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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Visual Gis Engineering S.L. v. Nitin Tripathi

Case No. D2006-0079

 

1. The Parties

The Complainant is Visual Gis Engineering S.L., of Madrid, Spain, represented by Iuridicum Abogados, of Madrid, Spain.

The Respondent is Nitin Tripathi, of Lucknow, India, appearing pro se.

 

2. The Domain Name and Registrar

The disputed domain name <visualmap.com> (the “Domain Name”) is registered with Network Solutions, LLC (the “Registrar”).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 18, 2006. On January 18, 2006, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 19, 2006, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of 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”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 26, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was February 15, 2006. The Response was timely filed with the Center on February 14, 2006.

The Center appointed David H. Bernstein as the sole panelist in this matter on February 27, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On March 9, 2006, the Panel issued a procedural order that provided, in relevant part:

“Having now reviewed the case file, the Panel finds that the Response is deficient in that it does not comply with paragraph 5(b)(viii) of the Rules. That paragraph requires that the Respondent include the following statement at the end of the Response, followed by the signature of the Respondent or its authorized representative:

Respondent certifies that the information contained in this Response is to the best of Respondent’s knowledge complete and accurate, that this Response is not being presented for any improper purpose, such as to harass, and that the assertions in this Response are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.

Respondent’s submission does not include the required certification and is not signed. Although panels have sometimes refused to accept responses that were similarly deficient, e.g., Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 (February 29, 2000), the Panel concludes that it is appropriate to give the Respondent an opportunity to remedy this procedural deficiency given that the Respondent is appearing pro se. See Herbalife Int’l v. Farmaha, WIPO Case No. D2005-0765 (October 3, 2005).

Accordingly, pursuant to paragraphs 10(b) and10(c) of the Rules, the Panel hereby grants Respondent until March 20, 2006, to resubmit its Response to the Center. The new Response must be identical in its substance (that is, Respondent may not make any changes to the content of the Response), except that Respondent may add the required certification and sign the Response. If possible, the Respondent should email a scanned copy of the signed Response to the Center prior to the deadline; in any event, it must send an original signed Response to the Center no later than midnight Greenwich Mean Time on March 20, 2006. If Respondent fails to submit a Response by this deadline, the Panel will disregard the Response (unless the Respondent can show good cause). See Mobile Communication Service Inc. v. WebReg, WIPO Case No. D2005-1304 (February 24, 2006).

Pursuant to paragraph 10(c) of the Rules, the expected date for decision is hereby reset to March 24, 2006.”

On March 19, 2006, Respondent resubmitted its Response to the Center, this time with the required certification and with Respondent’s signature.

 

4. Factual Background

Complainant is a Spanish company that develops and sells geographic information systems technology that, broadly defined, uses the geographic distribution of information and data to solve problems and achieve efficiencies. The Complainant registered the trademark VISUALMAP in 1993, with the Spanish Office for Mark and Patent under registration number M 1784968. The Complainant registered the Domain Name on July 10, 1998, with the Registrar. From 1998 through mid-2005, Complainant used the Domain Name to market its products and services.

The Domain Name registration expired on July 9, 2005, and the Complainant inadvertently failed to renew the Domain Name. On August 17, 2005, the Respondent purchased the Domain Name by paying $1,051 at an open auction held by SnapNames.com.

On September 19, 2005, Complainant submitted a certified offer through the registrar Network Solutions to purchase the Domain Name from Respondent for $120. Having received no response to its offer, Complainant then contacted Respondent directly by email on September 27, 2005, stating that it was the prior owner of the Domain Name and of the registered trademark VISUALMAP, and indicating a desire to reach an amicable resolution of the dispute before filing a UDRP complaint. The parties exchanged several emails but were unable to reach a resolution. During their correspondence, Respondent indicated he would consider selling the Domain Name for approximately $10,000, but that he liked the domain name and already had a profitable site running on it. Respondent rejected Complainant’s final offer of $1,500.

 

5. Parties’ Contentions

A. Complainant

Complainant argues that the Domain Name is identical to its trademark VISUALMAP because the addition of the global top-level domain (“gTLD”) .com to a trademark has no legal significance to distinguish a mark for purposes of the UDRP.

Complainant alleges that Respondent has no rights or legitimate interests in the Domain Name because Complainant has not authorized Respondent to use the Domain Name or any of its trademarks, and because Complainant has been using the Domain Name consistently since July 1998, and only failed to renew the Domain Name due to an accidental error. Complainant argues that Respondent’s “quick action” to acquire and register the Domain Name could only have been possible if Respondent was watching the use of the Domain Name and “waiting for it to become accidentally available.” Complainant alleges that Respondent knew that Complainant had been using the Domain Name for seven years and that its failure to renew the Domain Name was an obvious error. According to Complainant, Respondent’s use of the Domain Name to re-direct visitors to other websites offering goods and services for sale further indicates a lack of legitimate interest in the Domain Name. Complainant asserts that “there is simply no possible justification for the selection of the disputed domain by the Respondent other than for a money-making purpose through the re-selling of the domain name to its former owner.”

Lastly, Complainant argues that Respondent registered and is using the Domain Name in bad faith. Relying on Accor v. Nick Chambers, WIPO Case No. D2005–0012 (February 24, 2005), Complainant states that the registration of a domain name with knowledge of the existence of the Complainant and its business evidences bad faith. Additionally, Complainant asserts that the $10,000 price requested by Respondent to sell the Domain Name indicates bad faith, because $10,000 is the maximum price that the Network Solutions registrar allows for the purchase of a domain name through its Certified Offer Services program, and because the price allegedly far exceeds Respondent’s out-of-pocket costs directly related to the Domain Name.

B. Respondent

Respondent states that he is the CEO of a software and internet development firm in India that specializes in creating web portals with “catchy names.” Respondent asserts that he back-ordered the Domain Name on approximately August 1, 2005, several weeks after its registration expired, and eventually acquired it on August 17, 2005, for $1,051 in a SnapNames.com auction. Respondent certifies that he was not aware of the existence of the Complainant or its trademark when he ordered the Domain Name, when he won it at in the auction, or at any other time until Complainant contacted him on September 27, 2005. Furthermore, Respondent states that, prior to purchasing the Domain Name, he reviewed the United States Patent and Trademark Office (“USPTO”) website to confirm the Domain Name was not comprised of a trademark registered in the United States.

Respondent insists he did not purchase the Domain Name with the intent to re-sell it, but rather because he intended to develop a website with weather, census, geographical, and other statistical data for various locations around the world. While Respondent was developing the planned website, he established a placeholder website for a casino on the website to which the Domain Name resolved. Respondent indicates that the unfinished version of the website he intended to operate on the Domain Name can be viewed at “www.walkabyebaby.com”. He states that he replied to the Complainant’s offer to purchase the Domain Name in an effort to resolve the dispute amicably without litigation, and proposed the $10,000 figure in good faith despite his reluctance to sell the Domain Name, based on his cost to acquire the Domain Name and the time, effort, and expense he already invested in developing the planned “visual map” website.

Because Respondent is pro se, his arguments do not strictly track the three UDRP elements, but Respondent essentially makes the following arguments:

Similarity. Although Respondent notes that the words “Visual Map” are trademarked by other companies in other countries, Respondent does not appear to dispute that Complainant also owns a trademark registration for the mark VISUALMAP, nor does he appear to dispute that the Domain Name is identical or confusingly similar to that trademark.

Legitimate Interests. Respondent asserts that he was developing a “visual map” of the United States that would enable users to move their cursor to any part of the map and learn census, weather, and other data about that location. He emphasizes that he acquired the Domain Name for over $1,000 at a public auction without any knowledge of the existence of the Complainant or its trademark, and disputes Complainant’s assertion that he was eyeing the Domain Name while it was still registered with Complainant and waiting for it to expire so he could acquire it for the purpose of reselling it to Complainant. Additionally, Respondent notes that he did not initiate contact with the Complainant about the sale of the Domain Name, and that Complainant waited over a month after he acquired the Domain Name to contact him about purchasing it. Respondent also argues that “visual map” is a combination of common English words that describes the intended features of his website.

Bad Faith. Respondent insists he acquired the Domain Name in good faith to operate the visual map website described above, and had no knowledge of the existence of the Complainant’s company or trademark before the Complainant contacted him on September 27, 2005. Respondent certifies that, prior to purchasing the Domain Name at auction, he conducted some due diligence into the Domain Name, including a Google search which returned millions of results and a review of the USPTO website which yielded no hits, to ensure that the Domain Name did not comprise another’s trademark. He also argues that the Complainant is not a widely known company. He asserts that he is not attempting to capitalize on any recognition of Complainant’s trademark by Internet users who may be searching for the Complainant’s website. As noted above, Respondent claims that, in a good faith effort to resolve the dispute without litigation, he developed the $10,000 figure in response to the Complainant’s inquiry based on the time, expense, and effort he and his company had expended on acquiring the Domain Name and developing the intended website.

 

6. Discussion and Findings

To prevail in this UDRP proceeding, Complainant must prove all of the following elements listed in Paragraph 4(a) of the Policy:

(1) the Domain Name 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 Respondent registered and has used the Domain Name in bad faith.

A. Identical or Confusingly Similar

Complainant owns the trademark VISUALMAP and has registered that mark with the Spanish Office for Mark and Patent. These supported assertions are sufficient to establish that Complainant owns rights in this mark.

The Domain Name consists of Complainant’s trademark and the gTLD .com. When comparing a trademark to a domain name to determine identicality or similarity under the Policy, the gTLD may be disregarded. See Mobile Communication Service, Inc. v. WebReg, RN, WIPO Case No. D2005–1304 (February 24, 2006). Applying these principles, the Domain Name <visualmap.com> is obviously identical to the Complainant’s trademark VISUALMAP.

B. Rights or Legitimate Interests in Domain Name

Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name. Paragraph 4(c)(i) of the Policy provides that a respondent may establish rights or legitimate interests in a domain name if the respondent can show, “before any notice to [it] of the dispute, [its] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.”

Respondent certifies that, before receipt of Complainant’s September 27, 2005 email, it had begun developing content for use on the website, including an interactive map showing weather, census, and other statistical data about locations throughout the United States. The Panel has viewed that content (which Respondent has made available on the internet at the website “www.walkabyebaby.com”) to confirm that it is appropriately described by a domain name containing the terms “visual” and “map.” Assuming Respondent’s contentions are true,¹ the Panel concludes that the Respondent has engaged in demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services relevant to the name “visual map” prior to receiving notice of the dispute.

C. Registered and Used in Bad Faith

To support its assertion that Respondent acquired the Domain Name in bad faith, Complainant points to Respondent’s $10,000 settlement proposal, which Complainant asserts far exceeds Respondent’s out-of-pocket costs. Complainant also argues that “[R]espondent could not possibly ignore the existence of Complainant and its businesses as the former owner of the disputed domain name since July 1998.” Based on these arguments, Complainant asserts that Respondent must have registered and used the Domain Name in bad faith, pursuant to paragraph 4(b)(i) of the Policy, which provides that it is bad faith if Complainant proves “circumstances indicating that [the Respondent has] registered or [has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the [C]omplainant who is the owner of the trademark or service mark or to a competitor of that [C]omplainant, for valuable consideration in excess of [Respondent’s] documented out-of-pocket costs directly related to the domain name.”

Complainant is correct that the registration of a domain name with knowledge that another party already owns or uses that name as a trademark can be indicative of bad faith if the registrant does not otherwise have rights or a legitimate interest in the domain name. See Zeitverlag Gerd Bucerius GmbH & Co. v. Web Group, WIPO Case No. D2005-0725 (September 26, 2005). In this case, though, Respondent expressly denies having had any knowledge of the existence of the Complainant or its trademark when he acquired the Domain Name at a public auction, and insists that he did not seek to obtain the name until several weeks after Complainant’s registration expired.

A lack of knowledge is not determinative of the bad faith inquiry. For example, as this Panel has concluded in other contexts, a respondent cannot escape liability by intentionally shielding its eyes from knowledge of the existence of a complainant’s trademarks. See Mobile Communication Service, Inc. v. WebReg, RN, WIPO Case No. D2005–1304 (February 24, 2006). Here, though, Respondent’s assertions appear credible, and he does not appear to have engaged in willful blindness. To the contrary, Respondent states that he did conduct some due diligence to satisfy himself that registration of the Domain Name would not violate another’s trademark.² Even if that due diligence was not sufficiently thorough to identify Complainant and its rights, it does suggest that Respondent did not register this Domain Name in bad faith.

Nor has Complainant proven bad faith by demonstrating that Respondent suggested that it would sell the Domain Name for $10,000. Although an offer to sell a domain name for a price in excess of a respondent’s out-of-pocket costs can be indicative of bad faith, it is not determinative of bad faith. Here, notwithstanding the evidence of this offer, Complainant has not proven, by a preponderance of the totality of the evidence, that Respondent registered the domain name for the purpose of reselling it to the trademark owner. To the contrary, because Respondent has a legitimate interest in the Domain Name the Domain Name registration is a business asset of Respondent’s and Respondent is free to offer to sell its legitimate business assets. Etam, plc v. Alberta Hot Rods, WIPO Case No. D2000-1654 (January 31, 2001). Respondent’s suggestion that it would sell the Domain Name for $10,000 is thus not enough to prove Respondent’s bad faith registration and use of the Domain Name.

 

7. Decision

Because the Complainant has failed to satisfy the second and third elements under the Policy, the Complaint is denied.

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David H. Bernstein
Sole Panelist

Dated: March 23, 2006

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¹ Whether Respondent’s assertions actually are true is an issue that this Panel cannot definitively determine given the procedural rules that govern UDRP proceedings. Because the Respondent’s allegations appear credible and Complainant has not submitted a request to submit supplemental information refuting those allegations, see Custom Bilt Metals v. Conquest Consulting, WIPO Case No. D2004-0023 (April 6, 2004), the Panel finds for purposes of this proceeding, on a preponderance of the evidence, see Bootie Brewing Co. v. Ward, WIPO Case No. D2003-0185 (May 28, 2002), that Respondent’s allegations are true. If Complainant wants to test the veracity of these allegations, it can pursue its claim in court, where the availability of discovery, the Complainant’s right to cross-examine Respondent, and the court’s ability to make credibility determinations based on live testimony, would allow a more definitive resolution of any factual dispute. See Magnum Piering, Inc. v. Mudjackers, WIPO Case No. D2000-1525 (January 29, 2001). In the event of any such court proceeding, this decision (which is intended to resolve only this dispute under the Policy) would be of no effect as such proceedings would be conducted under different procedural rules and substantive laws.

² It is worth noting that Respondent’s only evidence that he never heard of Complainant or its trademark at the time he registered the Domain Name, that he conducted Google and USPTO website searches, and that he already had created the content now posted on the “www.walkabyebaby.com” website at the time of Complainant’s challenge, is uncorroborated. Respondent has not submitted any documentary evidence supporting those assertions (such as dated copies of printouts of the searches), nor has he submitted any supporting affidavits.  Nevertheless, because the Response specifically states (as required by the Rules) that all of the facts asserted therein are accurate to the best of the Respondent’s knowledge, and given that Respondent has personally signed the Response containing that certification, the Panel can treat those certified assertions as evidence of the facts alleged.