Puls Elektronische Stromversorgungen GmbH v. NetIdentity

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Puls Elektronische Stromversorgungen GmbH v. NetIdentity

Case No. D2002-0205

1. The Parties

The Complainant is Puls Elektronische Stromversorgungen GmbH, represented

by Jones, Day, Reavis & Pogue, Frankfurt am Main, Germany.

The Respondent is NetIdentity, Reno, United States of America.

2. The Domain Name and Registrar

The Domain Name is <puls.com>.

The Registrar is Melbourne IT Ltd, dba Internet Names Worldwide.

3. Procedural History

The Complaint was received by the WIPO Arbitration and Mediation Center

("the Center") by email on March 1, 2002, and in hardcopy

form on March 27, 2002. The Center has verified that the Complaint

satisfies the formal requirements of the Uniform Domain Name Dispute Resolution

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

Resolution Policy ("the Rules") and the WIPO Supplemental Rules

for Uniform Domain Name Dispute Resolution Policy ("the Supplemental

Rules") and that payment was properly made. The Administrative Panel

("the Panel") is satisfied that this is the case.

The Complaint was properly notified in accordance with the Rules, paragraph

2(a). Internet Names Worldwide ("the Registrar") has confirmed

that the Domain Name <puls.com> ("the Domain Name") was

registered through the Registrar and that NetIdentity ("the Respondent")

is the current registrant. The Registrar has further confirmed that the

Policy is applicable to the Domain Name.

On April 2, 2000, the Center notified the Respondent of the Complaint in

the usual manner and informed the Respondent inter alia that the last day

for sending its Response to the Complainant and to the Center was April 22, 2002.

The Response was received by the Center by email on April 23, 2002,

and in hard copy form on April 25, 2002.

On April 30, 2002, the Center received a Supplemental Filing from the Complainant.

On May 5, 2002, the Center received a Supplemental Filing from

the Respondent. In light of the allegation by the Respondent that the pursuit

of this administrative proceeding by the Complainant constitutes Reverse

Domain Name Hijacking, the Panel takes the view that the Complainant ought

to have an opportunity to respond to that allegation and has decided to

accept the Complainant’s Supplemental Filing insofar as it is relevant to

that issue.

The Panel read the Respondent’s Supplemental Filing, but it did not add

anything of significance to the Response.

The Panel was properly constituted. The undersigned Panelists submitted

Statements of Acceptance and Declarations of Impartiality and Independence.

No further submissions were received by the Center, as a consequence of

which the date scheduled for the issuance of the Panel’s Decision was May 30, 2002.

However, on May 22, 2002, the Complainant emailed the Center

as follows:

"I am contrary to the appointment of Tony Willoughby, Esq.,

as presiding panelist. He is biased because he was also panelist in the administrative

panel decision Emillio Pucci SRL v. Mailbank.com, Inc., Case

No. D2000-1786 (WIPO, March 19, 2001). In that decision it was

not in dispute that Mailbank.com registered the domain name knowing that this

domain name was identical to thousands of surnames, but the complainant can't

prove that Mailbank.com had in mind complainant's trademark. If in such a case

the panel didn't find bad faith of the respondent you can forget the UDRP-Rules

as a capable instrument to avoid cyber-squatting. On this account it should

be appoint to administrative panel a person who is not predefined by such an

administrative panel decision."

The basis of this objection appears to be that because the presiding panelist

has participated in a decision on similar facts to the facts in this case, he

should be precluded from participating in this case. The parties to Case

No. D2000-1786 are different to the parties to this case although it appears

from the evidence that the Respondent in this case is a successor in title to

the respondent in the earlier case. The presiding panelist does not regard this

allegation as an allegation of bias vis a vis a particular party, but simply

an allegation that if he is consistent with the line he took in the earlier

case, he is likely to decide against the Complainant. If this objection by the

Complainant were to be upheld, all parties to all disputes would have the opportunity

of objecting to the appointment of any panelist who has undertaken more than

one decision. The more experienced the panelist, the more vulnerable would he/she

be to attack. The presiding panelist stands by his declaration of impartiality

and independence and declines to disqualify himself. In any event, as it happens,

the Panel is unanimous as to the result.

4. Factual Background

From about 1980 the Complainant, a German-based manufacturer of power supply

units, started using the name PULS as a trade mark for its products. It

is a substantial producer of such units. (NB It should be noted that this

information was first put before the Panel in the Complainant’s Supplemental

Filing received by WIPO on April 30, 2002. Accordingly, the Respondent’s

complaint that the Complaint contains no details of the extent of the Complainant’s

use of its trade mark is a justified one.)

The Respondent commenced business in 1996, registering surnames as domain

names and offering use of those domain names for email addresses for persons

with an interest in those names. The Respondent charges rental fees for

usage of the domain names for that purpose.

In 1997 the Complainant registered the domain name <puls-power.com>.

In December 1998 the Complainant registered PULS as a trade mark with the

German Trade Mark Office.

On March 1, 2002, the Complainant launched this Complaint. On March 8, 2002,

the Respondent wrote to the Complainant. The letter referred to most of

the matters raised in the Response (see below), but failed to include the

Respondent’s denial that it was aware of the existence of the Complainant

and its trade mark prior to the launch of this administrative procedure.

The Complainant did not reply to that letter.

5. Parties’ Contentions

A. Complainant

The Complainant points to its trade mark registration and asserts that

the Domain Name and the trade mark are identical.

The Complainant asserts that the Respondent has no rights or legitimate

interests in respect of the Domain Name. It refers to the Respondent’s website

homepage where the Respondent claims to have registered thousands of domain

names. The Complainant observes that the Respondent has a business of registering

frequently used surnames (e.g. smith, hogan and puls) as domain names and

then charges people having those surnames a monthly rental to use the domain

names as email addresses (e.g. firstname@puls.com). The Complainant contends

that such a business cannot give the Respondent any legitimate interest

in respect of those domain names.

The Complainant goes on to assert that a business of this kind which involves

profiting out of other people’s names and effectively blocking those people

from registering their own names constitutes bad faith registration and

use of those domain names (including the Domain Name) within the meaning

of paragraphs 4(a)(iii), 4(b)(i) and 4(b)(ii) of the Policy. The Complainant

complains that the Respondent has no connection with the name PULS save

in its capacity as registrant of the Domain Name and its sole purpose is

to profit out of the name at the expense of those who do have rights or

legitimate interests in respect of the name.

B. Respondent

The Respondent states that it commenced business in 1996 and has been using

the Domain Name in its business since July 12, 1996.

The Respondent owns a large number of domain name registrations, the vast

bulk of them being names identified as being the most common surnames in

North America and selected from telephone directories and census data.

The Respondent denies that it is a cybersquatter. Far from excluding people

from using domain names featuring their surnames it enables people to share

usage of such domain names. It has over 100,000 customers, seven of which

with the surname PULS are currently using email addresses featuring the

Domain Name.

The Respondent points out that its use of the Domain Name predates the

Complainant’s trade mark registration by over 2 years. The Complaint provides

no evidence as to the Complainant’s use of its trade mark. The Respondent

states that prior to the launching of this administrative procedure the

Respondent did not know of the existence of the Complainant or its trade

mark.

The Respondent contends that the Complainant’s pursuit of this Complaint

constitutes Reverse Domain Name Hijacking. In support of this allegation

the Respondent states that on March 8, 2002, following receipt

of the Complaint, it wrote to the Complainant explaining the above, demonstrating

that the allegation of cybersquatting was misconceived and inviting the

Complainant to withdraw the Complaint. The Respondent received no reply

to that letter and the Complaint has been pursued.

The Respondent contends that the pursuit of a Complaint in the knowledge

that the allegations in the Complaint are misconceived must constitute Reverse

Domain Name Hijacking.

C. Complainant’s Response to Allegation of Reverse Domain Name Hijacking

The Complainant contends that it was justified in launching this administrative

procedure and denies that the Complaint is misconceived, still less a case

of Reverse Domain Name Hijacking. The Complainant repeats some of what is

said in the Complaint and stresses 3 points:

a) The Complainant’s trade mark rights pre-date the Respondent’s registration

of the Domain Name by many years.

b) The Complainant’s stated purpose of renting out the Domain Name

is caught by Paragraph 4(b)(i) of the Policy just as much as if the Domain

Name had been offered for sale:

"Pursuant to Paragraph 4(b) UDRP an abusive intention and use of

a domain name in bad faith is assumed if the domain name had been registered

primarily for the purpose of selling or leasing it. It is indisputable

that Respondent does not have any relation to "Puls" regarding the right

to use the name. Instead, Respondent's business purpose is to have as

many names as possible registered in order to technically block all other

holders of rights to these names. Respondent then uses this technical

blockade by providing a joint use of the domain name for high fees."

c) The Complainant’s right to the Domain Name is only displaced if

the Respondent is also entitled to the Domain Name and the Respondent

here has no such entitlement. This argument is encapsulated in the following

passage from the Supplemental Filing:

"Complainant is entitled to trademark rights to the name "Puls",

which also allows him to have this name registered as domain name. Complainant

only loses this right if another entitled third party had registered a

domain name of earlier priority. Respondent is not such a third party

as Respondent is not entitled to legitimate interests in the domain name

<puls.com> pursuant to UDRP."

The Complainant observes that German and Austrian courts have supported

this position:

"A German court decided, for example, that the reservation of a

domain name violates competition law and public policy if the domain holder

does not have a self-interest in the use but only intends to offer the

domain name to other third parties (decision of the Regional Court of

Duesseldorf dated July 6, 2001, -38 O 18/01-). The Austrian

Supreme Court took the same position. Pursuant to Austrian jurisdiction

a blocking intention violating competition law is assumed if the domain

holder does not have a comprehensible self-interest in the domain name

(decision of the Austrian Supreme Court dated June 12, 2001

-4 Ob 139/01x-)." (It is to be noted that the Panel was not supplied

by the Complainant with copies of these decisions.)

D. Respondent’s Supplemental Filing

The Respondent’s Supplemental filing mainly consists of further argument

and does not add significantly to the Response. Given the Panel’s decision,

there is no need to detail the contents of this document.

6. Discussion and Findings

General

According to paragraph 4(a) of the Policy, the Complainant must prove 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 respect

of the Domain Name; and

(iii) The Domain Name has been registered in bad faith and is being

used in bad faith.

If the Complaint fails, the Panel has to have regard to paragraph 15(e)

of the Rules and in particular the following sentence namely:

"If after considering the submissions the Panel finds that the Complaint

was brought in bad faith, for example in an attempt at reverse domain

name hijacking or was brought primarily to harass the domain name holder,

the Panel shall declare in its Decision that the Complaint was brought

in bad faith and constitutes and abuse of the Administrative Proceeding."

Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as

meaning "using the Policy in bad faith to attempt to deprive a registered

domain name holder of a domain name."

Identical or confusing similarity

It is not in dispute that the Domain Name (absent the <.com> suffix)

is identical to the Complainant’s trade mark PULS. Accordingly the Panel

finds that the Domain Name is identical to a trade mark in which the Complainant

has rights.

Rights or legitimate interest of the Respondent

It is also not in dispute that the Respondent registered the Domain Name

along with a large number of other domain names comprising surnames with

a view primarily to renting them out to members of the public for email

use. It is clear that at the time of registration the Respondent envisaged

that the likely users for each domain name would be people having the relevant

surname. The Respondent’s customers for the Domain Name are all persons

with PULS as their surname.

Certainly, the Respondent had no rights in respect of the Domain Name at

the time of registration of the Domain Name. The Respondent had no trade

mark rights (registered or unregistered), was not known by the name, conducted

no business under the name and had no licence to use the name.

Did the Respondent nonetheless have a "legitimate interest" in

respect of the Domain Name at that time? As a matter of language, arguably

it did. While it did not propose to conduct business under the name, it

expected to use the Domain Name to derive income from persons with the surname

PULS. Is that a legitimate purpose?

The Panel has been unable to agree on the approach to be taken on this

issue, but since the Panel is unanimous in finding an absence of bad faith,

the Panel does not see the need to resolve the point.

Bad Faith

A non-exhaustive list of what may constitute bad faith is set out in paragraph

4(b) of the Policy. All the examples given involve an intent by the Respondent

when registering the Domain Name to damage the Complainant or in some way

ride on the back of the goodwill of the Complainant.

While the list of examples of bad faith in paragraph 4(b) is expressed

to be non-exhaustive, the Panel regards it as crucial to the success of

a Complaint under the Policy that at the time of registration the Respondent

at the very least had the Complainant in mind.

Here there is no evidence that the Respondent had the Complainant in mind

when registering the Domain Name. The Complainant has produced no evidence

to show why the Respondent might have been expected to know of the Complainant

or its trade mark and the Respondent has expressly disclaimed any such knowledge.

"Puls" was just one of many thousands of surnames registered as

domain names by the Respondent. The Respondent’s purpose was simply to target

as customers people having the surname PULS.

The Panel rejects the argument of the Complainant to the effect that the

offer of the Domain Name for sale or rent to third parties is contrary to

paragraph 4(b)(i) of the Policy. In putting that argument forward, the Complainant

has ignored the words "to the Complainant or a competitor of the Complainant",

which appear in that paragraph. Were the Complainant’s argument to prevail,

domain name dealing would be contrary to the Policy whenever the name in

question is the subject of trade mark rights somewhere in the world. That

has never been the objective of the Policy. Still less is it what the Policy

says.

The Panel also rejects the Complainant’s argument that for the Complainant’s

prior ‘right’ to the Domain Name to be displaced, the Respondent has to

have an entitlement to the Domain Name. While the Panel accepts that the

Complainant has substantial trade mark rights to the name PULS and while

arguably the Respondent has no right or legitimate interest in respect of

the Domain Name, all three of the elements of paragraph 4(a) of the Policy

have to be proved. The argument of the Complainant seems to be to the effect

that proving the first two elements is sufficient. The fact (if it be the

fact) that as a matter of German and Austrian law what the Respondent is

doing is unlawful is of no consequence in this administrative procedure.

The Panel has to administer the Policy, not the law of any given state.

If the Complainant has a good cause of action under German and Austrian

law, the Complainant’s recourse is to the courts of those countries

The Panel finds that the Complainant has failed to prove that the Respondent

registered the Domain Name in bad faith and is using it in bad faith.

Reverse Domain Name Hijacking

The Panel has thought long and hard about this allegation. Certainly, the

Complaint was misconceived and certainly it is surprising that the Complainant

persisted with the Complaint after receipt of the detailed warning letter

from the Respondent. That it did so seems to have stemmed from a fundamental

misunderstanding on the part of the Complainant’s representative as to the

scope of the Policy rather than any deliberate abuse on the part of the

Complainant. At all events, the Panel is prepared to make that assumption

in the Complainant’s favour.

7. Decision

The Complaint is dismissed and the Panel makes no finding of Reverse Domain

Name Hijacking.

Tony Willoughby

Presiding Panelist

M. Scott Donahey, Esq.

Panelist

Dr Andrea Jaeger-Lenz

Panelist

Dated May 31, 2002