ADMINISTRATIVE PANEL DECISION

Under the ICANN Uniform Domain Name Dispute Resolution


 
Complainant: GASSAN DIAMONDS B.V.
Respondent: VAN ETTEN BERNARDUS JACOBUS
Cases Numbers: AF-0149a ; AF-0149b
Contested Domain Names: AF-0149a: gassan.com;
AF-0149b: gassandiamonds.com
Panel Member: Riccardo Roversi
 

 

1. Parties and Contested Domain Name

The Complainant is Gassan Diamonds b.v. of Amsterdam (Netherlands). In its Complaint, filed online with eResolution on March 14, 2000, Gassan Diamonds seeks the transfer of two domain names registered in the name of Mr. Bernardus Jacobus Van Etten of Mission (Canada). These domain names are: gassan.com and gassandiamonds.com

2. Procedural History

The electronic version of the Complaint form was filed on-line through eResolution's Website on March 14, 2000. The hardcopy of the Complaint Form was received on March 17, 2000. Payment was received on the same day.

Upon receiving all the required information, eResolution's clerk proceeded to:

- Confirm the identity of the Registrar for the contested Domain Name;

- Verify the Registrar's Whois Database and confirm all the required contact information for the Respondent;

- Verify if the contested Domain Name referred to an active Web page;

- Verify if the Complaint was administratively compliant.

The inquiry leads the Clerk of eResolution to the following conclusion: the Registrar is Network Solutions, Inc., the Whois database contains all the required contact information. The Contested Domain Name refers to an inactive Web page and the Complaint is administratively compliant.

The Clerk then proceeded to send a copy of the Complaint Form and the required Cover Sheet in accordance with paragraph 2 (a) of the ICANN Rules for Uniform Domain Name Dispute Resolution Policy.

The Clerk fulfilled all his responsibilities under Paragraph 2(a) in connection with forwarding the Complaint to the Respondent on March 21, 2000. That date is the commencement date of the administrative proceedings.

On March 21, 2000, the Clerk's office notified the Complainant, the Respondent, the relevant Registrar, and ICANN of the date of commencement of the administrative proceedings.

On April 9, 2000, the Respondent submitted, via the eResolution internet site, his response. The signed hardcopy version of the response was received on April 27, 2000.

On April 30, 2000, the Clerk's Office contacted Riccardo Roversi, and requested him to act as panelist in this case.

On May 1, 2000, Riccardo Roversi, accepted the appointment to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.

On May 1, 2000, the Clerk's Office forwarded a user name and a password to Riccardo Roversi, allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System. At the same time, the Clerk's office informed the lead panelist that the Complainant had requested permission to submit further evidence.

On May 1, 2000, the parties were notified that Riccardo Roversi had been appointed and that a decision was to be, save exceptional circumstances, handed down on May 15, 2000.

On May 3, 2000 the lead panelist issued a preliminary order authorizing parties to submit further evidence. In particular, the Complainant was authorized to submit evidence within May 8, 2000 and Respondent was authorized to submit new evidence supporting his defence no later than May 11, 2000. As a consequence, the term for the final decision was extended until May 25, 2000.

No party has submitted further evidence within the above mentioned time limits.

3. Factual Background

The Complainant is a Dutch company operating since 1945. Gassand Diamonds claims to be one of the leading diamond factories and traders. The company was founded by Mr Samuel Gassan under the name "Samuel Gassan Diamond House". This name was subsequently changed to "Samuel Gassan N.V." in 1955. In 1960 Samuel Gassan N.V. took over a competitor (Diamont Associate B.V.) and entered a period of rapid growth throughout the world. Presently Gassan Diamonds has foreign offices in Belgium, United Kingdom, United States, Israel, Japan, China, Hong Kong, Singapore and Indonesia.

The Complainant also claims that in daily speech Gassan Diamonds is usually referred to as "Gassan".

The Complainant is owner of the domain names gassan.nl and gassandiamonds.nl (the latter connects to a web site still under construction) and claims that its intention would be that of creating an international web site under the domain name gassandiamonds.com.

The Respondent is a Canadian individual who has been a user of the internet since 1994. He expressly admits that he is in the business of registering and buying domains on behalf of his clients. He claims he also sets up and maintains web sites for his clients. The Respondent registered both the domain name gassandiamonds.com and gassan.com on November 7, 1998 and he claims he did that on behalf of his clients Mr Abdoullaev and Mrs EditGassan.

A representative of the Complainant, Mr Jack Santen, contacted Respondent on February 4, 2000 informing him that Complainant was interested in purchasing the domain name gassandiamonds.com (see Annex 1 to Complaint Form). On February 5, 2000 Respondent replied to Mr Santen asking a price of USD 110,000 for the domain name, plus a commission for himself.

4. Parties' Contentions

Complainant is seeking transfer to it of the domain names in question on the basis of the following arguments :

(i) Copy or Similarity

Complainant states that the domain name gassandiamonds.com is exactly the same as the company name of Complainant itself.

The Complainant makes no reference at all to the domain name gassan.com.

(ii) Illegitimacy

Complainant claims that Respondent does not have any right to the domain name gassandiamonds.com since there is only one company in the world which acts as a trader of diamonds under the name Gassan Diamonds.

Once again, no reference at all is made to the domain name gassan.com.

(iii) Bad Faith

As far as the domain name gassandiamonds.com is concerned, in Complainant's view the bad faith of Respondent is proved by the following circumstances : that Respondent tried to sell the domain name at a very high price (in the region of US$ 110,000.00) to Complainant; that, immediately after contacts with Complainant's representative took place, Respondent changed the administrative contact for the domain name from Mrs Edit Gassan to his own name ; that Respondent activated, under the domain name gassandiamonds.com, a web site (apparently) offering diamonds for sale on a worldwide basis.

As far as the domain name gassan.com is concerned, Complainant claims that Respondent registered the same in bad faith and by way of example stated that he registered a number of domain names relating to leading Dutch newspapers and to a well-known Dutch university.

Respondent replied to Complainant's claims simply stating that he registered the gassan.com domain name on behalf of its clients Mr Abdoulaev and Mrs Edit Gassan. In Respondent's view, this domain should have been used by the Gassan family to host their personal web site, but the same Respondent admits that the domain name was never used by his clients.

As far as the domain name gassandiamonds.com is concerned, Respondent expressly admits that he has no interest in the same and states that he requested Network Solutions Inc. to delete the domain name gassandiamonds.com on March 10, 1999.

5. Discussion and Findings

As far as the domain name gassandiamonds.com is concerned, the lead panelist holds that there is no longer any dispute pending between the parties in respect of the same.

Respondent stated very clearly that he "attempted, and did all reasonable performance, and all in good faith, to delete the following domain name www.gassandiamonds.com" ; that "the Respondent had full faith in the statement given by internic.net and had to rely solely and only with internic.net at that time" and, again, that "the Respondent had taken every step possible to delete the domain in question called http://www.gassandiamonds.com" (see Respondent's response form, page 4).

Although the reason why the registration of the above mentioned domain name was not actually deleted and the name made available for further registration is not completely clear, the lead panelist holds that Respondent waived any right to gassandiamonds.com when he made clear that his real intention was to delete this domain name.

According to article 17(a) of the ICANN Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), the Panel may terminate the procedure only if parties reach a settlement regarding the domain name(s) that are the subject of the dispute.

It is therefore necessary to ascertain whether the parties involved in the present dispute have agreed, or not, on a settlement regarding the domain name gassandiamonds.com. Should the answer to that question be affermative, no decision should be issued in connection with the above domain name; on the other hand, should the answer be negative, the lead panelist should issue a decision regarding gassandiamonds.com.

Even if Respondent waived any right to gassandiamonds.com, the lead panelist holds that no settlement agreement has been reached between the parties.

Complainant is seeking a decision providing for the transfer of this domain name, while Respondent, even if he admits that he has no interest at all in the same, did not adhere to Complainant's claim. In lead panelist's opinion it is not possible to hold that parties have impliedly reached a settlement agreement, since (at least from a formal point of view) Respondent rejected all Complainant's claims.

In the absence of a settlement agreement (even of an implied nature) between the parties on the domain name in question, it is the lead panelist's opinion that a decision should also be issued in connection to this domain. The lead panelist comes to that conclusion on the basis of the above mentioned article 17(a) of the Rules, as well as on the basis of the following issues:

(i) article 15 of the Rules which should be construed in the sense that Panel may refuse to issue a decision only if it holds that the "dispute is not within the scope of Paragraph 4(a) of the Policy". In this case the dispute falls well within the scope of application of Paragraph 4(a) of the Policy (see Parties' Contentions above) and therefore the lead panelist has no power to refuse to give his decision;

(ii) article 9 of the eResolution Supplemental Rules which expressly states that "By accepting such an appointment [to act as panelist], the Panelist commits himself or herself to carrying out his or her duties to completion";

(iii) a general principle of law (which the lead panelist deems applicable according to article 15(a) of the Rules) pursuant to which a procedure should be conducted also with the aim of reducing chances of future disputes between the same parties on the same matter being the subject of the procedure itself. In the present case, should lead panelist refuse to issue a decision in connection with the domain name gassandiamonds.com, Respondent might, for instance, rely on the fact that the deletion of his registration of gassandiamonds.com was never completed and, as a consequence, he might claim to be recognized as the sole owner of the same domain name. This would certainly lead to a new dispute between the same parties on the same matter (the gassandiamonds.com domain name) being the subject of this procedure, in contrast with the above stated general principle of law.

For the above stated reasons, a decision must be issued in respect of the gassandiamonds.com domain name and the lead panelist declares that the domain name gassandiamonds.com shall be transferred to Complainant immediately upon publication of this decision.

Said decision is based on the fact that Respondent waived any right to the domain name in question. It is lead panelist's opinion that, since rights to domain names may be transferred and licensed by contract, they may also be waived by unilateral declaration of their holder.

However, even if Respondent had not waived his rights to the domain name, it is lead panelist's opinion that Complainant's claim should have been accepted since all requirements provided by article 4(a) of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy") are met with in this case. Complainant gave evidence that gassandiamonds.com is identical to its trading name, that Respondent had no interest at all in the same domain name (as Respondent expressly confirmed) and that Respondent was in bad faith according to article 4(b)(i) since he tried to sell the domain name gassandiamonds.com at a very high price (see Annex 1 to Complaint Form).

As far as the gassan.com domain name is concerned, the lead panelist holds that Complainant failed to meet the requirements set forth in article 4(a) of the Policy.

Said provision states that the Complainant should give evidence of each of the following circumstances:

(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights [similarity]; and

(ii) that the Respondent has no rights or legitimate interests in respect of the domain name [illegitimacy]; and

(iii) that the domain name has been registered and is being used in bad faith by Respondent [bad faith].

As far as requirement under point (i) above (similarity) is concerned, Complainant did not submit any direct evidence. However, lead panelist holds that the word "Gassan" represents the most significant part of Complainant's trading name, since the word "diamonds" is a generic word that is not a distinctive element of the Complainant's trading name. According to a general principle of law, the similarity should be assessed especially with reference to the most distinctive element and therefore it could be said that gassan.com is similar to Complainant's trading name, for the purpose of article 4(a)(i) of the Policy.

As far requirement under point (ii) above (illegitimacy) is concerned, Complainant did not submit any evidence that Respondent had no rights or legitimate interests in respect of the domain name. Respondent replied stating that he acted on behalf of clients who instructed him for the registration of gassan.com. ????No evidence was ever submitted by Respondent as to the existence of a contractual relationship between the Respondent and Mr and Mrs Gassan, nor as to the existence of any contract with any other member of the Gassan family nor as to the existence of any member of the Gassan family. However, it is also true that Complainant had to provide evidence regarding the above-mentioned requirement and failed to do so, even if lead panelist granted parties an extension for submitting further evidence (see Procedural History above).

As far as the bad faith requirement is concerned, the lead panelist holds that the circumstance that Respondent registered a number of domain names relating to the activity of well known Dutch newspapers and other institutions does not prove his bad faith.

The lead panelist therefore holds that Complainant's claim regarding the domain name gassan.com should be rejected.

6. Conclusions

For the above summarized reasons, the lead panelist (i) orders that the domain name gassandiamonds.com be transferred to the Complainant and (ii) rejects the claim regarding the domain name gassan.com, which - as a consequence - shall remain registered in the name of Respondent.

7. Signature

Signed on this 25th day of May 2000 in Milan by the lead panelist Riccardo Roversi

(s) Riccardo Roversi

Presiding Panelist