WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Leipa Pack Srl v. Ulrich Brunhuber and SC Health Care Packaging SRL
Case No. D2005-0920
1. The Parties
The Complainant is Leipa Pack Srl, County Ilfov, Romania, represented by an external representative, Romania.
The Respondent is Ulrich Brunhuber , Ingolstadt, Germany and Health Care Packaging SRL, County Ilfov, Romania.
2. The Domain Name and Registrar
The disputed domain name is registered with D.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August�29,�2005. On August�30,�2005, the Center transmitted by email to D a request for registrar verification in connection with the domain name at issue. On September�12,�2005, D transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September�22,�2005. In accordance with the Rules, paragraph 5(a), the due date for Response was October�12,�2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October�14,�2005.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on October�27,�2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The language of the proceeding is English.
4. Factual Background
Complainant’s trademark �LEIPA� was registered in Romania on May�25,�2004, in connection with flexible packaging in reels and sheets.
The Respondent registered the domain name on October�6,�2000.
Leipa Pack Srl was incorporated on March�22,�1999.
5. Parties’ Contentions
A. Complainant
The Complainant submits that:
There exists a connection between the two Respondents of the present Complaint in the sense that the Respondent Brunhuber is shareholder of the second Respondent (i.e. SC Health Care Packaging SRL), and the data of the Respondent’s company (which is active in the same market field as the Complainant) is presented on the site “www.”.
The domain name is identical to the LEIPA trademark registered on May�25,�2004, and similar to the company name of the Complainant, i.e. Leipa Pack Srl incorporated in 1999.
The Respondents have no rights or legal interest to use the domain name.
On the initiative of the company (Leipa Pack) the shareholder Brunhuber reserved the domain name on behalf of the company, Mr. Brunhuber being appointed contact person.
The domain name was used by Complainant’s company to be known and to maintain the contact with their partners and with the market evolution in their field of activity up to the beginning of June 2005, when the domain name began to be used without rights by the Respondent Brunhuber, who cancelled the initial content of the site and the data of Complainant’s company to substitute the same with the data of Respondent’s company (SC Health Care Packaging SRL).
Shareholder Brunhuber left the company Leipa Pack Srl in March, 2005.
The domain name has been used in bad faith since June 2005.
The Respondent offered to sell the domain name to the interested persons.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Complaint to succeed, the Complainant needs to demonstrate that:
1) the domain name is identical or confusingly similar to a trademark or service mark (“mark”) in which the Complainant has rights;
2) the Respondent has no rights or legitimate interests in respect of the domain name;
3) the domain name has been registered and is being used in bad faith.
The Respondent has failed to submit any statement. He has not contested the allegations in the Complaint and the Panel shall decide on the basis of Complainant’s submissions, and shall draw such inferences from the Respondent’s default that it considers appropriate (paragraph�14(b) of the Rules).
A. Identical or Confusingly Similar
The Panel finds the disputed domain name to be identical to the trademark LEIPA owned by the Complainant.
The Complainant has thus succeeded in providing evidence of the confusing similarity between its registered trademark LEIPA and the domain name .
B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The respondent in a UDRP proceeding does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
a) that before any notice to the respondent of the dispute, he or she used or made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
b) that the respondent is commonly known by the domain name, even if he or she has not acquired any trademark rights; or
c) that the respondent intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Panel notes that the Complainant affirms that: 1) the Respondent Brunhuber, when shareholder of Complainant’s company, registered the domain name on behalf of the Leipa Pack company; 2) that Mr. Brunhuber was appointed as the contact person for the domain name (administrative contact); and 3) that the domain name began to be used without rights by the Respondent only from June 2005.
Consequently, the Panel finds that when the Respondent registered the domain name he was authorised and appointed to do so by the Complainant. In addition, it appears that before any notice of the dispute, Respondent used the domain name in connection with a bona fide offering of goods or services. Respondent has used in fact the domain name for almost five years before being contested by the Complainant.
There is, however, one part of the factual background that is still unclear. When the Complainant gave the Respondent permission to register the Domain Name “on behalf of the Complainant”, was the intention that the domain name should have been registered in the Complainant’s or in the Respondent’s name? The panel notes, there is no clear evidence to either end. The Panel finds it doubtful whether the Complainant has proven that the Respondent had no rights or legitimate interests in respect of the disputed domain name. However, as the Complainant needs to prove all three elements of the Policy and fails to prove the last (see below), it is not necessary for the Panel to conclude under the second element.
C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:
i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.
To be successful, the Complainant must prove that the domain name was registered and is being used in bad faith. Complainant has provided no evidence that the domain name was registered in bad faith. Complainant has not even claimed that the registration occurred in bad faith, in fact Complainant stated that the Respondent was authorised to register the domain name by the Complainant itself and that only Respondent’s recent use of the domain name is in bad faith.
It may seem that the Complainants explicit admission that it gave the Respondent permission to register the domain name the Panel finds that Respondent did not have the requisite bad faith intentions, as meant by the Policy, when he registered the domain name at issue. In addition, the Panel finds that the circumstances mentioned by the Complainant, regarding Respondent’s alleged use of the domain name in bad faith, being of a later date than the registration of the domain name, cannot, at least not in this case, lead to the conclusion that the original registration in good faith in retrospective has become a registration in bad faith.
Previous decisions have considered the matter of good faith registration followed by bad faith use. In Substance Abuse Management, Inc. v. Screen Actors Modesl International, Inc. (SAMI), WIPO Case No. D2001-0782, the panel stated that “If a domain name was registered in good faith, it cannot, by changed circumstances, the passage of years, or intervening events, later be deemed to have been registered in bad faith”. In Teradyne Inc. v. 4tel Technology, WIPO Case No. D2000-0026, the Respondent registered a domain name to reflect its own business name but subsequently sought to sell the name for profit when its business dissolved. The panel found that to decide the case on the subsequent bad faith action would “extend the Policy to cover cases clearly intended to be outside its scope.” Similarly, in Telaxis Communications Corp. v. William E. Minkle, WIPO Case No. D2000-0005, the respondent registered the disputed domain name in good faith but subsequently began to use it in bad faith. It was held that because the registration was made in good faith the requirement of Paragraph 4(a)(iii) was not met.
As a conclusion, the Panel finds that Complainant has not satisfied the condition under paragraph 4(a)(iii) of the Policy. It is for the present proceeding irrelevant to analyse whether or not the domain name is actually being used in bad faith since for a Complainant to succeed, the Panel must be satisfied that the domain name has been registered and is being used in bad faith.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Fabrizio Bedarida
Sole Panelist
Date: November�8,�2005
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