DECISION

 

Eurosat Distribution Limited v. Intertech Servies c/o RF Networks

Claim Number: FA0208000117904

 

PARTIES

 

Complainant is Eurosat Distribution Limited, London, UNITED KINGDOM (“Complainant”) represented by Sarah Woolway, of Morgan Cole Solicitors.  Respondent is Intertech Services d/b/a RF Networks LLC, Dallas, TX, USA (“Respondent”) represented by Scott J. Stubbs.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

 

The domain name at issue is <eurosat.com>, registered with Network Solutions, Inc.

 

PANEL

 

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.

 

Fernando Triana, Esq., as Panelist.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 8, 2002; the Forum received a hard copy of the Complaint on August 9, 2002.

 

On August 14, 2002, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <eurosat.com> is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 August 21, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 10, 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 postmaster@eurosat.com by e-mail.

 

A timely Response was received and determined to be complete on September 10, 2002.

 

Complainant’s additional submissions were received on September 13, 2002.

 

Respondent’s additional submissions were received on September 13, 2002.

 

On September 30, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Fernando Triana, Esq., as Panelist.

 

RELIEF SOUGHT

 

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

 

A. Complainant

 

Complainant states that it is a company registered in the United Kingdom since April 25, 1988, and has used the name Eurosat Distribution Limited since its incorporation. Complainant asserts that it established goodwill in the mark Eurosat in the satellite industry.

 

According to Complainant, it owns the following domain names registrations: <eurosat.co.uk>, <eurosat.biz>, <eurosateastern.co.uk>, <eurosatyorkshire.co.uk>, <eurosatscotland.co.uk>, <eurosatsouthern.co.uk> and <eurosatlondon.co.uk>.

 

Complainant further contends that it is the owner of the trademark registration No. 2,017,928 in the United Kingdom, registered on April 19, 1995, for the trademark EUROSAT, to cover goods of International Class 9, namely “satellite receivers and parts and fittings therefore.”

 

Likewise, Complainant applied for registration of the trademark EUROSAT before the United Kingdom Trademark Office, to cover: “Apparatus for recording, transmission or introduction of sound or images; DVD players; DVD recorders; electrical and electronic apparatus for use in reception of satellite, terrestrial or cable broadcasts; radio signal antennae; apparatus for de-coding encoded signals; apparatus for the transmission and reception of sound and images; modems; satellite and digital television ancillary equipment; apparatus for use in positioning of satellite broadcast receiving dishes; apparatus for use in telephony; parts and fittings for the aforesaid goods”. This trademark application was filed on February 13, 2002 and was assigned No. 2,292,639.

 

On this basis, Complainant concludes that the domain name <eurosat.com> is identical to its UK trademark registration.

 

Additionally, Complainant asserts that the Respondent has never traded under the mark EUROSAT and the only use is made through the domain name at issue. Complainant states that Respondent does not own any trademark registration for the mark EUROSAT and therefore lacks of rights or legitimate interests in respect of the domain name.

 

Complainant also contends that the Respondent registered and uses the domain name subject of the controversy in bad faith for the reasons set forth below.

 

Complainant explains that in or around June 1997, it became aware that an advertisement had been placed in the magazine “What Satellite TV” by a business called “Techsat”, which made reference to the domain name <eurosat.com>. Through the website, Techsat was offering for sale, satellite television products. According to Complainant, this situation constituted infringement of its trademark EUROSAT and caused confusion among the consumer public. This use is an infringement under §10 (1) of the United Kingdom Trade Marks Act 1994, which provides: “A person infringes a registered trade mark if he uses in the course of a trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered”.

 

Complainant entered into correspondence with Techsat, claiming trademark infringement. Complainant asserts that it requested that the domain name be transferred to it, but Techsat refused to do so. After various correspondence, Techsat’s solicitors stated in a letter dated June 25, 1997, the following: “Although our client’s web-site is currently being used to promote the sale of satellite television equipment this position will change over the next fortnight or thereabouts. Our client is taking steps to transfer all product promotion to a different site.  Once this process is complete the existing eurosat.com site will be used for information purposes only to convey, for example, the latest news in the satellite field.”

 

According to Complainant, Techsat and the Respondent are one and the same. The Whois directory reveals that Respondent owns the domain name at issue since May 11, 1996 and it has never been transferred.

 

Complainant states that due to the response given by Techsat on June 25, 1997, it did not seek further redress through the Courts. However, Complainant could evidence that Respondent’s website has, until recently, borne the following notice: “Sorry this website is due for a much needed update and will not be available for now.”

 

In or around July 2, 2002, traffic to the Respondent’s website was diverted to the website accessed via the domain name <afternic.com> and the domain name <eurosat.com> was offered for sale. The asking price was US$10,000. Complainant contends that this is in direct contravention to the UDRP Policy ¶ 4(b)(i), since US$10,000 exceeds the out of pocket expenses directly related to the domain name.

 

Complainant believes that Respondent registered the domain name at issue and maintained its registration in order to prevent Complainant from registering the domain name. Although Respondent was aware that the domain name infringed Complainant’s trademark, it refused to transfer it to Complainant on the basis that it planned to change the content of the website, but it never did so. Respondent has not made a legitimate use of the domain name and is preventing Complainant from making use of a domain name over which it has a legitimate interest.

 

Finally, Complainant states that on July 2, 2002, its representatives wrote to Respondent setting out the nature and extent of the Complaint and requested that the domain name <eurosat.com> be transferred to Complainant. Respondent did not answer such correspondence. Complainant’s representatives attempted to contact Respondent’s registrant but received notification from the registrant’s postmaster that the message was undeliverable as the destination address was unknown. Complainant also attempted to contact Respondent’s administrative contact but the telephone number obtained from the Whois directory was incorrect. In these circumstances, Complainant submits that the fact that Respondent is not responding to any communication and the details submitted to Whois are incorrect is clear evidence of bad faith.

 

B. Respondent

 

In its response, Respondent contends that although the domain name <eurosat.com> is similar to part of Complainant’s trade name and its United Kingdom trademark, it also corresponds to Respondent’s trademark EUROSAT applied for registration in the United States and registered in Tunisia.

 

Respondent asserts that Complainant once held a United States trademark on EUROSAT for a proposed satellite receiver deal in the mid 1990’s, but the trademark was cancelled under Section 8, Title I of the Trademark Act of 1946, on January 1, 2001. Respondent states that Complainant does not have known products marketed in the United States and that Complainant’s products are strictly positioned toward European audiences.

 

Respondent also sets forth that the term EUROSAT stands for “Europe” and “satellite” and has been applied to various other commercial offerings. Disney uses the term in Europe to identify its roller coaster and a company in Italy used the domain name <eurosat.it>.

 

According to Respondent, in 1997 Complainant offered to swap the <eurosat.com> domain name for <eurosat.org>, which shows that Complainant was not concerned about the use of the EUROSAT mark but with the use of the .com TLD.

 

Respondent contends that it has legitimate rights and interests in the domain name at issue, since it is identical to Respondent’s commercial product offering, Eurosat Wireless, a point to multi-point wireless UNI band wireless distribution network in the United States that is uplinked via satellite to distribution points in Europe. To this end, Respondent applied for registration of the EUROSAT mark before the United States Patent and Trademark Office, on July 18, 2002. First use of the mark in commerce was June 31, 2002 (sic).

 

Respondent further contends that it is the registered owner of the domain names <eurosat.net>, <eurosat.org>, <eurosat.us>, <eurosat.info> and <eurosat.org.uk>.

 

Additionally, Respondent asserts that it has a valid trademark registration for EUROSAT in Tunisia, dated July 29, 1997, to identify satellite transmissions related to equipment sales and operations.

 

Respondent also states that its commercial offering is substantially dissimilar to Complainant’s. According to Respondent, Complainant’s trademark is registered strictly for use in the sale of actual material electrical apparatus and not for a service offering. Further, the geographical areas do not overlap.

 

Respondent sets forth that there has not been bad faith in the use of the domain name. Upon receiving the initial correspondence from Complainant, in 1997, Respondent removed the objectionable material in a timely manner and agreed to use the domain name for generic satellite industry news and not to offer products confusingly similar to Complainant’s. Respondent contends that it moved all disputed product offerings to a different domain name, <techtronics.com>. Respondent believes that this indicates that it did not have intention of infringing on Complainant by attempting to falsely deceive potential costumers by attracting them to Respondent’s website.

 

Further, Respondent asserts that it registered the domain name <eurosat.com> at nearly the same time when Complainant began using the word EUROSAT in its business. At that time, Complainant was unknown to Respondent and the rules that govern domain names were much less defined. Taking into account the length of time that Respondent has owned the domain name at issue and the length of time that Complainant has owned the UK trademark, Respondent considers that Complainant can not claim “long standing use and historic nature” as an argument against Respondent. Therefore, no “opportunistic bad faith” can be shown. Due to the existence of the Disney’s Eurosat and the Italian Eurosat, Respondent believes that it could have made active use of the disputed domain name without causing confusion with Complainant.

 

Finally, Respondent contends that in year 2001, an employee of Respondent accidentally listed the domain name for sale. However, the mistake was discovered and the offer was removed. At that time, Complainant initiated again correspondence with Respondent regarding the domain name. According to Respondent, it is interesting that the asking price of the domain name was only one-third of the cost for Complainant to file this complaint. During the seven (7) years of negotiations between the parties, Respondent alleges that it offered to sell the domain name to the Complainant for substantially less than the cost of this proceeding, offered to share the domain name by posting portal links to both companies and has cooperated in dealing with each an every concern raised by Complainant. As a consequence, Respondent sets forth that there has not been bad faith in the use of the domain name involved when Complainant offered to let Respondent use <eurosat.org> in exchange for <eurosat.com>.

 

C. Additional Submissions

 

Complainant

 

In its additional submission, Complainant states that Respondent has not provided proof of ownership of rights over the trademark EUROSAT in United States and Tunisia. With respect to the trademark in Tunisia, Respondent has not provided the registration number or any documentary proof of its registration or application. In the case of the application in the United States, Respondent does not have any registered trademark rights and has not shown evidence of unregistered rights. The application was filed thirty (13) days after Complainant contacted Respondent requesting the transfer of the domain name <eurosat.com>. According to Complainant, the only EUROSAT trademark registration that has existed in the United States is the one obtained by Complainant that subsequently lapsed. Likewise, Respondent has not shown evidence of the use in commerce of the trademark EUROSAT, as stated in his response and in the trademark application in the United States.

 

With respect to Respondent’s allegation that Complainant offered to swap <eurosat.org> for <eurosat.com>, Complainant contends that it never occurred and there is no evidence to the contrary. Complainant considers that it has always requested Respondent to cease the use of the trademark EUROSAT as part of a domain name or in any other way in connection with its business as such infringes Complainant’s rights. Complainant states that during 1997, the company Techsat moved into the more mainstream satellite market and the advertising of products through the domain name at issue caused costumer confusion. In order to rectify such situation, Complainant offered to pay Respondent’s registration fees for another domain name, not including the mark EUROSAT.

 

In relation with the domain names that are listed as registered by Respondent in its response, Complainant asserts the following:

 

·           <eurosat.net>: The domain name is registered by Scott Stubbs, Eurosat, RF Networks, and not Respondent. The domain is not actually in use and when attempting to access, the following error appears: “HTTP error 504. 504 no response from server”.

 

·           <eurosat.org>: The registrant of the domain name is also Scott Stubbs, Eurosat, RF Networks, and not the Respondent. The domain name is not in use and the following error appears when attempting to access to it: “HTTP error 504. 504 no response from server”.

 

·           <eurosat.us>: The owner of this domain name is Chris Tay and not Respondent. The domain is not actually in use and when attempting to access, the following error appears: “HTTP error 504. 504 no response from server”.

 

·           <eurosat.info>: The registrant of this domain name is Chris Tay and not Respondent. The domain is not in use as when attempting to access it the following error appears: “HTTP error 504. 504 no response from server”.

 

·           <eurosat.org.uk>: The owner of this domain name is Chris Tay and not Respondent. Traffic to this domain is diverted to <easypace.com>.

 

Furthermore, Complainant asserts that the domain name <techtronics.com>, to which Respondent alleges that it moved all disputed offerings, is registered by Techtronics (European) Limited and not by Respondent. However, Respondent has not offered any explanation or evidence of its relationship with the aforementioned registrants.

 

Complainant also states that Respondent has not filed evidence of its offerings to sell to Complainant or share with it the domain name subject of the controversy.

 

Likewise, Complainant clarifies that the asking price of the domain name <eurosat.com> as posted by a domain name auctioneer was of US$10,000. In order to buy the domain name, Complainant would had to pay also the register fee with the auctioneer.

 

Finally, Complainant contends that the references to Disney’s and Italy’s Eurosat are not relevant as they are not related with the satellite field where Complainant has rights by virtue of its registered trademark.

 

Respondent

 

In its additional submission, Respondent insists that it holds a trademark registration for EUROSAT in the Republic of Tunisia, and attaches a copy of the trademark certificate No. EE97-1133. Respondent has held the trademark since August 29, 1997.

 

With respect to the multiple registrants of the domain names listed by Respondent as owned by it, Respondent states that it has several business units that operate as semi-autonomous entities. Given the extended time line of the eurosat issue (1997 to present) some of the domain names and supporting documents referenced are entitled to different business units of Respondent, some of which are active, and some of which are not. According to Respondent, the parent company is Techtronics Europe Limited, formed in 1998 by a merger of Techsat (formerly Intertech Services), owned by Chris Tay, and Supervision, a United Kingdom based company. In 1999 Techtronics purchased a Texas company called BT Holdings owned by Scott Stubbs. The name was changed to RF Networks in order to better identify its position in the data delivery market. Respondent is RF Networks LLC, a wholly owned subsidiary of Techtronics Europe Limited. In summary, the business names Techtronics, Techsat, Intertech Services and RF Networks are all references to business units, past and present, of Respondent. The individual Chris Tay is currently a board member of the larger Techtronics Europe Limited. The individual Scott Stubbs is currently COO of RF Networks.

 

Respondent contends that Complainant willfully and knowingly allowed the United States Trademark Office to lapse its EUROSAT trademark due to inactivity and age. Some year and a half after such cancellation, Respondent applied for the mark. This is all in accordance with the applicable United States trademark law.

 

As to the date of first use of the EUROSAT trademark in the market, Respondent asserts that the United States trademark application is an evidence that such first use was made on July 31, 2002. Such statement was made under oath in the United States Application form and therefore it is true and correct and not willfully false, under penalty of fine and/or imprisonment.

 

Regarding Complainant’s offer to swap <eurosat.com> for <eurosat.org>, Respondent insists that the evidence of such offer is the letter sent by Respondent’s solicitors on June 25, 1997, stating the following: “The eurosat.com domain was first registered by our client [Respondent] in the USA in May of 1996. That month you approached our client with the suggestion that the site be transferred to yours in exchange for an undertaking by your client to register another site for the use of our client, this to be named eurosat.org. The proposal was unacceptable to our client then and remains so now.” Respondent urges Complainant’s solicitors to review their client’s correspondence. Although the cited letter was in response to a previous letter from Complainant’s solicitors dated June 11, 1997, Respondent notices that Complainant failed to submit such letter.

 

Further, Respondent contends that the offers to share the domain name <eurosat.com> was extended to Complainant by Karl King, principal and board member of Techtronics Europe Limited during one of the several telephone conversations held in 1997.

 

Concerning the fact that various “eurosat” domain names owned by Respondent are not in use, Respondent states that its has purposely and systematically removed all content from these sites in the hopes that doing so would work toward a lasting and mutually satisfactory resolution to this dispute with Complainant. Respondent expects that this matter may be resolved by the National Arbitration Forum and hopes that both parties will adhere to the ruling without need to further legal remedy.

 

Respondent acknowledges Complainant’s trademark registration in the United Kingdom for EUROSAT but also points to its own trademark EUROSAT in Tunisia and its application in the United States. The UK trademark rights of Complainant carry no greater weight than those of Respondent in Tunisia and the United States. Respondent finally calls the attention of the Panel to the dissimilar nature of the product lines between the parties, their geographically separate markets and the fact that Complainant willfully allowed its rights to the mark EUROSAT in the United States expire, as evidence that the United States geography is not of concern to Complainant.

 

FINDINGS AND DISCUSSION

 

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

 

Likewise, paragraph 10 (d) of the Rules for Uniform Domain Name Dispute Resolution Policy, provides that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence.”

 

In the present case, the Panel wants to place emphasis in the importance of the evidence filed by the parties to prove their assertions, which has been studied to determine its relevance and weight in arriving to a decision. The Panel wishes to clarify that the statements that have been accompanied by evidence have been given more importance than the mere statements made by the parties without further demonstration of their existence.

 

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;

(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

 

Complainant has filed evidence of its trademark registration of EUROSAT in the United Kingdom, to cover “satellite receivers and parts and fittings therefore, goods of International Class 9, under Certificate No. 2,017,928 dated April 19, 1995. Likewise, Complainant applied for registration of the trademark EUROSAT to cover “Apparatus for recording, transmission or introduction of sound or images; DVD players; DVD recorders; electrical and electronic apparatus for use in reception of satellite, terrestrial or cable broadcasts; radio signal antennae; apparatus for de-coding encoded signals; apparatus for the transmission and reception of sound and images; modems; satellite and digital television ancillary equipment; apparatus for use in positioning of satellite broadcast receiving dishes; apparatus for use in telephony; parts and fittings for the aforesaid goods”, included in International Class 9, before the United Kingdom Trademark Office, on February 13, 2002.

 

To the extent of this administrative proceeding, the Panel will only consider the registered rights held by Complainant over the mark EUROSAT.

 

Therefore, the Panel notes that the domain name <eurosat.com> includes the Complainant’s registered trademark in its whole.

 

With respect to the “.com” suffix, it has been repeatedly accepted by UDRP Panels that the existence of the “.com” generic top-level domain (gTLD) in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical or confusingly similar to the mark in which the Complainant asserts rights. See Lumena s-ka zo.o. v. Express Ventures Ltd., FA 94375 (Nat. Arb. Forum May 11, 2000) (stating that: “In the strictest sense, the domain name <lumena.com> is not identical to the trademark Lumena. The former includes a top level domain ".com" while the word Lumena stands alone in the latter. However, where the addition of it top-level domain is the only difference, the top-level domain that appeared in the domain name was the one that most closely described that nature of the trademark (i.e.; ".com" representing a commercial enterprise). The virtual identicality seemed sufficient to satisfy the first element of paragraph 4 (a)(i) of the Policy”). Therefore, this Panel will not take into consideration the suffix “.com” when deciding over the similarity between the signs.

 

Based on the foregoing, the Panel finds that the domain name at issue is identical to the trademark over which Complainant has rights.

 

Rights or Legitimate Interests

 

Paragraph 4(c) of the UDRP, determined that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall demonstrate the Respondent’s rights or legitimate interests to the domain name:

 

(i)        Before any notice to Respondent of the dispute, it has used or made 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

 

(ii)      Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if he has acquired no trademark or service mark rights; or

 

(iii)    Respondent is making a legitimate noncommercial 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.

 

Complainant has contended that Respondent lacks of rights or legitimate interests on the domain name at issue. On the contrary, Respondent has asserted that he has rights and legitimate interests over the domain name, on the basis of a commercial offering of a telecommunications service under the name EUROSAT.

 

Respondent has shown evidence of a trademark registration for EUROSAT in the Republic of Tunisia, to cover goods of International Class 9, under Certificate No. EE97.1133, dated July 29, 1997, in the name of Techtronics Europe Limited, domiciled in the United Kingdom. The Panel notes that the registrant of the mentioned trademark is not Respondent. Although Respondent attempted to explain the relationship between a number of companies and individuals involved with the Respondent, the Panel finds that no evidence has been filed to prove such connection. Therefore, the Panel cannot accept that all such companies and individuals are really the same, based solely on the mere statement made by Respondent in this regard. As a consequence, the trademark registration shown by Respondent as an evidence of its rights over the mark EUROSAT can not be taken into consideration in this Administrative Proceeding.

 

Notwithstanding, even if such trademark registration was owned by Respondent, it is not sufficient evidence of the rights or legitimate interests over the domain name in dispute, in the part of Respondent. Due to its nature, a trademark registration grants its owner an exclusive right over the trademark, in the jurisdiction where the registration took place. Outside such jurisdiction, the owner’s rights cannot be enforced. The exception to this rule involves the notorious trademarks, but the evidence filed by the parties in this proceeding does not lead the Panel to conclude that EUROSAT is a notorious trademark. The global nature of the Internet makes it impossible to assure that every trademark owner gets a domain name that reflects its trademark, since there may be various registrants in different countries, with trademark rights over identical signs. Therefore, the trademark registration must be accompanied by other elements to constitute an evidence of rights and legitimate interests over a domain name.

 

This global nature of the Internet leads the Panel to conclude that it is irrelevant if the parties have different markets where their products or services are offered. Respondent states that since its commercial offering takes place in the United States and Complainant’s offer is made in the United Kingdom, there would be no risk of confusion among the public as to the owner of the disputed domain name. The Panel believes that this is not acceptable. The Internet is a global network that can be accessed virtually from any part of the world by any person who can use a computer. Therefore, a person in Namibia can enter the Internet looking for the website of a company in China or attempting to purchase products offered by someone in America. The Internet has erased the borderlines existent in the physical world. Consequently, a domain name owned by a company in the United States of America can be accessed by a person in the United Kingdom or elsewhere without any limitation, and the user will not take into consideration the fact that the company is based in a different country from his own. In the field of e-commerce, local companies get to offer their products or services to clients around the world who would be unreachable in other circumstances. That is the purpose of the Internet and the boundaries that traditionally tied business have disappeared. Due to the foregoing, the fact that there is no overlapping between the markets where Complainant and Respondent usually perform is not relevant in the Internet era.

 

Respondent attempts to reinforce its argument when pointing to a trademark held by Complainant in the United States over the sign EUROSAT, which was canceled by the United States Patent and Trademark Office on 2001. According to Respondent, this evidences that Complainant lacks of interest in the United States market and therefore any risk of confusion disappears. Due to the aforementioned, the alleged lack of interest of Complainant in Respondent’s country is not relevant considering the worldwide coverage of the Internet.

 

The trademark application before the United States Patent and Trademark Office for the mark EUROSAT on behalf of RF Networks is not considered as an evidence of rights over such sign, and the Panel will only take into account the registered trademark rights evidenced by the parties. Likewise, the Panel notes that Respondent has not filed evidence of any common law rights over the mark EUROSAT in any jurisdiction. Although according to the printout of the database of the United States Patent and Trademark Office, Respondent first used the trademark EUROSAT in commerce in June 29, 2002, the Panel notes that such first used was made five (5) years after it was informed by Complainant of its rights over the mark EUROSAT and more than six (6) years after the registration of the domain name <eurosat.com>, over which Respondent alleges to have strong interests and rights from many years ago.

 

In the present case, Respondent intends to prove its legitimate interests over the <eurosat.com> domain name, by asserting the following:

 

“The domain name ‘eurosat.com’ is identical to the Respondent’s commercial product offering, Eurosat Wireless, a point to multi-point wireless UNI band wireless distribution network in the United States that is uplinked via satellite to distribution points in Europe.   The service is an expanded “long-distance” service using voice over IP technology coupled to local wireless distribution that ties a customer’s wireless data access to the Internet to inexpensive international long distance phone service.”

 

The existence of this commercial offering for a product named “Eurosat Wireless” was not sufficiently demonstrated by Respondent, beyond its mere statements. Consequently, the Panel finds that Respondent has failed to prove that it has used or made 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.

 

Additionally, Respondent did not file any evidence neither proving that it is commonly known by the name EUROSAT, nor proving that it is making a legitimate noncommercial 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.

 

Far from demonstrating the above, the Panel finds that Respondent is not using the disputed domain name and has not done so for a long time. This is evidence of the lack of interest in the part of Respondent in the domain name <eurosat.com>, which contradicts its statements in the sense that there is a commercial offering under the name EUROSAT.

 

On the contrary, Complainant has evidenced its rights and legitimate interests in the domain name at issue and has shown that it is known with the name EUROSAT in the market and that is has made use of such mark in connection with a legitimate and bona fide offering of goods, as evidenced by entering some of its websites under the domain names <eurosat.co.uk> and <eurosat.biz>, which were visited by the Panel on October 10, 2002.

 

With respect to the <eurosat.biz> domain name, it could be stated that Complainant already holds a domain name in a gTLD related with commercial business. Notwithstanding, the Panel believes that it is expected that Complainant, as legitimate owner of the EUROSAT trademark, wants to have its trademark reflected in the most commonly known gTLD, due to the fact that the “.biz” suffix has been recently launched and is not as popular at this moment as the “.com” domain.

 

Respondent contended that Complainant lacked of interest over the disputed domain name, since it offered to swap the domain name <eurosat.com> for <eurosat.org> in 1997. However, no evidence has been filed to prove that such offer really existed. Even if the offer was extended by Complainant to Respondent, the Panel wishes to remind that the domain names system has been divided into groups, identified with different suffixes, depending on the activity or nature of the registrant. Accordingly, the “.com” and “.biz” suffixes are thought out for those devoted to commercial activities; the “.org” suffix can be registered by non-governmental organizations; the “.gov” suffix is limited to governmental entities, and so on. As a consequence, being Complainant a commercial company, it is expected that it wanted to have its trademark reflected in a “.com” domain name instead than in a “.org” one. Furthermore, Complainant would not meet the requirements to register a “.org” domain name and it would contradict its commercial nature. In any case, if the offer existed, Respondent refused it but proceeded to register the domain name <eurosat.org>, in an attempt to establish rights over the sign EUROSAT and almost precluding any possibility of an amicable agreement with Complainant to solve this controversy. The Panel concludes that, even if the offer to swap the disputed domain name by the <eurosat.org> domain name existed, it is an evidence of the interest of Complainant in owning the domain name that completely reflected its trademark, accompanied by the suffix “.com” that was in accordance with its commercial activity; its lack of interest in the <eurosat.org> domain name is an evidence that acts in favor of Complainant and not against it.

 

As to Respondent’s assertion, in the sense that there are other entities in the world using the word EUROSAT, such as Disney and other Italian company, the Panel finds that such cases are irrelevant to this proceeding. The cases mentioned by Respondent refer to businesses that are not connected in any way with Complainant’s activities, e.g., the satellite field. This is not the case in the present dispute, where both Complainant and Respondent are involved in the business of satellites and telecommunication products, which creates a clear risk of confusion among the consumer public when attempting to access the legitimate owner of the EUROSAT trademark in the Internet. This reasoning made by Respondent is not accepted by the Panel as an evidence of its legitimate interests in the domain name subject of the controversy.

 

The above leads the Panel to conclude that Respondent does not have rights or legitimate interests on the domain name <eurosat.com>.

 

Registration and Use in Bad Faith

 

According to paragraph 4(b) of the UDRP, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

 

(i)                  Circumstances indicating that Respondent has registered or has 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 Respondent’s documented out-of-pocket costs directly related to the domain name; or

 

(ii)                Circumstances indicating that Respondent 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 Respondent has engaged in a pattern of such conduct; or

 

(iii)              Circumstances indicated that Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

 

(iv)               Circumstances indicating that, by using the domain name, Respondent 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, or endorsement of his web site or location or of a product or service on his web site or location.

 

Complainant has contended that Respondent registered and uses the domain name at issue in bad faith. Respondent alleges that it has acted in good faith and its behavior during the years of negotiation with Complainant demonstrates so.

 

In this regard, the Panel notes that the contacts between the parties date from 1997, approximately one year after the registration of the domain name was made by Respondent. Respondent states that it “originally registered the domain name eurosat.com at nearly the same time that Complainant began using it in their business – in 1996”. This assertion is not correct since Complainant contends that it was incorporated in 1988 under the name “Eurosat Distribution Limited” and it has been using such name since then. Although Complainant did not file any evidence to prove this fact, Respondent did not contest such statement. Also, Complainant’s trademark EUROSAT is registered in the United Kingdom since April 19, 1995 and the evidence has been filed by Complainant with its Complaint. Therefore, when Complainant first contacted Respondent, its rights over the mark EUROSAT were solid enough. However, Respondent failed to transfer the domain name under controversy to Complainant although it had been duly informed of the preexistent rights of Complainant and was perfectly aware of its own lack of rights and legitimate interests in the domain name. This behavior is an evidence of Respondent’s bad faith in the registration and use of the domain name at issue.

 

After the negotiations began, Respondent attempted to obtain rights over the EUROSAT trademark by many different ways, without success. As explained, the Tunisian registration is not owned by Respondent and there is no evidence of use of the EUROSAT sign by Respondent in connection with a bona fide offering of goods or services, as it states.

 

The Panel notes that Respondent, after several correspondence with Complainant, posted a notice in its website with the following legend: “Sorry this website is due for a much needed update and will not be available for now.” Evidence in this respect has been filed by Complainant. This lack of use of the domain name shows that Respondent lacks of interest in the domain name, as already concluded, and has the domain name active with the purpose of preventing the owner of the trademark from reflecting the mark in a corresponding domain name. This has been accepted by previous Administrative Panels. See Am. Home Prods. Corp. vs. Ben Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (stating “The Panel is disturbed by the Respondent's registration of the contested domain name followed by its continued retention, particularly here in the absence since late May 1999 (a period of approximately 1 ½ years to the date of the Complaint), of implementing an operational website resolvable through that name. The Panel views such holding as being a continuing denial to the Complainant of its right, as a trademark owner of the marks "SOLGAR" and "solgar vitamins", to reflect its mark (both registered and unregistered) in a domain name; hence, further reflecting bad faith registration and use”).

 

Complainant attempted to contact Respondent prior to filing the Complaint and found out that Respondent’s registrant was unavailable and its administrative contact’s telephone number, provided by the Whois database, was incorrect. Additionally, the letter sent by Complainant to Mr. Chris Tay on July 2, 2002, to his address in the United Kingdom, was never answered. Such statements made by Complainant were never contested by Respondent. These circumstances are evidence of bad faith, since Respondent has posted false or incorrect contact information in the Whois database, and thus making it difficult for any interested party to enter into contact with Respondent, particularly when a dispute arises. In this respect, Jerome Gilson and Anne Gilson LaLonde[1] state, referring to the Anticybersquatting Consumer Protection Act, which is applicable to Respondent as a United States company and/or citizen, that “[t]he ACPA suggest that providing “material and misleading false contact information” when applying for a domain name, intentionally failing to maintain accurate contact information, or having a pattern of providing false contact information should lead a court to find bad faith. Cyberpirates commonly provide false information in order to evade detection and service process.”

 

Likewise, Respondent’s lack of response to Complainant’s demands (i.e. Complainant’s letter dated July 2, 2002) evidence that Respondent was unwilling to solve this matter with Complainant and refused any possibility of an amicable negotiation between the parties. It is odd for the Panel that Respondent did not answer the communications sent by Complainant before initiating this administrative proceeding, although Respondent has stated that Mr. Chris Tay “is currently a board member of the larger Techtronics Europe Limited”. Additionally, Respondent did answer the communications sent to it by the National Arbitration Forum when this proceeding commenced and it even sent an e-mail to Complainant requesting an extension of the term to file a Response to the Complaint.

 

Further, Respondent posted the domain name <eurosat.com> for sale through a domain name auctioneer. Although Respondent alleged that “an employee of Respondent accidentally listed the domain name for sale along with several unused domain names”, there is no evidence that such offer for sale was mistakenly made and the Panel finds it difficult to believe that such an “accident” could occur in a serious company and in respect with a domain name over which it allegedly has high interest. Moreover, the Panel notes that according to the printout of the domain name auctioneer’s website filed by Complainant, the seller of the domain name was Chris Tay, who according to Respondent is one of the board members of Techtronics Europe Limited. Mr. Tay is also listed as the Administrative Contact for the domain name <eurosat.com> in one of the Whois printouts filed by Complainant with the Complaint. If the Respondent’s assertions are true, Mr. Tay is not a simple employee of Respondent, but one of its directors. Without evidence to the contrary, the Panel concludes that such offer came from Respondent and constituted an evidence of bad faith since the asking price was of US$10,000, a sum that exceeds by far the documented out-of-pocket costs directly related to the domain name, moreover when the domain name has not been posted any content for a long time. Several previous Panels have found that this conduct is an evidence of registration and use of a domain name in bad faith. See Wal-Mart Stores, Inc. v. Kenneth E. Crews, D2000-0580 (WIPO Aug. 30, 2000) (stating: “Respondent has offered the disputed domain name for sale to the public on a commercial website (GreatDomains.com) in the business of auctioning domain names. There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, as the proprietor of the auction website used by Respondent advises its potential clients, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent. In several earlier administrative proceedings conducted under the Policy, this sole panelist has determined that offers to sell to the public at large domain names that are identical or confusingly similar to marks of others may constitute bad faith within the meaning of paragraph 4(a)(iii) of the Policy. This is based on the nonexhaustive character of the express list of bad faith factors in paragraph 4(b) of the Policy, and the lack of a justification for awarding financial gain to persons for the mere act of registration of the marks of others”).

 

Therefore, the Panel finds that Respondent registered the domain name at issue with the intention of preventing Complainant from registering a domain name with its trademark EUROSAT accompanied with the “.com” suffix, which is the expected way in which consumers look for Complainant in cyberspace. Likewise, Respondent has registered the domain name for sale for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name. All these, being Respondent perfectly aware of the existence of Complainant’s legitimate rights over the mark EUROSAT since at least 1997.

 

The above leads the Panel to conclude that Complainant met its burden of proof in demonstrating that Respondent registered and uses the domain name at issue in bad faith.

 

DECISION

 

Complainant’s request is hereby GRANTED and therefore the Panel orders that the domain name <eurosat.com> be TRANSFERRED to Complainant.

 

 

 

 

 

Fernando Triana, Esq., Panelist
Dated: October 11, 2002

 

 

 

 

 

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