Weissenberger AG v. Imagelinc

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Weissenberger AG v. Imagelinc

Case No. D2003-0025

1. The Parties

The Complainant is Weissenberger AG, Staatsstrasse 119-121, CH-9445, Switzerland.

The Respondent is Imagelinc, 1218 Third Avenue, Suite 700, Seattle, WA 98101, United United States of America.

2. The Domain Name and Registrar

The disputed domain name with which this dispute is concerned is <gunnar.com>.

The Registrar with which the domain name is currently registered is Network Network Solutions, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the

the "Center") on January 14, 2003. On January 15, 2003,

the Center transmitted by email to Network Solutions, Inc. Registrar a request

for registrar verification in connection with the domain name at issue. On February 26,

2003, Network Solutions, Inc. transmitted by email to the Center its verification

response confirming that the Respondent is listed as the registrant and providing

the contact details for the administrative, billing, and technical contact.

The Center verified that the Complaint together with the amendment to the Complaint

satisfied 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 the "Supplemental Rules").

In accordance with the Rules, Paragraphs 2(a) and 4(a), the Center formally

notified the Respondent of the Complaint, and the proceedings commenced on February 27, 2003.

In accordance with the Rules, Paragraph 5(a), the due date for Response was

March 19, 2003. The Center received a Response on March 19, 2003,

by e-mail and on March 27, 2003, by hardcopy. The Response named Andrew

Andrew Gunnar Gunnar Nelson as the Respondent.

The Center appointed Torsten Bettinger as the Sole Panelist in this matter

on April 2, 2003. The Panel finds that it was properly constituted.

The Panel has submitted the Statement of Acceptance and Declaration of Impartiality

and Independence, as required by the Center to ensure compliance with the Rules,

Paragraph 7.

4. Factual Background

The Complainant is a Swiss company which produces and sells mat cutting machines.

The Complainant is the owner

- trademark registration No. 397053 "GUNNAR" registered with the

Swiss Patent Office on October 10, 1992, for machines and machine tools

for the cutting and forming of material" and

- international trademark registration No. 762565 "GUNNAR" for Germany,

France, Italy, Austria and Spain registered on November 15, 2002, for machines

and machine tools for the cutting and forming of material.

and has also applied for a trademark registration for the term "GUNNAR"

in the United United States of America and Canada on November 15, 2002.

The Complainant has used the trademark "GUNNAR" since 1981 in Europe

and delivers its products to Canada, USA, Japan and Mexico and various other

countries since 1993.

The Complainant is also the owner of the domain name <gunnar-europe.com>,

which is used by its Canadian sales agent Gunnar International Inc.

The Respondent is an Internet consulting and service provider firm which was

founded in 1994 by Andrew Gunnar Nelson. The Respondent registered the domain

name <gunnar.com> in 1996. Mr. Nelson is registered as the Administrative

Contact of the domain name <gunnar.com>.

Before filing the Complaint the Complainant contacted Andrew Gunnar Nelson

and expressed its interest to buy the domain name. Mr. Nelson replied as follows:

"Hi, I know who you guys are, I have worked with folks in the past that

used Gunnar mat cutters and claimed they were the best. The domain actually

is in use as a mail server, I get inquires all the time from folks who do not

see a web server and think the name is available.

I can understand your interest in the name, however <gunnar.com> is not

for sale. I have sold several names in the past and regret it. Of course everything

has a price, mine very high."

Andrew Gunnar Nelson"

When the Complainant asked the Mr. Nelson to name his price he replied as follows:

"First let me set some context for my price. Several years ago I secured

FRAM.COM in honor of the famous Norwegian ship that Roland Amundsen sailed to

Antarctica. My intent was to offer the domain to the Museum in Oslo where the

FRAM is today. Instead Allied Signal came calling and I sold it for 10k US,

I have regretted that decision and price ever since.

I would be willing to sell <gunnar.com> for 50k US with not such regret.

Andrew"

The website that is currently available at "gunnar.com" shows a photograph

of "Gunnar Gunnar Nelson" and various information on Gunnar Nelson’s

private and professional activities.

5. Parties’ Contentions

A. Complainant

Complainant’s contentions may be summarized as follows:

(1) The Complainant has intensively used the trademark "GUNNAR" and

has acquired a common law trademark for GUNNAR in the U.S.

(2) There is no evidence of the Respondent’s use of the domain name <gunnar.com>

or a name corresponding to this domain name in connection with a bona fide

offering of goods or services and that there were no demonstrable preparations

by the Respondent to use the disputed domain name in connection with a bona

fide offering of goods or services.

(3) The Respondent has not been commonly known by the domain name and there

is no similarity of the Respondent’s name "Imagelinc" to the domain

name. Mr. Andrew Gunnar Nelson, who appears as Administrative Contact of the

domain name is not commonly known by his middle name "Gunnar."

(4) There is also no evidence that the Respondent is making a legitimate noncommercial

or fair use of the domain name, without intent for commercial gain to misleadingly

divert consumers or to tarnish the trademark or service mark.

(5) The Respondent has never used the domain name as a mail server and even

if the Complainant had used the domain name for e-mail services this should

not be regarded as a legitimate non commercial use in the sense of Para. 4(c)(iii)

of the Policy.

(6) The Respondent admitted in his e-mail that he knew the Complainants products

sold under the name "GUNNAR" and he therefore could well have known

that the domain name corresponded to the Respondent’s trademark.

(7) The Respondent’s correspondence with the Complainant clearly shows that

the Respondent registers domain names primarily for the purpose of selling them

at very high prices.

The Complainant requests that the Administrative Panel issue a decision that

the domain name <gunnar.com> be transferred to the Complainant.

B. Respondent

Respondent’s contentions may be summarized as follows:

(1) Complainant has established its presence on the Internet under the domain

names <gunnar-europe.com> and <gunnar-international.com>. Complainant

has not established that its inability to use <gunnar.com> harms its business.

(2) The domain <gunnar.com> name has been in continuous use as an Internet

email server and the system has always been configured to send and receive email

for a small group of friends and family that have user@gunnar.com email accounts.

The domain name <gunnar.com> has been used to facilitate virtual webs

site hosting for a number of domains for friends and family that wanted space

on an Internet connected web server.

(3) Respondent learned of the Gunnar mat cutters in 2000 while working for

a company involved in photography and photographic products and had not heard

of the Complainant at the time he registered the domain name <gunnar.com>.

6. Discussion and Findings

A. Procedural Matters

The Panel notes that the Registrant owner of the domain name at issue is Imagelinc

and that the Complaint names Imagelinc as the Respondent in this administrative

proceeding. The Panel further notes that the Response that has been filed to

this Complaint names Andrew Gunnar Nelson as the Respondent.

It is clear from the facts provided in the Response that Imagelinc is an Internet

consulting and service provider that has been founded by Andrew Gunnar Nelson

and that the owner or the licensee of the domain name is Andrew Gunnar Nelson.

The Panel therefore has decided to accept the Response and to consider the

facts and contentions provided in the Response as if provided by the Respondent.

B. Substantive Law Issues

Pursuant to Paragraph 4(a), the Complainant must prove that each of the following

three elements are present if it is to prevail:

(i) The Respondent’s "domain name is identical or confusingly similar

to a trademark or service mark in which the complainant has rights"; and

(ii) The Respondent has "no rights or legitimate interests with respect

to the domain name"; and

(iii) The "domain name has been registered and is being used in bad faith."

I. Identical or Confusingly Similar

The Respondent has registered the domain name <gunnar.com>. The relevant

part of this domain name "Gunnar" is identical with the trade- and

service mark registration of the word "Gunnar" in Switzerland held

by the Complainant. Whether the Complainant has also a common law trademark

in the United States is of no relevance. Paragraph 4(a)(i) merely requires

the registration of a trademark in one jurisdiction.

It is also irrelevant whether the Respondent has used or has any intention

to use the domain name in connection with goods for which Complainant has registered

the trademark. The question to be answered by the Panel is not whether the domain

name causes confusion as to source but instead whether the mark and domain name,

when directly compared, are identical or have confusing similarity [See Wal-mart

Stores, Inc.v. Richard MacLeod d/b/a For Sale, WIPO

Case No. D2000-0662 at p.4 (September 19, 2002)].

The Panel therefore concludes that the requirement of Paragraph 4(a)(i) of

the Policy is satisfied.

II. Rights or Legitimate Interests

The Policy outlines (Paragraph 4(c)) circumstances which, if found by the Panel

to be proved, shall demonstrate the Respondents’ rights or legitimate interest

in the domain names. These circumstances are:

(i) before any notice to the Respondent of the dispute, the Respondent’s use

of, or demonstrable preparations to use, the domain name or a name corresponding

to the domain name in connection with the bona fide offering of goods

or services; or

(ii) the Respondent (as an individual, business or other organization) has

been commonly known by the domain name, even if the Respondent has acquired

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.

Although Paragraph 4(a) of the Policy requires the Complainant to prove the

presence of this element, WIPO and the other approved Dispute-Resolution Service

Providers found in a number of cases that once a Complainant makes out a prima

facie showing , the burden of production on this factor shifts to the Respondent

to rebut the showing by providing concrete evidence that it has rights to, or

legitimate interests in the domain name. This "burden shifting" is

appropriate given that Paragraph 4(c) of the Policy, which is entitled "How

to Demonstrate Your Rights to and Legitimate Interests in the domain name in

Responding to a Complaint," and discusses the kind of evidence a Respondent

should provide to show that is has rights to or legitimate interests in the

domain name (see Inter-Continental Hotels Corporation v. Khaled Ali Soucci,

WIPO Case No. D2000-0252).

The Panel has doubts as to whether Complainant has established a prima facie

case of Respondent’s lack of legitimate right or interest.

The Panel agrees with the Complainant that there remain doubts whether the

Andrew Gunnar Nelson in fact does use his middle name "Gunnar."

The website at <gunnar.com> has been established after the Respondent

has been notified of this Complaint and the Panel has therefore chosen to disregard

it. The fact that Andrew Gunnar Nelson e-mail correspondence with the Complainant

was signed "Andrew," that the Respondent appears without a middle

name in Internet Search engines and mailing lists and that the Respondent has

not used his middle for the registration of the disputed domain name <gunnar.com>

makes it questionable in the Panel’s view that the Respondent has ever used

his middle name.

However these doubts as to the Andrew Gunnar Nelson use of his middle name

"Gunnar" are not sufficient to establish a prima facie case

of Respondent’s lack of legitimate right or interest in the domain name.

The Respondent has claimed that the domain <gunnar.com> name has been

in continuous use as an Internet email server to receive email for a small group

of friends and family that have use@gunnar.com e-mail accounts and has been

used to facilitate virtual webs site hosting for a number of domains for friends

and family that wanted space on an Internet connected web server.

The Respondent has provided e series of email headers dating back to 1999,

showing the use of <gunnar.com> as an e-mail server address and a signed

declaration to support his contentions.

Although the Panel has doubts as to the probative value of these documents

in relation to the contentions of the Complainant and would have expected the

Respondent’s declaration in the form of an affidavit, the Respondent’s explanations

do not stretch credulity and without contrary evidence it is impossible to infer

that the Respondent has not used the domain name for the declared purposes.

However, the Panel finds it unnecessary to decide this question having regard

to the conclusions it has reached as to whether the domain name was registered,

and is being used in bad faith.

III. Registered and Used in Bad Faith

As clearly set out paragraph 4(a) of the Policy, the onus is on the Complainant

to show registration and use in bad faith. It is the Panel’s view that the Complainant

has failed to do so.

The Panel has accepted that the Complainant has used the trademark "GUNNAR"

since 1981 in Europe, and delivers its products to the U.S. market where

the Respondent resides. However, regardless the fact whether the Respondent

has acquired a common law trademark for the term "Gunnar" under U.S.

law, it is the opinion of the Panel that the Complainant has not demonstrated

that the Complainant’s mark would be so well known in the U.S. that it would

be likely that Respondent when registering the domain name in 1996, would be

so familiar with the Complainant’s mark, as to render its adoption of the domain

name improper.

The Complainant’s sole evidence to support his claim that the Respondent heard

of the Complainant’s product consists of two statements in an email message

dated September 27, 2002, in which the Respondent states the he learned

of Complainant’s products in the past in connection with work he was doing at

that time in a related industry.

This statement is not evidence that Respondent had heard of the Respondent’s

products in 1996 when he registered the domain name. The fact that the Complainant,

a Swiss company with - as the Complainant stated – "8 employees manufacturing

machines for a very narrow industry" has sold its products on the U.S.

market is in the Panel’s view not sufficient to raise a presumption that, in

1996, Respondent would have known of Complainant’s mark. Respondent’s denial

of knowledge of the trademark must therefore be given due weight.

Furthermore, the Complainant is faced with the difficulty that in the Panel’s

view, Complainant has failed to show any evidence of use of the domain name

in bad faith. There is no evidence of Respondent’s use of the domain name to

attract users to its website for commercial gain by creating a likelihood of

confusion with the Complainant’s mark nor is there any evidence that he has

registered the domain name primarily for the purpose of disrupting the business

of a competitor.

The Respondent has not offered the domain name for sale to the Complainant

or any other person for six years. The fact alone that the Respondent - somehow

naive – stated in his correspondence with the Complainant that he had sold the

domain name <fram.com> to another company for price of US$10,000 and offered

the domain name to the Complainant for US$50,000 when the Complainant expressed

his interest to buy the domain name does not necessarily lead to the conclusion

that the Respondent has registered or acquired the domain name primarily for

the purpose of selling it to the Complainant.

The Panel therefore concludes that Complainant has failed to demonstrate any

of the circumstances set out in paragraph 4(b) of the Policy nor has it established

any other ground on which bad faith can be shown.

As regards the Respondent’s request for a statement of reverse hijacking the

Panel observes that Andrew Gunnar Nelson in his correspondence with the Complainant

has made some statements that could well have caused the impression that the

Respondent is a speculator in domain names and that Respondent’s motives for

registering the domain name were not revealed until the Complainant received

the Response to its Complaint. The Panelist takes the view that, under these

circumstances, there is no reason to believe that the Complainant intentionally

abused this administrative proceeding and to characterize the Complaint as reverse

domain name hijacking.

7. Decision

In light of the findings set out above, namely that, notwithstanding that the

domain name is identical to a trademark in which the Complainant has rights,

the Complainant has failed to prove that the domain name was registered and

is being used in bad faith, the Complaint fails and is dismissed.

Torsten Bettinger

Sole Panelist

Dated: April 22, 2003