ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
Parties and Contested Domain Name
The parties in this case are Ozone Community Corporation as Complainant and Djordje Vuckovic as Respondent. There is one contested domain name: hystericglamour.com. The Registrar is Network Solutions Inc.
2. Procedural History
This is a mandatory administrative proceeding submitted for decision in accordance with the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (the "Rules") and the eResolution Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
By registering the subject domain name with the Registrar, the Respondent agreed to the resolution of disputes pursuant to the Policy and Rules.
The electronic version of the Complaint form was filed on-line through eResolution's Website on February 2, 2001. The hardcopy of the Complaint Form and annexes were received on February 6, 2001. Payment was received on February 9, 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 led 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 February 2, 2001. The requested information was received on February 5, 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 February 13, 2001. This date is the official commencement date of the administrative proceeding.
All 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.
On March 1st, 2001, the Respondent submitted, via eResolution Internet site, his response. The signed version of the response was received on March 5, 2001.
On March 8, 2001, the Clerk's Office contacted Mr. Edward Chiasson Q.C. and requested that he acts as panelist in this case.
On March 9, 2001, Mr. Chiasson, accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On March 12, 2001, the Clerk's Office forwarded a user name and a password to Mr. Chiasson, allowing him to access the Complaint Form, the Response Form and the evidence through eResolution's Automated Docket Management System.
On March 12, 2001, the parties were notified that Mr. Chiasson had been appointed and that a decision was to be, save exceptional circumstances, handed down on March 26, 2001.
By communication dated March 12, 2001, the Complainant delivered an Argument in Rebuttal of Respondent's Response. The panelist agreed to accept the document on the basis that the Respondent could deliver a limited response by a fixed date.
Further comments by the Respondent were delivered in a document dated March 23, 2001.
The time for delivering this decision was extended to April 9, 2001.
Having reviewed the record in this case, the Administrative Panel is satified that all technical requirements for the prosecution of this proceeding were met.
3. Factual Background
The following information is derived from the Complaint.
The Complainant has registered the words HYSTERIC GLAMOUR under United States' Reg. No. 2,166,995).
The mark HYSTERIC GLAMOUR is used in connection with necklaces, in Int. Class 014; notebooks and binders, in Int. Class 016; leather and tote bags, wallets, waist packs, fanny packs, tote bags, wasit packs and fanny packs made of canvas, denim, nylon or vinyl, in Int. Class 018; beverage glassware, in Int. Class 021; handkerchiefs, in Int. Class 024; clothing, namely, tops, tank tops, shirts, t-shirts, sweatshirts, cardigans, sweaters, jackets, coats, vests, bottoms, pants, trousers, jeans, sweatpants, leggings, shorts, skorts, rompers, jumpsuits, overalls, skirts, dresses, jumpers, leotards, tights, underwear, sleepwear, sleep shirts, pajamas, robes, nightgowns, footwear, shoes, boots, sandals, slippers, slipper socks, socks, hosiery, bandannas, neckerchieves, mufflers, caps and hats, head bands, gloves, belts, in Int. Class 025; and cigarette lighters not of precious metal, in Int. Class 034.
The Complainant also is the owner of the currently valid Hong Kong Trademark Registrations, each for the mark HYSTERIC GLAMOUR: Reg. No. 4791/2000 for International Class 014; 4792/2000 for International Class 018; 4793/2000 for International Class 021; 4794/2000 for International Class 024; 866/2000 for International Class 025; 4795/2000 for International Class 026; 4796/2000 for International Class 028.
The Respondent registered the subject domain name on January 20, 2000. It has remained dormant.
The Complainant has used its mark HYSTERIC GLAMOUR worldwide on a wide spectrum of goods and has established substantial and valuable goodwill in it through extensive promotion and use.
The following information is derived from the Response.
The name was invented by the Respondent in the late 1980's. Because the Respondent wanted to secure it for past, actual and future business, he planned to register the name officially in the Federal Republic of Germany in 1998 and made application to do so that year. It was registered in the Federal Republic of Germany in 1999 for the following branches or events: all kinds of sound media, all kinds of picture media, clothes, shoes, headgear, organization of public events especially music and fashion shows, music production, Movie- and TV-Production, cultural events especially public parties.
The Resondent registered the subject domain name because it needs it to do business on the internet.
The Respondent had not heard of the Complainant until it was contacted by the Complainant in the context of this proceeding.
In reply, the Complainant notes that the registration of its marks in the United States pre-dates the Respondent's German registration. It also states that its mark is registered in European jurisdictions and is known in Europe, notwithstanding the Respondent's assertion that he had not heard of the Complainant prior to this matter. The Complainant also notes that the Respondent provided no evidence of actual use of the subject domain name.
The Respondent further comments that the Complainant does not have registered rights in Germany and provides information concerning the Respondent's commercial activities in Germany. Some official documentation was filed. The Resondent denies that he has any intention of selling the subject domain name to the Complainant or to anyone else.
4. Parties' Contentions
Copy or Similarity
The Respondent's domain name is confusingly similar to the Complainant's registered mark because it is substantially identical to the Complainant's registered mark in sight, sound and meaning.
The Respondent should be considered as having no rights or legitimate interest in respect of the subject domain name because the domain site remains dormant and unused and the Respondent has not used the domain name in connection with any goods or services.
Circumstances indicate that the domain name was registered by the Respondent primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant for valuable consideration in excess of the Respondent's out-of-pocket costs directly related to the domain name.
Alternatively, circumstances indicate that the Respondent registered the domain name primarily for the purpose of disrupting the business of the Complainant.
Copy or Similarity
The Respondent denies that he registered the subject domain name to copy any interests of the Complainant.
The Respondent says that his brand is active in Germany and that he intends to use the subject domain name for his business there.
The Respondent contends that the name was invented by him in the late 1980's, that he needs the subject domain name to do business on the internet and that he has no interest in selling the subject domain name.
5. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove that:
(i) a domain name is identical or confusingly similar to a service mark to which the Complainant has rights;
(ii) the Respondent has no legitimate interest in respect of the domain name;
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:
(i) circumstances that indicate that the Respondent has registered or has 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 the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the domain name;
(ii) registration of 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 the Respondent has engaged in a pattern of such conduct;
(iii) registration of the domain name primarily for the purpose of disrupting the business of a competitor;
(iv) by using the domain name, intentionally attempting to attract, for commercial gain, Internet users to the Respondent's 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 the web site or location or of a product or service on the web or location.
These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.
The resolution of this dispute takes place in the context of a consideration of the requirements of paragraph 4(a) of the Policy.
Identical or Confusing
The Complainant has rights to the words HYSTERIC GLAMOUR. The subject domain name is identical save for the addition of .com.
It is not the function of an administrative panel in an ICANN domain name dispute to resolve disputed claims to intellectual property rights. The threshold question is whether the Complainant has established a right and that a domain name is identical to or confusingly similar to that right.
The inquiry is objective. The subjective intention or lack thereof of a respondent to encroach on the rights of a complainant is not relevant.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i).
The main thrust of the Complainant's contention of a lack of legitimate interest is the fact that the Respondent has made no commercial use of the subject domain name. The Respondent has stated why he registered the subject domain name and expressed his intention for its use. There is no reliable evidence which rebuts the Respondent's contentions.
The Administrative Panel is not satisfied that the Complainant has met the requirements of paragraph 4(a)(ii).
The Complainant states that the circumstances of the case support a conclusion of bad faith based on an inference that the Respondent registered the subject domain name for the purpose of selling it or of disrupting the Complainant's business.
The Respondent specifically denies an intention to sell the subject domain name and the Complainant offers no evidence to the contrary. There is an absence of evidence of the usual exchange of communications between a complainant and a respondent concerning the use and registration of a domain name. No request for compensation has been made.
As to disruption, there is no evidence to support the allegation. Although the Complainant says that it is active in Europe, it provides no information that links that activity or any interference with it to the Respondent. In addition, the parties appear to be in completely different businesses which militates against an intention by the Respondent to disrupt the business of the Complainant.
The Administrative Panel is not satisfied that the Complainant has met the requirements of paragraph 4(a)(iii).
The Complainant has not established its case. The Complaint is dismissed.
Vancouver, British Columbia, Canada, April 5, 2001
(s) Edward Chiasson