1.1 The Complainant is Axelion GmbH of Hamburg, Germany, represented by Rechtsanwalt Albrecht Sass, Germany.
1.2 The Respondent is Eric H. Schunk of Lafayette, Colorado, United States of America, represented by himself.
2.1 The disputed domain name <axelion.com> (the “Domain Name”) is registered with Tucows Inc. (the “Registrar”).
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2008. On November 7, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 11, 2008, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing contact details. The Registrar failed to provide billing contact details as required by paragraph 2(a)(i)(B) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”).
3.2 The Complaint as filed with the Center identified the registrar for the Domain Name as Cartel Internetservices BV. Accordingly, the Center sent an email communication to the Complainant on November 12, 2008 inviting the Complainant to submit an amendment to the Complaint so as to correctly identify Tucows Inc. as the registrar. The Complainant filed an amendment to the Complaint to this effect on November 13, 2008.
3.3 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 and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
3.4 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 November 18, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 8, 2008. The Response was filed with the Center in electronic form on December 5, 2008.
3.5 The Center appointed Matthew S. Harris as the sole panelist in this matter on December 16, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
3.6 On December 16, 2008, the Complainant's lawyer informed the Center that the Complainant was considering filing an additional submission in this case and asking the Center to clarify whether this was possible. Having brought this issue to the Panel's attention, the Center replied as informed by the Panel the following day as follows:
“Please note that the Rules for the Uniform Domain Name Dispute Resolution Policy (“Rules”) provide for the submission of the Complaint by the Complainant and the Response by the Respondent. No express provision is made for Supplemental Filings by either party, except in response to a deficiency notification or if requested by the Center or the Administrative Panel. Paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of Supplemental Filings (including further statements or documents) received from either Party. The Panel in this case has instructed the Center to draw to the parties' attention the decision of the panels DK Bellevue, Inc. d/b/a Digital Kitchen v. Sam Landers, WIPO Case No. D2003-0780 and Hydentra, LP. v. Xedoc Holding SA WIPO Case No. D2008-0454, as to the circumstances in which a panel may and may not consider supplemental submissions. Please also note it is highly unlikely that the Panel will take any such document into account if it is filed after the Panel has filed a draft of its decision with the Center.”
3.7 Later that day the Respondent sent a letter to the Center stating that it objected to any further submission being filed in this matter.1 In fact, no further submission was filed by the Complainant prior to a draft of this decision being forwarded to the Center.
4.1 The Complainant is a company that offers IT services in the fields of strategic consultancy, software implementation, hosting and outsourcing. It has been listed under the Hamburg register of companies since May 19, 2005. It offers its services through the domain name <axelion.de>. Its shareholders are Hans Schneider, Susanne Dorner and Fabian Klose.
4.2 The Complainant is the owner of Community Trade Mark No. 6345938 for the word AXELION in classes 35, 42 and 45. The trade mark was filed on September 28, 2007 and proceeded to registration on July 15, 2008.
4.3 In July 2005 the Complainant entered into some form of business cooperation arrangement with Steltix Nederland BV (“Steltix Nederland”) in the Netherlands. At that time the company was called Tradeware B.V. and subsequent to entering into this arrangement it changed its name to Axelion Nederland B.V. Steltix Nederland has at all times been controlled (through a holding company) by a Mr. Van Wijk.
4.4 WhoIs details for the Domain Name suggest that it was first registered by a third party in March 2003. In 2006 the Domain Name was acquired from that third party (or its successor in ownership) and registered in the name of Fabian Klose before being transferred into the name of Steltix Nederland. The website operating from the Domain Name was jointly used by Steltix Nederland and the Complainant.
4.5 On August 29, 2006 the word AXELION was registered as a Benelux trade mark with Registration No. 0810825 in classes 9, 35 and 42. It is currently owned by Steltix Suisse SARL (“Steltix Suisse”), another company ultimately controlled by Mr Van Wijk. Steltix Suisse is also the owner of Madrid International Registration No. 923223 for the word AXELION in classes 9, 35 and 42, which designates and has proceeded to registration in Switzerland.
4.6 In early 2007 the arrangements between Steltix Nederland and the Complainant came to an end. It was because these arrangements had come to an end that Steltix Nederland changed its name from Axelion Nederland B.V. to its current form.
4.7 The Complainant commenced proceedings in the German courts against Steltix Nederland in December 2007. Negotiations subsequently took place between the Complainant and Steltix Nederland in which Stelix Nederland offered to settle the proceedings on terms that would involve the transfer of the Domain Name to the Complainant in return for a payment of €10,000. That offer was rejected by the Complainant.
4.8 At some point thereafter the Domain Name was transferred into the name of the Respondent. The Respondent is an attorney in the United States law firm of Schunk & Dunn, LLC. The question of the relationship between the Respondent and Steltix Nederland is something that is discussed in greater detail later on in this decision.
4.9 As at the date of the commencement of these proceedings the Domain Name resolved to a blank page on the Internet. This remains the case as at the date of this decision.
4.10 On November 12, 2008 the Center sent an email to the Complainant's lawyer seeking further information about the court proceedings commenced by the Complainant in the German courts. The Complainant's lawyer sent an email in reply later that day in which they stated:
“The court proceeding is finished, as already stated in the complaint and proven by annex no 6. Anyway the proceedings was not about the ownership of the domain, but about abuse of trademark rights and copyrights.”
5.1 The Complainant refers to its Community Trade Mark, which it claims is identical to the Domain Name.
5.2 On the question of rights or legitimate interests, the Complainant contends that the Respondent has no rights in the name “Axelion” and notes that the Domain Name is not being used. It suggests that the Respondent may not exist and claims that the fact that the Respondent's first name is not given in the WhoIs record for the Domain Name is “an indication that something is trying to be concealed”.
5.3 On the question of bad faith, the Complainant gives a history of its dealings with Steltix Nederland, which it describes as its “Dutch partner”. It claims that there was an agreement that the Domain Name be transferred to the Complainant, but that contrary to that agreement the Domain Name was transferred to Steltix Nederland. It also claims that when the relationship between the Complainant and Steltix Nederland came to an end, Steltix Nederland started to offer services to the Complainant's clients in Germany under the AXELION mark. In particular, it contends that the Domain Name was used for a website that gave the impression to the Complainant's clients that they were dealing with the Complainant, when in fact they were dealing with Steltix Nederland.
5.4 The Complainant makes reference to its German lawsuit against Steltix Nederland. It contends that during the legal proceedings Steltix Nederland offered to sell the domain name to the Complainant for €10,000.
5.5 The Complainant asserts that Steltix Nederland “finally acknowledged” the Complainant's claim in a letter dated October 6, 2008. What exactly is meant by the word “acknowledged” is not clear, but given the content of the Complainant's email of November 12, 2008 (see paragraph 4.9 above) it is possible that the Complainant contends that Steltix Nederland made some form of formal concession in that letter. Unfortunately, since the letter is in German and no English translation has been provided as might be expected given that English is the language of the relevant registration agreement and thus of the instant proceedings, this is far from certain.
5.6 Finally, the Complainant contends that “at almost the same time” as Steltix Nederland's letter of October 6, 2008 the Domain Name was transferred into the name of the Respondent.
5.7 The Respondent claims that it has been given a mandate and power of attorney to represent Steltix Nederland and Steltix Suisse. A copy of that power of attorney is attached and is dated December 1, 2008. The Respondent claims that he is authorized to represent the legal and commercial interests of each of these companies and all rights regarding the Domain Name and that it was “for this purpose” that the Domain Name was transferred to the Respondent.
5.8 The Respondent further contends that the other legal proceedings between the Complainant and Steltix Nederland are still pending.
5.9 The Respondent accepts that the Domain Name is identical to the Complainant's Community Trade Mark. However, reference is made to the AXELION marks currently registered by Steltix Suisse. The Respondent claims that Steltix Suisse's Benelux trade mark “was registered by the legal predecessors of Steltix Nederland”. The Respondent claims as a consequence that “Mr. Van Wijk” has “older” trade mark rights than the Complainant.
5.10 The Respondent then proceeds to give a history of the dealings between the Complainant and Steltix Nederland. He claims that the Domain Name was registered by Steltix Nederland as part of its “collaboration” with the Complainant, and that there was “no agreements about the detention of the [D]omain [N]ame between the companies”. He maintains that Steltix Nederland used the AXELION “brand” in Belgium and the Netherlands, whilst the Complainant used that brand in Germany and Austria. He also claims that Steltix Suisse was founded in November 2006 with a view to further expanding the business “in Europe”.
5.11 The Respondent contends that in 2007 the Complainant started to get into financial trouble and stopped paying monies that were due to Steltix Netherland under the collaboration agreement.
5.12 The Respondent accepts that Steltix Nederland offered to sell the Domain Name to the Complainant for €10,000 but this was said to be part of a general settlement offer that would involve the rerouting of certain emails. He claims that the Complainant rejected that settlement offer as it wanted the Domain Name for free. The Respondent contends that the transfer of the Domain Name without payment was unacceptable to Steltix Nederland, who “wants to recoup the investment made to receive the [D]omain [N]ame”.
5.13 The Respondent also states that Steltix Suisse's International mark is subject to nullity proceedings commenced by “Accelion Corporate Headquarters”. This is said to have lead “Mr. Van Wijk to the insight that besides Accelion, there are worldwide more companies who could have an interest in the name ‘Axelion', and who could be interested in the trademarks owned by Steltix Suisse SARL and the [Domain Name]”. Apparently “Mr Van Wijk wants to start negotiations with Accelion about his trademarks and domain name”.
5.14 According to the Respondent, the reason why the Domain Name was transferred into the Respondent's name was because Steltix Nederland “feared a prejudgment attachment on the [D]omain [N]ame” and because Steltix Suisse and Steltix Nederland wanted “to focus on their primary business”.
5.15 On the question of rights and legitimate interests, the Respondent contends that the mandate and power of attorney that he has been given in relation to the Domain Name, in the circumstances of this case give him a right or legitimate interest.
5.16 On the question of bad faith registration and use, reference is made to the circumstances in which Steltix Nederland acquired the Domain Name. The Respondent accepts that when Steltix Nederland adopted its current name, it rerouted emails and website traffic to its <stelix.com> domain name, but claims that this was legitimate given its previous use of the name. Further, he claims that it is legitimate given the factual history of this matter for it to sell the Domain Name.
5.17 The Respondent also contends that these proceedings involve a misuse of the Policy since these proceedings are said to be merely ancillary to a much larger and complex dispute between the Complainant and Steltix Nederland. Reference is made to Jason Crouch and Virginia McNeill v. Clement Stein, WIPO Case No. D2005-1201 and Clinomics Biosciences, Inc. v. Simplicity Software, Inc., WIPO Case No. D2001-0823, which are said to be authority for the proposition that in the circumstances of this case the Panel should terminate the administrative proceedings under paragraph 18(a) of the Rules.
5.18 The proceedings are said to be an attempt to frustrate the course of the ongoing court proceedings. Further, the Respondent claims that the majority shareholder of the Complainant has registered the domain name <stelix.de> in bad faith when it “accidentally came available on the market”.
6.1 The Complainant must make out its case in accordance with the requirements set out in paragraph 4(a) of the Policy. Namely the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.2 The Panel will address each of these issues in turn. However, before doing so it is necessary to address the Respondent's contentions that these proceedings are inappropriate given that they form part of a larger dispute between the Complainant and Steltix Nederland and that the Panel should terminate these proceedings under paragraph 18(a) of the Rules in light of ongoing proceedings in the German courts.
6.3 The Respondent contends that there are already court proceedings ongoing in relation to the Domain Name and that the Panel should terminate these proceedings under paragraph 18(a) of the Rules. Paragraph 18(a) provides:
“In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.”
6.4 As paragraph 18(a) makes clear, the framers of the Rules were well aware of the possibility that either before or after the commencement of proceedings under the Policy, one or other of the parties to those proceedings might also commence other proceedings in the courts in relation to the domain name in issue. Rather than set out a rigid procedure as to what should occur, the Rules provide that the legal proceedings should be brought to the attention of the panel (see Rules 3(b)(xi) and 18(b)) and then grants discretion to the Panel to either terminate, stay or continue the proceedings under the Policy depending upon the individual circumstances of the case.
6.5 The Respondent is correct when he states that the fact that Jason Crouch, supra provides some authority for the proposition that it is inappropriate to use the Policy to carve out and resolve a “relatively minor” domain name dispute which is “interconnected” with a bigger dispute. In Jason Crouch there were parallel proceedings in the California courts in which the respondent had brought claims against the complainant of misappropriation of proprietary information and trade secrets, breach of contract, breach of the covenant of good faith and fair dealing, tortious interference with prospective economic opportunity, and breach of fiduciary duty. The complainant had then brought a counter claim alleging that the domain name in issue in Jason Crouch had been used in an improper fashion. Given these facts, the panel held that the complaint should be dismissed.
6.6 However, there are cases under the Policy where notwithstanding the existence of proceedings elsewhere the panel the proceeded to address the substance of the complaint. Examples include Western Florida Lighting, Inc. v. Samantha Ramirez, SamiRami, SESCO Lighting, Inc., and Cynthia Parker-Chillemi, WIPO Case No. D2008-1122; Family Watchdog LLC v. Lester Schweiss, WIPO Case No. D2008-0183; Paul McMann v. J McEachern,WIPO Case No. D2007-1597.
6.7 Therefore, this Panel believes that it would be inappropriate to jump too quickly to the conclusion that proceedings under the Policy should be dismissed where there is a claim of a broader and more complex dispute between the parties. A somewhat more careful and considered analysis is required in each case. So, for example, in IFA Hotels & Resorts FZE v. Jaffar Sharif, WIPO Case No. D2008-0895 this Panel stated:
“... the Panel believes that the correct approach is to examine each of the requisite elements of the Policy in turn. In the context of that examination it may become apparent that there is a substantive factual dispute between the parties that cannot be resolved under the Policy and/or is being addressed and/or can be better determined in another forum. Only at this stage does the question raise its head whether the Panel should decline to consider that issue further.”
6.8 This Panel also adopted a similar approach in Audiotech Systems Ltd. v. Videotech Systems Ltd., WIPO Case No. D2008-0431.
6.9 The Clinomics Biosciences decision cited supra by the Respondent, does not take matters much further. The thrust of the decision in that case was that it was inappropriate in proceedings under the Policy to form a view as to a broader contractual dispute between the parties. This may well be correct, but it does not follow from this that the mere existence of a contractual dispute between the parties (even if it involves the domain name in issue) requires that proceedings under the Policy be terminated. Again it will all depend on the exact facts of each case.
6.10 There are also a number of other factors in this case that make the Panel wary of using the alleged dispute between the parties as a reason to avoid considering the substance of the Complaint.
6.11 First, the nature and extent of the dispute between the parties in the German courts and whether that dispute remains ongoing are unclear. In the Complaint, the nature of the claim made in the German courts is not explained. In its Response the Respondent claims that those proceedings remain pending; he claims that the Complainant is making some sort of contractual claim in relation to the Domain Name and this is said to form part of some larger dispute. However, no further evidence is offered in this respect and the nature of the wider dispute is not explained. The Complainant claimed in its subsequent email dated November 12, 2008 that these proceedings were at an end and that the proceedings were not about the ownership of the domain name, but about “abuse of trademark rights and copyrights”. There is a reference back to a letter of October 6, 2008, but as has already been explained, an English translation of this letter which is in German has not been provided to the Panel.
6.12 In short, there is insufficient information before the Panel for it to draw any real conclusions as to the nature of the other legal proceedings, whether or not those proceedings are ongoing. In the circumstances, it is very difficult for the Panel to sensibly assess whether or not the facts of this case are such that it would be appropriate to exercise its discretion under paragraph 18 of the Rules in such a way as to bring these proceedings to an end.
6.13 Second, there is the fact that, as far as the Panel is aware, the Respondent is not a party to any proceedings in relation to the Domain Name. The Respondent at times suggests that it may be acting on the instruction and under the authority of a party to those proceedings (an issue to which the Panel will return in detail later on in this decision) but it is not at all clear that he will be bound by any decision of the German courts in relation to the Domain Name. Indeed, the Respondent seems to contend that the transfer of the Domain Name into his hands was done in order to take the Domain Name out of the reach of the German courts and to prevent the Complainant from obtaining “a prejudgment attachment”. It would seem inequitable for a panel to find that court proceedings in relation to a domain name prevented that panel from considering the substance of proceedings under the Policy, if those court proceedings were not binding on the domain name registrant.
6.14 This aspect of this case is relatively straight forward. The Complainant possesses a registered trade mark that comprises the word “Axelion”. The Domain Name is simply the word “Axelion” combined with the “.com” TLD. In the circumstances, the Domain Name is essentially identical to a trade mark in which the Complainant has rights. This is sufficient for the purposes of paragraph 4(a)(i) of the Policy and the Complainant has made out this aspect of the case.
6.15 It does not matter for the purposes of paragraph 4(a)(i) of the Policy that someone else, even the Respondent, has trade mark rights in the term “Axelion”, nor that those other trade mark rights may predate those of the Complainant. The comparison undertaken under paragraph 4(a)(i) is simply between the domain name in issue and the mark or marks relied upon by a complainant. A panel will not conduct analysis as to who has a better claim to a term embodied in those marks for purposes of paragraph 4(a)(i) of the Policy.
6.16 The fact that someone else has rights in the name encompassed by a complainant's trade mark may be highly relevant to the questions whether a respondent has rights or legitimate interests in the domain name or the issue of bad faith. However, it is not relevant to the assessment under paragraph 4(a)(i).
6.17 If as at the date that these proceedings were commenced (i) the Domain Name had continued to be held by Steltix Nederland; (ii) Steltix Nederland had continued to be the registered owner of the registered Benelux trade mark Registration No. 0810825; and (iii) Steltix Nederland had continued to use the term Axelion in connection with its business; then there is little doubt that Steltix Nederland would have had rights or legitimate interests for the purposes of the Policy that would have likely defeated the Complainant's claim under paragraph 4(a)(ii) of the Policy.
6.18 The fact that a respondent possesses trade mark rights in a term embodied in a domain name does not necessarily mean that the respondent has a right or legitimate interest in that domain name. If it is clear that the trade mark registration is simply a device to bolster a bad faith registration, then that registration will not provide a right or legitimate interest (see the analysis of prior decisions under the Policy on this issue in BECA Inc. v. CanAm Health Source, Inc., WIPO Case No. D2004-0298). However, it is clear that there is no such suggestion in this case. Steltix Nederland both registered and used the AXELION mark in the Benelux area in connection with a legitimate business operating pursuant to some form of cooperation arrangement with the Complainant.
6.19 There is also no suggestion on the part of the Complainant that Steltix Nederland would not be entitled to continue to hold the Benelux mark at the date of the commencement of these proceedings under the Policy. Even if the Complainant were to contend that there were some contractual reason why this is not the case, this is unlikely to be something that this Panel could sensibly decide in the Complainant's favour in these proceedings.
6.20 In this case, Steltix Nederland no longer holds the relevant Benelux trade mark and it has been transferred to Steltix Suisse. It is unclear to what extent there is any formal arrangement in place between Steltix Suisse and Steltix Nederland as to how that mark may be used by Steltix Nederland in the Benelux territory and to what extent Steltix Suisse is entitled to continue to use a domain name that incorporates the term AXELION. However, again the Panel does not consider this to be significant. Both companies belong to the same group and are ultimately controlled by the same individual. There is no suggestion that Steltix Suisse has not consented, or would not consent, to Steltix Nederland use of the AXELION mark. In a case such as this, absent some express unrebutted evidence that one entity in a corporate group specifically lacked rights or legitimate interests in a mark, the answer is unlikely to turn on the question of exactly which company in a corporate group holds the relevant trade mark rights.
6.21 The Panel also does not find the fact that Steltix Nederland has ceased to use the AXELION mark is significant in this case. In the opinion of the Panel the question of rights or legitimate interests must be assessed at the date that proceedings are commenced. In some cases the fact that a registrant has ceased to use a domain name may be significant so far as the assessment of rights or legitimate interests is concerned. However, insofar as the registrant continues to hold registered trade mark rights at the date that proceedings are commenced, then it is likely that some right or legitimate interest will remain.2
6.22 Therefore, if Steltix Nederland or even Steltix Suisse were the Respondent in this case, it is likely that it would have rights or legitimate interests for the purposes of the Policy and the Complainant's claim would fail. However, the difficulty here is that neither Steltix Suisse nor Steltix Nederland are the Respondent in this case. The Respondent is Mr. Schunk. It is therefore prima facie by reference to Mr. Schunk that the question of rights or legitimate interests is to be judged. The Panel does not believe that Mr. Schunk personally has such an interest. He has never used the Domain Name and his only interest in holding the Domain Name is for the purpose of selling it to others. The Respondent appears to assert that even though Steltix Nederland no longer wants to use the name, there will be other companies or entities that might legitimately want to use the “Axelion” name, but for reasons that are explained in greater detail under the heading of “bad faith” below, the Panel is unconvinced by that assertion. This is not a domain name that, so far as the Panel is aware, comprises an ordinary word without trade mark significance in any language, and there is no evidence that any other entity is using or is likely to use the term as a trade mark.
6.23 The Respondent refers to his power of attorney given to him by Steltix Suisse and Steltix Nederland. However, the first thing to notice about this attorney is that it post dates the commencement of these proceedings. Further, even had this power of attorney been granted prior the commencement of these proceedings, the Panel is unconvinced that it would have provided a right or legitimate interest to the Respondent. The Panel does not believe that a power of attorney alone provides the sort of right or legitimate interest contemplated under the Policy in relation to a domain name. What a power of attorney does is give someone the power to act on behalf of and in the stead of another person. The grantee's acts by reason of that power essentially become the acts of the grantor. However, it says nothing about whether the grantee has rights of his own.
6.24 However, the existence of that power of attorney does lead on to what in the opinion of the Panel, is essentially the key question in this case. That is, should it be said that the Respondent is not really the Respondent here at all and that the true Respondent in this case is Steltix Suisse or Steltix Nederland? In other words, should the Panel disregard who is the prima facie respondent in this case and judge the question of rights or legitimate interests (as well as bad faith) by reference to some other entity. This is a question that the Panel will admit to having found difficult to decide. However, ultimately it has reached the conclusion that it should not disregard the contents of the Registrar's verification to the Center, or indeed the Registrar's publicly-available WhoIs database. The reasons for this are as follows.
6.25 First, this is not quite how the Respondent has decided to put its case. He never quite claims that he essentially has a right or legitimate interest in the Domain Name and should be treated as if he is Steltix Suisse or Steltix Nederland. He instead claims something subtly different i.e., he has been given the right to deal in marks and domain names that incorporate the AXELION brand and that gives him a right or legitimate interest. For the reasons already given, this of itself is not enough.
6.26 The Panel accepts that there are statements in the Response that might suggest that the Domain Name really belongs to Steltix Nederland. For example, at one point he talks about Steltix Nederland having the right to sell the Domain Name and at another that Mr. Van Wijk wants to start negotiations in relation the Domain Name's sale. However, the fact remains that the Respondent's case in this respect is at best ambiguous. Perhaps the position would have been clearer had the Respondent disclosed in fuller terms the exact arrangement he has reached with Steltix Nederland and/or Mr. Van Wijk, in relation to the Domain Name (for example did those arrangements make it clear that the Respondent had no proprietary interest in the Domain Name and, if so how was the Respondent was to be paid for any services provided), but there is no such disclosure in this case.
6.27 Second, the argument put forward by the Respondent as to why the Domain Name was transferred into the name of the Respondent is hard to follow and far from convincing. If the Respondent has no personal interest in the Domain Name and is simply acting as the agent of Steltix Suisse or Steltix Nederland, it is not at all clear why there was any transfer at all. The Respondent at one point asserts:
“Respondent is authorised to represent the legal [and] commercial interests of [Steltix Suisse and Steltix Nederland] in all matters concerning intellectual property and all other rights regarding the [D]omain [N]ame axelion.com, which for this purpose was transferred to the Respondent.”
6.28 What is not explained is why it was necessary to transfer the Domain Name into the Respondent's name for this purpose. Why can the Respondent not use his power of attorney to deal with the Domain Name even if the Domain Name remained registered in the name of Steltix Suisse or Steltix Nederland? Isn't that the whole purpose of a power of attorney? It is also interesting to note that the Respondent claims to be able to sell the Domain Name as part of a package that includes Steltix Suisse's AXELION marks, even though these remain in the name of Steltix Suisse. Why then is the position with the Domain Name any different?
6.29 Perhaps the Panel is reading too much into the exact way in which the Respondent puts his case and, although not fully explained, there are legitimate reasons of practicality and convenience that would explain away the Domain Name transfer. The Panel has an uneasy feeling that it is not being told the whole story, but perhaps the Respondent should be given the benefit of the doubt on the basis that it is ultimately the Complainant that bears the burden of proof under the Policy.
6.30 However, there is a third factor that appears to the Panel to weigh decisively in the Complainant's favour. That is the Respondent's claim (already described under the heading of “Ongoing Proceedings” above) that the Domain Name was transferred to the Respondent in order to take the Domain Name out of the reach of the German courts and to stop the Complainant from obtain “a prejudgment attachment”. To hold that the Respondent could be treated as if he were Steltix Suisse or Steltix Nederland would appear to be inconsistent with the Respondent's own case so far as the German litigation is concerned. Either the Respondent is simply a front man for Steltix Nederland and the transfer to him was a sham to mislead, or frustrate the legitimate actions of, the Complainant and the German courts, or alternatively he has some interest in the Domain Name that would explain that transfer and provide a legitimate defence to the German proceedings. He cannot have it both ways. And if the Respondent is to be given the benefit of the doubt in relation to this issue, surely that should mean that the Respondent is assumed to have acted openly, honestly and properly in the context of the German proceedings.
6.31 Also to decide this case on the basis that it is the Complainant that bears the burden of proof under the Policy is far too simplistic. The Complainant certainly starts by bearing the overall burden of proof, but that burden may shift on different specific questions that arise in the proceedings depending upon what evidence is before the Panel and what arguments are made by the parties. What appears in the WhoIs database in relation to a domain name of itself constitutes prima facie evidence of who is the true registrant of the domain name.3 So, for example, in Smith & Nephew plc v. Wesley Perkins, Smith and Nephew Trading,WIPO Case No. D2008-1029 this Panel held as follows:
“... it seems to the Panel that in any assessment of these questions [i.e., in respect of which persons or entities should the question of rights or legitimate interests and bad faith be assessed] the starting point must be the details that appear on the publicly available WhoIs register. Ordinarily, it will be for the entity that claims that the register does not reflect reality to show that this is the case.”
6.32 In short, even if the Respondent is trying to claim that the WhoIs database does not record the true owner of the Domain Name, it has ultimately failed to persuade the Panel that someone other than the Respondent should be treated as the true or real respondent for the purposes of the Policy.
6.33 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
6.34 To succeed under the Policy the Complainant must show that the Domain Name was both registered and subsequently used in bad faith. This in turn raises the question of what should be treated as the date of registration for the purposes of the Policy. Given the Panel's finding that it is the Respondent (rather than Steltix Suisse or Steltix Nederland) who should be treated as the registrant for these purposes, it follows that the relevant date of registration in this case is when the Domain Name was transferred into the name of the Respondent. Indeed, there is an argument that even if Steltix Nederland were the true respondent for the purposes of the Policy, it is the date of the transfer of the Domain Name to the Respondent that remains the date for that assessment. According to this argument the transfer of the Domain Name into the name of the Respondent still constituted a new registration for the purposes of the Policy, regardless of who it is that actually controlled the Domain Name.
6.35 As has already been explained, when the transfer of the Domain Name to the Respondent took place is not entirely clear, but the Complainant contends that it was around early October 2008, and this does not appear to be disputed by the Respondent. Whatever the exact date, it does seem clear that at the date of transfer to the Respondent, Steltix Suisse nor Steltix Nederland had ceased for some time to have any continuing interest in the use of the Domain Name for their business. They wanted to dispose of the Domain Name and it was transferred into the name of the Respondent with the sale of the Domain Name either to the Complainant or to some third party in mind.
6.36 The Respondent contends that there are other entities that might legitimately use the Domain Name, but the Panel is unconvinced that this is the case. “Axelion” appears to be a name that has no generic or descriptive significance in any language. Following Steltix Suisse and Steltix Nederland's decision to stop using the AXELION mark, it would appear that the business with which the mark was most likely to be associated was that of the Complainant. The Panel accepts it is not impossible that some entity might want to adopt this name in the Benelux or Switzerland and therefore might want to purchase the Domain Name and its associated marks. But there is no real evidence that this has ever been or is likely to be a realistic possibility. On the Respondent's own case, he wants to maximise the value obtained by the sale of the Domain Name, and it seems far more likely that insofar as the Domain Name and marks have any substantive value, that value arises out of the fact that the Complainant has an interest in AXELION mark by reason of its past and current use of that name. At the time of transfer the Respondent must have been well aware of that fact.
6.37 The Respondent does claim that an American company called “Accelion Corporate Headquarters” has started an opposition procedure against one of Steltix Suisse's AXELION marks. This is said to have led:
“to the insight that besides Accelion, there are worldwide more companies who could have an interest in the name ‘Axelion', and who could be interest in the trade marks owned but [Steltix Suisse] and the [D]omain [N]ame <axelion.com>.
He also claims that “Mr Van Wijk wants to start negotiations with Accelion about his trademarks and domain name”.
6.38 When these proceedings began and when Mr. Van Wijk had this insight is not explained (not an insignificant point given that the Domain Name was only very recently transferred to the Respondent). However, regardless of when this is said to have occurred, the Panel is unconvinced that the fact that a third party has objected to the registration of one of the Steltix Suisse marks because of similarities with its own name is something that would make the AXELION brand particularly attractive for someone else to adopt. It appears that exactly the contrary would be the case. The opposition certainly does not constitute compelling evidence that there are entities unconnected with the Complainant who might be legitimately interested in the use of the “Axelion” name for their businesses.
6.39 Therefore, on balance, the Panel has reached the conclusion that at the time that the Domain Name was transferred into the name of the Respondent, this was done primarily with the intention of selling the Domain Name either to the Complainant or someone who would be interest in taking advantage of its association with the Complainant. Paragraph 4(b)(i) of the Policy gives as an example of bad faith registration and use:
“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.”
6.40 The Panel concludes on the basis of the evidence before it that these circumstances exist in this case.
6.41 It might be said that had the Domain Name not been transferred into the name of the Respondent, the outcome of this case might have been different. That may well be so. The Domain Name was initially registered by Steltix Nederland in 2006 and it is highly unlikely that the registration could have been considered abusive at that time. Since the Policy requires both abusive registration and use, then any claim by the Complainant in those circumstances is likely to have failed regardless of the subsequent use to which the Domain Name may have been put by Steltix Nederland. However, these are not the facts of this case. Steltix Nederland decided to transfer the Domain Name to another party and this required the question of bad faith registration to be considered anew at the date of that transfer and from the point of view of the new registrant.
6.42 This might well elicit the loud complaint that in a case such as this a registrant is effectively prevented from realising the full value of a domain name that it has legitimately acquired and legitimately used as part of its business. Would not the domain name be unsellable or at least of much less value since any purchaser would be concerned that he might subsequently lose the domain name as a result of proceedings under the Policy by the other party to the previous cooperation arrangements?
6.43 However, the Panel is not convinced that this is a complaint that stands up to scrutiny. Had Steltix Nederland continued to use the AXELION mark for part of its business and then sold that business to a third party, complete with the domain name and associated marks, the person purchasing the Domain Name is unlikely to have acquired it in bad faith. Further, if Steltix Nederland had decided even after abandoning that name for its business to hold onto the Domain Name and to demand payment from the Complainant in return for its transfer then (from the stand point of the Policy alone) again any complaint is likely to have failed. Steltix Nederland is entitled under the Policy to extract such sums as it can in return for such transfer, if the parties at the time of registration failed to make express provision for ownership of Domain Name should the cooperation agreement come to an end. However, it is quite another matter to seek to extract value from the Domain Name because of the possibility that the Domain Name might be used by a third party to take advantage of its associations with the Complainant. If the market value of the Domain Name is limited because the possibilities for legitimate use by a third party are also limited (and this in turn impacts on the price that Steltix Nederland can expect to obtain from the Complainant) then in the opinion of the Panel that is no bad thing.
6.44 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.
6.45 Before leaving this issue the Panel would make two brief further points. First, the Panel has taken no notice of the Complainant's contention that some adverse inference is to be drawn against the Respondent because his first name was not spelt out in full in the WhoIs details for the Domain Name. There is no suggestion that the Respondent has attempted to hide his identity or interest in the Domain Name.4 Second, the Panel notes the Respondent's claim that the Complainant's majority shareholder has registered the domain name <steltix.de>. The Panel does not form any view on this issue save to say that if this were true, this would be likely to reflect badly on the Complainant. The fact that you consider a domain name to infringe your rights, does not give you an excuse to register a domain name that infringes the rights of others. However, ultimately the Panel does not consider this to be relevant to the issue of whether the Respondent's registration of the Domain Name is abusive.
7.1 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, <axelion.com> be transferred to the Complainant.
Matthew S. Harris
Dated: December 18, 2008
1 It also suggested that the Complainant's request could “lead to unauthorized influence of the Panel”. The basis for that assertion seemed to be that since the request may have been read by the Panel before the Complaint and the Response are fully assessed, “the Complaint and Response are being read with the Panel already bearing in mind that the Complainant has a supplemental statement to make”. It therefore requested that the Center “inform the Panel not to bring any attention to the request nor to grant the request”. With all due respect to the Respondent, these comments misunderstand both the Center's email and the relationship between the Center and the Panel.
The Center's email did nothing more than bring to the Complainant's attention two relevant UDRP cases that discussed when and in what circumstances a panel will consider a supplemental request. Those cases when considered properly make it clear that the circumstances in which such supplemental submissions will be taken into account are limited. It expressed no view on whether in the circumstances of this case such a submission would be accepted. The suggestion that because the Panel knew that the Complainant might want to put in a further submission would somehow influence the Panel in its reading of the submissions in this case is misguided. Lastly once a panel has been appointed, paragraph 10 of the Rules makes it clear that it is that panel that ultimately bears responsibility for the conduct of those proceedings.
2 Of course, lack of use may in turn result in the trade mark becoming open to attack. But as far as the Panel is aware, no such issue arises in this case.
3 The matter is somewhat less straight forward where the registrar details disclose a “WhoIs privacy service”, but that issue does not arise in this case.
4 The Panel notes that the address for the registrant contains an error, referring to “South Pacific Road”, rather than the “South Public Road” address given by the Respondent. However, there is nothing to suggest that this of any real significance.
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