ADMINISTRATIVE PANEL DECISION

Under the ICANN Uniform Domain Name Dispute Resolution


 
Complainant: DAB PUMPS S.P.A.
Respondent: LIN WEN HAN
Case Number: AF-0159
Contested Domain Name: dabpump.com
Panel Member: Llewellyn Joseph Gibbons
 

 

1. Parties and Contested Domain Name

Complainant: Dab Pumps S.P.A.

Respondent: Lin Wen Han

Contested name: dabpump.com

2. Procedural History

The electronic version of the Complaint form was filed on-line through eResolution's Website on March 22, 2000. The hardcopy of the Complaint Form was received on March 27, 2000. Payment was received on March 27, 2000.The coversheet was received on March 30, 2000.

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 Respondent;

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

- Verify if the Complaint was administratively compliant.

The inquiry leads the Clerk of eResolution to the following conclusions: the Registrar is Melbourne IT, the Whois database contains all the required contact information but the contested Domain Name resolves to an inactive Web page and the Complaint is administratively compliant.

An E-mail was sent to the Registrar by eResolution Clerk's Office to obtain a copy of the Registration Agreement on April 6, 2000. The requested information was received April 13, 2000.

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's Rules for Uniform Domain Name Dispute Resolution Policy.

The Clerk fulfilled all its responsibilities under Paragraph 2(a) in connection with forwarding the Complaint to the Respondent on April 4, 2000. That date is the commencement date of the administrative proceeding.

On April 4, 2000, the Clerk's office notified the Complainant, the Respondent, the concerned Registrar, and ICANN of the date of commencement of the administrative proceeding.

The Respondent submitted a response by e-mail in Chinese on April 11, 2000. This response was refused by the Clerk's office on May 12, 2000 as per the confirmation from the Registrar that the language of the proceedings is English. This was confirmed to respondent on April 13, 2000. An E-mail was received from the respondent on April 24, 2000 giving a short reply in English. No other response form was filed, neither via the eResolution Internet site nor a signed version. The panelist elected to treat this E-mail as the response of the Respondent.

Several panelists were contacted between April 28 and May 18, 2000. They were not available at the time to act as panelist.

On May 17, 2000, the Clerk's Office contacted Llewellyn Joseph Gibbons, and requested for him to act as panelist in this case.

On May 25, 2000, Llewellyn Joseph Gibbons accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality, on May 30, 2000.

On June 1, 2000, the Clerk's Office forwarded a user name and a password to Llewellyn Joseph Gibbons, allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.

On June 1, 2000, the parties were notified that Llewellyn Joseph Gibbons had been appointed and that a decision was to be, save exceptional circumstances, handed down on June 15, 2000.

On June 6, 2000, the panel sua sponte elected to request a supplement filing by the parties in order to provide them with another opportunity to address issues that were inadequately developed in the record. The parties were specifically asked to address ICANN Policy 4(b) & 4(c). At the arbitrator's request, the request for a supplemental filing was translated into Chinese.

Subsequently, the parties filed responses and in addition, the complainant included what appear to be copies of a document purporting to be an Italian registration for DAB as a mark. This document was not translated into English.

3. Factual Background

Complainant appears to have registered the mark "DAB" in Italy in 1975. Complainant has been using dabpumps.it as a domain name for at least one year. Complaint also holds a series of related domain names: dabpumps.com, dabpumps.net, dabpumps.org, dabpump.net, and dabpump.org.

4. Parties' Contentions

Complaint contends that there is a likelihood of consumer confusion among web searchers seeking complainant's products and services.

Respondent contends that respondent had not heard of DAB pumps and chose DAB to represent Big and Deep two very important generic characteristics of pumps.

5. Discussion and Findings

Under provision 4(a) of the Uniform Domain Name Dispute Resolution Policy (as approved by ICANN on October 24, 1999), the complainant must prove that each of these three elements are present:

(A) Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(B) Respondent has no rights or legitimate interests in respect of the domain name; and

(C) Respondent's domain name has been registered and is being used in bad faith.1

Under the provisions 4(b) of the ICANN Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(A) circumstances indicating that Respondent has registered or 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

(B Respondent 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

(C) Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(D) by using the domain name, Respondent intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location.

A. Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.

Complainant has registered DAB as a trademark under Italian law and has been doing business with that mark for approximately 25 years. Complainant's mark and complainant's related domain names are virtually identical to respondent's domain name dabpumps.com. I find in favor of the complaint on this element.

B. Respondent has no rights or legitimate interests in respect of the domain name

Respondent may prove a legitimate interest in the domain name by demonstrating the following:

(A) before any notice to Respondent of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

Respondent introduced his statement that he is using or intends to use DABpumps.com as a webpage so that supplier of pumps in his market area can advertise on the web. Respondent did not state the extent of his prior preparation, investment, or prior use of the disputed domain name.

(B) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if Respondent acquired no trademark or service mark rights;

Respondent does not assert that he is commonly known by the disputed domain name.

(C) 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 at issue.

Respondent does not assert that his use is noncommercial. Respondent's plans are to use the domain name as a portal site or similar site collecting merchants and others who provide pumps and similar equipment and to make this aggregation available to the public. Respondent expects remuneration of some kind for this service.

Accordingly because respondent has failed to meet his burden of demonstrating a legitimate interest in the domain name, I find in favor of the plaintiff on this element.2

C. Respondent' domain name has been registered and is being used in bad faith

Under the provisions of 4(b) of the ICANN Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(A) circumstances indicating that Respondent has registered or 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.

There is no information to support an allegation that respondent intended to transfer the domain name back to complainant for valuable consideration. At best when notified of the complaint, respondent tried to settle the case and offered to become an agent for complainant. Under the circumstances presented in this case that was insufficient to demonstrate the requisite intent.

(B) Respondent 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;

There is no evidence that respondent registered the domain name in order to prevent the mark holder from using the name nor is there any evidence that respondent has registered other names for such a purpose.

(C)Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor;

There is no evidence that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor. Respondent claims, and without evidence to the contrary I must credit that he selected dabpumps.com because dab stands for big and deep two important generic or suggestive characteristics of a pump.

(D) by using the domain name, Respondent intentionally attempted to attract, for commercial gain, Internet users to Respondent's web site 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 web site or location or of a product or service on your web site or location.

This is the most difficult issue. Respondent claims that he selected the dabpumps.com domain name because it stands for deep and big two important generic or suggestive characteristics of pumps. Respondent intends to aggrate information on pumps for his geographic market. Clearly the use of dabpump.com creates a likelihood of consumer confusion because the complainant mark holder is using dabpumps.com and several other variations on that theme and respondent is using dabpump.com. Both are providing pump related commercial services. The mark, complaint's other domain names and the disputed domain name are virtually identical. If likelihood of confusion were sufficient under the ICANN policy then the complaint would prevail. But, likelihood of confusion is not enough. The ICANN policy clearly states that the respondent must intentionally attempt to attract for commercial gain Internet users to respondent's site by creating a likelihood of confusion with the complainant's mark. The record is virtually silent on the issue of the respondent's mens rea and there are few if any facts from which a reasonable person could infer the respondent's intent. Complainant's persistent strident reiterations of bad faith to do not rise to proof. Further without anything to contradict his statement, respondent's claim that dab must be credited. Complainant has failed to meet its burden of proof to demonstrate that respondent was aware of complainant's mark prior to registration the disputed domain name dabpumps.com or that in some other manner, the respondent intended to free ride on the mark holder's investment in developing the mark.3

6. Conclusions

Complainant has the burden of showing by preponderance of the evidence each of element. The complainant has failed to prove one of the elements. Although, complainant has demonstrated a likelihood of consumer confusion, complainant has failed to demonstrate the intentional element of the ICANN policy; therefore, complainant has failed to demonstrate the element of bad faith, the arbitrator rules in favor of the respondent.

For the foregoing reasons, the arbitrator rules in favor of the RESPONDENT; and therefore, the complaint is REJECTED.

7. Signature (including date and place of the decision)

Signed this 17th day of July, 2000 in the Toledo, Ohio, United States of America

(s) Llewellyn Joseph Gibbons

Presiding Panelist

1) For the sake of clarity, I have made minor changes in the recitation of the ICANN policy, for example replacing you with respondent or complainant and the appropriate grammatical modifications to match the change in subject.
2) The panel ordered this section of the ICANN policy translated into Chinese in order to assure that the respondent had a full and fair opportunity to respond. Respondent did respond, and Respondent's answer was considered.
3) The panel requested that the complainant specifically address ICANN policy 4(c); complainant filed a response, which was considered as part of the record in this proceeding. While the panel had the authority under the rule to extend the scope of bad faith under the terms of the following circumstances, in particular but without limitation be evidence of bad faith. The complainant did not argue that this case present a special circumstance in which the limitation of intentionally should be ignored. Accordingly, I find no reason to extend the existing language of the policy and reach out for additional circumstances on which to find bad faith.