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WIPO Arbitration and Mediation Center

The Complainant in this administrative proceeding is eMonkey SA, a Swiss Company of Techno-pôle 3, CH-3960 Sierre, Switzerland, represented by Thomas Putallaz, tputallaz@emonkey.ch, CP97, CH-1211 Geneva 20. The Respondent is eMonkey, of 3514 rue Hutchison #19, Montreal, Quebec H2X 2H2, Canada.

The domain name in issue is <emonkey.com> ("the Domain Name"), the Registrar of which is Network Solutions, Inc, of 505 Huntmar Park Drive, Herndon, VA 20170, USA ("NSI").

The WIPO Arbitration and Mediation Center ("the Center") received on July 13, 2001, an e-mail version of the Complaint, and on July 30, 2001 a hard copy of the Complaint and accompanying documents. The complaint was submitted in the French language. On August 1, 2001, the Center raised the objection that, in the absence of any agreement between the parties, pursuant to the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") the language of this administrative proceeding shall be the language of the registration agreement governing the Domain Name. The Respondent was called upon to provide the Center by August 6, 2001, with either (a) an agreement with the Respondent to proceed in French or (b) the Complaint in English. An Amended Complaint (in English) was submitted by e-mail on August 10, 2001, and in hard copy on August 13, 2001. A Second Amendment was sent by e-mail on August 14, 2001, to correct the name and address of the Registrar. On August 16, 2001, the Center was able to verify that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), and the Rules. The Complainant made the required payment to the Center. On August 22, 2001, the Center formally notified the Respondent that this administrative proceeding had been commenced, and that date is the formal date of the commencement of this administrative proceeding.

On July 23, 2001, the Center received from NSI its Verification Response confirming that the registrant is eMonkey, the Respondent herein, and stating that the Administrative, Technical and Billing Contacts are Galagoda, Sheahan of Nalios Limited, 22-24 Ely Place, London EC1N 6TE, United Kingdom.

On September 5, 2001, the Respondent served a Response by e-mail and on September 10, 2001, a hard copy with annexes. On October 5, 2001, this Panelist was appointed by the Center. The Panelist has filed a Statement of Acceptance and Declaration of Impartiality, and his decision is scheduled to be forwarded to the Center by October 22, 2001.

The factual background to this case is quite simple, since neither party relies on much factual material. The following facts seem not to be in dispute:-

(a) The Domain Name was registered on December 5, 1998.

(b) The Complainant company was registered on August 29, 2000, and uses the domain name <emonkey.ch>.

(c) The Complainant registered "eMonkey" in a somewhat stylised form as a French trade mark, No. 3064276 ("the Trade Mark") on November 7, 2000, in Classes 35 and 38.

(d) A company called E Monkey Pty Ltd has a pending Community Trade Mark Application to register "emonkey" in Class 35, dated October 6, 2000.

(e) There is an English company, E-Monkey Ltd which was incorporated on December 23, 1999.

(f) The parties have corresponded by e-mail since June 13, 2001 at least. The earliest e-mail exhibited is as follows:-

"Subject: Requests that should be redirected to eMonkey.ch
Date: Wed, 13 Jun 2001 14:07:37 +0200
From: "Sue Putallaz" sputallaz@emonkey.ch
To: admin@emonkey.com

Hello,

Sorry for the trouble, but this is a direct consequence of the name. We brand our name with www.eMonkey.ch, but we can not control people who get confused. We are open to buy your domain name since it’s not used by yourself and then you will not have anymore clients/visitors that disturb you. Another possibility for you is to put our logo with a link so you can redirect people.

Regards,

Sue S. Putallaz"

(g) On July 10, 2001, Sheahan Galagoda of the Respondent e-mailed Sue Putallaz:-

"Subject: Emonkey domain name
Hello,
As you have expressed interest in buying our domain name we would like to inform you that Firmbuy.com a Canadian internet firm, has contacted us to discuss the purchase of this domain name. Should you still be interested in purchasing the emonkey domain name you can contact us with your offer. It may interest you to know that over the course of the last 2 months we have received over 165 emails that were inadvertently sent our way.
Regards,
Sheahan Galagoda
Managing Director
eMonkey.com"

(h) Later on July 10, Sue Putallaz replied:-

"Subject: Re: Emonkey domain name
Hi,
Thank you for your offering. Let us know your price. If it’s reasonable we may be interested in buying it.
Thank you also for sending us a copy of these 165 emails.
Best regards,"

(i) On July 17, 2001, Sheahan Galagoda sent the following e-mail to Sue Putallaz:-

Subject: Emonkey domain name
Hello,
As stated in my last e-mail, we have received an offer for the e-monkey domain name. The offer was for US$47,000. We refused it on the grounds that the domain name has been valued by Verisign’s Great Domains at US$75,000 due to its unique nature.
Thank you for your interest.

(i) The Complainant is a Swiss company specializing in the development and sale by "e-Procurement solutions".

(ii) The Complainant has lost clients and prospects because the Respondent is using the Domain Name in bad faith, as evidenced by the fact that the Respondent’s web site displays a cartoon of a monkey’s face over "eMonkey". This causes serious damage to the Complainant’s brand "eMonkey" and to its image.

(iii) The Domain Name and the Trade Mark are identical and the Complainant’s clients and prospects are easily confused.

(iv) The Complainant has proposed establishing a link on the Respondent’s web site to re-route people to the Complainant’s web site or buying the Domain Name for a reasonable price (i.e. as a maximum the cost of this administrative proceeding).

(v) The Respondent has registered and used the Domain Name in bad faith. The Respondent’s sole purpose has been speculation, as evidenced by the threat to sell the Domain Name to one of the Complainant’s competitors (Firmbuy) if the Complainant did not agree to pay the enormous sum of $75,000.

(vi) The Respondent has no real interest nor other legitimate rights other than owning the Domain Name.

(vii) There is no evidence of the Respondent’s use, or demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services before any notice of this dispute.

(i) The Respondent points out with some force that the Domain Name was registered 20 months before the Complainant was incorporated. The Respondent cannot be blamed if the Domain Name is confusingly similar to the Trade Mark.

(ii) There is exhibited to the Response a letter dated September 1, 2001 from a Mr. Tikiri Wanduragala (from an address in the UK). The first three paragraphs of that letter are as follows:-

"I understand from Sheahan Galagoda that we have had a complaint about registering <emonkey.com> as a domain name. I came up with the idea for the site name with Sheahan Galagoda and would like to provide details that we registered this site name for a legitimate use.

The idea for the emonkey site was first discussed between Sheahan Galagoda during the week of May 16, 1998 when I visited him in Canada. The basic idea of the site is to have a cartoon character, a monkey, that assists users in the selection of stocks on a number of world markets. The reason for using a monkey is due to the fact that monkey is a direct translation from Sri Lankan to English of the first part of my surname (e.g. wandura = monkey). In addition a monkey provided us with a character that users of the site could associate with.

After this discussion Sheahan Galagoda and I decided to register a domain name to use with this idea our preferred option was <monkey.com> but this was already in use and so Sheahan registered <emonkey.com>. Since then we have been developing the technology behind the site and plan to fully launch the site fully in the next 8 to 12 months."

(iii) During the last six months (March 2001 – Present), the Respondent has managed to find the funding and the technology needed to run its web site and plans to launch the <emonkey.com> web site in June, 2002. The recent downturn in the Internet industry influenced the Respondent’s decision to delay launching until the right moment presented itself. The design of the site has already been completed and the backend (databases and content management system) will be ready for testing by the beginning of February, 2002.

(iv) Since May, 2001, the emonkey project has received over 1000 requests from Internet users who are interested in becoming registered users of the <emonkey.com> web site as soon as it goes online.

(v) Considerable time and effort have been spent referencing <emonkey.com> on the principal web directories and search engines to prepare for an imminent launch.

(vi) On June, 13 2001, the Respondent received an unsolicited offer to purchase the <emonkey.com> domain name from the Complainant (see paragraph 4(f) above). This is not uncommon as the Respondent has already received 7 requests to purchase the domain name <emonkey.com>. Due to these 7 unsolicited requests, the Respondent made a valuation of the <emonkey.com> domain name according to the criteria found at the Verisign Great Domains web site. The short length of the domain name, its easy to remember nature and sales of other comparable domain names led the Respondent to the conclusion that the market value of the domain name was US$75,000.00.

The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the ICANN policy, as follows:

(i) the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith

As to element (i), the Complainant is the owner of the Trade Mark, and has rights in it. The Domain Name is identical to it, and accordingly paragraph 4(a)(i) of the Policy is satisfied.

It is when element (ii) of paragraph 4(a) of the Policy is considered that the Complainant faces its first serious problem. The Respondent registered the Domain Name some 20 months before the Complainant was even incorporated and the Trade Mark subsequently registered. The circumstances in which this came about are explained in that part of the letter that is quoted in paragraph 5(B)(ii) above. The Respondent’s submissions in paragraphs 5(B)(ii) to (v) inclusive indicate that the Respondent has, although slowly, been making preparations to use the Domain Name. It is clear that the Respondent’s business has modest means, but the Panelist is satisfied that preparations to use the Domain Name were in hand before the Respondent received notice of the dispute on August 16, 2001. Accordingly, the Respondent has satisfied the Panelist in the terms of paragraph 4(c)(i) of the policy that:-

"before any notice to you of the dispute … demonstrable preparations to use the domain name … in connection with a bona fide offering of goods or services."

That is a sufficient finding to decide this dispute in favour of the Respondent. However, the Complainant has charged the Respondent that it has registered and used the Domain Name in bad faith. So far as the act of registration itself is concerned, the Complainant’s case founders on the simple fact that the Respondent registered the Domain Name some 20 months before the Complainant was even incorporated. While it is possible to envisage similar circumstances in which the registration of a domain name might have been undertaken in bad faith by a third party, there is no evidence supporting such a hypothesis in this case.

As for the alleged use of the Domain Name in bad faith, the Complainant alleges that the Respondent’s sole purpose has been speculation (see paragraph 5(A)(v) above). The Domain Name appears to be but one of a number of manifestations of "emonkey" in corporate and domain names. The Respondent may have been fortunate to secure a .com registration for "emonkey". Given that there seem to be at least 3 companies called "E Monkey" (see paragraph 4(b), (d) and (e) above) and that the Respondent has received 7 offers for the Domain Name, it is not surprising that the money value of the Domain Name has been assessed by the Respondent at US$75,000. The Respondent would, on the evidence before the Panelist in this administrative proceeding, be fully entitled to sell the Domain Name rather than proceed with plans to use it. That would be a measure of the Respondent’s good fortune in selecting what has subsequently proved to be an attractive domain name, but not evidence of use in bad faith under the Policy.

In the light of the findings in paragraph 6 above, the Panelist concludes that this dispute does not fall within the provisions of paragraph 4(a) of the Policy, and that the domain name <emonkey.com> shall remain registered to the Respondent.

Christopher Tootal
Sole Panelist

Dated: October 16, 2001