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ACCOR v. ACCOR Tours [2005] GENDND 68 (27 January 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bendon Limited v. NetSphere, Inc and Jeff Baron, Compana LLC

Case No. D2004-0857

1. The Parties

The Complainant is Bendon Limited Auckland, of New Zealand, represented by Russel  McVeagh Solicitors, New Zealand.

The First Respondent is NetSphere, Inc of Irvine, California, United States of America represented by Rajiv Jain of San Juan Capistrano, California, United States of America. The Second Respondent is Jeff Baron, Compana LLC of Carrollton, Texas United States of America.

2. The Domain Name and Registrar

The disputed domain name <bendon.com> is registered with Compana LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2004. That Complaint named only the Second Respondent Jeff Baron, Compana LLC. On October 19, 2004, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the domain name at issue. On October 22, 2004, Compana LLC transmitted by email to the Center its verification response confirming that the First 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 26, 2004, adding the First Respondent to this administrative proceeding. The Center verified that the Amended 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 both the First and the Second Respondent of the Complaint, and the proceedings commenced on October 29, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was November 18, 2004. Neither Respondent submitted any response. Accordingly, on November 19, 2004 notification of Respondent default was sent by the Center to both Respondents.

On October 26, 2004, one, David Ridge of the Registrar notified the Center that the Amended Complaint wrongly included Compana LLC as Second Respondent and requested that the Complaint be further amended so as to remove the Second Respondent as a party. On October 28, 2004, the Center replied in the following terms:

“Once the Complainant has named the actual registrant as the Respondent it is not proscribed from naming any associated (in the Complainant’s opinion) entity as a second Respondent. Either or both Respondents can reply, defending their actions and the Panel will make the final decision as to the true identity of the Respondent in this case.”

Mr. Ridge replied the same day pointing to the fact that Compana LLC was not a Respondent as defined by paragraph 1 f the Rules, since the only holder of the domain name in issue is the First Respondent, NetSphere Inc. Mr. Ridge referred in this connection to paragraph 3(b)(xiv) of the Rules, which provides that the Complainant must state that its claims shall be only against the holder of the domain name in issue and must waive all claims against the registry administrator. Here, the Registrar is Compana LLC and Compana LLC is named as the Second Respondent in the Complaint.

The Center replied on October 29, 2004, in the following terms:

“Please note that Compana LLC, the registrar and Second Respondent, as named by the Complainant, has made a number of submissions to be removed from this proceeding as Second respondent. As Complainant has correctly named the Registrant of the domain name as first Respondent, the Center’s scope for requesting further amendment to the Complaint is limited. Furthermore, given that the Complaint makes a number of allegations as to co-operation between the First and Second Respondents, it is appropriate that the question of the correct Respondent be decided by the Panel.

The Center, without making any comment on the appropriateness of listing Compana LLC as Respondent in this proceeding, will send this Complaint to Compana LLC. When the Panel is appointed it will make the final decision as to the correct Respondent(s) in this proceeding.”

At this stage, it should be noted that, according to the Complaint, the previous holder of the domain name in issue was, the Second Respondent, Compana LLC. This is borne out by a Whois Search made on September 22, 2004, which lists the Second Respondent as the proprietor of the domain name. It appears that the domain name was subsequently transferred on or about October 1, 2004, by the Second Respondent to the First Respondent.

By email to the Center dated November 16, 2004, Mr. Jain notified the Center that he represented the First Respondent, NetSphere Inc. In that email Mr. Jain stated that the listing of two Respondents is a violation of the Rules, citing paragraph 1, 3(b)(v) and 3(b)(xiv) and requesting, as had Mr. Ridge, that the Complaint be further amended to remove the Second Respondent as a party. Mr. Jain also requested a period of 20 days from the date when the Complaint should be so amended within which to submit a Response on behalf of his client, NetSphere Inc. The same day, the Center replied repeating the essence of the position taken in its emails of October 28 and 29, 2004, quoted above, also reiterating that both parties had been properly notified of the Complaint and that the date for Response remained November 18, 2004.

On November 17, 2004, ICAAN further advised Mr. Jain in the following terms.

“Dear Mr. Jain

Thank you for your inquiry to ICANN concerning your client’s domain dispute.

Please note that ICANN does not have any role in administering or reviewing individual cases and decisions under the UDRP.

If you have any complaints about the procedures employed by the panel that may hear your case, they should be addressed to the relevant dispute resolution service provider (in this case, WIPO). Any procedural or substantive complaints about a particular case that can not be resolved with a dispute resolution service provider may be addressed by filing a court action against the complaining party.

If you file a lawsuit in a court of mutual jurisdiction within ten business days of the registrar’s receipt of an adverse decision by the panel, the registrar will not implement the panel’s decision. (Please note that this is just a summary of the applicable provision; please refer to the actual text of the UDRP for complete details.)

I hope this information is helpful. Please let me know if you have any additional questions.

Best regards.

Tim Cole

Chief Registrar Liaison

ICANN

Then on November 19, 2004, Mr. Jain advised the Center by email that his client, the First Respondent (NetSphere Inc) had decided not to respond formally to the Amended Complaint, stating that a letter setting out its reasons would be sent. Mr. Jain attached a copy of a Complaint which he stated had been filed by NetSphere Inc against both the Complainant and the Center in the Superior Court of the State of California, County of Orange [“the US Court Complaint”].

The First Respondent’s case in the US Court Complaint is that Bendon Limited and the Center

“… have specifically targeted NetSphere Corporation located in California using unfair business practices and false arbitration procedures.”

NetSphere Inc stated that its “…. business deals with Internet search engines and advertising”. Its case is that Bendon Limited has trademark rights for the word BENDON but only for a very narrowly defined category of “designer lingerie and underwear”. NetSphere Inc says that BENDON is a generic term used by many other entities in a manner which does not include that trademark. Further, NetSphere Inc does not use the domain in dispute to sell lingerie or underwear. NetSphere reiterates that the Complaint in this administrative proceeding is in violation of the Policy and the Rules by naming two quite unrelated parties as Respondents. NetSphere says that no properly Amended Complaint was served on NetSphere Inc so that the deadline for Response has never stated to run. Further, it was only 3 days before the time set for submission of Response that NetSphere Inc became aware of the commencement of this administrative proceeding. Three (3) days is, NetSphere Inc says, inadequate time to respond to the Complaint under the Policy.

The US Court Complaint goes on to allege that Bendon Limited has brought the Complaint under the Policy solely with the intent of trying to force NetSphere Inc to sell to them the domain name in issue. The Center, NetSphere says, is in breach of the Policy and is biased against NetSphere, so that NetSphere is now prejudiced before the Panel appointed to hear the Complaint under the Policy. The Center has, nevertheless, permitted this administrative proceeding to continue and, further, never gave NetSphere proper notice nor adequate time to respond.

The Center appointed David Perkins as the sole panelist in this matter on November 26, 2004. 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.

Following that appointment, on December 7, 2004, the Panel issued Administrative Panel Procedural Order No. 1. In the circumstances, the full terms of that Order are set out below.

“1. The Respondent, Netsphere Inc., asserts that the Complaint in this administrative proceeding is defective for two reasons. First, Netsphere Inc. did not receive the Notification of Complaint and Commencement of Administrative Proceeding in this matter dated October 29, 2004, which was duly sent by the Center by email and by courier. This is at variance with the Center’s records, which include the Federal Express shipping particulars under Tracking Reference 7919 7015 9076 and a shipment date of November 2, 2004.

2. Second, Netsphere Inc. complain that the Complaint is defective in that it should not include Compana LLC as Second Respondent. As the holder of the domain name in issue, the Panel’s Decision will be directed to Netsphere Inc. The inclusion of Compana LLC causes no prejudice to Netsphere Inc. It is consistent with the Complainant’s claim that, having been put on notice of the Complainant’s claim by the Russell McVeagh email of July 8, 2003, Compana nevertheless proceeded to transfer that domain name to Netsphere on October1, 2004. As a consequence, the Complainant says that Compana had no rights or legitimate interests to transfer to Netsphere and Netsphere’s claim to the domain name is thereby tainted.

3. Having been duly notified of the Complaint Netsphere had until November 18, 2004, within which to submit a Response. However, Netsphere chose not to do so. Instead, it ignored the Center’s email of November 16, 2004, and by email of November 19, 2004, informed the Center that it had “... decided not formally to respond ...” to the Complaint and instead to file proceedings in the Superior Court of the State of California, Orange County against both the Complainant and the Center seeking various relief.

4. If Netsphere believed it had cause to challenge the Center’s jurisdiction in this administrative proceeding, the appropriate course would have been to plead that in its Response and to submit such Response “under protest”. However, as stated by Netsphere, it has decided not to submit a Response.

5. Since Court proceedings have been filed, the Panel has discretion to decide whether to suspend or terminate this administrative proceeding, or to proceed to a decision: Rules paragraph 18(a). The Panel does not consider that the Complaint contains a procedural irregularity by the inclusion of Compana LLC as Second Respondent. But, if that is incorrect, the Panel takes the view that there is no substantive prejudice to Netsphere by such inclusion. Further, the evidence shows that Netsphere was duly notified of the Complaint and Commencement of Administrative Proceeding and that it had adequate time within which to submit a Response. Accordingly, the Panel’s decision is not to suspend or to terminate this administrative proceeding.

6. The overriding duty of the Panel is to ensure that the parties to this administrative proceeding are treated with equality and that each party is given a fair opportunity to present its case. In this case, the Panel is satisfied that Netsphere was properly notified of the Complaint and that there is no irregularity in the Complaint which prevents Netsphere from putting its case. However, Netsphere has positively elected not to participate in this administrative proceeding. Notwithstanding that election, in the light of the Panel’s decision to proceed to a Decision and not to suspend or terminate this proceeding, the Panel offers Netsphere [and Compana LLC] a period of 14 days within which to file Response(s). That period expires December 21, 2004.

7. The due date of Decision is extended to January 12, 2005.”

No Response was received from either the First Respondent or the Second Respondent by December 21, 2004, or, indeed, thereafter.

4. Factual Background

4.A The Complainant

4.A.1 The Complainant is a New Zealand based company which is registered proprietor of the following BENDON trademarks.

4.A.2 The Complainant’s BENDON trademarks are used primarily for underwear, specifically brassieres and underpants. The Complainant’s predecessor in business coined the BENDON name in 1947, and the present Complainant has been trading under that name since June 1989. The Complainant states that the BENDON mark is a coined, fanciful word in which it has developed a significant reputation by virtue of the continuous and extensive use of that mark in numerous countries.

4.A.3 The Complainant is also the registered proprietor of the following domain names, all of which incorporate the BENDON mark:

4.A.4 The Complainant, previously known as Bendon Hickory Limited, registered the domain name in issue, <bendon.com> on August 7, 1997. However, according to the Complaint, that domain name was accidentally released in December 2000. It was then, registered by Hilton Enterprise Co. Ltd., which, in turn, subsequently released the domain name in December 2002. It was then registered by Compana LLC,. the Second Respondent, on January 14, 2003. As stated above, the Second Respondent transferred the domain name to the First Respondent on October 1, 2004.

4.A.5 In about January 2003, – when the Second Respondent registered the domain name – the present Complainant [Bendon Limited] was in the process of acquiring the BENDON business and was unaware that the original 1997, domain name registration had inadvertently been released due to the failure by the original registrant to operate adequate administrative procedures and systems.

4.A.6 On June 8, 2004, Sedo GmbH (as an undisclosed agent of the Complainant) emailed the Second Respondent with an offer to purchase the domain name in issue for US$4,500.00. The Second Respondent replied to the effect that it would not consider that offer without first receiving a representation from the would-be purchaser” “… that there are no trademark claims regarding this name … .”. Further attempts by Sedo to contact the Second Respondent in this respect were, apparently, unsuccessful. Eventually, Sedo managed to make a final offer to the Second Respondent but reported on June 26, 2004, to the Complainant that

“He (the Second Respondent) feels that you might have trademark claims on the name and therefore he will not negotiate.”

4.A.7. Then on July 8, 2004, the Complainant’s New Zealand lawyers addressed a cease and desist email to the Second Respondent. No reply was received and the Complainant’s lawyers sent a follow-up email on July 26, 2004. Mr. Jeff Baron of Compana LLC replied the following day, July 27, 2004. In that email the Second Respondent denied infringing the Complainant’s registered trademarks and added:

“Although Compana categorically denies infringing on any trademark, we would like to make an offer in show of our good faith. We will offer to consent to an agreement stating that our company will not provide goods or services at BENDON.COM that are similar to those protected by your client’s trademark. If this would resolve your concerns, please let me know, and I will ask our legal counsel draft a proposed agreement.”

There the correspondence apparently ended and the original Complaint was (as stated) received by the Center on October 18, 2004.

4.B The First Respondent

In the absence of a Response, the only information given about the First Respondent, NetSphere Inc is briefly stated in the US Court Complaint. Namely, its business deals with Internet Search engines and advertising: paragraph 3 above.

4.C The Second Respondent

Again, in the absence of a response, all that is known about the Second Respondent, Compana LLC, is that it is the Registrar and former proprietor of the domain name in issue.

Additional information relating to the Respondents is referred to below under Section 5A of this Decision.

5. Parties’ Contentions

5.A Complainant

5.A.1 The Complainant’s case is that the domain name in issue incorporates entirely its trademark, its domain names and its business name. Accordingly, the domain name in issue is identical to the Complainant’s BENDON trademark and the requirement of paragraph 4(a)(i) of the Policy is met.

5.A.2 The Respondents have, the Complainant says, no rights or legitimate interests in the domain name in issue and that, consequently, the requirements of paragraph 4(a)(ii) of the Policy are also met. In that respect the Complainant puts its case as follows:

5.A.3 First, neither Respondent has ever been known as, or traded under the name or mark BENDON. Second, neither Respondent is the registered proprietor of any BENDON trademark. Third, neither Respondent has used the domain name in issue in association with any goods or services. Fourth, BENDON is not a generic term with an independent meaning. It is a coined, fanciful word: paragraph 4.A.2 above. It is not a surname listed in New Zealand at all, and the Bendon surname has only 22 listings in Australia out of a population of over 20 million (less than 0.00011% of that population) and only 651 listings in the United States out of a population of over 294 million (less than 0.00023% of that population).

5.A.4 The Complainant refers to five (5) earlier Complaints brought under the Policy against the Second Respondent, Compana LLC. In each of those, the Second Respondent asserted that the Complainant’s trademark was generic. The trademarks asserted in those cases were NEUTRALIZER (NAF Case No. FA0101000096562): AGILE (WIPO Case No. D2001-0545): LFO (WIPO Case No. D2002-0105): NEN (NAF Case No. FA0209000124752); and SOIGNON (WIPO Case No. D2004-0270). In the first three Complaints, the request to transfer the disputed domain name was denied. In the third and fourth, the Panel upheld the Complaints and ordered the transfer of the disputed domain names.

5.A.5 The Complainant also points to the fact that, apparently, no use was made of the domain name in issue by the Second Respondent for some 20 months; in other words, from the date of registration in January 2003, until transfer to the First Respondent in October 2004. That being the case, the Complainant says that the Second Respondent had no rights or legitimate interests in the domain name in issue to transfer to the First Respondent.

5.A.6 The Complainant asserts that the domain name was registered and is being used in bad faith by the Respondents as required by paragraph 4(a)(iii) of the Policy. Its evidence in this respect is presented as follows.

5.A.7 First, it is to be inferred from the dialogue with the Second Respondent earlier in 2004 (described in Section 4.A.6 and 7 above) that Compana LLC originally registered the domain name in January 2003, primarily for the purpose of selling it to the Complainant for valuable consideration in excess of the out-of-pocket costs directly related to that domain name. For example, the Second Respondent wanted to know if the Complainant asserted trademark rights in BENDON since, if that was the case, it would be able to leverage a higher price in negotiations than the sums offered by the Complainant’s agent, Sedo GmbH.

5.A.8 Second, the fact that, as contended above, the Second Respondent had no rights or legitimate interests in the domain name itself evidences bad faith registration. This was compounded by transfer of that domain name in October 2004, after the Second Respondent had been put on notice of the Complainant’s trademark rights by its lawyers’ cease and desist letter dated July 8, 2004, (referred to in Section 4.A.7 above). The latter also constitutes use in bad faith.

5.A.9 Third, registration of the domain name prevents the Complainant as the owner of the BENDON trademark from reflecting that mark in a corresponding domain name. Presumably, in this respect, the Complainant relies upon the Decisions in the NEN and SOIGNON Complaints referred to in Section 5.A.4 above.

5.A.10 Fourth, the Complainant relies on passive holding / warehousing of the domain name, which has never been used in relation to an active website. A simple search for the word BENDON on a variety of search engines would readily have alerted the Respondents to the existence of the Complainant and thereby its trademark rights.

5.A.11 Fifth, the Complainant refers to Lyons Partnership, L.P. and HIT Entertainment PLC v. NetSphere, Inc., WIPO Case No. D2004-0118. The fact pattern in that case was not dissimilar to the background in this case. The Complainant failed to renew the domain name in issue, <barneyonline.com>, which allowed Compana LLC to become the new registrant of that name. In relevant part, the Decision in WIPO Case No. 2004-0118 reads:

“Compana LLC is believed by the Complainant to be set up to scan for expiring domain names which have a good search engine position and have many daily hits. If the domain name becomes available Compana LLC will register it and sell it to the highest bidder. In about November 2003, the Respondent acquired the registration from Compana LLC.”

5.B Respondents

5.B.1 As noted, no Responses have been received from either Respondent despite the Panel’s Procedural Order No. 1 extending time for Response until December 21, 2004. It is to be noted that both Respondents were notified of the Complaint on October 29, 2004: Section 3 above.

5.B.2 However, effectively the Respondents’ case is set out in the First Respondent’s Complaint in the US Court Complaint and that case is summarised in Section 3 above. The First Respondent’s case pleaded in that Complaint is considered in the following section of this Decision.

6. Discussion and Findings

The US Court Complaint

6.1 It is, of course, a matter for the Superior Court of the State of California to evaluate the merit of the First Respondent’s case in the US Court Complaint. The Panel would only observe in that context that (as stated in Section 3 above) it considers that the Complaint is in conformity with the Rules and that it was properly notified to the First Respondent according to the Rules. Further, in its Procedural Order No. 1 of December 7, 2004, the Panel was at pains to give both Respondents every chance to file Responses. Indeed, as noted in Section 5.B.1 above, the Respondents effectively had 43 days (6 weeks) within which to prepare and submit Responses, the Rules paragraph 5(a) providing that ordinarily a Respondent should have no more than 20 days within which to submit a Response following the date of commencement of the administrative proceeding. In this case, that date was October 29, 2004. By extending the Respondents’ time to submit Responses by more than twice the period provided for by the Rules, the Panel was concerned to ensure that the Respondents (and each of them) were afforded more than a fair opportunity to present their cases: see, Rules paragraph 10(b). Although both of the Respondents undertook in their respective Registration Agreements when registering the domain name in issue to submit disputes to resolution under the Policy, the First Respondent now seeks to resolve this dispute by filing the US Court Complaint. The US Court will no doubt take these considerations into account insofar as it considers them to be relevant.

6.2 Be that as it may, this Panel will proceed to decide this case on its merits, mindful of the discretion to suspend or terminate the proceeding under Paragraph 18(a) of the Rules.

6.3 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:

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

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

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

6.4 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interests in the domain names in issue.

6.5 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall, be evidence of the registration and use of a domain name in bad faith.

Identical or Confusingly Similar

6.6 The Complainant clearly has trademark rights in the BENDON mark. It is not a generic term as proposed in the US Court Complaint. It is equally clear that the domain name in issue is identical to that mark. That the First Respondent does not sell lingerie or underwear under or by reference to the BENDON mark and that its business is quite different to the business of the Second Respondent, both as stated in the US Court Complaint, is not relevant to this requirement of the Policy. Accordingly, the Complainant meets the requirements of paragraph 4(a)(i) of the Policy.

Rights or Legitimate Interests

6.7 There is no evidence either in Mr. Ridge’s or Mr. Jain’s communications with the Center, respectively on behalf of the Second Respondent and the First Respondent referred to in Section 3 above, which demonstrates that either Respondent has rights or legitimate interests in the domain name in issue, whether under paragraph 4(c) of the Policy or otherwise. Nor is there any such evidence in the US Court Complaint.

6.8 On the evidence provided by the Complainant, the Second Respondent’s registration of the domain name in issue was clearly fortuitous and a rudimentary trademark investigation would have alerted the Second Respondent to the Complainant and to its trademark position.

6.9 Further, the Complainant’s evidence summarised in Section 5.A.3 to 5.A.5 is compelling and has not been answered either in this administrative proceeding or in the US Court Complaint. Accordingly, the Panel finds that the Complaint satisfies the requirements of paragraph 4(a)(ii) of the Policy.

Registered and Used in Bad Faith

6.10 The case advanced in the Complaint (see, Section 5.A.7 to 5.A.11) is persuasive and is not answered by either Respondent in this administrative proceeding or by the First Respondent in the US Court Complaint. It is well established that passive holding of a domain name can, in appropriate cases, amount to bad faith use: see, for example, the Telstra case (WIPO Case No. D2000-0003). Accordingly, the Panel finds that the Complaint satisfies the twin requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

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

David Perkins
Sole Panelist

Dated: January 14, 2005