DECISION

NetWave Technologies, Inc. v. NetWave Internet Services a/k/a NetWave Information Systems

Claim Number: FA0305000156718

PARTIES

Complainant is NetWave Technologies, Inc., New York, USA (“Complainant”) represented by Dennis P. McPencow, of Law Offices of Dennis P. McPencow.  Respondent is NetWave Internet Services a/k/a NetWave Information Systems, Cairo, EG (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <net-wave.net>, registered with Network Solutions, Inc.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Paul M. DeCicco as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 5, 2003; the Forum received a hard copy of the Complaint on May 5, 2003.

On May 8, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <net-wave.net> is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 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 May 14, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 3, 2003 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@net-wave.net by e-mail.

A timely Response was received and determined to be complete on May 25, 2003.

On or about June 5, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that it owns a U.S. registered trademark for the mark “NETWAVE TECHNOLOGIES , INC.” and that Respondent has violated the UDRP by using the domain name <net-wave.net>, to which it has no rights or legitimate interest. Complainant claims that Respondent’s establishment of a website at <net-wave.net> URL confuses the public as to the source of the services provided by the website’s owner and improperly diverts customers from Complainant to Respondent.

Complainant contends that Respondent holds no trademark for NetWave and therefore has no rights or legitimate interests in respect of the domain name. According to Complainant, the fact that Respondent is a registered shareholding company in Egypt called NetWave Information Services does not justify Respondent’s use of the domain name in the manner it is being used.

Finally, Complainant urges that Respondent registered the <net-wave.net> domain name primarily for the purpose of disrupting the Complainant’s business and that the logo used by Respondent on its <net-wave.net> website was in part copied from Complainant’s logo.

B. Respondent

Respondent contends that while the Complainant’s mark and the <net-wave.net> domain name may be similar, it has rights and legitimate interest in the domain name by virtue of the fact that it registered the name “NetWave Information Systems” as an Egyptian company, and has a registered an Egyptian trademark in such name.

Respondent alleges that as stated on its website it does business only in the Middle East while the Complainant does no business in the Middle East. Respondent goes on to contend that it did not copy Complainant’s logo and that the similarities pointed out by Complainant were the result of independent creation by Respondent’s graphics provider.  Respondent further asserts that Complainant fails to show that it has acted in bad faith with regard to the registration and use of the <net-wave.net> domain name.

FINDINGS

Complainant is the owner of a trademark for “NETWAVE TECHNOLOGIES, INC.” registered with the United States Patent and Trademark Office on October 3, 2000, SERIAL NO. 75185818.

Respondent registered NetWave Information Systems, S.A.E. as an Egyptian share-holding company. NetWave Information Systems was founded in 1997. Respondent registered an Egyptian Trademark and Service Authority Mark for “NETWAVE INFORMATION SYSTEMS,”  (number 157038). The Respondent registered and controls the domain <net-wave.net> and has a website at that URL.

Complainant has rights relating to the mark “NETWAVE TECHNOLOGIES, INC.” for the area of commerce listed on its trademark, however the Panel also finds on this record that Complainant does not show it has exclusive rights to the use of the term “NetWave” outside of the United States.

In view of the allegations in the Complaint and based on this record it has not been shown that there is any actual confusion or the risk of confusion between the use Respondent has made or might make of <net-wave.net>, and any rights Complainant has with respect to the its mark NETWAVE TECHNOLOGIES, INC. Notwithstanding global access to each party’s website via the Internet, the parties conduct business in discrete and separate geographic markets. Additionally, the parties’ logos do not appear to be substantially similar.

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 the Complainant must prove 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.

Identical and/or Confusingly Similar

Within the context of this proceeding, Respondent’s <net-wave.net> domain name is “confusingly similar” to its at-issue mark –“NETWAVE TECHNOLOGIES, INC.” See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Chernow Communications Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"). Indeed, Respondent admits to this in its Response. Response p. 2. [“The domain name “net-wave.net” may be similar to the complainant’s … but … ].

Rights or Legitimate Interests

Respondent shows that it owns an Egyptian trademark registration containing the word “NETWAVE,”  and has registered a company name containing the word “NETWAVE.” The record thus evidences that Respondent  has rights or legitimate interests in the disputed domain name. See VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that Respondent has rights and a legitimate interest in the domain name since the domain name reflects Respondent’s company name); see also Stevenson Indus., Inc. v. CPAP-PRO Online, FA 105778 (Nat. Arb. Forum Apr. 24, 2002) (determining that Complainant bears the burden of proof under the UDRP in stating “If the existence of [rights or legitimate interests] turns on resolution of a legitimate trademark dispute, then Respondent must prevail, because such disputes are beyond the scope of this proceeding”).

Even if we dispense with the impropriety of a UDRP panel having to resolve a trademark dispute along the way to its decision, the factually scant Complaint offers no evidence or even a claim that Complainant’s trademark rights extend outside the United States. So, while the Panel recognizes that in the case of certain famous marks in certain foreign venues, foreign trademark rights maybe afforded to a United States registered trademark, Complainant raises no such argument. The Panel finds no basis from which it may assume a geographical extension of Complainant’s trademark rights, either from the record or otherwise. On the other hand, Respondent shows it has registered trademark rights in Egypt.

Moreover, under the Policy, Respondent does not need to have trademark rights in its domain name in order to show it has rights or legitimate interest in such domain name.

Paragraph 4(c) of the Policy expressly sets out circumstances which demonstrate “rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii)”  Policy ¶ 4(c). Paragraph 4(c) iii states one such circumstance:

(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;

The fact of Respondent’s website, domain name registration, and Egyptian company registration prior to notification of the dispute demonstrate Respondent’s legitimate rights and interest in the <net-wave.net> domain name, irrespective of whether or not Respondent has any trademark rights in such name. 

The Panel thus finds that Respondent’s use of the domain name for services exclusively available in the Middle East, and/or the fact that it was commonly known as “NetWave Information Systems” prior to the dispute, shows that Respondent had and has rights or legitimate interests in the <net-wave.net> domain name. See eGalaxy Multimedia Inc v. RDCTO Ltd., FA 100705 (Nat. Arb. Forum Dec.11, 2001) (finding the NUDE NEWS mark—registered in Mexico and Hong Kong—generic and/or merely descriptive “and that Respondent is and has been providing such services since as early as September 2001 and that before any notice to it of the dispute, it used and/or prepared to use the domain name in connection with a bona fide offering of services [emphasis in original]”); see also Car Toys, Inc. v. Informa Unlimited, Inc., FA 93682 (Nat. Arb. Forum Mar. 20, 2000) (finding that Respondent has rights and legitimate interests in the domain name where Complainant submitted insufficient evidence to establish either fame or strong secondary meaning in the mark such that consumers are likely to associate <cartoys.net> with the CAR TOYS mark). 

Registration and Use in Bad Faith

Even if Complainant could prevail on the Policy’s second element by demonstrating Respondent’s lack of rights or legitimate interests in the at-issue domain name, Complainant offers no facts or circumstance from which the Panel may find the Respondent registered and used the domain name in bad faith. 

The Complainant makes only one express reference to ‘bad faith.” There it argues that because Respondent failed to resolve the parties’ trademark dispute, Respondent acted in bad faith. It is difficult to see how failing to resolve a post registration trademark dispute could ever, by itself, amount to bad faith registration and use of a domain name. Notably, every UDRP proceeding comes to its panel with at least one party not willing to resolve an underlying dispute.

 

To prevail, Complainant must do more than make bald allegations; it must show the panel the particular facts that logically underpin the validity of its claims.  Simply stating that the Complainant believes that Respondent had “registered the domain name primarily for the purpose of disrupting the business of the Complainant, a competitor,” without elaborating on the factual basis from which such “belief” is derived, sheds no light on Respondent’s motives or intent in registering and using the <net-wave.net> domain name.  Likewise, that a logo appears on Respondent’s website which in Complaint’s assessment has graphical devices comparable to its own logo, does nothing to show the Panel, that Respondent’s logo was created and/or displayed in “bad faith.” Nor does it explain how the copying of a logo, if copied, could create an inference that the at-issue domain name was registered and used in bad faith.     

Therefore, since Complainant does not demonstrate that <net-wave.net> was registered and used in bad faith, as well the for the other reasons setout herein, the Complaint fails.

DECISION

Complainant having failed to establish all three elements required under ICANN Policy to permit the relief requested, the Panel concludes that such relief shall be DENIED.

Paul M. DeCicco, Panelist
Dated: June 18, 2003

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