[Indexed as: Askonas v. Webocracy]
[Indexed as: askonasholt.com]

WIPO Arbitration and Mediation Center
Administrative Panel Decision

Case No. D2000-0392
Commenced: 22 May 2000
Judgement: 3 July 2000 

Presiding Panelist: Geert Glas

Domain name -  Domain name dispute resolution policy - Trademark - Identical - Legitimate rights - Bad faith - Common law trademark rights.

Complainant holds common law trademark rights in the name Askonas Holt  Respondent registered the domain name, askonasholt.com, and claimed that Complainant has no trademark rights in the name since it is not registered as a trademark.  However, previous WIPO decisions confirm that common law trademark rights are protected under the Policy. 

Held, Name Transferred to Complainant.

Respondent's domain name is identical to Complainant's trademark.

Complainant has not licensed Respondent to use its trademark in any way.  In addition, Respondent has not attempted to register or use the name as a trademark, nor has Respondent ever been known by this name.  Therefore, Respondent has no legitimate rights in respect of the domain name.

Respondent was aware of Complainant's trademark at the time of registration.  By knowingly choosing a domain name which consists of Complainant's trademark, Respondent has demonstrated bad faith.  It can be inferred that Respondent registered the name with the sole purpose of disrupting Complainant's business, especially since Respondent has not demonstrated that his project will ever get off the ground. 

Policies referred to

Uniform Domain Name Dispute Resolution Policy

Panel decisions referred to

Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235.

Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210.

Glas, Panelist: -

1. The Parties

Complainant is Askonas Holt Ltd, Lonsdale Chambers, 27 Chancery Lane, London WC2A 1PF, England, represented by Peter Martin, Director of Finance and Development, hereinafter "Complainant".

Respondent is Webocracy Inc, PO Box 1, Creighton, NE 68729, U.S.A., represented by Steve Larson, CEO, hereinafter "Respondent".

 2. Domain Name and Registrar

The domain name at issue is "askonasholt.com", hereinafter referred to as the "Domain Name". The registrar is Network Solutions, Inc.

 3. Procedural History

The WIPO Arbitration and Mediation Center (the Center) received the Complainant's complaint on May 5, 2000, (hard copy) and May 8, 2000, (e-mail). The Center verified that the complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). Complainant made the required payment to the Center. The formal date of the commencement of this administrative proceeding is May 22, 2000.

On May 10, 2000, the Center transmitted via e-mail to Network Solutions Inc. a request for registrar verification in connection with this case. On May 12, 2000, Network Solutions Inc. transmitted via e-mail to the Center, Network Solutions' Verification Response, confirming that the Respondent is the registrant as well as the administrative, technical, zone and billing contact.

Having verified that the complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted on May 22, 2000, to Respondent, Notification of Complaint and Commencement of the Administrative Proceeding, via post/courier, facsimile and
e-mail, in accordance with the following contact details:

Webocracy Inc.
PO Box 1
Creighton, NE 68729
U.S.A.

E-mail: Wn1944806406@worldnic.net
Steve.larson@webocracy.com
Postmaster@askonasholt.com

The Center advised that the Response was due by June 10, 2000. Respondent requested a two day extension of the deadline because of computer problems, which the Center granted. Therefore, the Response was filed with the Center on June 12, 2000, by e-mail and on June 13, 2000, by hard copy.

On June 15, 2000, in view of the Complainant's designation of a single panelist, the Center invited Mr. Geert Glas to serve as a panelist.

Having received on June 15, 2000, Mr. Geert Glas's Statement of Acceptance and Declaration of Impartiality and Independence, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Geert Glas was formally appointed as the Sole Panelist. The Projected Decision Date was July 3, 2000. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules.

The Administrative Panel shall issue its Decision based on the Complaint, the Response, the evidence presented, the Policy, the Rules and the Supplemental Rules.

 4. Factual Background

The Domain Name was registered on September 22, 1998.

The complaint is based upon common law trademark rights on the words ASKONAS HOLT which are also used by the Complainant as its company name.

It appears from the copy of a certificate of incorporation, that the company Askonas Holt Limited was formed on June 11, 1997. According to Complainant, it was the result of a merger between the companies Harold Holt Limited and Lies Askonas Limited. Complainant provides management services for musicians performing classical music.

According to Complainant, the CEO of Respondent, Mr Steven Larson, is married to Markella Hatziano, a singer who was a client of Lies Askonas Limited, as evidenced by a 1997 client list. Prior to the merger, Lies Askonas Limited decided that it could no longer represent Markella Hatziano. Markella Hatziano is now managed by Steve Larson who is, as indicated, CEO of Respondent. This is also evidenced by the website located at www.markela.com, which lists Steve Larson of Respondent as part of the management for Markella Hatziano, together with Miguel Lérin (Spain) and Jean-Marie Poilve (France).

Respondent has indicated in it Response that it intends to use the Domain Name for a new Internet concept "Ask Ona Sholt". Ona Sholt would thereby be a fictional person who will answer visitors' questions. The Domain Name links to following web page: 

According to Respondent, whether the concept has been developed or not is irrelevant. In addition to that, "the ‘Ask _____' concept is firmly entrenched in the minds of Internet users, as exemplified by a printout of the first page of a search on the website DomainSurfer.com of the keyword ‘ask' prepended with the carat (^) symbol to locate the string ‘ask' at the beginning of all domain names. The query has yielded 12,220 matches indicating that there are that many domain names that begin with the string ‘ask'".

Furthermore, according to Respondent, "the artist division for Webocracy is used only for the processing of incoming fees earned by Ms. Hatziano, which are then paid to her as a salary. It is not used for securing or implementing contracts. Organisation Internationale Artistique in Paris and Miguel Lerín in Barcelona are the only organizations authorized to secure and implement
contracts for Ms. Hatziano. Webocracy is not in competition with artistic management companies; only other web companies".

It appears from a set of e-mails exchanged between Complainant and Respondent, that Complainant has claimed the Domain Name - without success. In one of these e-mails, Steve Larson confirmed that he is the current manager of Markella Hatziano who was managed by Lies Askonas Limited prior to its merger which created Complainant.

There is no relationship between Respondent and Complainant, and Respondent is not a licensee of Complainant, nor has he otherwise obtained an authorization to use Complainant's marks or company name.

5. Parties Contentions

a. Complainant

Complainant contends that Respondent has registered the Domain Name which is identical or confusingly similar to Complainant's company name and common law trademark, that Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name has been registered and is being used in bad faith.

Consequently, Complainant requires the transfer of the Domain Name registration.

b. Respondent

In summary, Respondent alleges that Complainant has no trademark rights since the name Askonas Holt is not registered as a trademark, that he has a legitimate interest in the Domain Name since he plans to launch the project "Ask Ona Sholt" and that neither registration nor use was made in bad faith since he had no knowledge of the company Askonas Holt.
 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Administrative Panel as to the principles the Administrative Panel is to use in determining the dispute: "A Panel shall 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." 

Applied to this case, Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

 1) that the Domain Name registered by the Respondent is identical to the trademark in which the Complainant has right; and,

2) that the Respondent has no legitimate interests in respect of the Domain Name; and,

3) that the Domain Name has been registered and used in bad faith.

a. Identity

The Domain Name is "askonasholt.com".

"Askonas Holt" is the company name of Complainant in which Complainant claims common law trademark rights.

The question here is whether a non-registered name in which Complainant claims common law trademark rights can be protected under the Policy.

It should be noted that the Policy does not require that a trademark be registered in order to be invoked under the Policy. Common law trademark rights can indeed be vested in names and signs on the basis of the use which is made thereof, even in the absence of a trademark registration. This solution is also confirmed in Jeanette Winterson.v. Mark Hogarth, WIPO Case No. D2000-0235 and Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210.

In view of the above, the Administrative Panel finds that Complainant has common law trademark rights on the name "Askonas Holt" and that the Domain Name is identical to the name "Askonas Holt". Therefore, the Panel finds that the requirement of the Policy paragraph 4(a)(i) is satisfied. 

b. Rights or Legitimate Interests

Complainant has not licensed or otherwise permitted Respondent to use its trademark or to apply for any domain name incorporating its name. In addition to that, it appears that Respondent has not registered nor used the name "Askonas Holt" nor "Ask Ona Sholt" as a trademark, nor has he ever been known by this name.

Although Respondent registered the Domain Name on September 22, 1998, and invokes the fact that he had already started a project called "Ask Ona Sholt" long before, Respondent has not brought the slightest evidence to support his allegations.

The Administrative Panel therefore finds that Complainant has met its burden under Section 4(a)(ii) of the Policy and that Respondent has no right or legitimate interest in the Domain Name. 

c. Registration and Use in Bad Faith

Several facts have to be taken into consideration:

When registering the Domain Name, Respondent knowingly and purposefully chose a name which is identical to Complainant's common law trademark and company name.

Indeed, Steve Larson, manager of Markella Hatziano and CEO of Webocracy, knew about Askonas Holt when registering the Domain Name. According to the certificate of incorporation, Askonas Holt was incorporated on June 11, 1997, whereas the Domain Name was registered over 15 months later, on September 22, 1998. As the manager of Markella Hatziano, he certainly knew that her former managing company, Lies Askonas Limited, merged on June 11, 1997, with Harold Holt Limited to become Askonas Holt.

The similarities between "Askonas Holt" and "Ask Ona Sholt" cannot result from a mere coincidence. While Respondent could have chosen a million of other names for his project, he precisely chose a name so close to Complainant's name as to be identical or at least extremely confusingly similar. By knowingly choosing a domain name which solely consists of Complainant's company name, Respondent has intentionally created a situation which is at odds with the legal rights and obligations of the parties.

Respondent registered the Domain Name on September 22, 1998. Almost two years later, the web site connected to it still displays that a project is "coming soon…". In his Response, Respondent has not brought any elements showing that there is a project which
may see the light one day. Indeed, Respondent states that "Whether this concept has been developed or not is not relevant".

In consideration of the facts above stated, the Administrative Panel finds that circumstances are present indicating that Respondent has registered the Domain Name for the purpose of disrupting Complainant's business. It indeed seems that Respondent's real current goal is to prevent Complainant, which Respondent does not seem to hold in high esteem, from reflecting its company name in the Domain Name.

In conclusion and in view of the above, the Administrative Panel finds that Complainant has met its burden under Section 4(a)(iii) of the Policy and that Respondent has registered and used the Domain Name in bad faith.

7. Decision

In light of the foregoing, the Administrative Panel decides that the Domain Name "askonasholt.com" registered by Respondent is identical to the company name and common law trademark of Complainant, that Respondent has no right or legitimate interest in respect of the Domain Name, and that the Domain Name has been registered and is being used by Respondent in bad faith.

Accordingly, pursuant to Paragraph 4(i) of the Policy, the Administrative Panel requires that the registration of the Domain Name "askonasholt.com" be transferred to Complainant.
 

Domain Name Transferred