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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Digitronics Inventioneering Corporation v. @Six.Net Registered

Case Number D2000-0008

 

1. The Parties

The complainant is Digitronics Inventioneering Corporation a company incorporated in Delaware, whose place of business is at Northway Ten, Ushers Road, Clifton Park, New York 12065. The respondent is known as @SIX.NET REGISTERED with an address at PO Box 5168, Station B, Montreal, Quebec H3B 4B5, Canada.

 

2. The Domain Name And Registrar

There are two domain names the subject of the complaint "SIXNET.COM" and "SIX.NET". The Registrar of both names is Network Solutions Inc of 505 Huntmar Park Drive, Hurndon, Virginia 20170-5139, USA.

 

3. Procedural History

A complaint made pursuant to the Uniform Domain Name Dispute Resolution Policy (implemented by the Internet Corporation of Assigned Names and Numbers (ICANN) on 24 October 1999 ("Uniform Policy") and under the Rules for Uniform Domain Name Dispute Resolution Policy implemented by ICANN on the same date ("Uniform Rules")) was submitted electronically to the World Intellectual Property Organisation Arbitration and Mediation Center ("WIPO Center") on 17 January 2000. A paper copy of the complaint was received by the WIPO Center on 18 January 2000. An acknowledgement of receipt was sent by the WIPO Center by email and courier on 18 January 2000.

A copy of the complaint was sent to the Respondent by email and courier on 21 January 2000 and on the same date notification of the complaint sent to the Registrar. On 9 February 2000 a response was received by email and by hard paper copy from the Respondent.

On 17 February 2000 notification of the Appointment of the Administrative Panel was sent to both the Complainant and Respondent by email and courier. The notification informed the parties that the Administrative Panel would consist of a single Panelist Mr Clive D Thorne.

 

4. Factual Background

4.1 The Complainant has been trading as SIXNET since 1983. It is the owner of the registered trade mark "SIXNET" which was registered in the United States on 13 November 1984 for inter alia "electronic controllers for use in communications between computers in a network" in class 9. Although there is evidence that the Complainant has traded as SIXNET in Canada since 7 November 1983 an equivalent Canadian trade mark registration for inter alia "electronic computer communications equipment namely electronic controllers for use in communications between computers in a network" in class 9 was not filed until 22 July 1996 and registered on 11 August 1998.

4.2 The Respondent has been doing business under the company name @SIX.NET since 1995 and is an internet service provider. It registered the domain name SIXNET.COM on 16 January 1996 and registered the legal company name @SIX.NET REGISTERED on 13 February 1996 with the Quebec government "L’Inspecteur General des Institutions Financieres Bureau". It registered the domain name SIX.NET on 28 February 1996.

4.3 On 26 October 1998 a cease and desist letter was sent by the Claimant to the Respondent requesting that the Respondent immediately cease using the two domain names. It was responded to by the Respondent by fax dated 24 November in which the Respondent indicated that it would suffer "a great loss" if it had to stop using the domain name "SIXNET.COM" and offered to transfer ownership of the domain name "SIXNET.COM" to the Complainant. No settlement was reached and the matter proceeded to the Administrative Panel.

4.4 For the purposes of considering this decision it is helpful to set out the following chronology:

  • 7 November 1983 - Complainant first traded as SIXNET in Canada
  • 7 November 1983 - Complainant filed US trade mark "SIXNET"
  • 13 November 1984 - Complainant’s US trade mark "SIXNET" Registered
  • 16 January 1996 - Respondent registered domain name "SIXNET.COM"
  • 28 February 1996 - Respondent registered domain name "SIXNET"
  • 22 July 1996 - Complainant filed Canadian trade mark application "SIXNET"
  • 11 August 1998 - Complainant’s Canadian trade mark "SIXNET" registered
  • 26 October 1998 - Cease and desist letter re domain names "SIXNET and "SIXNET.COM" sent by Complainant to Respondent.
  • 24 November 1998 - Offer by respondent inter alia to transfer domain name "SIX.NET" for US$25,000
  •  

    5. Relevant Provisions Of The Uniform Policy

    5.1 The determination of this dispute is governed by the relevant provisions of the Uniform Domain Name Dispute Resolution Policy and in particular paragraphs 4(a), 4(b) and 4(c) which read as follows:-

    a. Applicable Disputes

    You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that:

    1. your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
    2. you have no rights or legitimate interests in respect of the domain name; and
    3. your domain name has been registered and is being used in bad faith.

    In the administrative proceeding, the complainant must prove that each of these three elements are present.

    a. Evidence of Registration and Use in Bad Faith.

    For the purposes of Paragraph 4(a)(iii), the following circumstances, 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:

    1. circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
    2. you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
    3. you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
    4. by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a produce or service on your web site or location.

    b. How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint.

    When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interest to the domain name for purposes of Paragraph 4(a)(ii):

    1. before any notice to you 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
    2. You (as an individual, business, or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
    3. You are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumer or to tarnish the trademark or service mark at issue.

    5.2 There are a number of points which the Panel notes in construing paragraph 4 and in particular the following:-

    1. The Complainant has the burden of proof in showing that the three elements set out in paragraph 4(a) are present.
    2. The three elements in paragraph 4(a) are cumulative and not alternative.
    3. Paragraph 4(b) sets out the circumstances which if found to be present shall be evidence of the registration and use of a domain name in bad faith. If one or other of the circumstances listed in paragraph 4(b)(i) to (iv) are found to be present the Panel is required to find evidence of bad faith though other evidence of registration and use of a domain name in bad faith may be considered by the Panel.
    4. Paragraph 4(c) lists three circumstances which are not exclusive but which if are found by the Panel to be proved are sufficient to demonstrate the Respondent’s rights or legitimate interest to the domain name under paragraph 4(a)(ii).

    5.3 There are two domain names in dispute: "SIXNET.COM" and "SIX.NET". Except where indicated the Panel does not consider that it is necessary to deal with each separately.

    Applicable dispute – paragraph 4(a)

    (i) The Respondents domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights.

    5.4 The Complainant asserts that confusing similarity exists between its trade mark "SIXNET" as registered in the United States and Canada and the domain names "SIXNET.COM" and "SIX.NET". The Respondent denies this on the basis that only the word "SIX" could be protected by a trade mark and that .NET is merely the classification of the purpose for which the domain name is being used. The Panel cannot accept the Respondents argument. The Respondents domain names are clearly confusingly similar to the Complainants trade marks "SIXNET".

    (ii) The Complainant has no rights or legitimate interest in respect of the domain name.

    5.5 The Complainant submits that the Respondent has no rights or legitimate interest in respect of the domain name within paragraph 4(a)(ii). However in construing clause 4(a)(ii) the Panel is required to consider paragraph 4(c).

    5.6 The Complainant asserts:

    1. The Respondent has no trade mark or other intellectual property rights to the domain name.
    2. The domain names are not the legal name of the Respondent.
    3. The Respondent has no prior lawful use of the domain names.
    4. The Respondent is not doing business under the domain name "SIXNET.COM".
    5. The Respondent is not using, nor are there any demonstrable preparations to use the domain name "SIXNET.COM" in connection with a bone fide offering of goods or services.
    6. The Respondent as an individual, business, or other organisation is not commonly known under the domain names; and
    7. The Respondent does not have a legitimate non commercial or fair use of the domain names.

    5.7 The Respondent rejects these submissions and relies upon the following:-

    1. Pursuant to paragraph 4(c)(ii) the Respondent has been commonly known by the domain names "SIXNET.COM" and "SIX.NET" since 1996, even though it has acquired no trade mark or service mark rights. The Respondent has produced evidence of commercial invoices showing that the company name as known by its customers is "SIX.NET".
    2. That its name registered with the Quebec "L’Inspecteur General des Institutions Financieres" on 13 February 1996 is "@SIXNET".
    3. The Respondent has been using the domain names since they were registered at the beginning of 1996 as its web site and other internet locations address.
    4. In the case of SIXNET.COM the Respondent used the domain name "SIXNET.COM" as its web site address but has agreed to temporarily cease use of "SIXNET.COM" pending the outcome of the current proceedings.
    5. The Respondent has used the domain name "SIXNET.COM" as its web site until December 1998.

    The Panel is persuaded by the Respondent’s submissions on this issue; that there is evidence (as set out in paragraph 5.7 above) that the Respondent is commonly known by the domain name "SIXNET" even though the Respondent has acquired no trade mark or service mark rights. It follows that in the case of the domain name "SIX.NET" that the Complainant has failed to bring itself within paragraph 4(a)(ii) of the Resolution Policy as interpreted by paragraph 4(c)(ii).

    In the case of the domain name "SIXNET.COM" the issue that arises is whether the Respondent has been commonly known by the domain name "SIXNET.COM" so as to fall within paragraph 4(c)(ii). In the Panel’s view the position is the same as that relating to the domain name "SIXNET". The distinguishing feature of the domain name is "SIXNET". The term ".COM", as is pointed out by the Respondent, means "commercial institution" and is merely the classification of the purpose for which the domain name is being used. Accordingly the Panel is satisfied that the Respondent on the evidence set out in paragraph5.7 above is commonly known by the domain name. It follows that the Respondent is entitled to the protection of paragraph 4(c)(ii) and that the Complainant has failed to show that the Respondent has "no rights or legitimate interests in respect of the domain name" within paragraph 4(a)(ii). The dispute is therefore not an Applicable Dispute within paragraph 4 of the Uniform Policy.

    It is therefore unnecessary for the Panel to consider the applicability of Paragraph 4(a)(iii) or the consequence of the Complainant’s trade marks.

     

    6. Decision

    The Administrative Panel decides that the Complainant for the reasons set out above has failed to prove in accordance with paragraph 4(a)(ii) of the Uniform Policy that the Respondent has "no rights or legitimate interests in respect of the domain name". The dispute is not an Applicable Dispute within paragraph 4 of the Uniform Policy. Pursuant to paragraph 3(c) of the Uniform Policy, the status of the domain name registrations shall remain unchanged.

     


     

    Clive D. Thorne
    Presiding Panelist

    Dated: 1 March 2000

     

    Источник информации: http://www.internet-law.ru/intlaw/udrp/2000/d2000-0008.html

     

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