Generic Top Level Domain Name (gTLD) Decisions

ADMINISTRATIVE PANEL DECISION

Under the ICANN Uniform Domain Name Dispute Resolution

1. Parties and Contested Domain Name

The Complainant (hereinafter the "Complainant") is Millard Brown Limited, a company incorporated under the law of the United Kingdom with address at Broadwall House, 21 Broadwall, SE1 9PL London, United Kingdom. This company is represented by Stephen Sampson with offices at 7 Devonshire Square, EC2M 4YH, London, United Kingdom.

The respondent (hereinafter the "Respondent") is Fabio Madonia, with address at C. so Valentino 73, Casale Monferrato 15033, Italy.

The domain name at issue is "mbprecis.com" (hereinafter the "Domain Name") ,registered with Internet Domain Registrars on 16 December, 1999.

2. Procedural history

The electronic version of the Complaint Form was filed on-line trough eResolution's website on April 9, 2001. The hardcopy of the Complaint Form and the annexes were received on April 17, 2001. Confirmation of payment was received on April 11, 2001

Upon receiving all the required information, eResolution's Clerk:

- verified the Registrar's Whois Database and confirmed all the essential contact information for the Respondent;

- confirmed the identity of the Registrar for the contested Domain Name;

- verified if the contested Domain Name resolved to an active Web page;

- verified if the Complaint was administratively compliant.

The inquiry leads the Clerk of eResolution to the following conclusions: the Registrar is Internet Domain Registrars, the Whois database contains all the required contact information, the contested Domain Name resolves to an active Web page and the Complaint is administratively compliant.

An email was sent to the Registrar by eResolution Clerk’s Office to obtain confirmation and a copy of the Registration Agreement on April 12, 2001. The requested information was received on April 12, 2001.

The Clerk then sent a copy of the Complaint Form and the required Cover Sheet to the Respondent in accordance with paragraph 2 (a) of the ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy. The Clerk’s Office fulfilled all its responsibilities under paragraph 2(a) in forwarding the Complaint to the Respondent, notifying the Complainant, the concerned Registrar and ICANN on April 19, 2001. This date is the official commencement date of the administrative proceeding.

All emails were successfully delivered. The faxes sent to Respondent could not be delivered.

The complaint, official notification and all the annexes were sent via registered mail with proof of service, to the Respondent. According to the Canada Post tracking system, all were delivered.

The Response was due by May 8, 2001. However, the Respondent did not submit a response neither via eResolution’s website nor a signed version.

On May 9, 2001, the Clerk’s Office contacted Mr. Geert Glas, and requested that he acts as panelist in this case.

On May 11, 2001, Mr. Geert Glas accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.

On May 11, 2001, the Clerk’s Office forwarded a user name and a password to Mr. Geert Glas, allowing him to access the Complaint Form and the evidence through eResolution’s Automated Docket Management System.

On May 11, 2001, the parties were notified that Mr. Geert Glas had been appointed and that a decision was to be, save exceptional circumstances, handed down on May 24, 2001.

On May 14, 2001, the Respondent sent eResolution's clerk an email requesting an extension to file the Response Form, in view of the fact that the Respondent would have wrongly calculated the deadline by which it had to file a Response.

On the same day, the clerk transmitted this request to the Complainant and to Mr. Geert Glas.

On May 16, 2001 the Panel sent the eResolution's clerk by email its position regarding such an extension to file the Response Form, finding that no valid justification for such extension had been provided and that the extension could therefore not be granted.

3. Factual Backgrounds

The Complainant is a company that measures media profile of companies through an evolved media analysis system allowing them to better manage their perception by the public.

The Complainant registered the trademark "PRECIS" in the United Kingdom for goods and services of classes 9, 16, 35 on October 29, 1998.

On 23 March, 1998 the Complainant hired the Respondent as a Systems Administrator reporting to the Technical Director.

On 16 December, 1999 whilst in the course of employment with the Complainant, the Respondent registered the Domain Name with Internet Domain Registrar on the Complainant's behalf.

The website linked to the Domain Name is the official website of the Complainant describing the activities of its business to the interested public.

According to the Complainant, the Respondent ceased to be employed by the Complainant in May or June 2000. The Respondent however failed to transfer the Domain Name to the Complainant.

It appears from Registrars' Whois database that today the Respondent is still recorded as the registrant of the Domain Name.

4. Parties' Contentions

The Complainant contends that the Domain Name is similar to the Complainant's full registered company name and is identical to the Complainant's registered trademark.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name at issue since it only held the Domain Name on the Complainant's behalf.

The Complainant contends that the Respondent is acting in bad faith because since the Respondent has left its employment with the Complainant, the Complainant has in vain been attempting to have the Respondent transfer the Domain Name to the Complainant.

5. Discussions and Findings

This procedure is regulated by the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy) and by the Rules of Uniform Domain Name Dispute Resolution Policy (the "Rules").

According to article 4(a) of the Policy, Complainant must submit evidence establishing that in a specific case each of the following three elements are present:

(i) that the Domain Name is identical or confusingly similar to a trade mark or service mark to which the Complainant has rights; and

(ii) that the Complainant has no rights or legitimate interests in respect of the Domain Name; and

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

a) Identity and Similarity

There is no doubt that the Domain Name is confusingly similar to the Complainant's trademark. The Domain Name consists indeed of the Complainant's trademark PRECIS to which the initials (MB) of the Complainant's corporate name (Millward Brown) are added. This similarity is no coincidence in view of the fact that the Complainant had asked the Respondent to register the Domain Name in order to attract to the linked website the public already aware of the Complainant's name and trademark.

b) Rights and legitimate interests

Although the Complainant had asked the Respondent to register the Domain Name, such a task fell fully within the duties of its employment as a Systems Administrator. The Complainant has never licensed or otherwise permitted the Respondent to use the Complainant's trademark as a Domain Name for its own business.

Moreover, by not submitting a response in due time, the Respondent has failed to invoke any circumstances which could demonstrate, pursuant to paragraph 4c of the Policy, any right or legitimate interest in the Domain Name.

Therefore the Administrative Panel finds that Respondent has no legitimate right or interest in the Domain Name.

c) Bad faith

According to this Panel, the Respondent had no bona fide intention to use the Domain Name for any legitimate purpose.

As the Complainant's Systems Administrator, the Respondent was requested by the Complainant to register the Domain Name on its behalf. When doing so, the Respondent choose to file the Domain Name in its own name rather than in the name of its employer, the Complainant. Upon registration the Domain Name was exclusively linked to the website of the Complainant. There does not seem to be any justification for the Respondent's registration of the Domain Name in its own name rather than in its employer's name.

When leaving its employment with the Complainant, the Respondent was under the duty to transfer the registration of the Domain Name to the Complainant. No reason can justify Respondent's remaining the registrant of a Domain Name used in the Complainant's scope of business.

In spite of the repeated efforts by the Complainant to have the Respondent transfer the Domain Name, the Respondent has failed to take any initiative whatsoever towards such transfer.

Moreover, by failing to complete in time the Response Form for submission to the eResolution Clerk, the Respondent failed to assert its rights and that it acted in good faith.

The Panelist concludes from these elements that the Respondent is acting in bad faith in contravention with article 4(b) of the above mentioned Policy.

6. Conclusion

For the above reasons, the panelist holds that the three requirements requested by the Policy are present in this case, and consequently, in accordance with the remedy sought by the Complainant, orders "mbprecis.com" to be transferred to the Complainant.

7. Signature

Signed on May 24, 2001 in Brussels by the Presiding Panelist Geert Glas

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