WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Buw Holdings GmbH, Jens Bormann, Karsten Wulf v. Anon-W
Case No. D2006-0462
1. The Parties
The Complainants are Buw Holdings GmbH, Jens Bormann and Karsten Wulf, all of Osnabr�ck, Germany, represented by Lovells, Germany.
The Respondent is Anon-W, of Balboa Ancon, Panama.
2. The Domain Names and Registrar
The disputed domain names , and are registered with Wild West Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2006 by email, a hard copy of which was received by the Center on April 20, 2006. On April 13, 2006, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain names at issue. On that same date, Wild West Domains, Inc. 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 April 25, 2005. In accordance with the Rules, Paragraph 5(a), the due date for Response was May�15,�2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 17, 2006.
The Center appointed Christophe Imhoos as the sole panelist in this matter on May�24,�2006. 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.
4. Factual Background
The group of “buw” companies led by buw Holding GmbH was founded in 1993 by Jens Bormann and Karsten Wulf. The word “buw” is an abbreviation of “Bormann und Wulf”, the German equivalent of “Bormann and Wulf”. The Complainants are engaged in the customer care industry in Germany and handle projects for medium-sized companies from various industries to brand company groups all over Germany on a daily basis. In 1999 they won the “European Call Center of The Year Award” presented by the “Call Center Focus” magazine. In 2002 the Complainants earned Ernst & Young’s “Entrepreneur of the Year” award in the Services category (Annex C to the Complaint).
The First Complainant owns the registered national German trademark “buw” with registration no. DE 30418705 in classes 35, 38 and 41 (Annex D to the Complaint).
The First Complainant has registered and uses the domain name as its business homepage (Annex E1 to the Complaint).
5. Parties’ Contentions
A. Complainants
The Complainants’ arguments are the following.
(i) The domain names are confusingly similar to trademarks in which they have rights.
The Complainants collectively own the registered trademark “buw” and the unregistered trademarks “Jens Bormann” and “Karsten Wulf”. The last two trademarks are the family names of the Second and Third Complainants and have been used in commerce to identify the Complainants and their business activity. The Complainants’ use of the names “Karsten Wulf” and “Jens Bormann” in commerce has therefore led to unregistered trademark rights in the two names. Such unregistered trademark rights exist under Section 4(2) German Trademark Code (Markengesetz) which is applicable in this case because the website for which the disputed domain names are used is completely in the German language and is clearly directed to a German audience.
The domain names and are almost identical to the corresponding trademarks.
The domain name substantially incorporates the Complainants’ trademark “buw”. This has been held to be sufficient to establish that the name is confusingly similar to the Complainants’ registered trademark.. (cf. Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415; Chanel, Inc. v, Estco Technology Group, WIPO Case No. D2000-0413; Welch Foods Inc. v. USCYB, WIPO Case No. D2001-1072). It has been moreover confirmed in previous decisions under the UDRP that the pejorative character of the element “sucks” does not make the domain name distinguishable from the respective trademark (See inter alia, Wachovia Corporation v. Alton Flanders, WIPO Case No.�D2003-0596 and Societ� Air France v. Virtual Dates, Inc, WIPO Case No.�D2005-0168; see also ADT Services AG v. ADT S, WIPO Case No.�D2001-0213; Koninklijke Philips Electronics N.V. v. In Seo Kim, WIPO Case No.�D2001-1195; Direct Line Group Ltd, Direct Line Insurance plc, Direct Line Financial Services Ltd., Direct Line Life Insurance Company Ltd., Direct Line Unit Trusts Ltd., Direct Line Group Services Ltd., v. Purge I.T., Purge I.T. Ltd., ., WIPO Case No.�D2000-0583; The Salvation Army v. Info-Bahn, Inc., WIPO Case No. D2001-0463; Standard Chartered PLC v. Purge I.T., WIPO Case No.�D2000-0681; Bayer Aktiengesellschaft v. Dangos & Partners, WIPO Case No.�D2002-1115; Freeserve PLC v. Purge I.T. and Purge I.T. Ltd., WIPO Case No.�D2000-0585; Dixons Group PLC v. Purge I.T. and Purge I.T. Ltd., WIPO Case No.�D2000-0584; Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No.�D2000-0662;Padma AG. v. P, WIPO Case No.�D2000-0477; Diageoplc v. John Zuccarini, Individually and t/a Cupcake Patrol, WIPO Case No.�D2000-0996). There can be no doubt that the domain name is also confusingly similar to the Complainants’ trademark .
(ii) The Respondent has no rights or legitimate interests with regard to the domain names.
The Respondent does not show any legitimate interest in the use of the disputed domain names , and . In particular, none of the circumstances listed under Paragraph 4(c) of the Policy to demonstrate rights or legitimate interests are given. The Respondent is not, and never has been, a representative or licensee of the Complainants, nor is the Respondent otherwise authorized to use the Complainant’s marks or names. The domain names are not used for any bona fide offering of goods or services, and there is no indication that the Respondent has ever been known by the names “buw”, “Karsten Wulf” or “Jens Bormann”.
The Respondent cannot invoke free speech to justify the use of the domain names in dispute. Paragraph 4(c)(iii) of the Policy states that a non-commercial or fair use shall not demonstrate rights or legitimate interests if this use intends to tarnish the trade-mark or service mark at issue. In this case the website for which the disputed domain names are used clearly intends to tarnish the trademarks “buw”, “Jens Bormann” and “Karsten Wulf”, which is demonstrated by the text from the website above, and also by the fact that the German Public Prosecutors are investigating the website (Annexes H1 to H3 and I to the Complaint).
(iii) The domain names have been registered and are being used in bad faith.
The Respondent’s business model described on its website is based on the renting of domain names. Respondent’s anonymous customer(s) who are actually using the disputed domain names for their German website should be regarded as competitors of the Complainants because they are using the website to interfere with the Complainants’ business, this behavior being evidence of bad faith registration and use pursuant to Paragraph 4(b)(i) of the Policy.
The Respondent’s anonymous customer(s) were aware of the Complainants’ trademarks when they instructed the Respondent to register them. This is evident given the content of the website for which the disputed domain names are used, which is entirely focused on defamation and slander of the Complainants.
This bad faith registration and use on behalf of the Respondent’s anonymous customer(s) has to be imputed to the Respondent. Otherwise, the anonymous registration of domain names through an intermediary like the Respondent would provide “cybersquatters” with a simple method to escape the legal means provided by the Policy.
Furthermore, additional circumstances evidencing bad faith registration and use should be considered: the collusion of the Respondent and its anonymous customer(s) who operate the website leads to a situation in which the Complainants have no means of finding out the identity of the person standing behind the website and its defamatory content. The Respondent’s business of registering domain names for unknown customer(s) helps this third party person(s) to avoid being held responsible for their acts. While legitimate criticism is of course protected by the right to free speech, this protection does not extend to persons using their anonymity for defamation and slander. Criticism can only be legitimate if its author can be identified and therefore be held responsible under the applicable libel laws. This is in line with the Panel’ view stated in The Royal Bank of Scotland Group plc., National Westminster Bank plc. A/K/A NatWestBank v. Personal and Pedro Lopez, WIPO Case No. D2003-0166.
B. Respondent
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for the Administrative Panel to order the transfer of the disputed domain name to the Complainant. Those requirements are that:
(i) Respondent’s domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain names; and
(iii) Respondent’s domain names have been registered and is being used in bad faith.
The Complainants must prove in the administrative proceeding that each of the aforesaid three elements is present so as to warrant relief, according to Paragraph 4(a) of the Policy.
The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to Paragraph 15(a) of said Rules.
In accordance with Paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
A. Identical or Confusingly Similar
The Complainants have established their rights in the trademark “buw” with registration for such a name in Germany (see Annex D to the Complaint).
The Complainants’ trademark “buw” is obviously confusingly similar to the domain name whilst the domain names and are similar to the personal names of the Second and Third Complainants which are protected by law as unregistered trademarks (see also, as cited by the Complainants, Julia Fiona Roberts v. Russel Boyd, WIPO Case No.�D2000-0210; Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235).
As regards, the personal names of business people it has been held that a Complainant can successfully claim personal use of such a name if made for direct commercial purposes in the marketing of his own goods and services; the Complainant should show on a preponderance of the evidence that he uses his personal name for the purpose of the merchandising or other commercial promotion of goods or services (see Israel Harold Asper v. Communication X Inc., WIPO Case No. D2001-0540). In the instant matter, the sole Panelist considered that the Complainants have satisfied such a burden (see Annex C to the Complaint).
Moreover as rightly pointed out by the Complainants, the domain name incorporates the mark “buw” with the addition of the derogatory word “suckz” does not warrant a finding to the effect that the domain name in question would not be considered as confusingly similar within the meaning of the meaning of Paragraph�4(a)(i) of the Policy (see cases cited by the Complainants and listed thereabove).
WIPO Overview of WIPO Panel Views on Selected UDRP Questions majority view states that "a domain name consisting of a trademark and a negative term is confusingly similar to the complainant’s mark. Confusing similarity has been found because the domain name contains a trademark and a dictionary word; or because the disputed domain name is highly similar to the trademark; or because the domain name may not be recognized as negative; or because the domain name may be viewed by non-fluent English language speakers, who may not recognize the negative connotations of the word that is attached to the trademark.
Relevant decisions: Wal-Mart Stores, Inc. v. Richard McAllen d/b/a For Sale, WIPO Case No.�D2000-0662 , Transfer; A & F Trademark, Inc. and Abercrombie & Fitch Stores, Inc. v. Justin Jorgensen, WIPO Case No.�D2001-0900 , Transfer; Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No.�D2003-0465 , Transfer; Wachovia Corporation v. Alton Flanders, WIPO Case No.�D2003-0596 among others, Transfer".
This Panel agrees with the reasoning therein.
The Panel considers that the requirement set out in Paragraph 4(a)(i) of the Policy is therefore met in this matter.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances, if found by the Panel to be proved based on its evaluation of all evidence submitted, shall demonstrate rights to or legitimate interests in the domain names in dispute. Those circumstances are described as follows:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(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; or
(iii) you are making 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 or service mark at issue.
The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to Paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the domain name in dispute. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to Paragraph 14(b) of the Rules (see e.g. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 or Isabelle Adjani .v. Second Orbit Communications, Inc., WIPO Case No. D2000-0867).
Absent evidence to the contrary, the “buw” trademark and the personal names of the Second and Third Complainants have been known for a significant period of time (see Annexes C and D to the Complaint). Moreover, the Complainants have not granted any license or otherwise permitted the Respondent to use such trademarks or to apply for any domain name incorporating the said trademarks. Moreover, the Respondent is not known by the domain name at stake.
As to freedom of speech which may entitle the Respondent to use the domain names in dispute the Complainants quoted the relevant part of the following decision:
“The Panel acknowledges the importance of freedom of speech and recognizes in some instances the legitimacy of a criticism site claimed by the Respondent; however, the Panel is also convinced, as held in other “sucks” cases, that Respondent can continue expressing themselves through the registration of a domain name other than the ones that may cause confusion or mislead the public; the disclaimer added to the web page published serves little or no purpose in the instant case in view of the general conduct to the Respondent” (The Royal Bank of Scotland Group plc., National Westminster Bank plc. A/K/A NatWest Bank v. Personal and Pedro Lopez, WIPO Case No. D2003-0166).
The Panel considers under the present circumstances and for the reasons also examined under the bad faith issue below, there is no reason to depart from that decision and, therefore, that freedom of speech cannot be considered as enabling the Respondent to use the disputed domain names in so far as there are clearly a source of confusion, especially as regards and which are automatically redirected to (see Annexes H1-H3 to the Complaint).
In this context the Panel notes the following decisions which, together with the above mentioned Nat West Bank decision, all support such view: Skattedirektoratet v. Eivind Nag, WIPO Case No.�D2000-1314 ; Myer Stores Limited v. Mr.�David John Singh, WIPO Case No.�D2001-0763 ; Triodos Bank NV v. Ashley Dobbs, WIPO Case No.�D2002-0776 , Transfer; Kirkland & Ellis LLP v. DefaultD, American Distribution Systems, Inc., WIPO Case No.�D2004-0136.
Under the given circumstances and absent evidence to the contrary, the Panel is unable to find any evidence that would tend to establish that the Respondent has rights or legitimate interests in respect of the disputed domain names.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following behaviors is sufficient to support a finding of bad faith:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.
As already mentioned, the Respondent did not file any response to the Complaint, failing thereby to invoke any circumstance which could demonstrate his good faith in the registration or use of the domains name at issue.
Nevertheless, the Panel still has the responsibility of determining which of the Complainants’ assertions are established as facts, and whether the conclusions asserted by the Complainants’ can be drawn from the established facts (see Harvey Norman Retailing Pty Ltd v. Oxford-University, WIPO Case No. D2000-0944).
As pointed out by the Complainants, Paragraph 4(b) of the Policy does not provide an exclusive list of circumstances that evidence registration and use of a domain name in bad faith. It has been held on several occasions that attempts to hide the owner the domain name holder’s true identity may indicate bad faith registration and use of the domain name under examination (see e.g. Pharmacia & Upjohn AB v. Dario H. Romero, WIPO Case No. D2000-1273).
In the instant matter, as explained by the Complainants and supported by conclusive evidence (see Annex G to the Complaint), the Respondent has registered the disputed domain names as an intermediary for the (anonymous) person(s) actually using the domain names in question. The Respondent is a company engaged in the business of registering domain names in its own name on behalf of third parties, so that the Respondent’s customers can use the domain names on an anonymous basis without being identified in the registrar’s “Whois” database. It has therefore not been possible to identify the true owners of said domain names The Panel also notes pending criminal proceedings that have been initiated by the Complainants for defamation and slander (see Annex I to the Complaint).
It is also clear from the disputed domain names that the Respondent had actual knowledge of the Complainants and their trademarks when the Respondent registered the domain names. Such prior knowledge combined with the fact that the Respondent has no legitimate interest to the domain names and the Respondent has refused to reveal the true identity of the domain name holder, strongly indicates a bad faith intention.
The Panel finds therefore that such a behavior has to be considered as bad faith pursuant to the general meaning of Paragraph 4(b) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, , and , be transferred to the Complainants.
Christophe Imhoos
Sole Panelist
Dated: June 7, 2006
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