Egon Schmidt d/b/a Bavta
Claim Number: FA0906001268795
Complainant is Egon Schmidt d/b/a Bavta USA
LLC (“Complainant”), represented by Vivian M. Nielsen,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bavta.com>, registered with Godaddy.com, 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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 17, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 19, 2009.
On June 17, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <bavta.com> domain name is registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 June 22, 2009, the National Arbitration Forum Case Coordinator sent a notification to Complainant listing deficiencies in the Complaint. Complainant was informed that the deficiencies had to be rectified within 5 calendar days from the date of the notification, or the Complaint would be dismissed. A hard copy of the amended Complaint was received by the National Arbitration Forum on June 29, 2009.
On June 29,
A timely Response was received and determined to be complete on July 17, 2009.
On 23 July, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant asserts that the <bavta.com> domain name is confusingly similar to its <bavtausa.com> domain name and affects the alphabetizing search. In section 4(c) of the Complaint (“Disputed Domain Names”), under “trademark or service mark information”, Complainant lists the following: “Bavta Medical Informatics, Bavta2D, BavtaUSA.com, www.bavta.dk and Bavta USA LLC.”
Complainant further contends that Respondent has no rights or legitimate interests in <bavta.com>. He states: “Mr. A Nielsen has a web based company Sish Communications, Inc. He has nothing to do with medical equipment and has stated he registered the name for monetary gain only.”
Complainant further contends that Respondent’s registration of said
domain was done in bad faith. Complainant asserts that his “company had been
Respondent asserts that the parties’ common acquaintance approached him in order to consider the possibility of the parties to work together. Respondent states:
“I finally agreed to speak to [Complainant] per phone in July / August 2006 […]. [The parties] had a total of 2-3 brief conversations that took place over a time span of about one week.
It was during one of these conversations [Respondent] asked
[Complainant] about his intentions in regard to his Danish website and if he
had any plans to register or use the similar dot com domain name. The response
was that he had no intentions to register and use the bavta dot com domain name
and to [Respondent’s] surprise no intentions trying to sell his software in the
[Respondent] asked [Complainant] if he would oppose that [Respondent] made a registration of the bavta dot com domain name for [Respondent’s] business. [Complainant] explained that he had no intentions to use any other website that [sic] his Danish www.Bavta.dk.
[Respondent] then told [Complainant] that [he] would register bavta.com for [Respondent’s] company. [Complainant] replied he had no problems with that.
There has been no contact whatsoever with [Complainant] since August 2006.
Late August 2006 [the common acquaintance] approached [Respondent] again and asked [him] to transfer the bavta dot com domain name to [Complainant]. [Respondent] asked why [Complainant] did not contact [him] directly if he had any remorse but [the common acquaintance] told that this request was his own idea and that [Complainant] did not know about it. [Respondent] told [the common acquaintance] very clearly that the domain was not for sale.
There has never been any further contact in this regard with [the common acquaintance].
The Complainant states that they have ‘approached [Respondent] several times’ and ‘made several attempts to persuade [Respondent] to forfeit the domain’. This is absolutely untrue.
[Respondent has] at no time stated that [he has] registered the domain for monetary gains as now untruly accused by the complainant.
[Respondent has] not offered the domain name for sale to [Complainant] or [the common acquaintance] for $1500 as untruly stated by the complainant.
[Respondent has] a legitimate interest in Bavta dot com for [its] subsidiary ‘Bavta Video Surveillance’. Bavta Video Surveillance Systems have and still are developing new patent eligible functionality for the video surveillance industry that will be launched later this year under Bavta name.”
Respondent believes that “bavta” is a generic term, which in
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.”
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.
Paragraph 4(a)(i) of the Policy requires Complainant to assert that Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. It is not required that the complainant’s trademark or service mark be registered by a government authority or agency for such rights to exist. See SeekAmerica Networks Inc. v. Masood (WIPO Case No. D2000-0131, 13 April 2000); see also Zee TV USA, Inc. v. Siddiqi (NAF Case No. 721969, 18 July 2006) (“complainant is not required to own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)”).
Complainant does not allege rights in any registered trademark or service mark but merely alleges the disputed domain name to be similar to other domain names or firm names. While the latter could be a hint to the existence of common law or unregistered trademark rights in the bavta mark, Complainant makes no further allegations to substantiate said rights under the relevant national law (presumably under US and/or Danish Law), thus not allowing for the Panel to establish any such right.
As one panelist has put it:
“A complainant bears the burden of showing that it has rights recognised by Paragraph 4(a)(i) of the Policy. Therefore any complainant claiming unregistered trademark rights would be wise not only to provide evidence of the activities that are alleged to found those rights but also to provide evidence that as a matter of law those activities are recognised as giving unregistered trademark rights in that jurisdiction.” (Antonio de Felipe v Registerfly.com, WIPO Case No. D2005-0969, 19 December 2005)
In the case at bar Complainant has, apart from mentioning other domain and firm names, not made any allegations with respect to either the factual grounds from which unregistered trademark rights might result or the national law conferring those rights.
The Panel has decided not to request further statements or documents (¶12 of the Rules) from Complainant regarding the existence of trademark rights. Complainant was already made aware of the deficiencies of the Complaint by the National Arbitration Forum Case Coordinator. Among the deficiencies listed were the following: “Amend complaint to explain how the multiple entities listed as Complainant have a sufficient nexus to each claim to have rights to all domain names listed in the Complaint;” “The complaint must describe the grounds on which the complaint is made and must include why the domain name should be considered as having been registered in bad faith;” and “Pursuant to Rule 3(b)(xv) please annex any trademark or service mark registration upon which the complaint relies.” Given these circumstances, if the Panel were to use the discretion conferred by ¶12 of the Rules and request from Complainant further documents to support the existence of trademark rights, this would be contrary to the Panelist’s duty to be impartial (¶7 of the Rules) and to ensure that the Parties are treated with equality (¶10 (b)).
In the opinion of this Panel, it is apparent that Complainant has not satisfied Policy ¶4(a)(i), as Complainant fails to establish rights in the mark, thus making an analysis of the two other elements of the Policy unnecessary. See Creative Curb v. Edgetec Int’l Pty. Ltd. (NFA Case No. 116765, 20 September 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining elements unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected (NAF Case No. 836538, 28 December 2006) (“in view of the fact that the Complainant has failed to satisfy the requirements of the Policy with respect to Subparagraph 4(a)(i), this Panel need not opine on whether the Respondent has rights or legitimate interests in the disputed domain name, or whether that name was registered and is being used in bad faith”).
Because Complainant has failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Dated: August 6, 2009
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