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The Lords Commissioners of Her Majesty’s Treasury v. ITIL International [2005] GENDND 397 (10 May 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Lords Commissioners of Her Majesty’s Treasury v. ITIL International

Case No. D2005-0230

1. The Parties

The Complainant is The Lords Commissioners of Her Majesty’s Treasury, acting through the office of Government Commerce, Norwich, Norfolk, United Kingdom of Great Britain and Northern Ireland. The Complainant is represented by the Treasury Solicitor, through Mr. Roger Matthews.

The Respondent is ITIL International, Usha Bhavan, MCIE, New Delhi, India.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 2, 2005. On March 2, 2005, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On March 8, 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 on March 16, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was April 5, 2005. A purported Response was filed with the Center on April 14, 2004, by “Information Technologies (India) Ltd.” claiming to be the owner of the disputed domain name since January 9, 1998.

The Center appointed the Honourable Sir Ian Barker QC, Mr. Michael D. Cover and Ms. Harini Narayanswamy as panelists in this matter on April 26, 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.

The registered owner of the disputed domain name is ITIL International. The Complaint was served on the registered billing contact, Manoj Srivastavi, at the registered address of him and of the registrant i.e. Usha Bhavan, MCIE, New Delhi, India. It was also served on Sandeep Gupta at the registered address for the Administrative & Technical Contacts, i.e. MCIE, New Delhi, India.

The letter from Information Technologies (India) Ltd., calling itself “The Knowledge Company” shows the address for its corporate office as Usha Bhavan, Mohan Co-op Estate, New Delhi, India. This appears to be the same address as that of the two recipients of the Complaint.

The letter states that Espire Infolabs Pvt. Ltd., formerly known as ITIL International Pvt. Ltd., had received the Complaint but that that company is a separate legal entity with its own independent management and shareholders. The disputed domain name does not belong to it.

As was pointed out by the Complainant’s solicitor in an email to the Center dated April 13, 2005, the Complainant followed correct procedure in citing ITIL International as the Respondent. Also, there is no evidence of any assignment from the named registrant to Information Technologies (India) Ltd.

Despite the coincidence of addresses, given the lack of evidence of either the assignment of the name or of the disavowal by ITIL International Pvt. Ltd. of any connection with ITIL International, the Panel does not feel justified in considering the purported Response. See Unilever Plc v. ABC Corp, WIPO Case No. D2003-0164. In that case, a purported Response from a person claiming that he had acquired the disputed domain name from the registered owner was not considered by the Panel. It was noted that the proper Respondent to an administrative proceeding is the entity registered as owner at the date when the Registrar receives notice of the proceeding. The Response here should have come from the registered owner of the domain name.

4. Factual Background

(a) The Complainant is the owner of the registered trademark ITIL in the United Kingdom of Great Britain and Northern Ireland, the European Community, the United States of America, Canada and Switzerland.

(b) The Complainant has been using the mark world wide since 1989, including in countries, such as India, where it has no trademark registration. It has various domain name registrations using the word “itil”.

(c) A licensee of the Complainant, Itpreneurs, uses the ITIL mark in New Delhi, India.

(d) On February 9, 2005, the Complainant received an email addressed to “ITinfrastructure Managers” inviting bids for the disputed domain name. The email described the name as “the coveted domain for IT Infrastructure Business”. Replies were to be addressed to the administrative contact address for the disputed domain name.

(e) On February 11, 2005, the Treasury Solicitor replied to this email notifying the sender of the Complainant’s rights in the disputed domain name and offering to pay reasonable out-of-pocket expenses. No reply was received.

(f) The disputed domain name was registered on January 9, 1998.

5. Parties Contentions

A. Complainant

(a) The disputed domain name is similar to the trademarks in which the Complainant has rights.

(b) The Respondent has no rights in the disputed domain name.

(c) The Respondent should have known of the reputation of the fame of the Complainant’s mark and brand because of:

(i) The Complainant’s licensee in New Delhi.

(ii) The prominence of the brand world-wide.

(iii) The targeting of the Complainant as a potential purchaser of the name.

(iv) The Respondent’s knowledge of the IT market, as evidenced by its email.

(d) The attempt to sell the domain name, addressed to IT infrastructure managers, referring to it as “the coveted domain name for IT Infrastrcture Business”.

B. Respondent

Although the Panel has not admitted the Response, it notes that Information Technologies (India) Limited baldly asserts that it has provided IT consulting services worldwide since 1992, with the logo ITIL in bold. It offers no evidence. It does not attempt to refute the Complainant’s allegation as to the fame of its mark and its presence through a licensee in the Indian market. It merely asserts that it tried to sell the name because it was in financial difficulties but gives no supporting evidence.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to:

“decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these rules and any rules and principles of law that it deems applicable.”

The burden for the Complainant, under paragraph 4(a) of the Policy, is to show:

- that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- that the Respondent has no legitimate rights or interests in respect of the domain name; and

- that the domain name has been registered and is being used by the Respondent in bad faith.

A. Identical or Confusingly Similar

The disputed domain name is identical to the Complainant’s registered trademarks. It does not matter for the purpose of this criterion that the mark is not registered in the jurisdiction in which the Respondent resides. Absence of such registration can be relevant under the other two criteria.

B. Legitimate Rights & Interests

The Complainant gave the Respondent no legitimate rights or interests in respect of the disputed domain name. The fact, on its own, can be sufficient to prove the second criterion. Paragraph 4(c) of the Policy sets out matters which a Respondent is entitled to raise which, if found by a Panel to be proved based on an evaluation of all evidence presented, could demonstrate a Respondent’s rights or legitimate interests to a domain name. The purported Response, even if it were admissible, goes nowhere to establishing any of the 4(c) criteria because of its complete lack of evidence to support its assertions, even assuming it were the true registrant.

C. Bad Faith Registration

The Panel considers this criterion proved. The disputed domain name was registered in 1998. If the Respondent were involved in IT, it must have known that the name was valuable.

In some cases, it is difficult to infer bad faith at the time of registration where the Respondent is in a country other than that where the Complainant’s marks are registered. See, for example, KCTS Television Inc v. Get-on-the-Web Limited, WIPO Case No. D2001-0154. In that case, the Respondent provided two affidavits to the effect that it had never heard of the Complainant until after the domain name had been registered. Moreover, the Panel could not infer that the call-sign of a television station in the US North-West and British Columbia would or should be known by persons in London, England.

See also VZ VermögensZentrum AG v. Anything.com, WIPO Case No. D2000-0527, where bad faith use but not bad faith registration was able to be inferred. The Complainant’s mark had currency only in Switzerland and Germany whereas, at the time of registration of the disputed domain name, the Respondent was resident in the Cayman Islands. The domain name and mark were a combination of two letters and there was evidence that the Respondent was a wholesaler of “catchy” names. The Panel was thus unable to infer that there had been bad faith registration.

Here the unchallenged evidence of the Complainant is that it has been using the mark in connection with IT services world wide since 1989. It sells IT services and practice publications, and offers professional training. The Complainant offered no evidence as to when it first licensed its Indian agents. Without evidence to the contrary, the Panel accepts the Complainant’s assertion of its prominent position worldwide in the IT Business since 1989.

The Panel is able to infer both bad faith registration and use by reason of the Respondent’s solicitation of bids to buy the disputed domain name. Accordingly, the third criterion is proved.

7. Decision

For the foregoing reasons, the Panel decides:

(a) That the domain name <itil.com> is identical to trademarks in which the Complainant has rights;

(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 is being used in bad faith.

Accordingly, pursuant to paragraph 4(a) of the Policy, the Panel requires that the registration of the domain name <itil.com> be transferred to the Complainant.

Sir Ian Barker QC Presiding Panelist
Mr. Michael Cover Panelist	Ms. Harini Narayanswamy Panelist

Dated: May 10, 2005