BIC Deutschland GmbH & Co KG v. Paul Tweed
[Indexed as: BIC v. Tweed]
[Indexed as: Tippex.com et al.]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Case No. D2000-0418
Commenced: 11 May 2000
Judgement: 20 June 2000
Presiding Panelist: Henry Olsson
Domain name Domain name dispute resolution policy Trademark Identical Confusingly similar Bad faith registration Bad faith use Legitimate rights.
Complainant was registered owner of trademarks TIPP-EX and TIPPEX. Respondent registered the domain names TIPPEX.COM and TIPP-EX.COM. Complainant alleged that Respondents domain names are identical or confusingly similar to its marks, and that Respondent had no legitimate rights in the names and thus registered and used them in bad faith.
Held, Names Transferred to Complainant.
Respondent failed to respond to the complaint. The Panel thus
shall draw such inferences therefrom as it considers appropriate.
Respondents domain names are nearly identical to the marks of Complainant
and thus are confusingly similar.
Complainant has not authorized Respondent to use its trademarks,
nor is there a relationship between Complainant and Respondent. Respondent
has not disputed this, thus, Panel finds that Respondent had no rights
or legitimate interests in the names.
Respondents pattern of registering domain names in order to prevent
owners of trademarks from reflecting the mark in a corresponding domain
name. This is evidence of bad faith registration and use.
Policies referred to
Uniform Domain Name Dispute Resolution Policy
Olsson, Panelist: -
1. The Parties
Complainant is BIC Deutschland GmbH & Co KG, located at Rosserstrasse
6, D-65835 Liederbach, Federal Republic of Germany. Complainant is represented
by Philippe van Eeckhout, Societé Bic, 14 rue Jeanne d´Asnières,
92611 Clichy Cedex.
Respondent is Mr Paul Tweed, an individual whose address is indicated
as PO BOX 391, Praha 1, 11121 Czech Republic. Mr. Tweed is current registrant
of the TIPPEX.COM and TIPP-EX.COM domain name registrations and is the
Administrative, Technical, Zone and Billing Contact for those two domain
names, with an indication of the e-mail address as "[email protected]"
and stating "Please send an email (FAX) please send an e-mail."
2. The Domain Names and Registrar
The domain names at issue are "TIPPEX.COM" and "TIPP-EX.COM" which
domain names are registered with Network Solutions, Inc (NSI) Herndon,
Virginia, United States of America.
3. Procedural History
A Complaint was received by the World Intellectual Property Organization
Arbitration and Mediation Center (the WIPO Center) in electronic form on
May 11, 2000, and in hardcopy together with Exhibits on May 15, 2000.
On May 11, 2000, a Verification Request was sent to Network Solutions
and on May 14, 2000, a Verification Response was received which 1) confirmed
that Network Solutions was in receipt of the Complaint sent by the Complainant,
2) confirmed that Network Solutions is in fact the Registrar of the domain
name registrations, 3) confirmed that Paul Tweed is the current registrant
of the TIPPEX.COM and
TIPP-EX.COM domain name registrations, 4) provided the full contact
details (postal and e-mail addresses) available in the WHOIS database concerning
Mr. Tweed and indicated him as the administrative, technical, zone and
billing contact, 5) confirmed that Network Solutions 4.0 Service Agreement
is in effect, and 6) that the two domain names are in "Active" status.
The WHOIS Query Results attached to the Complaint indicate that the
domain names were registered on September 16 and 17, 1998, respectively.
The Network Solutions´ Verification Response indicated that Network
Solutions´ 4.0 Service Agreement is in effect. This Service Agreement
provides, inter alia, that Registrant agrees to be bound by the terms of
the Registration agreement and the terms of NSI´s Domain Name Policy,
that Registrant agrees that Network Solutions at its sole discretion may
change or modify the Dispute Policy at any time, that Registrant´s
maintaining the domain name after changes or modifications to the Dispute
Policy becomes effective constitutes Registrant´s continued acceptance
of these changes or modifications and that Registrant agrees that if the
registrations are challenged by a third party, the Registrant will be subject
to the provisions specified in the Dispute Policy.
Having verified, on May 15, 2000, that the complaint satisfied the
formal requirements of the Policy and the Rules, a Notification of Complaint
and Commencement of Administrative Proceeding was transmitted the same
day to Respondent by post/courier (with enclosures) under the address:
Paul Tweed, PO Box 391, Praha 1, 11121 Czech Republic and also per e-mail
(without enclosures) to three e-mail addresses (Mr. Tweed´s, "[email protected]"
and "[email protected]"). A copy was also communicated by e-mail to
the authorised representative of Complainant as well as to ICANN and Network
Solutions. The Center advised Respondent that the last day for sending
a Response was June 4, 2000.
As regards the e-mail addresses "[email protected]" and postmaster@tipp-ex
com, the Mail Delivery Subsystem indicated that the message could not be
delivered for 5 days and was to be deleted from the queue. The postal mail
to Mr. Tweed was returned on May 18, 2000, with an indication that the
addressee was unknown.
Respondent did not submit any Response. Accordingly, the Center sent
to Respondent a Notification of Respondent Default on June 9, 2000.
On June 9, 2000, in view of Complainant´s designation of a single
panelist, the Center invited Mr. Henry Olsson to serve as a panelist. Having
received on June 14, 2000, Mr. Olsson´s Statement of Acceptance and
Declaration of Impartiality and Independence, the Center transmitted to
the parties a Notification of Appointment of Administrative Panel and Projected
Decision Date, in which Mr. Olsson was formally appointed as the Sole Panelist.
The Projected Decision Date was June 28, 2000.
The Sole Panelist finds that the Administrative Panel was properly
constituted and appointed in accordance with the Rules and WIPO Supplemental
Rules.
Respondent has not made any formal Response to the Complaint. The Administrative
Panel shall therefore, according to Rule 14 proceed to a decision on the
Complaint on the basis of the Complaint, the evidence presented, the Policy,
the Rules and the Supplemental Rules.
4. Factual Background
The Complaint is based upon the following registrations of the trademark
TIPP-EX, namely:
i) International trademark TIPP-EX No 552,731, registered on April
24,1990, (with validity for 20 years) to cover, in international class
16, paper and products in paper, correction material etc. This trademark
registration was as from September 22, 1999, transferred from TIPP-EX GMBH
to the Complainant.
ii) Canadian trademark TIPP-EX No TMA 302,390, registered on May 3,
1985, and renewed in 1999 with expiry date of May 3, 2015, to cover stationery
products and correction material, etc. On August 27, 1999, the Complainant
was entered in the register as the owner of this trademark.
iii) United States trademark No 1,547,318, registered on July 11, 1989,
to cover various paper and correction products.
iv) United States trademark No 838,393, registered on November 7, 1967,
to cover typewriter transfer paper in sheet form.
In respect of the two United States trademark registrations Complainant
has indicated that "change of name has been applied for, but is still in
process".
Copies of these registrations appear in Exhibit 1 to the Complaint.
It appears from the Network Solutions´ Verification Response
of May 14, 2000, that Respondent is the current registrant of the domain
names TIPPEX.COM and TIPP-EX.COM. The Response also shows that Respondent
is the Administrative, Technical Zone and Billing Contact for those domain
names.
5. Parties Contentions
A. Complainant
Complainant contends a) that the domain names TIPP-EX and TIPPEX are
identical or confusingly similar to the trademarks TIPP-EX in which Complainant
has rights and that the domain name is a servile copy of the trademarks
owned by Complainant, b) that it is clear that the Respondent is in bad
faith since he also registered at least 22 other domain names, some of
which incorporate famous third party trademarks (indicated in Exhibit 2
to the Complaint), c) that there is no relation between Respondent and
Complainant and that Respondent is not a licensee of Complainant, nor has
he otherwise obtained an authorisation to use Complainant´s trademark,
d) that the domain names do not resolve to a web site or other on-line
presence; since the Respondent has no rights or legitimate interests in
respect of the domain name, those have been registered in bad faith, and
e) that the domain names were registered in order to prevent the owner
of the trademark from reflecting the mark in a corresponding domain name,
and that the domain name registrant has engaged in a pattern of such conduct.
On the basis of these contentions, Complainant requests, in accordance
with Paragraph 4(b)(i) of the Policy, that the Administrative Panel issue
a decision that the domain names be transferred toComplainant.
B. Respondent
Respondent has not submitted any Response and is in default.
6. Discussions and Findings
Paragraph 15 of the Rules prescribes that the Panel shall decide a
complaint on the basis of the statements and documents submitted and in
accordance with the Policy, these Rules and any rules and principles of
law that it deems applicable.
In the case of Default by a Party, Rule 14 prescribes that if a Party,
in the absence of exceptional circumstances, does not comply with a provision
of, or requirement under, these Rules, the Panel
shall draw such inferences therefrom at it considers appropriate. In
this case Respondent has not submitted any Response and consequently has
not contested any of the contentions by the Complainant. The Panel will
therefore have to operate on the basis of the factual statements contained
in the Complaint and the documents available to support the contentions.
Applied to this case, Paragraph 4(a) of the Policy directs that Complainant
must prove each of the following:
1) that the domain names registered by Respondent are identical or
confusingly similar to a trademark or service mark in which Complainant
has rights, and
2) that Respondent has no rights or legitimate interests in the domain
names, and
3) that the domain names have been registered and are being used in
bad faith.
In the following section the Panel discusses each of these elements:
a) Identity or Confusing Similarity
The Domain Names are TIPPEX.COM and TIPP-EX.COM. The Network Solutions´
Verification Response shows that Respondent is the current registrant of
those Domain Names, which are in Active status.
TIPP-EX (also in the form "Tipp-Ex") is a registered trademark of Complainant,
who has submitted Certificates of Registration relating to International,
Canadian and United States registrations of that trademark.
The Domain Name TIPP-EX.COM is nearly identical to the trademark registered
and used by Complainant TIPP-EX (and Tipp-Ex). The only difference is the
suffix "COM" which is meant to indicate, at least in principle, that the
domain names are intended to be commercial. In the view of this Panel this
is an irrelevant distinction which does not change the likelihood of confusion.
The Domain Name TIPPEX.COM is also nearly identical to the trademark
registered and used by Complainant, the only difference being the suffix
"COM" and the fact that the first element of the Domain Name is not hyphenated.
The Panel considers also in this case that the Domain Name is nearly identical
to the trademark registered and used by Complainant and that the distinction
does not change the likelihood of confusion.
On the basis of these findings and due to the fact that the allegations
of Complainant are undisputed, the Panel finds that in fact the domain
names registered by the Respondent are confusingly similar to the trademark
in which Complainant has rights.
b) Rights or Legitimate Interests
Complainant has not licensed or otherwise authorised the Respondent
to use Complainant´s trademark and there is no relationship between
Respondent and Complainant.
By not submitting a response Respondent has failed to invoke any circumstance
which could demonstrate, pursuant to paragraph 4(c) of the Policy, any
rights or legitimate interests in the domain names.
Therefore, on the basis of the arguments and the evidence brought by
Complainant, the Panel finds that Complainant has sufficiently established
that Respondent has no right or legitimate interest in the domain names.
c) Registration and Use in Bad Faith
Exhibit 2 to the Complaint contains a list of domain names allegedly
registered by Respondent and some of which obviously incorporate third
party trademarks. Complainant contends that this shows that Respondent
is in bad faith; in this connection Complainant also indicates that the
Domain Names in this case do not resolve to a web site or other on-line
presence. The Respondent has failed to address these contentions.
Complainant furthermore contends that the domain names were registered
in order to prevent the owner of the trademark from reflecting the mark
in a corresponding domain name. According to paragraph 4(b)(ii) of the
Policy this shall be taken as an evidence of registration and use in bad
faith provided that it can be said that Respondent has engaged in a pattern
of such conduct.
The number and the character of the other domain name registrations
held by Respondent and the fact that the Domain Names in this case do not
refer to any web site or other on-line presence is in the view of this
Panel uncontested evidence that the domain names in question have in fact
been registered and used in order to prevent the owner of the trademark
from reflecting the mark in a corresponding domain name.
The Panel thus concludes that the domain names TIPPEX.COM and TIPP-EX.COM
have been registered and are being used in bad faith.
7. Decision
In the light of the foregoing, the Administrative Panel considers that
the Domain Names TIPPEX.COM and TIPP-EX.COM registered by Respondent are
confusingly similar to Complainant´s trademarks TIPP-EX (also in
the form "Tipp-Ex"), that Respondent has no right or legitimate interest
in respect of the Domain Names and that Respondent´s Domain Names
have been registered and are being used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy and in accordance
with the request by Complainant, the Panel requires that the Domain Names
TIPPEX.COM and TIPP-EX.COM be transferred to Complainant.