Office Club, Ltd. v. John Adem

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Office Club,

Ltd. v. John Adem

Case No.

D2000-1480

1. The Parties

The Complainant is Office

Club, Ltd., of 1 Carpenders Court, Delta Gain, Watford, WD19 5GB, United Kingdom.

Represented by James L.

Bikoff and David I. Wilson of Silverberg Goldman & Bikoff, L.L.P. of Georgetown

Place, Suite 120, 1101 30th Street, N.W., Washington, D.C. 20007,

United States of America.

The Respondent is John

Adem, of 4915 Alta Canyada Road, La Canada, CA 91011, United States of America.

Respondent is not represented.

2. The Domain Name and

Registrar

The domain name with which

this dispute is concerned is: <officeclub.com>.

The Registrar with which

the domain name is currently registered is BulkRegister.com, Inc. of 7 East

Redwood Street, Third Floor, Baltimore, MD 21202, United States of America.

3. Procedural History

3.1 A Complaint was

first submitted electronically and in hard copy to the World Intellectual Property

Organization Arbitration and Mediation Center (the "WIPO Center") on October

30, 2000 and November 3, 2000, respectively, and following correction of certain

formal requirements, filing was completed electronically and in hard copy on

November 17, 2000 and November 20, 2000, respectively.

3.2 On November 14, 2000,

the Registrar verified:

(i) that the domain

name is registered with it;

(ii) that the current

registrant of the domain name is the Respondent;

(iii) that the Policy

applies to the domain name;

(iv) that the domain

name is in "Registrar LOCK" status;

(v) Respondent's Administrative

Contact and Technical Contact is John Adem of 4915 Alta Canyada, La Canada,

CA 91011, United States of America.

(vi) the record was

created on August 28, 1997.

3.3 On November 22,

2000, all formal requirements for the establishment of the Complaint having

been checked by the WIPO Center were found to be in compliance with the applicable

ICANN Policy, ICANN Rules ("the Rules") for Uniform Domain Name Dispute Resolution

Policy ("the Policy), and WIPO’s Supplemental Rules. The Panel has checked the

file and confirms the WIPO Center's finding of proper compliance with the Rules

and establishment of the Complaint.

3.4 On November 22,

2000, the WIPO Center sent the Notification of Complaint and Commencement of

Administrative Proceeding as follows.

(i) by courier, by facsimile

and by e-mail to Respondent, the Administrative Contact and the Technical Contact;

(ii) by e-mail to the

postmaster at the domain name.

3.4.1 The record shows

that:

(i) the Center has satisfied

the provisions of each of paragraphs (i)(A), (B), (ii)(A), (ii)(B) and (iii)

of Rule 2(a);

(ii) the domain name

did not resolve to an active web-site;

(iii) Respondent has

not notified any preferred address to WIPO Center;

(iv) A Response has

been filed.

3.4.2 The Panel therefore

finds that the obligation imposed on the Center with respect to Notification

of the Complaint and the Commencement of the Administrative Proceeding has been

satisfied, and that there has been actual service on Respondent.

3.5 The Administrative

Proceeding commenced on November 22, 2000 and the Response was timely filed

on December 7, 2000.

3.6 On December 15,

2000, Complainant filed a Request to File a Reply to Respondent's Response.

This Request was communicated to Respondent and on December 15, 2000, Respondent

advised WIPO Center that he did not object to the Request.

3.7 Panelist D.J. Ryan,

having filed the Statement of Acceptance and Declaration of Impartiality and

Independence, was appointed as sole panelist on January 8, 2001.

4. Complainant's Request

to Reply to Response

4.1 In this case Complainant

asserts that in January or February of 1998 Complainant's Managing Director,

Mark Austen, contacted Respondent and offered to purchase the domain name for

$500. Complainant further asserts that Respondent declined to sell for that

figure on the ground that the name had received sufficient hits on a web-site

in which it was offered for sale to justify a price of $9,950. Complainant further

asserts that in January 2000 the domain name was offered on the same site for

$19,950 (Complaint paragraph 12(c)).

4.2 Respondent contends

that he had never heard of Complainant until he received a letter from Complainant's

attorney and that he does not remember any conversation with Complainant. Respondent

further asserts that he has not offered the name to them for sale.

4.3 The Response includes

legal argument in relation to the strength and effect of Complainant's reputation

in its trade mark and also includes an allegation that the Complaint constitutes

an attempt at "reverse domain name highjacking".

4.4 Complainant, by

its request filed December 15, 2000, requested the right to file a reply to

the Response in relation to the alleged communications between Complainant's

Managing Director and Respondent and also to Respondent's legal arguments in

relation to the history of the strength of Complainant's trade mark and likelihood

of confusion and the issue of "reverse domain name highjacking". In support

of its request, Complainant refers to Rules 10(b) and 12 of the Rules, and cites

cases in which replies have been admitted such as United States Olympic Committee

(USOC) v. Tri B-U-N Eco Project WIPO Case No. D2000-0435 (July 13, 2000);

Westfield Corp. et al. .v... Graeme Michael Hobbs (Dynamic Marketing Consultants),

WIPO Case No.D2000-0227 (May 18, 2000); and, Lion Nathan Limited

v. Wallace Waugh, WIPO Case No. D2000-0030 (April 3, 2000).

4.5 While Rule 12 provides

that the Panel may call for further submissions, the Rules neither expressly

permit nor prohibit the filing of further submissions on a party's own motion.

Rule 10(a) provides that the Panel shall conduct the proceedings in such manner

as it considers appropriate in accordance with the Policy and the Rules. Rule

10(d) provides that the Panel shall determine the admissibility, relevance,

materiality and weight of the evidence. Accordingly, the Panel considers that

it is within the Panel's discretion, properly exercised, to accept or refuse

such further submissions.

4.6 The acceptance or

refusal of further submissions and the weight to be attributed to them has been

considered in a number of cases, see for example Rapido TV Limited v. Jan

Duffy-King WIPO No. Case No. D2000-0449 (August 27, 2000); Gordon Sumner

p/k/a Sting v. Michael Urvan WIPO Case No. D2000-0596, (July 20, 2000);

and, Document Technologie, Inc., v. International Electronic Communications,

Inc. WIPO Case No. D2000-0270, (June 6, 2000). The Panel respectfully agrees

with the views expressed by the Panels in those cases. Consistent with the Policy's

objective of providing a simple and speedy process for

the resolution of cases

where the domain name has been registered and used without legitimate reason

and in abuse of the trade mark rights of another, the Rules specifically provide

only for the submission of a Complaint and a Response. Whilst the Rules provide

some flexibility to the Panel to call for or permit further submissions, this

should occur only in exceptional circumstances such as those exemplified in

the decision of the Panel in the Document Technologies Case (supra),

e.g. where new pertinent facts arise after the submission of the Complaint.

4.7 In this case there

is dispute as to facts which are pertinent to the questions to be decided. It

is not unreasonable that Complainant did not foresee that Respondent would dispute

the fact that communications did occur between Respondent and Complainant's

Managing Director. Those communications, if substantiated would be of assistance

to the Panel in its decision. The Panel does not, however, believe it would

be materially assisted by further argument on the issue of trade mark strength

and confusion or "reverse domain name highjacking".

4.8 A further factor

in this case is that Respondent specifically stated that he did not object to

the Request provided he was given the opportunity to answer the Reply.

4.9 The Panel therefore

allowed the Request and issued the Procedural Order attached hereto as Annex

A.

4.10 Notwithstanding

the granting of the leave previously sought, Complainant, by letter dated February

2, 2001, advised the Center that it declined to file a Reply to the Response

and rests upon the allegations in the Complaint.

5. Factual Background

5.1 Complainant is a

corporation which, Complainant asserts has, since 1992, carried on business

in the United Kingdom and the Republic of Ireland in the provision of support

services to independent office supplies dealers, including purchasing, marketing,

training and financial services. Complainant asserts it provides members with

catalogues, magazines, mailers and other materials. It estimates a distribution

of 2,000,000 direct promotional leaflets bearing its "Office Club" trade mark

have been distributed since 1992 and, of these, approximately 500,000 were distributed

before 1997, and, that circulation of magazines containing "Office Club" advertisements

exceeded 5,000,000.

5.2 Complainant asserts

that it has over 300 members and that sales by its members in the period 1992

– 1999 exceeded £1,000,000,000 of which over £200,000,000 were prior to 1997.

5.3 Complainant is the

registrant of the domain name <officeclub.co.uk> and uses and promotes

its "Office Club" trade mark on that site (Complaint Annex H).

5.4 Complainant's Managing

Director, Mark Austen, is the registered proprietor in United Kingdom and the

Republic of Ireland of trade marks, registered in international classes 16 and

35, and comprising the device of a diamond within which are the words "Office"

and "Club" with the word "Club" rendered in flowing script.

5.5 Complainant asserts

that Respondent is "affiliated with Mind Rush, Inc., a company that offers for

sale domain names, including domain names that it owns" and that the server

for the domain name is the same as the server for the domain name <mindrush.com>

(Complaint Annexures A and E), and that "Mindrush offers for sale, in addition

to the Office Club mark, other domain names containing famous trade marks including

<acdelcs.net>, <michaeljordanjust.net>, <kurtwarner.com> and

<micro-soft.net>.

5.6 As noted in paragraph

4.1 above, Complainant further asserts that communications took place between

Complainant’s Managing Director and Respondent and that the domain name had

been offered for sale. As noted in paragraphs 4.9 and 4.10, the Panel, at the

Complainant's request, afforded Complainant the opportunity to adduce evidence

in support of these assertions, but Complainant declined to do so.

5.7 Respondent puts

in issue Complainant's assertion as to its trade mark rights, the alleged communication

and the alleged offer of the domain name for sale. Respondent asserts that he

had never heard of Complainant until he received a threatening letter from Complainant's

attorney and that the domain name has never been for sale.

5.8 Respondent further

asserts that he is not, in any way, affiliated with MindRush, Inc., that his

son Paul Adem is President of MindRush, Inc., and that he merely "parks" his

domain names with the MindRush servers, as do other domain name holders.

5.9 Respondent points

out that the registrants of the domain names <acdelco.net>, <michaeljordanjust.net>,

<kurtwarner.com> and <micro-soft.net> are all individuals with whom

he has no connection.

5.10 Respondent asserts

that he has not engaged in dealing in office supplies and has no plans to trade

internationally. He asserts that the domain name was registered as part of a

marketing plan to use in conjunction with his business of apartment management.

He asserts that he operates an incentive scheme to encourage existing tenants

to "bring in an office mate within the framework of an office club."

6. Applicable Dispute

6.1 This dispute is

one to which the Policy applies. By registering the domain name, Respondent

accepts the dispute resolution policy adopted by the Registrar. The Registrar's

current policy set out in its domain name registration agreement is the Policy.

6.2 To succeed in its

Complaint, Complainant must show that each of the conditions of paragraph 4(a)

of the Policy are satisfied, namely that:

(i) the domain name

is identical or confusingly similar to a trade mark or service mark in which

the Complainant has rights; and,

(ii) the Respondent

has no rights or legitimate interests in the domain name;

(iii) the domain name

has been registered and is being used in bad faith.

7. Parties' Contentions

A. Complainant

7.1 Complainant contends

that its trade mark is a famous mark and that the domain name is identical to

Complainant's trade mark. The addition of ".com" to the trade mark is a necessary

element of the domain name and, therefore, does not serve to distinguish the

domain name from Complainant's trade mark."

7.2 Complainant contends

that Respondent has no rights or legitimate interests in the domain name and,

in support of this contention, asserts that Respondent has failed to demonstrate

any of the circumstances set out in paragraph 4(c) of the Policy. Specifically,

Complainant contends that:

(a) Respondent's use

of the <officeclub.com> domain name is not in connection with a bona

fide offering of goods or services;

(b) Respondent is not

commonly known or identified by the name Office Club;

(c) Respondent does

not operate a business or other organisation commonly known as Office Club;

and,

(d) Respondent is not

making legitimate non-commercial or fair use of the domain name. Instead, Respondent

registered the domain name for the purpose of selling it through "MindRush.com",

a domain name auction company.

7.3 Complainant contends

that "because Respondent has sought to sell the domain name to third parties

through the MindRush domain name auction web site, it has violated paragraph

4(a)(ii) of the Policy.

7.4 Complainant contends

that Respondent has registered and is using the domain name in bad faith. It

contends that Respondent's conduct mirrors paragraph 4(b)(i) of the Policy in

that he has registered it "for the bad faith purpose of selling it for an amount

far in excess of its out of pocket costs". Complainant repeats its assertions

referred to in paragraph 5.5 above and contends that because Respondent has

sought to sell the domain name for more than its out-of-pocket costs, he has

violated paragraph 4(a)(iii) of the Policy.

B. Respondent

7.5 Respondent contends

that Complainant has failed to show that its mark, comprising the two generic

and description words "Office" and "Club" has acquired a secondary meaning as

indicating Complainant or its goods or services. He further contends that no

such secondary meaning has been achieved in relation to the use which he intends,

namely on the Internet.

7.6 Respondent contends

that he registered the domain name for the purpose of using in it connection

with his bona fide business of apartment management.

7.7 Respondent denies

that he registered the domain name primarily for the purpose of selling it to

Complainant or to a competitor of Complainant and asserts that he had never

heard of Complainant and that the domain name has never been for sale.

7.8 Respondent contends

that Complainant has attempted to deceive the Panel by linking him to domain

names with which he is not associated and alleges reverse domain name hijacking

against Complainant.

8. The Panel's Findings

Identical or Confusingly

Similar Trade Marks

8.1 Complainant has

demonstrated rights in the trade mark "Office Club". Although the marks as registered

by Complainant's Managing Director are composite marks, it is clear that the

marks would be known as "Office Club" and that Complainant has, in fact, used

those words as a trade mark separately from the diamond device (Complaint Annex

H). Respondent has failed to rebut, other than by mere assertion of failure

to prove, Complainant's submissions as to extensive use of the trade mark in

the U.K. and Ireland. The fact that Respondent operates in a different sphere

of business and a different geographical area does not affect the question of

identity between the domain name and the trade mark. The test here is one of

identity or confusing similarity not of trade mark infringement or passing off.

It is well-established that the question of identity and confusing similarity

is not affected by the running together of the words or the addition of ".com"

– see for example the World Wrestling Federation Case – WIPO Case No.

D99-0001 (January 14, 2000) and the Foreign and Colonial Case – WIPO

Case No. D2000-1383 (December 27, 2000).

The Panel, therefore, finds

that the domain name is identical to Complainant's "Office Club" trade mark

and confusingly similar to its composite mark.

Rights or Legitimate Interests

8.2 The onus of proof

in establishing absence of legitimate rights or interest and registration and

use in bad faith is on Complainant, see paragraph 4(a) of the Policy. Though

the burden of proof is a shifting one – see John Swire & Sons Ltd v.

David Huang – WIPO Case No. D2000-1106, the primary burden is on Complainant.

The domain name comprises

two commonly used descriptive terms and it is not unlikely that others may wish

to use these words as an identifier of goods or services or of a web site. Complainants

have submitted that because Respondent has sought to sell the domain name to

third parties, it has violated paragraph 4(a)(ii) of the Policy. This submission

is not sustainable. First of all, Complainant has not produced any evidence

to support its assertion that the domain name was for sale. The fact that the

domain name is associated with the server of a site that offers domain names

for sale does not establish this. Complainant has produced evidence that other

domain names at the MindRush site are for sale, but has not produced such evidence

in respect of the domain name <officeclub.com>. Complainant was given

the opportunity to produce further evidence in support of its

assertion, but failed to do so. Respondent has asserted, but not supported by

evidence, that the domain name was registered with intent that it be used in

association with its apartment management business. Secondly, it is well established

that mere offering of a domain name for sale is neither illegal nor contrary

to the Policy – see for example J. Crew International, Inc. v. crew.com

– WIPO Case No. D2000-0054 (April 20, 2000); Meteor Mobile Communications

v. Frank Dittmar – WIPO Case No. D2000-0524 (July 17, 2000); and, John

Fairfax Publications Pty Ltd v. Domain Names 4U and Fred Gray – WIPO Case

No. D2000-1403 (December 13, 2000).

8.3 The Panel, therefore,

finds that the Complainant has failed to discharge the prima facie onus

which is on it to show that Respondent has no rights or legitimate interests

in the domain name.

Bad Faith Use and Registration

8.4 In the light of

the finding in paragraph 8.3 it is unnecessary to consider whether Complainant

has established bad faith use and registration as required by paragraph 4(a)(iii)

of the Policy. However, for the record and in view of Respondent's submission

with respect to reverse domain name hijacking the Panel deals briefly with that

issue.

Complainant's submission

is that paragraph 4(a)(iii) is satisfied because Respondent sought to sell the

domain name for more than his out-of-pocket expenses. As shown above, Complainant

has produced no evidence to support the allegation of attempted sale and even

if it had, it would not have satisfied the requirement of paragraph 4(a)(iii).

Complainant appears to rely on the circumstances set out in paragraph 4(b)(i)

of the Policy. That paragraph requires a showing that the domain name was registered

primarily for the purpose of sale or other transfer to the Complainant or

to a competitor of the Complainant. There is no evidence to support this,

nor is there evidence to support a finding of bad faith on any other basis.

Evidence of communications between Complainant and Respondent and of the nature

of these communications might have been of assistance in resolving the conflicting

assertions on this issue, but no such evidence was before the Panel.

8.5 The Panel, therefore,

finds that Complainant has failed to show that the domain name has been registered

and is being used in bad faith.

8.6 Although the Panel

finds that Complainant has failed to establish bad faith or the absence of legitimate

rights or interests on the part of Respondent, there is nothing in the evidence

to support an inference that the Complaint was brought in bad faith or primarily

to harass Respondent. The Panel, therefore, declines to make a declaration pursuant

to Rule 15(e) of the Rules.

9. Decision

9.1 The Panel finds

and decides:

(i) The domain name

is identical or confusingly similar to a trade mark in which Complainant has

rights;

(ii) Complainant has

failed to establish that Respondent has no rights or legitimate interests in

respect of the domain name;

(iii) Complainant has

failed to establish that the domain name has been registered and is being used

in bad faith;

(iv) The Complaint is

therefore dismissed.

D.J. Ryan

Sole Panelist

Dated: March

6, 2001

ANNEX

A

ORGANISATION

MONDIALE

DE

LA PROPRIÉTÉ INTELLECTUELLE

Centre

d’arbitrage et de médiation de l’OMPI

WORLD

INTELLECTUAL

PROPERTY

ORGANIZATION

WIPO

Arbitration and Mediation Center

January 24,

2001

Re: Case No. D2000

- 1480

Procedural Order

No. 1

1. Leave is granted to

Complainant to file a Reply to the Response.

2. Such Reply to be evidence

on oath and confined to the existence and substance of communications between

Complainant and Respondent prior to the filing of the Complaint and the advertising

or offering for sale of the domain name.

3. The Reply is to be filed

electronically or by facsimile and served on Respondent on or before February

2, 2001. Annexures which cannot be transmitted electronically or by facsimile

to be filed and served in hardcopy by courier.

4. Respondent may file

and serve on Complainant on or before February 16, 2000 Answer to the

Reply.

5. Such Answer to be evidence

on oath confined to matters raised in the Reply.

6. This Proceeding is suspended

until seven (7) days after communication of the Reply and the Answer (if any)

to the Panel.

Respectfully submitted,

Desmond J. Ryan, Esq.

Sole Panelist