Decani Monastery v. Info-Bridge
Claim Number: FA0602000639116
PARTIES
Complainant is Decani Monastery (“Complainant”), represented by Perry J. Narancic, 325 Sharon Park Drive #403, Menlo Park, CA 94025. Respondent is Info-Bridge (“Respondent”), represented by Ari Goldberger, of ESQwire.com Law Firm, 35 Cameo Drive, Cherry Hill, NJ 08003.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kosovo.com>,
registered with Bulkregister, LLC.
PANEL
The undersigned certify that they acted
independently and impartially and to the best of their knowledge have no known
conflict in serving as Panelist in this proceeding.
Jacques A. Léger Q.C., G. Gervaise Davis and
David E. Sorkin as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the
National Arbitration Forum electronically on February 6, 2006; the National
Arbitration Forum received a hard copy of the Complaint on February 9, 2006.
On February 7, 2006, Bulkregister, LLC.
confirmed by e-mail to the National Arbitration Forum that the <kosovo.com> domain name is
registered with Bulkregister, LLC and that the Respondent is the current
registrant of the name. Bulkregister,
LLC has verified that Respondent is bound by the Bulkregister, LLC. 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 23, 2006, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of March 15, 2006 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@kosovo.com
by e-mail.
A timely Response was received and determined to be complete on March
15, 2006.
An Additional Submission was received from
Complainant on March 22, 2006. However,
the Additional Submission was received after the deadline for submissions,
which was noted by the Forum not to be in compliance with Supplemental Rule #7. However, the Panel considered it before it
reached its decision and at the same time considered the additional submission
received from the Respondent on March 27, 2006.
On March 24, 2006,
pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Jacques A. Léger Q.C., G.
Gervaise Davis and David E. Sorkin
as Panelists.
FACTUAL BACKGROUND
Complainant, through Father Sava Janjic,
asked Zeljko Boskovic, principal and sole shareholder of YUNET, a Canadian
based company, to obtain a domain name in order to publish information relating
to Kosovo and its churches. It began in
1997 to diffuse such information at the address “www.decani.yunet.com”, free of charge for
the Complainant.
In October 1996, Mr Boskovitch registered
the domain name <kosovo.com>. No usage of the domain was made immediately
after the registration.
In 1998, a domain that would be easier to use
and remember was chosen to host the content of the previous “decani.yunet.com”
site. The domain name <kosovo.com> was chosen to
host such content, since it was available for Complainant to use. Mr. Boskovic asked that Complainant pay $240
in administrative maintenance costs before it began using it. From 1998 and on, Complainant has been the
exclusive publisher of all content located at the disputed domain name; except
for a short period of time in 1999, wherein Respondent also published some
content on the disputed domain name due to the civil war which occurred in
Kosovo. After the Kosovo war, from July
1999 and afterwards, Complainant was the sole publisher on <kosovo.com>.
On January 19,
2006, Mr. Boskovic, on behalf of Respondent, wrote to Complainant and advised
that the domain name <kosovo.com> had been
transferred to an investor of Respondent, and that the latter wanted to auction
the domain name in order to recover a loan.
A bidding price of $90,000 US is asked by the investor in order to sell
the domain.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent
to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that it has exclusive
rights in the <kosovo.com> domain name since it registered a
“kosovo.com” trademark in Serbia-Montenegro, as submitted in
exhibit A. Complainant further
contends that in 1997 it asked Mr. Boskovic to obtain a new domain name and
that the latter answered that the domain name was available for
Complainant. It contends that it was
not aware that the domain name had already been registered by Mr. Boskovic to
another entity than Complainant.
Complainant further contends that it took
over the management of the <kosovo.com> domain name since Mr.
Boskovic gave it the password and user ID.
Furthermore, it contends that neither the Respondent nor Mr. Boskovic used
the domain name in connection with a bona fide offering of its own goods or
services. It alleges that all the
content on the <kosovo.com> site has been generated by
Complainant. Hence, it contends that
Respondent has no legitimate interest or rights in the disputed domain name and
that it transferred the ownership of the domain name to Complainant by its
inaction and acknowledgment to its use and its management by Complainant.
Finally, Complainant alleges that Respondent
has registered the domain name in bad faith since it is now considering
auctioning said domain to the highest bidder, even if Complainant built its
reputation on said site and that Respondent never used it to promote its own
business or services.
B. Respondent
Respondent contends that geographic marks are
not enforceable under the UDRP Policy and that Complainant does not own any
trademark incorporating “Kosovo” that predate the registration of the disputed
domain name. Respondent further contends
that the trademark registration alleged in the complaint is in fact an
application for the trademark Kosovo.com filed January 27, 2006 and that this
application provides no enforceable rights against a prior registration of a
domain name. Furthermore, it states
that it never agreed to acquire a new domain name for Complainant in 1998 but
instead proposed, on its own initiative, the use of the <kosovo.com>
domain name to Complainant.
Respondent further contends that it has
legitimate interest since it was the first to register the domain name and that
by itself, the registration constitutes legitimate interest pursuant to section
4(a)(ii) of the Policy. It contends
that it allowed Complainant to publish content on <kosovo.com>
free of charge between August 1998 and March 1999 and again after July
1999. Respondent contends that
collaboration from Complainant regarding the use of the disputed domain name
constitutes acknowledgement of Respondent’s legitimate interest. Also, Respondent contends that Complainant
was aware that <kosovo.com> was the propriety of Respondent; Fr.
Sava’s own admission supports that Complainant did not own the domain name, nor
did it believe it did. Respondent
asserts that it was not its purpose to make money out of <kosovo.com>;
explaining why Complainant could use it free of charge for over 9 years.
Respondent contends that it did not use <kosovo.com>
in bad faith, nor did it register said domain name in bad faith; the domain
name consists of a geographical term in which Complainant had no rights at time
of registration. According to
Respondent, this dispute is a matter of ownership and entitlement, and is not
of the resort of the UDRP policy. It
also contends that through the present proceedings, Complainant is attempting
to make a reverse domain name hijacking.
C. Additional Submissions
By Complainant
Complainant
has submitted an additional submission that was received after the deadline for
submissions. Even though it is not
compliant with the Forum’s Supplemental Rule #7, the Panel has decided to
consider Complainant’s untimely additional submission. See Am. Airlines Inc. v. WebWide Internet
Commc’n GmbH, FA 112518 (Nat. Arb. Forum June 13, 2002) (where the Panel
decided to accept both the complainant’s and the respondent’s second additional
submissions, despite the fact that they did not comply with Forum Supplemental
Rule #7).
In its
additional submissions, Complainant contends that some facts are uncontested;
it contends that it was the sole publisher of any content that figured on the
disputed domain. It further contends
that Respondent never used the disputed domain name in association with any
bona fide offering of its own goods or services. Complainant additionally contends that when Respondent decided to
wave profitability from <kosovo.com>, it did not do so momentarily
but for all further usage of Complainant.
Furthermore, Complainant contends that since it was the only one to use
the domain name, it should be considered as having been transferred the ownership. Complainant reasserts its rights in the mark
KOSOVO.COM based on its registration in Serbia-Montenegro, but also on
its common law rights. It submitted
jurisprudence that supports the rights in a geographic name that founded
a transfer of a disputed domain name.
It finally distinguished the present proceedings from a typical case of
reverse domain name hijacking, to contradict Respondent’s contentions
By Respondent
Respondent
submitted an additional submission that was received in due time to be
considered pursuant to section 7 of the Supplementary Rules. The additional submission does not produce
any new evidence nor does it bring any new argument. It solely specified the range of the response that was given on
March 15, 2006 and answered to the additional submissions from Complainant,
denying in part the alleged admissions of fact alleged in Complainant’s
additional submission by maintaining that Complainant has never been the sole
publisher of all the content on the disputed domain name, since Respondent
itself published some information during the Kosovo war in 1999. It further contends that the waiver of
profit was offered momentarily to Complainant, and the use of Complainant of
the domain name profited to Respondent, since it was done according to its
acknowledgment and control. It added
that the ownership of the domain name was not transferred solely by the
communication of the user ID and the password to Complainant in order for it to
manage <kosovo.com>.
Finally, it reasserts that the rights of Complainant in a KOSOVO.COM mark
does not exist and that the jurisprudence presented by Complainant in its
additional submissions stands alone in a sea of cases where no trademark rights
were recognized in a geographical indication.
FINDINGS
The Complainant Decani Monastery is a religious
organisation. It has made a trademark
application for “kosovo.com” in Serbia-Montenegro, however, as of January 27,
2006.
On his part, the Respondent had registered,
through its sole administrator Mr. Boskovic, the kosovo.com domain on
October 23, 1996. The Respondent has
been lending the use of the domain exclusively to the Complainant for numerous
years, except during the Kosovo war, wherein the Repsondent published some
content as well. The maintenance fees
for the domain name were paid by the
Complainant. Hence, at least
implicitely, it knew at some point that the domain name was being used by it
resulting from an agreement with Respondent.
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 Complainant
must prove cumulatively 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.
Complainant contends that it has rights in
the mark KOSOVO.COM, derived from its
trademark application dated January 27, 2006, for the KOSOVO.COM
trademark in Serbia-Montenegro.
Respondent contends that no such trademark can be enforceable under the
UDRP since KOSOVO.COM is a geographical mark and that it was applied for after
the registration of the domain name.
It is trite law that the mere fact of a
trademark application does not in and of itself confers upon the applicant any
trademark right unless the basis for filling is prior use or until such
application matures to registration.
A complainant needs not necessarily have a registered trademark or service mark in order to seek the remedies contemplated in the Policy, as they are also open to those who have common law rights to such marks. Therefore, a Complainant clearly has the burden of demonstrating that it holds such rights to a trademark or service mark, whether it be a registered mark or a common law one. In the case of a registered mark, such burden is alleviated as the owner benefits of legal presumptions. In the case of a common law mark, it is incumbent upon Complainant to actually show that it has acquired such rights through use. In this case Complainant being only able to rely on common law rights, it is incumbent upon it to actually show acquisition of such rights through use. (Van Vleck Homes, Inc. v. Steven Kirkm, FA 414680 (Nat. Arb. Forum April 1, 2005).
In that context, the Panel agrees with
Respondent that in order to succeed in showing legitimate rights in a trademark
under the UDRP, absent of trademark registration, that applicant must show
acquisition of trademark by common law usage.
It also finds, in accordance with Respondent’s submission, that such
rights in a trademark do not flow from an application for registration. See Wave Indus., Inc. v.
Angler Supply, FA 304784 (Nat. Arb. Forum Sept. 20, 2004) (where the Panel
found that the complainant’s pending trademark applications did not establish
rights because an application for a mark is not per se sufficient to
establish rights in a trademark for the purposes of the Policy).
Of course, such rights do not solely flow
from an official registration. As it
was decided in Great Plains
Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001): “The
Policy does not require that a trademark be registered by a governmental
authority for such rights to exist”. Under common law, in order to show
entitlement to such rights, it is incumbent upon Complainant to actually show
trademark rights, derived from such use from which rights can be derived. In the present case, Complainant has failed
to give evidence as to acquisition of trademark rights which would be derived
from its use by complainant; and quite to the contrary, it appears that the
only use of the mark KOSOVO.COM is derived from the use by Respondent, flowing
from its registration of the domain name <kosovo.com> in
association with the web services of Respondent, in which case Complainant’s
rights would be subordinated to those of Respondent.
Concerning geographical marks, the Panel
agrees that a mark consisting of a geographic indication is not a distinctive
trademark by itself. According to HER
MAJESTY THE QUEEN, in right of her Government in New Zealand, as Trustee for
the Citizens, Organizations and State of New Zealand v. Virtual Countries, Inc.,
D2002-0754 (WIPO Nov. 27, 2002) where the <newzealand.com> domain name
was disputed, the Panel stated that the primary function of a geographical mark
is to identify a geographical location.
“As an indicator of geographical origin, they serve to distinguish the
goods and services emanating from a country from those of another. But indications of geographical origin are
not themselves trade/service marks for the reason that they serve to indicate
geographical origin and not necessarily the source of the wares or
services.” The Panel in the <newzealand.com>
case also distinguished that indications of geographical origin are capable of
being trademarks; but only when the geographical significance is displaced,
i.e. after a long and extensive use of the name as a brand by a single trader
in such manner as to distinguish his goods and services from those of his
competitors.
The Panel concurs with the findings of the <newzealand.com>
case. In the present case, the question
is not whether or not Complainant has rights in the <kosovo.com>
domain name since it has built goodwill on its use and claims having rights in
its trademark. The question to be
answered is whether or not such rights existed at the time of the <kosovo.com>
registration in 1996. On this subject,
the Panel finds that Complainant did not have any rights in the KOSOVO.COM mark
at the date of the disputed domain name registration. Furthermore, the “rights” in which Complainant contends were
built after the registration of the domain name by Respondent.
The Panel finds that in the
present case, the key issue appears to be a dispute over an alleged breach of
contract to sell the domain name, which as such is not an appropriate basis for
UDRP dispute, as it does not fall within the parameters of the ICANN
Rules. As stated in United Services
Automobile Association v. Ang Wa Assoc., D2004-0535 (WIPO Sept. 29, 2004):
[T]he mandate of World
Intellectual Property Organization Arbitration and Mediation Center is to
administer the proceedings within the legal framework for the resolution of
disputes between a domain name registrant and a third party over the abusive
registration and use of an Internet domain name in the gTLDs, its role is
restricted to the scope of domain name dispute only. Consequently, it is not and should not be
the forum for perpetual procedural recrimination nor highly emotional dispute
between parties. One of the function of
WIPO is to maintain a roster of Panelists from which is selected independent
individuals who’s role is to receive, examine and rule on Complaints filed with
the WIPO Arbitration and Mediation Center acrredited by ICANN. Appointed Panel members have an obligation
to reach a conclusion, within the time allowed by the rules, on the sole basis
of the allegation and/or the evidence submitted by the parties, regardless of
the causes or the motivation of the dispute.
The Rules of ICANN are intended essentially
for efficient relief against hackers.
The Panel further finds that even though the facts might give rise to a
court action, it cannot accept the complaint as Complainant has not met its
initial burden of proof required
to establish entitlement to rights in an identical or similar mark to the <kosovo.com>
domain name pursuant to section 4(a)(i) of the Policy.
2 and 3. Legitimate interest in domain name /
Bad faith use and registration
Given that the burden is cumulative for each
of the three required elements, failure to prove the previous count makes it
unnecessary for the Panel to make any making findings on the remaining
counts. Complainant having failed to
prove the first element of the three, the Panel cannot grant relief as
requested by Complainant.
DECISION
Having failed to establish the first element required under the ICANN
Policy, the Panel concludes that relief shall be DENIED.
Jacques A. Léger Q.C., Presiding panelist
David E. Sorkin, panelist
G. Gervaise Davis, panelist
Dated: April 7th, 2006
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