WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lycos Europe N.V. v. RegionCo
Case No. D2000-1102
1.
The Parties
The Complainant is Lycos Europe N.V., Carl-Bertelsmann-Strasse 161-L,
33311 Guetersloh, Germany.
The Respondent is RegionCo, 33311 Guetersloh, Berlin, Berlin 33311, Germany.
2.
Domain Name and Registrar
The domain name at issue is <lycoseurope.com>; hereinafter referred to as the
“Domain Name”. The Registrar is Network Solutions, Inc., Herndon VA 20170,
505 Huntmar Park Drive, USA.
3.
Procedural History
The Complaint was submitted by e-mail to the WIPO Arbitration and Mediation Center
(the “Center”) on August 21, 2000. A hardcopy of the Complaint was received by the
Center on August 30, 2000. In the Complaint, the Complainant named Alhad Saleh
#1010, c/o Alsaha, Baghdad, Baghdad 10000, IQ as the Respondent and
Register.com, Inc., as the Registrar. On August 23, 2000, the Center sent an
Acknowledgement of Receipt of Complaint to the Complainant by e-mail.
On August 23, 2000, a Request for Registrar Verification was transmitted to
Register.com, Inc., who notified the Center via e-mail of August 24, 2000, that it is not
the Registrar for the Domain Name. Subsequently, the Center transmitted a Request for
Registrar Verification to Network Solutions via e-mail on August 28, 2000. The
Registrar replied on August 30, 2000, confirming that it is the Registrar of the Domain
Name and that the Domain Name is in “Active” status. On August 28, 2000, the
Complainant was notified by the Center that an amendment to the Complaint,
specifying the Registrar, needed to be filed.
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The Registrar Verification revealed that the contact details of the Respondent had been
changed showing the Complainant’s name and e-mail address “adsales@lycos.de” as
the Respondent’s contact. As a consequence, the Complainant assumed that the
Domain Name had been transferred to the Complainant after the Complaint had been
filed and requested to suspend the proceedings for 30 days to allow the Complainant to
verify the transfer. The suspension was granted by the Center on August 31, 2000, and
communicated to the Complainant via e-mail as well as to Alhad Saleh by post/courier,
facsimile and e-mail and to the Registrar via e-mail.
Subsequently, on the request of the Complainant, the proceedings were suspended by
subsequent time periods of 30 days each until April 21, 2001. The Registrar, however,
refused to comply with the modifications to the register requested by the Complainant
via e-mail of March 13, 2001, stating that it requires the documentation that the
proceedings have been terminated and both parties have agreed on the decision to
terminate and transfer the domain name. On April 18, 2001, the Complainant requested
to re-institute the proceedings.
On May 8, 2001, the Center notified the Complainant of the formal deficiencies of the
Complaint with respect to the indication of the Registrar of the Domain Name and the
Respondent. Hereupon, the Complainant submitted a duly amended Complaint by
e-mail to the Center on May 18, 2001. A hardcopy of the Complaint was received by
the Center on May 21, 2001.
On May 21, 2001, the Notification of Complaint and Commencement of Administrative
Proceeding was transmitted to the Respondent. The Notification was sent to the
Respondent by means of post/courier, facsimile and e-mail. In this Notification the
Respondent was advised that the Response must be submitted to the Complainant and
to the Center by June 9, 2001.
By e-mail of May 21, 2001, the Center was notified that the Notification to
“alhadsaleh@yahoo.com” could not be delivered because the account had been
disabled or discontinued. Furthermore, the Center was notified by e-mail of
May 26, 2001, that the Notification could not be delivered to
“postmaster@lycoseurope.com” due to permanent fatal errors of such address. The
delivery of the Notification to the Respondent by post/courier and facsimile failed as
well.
Having received no formal Response from the Respondent, on June 12, 2001, the
Center issued a Notification of Respondent Default to the Complainant and the
Respondent by e-mail. However, the Notification could not be delivered to the latter.
On July 2, 2001, Dr. Andrea Jaeger-Lenz, having provided the Center with a Statement
of Acceptance and Declaration of Impartiality and Independence, was appointed as a
single member Administrative Panel and the Parties were so informed via e-mail. An
electronic copy of the Complaint was e-mailed to the Administrative Panel on the same
day, and the hardcopy of the Case File followed by courier on July 3, 2001.
The Sole Panelist finds that the Administrative Panel was properly constituted and
appointed in accordance with the Policy, the Rules and the Supplemental Rules.
After having studied the case file in reference the Administrative Panel formed a
preliminary view that the requirements of paragraph 4(a) of the policy were met, but it
remained in doubt whether the Complainant was entitled to holding the Domain Name
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under the “.com” Top-Level-Domain. It appeared, however, highly likely that the
Complainant could demonstrate entitlement upon further submission of evidence.
Following the procedure adopted by the learned administrative panels in WIPO Case
No D2000-1490 and WIPO Case No. 2001-0592 this Administrative Panel issued, in
accordance with Rule 12 of the Rules for UDRP, on August 9, 2001, directions seeking
further evidence from the Complainant on or before August 23, 2001. Such evidence
was received by the Center on August 23, 2001, and forwarded to the Panel with copy
to the Respondent. The Respondent did not furnish any submissions.
As the Respondent has not submitted a Response in accordance with paragraph 5 (b) of
the Rules, the following Decision is issued on the basis of the Complaint, the Policy,
the Rules and the Supplemental Rules and without the benefit of a Response from the
Respondent.
4.
Factual Background
a)
The Complainant is a stock corporation organised under the laws of The
Netherlands. According to its shareholder agreement, its purpose is to hold and
manage the interests in and shares of operative subsidiaries. Lycos Inc., is the
operator of a search service for the search, retrieval and cataloguing of documents
in the Internet located at <lycos.com>. By way of a license agreement dated
February 18, 2000, with Lycos, Inc., 400-2 Totten Pond Road, Waltham,
Massachusetts 02451, USA, the Complainant acquired a license to use the
trademark “Lycos” and the name “Lycos” in its own corporate name in the
combined form “Lycos Europe” in Europe (see Annex 3 to the Complaint,
Section VI. D. (1), Attachment A). According to Section VI. G. of the
aforementioned licence agreement, the Complainant is entitled to register and be
listed as the owner of domain names with country designations for the countries
in the applicable territory which include the name “Lycos”. In Section IV. C. the
Complainant undertook not to use any trademarks, trade names or service marks
owned by Carnegie Mellon Unversity (CMU), Lycos, Inc., or Point
Communications except as specifically provided in the license agreement.
Furthermore, according to a certification of August 20, 2001, signed by Brian
Lucy, Chief Financial Officer of Lycos, Inc., submitted to the Center on
August 23, 2001, the Complainant, under the address of Richard Holkade
30-34, 2033 PZ Haarlem, would be authorized by Lycos, Inc., to hold the Domain
Name at issue.
Lycos, Inc., is entitled to the use and sublicensing of the trademark “Lycos” on
the basis of a license agreement of June 16, 1995, with CMU. CMU is the owner
of the trademark “Lycos” registered in the US. According to Section VIII. D. of
this license agreement, Lycos, Inc., obtained the right to use this trademark on a
perpetual, world wide and exclusive basis. Furthermore, Lycos, Inc., and CMU
agreed that any trademark registration would be undertaken by CMU.
Subsequently, the mark “Lycos” was applied for as a Community trademark for
CMU on May 3, 1996, and published on March 16, 1998, (see Annex 10 to the
Complaint), under the application no. 257402.
On May 1, 1997, Lycos, Inc., entered into an agreement with Bertelsmann
Internet Services GmbH on the establishment of joint entities in order to launch
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the Lycos Search Service in a number of European countries (see Annex 7 to the
Complaint). In July 1997, the Lycos Bertelsmann GmbH & Co. KG was
established in Germany in accordance with the aforementioned agreement (see
Annex 8 to the Complaint). Since that day that company was trading under
“Lycos”. The Lycos Bertelsmann GmbH & Co. KG was the “predecessor-ininterest” to the Complainant with respect to the operation of the Lycos InternetSearch Service.
The Complainant refers to the domain name “lycos-europe.de” registered for
Lycos Bertelsmann GmbH & Co. KG (see Annex 7 to the Complaint) as well as
the domain name “lycos.de” which is registered for Bertelsmann AG (see Annex
12 to the Complaint), a parent company of the Complainant. “Lycos” search
engines are also provided on a national basis in a number of European countries,
including Belgium, Germany, Denmark, France, United Kingdom, Italy,
Netherlands, Norway, Sweden, Switzerland and Spain as well as in a number of
American and Asian countries. In these countries the trademark is also used as a
component of a domain name with the respective country code top level domains
(ccTLD´s). The “Lycos” search service has risen to become the third most
popular search engine on the Internet after Yahoo and Altavista.
b)
The Respondent is the registrant of the Domain Name, the registrar of which is
Network Solutions, Inc. The Domain Name does not resolve to an active website
or other online presence but its registration is in active status. It was created on
July 9, 1999.
Prior to issuing the Complaint, the Complainant tried without success to contact
the Respondent, using the details then current on the Registrars register. The
attempt to deliver a letter to the postal address of the Respondent’s contact then
given in the register failed, due to insufficient address details. Any efforts to
contact the Respondent by telephone or fax failed, as well. An e-mail sent to the
Respondent was delivered, however, the Respondent did not respond.
In the course of these attempts to contact the Respondent and the filing of the
Complaint, the Respondent’s records in the register were changed. While only
the name of the registrant “RegionCo” remained the same, the address and the
contact details were amended. Any efforts to contact the Respondent by the
Complainant and the Center under the amended contact details given in the
register failed. The e-mail address given by the Respondent does not connect to
the Respondent but to the Complainant.
5.
Parties Contentions
a)
Complainant
The Complainant contends that the Domain Name is confusingly similar to the
trademark “Lycos” licensed to the Complainant as well as to its trading name
“Lycos Europe N.V.” and that the Respondent has no rights or legitimate interests
in respect of the Domain Name, and that it has been registered and is being used
in bad faith. The Complainant requests that the Domain Name be transferred to
the Complainant by the Respondent.
b)
Respondent
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The Respondent is in default as it has not contested the allegations of the
Complaint by way of any response.
6.
Discussions and Findings
Paragraph 4(a) of the Policy directs that the Complainant must assert each of the
following:
(i)
that the Domain Name registered by the Respondent is identical or
confusingly similar to the trademark in which the Complainant has rights;
and
(ii)
that the Respondent 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)
Similarity of Trademark and Domain Name
(1)
In this case it had to be looked in more detail, whether the Complainant has
any rights in a trademark to base the Complaint on. The Complainant is
according to his own contentions and submissions not owner of any
trademark application or registration in “Lycos”. Neither has he
substantiated that he himself has acquired any trademark or trade name
rights through use. In particular, he has not demonstrated in the Complaint
or through its annexes, in which way the Complainant has acquired rights of
his own in the trading name “Lycos Europe” either by Dutch, German or
other legal regime. There is no evidence of commercial activities of the
Complainant himself under that name. He merely points to the use of
“Lycos” by other companies within the Lycos or Bertelsmann group in this
respect and refers to domains held by other Bertelsmann entities. However,
the Policy and Rules do not limit the ability to be Complainant in the
Uniform Domain Name Dispute Resolution Procedure to owners of
trademarks but merely require that the Complainant demonstrate rights in a
trademark. As a license confers upon the licensee the right to use a
trademark, the fact that Complainant has demonstrated no trademark rights
of his own does not bar his standing in this procedure.
(2)
According to the facts submitted by the Complainant, the Panel finds that
the Complainant has rights in the trademark “Lycos” as and subject to the
conditions of a sub-licensee. According to the license agreement between
CMU and Lycos, Inc., of June 16, 1995, the latter is the exclusive licensee
of all registered and unregistered trademarks “Lycos” world wide.
However, at the time of conclusion of the license agreement, the trademark
“Lycos” existed only in the US and thus no license outside of the US could
be granted in principle. Notwithstanding that, the parties to the license
agreement contemplated that Lycos, Inc., should acquire rights as a licensee
not only in the trademarks existing at the execution of the license
agreement, but also in any trademark rights arising afterwards. Therefore,
the license is to be construed also as a future license in trademark rights in
other parts of the world with regard to any such rights under the condition
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that such rights come into existence, either by application or by registration.
The application of a Community trademark may be subject to a license,
Art. 24 CTMR. Thus, the Panel is convinced that the license agreement
between CMU and Lycos, Inc. includes the rights deriving from the
Community trademark application “Lycos”, registered in the name of
CMU. The circumstances that lead to this conclusion are that CMU
licensed its rights in the trademarks “Lycos” to Lycos, Inc. on a perpetual
world wide and exclusive basis and that CMU and Lycos, Inc. expressly
anticipated the future registration of trademarks in the name of CMU, but
evidently envisaged its use by Lycos, Inc., on the basis of their license
agreement (see Section VIII. D. of Annex 6 to the Complaint).
b)
(3)
By way of the license agreement of February 18, 2000, the Complainant
acquired an exclusive sub-license from Lycos, Inc. to use the Community
trademark application “Lycos” in Europe and sublicense to operative
subsidiaries. The reference made in Attachment A to this license agreement
to the registration of the trademark “Lycos” in the US does not contradict
these findings. Since the license agreement was concluded for the purpose
of operating the search service for the European market, it is reasonable to
conclude that the parties intended to agree on a sub-license on any
trademark right existing in the respective territory. The Panel is, therefore,
of the opinion that in the context of Attachment A the reference to the
registration in the US is not intended to limit the scope of the licensed rights
to the Complainant but is merely given for informative purposes. Hence,
the Complainant has rights in the Community trademark application
“Lycos”, registered in the name of CMU, as a sublicensee.
(4)
The Domain Name <lycoseurope.com> is confusingly similar to the US
Trademark registration and Community trademark application “Lycos”.
Within the relevant part of the Domain Name “lycoseurope” the element
“lycos” is identical to the trademark in issue. It also forms the
characteristic and distinctive component of the term “lycoseurope”, because
the public will conceive the element “europe” merely as a descriptive
reference to the geographical source or origin of the goods and services
provided under the name “Lycos”. In any event, the conformity of the
characteristic element of the domain name with the trademark “Lycos”
leads to the assumption that the Respondent is affiliated or associated as a
licensee with the owner of the trademark as well as, indirectly, with the
Complainant. This finding is supported by Art. 6 of the Joint
Recommendation Concerning the Protection of Well Known Marks of
September 1999, according to which a domain name is confusingly similar
to a well known mark, if that mark forms a substantial part of the domain
name, which is the case here.
(5)
Therefore, the Panel concludes that the Domain Name is confusingly
similar to the trademark the Complainant has rights in.
Rights or Legitimate Interests of the Respondent in the Domain Name
According to Paragraph 4(c) of the Policy, for the purposes of Paragraph 4(a)(ii)
the following circumstances, in particular, but without limitation, shall
demonstrate rights or legitimate interests of the Respondent:
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(i)
the Respondent’s 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, before any
notice to the Respondent of the Dispute; or
(ii)
the Respondent (as an individual business, or other organisation) has
been commonly known by the Domain Name, even if the Respondent
has no trademark or service mark rights; or
(iii) 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 trademark or service
mark at issue.
The Complainant denies any connection with the Respondent or license
relationship between Lycos, Inc., and the Respondent with respect to the use of
the trademark or trading name “Lycos” or any other authorisation for the
registration of a domain name incorporating the trademark. The Respondent has
not opposed these submissions.
The contentions made by the Complainant do not indicate that the Respondent
has any rights or interest in respect of the Domain Name according to
Paragraph 4(c)(i)–(iii) of the Policy, or any other rights or legitimate interests. It
is sufficient for the Complainant to establish prima facie evidence that the
Respondent lacks any legitimate interest (see Eckes-Granini GmbH & Co. KG v.
Weitner A.G., WIPO Case No. D2000-1116). The fact that the Respondent’s
contact details in the register were changed after the Complainant asserted its
rights with respect to the Domain Name through the e-mail contact given in
Annex 1 to the Respondent prima facie demonstrates that the Respondent is
aware of the absence of any right or legitimate interest in the Domain Name.
Therefore, it is the onus of the Respondent to show that the registration of the
Domain Name was legitimate. The Respondent has failed to do so.
Hence, the Panel finds that the Respondent has no rights or legitimate interest in
respect of the Domain Name.
c)
Registration and Use in Bad Faith
It must be determined, whether the Respondent had registered and used the Domain Name in bad faith. Under Paragraph 4(b) registration and use in bad faith
can be demonstrated by (i) circumstances indicating that he has registered or you
have 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 that complainant,
for valuable consideration in excess of his documented out-of-pocket costs directly related to the domain name; or (ii) he has registered 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 he has engaged in a pattern of such
conduct; or (iii) he has registered the domain name primarily for the purpose of
disrupting the business of a competitor; or (iv) by using the
domain name, he has intentionally attempted to attract, for commercial gain, Internet users to his web site or other on-line location, by creating a likelihood of
confusion with the complainant's mark as to the source, sponsorship, affiliation,
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or endorsement of your web site or location or of a product or service on his web
site or location.
The Respondent has remained completely passive in all respects other than trying
to conceal his true identity and address. The Domain Name does not resolve into
a website or other online presence. The Panel recognises that Paragraph 4(a)(iii)
requires not only bad faith registration, but also use in bad faith by the
Respondent. However, it is not necessary for the Complainant to prove a positive
action in bad faith by the Respondent in relation to the Domain Name. As can be
inferred from the circumstances identified in Paragraph 4(b)(i)–(iii) passive
holding of a Domain Name after its registration may under certain circumstances
constitute bad faith use (see Telstra Corporation Limited. v. Nuclear
Marshmallows, case No. D2000-0003, para. 7.10). Since a distinction is made
between the registration and the use in bad faith, passive holding may be
interpreted as an active use only if the Complainant can show additional
circumstances that demonstrate that the Respondent’s action amounts to bad faith.
The Complainant has not submitted any facts allowing the conclusion that the
aforementioned requirements are satisfied. However, the circumstances
identified in Paragraph 4(b) are not exhaustive. Therefore, the Panel may
recognise bad faith use by passive holding on the grounds of other circumstances
of the Respondent’s behaviour not explicitly mentioned in Paragraph 4(b)(i)–(iv)
of the Policy.
The uncontested facts submitted by the Complainant have to be looked at more
closely therefor. First of all, it may be assumed from the circumstances that the
Respondent wanted to prevent the owner of the trademark from reflecting his
trademark in the Domain Name. The trademark “Lycos” of CMU, in which the
Complainant has rights, is widely known among Internet users. It enjoys a
recognition comparable to that of well known search engines like Altavista or
Yahoo. Many dot-coms which started out their business in the US subsequently
built up web presences in Europe. In order to operate a European website it
would have been only logical for the trademark owner or entitled user of this
trademark to pick the Domain Name that the Respondent registered for himself.
It is inconceivable, that the Respondent has not known about the “Lycos” search
engine prior to registering the Domain Name. Furthermore, the Respondent has
taken active steps to conceal its true identity by using false contact details and has
not responded to any of the Complainant’s efforts to resolve the conflict of the
Domain Name registration with the Complainant’s interests before or in the
course of these proceedings. Besides that, the Respondent has not provided any
evidence of actual or contemplated good faith use of the Domain Name. Taking
into account, finally, that the Respondent changed the contact details of the
register by using the Complainant’s details and that it disconnected its e-mail
contact, the Panel is unable to conceive of any plausible actual or contemplated
active use of the Domain Name by the Respondent that would be legitimate (see
Telstra Corporation Limited. v. Nuclear Marshmallows, WIPO Case No. D20000003, para. 7.12.).
The Panel, therefore, concludes that the Respondent’s registering and subsequent
passive holding of the Domain Name satisfies the requirement of Paragraph
4(a)(iii) that the Domain Name is being used in bad faith by the Respondent.
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d)
Remedies
The Administrative Panel is satisfied that all three requirements under
Paragraph 4(a) of the Policy are fulfilled. The Complainant requests the Panel to
order the transfer of the Domain Name to the Complainant in accordance with
Paragraph 4(i) of the Policy. However, this particular case created the paradox
situation that even if all requirements were met, yet the Complainant appeared
according to his own original submissions not to be entitled to holding the
domain himself: According to Section VI. G. of the license agreement with
Lycos, Inc. of February 18, 2000, the Complainant is explicitly entitled to register
and be listed as the owner of domain names which include the name “Lycos” with
country designations for the countries in the contract territory only. Under the
license agreement Lycos, Inc. does not confer any rights on the Complainant to
register a domain name containing the name “Lycos” with the top level domain
“com”. According to Section VI. C., the Complainant was not entitled to use the
trademark “Lycos” except as specifically provided in the license agreement.
Therefore, the Panel concluded preliminarily that the transfer of the Domain
Name to the Complainant and subsequent holding of the Domain Name by
Complainant would constitute an infringement of the license owned by
Lycos, Inc. Other than derivative trademark rights, the Complainant had not
demonstrated that it has acquired own rights in the “Lycos” as a trademark or
trade name by actual use in commerce under any legal regime.
The remedies available under the Policy, if all three requirements of
Paragraph 4(a) of the Policy are met, are either the cancellation of the Domain
Name or its transfer to the Complainant. The Policy does not set forth any
requirement to be fulfilled by the Complainant for either remedy. Also, Rule 4(i)
of the Rules does not answer the question whether the Panel is bound in its
decision by the motion of the Complainant to either transfer or cancellation, or
whether it is up to the Panel´s discretion to decide in favour of either transfer or
cancellation, cancellation as implied minus to a requested transfer, according to
the Parties´ material contentions. Neither Paragraph 10 nor Paragraph 15 of the
Rules give any guidance on this question either. In the preliminary view of the
facts submitted in this case by the Complainant, cancellation of the Domain
Name appeared the correct remedy as opposed to the requested transfer.
However, Paragraph 10(b) of the Rules request the Panel to give parties a fair
opportunity to present their case. In accordance with Paragraph 10(a) of the
Rules and following ruling in the procedures WIPO Case No. D2000-1490 and
WIPO Case No. D2001-0592 the Panel therefore considered it appropriate in this
case to issue an Order seeking a statement by the licensor Lycos, Inc., on whether
the Complainant would be entitled to hold the Domain Name at issue, as
referenced in the Procedural History.
Such statement with the content that the Complainant was entitled to holding the
Domain Name at issue, as referenced in the Factual Background, was sent by the
Complainant to the Center on August 23, 2001. The address of the Complainant
named by the licensor Lycos, Inc. is a Dutch address as opposed to the German
address originally given. The Administrative Panel has, however, no reason to
doubt, that the entity named in the statement as entitled and the Complainant are
the same legal entity, but that the Complainant has merely changed address since
this administrative proceeding started and failed to notify the Center of this. This,
however, does not have material adverse effect to his claim.
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For the foregoing reason, the Administrative Panel finds that the correct remedy
to be applied here is transfer of the captioned Domain Name instead of
cancellation.
7.
Decision
In the light of the foregoing reasons, the Panel decides that the Domain Name at issue is
confusingly similar with the trademark in which the Complainant has rights, that the
Respondent has no rights or legitimate interests in respect of the Domain Name, and
that the Domain Name has been registered and used in bad faith.
Accordingly, the Panel requires, pursuant to Paragraph 4(i) of the Policy, that the
Domain Name <lycoseurope.com> be transferred to the Complainant.
Dr. Andrea Jaeger-Lenz
Sole Panelist
Dated: August 28, 2001
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