WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Meeza QSTP-LLC v. Torsten Frank / medisite Systemhaus GmbH

Case No. D2009-0943

1. The Parties

The Complainant is Meeza QSTP-LLC, of Doha, Qatar, represented by LALIVE, Switzerland.

The Respondent is Torsten Frank / medisite Systemhaus GmbH, of Hanover, Germany, represented by Bardehle Pagenberg Dost Altenburg Geissler, Germany.

2. The Domain Name and Registrar

The disputed domain name, <meeza.com> (the “Domain Name”), is registered with PSI-USA, Inc. dba Domain Robot (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2009. On July 14, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 14, 2009, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 July 16, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response August 5, 2009. The Response was filed with the Center August 4, 2009.

The Center appointed Tony Willoughby, Jeffrey M. Samuels and Richard Hill as panelists in this matter on September 4, 2009. The Panel finds that it was properly constituted. Each member of 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.

There is (or was) an issue between the parties as to the correct identity of the Respondent. Is it Mr Torsten Frank or his company medisite Systemhaus GmbH, both being named in the Registrar's database record for the Domain Name? Nothing of any substance turns on the distinction and the Panel treats them as one.

On August 5, 2009 (within the time for allocated for the filing of the Response) the Respondent lodged with the Center a supplemental submission contending that the Mutual Jurisdiction selected by the Complainant, namely the location of the principal office of the Registrar, was not an option open to the Complainant because in the Respondent's registration agreement the Respondent did not submit to that jurisdiction. In support of that contention the Respondent produced an agreement with a third party worded in German, which the Respondent claimed to be the registration agreement for the Domain Name. The Respondent claims in addition that because the registration agreement is in the German language the language of this administrative proceeding should be German. In light of the result of this dispute (see below), it is unnecessary for the Panel to resolve this issue; however, it is noteworthy that the Respondent's contentions in this regard contradict the Registrar's verification response to the Center and are based on a document, which is not an agreement with the Registrar.

The Response was worded in English and was clearly drafted by someone with a good command of the language and all the Respondent's submissions have been in English. For the record, therefore, the Panel directs that the language of this administrative proceeding is English.

On September 7, 2009 the Complainant lodged with the Center a supplemental submission responding to certain matters raised in the Response. The Panel decided to accept it insofar as it responded to the Respondent's allegation of Reverse Domain Name Hijacking.

On September 8, 2009 the Respondent lodged with the Center a further submission in response to the Complainant's latest submission. The Panel has read it, but it contains nothing of any assistance to the Panel.

4. Factual Background

The Respondent is a service provider in the field of software engineering and software consulting. It commenced business in 2000. The Complainant is a service provider in the field of information technology. It commenced business in 2008.

The Domain Name was registered on January 16, 2004.

On August 19, 2007 the Complainant's Chief Executive Officer emailed the Respondent offering to purchase the Domain Name and asking the Respondent for a price.

On June 24, 2008 the Complainant telephoned the Respondent seeking transfer of the Domain Name and followed the call up with an email on the same day reading:

“As mentioned to you over the phone a few minutes ago, we are a small start-up company in Doha, Qatar and we are interested in the domain: <meeza.com>. Upon investigation, we have seen that this domain is registered to you/your company and we seek approval to purchase this domain from you. Many thanks for your consideration and time. Please advise.”

The Respondent did not respond to this email.

On November 2, 2008 the Complainant applied for registration of the mark MEEZA in class 42 in Qatar. The application is numbered 54567 and appears to be a device mark in which the word “MEEZA” is a prominent element.

On November 26, 2008 the Complainant issued a press release commencing with the following passage:

“MEEZA has announced today the commencement of its operations in Qatar. MEEZA which means “advantage” in Arabic is a new privately-held joint venture that is focused on service excellence delivering a full suite of Managed IT Services and Solutions to the market.”

On November 28, 2008 the Respondent applied for registration in Germany of the trade mark MEEZA in classes 35, 42 and 44. The mark entered the register on April 22, 2009.

On February 6, 2009 the Complainant applied for registration of the word mark MEEZA in classes 9, 35 and 42 in Switzerland and that application has now matured into a registration.

5. Parties' Contentions

A. Complainant

The Complainant contends that the Domain Name is identical or confusingly similar to its trade mark MEEZA. It refers to its Qatari application and its Swiss registration referred to in the previous section.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant asserts that it has not authorized the Respondent to use its registered trade mark. It states that to the best of its knowledge the Respondent is not commonly known by the Domain Name. Moreover, the Respondent has no registered rights in the form of an international registration and the German application/registration should be ignored, because the filing of the application followed the Complainant's approach to the Respondent in respect of the Domain Name.

The Complainant contends that the Domain Name was registered and is being used in bad faith because: (a) the Domain Name has been inactive since its creation on 16 January, 2004; (b) the Respondent informed the Complainant on June 24, 2008 in a telephone call that he did not intend making any active use of the Domain Name in the future and (c) the Respondent holds rights to other domain names which have either never been activated or “have been ‘parked' for commercial use”. In support the Complainant cites a number of previous UDRP decisions which are said to support the proposition that non-use or passive use of a domain name may be evidence of bad faith registration and use for the purposes of paragraph 4(a)(iii) of the Policy.

B. Respondent

The Respondent denies the Complainant's allegations under paragraph 4(a)(ii) and 4(a)(iii) of the Policy and accuses the Complainant of reverse domain name hijacking.

The substance of the Respondent's case is that the Respondent's registration of the Domain Name preceded the Complainant's arrival on the scene by several years; accordingly, the Respondent cannot have had the non-existent Complainant in mind when registering the Domain Name and the Complainant must therefore fail.

The Respondent explains how he adopted the Domain Name and explains why there has been a delay in developing a website for the Domain Name. He disputes that the Domain Name has been inactive. He asserts that it has been in use for email traffic.

The Respondent refers to his German trade mark registration, which he says he applied for well in advance of any notice of the dispute.

The Respondent denies that the Domain Name was registered and is being used in bad faith. The Respondent points to the fact that the registration occurred well in advance of the Complainant coming into existence and reiterates that in any event there has been no passive holding of the Domain Name.

The Respondent accuses the Complainant of reverse domain name hijacking in that when the Respondent filed the Complaint it knew that the registration of the Domain name preceded the Complainant's rights by several years. The Respondent also relies upon what it characterizes as deliberate and false assertions in the Complaint.

6. Discussion and Findings

A. General

According to paragraph 4(a) of the Policy, 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; and

(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and

(iii) The Domain Name has been registered and is being used in bad faith.

If the Complaint fails, the Panel has to have regard to paragraph 15(e) of the Rules and in particular the following sentence namely:

“If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at reverse domain name hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its Decision that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”

Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as meaning “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.”

B. Identical or Confusingly Similar

The Respondent does not dispute that the Domain Name is identical or confusingly similar to the Complainant's Swiss trade mark registration and the Panel so finds.

C. Rights or Legitimate Interests

In light of the Panel's finding under the next head, it is unnecessary for the Panel to address this issue.

D. Registered and Used in Bad Faith

For many panels (including the members of this Panel) in proceedings under the Policy a complaint cannot succeed unless the complainant can prove on balance that the domain name in issue was both registered in bad faith and is being used in bad faith, as provided in paragraph 4(a)(iii) of the Policy. Moreover, for a domain name to have been registered in bad faith, the respondent must have had the complainant in mind at time of registration (or acquisition) of the domain name.

In e-Duction, Inc. v. John Zuccarini (The Cupcak-Party/Cupcake Movies), WIPO Case No. D2000-1369 the panel stated:

“In the ordinary case, a business adopting a new mark in today's world must take the Internet as it finds it. If someone else has already registered a domain name identical or confusingly similar to the proposed new mark, that domain name will be unavailable to the business unless it negotiates a transfer. This is true even if the registrant is in other respects behaving badly, as Respondent is in this case.

On this record, the Panel finds that Respondent was not aware of Complainant's not-yet extant mark at the time he registered the domain name. Accordingly, Respondent's registration of the domain name can not have been in bad faith.”

In MediaSpan Group, Inc. v. Raghavan Rajagopalan, WIPO Case No. D2005-1282 the panel observed:

“As a general rule, when a domain name is registered before any trademark rights are established, the registration of the domain name is not in bad faith since the registrant could not have contemplated the complainant's non-existent right. In certain situations, however, when the respondent is aware of the complainant and the circumstances indicate that the aim of the registration was to take advantage of potential complainant rights, bad faith can be found. See, e.g., General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Centre Online, WIPO Case No. D2003-0845.”

The Panel endorses those dicta and in this case there can be no doubt that when the Respondent registered the Domain Name, the Complainant had no trade mark rights. Indeed, the Complainant was not in existence and there is no suggestion in the evidence before the Panel that the Complainant was even in contemplation at that time. Accordingly, registration of the Domain Name cannot have been in bad faith within the meaning of paragraph 4(a)(iii) of the Policy even if any subsequent use of the Domain Name could be said to have been in bad faith.

The Panel finds that the Complainant has not succeeded in these present proceedings in proving that the Domain Name was registered in bad faith, and for that reason the Complaint must fail.

7. Reverse Domain Name Hijacking

The Respondent contends that the Complainant brought this Complaint in bad faith, knowing that the registration of the Domain Name predated the Complainant's trade mark rights by several years and that the Complaint had no prospect of success.

The Respondent also points to what it characterizes as deliberate and false assertions in the Complaint. These falsities are said to be as follows:

(a) the Complaint is directed to Mr. Torsten Frank and not the company of which he is Managing Director, medisite Systemhaus GmbH, the registrant of the Domain Name. The significance of this falsity is said to be that it enables the Complainant to argue that Mr Frank is not the entity, which has obtained trade mark rights in respect of the name, that entity being his company. The Panel does not regard this as a devious act on the part of the Complainant. The Whois record does not make it clear that it is the company and not Mr. Frank who is the registrant of the Domain Name.

(b) the Complaint identifies Mr. Frank as a mere employee of the company and does not give him his due status as the Managing Director of the company. The significance of this falsity is said to be that the Complainant seeks to characterize Mr. Frank as “not a serious professional but a simple employee and typical domain name grabber”. The Panel regards this as a preposterous allegation.

(c) the Complainant contends that the Respondent's registration of the MEEZA mark in Germany which was applied for in November 2008 was a “prompt reaction” to the exchanges between the parties in June 2008 and later. According to the Respondent this was false because in fact the Complainant's Chief Executive Officer first contacted the Respondent in August 2007. Accordingly, the Respondent's trade mark application was not a prompt reaction. The Respondent contends that the Complainant's purpose was to create the false impression that the Respondent's trade mark application was not a genuine attempt to secure trade mark protection for its business. The Panel agrees that if it was a reaction to the Complainant's approaches, it was not a prompt reaction. However, there is nothing in the evidence to suggest to the Panel that the Complainant's suspicions as to the Respondent's motives were not genuine (if misconceived) suspicions.

(d) the Complainant asserts that during the telephone conversation in June 2008 the Respondent told the Complainant that it did not intend to use the Domain Name. The Respondent denies that anything of the kind was said and asserts that in so saying the Complainant is falsely attempting to undermine the Respondent's legitimate interests in respect of the Domain Name. There is clearly a fundamental disagreement about what was said during the telephone conversation and the Panel is unable to resolve it. There may have been a misunderstanding.

(e) the fifth false assertion in the Complaint is said to be the allegation that other domain name registrations of the Respondent are “parked” for commercial use and not any genuine use by the Respondent. One of the registrations cited is said by the Respondent to have been registered for a third party and that that is obvious from the Whois database record. The Panel accepts that the allegation may be misconceived, but the Panel is not satisfied that it was an intentional false assertion as alleged.

The Panel is not persuaded that any of these alleged falsities is material to the issue as to whether or not the Complainant has been guilty of reverse domain name hijacking.

On September 7, 2009 the Complainant filed a supplemental submission addressing inter alia the allegation of reverse domain name hijacking. It sought to correct a number of matters raised in the case papers, but it did not begin to address the Respondent's primary complaint that the registration of the Domain Name predated the Complainant's existence by several years.

The Panel agrees with the Respondent that ordinarily the launching of such an obviously and fundamentally flawed complaint ought to lead to a finding of reverse domain name hijacking. However, it is a fact that some panelists would not necessarily dismiss a complaint simply on the grounds that a good faith registration of a domain name cannot constitute an abusive registration under the Policy. Some panelists have held that in certain circumstances abusive use of a domain name can ‘colour' assessment of original intent at registration, or in some cases even render a seemingly innocent registration into a deemed abusive registration within the meaning of paragraph 4(a)(iii) of the Policy. See e.g. R&M Italia SpA, Tycon Technoglass Srl v. EnQuip Technologies Group, Inc., WIPO Case No. D2007-1477, Stewart Nicoll trading as BLC Cleaning Services v. Strategy Plus, WIPO Case No. D2007-1740 and more recently Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, WIPO Case No. D2009-0786.

In other cases, for example, in Cosmos European Travel AG v. Eurotech Data Systems Hellas Ltd.,WIPO Case No. D2001-0941, the panel dismissed the bad faith allegations under paragraphs 4(b)(i), (ii) and (iii) of the Policy on the basis that the domain name in issue was acquired by the respondent without knowledge of the complainant. He nonetheless found that the complaint succeeded under paragraph 4(b)(iv) of the Policy.

This conclusion was possible because paragraph 4(b)(iv) of the Policy, on its wording, permits a finding of bad faith registration and use irrespective of the respondent's motives at time of registration of the domain name in issue. The paragraph reads:

“Evidence of Registration and Use in Bad Faith. 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) …….; or

(ii) …….; or

(iii) ……; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location.”

The topic is addressed in Shirmax Retail Ltd. V. CES Marketing Group Inc., NAF Case No. AF-0104 as follows:

“The requirement of bad faith registration and use in paragraph 4(a)(iii) is stated in the conjunctive. Registration in bad faith is insufficient if the respondent does not use the domain name in bad faith, and conversely, use in bad faith is insufficient if the respondent originally registered the domain name for a permissible purpose. The first three examples in paragraph 4(b) all refer to registration for various illegitimate purposes as evidence of registration and use in bad faith; but in each instance bad faith use may well be implicit in the act of registering a domain name, since all of the improper purposes mentioned can be accomplished merely by passively holding a domain name.

The fourth example (paragraph 4(b)(iv)), however, refers only to improper use, and does not appear to require that the domain name also have been registered in bad faith. This example thus appears to conflict with the rule set forth in paragraph 4(a)(iii). The language of paragraph 4(a)(iii) is clear, and the only reasonable interpretations are to regard the fourth example as a narrow exception to the preceding subparagraph's conjunctive rule, or to apply the conjunctive rule as it is written and disregard the example entirely.”

Generally, panels construe paragraph 4(b)(iv) in line with the wording of paragraph 4(a)(iii) of the Policy requiring the bad faith intent to be present at time of registration of the domain name in issue. However, since it is the case that some panels have adopted a different view and regarded the paragraph as an exception to the so-called ‘conjunctive rule', the Panel believes it to be appropriate in assessing the reverse domain name hijacking allegation in this case to assume in favour of the Complainant that the Complainant, when launching the Complaint, believed that bad faith use of a domain name could in certain circumstances suffice for the purpose of establishing abusive registration within the meaning of paragraph 4(a)(iii) of the Policy.

What, therefore, is the use that the Respondent has made (or threatened to make) of the Domain Name such as to render it an abusive registration? None. Instead the Complainant relies upon:

(a) 5 decisions under the Policy to the effect that non-use of a domain name is or may be indicative of bad faith registration and use of the domain name within the meaning of paragraph 4(a)(iii) of the Policy and supported by an allegation (disputed by the Respondent) that the Respondent had told the Complainant that the Respondent did not plan to make any use of the Domain Name in the future; and

(b) “it appears that the Respondent holds rights to other domain names which have either never been activated (see for example “www.actrad.com”) or have been ‘parked' for commercial use (see for instance www.desingles.de).”

As to (b) while the use of parking pages for pay-per-click revenue can in certain circumstances lead to a finding of bad faith registration and use within the meaning of paragraph 4(b)(iv) of the Policy, no such allegation is made in the Complaint. The Complaint places all emphasis on the alleged non-use of the Domain Name and it is on that basis that the Panel proposes to address the issue as to whether the Complaint was launched in bad faith. The fact (if it be a fact) that the Respondent has been using the Domain Name for emails is not relevant to this issue, because that is not a matter that the Complainant could reasonably have foreseen when filing the Complaint. The Registrar's Whois database record for the Domain Name lists another email address.

The 5 decisions under the Policy cited by the Complainant are very weak as authorities for the proposition that mere non-use can itself justify a finding of bad faith registration and use under the Policy. The leading authority on the topic, which was not cited by the Complainant, is Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 which sets out what are now generally regarded as the usual benchmark for a finding of bad faith registration and use based on non-use or so-called ‘passive use':

“The Administrative Panel has considered whether, in the circumstances of this particular Complaint, the passive holding of the domain name by the Respondent amounts to the Respondent acting in bad faith. It concludes that it does. The particular circumstances of this case which lead to this conclusion are:

(i) the Complainant's trademark has a strong reputation and is widely known, as evidenced by its substantial use in Australia and in other countries,

(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name,

(iii) the Respondent has taken active steps to conceal its true identity, by operating under a name that is not a registered business name,

(iv) the Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement, and

(v) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant's rights under trademark law.

In light of these particular circumstances, the Administrative Panel concludes that the Respondent's passive holding of the domain name in this particular case satisfies the requirement of paragraph 4(a)(iii) that the domain name “is being used in bad faith” by Respondent.”

The present case is a world away from the Telstra case. Moreover, innone of the cases cited by the Complainant did registration of the domain name in issue predate the complainant's rights and in most of them there were other factors to merit a finding of bad faith registration and use. However, in one of them (Hotwire, Inc. v. hotwore.com c/o Leila Mohtaseb, NAF Case No. FA0606000741906) the panel had this to say:

“Registration and Use in Bad Faith

Complainant contends that Respondent has failed to make use of the <hotwore.com> domain name since its registration in February of 2002. As a result, the Panel finds that Respondent has registered the disputed domain name in bad faith pursuant to Policy 4(a)(iii). See Mondich v. Brown, D2000-0004 (WIPO February 16, 2000) (holding that the respondent's failure to develop its website in a two year period raises the inference of registration in bad faith); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO November 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.”

Somewhat reluctantly the majority of the Panel has come to the conclusion that with dicta of this nature on the record, it could be unjust to conclude that on launching the Complaint the Complainant did not believe that it had an arguable case under the Policy.

A minority of the Panel finds that reverse domain name hijacking should be found. As the Panel stated in Versa Capital Management, LLC v. Affordable Webhosting, Inc., NAF Case 1250988.

“The Complainant knew, when it filed the Complaint, that the registration of the disputed domain name preceded by several years any rights that the Complainant may have acquired in the string VERSA CAPITAL. This is sufficient to find reverse domain name hijacking. See Aspen Grove, Inc. v. Aspen Grove, WIPO Case No. D2001-0798 (finding that when the complainant knows it has no rights in the mark but brings a complaint despite this fact, the complainant has acted in bad faith and attempted Reverse Domain Name Hijacking which constitutes an abuse of the administrative proceeding); see also NetDeposit, Inc. v. NetDeposit.com, WIPO Case No. D2003-0365 (finding reverse domain name hijacking because “Respondent's domain name registration preceded the Complainant's creation of its trademark rights”).”

Indeed, according to the minority in the present case, a thorough analysis of the issue should lead to a finding of reverse domain name hijacking in the present case.

Paragraph 1 of the Rules defines reverse domain name hijacking:

“Reverse Domain Name Hijacking means using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”

The general conditions for a finding of bad faith on the part of the Complainant are well stated in Smart Design LLC v. Carolyn Hughes,WIPO Case No. D2000-0993:

“Clearly, the launching of an unjustifiable Complaint with malice aforethought qualifies, as would the pursuit of a Complaint after the Complainant knew it to be insupportable.”

These conditions are confirmed in Goldline International, Inc. v. Gold Line,WIPO Case No. D2000-1151 and Sydney Opera House Trust v. Trilynx Pty. Limited,WIPO Case No. D2000-1224 (where the condition is stated as “the respondent must show knowledge on the part of the complainant of the respondent's right or legitimate interest in the disputed domain name and evidence of harassment or similar conduct by the complainant in the face of such knowledge”), which in turn cites Plan Express Inc. v. Plan Express, WIPO Case No. D2000-0565.

In the present case, the Complainant knew (and has admitted that it knew) that the Respondent registered the disputed domain name well before the Complainant even thought of using it.

Against this must be balanced the consideration that there is nothing in the record to indicate actual malice on the part of the Complainant.

On the other hand, according to the minority, by filing an Additional Submission after the Response, the Complainant has pursued the Complaint after it knew (or should have known) that it must fail, and this is conduct similar to harassment.

Indeed, the Response clearly establishes the absence of bad faith behavior (in the sense of the Policy) by the Respondent, so, after it received the Response, the Complainant should have sought to withdrawn the Complaint. At a minimum, it should have refrained from filing an Additional Submission which reiterates various irrelevant allegations but fails to address the key point raised in the Response. The minority finds that this behavior should be sufficient to find reverse domain name hijacking.

For the reasons discussed above however the Panel finds by a majority that the allegation of reverse domain name hijacking fails.

8. Decision

For all the foregoing reasons, the Complaint is denied.

Dated: September 15, 2009