ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
The Complainant is SurfControl plc (hereinafter the Complainant), a United States corporation, 100 Enterprise Way, Suite A110, Scotts Valley, CA 95066 U.S.A. The Complainant's Prime Contact is Tammy Gonsalves, 100 Enterprise Way, Suite A110, Scotts Valley, CA 95066, U.S.A. Telephone : (831) 431-1648; Fax : (831) 431-1058 ; e-mail : firstname.lastname@example.org
The Respondent is Multiview Solutions attn. Dr M. Krever (hereinafter the Respondent), Address: Caeciliastraat 18a, Leiden, Zuid-Holland, 2312 ZB, The Netherlands, represented by Rosemarie Davidse, Stibbe SMD, Adress: Strawinskylaan 2001, Amsterdam, Noord-Holland, 1077 ZZ The Netherlands. Telephone + + 31 20 5460 457 ; Fax: + + 31 20 5460 722 ; e-mail : email@example.com
The dispute concerns the domain Name "multiview.com" (hereinafter referred to as the Domain Name). The Registrar with whom the Domain Name is registered is Network Solutions Inc. (hereinafter the Registrar).
2. Procedural History
The Complaint submitted by Surf Control plc (hereinafter the Complaint) was received on October 11, 2000 (electronic version, hard copy and annexes) by the eResolution Centre (hereinafter the Centre).
Payment was received on November 6, 2000, after the initial 10-day delay to pay the applicable fees was extended by the Clerk's Office.
Upon receiving all the required information, eResolution's clerk then proceeded to:
ˇ Confirm the identity of the Registrar for the contested Domain Name;
ˇ Verify the Registrar's Whois Database and confirm all the essential contact information for the Respondent;
ˇ Verify whether the contested Domain Name related to an active Web page;
ˇ Verify whether the Complaint was administratively compliant.
And the Clerk of eResolution concluded that:
ˇ The Registrar is Network Solutions, inc.;
ˇ All the required contact information for the Respondent was found in the Whois database;
ˇ The contested Domain Name relates to an active Web page;
ˇ The Complaint is administratively compliant.
By email dated October 10, 2000, the eResolution Clerk's Office wrote to the Registrar to obtain confirmation and a copy of the Registration Agreement ; the requested information was received on October 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 (hereinafter referred to as the ICANN Rules). The Clerk's Office fulfilled all its responsibilities under paragraph 2 (a) by forwarding the Complaint to the Respondent, notifying the Complainant, the concerned Registrar and ICANN on November 7, 2000, this date being the official commencement date of the administrative proceeding.
The Respondent submitted its response, on November 27, 2000, via eResolution Internet site. The signed version of the response was received on November 28, 2000.
The Clerk's Office then contacted Mr. Jacques A. Léger, Q.C. on November 30, 2000 and inquired whether he would or could act as Panelist in this case.
On November 30, 2000, Mr. Jacques A. Léger, Q.C. accepted to act as Panelist in this case and on the same day filed the necessary Declaration of Independence and Impartiality. The Panel believes it was duly constituted in compliance with the ICANN Rules.
On December 4, 2000, a user name and a password was forwarded by the Clerk's Office to Mr. Jacques A. Léger, Q.C., allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.
On December 4, 2000, a notification was sent to the parties that Mr. Jacques A. Léger, Q.C. had been appointed and that a decision was to be, save exceptional circumstances, handed down on December 18, 2000. The Panel requested an extension of the delay to submit its decision to the Clerk's Office on December 18, 2000. The Clerk's Office responded affirmatively and granted an extension until December 21, 2000.
As the language of the Domain Name Registration is the English language and as the Complainant has filed his complaint in English, the proceeding will be led in English, according to paragraph 11 (a) of the Rules.
3. Factual Background
The Complainant has indicated that it has a division called Multiview.
The Respondent, through Dr Krever, developed in 1995 a logistic expert system at the CERN (European Organization for Nuclear Research in Switzerland). He started his company as Sirius Solutions in 1996. In 1997, Dr Krever filed for patents for that logistic expert system. A patent for Netherlands has been granted, while patents for the United States, Canada, Japan and the other European countries are still pending.
In 1997, being confronted with another company over the name Sirius, the Respondent decided to change its name to Multiview Solutions, a company name that was finally registered at the Chamber of Commerce in Leiden on July 1, 2000, even though it appears that the Respondent had already been using its new company name since 1997.
The Respondent registered the Domain Name multiview.com on April 6, 1998 with said Registrar and in 1999, Respondent created a "Multiview" logo.
On June 13, 2000, Respondent received a letter from JSB Technologies (a company linked with the Complainant) with the inquiry whether it would accept to sell to JSB Technologies the Domain Name ; and on June 14, 2000, Respondent received fax from the Complainant (in Dutch) which appears to be to the same effect. The Respondent did not respond to either communications.
On July 10, 2000, Respondent filed for a trademark registration for "Multiview" at the Benelux Trademark Office in Netherlands.
4. Parties' Contentions
Complainant alleges that it is the owner of the trademarks MULTIVIEW, MULTIVIEW CATALYST and MULTIVIEW ENTERPRISE. The Complainant alleges that he first filed the MULTIVIEW trademark in the United Kingdom on July 15, 1992 and subsequently filed it in several countries including the United States.
Complainant alleges that the Domain Name multiview.com is identical to the Complainant's trademarks MULTIVIEW, MULTIVIEW CATALYST and MULTIVIEW ENTERPRISE and that is likely to cause confusion with the Complainant's customers who would be using the Domain Name multiview.com, expecting to see the Complainant's MultiView division website and products.
The Complainant alleges that the Respondent has not demonstrated a connection between multiview.com and any of Respondent's products or businesses, nor has Respondent used multiview.com in connection with any products or businesses.
The Complainant alleges that it was the Respondent's responsibility to determine whether the Domain Name registration infringed upon or otherwise violates the rights of any third party. Furthermore, the Respondent has not demonstrated a connection between multiview.com and any of Respondent's products or businesses, nor has Respondent used multiview.com in connection with any product or business. Finally, the Complainant has admitted to having made several attempts to engage Respondent in discussions in connection with this matter, without a reply or acknowledgement from Respondent.
Consequently, Complainant requests an order for the transfer of the Domain Name registration.
The Respondent concedes that the trademark of the Complainant is identical or confusingly similar to the trademark, company name and Domain Name of the Respondent. However, respondent claims that its products and those of the Complainant are in completely different business areas, and that no confusion is likely to arise.
The Respondent alleges that the Complainant failed to demonstrate any proof of illegitimacy. Furthermore, the Respondent claims that it is obvious that it has openly shown its readiness to use the Domain Name multiview.com as well as the company name Multiview Solutions in connection with a bona fide offering of goods or services.
The Respondent alleges that it registered the Domain Name because it was the new name of its company, and that it was the first to register the Domain Name. The Respondent alleges that it has legitimate rights and interests, and hence that it is the legitimate owner of the Domain Name multiview.com.
Respondent alleges that the Complainant failed to prove that the Respondent did register and uses the Domain Name in bad faith. The Respondent alleges that:
(i) it was not aware of the fact that the Complainant had registered trademarks ; and that
(ii) the Complainant's argument that Respondent has not demonstrated a connection between multiview.com and any of Respondent products or business does not establish any evidence of bad faith.
The fact that the Respondent did not reply or acknowledge the Complainant's tentative discussion to buy the Domain Name in this matter does not establish bad faith.
Consequently, the Respondent requires the Complaint to be rejected.
5. Discussion and Findings
Pursuant to the Uniform Domain Name Dispute Resolution Policy (hereinafter the ICANN Policy) the Complainant must convince the panel of three elements if it wishes to have the Domain Name transferred. It is incumbent on the Complainant to show:
(i) That the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) That the Domain Name has been registered and is being used by the Respondent in bad faith.
After having reviewed the Complainant's allegations as well as all the evidence provided therewith, the Panel hereinafter considers each of these three elements below.
However, before analysing each of these three elements, the Panel wishes to make some general observations.
Paragraph 15 (a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
The word "and" is a conjunction hence the Panel shall not decide on a Complaint solely on the basis of the allegations submitted ; nor is it the burden of the Panel to seek the further evidence other than judicial knowledge as this may be disruptive of the Arbitration Process. Therefore, the burden rests on the parties to either support or sustain their allegations with appropriate documentation whenever possible.
Noteworthy, while the Policy and Rules clearly impose a burden of proof upon the Complainant, in the present matter, the Complainant did not provide any evidence supporting its statements except a home-made list of the trademarks that it allegedly owns. The Panel though is of the view that this document is in itself not sufficient to sustain the allegation, at least as it relates to ownership.
Furthermore, the statements made by the Complainant appear on their face to be incomplete and certainly not corroborated by any documentary evidence (other than the home-made list above). Therefore, the Panel has based its decision solely on the grounds of the statements and document submitted.
5.3 Identity or Confusing Similarity
According to paragraph 4 (a) (i) of the ICANN Policy, the Complainant must prove that the Domain Name is identical or confusingly similar to its trademark, and prove that it has rights in said trademark. From the statements and evidence presented, the Panel finds that the Domain Name multiview.com is identical or confusingly similar to the Complainant's alleged trademarks. However, the Complainant has failed to satisfactory show that it had rights, whether registered or not, in the trademarks MULTIVIEW, MULTIVIEW CATALYST and MULTIVIEW ENTERPRISE.
The Complainant has stated that it is the owner of the trademarks MULTIVIEW, MULTIVIEW CATALYST and MULTIVIEW ENTERPRISE, but it did not provide the Panel with any kind of evidence whatsoever supporting such fact ; indeed the only evidence presented supporting such allegation is a document issued by the Complainant itself and the Panel cannot and does not regard this document as satisfactory evidence supporting such allegation.
On that point, the Complainant needs not to prove rights in a registered trademark, as the Policy does not require that the Complainant must have rights to a "registered" trademark. However, in the absence of a registration, the Complainant has to be able to satisfy the Panel that it has sufficient rights which would give rise to an action for passing off. See Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235. In that matter, the Complainant did not provide evidence of use of those trademarks nor evidence showing substantial goodwill and reputation as well as secondary association of the trademarks with the Complainant.
Consequently, it is the Panel's view that the Complainant did not prove satisfactorily that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
5.4 Rights or Legitimate Interests
Paragraph 4 (a) (ii) of the ICANN Policy inquires as to whether or not the Respondent has any rights or legitimate interests vested in the Domain Name. Paragraph 4 (c) of the Policy illustrates how a Respondent can demonstrate rights or interest in the Domain Name at issue. This paragraph sets out three non-exhaustive examples, such as:
(i) before any notice to you of the dispute, your 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) you (as an individual, business or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the Domain Name, without intent for commercial gain to misleading divert consumers or to tarnish the trademark or service mark at issue.
In the case at hand, Respondent did show evidence of preparation to use the Domain Name in connection with its bona fide offering of goods and services before it received notice of this dispute.
While Respondent's company name was only registered at the Chamber of Commerce in Leiden on July 1, 2000, Respondent nevertheless started its use of the name Multiview Solutions in 1997, after it had been confronted by another company to change its name, at which point the Respondent changed its name from Sirius Solutions to Multiview Solutions. Therefore, the Panel finds on that point that the Respondent showed sufficient proof of use of its new company name before it was registered. Furthermore, Respondent provided the Panel with evidence of Patent registrations and applications in various countries, in 1997, as well as a Trademark application in 2000, from which an inference of good faith can be made.
In the absence of any proof to the contrary by the Complainant, it would appear that the Respondent's use of the Domain Name at issue is fair and not intended to divert customers or tarnish the trademark rights of the Complainant. Even though both parties are in the software business field, it appears from the evidence presented hereto that the parties commercial activities cover different fields of computer software. While the Complainant's products are directed towards the general public, the Respondent's products seem to be directed towards the manufacturing industries.
Respondent has directed Panel's attention to the fact that Complainant had voluntarily offered to buy Respondent's Domain Name, as shown in the letter presented by the Respondent. This situation is very unusual, in that in most known cases it is the Respondent who is trying to sell a Domain Name to the Complainant, and not vice-versa. The Respondent did not acknowledge or reply to the Complainant's letters requesting to purchase the Domain Name, thus indicating it did not have time nor interest in selling its Domain Name and certainly no negative inferences can be made against the Respondent.
Consequently, the Panel is of the view that the Complainant has not satisfied its burden of showing that Respondent did not have any rights or legitimate interest vested in the Domain Name.
5.5 Bad Faith
Pursuant to paragraph 4 (a) (iii) of the ICANN Policy it is incumbent upon the Complainant to prove that the Respondent has registered and is using the Domain Name in bad faith.
Paragraph 4 (b) of the ICANN Policy states:
"For the purposes of Paragraph 4 (a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain in bad faith:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the Domain Name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location."
There has been absolutely no evidence presented by Complainant before the Panel to show that the Respondent acquired the Domain Name to either sell it or otherwise transfer the registration to the complainant for a valuable consideration; not only did the Respondent not initiate contact with the Complainant, but more importantly, as noted above, when contacted by Complainant, the Respondent failed to reply.
While the Complainant has expressed the view that the Respondent has either tried to prevent the Complainant from reflecting the mark in a corresponding Domain Name, or attempted to disrupt the business of the Complainant, there has been no evidence showing or alluding to these allegations. Furthermore, as noted above, the Respondent's evidence seems to indicate that the products of the parties are different and are not intended towards the same kind of customers nor has the Respondent created or intended to create a likelihood of confusion with the Complainant's mark.
As the circumstances referred to above are not exhaustive, and absent evidence of any of the said circumstances, it was still open to the Complainant to show evidence that the Respondent acted in bad faith, due to other circumstances. However, Complainant chose not to do so. It is tried law that bad faith cannot be presumed in the absence of any proof of the contrary. Here again the Complainant has failed.
In light of the foregoing, the Administrative Panel therefore concludes that the Complainant has failed to meet its burden as required under each of the three elements under paragraph 4 (a) of the ICANN Policy.
Accordingly, the remedy sought in the Complaint is denied.
December 21, 2000
Montreal, (Quebec) CANADA
(s) Jacques A. Léger, Q.C.