7th Apr 2006

 

National Arbitration Forum

 

DECISION

 

Decani Monastery v. Info-Bridge

Claim Number: FA0602000639116

 

PARTIES

Complainant is Decani Monastery (“Complainant”), represented by Perry J. Narancic, 325 Sharon Park Drive #403, Menlo Park, CA 94025. Respondent is Info-Bridge (“Respondent”), represented by Ari Goldberger, of ESQwire.com Law Firm, 35 Cameo Drive, Cherry Hill, NJ 08003.

 

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <kosovo.com>, registered with Bulkregister, LLC.

 

PANEL

The undersigned certify that they acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Jacques A. Léger Q.C., G. Gervaise Davis and David E. Sorkin as Panelists.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 6, 2006; the National Arbitration Forum received a hard copy of the Complaint on February 9, 2006.

 

On February 7, 2006, Bulkregister, LLC. confirmed by e-mail to the National Arbitration Forum that the <kosovo.com> domain name is registered with Bulkregister, LLC and that the Respondent is the current registrant of the name. Bulkregister, LLC has verified that Respondent is bound by the Bulkregister, LLC. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On February 23, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 15, 2006 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@kosovo.com by e-mail.

 

A timely Response was received and determined to be complete on March 15, 2006.

 

An Additional Submission was received from Complainant on March 22, 2006. However, the Additional Submission was received after the deadline for submissions, which was noted by the Forum not to be in compliance with Supplemental Rule #7. However, the Panel considered it before it reached its decision and at the same time considered the additional submission received from the Respondent on March 27, 2006.

 

On March 24, 2006, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Jacques A. Léger Q.C., G. Gervaise Davis and David E. Sorkin as Panelists.

 

FACTUAL BACKGROUND

 

            Complainant, through Father Sava Janjic, asked Zeljko Boskovic, principal and sole shareholder of YUNET, a Canadian based company, to obtain a domain name in order to publish information relating to Kosovo and its churches. It began in 1997 to diffuse such information at the address “www.decani.yunet.com”, free of charge for the Complainant.

 

            In October 1996, Mr Boskovitch registered the domain name <kosovo.com>. No usage of the domain was made immediately after the registration.

 

            In 1998, a domain that would be easier to use and remember was chosen to host the content of the previous “decani.yunet.com” site. The domain name <kosovo.com> was chosen to host such content, since it was available for Complainant to use. Mr. Boskovic asked that Complainant pay $240 in administrative maintenance costs before it began using it. From 1998 and on, Complainant has been the exclusive publisher of all content located at the disputed domain name; except for a short period of time in 1999, wherein Respondent also published some content on the disputed domain name due to the civil war which occurred in Kosovo. After the Kosovo war, from July 1999 and afterwards, Complainant was the sole publisher on <kosovo.com>.

 

On January 19, 2006, Mr. Boskovic, on behalf of Respondent, wrote to Complainant and advised that the domain name <kosovo.com> had been transferred to an investor of Respondent, and that the latter wanted to auction the domain name in order to recover a loan. A bidding price of $90,000 US is asked by the investor in order to sell the domain.

 

RELIEF SOUGHT

 

Complainant requests that the domain name be transferred from Respondent to Complainant. 

 

PARTIES’ CONTENTIONS

 

A. Complainant

 

Complainant contends that it has exclusive rights in the <kosovo.com> domain name since it registered a “kosovo.com” trademark in Serbia-Montenegro, as submitted in exhibit A. Complainant further contends that in 1997 it asked Mr. Boskovic to obtain a new domain name and that the latter answered that the domain name was available for Complainant. It contends that it was not aware that the domain name had already been registered by Mr. Boskovic to another entity than Complainant.

 

Complainant further contends that it took over the management of the <kosovo.com> domain name since Mr. Boskovic gave it the password and user ID. Furthermore, it contends that neither the Respondent nor Mr. Boskovic used the domain name in connection with a bona fide offering of its own goods or services. It alleges that all the content on the <kosovo.com> site has been generated by Complainant. Hence, it contends that Respondent has no legitimate interest or rights in the disputed domain name and that it transferred the ownership of the domain name to Complainant by its inaction and acknowledgment to its use and its management by Complainant.

 

Finally, Complainant alleges that Respondent has registered the domain name in bad faith since it is now considering auctioning said domain to the highest bidder, even if Complainant built its reputation on said site and that Respondent never used it to promote its own business or services.

 

B. Respondent

 

Respondent contends that geographic marks are not enforceable under the UDRP Policy and that Complainant does not own any trademark incorporating “Kosovo” that predate the registration of the disputed domain name. Respondent further contends that the trademark registration alleged in the complaint is in fact an application for the trademark Kosovo.com filed January 27, 2006 and that this application provides no enforceable rights against a prior registration of a domain name. Furthermore, it states that it never agreed to acquire a new domain name for Complainant in 1998 but instead proposed, on its own initiative, the use of the <kosovo.com> domain name to Complainant.

 

Respondent further contends that it has legitimate interest since it was the first to register the domain name and that by itself, the registration constitutes legitimate interest pursuant to section 4(a)(ii) of the Policy. It contends that it allowed Complainant to publish content on <kosovo.com> free of charge between August 1998 and March 1999 and again after July 1999. Respondent contends that collaboration from Complainant regarding the use of the disputed domain name constitutes acknowledgement of Respondent’s legitimate interest. Also, Respondent contends that Complainant was aware that <kosovo.com> was the propriety of Respondent; Fr. Sava’s own admission supports that Complainant did not own the domain name, nor did it believe it did. Respondent asserts that it was not its purpose to make money out of <kosovo.com>; explaining why Complainant could use it free of charge for over 9 years.

 

Respondent contends that it did not use <kosovo.com> in bad faith, nor did it register said domain name in bad faith; the domain name consists of a geographical term in which Complainant had no rights at time of registration. According to Respondent, this dispute is a matter of ownership and entitlement, and is not of the resort of the UDRP policy. It also contends that through the present proceedings, Complainant is attempting to make a reverse domain name hijacking.

 

C. Additional Submissions

 

By Complainant

 

Complainant has submitted an additional submission that was received after the deadline for submissions. Even though it is not compliant with the Forum’s Supplemental Rule #7, the Panel has decided to consider Complainant’s untimely additional submission. See Am. Airlines Inc. v. WebWide Internet Commc’n GmbH, FA 112518 (Nat. Arb. Forum June 13, 2002) (where the Panel decided to accept both the complainant’s and the respondent’s second additional submissions, despite the fact that they did not comply with Forum Supplemental Rule #7)

 

In its additional submissions, Complainant contends that some facts are uncontested; it contends that it was the sole publisher of any content that figured on the disputed domain. It further contends that Respondent never used the disputed domain name in association with any bona fide offering of its own goods or services. Complainant additionally contends that when Respondent decided to wave profitability from <kosovo.com>, it did not do so momentarily but for all further usage of Complainant. Furthermore, Complainant contends that since it was the only one to use the domain name, it should be considered as having been transferred the ownership. Complainant reasserts its rights in the mark KOSOVO.COM based on its registration in Serbia-Montenegro, but also on its common law rights. It submitted jurisprudence that supports the rights in a geographic name that founded a transfer of a disputed domain name. It finally distinguished the present proceedings from a typical case of reverse domain name hijacking, to contradict Respondent’s contentions

 

By Respondent

 

Respondent submitted an additional submission that was received in due time to be considered pursuant to section 7 of the Supplementary Rules. The additional submission does not produce any new evidence nor does it bring any new argument. It solely specified the range of the response that was given on March 15, 2006 and answered to the additional submissions from Complainant, denying in part the alleged admissions of fact alleged in Complainant’s additional submission by maintaining that Complainant has never been the sole publisher of all the content on the disputed domain name, since Respondent itself published some information during the Kosovo war in 1999. It further contends that the waiver of profit was offered momentarily to Complainant, and the use of Complainant of the domain name profited to Respondent, since it was done according to its acknowledgment and control. It added that the ownership of the domain name was not transferred solely by the communication of the user ID and the password to Complainant in order for it to manage <kosovo.com>. Finally, it reasserts that the rights of Complainant in a KOSOVO.COM mark does not exist and that the jurisprudence presented by Complainant in its additional submissions stands alone in a sea of cases where no trademark rights were recognized in a geographical indication.

 

FINDINGS

 

The Complainant Decani Monastery is a religious organisation. It has made a trademark application for “kosovo.com” in Serbia-Montenegro, however, as of January 27, 2006.

 

On his part, the Respondent had registered, through its sole administrator Mr. Boskovic, the kosovo.com domain on October 23, 1996. The Respondent has been lending the use of the domain exclusively to the Complainant for numerous years, except during the Kosovo war, wherein the Repsondent published some content as well. The maintenance fees for the domain name were paid by the Complainant. Hence, at least implicitely, it knew at some point that the domain name was being used by it resulting from an agreement with Respondent.

 

DISCUSSION

 

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

 

Paragraph 4(a) of the Policy requires that Complainant must prove cumulatively each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)   the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

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

(3)   the domain name has been registered and is being used in bad faith.

 

1. Identical and/or Confusingly Similar

 

Complainant contends that it has rights in the mark KOSOVO.COM, derived from its trademark application dated January 27, 2006, for the KOSOVO.COM trademark in Serbia-Montenegro. Respondent contends that no such trademark can be enforceable under the UDRP since KOSOVO.COM is a geographical mark and that it was applied for after the registration of the domain name.

 

It is trite law that the mere fact of a trademark application does not in and of itself confers upon the applicant any trademark right unless the basis for filling is prior use or until such application matures to registration. 

 

A complainant needs not necessarily have a registered trademark or service mark in order to seek the remedies contemplated in the Policy, as they are also open to those who have common law rights to such marks. Therefore, a Complainant clearly has the burden of demonstrating that it holds such rights to a trademark or service mark, whether it be a registered mark or a common law one. In the case of a registered mark, such burden is alleviated as the owner benefits of legal presumptions. In the case of a common law mark, it is incumbent upon Complainant to actually show that it has acquired such rights through use. In this case Complainant being only able to rely on common law rights, it is incumbent upon it to actually show acquisition of such rights through use. (Van Vleck Homes, Inc. v. Steven Kirkm, FA 414680 (Nat. Arb. Forum April 1, 2005).

 

In that context, the Panel agrees with Respondent that in order to succeed in showing legitimate rights in a trademark under the UDRP, absent of trademark registration, that applicant must show acquisition of trademark by common law usage. It also finds, in accordance with Respondent’s submission, that such rights in a trademark do not flow from an application for registration. See Wave Indus., Inc. v. Angler Supply, FA 304784 (Nat. Arb. Forum Sept. 20, 2004) (where the Panel found that the complainant’s pending trademark applications did not establish rights because an application for a mark is not per se sufficient to establish rights in a trademark for the purposes of the Policy). 

 

Of course, such rights do not solely flow from an official registration. As it was decided in Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001): “The Policy does not require that a trademark be registered by a governmental authority for such rights to exist”. Under common law, in order to show entitlement to such rights, it is incumbent upon Complainant to actually show trademark rights, derived from such use from which rights can be derived. In the present case, Complainant has failed to give evidence as to acquisition of trademark rights which would be derived from its use by complainant; and quite to the contrary, it appears that the only use of the mark KOSOVO.COM is derived from the use by Respondent, flowing from its registration of the domain name <kosovo.com> in association with the web services of Respondent, in which case Complainant’s rights would be subordinated to those of Respondent.

 

Concerning geographical marks, the Panel agrees that a mark consisting of a geographic indication is not a distinctive trademark by itself. According to HER MAJESTY THE QUEEN, in right of her Government in New Zealand, as Trustee for the Citizens, Organizations and State of New Zealand v. Virtual Countries, Inc., D2002-0754 (WIPO Nov. 27, 2002) where the <newzealand.com> domain name was disputed, the Panel stated that the primary function of a geographical mark is to identify a geographical location. “As an indicator of geographical origin, they serve to distinguish the goods and services emanating from a country from those of another. But indications of geographical origin are not themselves trade/service marks for the reason that they serve to indicate geographical origin and not necessarily the source of the wares or services.” The Panel in the <newzealand.com> case also distinguished that indications of geographical origin are capable of being trademarks; but only when the geographical significance is displaced, i.e. after a long and extensive use of the name as a brand by a single trader in such manner as to distinguish his goods and services from those of his competitors.

 

The Panel concurs with the findings of the <newzealand.com> case. In the present case, the question is not whether or not Complainant has rights in the <kosovo.com> domain name since it has built goodwill on its use and claims having rights in its trademark. The question to be answered is whether or not such rights existed at the time of the <kosovo.com> registration in 1996. On this subject, the Panel finds that Complainant did not have any rights in the KOSOVO.COM mark at the date of the disputed domain name registration. Furthermore, the “rights” in which Complainant contends were built after the registration of the domain name by Respondent.

 

The Panel finds that in the present case, the key issue appears to be a dispute over an alleged breach of contract to sell the domain name, which as such is not an appropriate basis for UDRP dispute, as it does not fall within the parameters of the ICANN Rules. As stated in United Services Automobile Association v. Ang Wa Assoc., D2004-0535 (WIPO Sept. 29, 2004):

 

[T]he mandate of World Intellectual Property Organization Arbitration and Mediation Center is to administer the proceedings within the legal framework for the resolution of disputes between a domain name registrant and a third party over the abusive registration and use of an Internet domain name in the gTLDs, its role is restricted to the scope of domain name dispute only. Consequently, it is not and should not be the forum for perpetual procedural recrimination nor highly emotional dispute between parties. One of the function of WIPO is to maintain a roster of Panelists from which is selected independent individuals who’s role is to receive, examine and rule on Complaints filed with the WIPO Arbitration and Mediation Center acrredited by ICANN. Appointed Panel members have an obligation to reach a conclusion, within the time allowed by the rules, on the sole basis of the allegation and/or the evidence submitted by the parties, regardless of the causes or the motivation of the dispute.

 

The Rules of ICANN are intended essentially for efficient relief against hackers. The Panel further finds that even though the facts might give rise to a court action, it cannot accept the complaint as Complainant has not met its initial burden of proof required to establish entitlement to rights in an identical or similar mark to the <kosovo.com> domain name pursuant to section 4(a)(i) of the Policy. 

 

2 and 3. Legitimate interest in domain name / Bad faith use and registration

 

Given that the burden is cumulative for each of the three required elements, failure to prove the previous count makes it unnecessary for the Panel to make any making findings on the remaining counts. Complainant having failed to prove the first element of the three, the Panel cannot grant relief as requested by Complainant.

 

 

DECISION

 

Having failed to establish the first element required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

 

 

Jacques A. Léger Q.C., Presiding panelist

David E. Sorkin, panelist

G. Gervaise Davis, panelist
Dated: April 7th, 2006

 

National Arbitration FoRUM