Lumena s-ka z o. o. v Express Ventures Ltd.

Lumena s-ka zo.o.

COMPLAINANT,

vs.

Express Ventures LTD
(www. Skarbiec.com)

RESPONDENT.

PANEL DECISION

Forum File No: FA0003000094375

PROCEDURAL FINDINGS

This is a domain name dispute pursuant to the ICANN Uniform Domain Name Dispute Resolution Policy (Policy) and Rules for uniform Domain Name Dispute Resolution Policy (Rules). Administrative proceedings were commenced with the National Arbitration Forum (Forum) on April 3, 2000. A response was received on April 24, 2000. James A. Crary was selected to serve as sole panelist.

The case was submitted for decision on the complaint and response on April 30, 2000.

Without seeking leave to do so under Rule 12, the Complainant submitted additional materials to be considered. Rule 12 reserves to the Panel sole discretion to receive additional statements. Here discretion was exercised against receiving further statement. The after submitted materials were not considered in reaching the decision.

Domain Name: lumena.com

Domain Name Registrant: Network Solutions

Date of Domain Name Registration: December 24, 1999

Date Administrative Proceedings Commenced: March 3, 2000

Response Date: April 24, 2000. Response submitted April 24, 2000.

THE COMPLAINT

The Complainant is a technology provider in Poland. It does business in Poland and Russia.

The Complainant is the owner of the trademark "Lumena" (registered in Poland 1991 and Russia 1992). The Complainant has registered the following domain names, lumena.com.pl, lumena.pl, lumena.net and lumena.org. The Complainant currently maintains its own web page under the address www.lumena.waw.pl.

Complainant was present in the Polish market for over 12 years. Its main field of operation was information technology and electronic systems integration. Respondent has a website www.skarbiec.com maintained in English and Polish languages. Information available on the website indicates that "Skarbiec" means treasure house in Polish. The over 1,000 Internet domain names managed were said to be a treasure house. Skarbiec is said to own many domain names as well as manage third party domains. Bids for selected names were available for lease for 12 or 24 months. Bids could be made by e-mail at skarbiec.com.

It was maintained that the registration of the domain name www.lumena.com by Respondent violated and infringed upon Complainant’s trademark rights to "Lumena" which is a registered trademark. It was maintained that lumena.com and lumena.waw.pl are essentially similar and create the likelihood of confusion as to the source, sponsorship and affiliation of products or services associated with Complainant’s trademark.

The Respondent, Express Ventures Limited, of Typai Taiwan registered the name lumena.com on December 24, 1999. It was noted that there is no lumena.com website presently.

Complainant maintained that the domain name was registered in bad faith and was being used in bad faith. The registration of lumena.com domain name prevented Complainant from reflecting its trademark in a corresponding domain name. It is maintained that the registrant Express Ventures/Skarbiec.com is a domain warehouse where over a thousand domain names are registered. The domains acquired by the Registrant consisted of trademarks of many Polish firms including large firms traded on the Polish stock exchange.

The Respondent was neither commonly known by the domain name nor secured any trademark in any other countries. Further, the Respondent did not make any attempts to make legitimate non-commercial or fair use of the domain name on a non-commercial basis.

The Complainant sought transfer of lumena.com to Complainant.

THE RESPONSE

The Respondent in answer to the complaint sought to retain registration and use of the disputed domain name.

Respondent maintains that the allegation that lumina.com and lumina.waw.pl are similar stemmed from an apparent lack of understanding of the domain name system by the Complainant. Complainant’s domain name was a third level domain. Respondent’s domain name was a top-level domain. Complainant had chosen to establish their third level domain. There was correspondence between the parties concerning the disputed domain name prior to the complaint.

The Respondent maintained the domain name had been registered on behalf of Respondent’s partner in Taiwan for the purpose of the worldwide promotion of lighting products and fixtures produced in China. The partner had originally requested lumina.com but that name had already been registered.

Respondent maintains Complainant sought financial terms for transferring the domain name to the Complainant. There were no negotiations because the Chinese partner contemplated registering the LUMENA LLC name in the United States The primary target of the planned business venture. The project is still pending and no website corresponding to the venture has as yet been set-up. Respondent denies that the domain name was registered for the purpose of selling it to another entity.

Respondent contended that the allegations concerning the contents of www.skarbiec.com are groundless. The Registrant does business as skarbiec.com and had registered and managed over 1,000 domain names comprising of generic and descriptive terms for the purpose of developing them as productive websites. Further it was maintained Respondent had never offered to sell or trade the domain name lumena.com. on the skarbiec.com website. Respondent indicated that a planned November 1999 auction, did not take place. The auction would have occurred one month before lumena.com was registered as a domain name.

Respondent admits that it was aware of the existence of the Complainant and its business activities in the computer field but unaware of the existence of any trademarks covering lighting products or fixtures nor did the Complainant have any trade or service marks covering territories other than Poland and Russia.

Respondent denies that it is a competitor of the Complainant and that the Complainant failed to present any proof of a direct competition between the two. The Complainant was not in the business of developing domain names into to profit generating websites nor was Complainant in the business of manufacturing or marketing light products or fixtures.

Respondent’s business partner does not intend to target its operations in either Poland or Russia where Complainant’s activities and business take place.

Respondent denies that there was a pattern or registering domain names corresponding to the names of large Polish corporations. The numerous printouts of domain names "WHO IS" records failed to establish whether the domain names listed belong to the Respondent or were in fact domain names that belonged to third parties not related to the Respondent.

DISCUSSION

Under the Rules for Uniform Domain Name Dispute Resolution Policy (Policy) the Complainant has the obligation to prove that a domain name at issue is identical or confusingly similar to the Complainant’s trademark; that the Respondent has no rights or legitimate interest in the domain name; and that the domain name has been registered and is being used in bad faith.

Paragraph 4(a)(i)of the Policy requires that the domain name be identical or confusingly similar to the Complainant’s trademark. Clearly "Lumena", a registered trademark under Polish and Russia law is identical to lumena.com if one omits the .com suffix. The close similarity of the domain name with a registered trademark is sufficient to meet the first element, even if there is no likelihood of confusion whatsoever.

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.

Paragraph 4(a)(ii) of the Policy addresses whether Respondent had any rights or legitimate interests in respect to the domain name.

Complainant argued that Respondent failed this test because it had never used the domain name lumena.com in bonafide commerce and has never been commonly known by the domain name. Respondent claimed that it had made preparations for use of lumena.com for a bona fide offering of goods or services. The Respondent maintains that the concept for a bona fide business application was sufficient and that it should not be punished.

The Panel concluded that the admittedly perfunctory preparations made by Respondent for use of the domain name lumena.com in bonafide commerce are sufficient to demonstrate rights or legitimate interests required by paragraph 4(a)(ii). In addition, given the generic nature of the domain name, Respondent has at least the arguable position that were it to use lumena.com merely for the purpose of redirecting visitors to a different site constitutes a legitimate fair use, as long as this use is not misleading to customers and does not tarnish a trademark. It was concluded that Complainant failed to meet its burden to show that Respondent possessed no rights or legitimate interests in the domain name.

Paragraph 4(a)(iii) of the Policy requires the Complainant to prove that the domain name was registered and was being used in bad faith.

Paragraph 4(b) of the Policy sets forth four examples of circumstances in which the registration and use of a domain name may be found to be in bad faith; (1) the Respondent has registered or acquired the domain name primarily for the purpose of selling it to the Complainant or a competitor at a profit (2) the Respondent registered the domain name to prevent Complainant from reflecting its trademark in a corresponding domain name and has engaged in a pattern of similar conduct; (3) the Respondent has registered the domain name primarily to disrupt the competitors business and (4) the Respondent’s use of the domain name intentionally attempts to attract users for commercial gain by creating a likelihood of confusion with the Complainant’s trademark.

The requirement of bad faith registration and use in paragraph 4 (a)(iii) is stated in the conjunctive. Registration in bad faith is sufficient if the Respondent does not use the domain name in bad faith and conversely, the use in bad faith is sufficient if the Respondent originally registered the domain name for a permissible purpose. The first three examples in paragraph 4(b) all refer to registration for various illegitimate purposes as evidence of registration and use in bad faith; but in each instance bad faith use may well be implicit in the act of registering a domain name, since all the improper purposes mentioned can be accomplished merely by passively holding a domain name.

Complainant points to statements in the skarbiec.com website which indicate Respondent is a domain name warehouse; "We manage over 1,000 internet domains, a real treasure house! Many of these domains belong to us, but we also manage third party domains. We welcome your bids for selective names available for lease." There is also evidence of a proposed auction in November 1999, which Respondent alleged did not take place.

It did appear that Respondent was involved in the business of registering domain names with the intent to resell them for a profit. If the domain name at issue were a common trademark such as IBM^®, evidence of this might well be sufficient to demonstrate a bad faith registration and use. Lumena.com, however, involves a generic term, and there is no direct evidence that Respondent registered the domain name with the intent of capitalizing on Complainant’s trademark interest. The only direct evidence as to the Respondent’s intent in registering lumena.com concerned Respondent’s partner’s interest in manufacturing and marketing lighting products primarily for the United States market. There was no plan to market lighting products in Poland or Russia.

Complainant operates its ventures in the field of information technology and is not associated with lighting products. The Panel therefore found that Complainant has failed to sustain its burden of proving that Respondent registered the domain name in bad faith.

There is an additional reason that relief sought in the complaint should not be granted. The Domain Name Dispute Policy and Rules are not designed to resolve every type of domain name dispute. The Policy is "minimalist" calling administrative resolution for only a small, special class of disputes in cases involving "abusive registrations." Cases (cases involving) legitimate disputes between the parties are relegated to the Courts. (See Staff Report on Implementation of Documents October 25, 1999, pg. 9)

Review of the materials submitted by Complainant and Respondent indicate there are a number of factual and legal disputes which require resolution in a different forum.

CONCLUSION & ORDER

For the reasons set forth above, the Panel concluded that the Complainant had proved only one of the three elements set forth in paragraph 4(a) of the Policy and therefore it is ordered as follows:

That the domain name lumena.com be retained by the Respondent.

Dated: May 11, 2000 James Alan Crary, Arbitrator