ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
Complainant (hereinafter the "Complainant") is Millard Brown Limited,
a company incorporated under the law of the United Kingdom with address at
Broadwall House, 21 Broadwall, SE1 9PL London, United Kingdom. This company is
represented by Stephen Sampson with offices at 7 Devonshire Square, EC2M 4YH,
London, United Kingdom.
respondent (hereinafter the "Respondent") is Fabio Madonia, with
address at C. so Valentino 73, Casale Monferrato 15033, Italy.
The domain name at issue is "mbprecis.com" (hereinafter the "Domain Name") ,registered with Internet Domain Registrars on 16 December, 1999.
2. Procedural history
The electronic version of the Complaint Form was filed on-line trough eResolution's website on April 9, 2001. The hardcopy of the Complaint Form and the annexes were received on April 17, 2001. Confirmation of payment was received on April 11, 2001
Upon receiving all the required
information, eResolution's Clerk:
- verified the Registrar's Whois Database and confirmed all the essential contact information for the Respondent;
the identity of the Registrar for the contested Domain Name;
- verified if the contested
Domain Name resolved to an active Web page;
- verified if the Complaint was administratively compliant.
The inquiry leads the Clerk of eResolution to the following conclusions: the Registrar is Internet Domain Registrars, 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 April 12, 2001. The
requested information was received on April 12, 2001.
The Clerk then sent a copy of the
Complaint Form and the required Cover Sheet to the Respondent 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
April 19, 2001. This date is the official commencement date of the
All emails were
successfully delivered. The faxes sent to Respondent could not be delivered.
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 Response was due
by May 8, 2001. However, the Respondent did not submit a response neither via
eResolution’s website nor a signed version.
May 9, 2001, the Clerk’s Office contacted Mr. Geert Glas, and requested
that he acts as panelist in this case.
11, 2001, Mr. Geert Glas
accepted to act as panelist in this case and filed the necessary Declaration of
Independence and Impartiality.
11, 2001, the Clerk’s Office
forwarded a user name and a password to Mr. Geert Glas,
allowing him to access the Complaint Form and the evidence through
eResolution’s Automated Docket Management System.
11, 2001, the parties were
notified that Mr. Geert Glas
had been appointed and that a decision was to be, save exceptional
circumstances, handed down on May 24, 2001.
On May 14, 2001, the Respondent sent
eResolution's clerk an email requesting an extension to file the Response Form,
in view of the fact that the Respondent would have wrongly calculated the
deadline by which it had to file a Response.
On the same day, the clerk transmitted
this request to the Complainant and to Mr. Geert Glas.
On May 16, 2001 the Panel sent the
eResolution's clerk by email its position regarding such an extension to file
the Response Form, finding that no valid justification for such extension had
been provided and that the extension could therefore not be granted.
3. Factual Backgrounds
The Complainant is a company that
measures media profile of companies through an evolved media analysis system
allowing them to better manage their perception by the public.
The Complainant registered the trademark
"PRECIS" in the United Kingdom for goods and services of classes 9,
16, 35 on October 29, 1998.
On 23 March, 1998 the Complainant hired
the Respondent as a Systems Administrator reporting to the Technical Director.
On 16 December, 1999 whilst in the
course of employment with the Complainant, the Respondent registered the Domain
Name with Internet Domain Registrar on the Complainant's behalf.
The website linked to the Domain Name is
the official website of the Complainant describing the activities of its
business to the interested public.
According to the Complainant, the
Respondent ceased to be employed by the Complainant in May or June 2000. The
Respondent however failed to transfer the Domain Name to the Complainant.
appears from Registrars' Whois database that today the Respondent is still
recorded as the registrant of the Domain Name.
4. Parties' Contentions
Complainant contends that the Domain Name is similar to the Complainant's full
registered company name and is identical to the Complainant's registered
The Complainant contends that the Respondent has no
rights or legitimate interests in respect of the Domain Name at issue since it
only held the Domain Name on the Complainant's behalf.
The Complainant contends that the Respondent is acting in bad faith because since the Respondent has left its employment with the Complainant, the Complainant has in vain been attempting to have the Respondent transfer the Domain Name to the Complainant.
5. Discussions and Findings
This procedure is regulated by the ICANN
Uniform Domain Name Dispute Resolution Policy (the "Policy) and by the
Rules of Uniform Domain Name Dispute Resolution Policy (the "Rules").
According to article 4(a) of the Policy,
Complainant must submit evidence establishing that in a specific case each of
the following three elements are present:
(i) that the Domain Name is identical or
to a trade mark or service mark to which the Complainant has rights; and
(ii) that the Complainant 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 bad faith.
a) Identity and Similarity
There is no doubt
that the Domain Name is confusingly similar to the Complainant's trademark. The
Domain Name consists indeed of the Complainant's trademark PRECIS to which the
initials (MB) of the Complainant's corporate name (Millward Brown) are added.
This similarity is no coincidence in view of the fact that the Complainant had
asked the Respondent to register the Domain Name in order to attract to the
linked website the public already aware of the Complainant's name and trademark.
b) Rights and legitimate interests
Complainant had asked the Respondent to register the Domain Name, such a task
fell fully within the duties of its employment as a Systems Administrator. The
Complainant has never licensed or otherwise permitted the Respondent to use the
Complainant's trademark as a Domain Name for its own business.
Moreover, by not submitting a response
in due time, the Respondent has failed to invoke any circumstances which could
demonstrate, pursuant to paragraph 4c of the Policy, any right or legitimate
interest in the Domain Name.
Therefore the Administrative Panel finds
that Respondent has no legitimate right or interest in the Domain Name.
c) Bad faith
According to this Panel, the Respondent
had no bona fide intention to use the Domain Name for any legitimate purpose.
As the Complainant's Systems
Administrator, the Respondent was requested by the Complainant to register the
Domain Name on its behalf. When doing so, the Respondent choose to file the
Domain Name in its own name rather than in the name of its employer, the
Complainant. Upon registration the Domain Name was exclusively linked to the
website of the Complainant. There does not seem to be any justification for the
Respondent's registration of the Domain Name in its own name rather than in its
When leaving its employment with the
Complainant, the Respondent was under the duty to transfer the registration of
the Domain Name to the Complainant. No reason can justify Respondent's remaining
the registrant of a Domain Name used in the Complainant's scope of business.
In spite of the repeated efforts by the
Complainant to have the Respondent transfer the Domain Name, the Respondent has
failed to take any initiative whatsoever towards such transfer.
by failing to complete in time the Response Form for submission to the
eResolution Clerk, the Respondent failed to assert its rights and that it acted
in good faith.
The Panelist concludes from these elements that the Respondent is acting in bad faith in contravention with article 4(b) of the above mentioned Policy.
For the above reasons, the
panelist holds that the three requirements requested by the Policy are present
in this case, and consequently, in accordance with the remedy sought by the
Complainant, orders "mbprecis.com" to be transferred to the
Signed on May 24, 2001 in Brussels by the Presiding Panelist Geert Glas