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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

ASML Netherlands BV v. Robert Maire

Case No. D2006-1436

 

1. The Parties

The Complainant is ASML Netherlands BV, of Veldhoven, the Netherlands, represented by Considine Group, the Netherlands.

The Respondent is Robert Maire, of New York, United States of America, self-represented.

 

2. The Domain Name and Registrar

The disputed domain name <asml.info> is registered with Wild West Domains, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 8, 2006. On November 14, 2006, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain name at issue. On November 14, 2006, Wild West Domains, Inc. 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 November 15, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December 5, 2006. The due date for Response was subsequently extended by the Center to December 12, 2006. The Response was filed with the Center on December 12, 2006.

The Center appointed Alan L. Limbury as the sole panelist in this matter on January 16, 2007. 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.

 

4. Factual Background

The Complainant, a world leader in the manufacture of lithographical machines and well-known in the fields of semiconductors and lithography, owns numerous registrations for the trademark ASML in various countries, including the United States of America, all of which were applied for before and were registered after the disputed domain name was registered by Respondent.

In addition to being the Complainant’s trademark, ASML is also the first word of the corporate name of the Complainant and many of its subsidiary companies, including four subsidiaries in the United States of America.

By agreement made in 1995, between the Complainant and the NASDAQ stock market, ASML became and remains the four letter stock symbol used in that market to represent the underlying security or “stock” of the Complainant.

The Respondent is a consultant in the lithographic world. He works for the investment company, Needham & Company, which advises institutional investors regarding performance of companies listed on the stock market. He has the Complainant’s business as his own portfolio. He is listed on the website of the Complainant as the contact person for Needham & Company in relation to investment advice concerning the Complainant’s business. He also conducts his own consultancy, Semiconductor Advisors LLC, which operates a website at “www.semiconductoradvisors.com”.

The disputed domain name was registered by the Respondent on September 22, 2001. It resolves to a website showing the name “Semiconductor Advisors LLC”, offering information about and advisory services relating to the semiconductor, semiconductor equipment and related device industries and consulting services on investing opportunities. The site includes links to other websites, including that of the Complainant at “www.asml.com”.

 

5. Parties’ Contentions

A. Complainant

In addition to its registered trademark rights, the Complainant also claims common law rights in the mark ASML. The domain name is identical or confusingly similar to the trademark and to the Complainant’s corporate name.

The Respondent has no rights or legitimate interests in respect of the domain name.

There is no evidence known to the Complainant of any bona fide use by the Respondent of the Complainant’s company name and trademark ASML. On the contrary, the Respondent was aware of the use by ASML of its trademark and company name and is active in the same field as the Complainant. The use of the name ASML fulfils no function other than to create a portal which has no independent significance other than as a direct link to the website of the Respondent.

The Complainant contends that there is no evidence that the Respondent is known by the name “ASML”.

The use made by the Respondent cannot be considered as legitimate non-commercial or fair use, without intent for commercial gain. The use of the name clearly has one sole purpose, namely to use the name of a top world company to divert traffic to the personal commercial website of the Respondent.

The domain name was registered and is being used in bad faith. The ASML trademark of the Complainant must be considered a well known name in the field of semiconductors and lithography.

The Respondent is, by his own proclamation, well versed in the lithographic business. He is a consultant in the field and is aware that the name ASML which he registered as a domain name is not his name but the name of a global player in his field. As he had no legitimate interest in filing the name, as is evidenced by the factual use he has put the name to (a portal linking visitors to his own site) his application must be deemed to have been filed in bad faith. The actual use of the name must by nature be deemed to be in bad faith.

That the Respondent was aware of the use of the trademark ASML by the Complainant at the time he registered the domain name is evidenced by documentation showing his presence at a conference which the Complainant also attended.

The site exploited by the Respondent contains no information which may lead to a conclusion that the name was registered and/or is used in good faith.

The actual use of the domain name has the effect that the Respondent profits from the name and goodwill of the Complainant. Search engines rank sites with a domain name high in the list. Someone searching for “ASML” will have a high chance of finding the site “www.asml.info” and therefore of being linked to the site of the Respondent.

The Respondent is a consultant in the field of lithography. Most people searching for ASML have a direct interest in lithography and are therefore potential customers of the Respondent. Anyone who enters the site will expect it to relate to the Complainant, and the subsequent linking to the site of the Respondent will falsely imply that the Complainant supports or recognizes the business of the Respondent. It is inconceivable that anyone will enter <asml.info> if that person is searching for information from the Respondent or his business.

In any event, there is no evidence that the use made by the Respondent is in good faith.

The Complainant has had an independent investigation made into the use of the domain name by the Respondent. Many of the findings of this agency repeat and reinforce the above claims and in some cases add information which was not yet known to the department of the Complainant dealing with this matter. For example, it appears that the Respondent is not only active as a consultant in the lithographic world, but works for the investment company Needham & Company and has the Complainant’s business as his own portfolio and is even listed on the website of the Complainant as the contact person.

B. Respondent

The Respondent contends that in 1995 the Complainant, then known as ASM Lithography BV, gave up all rights to the four letter symbol “ASML” when it signed a listing agreement with the NASDAQ stock market for its initial public offering, many years before it registered the trademark. The agreement provided:

“The company [Complainant] agrees and understands that trading symbols [ASML] are the sole and exclusive property of NASDAQ, and a symbol is provided to the company [Complainant] for the limited purpose of identifying the company’s [Complainant’s] security in authorized quotation and trading systems. NASDAQ reserves the right, in its sole and final discretion, to assign, rescind, or reassign any symbol at any time.”

This agreement remains in force today.

The Respondent is not an expert in lithography, as claimed by the Complainant, but an expert in financial markets and instruments. The Respondent is a licensed and registered securities dealer and analyst. His business is the production, sale and distribution of stock research “information” and trading those securities. He makes a market in ASML shares and provides financial research on them, including recommendations as to whether to “buy” “hold” or “sell” the stock. He provides quotes for and trades in the security ASML. He has been using the four letter symbol ASML since before the Complainant attempted to register it as a trademark.

As registered in the United States of America, the trademark covers only the lithographic and semiconductor businesses and related businesses in which the Complainant participates, not the financial services and research information on financial securities businesses in which the Respondent participates.

The websites of the parties are totally different and cannot give rise to confusion. The parties do not compete with each other. Not even an idiot could confuse the two websites.

Providing “information” on the ticker symbol ASML, using the top level domain extension “.info” is an appropriate, good faith and fair use of the naming conventions of the Internet. The Respondent has the right to use the four letter “ticker” symbol for the ASML equity security (stock), about which, as a proven and upstanding licensed equity research analyst and securities broker dealer, he has provided information for many years. The Complainant is neither licensed nor involved in providing equity research nor in selling equity securities.

The Complainant could have registered the domain in question before the Respondent or complained much earlier but has failed to do so which shows that there is no damage or confusion occurring as it has taken over 5 years to get around to this complaint. It is clearly not a priority or significant concern on the part of the Complainant.

The registering of <asml.info> does not and did not interfere with the Complainants registration of <asml.com>. No attempt has been made to interfere with any aspect of the Complainants business. In fact the Complainant is making a clear effort to interfere with the business of the Respondent and to limit the Respondents ability to distribute and disseminate research on the stock symbol ASML. The Respondent’s view of the stock of ASML has varied from positive to negative over time and the Complainant is clearly trying to squelch any potential negative views or information on its stock so as to inflate the value and profit from it. The Complainant has a clear financial motivation to limit the Respondents ability to disseminate clear and unbiased stock research information.

The Complainant is attempting to limit the free speech that is the cornerstone of the Internet by limiting independent information sources. The parties do not compete with one another so there is no gain to be had from directing potential customers of the Complainant to the Respondent.

Given all the above information the Respondent submits that it is using the domain name in good faith.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules requires the 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.

Under paragraph 4(a) of the Policy, the Complainant bears the burden of showing:

(i) 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; and

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

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

A. Identical or Confusingly Similar

A complainant’s rights (or not) are determined for the purposes of the first element of the Policy at the date the complaint is filed, not the date that a respondent registered the disputed domain name: Janet E. Sidewater v. Worldwide Media Inc., WIPO Case No. D2006-1281.

The Complainant has shown that it rights in various countries in the registered trademark ASML.

The test for identity or confusing similarity involves merely comparing the trademark with the domain name, disregarding as inconsequential the gTLD “.info”. Any comparison between the parties’ websites is irrelevant to this question, although that comparison may be important in relation to the other elements required to be established.

The Panel finds that the domain name is identical to the Complainant’s ASML mark. The Complainant has established this element of its case.

B. Rights or Legitimate Interests

It has been established that once a complainant has established a prima facie case on this issue the burden shifts to the respondent to provide evidence of its right or legitimate interests under the Policy, paragraph 4(c): Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited, WIPO Case No. D2004-0753.

The Complainant has not authorized the Respondent to use its ASML mark. The Respondent does not appear to be known by the domain name and was clearly aware of the Complainant’s corporate name and the NASDAQ “ticker” at the time the domain name was registered in June 2001.

The Respondent works for the investment company Needham & Company, having the Complainant’s business as his own portfolio. He is listed on the website of the Complainant as the contact person. He is an investment analyst who provides information, opinions, estimates or forecasts about the Complainant’s shares, as identified by the NASDAQ ticker ‘ASML’.

As mentioned earlier, the disputed domain name resolves to a website bearing the name of the Respondent’s own business and offering both information about the semiconductor, semiconductor equipment and related device industries and offering consulting services on investing opportunities. It includes links to other websites, including that of the Complainant at “www.asml.com”. This is consistent with the Respondent’s investment analyst activities but the range of information and services offered at the Respondent’s website goes much further than advising on ASML shares as an investment. Internet users seeking information about ASML shares will find much more at the Respondent’s website.

Having regard to the Panel’s finding in relation to the next element, it is unnecessary to determine whether the Complainant has established absence of rights or legitimate interest in the disputed domain name on the part of the Respondent.

C. Registered and Used in Bad Faith

The Complainant must establish both bad faith registration and bad faith use.

Although the Complainant claims to have common law rights to the ASML mark, it has placed no evidence before the Panel from which any such conclusion might reasonably be drawn. The Complainant says the Respondent was aware of the use of the trademark ASML by the Complainant at the time he registered the domain name. The Respondent points out that the Complainant did not apply to register its name as a trademark until after he registered the disputed domain name.

In September 2001, when the Respondent registered the disputed domain name (during the .info “land rush”, following the “sunrise period” in which trademark owners had the opportunity to register .info domain names), ASML was known as the NASDAQ trading symbol or “ticker” identifying the Complainant’s shares, which the Complainant had agreed in 1995 was the exclusive property of NASDAQ.

On the material before the Panel, what the Respondent apparently had in mind when he registered the disputed domain name was to provide information (hence the gTLD “.info”) about the Complainant’s shares known by the trading symbol ASML, which he was well qualified to give. The Panel is satisfied that this was registration in good faith.

As the Complainant’s investigator’s report makes clear, there is no evidence of use of the disputed domain name to lead to a website before 2004. Even if the Respondent’s use of the disputed domain name following the establishment of his website nearly 3 years later, and following most of the Complainant’s registrations of the ASML trademark, constituted bad faith use within the Policy, paragraph 4(b)(iv), on the ground that the information there provided goes beyond information about the Complainant’s shares, the Panel is not satisfied that any such bad faith use would outweigh the evidence supporting its finding of good faith registration in the current proceeding under the Policy. See Substance Abuse Management, Inc. v. Screen Actors Modesl [sic] International, Inc. (SAMI), WIPO Case No. D2001-0782; Teradyne Inc.Teradyne, Inc. [sic] v. 4tel Technology, WIPO Case No. D2000-0026; Telaxis Communications Corp. v. William E. Minkle, WIPO Case No. D2000-0005; Passion Group Inc. v.Usearch, Inc. eResolution Case No.AF-0250; Viz Communications, Inc., v. Redsun dba www.animerica.com and David Penava, WIPO Case No.D2000-0905; and Yoomedia Dating Limited v. Cynthia Newcomer / Dateline BBS, WIPO Case No. D2004-1085.

Accordingly, the Panel finds that the Complainant has failed to establish this element of its case.

 

7. Decision

For all the foregoing reasons, the Complaint is denied.

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Alan L. Limbury
Sole Panelist

Dated: January 30, 2007