i-online software, ag v. Magnolia Associates

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

i-online

software ag v. Magnolia Associates

Case No

D2001-0422

1. The Parties

Complainant is "i-online

software ag," whose address is Riemergasse 14, A-1010 Vienna, Austria.

Complainant’s authorised representative in this case is Meinhard Ciresa,

Attorney at law, Biberstrasse 3/8, A1010 Vienna, Austria.

Respondent is Magnolia

Associates, 12 Daleside, Gerrards Cross, Bucks SL9 7JF, United Kingdom.

Its contact is indicated in the Complaint as Mr. Tony Walker, with the same

address. (Mr. Walker´s functions in relation to Respondent are discussed

further below under Parties´ Contentions).

2. Domain Name

and Registrar

The domain name at

issue is <i-online.com>. The Registrar is Network Solutions, Inc.,

Herndon, Virginia, United States.

3. Procedural History

The World Intellectual

Property Organization Arbitration and Mediation Center (the Center) received

a Complaint from Complainant by e-mail on March 24, 2001, and in hard-copy

form on March 29, 2001. The Center acknowledged receipt of the Complaint

on March 27, 2001.

Having verified that

the Complaint complied with the formal requirements, the Center issued,

on April 2, 2001, a Notification of Complaint and Commencement of Administrative

Proceeding, which was notified to Respondent and to Complainant as well

as to the Registrar and to ICANN.

Having issued a request

for Registrar Verification, the Center received a Verification Response

on March 30, 2001. According to that Response:

- Network

Solutions is in receipt of the Complaint sent to it by Complainant.

- Network

Solutions is the Registrar of the domain name at issue.

- The Registrant

is, according to Registrar´s WHOIS database, Magnolia Associates,

12 Daleside, Gerrards Cross, Bucks SL9 7JF, United Kingdom.

- Administrative

Contact, Technical Contact is: NETCOM Internet Ltd., Hostmaster, St

James´ House, Oldbury, Bracknell, Berkshire RG12 8TH, United Kingdom.

- Billing

Contact is: NETCOM Internet Ltd., InterNIC Billing, with the same

address as indicated above.

- The Network

Solutions Service Agreement Version 5.0 is in effect, and

- The domain

name registration is in active status.

On April 3, 2001, the

Center received a communication in e-mail form from Respondent (Mr. Walker;

see below), of which the Center acknowledged receipt on May 1, 2001. No

further communications were received from any of the Parties from the date

of the e-mail until the appointment of the Panel.

The Center invited,

on May 17, 2001, Mr. Henry Olsson to serve as Sole Panelist and received,

on May 18, 2001, Mr. Olsson´s Statement of Acceptance and Declaration of

Impartiality. The same day the Center appointed Mr. Olsson as Sole Panelist

and issued a Notification of Appointment of Administrative Panel and Projected

Decision Date, which was duly communicated to the Parties. The Projected

Decision Date was June 1, 2001.

The Sole Panelist considers

that the Administrative Panel was properly constituted and appointed in

accordance with the Rules and the WIPO Supplemental Rules.

4. Factual Background

Complainant is a public

limited company under the laws of Austria, registered in the Commercial

Registry of Vienna under number FN 125044p. Complainant has submitted a

copy of an extract from "Firmenbuchdatenbank" showing data about

this registration.

Respondent´s activities

are dealt with below under Response.

In accordance with

Paragraph 3(b)(xiii) of the Rules, Complainant agrees to submit, only with

respect to any challenge that may be made by Respondent to a decision by

the Administrative Panel to transfer or cancel the domain name that is the

subject of the Complaint, to the jurisdiction of the courts of the location

of the principal office of the concerned Registrar.

5. Parties´ Contentions

A. Complainant

First, Complainant

states that the registration agreement pursuant to which the domain name

at issue is registered incorporates the Policy and that Respondent is, in

accordance with Paragraph 4(a) of the Policy, required to submit to a mandatory

administrative proceeding because:

- the domain name

is identical or confusingly similar to a trademark or service mark in

which Complainant has rights,

- Respondent has

no rights or legitimate interests in respect of the domain name, and

- The domain name

was registered and is being in bad faith.

In support of its contentions,

Complainant has submitted, first, inter alia, that the Complaint is based

on the Austrian trademark registration No AT 188 782, for the mark "I-ONLINE"

and also on Complainant´s company name. The trademark registration applies,

according to the documentation submitted by Complainant, to classes "09,

35, 38, 41 and 42" which includes classes 09 for hardware and software,

38 for Internet and Internet application services, and 42 for maintenance of

computer software. The application for registration was, according to the documentation

submitted, filed on February 22, 2000, and registration effected May 25, 2000.

The trademark is, according to Complainant, also used in those classes.

Complainant contends

that the domain name <i-online.com> is identical to Complainant’s

registered trademark. According to Complainant, furthermore, Respondent

has no rights or legitimate interests in this domain name because it has

no trademark registration and it does not use this domain name at the moment

and has not used it within the last couple of years. <i-online.com>

has been registered in bad faith because there is no indication that the

owner will use it. If <i-online.com> is called, the text: "Host

name lookup for ‘www.i-online.com’failed" appears on the screen. Complainant

has submitted a copy of that text. Complainant states that it has monitored

the website for a couple of months and there is no indication that Respondent

intends to engage in a bona fide use offering of goods or services.

Complainant furthermore

contends that the domain name could only have been registered primarily

for the purpose of disrupting the business of a competitor, because combinations

of a single letter together with "online," like "i-online,"

are very common and are heavily used by Internet service providers or software

companies. It seems, according to Complainant, that Respondent is related

to an Internet service provider and software company which recently changed

its name from "Magnolia IT Services Ltd" to "1st-interactive

design Ltd".

For the reasons now

described, Complainant requests that, in accordance with Paragraph 4(b)(i)

of the Policy, the Administrative Panel issue a decision that the contested

domain name be transferred to Complainant.

B. Respondent

As mentioned above,

the Center received, on April 3, 2001, a communication in e-mail form from

Mr. Tony Walker commenting on the contentions of Complainant. No Response

in hard-copy form was submitted.

The e-mail states that

"Magnolia Associates" is a consultancy firm that has been working

with another company for the last two years developing a range of on-line

e-commerce packages. The name was changed to "Magnolia IT Services

Ltd," but this name was in turn changed to "1st Interactive"

and Magnolia IT Services was returned to Magnolia Services. As part of the

agreement concluded in that context, Mr. Walker left "www.magnolia.co.uk"

with a re-direct to "1st Interactive" as the registration with

search engines has value to "1st Interactive."

As part of his new

activities, Mr. Walker set up a company in May 1998, which specialised in

providing on-line services to small and medium-sized enterprises (SMEs).

At the beginning, such services were offered directly by his company to

such enterprises, but it was realised that a better way would be to offer

such services via third parties, in particular through Internet Service

Providers (ISPs). This was the reason why the domain name <i-online.com>

was not used. In May 1999, as part of a further agreement, the rights in

that domain name were assigned to a third party along with the company "i-Online

Services Ltd" which is properly registered at Companies House in the

United Kingdom.

Mr. Walker furthermore

states that his company is not an ISP, but an application service developer:

his ISP, Nildram, charges him for holding domain names. In 1999, Nildram

was instructed to transfer the domain name to the new owner. According to

Mr. Walker, a simple check showed that this had been done and he thought

no more about the matter.

Mr. Walker states that

domain names in the .com, .net and .org domains can be registered with many

competing Registrars. Thus, according to the e-mail, the domain name <i-online.com>

is registered with Network Solutions and the holder of that domain name

is, according to the Whois listing, NETCOM, a large ISP in the United Kingdom.

Mr. Walker´s own domain name <magnolia.co.uk> is registered for Magnolia

Associates by NILDRAM, which is also the ISP used.

The Magnolia web re-direct

has not been removed as Mr. Walker´s company now uses a web address which

is more suited to its own on-line business. The <magnolia.co.uk> is,

however, still used as the e-mail address for any residual work related

to Magnolia Associates and for the holiday letting business of Mr. Walker´s

wife.

Mr. Walker does not

know why the name of his previous company was not changed at the same time

as the domain name at issue was reassigned, but, as his company was not

being charged for it and no response had been received from the new company,

he thought that everything was satisfactory and had no reason to inquire

further.

Mr. Walker is concerned

that the notification concerning the Complaint in this case had not been

served on the rightful party due to an error by another party; he is not

sure of the company´s address and, because he will be out of the country

until April 18, he would request that Complainant takes reasonable step

to identify the owner of the domain name before the legal actions are completed.

In the e-mail, Mr.

Walker states that he never attempted to register a name "primarily

for disrupting the business of a competitor." The name was ideally

suited to his company´s plans at the time and he had most certainly never

heard of any Austrian Company called "i-online software ag" in

May 1998.

Mr. Walker furthermore

states that, in his opinion, the argument that a business has no rights

to a domain name because there is no trademark registration is "facile."

He knows "that the owner of <i-online.com> has shared rights

to the UK trade mark ‘i’ written in the form of the @ sign with the ‘a’

replaced by an ‘i’. This may be the intended trade mark." Furthermore,

in his e-mail, Mr. Walker points out that monitoring a web address is hardly

sufficient. He uses <magnolia.co.uk> for e-mail but not for a website

address. In his opinion using a domain name for e-mail only is an entirely

legal use of the domain name.

Finally, Mr. Walker

states that his statements are intended to help resolve a situation that

has probably not been brought about by the current owner and who may feel

aggrieved should it result in loss of rights to a properly constituted company

registered at Companies House. Mr. Walker stresses that his statements are,

however, not intended to be interpreted as a correct defence on the other

company´s behalf as he has no knowledge of what happened since May l999.

Finally, in Mr. Walker´s

opinion, he has no interest in the matter (other than to help in its resolution)

and he formally states that his e-mail is submitted "without prejudice."

As mentioned, this

e-mail was received on April 3, 2001. From that date until the appointment

of the Panel no further communications relating to this case were received

neither from Mr.Walker, nor from anyone else.

6. Discussions

and Findings

Rule 15 of the Rules

prescribes that the Panel shall decide a Complaint on the basis of the statements

made and documents submitted and in accordance with the Policy, these Rules

and any rules and principles of law that it deems applicable.

The Service Agreement

relating to the domain name registration at issue incorporates the Policy

which is consequently applicable to this case.

Paragraph 4(a) of the

Policy directs that Complainant must prove each of the following

- that the

domain name registered by Respondent is identical or confusingly similar

to a trademark or a service mark in which Complainant has rights;

- that Respondent

has no rights or legitimate interests in the domain name; and

- that the

domain name has been registered and is being used in bad faith.

In the following parts

of this decision, the Panel discusses each of those elements and also the

question of who is the right Respondent in this case.

The Identity of Respondent

Before going into the

substance of the case, the Panel has to examine the statements made by Mr.

Walker in his e-mail to the effect that the domain name at issue should

in fact have been transferred to another company some time in 1999 because

instructions had been given to that effect and circumstances led Mr. Walker

to believe that this had also been done. The Panel has thus to consider

whether Magnolia Associates is in fact the right Respondent. The Panel notes

in this respect that, as regards this particular domain name registration

effected by Network Solutions, the Verification Response clearly and unequivocally

indicates that Magnolia Associates is the Registrant. From a formal point

of view any Complaint has to be directed against the Registrant appearing

in the Registrar´s records at the time of the filing of the Complaint. The

Panel, therefore, must find that Magnolia Associates is the correct Registrant

and thus also the correct Respondent to which the Complaint has been communicated

(by courier, fax and e-mail) and against which the legal effects of this

Decision are to be directed.

Identity or Confusing

Similarity

In this respect Complainant

has, according to Paragraph 4(a)(i) of the Policy, to prove that the domain

name at issue is identical or confusingly similar to a trademark or a service

mark in which Complainant has rights.

The domain name at

issue is <i-online.com>.

Complainant has submitted

registration information showing that it is the owner of a trademark registration

of the mark "I-ONLINE" in Austria. The domain name at issue and

the trademark differ only in that the gTLD ".com" forms part of

the domain name but not of the trademark. The trademark is registered for

various kinds of computer and on-line services. In the view of the Panel,

there exists a clearly confusing similarity between the trademark and the

domain name at issue.

Rights or Legitimate

Interests

In this respect, Complainant

has, according to Paragraph 4(a)(ii) of the Policy, to prove that Respondent

has no rights or legitimate interests in the domain name.

Complainant has contended

that Respondent has no such rights or legitimate interests because he has

no trademark registration and he does not use, and has not for the last

couple of years, used the domain name. In his e-mail Mr. Walker has responded,

among other things, that monitoring a web address is hardly sufficient to

prove absence of rights or interests, as a domain name can be used only

as an e-mail address and not necessarily be connected to a website.

The Panel is aware

that it is often difficult for a Complainant to prove that a Respondent

has no rights or legitimate interests in a domain name. The circumstances

invoked by Complainant in this case certainly point in the direction that

Respondent would in fact have no rights or legitimate interests in the domain

name at issue. In view of what has been indicated in the e-mail in question

about the history of the domain name and the use made of it, the Panel can,

however, not find that the circumstances present in this case are sufficient

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

domain name.

Registration and

Use in Bad Faith

In this respect, Respondent

has, according to Paragraph 4(a)(iii) of the Policy, to prove that the domain

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

Complainant contends

that the domain name at issue has been registered and is being used in bad

faith because there is no indication that the owner will use it and also

there is no indication that this will be changed to a bona fide offering

of goods or services. According to Complainant, the domain name could only

have been registered primarily for the purpose of disrupting the business

of a competitor because combinations of single letters together with "online"

(like "i-online") are very common and heavily used by Internet

service providers or software companies.

In the e-mail from

Mr. Walker it is indicated, among other matters, that he never attempted

to register a name primarily for the purpose of disrupting the business

of a competitor; according to him the name was ideally suited to his company´s

plans at the time and he had most certainly not heard of any Austrian company

called "i-online ag" in May 1998.

First the Panel notes

that the indication "i-online" as part of a company name and as

a trademark is, as far as has been established in this case, used only in

Austria. It has not been suggested that that indication has been used in

a domain name. It is, in fact, not very likely that a United Kingdom national

and his company would have had knowledge about the Austrian trademark and

company name at the time of the registration of the domain name; furthermore,

the trademark registration seems to have occurred only in May 2000. The

registration of the domain name at issue could well have occurred without

any knowledge about such other rights, the more so as Complainant itself

indicates that combinations of a letter with the word "online"

are very common and heavily used in the activities in which both Respondent

and Complainant are involved.

In view of what has

now been said, the Panel can not find that the circumstances invoked by

Complainant are sufficient to prove registration and use in bad faith.

Conclusions

On the basis of the

foregoing, the Panel concludes that Respondent´s domain name is confusingly

similar to Complainant´s trademark, that it has not been established that

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

that it has not been established that the domain name at issue has been

registered and is being used in bad faith.

Accordingly, Complainant´s

request for a transfer of the domain name at issue to Complainant shall

be denied.

7. Decision

The Administrative

Panel denies Complainant´s request for a transfer of the domain name <i-online.com>

to Complainant.

Henry Olsson

Sole Panelist

Dated: May

22, 2001