ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
The Complainant is eSpace Technologies Private Limited of Chennai City, Tamil Nadu, India. The Respondent is David Campbell of Melbourne city, Australia. The contested domain name is myespace.com.
2. Procedural History
The electronic version of the Complaint Form was filed on-line through eResolution's Website on June 29, 2000. The hardcopy of the Complaint Form was received on the same date. Payment was also received on the same date. The choice of jurisdiction was received on July 4, 2000. Confirmation of the Registration agreement from the Registrar was received on July 6, 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 led the Clerk's Office of eResolution to the following conclusions: the Registrar is Network Solutions, Inc., the Whois database contains all the required contact information, the contested Domain Name resolves to an inactive Web page and the Complaint is administratively compliant.
The Clerk's Office 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's Office fulfilled all its responsibilities under Paragraph 2(a) in connection with forwarding the Complaint to the Respondent on July 7, 2000. That date is the commencement date of the administrative proceeding.
On July 7, 2000, the Clerk's Office notified the Complainant, the Respondent, the concerned Registrar, and ICANN of the date of commencement of the administrative proceeding.
On July 27, 2000, the Respondent's representative submitted, via email, his response. This response was not submitted it the appropriate form, and therefore was not in accordance with section 7 b) i) of eResolution Supplemental Rules. The Clerk's Office then granted a five-day delay to the Respondent in order to file the Response in the appropriate form. Also, the signed hardcopy had to be received by the Clerk's Office no later than July 31, 2000.
On the same day, the Respondent was provided with an ID and a password to access the case online on eResolution website.
On July 31, the Respondent's representative filed online on eResolution's website a Response form. On the same day, a hardcopy format of the Response form was received by eResolution, but it was not signed.
On the same day, the Clerk's Office requested a signed hard copy from the Respondent's representative, before August 2, 2000, and provided the Respondent with a fax number.
On August 1, 2000, the Clerk's Office received a message from the representative of the Complainant, requesting the right to file a rebuttal.
On August 2, 2000, the Clerk's Office resent the same message as the one sent on July 31, 2000, to both Parties, in order to make sure it has been received. The Clerk's Office requested a confirmation of the receipt of the message, but did not receive any.
On August 4, 2000, the Clerk's Office received the signed hard copy from the Respondent's representative. Because it was not received within the delay, the annexes to the Response were not posted on line by the Clerk's Office, unless the Panel decides to accept the deficient Response.
On August 8, 2000, the representative of the Respondent sent this email to the Clerk's Office:
" Thank you for your e-mail and we apologise for the delay in response.
We note your comments that the Respondent is in default owing to an alleged failure to provide a signed hard copy of the Response. However, on 1 August 2000 the signed response form was forwarded to eResolution by urgent courrier which should have arrived prior to the deadline Montreal time. We kindly ask that you check your records and confirm safe receipt of these documents. In the meantime a further signed copy of the response has been forwarded by facsimile.
In any event we submit that eResolution should exercise some discretion in this case. In this regard a signed hard copy of the response containing the identical information was forwarded to eResolution by facsimile and e-mail on 27 July 2000. This was deemed unacceptable because it was not in eResolution format . However as explained in the covering letter, we were unable to download the appropriate forms on 25 26 and 27 July 2000 and we had left telephone messages with eResolution on 26 and 27 July 2000 but our calls were not returned . Being familiar with the WIPO procedures the Response filed contained all the information requested under easily identifiable headings.
In view of the above we trust that the Panel will take these matters into account in allowing the response."
On August 4, 2000, the Clerk's Office contacted Mr. Li Yong, and requested that he acts as panelist in this case.
On August 8, 2000, Mr. Li Yong, accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On August 9, 2000, the Clerk's Office forwarded a user name and a password to Mr. Li Yong, allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.
On August 9, 2000, the parties were notified that Mr. Li Yong had been appointed.
On August 9, 2000, the Clerk's Office requested the panel to make a preliminary decision with respect to the issues of the acceptance of the deficient Response form and the Complainant's request of the right of rebuttal.
On August 14, 2000, Mr. Li Yong made a preliminary decision stating that according to The Rules for Uniform Domain Name Dispute Resolution Policy, 10 (b) and taking into consideration the reasons submitted by the Respondent, 1) the Respondent's deficient Response form was accepted; 2) the Complainant was allowed to submit any statement or document within five days from receipt of this preliminary decision; and 3) the panel would not allow further submission and would begin to make final decision. The preliminary decision was sent to both parties on August 15, 2000. The parties were informed that the Complainant must submit its rebuttal before August 21, 2000 and the decision would be handed down on September 4, 2000. The complainant submitted its rebuttal on August 21, 2000 and the annexed documents.
3. Factual Background
The complainant is a registered company in India. The registration date of the company is Jan. 4, 1999. The complainant obtained the domain name "my-espace.com" on June 13, 2000 from Mr. Tom Thomas who originally registered the domain name on Jan. 20, 1999.
The respondent registered the domain name "myespace.com" on Feb. 4, 1999.
4. Parties' Contentions
The complainant contends that 1) the respondent's domain name "myespace.com" is identical and/or deceptively similar to the complainant's domain name "my-espace.com"; and 2) the respondent was merely interested in selling the contested domain name and does not have any true business interest in the name.
The respondent contends that 1) the respondent's domain name is not identical or confusingly similar to a trade mark or service mark in which the complainant has rights because the complainant has not any trade mark rights in any trade mark which resembles the respondent's domain name and the complainant's domain name is not a trade mark or a service mark; 2) the respondent has rights and legitimate interests in the domain name, he carries on internet business and has taken active steps towards the development of a business around the domain name; and 3) the respondent registered and is using the domain name in good faith, he registered the name solely for services to be provided by him and did not seek to sell, rent or transfer the name to the complainant or to a competitor of the complainant.
The complainant rebuts that a consulting firm KPMG had prepared a detailed project business Plan. The plan contains the start page of the prototype of the complainant's portal/site showing the complainant's domain name/trademark. Hence the respondent's contention that the complainant's domain name is not a trademark or a service mark nor can function as such is absolutely false. The complainant refers to a recent judgment of the Bombay High Court, India - AIR 2000 Bombay 27 - which held: a domain name is more that an internet address and is entitled to equal protection as a trademark. The complainant rebuts that a domain name is a kind of trademark, the legal entity Myespace.com Private Limited was promoted by the very same promoters of the complainant, namely Mr. Chandra alias Chandramouli Balaraman and his wife Ms. Jaishree Balaraman. With reference to the respondent's claim that he is the developer and operator of Internet and e-commerce business, the respondent rebuts that no documentary evidence in this regard has been filed. The averment that the domain name was registered by the respondent solely for the purpose of use inconnexion with the service to be provided by him and the respondent did not seek to sell, rent or otherwise transfer the domain name is absolutely false. The mails exchanged between the respondent and Ms. Mahalakshmi Gopalakrishnan (an employee/ of the complainant) makes it clear that the respondent was keen on selling the domain name.
5. Discussion and Findings
In accordance with ICANN Policy, the complainant asking for transfer of the domain name must prove the following three elements: (i) the respondent's 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 the domain name; and (iii) the respondent has registered the domain name and is using it in bad faith (ICANN Policy, para. 4 (a)).
For the first element, the complainant has to prove that 1) the complainant owns a trademark or a service mark; and 2) the respondent's domain name is identical or confusingly similar to said trade mark or service mark. Evidence shows that the complainant has a company name "eSpace Technologies Private Limited" and also holds a domain name "my-espace.com". However, the panel cannot find any evidence to prove that the complainant has registered any of the above names as trademark or service mark in any countries. It has been noticed that the complainant has submitted annex I and J showing a trademark application in India. But the applicant thereof is another entity, namely "Myespace.com.Private.Limited". Although the complainant alleges that the legal entity "Myespace.com Private Limited" was promoted by the very same promoters of the complainant, from legal perspective the complainant is not entitled to enjoy trademark right owned by another company. In addition, the complainant fails to prove that he has established a reputation for its company or its web site in the names "eSpace" or "Myespace". The sole fact that the term "espace" appears on the KPMG plan start page is not enough to establish such reputation. Therefore, they could not be regarded as well known marks which otherwise could enjoy a certain kind of protection under the non-registration condition. The judgment of Bombay High Court has been noticed with respect. However the panel believes that the relevant provisions of the ICANN Policy need to be strictly followed in this administrative proceeding, and feels that it lacks power to assert that "a domain name is entitled to equal protection as a trade mark". The panel holds that the complainant does not have trademark right or service mark right in the terms "eSpace" or "Myespace". Because of this holding, even if the contested domain name might be similar to the complainant's company name or domain name, the first element of ICANN Policy 4(a) has not been satisfied.
According to ICANN Policy 4(a), the Complainant must prove that each of the three elements is present in order to prevail. Because of the above discussion, the panel thinks that it is unnecessary to make judgment on whether the respondent has rights or legitimate interests in the domain name, and whether it has registered the domain name and is using it in bad faith. Even if the complainant could prove that the "no rights or legitimate interests" and the "bad faith" criteria are met in this case, the remedy provided by ICANN Policy administrative proceeding could not be obtained.
For the reasons stated above, the panel concludes that the complainant fails to prove that the domain name at issue is identical or confusingly similar to a trademark or service mark in which the complainant has rights, and that it is unnecessary to analyze the second and third elements of ICANN Policy, para. 4 (a). Therefore, the panel rejects the Complaint.
Signed this 27th day of August 2000 by the lead panelist Li Yong.
(s) Li Yong