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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Letsbuyit.com v. Stephen Ward
Case No. D2000-0680
1. The Parties
Complainant is Letsbuyit.com, Ireland Ltd., Dublin, Ireland and Letsbuyit.com, Sverige AB, Stockholm, Sweden, represented by AB Stockholms Patentbyra, Zacco & Bruhn Stockholm, Sweden
Respondent is Stephen Ward, London, United Kingdom, represented by Jeremy Fitzgibbon, Davis Frankel and Mead, United Kingdom
2. The Domain Names and Registrars
The registrar with which the domain names are registered is Internet Council of Registrars, World Trade Center 11, 29, Route De Pre-Bois CH 1215, Geneva, Switzerland
3. Procedural History
A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on June 26, 2000, and the signed original together with four copies was received by WIPO Center on June 28, 2000. The WIPO Center sent an Acknowledgment of Receipt to the Complainant, dated July 13, 2000.
On June 30, 2000, a Request for Registrar Verification was transmitted to the Registrar. The Registrar confirmed the information in the request and forwarded the requested WHOIS details, and confirmed that the Uniform Domain Name Dispute Resolution Policy was in effect and stated that the domain name was on "Active" status.
The policy in effect at the time of the registration of the domain name at issue is the general Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN"). There is no evidence that the Respondent ever requested that the domain name at issue be deleted from the domain name database. Accordingly, the provisions of the Policy bind the Respondent.
The assigned WIPO Center Case Administrator completed a Formal Requirements Compliance Checklist on July 6, 2000.
The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 (the "Uniform Rules"), and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999 (the "WIPO Supplemental Rules"). The required fees for a single-member Panel were paid on time and in the required amount by the Complainant.
No formal deficiencies having been recorded, on July 18, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, the Registrar and ICANN), setting a deadline of August 7, 2000, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by the required means.
The Respondent sent an e-mail to the WIPO case manager on July 13, asking the Center for a point of clarification namely how to understand the term "rights" in the Rules of the UDRP. The WIPO case manager responded to the e-mail on July 18, saying that the information given will be included in the case files and used in the determination of the case.
On August 14, 2000, having received no Response from the designated Respondent, apart from what has been mentioned above, the WIPO Center transmitted to the parties a Notification of Respondent Default.
On August 21, 2000, in view of the Complainant’s designation of a single panelist (but without prejudice to any election to be made by the Respondent) the WIPO Center invited Mr. Knud Wallberg to serve as a panelist in Case No. D2000-0680, and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence.
Having received the same day, Mr. Knud Wallberg’s Statement of Acceptance and Declaration of Impartiality and Independence, on August 22, 2000, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Knud Wallberg was formally appointed as the Sole Panelist. The Projected Decision Date was September 5, 2000. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and WIPO Supplemental Rules.
The Administrative Panel shall issue its Decision based on the Complaint, the e-mails exchanged, the Policy, the Uniform Rules, the WIPO Supplemental Rules, and without the benefit of a formal response from the Respondent.
4. Factual Background
LetsBuyIt.com is currently a private company that was registered in Sweden on January 13, 1999. As of May 2000, LetsBuyIt.com had over 250 employees in over a dozen countries. The corporate headquarter of LetsBuyIt.com is in Amsterdam.
LetsBuyIt.com has applied for trademark registration for the trademark "letsbuyit.com"(device) in approximately 31 countries around the world, namely the following countries: Sweden, Austria, New Zealand, United States of America, Canada, Brazil, Argentina, Israel, Singapore, Chile, South Africa, Malaysia, Indonesia, Taiwan, India, Hong Kong, Mexico, European Community and an international registration according to the Madrid Protocol designating Switzerland, China, Czech Republic, Hungary, Iceland, Japan, Liechtenstein, Norway, Poland, Russia and Turkey.
The list of goods covers class 35, 38 and 42.
The complainant has also applied for the trademark (word mark) "letsbuyit" in Sweden and Denmark for goods in class 9, 35 and 42. A copy of the registration certificate from the Danish Patent Office was enclosed.
5. Parties’ Contentions
This Complaint is based on the following grounds:
LetsBuyIt.com is developing a leading pan-European e-commerce business based on an innovative, member-driven business model called co-buying, which gives members with an interest in a common product or service the chance to join together and drive down prices.
LetsBuyIt.com's members request products and services on the company's site, and LetsBuyIt.com then works in the members' favour to source these products and services at the lowest price. Members who have joined a product "co-buy" are enabled to see graphically how the price drops as more and more people join over time.
The company's first country site and the first co-buying site in Europe, in Sweden, was launched on April 13, 1999. Since then, LetsBuyIt.com has expanded its geographical range to include 13 European countries and currencies: Germany, United Kingdom, France, Sweden, Norway, Denmark, Finland, Netherlands, Belgium, Austria, Switzerland, Spain and Italy. LetsBuyIt.com's country-specific web sites are customized for the local members, with content in the local language and prices in local currency.
Similarity between our registered trademark/trademark applications and the domain names.
The domain names LESSBUYIT.COM and LESTBUYIT.COM must be said to be confusingly similar to the registered and used trademarks LETSBUYIT.COM and LETSBUYIT.
On May 22, 2000, the respondent e-mailed letsbuyit.com and said that he had been planning to launch an auction site called "lessbuyit.com", that he had been working with two colleagues writing a business plan and so on. He also said that he received hundreds of unique hits each day and that these mail apparently was from people trying to access the complainant's site. He also stated that since "it is less likely that your company will be in a position to change its name (especially in the run-up to IPO) might I suggest that, for a consideration, I would sell you both domains – www.lessbuyit.com and www.lestbuyit.com". In exchange for giving up the domain names the respondent wanted to "settle for an allocation of shares" and expressed the opinion that "an offer in the region of 20,000 shares would be acceptable".
Given the fact that the domain names were registered on May 12, and May 18, 2000, it is obvious that the respondent did not at any time have any legitimate interests in the domain names. It is also quite obvious that the respondent has been acting in bad faith.
On May 28, 2000, the respondent e-mailed the complainant's authorized representative where he was prepared to accept an offer of Ј5,000 for each domain name.
Enclosed to the Complaint was also an e-mail from the respondent in which he "wish to know what you would like me to do with the may emails sent to me at LessBuyIt.com by mistake. There are many inquiries from the public and some from suppliers wishing to do business with you. I can forward them on if you wish. Please advise?"
With the emails that the respondent has forwarded to the complainant it is obvious, and that is also admitted by the respondent, that the domain names and the complainants protected trademarks must be said to be confusingly similar.
On the foregoing it must be said to be clear that the respondent has no legitimate interests in respect of the domain names and that the domain names have been registered and are being used in bad faith.
Especially the respondents suggestion namely that an "offer in the region of 20,000 shares would be acceptable" clearly shows that the domain names in this matter was registered primarily for the purpose of selling the marks to the complainant. The sum is also obviously in excess of the domain name registrant's out-of-pocket costs directly related to the domain name.
With the emails that the respondent has forwarded to the complainant it is also obvious, and that is also admitted by the respondent, that the domain names and the complainants protected trademarks must be said to be confusingly similar.
The Respondent has not filed a response.
6. Discussion and Findings
According to Paragraph 15 (a) of the Rules the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4 (a) of the Policy directs that the Complainant must prove each of the following:
1) 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,
2) that the Respondent has no legitimate interests in respects of the domain name; and
3) the domain name has been registered and used in bad faith.
The domain names are quasi-identical with the Complainants Danish trademark registration of the word LETSBUYIT and with the complainants pending trademark applications of the figurative mark letsbuyit.com. Through the Community Trademark Application the mark is protected in the place of Respondents residence. Based on the intensive use and promotion of the site www.letsbuyit.com, the Complainant also enjoys protection against imitations under unfair competition law and the common law principle of passing off.
The Complainant has not licensed or otherwise permitted Respondent to use its trademark or to apply for any domain name incorporating the mark. Further, the Respondent has not proven that he has any prior rights or legitimate interests in the domain name.
The prerequisites in the Policy, Paragraph 4 (a) (i) and (ii), cf. 4 (c) are therefore fulfilled.
Paragraph 4 (a), (iii) cf. 4 (b) of the Policy further provides registration and use in bad faith.
The Panel finds it highly unlikely that the Respondent has selected the two domain names without having knowledge of the Complainants business and thus of their use of the name letsbuyit.com as domain name, business identifier and trade name. It is not a prerequisite for finding bad faith whether the Respondent had or had not knowledge of the fact that Complainant has registered or applied to register the sign as a trademark.
The words "lessbuyit" and "lestbuyit" can not be considered as words that would be natural to choose for any kind of service offered via the internet. In addition the Respondent has not provided any concrete information on the services that were to be offered under these names. The Panel therefore finds that the two domain names most likely have been registered because they are almost identical to the Complainants domain name. By choosing these names it is likely that the sites will attract quite a number of Internet users, who are actually looking for the Complainants site but inserts the wrong address in their browser by way of typing errors. See Case D2000-0273 Yahoo!, Inc. v. Eitan Zviely et.al and D 2000-0330 Encyclopaedia Britannica, Inc. V. John Zuccarini et.al.
The Panel further notes that the Respondent has offered to sell the domain names to the Complainant for an amount in excess of the out-of pocket costs related directly to the domain name.
On this background also the elements in article 4, (a), (iii) are present in this case.
Consequently, all the prerequisites for cancellation or transfer of the domain name according to Paragraph 4, (a) of the Rules are fulfilled.
The Complainant has requested transfer of the domain name.
In view of the above circumstances and facts the Panel decides, that the domain names registered by Respondent are confusingly similar to the trademarks and the trade names in which the Complainant has rights, and that the Respondent has no rights or legitimate interests in respect of the domain names, and that the Respondent’s domain names have been registered and are being used in bad faith.
Accordingly, pursuant to Paragraph 4 (i) of the Policy, the Panel requires that the registration of the domain names <lessbuyit.com> and <lestbuyit.com> be transferred to the Complainant.
Dated: September 1, 2000