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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Ontos AG v. Ontos Institute, Antony Arcari

Case No. D2006-0647

 

1. The Parties

The Complainant is Ontos AG, of Nidau, Switzerland (the “Complainant”), represented by Ontos AG internal representative, Switzerland.

The Respondent is Ontos Institute, Antony Arcari, of Colorado, United States of America (the “Respondent”) represented by Swanson & Bratschun, L.L.C., United States of America.

 

2. The Domain Name and Registrar

The disputed domain name, <ontos.com>, (the “Domain Name”) is registered with TierraNet d/b/a DomainDiscover (the “Registrar”).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 23, 2006. On May 24, 2006, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 30, 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 May 31, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was June 20, 2006. The Response was filed with the Center on June 20, 2006.

The Center appointed Tony Willoughby as the sole panelist in this matter on June 30, 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.

The Complaint cited as respondents not only the Respondent, but the previous registrant of the Domain Name, RareNames d/b/a WebReg, and its agent/broker, BuyDomains.com, which may very well be part of the same organization as the previous registrant. The reason for including the previous registrant was that for understandable reasons the Complainant took the view that the transfer of the Domain Name to the Respondent was a case of cyberflight, a bad faith maneouvre to avoid the consequences of a complaint under the Policy.

On June 21, 2006, the Center received a response (out of time by one day) from an attorney representing RareNames d/b/a WebReg. For reasons given under Discussion and Findings (Section 6 below) the Panel does not regard RareNames d/b/a WebReg and BuyDomains.com as properly named respondents in this proceeding and does not find it necessary to deal with this response. It is to be noted, however, that that response does include exhibits purporting to support the Respondent’s case.

On June 26, 2006, the Complainant petitioned for permission to file a Supplemental Filing citing three reasons why the Panel should grant that permission. The three reasons were as follows:

(1) The Complainant could not have foreseen that the Respondent would nominate a new party, Ontos Foundation Inc., as the true owner of the Domain Name, a different entity from the Respondent, the Ontos Institute. The Complainant wishes to have the opportunity of attacking that claim.

(2) The Complainant also wishes to address the claim that ONTOS is a common Greek word. The Complainant asserts that it is a name primarily associated with computer technology and by that the Panel assumes that the Complainant means specifically the computer technology of the Complainant.

(3) In response to a claim in the Complaint that the Respondent should have done some basic Internet searches on ONTOS before acquiring the Domain Name the Respondent purports to show that an Internet search would not readily have shown the Complainant as a party with rights to the name. The Complainant wishes to be able to show that a properly conducted search would have come up with very different results.

The Panel declines to give the permission sought.

The first reason indicates a desire to advance a technical argument. The Panel is disinclined to entertain a technical argument. The Complainant’s case is built on one main foundation, namely the contention that the disposal of the Domain Name by its previous owner was a sham transaction designed to defeat a complaint under the Policy. On that basis the precise identity of the current owner of the Domain Name is an irrelevance. Both Ontos Foundation Inc. and Ontos Institute are manifestly organizations associated with Antony Arcari, who is named by the Complainant as a party. If the Panel is satisfied that the transaction was a sham, the Complaint will succeed. If the Panel is not so satisfied, it matters not whether the Domain Name rests with Antony Arcari, Ontos Institute or Ontos Foundation Inc. That is purely a matter for Mr. Arcari and his colleagues.

As to the second and third reasons, the Panel is prepared to accept for the purposes of this decision that the Complainant’s contentions are correct and does not need any further material on those matters.

 

4. Factual Background

The Complainant was incorporated in Switzerland on September 21, 2001.

The Complainant is the proprietor of a variety of Russian, Swiss, International and Community Trademark Registrations of or including the word ONTOS for goods and services relating to software development, software distribution and software consultancy. The earliest of the Complainant’s registration dates back to January 2003.

The Domain Name was registered on September 27, 2003, by RareNames, WebReg.

On July 23, 2005, Mr. Antony Arcari, the prime mover behind the Respondent, registered the domain names <ontosjournal.com> and <ontosjournal.org>.

On September 27, 2005, BuyDomains.com offered to sell the Domain Name to the Complainant for a price of $6,000. The Panel is uncertain as to the precise relationship between BuyDomains.com and RareNames, WebReg, but is prepared to assume that they are closely associated and probably part of the same organisation.

On November 19, 2005, Antony Arcari was billed to give (and perhaps gave) a talk to a group of people in Colorado entitled ‘The Transparent Eye: A (Very) Brief History of Cultural Consciousness Through the Eye of Art’. Mr. Arcari’s synopsis included the following sentences:

“This brief overview is offered as ‘kindling’ for further events we hope to offer under the aegis of an educational entity we are forming called Ontos Institute”.

“However, it is often from the margins of culture - those extreme edges where the known meets the unknown - that new ways of knowing and being i.e. “ontos” take root”.

On December 27, 2005, Mr. Arcari registered the Domain Name <ontosphere.net>.

On March 8, 2006, Mr. Arcari received an email from “buydomainssales@buydomains.com”, the opening paragraph reading:

“You previously expressed an interest in owning Ontos.com. Very good news - it is still available and can be purchased for $6,000 by March 31, 2006.”

On May 5, 2006, the Respondent acquired the Domain Name for $4,000.

On May 9, 2006, BuyDomains.com sent an email to the Complainant offering to sell the Domain Name to the Complainant.

On May 9, 2006, the Domain Name was connected to a BuyDomains.com parking page. The page includes the message “This Domain is Reserved – Website is Coming Soon!”.

On May 18, 2006, an organization named LegalFilings.com issued to Mr. Arcari confirmation of an order for incorporation of a non-profit corporation under the name of Ontos Foundation. The filing took place on June 1, 2006.

On May 23, 2006, the Complaint was filed in this administrative proceeding.

On June 1, 2006, Ontos Foundation Inc. was incorporated as a non-profit corporation in Colorado, Antony Arcari being the registered agent. According to Mr. Arcari it was incorporated with the specific purpose of providing “Educational Product Seminar courses in Liberal Arts, Humanities, Culture and Philosophy”.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is identical to its trademark ONTOS.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant points out that the Respondent appears to have no registered rights in respect of the name ONTOS and has never been authorized by the Complainant to use the name. The Complainant refers to the examples of what may constitute relevant rights and legitimate interests which are set out in paragraph 4(c) of the Policy and contends that none of them are applicable in this case. The Complainant has conducted searches for an Ontos Institute and cannot find any record of such an institution.

The Complainant observes that the Domain Name is not connected to an active website and “resolves to <buydomains.com>, the website of a domain name registrar and broker/agent and owner of several common domains, which are offered for sale”.

Further, the Complainant contends that the Domain Name was registered and is being used in bad faith. The Complainant points to the fact that the Domain Name was originally registered in the name of RareNames, WebReg and that on September 27, 2005, it was offered to the Complainant for a price of $6,000. The Complainant asserts that this is clear evidence that the Domain Name was registered with the primary intention of selling the Domain Name to the Complainant at a substantial profit.

On May 5, 2006, just when the Complainant was about to launch a complaint against the original owners of the Domain Name, the Domain Name was transferred to the Respondent. The Complainant asserts that this transfer was a sham transaction (sometimes known as ‘cyberflight’) designed to defeat the Complainant’s legitimate complaint under the Policy.

The Complainant draws attention to the fact that on May 9, 2006, four (4) days after the Respondent had purchased the Domain Name, BuyDomains.com were still offering the Domain Name for sale to the Complainant. The Complainant contends that this demonstrates that the Respondent, Buydomains.com and the previous owner were all in it together.

The Complainant supports this attack by citing several previous complaints filed against RareNames, WebReg under the Policy, most of which succeeded.

Finally, the Complainant contends that if the Panel comes to the conclusion that the transaction by which the Respondent acquired the Domain Name was not a sham transaction, the Complaint should nevertheless succeed because the Respondent should have been wary of acquiring a domain name second hand from a dealer and should have conducted basic Internet searches. The Complainant asserts that the Respondent had constructive (or actual) knowledge of the Respondent’s trademarks.

B. Respondent

The Respondent does not dispute that the Domain Name is identical to the Complainant’s trademark ONTOS.

The Respondent claims that it has rights or legitimate interests in respect of the Domain Name and denies that it registered the Domain Name in bad faith and is using it in bad faith. ONTOS is a Greek word meaning ‘being’ and in that sense a philosophical term used in Ontology. It is with that meaning in mind that the Respondent is using the term.

The Respondent claims that it has no connection with the previous registrant of the Domain Name (other than as mere purchaser of the Domain Name) and that it was unaware of the existence of the Complainant and its trademark prior to receipt of the Complaint on May 31, 2006. It has produced documentary evidence to show that on May 18, 2006, it had applied for incorporation of the Respondent under the name Ontos Foundation Inc. in Colorado. It has also produced evidence to show that its founders (in particular Antony Arcari) were using the name ‘Ontos’ at a much earlier stage. For example, Antony Arcari registered the domain names, <ontosjournal.com> and <ontosjournal.org>, in July 2005, and the Respondent has produced documentary evidence to show that in relation to a talk he was engaged to give in November 2005, the term ‘ontos’ was central to the subject matter of the talk. In the same document he stated that the organization he was promoting would be called the Ontos Institute.

Mr. Arcari claims that in the latter part of 2005, he approached BuyDomains.com with a view to purchasing the Domain Name and was offered it for $6,000, but he did not pursue it. In March 2006, BuyDomains.com followed up on Mr. Arcari’s earlier interest in the Domain Name and offered it to him at a discounted price of $4,000, which he eventually accepted, completing the purchase on May 5, 2006.

 

6. Discussion and Findings

A. Identical or Confusingly Similar

There is no dispute that the Domain Name is identical to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant has failed to satisfy the Panel that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Panel’s reasoning is given in the immediately following section of this decision.

C. Registered and Used in Bad Faith

For the Complainant’s case to succeed, the documentary evidence produced to the Panel by the Respondent and referred to in greater detail in sections 4 and 5B above has to be forged evidence. If the documentary evidence of the Respondent is what it purports to be, it shows that the Respondent had a legitimate interest in respect of the Greek word ‘ontos’ months in advance of any threatened complaint from the Complainant.

The evidence (if genuine) supports the Respondent’s claim that ‘ontos’, a Greek word meaning ‘being’, is a philosophical term used in an area of philosophy in which the Respondent has demonstrated an active interest. Indeed, the Respondent’s first demonstrable interest in the word (the Respondent’s registration of the domain names <ontosjournal.com> and <ontosjournal.net> in July 2005) pre-dates the first approach by BuyDomains.com to sell the Domain Name to the Complainant for $6,000.

What evidentiary basis is there for holding that the Respondent’s documentary evidence as to its interest in the word/name ONTOS is forged? There is no direct evidence, but there is one factor, which has given the Panel cause for concern. The Respondent acquired the Domain Name through Buydomains.com on May 5, 2006, yet on May 9, 2006, Buydomains.com emailed the Complainant offering the Domain Name for sale. On the face of it this would appear to be reasonably compelling evidence that there had been no proper transfer. What is more, the Complainant raises the issue clearly in the Complaint yet the Respondent fails to deal with it.

However, there are countervailing factors:

(1) Cyberflight normally takes place shortly after a complainant has indicated that a complaint is about to be launched. In this case (and notwithstanding that BuyDomains.com first approached the Complainant in September 2005) the Complainant had given no indication that it was on the point of issuing a complaint. What could have provoked the alleged sham transfer?. The Complainant does not offer an explanation.

(2) The person at BuyDomains.com who sent the email dated May 9, 2006, to the Complainant was not the same person at BuyDomains.com with whom the Respondent was dealing. It seems possible that the author of the May 9, 2006, email may not have known that his colleague had already sold the Domain Name. The Domain Name was still being hosted by BuyDomains.com on one of its parking pages.

(3) The evidence put forward by the Respondent as to the earlier ‘ontos-’ domain name registrations would be difficult to fabricate.

(4) The Respondent might have taken the view that it did not need to respond to the allegation given its clear denials of any knowledge of the Complainant, any conspiracy with BuyDomains.com and the previous registrant and any bad faith of any kind.

(5) The volume of evidence put forward by the Respondent weighs heavily in the scales. One unexplained email is not enough to swing the pendulum sufficiently to merit a finding of perjury.

The Panel is not persuaded that the sale of the Domain Name to the Respondent was a sham transaction of the kind alleged by the Complainant. The Panel believes it more likely than not that the Respondent is independent of the previous owners of the Domain Name.

The Complainant says that that is not the end of the matter. The fact that the Respondent was purchasing the Domain Name from a reseller such as Buydomains.com should have alerted the Respondent to the risk that the Domain Name was an abusive registration. The Complainant asserts that the Respondent should have done a basic Internet search and if it had, it would have come up with information on the Complainant’s rights.

The Panel does not accept that the Respondent was under any such duty. In any event, this Panel does not accept that the concept of constructive knowledge should be used as a basis for a finding of bad faith under the Policy. There is nothing in the Policy to justify such an approach. All the examples in paragraph 4(b) of the Policy call for actual bad faith and while recognizing that those examples are non-exhaustive, this Panel takes the view that an extension of the Policy to constructive bad faith is a step too far.

Accordingly, the Complainant has failed to prove to the satisfaction of the Panel that the Domain Name was registered and is being used in bad faith. If the Complainant maintains its contention that the acquisition of the Domain Name by the Respondent was a sham transaction, its recourse has to be to the Court.

This decision is based on the Panel’s finding that the Complainant has failed to satisfy the Panel that the sale/purchase transaction by which the Respondent acquired the Domain Name was not a genuine arm’s length transaction untainted by any bad faith behaviour on the part of the original registrant. It is not necessary therefore for the Panel to come to any concluded view on whether or not the previous registrant acted in bad faith. Suffice it to say that the Panel can understand why the Complainant was suspicious, but it should be noted that the response filed on behalf of the original registrant included a sworn statement categorically denying any bad faith on the part of the original registrant and exhibited documents purporting to verify the Respondent’s story.

Likewise, the Panel’s finding that the original registrant and BuyDomains.com are not proper respondents to the Complaint (see section 3 above) assumes that the transfer of the Domain Name to the Respondent was an arm’s length transaction. The Policy is only concerned with the actions and motives of registrants, not their predecessors. Clearly, if the Panel had been satisfied that the transaction was a sham transaction the Complaint would have succeeded either on the basis that the Respondent and the previous registrant are to be treated as one or that the motives of the Respondent in acquiring the Domain Name were abusive.

For completeness, the Panel should add that the fact that four (4) days after the transfer the Domain Name was connected to a BuyDomains.com parking page is not in this case of itself indicative of bad faith. The page contained a notice indicating that a web page was coming soon. There was no indication that the Domain Name was for sale. BuyDomains.com appears to operate a legitimate domain parking service and it is not unusual for a domain name registrant to ‘park’ his domain name pending development of his own website.

 

7. Decision

For all the foregoing reasons, the Complaint is denied.

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Tony Willoughby
Sole Panelist

Dated: July 9, 2006