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Dr. Ing. h.c.F. Porsche AG v. Hakan Melek [2005] GENDND 74 (26 January 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Worldcom Exchange, Inc v. Wei.com, Inc.

Case No. D2004-0955

1. The Parties

The Complainant is Worldcom Exchange, Inc, Salem, NH, United States of America, represented by Sherin and Lodgen, United States of America.

The Respondent is Wei.com, Inc., Reading, Berkshire, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 12, 2004. On November 15, 2004, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On November 16, 2004, Network Solutions, LLC (“NSI”) 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 November 17, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was December 7, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 16, 2004.

The Center appointed Christopher J. Pibus as the sole panelist in this matter on December 16, 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.

4. Factual Background

Complainant is a corporation that was incorporated and carries on business in the state of New Hampshire, United States of America. Since 1994, Complainant has provided services in connection with the design and maintenance of computer systems, and has acted as a supplier of computer-related products from a variety of well-known sources. The Complainant has used the corporate name Worldcom Exchange, Inc., and its short form WEI, since 1994 to promote its business and services. On November 4, 1994, the Complainant registered the domain name <wei.com>. From November 4, 1994, to October 11, 2004, Complainant used the Domain Name, and its associated website as the primary vehicle for promoting its business to customers. Complainant renewed the registration for the Domain Name to November 3, 2009.

On October 11, 2004, the ownership records for the Domain Name were changed, without the permission of the Complainant. NSI’s current WHOIS records show that the Registrant is identified as “WEI.Com”, and the Administrative contact is identified as “Inc., Wei.com”.

On October 18, 2004, Complainant notified NSI that ownership of its domain name had been transferred without its permission, and requested NSI to transfer the Domain Name back to the Complainant. NSI declined to take any step, except to freeze the account, pending a resolution of the dispute through a Complaint under the Policy, or other approved procedures.

On October 22, 2004, Complainant’s counsel wrote to the Respondent, alleging intentional misappropriation of the Domain Name, and seeking its immediate return. No response was ever received to the letter, or the Complaint.

5. Parties’ Contentions

A. Complainant

Complainant seeks relief from the “hijacking” of its Domain Name, arguing that it has well-established rights in the name WEI and the Domain Name itself <wei.com>, based on more than 10 years of use.

The hijacking of the Domain Name is alleged to have occurred through the manipulation of password access, which permitted the Respondent to enter the Complainant’s account at NSI, on our about October 11, 2004. The Respondent is alleged to have gained access to NSI’s website, by misappropriating Complainant’s authorized password, and by providing false and misleading information to the effect that it was properly authorized to manage the Domain Name account. Without authorization by the Complainant, the Respondent misappropriated the Domain Name by changing the name of the registrant and administrative contact, and by changing the password. Since October 11, 2004, Complainant has been prevented from accessing its Domain Name account at NSI.

Complainant has acted diligently to recover its Domain Name, since learning of the problem. On October 18, 2004, Complainant’s counsel wrote to the Respondent and to NSI, seeking the return of the Domain Name. On November 12, 2004, Complainant initiated this Complaint.

Complainant submits that it has satisfied all three conditions for relief under the Policy. With respect to the issue of confusion (paragraph 4(a)(i) Policy) Complainant relies on the fact that it has used the WEI name and <wei.com> domain name for more than 10 years, on a continuous basis in connection with its business. Although there is no existing trademark registration for WEI, Complainant argues that it has established an interest in the mark by virtue of its long-term use, which is sufficient to support the Complaint. The domain name is alleged to be identical and confusingly similar to the WEI mark and pre-existing <wei.com> domain name.

With respect to the second element (paragraph 4(a)(ii) Policy), Complainant submits that Respondent has no rights or legitimate interest in the Domain Name. No permission was ever granted by Complainant to use this name. Respondent never had any independently founded right to use the name, and had never been known by the name WEI prior to October 11, 2004, when it misappropriated the Domain Name.

With respect to the third element of its case, (paragraph 4(a)(iii) Policy), Complainant submits that there are a number of factors which support a finding a bad faith:

(1) The fraudulent manipulation of password access to enter NSI’s website, transfer ownership of the Domain Name, and deny access to the Complainant to its own account.

(2) Failure to respond to the demand letter.

(3) Use of a false and misleading e-mail address for the administrative password contact.

(4) Use of the name “Inc., Wei.com” as the administrative contact; with an e-mail address of “mason@london.com”.

(5) The possible involvement of Mason Woo, who is linked to the e-mail address “mason@london.com”, and who has been associated with other instances or allegations of domain theft.

(6) The use of a non-existent fax number for the Administrative contact, namely 999-999-9999.

The Complainant did not cite any legal authority or relevant decision of any domain name arbiter in support of its position.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

There are three essential conditions which must be established in order for a Complaint to succeed, under paragraph 4(a) of the Policy:

(i) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) the respondent has no rights or legitimate interests in respect of the domain name;

(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

There are two elements which must be satisfied to meet the first condition: Complainant must establish (i) that it has rights in the particular mark or marks; and (ii) that the domain name in question is identical or confusingly similar to that mark.

In this matter, the second element is straightforward: the service mark WEI and its related domain name <wei.com> are identical to the domain name in question.

The question of whether the Complainant has satisfied its obligation to establish rights in the mark WEI must be carefully examined, as the Complainant does not own any trademark registration for the mark itself or any related mark. Prior decisions have consistently acknowledged that rights in unregistered trademarks or service marks can be established, which are sufficient to support complaints. Use of an unregistered mark as a domain name has also been recognized as sufficient to meet the test under paragraph 4(a)(i) of the Policy, even in the absence of other use of the mark per se (WIPO Case No. D2004-0391). The uncontested evidence in this matter establishes the following points, on which the Panel relies to conclude that Complainant has rights in the service mark WEI and the domain name <wei.com>:

(i) Duration of Use

Complainant has continuously used the domain name <wei.com> for more than 10 years, as the primary promotional vehicle for its business.

(ii) Distinctiveness

The word WEI and related domain name are not descriptive of the Complainant’s business. The mark is derived from the first letters of the Complainant’s corporate name, but that does not render the acronym non-distinctive. The Complainant’s uncontested evidence is that consumers know the business by the name WEI, and the derivative domain name.

(iii) Nature of Trade

Complainant operates in the field of computer systems, providing integrated solution services to its customers. Given the nature of its business, the use of its website as its primary promotional tool is entirely credible.

It would have been helpful to see more detailed evidence about the level of activity on the website, such as number of hits, number of customers with special access etc. However, the narrative evidence, supported by exhibits, is adequate to support the Panel’s conclusion that the Complainant has common law rights in the service mark and domain name.

B. Rights or Legitimate Interests

In the absence of any explanation from the Respondent, it is not possible to conclude that it has any rights or legitimate interests in the Domain Name. The Complaint sets out a compelling story of outright misappropriation, without any apparent colour of right on the part of the Respondent.

There is no suggestion that the Respondent ever used the WEI name directly or under license, or was ever otherwise known by the name, until it acquired the Domain Name by subterfuge in October, 2004. It is clear that the Complainant never granted permission to the Respondent to use the WEI name, let alone take ownership of the disputed Domain Name.

As a result, the Panel finds that the Respondent does not have any rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

Given the human capacity for mischief in all its forms, the Policy sensibly takes an open-ended approach to bad faith, listing some examples without attempting to exhaustively enumerate all its varieties. The Complainant seeks to expand the territory of bad faith, presenting a new type of abusive conduct on the part of the Respondent, one that on its face cries out for relief: the hijacking of a domain name through the manipulation of password access. Equitable considerations aside, the Panel must determine whether the unusual facts of this matter bring the Complaint within the framework of the Policy.

Two recent decisions have dealt with similar situations: (WIPO Case No. D2004-0166 and WIPO Case No. D2004-0391). In the first case, the disputed domain name had been registered and used by the Complainant from 1999 to 2003. A renewal reminder was sent to a wrong address, giving the Respondent access to the registrant’s password, and enabling it to transfer ownership of the domain name into its own hands. In the second case, the Respondent was also able to transfer ownership of a domain name out of the hands of the original registrant, using unspecified covert means to access the registrar’s WHOIS database. In both decisions, the Panelists found that the unauthorized transfer of the domain names in question constituted bad faith.

In the circumstances of the present case, the Panel finds the following facts sufficient to establish bad faith, within the meaning of paragraph 4(a)(iii) of the Policy:

(a) The Respondent knew or ought to have known that the Domain Name was in use and had been used for many years in connection with an active website;

(b) The Respondent gained access to the NSI ownership database through improper (likely fraudulent) means;

(c) The Respondent changed the ownership records for the Domain Name covertly, without any notice to the rightful owner;

(d) The Respondent used misleading and false contact information when it changed the ownership records;

(e) The Respondent failed to respond to correspondence from the Complainant, and never offered any explanation or justification for its conduct;

(f) The Respondent has disrupted the legitimate business activities of the Complainant, depriving it of access to the domain name and website it had created and maintained for more than 10 years;

In all the circumstances, the Panel finds that the Respondent has registered and used the Domain Name in bad faith, within the meaning of the Policy.

7. Decision

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

Christopher J. Pibus
Sole Panelist

Dated: January 5, 2005