ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
The Complainant is William Schwittek of 2660 Moton Road, Clover, SC USA 29710.
The Respondent is Corstar Argentina, SA of Jujuy 98, Buenos Aires, Argentina CF1083.
The contested domain name is multifax.com which is stated to be registered with Network Solutions Inc.
2. Procedural History
The Complainant filed a complaint submission under the ICANN Uniform Domain Name Dispute Resolution Policy, (the "ICANN Policy") on June 5, 2000 and notice was provided to the Respondent in conformance with the applicable rules of procedure. Despite the establishment of actual contact between the parties and the exchange of numerous e-mail communications, no submission in response to the complaint has been filed by, or on behalf of, the Respondent.
3. Factual Background
The Complainant carries on the business of selling a satellite weather image capturing system for personal computers which is comprised of antennas, computer circuit cards, and related software for capturing real time weather images from satellites. Most of the systems are sold in North America however, systems have also been sold internationally. The Complainant has used the MULTIFAX trademark to identify its satellite weather image capturing system since October 1986. The Complainant is the owner of US trademark # 1,822,414 for MULTIFAX which was registered February 22, 1994.
On August 4, 1997 the Respondent registered the domain name multifax.com. The domain site is inactive, and the Respondent does not appear to offer any products or services, or actively carry on any business activities related to that domain name.
A series of registered mail, telephone and e-mail communications in the English language occurred between Markus Brakhan, the lawyer representing the Complainant, and Mr. Alberto Rocca, a representative of the Respondent. On October 18, 1999 the Complainant's lawyer requested in writing that the Respondent abandon the contested domain name registration or transfer the contested domain name to the Complainant. On November 3, 1999 the Complainant's lawyer contacted the Respondent by e-mail in reply to a telephone message from the Respondent regarding transfer of the domain name. On November 18, 1999 the Respondent sent an e-mail message both asserting and denying use of the domain name, but offering to release it in exchange for payment of $20,000.00. On November 19, 1999 e-mails were exchanged in which the Complainant rejected the Respondent's proposal, but offered to pay a nominal sum of $500.00 in respect of actual costs in exchange for executed transfer documents.
On November 22, 1999 the Complainant restated its final offer with a November 25, 1999 deadline and threatened the commencement of legal proceedings in default of compliance. On November 27, 1999 the Respondent sent an e-mail offering the Complainant web hosting services for $1,800.00 or pass through services for $840.00 with a requirement that the Complainant acknowledge in writing the entitlement of the Respondent to retain the contested domain name. The Complainant subsequently commenced proceedings against the Respondent under the ICANN Policy
3. Parties' Contentions
The Complainant alleges that the multifax.com domain name registered by the Respondent is substantially identical to the registered MULTIFAX trademark of the Complainant. The Complainant also asserts that the Respondent has no trademark rights or other legitimate interest in respect of the contested domain name. The Complainant additionally contends that the conduct of the Respondent indicates that the domain name has been registered and used in bad faith.
The remedy requested by the Complainant is the cancellation of the Respondent's interest in the contested domain name and the transfer of the contested domain name to the Complainant.
The Respondent did not file a response to the submission of the Complainant.
4. Discussion and Findings
Paragraph 15(a) of the Rules under the ICANN Policy provides that the Panel shall:
"decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable".
Paragraph 4(a) of the ICANN Policy, requires the Complainant to establish:
(i) That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) That the domain name has been registered and is being used in bad faith.
The domain name multifax.com contains exactly the same letters in the same sequence as they appear in the MULTIFAX registered trademark of the Complainant. The only difference is the appearance of the additional suffix .com, which is generic in nature. Accordingly it is the finding of the Panel that the contested domain name is identical or confusingly similar to the trademark of the Complainant.
With respect to the issue of any legitimate rights or interest of the Respondent in the contested domain names, Paragraph 4(c) of the ICANN Policy shows how a Respondent can demonstrate rights or an interest in a domain name. While the general onus of proof rests on a Complainant, the failure by a Respondent to demonstrate the application of paragraph 4(c) can assist the Panel in deciding whether on consideration of all the evidence a Complainant has discharged the onus of proof. The following circumstances in particular, but without limitation, if found by the Panel to be proved, demonstrate rights or legitimate interests in the domain name at issue.
(i) before any notice to you 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
(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."
In communications with the Complainant, the Respondent made a number of equivocal representations, alternately asserting and denying, potentially legitimate concurrent use of the contested domain name, without providing any substantive supporting evidence. The Complainant has presented evidence, upon information and belief, that the Respondent has never had a viewable or live web site, or even a page, at the contested domain site, that the Respondent has no products or services actually named MULTIFAX and that the Respondent has no registered or unregistered trademark rights in the mark MULTIFAX. In the absence of a submission by the Respondent, no evidence to the contrary was presented to the Panel.
The Respondent has failed to respond to the commencement of these proceedings and take the opportunity to establish any rights or legitimate interest in the contested domain name. In summary, there is no indication that the Respondent has made any use, or demonstrable preparations to use, the contested domain name in connection with a bona fide offering of goods or services, nor established any common association or tradename usage of the contested domain name, nor any legitimate actual use of any active web site or online presence connected to the contested domain name.
Accordingly it is the finding of the Panel that the Respondent has no rights or legitimate interests in the contested domain name.
Paragraph 4(b) of the ICANN Policy provides that 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:
(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.
Under the circumstances, the conduct of the Respondent in requesting payment of a $20,000.00 transfer fee and rejecting the Complainant's offer to provide reasonable monetary reimbursement of $500.00 for actual expenses associated with the transfer of the domain names to the Complainant, supports the proposition that the Respondent sought to obtain valuable consideration from the Complainant in excess of the threshold established in the ICANN Policy for transfers in good faith.
The Complainant has established its prior commercial use of MULTIFAX since October 1986 and its prior trademark registration for MULTIFAX in February 1994, a number of years in advance of the August 1997 registration of the contested domain name by the Respondent. The Respondent has denied using the contested domain name for any active business, but has effectively prevented the Complainant from reflecting its trademark in a corresponding domain name. In the absence of any associated business activity or other demonstrated legitimate purpose or intention, these circumstances support the inference that the continued maintenance of registration of the contested domain name after actual knowledge of the existence of the Complainant's prior registered trademark was undertaken in bad faith. This inference is enhanced by the Respondent's conduct in using this practical obstruction as leverage to demand payment of an unreasonable transfer fee, which is completely unrelated to any measurement of its actual expenses.
The Respondent has failed to respond to the commencement of these proceedings and take the opportunity to establish any legitimate purpose for registration of the contested domain name, or any legitimate concurrent use of the contested domain name.
Accordingly it is the finding of the Panel that the Respondent registered and used the contested domain name in bad faith.
For the foregoing reasons the Panel concludes that, with respect to the contested domain name multifax.com:
(a) the contested domain name registered by the Respondent is identical or confusingly similar to the trademark of the Complainant;
(b) the Respondent has no rights or legitimate interests in respect of the contested domain name; and
(c) the contested domain name registered by the Respondent has been registered, and is being used, in bad faith.
Accordingly, pursuant to paragraph 4 (i) of the ICANN Policy, the Panel determines that the registration of the domain name multifax.com is required to be transferred to the Complainant.
Dated at Toronto, Canada, August 15, 2000
(s) David Marcel Robinson