prodive.com

Pro Dive Pty Ltd and Pro Dive International Pty Ltd v. Tony Lennartsson

Case No. D2004-0097

1. The Parties

The Complainants are Pro Dive Pty Ltd (First Complainant) and Pro Dive International Pty Ltd (Second Complainant), Ultimo, Australia, represented by Baker & McKenzie, Australia.

The Respondent is Tony Lennartsson, Stockholm, Sweden, represented by ESQwire.com Law Firm, United States of America.

2. The Domain Name and Registrar

The disputed domain name <prodive.com> is registered with CSL Computer Service Langenbach GmbH dba Joker.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 5, 2004, by email, hardcopy of which was received on February 9, 2004. On that same date, the Center transmitted by email to CSL Computer Service Langenbach GmbH dba Joker.com a request for registrar verification in connection with the domain name at issue. On February 10, 2004, CSL Computer Service Langenbach GmbH dba Joker.com 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 but advised, however, that the Respondent had not submitted in its Registration Agreement to the jurisdiction at the location of the principal office of the Registrar for court adjudication of disputes concerning or arising from the use of the domain name. In response to a notification by the Center on February 12, 2004, that the Complaint was thereby administratively deficient, the Complainants filed an amendment to the Complaint on February 13, 2004 by email, hardcopy of which was received on February 16, 2004. The Center verified that the Complaint together with the amendment to 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 February 17, 2004. In accordance with the Rules, paragraph 5(a), the due date for the Response was March 8, 2004. The Response was filed with the Center on March 8, 2004, by fax, on March 9, 2004, by email, and by hardcopy on March 15, 2004.

The Center appointed the undersigned as the sole panelist in this matter on March 18, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence on March 17, 2004, as required by the Center to ensure compliance with the Rules, paragraph 7, and rendered his decision within the time-limit granted.

4. Factual Backgroun

The Complainants present themselves as related companies which are both members of the PRO DIVE group of companies in Australia: the First Complainant is the current operating company of the PRO DIVE business whilst the Second Complainant is included as a co-complainant because it is the registered owner of a number of the trademark registrations on which this Complaint is based.

The Complainants explain that the PRO DIVE business was established in Australia in 1969 and has since expanded to several countries around the world through partnerships with local organisations, including in the UK and Europe. As for Sweden in particular, the Complainants work with five partners: My Planet, Globetrotters, Tours Pacific, World Wide Travel and Work and Travel. These partners represent the Complainants and display under the PRO DIVE name at trade shows in Scandinavia, in particular in Sweden. Moreover, PRO DIVE business is recognized around the world as a leader in all aspects of scuba diving education and training, the Complainants submit.

The Complainants have several trademark registrations in Australia for the PRO DIVE mark (see Annex 13 to the Complaint, all registered between 1981 and 1994).

In addition, the Second Complainant registered the domain name <prodive.com.au> in July 1996 and the Complainants' have operated a website at this domain name since July 1996 (Annex 14 to the Complaint).

5. Parties' Contentions

A. Complainants

The Complainants submit the following:

(i) The Respondent's <prodive.com> domain name is identical or confusingly similar to the PRO DIVE mark.

The Complainants have rights in the PRO DIVE mark and a substantial reputation in their PRO DIVE mark, both in Australia and Europe.

The use of the lower case format and the addition of the ".com" are not significant in determining whether the domain name is identical or confusingly similar to the mark (see, inter alia, CBS Broadcasting Inc. v. Worldwide Webs, Inc., WIPO Case No. D2000-0834). Moreover, it is not necessary for the Complainants to have trademark registrations in the Respondent's country (Infospace.com Inc. v. Infospace Technology Co. Ltd., WIPO Case No. D2000-0074).

The Complainants have registered trademarks in Australia as well as common law rights in the PRO DIVE mark in Europe through their use and promotion of the mark there. This reputation is sufficient to satisfy the requirement for the Complainants to prove their rights in the PRO DIVE mark.

(ii) The Respondent has no rights or legitimate interests in respect of the <prodive.com> domain name.

First, there is no evidence of a bona fide offering of goods or services by the Respondent in connection with the disputed domain name which would legitimize its registration of the Complainants' mark as a domain name. In fact, the Respondent has made no use of the domain name since it was registered in 1996. Panels have held that non use for a number of years can support a finding of a lack of right or legitimate interest in the domain name (Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384).

Second, there is no evidence that the Respondent is known by the name "Pro Dive." The Respondent's personal name is Tony Lennartsson and nothing at the website or in investigations has indicated that Tony Lennartsson currently uses a business name which incorporates "Pro Dive." The Respondent has no trademark rights in the name and has no current company or business name under the name. It is furthermore not associated with the Complainants in any way, and is neither authorized nor licensed to use the PRO DIVE mark in any form.

Third, there is no evidence that the Respondent is undertaking legitimate non-commercial or fair use of the <prodive.com> domain name.

(iii) The <prodive.com> domain name was registered and is being used in bad faith.

The Respondent has made no use of the domain name since it was registered in 1996 other than to place an "Under Construction" notice on the website or to place a yellow background (Annex 12 to the Complaint). Panels have held that non-use or passive use is evidence of bad faith, particularly over a long period of time (Georgia Gulf Corporation v. The Ross Group, WIPO Case No. D2000-0218).

The Respondent has registered multiple domain names that are registered marks of others and is a known cybersquatter. This has been held by panels to be evidence of bad faith (see i.a.TV Globo Ltda. v. Green Card Transportes e Eventos Ltda., WIPO Case No. D2000-0351).

The Complainants approached the Respondent when it became aware of registration of the <prodive.com> domain name in 1999. The Respondent indicated at that stage that he was a scuba diver and was intending to begin business under the name "Pro Dive." The Respondent as a scuba diver ought to have known about the Complainants' reputation in the PRO DIVE name and mark in Europe, including Sweden. The Respondent has failed to use the name despite a further four years having passed since this correspondence. This indicates that, together with having no legitimate interest in the name, the Respondent is continuing to hold the name to prevent the owner of the trademark from reflecting the mark in a corresponding domain name. The Respondent has clearly engaged in a pattern of such conduct and has held the domain name with the knowledge that it infringes the rights of another. This also constitutes evidence of bad faith.

Additionally, the Respondent has held the domain name at stake for a number of years without it resolving to a website. While a number of years may be sufficient to allow for preparation of a business, the failure to make such preparations in the time since registration constitutes bad faith registration and use (Chernow Communications, Inc. v. Jonathan D. Kimball, WIPO Case No. D2000-0119; Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384, already mentioned above).

Based on the foregoing, the Complainants request that the disputed domain name be transferred in their favour.

B. Respondent

The Respondent's submissions are as follows:

(i) The Complainants have no enforceable rights under the Policy because their mark is generic or descriptive.

PRO DIVE is a generic, or at best, a descriptive term because it describes the essential features of the Complainants' service, namely professional dive instruction and, therefore, does not provide rights under the Policy under any circumstances (see i.a.Pet Warehouse v. Pets.Com, Inc., WIPO Case No. D2000-0105; Interactive Television Corporation v. Noname.com, WIPO Case No. D2000-0358).

(ii) The Respondent has rights and a legitimate interest in the disputed domain name.

Because PRO DIVE is a common generic or descriptive term, and is not exclusively used by the Complainants, the Respondent, ipso facto, has rights and a legitimate interest in the disputed domain name.

The principal that the mere ownership of a common term domain name should, in and of itself, establish the owner's rights and legitimate interest has been recognized by several UDRP panels (see i.a.Shirmax Retail Ltd. v. CES Marketing, Inc., e-Resolution Case No. AF-0104; Zero International Holding GmbH & Co. Kommanditgesellschaft v. Beyonet Services and Stephen Urich, WIPO Case No. D2000-0161; Primedia Special Interest Publications, Inc. v. John L. Treadway, WIPO Case No. D2000-0752; First American Funds, Inc. v. Ult.Search, Inc., WIPO Case No. D2000-1840).

Moreover, the Respondent acquired the disputed domain name to use for a planned professional dive instruction business (Annex 2 to the Response). It is well established that the intent to use a domain name for a business constitutes use in connection with a bona fide offering of goods or services, pursuant to paragraph 4(c)(i) of the Policy, which is identical to paragraph 4(c)(ii) of the Policy (see i.a.Asphalt Research Technology, Inc. v Anything.com, WIPO Case No. D2000-0967).

As a matter of fact, if the Respondent has not yet developed its website this is simply due to financial considerations (see Annex 2 to the Response). It has been expressly held that a legitimate interest is established where economic circumstances preclude the implementation of a respondent's business plan (The Jolt Company v. Digital Milk, Inc.,WIPO Case No. D2001-0493). The Policy does not require actual use to satisfy a Respondent's legitimate interest. It is the Respondent's intent to use the domain name at the time of registration that matters (Casual Corner Group, Inc. v. Young, NAF Case No. 95112; Smart Design LLC v. Carolyn Hughes,WIPO Case No. D2000-0993). Registration of a domain name is not even illegitimate where a Respondent has no specific planned use at the time of registration (Koninklijke KPN N.V. v. Telepathy, Inc.,WIPO Case No. D2001-0217).

The Respondent has worked as a professional dive instructor in the past, and is presently attending school to advance his background in the diving field (Annex 2 to the Response). There can be no doubt as to the legitimacy of the Respondent's intent to use <prodive.com> for a business. He certainly did not take advantage at all of the Complainants' interest in purchasing the disputed domain name, which further corroborates that his intent is to use the domain name, not to sell it. Moreover, the Respondent has owned a company known as ProDive and is thus "known by the domain name," satisfying paragraph 4(c)(ii) of the Policy.

Finally, the Complainants unsolicited inquiry to purchase the domain name - without raising an objection (Annex 3 to the Response) - constitutes a tacit admission of the Respondent's legitimate interest in the disputed domain name (see i.a. Prom Software, Inc. v. Reflex Publishing, Inc.,WIPO Case No. D2001-1154).

(iii) The Complainants have not demonstrated that the domain name in dispute was registered and is being used in bad faith.

There is absolutely no evidence that the Respondent registered the disputed domain name to sell to the Complainants; on the contrary, the Respondent refused Complainants' offers to purchase it. Absent direct proof that a descriptive term domain name was registered or acquired solely for the purpose of profiting from Complainants' trademark rights, there can be no finding of bad faith registration and use (Ultrafem, Inc. v. Warren Royal, supra).

PRO DIVE is an extremely common descriptive term, appearing on over 16,000 third party web pages unrelated to the Complainants (Annex 1 to the Response). Where a complainant's mark is a common term with substantial third party use, as it is here, the complainant must proffer evidence that demonstrates that respondent has specifically targeted complainant.

On the Complainants' argument that the Respondent failed to yet develop a website at <prodive.com> is evidence of bad faith, an explanation has been provided for why the Respondent has been unable to do. Namely that he has had financial difficulties and was forced to file for bankruptcy for the company. As noted above, decisions under the Policy have held that a Respondent's legitimate interest is intact, notwithstanding its failure to launch a business plan due to financial issues.

For the above-mentioned reasons, the Respondent concludes that the Complainants have failed to meet their burden of proof under the Policy and the Complaint must, therefore, be dismissed.

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for the Panel to order the transfer of the disputed domain name to the Complainants. Those requirements are that:

(i) Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and

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

(iii) Respondent's domain name has been registered and is being used in bad faith.

The Complainants must prove in the administrative proceeding that each of the aforesaid three elements is present so as to warrant relief, according to paragraph 4(a) of the Policy.

The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to paragraph 15(a) of said Rules.

It may be pointed out that the Respondent has not raised any issue about the fact that there are two Complainants to the Complaint (Magna International Inc. and Donnelly Corporation v. Brian Evans, WIPO Case No. D2002-0898). There are circumstances in which a complainant properly acts on behalf of affiliated enterprises with rights in a mark. Decisions under the Policy have recognized that complex intra-enterprise relationships and/or licensing arrangements may determine the ownership or control of a particular mark. Conversely, the assertion of rights in a mark has been denied where a party is unable to demonstrate the requisite ownership or control interest. In some cases, parties acting as complainant have been specifically identified as co-complainants in the proceeding. Practice in this regard has not been consistent. The Panel accepts the designation of both entities as Complainants without suggesting a uniform practice on the issue of joinder of complaining parties under the Policy and Rules (see Asprey & Garrard Limited and Garrard Holdings Limited v. www.24carat.co.uk/domainnames.html, WIPO Case No. D2001-1501).

A. Identical or Confusingly Similar

The Respondent argues that the Complainants lack rights in the mark PRO DIVE because it is generic or descriptive.

Firstly, the Panel would like to observe that, unlike one of the cases cited by the Respondent (Pet Warehouse v. Pets.Com, Inc., WIPO Case No. D2000-0105) and some other relevant decisions (see e.g. CharterAuction.com, Inc. v. Pacific Luxury Air, WIPO Case No. D2003-0801), the Complainants have established trademark registrations for the PRO DIVE mark (see Annex 13 to the Complaint).

Several administrative panels have held that the argument, such as the one raised by the Respondent in this case relating to weakness of the trademark, may have some merit, but continue, that only the test set out in paragraph 4(a)(i) of the Policy has to be satisfied, namely that it remains for the Complainant to prove that the disputed domain name is identical or confusingly similar to the trademark concerned, however strong or weak the "rights" may be (TPI Holdings Inc. v. JB Designs, WIPO Case No. D2000-0216; Action Sports Videos v. Jeff Reynolds, WIPO Case No. D2001-1239; see also Rollerblade, Inc. v. CBNO and Ray Redican Jr., WIPO Case No. D2000-0427).

Further, it has been held and confirmed that rights under the Policy can exist in trademarks which are descriptive and which have no secondary meaning (Emmanuel Vincent Seal trading as Complete Sports Betting v. Ron Basset, WIPO Case No. D2002-1058, citing Action Sports Videos v. Jeff Reynolds referred to above).

In this matter, the Panel considers without hesitation that the Complainants have satisfied the test of paragraph 4(a)(i) of the Policy, i.e. that the domain name <prodive.com> is identical to their trademark PRO DIVE

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances, if found by the Panel to be proved based on its evaluation of all evidence submitted, shall demonstrate rights to or legitimate interests in the domain name in dispute. Those circumstances are described as follows:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial 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.

The Complainants have alleged that the Respondent has no rights or legitimate interests in respect of the domain name at issue. This shifts the burden to the Respondent to show by concrete evidence that it has rights or legitimate interests in respect of the domain name at issue according to paragraph 4(c) of the Policy cited above (Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270). "Concrete evidence" constitutes more than mere personal assertions. Evidence in the form of documents or third party declarations should be furnished in support of such assertions (Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 cited in Kate Spade, LLC v. Darmstadter Design, WIPO Case No. D2001-1384).

The failure of the Respondent to produce evidence sufficient to rebut Complainant's allegations entitles the Panel to conclude that the Respondent has no such rights or legitimate interests in respect of the domain name at issue (Ronson, Plc v. Unimetal Sanayi ve Tic.A.S., WIPO Case No. D2000-0011; Parfums Christian Dior v. QTR Corporation, WIPO Case No. D2000-0023 cited in Chernow Communications, Inc. v. Jonathan D. Kimball,WIPO Case No. D2000-0119).

After having carefully examined the evidence presented by the Respondent under the form of a written "declaration" (Annex 2 to the Response) and related submissions (see above at 5(b)(ii), p. 6-7), the Panel does not give much credit thereto, especially after having considered instances where the Respondent has been associated with a number of UDRP complaints either directly or through the businesses "ControlAltDelete" and "PDS"(see Annex 11 to the Complaint; see also above at 5(a)(iii), p. 7) and having been described as having "established a pattern of registering domain names comprised of the trademarks of others for the purposes of ransoming them back to their rightful owners" (Vattenfall AB v. P D S,WIPO Case No. D2000-0359, <vattenfall.com>) and the Respondent himself has been described as "a known cyber squatter who registers the trademarks of others as domain names" (Arla, ekonomisk förening v. P D S and Tony Lennartsson,WIPO Case No. D2000-0151, <arla.com>).

In sum, the Respondent has not submitted convincing evidence that any of the circumstances enumerated in paragraph 4(c) of the Policy would be present in this matter.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any of the following behaviors is sufficient to support a finding of 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.

The arguments submitted by the Respondent that it has not registered and used the domain name <prodive.com> in bad faith do not convince the Panel, mainly for the same reasons set out above under section B.

To the extent necessary, the Panel confirms previous decisions that held that passive use is evidence of bad faith, particularly over a long period of time - which is obviously the case in this case - (Georgia Gulf Corporation v. The Ross Group, WIPO Case No. D2000-0218) and that a Respondent who registered multiple domain names that were registered marks of others and was a known cybersquatter is further evidence of bad faith (see i.a.TV Globo Ltda. v. Green Card Transportes e Eventos Ltda., WIPO Case No. D2000-0351). Those decisions fully apply to the present case.

The Complainants have thus met the requirements set out in Policy, paragraph 4(b).

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <prodive.com> be transferred to one of the two Complainants that the Complainants assign.