CEPINA
Case No. 4021
DECISION OF THE THIRD-PARTY DECIDER
NAPSTER Inc. v. TheInternetOne C.V.
I. The Parties
1.
The Complainant is Napster Inc., with registered office at Redwood City, CA
94063, 600 Chesapeake Drive (USA);
Represented by Mr. Geert GLAS and Mr. Tom HEREMANS, attorneys at law, with offices at 1150 Brussels, Tervurenlaan 268A;
Hereinafter referred to as “the Complainant” .
2.
The Respondent is TheInternetOne C.V., with registered office at 3821 BP
Amersfoort, Softwareweg 4 (The Netherlands);
Hereinafter referred to as “the Respondent” .
II. The Domain Name at issue
The domain name at issue is ”napster.be” , registered on December 12, 2000, hereinafter referred to as “the Domain Name” .
III. Procedural history
1.
Following the Complaint received from the Complainant, dated on September
9, 2002, the Belgian Center for Arbitration and Mediation (hereinafter referred to as
“CEPINA”) invited the undersigned on October 22, 2002 to settle the dispute concerning the Domain Name as Third-Party Decider.
On October 23, 2002, the Third-Party Decider sent the statement of independence to
CEPINA.
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2.
By e-mail dated October 22, 2002, CEPINA informed the Complainant and the Respondent of the appointment of the Third-Party Decider. CEPINA stated in this e-mail that the deliberations should be concluded by October 29, 2002 and that the
Third-Party Decider must inform the CEPINA secretariat of his decision by
November 12, 2002 at the latest.
3.
By Registered letter dated October 22, 2002, CEPINA transferred the entire file concerning the Complaint to the Third-Party Decider.
4.
On the basis of the file, the Third-Party Decider concludes that CEPINA has adhered to the CEPINA Rules for Name Dispute Resolution (hereinafter referred to as
“the Rules”) in administering this case.
5.
2002.
According to article 12 of the Rules, the debates were closed on October 29,
IV. Relevant Facts
Having carefully examined the evidence submitted by the Complainant, the Third-
Party Decider finds that the following relevant facts are established:
Complainant is an Internet company, set up in May 1999. Its founders developed a computer program called “Napster” , enabling Internet users to exchange MP3 files by directly downloading the files from the hard disk of a computer connected to the Internet.
Complainant rapidly became a worldwide known Internet player. Its computer program “Napster” , offered free of charge on Complainant’s website http://www.napster.com
, has gained great popularity amongst millions of
Internet users.
On December 12, 2000, the Respondent registered the Domain Name.
Complainant is the owner of the Benelux Trademark “Napster” , filed on
December 21, 2000 (registration number 707.165) for goods and services in
Classes 09, 35, 38, 41 and 42 with priority rights due to Complainant’s
American Trademark No. 78/014.821 dated June 28, 2000.
By a letter dated March 2, 2001, the Complainant urged the Respondent to give up the Domain Name, putting forward that by registering the Domain
Name the Respondent had committed an infringement upon the trademark rights of the Complainant. The Complainant pointed out that due to the priority of the American Trademark Application for “Napster” , dated June 28,
2000, the effective date of the Benelux Application is June 28, 2000. The
Respondent did not reply to the Complainant’s letter, nor did it reply to the reminder of April 2001. In April 2001, the Complainant tried to contact the managing director of the Respondent, without success.
The Respondent did not file any Response in this proceeding.
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V. Parties contentions
A.
The Complainant
Complainant requests the Third-Party Decider to order the transfer of the Domain
Name, since all conditions, provided for in Article 10 of the Policy are fulfilled.
1.
Respondent’s domain name is identical or confusingly similar to a trademark, a trade name, a social name or corporation name, in which the
Complainant has rights.
The Complainant states that it is obvious that the Domain Name is identical to
Complainant's company name, trade name and trademark, namely “Napster” . The identity is absolute, except for the suffix “.be” , which, however, is in this regard irrelevant (see CEPINA-case 4004, Pernod Ricard / Roelandt. With regard to the identity between the trademark “Ricard” and the domain name “ricard.be” the third decider stated: “L’identité des noms est absolue”) .
The Complainant further alleges that in this case there is an obvious identity, at least a confusing similarity, between the trademark, trade name and company name of
Complainant, and the Domain Name.
2.
The Respondent has no rights or legitimate interests in the domain name.
The Complainant states that Article 10 b) 3 of the DNS.BE terms and conditions of domain name registrations mentions in a non-restrictive way a number of circumstances, which Respondent may use to prove his legitimate interests. However, none of these circumstances, nor any others, are applicable to Respondent.
The Complainant contends that :
Prior to any notice of the dispute, the Respondent did not use the Domain
Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services or made demonstrable preparations for such use. There is no indication of such use on the Respondent's web site.
Respondent has not been commonly known by the Domain Name, which appears from research on the Internet and in telephone directories.
Respondent is not making a legitimate and non-commercial or fair use of the
Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark, trade name or company name.
Complainant did not grant Respondent a licence or in any other way permitted it to use its trademark.
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Moreover, at this moment, no web site is connected to the Domain Name.
When typing the Domain Name, one automatically enters the web site www.theinternetone.be
, which again proves that Respondent does not have legitimate interests in the Domain Name.
3.
Respondent's domain name has been registered or is being used in bad faith
The Complainant states that firstly, Respondent's bad faith is apparent from the registration of the Domain Name at a moment when Complainant's company name, trade name and trademark had already acquired a great reputation all over the world, including in Belgium. Not only were over 50 million users of the program registered at the time, but also the various lawsuits were taking place that got lots of media coverage. All this was indeed extensively discussed in the international and Belgian press (Exhibit 2) .
The Complainant further refers to CEPINA case No. DOM 4013, in which the Third-
Party decider held that in particular with regard to well known trademarks, there will be bad faith if the domain name holder knew or should have known about the existence or use of the well known trademark: “La mauvaise foi étant un élément moral impossible à prouver directement comme tel, la preuve en a toujours été admise traditionnellement par les circonstances qui indiquent avec un degré raisonnable de certitude la présence de cet élément (“savait ou devait savoir”).
Parmi ces circonstances, beaucoup de décisions ont déjà retenue la notoriété de la marque du plaignant. Elle permet en effet d’emporter la conviction que le défendeur n’ignorait pas soit le droit de marque lui-même, ce qui est sans doute assez rare, soit,
à tout le moins, l’usage de la marque par le plaignant, ce qui suffit aussi bien à constituer la mauvaise foi”.
According to the Complainant the same reasoning applies to well-known trade names and company names such as Napster.
The Complainant moreover alleges that the fact that the domain name is being used in bad faith is also apparent from the unwillingness of Respondent to react to the request to transfer the domain name. Complainant never received any reaction to its repeated calls for explanation.
The Complainant also states that Respondent intentionally uses the Domain Name in order to obtain a commercial advantage. It consciously tries to lure Internet users to its own web site. This clearly appears from the fact that when typing the Domain
Name, one is automatically connected with the Internet address “theinternetone.be” .
Such use of the Domain Name is considered to be use in bad faith by Article 10 b) 2, point 4 of the DNS.BE terms and conditions of domain name registrations.
Finally, Complainant contends that Respondent prevents Complainant from registering its trademark as a domain name. According to Article 10 b) 2, point 3 of the DNS.BE terms and conditions of domain name registrations, this also shows
Respondent's bad faith.
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Following the Complainant concludes that the Domain Name was registered and is being used in bad faith by Respondent.
B.
The Respondent
The Respondent did not file any Response.
VI. Discussion and findings
1.
On the basis of Article 15, 1 of the Rules, the Third-Party Decider shall decide on the Complaint in accordance with the Policy and the Rules.
Article 10 of the Terms and Conditions for domain name registrations under the
“.be” - domain operated by DNS BE contains the “Dispute resolution Policy” (i.e. the
Policy) .
2.
According to Article 10, b) 1. of the Policy the Complainant must prove that i) the Respondent’s domain name is identical or confusingly similar to a trademark, a trade name, a social name or corporation name, a geographical designation, a name of origin, a designation of source, a personal name or name of a geographical entity in which the Complainant has rights ; and ii) the Respondent has no right or legitimate interests in the domain name ; and iii) the Respondent’s domain name has been registered or is being used in bad faith.
These conditions must be cumulatively met before the Third-Party Decider can grant the Complainant’s request.
3.
If the Respondent does not submit a Response, the proceeding shall continue and the Third-Party Decider shall decide the dispute on the basis of the Complaint and such pursuant to Article 5.4 of the Rules.
1.
The Respondent’s domain name is identical to a trademark in which the
Complainant has rights
1.
For the first condition to be fulfilled, the Complainant must prove that it has rights in a trademark, a trade name, a social name or corporation name, a geographical designation, a name of origin, a designation of source, a personal name or name of a geographical entity that is identical or confusingly similar to the Domain Name.
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2.
From the evidence submitted by the Complainant it is clear that the
Complainant has rights in the Benelux Trademark “Napster” , filed on December 21,
2000 (see exhibit No. 3) .
Taking into account the fact that the Complainant does not claim any protection at the moment of the registration of the Domain Name (December 12, 2000) on the basis of
Article 6bis of the Paris Convention (Well-Known Marks), the Complainant had in our opinion no rights in the trademark “Napster” on the territory of the Benelux on the date of registration of the Domain Name. The priority right, due to the filing of the trademark application in the United States of America on June 28, 2000, does not imply that the trademark “Napster” was already protected on that date in the Benelux.
The protection on the territory of the Benelux only commenced on the date of the actual filing of the trademark, i.e.
December 21, 2000 (see A. BRAUN, “Précis des marques”, Brussel, Larcier, 1995, 629) .
The Third-Party Decider is notwithstanding of the opinion that the fact that the
Complainant filed its trademark after the Respondent had registered the Domain
Name is irrelevant when assessing whether or not the first condition is fulfilled. The
Policy merely states that the Complainant must prove that it has rights in a trademark, not that it had rights in a trademark at the moment of the registration of the Domain
Name. The latter fact may only influence the Third-Party Decider’s assessment of the third condition, i.e.
the bad faith registration (see infra) .
2.
The Domain Name is the identical reproduction of the aforementioned
“Napster” trademark, with the suffix “.be” added at the end. It has already been stated in previous Decisions that the suffix “.be” is irrelevant when assessing the similarity between the disputed domain name and the name on which the Complainant claims a right (CEPINA, case N°4004, Pernod Ricard).
The Third-Party Decider therefore holds that the Complainant has rights in a trademark that is identical to the Domain Name. Consequently, the Third-Party
Decider does not have to investigate whether the Complainant has any rights in any other distinctive signs.
3.
Following, the condition stated in article 10, b), 1, i of the Policy is fulfilled.
2.
The Respondent has no right or legitimate interests in the domain name
1.
Article 10 b) 3 of the Policy enumerates in a non-limitative way a number of circumstances, by which the Respondent can demonstrate his rights or legitimate interests.
The Complainant alleges that none of these circumstances, nor any others are applicable to the Respondent.
The Respondent had not challenged any of the Complainant’s contentions.
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The Third-Party Decider therefore concludes that the Respondent has no right or legitimate interest in the Domain Name.
2.
Consequently, the condition stated in article 10, b), 1, ii of the Policy is fulfilled.
3.
The Respondent’s domain name has been registered or is being used in bad faith.
1.
Article 10, b), 2 of the Policy sets out, without limitation, certain circumstances which, if found are deemed to be evidence of use and registration in bad faith. The four factors listed are not exclusive but merely intended to assist the parties in establishing the strengths or weaknesses of their position ( cfr.
Clerical
Medical Investment Group Limited v. Clericalmedical.com
(WIPO Case No. D2000-
1228)).
2.
In CEPINA Case N° DOM 4013, the Third-Party Decider held that with regard to well known trademarks, there will be bad faith if the domain name holder knew or should have known about the existence of the well known trademark
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.
From the evidence supplied by the Complainant, the Third-Party Decider concludes that the trademark “Napster” is a well know trademark in Belgium and was well known before the date of registration of the Domain Name.
Based on the same evidence, the Third-Party Decider further holds that the
Respondent knew or should at least have known of the Complainant’s trademark at the time the Respondent registered the Domain Name given the widespread use of the
Complainant’s trademark and the large worldwide media coverage the trademark proprietor (Napster Inc.) as well as the here relevant trademark (Napster) have been subject to. Moreover, taking into account the Respondent’s name ( “ TheInternetOne”) it is fair to believe that the Respondent is quite familiar with the Internet and must therefore have known the here relevant trademark that was intensively used on the
Internet since 1999.
There is no need for the Third-Party Decider to investigate the other contentions of the Complainant as the facts above are in themselves sufficient to proof bad faith registration.
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Such decision has also repeatedly been taken by Panelists in other Domain Name Dispute Resolution
Systems that are based on rules that are similar to the Rules and the Policy (see SportSoft Golf, Inc. v.
Hale Irwin’s Golfers’ Passport (NAF Case No. FA0094956); Marriott International, Inc. v. John
Marriot (NAF Case No. FA0094737); Canada Inc. v. Sandro Ursino (DeC Case No. AF-0211);
Centeon L.L.C./Aventis Behring L.L.C. v. Ebiotech.com
(NAF Case No. FA0095037) and Total Fina
Elf S.A. v. Salvador Preckler Arias WIPO Case No. D2002-0257).
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3.
As a consequence, also the condition stated in article 10, b), 1, iii of the Policy is fulfilled.
VI. Decision
Pursuant to Article 10 e) of the Policy, the Third-Party Decider orders that the domain name “napster.be” be transferred from the Respondent to the Complainant.
Dated: November 12, 2002
_____________________
Yves Van Couter
Third-Party Decider
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