ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
Under the ICANN Uniform Domain Name Dispute Resolution Policy
1. Parties and Contested Domain Name
The Complainant is Emprise Financial Corporation (hereinafter referred to as the “Complainant”), with an address at 211 North Broadway Street, Wichitaw, Kansas, 67202 U.S.A. The Complainant’s Prime Contact or Representative is Peter de Jonge, 8180 South 700 East, suite 200, Sandy, Utah, 84070 U.S.A.
The respondent is Li. Yen Chun, Domain Reseller (hereinafter referred to as the “Respondent”), with an address at 4F, No. 6 Lane 79, Chienkwo S. Rd. Sec 2, Tapei, Taipei, 106 China. Respondent has no Prime Contact or Representative.
The dispute concerns the domain name “emprise.org” (hereinafter referred to as the "Domain Name"). The Registrar with whom the Domain Name is registered is OnlineNic (hereinafter the Registrar).
2. Procedural history
The Complaint submitted by the Complainant was filed on-line through eResolution’s website on June 14, 2001. The hardcopy of the Complaint form and annexes were received on June 21st 2001, by the eResolution Centre (hereinafter the Centre).
Payment was received on June 20th, 2001.
Upon receiving all the required information, the Centre then 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 the Respondent;
- Verify whether the contested Domain Name related to an active Web page;
- Verify whether the Complaint was administratively compliant.
And the Centre concluded that:
- The Registrar is OnlineNIC;
- All the required contact information for the Respondent was found in the Whois database;
- The contested Domain Name resolved to an active web site;
- The Complaint is administratively compliant.
By email dated June 15 2001, the Centre wrote to the Registrar to obtain confirmation and a copy of the Registration Agreement; the requested information was received on June 17, 2001.
The Centre then proceeded to send 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 (hereinafter referred to as the”Rules”). The Centre fulfilled all of its responsibilities under paragraph 2 (a) by forwarding the Complaint to the Respondent, notifying the Complainant, the concerned Registrar and ICANN on June 21, 2001, this date being the official commencement date of the administrative proceeding.
The Complaint, the 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 sent successfully.
The Respondent did not submit a Response neither via eResolution’s web site nor a signed version.
The Centre then contacted Me Jacques A. Léger on July 13, 2001 and invited him to act as Panelist in this case.
On July 16, 2001, Me. Jacques A. Léger 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 Rules.
On May 17, 2001, a notification was sent to the parties that Me Jacques A. Léger had been appointed and that a decision was to be, save exceptional circumstances, handed down on July 31st, 2001.
As well, on July 17, 2001, a user name and a password was forwarded by the Clerk’s Office to Me Jacques A. Léger, allowing him to access the Complaint Form, the Response Form, and the evidence through the Centre’s Automated Docket Management System.
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 carried out in English, according to paragraph 11 (a) of the Rules.
3. Factual Backgrounds
The following uncontradicted and unchallenged facts appear from the Complaint, documents submitted with the Complaint as well as verifications conducted by the Panel:
Complainant owns the trademark EMPRISE and is the current owner of numerous registrations issued by the United States Patent and Trademark Office, corresponding to the said trademark EMPRISE;
Complainant has used the trademark EMPRISE in connection with banking services, computer software and other wares since at least November 17, 1988, a period of 13 years.
Pursuant to the research conducted in the WHOIS database, proprio motu, by the Panel, it appears that the Respondent registered the Domain Name, emprise.org on May 5th, 2001 with the Registrar.
The evidence (at annex 2 of the Complaint) establishes that, to date, Respondent has left the Domain Name unused and the web site utilizing the Domain Name is unobtainable and/or for sale.
4. Parties' Contentions
With respect to the similarity of the Domain Name, the Complainant alleges that:
- The Domain Name "emprise.org" is identical to the trademarks in which the Complainant has rights.
With respect to the grounds of illegitimate use, the Complainant alleges that:
- The Respondent has not used, nor has it demonstrated preparations to use, the Domain Name in connection with a bona fide offering of goods or services.
- Respondent has not, as an individual, business or other organisation been commonly known by the Domain Name. An Internet search for the term "emprise.org" yielded zero hits. (Annex 3 of the Complaint). Additionally, a search based on name and location of the Respondent (Emprise, located in Taipei, Taiwan), as listed in the domain name registry, discloses no such business, individual or organisation. (Annex 4 of the Complaint).
- Respondent is not making a legitimate non-commercial or fair use of the Domain Name. In fact, Respondent is not making any use of "emprise.org". Respondent has had the domain name "emprise.org" since May 5, 2001. To date, the website using the domain "emprise.org" is still inaccessible. In short, Respondent has not made any apparent effort to use the Domain Name in any way.
- Respondent appears to have registered the Domain Name for re-sale purposes only. Respondent's name indicates that it is in the business of re-selling domain names, i.e. "Domain Name Reseller."
With respect to the element of bad faith, the Complainant alleges that:
- The Uniform Domain Name Dispute Resolution Policy (hereinafter "the policy") lists certain criteria as evidence of bad faith. They are, to summarise, any circumstances indicating Respondent acquired the domain name for the purposes of selling or renting it, etc. to the owner of a similar mark or one of its competitors; whether Respondent acquired the domain name in order to prevent the mark owner from reflecting the mark in a corresponding domain name; whether by using the domain name, Respondent intentionally attempted to draw Internet users to its website by creating a likelihood of confusion with Complainant's mark; and whether Respondent has registered the domain name primarily to disrupt the business of a competitor.
- As is observed in the policy, each of the four circumstances above is evidence of bad faith. However, as is further noted in the policy, the consideration is not limited to these factors
- Inasmuch as the evidence strongly suggests that Respondent has never used the mark EMPRISE in connection with any goods or services, Respondent has never acquired any rights in the mark. Respondent's apparent lack of any trademark or other intellectual property rights in the domain name "emprise.org," strongly suggest that Respondent registered the domain name in bad faith.
- There is no prior use by Respondent of the domain name in connection with a bona fide offering of any goods or services.
- Respondent is not engaged in any use of the "emprise.org" domain name. If one enters the web address www.emprise.org, a page is displayed indicating that the website is not accessible.
Consequently, Complainant requests an order for the transfer of the Domain Name registration.
The Respondent failed to file a timely Response with the Centre (neither electronically or by remittance of a hard copy).
5. Discussions and Findings
Pursuant to the ICANN Policy, the Complainant must convince the Panel of three elements if it wishes to have the Domain Names transferred. It is incumbent on the Complainant to cumulatively show that
- that the Domain Name is identical or confusingly similar to a trademark in which it holds rights; and
- that the Respondent has no rights or legitimate interests in the Domain Name; and
- that the Domain Name was registered and used in bad faith.
These three elements are considered below.
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.
A. Copy or Similarity
The Panel has reviewed the documentary evidence provided by the Complainant regarding its rights in the trademark EMPRISE and finds that the Complainant has satisfactorily shown that it owns such rights.
With respect to the confusing similarity between Complainant's trademark and Respondent's Domain Name; In the decision, The Toronto-Dominion Bank v. Boris Karpachev, WIPO Case No. D2000-1571, the panel held: "In determining whether a Domain Name is confusingly similar to a trademark, the intention of the Domain Name registrant is irrelevant. It is the objective likelihood of confusion that must be assessed.
In this case, the second-level part of the Domain Name, "emprise.org", is phonetically and visually identical to the Complainant's trademark EMPRISE. Thus an average Internet user who has knowledge or recollection of the Name, EMPRISE, might easily mistake the Respondent’s web site, associated with the Domain Name, as being somehow affiliated to or owned by the Complainant. The Panel is of the opinion that this fact alone is sufficient to conclude that the Domain Name is confusingly similar to Complainant's EMPRISE trademark.
B. 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:
- 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
- you (as an individual, business or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
- 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, Complainant alleged that the Respondent was not making legitimate use of the Domain Name. The Complainant did not produce any evidence in support of its claim that the Respondent did not use the Domain Name in connection with a bona fide offering of goods and services.
Although the Panel is not required to investigate and/or research on its own initiative, it proceeded, proprio motu, to verify the Whois database for the relevant information concerning the Domain Name, as well as verify if the Domain Name lead to an active website. The results of this research corroborate the Complainant’s allegations that the Domain Name is not being used in a legitimate manner. In fact, the Respondent has held the Domain Name for almost three (3) months and does not seem to have used it in any manner.
Furthermore, in this case, as was the case in LLS International vs. Mark Freeman, Wipo Case No.D2000-1080 and Altavista Company v. GrandtotalFinances Ltd., Wipo Case No. D2000-0848, the Panel finds it appropriate in thisregard to draw an adverse inference from the Respondent’s failure to reply to theComplaint and detail any legitimate rights or interests it might have had in the Domain Name of the type defined in paragraph 4(c) of the ICANN Policy.
Consequently, the Panel is of the view that the Complainant has satisfied its burden of showing that Respondent did not have any rights or legitimate interests vested in the Domain Name.
C. Bad Faith
Pursuant to paragraph 4(a)(iii) of the ICANN Policy it is incumbent upon the Complainant to prove, on the balance of probabilities, that the Respondent has registered and is using the Domain Name in bad faith.
Paragraph 4(b) of the ICANN Policy provides a number of non-exhaustive circumstances which, if found to be present, are evidence of the registration and use of a Domain Name in bad faith. In particular, paragraph 4(b)(iv) of the ICANN Policy holds that, if the circumstances tend to indicate that by using the Domain Name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site, then this might be evidence of bad faith registration and use on behalf of the Respondent.
The Panel has taken note of uncontested evidence, which indicates that after registering the Domain Name, the Respondent placed it up for sale in cyberspace. Annex 2 of the Complaint, unchallenged and uncontradicted, demonstrates how an Internet user who would type in the Domain Name, would be directed to a web site depicting the following statements:
WWW.EMPRISE.ORG - FOR SALES
PRICE: MAKE OFFER
The Panel is of the opinion that the Complainant has satisfied its burden to establish, that the Respondent was intending to demand more than his out-of-pocket costs directly related to the registration of the Domain Name, a component of a finding of bad faith when offering a Domain Name for sale pursuant to paragraph 4(b)(i) of the ICANN Policy.
Moreover, the Panel is of the opinion that the passive holding of the Domain Name since its registration in question, the lack of explanation or evidence provided by the Respondent to demonstrate the good faith registration or usage of the Domain Name, infer bad faith, pursuant to the 4(a)(iii) of the ICANN policy, on the part of the Respondent. (See Telstra Corporation v. Nuclear Marshmallows, Wipo Case No. D-2000-003).
Furthermore, the Panel is also of the opinion that the Domain Name is so obviously connected with the Complainant and its services that its very use by someone with no connection with the Complainant suggests “opportunistic bad faith” (see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net Wipo Case No. D2000‑0226 and Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., Wipo Case No. D2000-0163), followed by this Panel in LLS International vs. Mark Freeman, Wipo Case No. D-2000-1080, and Altavista Company v. Grandtotal Finances Ltd., Wipo Case No. D-2000-0848Therefore, pursuant to the above-mentioned reasons the Panel is of the opinion that the Complainant has met its burden of proof and has proven that the Respondent’s actions have been in bad faith pursuant to the ICANN policy.
the foregoing reasons, the Panel decides:
- that the Domain Name registered by the Respondent is confusingly similar to the trademarks in which the Complainant has rights;
- that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
- the Domain Name has been registered and is being used by the Respondent in bad faith.
Accordingly, pursuant to paragraph 4(i) of the ICANN Policy, the Panel orders that the registration of the Domain Name:
be transferred to the Complainant by the Registrar, OnlineNIC.