LeitsätzlichesEine der seltenen Entscheidungen, bei denen die Domain dem Angegriffenen zugesprochen bleibt - und das, obwohl der Angegriffene keine Stellungnahme eingereicht hatte. Grund: "Reverse Domain Name Hijacking". Nach Ansicht des Schiedsrichters stellte die Domain eine mögliche Abkürzung der Firma des Angegriffenen dar und die Domain wurde dementsprechend genutzt. In recht deutlichen Worten wird entschieden, dass dem Angreifer diese Tatsachen bei Einleitung des Schiedsverfahrens wohl bekannt gewesen sein mussten. Daraus ergibt sich der Fall des versuchten Reverse Domain Name Hijacking.
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fall Nummer: D2002-0913
Entscheidung vom 27. November 2002
1. The Parties
Driver and Vehicle Licensing ... United Kingdom.
DVL Automation ..., ..., United States of America.
2. The Domain Name and Registrar
The domain name in issue is <dvla.com> (hereafter "the domain name").
The domain name was registered on or about April 4, 1996, with Network Solutions Inc., 505 Huntmar Park Drive, Herndon, VA 20170, United States of America.
3. Procedural History
(1) The Complaint in this case was filed in email form on October 3, 2002, and in hardcopy on October 7, 2002.
(2) The WIPO Arbitration and Mediation Center ("the Center") has found that:
- The Complaint was filed in accordance with the requirements of the Rules for the Uniform Domain Name Dispute Resolution Policy (â€˜the Rules") and the Supplemental Rules for the Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules");
- Payment for filing was properly made;
- The Complaint complies with the formal requirements;
- The Complaint was properly notified in accordance with the Rules, paragraph 2(a);
- No Response to the Complaint was filed;
- Respondent was appropriately notified of default;
- The Administrative Panel was properly constituted.
As Panelist, I accept these findings.
(3) As Panelist, I submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
(4) The language of the proceedings is English.
4. Factual Background
A. The Complainant and its mark
The Complainant is an Executive Agency of the United Kingdom Government's Department for Transport. The Complainant is responsible for issuing and withdrawing driving licences, for licensing and registering vehicles and for collecting vehicle excise duty.
The Complainant commenced operations in 1974, and changed its name to DVLA in 1990. At the same time as this change of name, DVLA adopted the DVLA "road" logo, incorporating a stylised road image above the text "DVLA", which is still in use today. All DVLA forms carry this logo, and all DVLA literature, advertising material, press releases and correspondence feature this logo in some form. Its primary web presence is maintained at "www.dvla.gov.uk" and it operates a commercial part of its operation at <dvla-som.co.uk> where British car owners may purchase particular vehicle registration numbers.
The Complainant is the registered proprietor of a number of trademarks, including United Kingdom Trademark Application Nos. 2297000 and 2297001, filed on April 3, 2002, for the mark "DVLA" for various goods and services in Classes 6, 9, 12, 16, 20, 25, 35 and 42. It has a number of other marks using the "DVLA" brand in conjunction with services and products it offers, such as "DVLA SELECT REGISTRATIONS" and "DVLA CLASSIC COLLECTION". (Hereafter these marks will collectively be referred to as "the Complainantâ€™s marks").
B. The Respondent
No Response was filed. However the Complaint discloses that a search of the corporations register of the Pennsylvania Department of State confirms the existence of a corporation called DVL Automation, Inc. The corporations register also shows that DVL Automation, Inc. was previously known as Delaware Valley Power, Inc. The corporation has a registered address of 115 Sinclair Road, Bristol, PA 19007, USA, which differs from the address given in the WHOIS record, but is in the same city.
The website at the domain name <dvla.com> shows that the Respondent provides automation control and logic systems for power plants, HVAC controls, and the like.
C. The Use of the Domain Name
The domain name correctly resolves to a website which provides information on the services that DVL Automation Inc. provides, company and executive information, and so forth. The site also provides information on the affiliated company DVL, Inc.
5. Partiesâ€™ Contentions
A. The Complainantâ€™s assertions
The Complainant asserts that the Respondentâ€™s domain name is identical or confusingly similar to the Complainantâ€™s mark. Specifically, the Complainant asserts:
(1) Ignoring the ".com" domain name extension, <dvla.com> is identical to the Complainantâ€™s famous DVLA name and trademarks. There is no difference between the Respondentâ€™s chosen domain name and the Complainantâ€™s trade name and trademarks. The impression given to web users is that the Respondentâ€™s domain name and the Complainantâ€™s marks are one and the same, that is, that any associated goods or services are sponsored by, endorsed by, or affiliated with the Complainant.
The Complainant asserts that the Respondent has no legitimate interest or rights in the domain name. Specifically, the Complainant asserts:
(1) The Respondent has a legitimate interest in the mark 'DVL', but not in the mark 'DVLA' since the Respondent trades as DVL Automation and not as DVLA.
(2) A search of the US Patent and Trademark Office reveals that as at the date of October 2, 2002, the Respondent does not have a registered US trademark for "'DVLA".
(3) The Respondent's trading name is 'DVL Automation', rather than DVLA. There is therefore no reason why the Respondent should have any interest in a domain name incorporating "DVLA".
(4) There is no evidence that the Respondent is making a legitimate non-commercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks at issue in accordance with paragraph 4(c)(iii) of the Policy.
The Complainant asserts that the Respondent registered the domain name and is using it in bad faith. Specifically, the Complainant asserts:
(1) The Complainant has an international reputation as one of the leading vehicle licensing authorities in the world and is a household name in the United Kingdom. It is therefore inconceivable that the Respondent was not aware of the Complainant's worldwide fame and reputation in the 'DVLA' marks. In particular, the Complainant frequently sells vehicle registration numbers from its 'Classic Collection' auctions to customers residing in the USA.
(2) By registering the Domain Name rather than the more appropriate domain name <dvl.com>, the Respondent has acted in bad faith and attempted to capitalize unfairly on the fame of the 'DVLA' trademarks. The Respondent's registration of the Domain Name will dilute the Complainant's prior rights in its 'DVLA' marks.
(3) Paragraph 4(b) of the Policy sets out a non-exclusive list of factors that evidence bad faith. In accordance with paragraph 4(b)(iv) of the Policy, the Respondent has created an inevitable likelihood of confusion between the Complainant's mark 'DVLA' and the Domain Name, by using the Domain Name. The Respondent has constructive knowledge of the Complainant's prior rights and has therefore intentionally attempted to attract, for commercial gain, Internet users to the Domain Name. The Respondent has therefore both registered and used the Domain Name in bad faith.
Accordingly, the Complainant submits that the Panel should order that the domain name be transferred to the Complainant.
B. The Respondentâ€™s assertions
The Respondent has not filed a Response.
6. Discussion and Findings
The Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers on August 26, 1999, applies to domain name registrations made in the ".com" namespace. Paragraph 4.a. of the Policy requires the Complainant to make out three elements to succeed in an administrative proceeding initiated under the Policy:
I. The Complainant has rights in a trade or service mark, with which Respondentâ€™s domain name is identical or confusingly similar (Paragraph 4.a.(i)); and
II. The Respondent has no rights or legitimate interests in respect of the domain name (Paragraph 4.a.(ii)); and
III. The Respondent registered and is using the domain name in bad faith (Paragraph 4.a.(iii)).
a. The Complainant has rights in a trade or service mark, with which Respondentâ€™s domain name is identical or confusingly similar.
There are two requirements that a Complainant must establish under this paragraph; that it has rights in a trade or service mark, and that the domain name is identical or confusingly similar to the marks.
The Complainant provided registration documents for its "DVLA" mark, in multiple classes. There is no question that the Complainant, as registered proprietor of those marks, has established rights in a trademark, sufficient for the purposes of paragraph 4.a.(i).
The second requirement is that the domain name be identical or confusingly similar to the mark. The domain name is identical to the Complainantâ€™s DVLA mark, with the inclusion of the namespace identifier ".com". Previous decisions under the Policy have, sensibly, concluded that mandatory or technical requirements of the domain name system are not relevant to the consideration of identicality or confusing similarity. The inclusion of the gTLD or ccTLD extension has been ignored since this is, obviously, necessary to distinguish one namespace from the other (see e.g. World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001). I conclude that the domain name is, for the purposes of the Policy, identical to the Complainantâ€™s trademark.
The Complainant has shown that it has rights in a trademark, and that the domain name is identical to this mark. I conclude therefore that the Complainant has satisfied the requirements of paragraph 4.a.(i) of the Policy.
b. The Respondent has no rights or legitimate interest in respect of the domain name.
The Complainant asserts that the Respondent has no rights or legitimate interest in the domain name, as required under paragraph 4.a.(ii) of the Policy. This is a remarkable position to take, given that the domain name is <dvla.com> and the Respondentâ€™s corporate name is "DVL Automation". It is clear that the Respondent has every right to the domain name, being the concatenation of "DVL" and the first letter of "Automation."
The arguments against this conclusion are extremely weak. The Complainant claims that the Respondent cannot have a legitimate interest in the domain name since it does not have a trademark in "DVLA". However the Policy does not require, and has never required, that the Respondent have a registered mark for it to have a legitimate interest in a domain name. Alternatively the Complainant argues that the Respondentâ€™s trading name is "DVL Automation" rather than "DVLA", and therefore there is "no reason why the Respondent should have any interest in a domain name incorporating "DVLA"." It is hard to know how to respond to this sort of assertion, except to say that if this were the standard by which a Respondentâ€™s legitimate interest was assessed then almost no Respondent could ever hope to retain its domain name. It is an unsupportable statement, on a par with the Complainantâ€™s assertion that the Respondent has no legitimate interest in the domain name "since the Respondent trades as DVL Automation and not as DVLA."
The Complainantâ€™s final assertion, that there "is no evidence that the Respondent is making a legitimate non-commercial or fair use of the Domain Name" is dangerously close to an outright lie. The Complaint specifically discloses that the Complainant has seen the website at "dvla.com", which the Respondent is using for its clearly bona fide business purposes, and which is utterly removed from vehicle licensing or any other usage which might be characterized as illegitimate. The Respondent is a registered company, doing business at a domain name which has an obvious connection with its company name. The Complainant notes as much in its Complaint, and yet it maintains this position. It cannot do so in good faith.
I conclude that the Respondent has established a legitimate interest in the domain name. The requirements of the Policy being conjunctive, the Complainant has failed to satisfied the requirements of paragraph 4.a. of the Policy. The Complainant therefore fails in its action.
Ordinarily this would signal the end of the decision, but for reasons that will be clear shortly it is important to consider the issue of bad faith.
c. The Respondent Registered and is using the Domain Name in Bad Faith
The next issue is that of bad faith registration and use by the Respondent. For paragraph 4.a.(iii) to apply, the Complainant must demonstrate the conjunctive requirements that the Respondent registered the domain name in bad faith and has used it in bad faith.
The Complainantâ€™s arguments here are as weak as its assertions as to paragraph 4.a.(ii). It suggests that it is "one of the leading vehicle licensing agencies in the world" and therefore it is "inconceivable" that the Respondent would not be aware of its marks. Even if the Complainant were the leading vehicle licensing agency in the world, it is clear that the overwhelming majority of people on the other side of the Atlantic would be unaware of its existence, just as the majority of British subjects will be unaware of the Pennsylvania Department of Transport. Using the same logic the Complainant suggests that the Respondent has constructive notice of the Complainantâ€™s prior rights â€” though it is unclear how or why notice should be construed â€” and therefore the Respondent must have impermissibly used its "famous" brand to attract users to its site, pursuant to paragraph 4.b.(iv). For the same reasons, this is an untenable assertion.
Finally, it suggests that bad faith is established because the Respondent should have registered <dvl.com> not <dvla.com>. The legal basis for this claim is a mystery. Since the Complainant does not explain how this establishes bad faith I reject the argument.
The Complainantâ€™s claims on paragraph 4.a.(iii) are extremely weak. I conclude that there has been no bad faith by the Respondent. This, however, is not the end of the matter, because rather than focusing on the male fides of the Respondent I need to consider bad faith by the Complainant.
d. Reverse Domain Name Hijacking.
Under Rule 15(e) of the Rules of the Policy:
"If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding."
I consider that the Complainant has brought this action in bad faith. As explained above, the Complaint discloses that the Complainant is aware of the business and corporate status of the Respondent, and has examined the website available at the domain name. The domain name was registered over 6 years ago, and is being used for a legitimate business. As discussed above, the claims of the Complainant as to the Respondentâ€™s legitimate interest and bad faith are utterly without merit.
Moreover, the Complainant notes that it engaged a private investigator to seek the purchase of the domain name on a no-names basis. The Respondent replied to this enquiry:
"Thank you for your fax request. DVLA.com is a registered URL for our company DVL Automation, Inc. and as such is not for sale."
Notwithstanding this clear indication of the Respondentâ€™s interest in the domain name and their good faith in registering and using it, the Complainant brought this action. On the basis of the above discussion, I conclude that it could only have brought the action in bad faith.
One might ask whether it is possible to find bad faith filing and reverse domain name hijacking where the requirements of paragraph 4.a.(i) were, as here, made out. However paragraph 4.a.(i) is merely the baseline criterium for the Complainant having any claim to the domain name at all. So, while the Complainant can show it has a trademark that is identical to the domain name, so can any other person with a registration for "DVLA" in any class, in any country, in respect of any goods or services. Establishing paragraph 4.a.(i) is, therefore, irrelevant to any determination of whether the Complainantâ€™s other actions amount to an attempt to improperly wrest the domain name from the Respondent. In this I am comforted by a similar decision in Windsor Fashions, Inc. v. Windsor Software Corporation, WIPO Case No: D2002-0839. There the Panel found in favor of the Complainant on paragraph 4.a.(i) and still concluded that the Complainant had engaged in attempted reverse domain name hijacking. The conclusion of the Panel there was: "No one familiar at all with the Policy and its requirements, including the Complainant here represented by reputable legal counsel, could have believed there were reasonable grounds for initiating this proceeding." I make the same conclusion here. Given what the Complaint discloses, it is impossible to conceive of reasonable grounds for bringing this action. I consider it an abuse of process.
One final issue is worthy of consideration. Ordinarily, determinations under the Policy or Rules would only be made on the basis of a submission by one of the parties. And of course the Respondent has filed no Response here. However, Rule 15(e) does not state that the determination can only be made on submission of the Respondent. It says that the Panel may so find after considering the submissions. There is therefore nothing in the Rules which prohibits the determination in this case based upon a Panelâ€™s assessment sua sponte.
Having considered the submissions I conclude that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
The Complainant has failed to make out all of the elements of paragraph 4.a. of the Uniform Domain Name Dispute Resolution Policy.
Pursuant to Paragraph 4.i. of the Policy and Rule 15, the requested remedy is denied.
I hereby order that the domain name <dvla.com> remain with the Respondent.
Further, pursuant to Rule 15(e) of the Rules, I find that this Complaint was brought in bad faith and constitutes an abuse of the Policy and the Rules.