Pro Dive International Pty Ltd; Pro Dive Pty Ltd v. Tony Lennartsson

WIPO Arbitration and

Mediation Center

ADMINISTRATIVE PANEL

DECISION

Pro Dive Pty Ltd and Pro Dive International Pty Ltd v. Tony Lennartsson

Case No. D2004-0097

1. The Parties

The Complainants are Pro

Dive Pty Ltd (First Complainant) and Pro Dive International Pty Ltd (Second

Complainant), Ultimo, Australia, represented by Baker & McKenzie, Australia.

The Respondent is Tony

Lennartsson, Stockholm, Sweden, represented by ESQwire.com Law Firm, United States of America.

2. The Domain Name and

Registrar

The disputed domain name

<prodive.com> is registered with CSL Computer Service Langenbach GmbH

dba Joker.com.

3. Procedural History

The Complaint was filed

with the WIPO Arbitration and Mediation Center (the "Center")

on February 5, 2004, by email, hardcopy of which was received on February 9, 2004.

On that same date, the Center transmitted by email to CSL Computer Service

Langenbach GmbH dba Joker.com a request for registrar verification in connection

with the domain name at issue. On February 10, 2004, CSL Computer

Service Langenbach GmbH dba Joker.com 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 but advised, however, that the Respondent had not submitted in its Registration

Agreement to the jurisdiction at the location of the principal office of the

Registrar for court adjudication of disputes concerning or arising from the

use of the domain name. In response to a notification by the Center on February 12, 2004,

that the Complaint was thereby administratively deficient, the Complainants

filed an amendment to the Complaint on February 13, 2004 by email,

hardcopy of which was received on February 16, 2004. 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 "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 17, 2004.

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

was March 8, 2004. The Response was filed with the Center on March 8, 2004,

by fax, on March 9, 2004, by email, and by hardcopy on March 15, 2004.

The Center appointed the

undersigned as the sole panelist in this matter on March 18, 2004.

The Panel finds that it was properly constituted. The Panel has submitted the

Statement of Acceptance and Declaration of Impartiality and Independence on

March 17, 2004, as required by the Center to ensure compliance with

the Rules, paragraph 7, and rendered his decision within the time-limit

granted.

4. Factual Backgroun

The

Complainants present themselves as related companies which are both members

of the PRO DIVE group of companies in Australia: the First Complainant is the

current operating company of the PRO DIVE business whilst the Second Complainant

is included as a co-complainant because it is the registered owner of a number

of the trademark registrations on which this Complaint is based.

The Complainants explain

that the PRO DIVE business was established in Australia in 1969 and has

since expanded to several countries around the world through partnerships with

local organisations, including in the UK and Europe. As for Sweden in particular,

the Complainants work with five partners: My Planet, Globetrotters, Tours Pacific,

World Wide Travel and Work and Travel. These partners represent the Complainants

and display under the PRO DIVE name at trade shows in Scandinavia, in particular

in Sweden. Moreover, PRO DIVE business is recognized around the world as a leader

in all aspects of scuba diving education and training, the Complainants submit.

The Complainants have several

trademark registrations in Australia for the PRO DIVE mark (see Annex 13

to the Complaint, all registered between 1981 and 1994).

In addition, the Second

Complainant registered the domain name <prodive.com.au> in July 1996

and the Complainants' have operated a website at this domain name since July 1996

(Annex 14 to the Complaint).

5. Parties' Contentions

A. Complainants

The Complainants submit

the following:

(i) The Respondent's <prodive.com>

domain name is identical or confusingly similar to the PRO DIVE mark.

The Complainants have rights

in the PRO DIVE mark and a substantial reputation in their PRO DIVE mark, both

in Australia and Europe.

The use of the lower case

format and the addition of the ".com" are not significant in determining

whether the domain name is identical or confusingly similar to the mark (see,

inter alia, CBS Broadcasting Inc. v. Worldwide Webs, Inc., WIPO

Case No. D2000-0834). Moreover, it is not necessary for the Complainants

to have trademark registrations in the Respondent's country (Infospace.com

Inc. v. Infospace Technology Co. Ltd., WIPO

Case No. D2000-0074).

The Complainants have registered

trademarks in Australia as well as common law rights in the PRO DIVE mark in

Europe through their use and promotion of the mark there. This reputation is

sufficient to satisfy the requirement for the Complainants to prove their rights

in the PRO DIVE mark.

(ii) The Respondent has

no rights or legitimate interests in respect of the <prodive.com> domain

name.

First, there is no evidence

of a bona fide offering of goods or services by the Respondent in connection

with the disputed domain name which would legitimize its registration of the

Complainants' mark as a domain name. In fact, the Respondent has made no use

of the domain name since it was registered in 1996. Panels have held that non

use for a number of years can support a finding of a lack of right or legitimate

interest in the domain name (Kate Spade, LLC v. Darmstadter Designs,

WIPO Case No. D2001-1384).

Second, there is no evidence

that the Respondent is known by the name "Pro Dive." The Respondent's

personal name is Tony Lennartsson and nothing at the website or in investigations

has indicated that Tony Lennartsson currently uses a business name which incorporates

"Pro Dive." The Respondent has no trademark rights in the name and

has no current company or business name under the name. It is furthermore not

associated with the Complainants in any way, and is neither authorized nor licensed

to use the PRO DIVE mark in any form.

Third, there is no evidence

that the Respondent is undertaking legitimate non-commercial or fair use of

the <prodive.com> domain name.

(iii) The <prodive.com>

domain name was registered and is being used in bad faith.

The Respondent has made

no use of the domain name since it was registered in 1996 other than to

place an "Under Construction" notice on the website or to place a

yellow background (Annex 12 to the Complaint). Panels have held that non-use

or passive use is evidence of bad faith, particularly over a long period of

time (Georgia Gulf Corporation v. The Ross Group, WIPO

Case No. D2000-0218).

The Respondent has registered

multiple domain names that are registered marks of others and is a known cybersquatter.

This has been held by panels to be evidence of bad faith (see i.a. TV

Globo Ltda. v. Green Card Transportes e Eventos Ltda., WIPO

Case No. D2000-0351).

The Complainants approached

the Respondent when it became aware of registration of the <prodive.com>

domain name in 1999. The Respondent indicated at that stage that he was a scuba

diver and was intending to begin business under the name "Pro Dive."

The Respondent as a scuba diver ought to have known about the Complainants'

reputation in the PRO DIVE name and mark in Europe, including Sweden. The Respondent

has failed to use the name despite a further four years having passed since

this correspondence. This indicates that, together with having no legitimate

interest in the name, the Respondent is continuing to hold the name to prevent

the owner of the trademark from reflecting the mark in a corresponding domain

name. The Respondent has clearly engaged in a pattern of such conduct and has

held the domain name with the knowledge that it infringes the rights of another.

This also constitutes evidence of bad faith.

Additionally, the Respondent

has held the domain name at stake for a number of years without it resolving

to a website. While a number of years may be sufficient to allow for preparation

of a business, the failure to make such preparations in the time since registration

constitutes bad faith registration and use (Chernow Communications,

Inc. v. Jonathan D. Kimball, WIPO Case

No. D2000-0119; Kate Spade, LLC v. Darmstadter Designs, WIPO

Case No. D2001-1384, already mentioned above).

Based on the foregoing,

the Complainants request that the disputed domain name be transferred in their

favour.

B. Respondent

The Respondent's submissions

are as follows:

(i) The Complainants have

no enforceable rights under the Policy because their mark is generic or descriptive.

PRO DIVE is a generic,

or at best, a descriptive term because it describes the essential features of

the Complainants' service, namely professional dive instruction and, therefore,

does not provide rights under the Policy under any circumstances (see i.a.

Pet Warehouse v. Pets.Com, Inc., WIPO

Case No. D2000-0105; Interactive Television Corporation v. Noname.com,

WIPO Case No. D2000-0358).

(ii) The Respondent has

rights and a legitimate interest in the disputed domain name.

Because PRO DIVE is a common

generic or descriptive term, and is not exclusively used by the Complainants,

the Respondent, ipso facto, has rights and a legitimate interest in the

disputed domain name.

The principal that the

mere ownership of a common term domain name should, in and of itself, establish

the owner's rights and legitimate interest has been recognized by several UDRP

panels (see i.a. Shirmax Retail Ltd. v. CES Marketing, Inc., e-Resolution

Case No. AF-0104; Zero International Holding GmbH & Co. Kommanditgesellschaft

v. Beyonet Services and Stephen Urich, WIPO

Case No. D2000-0161; Primedia Special Interest Publications, Inc. v.

John L. Treadway, WIPO Case No. D2000-0752;

First American Funds, Inc. v. Ult.Search, Inc., WIPO

Case No. D2000-1840).

Moreover, the Respondent

acquired the disputed domain name to use for a planned professional dive instruction

business (Annex 2 to the Response). It is well established that the intent to

use a domain name for a business constitutes use in connection with a bona

fide offering of goods or services, pursuant to paragraph 4(c)(i) of

the Policy, which is identical to paragraph 4(c)(ii) of the Policy (see

i.a. Asphalt Research Technology, Inc. v Anything.com, WIPO

Case No. D2000-0967).

As a matter of fact, if

the Respondent has not yet developed its website this is simply due to financial

considerations (see Annex 2 to the Response). It has been expressly held that

a legitimate interest is established where economic circumstances preclude the

implementation of a respondent's business plan (The Jolt Company v.

Digital Milk, Inc., WIPO Case No. D2001-0493).

The Policy does not require actual use to satisfy a Respondent's legitimate

interest. It is the Respondent's intent to use the domain name at the time of

registration that matters (Casual Corner Group, Inc. v. Young, NAF Case

No. 95112; Smart Design LLC v. Carolyn Hughes, WIPO

Case No. D2000-0993). Registration of a domain name is not even illegitimate

where a Respondent has no specific planned use at the time of registration (Koninklijke

KPN N.V. v. Telepathy, Inc., WIPO Case

No. D2001-0217).

The Respondent has worked

as a professional dive instructor in the past, and is presently attending school

to advance his background in the diving field (Annex 2 to the Response).

There can be no doubt as to the legitimacy of the Respondent's intent to use

<prodive.com> for a business. He certainly did not take advantage at all

of the Complainants' interest in purchasing the disputed domain name, which

further corroborates that his intent is to use the domain name, not to sell

it. Moreover, the Respondent has owned a company known as ProDive and is thus

"known by the domain name," satisfying paragraph 4(c)(ii) of

the Policy.

Finally, the Complainants

unsolicited inquiry to purchase the domain name - without raising an objection

(Annex 3 to the Response) - constitutes a tacit admission of the Respondent's

legitimate interest in the disputed domain name (see i.a. Prom Software,

Inc. v. Reflex Publishing, Inc., WIPO

Case No. D2001-1154).

(iii) The Complainants

have not demonstrated that the domain name in dispute was registered and is

being used in bad faith.

There is absolutely no

evidence that the Respondent registered the disputed domain name to sell to

the Complainants; on the contrary, the Respondent refused Complainants' offers

to purchase it. Absent direct proof that a descriptive term domain name was

registered or acquired solely for the purpose of profiting from Complainants'

trademark rights, there can be no finding of bad faith registration and use

(Ultrafem, Inc. v. Warren Royal, supra).

PRO DIVE is an extremely

common descriptive term, appearing on over 16,000 third party web pages unrelated

to the Complainants (Annex 1 to the Response). Where a complainant's mark is

a common term with substantial third party use, as it is here, the complainant

must proffer evidence that demonstrates that respondent has specifically targeted

complainant.

On the Complainants' argument

that the Respondent failed to yet develop a website at <prodive.com> is

evidence of bad faith, an explanation has been provided for why the Respondent

has been unable to do. Namely that he has had financial difficulties and was

forced to file for bankruptcy for the company. As noted above, decisions under

the Policy have held that a Respondent's legitimate interest is intact, notwithstanding

its failure to launch a business plan due to financial issues.

For the above-mentioned

reasons, the Respondent concludes that the Complainants have failed to meet

their burden of proof under the Policy and the Complaint must, therefore, be

dismissed.

6. Discussion and Findings

Paragraph 4(a) of

the Policy sets forth three requirements, which have to be met for the Panel

to order the transfer of the disputed domain name to the Complainants. Those

requirements are that:

(i) Respondent's domain

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

the Complainants have rights; and

(ii) Respondent has no

rights or legitimate interests in respect of the domain name; and

(iii) Respondent's domain

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

The Complainants must prove

in the administrative proceeding that each of the aforesaid three elements is

present so as to warrant relief, according to paragraph 4(a) of the Policy.

The Panel has to decide

the Complaint on the basis of the statements and documents submitted and in

accordance with the Policy, the Rules and any rules and principles of law that

it deems applicable, pursuant to paragraph 15(a) of said Rules.

It may be pointed out that

the Respondent has not raised any issue about the fact that there are two Complainants

to the Complaint (Magna International Inc. and Donnelly Corporation v. Brian

Evans, WIPO Case No. D2002-0898).

There are circumstances in which a complainant properly acts on behalf of affiliated

enterprises with rights in a mark. Decisions under the Policy have recognized

that complex intra-enterprise relationships and/or licensing arrangements may

determine the ownership or control of a particular mark. Conversely, the assertion

of rights in a mark has been denied where a party is unable to demonstrate the

requisite ownership or control interest. In some cases, parties acting as complainant

have been specifically identified as co-complainants in the proceeding. Practice

in this regard has not been consistent. The Panel accepts the designation of

both entities as Complainants without suggesting a uniform practice on the issue

of joinder of complaining parties under the Policy and Rules (see Asprey

& Garrard Limited and Garrard Holdings Limited v. www.24carat.co.uk/domainnames.html,

WIPO Case No. D2001-1501).

A.

Identical or Confusingly Similar

The Respondent argues that

the Complainants lack rights in the mark PRO DIVE because it is generic or descriptive.

Firstly, the Panel would

like to observe that, unlike one of the cases cited by the Respondent (Pet

Warehouse v. Pets.Com, Inc., WIPO Case

No. D2000-0105) and some other relevant decisions (see e.g. CharterAuction.com,

Inc. v. Pacific Luxury Air, WIPO Case

No. D2003-0801), the Complainants have established trademark registrations

for the PRO DIVE mark (see Annex 13 to the Complaint).

Several administrative

panels have held that the argument, such as the one raised by the Respondent

in this case relating to weakness of the trademark, may have some merit, but

continue, that only the test set out in paragraph 4(a)(i) of the Policy

has to be satisfied, namely that it remains for the Complainant to prove that

the disputed domain name is identical or confusingly similar to the trademark

concerned, however strong or weak the "rights" may be (TPI Holdings

Inc. v. JB Designs, WIPO Case No. D2000-0216;

Action Sports Videos v. Jeff Reynolds, WIPO

Case No. D2001-1239; see also Rollerblade, Inc. v. CBNO and Ray Redican

Jr., WIPO Case No. D2000-0427).

Further, it has been held

and confirmed that rights under the Policy can exist in trademarks which are

descriptive and which have no secondary meaning (Emmanuel Vincent Seal trading

as Complete Sports Betting v. Ron Basset, WIPO

Case No. D2002-1058, citing Action Sports Videos v. Jeff Reynolds referred

to above).

In this matter, the Panel

considers without hesitation that the Complainants have satisfied the test of

paragraph 4(a)(i) of the Policy, i.e. that the domain name <prodive.com>

is identical to their trademark PRO DIVE

B. Rights or Legitimate

Interests

Paragraph 4(c)

of the Policy provides a non-exclusive list of circumstances, if found by the

Panel to be proved based on its evaluation of all evidence submitted, shall

demonstrate rights to or legitimate interests in the domain name in dispute.

Those circumstances are described as follows:

(i) before any notice to

you of the dispute, your use of, or demonstrable preparations to use, the domain

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

offering of goods or services; or

(ii) you (as an individual,

business, or other organization) have been commonly known by the domain name,

even if you have acquired no trademark or service mark rights; or

(iii) you are 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 at issue.

The Complainants have alleged

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

domain name at issue. This shifts the burden to the Respondent to show by concrete

evidence that it has rights or legitimate interests in respect of the domain

name at issue according to paragraph 4(c) of the Policy cited above (Document

Technologies, Inc. v. International Electronic Communications, Inc., WIPO

Case No. D2000-0270). "Concrete evidence" constitutes more

than mere personal assertions. Evidence in the form of documents or third party

declarations should be furnished in support of such assertions (Do The Hustle,

LLC v. Tropic Web, WIPO Case No. D2000-0624

cited in Kate Spade, LLC v. Darmstadter Design, WIPO

Case No. D2001-1384).

The failure of the Respondent

to produce evidence sufficient to rebut Complainant's allegations entitles the

Panel to conclude that the Respondent has no such rights or legitimate interests

in respect of the domain name at issue (Ronson, Plc v. Unimetal Sanayi ve

Tic.A.S., WIPO Case No. D2000-0011;

Parfums Christian Dior v. QTR Corporation, WIPO

Case No. D2000-0023 cited in Chernow Communications, Inc. v. Jonathan

D. Kimball, WIPO Case No. D2000-0119).

After having carefully

examined the evidence presented by the Respondent under the form of a written

"declaration" (Annex 2 to the Response) and related submissions (see above

at 5(b)(ii), p. 6-7), the Panel does not give much credit thereto, especially

after having considered instances where the Respondent has been associated with

a number of UDRP complaints either directly or through the businesses "ControlAltDelete"

and "PDS"(see Annex 11 to the Complaint; see also above at 5(a)(iii),

p. 7) and having been described as having "established a pattern of registering

domain names comprised of the trademarks of others for the purposes of ransoming

them back to their rightful owners" (Vattenfall AB v. P D S, WIPO

Case No. D2000-0359, <vattenfall.com>) and the Respondent himself

has been described as "a known cyber squatter who registers the trademarks

of others as domain names" (Arla, ekonomisk förening v. P D S and

Tony Lennartsson, WIPO Case No. D2000-0151,

<arla.com>).

In sum, the Respondent

has not submitted convincing evidence that any of the circumstances enumerated

in paragraph 4(c) of the Policy would be present in this matter.

C. Registered and Used

in Bad Faith

Paragraph 4(b)

of the Policy provides a non-exclusive list of circumstances that evidence registration

and use of a domain name in bad faith. Any of the following behaviors is sufficient

to support a finding of bad faith:

(i) circumstances indicating

that you have registered or you have acquired the domain name primarily for

the purpose of selling, renting, or otherwise transferring the domain name registration

to the complainant who is the owner of the trademark or service mark or to a

competitor of that complainant, for valuable consideration in excess of your

documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered

the domain name in order to prevent the owner of the trademark or service mark

from reflecting the mark in a corresponding domain name, provided that you have

engaged in a pattern of such conduct; or

(iii) you have registered

the domain name primarily for the purpose of disrupting the business of a competitor;

or

(iv) by using the domain

name, you have intentionally attempted to attract, for commercial gain, Internet

users to your website or other on-line location, by creating a likelihood of

confusion with the complainant's mark as to the source, sponsorship, affiliation,

or endorsement of your website or location or of a product or service on your

website or location.

The arguments submitted

by the Respondent that it has not registered and used the domain name <prodive.com>

in bad faith do not convince the Panel, mainly for the same reasons set out

above under section B.

To the extent necessary,

the Panel confirms previous decisions that held that passive use is evidence

of bad faith, particularly over a long period of time - which is obviously the

case in this case - (Georgia Gulf Corporation v. The Ross Group, WIPO

Case No. D2000-0218) and that a Respondent who registered multiple domain

names that were registered marks of others and was a known cybersquatter is

further evidence of bad faith (see i.a. TV Globo Ltda. v. Green Card

Transportes e Eventos Ltda., WIPO Case

No. D2000-0351). Those decisions fully apply to the present case.

The Complainants have thus

met the requirements set out in Policy, paragraph 4(b).

7. Decision

For all the foregoing reasons,

in accordance with paragraphs 4(i) of the Policy and 15 of the Rules,

the Panel orders that the domain name <prodive.com> be transferred to

one of the two Complainants that the Complainants assign.

Christophe Imhoos

Sole Panelist

Dated: April 1, 2004