ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. The Parties and Contested Domain Name
1.1 See caption above.
2. Procedural History
2.1 The electronic version of the Complaint form was filed on-line through eResolution's Website on September 13, 2000. The hardcopy of the Complaint Form and annexes were received on September 20, 2000. Payment was received on September 13, 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.
2.2 This inquiry lead the Clerk of eResolution to the following conclusions: the Registrar is Signature Domains, 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.
2.3 An email was sent to the Registrar by eResolution Clerk's Office to obtain confirmation and a copy of the Registration Agreement on September 13, 2000. The requested information was received September 15, 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 20, 2000. This date is the official commencement date of the administrative proceeding. All emails to the Respondent were successful. The faxes failed. The Respondent contacted the Clerk's Office on September 20, 2000 and confirmed email@example.com as his preferred communication address. His only other comment was that "the Complainant knows his position in this matter".
2.4 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. The Respondent did not submit a Response neither via eResolution's website nor a signed version. On October 12, 2000, the Clerk's Office contacted Mr. Jean François Buffoni, and requested that he act as panelist in this case. On October 16, 2000, Mr. Jean François Buffoni accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality. On October 16, 2000, the Clerk's Office forwarded a user name and a password to Mr. Jean François Buffoni, allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System. On October 16, 2000, the parties were notified that Mr. Jean François Buffoni had been appointed and that a decision was to be, save exceptional circumstances, handed down on October 29, 2000.
2.5 On October 25, 2000, the Panel granted a request by the Complainant to file additional information in accordance with article 12 of the ICANN Rules. At the same time, the Panel also requested further statements and documents. The Respondent was granted 7 days to reply if it so wished. The Complainant having filed its additional information on October 30, 2000, the Respondent had until November 6, 2000 to respond, which it failed to do. The 14-day period in which this Panel has to render its decision shall therefore expire on November 20, 2000.
3. Factual Background
3.1 The Complainant is a German non-profit organization of Munich whose existence is claimed to date back some 30 years. Once a year, the Complainant organizes a lottery for charitable purposes in the city of Munich. This event is commonly decribed as "Tombola für München" or as "München - Tombola" or, more concisely, "Tombola."
3.2 On January 7, 2000, the Respondent registered the contested name tombola.org. According to an uncontradicted statement by the Complainant, the web page corresponding to this domain name was announcing at the time of the filing of the Complaint that the site was still under construction.
3.3 On April 1, 2000, the Complainant contacted the Respondent by email, introducing itself as a welfare lottery in Germany and expressing an interest in acquiring the domain name tombola.org. Over a period of a few weeks, the parties exchanged emails over what price would satisfy both parties. In the end, no agreement was reached.
4. The Parties' Contentions
4.1 The Complainant asserts in essence:
(a) that the domain name tombola.org is identical or confusingly similar to its alleged trademark TOMBOLA;
(b) that the Respondent has no right or legitimate interests in respect of the domain name tombola.org in that the Respondent is not part of a non-profit organization which is named "Tombola" and its claim to be connected to some sort of welfare tombola appears to be a pretext;
(c) that the Respondent's domain name has been registered and is being used in bad faith in that the Respondent does not have anything to do with an organization named "Tombola" and it seems to have reserved the domain name for the sole purpose of making money.
4.2 In conclusion, the Complainant requests the panel to order the transfer of the domain name tombola.org from the Respondent to the Complainant.
4.3 Respondent has filed no response.
5. Discussion and Findings
5.1 Under the ICANN Policy paragraph 4(a), a complainant has the obligation to prove each of the following:
i. that the domain name at issue is identical or confusingly similar to the complainant's trademark;
ii. that the respondent has no rights or legitimate interests in the domain name; and
iii. that the domain name has been registered and is being used in bad faith.
5.2 If the complainant successfully proves all three elements of paragraph 4(a) of the ICANN Policy, then the panel has the authority under paragraph 4(i) to require the cancellation of the respondent's domain name registration, or to order that it be transferred to the complainant. Paragraph 14(b) of the ICANN Rules provides that if a party, in the absence of exceptional circumstances, does not comply with any provision of the Rules, the panel shall draw such inferences from such failure as it considers appropriate.
a. Identity or Confusing Similarity
5.3 Paragraph 4(a)(i) of the ICANN Policy requires that the domain name be identical or confusingly similar to the complainant's trademark.
5.4 It is obvious to the panel that the domain name tombola.org is identical or confusingly similar to the trademark TOMBOLA. However, the issue remains whether the Complainant owns trademark rights in "tombola." The common noun "tombola," a word of Italian origin, is defined by The Concise Oxford Dictionary, 1975, Clarendon Press, as a "kind of lottery." Besides the fact that the word "tombola" is part of the Complainant's registered name, the evidence shows no trademark registration for TOMBOLA, let alone a trademark registration in favor of the Complainant. The examples which the Complainant has provided of its uses of the word "tombola" seem to be of a mere generic nature. In that respect, the fact that the Complainant consistently uses the term "tombola"with a capital T is of no particular significance: it is well known that the initial letters of common nouns in the German language are capitalized. Besides, the Complainant has not shown that "tombola" has acquired secondary meaning or has otherwise become distinctive of its wares or services or organization. As a result, there is no evidence that trademark rights exist in "tombola" or, if they exist, that the Complainant actually owns or has acquired such rights.
5.5 The panel therefore finds that the test of paragraph 4(a)(i) of the ICANN Policy has not been satisfied.
b. Rights or Legitimate Interests
5.6 Paragraph 4(a)(ii) of the ICANN Policy raises the issue whether the respondent has any rights or legitimate interests in respect of the domain name.
5.7 In one of the email exchanges between the parties, the Respondent indicated that it intended to use its website in connection with an Internet lottery. The Complainant argues: "(the Respondent) claims to be connected to some sort of welfare-tombola, but that does seem to be an emergency-pretext." The Complainant however has presented no evidence to support that allegation. Apart from the above exchange, the evidence is scarce on the Respondent's rights or legitimate interests in the domain name or on how the Respondent proposes to use the domain name, the Complainant having indicated that the website in question was still under construction at the time of the filing of the Complaint and the Respondent having filed no response. In this regard, it is noteworthy that the evidence fails to show, and the Complainant admitted that it was unable to show, that the Respondent knew of the Complainant's organization or activities when it registered tombola.org. This fact, combined with the above determination that "tombola" is a generic common word, leads the panel to the conclusion that the Respondent's conduct falls under the example set out in paragraph 4(c)(i) of the ICANN Policy as demonstating its rights or legitimate interests in the domain name in issue.
5.8 The panel therefore finds that the test of paragraph 4(a)(ii) of the ICANN Policy has not been satisfied.
c. Bad Faith Registration and Use
5.9 Paragraph 4(a)(iii) raises the issue whether the domain name has been registered and is being used in bad faith.
5.10 In view of all the evidence before it, the panel finds that Complainant has not met its burden of proof. It is sometimes appropriate to draw an adverse inference from a respondent's failure to reply to the complaint and to articulate its rights or legitimate interests in the domain name in issue, especially when that domain name in issue consists of a famous mark or an unusual term. Such inference however should not be automatically drawn from the registration of a generic domain name. As was decided by a three-member panel in Microcell Solutions Inc. v. B-Seen Design Group Inc., eResolution number AF-0131, May 2, 2000,
Furthermore, registration of a common or generic name such as FIDO can hardly be considered indicative of bad faith, absent other factors (whereas registration of a an unusual term such as Vodaphone could, in itself, be considered suspicious, absent other factors). Even when a common name has become highly distinctive of a particular product because massive advertising has generated substantial secondary meaning, another party might legitimately register the common name because of its primary meaning.
5.11 Likewise, the registration by the Respondent of the common or generic name "tombola" can hardly be considered indicative of bad faith, absent other factors. This is especially true in the light of the fact that the Complainant has not shown that "tombola" has acquired secondary meaning or has otherwise become distinctive of its wares or services or organization.
5.12 Furthermore, as is mentioned above, the evidence totally fails to show that the Respondent knew of the Complainant's organization or activities when it registered tombola.org.
5.13 The panel therefore finds that the test of paragraph 4(a)(iii) of the ICANN Policy has not been satisfied.
For the above reasons, the panel concludes that Complainant has proven none of the three elements set forth in paragraph 4(a) of the ICANN Policy and decides that the remedy sought should not be granted.
MONTREAL (Quebec), Canada, November 17, 2000.
(s) Jean-François Buffoni