The original Complaint was filed on January 27, 2001, against a Nicos Panayiou of Cyprus. Following responses from the respective registrars advising that each domain name had been transferred to the Respondent on or about February 6, 2001, the Complainant filed an amended Complaint with the WIPO Arbitration and Mediation Center (the Center) on February 21, 2001, naming ANC – AppleStation as the Respondent.
Responses from the respective registrars on February 7, February 14 and April 25, 2001, advised that the Uniform Domain Name Dispute Resolution Policy (the Policy) applied to each domain name. In the case of "ancasta.com" the status of the domain name was on ‘registrar lock’; "ancasta.net" was on ‘registrar hold’.
In a letter dated February 21, 2000, the Center notified the Respondent by post/courier and email of the commencement of the administrative proceeding and of the necessity of responding to the Complaint within 20 calendar days i.e. by March 12, 2001.
In a letter sent on March 13, the Center informed the Respondent that it was in default pursuant to the Rules for the Uniform Name Dispute Resolution Policy (the Rules) and the WIPO Supplemental Rules (the Supplemental Rules).
On March 28, 2001, the Center informed both parties by email that an administrative panel comprising Andrew Brown had been appointed.
The Panel is satisfied that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules, that the Complaint was properly notified to the Respondent in accordance with the Rules, and that the Administrative Panel was properly constituted.
4. Factual Background
The Complainant claims to be Europe’s largest yacht and boat broker and outlines that it has been using the trademark ANCASTA continuously since 1982 in respect of the advertising, marketing, sale, design, commissioning, brokerage, rental, leasing and delivery of boats and yachts; advisory and consultancy services relating to boats and yachts; arranging insurance and insurance broking; insurance claims assessment; insurance consultancy; insurance underwriting; hire purchase financing and arranging financing and loans; financial analysis and reports.
The Complainant is the registered proprietor of the trademark ANCASTA in the UK in classes 12 and 39 (since 1993) and in class 36 (since 1997). It also has registrations for ANCASTA as a Community Tradmark in classes 12 and 39 since 1998, an international registration in Benelux, France and Spain in classes 12, 36 and 42 (since 1993). It also has a registration in Norway and a pending application in Turkey for the same mark.
The Complainant also has a registered trademark for ANCANET in the UK in classes 35 and 42 (since 1997) and registration for the same mark in Benelux, Turkey, Greece, Germany, Italy, Slovenia, Norway, Sweden, Denmark and Finland in the same countries.
The Complainant has a network of 22 offices throughout Europe, Greece, Turkey, Palma, Spain, France and Portugal. It also had an office in Guernsey in the Channel Islands which it closed in mid-late 1999.
The Complainant actively operates under the domain name "ancasta.co.uk". It had a total turnover for the year ending June 2000 of Ł43 million and in the same period spent some Ł800,000 on marketing and promotion. It has an active programme of full page advertisements in leading magazines relating to the marine industry.
Sometime around May 2000, the Complainant learned that an organisation called Nucom Domain Name Brokers based in the Channel Islands (Jersey) had registered the domain name "ancasta.com". The Complaint states that on May 31, 2000, Nucom sent an email to the Complainant seeking $6,000 for transfer of the domain name "ancasta.com". This email is not attached as an exhibit to the Complaint. However, the Complainant has exhibited a later exchange of emails on November 30, 2000, in which Nucom advised the Complainant that the domain name "ancasta.com" was available for purchase for $9,000 or, alternatively, could be leased for a monthly fee of $180. On December 7 and 18, 2000, searches of the domain name "ancasta.com" opened to a page operated by Nucom Domain Name Brokers with the statement "4 sale". On December 21 2000, the Complainant’s agent wrote to Nucom setting out the Complainant’s rights to the name ANCASTA and demanding transfer of the domain name. A reminder letter was sent on January 8, 2001. A response was received from Nucom that same day which stated:
"This domain name is no longer listed with us. Please refer to http//www.ancasta.com …"
On searching "allwhois.com" the Complainant found that "ancasta.com" had been transferred to a Nicos Panayiou of Cyprus. A search of "ancasta.net" showed the same owner.
A search by the Complainant of the domain names "ancasta.com" and "ancasta.net" opened to a page stating:
"This website is under construction and will be opening soon. Contact [email protected] for further information."
On January 10, 2001, the Complainant’s agent sent an email to Nicos Panayiou outlining its rights to the mark ANCASTA and requesting transfer of the domain name "ancasta.com" to it. No mention was made of the domain name "ancasta.net" but the letter spelled out the Complainant’s rights in the trademark ANCASTA. No response was received to this or a followup email sent on January 12, 2001.
Before filing the Complaint the Complainant verified that Nicos Panayiou was proprietor of both the domain names. The Complaint was filed on January 27, 2001, and a copy sent that same day to Nicos Panayiou as the named Respondent. However a subsequent check on February 15, 2001, following a registrar response, showed that both domain names had been transferred to the current Respondent in China on or about February 6, 2001, - i.e. after the letter of demand.
The Complainant then amended its Complaint to name the Respondent. The Respondent has not responded to the Complaint.
5. Parties’ Contentions
A. The Complainant
The Complainant contends that Nucom, the original registered owner of "ancasta.com" registered the domain name without any intent to use it but with the intent of extracting money. It claims that "ancasta.com" was registered shortly after the Complainant closed its office in the Channel Islands.
The Complainant claims that when demands were made of Nucom, it attempted to avoid liability by transferring the domain names to Nicos Panayiou. The letter of complaint to Nicos Panayiou demanding transfer of "ancasta.com" led to transfer of the domain names "ancasta.com" and "ancasta.net" to the present Respondent.
The Complainant states in summary:
(a) the trademark ANCASTA has for many years been well-known throughout Europe, USA, Australia and other parts of the world including Jersey/Channel Islands and Cyprus;
(b) the domain names "ancasta.com" and "ancasta.net" are identical to the Complainant’s registered trademark ANCASTA and confusingly similar to its registered trademark ANCANET;
(c) neither Nucom nor Panayiou operate websites or carry on legitimate businesses under the name ANCASTA;
(d) Nucom registered "ancasta.com" for the purpose of obtaining money from its sale. Nucom had no intention of using the domain name and when confronted, transferred the domain namesto Panayiou in order to avoid the dispute. When contacted, Mr. Panayiou did not respond and transferred the domain names i.e. "ancasta.com" and "ancasta.net" to the Respondent. These transfers were made in order to avoid a dispute and indicate bad faith. The transfers to the Respondent were made in bad faith.
B. The Respondent
The Respondent failed to file a response with the Center.
The Panel however has looked at the website "ancasta.com". This now opens to an active website headed ANC Communication Group with a logo of an apple. Apart from the trading name and several key headings, the site is in Chinese. The website "ancasta.net" cannot be opened.
6. Discussion and Findings
Before setting out the Panel’s findings, it is desirable to outline a chronology of dates relating to the various actions by the Complainant and the subsequent transfers of the domain names:
December 21, 2000
Demand letter sent by email to Nucom Domain Name Brokers
December 21, 2000
Domain names "ancasta.com" and "ancasta.net" transferred from Nucom to Panayiou
January 10, 2001
Demand letter sent to Panayiou the original Respondent
January 12, 2001
Follow up to demand letter sent to Panayiou
January 27, 2001
Complainant checks "allwhois.com" and confirms that Nicos Panayiou is listed as proprietor of "ancasta.com" and "ancasta.net"
January 27, 2001
Complainant files Complaint naming Nicos Panayiou as Respondent. A copy of the Complaint is sent to Nicos Panayiou by email
February 6, 2001
Domain names "ancasta.com" and "ancasta.net" are transferred to Respondent ANC AppleStation
February 21, 2001
Complainant files amended Complaint
It is apparent from this chronology that the Complainant forwarded a letter of demand and notice of claim to the original registrant of "ancasta.com" by email on December 21 2000, before the first transfer of the domain names "ancasta.com" and "ancasta.net" to Nicos Panayiou. Again a letter of demand was sent to Nicos Panayiou and the Complaint filed and notified to Panayiou before the second transfer of the domain names to the current Respondent on February 6, 2001.
Paragraph 15(a) of the Rules instructs 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".
The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:
· 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
· That the Respondent has no rights or legitimate interests in respect of the domain name; and
· That the domain name has been registered and is being used by the Respondent in bad faith.
Domain name is confusingly similar to registered trademark
The domain names "ancasta.com" and "ancasta.net" are identical to the Complainant’s trademark ANCASTA registered in a number of jurisdictions. They are confusingly similar to the Complainant’s registered trademark ANCANET.
No legitimate right or interest in "ancasta.com" or "ancasta.net"
The Policy outlines (paragraph 4(c)) circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interest in the domain name. These circumstances are:
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business or other organisation) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In this case there is no evidence of any demonstrable preparations to use the domain name or earlier legitimate use of the domain name by:
(a) Nucom Domain Name Brokers, the original registrant;
(b) The transferee and originally named Respondent, Nicos Panayiou;
(c) The current Respondent.
The current Respondent has not chosen to file a response or to take up the opportunity to provide evidence supporting its right to the domain name. The Panel therefore finds it appropriate in this regard to draw an adverse inference from the Respondent’s failure to reply to the Complaint: LLS International v Mark Freeman, WIPO Case No. D2000-1080 and Alta Vista Company v Grandtotal Finances Limited, WIPO Case No. D2000-0848.
Although the Respondent is now using the website, this has occurred after the Complaint was lodged. There is no evidence of any prior use of the mark ANCASTA by it. Indeed the actual business name listed on the domain name is ANC Corporation which does not, of course, abbreviate to ANCASTA.
Overall, therefore, the Panel finds no evidence that the Respondent (or its predecessors) had any legitimate right or interest in the domain name at issue. The Panel therefore finds that the Complainant has met the requirement of Paragraph 4(a)(ii) of the Policy.
Domain name has been registered and is being used in bad faith
Paragraph 4(b) of the ICANN Policy states:
"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."
It should be noted that the circumstances of bad faith are not limited to the above.
The Panel finds that the original registrant of the domain names "ancasta.com" and "ancasta.net", namely Nucom Domain Name Brokers, registered these primarily for the purpose of selling or renting these to the Complainant for valuable consideration in excess of documented out of pocket costs and that this falls within paragraph 4(b)(i) of the Policy.
The evidence shows that the Complainant had an office in the Channel Islands where Nucom was domiciled and that it closed this some time in mid-late 1999. The Complainant has also demonstrated that it had a reputation and trademark rights in the name ANCASTA in Europe at the time.
The Complainant’s evidence also shows that Nucom approached the Complainant to seek $6,000 for the "ancasta.com" site. This was subsequently increased to $9,000 by November 2000. The site when launched by Nucom opened to a page which included the statement "4 sale. The domain name (website address) that you entered to come here is available for purchase or lease …". The Panel finds that the sum sought from the Complainant was in excess of any documented out of pocket costs which could be related to the domain name.
The actions of Nucom in offering the site for sale related solely to "ancasta.com". There is no evidence that Nucom offered "ancasta.net" for sale. But equally there is no doubt that at the time it registered "ancasta.net" in August 2000, Nucom was well aware of the Complainant’s reputation and use of the ANCASTA trademark because at that stage it had already offered to sell the domain name "ancasta.com" to the Complainant. On December 21, 2000, Nucom was specifically put on notice of the Complainant’s claims to and rights in the ANCASTA trademark. The actions of Nucom in relation to both domain names must be considered together.
As against Nucom Domain Name Brokers, the Panel finds that both domain names were registered and used in bad faith. Although there is no evidence that "ancasta.net" was ever in use, the case falls within the principles set out in Nuclear Marshallows v Telstra, WIPO Case D2000-0003, namely, that where there is evidence of bad faith registration, absence of use does not frustrate the requirements of showing bad faith registration and use.
The Panel also finds that the subsequent dealings with the domain name are tainted with bad faith.
The transfer from Nucom to Panayiou occurred on December 21, 2000 on the same day as the Complainant emailed its letter of demand to Nucom. Immediately it learned of the transfer to Panayiou, the Complainant wrote to Panayiou putting him on notice of its reputation and rights to the ANCASTA trademark. No reply was received and the domain name was transferred to the Respondent on February 6, 2001.
As against Panayiou, the Panel finds that the dealings were in bad faith and that both Nucom and Panayiou can only have transferred the domain name in order to defeat the actions being taken by the Complainant to recover it. This process has been described by one Panelist as "cyber flying" i.e. where a registrant of a domain name when named as a Respondent (or in this case when sent a letter of demand) systematically transfers the domain name to a different registrant to disrupt the proceeding: BBC v Data Art Corporation/Stoneybrook,WIPO Case D2000-0683. Here the second transfer occurred after a letter of demand and a follow up and after the Complaint had been filed with WIPO and a copy sent by the Complainant to Panayiou. Although the Center had not completed its formalities and formally notified the proceedings to Panayiou, he was plainly on notice of the Complaint. The only inference to be drawn from Panayiou’s action in transferring the domain names on February 6, 2001 was that he was trying to avoid the consequences of this proceeding. The Panel finds that the transfer was in bad faith.
In the case of the current Respondent, ANC AppleStation, it has been in receipt of the full details of the Complaint but has chosen not to respond at all. If the Respondent had been a bona fide purchaser of the domain name for value without notice, then the Respondent would have every reason to reply and make this clear. It has not and (as noted earlier in this decision) the Panel finds it appropriate to draw adverse inferences from this. The trading name used on the website is ANC Communication Group which does not abbreviate to ANCASTA but to ANCCG. There is no explanation as to the choice of name ANC AppleStation given as the name of the Respondent as part of the domain name registration. There must be a strong suspicion that this name has been conveniently chosen to fit in with the "ancasta.com", "ancasta.net" domain names originally registered by Nucom in bad faith.
7. Decision
For the foregoing reasons, the Panel decides:
(a) that the domain names registered in the name of the Respondent are identical or confusingly similar to the trademarks to which the Complainant has rights;
(b) that the Respondent has no rights or legitimate interests in respect of the domain names; and
(c) the Respondent’s domain names have been registered and are being used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain names "ancasta.com" and "ancasta.net" be transferred to the Complainant.
Andrew Brown Panelist
Dated: April 26, 2001
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