WIPO Arbitration and Mediation Center

Complainants: (1) IMMEDIATE Software für Marketing und Media
(2) Uwe Czaia
Kleiner Ort 1, 28357
Bremen Germany

Respondent: emmediate
78 Ardmore Rd, Herne Bay
Auckland 3001
NZ

Domain Name: <immediate.biz>

Registrar: Internet Names Worldwide (aka Melbourne IT)

The Complaint was received by WIPO by email on December 7, 2001, and in hardcopy form on December 12, 2001. WIPO has verified that the Complaint satisfies the formal requirements of the Start-up Trademark Opposition Policy ("the Policy") and the Rules relating thereto and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.

The Complaint was properly notified in accordance with the Policy. Internet Names Worldwide has confirmed that <immediate.biz> ("the Domain Name") was registered through Internet Names Worldwide and that emmediate is the current registrant. The Registrar has further confirmed that the Policy is applicable to the Domain Name.

On December 24, 2001, WIPO notified the Respondent of the Complaint in the usual manner and informed the Respondent inter alia that the last day for sending its Response to the Complainant and to WIPO was January 13, 2002.

A Response was received by WIPO by email on January 12, 2002, and in hard copy form on January 23, 2002.

The Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

No further submissions were received by WIPO or the Panel.

The Complainants are Immediate Software GmbH, a company based in Bremen in Germany and its founder, Mr. Uwe Czaia. The First Complainant was formed in 1990 and the Second Complainant is the proprietor of the First Complainant and manages the business.

The Complainants are in the business of creating and marketing software. The Second Complainant is the registered proprietor of German and Community Trademark Registrations for the word IMMEDIATE registered in 1995 and 1998 respectively and the First Complainant is licensed by the Second Complainant to use those trademarks. The trademarks are registered for software-related goods and services.

In 1997, the First Complainant registered the domain name <immediate.de>.

The Respondent trades under the name emmediate. It is in the business of delivering food, videos and liquor throughout New Zealand. It has been trading on line as <emmediate.co.nz> for the past two years.

The Respondent registered the Domain Name on November 19, 2001.

The Complainants contend as follows:-

- The Domain Name is identical to the Complainants’ trademarks.

- The Respondent has no rights or legitimate interests in respect of the Domain Name.

- The Respondent is named "emmediate" not "Immediate".

- The Respondent has registered the Domain Name in bad faith for the following reasons:-

(i) The Respondent has no rights or legitimate interests in respect of the Domain Name;

(ii) The Respondent registered the Domain Name in order to prevent the Complainants from reflecting the mark in a corresponding Domain Name and for the purpose of disrupting the business of the Complainants.

- At the time of registration the Respondent knew or should have known of the existence of the Complainants and their domain name <immediate.de>. The Complainants contend that "there is an obligation to carry out a research before registering new domains in order not to violate third parties’ rights."

- By using the Domain Name the Respondent is attempting to attract for commercial gain Internet users to its website or other online location by creating a likelihood of confusion with the Complainants’ marks as to the source, sponsorship, affiliation or endorsement of its website or of its products/services on its website or location.

The Complainants concede that they do not know whether the Respondent registered the Domain Name for the purpose of selling, renting or otherwise transferring it to the Complainants on a later date. The Complainants say that they do not know more about the Respondent or its business, but they say that on the basis of the foregoing factual and legal grounds, the Respondent is obliged under German trademark law and Community Trademark Regulation to cease use of the Domain Name and to transfer the Domain Name to the Complainants.

The Respondent contends as follows:-

- It does not dispute that the Domain Name is identical to the Complainants’ trademarks.

- It contends that it has a legitimate interest in the Domain Name in that as a result of some confusion from customers concerning the spelling of their name and with plans to launch in Australia and the US "a decision has been made to rebrand using the conventional spelling of "Immediate"." The Respondent says that this was the primary reason for registering the Domain Name and explains the difference between the emmediate trading name and the Domain Name. The Respondent points out that it is also the proprietor of <immediate.co.nz> and for the same reason.

- As to bad faith, the Respondent states that it had no prior knowledge of the existence of the Complainants or the Complainants’ German domain name. It points out that the Complainants and the Respondent are not competitors, they are in utterly different business areas and in different geographical locations.

- The Respondent says that there is no likelihood of confusion arising between the parties online activities and the Respondent intends no such confusion.

"Immediate" is a generic English word and fair use does not infringe the Complainants’ trademark rights.

- The Domain Name was acquired in good faith through the NeuLevel <.biz> domain name ballot.

- The Respondent denies any bad faith intent and asks that the Complaint be dismissed.

According to paragraph 4(a) of the Policy, the Complainants must prove that

(i) The Domain Name is identical to a trademark or service mark in which the Complainants have 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 or is being used in bad faith.

There is no dispute that the Domain Name is identical to a trademark in which the Complainants have rights.

The Complainants contend that the Respondent cannot have any rights or legitimate interests in respect of the Domain Name because its name is "emmediate" and not "Immediate". The Respondent states that it is proposing to rebrand as "Immediate" as a result of confusion over the spelling of its current name. It supports that position by drawing attention to the existence of its New Zealand domain name <immediate.co.nz>.

While the Respondent’s position appears to the Panel to be a reasonable one, the Respondent has produced no documentation to support its position. If it had proposals to rebrand, one would have expected there to be at least some documentation that could have been put before the Panel as evidence of the proposed re-branding.

In the circumstances, the Panel does not make a positive finding that the Respondent has rights or legitimate interests in respect of the Domain Name, but equally finds that the Complainants have failed to prove that the Respondent does not have rights or legitimate interests in respect of the Domain Name.

The significance of this finding will be apparent under paragraph 7 below.

A non-exhaustive list of what constitutes bad faith registration and use of a domain name is to be found in paragraph 4(b) of the Policy.

While that list is non-exhaustive, one common feature of all the examples given is that at the time of registration of the domain name the Respondent had the Complainant in mind. In other words, at the time of registration of the Domain Name, the Respondent intended to extort money from the Complainants, to block the Complainants, to disrupt the Complainants’ business or to mislead Internet users into believing that the Respondent’s online location is in some way associated with the Complainants’ online location.

In this case the Complainants come forward with no evidence to explain why a provider of food and drink in New Zealand should have heard of, let alone intended to target, a provider of software in the European Community.

Indeed, in suggesting that registrants have "an obligation to carry out a research before registering new domains in order not to violate third parties’ rights" the Complainants are accepting the possibility, and, in the view of the Panel the very real possibility, that the Respondent had never heard of the Complainants prior to receipt of the Complaint.

The Respondent has come forward with an explanation as to why it selected the Domain Name and that explanation appears to the Panel to be a rational one.

The Panel finds that the Complainants has failed to prove that the Respondent either registered the Domain Name in bad faith or is using it in bad faith.

The Complaint is dismissed.

In accordance with STOP paragraph 4(1)(ii) and STOP Rules paragraph 15(e), the Complainants having failed in the Complaint, inter alia, to prove bad faith and the Respondent not having proved to the satisfaction of the Panel that it has a right or legitimate interest in respect of the Domain Name, the Panel permits a subsequent challenge to the Domain Name.

Tony Willoughby
Sole Panelist

Dated: February 13, 2002