Audio Visual Services Corporation v. SIA
Netex Galaxy
Claim Number: FA0605000713767
PARTIES
Complainant is Audio Visual Services Corporation (“Complainant”), represented by Henry M. Pogorzelski, 3040 Post Oak Boulevard, Suite 1500, Houston, TX 77056. Respondent is SIA Netex Galaxy (“Respondent”), represented by Anatoly Ostrovsky PO Box 96, Riga 1050 Latvia, LV.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <psav.com>,
registered with Dstr Acquisition Vii,
Llc.
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.
Honourable Sir Ian Barker, QC as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on May 23, 2006; the National Arbitration Forum received a hard
copy of the Complaint on May 25, 2006.
The Complainant filed an Amended Complaint on May 31, 2006.
On May 25, 2006, Dstr Acquisition Vii, Llc confirmed by e-mail to the
National Arbitration Forum that the <psav.com>
domain name is registered with Dstr Acquisition Vii, Llc and that the
Respondent is the current registrant of the name. Dstr Acquisition Vii, Llc has verified that Respondent is bound
by the Dstr Acquisition Vii, 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 June 1, 2006, a Notification of Amended Complaint and Commencement
of Administrative Proceeding (the “Commencement Notification”), setting a
deadline of June 21, 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@psav.com by e-mail.
A timely Response was received and determined to be complete on June 8,
2006.
Timely Additional Submissions were received here from the Complainant
on June 13, 2006 and from the Respondent on June 16, 2006.
On June 14, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Hon. Sir Ian Barker QC as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
On May 23, 2006, the Complainant electronically filed its original
Complaint with the National Arbitration Forum.
Service copies were concurrently served electronically upon the
registrar and the then registrant. The
original complaint named Salvia Corporation as respondent because, as of May
23, 2006, Salvia Corporation was listed as the registrant in the Whois records
for the disputed domain name.
Immediately upon receiving electronic notice of the original Complaint,
Salvia Corporation caused the Whois record for <psav.com> to be
modified, so that “SIA Netex Galaxy” became listed as the registrant. Website content was also removed at that
time.
On May 26, 2006, Complainant received correspondence from the National
Arbitration Forum alleging that the original Complaint was defective because of
its failure to name “SIA Netex Galaxy” as respondent. The Complainant was required to amend its complaint to name SIA
Netex Galaxy as sole respondent.
The Complainant claims that there has been no bona fide transfer
of the disputed domain name registration from Salvia Corporation to the present
Respondent, SIA Netex Galaxy.
The Complainant is the owner of a United States registered service mark
for PSAV (first use October 7, 2002) for rental of audiovisual equipment:
staging services, namely, audio, video and lighting production and projection
services for live events. It also owns
a registered design mark for PSAV
PRESENTATION SERVICES.
The disputed domain name is identical to the Complainant’s registered
service mark PSAV and confusingly
similar to its registered design mark.
The Complainant’s services and products have been advertised and sold
throughout the United State for over four years.
The Respondent is guilty of ‘cyberflying’ by purporting to transfer a
domain name registration and change website, immediately on receiving notice of
a complaint. See Group Kaitu,
LLC, Darkside Prod. Inc. v. Group Kaitu, a/k/a Manila Indus. Inc.,
D2005-1087 (WIPO Jan. 20, 2006) and other similar precedents where the
phenomenon of ‘cyberflying’ has been discussed.
The original registrant Salvia Corporation has previously been found to
have registered Internet domain names in which it had no rights or legitimate
interests. In Louis Vuitton
Malletier S.A. v. Salvia Corp., FA 600968 (Nat. Arb. Forum Jan. 5, 2006), a
panel found that Salvia Corporation had shown no rights or legitimate interest
in registering <vuiton.com>.
Salvia Corporation had directed Internet users to respondent’s
commercial website featuring goods and services competing with those of the
complainant. In Univ. of Houston
Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum March 21, 2006), the panel
came to a similar conclusion. It found
that Salvia Corporation had no rights or legitimate interest in registering
<kuhf.com>, and had purposefully directed Internet users to its
commercial website, featuring goods and services that compete with the
Complainant’s business.
The original registrant Salvia Corporation, as well as the Respondent,
SIA Netex Galaxy, appear to be nothing more than shell-holding companies for
internet domain names.
Salvia Corporation acquired the disputed domain name sometime between
September 1, 2005, and March 20, 2006.
On September 1, 2005, the “Whois” record from Network Solutions showed
that the disputed domain name was registered not to Salvia Corporation, but to
“SIA Bouns.” As of March 20, 2006, the
“Whois” record showed the disputed domain name registered to Salvia
Corporation.
Prior to the present proceeding, Salvia Corporation used the disputed domain
name to misdirect Internet users interested in Complainant’s services to
websites offering similar services and products in competition with
Complainant’s business.
When an Internet user typed in the disputed domain name, the user
initially saw a pop-up advertisement.
Once the pop-up was closed, the user was diverted to a web-page entitled
“psav.com – Top Categories and Popular Categories.” This web page advertised and solicited sales of services and
products, that compete with Complainant’s services and products, by inviting
the user to click on several links to a variety of terms, e.g., Psav,
Presentation Services, Avsc, Avhq. At
least four of the links corresponded to registered trademarks owned by Complainant.
By following the link for “audio visual services” in the
“Popular Categories” section of the <psav.com> web page, the user
was then directed to a Salvia Corporation’s web-page entitled “audio visual
services – Top Categories” and “Sponsored Links”. On this web-page was a list of service and product lines
competing with the Complainant’s products and services.
Salvia Corporation’s use of the disputed domain name “was not a use in
connection with a bona fide offering of goods or services” pursuant to
Policy ¶ 4(c)(1).
Neither Salvia Corporation nor SIA Netex Galaxy has been commonly known
by any name remotely similar to the disputed domain name. Neither has acquired any trademark or
service mark rights in any name remotely similar to the disputed domain
name.
Salvia Corporation and SIA Netex Galaxy do not make any “legitimate
noncommercial or fair use of the domain name, without intent for commercial
gain to misleadingly divert consumers.”
Salvia Corporation, with the intent for commercial gain, has used the
disputed domain name, along with several of Complainant’s other registered
trademarks, for the illegitimate, commercial and unfair purpose of misleadingly
diverting consumers from the Complainant’s competitors offering similar
services and products.
Salvia Corporation’s registration and use has been for the intentional
purpose of attracting Internet users interested in Complainant’s products. Until the initiation of the present
proceeding, Salvia Corporation was clearly operating its website for commercial
gain by misleadingly attracting and directing Internet users to websites
featuring competing services and products.
Salvia Corporation no doubt received click-through advertising fees for
diverting Internet users to these websites.
Internet consumers, attempting to obtain information about Complainant’s
services and products, were likely to access the website, believing it to be
affiliated with Complainant. This is
strong evidence of bad faith. ICANN
Policy ¶ 4(b)(iv). Arbitration
panels involving Salvia Corporation have previously found that such use of an
identical or nearly identical “domain name constitutes bad faithful
registration and use pursuant to Policy ¶ 4(b)(iv).” E.g. Malletier at page 4.
Paragraph
4(b)(iii) of the Policy provides that evidence of bad faith shall also include
circumstances in which a respondent has “registered the domain name primarily
for the purpose of disrupting the business of a competitor”.
Here, Salvia Corporation registered and used a domain name identical to the Complainant’s PSAV mark. Salvia Corporation used the disputed domain name to misdirect Internet users to its commercial website, which featured competing services and goods. Such conduct has also been found to evidence bad faith pursuant to Policy ¶ 4(b)(iii).
It is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by SIA Netex Galaxy that would not be illegitimate. Panels have held that under these conditions, even passive use of a disputed domain name is considered to be in bad faith. E.g. Group Kaitu, LLC, Darkside Prods., Inc. v. Group Kaitu LLC a/k/a Manila Indus., Inc., D2005-1087 (WIPO January 6, 2006) (citing Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
The cyberflying exercise provides still more clear evidence of bad faith under ¶ 4(a)(iii) of the ICANN Policy. See, e.g. MB Financial Bank, N.A. v. MBBANK, FA 644517 (Nat. Arb. Forum April 4, 2006) (“[C]yberflight [is a] tactic employed by bad faith cybersquatters.”); Group Kaitu, LLC, Darkside Productions, Inc. v. Group Kaitu LLC aka Manila Indus., Inc., D2005-1087 (WIPO January 6, 2006) (“Prior Panels have found [cyberflying] to be clear evidence of a respondent’s bad faith under the [ICANN] Policy. This is a conclusion with which this Panel agrees.”) (internal citations omitted).
B. Respondent
The disputed domain name was registered by SIA Bouns on April 22,
1999. The Complainant’s mark was first
used in commerce on October 21, 2002.
The Respondent could not have registered the disputed domain name in
bad faith because the Complainant had no trademark rights as at that date. UDRP cases show that the trademark must
predate the domain name. E.g. Aspen
Grove Inc. v Aspen Grove, D2001-0798 (WIPO Oct. 17, 2001). A complainant must prove that a domain name
was registered as well as being used in bad faith.
The Respondent has never attempted to sell the disputed domain to the
Complainant or a competitor.
The Respondent does not deny that trademark infringement has occurred
with the Respondent’s use of the disputed domain name but alleges that such is
outside the scope of the Policy.
The Respondent seeks a declaration against the Complainant of reverse
domain name hijacking because in April 1999, the Complainant did not employ its
mark in commerce.
Complainant’s Additional
Submission
SIA Netex Galaxy, Salvia Corporation and SIA Bouns are each shown on
internet records as having different addresses in Riga, Latvia. Salvia Corporation is a Panamanian
corporation. The others are in Latvian.
Prior panels have established that a transferee of an Internet domain
name cannot escape a finding of bad faith registration under the Policy by
relying upon a lack of bad faith of the prior registrant. E.g. Webjet Mktg. Pty. Ltd. v.
Brad Norrish, D2005-1096 (WIPO Dec. 29, 2005); Ideenhaus
Kommunikationsagentur GmbH v. Ideenhaus GmbH, D2004-0016 (WIPO Feb 25,
2004).
Prior decisions have uniformly held that for the transferee of a domain
name, registration under the Policy refers to the date when the transfer took
place. See, e.g. BWR
Resources Ltd. V Waitomo Assoc. Ltd., D2000-0861 (WIPO Oct. 4, 2000)
(“[R]egistration in the case of this Respondent refers to the date when it
acquired the name from the person who first registered it.”).
On this point, the following quotation from Gewista-Werbegesellschaft
mbH v. Unasi Inc., D2005-1051 (WIPO Nov. 22, 2005) is apposite:
[H]aving reviewed earlier decisions of
panels, the Panel believes, that the fact, that the Respondent did not register
the disputed domain name itself but acquired it form the previous owner, does
not mean that the Respondent has not ‘registered’ the Domain Name within the
meaning of the Policy since there is no reason to differentiate between a
direct registration and registration after transfer. The domain name at issue was in fact “registered” within the
meaning of the Policy when it had been acquired by the Respondent [from a prior
registrant]. [Emphasis added]
SIA Netex Galaxy, Salvia Corporation, and SIA Bouns, are each separate
legal entities. They maintain separate
offices, and Salvia Corporation has a citizenship different from that of SIA
Netex Galaxy and SIA Bouns. There is no
basis for the Panel to disregard the separate corporate identities of these
three legal entities. Under all
standard registration agreements, domain names are required to be registered in
the name of the true owner.
The Respondent (as well as Salvia Corporation) should be estopped from
asserting that its activities are legally equivalent to those performed by the
prior registrant, SIA Bouns. The
Respondent, SIA Netex Galaxy (and Salvia Corporation) have held themselves out
as separate corporations by, for example, providing different contact
information to the registrar relating to the disputed domain name. They have provided unique contact
information to the United States Patent and Trademark Office, confirming their
corporate status and identity as separate from that of SIA Bouns. Having gone through the process to transfer
the domain name from SIA Bouns to Salvia Corporation some time between
September 2005 and March 2006, Salvia Corporation (and the Respondent, SIA
Netex Bouns) should not now be heard to assert that such transfer had no real
legal effect.
The Respondent and Salvia Corporation both have “unclean hands”. As discussed in the Amended Complaint, the
recent cyberflying episode, jointly orchestrated by the Respondent and Salvia
Corporation, is itself evidence of bad faith.
Accordingly, it would be inequitable to allow the Respondent (or Salvia
Corporation) to seek the benefit of conduct attributable to the prior
registrant, SIA Bouns.
After filing the Amended Complaint, a panel appointed by the National
Arbitration Forum issued a decision in which the Respondent, Salvia Corporation,
was again found to have registered and used a domain in bad faith. Ass’n
of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006).
The present circumstances are similar to the facts in the Ideenhaus case cited above. There, the disputed domain name was
originally registered in 1999, apparently in the name of the Respondent’s
managing director. After notice of a
trademark dispute, the domain was transferred from the name of the managing
director directly to the respondent corporation. In assessing the issue of registration in bad faith, the panel
stated as follows:
The Respondent did not register the Domain
Name directly with the registrar but became the new owner by way of a transfer
after acquiring the Domain Name from its managing director. It is the Panel’s view that this does not
mean that the Respondent has not ‘registered’ the Domain Name within the
meaning of the Policy, indeed, there is no reason to differentiate between a
direct registration and registration after a transfer (see also Dixons Group Plc v Mr. Abu Abdullaah WIPO
Case No. D2000-1406, and Societé Air
France v. Vladimir Federov WIPO Case No. D2003-0639). The Domain Name was in fact ‘registered’
within the meaning of the Policy after it had been acquired by the Respondent
between June 6, 2001, and January 17, 2002.
C. Respondent’s Additional Submissions
All the
examples cited by the Complainant where a Panel has treated transfers of a
domain name as equivalent to registration for the purposes of the Policy, were
cases where no response had been filed.
The Complainant has not proved that the disputed domain name was
transferred. Both SIA Bouns and Salvia
Corporation shared the same registrar, IP address and location and technical
contacts.
Even if there were a transfer, SIA Bouns and Salvia Corporation should
be treated as the same because both are wholly owned by the same person. A change in registrant information between
two ‘legal fictions” owned by the same person does not constitute the transfer
of a domain name but is merely a lawful change in legal identity.
FINDINGS
The Complainant has rights in a registered US
service mark for PVAC with effect from October 21, 2002.
The disputed domain name was registered by
SIA Bouns on April 22, 1999. Some time
between September 2005 and March 2006, registration of the disputed domain name
was transferred to Salvia Corporation.
After the Complaint had been filed with the
National Arbitration Forum and served electronically on the registrar and
Salvia Corporation, the name of the registrant was changed to SIA Netex
Galaxy.
SIA Bouns, Salvia Corporation are SIA Netex
Galaxy are all controlled by Vladimir Ostrovsky of Riga, Latvia, although
Salvia Corporation is a Panamanian corporation.
The Complaint gave no rights to any of the
above three corporations to use its mark in any way. At the time of the filing of the original Complaint, the website
operated by Salvia Corporation directed internet users to the products of the
Complainant and others.
It was not denied by the Respondent that
Salvia Corporation had been a respondent in three proceedings under the Policy
where transfer of the disputed domain names had been ordered. Nor was the ‘cyberflying’ transfer of
registration denied.
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.
It is not disputed by the Respondent that the
disputed domain name is identical to one of the Complainant’s registered marks
and confusingly similar to the other.
The Complainant gave the Respondent no rights
in the marks. Nor does the Respondent
really attempt to bring itself (or its predecessor registrants) into the ambit
of ¶ 4(c) of the Policy. However, the
discussion on bad faith which is to follow has a bearing on the question
whether the Respondent had rights in the disputed domain name before the
Complainant acquired rights.
The two principal questions raised in this
proceeding are:
(a)
Whether the
transfer of the disputed domain name to the Respondent is equivalent to
registration.
(b)
Can the
Complainant prove bad faith registration, although bad faith use may be shown?
The Panel has considered and agrees with the
findings in the precedents cited by the Complainant on the point that bad faith
should be assessed at the time of a transfer of a disputed domain name, even if
the original registration could not be shown to have been in bad faith. The quotations in the Complainant’s
Additional Submissions noted above are expressly approved, as is the following
dictum from Webjet Marketing Pty Ltd v.
Brid Norrish, D2005-1096
(WIPO Dec. 29, 2005).
As mentioned above, the domain name was first
registered in 1995 and transferred to the Respondent in October 2005. The Complainant provided no evidence that
there was any bad faith in the initial registration. However, in this case the issue is whether the Policy applies
where there is bad faith use following a good faith initial registration. The Complainant relies on the precedent in BWR Resources Ltd v. Waitomo Adventures Ltd,
WIPO Case No. D2000-0861; where the Panel “accepts that ‘registration’…
refers to the date when it (the respondent] acquired the name from the person
who first registered it”. Other cases
supporting the concept that the Policy applies to respondents who are domain
name transferees include Dicons Group Plc
v. Mr. Abu Abdullaah, WIPO Case No. D2000-1406 and Ideenhaus Kommunikationsagentur GmbH v.
Ideenhaus GmbH, WIPO Case No. D2004-0016. In the latter case the Panel’s view was that “there is no reason
to differentiate between a direct registration and registration after a
transfer.
Similarly, in Mamas & Papas (Holdings) Limited, Mamas & Papas (Retail)
Limited v. QTK Internet/Name Proxy, WIPO Case No. D2004-0496 the
Panel argued that the “registration or acquisition” wording of paragraph
4(b)(i) recognizes that the acquisition must be from a third party who has
previously registered the domain name in question. In that case the Panel argued that the Policy must be construed
as a whole and so produce a sensible interpretation, that is, the paragraph
refers to both the registration and subsequent acquisition of the domain name
by transfer. The Panel concluded that
the Policy must be interpreted in such a way as to give effect to the aims ad
purposes of the Policy.
This Panel agrees with the Complainant’s
submission that the fact that the Respondent was not the first registrant of
the domain name does not preclude a finding that the domain name was registered
and is being used in bad faith.
Of importance is the responsibility of a
transferee of a domain name as articulated by the Panel in the Gewista-Werbegesellschaft mbH v. Unasi Inc.,
D2005-1051 (WIPO Nov. 22, 2005).
After having acquired the disputed domain name, the Respondent became party to the Registration agreement and all its terms and conditions. The Panel believes that the Respondent was also aware of this. Art. 9.1. of the registration agreement (annex D to the Complaint) provides among others, that the original owner of the domain name agrees that prior to transferring ownership of its domain name to another person (the “Transferee”), the original owner of the domain name shall require the Transferee to agree, in writing to be bound by all the terms and conditions of this Agreement, that the domain name will not be transferred until the domain name registrar receives such written assurances or other reasonable assurance that the Transferee has been bound by the contractual terms of this Agreement (such reasonable assurance as determined by the Registrar in its sole discretion) along with the applicable transfer fee and that if the Transferee fails to be bound in a reasonable fashion (as determined by the Registrant in its sole discretion) to the terms and conditions of such an Agreement, any such transfer will be null and void.
Such conditions included to be bound by the
“dispute policy […] developed by ICANN” (Art. 8). This means, that the Respondent is bound by the same terms and
conditions than its predecessor in title even if it has not necessarily
registered the disputed domain name directly of personally with the Registrar
(see e.g. Hebdomag Inc. v.
IlluminatyMarketing, WIPO Case No. D2001-0206; Société Air France v. Vladimir Federov WIPO Case No. D2003-0639).
The Respondent’s contention that these
precedents should not be followed just because they were undefended cases, is
not tenable. Nothing the Respondent has
submitted provides any ground for the Panel not following these precedents which
are reasoned and in accordance with the intentions of the Policy.
Next, the Panel considers that SIA Bouns,
Salvia Corporation and the present Respondent are all separate legal entities
and must be treated as such. The fact
that they have a common proprietor or shareholder is irrelevant.
The register must be taken at its face value,
proclaiming to all the world the identity of the registrant. The integrity of the registration system
demands nothing less. Persons searching
the Register should not have to enquire beyond the information there provided.
The change of registrant must be regarded as
a transfer and not an update of information.
The situation might be different if a registrant changes its corporate
name. Here, the Respondent’s submissions
make it clear that there are three different corporate entities.
Accordingly, the Panel finds that there has
been a transfer from the original registrant to Salvia Corporation and then to
the Respondent. Although there is no
proof of bad faith registration in 1999 by the original registrant, the
cyberflying episode infers bad faith registration by the present Respondent at
the time of the transfer to it.
There was ample evidence of bad faith use by
Salvia Corporation up until the date of the transfer to the Respondent, i.e.
the time of the filing of the Complaint.
The website accessed by the disputed domain name clearly infringed the
Complainant’s mark and would lead any internet user to believe that the Complainant
was associated with the website. It
would clearly direct misleadingly consumers from the Complainant to
competitors. The proper website for
consideration is that existing at the time the Complaint was filed. MB Fin.
Bank v. MB Bank, FA
644517 (Nat. Arb. Forum April 4, 2006).
Moreover, bad faith is shown by the track
record of Salvia Corporation in at least three other proceedings under the
Policy and by the cyberflying incident.
Accordingly, each of the elements in the
Policy has been established and the Complaint succeeds. It follows that the Respondent’s
counterclaim for a declaration of reverse domain name hijacking must fail.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <psav.com>
domain name be TRANSFERRED from Respondent to Complainant.
Hon. Sir Ian Barker, QC,
Panelist
Dated: June 27, 2006
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