WIPO Domain Name Decision D2005-1051 for gewista.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Gewista-Werbegesellschaft mbH v. Unasi Inc.

Case No.�D2005-1051

1. The Parties

The Complainant is Gewista-Werbegesellschaft mbH, Vienna, Austria, represented by Sch�nherr Rechtsanw�lte OEG, Austria.

The Respondent is Unasi Inc, Panama.

2. The Domain Name and Registrar

The disputed domain name is registered with iH Inc. d/b/a�DotR.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the�“Center”) on October�5,�2005. On October�5,�2005, the Center transmitted by email to iH Inc. d/b/a DotR a request for registrar verification in connection with the domain name at issue. On October�5,�2005, iH Inc. d/b/a DotR 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 October�11,�2005. In accordance with the Rules, paragraph�5(a), the due date for Response was October�31,�2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November�2,�2005.

The Center appointed Christian�Schalk as the Sole Panelist in this matter on November�8,�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 Panel agrees with the Center’s assessment concerning the Complainant’s compliance with the formal requirements. The Complaint was properly notified to the Respondent in accordance with Paragraph�2(b) of the Rules.

The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties.

The language of the proceedings is English.

4. Factual Background

The Complainant was founded in 1921 as a public company owned by the City of Vienna. Its primary task was to market the transport sector. In 1974 the Complainant became a private law company. Today, the Complainant is Austria’s largest provider of out of home advertising and owns over 330 rolling boards, 40,000 advertising panels, 1,500 advertising columns and nearly 4.100 city light panels in Austria. The�Complainant is the 5th biggest Austrian media company.

In 1990, the Complainant expanded to other Central- and Eastern European countries by taking over the Hungarian company Europlakat and by establishing subsidiaries in Prague and Bratislava. The Complainant is now the biggest out of home advertising group in Eastern Europe. In 2000 the Complainant has started a co-operation with JCDecaux and belongs since then to the second largest Media company in the world.

The Complainant is the owner of the following trademark registrations:

- Austrian trademark registration No.�10215 WWZ-WIENER WANDZEITUNG GEWISTA, priority date September�8,�1982, registration date March�18,�1983, covering goods and services in Int. classes 1 and 2;

- Austrian word/device trademark registration No.�18612 GEWISTA, priority date September�22,�1999, registration date January�13,�2000, covering goods and services in class�3;

- Austrian trademark registration No.�20039 GEWISTA, priority date September�13,�2001, registration date November�14,�2001, covering goods and services in class�3 and 4;

- Austrian word/device trademark registration No.�21437 GEWISTA ROLLING BOARD, application date December�6,�2003, registration date December�17,�2003, covering goods and services in classes�3 and�4;

- International word/device trademark registration No.�730868 GEWISTA, registration date March�7,�2000, covering goods and services in Int. classes�26 and 29, for several Eastern European countries;

- International trademark registration No.�771594 GEWISTA-URBAN MEDIA, registration date November�14,�2001, covering goods and services in Int. classes�09,�35,�41 and 42, for several Eastern European countries;

- European Community trademark registration (word/device trademark) No.�1555127, GEWISTA priority date September�22,�1999, registration date June�25,�2001, covering goods and services in Int. Classes�9 and 35;

- European Community trademark registration No.�2398196 GEWISTA-URBAN MEDIA, priority date September�13,�2001, registration date September�17,�2002, covering goods and services in Int. Classes�9,�35, 41 and�42;

European Community trademark registration (word/device trademark) No.�3884822 GEWISTA ROLLING BOARD, application date June�14,�2004, covering goods and services in Int. classes 3, 16, 30, 32, 34, 35, 38 and 41.

At least before May�16,�2005, the disputed domain name was registered for Mr.� Atoch, Gewista CZ s.r.o. This entity used the sign GEWISTA as part of the domain name at issue. The Complainant became aware of this fact by a consumer who informed him that he became confused about the use of this sign by Gewista CZ s.r.o. The Complainant sent a cease and desist letter to this entity who never replied. Therefore, the Complainant filed a lawsuit for infringement of its Community trademark registration No.�1555127 with the Commercial Court of Vienna. On February�15,�2005, the Commercial Court of Vienna rendered a preliminary injunction No.�41 Cg 8/05t by which prohibited Gewista CZ s.r.o. any use of the designation GEWISTA or any other sign which is confusingly similar to the Complainant’s trademark as trade name, domain name or sign for its goods and services. After this court decision the disputed domain name was transferred to the Respondent.

Several complaints have been filed against the Respondent in the past where transfer of domain names was ordered. (see e.g. Deutsche Telekom AG v. Unasi Management, Inc. WIPO Case No.�D2005-0423; Members Equity PTY v. Unasi Management, Inc, WIPO Case No.�D2005-0383; Gianfranco Ferre’ S.p.A. v. Unasi Inc., WIPO Case No.�D2005-0622; L’Oreal Biotherm, Lancome Parfums et Bouteille & CIE v. Unasi Inc., WIPO Case No.�D2005-0623; Red Bull GmbH v. Unasi Management, Inc., WIPO Case No.�D2005-0304).

Internet users who type the domain name at issue into the browser are redirected to a website which is accessible under the domain name . This website contains only links to various websites offering information on traveling. The website does not contain any information or reference to the Respondent.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the disputed domain name is identical or at least confusingly similar to the Complainant’s trademarks. The Complainant believes that the likelihood of confusion is not excluded by the fact that a device mark is per definition a design and that a domain name can only consist of a word. In this context he cites Swatch AG v. Stefano Manfroi WIPO Case No.�D2003-0802, where the panel stated that a domain name can be confusingly similar to a device mark.

The Complainant contends that its device trademarks basically consist of the word GEWISTA.

The Complainant explains that this word is an abbreviation of “GEmeinde WIen STadtAnk�nder”, which can be translated as “organ for announcements by the city of Vienna”. The meaning of the word GEWISTA, however, is mostly unknown today. For the public this term appears to be an invented word without any meaning.

Furthermore, the Complainant asserts that although each character is printed on a red bullet, which constitutes the only design element of these device trademarks, the most important element of these marks is the word GEWISTA since consumers primarily remember the word element of a sign.

As far as the word mark GEWISTA-URBAN MEDIA is concerned, the Complainant believes, that a hyphen divides the trademark in two parts where the dominant element is again the word GEWISTA. Therefore, the Complainant holds the disputed domain name is identical to the dominant part of this Complainant’s word mark. The “.com” element of the disputed domain name does not change this conclusion since numerous panel decisions, such as Swatch AG v. Stefano Manfroi, WIPO Case No.�D2003-0802, have stated that a Top Level Domain has to be ignored when assessing the identity or similarity of a trademark in the domain name.

The Complainant alleges also, that the Respondent has no rights or legitimate interest in respect of the domain name since the Complainant did not grant any licenses or other permissions to the Respondent to use the trademark GEWISTA nor to register and use it as a domain name.

The Complainant contends further, that the term GEWISTA is an abbreviation without any meaning and which cannot be understood even by German native speakers. Therefore, it is not a designation, which traders would legitimately choose unless seeking to create an impression of an association with the Complainant. In this context the Complainant cites the following WIPO UDRP cases: Liseberg AB v. Administration Local Manage Technical, WIPO Case No.�D2003-0864 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No.�D2000-0003.

The Complainant believes that the use of a domain name to direct Internet users to unrelated websites does not constitute a legitimate interest in the domain name. In this context he cites Liseberg AB v. Administration Local Manage Technical WIPO Case No.�D2003-0864.

The Complainant asserts further that the domain name at issue was transferred to the Respondent after a preliminary injunction issued by the Commercial Court of Vienna prohibited the previous owner to use the term GEWISTA as a domain name.

The Complainant believes also that the Respondent has not used the domain name in connection with a bona fide offering of goods or services and that the Respondent has not been commonly known by this domain name but rather intends to have a free ride on the fame and good will of Complainant’s trademark and profit from consumer confusion.

The Complainant alleges moreover, that the domain name was registered and is being used in bad faith.

In this context the Complainant explains that the trademark GEWISTA as well as the trade name and the Complainant’s activities are well known in Central and Eastern Europe due to the Complainant’s activities and its strong market position. The Complainant asserts that the disputed domain name was transferred to the Respondent after the former owner was prohibited to use the trademark GEWISTA in particular as domain name by preliminary injunction issued by the Commercial Court of Vienna. Therefore, the Complainant believes, that the former owner transferred the domain name at issue to an entity, which seems to have no connection to the former owner, in order to prevent the Complainant from using this domain name.

Furthermore, the Complainant contends that given the fact that GEWISTA is a unique and well-known term, it is not likely that the Respondent would register such domain name without being aware of the Complainant’s trademark. Taking into account that the Respondent is not known under the name “Gewista”, the Complainant holds it obvious that the domain name has been registered in bad faith. In this context he refers to Liseberg AB v. Administration Local Manage Technical, WIPO Case No.�D2003-0864 .

The Complainant asserts also that the use of the disputed domain name misleadingly diverts consumers to the Respondent’s website, causing confusion among consumers by creating the impression of an economic relation with or sponsorship or endorsement of Respondent by Complainant for commercial gain. The Complainant states that the Respondent seeks to create the impression to be affiliated with the Complainant when this in fact is not the case.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law it deems applicable (Paragraph�15(a) of the Rules). Pursuant to Paragraph�4(a) of the Policy, a domain name can be transferred only where the Complainant has proven that each of the following three elements is present:

(A) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(B) The domain name holder has no “rights or legitimate interests in respect of the domain name”; and

(C) The domain “has been registered and is being used in bad faith”.

It is essential to dispute resolution that fundamental due process requirements be met. Such requirements include that a respondent has notice of proceedings that may substantially affect its rights. The Policy, and the Rules, establish procedures intended to assure that a respondent is given adequate notice of proceedings initiated against him, and a reasonable opportunity to respond (Paragraph�2(a) of the Rules).

In this case, the Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply is not due to any omission by the Center.

Since the Respondent has not contested the allegations of the Complainant, the Panel shall decide on the basis of the Complainant’s submissions, and all inferences that can reasonably be drawn therefrom (See Bayerische Motorenwerke AG v. Dariusz Herman, Herman DOMCREATE et co., WIPO Case No.�DNAME2004-00001).

A. Identical or Confusingly Similar

The Complainant has established that the Complainant has trademark rights in the word GEWISTA. However, the Panel notes that the trademark registrations brought by the Complainant before the Panel are all either composite word and device trademarks or a combination of GEWISTA with other terms. Therefore, it is clear that the disputed domain name is not identical with one of the Complainant’s GEWISTA trademarks, since a domain name cannot include devices (see Park Place Entertainment Corporation v. Mike Gorman, WIPO Case No.�D2000-0699).

However, the Panel finds that the disputed domain name is confusingly similar with the Complainant’s trademarks.

The word and device trademarks are a combination of seven coloured circles in one line each of them containing one letter of the word GEWISTA. These circles have only a very low level of distinctiveness if any. On the other hand, GEWISTA is a fancyful term in connection with the goods and services used for and therewith distinctive. In all trademark registrations brought before the Panel, GEWISTA is clearly the dominant portion of the Complainant’s word and device trademarks. The same result applies to the other trademarks, which consist of combinations of GEWISTA with other words, since these words are descriptive terms. Furthermore, the Panel believes that GEWISTA is used by customers to refer to Complainant’s activities and services. Since the device elements cannot be reproduced in a domain name, Internet users, therefore, have to write GEWISTA in the browser in order to reach the Complainant’s websites.

B. Rights or Legitimate Interests

According to the material brought before the Panel and in the absence of a response to the Complaint, the Panel finds that the Respondent cannot demonstrate legitimate rights in the disputed domain name for the following reasons:

The Panel believes that although the Complainant’s trademark has its origins in an abbreviation, customers will not relate the word GEWISTA with its original meaning but regard it as an invented word, since the Complainant has been active for years in different fields of business and also outside Vienna and in other countries. Therefore, the disputed domain name is fairly unique and specific to the Complainant.

The Respondent has not provided any evidence of circumstances of the type specified in Paragraph�4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the domain name. Especially, there is no evidence that the Respondent is known by the domain name at issue.

There is also no connection between the domain name at issue and the services to which customers are directed, once they type it in to the browser.

Moreover, the fact that the disputed domain name has been transferred to the Respondent after the Commercial Court of Vienna issued a preliminary injunction concerning this particular domain name against the previous owner of this domain name speaks clearly against any legitimate interest of the Respondent in this domain name.

The Complainant has also not authorised the Respondent to use its trademark nor to register the disputed domain name.

C. Registered and Used in Bad Faith

Complainant contends that Respondent registered and uses the domain name in bad faith in violation of the Policy, Paragraph�4(a)(iii). The Policy Paragraph�4(b) sets forth four non-exclusive criteria for the Complainant to show bad faith registration and use of domain names:

(1) Circumstances indicating that the Respondent 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 owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or

(2) the Respondent 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 Respondent has engaged in a pattern of such conduct; or

(3) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(4) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location of a product.

According to the material brought before the Panel and in the absence of a response to the Complaint, the Panel finds that the disputed domain name has been registered and used by the Respondent in bad faith in accordance with Paragraph�4(b)(ii and iv) of the Policy for the following reasons:

The Respondent did not register the disputed domain name directly with the registrar but became the new owner by way of a transfer of this domain name by the previous owner. This transfer took place after the previous owner of this domain name was prohibited by a preliminary injunction, issued by the Commercial Court of Vienna, to use the Complainant’s trademark GEWISTA as a domain name. From the material brought before the Panel, it cannot be decided, whether the previous owner registered and used the domain name at issue in bad faith as defined by the Policy. Furthermore, although there would be good reasons to believe that the transfer of the domain name constitutes a collusive behavior to the detriment of the Complainant, it lacks sufficient evidence of the existence of any kind of relation between the previous owner and the Respondent.

However, having 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 from 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 after May�16,�2005 (see, e.g. Dixons Group Plc v Mr. Abu Abdullaah WIPO Case No.�D2000-1406; Hebdomag Inc. v. Illuminaty Marketing, WIPO Case No.�D2001-0206; Feria Muestrario Internaticional de Valencia v. Mr. JP Bronston, WIPO Case No.�D2002-1163; Soci�t� Air France v. Vladimir Federov WIPO Case No.�D2003-0639; Ideenhaus Kommunikationsagentur GmbH v. Ideenhaus GmbH, WIPO Case No.�D2004-0016).

After having acquired the disputed domain name, the Respondent became party of 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. Illuminaty Marketing, WIPO Case No.�D2001-0206; Soci�t� Air France v. Vladimir Federov WIPO Case No.�D2003-0639).

It is a well-established principle under prior UDRP decisions (See Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No.�D2002-0806; Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No.�D2003-0022) and under the Policy (see�Section 2), that the domain name registrant represents and warrants to the registrar that, to this knowledge the registration of the domain name will not infringe the rights of any third party. The Panel finds that the trademark GEWISTA is unique and well-known in several Eastern European countries and that it is not likely that the Respondent, which is situated in Panama, would register, acquire and use such a domain name without being aware of the Complainant’s trademark (see Liseberg AB v. Administration Local Management Technical, WIPO Case No. D2003-0864).

Furthermore, the disputed domain name misleads customers concerning the true nature of the Respondent’s website. Customers expect information on services of the Complainant under the domain name at issue. The Respondent’s websites which customers access when typing in the disputed domain name let them believe that the Respondent is somehow linked with the Complainant or that the Complainant supports somehow- or has at least no objections against the Respondent’s activities. Even if Internet users would realize that the Respondent’s website is not connected with the trademark owner, the Respondent is liable to profit from their initial confusion, since they may still be tempted to click on sponsored links. In many previous decisions, such exploitation of trademarks to obtain click-through commissions from the diversion of Internet users was held of use in bad faith (see e.g. Future Brands LLC v. Mario Dolzer, WIPO Case No.�D2004-0718; ACCOR v. Mr. Young Gyoon Nah, WIPO Case No.�D2004-0681; Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No.�D2003-0584; Members Equity PTY Limited v. Unasi Management Inc., WIPO Case No.�D2005-0383; Gianfranco Ferre’ S.p.A. v. Unasi Inc., WIPO Case No.�D2005-0622; L’Oreal, Biotherm, Lancome Parfums et Beaut� & Cie v. Unasi, Inc., WIPO Case No.�D2005-0623). In the absence of any reply of the Respondent, the Panel can make a reasonable inference that the Respondent’s website generates revenue for the Respondent in that manner.

Moreover, the Respondent has been involved in at least 10 mandatory administrative procedures regarding more than 30 domain names. All these procedures ended with the transfer of the disputed domain names to the Complainants. Therefore, the Panel believes that the Respondent appears to be a prolific registrant of domain names which tends to support a finding, that the registration of the domain name at issue was for the purpose of preventing the owner of the trademark from reflecting the trademark in a corresponding domain name and that the Respondent has engaged in a pattern of such conduct (paragraph�4(b)(ii) of the Policy).

7. Decision

For all the foregoing reasons, in accordance with paragraphs�4(b)(ii and iv) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.

Christian Schalk
Sole Panelist

Dated: November�22,�2005

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