ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
The Complainant is Vinidex Pty Limited, a company registered under the Corporations Law of New South Wales, Australia, and whose office is located in Gordon, New South Wales. The Respondent is Mr Hubert Auinger, a resident of Switzerland. The contested domain name is vinidex.com; the Registrar is Melbourne IT.
2. Procedural History
The electronic version of the Complaint form was filed on-line through eResolution's Website on September 5, 2000. The hardcopies of the Complaint Form and annexes were received on September 11, 2000. Payment was received on September 8, 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 lead the Clerk of eResolution to the following conclusions: the Registrar is Melbourne IT, 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.
An email was sent to the Registrar by eResolution Clerk's Office to obtain confirmation and a copy of the Registration Agreement on September 5, 2000. The requested information was received on September 12, 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 September 12, 2000. This date is the official commencement date of the administrative proceeding.
Only email sent to email@example.com was returned 'undeliverable'.
The complaint, official notification and all of the annexes were sent via registered mail with proof of service, to the Respondent. According to the Canada Post tracking system, all were delivered.
On October 2, 2000, the Respondent submitted, via the eResolution Internet site, his response. The signed version of the response was received on the same date.
On October 4, 2000, the Clerk's Office contacted me, Mr. David Lametti, and requested that I act as panelist in this case.
On October 6, 2000, I, David Lametti, accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On October 6, 2000, the Clerk's Office forwarded a user name and a password to me, David Lametti, allowing me to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.
On October 6, 2000, the parties were notified that a «panelist» had been appointed and that a decision was to be, save exceptional circumstances, handed down on October 19, 2000.
3. Factual Background
Complainant Vinidex Pty Limited ["Vinidex"] is a company in New South Wales Australia which makes plastic pipes and other related products. Prior to August 3, 2000 it was known as Vinidex Tubemakers Pty Limited ["Vinidex Tubemakers"]. It has registered a number of trademarks for its products, including VINIDEX, VINIBOARD, VINIDEX HYDRO, VINICOR, and VINRIB. The mark VINIDEX itself is a registered trademark in a number of countries in Southeast Asia (D003008). The domain name
Respondent Auinger, was an employee of Vinidex Tubemakers between October 1, 1997 and November 20 1998 (D003016). He registered vinidex.com on September 30, 1999 (D003007).
On July 22, 2000, via email, the Respondent informed the Complainant (David Tarento) that Respondent was the registered domain name owner of vinidex.com, and that he was offering the name directly to the Complainant (D003011). After responding via email to Respondent Auinger on July 26, 2000, Complainant (Tarento) asked for more registration information on August 2, 2000, which he received that same day. Tarento then made an offer to pay Respondent Auinger an amount equivalent to the registration costs of the domain name and out of pocket expenses, to be determined. Alternatively he asked Respondent Auinger to state the amount he wanted. That email message received no immediate response, and the Complainant made two attempts to re-send it. The Respondent answered on August 22, 2000, having been away. The Respondent asked for $25,000 AUD (D003015) for transfer of the domain name. He also included a Powerpoint marketing presentation predicting that with online marketing the potential of vinidex.com would be $300,000 AUD. He offered his "assistance in marketing for both [sic] products, systems and online trading".
On August 25, 2000, Complainant registered vinidex.org and vinidex.net.
The complaint was lodged on-line through eResolution's Website on September 5, 2000.
4. Parties' Contentions
The Complainant alleges:
1.That the domain name vinidex.com is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, as per Policy paragraph 4(a)(i).
The Complainant owns many registered trade and service marks involving the mark "Vinidex", in numerous countries. The Complainant also has similar registered marks in Australia. The Complainant is also the registered owner and user of the domain name VINIDEX.COM.AU. The domain name in dispute, VINIDEX.COM is identical or confusingly similar to the "Vinidex" registered trademarks. The domain name in dispute is also identical the domain name registered to and used by Vinidex as an integral part of its day-to-day business, save for the ccTLD .au. The domain name in dispute is also identical to the actual name of the Complainant, Vinidex Pty Limited, except only for the company and liability designations. The domain name in dispute is also confusingly similar to Vinidex's name prior to the change to Vinidex Pty Limited, namely Vinidex Tubemakers Pty Limited.
2. That the Respondent has no rights or legitimate interests in the domain name, as per Policy paragraph 4(a) (ii).
The Complainant alleges that the Respondent has no business that uses the name "Vinidex. Moreover, while the domain name in dispute has been registered, no home page has ever been linked to the domain name. Finally, the Respondent is a former employee of Vinidex and knows or ought to have known about Vinidex's registered trade marks, Vinidex's registered domain name VINIDEX.COM.AU, the Vinidex Tubemakers Pty Limited name and that the Complainant was commonly known throughout the industry as "Vinidex".
3. That the Respondent registered the name in bad faith, as per Policy paragraph 4 (a) (iii).
The Complainant adduces evidence the Respondent asked for $25,000 to transfer the domain name to the Complainant, and that the Respondent offered the use of his services for a further $300,000. This is said to demonstrate that the Respondent's intention was for the Complainant to purchase the domain name in dispute primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant.
The Respondent, in turn, denies all of the following contentions:
1.Regarding copy or similarity, the Respondent contends that the domain name was originally registered to operate and service a website in the wine industry, and the word "vinidex" was in fact a short form of "vin index", something which a connoisseur of French wines would know.
2. Regarding illegitimacy, the Respondent repeats the claim that the purpose of the registration was the wine site. The Respondent also claims that a former manager of Vinidex Tubemakers told him in August 1997 that the company was not interested in the domain name. Finally, the Respondent claims no knowledge of the name change from Vinidex Tubemakers Pty Limited to the more generic Vinidex Pty Limited.
3. Regarding bad faith, the Respondent asserts that he has always had and still has a good professional and personal relationship with the Complainant and some of its employees. He further contends that he registered the name for purposes of the wine site, will only use it for that purpose in future, and that he never has had any intention to sell the name to anyone. The site was not developed because the Respondent moved overseas and did not have time to develop it; he Respondent claims he will develop it along the lines of his other unrelated websites, notably olivetrade.com. The sales price offer was negotiable and the Powerpoint marketing prospectus (containing the $300, 000 AUD figure) was meant to be a friendly gesture. This latter figure was meant to be a marketing prognosis. No harm has been done to the Complainant, nor was any intended.
Finally, the Respondent also claims that the registration did not impede the Complainant's subsequent registration of related .net and .org domain names after the initial correspondence with the Respondent.
5. Discussion and Findings
Identical or Confusingly Similar
The Complainant has the name "Vinidex" in its corporate name, duly registered under Australian law. While its present incorporated name is clearly centred around the name "Vinidex", the prior name was no less focussed. The word "tubemakers" is descriptive of the wares and services of the company, and it stands to reason that amongst its customers and competitors in the industry the Vinidex name would be the identifiable component of the moniker and would be certainly capable of acquiring secondary meaning for the purposes of trademark protection at common law. While Vinidex is likely to have acquired the necessary secondary meaning as the Complainant asserts indirectly - they were known in the industry as Vinidex even before the name change - only indirect proof is adduced: the company's registered trademarks go back to 1967. The period of time makes it likely that the Vinidex name had acquired secondary meaning. The decision need not turn on this point, however, since there were registered marks.
The stronger claim for confusion is based on registered trademarks. Here it is abundantly clear that Vinidex had a number of registered VINIDEX marks in many countries, dating back to 1967, as well as similar VINI- marks. The word "vinidex" is thus identical in both the marks and in the domain name at issue, and the registration constitutes and infringement of the Policy. It is clear that the domain name is also confusingly similar to the other names, whether one interprets "confusingly similar" in the Policy according to common law or statutory test for confusion in trademark infringement. Given the identical or close resemblance to the registered marks, the Respondent's claim that "vinidex" was intended for oenophiles has no merit as a defence to confusion.
The domain name is also virtually identical to the previously registered domain name vinidex.com.au.
The Panel thus concludes that the Complainant has proven the requirements of Policy paragraph 4(a) (i).
Rights or Legitimate Interest
The Respondent's claim that "vinidex" was meant to serve wine connoisseur, and was a contraction of "vin index". On the name itself, there is some plausibility to the contraction, although "vinindex" or "vindex" seem more intuitively plausible as they do not deform the French word "index". A conclusion need not to turn on this point, however. Rather, what is critical is that the Respondent has not developed this website or a any related wine service or trademark in the long period since registering the domain name. No steps were taken to develop any sort of website or enterprise. Indeed , the Respondent offered, on his own initiative, to sell the domain name to the Complainant before the Complainant even knew of the registration of the domain name by the Respondent. This leads to the conclusion that the Respondent never had any intention of creating a wine web site, and thus had no right or real interest in a word. Further, as a former employee of Vinidex Tubemakers, he knew or ought to have known "vinidex" was in use as an integral part of the corporate name (even at the time) and as a trademark: in short, the Respondent understood the legitimate interests and rights of Vinidex, and, by contrast, his own lack of interest or right. This is sufficient in my view for the Complainant to establish that the Respondent had no rights or interest in the domain name.
The Panel thus concludes that the Complainant has met the requirements of Policy paragraph 4 (a) (ii).
The Complainant's allegation falls under the rubric of paragraph 4 (a) (iii), according to the criterion articulated in paragraph 4 (b) (i): that the registration was undertaken primarily with purpose of selling the name to the Complainant.
The facts fit this scenario very closely. The Respondent was an employee of the Complainant, and registered the domain name after leaving its employ. The Respondent certainly knew the identification of the company was through the name "Vinidex": indeed, he referred to the company as "Vinidex" in his initial email offer of July 22, 2000. He also most certainly knew of the company products and trademarks, and likely knew of the company's vinidex.com.au by the time he registered the domain name vinidex.com. The Respondent offered to sell the name on his own initiative, contacting the Complainant before the Complainant knew of the registration. The Respondent asked for a large sum of money, and tried to persuade the Complainant, via the Powerpoint slides, that the transfer fee was worth it. The Respondent, as concluded above, showed no interest in developing a wine website or related service using the name. Given these circumstances, the Respondent's version of events is highly implausible; it is clear that he registered the domain name with the intention of trying to resell it to the Complainant at a later date. The Respondent also refused a reasonable counter-offer to buy the name for the price of costs incurred, an offer which he might have entertained if in fact it was true that he did not have the time to develop his own wine website.
The fact that there has been no harm as of yet -- presumably financial -- is irrelevant to the issue of bad faith: the intention seems clear, and it is sufficient to attract the label of bad faith. The mere fact that the registration has prevented the Complainant from registering its corporate name with the most well-known TLD in the world is potentially harmful enough.
The Panel thus concludes that the Complainant has met the criterion of Policy paragraph 4 (b) (i) and thus the requirements of Policy paragraph 4 (a) (iii).
The panelist concludes:
1. That the domain name vinidex.com is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
2. That the Respondent has no rights or legitimate interests in the domain name; and
3. That the Respondent has registered the domain name in bad faith.
Therefore, pursuant to paragraphs 4(i) of the Policy and the section 15 of the Rules , the Panel orders that the domain name vinidex.com be transferred to the Complainant.
Date: October 18, 2000
Montreal , Canada
(s) David Lametti