Euro Suisse International Ltd. v. ElectroScan Impedus GmbH
Claim Number: FA0201000104195
Complainant is Euro Suisse International Ltd., Moscow (“Complainant”) represented by Sarah M. Wolf, of Arent, Fox, Kintner, Plotkin & Kahn. Respondent is Christyna Puzluska of ElectoScan Impedus GmbH, Berlin (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <esil.com>, registered with Tucows, Inc.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on January 31, 2002; the Forum received a hard copy of the Complaint on February 4, 2002.
On January 31, 2002, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <esil.com> is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 5, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 25, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On March 4, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.” Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
1. The disputed domain name <esil.com> is confusingly similar to Complainant’s mark EURO SUISSE INTENATIONAL LTD. and ESIL. The domain name <esil.com> is identical to Complainant’s ESIL mark. Therefore, the disputed domain name does not distinguish itself from Complainant’s trademarks.
2. Prior to allegedly establishing ElectroScan Impedus GmbH, a name that incorporates “esil,” Respondent has not been known as <esil.com>. Further, the passive use of <esil.com> combined with the offer to the sell the domain name to Complainant does not demonstrate a use of the disputed domain name in connection with a bona fide offering of goods and services nor is a legitimate noncommercial or fair use. Therefore, Respondent cannot demonstrate its rights to and legitimate interests in <esil.com>.
3. Respondent’s history of cybersquatting coupled with Respondent’s offer to sell the disputed domain name to Complainant for $60,000 is evidence that Respondent has registered and used the disputed domain name in bad faith.
No Response was received.
Complainant is a subsidiary of the international company Binatone, a leading manufacturer of household appliances. Complainant has been in business for more than four decades and has been known by consumers as EURO SUISSE INTENATIONAL LTD. since April 1, 1993. Consumers have referred to Complainant as ESIL as early as December, 1996. Complainant has spent more than $141,000 in the past five years advertising and promoting its products and services. Complainant has won recognition and acclaim as the champion of the Hong Kong Electrical Appliances Design and Innovation Competition.
Complainant registered and began using the domain name <esil.com> on October 13, 1996. Complainant used the domain name to redirect users to its commercial headquarters website. Complainant has spent considerable sums in printing costs incorporating its ESIL mark. Complainant also incorporated ESIL in its employees’ e-mail, “@esil.com.”
Due to miscommunication, Complainant lost <esil.com> to the public domain on January 12, 2000. Sahar Sarid of Registral.com registered <esil.com> on January 12, 2000. After months of attempting to regain its rights to <esil.com> through Network Solutions, Complainant contacted Mr. Sarid, stating that it was interested in the disputed domain name. Mr. Sarid offered to sell <esil.com> to Complainant for $60,000. Discusions between Mr. Sarid and Complainant continued for seven months before January 30, 2002, when the disputed domain name was transferred to the current registrant, ElectroScan Impedus GmbH, with Christyna Puzluska as the listed contact.
Complainant asserts that Mr. Sarid still maintains control of <esil.com>. According to Complainant, this type of transferring and cybersquating behavior by Respondent is not new.
The website connected with the domain name in dispute is currently “under construction” and displays a third party search engine.
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
For nearly nine years, Complainant has been known as EURO SUISSE INTENATIONAL LTD. and it has been known by its abbreviation ESIL for the last five years, therefore, Complainant has established its rights in both marks. See Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of the said name [“keppelbank.com”] in connection with its banking business, it has acquired rights under the common law); see also McCarthy on Trademarks and Unfair Competition, § 25:74.2, Vol. 4 (2000) (The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name complaint under the policy).
The <esil.com> domain name is identical to Complainant’s ESIL mark. Since use of a generic Top-Level Domain is a requirement for registration of a domain name, the gTLD “.com” that follows the Complainant’s mark does not distinguish the disputed domain name from ESIL. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants").
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent has failed to file a Response in this matter. Therefore, the Panel may presume that Respondent has no rights or legitimate interests in <esil.com>. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
Based on the evidence provided, Respondent’s only use of the disputed domain name was to offer to sell it to Complainant for as much as $60,000. This use is not evidence of a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit).
Complainant alleges that Respondent’s purported company name is actually an alias to protect the actual disputed domain name owner, Sahar Sarid. Because there is no evidence presented to the contrary, the Panel may accept Complainant’s assertion as true. See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”). Thus the Panel concludes that Respondent is not commonly known as <esil.com> and Respondent has failed to satisfy Policy ¶ 4(c)(ii). See Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).
Currently, the disputed domain name hosts an “under construction” splash page and it is believed to have always been “under construction.” This is hardly a demonstration that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. Thus, Respondent has failed to satisfy Policy ¶ 4(c)(iii). See BMW AG v. Loophole, D2000-1156 (WIPO Oct. 26, 2000) (finding no rights in the domain name where Respondent claimed to be using the domain name for a non-commercial purpose but had made no actual use of the domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent has passively held the disputed domain name and its only apparent use was to offer it to Complainant for $60,000. This is evidence that Respondent’s registration is in bad faith as pursuant to Policy ¶ 4(b)(i). See America Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where Respondent offered domain names for sale); see also Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (failure to use the domain name in any context other than to offer it for sale to Complainant amounts to a use of the domain name in bad faith); see also Randstad Gen. Partnet, LLC v. Domains For Sale For You, D2000-0051 (WIPO Mar. 24, 2000) (finding bad faith where the Respondent offered the domain name for sale on its website <internetdomains4u.com> for $24,000).
Respondent registered and used a domain name that is identical to Complainant’s mark. Respondent registered the disputed domain name the same day Complainant mistakenly lost ownership control of the same disputed domain name. Furthermore, Respondent was not commonly known as <esil.com> at the time it registered the domain name in dispute. This behavior by Respondent is evidence that it registered and used the disputed domain name in bad faith as outlined in Policy ¶ 4(b)(iv). See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding bad faith where the Respondent attracted users to a website sponsored by the Respondent and created confusion with the Complainant’s mark as to the source, sponsorship, or affiliation of that website).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief be hereby granted.
Accordingly, it is Ordered that the domain name <esil.com> be transferred from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist
Dated: March 11, 2002
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