The Complainant is Webvisions Pte Ltd. of Singapore, represented by Keystone Law Corporation, Singapore.
The Respondent is WebVision of Austin, Texas, the United States of America.
The disputed domain name <webvision.com> is registered with Network Solutions, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2010. On October 8, 2010, the Center transmitted by email to Network Solutions, LLC. a request for registrar verification in connection with the disputed domain name. On the same day, Network Solutions, LLC. transmitted by email to the Center its verification response confirming that:
(a) it was the registrar for the disputed domain name;
(b) the disputed domain name was registered with Network Solutions on June 1, 2004;
(c) the Respondent is listed as the registrant;
(d) the contact details for the Respondent maintained with the Registrar are the same as those identified in the Complaint; and
(e) the language of the registration agreement is English.
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 on October 14, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 3, 2010.
On November 1, 2010, the Respondent emailed to the Center a request for additional time to respond to the Complaint. On November 2, 2010, the Center replied, pointing out that under paragraph 5(d) an extension of time may be granted only in exceptional circumstances. Later that day, the Respondent sent a further email to the Center seeking further advice from it about what was required to have more time to prepare its response. On November 3, 2010, the Center replied again drawing the Respondent’s attention to paragraph 5(d) of the Rules. In response to this communication, an automatic message was generated by the “Mail Delivery Subsystem” stating that “Delivery has failed to these recipients”, listing the email address used by the Respondent when making the requests for an extension referred to above as well as the other email addresses listed in the contacts for the Respondent maintained by the Registrar.
The Respondent did not submit a Response by the due date and no further communication has been received from the Respondent. Accordingly, the Center notified the Respondent’s default on November 4, 2010.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on November 12, 2010. 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.
As noted above, the Complainant is incorporated in Singapore. It appears to operate a business as a web host and provider of internet services. It is the owner of registered trademarks for WEBVISIONS in:
|
Country |
Services |
Registered from |
|
Singapore |
Computer aided transmission of messages and image services in class 38 |
Jan. 23, 2001 |
|
Singapore |
Hosting computer (web)sites in class 42 |
Feb. 1, 2005 |
|
Singapore |
Electronic mail, provision of electronic mail facilities and rental of electronic mail boxes in class 38 |
Feb. 24, 2005 |
|
USA |
Providing E-mail services in class 38 |
Nov. 4, 2008 |
|
Hosting of websites of others on a computer server for a global computer network in class 42 | ||
|
Australia |
Hosting computer (web)sites in class 42 |
Jan. 25, 2005 |
|
Australia |
Electronic mail, provision of electronic mail facilities and rental of electronic mail boxes in class 38 |
Jan. 25, 2005 |
|
Hong Kong, SAR of China |
Electronic mail, provision of electronic mail facilities and rental of electronic mail boxes in class 38 |
Dec. 9, 2004 |
|
Hosting computer (web)sites in class 42 | ||
|
P.R. China |
Computer aided transmission of messages and image services, message sending, electronic mail, provision of electronic mail facility (rental of telecommunication equipment), rental of electronic mail boxes and providing telecommunications connections to a global computer network in class 38 |
Dec. 7, 2009 |
|
P.R. China |
Hosting computer (web)sites, creating and maintaining web sites for others, computer system design and computer system analysis in class 42 |
Oct. 14, 2009 |
|
Malaysia |
Electronic mail, provision of electronic mail facilities and rental of electronic mail boxes, computer aided transmission of messages and image services in class 38 |
May 8, 2008 |
|
Malaysia |
Hosting computer (web)sites in class 42 |
May 8, 2008 |
According to the Complaint, the Complainant “currently hosts websites in more than 40 countries.”
According to one of the emails in which the Respondent requested information about seeking an extension of time, the Respondent is a small business in the Austin area of Texas in the United States of America (the “USA”) providing simple small business IT services. The email was sent by an individual identified in the whois record as the Administrative and Technical contacts for the disputed domain name.
Under paragraph 4(a) of the Policy, the Complainant has the burden of proof in respect of the following three elements:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
Although no response has been filed, it is clear from the email communications from the Administrative and Technical contact specified in the whois record (and confirmed as correct by Network Solutions) that the Complaint has been properly served on the Respondent.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to decide the Complaint in the absence of exceptional circumstances. In support of its request for an extension of time, the Respondent simply stated that he was a small business and asserted that “I have been looking for counsel within my budget and unsuccessful so far”. The Respondent did not provide details of when he started looking for legal counsel, how many counsels he had approached or the reasons why they were unacceptable to the Respondent. Nor did the Respondent provide any timeframe within which his search might be expected to be resolved and a Response, if any, filed. The very limited information provided by the Respondent when requesting an extension of time falls far short of establishing that exceptional circumstances exist in this case.
Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has clearly established ownership of at least the registered trademarks set out in section 4 above.
The disputed domain name differs from those trademarks by (1) the omission of the “s” at the end of the mark and (2) the addition of the gTLD “.com”.
The addition of the gTLD, however, can be disregarded for the purposes of this inquiry as it is a functional requirement of the domain name system. See for example, Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046; Ticketmaster Corporation v. DiscoverNet, Inc., WIPO Case No. D2001-0252; Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493.
The omission of the “s” reduces what otherwise appears to be a plural term to the singular. That is not sufficient to dispel any likelihood of confusion and, indeed, many cases have found that the addition, omission or transposition of a single letter can be a common source of confusion.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s proved trademark rights and the Complainant has successfully established this requirement.
The second requirement that the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
A respondent may have rights or legitimate interests for the purposes of the Policy in the circumstances set in paragraph 4(c) of the Policy:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a 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.”
These are examples only and not an exhaustive enumeration of the ways in which rights or legitimate interests can be shown. They do provide, however, a guide to what is contemplated as permissible under the Policy.
The disputed domain name (apart from the gTLD component) is the same as the name of the registrant of the disputed domain name. It is obviously not the name of a natural person. Moreover, while there has in the past been a Webvision Corporation, or Webvision Inc., incorporated in the USA, there is currently no company existing with the Respondent’s name. So far as the Complainant’s inquiries can establish, there does not appear to be any connection between the Respondent and the former Webvision Corporation (or Webvision Inc.). The Complainant states that it has not permitted the Respondent to use the name “Webvision” or “Webvisions” and there is no other connection between them.
These allegations would usually be sufficient to raise a prima facie case against the Respondent having rights or legitimate interests giving rise to an obligation on the Respondent to support its entitlement: see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1.
When the Complaint was filed, the Complainant contends that the disputed domain name did not resolve to an active website and had not done so since at least 2004. A search of the “wayback machine” at archive.org substantially confirms this claim. At the time this decision was prepared, however, the disputed domain name did resolve to a website that appears to offer a range of IT services, but not on their face the web hosting or ISP services for which the Complainant has secured a trademark registration.
If this website accurately reflected the Respondent’s activities, it might well found a basis for inferring that the Respondent was conducting a legitimate business that did not conflict with the Complainant’s registered trademarks in the USA. There are a number of reasons why the Panel is not prepared to draw that inference on the record in this dispute. First, the Respondent has not disputed the Complainant’s claim that the disputed domain name did not resolve to a website between at least 2004 and the filing of the Complaint. Secondly, the website exhibits a degree of sophistication and scale of business which appears quite at odds with the Respondent’s portrayal of himself in his emails requesting an extension of time, or assistance in making such a request, as a small business which was being unfairly taken advantage of by a much larger business. Thirdly, the website lists as contacts telephone numbers and email addresses which have been or are apparently inactive. For example, the Center’s email communication on November 4, 2010 referred to above, generatd an automated response that delivery failed even though it was sent promptly in reply to an email message apparently from that address. The website also appears to assert a provenance of “2006 Webvision”. The “Copyright” and “Legal” “links” are not active at all.
In these circumstances, the Panel finds that the Respondent has not discharged the evidential burden required to rebut the prima facie case which the Complainant has established.
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent.
The Complainant contends that the Respondent’s long period of non-use of the disputed domain name is evidence that it was registered and is being used in bad faith, citing Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In support of this allegation, the Complainant contends that its trademark is an invented and distinctive word in relation to the Respondent’s business and, further, that its trademark is well-known, established and distinctive. In the latter connection, the Complainant claims that it hosts websites in more than 40 countries. The Complainant contends that the Respondent’s “passive” holding of the disputed domain name misleads the Complainant’s customers into thinking its website is not operating and prevents the Complainant from registering the disputed domain name itself. Finally, the Complainant argues that the Respondent’s failure to respond to letters of demand from the Complainant’s lawyers is bad faith.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
On the record in this dispute, it is very difficult to draw that inference. The first and perhaps main problem is the very narrow scope of the services covered by the Complainant’s trademark registrations. The second problem is that the Complainant’s trademark in the USA was registered in November 2008, several years after the Respondent apparently registered the disputed domain name.
The Complainant’s US trademark registration does state that it was first used in commerce in 1999 or 2000, which would predate the registration of the disputed domain name by the Respondent. Apart from stating that it provides services to its customers in the USA from a data center there, the Complaint does not provide any details about the scale, extent or duration of its operations there. As already noted, the Complaint does also state that it provides its services in some 40 countries. As with the nature and scale of its operations in the USA, however, the Complaint does not provide any details to flesh out that claim.
On its website at <webvisions.com> under the tab “Countries”, the Complainant lists “Australia”, “China”, “Hong Kong”, “India”, “Malaysia”, “Singapore” and “Others”. These pages do include claims to servicing over 20,000 businesses in 40 countries. It is also clear that in its field of operations the Complainant provides services to very significant companies including Johnson & Johnson, Proctor & Gamble, Volkswagen, General Motors, Motorola and Microsoft. Under “Other”, the opening paragraphs state:
“Need Web Hosting in Asia?
Webvisions is a large-scale, ISO-certified webhosting company founded in 1996 servicing Asian and Asia-Pacific businesses or businesses from USA and Europe wanting to host in Asia. Webvisions is profitable on a net bottom line basis, perhaps unique in the context of Asian reseller hosting.”
The additional countries to those already identified above, appear to be limited to Indonesia, the Philippines, Japan and New Zealand.
While this does indicate that the Complainant has a very significant business in its field, it does seem to confirm it provides in a fairly targeted range of services. Moreover, it does not provide further light on the scale of the Complainant’s operations in the USA. Rather, it tends to create an impression that the Complainant is particularly well-known in its Asian sphere of operations. Further, as noted above, there has been a Webvision Corporation or Webvision Inc. operating at various times in the USA. While that entity is apparently now defunct and initially operated out of California, it does appear that it was based in Austin Texas for a period.
Taking all these factors into account, the Panel does not consider it appropriate to draw the inference on the record in this case that the Respondent registered the disputed domain name in bad faith and is using it in bad faith.
This is a very different situation to that addressed in the Nuclear Marshmallows case, supra, see for example the factors listed in paragraph 7.12 by the learned panelist for his conclusion that the “passive” use in that case constituted use in bad faith of the disputed domain name. While the Policy does not require every case to reach the level of distinctiveness and breadth of protection which Telstra had proved in the Nuclear Marshmallows case, supra, this case falls a long way short. It cannot fairly be said that the Respondent has actively tried to conceal his identity in this case because his name is different to that given as the registrant. The individual apparently behind the business has been readily identified from the administrative and technical contacts provided to the Registrar. In the Nuclear Marshmallows case, supra, there was a statutory obligation on persons carrying on business under a name other than their own name to register it as a business name and there was evidence that the addresses given by the respondent were fictitious. There is no evidence in this dispute that registration of business or trading names is a requirement under the law of Texas. There is no evidence that the address given by the Respondent does not exist. Nor would the Panel be prepared to infer that the Respondent has provided false registration details from the Respondent’s failure to reply to letters of demand. It can fairly be said that the Respondent has not provided any evidence of actual or contemplated use of the disputed domain name before the dispute commenced. As already noted, however, the other factors referred to by the learned panelist in the Nuclear Marshmallows case, supra, are not nearly as compelling in this dispute.
Accordingly, the Panel finds that the Complainant has not discharged its burden on this part of the case.
For all the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Sole Panelist
Dated: November 26, 2010