seek-america.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Complainant is SeekAmerica Networks Inc of Suite 804, 1708 Dolphin Avenue, Kelowna, British Colombia, Canada.

Respondents are Tariq Masood and Solo Signs both of 24 GF Center Point Gulberg III, Lahore, Punjab 54600, Pakistan.

The domain name at issue is:

seek-america.com

and the Registrar is Network Solutions, Inc.

The WIPO Arbitration and Mediation Center [the Center] received the Complaint on March 6, 2000 [electronic version and hard copy]. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy [the Policy], the Rules of Uniform Domain Name Dispute Resolution Policy [the Rules], and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy [the Supplemental Rules]. Complainant made the required payment to the Center.

The formal date of the commencement of this administrative proceeding is March 14, 2000.

On March 8, 2000, the Center transmitted via email to Network Solutions, Inc a request for registrar verification in connection with this case and on the same date Network Solutions Inc, transmitted via email to the Center Network Solutions' verification response confirming that registrant is Solo Signs and the contact for both administrative and billing purposes is Mr Tariq Masood.

Having verified that Complainant satisfied the formal requirements of the Policy and the Rules, the Center transmitted on March 14, 2000, to [email protected] and [email protected] the Notification of Complaint and Commencement of the Administrative Proceeding. The Center advised that the Response was due by April 2, 2000. On the same day the Center transmitted by fax and by mail copies of the foregoing documents to:

Tariq Masood and Solo Signs
24 GF Center Point Gulberg III
Lahore, Punjab 54600
Pakistan

and to

EasySpace Limited
Rosemount House,
Rosemount Avenue
West Byfleet
Surrey KT15 6LB
United Kingdom

No Response was received from the Respondents by the due date of April 2, 2000. On April 6, 2000, Notice of Respondent Default was sent to the Complainant and to the Respondents using the same contact details and methods as were used for the Notification of Complaint and Commencement of the Administrative Proceeding. No reply by Respondents to the Notification of Respondents Default was received.

Having received on April 7, 2000, Mr David Perkins' Declaration of Impartiality and Independence and his Statement of Acceptance the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr David Perkins was formally appointed as the Sole Panellist. The Projected Decision Date was April 20, 2000. The Sole Panellist finds that the Administrative Panel was properly constituted and appointed in accordance with Rules and Supplemental Rules.

Having reviewed the communication records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under Paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondents". Therefore, the Administrative Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of any Response from Respondents.

4.1 The Complainant

The Complainant, SeekAmerica Networks Inc operates an internet search engine. Complainant's website seekamerica.com has been actively in use and available for searching and use by the general public since August 10, 1999.

4.2 The Respondent

The Respondents are Mr Tariq Masood and Solo Signs of Lahore, Punjab. Nothing is known about the businesses or activities of either Respondent, except that the website for Solo Signs states that it is "rapidly under construction" and that Solo Signs deals in "3M Scotch Print, Cactus and MMT". In the absence of any information as to the businesses or activities of the Respondents given in the Complaint, the Panel itself has generated this information from accessing on April 7, 2000, the website of Solo Signs at http://www.solosigns.com. The Panel has taken this step pursuant to the Rules para. 10(b).

4.3 The Complainant's Trade Mark

The Complainant has used the trademark SEEKAMERICA since the inception of its business as an Internet Search engine on August 10, 1999 and/or variations of that mark both in the form of two words SEEK AMERICA and as one word in stylised forms [illustrated at Annex 7].

The Complainant does not claim any registrations for its SEEKAMERICA trademark. It did, however, file on February 4, 2000, with the Canadian Trade Marks Office an application to register SEEKAMERICA for the following services:

"Computer services, namely, providing multiple user access to computer networks and bulletin boards for the transfer and dissemination of a wide range of information; providing a wide range of general interest information via computer networks; advertising the wares and services of other vendors; providing an on-line chat room; access on-line to news, sports, financial and entertainment information and news; providing access to real estate information; providing access for retail purchase of wares and services of other vendors; providing electronic mail services; providing access to stock information and stock trading."

The application claims use by a predecessor in title, Mr Marc Wyss since August 10, 1999 and claims ownership of the mark by virtue of an Assignment from Mr Wyss dated February 22, 2000 [Annex C].

4.7 In the absence of a Response, there is no challenge to Complainant's assertions as to ownership, use and reputation of its SEEKAMERICA mark. However, to ensure that the Parties are treated with equality [Rules, para. 10(b) already referred to], the Panel accessed the Complainant's website on April 12, 2000, which states "We are currently upgrading our search technology to provide you a better service". On the same date the Panel carried out a global search on the internet for Directories of Search Engines, which search identified the Complainant.

A. Complainant

Complainant contends that the Respondents have registered as a domain name a mark which is identical to or is confusingly similar to Complainant's SEEKAMERICA mark, that Respondents have no rights or legitimate interests in respect of that domain name and that Respondents have registered and are using that domain name in bad faith.

B. Respondents

No response or any communication relating to the Complaint has been received from the Respondents or either of them.

6.1 The Policy para. 4a provides that Complainant must prove each of the following:

- that Respondents' domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

- The Respondents have no legitimate interest in respect of the domain name; and

- the domain name has been registered and is being used in bad faith.

6.2 The Rules do not require that the Complainant's trade mark or service mark be registered by a government authority or agency for such rights to exist. In this respect, the Panel refers to WIPO's Final Report on the Internet Domain Name Process [April 30, 1999] paragraphs 149-150.

In Cases D2000-0014 and 0015 the Panel considered a reputation in unregistered marks sufficient to give the Complainant a claim for passing off was sufficient to constitute trade mark rights for the purpose of the Rules. In Case D2000-0050 the Panel discussed but did not decide whether unregistered trade marks were sufficient, since in that case it was not necessary having regard to the Complainant's rights in its "BBC" trade marks.

The Panel takes the view that the fact that in this case the Complainant has, as yet, no registered service mark for SEEKAMERICA does not preclude a finding that it has established service mark rights in that mark for the purpose of the Rules.

6.2 Identical or Confusingly Similar

The mere use of a hyphen "seek-america" in Respondents' domain name is insufficient to render it different to the service mark SEEKAMERICA. The two are in all material respects identical. For the avoidance of doubt, the Panel also considers the same to be confusingly similar in that members of the public using the internet would inevitably associate the Respondents' internet address with the Complainant's mark. The Panel therefore, finds Complainant succeeds in establishing the requirement of para 4(1)(i) of the Policy.

6.4 Rights or Legitimate Interests

Para 4(c) of the Policy identifies circumstances which, in particular, but without limitation, if found by the Panel to be proved based on its evaluation of all the evidence presented, shall demonstrate the Respondents' right or legitimate interest for the purpose of para 4(a)(ii). Those circumstances are that:

(i) before any notice to the Respondents of the dispute, the Respondents' 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; or

(ii) the Respondents (as an individual, business or other organisation) have been commonly known by the domain name, even if they have acquired no trade mark or service mark rights; or

(iii) they are making a legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleading divert customers or to tarnish the trade mark or service mark at issue.

6.5 The Respondents are using the domain name as no more than a URL [ie. internet] address and there is no evidence of an active website or even of a website under construction. Further, the Complainant has not licensed or otherwise permitted the Respondents to use its SEEKAMERICA service mark or to apply for or use any domain name incorporating that mark.

6.6 In the circumstances, the Panel can find no evidence that would tend to establish that the Respondents have legitimate interests in respect of the domain name at issue. The Complainant succeeds in establishing the requirement of para 4(a)(ii) of the Policy.

6.7 Bad Faith

6.8 Para 4a(iii) of the Policy requires that Respondent's domain name must both have been registered and be being used in bad faith. Both requirements must be met.

Para 4b of the Policy sets out circumstances which, if found by the Panel to be present "… shall be evidence of the registration and use of a domain name in bad faith.". The Policy goes on to state that those circumstances are not exhaustive of the circumstances indicating registration and use in bad faith.

6.9 Registered in Bad Faith

The Respondents registered the domain name in issue on January 6, 2000, by which time the Complainant's internet search engine had been operating for some five months. Had the Respondents attempted to register the domain name seekamerica.com with Network Solutions, Inc they would have been blocked from doing so by the existing domain name registered by the Complainant's predecessor in title, Mr Wyss on August 10, 1999. Bad faith on the part of the Respondents is to be inferred from using a hyphen as a device to obtain what is to all intents and purposes a domain name which is identical to the Claimant's service mark and earlier registered domain name. In that respect, the Panel refers, in particular, to the Respondents' representations and warranties in Clause 17(ii) of its Service Agreement with Network Solutions, Inc and to their representations under para 2 of the Policy which forms a part of that Agreement [per Clause 8]. In the circumstances, the Panel finds that the Complainant succeeds in establishing the first part of the requirement of para 4(a)(iii) of the Policy.

6.10 Use in Bad Faith

From the foregoing, it appears that the domain name is not used in relation to an active website. The concept of a domain name being used in bad faith is not limited to positive action: inaction is within the concept [see, Decision D2000-0003]. Further, generally with regard to the requirements of para 4(a)(ii) the Panel is entitled to and does draw an influence adverse to the Respondents from their failure to respond to the Complaint. In all circumstances of this Complaint, the Panel also finds that the Complainant succeeds in establishing the second part of the requirement of para 4(a)(ii) of the Policy.

For all the foregoing reasons, the Panel decides that Complainant has proved each of the three elements of para. 4 of the Policy. Accordingly, the Panel requires that the registration of the domain name seek-america.com be transferred to Complainant.

David Perkins
Sole Panellist

Dated: April 13, 2000