Lycos Europe N.V. v. Alhad Saleh

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lycos Europe N.V. v. RegionCo

Case No. D2000-1102

1. The Parties

The Complainant is Lycos

Europe N.V., Carl-Bertelsmann-Strasse 161-L, 33311 Guetersloh, Germany.

The Respondent is RegionCo,

33311 Guetersloh, Berlin, Berlin 33311, Germany.

2. Domain Name and Registrar

The domain name at issue

is <lycoseurope.com>; hereinafter referred to as the "Domain Name".

The Registrar is Network Solutions, Inc., Herndon VA 20170, 505 Huntmar

Park Drive, USA.

3. Procedural History

The Complaint was submitted

by e-mail to the WIPO Arbitration and Mediation Center (the "Center")

on August 21, 2000. A hardcopy of the Complaint was received by the Center on

August 30, 2000. In the Complaint, the Complainant named Alhad Saleh #1010,

c/o Alsaha, Baghdad, Baghdad 10000, IQ as the Respondent and Register.com, Inc.,

as the Registrar. On August 23, 2000, the Center sent an Acknowledgement of

Receipt of Complaint to the Complainant by e-mail.

On August 23, 2000, a Request

for Registrar Verification was transmitted to Register.com, Inc., who notified

the Center via e-mail of August 24, 2000, that it is not the Registrar for the

Domain Name. Subsequently, the Center transmitted a Request for Registrar Verification

to Network Solutions via e-mail on August 28, 2000. The Registrar replied on

August 30, 2000, confirming that it is the Registrar of the Domain Name and

that the Domain Name is in "Active" status. On August 28, 2000, the

Complainant was notified by the Center that an amendment to the Complaint, specifying

the Registrar, needed to be filed.

The Registrar Verification

revealed that the contact details of the Respondent had been changed showing

the Complainant’s name and e-mail address "adsales@lycos.de" as the

Respondent’s contact. As a consequence, the Complainant assumed that the Domain

Name had been transferred to the Complainant after the Complaint had been filed

and requested to suspend the proceedings for 30 days to allow the Complainant

to verify the transfer. The suspension was granted by the Center on August 31, 2000,

and communicated to the Complainant via e-mail as well as to Alhad Saleh by

post/courier, facsimile and e-mail and to the Registrar via e-mail.

Subsequently, on the request

of the Complainant, the proceedings were suspended by subsequent time periods

of 30 days each until April 21, 2001. The Registrar, however, refused to comply

with the modifications to the register requested by the Complainant via e-mail

of March 13, 2001, stating that it requires the documentation that the proceedings

have been terminated and both parties have agreed on the decision to terminate

and transfer the domain name. On April 18, 2001, the Complainant requested to

re-institute the proceedings.

On May 8, 2001, the Center

notified the Complainant of the formal deficiencies of the Complaint with respect

to the indication of the Registrar of the Domain Name and the Respondent. Hereupon,

the Complainant submitted a duly amended Complaint by e-mail to the Center on

May 18, 2001. A hardcopy of the Complaint was received by the Center on May

21, 2001.

On May 21, 2001, the Notification

of Complaint and Commencement of Administrative Proceeding was transmitted to

the Respondent. The Notification was sent to the Respondent by means of post/courier,

facsimile and e-mail. In this Notification the Respondent was advised that the

Response must be submitted to the Complainant and to the Center by June 9, 2001.

By e-mail of May 21, 2001,

the Center was notified that the Notification to "alhadsaleh@yahoo.com"

could not be delivered because the account had been disabled or discontinued.

Furthermore, the Center was notified by e-mail of May 26, 2001, that

the Notification could not be delivered to "postmaster@lycoseurope.com"

due to permanent fatal errors of such address. The delivery of the Notification

to the Respondent by post/courier and facsimile failed as well.

Having received no formal

Response from the Respondent, on June 12, 2001, the Center issued a Notification

of Respondent Default to the Complainant and the Respondent by e-mail. However,

the Notification could not be delivered to the latter.

On July 2, 2001, Dr. Andrea

Jaeger-Lenz, having provided the Center with a Statement of Acceptance and Declaration

of Impartiality and Independence, was appointed as a single member Administrative

Panel and the Parties were so informed via e-mail. An electronic copy of the

Complaint was e-mailed to the Administrative Panel on the same day, and the

hardcopy of the Case File followed by courier on July 3, 2001.

The Sole Panelist finds

that the Administrative Panel was properly constituted and appointed in accordance

with the Policy, the Rules and the Supplemental Rules.

After having studied the

case file in reference the Administrative Panel formed a preliminary view that

the requirements of paragraph 4(a) of the policy were met, but it remained in

doubt whether the Complainant was entitled to holding the Domain Name under

the ".com" Top-Level-Domain. It appeared, however, highly likely that

the Complainant could demonstrate entitlement upon further submission of evidence.

Following the procedure

adopted by the learned administrative panels in WIPO Case No D2000-1490 and

WIPO Case No. 2001-0592 this Administrative Panel issued, in accordance with

Rule 12 of the Rules for UDRP, on August 9, 2001, directions seeking further

evidence from the Complainant on or before August 23, 2001. Such evidence was

received by the Center on August 23, 2001, and forwarded to the Panel with copy

to the Respondent. The Respondent did not furnish any submissions.

As the Respondent has not

submitted a Response in accordance with paragraph 5 (b) of the Rules, the following

Decision is issued on the basis of the Complaint, the Policy, the Rules and

the Supplemental Rules and without the benefit of a Response from the Respondent.

4. Factual Background

a) The Complainant is

a stock corporation organised under the laws of The Netherlands. According to

its shareholder agreement, its purpose is to hold and manage the interests in

and shares of operative subsidiaries. Lycos Inc., is the operator of a search

service for the search, retrieval and cataloguing of documents in the Internet

located at <lycos.com>. By way of a license agreement dated February 18,

2000, with Lycos, Inc., 400-2 Totten Pond Road, Waltham, Massachusetts 02451,

USA, the Complainant acquired a license to use the trademark "Lycos"

and the name "Lycos" in its own corporate name in the combined form

"Lycos Europe" in Europe (see Annex 3 to the Complaint, Section VI.

D. (1), Attachment A). According to Section VI. G. of the aforementioned licence

agreement, the Complainant is entitled to register and be listed as the owner

of domain names with country designations for the countries in the applicable

territory which include the name "Lycos". In Section IV. C. the Complainant

undertook not to use any trademarks, trade names or service marks owned by Carnegie

Mellon Unversity (CMU), Lycos, Inc., or Point Communications except as specifically

provided in the license agreement.

Furthermore, according

to a certification of August 20, 2001, signed by Brian Lucy, Chief Financial

Officer of Lycos, Inc., submitted to the Center on August 23, 2001, the

Complainant, under the address of Richard Holkade 30-34, 2033 PZ Haarlem,

would be authorized by Lycos, Inc., to hold the Domain Name at issue.

Lycos, Inc., is entitled

to the use and sublicensing of the trademark "Lycos" on the basis

of a license agreement of June 16, 1995, with CMU. CMU is the owner of the trademark

"Lycos" registered in the US. According to Section VIII. D. of this

license agreement, Lycos, Inc., obtained the right to use this trademark on

a perpetual, world wide and exclusive basis. Furthermore, Lycos, Inc., and CMU

agreed that any trademark registration would be undertaken by CMU. Subsequently,

the mark "Lycos" was applied for as a Community trademark for CMU

on May 3, 1996, and published on March 16, 1998, (see Annex 10 to the Complaint),

under the application no. 257402.

On May 1, 1997, Lycos,

Inc., entered into an agreement with Bertelsmann Internet Services GmbH on the

establishment of joint entities in order to launch the Lycos Search Service

in a number of European countries (see Annex 7 to the Complaint). In July 1997,

the Lycos Bertelsmann GmbH & Co. KG was established in Germany in accordance

with the aforementioned agreement (see Annex 8 to the Complaint). Since that

day that company was trading under "Lycos". The Lycos Bertelsmann

GmbH & Co. KG was the "predecessor-in-interest" to the Complainant

with respect to the operation of the Lycos Internet-Search Service.

The Complainant refers

to the domain name "lycos-europe.de" registered for Lycos Bertelsmann

GmbH & Co. KG (see Annex 7 to the Complaint) as well as the domain name

"lycos.de" which is registered for Bertelsmann AG (see Annex 12 to

the Complaint), a parent company of the Complainant. "Lycos" search

engines are also provided on a national basis in a number of European countries,

including Belgium, Germany, Denmark, France, United Kingdom, Italy, Netherlands,

Norway, Sweden, Switzerland and Spain as well as in a number of American and

Asian countries. In these countries the trademark is also used as a component

of a domain name with the respective country code top level domains (ccTLD´s).

The "Lycos" search service has risen to become the third most popular

search engine on the Internet after Yahoo and Altavista.

b) The Respondent is

the registrant of the Domain Name, the registrar of which is Network Solutions,

Inc. The Domain Name does not resolve to an active website or other online presence

but its registration is in active status. It was created on July 9, 1999.

Prior to issuing the Complaint,

the Complainant tried without success to contact the Respondent, using the details

then current on the Registrars register. The attempt to deliver a letter to

the postal address of the Respondent’s contact then given in the register failed,

due to insufficient address details. Any efforts to contact the Respondent by

telephone or fax failed, as well. An e-mail sent to the Respondent was delivered,

however, the Respondent did not respond.

In the course of these

attempts to contact the Respondent and the filing of the Complaint, the Respondent’s

records in the register were changed. While only the name of the registrant

"RegionCo" remained the same, the address and the contact details

were amended. Any efforts to contact the Respondent by the Complainant and the

Center under the amended contact details given in the register failed. The e-mail

address given by the Respondent does not connect to the Respondent but to the

Complainant.

5. Parties Contentions

a) Complainant

The Complainant contends

that the Domain Name is confusingly similar to the trademark "Lycos"

licensed to the Complainant as well as to its trading name "Lycos Europe

N.V." and that the Respondent has no rights or legitimate interests in

respect of the Domain Name, and that it has been registered and is being used

in bad faith. The Complainant requests that the Domain Name be transferred to

the Complainant by the Respondent.

b) Respondent

The Respondent is in default

as it has not contested the allegations of the Complaint by way of any response.

6. Discussions and Findings

Paragraph 4(a) of the Policy

directs that the Complainant must assert each of the following:

(i) that the Domain

Name registered by the Respondent is identical or confusingly similar to the

trademark in which the Complainant has rights; and

(ii) that the Respondent

has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Domain

Name has been registered and is being used in bad faith.

a) Similarity of Trademark

and Domain Name

(1) In this case it

had to be looked in more detail, whether the Complainant has any rights in a

trademark to base the Complaint on. The Complainant is according to his own

contentions and submissions not owner of any trademark application or registration

in "Lycos". Neither has he substantiated that he himself has acquired

any trademark or trade name rights through use. In particular, he has not demonstrated

in the Complaint or through its annexes, in which way the Complainant has acquired

rights of his own in the trading name "Lycos Europe" either by Dutch,

German or other legal regime. There is no evidence of commercial activities

of the Complainant himself under that name. He merely points to the use of "Lycos"

by other companies within the Lycos or Bertelsmann group in this respect and

refers to domains held by other Bertelsmann entities. However, the Policy and

Rules do not limit the ability to be Complainant in the Uniform Domain Name

Dispute Resolution Procedure to owners of trademarks but merely require that

the Complainant demonstrate rights in a trademark. As a license confers upon

the licensee the right to use a trademark, the fact that Complainant has demonstrated

no trademark rights of his own does not bar his standing in this procedure.

(2) According to the

facts submitted by the Complainant, the Panel finds that the Complainant has

rights in the trademark "Lycos" as and subject to the conditions of

a sub-licensee. According to the license agreement between CMU and Lycos, Inc.,

of June 16, 1995, the latter is the exclusive licensee of all registered and

unregistered trademarks "Lycos" world wide. However, at the time of

conclusion of the license agreement, the trademark "Lycos" existed

only in the US and thus no license outside of the US could be granted in principle.

Notwithstanding that, the parties to the license agreement contemplated that

Lycos, Inc., should acquire rights as a licensee not only in the trademarks

existing at the execution of the license agreement, but also in any trademark

rights arising afterwards. Therefore, the license is to be construed also as

a future license in trademark rights in other parts of the world with regard

to any such rights under the condition that such rights come into existence,

either by application or by registration. The application of a Community trademark

may be subject to a license, Art. 24 CTMR. Thus, the Panel is convinced

that the license agreement between CMU and Lycos, Inc. includes the rights deriving

from the Community trademark application "Lycos", registered in the

name of CMU. The circumstances that lead to this conclusion are that CMU licensed

its rights in the trademarks "Lycos" to Lycos, Inc. on a perpetual

world wide and exclusive basis and that CMU and Lycos, Inc. expressly anticipated

the future registration of trademarks in the name of CMU, but evidently envisaged

its use by Lycos, Inc., on the basis of their license agreement (see Section

VIII. D. of Annex 6 to the Complaint).

(3) By way of the license

agreement of February 18, 2000, the Complainant acquired an exclusive sub-license

from Lycos, Inc. to use the Community trademark application "Lycos"

in Europe and sublicense to operative subsidiaries. The reference made in Attachment

A to this license agreement to the registration of the trademark "Lycos"

in the US does not contradict these findings. Since the license agreement was

concluded for the purpose of operating the search service for the European market,

it is reasonable to conclude that the parties intended to agree on a sub-license

on any trademark right existing in the respective territory. The Panel is, therefore,

of the opinion that in the context of Attachment A the reference to the registration

in the US is not intended to limit the scope of the licensed rights to the Complainant

but is merely given for informative purposes. Hence, the Complainant has rights

in the Community trademark application "Lycos", registered in the

name of CMU, as a sublicensee.

(4) The Domain Name

<lycoseurope.com> is confusingly similar to the US Trademark registration

and Community trademark application "Lycos". Within the relevant part

of the Domain Name "lycoseurope" the element "lycos" is

identical to the trademark in issue. It also forms the characteristic and distinctive

component of the term "lycoseurope", because the public will conceive

the element "europe" merely as a descriptive reference to the geographical

source or origin of the goods and services provided under the name "Lycos".

In any event, the conformity of the characteristic element of the domain name

with the trademark "Lycos" leads to the assumption that the Respondent

is affiliated or associated as a licensee with the owner of the trademark as

well as, indirectly, with the Complainant. This finding is supported by Art.

6 of the Joint Recommendation Concerning the Protection of Well Known Marks

of September 1999, according to which a domain name is confusingly similar to

a well known mark, if that mark forms a substantial part of the domain name,

which is the case here.

(5) Therefore, the Panel

concludes that the Domain Name is confusingly similar to the trademark the Complainant

has rights in.

b) Rights or Legitimate

Interests of the Respondent in the Domain Name

According to Paragraph

4(c) of the Policy, for the purposes of Paragraph 4(a)(ii) the following circumstances,

in particular, but without limitation, shall demonstrate rights or legitimate

interests of the Respondent:

(i) the Respondent’s

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,

before any notice to the Respondent of the Dispute; or

(ii) the Respondent

(as an individual business, or other organisation) has been commonly known by

the Domain Name, even if the Respondent has no trademark or service mark rights;

or

(iii) the Respondent

is making a legitimate non-commercial or fair use of the Domain Name, without

intent for commercial gain to misleadingly divert consumers or to tarnish the

trademark or service mark at issue.

The Complainant denies

any connection with the Respondent or license relationship between Lycos, Inc.,

and the Respondent with respect to the use of the trademark or trading name

"Lycos" or any other authorisation for the registration of a domain

name incorporating the trademark. The Respondent has not opposed these submissions.

The contentions made by the Complainant do not indicate that the Respondent

has any rights or interest in respect of the Domain Name according to Paragraph 4(c)(i)–(iii)

of the Policy, or any other rights or legitimate interests. It is sufficient

for the Complainant to establish prima facie evidence that the Respondent lacks

any legitimate interest (see Eckes-Granini GmbH & Co. KG v. Weitner A.G.,

WIPO Case No. D2000-1116). The fact that the Respondent’s

contact details in the register were changed after the Complainant asserted

its rights with respect to the Domain Name through the e-mail contact given

in Annex 1 to the Respondent prima facie demonstrates that the Respondent

is aware of the absence of any right or legitimate interest in the Domain Name.

Therefore, it is the onus of the Respondent to show that the registration of

the Domain Name was legitimate. The Respondent has failed to do so.

Hence, the Panel finds

that the Respondent has no rights or legitimate interest in respect of the Domain

Name.

c) Registration and

Use in Bad Faith

It must be determined,

whether the Respondent had registered and used the Domain Name in bad faith.

Under Paragraph 4(b) registration and use in bad faith can be demonstrated by

(i) circumstances indicating that he has 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 his documented out-of-pocket costs directly related to the domain

name; or (ii) he has 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 he has engaged in a pattern of such conduct; or (iii)

he has registered the domain name primarily for the purpose of disrupting the

business of a competitor; or (iv) by using the

domain name, he has intentionally

attempted to attract, for commercial gain, Internet users to his 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 product or service on his web site or location.

The Respondent has remained completely passive in all respects other than trying

to conceal his true identity and address. The Domain Name does not resolve into

a website or other online presence. The Panel recognises that Paragraph 4(a)(iii)

requires not only bad faith registration, but also use in bad faith by the Respondent.

However, it is not necessary for the Complainant to prove a positive action

in bad faith by the Respondent in relation to the Domain Name. As can be inferred

from the circumstances identified in Paragraph 4(b)(i)–(iii) passive holding

of a Domain Name after its registration may under certain circumstances constitute

bad faith use (see Telstra Corporation Limited. v. Nuclear Marshmallows,

case No. D2000-0003, para. 7.10). Since a distinction

is made between the registration and the use in bad faith, passive holding may

be interpreted as an active use only if the Complainant can show additional

circumstances that demonstrate that the Respondent’s action amounts to bad faith.

The Complainant has not submitted any facts allowing the conclusion that the

aforementioned requirements are satisfied. However, the circumstances identified

in Paragraph 4(b) are not exhaustive. Therefore, the Panel may recognise bad

faith use by passive holding on the grounds of other circumstances of the Respondent’s

behaviour not explicitly mentioned in Paragraph 4(b)(i)–(iv) of the Policy.

The uncontested facts submitted by the Complainant have to be looked at more

closely therefor. First of all, it may be assumed from the circumstances that

the Respondent wanted to prevent the owner of the trademark from reflecting

his trademark in the Domain Name. The trademark "Lycos" of CMU, in

which the Complainant has rights, is widely known among Internet users. It enjoys

a recognition comparable to that of well known search engines like Altavista

or Yahoo. Many dot-coms which started out their business in the US subsequently

built up web presences in Europe. In order to operate a European website it

would have been only logical for the trademark owner or entitled user of this

trademark to pick the Domain Name that the Respondent registered for himself.

It is inconceivable, that the Respondent has not known about the "Lycos"

search engine prior to registering the Domain Name. Furthermore, the Respondent

has taken active steps to conceal its true identity by using false contact details

and has not responded to any of the Complainant’s efforts to resolve the conflict

of the Domain Name registration with the Complainant’s interests before or in

the course of these proceedings. Besides that, the Respondent has not provided

any evidence of actual or contemplated good faith use of the Domain Name. Taking

into account, finally, that the Respondent changed the contact details of the

register by using the Complainant’s details and that it disconnected its e-mail

contact, the Panel is unable to conceive of any plausible actual or contemplated

active use of the Domain Name by the Respondent that would be legitimate (see

Telstra Corporation Limited. v. Nuclear Marshmallows, WIPO

Case No. D2000-0003, para. 7.12.).

The Panel, therefore, concludes

that the Respondent’s registering and subsequent passive holding of the Domain

Name satisfies the requirement of Paragraph 4(a)(iii) that the Domain Name is

being used in bad faith by the Respondent.

d) Remedies

The Administrative Panel

is satisfied that all three requirements under Paragraph 4(a) of the Policy

are fulfilled. The Complainant requests the Panel to order the transfer of the

Domain Name to the Complainant in accordance with Paragraph 4(i) of the Policy.

However, this particular case created the paradox situation that even if all

requirements were met, yet the Complainant appeared according to his own original

submissions not to be entitled to holding the domain himself: According to Section

VI. G. of the license agreement with Lycos, Inc. of February 18, 2000, the Complainant

is explicitly entitled to register and be listed as the owner of domain names

which include the name "Lycos" with country designations for the countries

in the contract territory only. Under the license agreement Lycos, Inc. does

not confer any rights on the Complainant to register a domain name containing

the name "Lycos" with the top level domain "com". According

to Section VI. C., the Complainant was not entitled to use the trademark "Lycos"

except as specifically provided in the license agreement. Therefore, the Panel

concluded preliminarily that the transfer of the Domain Name to the Complainant

and subsequent holding of the Domain Name by Complainant would constitute an

infringement of the license owned by Lycos, Inc. Other than derivative

trademark rights, the Complainant had not demonstrated that it has acquired

own rights in the "Lycos" as a trademark or trade name by actual use

in commerce under any legal regime.

The remedies available under the Policy, if all three requirements of Paragraph 4(a)

of the Policy are met, are either the cancellation of the Domain Name or its

transfer to the Complainant. The Policy does not set forth any requirement to

be fulfilled by the Complainant for either remedy. Also, Rule 4(i) of the Rules

does not answer the question whether the Panel is bound in its decision by the

motion of the Complainant to either transfer or cancellation, or whether it

is up to the Panel´s discretion to decide in favour of either transfer or cancellation,

cancellation as implied minus to a requested transfer, according to the Parties´

material contentions. Neither Paragraph 10 nor Paragraph 15 of the Rules give

any guidance on this question either. In the preliminary view of the facts submitted

in this case by the Complainant, cancellation of the Domain Name appeared the

correct remedy as opposed to the requested transfer. However, Paragraph 10(b)

of the Rules request the Panel to give parties a fair opportunity to present

their case. In accordance with Paragraph 10(a) of the Rules and following ruling

in the procedures WIPO Case No. D2000-1490 and

WIPO Case No. D2001-0592 the Panel therefore

considered it appropriate in this case to issue an Order seeking a statement

by the licensor Lycos, Inc., on whether the Complainant would be entitled to

hold the Domain Name at issue, as referenced in the Procedural History.

Such statement with the

content that the Complainant was entitled to holding the Domain Name at issue,

as referenced in the Factual Background, was sent by the Complainant to the

Center on August 23, 2001. The address of the Complainant named by the licensor

Lycos, Inc. is a Dutch address as opposed to the German address originally given.

The Administrative Panel has, however, no reason to doubt, that the entity named

in the statement as entitled and the Complainant are the same legal entity,

but that the Complainant has merely changed address since this administrative

proceeding started and failed to notify the Center of this. This, however, does

not have material adverse effect to his claim.

For the foregoing reason,

the Administrative Panel finds that the correct remedy to be applied here is

transfer of the captioned Domain Name instead of cancellation.

7. Decision

In the light of the foregoing

reasons, the Panel decides that the Domain Name at issue is confusingly similar

with the trademark in which the Complainant has rights, that the Respondent

has no rights or legitimate interests in respect of the Domain Name, and that

the Domain Name has been registered and used in bad faith.

Accordingly, the Panel

requires, pursuant to Paragraph 4(i) of the Policy, that the Domain Name <lycoseurope.com>

be transferred to the Complainant.

Dr. Andrea

Jaeger-Lenz

Sole Panelist

Dated: August

28, 2001