ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
Bata Limited, 59 Wynford Drive, Toronto, Ontario, M3C 1K3 Canada, a shoe manufacturer.
Srividhya Ganesh, P.O. Box 797, Diplomatic Area, Manama, Bahrain. She identified herself in the Response Form as the "Prime Contact or Representative" of Bubblegummers Technologies Ltd. (Under Incorporation).
The Contested Domain Name is: "bubblegummers.com"
2. Procedural History
The electronic version of the Complaint form was filed on-line through eResolution's Website on August 22, 2000. The hardcopy of the Complaint Form and annexes were received on August 25, 2000. Payment was received on August 29, 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 essential contact information for Respondent;
- Verify if the contested Domain Name resolved to an active Web page;
- Verify if the Complaint was administratively compliant.
This inquiry led the Clerk 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 active Web page and the Complaint is administratively compliant.
An email was sent to the Registrar by eResolution Clerk's Office to obtain confirmation and a copy of the Registration Agreement on August 24, 2000. The requested information was received August 24, 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's Office fulfilled all its responsibilities under Paragraph 2(a) in forwarding the Complaint to the Respondent, notifying the Complainant, the concerned Registrar and ICANN on August 29, 2000. This date is the official commencement date of the administrative proceedings.
The complaint, official notification and all the annexes were sent via registered mail with proof of service, to the respondent. According to the Canada Post tracking system, all were delivered.
Only the emails to the email@example.com were returned 'undeliverable'. The fax failed.
On September 17, 2000, the Respondent submitted, via eResolution Internet site, her response. The signed version of the response was received on September 22, 2000.
On September 27, 2000, the Clerk's Office contacted Ms. Christiane Feral-Schuhl, and requested that she acts as panelist in this case.
On September 29, 2000, Ms. Christiane Feral-Schuhl accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On September 29, 2000, the Clerk's Office forwarded a user name and a password to Ms. Christiane Feral-Schuhl, allowing her to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.
On September 29, 2000, the parties were notified that Ms. Christiane Feral-Schuhl had been appointed and that a decision was to be, save exceptional circumstances, handed down on October 12, 2000.
3. Factual Background
Bata Limited is the holder in the United States of America of the following registered trademark: Registration No. 1,179,259 BUBBLEGUMMERS registered on November 24, 1981. The Bata group filed approximately 230 worldwide pending applications and registrations of the BUBBLEGUMMERS trademark alone or in combination with other words.
Mrs. Srividhya Ganesh registered in her own name the domain name "bubblegummers.com" on January 25, 2000.
4. Parties' Contentions
The Complainant contends that the Respondent has registered a domain name identical to the trademark registered and used by the Complainant, that the Respondent has no rights or legitimate interests in respect of the domain name at issue, and that the Respondent has registered and is using the domain name in bad faith.
The Respondent refutes the Complainants assertions, and explains that she registered the domain name "Bubblegummers" with the intent of doing technology business through a company, still to be incorporated under the name "Bubblegummers Technologies Ltd.", and that she was unaware of the existence of any brand called "bubblegummers" when she registered.
5. Discussion and Findings
Complainant has the burden under section 4 of the Uniform Domain Name Dispute Resolution Policy (UDRP) of showing (A/) that the Respondent's domain name is identical to or confusingly similar to its trademark or service mark, (B/) that Respondent has no rights or legitimate interests in the domain name, and (C/) that Respondent has both registered and used the domain name in bad faith.
A/ Similarity of domain name to mark
The contentions developed by the Respondent in this section are irrelevant.
"bubblegummers.com" is indeed identical to, or confusingly similar to, the trademark "Bubblegummers", whether alone or in combination as trademark with the other words such as "and device", "and cat device"; "-Amy device"; ""-cat device"; "-Tim Device"; "and child device", etc.
B/ Respondent's rights or legitimate interests in the domain name
B.1 The UDRP provides that a registrant may demonstrate its rights or legitimate interest in its domain name by showing evidence of any of the following:
(i) before any notice to Respondent of the dispute, Respondent's 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) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate non-commercial 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.
B.2 The Complainant claims that the Respondent has no lawful right to use the name or trademark BUBBLEGUMMERS for any goods or services. The Complainant believes that the Contested Domain Name has been deliberately chosen and registered by the Respondent so as to refer to the BUBBLEGUMMERS trademarks of the Bata group companies and to falsely infer an association between the Respondent and Bata Limited which association does not exist in fact or in law.
The Complainant adds that the Respondent had no bona fide intention at the time of registration of the Contested Domain Name to use the Contested Domain Name for any legitimate purpose. The Complainant remarks that the Contested Domain Name has never pointed to a web page of substance and currently points to a web page which is "Under Construction". The Complainant has provided in annex to his Complaint a copy of the web page of the Contested Domain Name. The Complainant concludes that the Respondent's lack of intent to use the Contested Domain Name for any legitimate purpose and its sole use of the Contested Domain Name to link to a web page, which is "Under Construction", are illegitimate.
B.3 The Respondent states that the Complainant has made no factual showing in support of his allegations.
The Respondent explains that the internet technology services it is planning to provide in conjunction with the contested domain name constitute legitimate business interests. In that regard, the Respondent states, in essence, that by the very nature of the services it will render, she registered domain names "that incorporate the feeling and ambience of the work culture".
Further, the Respondent states that its proposed business does not compete at all with that of the Complainant; namely, making and selling shoes.
The Respondent alleges that the current relatively "unfavorable investment climate for technology start up companies" makes it difficult to obtain venture capital financing to fund the business plan. Consequent to the above, the Respondent has not been able to commence its operations as originally planned.
The Respondent takes exception of the allegation by the Complainant that several domain names are registered in the name of the Respondent with the intention of selling these domain names lack basis and rationale.
Furthermore, the Respondent claims that the Complainant has no trademark right to "bubblegummers" in the domicile, Bahrain, from where the registration of the domain name took place and consequently there is no question of illegitimacy as expounded by the complainant.
Hence, the Respondent concludes that, as evidenced by the above, she has a legitimate interest in the Contested Domain Name and did not acquire that name for any illegitimate business purpose.
B.4 The Panel notes that the Complainant has provided in annex to its Complaint a copy of the web page to which the Contested Domain Name gave access. The message on this web page read "Under Construction". The Panel finds, given that the Complainant is required to bring negative evidence, that is to say the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the domain name, that such evidence results from the said "under construction" message and from the lack of any piece of evidence that the Respondent engaged in any bona fide business in relation with the Contested Domain Name.
The registration by the Respondent of several other domain names leading to "under construction" websites appears to be irrelevant in the present case.
The Panel finds that Respondent's allegations that the internet technology services she is planning to provide in conjunction with the contested domain name may constitute legitimate business interests shall be rejected as not being documented at all. In addition, the Panel notes that the Respondent does not even define or explain what activity she exactly contemplated carrying on. She did not explain what would be the activity of the "to be incorporated" company, to be called "Bubblegummers Technologies Ltd". It appears to the Panel that a general statement such as "the intention at the time of registration is to develop a technology based business using Internet as a focal medium to capitalize on the rampant growth and adoption of Internet technology around the world. Bubblegummers Technologies Ltd. (to be incorporated) will focus on delivering technology solutions to today's web centric world" is not demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.
Furthermore, the Panel rejects Respondent's claim that the Complainant has no trademark right to "bubblegummers" in the domicile, Bahrain. As the Respondent is aware, the internet is a world wide web. By registering a domain name, and particularly a ".com" domain name, the Respondent implicitly made it potentially known and the related website accessible from anywhere in the world, including from those countries where the "Bubblegummers" trademarks are registered, thus placed herself in a position to be considered as having infringed the Complainant's trademarks rights. Also, the reservation of the domain name by the Respondent prevented the legitimate owner of the corresponding trademark to register the said trademark as a domain name for its commercial activity. The domicile of the Respondent at the time of the registration is irrelevant with regard to the supra-national nature of the internet. It can be added that the Respondent herself, when describing the purported activity of its company to be created, emphasized the international nature of such activity.
The Panel concludes that the Respondent has no rights or legitimate interests in respect of the domain name.
C/ Bad faith Registration and Use
C.1 Paragraph 4(b) of the UDRP describes the following circumstances as probative of a registrant's bad faith:
(i) circumstances indicating that he 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 his documented out-of-pocket costs directly related to the domain name; or
(ii) he has 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 he has engaged in a pattern of such conduct; or
(iii) he has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, he has intentionally attempted to attract, for commercial gain, Internet users to his 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 his web site or location or of a product or service on his web site or location.
C.2 By letter dated April 18, 2000, Bata Limited requested from the Respondent a transfer of the domain name "bubblegummers.com" and offered to reimburse the Respondent for her out-of-pocket expenses in connection with signing the Respondent Name Change Agreement form before a Notary Public (as required by Network Solutions Inc.). The Respondent replied by an e-mail of June 8, 2000 and requested payment of the sum of US$300,000 to compensate for expenses allegedly incurred by the Respondent in connection with the development of a business associated with the "bubblegummers.com" domain name (as per the "company"'s incurred "various development expenditures" and its "needs to consider building its business on an alternative brand name."). By email dated June 20, 2000, Bata Limited sought clarification of the Respondent's position. By email on June 21, 2000, the Respondent reaffirmed her position that she required payment of US$300,000 to assign the domain name.
In her Response Form, the Respondent recognized that she requested for a payment of US $300,000 "as a compensation for certain costs involved in proposed business model using bubblegummers.com considering the unfriendly investment climate for technology start ups and the conscious need to trade off for a new brand to resolve the short term unfavorable business climate."
The Panel notes that the Respondent's claim that she has incurred expenses totaling US$300,000 has never been documented nor have any details whatsoever been provided in that respect.
In addition, the Panel believes that if the Respondent incurred any out-of-pocket costs over and above the costs of registering the domain name, then such out-of-pocket costs are far less than the Respondent's unsubstantiated demand of US$300,000.
The Panel concludes that the Respondent has registered the domain name primarily for the purpose of selling it to the Complainant who is the owner of the trademark for valuable consideration in excess of her documented out-of-pocket costs directly related to the domain name.
The Respondent's bad faith is confirmed by her statement in her e-mail of June 21, 2000 that she has not even thought of listing this domain name in domain names auction sites "in order to try to achieve a higher bid". It ensues from this statement that if the Respondent did not place the domain name at auction to achieve a higher bid, she considered she had already achieved a bid with the Complainant, at the price of US$300,000.
Accordingly, the Respondent stated in her Response Form that her "action of seeking compensation under the circumstances involved is pure legal commercial transaction".
Furthermore, the Respondent vainly alleges that she made no "active use" of the domain name, as she was indeed carrying no commercial activity. The Panel notes however that although the bad faith registration and use in paragraph 4(a)(iii) is stated in the conjunctive, the three circumstances in paragraph 4(b) refer to registrations for illegitimate purposes as evidence of both registration and use in bad faith, since such illegitimate purposes can be accomplished merely by passively holding a domain name. The Panel believes that the Respondent has engaged in the activity of maintaining the Contested Domain Name dormant, as she has acknowledged it herself (the panel also notes that she acknowledged the same in her Response Form for another domain name, "spincycle.com").
As the Respondent carries on no business, the registration of the "bubblegummers.com" domain name serves no commercial purpose other than to preclude the registration of this domain name by the lawful owner of the "Bubblegummers" trademark.
The Complainant has demonstrated bad faith registration, as well as bad faith use.
For all the foregoing reasons, the Panel decides that the Complainant has demonstrated that the domain name "bubblegummers.com" registered by the Respondent is identical or confusingly similar to the trademark "Bubblegummers" in which the Complainant has rights, and that the Respondent has no rights or legitimate interests in respect of the domain name "bubblegummers.com", and that the Respondent has registered in bad faith and used in bad faith the domain name "bubblegummers.com", in accordance with the provisions of the UDRP.
In conclusion, the Panel decides to transfer the domain name "bubblegummers.com" to the Complainant.
October 12, 2000
(s) Christiane Feral-Schuhl