ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
The Complainant is Eicon Technology Corporation, located at 9800 Cavendish Boulevard, Montreal, Quebec H4M 2V9, Canada.
The Respondent is Aviva Information Services, located at 2853 Wealt Jolly Road, Okemos, (MI) U.S.A.
The Domain Name in dispute is " aviva.com"
2. Procedural History
The electronic version of the Complaint form was filed on-line through eResolution's Website on September 5, 2000. The hardcopy of the Complaint Form and annexes were received on September 19, 2000. Although payment was received on September 12, 2000, confirmation was only received on September 28, 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 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 September 6, 2000. The requested information was received September 6, 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 28, 2000. This date is the official commencement date of the administrative proceeding.
Only the emails to the email@example.com were returned 'undeliverable'.
The complaint, official notification and all the annexes were sent to the respondent via registered mail with proof of service. According to the Canada Post tracking system, all were delivered.
On October 17, 2000, the Respondent submitted his response in electronic format. The signed version of the response was received on October 18, 2000.
On October 20, 2000, the Clerk's Office contacted Mr. Mauricio Jaramillo, and requested that he act as panelist in this case.
On October 20, 2000, Mr. Mauricio Jaramillo, accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On October 20, 2000, the Clerk's Office forwarded a user name and a password to Mr. Mauricio Jaramillo, allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.
On October 20, 2000, the parties were notified that Mr. Mauricio Jaramillo had been appointed and that a decision was to be, save exceptional circumstances, handed down on November 2, 2000.
3. Factual Background
3.1. The Complainant is the owner of the following registered trademarks (hereinafter "The Trademarks")
- European Community trademark AVIVA Reg. No. 26765, covering "32 BIT TERMINAL EMULATION SOFTWARE USED TO ACCESS HOST APPLICATION FROM PERSONAL COMPUTER, in class 9, registration date April 1st, 1996, claiming priority form January 25, 1996.
- Canadian trademark AVIVA, Reg. No.TMA489, 969, covering "32 BIT TERMINAL EMULATION SOFTWARE USED TO ACCESS HOST APPLICATION FROM PERSONAL COMPUTER, in class 9", filed on January 25, 1996 and registered on February 13, 1998
- U.S. trademark AVIVA, Reg. No. 2,209, 958, covering "32 BIT TERMINAL EMULATION SOFTWARE USED TO ACCESS HOST APPLICATION FROM PERSONAL COMPUTER, in class 9 (U.s. CLS. 21, 23, 26, 36, and 38)", filed claiming priority of January 25, 1996, registered on December 15, 1998.
3.2. The domain name "aviva.com" (hereinafter "The Domain Name") was registered on April 13, 1996.
4. Parties' Contentions
Eicon Technology Corporation, (hereinafter "The Complainant") requests the Transfer of The Domain Name to the Complainant.
The Complainant contends that The Domain Name is identical to its Trademarks.
The Complainant contends that Aviva Information Services (hereinafter "The Respondent") has no legitimate interest in The Domain Name, because it is not an operating company and The Domain Name does not point to any web site.
The Complainant contends that The Domain Name was registered and is used in bad faith, because the Respondent registered it less than one (1) month after Complainant began the commercialization of its products with the trademark AVIVA. Complainant also contends that AJ Boggs System Integration Services is a company dedicated to the e-business and consequently its goods and services are related to product offered by Complainant with its trademarks.
The Respondent does not dispute that the Trademarks owned by Complainant are similar to The domain Name, but contends that the Complainant has no exclusive right on the trademark, considering that there exists several US and Canadian trademark registrations for the trademark AVIVA in different classes of goods and services.
The Respondent contends that it has legitimate interest in The Domain Name, because at the time of the domain name registration its principals had never heard of the Trademarks and its intention is to use the domain for a web page of the company AVIVA LP, dedicated to holding, selling, and trading of securities or other investment interests, services that are clearly different than the Complainants.
The Respondent asserts that it has not registered The Domain Name in bad faith because it has not registered The Domain Name in order to sell it to Complainant, additionally, the parties are not competitors and have no interest in attracting, for commercial gain, internet users to its website by creating a likelihood of confusion with the Complainant's Trademarks.
5. Discussion and Findings
Section 4(a) of the ICANN's UDRP provides that in order to obtain the transfer a domain name, the Complainant must prove the following elements:
- the domain names is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name has been registered and is being used in bad faith.
5.1. Identity or confusingly similarity
The panel finds that it is clear that the domain name aviva.com is identical to the registered Trademarks owned by Complainant.
According to this Panel, the first requirement is satisfied.
5.2. Rights or legitimate interests of the Respondent
The Respondent has submitted proof of its interest in the use of The Domain Name as a web page for the company AVIVA L.P., a Michigan Limited Partnership. Despite the fact that the name of the company is identical to the Trademarks, its services are substantially different to the goods or services protected by Complainant. The Complainant has not proved that The Trademarks are sufficiently well known for the Panel to consider granting them special protection.
Despite the fact that the proof submitted is dated in September 1999, the Panel considers that it proves the Respondent's legitimate interest in The Domain Name, because it proves an actual interest in using The Domain Name for services substantially different than the goods protected by The Trademarks. The Respondent has demonstrated a real intention to establish a company with the name AVIVA L.P, and the Panel considers that it grants a legitimate interest to Respondent to reflect its name in a web page.
According to this Panel, the second requirement is not satisfied.
5.3. Registration and use in bad faith
The ICANN's UDRP provides that in order to obtain the transfer of a domain name, the Complainant must prove all four elements mentioned above. Considering that the Second element was not proved, the Panel considers that it is not necessary to analyze the potential registration or use in bad faith.
For the reasons set forth above, the Complainant's request to transfer the domain name aviva.com to the Complainant is rejected.
Dated November 1st, 2000 at Bogotá D.C., Colombia.
(s) Mauricio Jaramillo C.