ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
2. Procedural History
As referenced by the eResolution Clerk' Office, in Memorandum dated February 23, 2001, the electronic version of the Complaint form was filed on-line through eResolution's Website on January 16, 2001. The hardcopy of the Complaint Form and annexes were received on January 19, 2001. Payment was received on January 29, 2001.
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 January 16, 2001. The requested information was received on January 18, 2001.
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 January 29, 2001. This date is the official commencement date of the administrative proceeding.
Only the emails to the email@example.com and to the administrative contact were not returned. All the faxes were successful.
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.
The Respondent did not submit a Response neither via eResolution's website nor a signed version.
On February 19, 2001, the Clerk's Office contacted the undersigned, and requested that I act as panelist in this case.
On February 23, 2001, I accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On February 23, 2001, the Clerk's Office forwarded a user name and a password to the undersigned, allowing me to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.
On February 23, 2001, the parties were notified that I had been appointed and that a decision was to be, save exceptional circumstances, handed down on March 8, 2001.
On March 8, 2001, the parties were notified tha the Panel will hand down its decision on March 12, 2001.
Neither Complainant nor Respondent have made any attempt to establish communication, directly or indirectly, with the Panel.
3. Factual Background
a) Respondent registered the domain name "avvillas.com" with Network Solutions, Inc. (NSI) As to the date of the registration of the contested domain name, this Panel submits to the information contained in the Complaint, according to Section 5(e) of ICANN Rules. As per the referenced information, the domain name "avvillas.com" was registered by Respondent with NSI on January 29, 2000.
b) Complainant has submitted evidence (Annex 1 of the Complaint) of trademark registrations in its own name for the service mark "AV VILLAS" and design. These marks are registered with the Colombian Patent and Trademark Office to cover services in International Classes 35 and 36. The relevant decisions granting the said trademark registrations, i.e. 20067, 20068, 21078 and 20082 were issued on August 24, 2000. The filing of these trademark applications took place before January 29, 2000, according to Complainant's statements of fact.
c) Complainant has also submitted evidence that "Corporacion de Ahorro y Vivienda AV Villas", a corporate name resulting from the merger of two entities, was a fact of public domain. There is evidence also regarding the information available to the public concerning the merger process, the activities of the corporation resulting from the merger, and the size and importance of Corporación de Ahorro y Vivienda Las Villas, one of the merged entities.
d) As Annex 5 to the Complaint, Complainant submits evidence regarding Respondent's contacts with Complainant in an attempt to sell the contested domain name. E-mail printouts show that Respondent: (i) on 15 November 2000 contacted the Complainant expressing intent to sell the contested domain name registration; (ii) on November 28, 2000 contacted the Complainant proposing specific terms on the proposed domain name transfer transaction. On this occasion, Respondent asked for US $10,000 as a consideration for the transfer; (iii) on 15 December 2000, in an e-mail addressed to Complainant, stated that the domain name has not been used; rather, it has been linked to avvillas.com.co (Complainant's web site) due, as the communication reads, to the latter's interest in acquiring the contested domain name.
4. Parties' Contentions
Complainant submits that the contested domain name is virtually identical to Complainant's registered service marks AVVILLAS [sic] in international classes 35 and 36, and identical to the applications for service marks AVVILLAS.COM in international classes 35 and 38. That the Domain Name is also virtually identical to both complainant's domain name avvillas.com.co and complainant's corporate name CORPORACION DE AHORRO Y VIVIENDA AV VILLAS. On the claim regarding illegitimacy, Complainant submits that Respondent has neither used the domain name nor initiated or prepared to initiate the bona fide offering of goods or services. Complainant submits that Respondent is not known as AVVILLAS, neither as an individual nor as a business. Regarding Bath Faith, Complainant alleges that AV VILLAS is a well known mark, which Respondent did know at the time the latter sought and obtained registration of the contested domain name, which registration was obtained knowingly that a third party had legitimate interest in using the contested domain name, and with the purpose of selling the registration to said third party.
According to the eResolution Clerk's Office Memorandum on Procedural History, this Panel is proceeding under the assumption that Respondent has not responded to the Complaint, nor has he filed any evidence or information.
5. Discussion and Findings
Section 4(a) of ICANN Policy sets forth the grounds on which a domain name registration can be challenged, namely (i) that the contested domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) that the registrant 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 in bath faith.
First, as a factual matter, there can be no doubt that the contested domain name is confusingly similar to Complainant's trademark rights. This is a self-sustainable finding of fact, which needs no further demonstration.
Second, regarding illegitimacy, there is specific evidence that the Respondent has not used at all the contested Domain Name (4.c.i, ICANN Policy), which evidence has been submitted by Complainant as Annex 5. On the other hand, there is no evidence that the Respondent is or has been commonly known by the domain name (4.c.ii, ICANN Policy), nor is there any evidence of any legitimate, non-commercial or fair use by Respondent (4.c.iii, ICANN Policy). Besides the fact that none of the criteria set forth in section 4.c of ICANN Policy are met, there are specific facts that would indicate the lack of a legitimate interest by Respondent in the domain name, which facts are discussed bellow.
The third issue relates to bath faith. As discussed in point 3.d. of this Decision, it is beyond dispute -since Respondent has so admitted in correspondence with Complainant, provided as Annex 5- that Respondent has not used at all the contested domain name and that Respondent has approached the Complainant with a clear and explicit intent to sell the contested domain name. Nothing indicates that Respondent, in registering avvillas.com with NSI had any meaningful purpose other than trading the domain name registration with Complainant, whose activities were of such nature and scope as to make it difficult to believe that Respondent had no knowledge of them, nor of the name at issue, or that Respondent couldn't have ignored of said name and activities without gross negligence on his part. Section 4.b. of ICANN Policy provides that:
"…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 name in bath 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 …"
This Panel can hardly think of factual circumstances that fit more perfectly into the above quoted provision than the ones present in this case. The email communications sent by Respondent to Complainant, (attached as Annex 5 to the Complaint form) leave no doubt as to (i) the fact that Respondent has not used the domain name registration; (ii) the fact that Respondent took the initiative in addressing Complainant with a domain name transfer proposal; (iii) the fact that Respondent was well aware of the Complainant's corporate name when so doing; (iv) the fact that Respondent tried to sell the domain name registration to Complainant at a price way beyond reasonable out-of-pocket costs directly related to the domain name. These facts lead the panel to conclude that the criteria set forth in Section 4.b.(i) have been met, and therefore, to state that Complainant has demonstrated that the contested domain name was registered and used in bath faith.
The Panel believes it convenient to add that a pricing issue, such as whether the price asked is or not in excess of out-of-pocket expenses directly related to the domain name, is irrelevant in determining, as a concept, whether there is bad faith, since the registration of a domain name knowingly that a third party has or may have legitimate interests on the domain name or a better right than that of the registrant, is contrary to fair practices regardless of the price asked when trading a domain name so viciously obtained.
Due to these findings, the Panel doesn't consider it necessary to analyze other submissions in connection with the bad faith allegation, which wouldn't change the conclusions.
Based on the above findings of fact and of law, this Panel estimates that the Complainant's submissions have been properly substantiated, and that the Complainant is entitled to the remedy sought in its Complaint. It is therefore decided that the contested domain name, i.e. avvillas.com, registered in the name of Respondent, shall be transferred to the Complainant, pursuant to Section 4.i of ICANN Policy.
Given in Quito, Ecuador, the 12th of March, 2001.
(s) Bernardo Tobar Carrión