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Minibar North America Inc. v. Ian Musk &GEMS Global Electronic Minibar Systems AS [2005] GENDND 270 (2 March 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Minibar North America Inc. v. Ian Musk & GEMS Global Electronic Minibar Systems AS

Case No. D2005-0035

1. The Parties

The Complainant is Minibar North America, Inc. Corporation Maryland, Rockville, Maryland, United States of America.

The Respondent is Ian Musk, Moss, Ostfold, Norway.

2. The Domain Name and Registrar

The disputed domain name <minibarsystems.com> (the “Domain Name”) is registered with Network Solutions, Inc. (the “Registrar”).

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 12, 2005. On January 13, 2005, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name at issue. On the same day, the Registrar transmitted by email to the Center its verification response confirming that the Respondent was listed as the registrant and providing the contact details for the administrative, billing, and technical contacts.

3.2 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”).

3.3 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 January 26, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was February 15, 2005. The Respondent submitted a response, received by the Center by email on February 15, 2005.

3.4 The Center appointed Matthew S. Harris as the Sole Panelist in this matter on February 24, 2005, (the “Panel”). 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 paragraph 7 of the Rules.

4. Factual Background

4.1 The Complainant is an American company involved in the manufacture, distribution, leasing, installation and sale of minibars, predominantly for use in hotels across the world.

4.2 The Respondent registered <minibarsystems.com> on February 16, 1998.

4.3 The Complainant is the owner of a United States trademark registration (No. 1917816) registered on September 12, 1995, in various classes for “MINIBAR SYSTEMS”. The exact nature of this mark is discussed in greater detail in section 6 below.

4.4 The Complaint makes no reference to any course of correspondence between the Complainant and either Respondent. However, the Respondent refers to a short course of correspondence in 2003 between the parties, which is dealt with in greater detail later on in this decision.

4.5 From the submissions it appears that no other course of correspondence occurred between the parties, whether through their representatives or otherwise, prior to the filing of this Complaint.

4.6 As at the date of this decision, the Domain Name, when accessed, does not resolve to an active website.

5. Parties’ Contentions

Complainant

5.1 The Complainant asserted in its Complaint as follows:

(a) The Domain Name is identical to the “MINIBAR SYSTEMS” trademark.

(b) The Complainant’s trademark is a “well-known mark at global level”.

(c) The Respondent has no rights or legitimate interests regarding the Domain Name as it is not the holder of any trademark relating to the “MINIBAR SYSTEMS” denomination.

(d) The Respondent has no valid Internet page at the present time, and is not commonly known in relation to the Domain Name nor is it using the Domain Name in a legitimate or commercial manner.

(e) The Respondent is “not dedicated to the selling of “minibars” or refrigeration equipment or similar goods” as the Complainant is.

(f) From research on the Internet it is apparent that the Respondent “is mostly dedicated to developing Internet pages”.

(g) The Respondent is “presumed” to have purchased the Domain Name with the purpose of obtaining an illicit gain by selling, leasing or renting the name to one of the Complainant’s commercial competitors. The basis for this presumption is that “the [R]espondent designed the Gems Global (one of our commercial competitors in Norway) website”.

(h) The Respondent is “presumed” to have bought the Domain Name in order to prevent the Complainant’s “advertising strategies” on the Internet.

5.2 The Complainant requests that the Panel issue a decision that the Domain Name be transferred to the Complainant.

Respondent

5.3 Although “Ian Musk” is listed as the Respondent, the Response in these proceedings purports to have been filed both on behalf of Mr. Musk and “GEMS Global Electronic Minibar Systems AS”.

5.4 The Response contains the following assertions:

(a) The Complainant’s rights only apply to a specific graphic/logo symbol that incorporates the words “minibar systems”. The trademark incorporates the disclaimer “no claim is made to the exclusive right to use ‘MINIBAR SYSTEM’ apart from the mark as shown”. Therefore the Complainant’s trademark protection is limited to the graphic mark and the Respondent has never been charged with, nor has in fact made use of the Complainant’s graphic mark.

(b) The “actual and legitimate owner” of the Domain Name has always been a Norwegian company called GEMS Global Electronic Minibar Systems AS (“GEMS”) which was established in 1997. At the time of the registration of the Domain Name in 1998, the Respondent was an employee of GEMS. He then subsequently started his own company and is retained by GEMS as a consultant.

(c) GEMS is not a direct competitor of the Complainant. The Respondent assists with the “design, development, implementation of systems and services to help hotels around the world successfully run their existing minibars for profit”. As such it “operates downstream of the Complainant with supplementary services and is in fact dependent upon all manufacturers of minibars, including the [C]omplainant, for supplying the market with these”.

(d) The Complainant does not seek transfer of any of the other domain names which the Respondent also registered in 1997 and 1998, for example <minibarsystems.net>, <minibar-systems.com> and <minibar-systems.net>.

(e) The Domain Name was not registered:

(i) or acquired primarily for the purpose of selling, renting, or otherwise transferring such registration to the Complainant;

(ii) to prevent the Complainant from reflecting its trademark in a corresponding domain name;

(iii) to primarily disrupt the Complainant’s business or in an attempt to attract internet users for financial gain by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation or endorsement of the Respondent’s website.

(f) In response to a telephone call from an officer of the Complainant, the Respondent made a written proposal to transfer four domain names to the Complainant, as a package, for an amount equivalent to the “accrued actual expenses” incurred for registration and maintenance of the four “minibar systems” domain names.

6. Discussion and Findings

Introduction

6.1 The Panel has reviewed the Complaint and the Response together with their annexures. In the light of this material, the Panel finds as set out below.

6.2 Details of these proceedings have been served in accordance with the relevant requirements set out in the Rules.

6.3 It is incumbent on the Complainant to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy.

Identical or Confusingly Similar

6.4 Under paragraph 4(a)(i) of the Policy, the Complainant must show that the Domain Name is identical or confusingly similar to a trademark in which it has rights.

6.5 The Complainant relies upon a single United States registered device trademark for “MINIBAR SYSTEMS” (No. 1917816) (the “Trademark”). The priority date for this mark is September 19, 1994, which pre-dates the date of the registration of the Domain Name. No other trademark registrations are cited or relied upon by the Complainant.

6.6 The fact that the Trademark contains descriptive elements, and includes a design element, are both indications of a weak mark (see the decision in Sweeps Vacuum & Repair Center, Inc. v. Nett Corp, WIPO Case No. D2001-0031). However, this does not preclude making out identity or confusing similarity for the purposes of the test under the Policy.

6.7 It has been held in a number of previous WIPO decisions that, when applying the test set out in paragraph 4(a)(i) of the Policy in respect of a device trademark, the graphical elements of the mark need not be considered in any assessment of identity or confusing similarity. See, for example, the decision in EFG Bank European Financial Group SA v. Jacob Foundation, WIPO Case No. D2000-0036. This is primarily because graphic elements cannot be reproduced in a domain name, and the word element will in practice be what internet users type into an appropriate browser in order to access the website in question to which the domain name points.

6.8 However, other decisions (for example, Park Place Entertainment Corporation v. Mike Gorman, WIPO Case No. D2000-0699) have found that since a domain name cannot incorporate design elements, it cannot be identical to the stylised version of a trademark. The decision in Mentor ADI Recruitment Ltd (trading as Mentor Group) v. Teaching Driving Ltd, WIPO Case No. D2003-0654 dismissed contentions by the complainant in that case that the domain name in question was identical to a registered trademark in respect of a logo. On the facts of that case, confusing similarity was nevertheless made out as the word elements of the device mark were a “prominent feature”.

6.9 The Panel prefers the approach adopted by the panel in Mentor ADI Recruitment Limited. However, a decision on both this point and whether or not there is confusing similarity between the Trademark and the Domain Name is not necessary in this case because the Trademark contains a significant further restriction, to which the Panel now turns.

6.10 The Trademark registration is subject to a disclaimer that it does not provide the exclusive right to use the words “Minibar Systems”, save where it is used as part of the device trademark. Identity or confusion must, according to the Policy, be attributable to a “trademark or service mark in which a complainant has rights”. Therefore, the Respondent contends that pursuant to this disclaimer, the Complainant does not have any exclusive rights in the words “Minibar Systems” on their own.

6.11 The status and impact of disclaimers has been discussed in a number of UDRP decisions. The fact that words incorporated into either a longer word trademark or in a device mark have been disclaimed does not necessarily mean that a finding of confusing similarity with a domain name using those words is not possible. For example, in Park Place Entertainment Corporation v. Mike Gorman, WIPO Case No. D2000-0699, there was still confusing similarity between the domain name <paris-lasvegas.com> and a design mark that incorporated the words Paris and Las Vegas where the words “Las Vegas” had been disclaimed. Similarly, in Franchise Recruiters, Ltd. v. Franstaff, Inc., WIPO Case No. D2000-1625, the Domain Name was <franchiserecruiters.com>, the mark was “Franchise Recruiters Ltd” and the words Franchise and Recruiters were both disclaimed. Nevertheless there was still confusing similarity. As the panel stated in that case, “the terms ‘franchise’ and ‘recruiters’ are each disclaimed standing alone, but together demonstrate the required distinctiveness”.

6.12 The situation in <paris-lasvegas.com> and in <franchiserecruiters.com> does not appear to be quite the same as the situation now before the Panel. The words “Minibar Systems” have been disclaimed together and “Minibar Systems” is essentially the entire substance of the Domain Name. Once the disclaimed words have been discounted, it would be difficult to see anything left in the trademark with which there can be said to be confusing similarity. The current case appears similar to that in Innovative Measurement Solutions Inc v. Hart Info Systems, WIPO Case No. D2001-0552. There the mark was for the words “Formulation Workstation, the workflow software for formulators”, the disclaimer for “Formulation Workstation” and the domain name in issue was <formulationworkstation.com>. The panel in that case concluded there was no trademark right upon which the Claimant could rely.

6.13 There is no other trademark upon which the Complainant expressly seeks to rely in the Complaint. However, in Daydram Island Resort Investments Pty Ltd v. Alessandro Sorbello, eRES Case No. AF 0586, (a case also involving a design mark incorporating words, the entirety of which were disclaimed) the Panel noted that a disclaimer of words is not necessary fatal to a complaint where the complainant can show common law rights. Here the Complainant does assert that its mark is “well known at a global level” and evidence is provided which suggests business activity in countries, such as the United States, United Kingdom, Ireland and Singapore, which either are or include common law jurisdictions. Is this a case where the Complainant can show common law rights and a decision can be made on this basis?

6.14 The Panel thinks not. It is for the Complainant to prove its case and to put its case in the way it thinks best. There may be very good reasons why the Complainant has not sought to rely on common law trademark rights and it is not for the Panel to second guess the Complainant’s approach. There is any event, in the Panel’s opinion, insufficient evidence before it in relation to what in substance is a highly generic phrase, in order to allow it to make such a finding.

6.15 Accordingly, the Panel concludes that the Complainant has not made out its case with regard to the relevant elements of paragraph 4(a)(i) of the Policy.

6.16 This finding is sufficient to decide the case in the Respondents favour. However, the Panel recognises that the treatment of disclaimers is one of some controversy. The Panel also recognises that the Trademark in this case is a United States trademark. Therefore, the precise effect of the disclaimer in this case is ultimately a question of United States law and yet the panelist in this case is not a US lawyer. In the circumstances, , the Panel will now go on to consider the Complainant’s allegations of lack of legitimate interest and bad faith.

Rights or Legitimate Interests

6.17 The Complainant contends that because (i) the Domain Name does not point to an active Internet page, and (ii) the Respondent is not dedicated to the selling of minibars, the Respondent has no rights or legitimate interests in respect of the Domain Name.

6.18 Paragraph 4(c) of the Policy sets out certain circumstances in which a respondent may demonstrate rights or legitimate interests in the Domain Name. They comprise:

(i) use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name with a bona fide offering of goods or services (paragraph 4(c)(i));

(ii) the respondent has been commonly known by the domain name, even if the respondent has required no trademark or service mark rights (paragraph 4(c)(ii));

(iii) a legitimate non commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark issues (paragraph 4(c)(iii)).

6.19 None of these paragraphs is expressly relied upon by the Respondent. He merely states that the words “Minibar Systems” reflect the core business of GEMS, the company on whose behalf, according to the Response, the Domain Name was registered. In essence the Respondent appears to be asserting that he had a legitimate interest in the Domain Name at the time of registration, as it comprised a descriptive name that reflected the product at the heart of the business of the company upon whose behalf the Domain Name was registered.

6.20 There is no suggestion that the GEMS business is anything other than genuine, and it appears clear that GEMS traded under a name which incorporates the words “Minibar Systems” from its inception over six years ago.

6.21 The fact that the registered Respondent is not GEMS but instead Mr. Musk is curious. A panel is likely to be sceptical of claims that a domain name has been registered on behalf of another person without compelling evidence to this effect (see, for example, the decision of this Panel in McMullan Bros. Limited and others v. Web Names Ltd, WIPO Case No. D2004-0078). However, in this case there is evidence before the Panel from GEMS (or to be more accurate what appears to be the US subsidiary of GEMS) that supports the Respondent’s assertions in this regard. This takes the form of a letter from a Mr. Tønnesson of GEMS Systems Inc. to the Complaint dated September 25, 2003, which proceeds on the assumption that GEMS is the owner of rights in the Domain Name and states:

“the domain names “minibarsystems.com, minibarsystems.net, minibar-systems.com and minibar-ststems.net were established and registered during the inauguration days of GEMS in 1997 and 1998. We spent time and brought in assistance to find and establish domain names that were describing for our business. As we were - and still are working with minibar systems, it was a natural move for us to protect these names …”

6.22 Therefore, in short this appears to be a case where the Domain Name is generic in nature, is at least in part descriptive of the long standing business activities of the entity on whose behalf it was registered, and forms part of that entity’s registered name. The list of circumstances in paragraph 4(c) of the Policy in which a Respondent can show legitimate rights and interest is non-exhaustive. In this case, the Panel concludes that Respondent has shown a sufficient interest in the Domain Name, or, to be more accurate, the Complainant has failed to show that the Respondent does not have legitimate rights and interests in the Domain Name as is required under paragraph 4(a)(ii) of the Policy.

6.23 The Panel notes that the Respondent has not sought to use the Domain Name since its registration well over six years ago. In many cases this is a factor which might well be compelling evidence that points to a conclusion of no legitimate rights or interests. However, on the specific facts this case, it is not a sufficient reason to justify a finding in the Complainant’s favour.

Registered and Used in Bad Faith

6.24 Paragraph 4(a)(iii) of the Policy requires that the Domain Name was registered by the Respondent, and has been used, in bad faith. Even if the Panel is wrong in its assessment of whether or not the Respondent has a legitimate interest in the Domain Name, the factors described in paragraphs 6.17 to 6.23 above suggest that in any event the Domain has neither been registered nor used in bad faith. There are, however, two specific allegations on the part of the Complainant that require further comment.

6.25 Firstly, the Complainant “presumes that the Respondent bought the domain name MINIBAR SYSTEMS with the purpose of obtaining an illicit gain” on the basis that the Respondent is a developer of “Internet pages”. The Panel assumes that this is a reference to paragraph 4(b)(i) of the Policy, which states that the following is evidence of registration and use in bad faith:

“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.”

6.26 The reference to the Respondent being a developer of “internet pages” does not take the Complainant very far in circumstances where (i) the Complainant’s only evidence in this respect is the work the Respondent has undertaken for GEMS, (ii) the Respondent has answered that at the relevant time it was employed by GEMS; and (iii) evidence has been provided from GEMS which appears to have been in the Complainant’s possession for over a year and a half that supports the Respondent’s contention that the Domain Name was registered on behalf of GEMS.

6.27 The Panel accepts that GEMS was prepared during discussions in 2003 to sell the Domain Name (together with other domain names) to the Complainant. In particular, in the letter of September 25, 2003, already referred to above, Mr. Tønnesson asserted:

“As a compensation for initial research, establishment and maintenance cost for the four domain names, we are willing to consider transferring the rights for all four names at a total sum of USD 10,000.”

The Panel is also sceptical that 10,000 United States dollars simply represents (as the Respondent asserts) “accrued actual expenses”. Certainly the Respondent has failed to provide documentary evidence of those expenses as referred to in paragraph 4(b)(i) of the Policy.

6.28 Nevertheless, the Panel is unable in the circumstances of this case to infer from this letter that the Domain Name was registered for the purpose of sale, or transfer to the Complainant. Of course, sale or transfer to a competitor of the Complainant would be sufficient, and in this case since the name was not registered in the name of GEMS but in the name of the Respondent, it might be said that this requirement is satisfied. However, even if this is the case (and assuming in the Complainant’s favour that it and GEMS are indeed competitors), there is no evidence before the Panel from which it might infer that the Respondent intended to obtain from GEMS valuable consideration in excess of his documented out-of-pocket costs. Any claim by the Complainant based upon paragraph 4(b)(i) of the Policy therefore fails.

6.29 Second, the Complainant asserts that is to be presumed that the Respondent bought the Domain Name in order to “prevent the Complainant’s advertising strategies on the Internet”. However, no evidence is advanced by the Complainant to back up this assertion. Without such evidence the Panel does not consider this allegation further.

6.30 Accordingly, the Panel finds that the Complainant in this case has failed to show that the Respondent registered and used the Domain Name in bad faith as required by paragraph 4(a)(iii) of the Policy.

7. Decision

7.1 For all of the foregoing reasons, the Complaint is denied.

Matthew S. Harris
Panelist

Dated: March 2, 2005