph 10(c) and (d) of the Rules, to extend time periods and to determine the admissibility, relevance and weight, etc. of evidence filed.

Respondent’s Response was filed late, but Respondent has given a rather credible reason for the late Response.

Previous decisions where late responses have been accepted include J.P. Morgan & Co., Incorporated and Morgan Guaranty Trust Company of New York v. Resource Marketing, WIPO Case No. D2000-0035. In this case the Response was filed before commencement of the decision-making process by the Panel.

Another previous case where a late response was taken into consideration was Young Genius Software AB. v. MWD, James Vargas, WIPO Case No. D2000-0591, as the lateness did not delay the decision.

As the Panel finds that the Response was submitted to the Center before the Panel’s commencement of the decision making process, the lateness of the Response has not delayed the decision, and Respondent has given plausible reason why the Response was submitted late, the Panel will allow the late Response and take it into consideration.

Procedural aspect - deficient Response

The Response submitted by Respondent is formally deficient. The Response does not include the fax number of Respondent and it contains no names or contact details to three candidates to serve as panelists.

The decision as to whether these deficiencies shall lead to the Panel’s disregard of the Response, is left to the Panel’s sole discretion.

The Panel considers that the deficiencies are of a purely formal character and are not material to the substantive issues to be resolved in these proceedings. In any event, the Panel’s conclusion on bad faith, which is decisive for this case, is not affected by the Response. In this regard the panel makes reference to Backstreet Productions, Inc. v. John Zuccarini, CupcakeParty, Cupcake Real Video, Cupcake-Show and Cupcakes-First Patrol, WIPO Case No. D2001-0654, where the Panel stated that in that case, “because none of the facts alleged in the Response would affect the result of this dispute, the Panel, in the interests of expediency, has elected to proceed directly to its decision”.

The Panel in the present case takes the same view, and will thus commence the proceedings, allowing the deficient Response, as it does not affect the Panel’s decision.

Procedural aspect - Complainant’s request for further submissions

The normal procedure under these proceedings, is that Complainant is allowed to submit a Complaint, and Respondent is allowed to submit a Response. Even though the Response in this case was filed late, this should not alter the main principle of one shot each.

In the Panel’s view, the late Response does not really add anything to the Panel’s basis for its judgment of the question of bad faith, upon which the Panel has based its final conclusion, see below. No points arise from either the Complaint or the late Response on which the Panel considers it needs further assistance from the parties to enable it to reach a decision. In particular, there is nothing to suggest that the result the Panel has reached on the question of bad faith could be altered if the parties are allowed an opportunity to file a further round of submissions.

The Panel will therefore proceed to a decision based on the Complaint and the Response.

A. Identical or Confusingly Similar

Several of Complainant’s marks consist of the word “SPAR”. The domain name in dispute is <spar.com>. The “.com” addition is according to firm practice under the Policy not sufficient to separate the domain name from the mark.

The domain name is thus identical to Complainant’s mark, in accordance with Paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Respondent has claimed that he has a legitimate interest in the domain name, as Respondent has used the “spar” name since the introduction of the its SPAR/Graphics mechanical drawing system in 1974. The late Response principally regards this question.

The late Response does point towards the possibility that the Respondent has a legitimate interest under Paragraph 4(c)(i) of the Policy, namely that Respondent has been using the word “spar” in connection with a bona fide offering of goods since prior to notice of the dispute. The Panel notes that the evidence supporting this is rather thin, however, consisting only of Respondent’s assertion of use “since 1974” and a single Internet archive article from 1980 referring to a “Spar/Graphics Display System”, dating from 13 years before the domain name was registered. If there has been use of the word “spar” over such a protracted period of time, the Panel would have expected it to have been better substantiated.

The Respondent has not claimed to be commonly known by the domain name.

The Panel finds that there are several contradictions in Respondent’s communications. For example, the Panel finds it peculiar that Respondent’s representative prefers a different email address than the email address on the website that Respondent claims to have much traffic on. Respondent’s information as to the intensive use of the website is contrasted by the fact that the website looks outdated, as it for example “invites” the Internet users to a conference held in 2000. Moreover, the Respondent claims on the one hand that transfer of the disputed domain name would be extremely difficult because of its commercial reliance on it, but on the other hand, was very ready, even eager, to sell it quickly for the high figure it sought following Complainant’s approach.

The Panel is thus skeptical as to whether Respondent’s allegation of what is ostensibly very limited use can amount to a right or legitimate interest in the domain name under Paragraph 4(c)(i) or otherwise, thirteen (13) years after the last such use is shown.

However, the Panel does not find it necessary to reach a conclusion on this question, given the Panel’s unanimous view that Complainant has not established registration and use of the domain name in bad faith, see below.

C. Registered and Used in Bad Faith

Complainant claims that Respondent has registered and used the domain name in bad faith, and substantiates this with the fact that Respondent offered to sell the domain name to Complainant for the high sum of 1, 200,000 USD in 2003, cf. Paragraph 4(b)(i). Complainant is also of the opinion that the fact that the website connected to the domain name seems not to have been updated in recent years, shows Respondent’s bad faith.

The Policy Paragraph 4(b) requires evidence of Respondent’s bad faith registration and use. The Panel makes reference to Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Complainant has not suggested or submitted evidence proving that Respondent on its own initiative contacted Complainant in order to sell the domain name, before Complainant contacted Respondent around 2003. Respondent registered the domain name in 1993, and it was only after Complainant’s communication that the offer to sell was put forward.

The Panel in this connection makes reference to Barlow Lyde & Gilbert v. The Business Law Group, WIPO Case No. D2005-0493, where the Panel stated:

“Standing alone, there is nothing wrong with offering to sell a domain name at a high price. It is a very common business practice. Respondent did not initiate contact with Complainant. It responded to contact from Complainant concerning the domain name. There is nothing here to show that Respondent took any interest in Complainant prior to being contacted by it. The Panel finds that Complainant has failed to establish that Respondent registered the disputed domain name with the intention to sell it to Complainant.”

The Panel finds that this discussion fits equally well in the present case. There is no indication that Respondent was aware of or interested in Complainant at the time of registration, or later, prior to the contact initiated by Complainant. The evidence does not show that Complainant was (or indeed is now) active in the United States of America, where Respondent is based, at the time the domain name was registered. The high price asked by Respondent is not in itself a proof of registration in bad faith.

The Panel can not see that the fact that the website is somewhat outdated is a proof that Respondent in 1993, registered and since has used the domain name in bad faith.

Complainant further submits that Respondent is only using the domain name “ (…) in order to get more visitors on their website due to the fact that the name is very well known (…)”. No further evidence or argumentation is provided by Complainant. The Panel finds that there is no evidence provided to support this contention. Respondent’s website does seem somewhat outdated, but appears to have been used in respect of a bona fide offering of goods and services and has been used for this for quite some time. There is no evidence provided that Respondent deliberately registered the domain name to attract Internet users to his site by creating a likelihood of confusion with Complainant’s mark.

The Panel can not see that Complainant has claimed to have trademarks registered in the United States of America, where Respondent is and has been domiciled the entire period. Neither has Complainant claimed to have SPAR stores in United States of America at all. In the previously mentioned Barlow Lyde & Gilbert v. The Business Law Group, WIPO Case No. D2005-0493, the Panel found it an element of relevance that Complainant at the time of registration of the domain name had no trademarks in United States of America where Respondent was domiciled.

The Panel can thus not see that Complainant has proved on a balance of probabilities that Respondent must have been familiar with Complainant’s marks and stores, or have tried to benefit from Complainant’s marks and Complainant’s goodwill by creating a likelihood of confusion.

Thus, the Panel finds that Complainant has not established Respondent’s bad faith according to Paragraph 4(b).

7. Decision

For all the foregoing reasons, the Complaint is denied.

Peter G. Nitter Presiding Panelist
Keith Gymer Panelist	Angela Fox Panelist

Dated: October 6, 2005