On April 6, 2000 (by e-mail) and April 10, 2000 (in hard copy), Complainant submitted to the WIPO Center a Complaint under the Uniform Policy and the Uniform Rules. The Panel agrees that payment was properly made, that the Center rightly assessed the Complaint’s compliance with the formal requirements; that Complaint was properly notified in accordance with paragraph 2 (a) of the Rules. On May 23, 2000, Respondent was declared in default. The Panel agrees that it was properly constituted and that Panelist submitted a Statement of Acceptance and Declaration of Impartiality. The Panel also acknowledges that no other proceedings are pending before any Justice Court.

4. Factual Background

Complainant is the owner of the trademark VUARNET, registered in a number of countries and specifically in the United States for sunglasses. VUARNET is a well-known trademark and corresponds to the name of the former Olympic ski champion Mr. Jean Vuarnet. That VUARNET is a famous trademark in the field of sunglasses is beyond dispute.

Respondent, Mr. William H. Wilson of San Pedro (California), has registered its domain name buyvuarnetsunglasses.com, without dispute, well after trademark rights from the name VUARNET were acquired by Complainant, and has no known connection with any activity or trade carried out under the trade name or trademark VUARNET. Complainant’s U.S. counsel wrote a letter of demand to Respondent on October 20, 1999, calling for a voluntary cancellation of the domain name. The letter was left unanswered, despite a number of reminders.

5. Parties’ Contentions

A. Complainant

a. Complainant claims that it is owner of the well-known and largely used VUARNET trademark for a number of products, including (but not limited to) sunglasses.

b. Complainant claims that the domain name buyvuarnetsunglasses.com has been registered by Respondent in bad faith. Respondent could not ignore Complainant’s trademark rights, nor has Respondent any rights or legitimate interests in respect of the domain name.

c. Complainant claims that the domain name buyvuarnetsunglasses.com has been, or is being, used by Respondent in bad faith.

B. Respondent

a. Respondent is in default and, accordingly, has no challenged the conclusions of Complainant.

6. Discussion and Findings

A. General Principles

Under paragraph 4 (a) of the Policy, the Panel should be satisfied that:

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

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

(iii) the domain name has been registered in bad faith;

(iv) the domain name is being used in bad faith.

It is important to note that there are in fact three numbers – (i), (ii), (iii) – of paragraph 4 (a), but requirements are in fact four rather than three. It is not enough to prove that a domain name has been registered in bad faith. It should also be the case that it is being "used in bad faith".

In order to understand that both registration and use in bad faith are required, it is important to read paragraph 4.5 of the Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy of October 24-25, 1999. It reads as follows "Several comments (submitted by INTA and various trademark owners) advocated various expansions to the scope of the definition of abusive registration. For example: a. These comments suggested that the definition should be expanded to include cases of either registration or use in bad faith, rather than both registration and use in bad faith. These comments point out that cybersquatters often register names in bulk, but do not use them, yet without use the streamlined dispute-resolution procedure is not available. While that argument appears to have merit on initial impression, it would involve a change in the policy adopted by the Board. The WIPO report, the DNSO recommendation, and the registrars-group recommendation all required both registration and use in bad faith before the streamlined procedure would be invoked. Staff recommends that this requirement not be changed without study and recommendation by the DNSO (…)".

From this Staff Report it is clear that, although this may seem unfortunate, not all activities of the cybersquatters may fall under the Policy. When cybersquatters register names "but do not use them", the Dispute Resolution Procedure is not available.

Accordingly, whether or not a contested domain name is "used" is of crucial importance.

Another provision whose interpretation may be necessary in this case is Rule 15 (a), reading as follows: "A Panel shall decide a Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable". This has been interpreted, in a number of previous cases, with a certain latitude. Even when Complainants and Respondents have failed to describe exactly how the contested domain name is used, Panels have often accessed the Internet by themselves in order to verify this point.

B. Confusion with Complainant’s Trademark

The Panel finds that Complainant has established that it is the owner of the trademark VUARNET for sunglasses. The validity of its trademark is beyond dispute. Respondent’s domain name combines three words: "buy", "vuarnet" and "sunglasses". The combination, if anything, enhances the likelihood of confusion with the trademark VUARNET as used for sunglasses, and evidences the bad faith of Respondent, who obviously tries to pass himself off as a legitimate source for VUARNET sunglasses.

C. Respondent’s Absence of Rights or Legitimate Interests in the Domain Name

There is no evidence that Respondent has any right or legitimate interest whatsoever in respect of a domain name including the well-known trademark VUARNET, or any association between the trademark VUARNET and sunglasses. On this point also, Complainant prevails.

D. Registration in Bad Faith

The very choice of an association of the words "buy", "sunglasses" and "vuarnet" shows that Respondent, when registering the domain name, was perfectly aware that VUARNET was a trademark associated with the sale of Complainant’s sunglasses. The Panel concludes that the domain name has been registered in bad faith.

E. Use: Statements and Documents Submitted by Complainant

Complainant states that the domain name is being used in bad faith. There is little doubt that, should the domain name be "used", such use would be in bad faith. However, Complainant does not offer any evidence, or document, that the domain name is being, or has been, "used". As mentioned before, a look at previous cases decided under the Policy confirms that Panels usually explore the Internet by themselves in order to have a better idea of whether and how a domain name is used. Accordingly, this Panel did not rely only on the statements and documents submitted by Complainant, but verified the "use" or absence thereof, by itself. First of all, by simply and repeatedly accessing the World Wide Web, the Panel ascertained that the domain name buyvuarnetsunglasses.com is not currently active on the Web. This was, in the Panel’s opinion, not enough in order to conclude that the domain name is not "used", since the Policy does not mention "use on the Web" but simply "use". There are forms of use on the Internet different from use on the Web. For instance, e-mail may be managed under a domain name even without a presence on the Web. In order to show that an e-mail service is active under the domain name buyvuarnetsunglasses.com, it is not enough to send an e-mail to [email protected] without receiving an error message. This is not, from a technical point of view, sophisticated enough, since the e-mail may remain stalled in the sending server, or "get lost in the Internet". It is however possible to ascertain through a NS look-up and other means whether the DNS associated with the domain names includes a MX type record i.e. whether there is a machine capable to manage e-mail under that domain name. It is not suggested, here, that the Panel was requested to perform these checks (that the Complainant may have easily performed itself). However, given the peculiar circumstances of the case and the Panel’s persuasion that it is not prevented by Rule 15 (a) from having a look at the Internet by itself, the Panel performed a number of different searches and concluded that there is (or was at the time of its check) no Internet-accessible e-mail management under the domain name buyvuarnetsunglasses.com.

F. Respondent’s Use of the Domain Name: Conclusions

As mentioned earlier, under Paragraph 4 (a) (iii) of the Policy, as evidenced by the Second Staff Report of October 24, 1999, both registration and use in bad faith are required. Registration alone, without use, is not enough. "Use" is not necessarily use on the Internet. For instance, an earlier decision under the Policy (World Wrestiling Entertainment, Inc. v. Michael Bosman, WIPO Case No. D99-0001) found that an offer to sell the domain name "for valuable consideration in eccess of the documented out-off pocket costs directly related to the domain name" under Paragraph 4 (b) (i) of the Policy is in itself evidence of "use in bad faith" even when there is no use whatsoever on the Internet. Under Paragraph 4 (b) there are a number of other relevant "patterns of conduct" by a Respondent that may be relevant (this may include, for example, announcing or preparing a future Internet activity, or threatening the Complainant to do it). In our case, however, there is no evidence of any particular "conduct" by the Respondent, other than merely registering a domain name (in bad faith) and not answering a letter of demand. The Panel also acknowledges that the Internet is larger than the Web. Had it found clear evidence that e-mail is managed by Respondent under the domain name, it would have concluded that the domain name is "used in bad faith". However, not only Complainant did not submit any evidence of a use of the domain name for e-mail purposes but, although the Panel went as far as possible in trying to determine whether such is the case by itself, results were negative. The results seem to indicate that there is, indeed, no e-mail activity under the domain name.

In short, buyvuarnetsunglasses.com is a "ghost" domain name, registered but not used in any way. Under Paragraph 4.5 of the Second Staff Report, absent a change in the Policy, these cases of registration in bad faith by cybersquatters, without any form of "use" in any sense of the word, however deplorable, do not fall under the Policy. Other legal remedies remain, of course, available to Complainant, and it is always possible than in the future Complainant itself may find evidence that the domain name is "used" by Respondent. At this stage, however, the requested relief cannot be granted by this Panel.

It seems fair to add that Complainant did not waste its time by submitting this case. The decision will go on record to state that the domain name was registered in bad faith and that any use of it would necessarily be in bad faith. The decision, when served upon the Respondent, may serve as a warning to him not to "use" the domain name in any way. The findings of this Panel may also assist future Panels in deciding a case that Complainant would be free to submit again under the Policy (since circumstances of fact will in fact no longer be the same) should Respondent start any form of "use" of the domain name in the future.

7. Decision

Pursuant to Paragraph 4 (i) of the Policy and Rule 15 of the Uniform Rules, this Panel orders that the domain name buyvuarnetsunglasses.com shall remain the property of Respondent, and the relief requested by Complainant is denied.

Dr. Massimo Introvigne
Sole Panelist

Dated: June 16, 2000