Ermanno Delia v. Daisy Sas
Claim Number: FA0508000528225
PARTIES
Complainant
is Ermanno Delia (“Complainant”),
represented by Andrea Valli, Via del Quirinale 26, Roma, Italy. Respondent is Daisy Sas (“Respondent”), Via Gandolfo 42, 46100 Mantova, Italy.
REGISTRAR
AND DISPUTED DOMAIN NAME
The disputed domain name is <orienterprise.com>, which is
registered with Tucows Inc.
PANEL
The
undersigned, David H Tatham, Dennis A Foster and Albert Agustinoy Guilayn certify
that they have acted independently and impartially and to the best of their
knowledge have no known conflict in serving as Panelists in this proceeding.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “NAF”) electronically
on August 1, 2005; the NAF received a hard copy of the Complaint on August 3,
2005.
On
August 1, 2005, Tucows Inc. confirmed by e-mail to the NAF that the <orienterprise.com> domain name
is registered with Tucows Inc. and that the 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
August 4, 2005 the NAF notified the Complainant of several deficiencies in the
Complaint, and an amended Complaint was submitted on August 10, 2005.
On
August 10, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 30,
2005 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@orienterprise.com by e-mail.
A timely Response was received and
determined to be complete on August 29, 2005.
Timely
Additional Submissions were filed by Complainant on September 6, 2005 and by
Respondent on September 7, 2005. In accordance with the NAF’s Supplemental Rule
7 these were deemed to be acceptable. They are summarized below and the Panel
has taken their contents into account in arriving at its Decision.
On September 6, 2005, pursuant to Respondent’s request
to have the dispute decided by a three-member
Panel, the NAF appointed David H
Tatham, Dennis A Foster and Albert Agustinoy Guilayn as Panelists with David H Tatham as Chairman.
RELIEF
SOUGHT
Complainant requests that the domain name
be transferred from Respondent to Complainant.
OTHER LEGAL PROCEEDINGS
Respondent has indicated that its principals are
legally seeking through the courts in Italy to have themselves declared the
legal owner of the trademark ORIENTERPRISE.
FACTS
Complainant
Complainant claims to be a provider of
consultancy services, offering investment management expertise, and economic or
technical advice to Italian and foreign clients intending to invest in the
Chinese market, as well as to Chinese clients wishing to invest in the European
or American markets.
Complainant also claims to own the
trademark ORIENTERPRISE, registered in Italy and as an International
Registration protected in China, Greece and the USA.
Thanks to Complainant, international
companies can obtain access to Chinese Fairs otherwise closed to Foreign
groups, and Complainant gives assistance to them in obtaining licenses from
local public administrations, in logistics processes, in Chinese accounting, in
partner research, in market research, in promotion, branding and marketing in
China, and in any other activity necessary to create a presence on the market
in China.
On March 15, 2004, Complainant entered
into a contractual arrangement with 3 other Italian companies with a view to
creating a Project which was called ‘China-Bridge Enterprise’ (“the March 2004
Contract”). On the basis of this Contract, each party was to contribute its own
expertise towards the realization and promotion of the Project.
Subsequently, Complainant published
several articles under the mark “Orienterprise” on the Internet and in
magazines, or in newspapers having a national circulation, to support the
promotion and goodwill of this business on the Italian market. Copies of a
number of these were annexed to the Complaint.
Respondent
Respondent
maintains that it has never known or met Complainant, nor known anything of the
businesses he was involved in before March 2004. It also maintains that the
facts as presented by him, and as summarized above, are not correct.
The
true facts, according to Respondent, are that in 2004 four different Italian
entities having an interest in the Chinese Market, among whom was Complainant,
decided to collaborate to provide a full set of services to those Italian
companies that wanted to develop their business in China. The main founders and
promoters of this initiative were Ludovico Festa Marzotto [a well known 3rd
generation family in the fashion business in Italy and abroad] and Roberto Lauricella
an expert in international policy
The
Agreement to set-up the resulting network was signed on March 15, 2004 and the
four players who signed it were:
Goon S.r.l., based in Vicenza and represented by Ludovico
Festa Marzotto,
De & Co di
Ermanno Delia, based in Vicenza,
Big Info S.r.l.,
based in Mantova and represented by Silvio Belgrado, and
ICP
Group S A Trust, based inVicenza and represented by Roberto Lauricella.
This
is the March 2004 Contract referred to above.
Subsequently other individuals and
organizations were asked to participate in the initiative, and annexed to the
Response was a copy of an article in Italian taken from the Internet and dated
February 11, 2005 in which the following translated passage appears:
“
Another
possibility to get a space in the Chinese market is provided
by www.orienterprise.com a company
build by 40 entrepreneurs and professionals dedicated to the China-Bridge
Project and by a network
of
160 resources working in Italy and abroad. Thanks to a number
of contacts in China the organization is
able to help the companies to move the first steps in Far East or to help
Chinese companies to develop in Europe.”
Respondent also
points to the following translated passage in one of the press cuttings submitted by Complainant himself, dated April 8, 2004:
“The companies
that are part of Orienterprise started the China-bridge
project (with 40 entrepreneurs and
professionals ….)”
Initially the founders chose the name “China-Italy
Enterprise” for the network, but very soon afterwards a new name –
Orienterprise – was chosen. Annexed to the Response were copies of e-mails
exchanged between the parties between March 29 and July 7, 2004 (i.e. only 2
weeks after the March 2004 Contract was signed) during the course of which the
name ‘Orienterprise’ and a logo were chosen.
The
first project developed by the Orienterprise network was called “China-Bridge
Enterprise” and the following translated description of it appears on the web
site at the disputed domain name: “The China-Bridge project represents one of
the concrete successful European initiatives in China. Through it ten
companies, national and international “first tier” in their sector have been
supported; Orienterprise is also playing the role of an inverse Bridge
supporting also Chinese companies investing in Italy….”
Respondent contends that the name
Orienterprise is the result of the work done by the above mentioned network and
it is not a creature of Complainant. He was only asked to collaborate with the
network in the area of marketing and public relations (“PR”), and this explains
the large number of articles in the press and on the Internet which were
annexed to the Complaint.
As
proof of the fact that the name Orienterprise is not the property of
Complainant, the following extract appears in the biography of himself that he
publishes on the Internet “…founder of Orienterprise network of companies
and professional teams providing services to the companies that want to
approach the Chinese market”.
The
Orienterprise network decided to develop its own web site as soon as possible
and Respondent was asked to register the domain name and to develop a web site
on it. As the network was not a legal entity at the time, the registration was
done on the name of Respondent and it was selected for this task because of its
links with one of the members of the network – Big Info S.r.l. In fact the two
companies share the same location. The contents of the web site were provided
by the Orienterprise network and Respondent has always acted on behalf of this
network.
Respondent
also states that, because Complainant decided to register the trademark
ORIENTERPRISE in his own name without seeking the agreement of the other members
of the network, he has now been formally excluded from the activities of the
network.
In
the meantime a legal entity has been incorporated to run the network, which is
called Orienterprise S.r.l. and which is based in Vicenza. This company is now
suing Complainant over the ownership of the trademark ORIENTERPRISE.
PARTIES’
CONTENTIONS
A. Complainant
Complainant
contends that since the signing of the March 2004 Contract he has developed the
business, made himself known on the market, and created a substantial
reputation and goodwill in the “Orienterprise” mark, and yet on March 31, 2004,
only 15 days after the signing of the above mentioned contract, Respondent
registered the disputed domain name despite the fact that it had not – and has
not at present – any kind of relationship with Complainant.
Complainant
further contends that Respondent knew that he was primarily using the trademark
ORIENTERPRISE for his business but yet has created a web site at the disputed
domain name that offers the same services as those offered by Complainant, in
direct competition with his business. It is clear to him that the main purpose
of this is to attempt to attract, for commercial unlawful and deceptive gain,
Internet users by creating confusion and to exploit the Complainant’s trade
mark goodwill by sharing its reached fame.
Meanwhile,
Complainant has himself registered <www.orienterprise.net> as a domain
name.
Complainant
maintains that he has invested a lot in the on-line consultancy services
provided under the trademark ORIENTERPRISE, that he has worked really hard in
this field, and that he has offered these consultancy services in China for a
long time.
On
July 12, 2005, Complainant wrote to Respondant pointing out that the web site
at the disputed domain name infringed Complainant’s trademark rights in
ORIENTERPRISE and asking for the domain name to be transferred to him within
three working days. He also sent a copy of the letter to the company with which
the name was registered asking them not to transfer the domain name to any
third party pending the outcome of this dispute. No reply was received from
either of them.
With
regard to the three elements required by the Policy, Complainant contends as
follows:
1. That the domain name registered by the respondent is
identical or confusingly similar to a trademark or service mark in which the
Complainant has rights.
The disputed domain name wholly
incorporates Complainant’s trademark ORIENTERPRISE. This trademark is
registered in Italy, China, Greece and the USA
On the web site at the disputed domain
name, Respondent offers the same services as the Complainant offers (and
offered earlier than Respondent did) on his website and under his trademark,
but on its own web site (<www.daisysas.com>)
no activities in China or in any other Asiatic countries are
indicated nor is there published any report on the market in China or any other
Asiatic country, nor any indication of agreements or cooperation with Chinese
or Asiatic companies. In addition, no indication is given, or any links shown, reporting on the services of
Orienterprise.
Respondent is therefore using a web site
name (orienterprise.com) that is identical to Complainant’s trade mark,
for the presentation to the public of identical or very similar services to those
offered by Complainant under his registered trademark ORIENTERPRISE. Apart from
anything else, this could confuse Internet users, because a search for
‘Orienterprise’ via a search engine such a Google will list only
<www.orienterprise.com > and not Complainant’s
<www.orienterprise.net>.
2. That Respondent has
no rights or legitimate interests in respect of domain name.
Respondent is not associated nor connected with
Complainant in any way. Complainant has never authorized or otherwise permitted
Respondent to use his trademark or to apply for, or use, the domain name
incorporating Complainant’s trademark.
The word “orienterprise” is not a term which is descriptive of
consulting services, but is a fanciful name. Therefore, Respondent is clearly
not using this term in a descriptive manner, or in a bona fide offering of goods or services, but rather
in a deceptive sense to identify its services which are advertised and offered
through the orienterprise.com website and to attract the clients of Complainant
and to cause confusion among Internet users.
Furthermore, Respondent has never had
published on the Internet or in the media, any interviews or articles neither
about China or the Asian market, nor about any services or indeed any subject
whatsoever related to Asia.
It
is clear therefore that Respondent has never had anything to do with China or
other Asiatic countries, or with services within China or other Asiatic
countries. Indeed its own web site shows that its real activities are only
focused on developing software and the like aimed at the Medical Sector and
Lawyers.
3.That
the domain name has been registered and is being used in bad faith.
Respondent
had full and actual knowledge of Complainant’s business under the term
“Orienterprise” when it registered the disputed domain name. In fact, when
Complainant had contractual relations with other Italian companies for the
China-Bridge Enterprise project, and he had exposed his activities to them,
Respondent’s immediate reaction was to register the disputed domain name.
By registering and using the disputed domain name “orienterprise.com”, which is essentially identical to Complainant’s trademark,
Respondant has intentionally attempted to attract for commercial and financial gain Internet users, creating
confusion with Complainant’s trademark.
Registration by Respondent of the domain name “orienterprise.com” prevents Complainant from reflecting his trademark in a corresponding
domain name.
Respondent
has shown a clear intention of generating business by illegally using the
personal prestige accrued by Complainant over many years, who is well
recognized nationally and internationally.
B. Respondent
Respondent
is adamant that the Complainant’s facts or contentions are untrue. For example:
·
It is not
true that Respondent had no link with Complainant;
·
It is not
true that Respondent has registered the site with the intention of disturbing
the Complainant’s business;
·
It is not
true that the web site at the disputed domain name is offering a service which
competes with the services provided by Complainant;
·
Complainant’s
statement in his letter of July 12, 2005, that he was not aware of the
registration of the web site at the disputed domain name is also not true.
Respondent
furthermore contends that it can be seen from the documentation supplied by
both Complainant and Respondent that:
·
When
Respondent registered the disputed domain name and created the site at that
name, there was no trademark registered with the same name;
·
Respondent
carried out the registration of the domain name and built the site under
precise instructions from the Orienterprise network, of which Complainant was
not the owner, but merely a co-founder;
·
Complainant
was aware of the registration of the disputed domain name and the existence of
the site, having used it in a large number of publications and internet
postings;
·
The
contents of the web site at the disputed domain name only refer to the
activities of the Orienterprise network, and that network is and always was in
charge of maintaining these contents;
·
Until such time as Complainant applied for the
trademark ORIENTERPRISE on April 11, 2005, the Complainant was not in
competition with the Orienterprise network, but Complainant was in fact working
for the network.
In this connection, a letter from
Gooon S.r.l., who was one of the original partners in the Orienterprise
network, and a signatory to the 2004 Contract, was annexed to the Response.
This describes how the name ‘Orienterprise’ was arrived at and the role of
Respondent in the network. It is so relevant to these proceedings that a full
and unaltered copy of it is annexed to this Decision, but without any of the
Annexes referred to therein. As can be seen, the letter is addressed to Respondent
and copied to the two other original signatories to the March 2004 Contract.
Also annexed to the Response were copies of identically worded letters from
these two companies confirming that Gooon’s letter was “a truly description of the facts and happenings from March 2004 up to
date.”
The disputed domain name was registered
on March 30, 2004 on behalf of the Orienterprise network and since then it has
been the site for promoting the commercial activities of the network of which
Complainant was a part.
Respondent
contends that registration of the disputed domain name and the construction of
the web site were well known to Complainant, who associated his name with the
site in various press articles or in postings on other Internet sites.
In
a publication, a copy of which was annexed to the Response, which dealt with
the use of broadband in China, Complainant is defined as a “qualified
analyst of the group Orienterprise and member of the board Orienterprise” with a link pointing to the disputed
domain name. Also, annexed to the Response were copies of several articles, all
of them dated prior to May 2005, which were signed:
Ermanno Delia
Board Orienterprise
Respondent
contends that this proves that as well as knowing about the registration of the
disputed domain name and the existence of the site, there was no competition
between the Orienterprise network and the activities of Complainant.
Moreover,
according to Respondent, Complainant:
·
was part of the selection process for the name
Orienterprise, which was eventually chosen for the network, even though he
initially preferred a different name;
·
was aware of the need to register a name and to create a web
site for the network and he was also aware that the disputed domain name had
been registered and that the site was being built;
·
has been providing material for the site;
·
had an e-mail address (delia@orienterprise.com) which appears
on the site and which incorporates the disputed domain name; he also had
privileged access to the site which he has been using until April 2005;
·
prints the above e-mail address on his business cards (a
copy of one of which was annexed to the Response);
·
has referred to the disputed domain name any time he needed
to refer to the site of the Orienterprise network;
From March 2004, the Orienterprise network
developed its business receiving a good response to its brand and image.
However the Complainant personally registered the trademark ORIENTERPRISE on
April 11, 2005, without seeking the agreement of the other members of the
network . This caused Complainant to be excluded from Orienterprise S.r.l., the
legal entity that was created on November 5, 2005 to take over the business and
activities of the Orienterprise network.
Well
before the questionable registration of the trademark, it was Respondent who
registered the disputed domain name and built a site on behalf of the
Orienterprise network, of which Complainant was a part.
Complainant is an individual and not a legal
entity. His “one-man company” De &
Co is registered to develop software and so is not involved in Far-East
commerce or international consultancy. The Italian and Chinese markets deal
only with legal entities, when they enter into serious negotiations.
Complainant has been doing most of the PR
activities for the Orienterprise network and he handled all the relations with
the press. But Complainant has never brought an Italian client to China or the
reverse and he has never been to China himself. Complainant has been very vocal
in the press and on the Internet regarding the coming possibilities and
opportunities for business in China, but he himself has not developed any
business in this area.
Hence
it is very difficult to say that Complainant has developed a business in this
area, or that “Complainant is one of the first providers of consultancy
services on international market” as stated in the Complaint. Up to March
2003 Complainant has worked in the telecom business and wireless networks, but
he has never had the support of or dealt with companies having an interest in
the Far-East or Chinese markets. Complainant describes his background and
business in the few months before joining the Orienterprise network, but no
reference whatsoever to China appears in the description even though there is a
specific mention to the evolving market of Eastern Europe.
Respondent is a small IT company, which was
established in January 1992, and which is well known in the market. It has
undertaken projects in the web arena. Respondent has nothing to do with the
Chinese market or Far East opportunity development.
Respondent registered the domain and developed
the site on behalf of the Orienterprise network as explained in the letter
which is annexed to this Decision.
The Orienterprise network also asked
Respondent to register the domain name <china-bridge.it> to reflect the
name of the initial project, but this name has not been renewed because it was
judged by the network to be redundant.
With
regard to the three elements required by the Policy, Respondent contends as
follows:
(a) Identical
and/or confusingly similar
The disputed domain name is the ‘flag’ of the
Orienterprise network which is now incorporated as Orienterprse S.r.l.
Respondent registered it under the direct guidance of the same on March 30,
2004 .
Until a few weeks ago Complainant has himself
been using all of the services and the content of the web site at the disputed
domain name. But, having now
registered the domain name <www.orienterprise.net>. Complainant has
developed a site that copies most of the content of <www.orienterprise.com>.
(b) Rights and
legitimate interests
Complainant was part of the network that
commissioned Respondent in March 2004 to do the necessary work in registering
the disputed domain name and in creating a web site at it for the network. It
was the network, and not the Complainant which developed the name and the brand
in March 2004, without any intellectual or economic input from the Complainant,
as can be seen from the Annex to this Decision. In fact he was not initially
supportive of the name and the brand during its development. Orienterprise
S.r.l. is now the legitimate owner of the site since its predecessor in
business was responsible for commissioning the same.
Hence the brand and the name has been used on
the site (with the blessing of
Complainant) for more than a year before Complainant decided to part
from the network and to register the trademark on his own.
(c) Bad faith
There has been no bad faith at all. Respondent
has done the job requested of it by the Orienterprise network in a timely and
professional manner. Respondent accepts and acknowledges that Orienterprise
S.r.l. is the owner of the content of the site.
If there is any bad faith it can be seen from
the actions of the Complainant who has sneakily attempted to register
“Orienterprise” as a trademark or a domain name, without informing the other
members of the network, and without having any intellectual or economic link
with the brand.
C.
Additional Submissions
Complainant
In
his Additional Submission, Complainant repeats much of what he said in the
Complaint, but more particularly, he –
·
Asserts that the facts described in the Response
confirm the legal grounds of the Complaint, notwithstanding that some of the
statements made by the Respondent are untrue, inconsistent and irrelevant;
·
Notes that Respondent confirms not only that it has
never had any kind of relationship with Complainant;
·
Agrees that he has never known Respondent nor has had
any business or personal relation with them;
·
Disagrees with the statement in the Response that “Orienterprise is the result of the work done
by the Network and not a creature of Complainant”;
·
Believes that
Respondent has never worked with, or for, Orienterprise or had any relation
with it. Moreover, Respondent did not execute the March 2004 Contract nor have
they ever known anything about the work done by the Complainant;
·
States that Complainant, in his capacity as one of the
founders of the Orienterprise network, never conferred any mandate on
Respondent for the registration of the domain name “orienterprise.com”, and
Respondent has given no evidence at all to prove that such an alleged mandate
and/or power of attorney had ever been granted to it;
·
Notes that, according to the Respondent, it was asked
to register the domain name “orienterprise.com” because it had the same
location as Big Info S.r.l. but Respondent has submitted no evidence in this
regard, and “it is widely known that an
important task like the registration at stake is generally conferred to third
parties for reasons other than simply sharing a building”;
·
Asserts that Complainant did not know that the
registration of the domain name “orienterprise.com” had been made by Respondent
and it was only when Complainant decided to provide consultancy services on his
own by using the domain name “orienterprise.com”, corresponding to its own
trade mark “orienterprise”, that he discovered that this domain name had been
registered by Respondent;
·
Points out that the relationship between Complainant
and the other parties to the March 2004 Contract is not relevant to this
proceeding; since the matter at stake is that the Respondent, a company that
has nothing to do with the activities of Complainant or Orienterprise network,
has unlawfully registered the domain name in dispute;
·
Denies that he has no relation with Chinese markets,
as contained in Respondent’s contention that “Italian and Chinese markets deal only with legal entities, when they
enter in serious negotiations …. Complaint has never brought an Italian client
to China or the reverse. Complaint has never been to China himself!” and
states that since Respondent does not know and/or control Complainant’s habits,
it is self evident that it cannot be informed about his travels nor who might
be his clients;
·
Alleges that in fact the contrary is true since
Respondent has no competence in Chinese market affairs, a fact which was
confirmed in the Response. In fact Complainant has been providing consultancy
services related to the Chinese market for a long time. Such circumstance can
be verified by simply seeking in “Google” the key words “ermanno delia orienterprise cina”. Many articles written by
Complainant about the Chinese market will then appear.
All the above shows incontrovertibly
that the Respondent is using the disputed domain name without any connection
with a bona fide offering of goods or services but for generating contacts, impressions and
business by illegally using the personal influence accrued up to now by
Complainant.
Respondent has never received a mandate and/or power of attorney to
register the domain name “orienterprise.com” and it is not true that a company
called Orienterprise S.r.l., as Respondent asserts, is the “owner of the content of the site”. In
fact, the company Orienterprise S.r.l.
was only incorporated on May 11, 2005 i.e. one year after Complainant and the
Italian companies entered into the March 2004 Contract. This was done with the
clear intention of protecting the unlawful registration of the disputed domain
name from the legitimate action for restitution through the transfer of the domain name to the Complainant.
Respondent
In its additional Submission, Respondent states at the outset that
it is clear from the correspondence and the documents presented that this
dispute of Delia v. Daisy sas is in reality Delia v. Orienterprise.
Complainant, after having worked for the Orienterprise network for
more than a year where he was responsible for PR and marketing, decided to
register the trademark on his own, without the permission of the network. This
has led him to being excluded from the same, and to the start of legal
proceedings to recover the trademark. What Complainant is now trying to do is
to use his temporary possession of the trademark to get his hands on the domain
name <www.orienterprise.com> and to cause further damage to the
Orienterprise network.
Respondent stresses the following three points:
Respondent is acting on behalf of
the Orienterprise network
The letter from Gooon S.R.l. which is annexed to this Decision
clearly shows that:
1. Gooon (a member of the network) developed the name
Orienterprise and the logo
2. Gooon instructed Respondent to obtain the domain name and to
develop the site. A co-owner (20%) of BigInfo S.r.l. (also a member of the
network) who has a 50% stake in Respondent recommended Respondent’s services
and paid its fees.
3. The Orienterprise network manages the content
of the site and is using it to
promote its initiatives
Hence Respondent is not “grabbing names” but is acting on behalf
of the network and the network acknowledges this fact.
Complainant was aware of the domain
name and of the site
Complainant has been referring to the domain name and the site for
one year, without any comment or concern, other than complaining when the site
was not promptly updated or the mail server was not responding. Thus:
1. Complainant was aware for more than a year that the domain had
been registered.
2. Complainant has been using the e-mail address of
Orienterprise.com in all his documents and on his business card.
3. Complainant did not concern himself for more than a year with
the details of the registration of the disputed domain name. Complainant had no
interest on his own account in it until he decided, unethically, to register
the trademark ORIENTERPRISE.
Complainant has been aware of the domain name and the site for a
very long time. It is thus untrue that he discovered in May 2005 that the
domain had been registered. This point is confirmed in the letter from Gooon
S.r.l. which is annexed to this Decision and also in an e-mail dated March 31,
2004 from Complainant to his 3 partners in the network, a copy of which was
annexed to respondent’s Additional Submission. The quarrel started when
Complainant broke with the Orienterprise Network.
Complainant has no Business with
China
Complainant has not proved that he has any business whatsoever in
or with China. What has been proved is that he wrote a long list of articles
and Internet postings on the subject.
Respondent contends that this proves that:
1. Complainant has being doing PR & Communication activity for
the Orienterprise network.
2. Complainant has no legal entity entitled to enter into a
contract for commerce in the Far-East or China. He has no means of doing
business in this area
3. Orienterprise is the real player in this
area: It –
·
has a legal entity enabled to sign contracts and
issue invoices;
·
has a proven record of contracts and clients in
both countries;
·
has Offices in Shanghai with 2 people
permanently there;
·
flies personnel back and forth from China at
least twice a month
Complainant is not the founder of Orienterprise as he states in
his Additional Submission. He was part of the team and responsible for PR on
behalf of the network. The name and brand was developed by Gooon srl, so he has
no right to the name at all.
The Orienterprise network and its technical support (Respondent)
are using the domain name to do serous business and it would be very damaging
for them if the disputed domain name were to be transferred to Complaint who is
trying to leverage his unethical registration of the trademark to block
Orienterprise’s presence on the Internet.
DISCUSSION AND FINDINGS
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.
Preliminary Remarks
The
above three elements will be discussed further below, but first a few
preliminary remarks about the case.
1. It is between two Italian entities and
much of the evidence is in Italian. Respondent opted for a 3 person Panel and
named 3 Italian lawyers as their choice of Panelists. The NAF has selected for
the Panel an Englishman, an American and a Spaniard, but at least one of the
Panel is fluent in Italian so the nationality of the Panel is not an issue.
2. The case is, in essence, a business
dispute over who is the rightful owner of the name ‘Orienterprise’. However the
Panel is concerned solely with the disputed domain name
<www.orienterprise.com> and leaves any other matters to be decided by the
courts in Italy or elsewhere.
3. Both Complainant and Respondent have
leveled charges at each other concerning the other’s knowledge of and
experience in China and the Far East (or rather the lack of them). These have
nothing to do with this Complaint and have been ignored by the Panel.
Identical and/or
Confusingly Similar
There are two requirements that a Complainant must establish
under paragraph 4(a)(i) of the Policy: that it has rights in a trademark or
service mark, and that the domain name is identical or confusingly similar to
that mark.
Dealing with the second of those requirements first, it is
customary when deciding the question of similarity to disregard the prefix
‘www’ and the suffix ‘.com’. Thus there is no doubt that the disputed domain
name and the trademark claimed by Complainant are identical.
However the first requirement is more problematical.
Although Complainant claims that his trademarks are registered, they are in
fact of very recent origin. The Italian mark application was only filed on
April 11, 2005 and the International Application is dated June 1, 2005. The
Italian Patent Office is very slow to grant trade mark registration and a wait
of over 3 years between filing and registration is not uncommon. Also, the
application for International Registration is too recent for the mark to appear
yet on the WIPO’s published list of marks. In any case, an International
Application can be refused registration in any of the 3 countries to which
Complainant has sought to extend his mark. Thus, there is no guarantee that any
of Complaint’s trademarks will ever be registered.
The Panel also notes that the trademarks were filed over 1
year after the disputed domain name was registered. This does not necessarily
prevent a finding of identity or confusing similarity as the Policy makes no
specific reference to the date when the owner of the trademark acquired his
rights, but there is a difference of opinion among UDRP Panelists on this
point. For example, in WIPO Case D2001-0074 John Ode d/b/a ODE and ODE –
Optimum Digital Enterprises v. Intership Limited, the three distinguished and
experienced Panelists held as follows: “If
paragraph 4(a)(i) of the Policy means that a Complainant must have rights in a
trademark which antedates the date when the domain name in issue was
registered, then the Complainant does not meet the requirements of this
paragraph. If so he cannot succeed. The Panel is of the view that this arguably
[is] an essential requirement of paragraph 4(a)(i) of the Policy. This view is
taken notwithstanding the minority decision of Mr. Thomas Creel disagreeing
with this approach – see Panel Decision Firstgate Internet AG v. David Soung D2000-1311.
Notwithstanding this, we are of the unanimous view that the trademark must
predate the domain name.” However in WIPO Case D2001-0827 Digital Vision ,
Ltd. V. Advanced Chemill Systems, which post-dated the above Decision, the sole
Panelist held: “The Complainant has
provided the registration documents for its DIGITAL VISION marks, within the
USA and the EU. Registration for these marks postdate the domain name
registration; however paragraph 4.a.(i) does not require that the trademark be
registered prior to the domain name. This may be relevant to the assessment of
bad faith pursuant to Paragraph 4.a.(iii)”. While in WIPO Case D2001-1182
PrintForBusiness B.V. v. LBS Horticulture a few months later the sole Panelist
held: “The Complainant has applied to
register a figurative mark containing the word PrintForBusiness as a Community
Trademark. The application has not yet matured into a registration and the
rights of the Complainant are therefore not conclusive. The mark has been in
use for some time and it is also identical to the Complainant’s Company Name.
On this background the Panel finds that it cannot reasonably question the
rights of the Complainant to the mark PrintForBusiness.”
The facts in the present case are not exactly on a par with
those in any of the above three Decisions, but they come closest to the John
Ode Case. The Panel therefore prefers to side with the unanimous view of the
Panel in that case and has concluded that Complainant has not proved that he
has any rights in a trademark since his trademark applications were filed 1
year after the registration of the disputed domain name and only quite shortly
before the filing of the Complaint. Also there is no guarantee that they will
ever be registered. Consequently, the Panel finds that the first requirement of
paragraph 4(a)(i) of the Policy has NOT been proved.
Nevertheless, we shall still proceed to consider the other
two requirements of the paragraph.
Rights or Legitimate
Interests
The Panel believes that Complainant has, in his Complaint,
set out what could be a prima facie case. Therefore the burden of proof shifts
to Respondent to prove he is wrong.
In our view, Respondent has amply satisfied this burden and,
by their arguments and evidence, have established that the organisation on
whose behalf it initially registered the disputed domain name is the rightful
owner of it. That organisation has been referred to as ‘the Orienterprise
network’ but it is now incorporated as an Italian company called Orienterprise
S.r.l. which is based in Vicenza.
Respondent has filed copies of e-mails exchanged between the
4 founders of the above mentioned network a few weeks after the signing of the
March 2004 Contract, when the name Orienterprise was chosen from a list of 7
possible names. It was a majority decision, because it would seem from this
exchange that Complainant preferred 2 of the others, one of which was found to
belong to a third party.
One of the 4 founders is Gooon S.r.l. and, in a letter which
is attached to this Decision, it has not only confirmed this version of events,
but also confirmed that Respondent was contracted and instructed to register
the disputed domain name on behalf of the network, to produce a web site for
the network, and to manage this site. Two of the other founders have written to
confirm this is a true summary of the facts.
In our opinion it is beyond belief that firstly, in the
light of these incontrovertible facts, the Complainant should have commenced
these proceedings and, secondly, that he should have continued with them in the
face of the compelling evidence which totally contradicts his version of
events. It is apparent that Complainant has no personal right to the name
Orienterprise and indeed, in the year since the name was chosen and, as the
Orienterprise network became established, Complainant has freely acknowledged
in print that he is but a co-founder of the network and not its ‘owner’ or
principal.
Our conclusion is that Respondent does indeed have a
legitimate right and interest in the disputed domain name and that the second
element of paragraph 4(a)(i) of the Policy has also NOT been proved.
Registration and Use in
Bad Faith
It follows from the above conclusion and description of
events that there is no need for us to continue further. However in the John
Ode Case referred to above, the Panel cited no less than 12 Decisions in
support of “the view that a trademark
that did not exist at the time the disputed domain name was registered cannot
serve as a basis for a claim under the ICANN Policy, since it is impossible for
the domain name to have been registered in bad faith.” They cited a further
3 Decisions which directly supported “the
proposition that a complaint is brought in bad faith if the trademark postdates
the disputed domain name” and a further 5 Decisions which supported this
proposition indirectly.
We should further wish to place on record
our opinion that Respondent has acted throughout in good faith and that the
only bad faith has been on the part of Complainant who, despite having no
rights to the name Orienterprise, has filed it as a trademark and brought this
Complaint which is totally without merit.
We conclude that the third element of paragraph 4(i)(a) has
NOT been proved either.
DECISION
Having
established none of the three elements required under the Policy, the Panel
concludes that relief shall be DENIED.
David H Tatham, Panel Chair
Dennis A Foster and Albert Agustinoy
Guilayn, Panelists
Dated: September 22, 2005
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