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OTEnet Societe Anonyme v. Baou Inc. [2005] GENDND 363 (24 May 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

DigiPoll Ltd. v. Raj Kumar

Case No. D2004-0939

1. The Parties

The Complainant is DigiPoll Ltd., Hamilton, New Zealand, represented by Stephen Mascarenhas, New Zealand.

The Respondent is Raj Kumar, Costa Mesa, California, United States of America, represented by Raj Kumar, United States of America.

2. The Domain Name and Registrar

The disputed domain name <digipoll.com> is registered with Tucows.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 10, 2004. On November 10, 2004, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On November 10, 2004, Tucows 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 November 24, 2004. 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 December 15, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was January 4, 2005. The Response was filed with the Center on January 5, 2005.

The Center appointed The Honourable Neil Anthony Brown QC as the Sole Panelist in this matter on January 13, 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.

On January 18, 2005, and pursuant to Rule 12, the Panel issued Administrative Panel Procedural Order No. (1) requesting the Complainant to submit to the Center and serve on the Respondent a further statement and any documents necessary to verify the contents thereof, on several matters set out in the Order. The Complainant complied with the Order by means of a Response dated January 25, 2005. The Complainant has advised the Center that it served its Response on the Respondent on January 25, 2005. The Respondent did not reply to the Complainant’s Response.

4. Factual Background

The Complainant (‘DigiPoll’) is a private limited company that was incorporated in New Zealand on May 6, 1997. Its business is providing fieldwork for market research and public opinion polls and in the course of this work its employees conduct telephone interviews and surveys.

The word ‘DIGIPOLL’ has been registered as a trademark in each of New Zealand, Australia and the United States of America (“USA”). It was registered in New Zealand on July 16, 1999, in Australia on June 23, 2000, and in the USA on November 28, 2000.

Each of those registrations is in the name, not of the Complainant, but in the name of Gabriel Pessach Dekel who is one of its two shareholders and one of its two directors, the other shareholder and director being his wife.

It is common ground that the Respondent is the registered owner of the contentious domain name <digipoll.com>, having registered it on June 28, 2001. The Complainant had registered the domain names <digipoll.co.nz>, <digipoll.net>, <digi-poll.net>, <dgpoll.com> and <digipoll.com.au>.

The dispute that has emerged is one where the Complainant maintains that it owns the trademark ‘DIGIPOLL’ and that the domain name <digipoll.com> should be transferred to it, whereas the Respondent claims that he has the domain name for its own legitimate business purposes and that he should not be ordered to transfer it.

5. Parties’ Contentions

A. Complainant

DigiPoll’s case is that the domain name should be transferred to it because it can make out each of the three elements set out in paragraph 4(a) of the Policy and because transfer of the domain name is the appropriate remedy.

Thus, it argues, first, that the domain name <digipoll.com> is identical to or confusingly similar to its trademark “DIGIPOLL”. The Complainant relies for this purpose on its registered trademarks in New Zealand, Australia and the USA and on unregistered trademarks that it has established in other countries where it conducts its business and where it has developed a good name and reputation. The Complainant’s argument is that the domain name and the trademarks are ‘absolutely identical’.

Secondly, DigiPoll contends that, within the meaning of paragraph 4(a) of the Policy, the Respondent has no rights or legitimate interests in respect of the domain name. It claims that the Respondent has not used or made preparations to use the domain name for a bona fide offering of goods or services, that he is not commonly known by the domain name because his business name is Interspectrum, not DigiPoll and that he is not making a legitimate non-commercial or fair use of the domain name. On the contrary, it contends that the Respondent’s real intention has always been to sell the domain name and in the meantime to mislead and divert consumers into other websites.

DigiPoll contends, thirdly, that the domain name was registered and is being used in bad faith. It claims that this third element is made out by the presence of several matters: that the Respondent has really been motivated by a desire to sell or rent the name, that he has actually gone as far as leasing it to a competitor of DigiPoll, allowed on his site an advertising pop-up link to a pornographic site, chosen a name which could conceivably misdirect consumers to a site other than DigiPoll’s and done so to create confusion and make money and that he has in fact engaged in similar ‘domain capturing’ in the past.

B. Respondent

The Respondent has entered a trenchant defence to all of these allegations.

With respect to the first of them, he rejects the contention that the domain name is identical to or confusingly similar to the trademark and addresses most of his argument to the ‘confusingly similar’ element,

On the second criterion, the Respondent seeks to refute the suggestion that he has no rights or legitimate interests in the domain name by saying that he has a legitimate interest in it. The legitimate interest he relies on is that he intends to use the name in his own business and that ‘digipoll’ is a description of what that business will do, namely the polling of public utility meters.

He also seeks to refute the suggestion that he is merely using the domain name to make money by allowing advertisements on it. He replies to this argument by contending that this is just the process of ‘standard’ parking of a domain name until he develops his new polling business.

To the extensive allegations of bad faith made against him the Respondent denies that there has been any bad faith on his behalf. He denies ever having offered to sell the domain name to the Complainant, although he concedes that there were some discussions that were initiated by DigiPoll.

The Respondent also denies he has engaged in multiple domain name registrations, that he has ever linked the domain name to DigiPoll’s alleged rival Digivote, connected it to a pornographic or gambling site or tried to extort money from DigiPoll.

The Respondent goes on to argue that the Complainant has engaged in ‘typosquatting’ by registering two domain names that are very similar to the name of its competitor Digivote Ltd and is engaging in the same conduct as it alleges against the Respondent. Moreover the Respondent contends that the Complainant’s website “www.digivote.com” resolves to an active website offering a range of goods and services’, so as to disrupt their competitor Digivote Ltd.

It will be seen from the foregoing summaries that there is a litany of rival contentions, that the two parties agree of virtually nothing, that they attempt to make substantially the same case against each other and that they join issue on every relevant issue.

6. Discussion and Findings

Both the Complainant and the Respondent made additional filings that were not requested under Rule 12. These filings simply repeated the submissions already put by the parties and it is not necessary to refer to them further.

The issue to be decided in the light of the competing submissions of the parties is whether the Panel should require that the domain name be cancelled or transferred.

The Policy provides that such a requirement may be ordered if the Panel finds that the domain name is identical or confusingly similar to the trademark, that the Respondent has no rights or legitimate interests in the domain name and that the domain name has been registered and is being used in bad faith. Paragraph 4(a) expressly provides that the Complainant must prove all three elements. Thus, if the Complainant fails to prove any one of the three elements it fails in its application under the Policy.

Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted and paragraph 4 of the Policy provides that ‘…the complainant bears the onus of proof’. As the proceeding is a civil one, the Complainant bears the onus of proving its case on the balance of probabilities. The Complainant must therefore establish all three of the elements specified in paragraph 4 (a) of the Policy on the balance of probabilities before an order can be made to cancel or transfer the domain name.

Those three elements are:

A. That the Respondent’s domain name is identical or confusingly similar to a trade or service mark in which the Complainant has rights; and

B. That the Respondent has no rights or legitimate interests in respect of the domain name; and

C. That the domain name has been registered and used in bad faith.

A. Identical or Confusingly Similar

The ultimate question here is whether the contentious domain name <digipoll.com> is identical to or confusingly similar to the trademark “DIGIPOLL”. But it is clear that there is an important preliminary question to be answered, which is whether the trademark “DIGIPOLL” is a trademark or service mark ‘…in which the complainant has rights (emphasis added)’ In other words, it is not enough that the contentious domain name is identical with or confusingly similar to a trademark or a service mark that can be located somewhere and owned by someone. Rather, the trademark or service mark must be one in which the Complainant has rights.

So the Complainant must establish, not simply that there is a trademark owned by someone that has been compromised by the offending domain name, but that a trademark in which it, the Complainant, has rights has been so compromised.

It is also clear that the Complainant need not establish that it is the owner of the trademark, although this will often be the case where the Complainant alleges an interest or a right in a trademark. It is sufficient if the Complainant has what the law recognises as ‘rights’ in the trademark, even if such rights fall short of actual ownership. Such a right will often arise from a licence granted by the legal owner of the trademark to another party so that the latter may use the mark. Moreover, as such rights are contemplated by trademark legislation and are well recognized, there is no reason why they should not constitute ‘rights’ within the meaning of paragraph 4(a)(i) of the Policy.

It is also clear that the Complainant need not be the only person or entity with rights in the trademark. This aspect is sometimes expressed by saying that the rights that must be established in the complainant need not be exclusive rights.

Accordingly, the first question is whether, applying those principles, the Complainant has established that it has rights in the trademark “DIGIPOLL”. It will be recalled that the Complainant’s case is that it has a trademark in the name ‘DIGIPOLL’, that the trademark is registered in three jurisdictions and that it is a common law trademark in other jurisdictions.

In its Complaint, dated November 3, 2004, the Complainant initially put it that “The Complaint (sic) registered the trademark ‘digipoll’ in the year 2000”. At a later point in the same document, the Complainant added:

“DigiPoll Ltd. is the owner of the trademark ‘digipoll’ in various countries including the United States of America. The Complainant conducts its business in various countries including the United States of America and hence is the rightful owner of this trademark”

The Complainant then annexed a copy of ‘the registration certificate’ which was the United States’ registration and it was indeed the registration of the name ‘DIGIPOLL’ as a service mark. Such a service mark is to be regarded for present purposes as a trademark.

However, the registration was not in the name of the Complainant but in the name of Gabriel Pessach Dekel, the founder of the Complainant company. It seemed to the Panel at that stage that the Complainant’s case was therefore based on only one registered trademark or service mark, namely the American one and that the trademark was not registered in the name of the Complainant.

The US registration also referred on its face to ‘Owner of New Zealand Reg. No. 304847, dated March 29, 1999, expires March 29, 2009’. This suggested that there was also in existence a New Zealand trademark, although the Complainant had hitherto not referred to it.

The Panel concluded in the light of this evidence that there was a need for clarification of what case the Complainant was putting and what evidence there was in support of it. Accordingly, the Panel decided that this was an appropriate case, pursuant to Rule 12, to request further statements and documents from the Complainant and that the Respondent should have the opportunity to reply to whatever further statements and documents the Complainant submitted.

The Procedural Order

The Panel therefore issued an Administrative Panel Procedural Order on January 18, 2005, to put that request into effect and to elicit any further evidence that the Complainant relied on to establish any common law rights that there might be in an unregistered trademark. In response, the Complainant submitted a Response in which it submitted further factual material and to which it annexed further documents.

The Complainant also informed the Center that it served copies of its Response on the Respondent both by email and in hard copy on January 25, 2005. The Respondent has not submitted a reply to the Complainant’s response.

The registered trademarks

The facts emerging from the Complainant’s Response to the Procedural Order are that the trademark ‘DIGIPOLL’ was registered in New Zealand on July 16, 1999, in Australia on June 23, 2000, and in the USA on November 28, 2000. It will be recalled that documentary evidence of the registration in the USA had been annexed to the original Complaint. Annexed to the additional Response were certificates of registration by the appropriate trademark authorities in New Zealand and Australia, so it is clear that at all material times and before the contentious domain name was registered there were in fact trademarks registered which are identical to the domain name.

But both of them, like the registration in the USA, were in the name of Gabriel Pessach Dekel and not in the name of the Complainant. Accordingly, none of the registered trademarks relied on by the Complainant are in the name of the Complainant. They are clearly trademarks in which Dr. Dekel has rights, but the question remains whether there is any evidence showing that they are also trademarks in which the Complainant has rights.

The Complainant contends that it does have rights in the trademarks. Its evidence in this regard is that Dr. Dekel founded the Complainant company, single handedly built it up, in effect runs the company and instigated the present complaint. Moreover, the Complainant says that the Complainant has used the trademark in connection with its services ‘with the full authority, licence and consent of the formal owner viz. Gabriel Pessach Dekel’. It then says that “Dr. Dekel has authorized the use of the trademark DIGIPOLL by the Complainant company…”

In support of this, the Complainant has annexed to its Response two letters dated January 24, 2005, one from Dr. Dekel and one from his wife. The letter from Dr. Dekel says that he has given his “… full authority and license to Digipoll Ltd to utilize the said trademark…”. He also says that the company is ‘the de facto owner of the trademark’. He describes in the letter the situation where since 1997 the company has in effect not only been allowed by Dr. Dekel to use the trademark in the business of the company but where, as the Chief Executive Officer and head of the management team of the company, he has in effect directed it to do so.

He also explains how this situation came about by saying that:

“When the trademark for DIGIPOLL was registered in 1999, the reason I registered it in my name was that I was concerned at that stage, that should the company not survive I would lose the trademark.”

Moreover, he says that he has authorized the company ‘to protect the integrity and rightful use’ of the trademark. The letter from Mrs. Dekel supports Dr. Dekel’s letter.

The Panel has concluded that the totality of this evidence shows that Dr. Dekel granted a licence to the Complainant to use the registered trademarks, that the licence has remained on foot during all material times and that it conferred on the Complainant a right in the trademarks for the purposes of paragraph 4(a)(i) of the Policy. That is so for the following reasons.

First, the evidence is that Dr. Dekel intended to confer an oral licence on the Complainant. Such an oral licence is valid under the New Zealand Trademarks Act 2002 and, in the absence of any evidence or argument to the contrary and in the absence of any evidence or reason why such a licence would not have been granted, the Panel is prepared to accept the evidence that it was. Indeed, it would be somewhat unreal to ignore these facts for it is clear that what was happening in reality is that Dr. and Mrs. Dekel were directing and requiring their own company to use the trademark, which they clearly had power to do, being its only directors and shareholders.

In any event, even if this arrangement did not amount to an express licence, the only rational conclusion to draw from the facts is that it created an implied licence.

That being so, the licence conferred rights on the Complainant which, although different from the rights that Dr. Dekel had as the registered owner of the trademark, were nevertheless rights which meet the requirements of paragraph 4(a)(i) of the Policy.

The views just expressed follow several UDRP decisions where other Panels have been faced with the same similar issue. Thus, in American Civil Liberties Union of New Mexico v. Vilma Morales/e:boom, S.A., WIPO Case No. D2004-0473, the Panel said:

“The first question to be answered is whether Complainant has rights in a mark to which the disputed domain name is alleged to be identical or confusingly similar. These rights need not be rights of ownership and need not be exclusive. A licensee having the right to use a mark under its license is clearly a party having a right in the service or trademark. A Complainant, through its affiliation with its grandparent corporation which owns a trademark registration, has been held to have rights in and duties concerning the mark (Miele, Inc. v. Absolute Air Cleaners and Purifiers, WIPO Case No. D2000-0756).”

That decision reiterates the twin notions that a licence to use a trademark is a ‘right’ for the purposes of the Policy and that such a right is effective for that purpose even when another entity also has rights in the trademark.

In that case, the trademark was owned by the Complainant’s corporate grandparent, but in Sunlane Media, d/b/a Liteerotica Free Adult Community v. Lucien de Cassan, WIPO Case No. D2002-0093, as in the present case, the trademark was owned by an individual who was the owner and controller of the Complainant company and the case is therefore directly in point. The licence granted by the individual was held to be sufficient to confer a right on the Complainant company to bring and succeed in the Complaint.

Likewise, the decisions of panels in Grupo Televisa, S.A., Televisa, S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpal, Ltd v. Party Night Inc., a/k/a/ Peter Carrington, WIPO Case No. D2003-0796 and Brown Thomas & Company Limited v. Domain Reservations, WIPO Case No. D2001-0592 are to a similar effect and should be applied here.

Inevitably, the cases where such an issue arises will involve different fact situations and decisions must be made on the totality of the evidence adduced. Thus in Applegate Directory Ltd. v. Interlution a/k/a/ Mathew Bessette, WIPO Case No. D2004-0181, a panel found that the complainant who was not the owner of the registered trademark had failed to make out a case that it had any other rights in the mark.

But in the present case the Complainant provided letters from Dr. Dekel and his fellow shareholder and director to the effect that he had in fact granted a licence to the Complainant company to use the trademark. The Panel is also influenced by the fact that Dr. Dekel had allowed it to do so for over seven years and had been instrumental in having it bring these proceedings to protect his trademark.

Accordingly, the evidence shows that the Complainant has a licence to use the trademarks and, consequently, rights in the registered trademarks which are sufficient to make out a case under paragraph 4(a)(i) of the Policy.

The unregistered trademarks

In response to paragraph (h) of the Procedural Order, the Complainant amplified its case and contended that as well as the registered trademarks that it relied on, it asserted common law trademark rights in other countries where it traded. In support of this, the Complainant annexed as Exhibit 7 to its Response a series of invoices and job orders showing the work that it has done and been paid for in various countries.

This evidence related to comparatively recent times, but the totality of the evidence is that the Complainant has been developing its overseas business and the goodwill that goes with it progressively over the years. As such, that evidence and the other material submitted showing the history and activities of the Complainant shows that the Complainant has developed a name and reputation in Australia, the USA, Canada, South Africa and the United Kingdom as well as in New Zealand, in all cases using the ‘DIGIPOLL’ trademark. It is also very clear that this has been done at the request and direction of Dr. Dekel, the owner of the registered trademarks.

Accordingly, the Panel finds that the Complainant has acquired common law rights in the trademark ‘DIGIPOLL’ in Canada, South Africa and the United Kingdom.

The final question for the purposes of paragraph 4(a)(i) of the Policy is whether the contentious domain name <digipoll.com> is identical to or confusingly similar to the registered and unregistered trademarks ‘DIGIPOLL’. It is clear that a Complainant need only establish one or the other; i.e., if it cannot be established that the two are identical then it is sufficient to show that they are confusingly similar. The Panel finds that the domain name is identical to the trademarks: the word ‘digipoll’ appears in both the trademarks and the domain name with no change at all in its spelling and the two words are phonetically and visually the same.

It will be recalled that the Respondent addressed a number of arguments as to why the two names were not confusingly similar. It is, however, not necessary to deal with those arguments when, as in the present case, the two names are identical, which they are.

The Complainant has therefore proven the first of the three elements that it must establish.

B. Rights or Legitimate Interests

The second element that the Complainant must make out is that the Respondent has no rights or legitimate interests in respect of the domain name. Paragraph 4(c) of the Policy provides in effect that, if the Respondent satisfies the Panel on any one of three given criteria, he will have shown that he has rights or legitimate interests in the domain name. The three criteria or circumstances are as follows:

‘(i) before any notice to you (i.e., the Respondent) of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making 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 at issue.’

Not only is a respondent given the opportunity to prove one or more of those circumstances, but the three criteria are ‘without limitation’ or, in other words, they are not exclusive. So a Respondent may rely on other circumstances in addition to the three specified ones to prove that he has rights or legitimate interests in the domain name.

The Respondent has submitted a Response in which he argues that he comes within sub-paragraph (i), i.e. that he has in effect been using the domain name for a legitimate business. In the section of his Response entitled ‘THE COMPLAINANT’S FACTUAL GROUNDS ARE FALSE’, he says that he (the Respondent):

“…reserved the Subject URL for the purpose of developing a future service in the area of automated collection of utility meter data which involves on demand polling of Automatic Meter Reading (AMR) devices at regular intervals, using a variety of communications technologies for the various public utilities, such as gas, water, and electric.”

Later in his Response, the Respondent turns to the specific issue now being considered and deals with it in the following way:

“RESPONDENT’S HAS A LEGITIMATE INTEREST IN THE SUBJECT URL AND HAS NOT ENGAGED IN ANY INFRINGING ACTIONS”.

“Since Respondent secured control of the Subject URL, on June 28, 2001, the Respondent’s intention is to utilize the Subject URL in connection with developing a future service in the area of automated collection of utility meter data which involves on-demand polling of Automatic Meter Reading (AMR) devices at regular intervals, using a variety of communication technologies for the various public utilities, such as gas, water, and electric.”

The Respondent also makes the point that he registered the domain name innocently and that he had no knowledge of the Complainant’s trademark. He also states that he registered another domain name, <digimetrix.com> to further the proposed business venture.

This, then, is really the case for the Respondent, that he did not know about the Complainant’s trademark and that he registered the domain name in preparation for a business that he intended to establish. For the purposes of these proceedings, he puts his case squarely on coming within sub-paragraph (i), i.e. that the facts show his use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services.

Having regard to all of the evidence, the Panel concludes that the Respondent has not brought himself within that sub-paragraph. The reason why that is so is as follows.

First, he has not shown that, before any notice was given to him of the dispute, he had actually used the site for the bona fide offering of goods or services. Indeed, he does not really attempt to show that, for it is not part of his case. His case is not that he has actually used the domain name for a bona fide offering of goods or services, but rather that he has always intended to use the domain name for that purpose and still intends to do so.

The question, then, is whether he can bring himself with the second leg of sub- paragraph (i) by showing that, before he was given notice of the dispute, he made demonstrable preparations to use the domain name for a bona fide offering of goods and services. In other words, had he made any preparations for the business and are those preparations capable of being shown or demonstrated?

The Respondent devotes only a few words to declaring the sort of business he has proposed to establish, namely a business where data from public utility meters will be collected by means of automatic reading or polling of those meters on demand.

It is conceivable that using a domain name in the purpose suggested could be a bona fide offering of services, say to consumers who presumably would check in from time to time to see the size of their utility bills. If that were the business that the Respondent was preparing to set up, he could succeed on this issue if he could show that, before he had notice of the dispute, he made some demonstrable preparations to use the domain name in this way even if he did not actually get the business going.

But that is exactly the problem which the Respondent has presented to the Panel, for the only details of the business that the Respondent has given and hence the only evidence on the subject, are the particulars that have been quoted above from the Response.

Sub-paragraph 4(c)(i) of the Policyclearly requires the Respondent to go much further than that. It requires proof of ‘demonstrable preparations’ to use the domain name in that way and it requires that the proof will be based on evidence.

What evidence is sufficient to constitute proof of demonstrable circumstances will of course depend on the particular circumstances of each case and will vary from case to case. Clearly, it is not necessary to show a fully operational business, for it is sufficient if the steps taken are only preparations. At the other end of the scale, an idea without any real preparations to put the idea into practice cannot be sufficient. At the very least, there must be preparations, even if, as was said in the recent decision in Donvand Limited trading as Gullivers Travel Associates v. Gullivers Travel/Gulliver’s Travel Services, Gullivers Travel Agency and Metin Altun/GTA, WIPO Case No. D2004-0741, those preparations were ‘perfunctory ‘, meaning superficial or mechanical.

The question then is, what has the Respondent shown that he has actually done?

He has of course registered the domain name as part of his preparations. But it is now well established that the mere registration of a domain name cannot establish any rights or legitimate interests in it: Studio Peyo S.A., International Merchandising Promotion and Services (I.M.P.S.) v. WWProductions, WIPO Case No. D2004-0768.

He also says that, in further preparation for the business, he registered another domain name, <digimetrix.com>. But the registration of a domain name could hardly be ‘demonstrable preparations’ for the use of the contentious domain name, at least in the absence of some explanation of how it was to be used.

The question then is whether there are other steps that were taken by the Respondent that amount to ‘demonstrable preparations’. The Respondent’s case on this issue falls down because there is no evidence of what, if any, preparations he has made. There is no evidence of a business plan or partners, the proposed technology or how it would function, how the business would be financed, a timetable or, indeed, evidence of a single fact about the business other than the intention to develop it at some indeterminate time in the future.

It is difficult enough to reach conclusions on facts when mere assertions are made and previous UDRP Panels in cases such as Societe General and Firmat International Banque v. Lebanon Index/La France DN and Elie Khouri, WIPO Case No. D2002-0760 and Wild West Domains, Inc. v. Byrnne Heaton, WIPO Case No. D2004-0789 have drawn attention to this problem and the need for evidentiary material to resolve it. So there must be evidence, it must be evaluated and it must prove the particular element contended for. In the instant case, the Respondent has not presented any such evidence; there is no evidence to evaluate and nothing going to prove the particular element that the Respondent relies on.

The Panel, therefore, finds on the evidence that there were no demonstrable preparations by the Respondent to use the domain name in connection with his proposed business or any other bona fide offering of goods or services.

Instead of showing any demonstrable preparations that he has made, the Respondent has merely asserted that he has had an inchoate idea that has been harbored for several years.

The decision in the Societe General Case, supra and the decision that the Panel has reached in the present case are also consistent with and analogous to decisions in other UDRP cases such as Medisite S.A. R.L. v. Intellisolve Limited, WIPO Case No. D2000-0179, Yandex Technologies Ltd, Comptek International Ltd, Yandex Inc v. Law Bureau of Moscow City Collegium of Advocates, WIPO Case No. D2001-1486, Freddy Adu v. Frank Fushille, WIPO Case No. D2004-0682 and Kevin Garnett v. Trap Block Technologies, FA 128073 (NAF 2002). Respondents in those cases had not shown that they had actually done anything tangible towards using the domain name for a bona fide offering of goods or services and mere intentions were held to be insufficient.

In particular, it was said in the last of those cases, in words reminiscent of the present case, that ‘Respondent’s placeholder format is inadequate evidence of preparation to use the site; like any other placeholder it merely reserves the web address for future use’.

Accordingly, applying the provisions of paragraph 4(c)(i) of the Policy to the facts, the Panel concludes that the Respondent has not brought himself within the provisions of that sub-paragraph.

That is the only ground on which the Respondent has specifically sought to bring himself within the exemptions set out in paragraph 4(c) of the Policy. He makes other wide-ranging criticisms of the Complainant’s case but none of them would bring him within either of the two remaining sub-paragraphs of paragraph 4(c). He clearly has not been commonly known by the domain name, which puts him outside sub-paragraph (c) (ii) and there is no basis for concluding that he was making a legitimate noncommercial or fair use of the domain name, which excludes him from sub-paragraph (c)(iii).

The other matters alleged will, of course, be important in the resolution of the final issue, namely whether the domain name has been registered and is being used in bad faith.

In the meantime, for the reasons given, the Complainant has succeeded on the second element and has shown that, within the meaning of the Policy, the Respondent has no rights or legitimate interests in respect of the domain name.

C. Registered and Used in Bad Faith

The third issue is whether the domain name has been registered and is being used in bad faith.

There are several things that can be said about this criterion. The first is that paragraph 4(b) of the Policy lists three circumstances, proof of any one of which is to be taken as evidence of registration and use of the domain name in bad faith. The second is that those three circumstances are not exclusive, i.e. a complainant may rely on circumstances other than those set out to establish evidence of registration and use of the domain name in bad faith. Thirdly, any such circumstances have to be relevant and consist of cogent evidence capable of persuading a panel, acting responsibly, to come to the conclusion that they show registration and use of the domain name in bad faith. Fourthly, the paragraph requires not simply proof of registration or use of the domain name in bad faith, but both of those criteria, i.e. proof that the respondent both registered and used the domain name in bad faith.

As with all other issues in this proceeding, the parties have made strong and completely opposing assertions and have submitted conflicting evidence in support of their contentions. As a result, it is difficult to reach many certainties and the Panel is inevitably driven to reach conclusions on what probably happened on each issue rather than what definitely happened.

The first issue is whether, as the Complainant contends, the case comes within the first of the three indicia of evidence of bad faith set out in paragraph 4(b)(i), which is, in substance, whether the Respondent registered the domain name primarily for the purpose of profiteering by selling it.

The conclusion of the Panel is that, within the meaning of paragraph 4(b)(i), the Respondent probably registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name for valuable consideration in excess of his documented out-of-pocket costs directly related to the domain name. The Panel is influenced in reaching this conclusion by the following facts:

(i) the trademark was registered and on the public record in three countries and widely used in those and three other countries before the Respondent chose it as his domain name;

(ii) although the trademark could scarcely be described as famous, it is an unusual name, which accurately describes the nature of the Complainant’s business, and there does not seem to be any cogent reason why the Respondent would have chosen the same name;

(iii) the reason given by the Respondent for the choice of the name ‘digipol’, that it is descriptive of ‘digital’ and ‘polling’, is unpersuasive, unless it were clear that the Respondent was proposing to engage in some form of digital polling; ‘polling’ means counting and although the reading of meters may be counting them, it is not a description that fits easily with that process. That makes it, in the opinion of the Panel, less probable that the reason given by the Respondent for choosing the name is correct;

(iv) although there is a dispute between the parties as to who initiated the discussions on the possible sale of the domain name, it is clear that Respondent tried to sell it for US $65,000. It has been held by an Panel that it is immaterial which party initiated the offer to sell: Al Ghurair Group LLC v. Ghurair Group, WIPO Case No. D2004-0532 and the fact that the domain name was for sale tends to suggest that eventual sale for profit was probably the true motivation for registration; the fact that this price was asked for in July 2004 tends to suggest that sale for profit remained the motivation for such use as the Respondent was making of the domain name;

(v) the fact that 3 and ½ years have passed by since the domain name was registered and yet the Respondent has not advanced at all with the setting up of his business. This raises the inference, in the absence of any other explanation, that he was waiting to sell the name;

(vi) the fact that the Respondent has not connected the name to an active website, but has simply ‘parked’ it, thus passively holding it, inevitably raises a suspicion and has been held to be capable of amounting to bad faith: Al Ghurair Group LLC v. Ghurair, supra; SAir Group v. Pat Reinhardt, WIPO Case No. D2000-0482; Kofi of Kofrica ent, Inc. v. Bubois, WIPO Case No. D2004-0683 and Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

The Complainant also relied on other matters to make out its case under paragraph 4(b)(i) of the Policy, but the Panel does not accept that any of those other matters justify the conclusion sought by the Complainant.

However, on the basis of the above matters (i) to (vi) the Panel concludes that, on the balance of probabilities, the Complainant has made out its case under paragraph 4(b)(i).

The Complainant also contends that this is a case coming within paragraph 4(b)(iv), that is to say that the Respondent, by using the name, had intentionally attempted to attract, for commercial gain, internet users to his web-site, by creating a likelihood of confusion between the Complainant’s trademark and its relationship with products or services on the Respondent’s site.

The Complainant seeks to make out its claim under this heading by asserting that the Respondent has linked its domain name with the website of a competitor of the Complainant, namely “www.digivote.com”. The Respondent hotly denies this and, on the totality of the evidence the Panel does not accept that the Respondent did what is alleged against him. Indeed, having looked at the website to which “www.digivote.cpm” resolves, the Panel doubts that Digivote is or was a competitor of Digipoll.

The Complainant also contends that the Respondent then linked the domain name with the Infosonar network, which is a gateway to a bewildering array of goods and services offered for sale. The Respondent concedes that the domain name will forward to a ‘…default “park” page of Infosonar…’, but claims that this is ‘temporary’ and ‘standard’.

That may be so, but the Panel is influenced by the fact that it is has occurred as the result of an act of the Respondent and that, as a result, the consumer seeking the company Digipoll by searching for <digipoll.com> will inevitably be led to the goods and services offered for sale by others on Infosonar.

It is difficult to resist the conclusion that, as the Respondent has set up this process, it was anything other than an attempt to divert internet users to Infosonar and hence to its paying clients and that the attempt took the form of creating confusion with the Complainant’s mark. Moreover, the false impression was given that the company being sought by the consumer, Digipoll, endorsed the products and services for sale on the Infosonar site. It is only an attempt at diversion that need be shown under paragraph 4(b)(iv) of the Policy and the Panel accepts that the Complainant’s evidence shows that such an attempt was made. The Panel also accepts that the attempt was made for the purpose of commercial gain, there being no other reason at all for its being done.

With respect to the allegation that the Respondent intentionally installed advertising pop-ups showing links to pornographic and gambling websites and that it had engaged in ‘domain capturing’, the Panel does not accept, on the limited and disputed evidence, that this was done by the Respondent.

However, the evidence that has been accepted is sufficient, on the balance of probabilities, to bring the case within the provisions of paragraph 4(b)(iv).

The Complainant has therefore been able to show two grounds of registration and use in bad faith within paragraph 4(b), namely sub-paragraphs(i) and (iv).

The Complainant has therefore made out each of the three grounds that it must establish under the Policy and it is clear that transfer is the appropriate remedy.

7. Decision

For all of the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <digipoll.com> be transferred to the Complainant.

The Honourable Neil Anthony Brown QC
Sole Panelist

Dated: February 3, 2005