ADMINISTRATIVE PANEL DECISION Bates Worldwide, Inc. v. MIC (Syed Hussain) Case No. D2000-1168
1. The Parties The Complainant is Bates Worldwide, Inc., a Delaware corporation with its principal place of business at 498 Seventh Avenue, New York, New York 10018, U.S.A.
The Respondent is MIC (Syed Hussain), with an address at 15 5th Street, Closter, New Jersey 07624, U.S.A.
2. The Domain Name and Registrar The dispute concerns the domain name “dwpbates.com” (the said Domain Name) registered with BulkRegister.com, Inc. (the Registrar) of 10 East Baltimore Street, Baltimore, Maryland 21202, U.S.A.
3. Procedural History On September 4, 2000, the Complainant submitted a Complaint electronically and by hard copy to the World Intellectual Property Organization Arbitration and Mediation Center (the WIPO Center) for a decision in accordance with the Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules).
On September 12, 2000, the WIPO Center acknowledged receipt of the said Complaint.
On September 12, 2000, the WIPO Center sent a Request for Registrar Verification to the Registrar. On September 12, 2000, the Registrar confirmed to the WIPO Center that it was the Registrar of the said Domain Name and also that the current registrant of the said Domain Name was the Respondent.
On September 20, 2000, having found that the Complainant had satisfied the formal requirements of the Policy, the Rules, and the Supplementary Rules, the WIPO Center sent the Notification of Complaint and Commencement of Administrative Proceeding (the Notification) by post/courier and e-mail to the Respondent and transmitted electronically copies of said documents to the Complainant, ICANN, and the Registrar. The said Notification particularized the formal date of the commencement of this administrative proceeding as September 20, 2000, and required the Respondent to submit a Response to the Complaint within 20 calendar days from the date of receipt of the Notification, failing which the Respondent would be considered to be in default.
The Respondent failed to file the Response with the WIPO Center by the last date, i.e. October 9, 2000. On October 25, 2000, the WIPO Center sent the Notification of Respondent Default to the Respondent by post/courier and e-mail and copied it to the Complainant via e-mail. The Complainant elected to have the dispute decided by a single-member panel (the Panel). On November 15, 2000, the WIPO Center appointed Mr. Terrell C. Birch to be the panelist after receiving a Statement of Acceptance and Declaration of Impartiality and Independence from him and sent a Notification of Appointment of Administrative Panel and Projected Decision Date to the Complainant and the Respondent and copied it to the Panel by e-mail. On the same day, the WIPO Center sent a Transmission of Case File to the Panel, with an electronic version of a Model Form of Administrative Panel Decision.
The Panel finds that the WIPO Center has discharged its obligations and responsibility under the Rules. The Panel will hereby issue its Decision based on the Complaint, the Policy, the Rules, and the Supplementary Rules, without the benefit of any Response from the Respondent.
4. Factual Background The Complainant has registered the mark BATES in the United States as well as internationally. The Complainant owns a United States service mark for BATES and design, Registration No. 2,027,456 for International Class 35 in connection with services including, without limitation, advertising agency services, public relations, and marketing services. See Complaint Exhibit [D]. The Complainant also owns other United States trademark registrations and various international trademark registrations and service marks for the BATES brand, including throughout Europe and Scandinavia, and in many other industrialized countries.
Complainant’s BATES mark enjoys global fame. In 1996 Complainant received a trademark registration from the United States Patent and Trademark Office, Registration Number 2,027,456 for its famous BATES brand. Prior to 1996, Complainant had adopted and used the BATES brand worldwide in connection with a wide range of advertising and related services. Bates is one of the world’s largest advertising companies, with annual billings of over $8.5 billion from operations in more than 75 countries.
As a result of Complainant’s activities and the extensive media attention to its services, the distinctive BATES mark has become a global brand and trademark of enormous strength. The BATES trademark is registered in the United States, as well as many countries worldwide, in connection with a wide variety of advertising, public relations, and marketing services. In short, the BATES trademark is famous throughout the world and embodies substantial goodwill. It is universally recognized and relied upon as identifying Complainant as the sole source of BATES services. As a result, the trademark BATES is an extremely valuable commercial asset.
On July 5, 2000, Cordiant Communications Group PLC, Bates’ parent company, announced the acquisition of Donino, White & Partners (“DWP”), an advertising and marketing firm with a specialty in serving clients in the technology industry. See Complaint Exhibit [E], a collection of press releases and news stories covering the acquisition. The name of the new entity was announced as DWP/Bates Technology. News of the acquisition was reported as early as July 3, 2000. See Complaint Exhibit [E], “Adweek Online” article. DWP was a very well known, highly successful firm in its own right, representing companies such as Hewlett-Packard, Nokia, Sony, and others. As a result of its success (estimated billings in 2000 were expected to reach nearly US$170 million), the acquisition received widespread media attention.
Without Complainant’s consent, and with full knowledge of Complainant’s famous BATES trademarks, the well-known DWP name, the impending merger, and the name of the new entity, Respondent registered the said Domain Name “dwpbates.com” with BulkRegister.com on July 3, 2000, immediately after news of Bates’ acquisition of DWP, and the name of the new entity, was released. See Complaint Exhibits [A] and [E]. This Domain Name wholly incorporates the primary elements of Complainant’s registered BATES trademark and the DWP name, and was adopted in bad faith by Respondent with the intent solely to profit from its resale to Complainant. Respondent has failed to demonstrate use of the Domain Name or a name corresponding thereto in connection with a bona fide offering of goods or services, that Respondent has been commonly known by the Domain Name, and that Respondent has made any use whatsoever, let alone legitimate non-commercial or fair use of the Domain Name.
On August 17, 2000, shortly after learning of Respondent’s registration and use of the “dwpbates.com” Domain Name, Complainant’s attorney sent a letter to Respondent explaining that Respondent’s registration of the Domain Name “dwpbates.com” was unlawful and in an effort to resolve the matter quickly and amicably, demanded that Respondent transfer the Domain Name “dwpbates.com” to Complainant. See Complaint Exhibit [F]. On August 21, 2000, Respondent’s representative telephoned Complainant’s attorney in response to the letter and, when that call was returned, Respondent’s representative informed counsel that Respondent would not comply with Complainant’s demands, absent the payment of US$5,000.
5. Parties’ Contentions A. Complainant
Essentially, the contentions of the Complainant are that the BATES Mark, and DWPBATES TECHNOLOGY, the name of Bates’ new entity, are its service marks, and that Respondent has adopted a substantially identical word for the said Domain Name that is confusingly similar to Complainant’s BATES Mark and the DWPBATES name, that the Respondent has no rights or legitimate interests in the said Domain Name and that the said Domain Name has been registered and is being used by the Respondent in bad faith. Furthermore, it has been alleged that Respondent’s actions constitute cybersquatting under 15 U.S.C. § 1125(d).
In view of the fact that the Respondent has not filed a Response, the Panel is in no position to make out its contentions.
6. Discussion and Findings 6.1 Effect of Respondent’s Default
By paragraph 5(b)(i) of the Rules, it is expected of the Respondent to:
“[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”
In the event of a default, under paragraph (14)(b) of the Rules:
“…the Panel shall draw such inferences therefrom as it considers appropriate.”
As stated by the panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques WIPO Case No. D2000-0004 (February 16, 2000):-
“Respondent’s failure to present any such evidence or to deny complainant’s allegations allows an inference that the evidence would not have been favorable to respondent.”
In the instant administrative proceeding, the Respondent’s default entitles the Panel to conclude that the Respondent has no evidence to rebut the assertions of the Complainant. It enables the Panel to proceed to make a finding in favor of the Complainant.
6.2 Elements to be proven
However, paragraph 4(a) of the Policy envisages that for the Complaint to succeed, the Complainant must establish that:
i) the Respondent’s Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights; and
ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
ii) the Respondent’s Domain Name has been registered and is being used in bad faith.
The panel in Cortefiel, S.A. v. Miguel Garcia Quintas WIPO Case No. D2000 0140 (April 24, 2000) notes that under the Policy, even if the respondent is in default,
“…the complainant must prove that each of these three elements are present.”
6.3 Identical or Confusingly Similar
The Complainant claims and has established first use and ownership of the BATES and DWPBATES Marks. It has also shown long and substantial use. Ownership of these Marks (the “BATES Marks”) is clearly in the Complainant. Under the Policy, all that is required of the Complainant is to establish its rights in the Marks, and the extent of the geographical area in which the rights accrue does not matter. The Panel has compared the said Domain Name with the Complainant’s BATES and DWPBATES Marks and finds that the second level domain (“dwpbates.com”) is substantially identical to the Complainant’s Marks in its use of the words and acronym “DWPBATES.” The Panel finds that there is such similarity in sound, appearance, and connotation between the BATES Marks and the said Domain Name (“dwpbates.com”) as to render said Domain Name confusingly similar to Complainant’s BATES Marks.
Under paragraph 4(c) of the Policy, the Respondent may demonstrate its rights and interests in the said Domain Name by showing:
i) its use of, or demonstrable preparations to use, the said Domain Name or a name corresponding to the said Domain Name in connection with a bona fide offering of goods or services before any notice to him of the dispute; or
ii) he (as an individual, business, or other organization) has been commonly known by the said Domain Name, even if he has acquired no trademark or service mark rights; or
iii) he is making a legitimate noncommercial or fair use of the said Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence presented by Respondent in demonstrating any of the foregoing factors because Respondent is in default and has failed to respond in this action. Accordingly, the evidence available contains nothing that may justify a legitimate noncommercial or fair use of the said Domain Name by Respondent. Neither is there any evidence for any of the other two foregoing requirements.
6.5 Registration and Use in Bad Faith
As stated by the panel in World Wrestling Federation Entertainment, Inc. v. Michael Bosman WIPO Case No. D99-0001 (January 14, 2000) in order for the Complainant to succeed:
“... the name must not only be registered in bad faith, but it must also be used in bad faith.”
The Complainant must prove that the Respondent registered and also used the said Domain Name in bad faith in order to establish ‘bad faith’ on the part of the Respondent.
Based on the alleged facts, which have not been disputed, the Panel finds that the Respondent has engaged in the practices defined in Paragraph 4(b)(i) of the Policy as evidencing the registration and use of the said Domain Name in bad faith.
7. Decision For all the foregoing reasons, the Panel finds that the Complainant has proved each of the three elements of paragraph 4(a) of the Policy. The Panel requires that the said Domain Name be transferred to the Complainant.