Ash Temple Limited v. Media France & Web Design

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ash Temple Limited v. Media France & Web Design

Case No. D2003-0568

1. The Parties

The Complainant is Ash Temple Limited, Concord, Ontario, Canada ("the Complainant"), represented by Ash Baker, Canada.

The Respondent is Media France & Web Design, Portland, Oregon, United States of America ("the Respondent").

2. The Domain Names and Registrar

The disputed domain names <microbex.com> and <microbex.net> ("the domain names") are registered with eNom, Inc. ("the Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 19, 2003. On July 21, 2003, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain names. Inexplicably the Registrar failed to respond both to that email and to a subsequent chaser. In consequence, the Center and the Panel have had to rely upon a Whois Search of the Registrar’s database for confirmation that the Respondent is listed as the registrant and for the contact details for the administrative, billing, and technical contact.

The Center verified that 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 "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 July 30, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was August 19, 2003. The Response was filed with the Center on August 12, 2003.

The Center appointed Tony Willoughby as the Sole Panelist in this matter on August 25, 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 Canadian company engaged in the manufacture and supply in Canada of dental sundries, equipment and services.

It is an amalgamation of three companies, one of which was Microbex Aseptics Limited, a company incorporated in Canada in February 1987.

Since 1987, Microbex Aseptics Limited and latterly, since January 1, 2000, the Microbex Division of the Complainant have used the name Microbex as a business name and as a trademark.

The Complainant has no trademark registration of MICROBEX, but enough uncontested evidence has been put before the Panel to demonstrate that the Complainant has unregistered rights in Canada in the trademark MICROBEX.

The Respondent is a business based in the United States of America and is engaged in the field of inter alia domain name registration and web design.

The Respondent registered the domain names on July 5, 2003. On the following day, a Sunday, the Respondent sent to the Complainant an email reading:

"Hello, we own many dot Com domain names, including "www.MicroBex.Com" which we are selling for a very reasonable price. With this dot Com, you give your business more exposure, more visibility, marketing, more traffic to your website and more business opportunities worldwide. Please be advised that we are contacting other business owner who might be interested as well. There are no transfer fees and the transfer of this domain name to the new owner takes less than 15 minutes. Please let us know if you have any questions! And don’t let this excellent long term business opportunity slip away!"

Over the ensuing eleven days the parties entered into an extensive exchange of emails with the Respondent seeking a high price (US$45,000 for one of the domain names, <microbex.com>, reducing to US$1,200 for that domain name) and the Complainant seeking a lower price (offering US$500 for <microbex.com>, rising eventually to US$1,200 for that domain name).

While both parties arrived at the same price for <microbex.com> of US$1,200, the deal was not concluded. On July 17, 2003, the Respondent emailed the Complainant claiming to have received a higher offer from another entity and indicating that it would be putting the domain name up for auction on the eBay website. However, the email stated that if the Complainant could demonstrate that it had registered trademark rights in MICROBEX, it "may decide not to list [microbex.com] on eBay …"

That email provoked a further exchange of emails on July 17, 2003, in which the Complainant explained that its rights in the name MICROBEX were unregistered rights and the Respondent appeared to deny that unregistered rights were a possibility or at any rate of any relevance.

On July 17, 2003, the Complainant visited the eBay website and discovered the existence of <microbex.net>. It found that both domain names were on offer at a starting price of US$1350 for each domain name. In each case, the "Buy It Now" price was US$10,000.

That same day the Complainant lodged a complaint with eBay notifying eBay that the domain names "infringed the Complainant’s intellectual property."

On July 18, 2003, the Respondent offered to sell the domain names for a combined price of US$2,000 and later the same day the Respondent sent a follow up email indicating that in anticipation of a satisfactory response to the offer, it had already put the domain names into the name of the Complainant.

On the same day, following receipt of the email version of the WIPO Complaint, the Respondent offered the domain names to the Complainant for a combined price of US$1,300. The next day it offered them free provided that the Complainant could demonstrate registered rights in MICROBEX.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the domain names, absent the generic domain suffixes, are identical to the Complainant’s unregistered trademark MICROBEX.

The Complainant further contends that the factual background as set out above demonstrates that the Respondent has no rights or legitimate interest in respect of either of the domain names.

The Complainant contends that the Respondent registered the domain names in bad faith and has been using them in bad faith, the Respondent’s intention all along being to sell the domain names to the Complainant for a price well in excess of the Respondent’s out of pocket expenses in relation to the domain names.

The Complainant seeks transfer of the domain names.

B. Respondent

The Respondent denies that the Complainant has relevant trademark rights in MICROBEX on the basis that the Complainant has no trademark registrations covering the name.

The Respondent explains why it registered the domain names in the following terms:

"We registered and secured microbex with good faith for one of our clients, who will testify in court in front of a judge and under oath, in the district court of Multnomah County, State of Oregon, about the good intention and good faith of the registration of the domain name microbex.

After we secured microbex, our client decided not to use it because the domain name was not descriptive enough. So, we decided to do something with microbex instead of keeping it, and consequently decided to sell it to whoever is interested, which is not uncommon if we end up with domain names we had secured for our clients but not chosen for the project(s)."

The Response concludes as follows:

"Dear WIPO, we had no knowledge whatsoever, when registering microbex.com, that someone, somewhere in Canada, China, Japan, Mexico….or any other country in the world had or has a business name called "microbex!" The only way was for us to contact Ash Temple is that after we ended up with a domain name that the client didn’t want to use is looking it up in the search engine google.com and yahoo.com to see if anyone would be interested.

"This is the truth! No bad faith was involved in registering this domain name, nor we had intentions in violating anyone’s trademark rights nor we have intentions in violating anyone’s rights in the future and we have no pattern in engaging in such behavior.

"Please let us know if you need any additional information or ask us any questions you may have to prove our case! We honestly want to cooperate with you in any way you want us to! Just let us know!

"All we want is to prove that bad faith was NOT the motive of registering the domain name microbex. We understand that Ash Temple is only trying to protect their rights but not on the price of taking away a domain name that we legitimately and in a 100% good fait registered."

The Respondent contends that the Complaint should be dismissed.

6. Discussion and Findings

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

(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(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.

A. Identical or Confusingly Similar

The domain names are identical to the Complainant’s trademark MICROBEX. It

is not a registered trademark, but the Policy does not call for registered rights.

Unregistered rights will suffice.

Ordinarily, when asserting unregistered rights, a complainant will produce

sales figures, advertising expenditure etc., to demonstrate the underlying goodwill

upon which the unregistered rights depend.

Here, the Complainant has produced no figures at all. It has, however, produced

promotional literature demonstrating use of the mark over the last 15 years

and the Panel is satisfied on the balance of probabilities that MICROBEX is

a trademark in which the Complainant has unregistered rights in Canada.

The Panel finds that the domain names are identical to a trademark in which

the Complainant has rights.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires a complainant to prove that

the respondent has no rights or legitimate interests in respect of the domain

name in issue.

Proving that a respondent has no rights or legitimate interests in respect

of a domain name involves proving matters peculiarly within the knowledge of

the respondent and also involves proving a negative. This is not an easy thing

to do in the best of circumstances and is well nigh impossible where, as is

often the case in these disputes, the complainant has no knowledge of the respondent

who may well be situated on the other side of the globe.

Paragraph 4(c) of the Policy appears on its face to shift the burden of

proof from the complainant to the respondent. It is addressed to respondents

and commences "How to demonstrate your rights to and legitimate interests

in the domain name in responding to a complaint." Further on, it is stated

"any of the following circumstances, in particular, but without limitation,

if found by the Panel to be proved based on its evaluation of all evidence presented,

shall demonstrate your rights or legitimate interests to the domain name for

the purposes of paragraph 4(a)(ii)."

This apparent conflict between paragraph 4(a)(ii) of the Policy calling

for proof from the complainant and paragraph 4(c) of the Policy calling

for proof from the respondent is resolved as follows: the complainant has the

overall burden of proof. The complainant is required to make out a prima

facie case. If this is done, the respondent has a case to answer and if

he fails to answer it, the complaint under this sub-paragraph of the Policy

(paragraph 4(a)(ii)) succeeds.

Here the Complainant’s case is a very simple one. The Respondent who is not

named Microbex and who does not appear to have any connection with a business

called Microbex registered the domain names one Saturday and then on the following

day emailed the Complainant inviting offers for one of the domain names, but

not mentioning the other one. The opening price is very high (US$45,000) and

even at its reduced level of around US$1,000 it is still well in excess of the

Respondent’s out of pocket expenses. The Complainant asserts that these circumstances

illustrate that the Respondent registered the domain names for one reason only,

namely to sell them one by one at a profit to the Complainant.

The Panel accepts that the circumstances are, on their face, very suspicious

and that the Complainant has made out a prima facie case, leaving the

Respondent with a case to answer.

The Respondent’s answer is that it registered the domain names for a client,

an anonymous client, and that before doing so it checked the Trademarks Registry

for conflicting registrations. The Respondent claims that at the time it registered

the domain names it had never heard of the Complainant. The Respondent goes

on to say that it only contacted the Complainant because, on being told by its

client that the domain names were no longer needed, it conducted a web search

and the Complainant’s name came up as being someone interested in the name MICROBEX.

If that account is true, then plainly the registrations of the domain names

cannot have been made in bad faith and, whether or not the Respondent can be

said to have rights or legitimate interests in respect of the domain names,

the Complaint must fail. However, the Panel is not satisfied that the Respondent

has done enough to answer the Complainant’s prima facie case. The Panel’s

reasons are as follows:

1. The Respondent’s answer is uncorroborated. There is precious little detail

and no documentary or other support for the story. If the story were true, it

would have been so easy for the Respondent to have produced some documentary

instruction or statement from its anonymous client, but it failed to do so.

True, the Response states "Please let us know if you need any additional

information or ask us any questions you may have to prove our case! We honestly

want to cooperate with you in any way you want us to! Just let us know!",

but it is not for the Panel to examine/cross-examine the parties. The Procedure

calls for a Complaint and a Response. If the parties fail to avail themselves

of the opportunity provided by the Procedure, they do so at their peril. While

there is power for the Panel to seek further information from the parties, it

is a power to be used sparingly if the Procedure is to be kept within manageable

bounds.

In this particular case, the missing corroboration is fundamental to the Respondent’s

case and the Respondent is well aware of the fact. After all, the opening paragraph

of the Response reads "We registered and secured microbex with good faith

for one of our clients, who will testify in court in front of a judge and under

oath, in the district court of Multnomah County, State of Oregon, about the

good intention and good faith of the registration of the domain name microbex."

The Respondent was aware of the importance of that evidence and could and should

have put that evidence or the substance of it before the Panel. Why was it not

put before the Panel? The Panel is left to speculate. Does the evidence exist?

2. That a domain name was registered in good faith for a client one day and

then rejected by that client and offered for sale by way of an unsolicited approach

to a hitherto unknown third party the following day is an improbable story.

That it should have taken place over a weekend does not help its credibility.

3. Negotiating a price for one domain name and seeking to do a deal on that

domain name before disclosing to the purchaser the existence of the other substantially

identical domain name, is, to say the least, ‘tricky’ and not a practice calculated

to inspire confidence in the bona fides of the party concerned.

In the result, the Panel rejects the Respondent’s story and finds on the balance

of probabilities that the Respondent has no rights or legitimate interests in

respect of the domain names, or either of them.

C. Registered and Used in Bad Faith

For the same reasons, the Panel rejects the Respondent’s story and finds on

the balance of probabilities that the Respondent registered the domain names

and each of them in bad faith and is using them in bad faith within the meaning

of paragraphs 4(a)(iii) and 4(b)(iv) of the Policy.

7. Decision

In light of the foregoing findings namely that the domain names are confusingly

similar to a trademark in which the Complainant has unregistered rights and

that the Respondent has no rights or legitimate interests in respect of the

domain names and that the domain names were registered in bad faith and are

being used in bad faith, the Panel directs that the domain names, <microbex.com>

and <microbex.net>, be transferred to the Complainant.

Tony Willoughby

Sole Panelist

Dated: August 29, 2003