International Mobile Satellite Organisation and Inmarsat Ventures Limited (formerly known as Inmarsat Holdings Limited) (Complainants) v. Domains, EntreDomains Inc. and Brian Evans
Case No. D2000-1339
1. Introduction
This is a mandatory administrative proceeding submitted for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution (the "Policy"), adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (the "Rules") and the World Intellectual Property Organization ("WIPO") Supplemental Rules for Uniform Domain Name Dispute Resolution Policy.
The Administrative Panel consisting of a single member was appointed on November 17, 2000, by WIPO.
2. The Parties
The Complainants in this administrative proceeding are International Mobile Satellite Organisation, an inter-governmental organisation established by international treaty, ("International Mobile") and Inmarsat Ventures Limited ("Inmarsat Ventures"), a limited company organised and existing under the laws of England and Wales, both having their principal place of business at 99 City Road, London EC1Y 1AX, United Kingdom (collectively "the Complainants").
The Respondents in this Administrative Proceeding are Domains, EntreDomains Inc., both of 8635 W. Sahara, Las Vegas, Nevada 89117, USA and Brian Evans of 11333 Moorpark Street #472, North Hollywood, CA 91602, USA (collectively "the Respondents").
3. The Domain Name and Registrar
"inmarsatventures.com"
Network Solutions, Inc ("NSI")
505 Huntmar Park Drive
Herndon, VA., 20170
United States of America
4. Jurisdiction and Related Matters
By registering the subject domain names with the Registrar, the Respondent agreed to the resolution of disputes pursuant to the Policy and Rules.
5. Procedural History
The Complainants filed their Complaint with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on October 5, 2000, by email and on October 6, 2000, in hard copy. An Acknowledgement of Receipt dated October 11, 2000, was sent by the Center to the Complainants. The Center dispatched to the Registrar a Request for a Registrar Verification on October 11, 2000. Communications between the Respondents and the Complainants took place between October 14 and November 2, 2000. On October 14, 2000, having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center formally commenced this proceeding and notified the Respondents that their Response would be due by November 6, 2000. The Respondents did not file a response by the due date.
An examination of this material confirms that all technical requirements for the prosecution of this proceeding were met.
In addition to the above, the material includes communications from the Respondent, Brian Evans.
Neither party requested an opportunity to make further submissions and the Administrative Panel is content to proceed on the basis of the existing record.
6. Factual Background
International Mobile was established by an International Treaty entitled "the Convention on the International Maritime Satellite Organisation" ( "the Convention") which entered into force on July 16, 1979.
International Mobile’s name was changed from The International Maritime Satellite Organisation (Inmarsat) to the International Mobile Satellite Organisation (Inmarsat) by amendments adopted in 1994.
Originally eighty-eight countries were parties to the Convention. Currently there are eighty-six. The signatories include all major industrialised nations.
International Mobile was established under public international law and has a separate legal personality. Although many of the activities of the International Mobile have been privatised, the Inter-Governmental Organisation established under the Convention remains in existence.
The privatised company, Inmarsat Venturesand, directly and through one of its wholly owned subsidiaries, Inmarsat Limited, provides communications services on a world-wide basis.
As part of its function, International Mobile oversees the maintenance of maritime distress and safety services, ensures that services are provided without discrimination on the basis of nationality, ensures that the company seeks to serve all geographical areas where there is a need, ensures the services are used for peaceful purposes and ensures fair competition.
International Mobile has had continuity of existence both before and after the privatisation of its business.
It also has retained ownership of the Inmarsat name and logo both before and after privatisation but granted a licence to Inmarsat Ventures and its subsidiary Inmarsat Limited to use its marks.
The mark INMARSAT is a registered trade mark andthe figurative mark is a protected emblem under Article 6ter of the Paris Convention.
Activities of Complainants
International Mobile originally was established to serve the maritime industry by developing satellite communications for ship management distress and safety applications. The privatised entity Inmarsat Ventures through its subsidiary, Inmarsat Limited operates a global satellite system which is used by independent service providers to offer a range of voice and multimedia communications for customers on the move or in remote locations.
While continuing to perform its original mandate, Inmarsat Limited also provides land, mobile and aeronautical communications, so that users now include thousands of people who live or work in remote areas without reliable terrestrial networks and travellers anywhere.
Users include journalists and broadcasters, health teams and disaster relief workers, land transport fleet operators, airlines, airline passengers and air traffic controllers, government workers, national emergency, civil defence agencies and heads of state
Trade Mark Rights
The Complainants have acquired goodwill in the mark INMARSAT by virtue of their extensive and important activities. The Complainants also have registered the trade mark INMARSAT around the world; the registrations are owned by International Mobile with Inmarsat Ventures and its subsidiary Inmarsat Limited having been granted a licence.
There are active registrations or pending applications of the word mark INMARSAT in the following countries:
Country
Earliest Filing Date
Australia
29.06.92
Brazil+
17.06.93
Benelux
31.05.91
Canada
15.10.91
Germany
19.04.93
France
30.05.91
Japan+
18.10.91
Singapore+
01.07.92
USA
27.06.95
United Kingdom
15.04.91
Russia
02.04.96
China
06.09.97
Norway
05.06.97
South Africa
01.04.96
European Union
01.04.96
India*
12.05.92
* pending application only.
+ registration(s) and pending application(s).
Some of the registration certificates do not reflect the 1994 change in name of the International Mobile. The Complainants are in the process of recording the change. The change in name does not affect the actual ownership of and rights in the marks.
Background to Dispute
Inmarsat Ventures made a decision to change its name from Inmarsat Holdings Limited to Inmarsat Ventures Limited. As part of the preparations for the name change on May 10, 2000, Inmarsat Ventures sought and obtained domain name registrations for what it believed were "inmarsatventures.com" and "inmarsatventures.net". International Mobile owns the domain names "inmarsat.org" and "inmarsat.com". It later became apparent that a typographical error meant that the May 10, 2000, registrations were for "inmarsatvenutres.com" and ".net"; ventures was misspelt venutres.
Believing that the domain names corresponding to the new company name had been registered, Inmarsat Ventures then effected the change of name at UK Companies House on June 27, 2000.
On July 13, 2000, a world-wide press release announcing the change of name went out through a network of public relations agencies in the UK, USA, Middle East and Asia- Pacific. It was intended to be picked up on July 17, 2000, and was dated that date. The agencies issued releases to various newspapers and trade magazines. The release also went out in various national and international newswires including Reuters who service major newspapers around the world (including, for example, the Financial Times). An article based on the press release was posted on Inmarsat Ventures’ website at /newsroom/releases/ventd4.html.
The press release went out to a number of US publications. In addition to being sent out over business wire services such as Reuters it was individually forwarded to the following US publications:
Business or GeneralPress
Aviation
Satellite and Telecommunications
Energy
Maritime
Bloomberg News
Wall Street Journal
Christian Science Monitor
Reuters
Forbes
Dow Jones News Service
Associated Press
The New York Times
Investor’s Business Daily
Fortune
Business Week
Washington Post
In Flight USA
Aviation Maintenance
Avionics Magazine
Aviation Week & Space Technology
Aviation International News
Air Transport World
Air Line Pilot
Via Satellite
Base Station/Earth
Station
Global Telephony
Global Wireless
Electronic Messaging
Magazine
Phone+
Satellite Broadband
Tele.com Magazine
Teleconnect
Teletimes
Wireless Review
Wireless Week
Communications & Networking
Communication News
Mobile Computing &
Communications
World Refining
Today’s Refinery
The Roughneck Buy & Sell
Pipeline & Gas Journal
Pipeline & Gas Industry
Oilweek
Oil, Gas & Petrochem
Equipment
Oil & Gas Journal
Journal of Canadian
Petroleum Technology
J P T: Journal of
Petroleum Technology
Hart’s E & P
Workboat
The Westcoast
Mariner
Soundings Trade Only
Professional Boatbuilder
Ocean News &
Technology
Marine Technology
Society Journal
Marine News
Marine Log
Sea Technology
Harbour & Shipping
Boating Industry
Transportation &
Distribution
Tradewinds
Maritime Week
Maritime Reporter and Engineering News
American Shipper
The American Journal of Transportation
Canadian Transportation
Logisitics
The Maritime Executive
Maritime Magazine
The Respondents are all based in the United States.
The subject domain name was registered by Domains on July 18, 2000.
On August 17, 2000, Inmarsat Ventures discovered the typographical error in the May 10, 2000, domain name registration. Inmarsat Ventures sought immediately to obtain the domain names with the correct spelling. It was successful in obtaining inmarsatventures ".net", but found that "inmarsatventures.com" was registered to the Respondent Domains. A check of the website at "inmarsatventures.com" on August 17, 2000, found an offer to sell the subject domain name for $1500 or better. Checks of the website on September 27 and October 4, 2000, also found offers to sell the subject domain name.
On August 20, 2000, an unsolicited email was sent to Inmarsat Ventures with the email header indicating the sender as [email protected]. It said: "I see that you have registered the ".net" version of my domain name" and claimed that someone had emailed the sender about the domain name "inmarsatventures.com".
The email advised that "I would be happy to sell my domain name, "inmarsatventures.com", for $5000 USD".
On August 20, 2000, 12 hours after the first email another email was sent to Inmarsat Ventures. In this second email, with an address header for the sender of, but over the name "H. Bousquet" advised the recipient that InmarsatVentures is the sender’s company name and has been "in use" for 6 years. Inmarsat Ventures was invited to consider whether "...you may wish to buy my rights and title in the name InmarsatVentures.com" by the deadline of noon pacific time on August 21, 2000. Inmarsat Ventures was invited to offer a minimum of $25,000 USD, was advised that non-response would be regarded as disinterest and that the website would be "developed" as a consequence.
The latter email also contained a note that the subject domain name was "…presently stored with Entredomains until our company site is completed".
On August 28, 2000, Inmarsat Ventures was advised by email from the same address that "Inmarsatventures.com is now on a domain name auction website".
On September 5, 2000, a further email from the same address advised "As I am no longer using my domain name, it is available for sale for $3,000 USD".
The Complainants provided material that indicated that the controlling mind and legal person behind Domains is Brian Evans. Reference also was made to previous WIPO decisions involving Mr. Evans and to the fact that an investigator retained by the Complainants in this matter previously was engaged by other interests to investigate Mr. Evans.
On October 5, 2000, WIPO received an email from the address noted above. In part it stated: "I have been named in this WIPO action and do not own the domain name in question, as I had mistakenly thought prior…I have been copied on the email to you regarding some type of a dispute and I do not have anything to do with the name."
7. Parties’ Contentions
A. Complainants
The Complainants say that they have rights to the name and mark "inmarsat" and that the subject domain name essentially is identical to their name and mark because it is used fully in the subject domain name.
The Complainants assert that the Respondents have no legitimate interest in the subject domain name, saying that it was registered for no commercial purpose and solely to be sold. Noting that it was asserted that the subject domain name related to a company that had been carrying on business for six years, the Complainants refer to investigations they undertook that disclosed no such company.
The Complainants’ bad faith assertion relies on the timing of the registration of the subject domain name and the attempts to sell it.
B. Respondents
The Respondents did not participate substantively in this proceeding. Through communications provided by the Complainants and the Center, some possible positions were articulated: for example, the suggestion that the subject domain name relates to a company that has been in business for a number of years. In addition, Mr. Evans contends that he is not a proper party to this proceeding.
8. Discussion and Findings
Paragraph 4(a) of the Policy requires a Complainant to prove that:
i) the domain name is identical or confusingly similar to a service mark to which the Complainant has rights;
ii) the Respondent has no legitimate interest in respect of the domain name;
iii) the domain name has been registered or is being used in bad faith.
Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances, including an attempt by the registrant to sell the name for an amount in excess of the reasonable costs of registration.
A. Identical or Confusingly Similar
The Complainants have provided ample evidence that they own the name and mark "Inmarsat". The subject domain name uses that word and differs with the Complainants name and mark only because the word "ventures" is misspelled.
The Administrative Panel is satisfied that the Complainants have met the requirements of Paragraph 4(a)(i).
B. Respondent’s Legitimate Interest
The inquiry under this topic begins with a consideration of the identity of the Respondents.
The issues in an ICANN proceeding are narrow as is the relief that is available. The subject domain name is registered to the respondent Domains. If it were held to have no legitimate interest and to have registered or used the subject domain name in bad faith, the requested relief would be granted.
It is not necessary to decide whether Entredomains Inc. and Brian Evans are proper respondents, but if it were, on the evidence presented there is no doubt that they are.
The October 5, 2000, email from "[email protected]" is a clear admission that the sender is Brian Evans. It says: "I have been named in this WIPO action…." and goes on to say that he thought that he owned the subject domain name. Earlier emails from the same address assert ownership. One email also says that the subject domain name is with Entredomains. All three entities are inextricable bound together in this matter and are proper, albeit arguably unnecessary, respondents.
The Respondents have demonstrated no legitimate interest in the subject domain name. It has not been used by them. The timing of its registration and the communications that followed shortly thereafter support an inference that their interest is not legitimate. The registrant Domains has done nothing to support a conclusion of legitimate interest.
The Administrative Panel is satisfied that the Complainants have met the requirements of Paragraph 4(a)(ii).
C. Bad Faith
The evidence of bad faith derives, in part, but not exclusively, from the conduct of Mr. Evans. He proposed the sale of the subject name for sums well in excess of a reasonable cost of registering the subject domain name. His communications also threatened taking action concerning the name in an effort to induce the Complainant to accede to his commercial overtures. His conduct was a bad faith use of the subject domain name.
Insofar as all of the respondents are inextricable bound together in this matter, the conduct of Mr. Evans is the conduct of all.
Apart from the post-registration actions of Mr. Evans, the timing of the registration together with the evidence of the publicity undertaken by the Complainants, leads to an inference of bad faith in the registration of the subject domain name.
The Administrative Panel is satisfied that the Complainants have met the requirements of Paragraph 4(a)(iii).
9. Decision
Based on the evidence and the findings noted above, the Administrative Panel concludes that the Complainants have met the requirements of the Policy and have established their claim.
They request that the Administrative Panel issue a decision that the contested domain name be transferred to Inmarsat Ventures Limited.
It is so ordered.
Edward C. Chiasson, Q.C.
Panelist
Dated: November 30, 2000.
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