WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pneus-online Suisse SARL v. D AG
Case No. D2006-0479
1. The Parties
The Complainant is Pneus-Online Suisse SARL, Geneva, Switzerland, represented by Cabinet Germain & Maureau, France.
The Respondent is D AG, Hannover, Germany, , represented by Lovells, Germany.
2. The Domain Names and Registrar
The disputed domain names , and are registered with Schlund + Partner AG, Germany.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 14, 2006. On April 18, 2006, the Center transmitted by email to Schlund + Partner a request for registrar verification in connection with the domain names at issue. On April 21, 2006 Schlund + Partner 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 May 8, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May�28,�2006. The Response was filed with the Center on May 26, 2006.
The Center appointed Peter Burgstaller as the sole panelist in this matter on June�6,�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.
The Center has decided to accept the Complaint in the English language and the Response in either the German or the English language.
4. Factual Background
The Complainants business is the online sale of tires mostly in French speaking markets. In January 2001, the Complainant has registered the domain and has been using this domain in relation to a website since June�2001.
On August 7, 2003, the Complainant has filed a trademark application in France for the figurative Trademark shown in Annex 9 as well with WIPO on July 28, 2004.
The Respondent is a direct competitor of the Complainant and is in the business of selling tires via Internet (Annex 3) at least since August 2000. The Respondent has registered the disputed domains on May 24, 2002, on May 24, 2002 and on June 15, 2001.
5. Parties’ Contentions
A. Complainant
The Complainant has been extensively using the brand name PNEUS ONLINE in relation with a car tires retail service; it became the undisputed leader on this very narrow market of online tires retail service in Europe. After some time, and with a view to strengthening its rights into the brand name PNEUS ONLINE, this sign has acquired secondary meaning.
The disputed domain names are at least confusingly similar to the mark PNEUS ONLINE and the figurative Trademark shown in Annex 9.
The Respondent moreover has no rights or legitimate interests in respect of the domain names in question; the Complainant never authorized the Respondent to use and/or register the name “Pneues On Line” or similar names as a domain name.
The disputed domain names were registered and are being used in bad faith.
B. Respondent
The Complainant has no trademarks or service marks or common law marks which are at least confusingly similar to the disputed domain names: The trademark application showed in Annex 9 dates from August 2003, whereas the registrations of the disputed domain names were in May 2002 and June 2001.
The Respondent moreover had at least the same legitimate interests when registering the domain names at issue than the Complainant. The sign PNEUS ONLINE is merely descriptive and has no distinctiveness.
The Respondent did not register the domain names at issue in bad faith, because when registering the domains, the Complainant had no rights in the common words “Pneus Online”.
6. Discussion and Findings
To make out a successful Complaint, it is the Complainant’s burden to prove under paragraph 4(a) of the Policy that
(i) the domain name at issue is identical or confusingly similar to a trade mark or a service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The Complainant must prove that each of these three elements is present.
A. Identical or Confusingly Similar
Annex 9 shows the registration of a figurative trademark containing the word “PNEUS-ONLINE. COM” in favor of the Complainant. The Panel follows the principles set out in various UDRP cases, that the mere addition or omission of a letter/hyphen does not affect the confusing similarity between a domain name and a trademark.
However, the Panel wants to point out, that in this case, the confusing similarity between the trademark and the disputed domain names is very slight, especially because of the fact that the figure sets up an essential part of the trademark.
The fact that the trademark registration/application (Annex 9) did not exist at the time of the domain name registration is rather a matter of paragraphs 4(a)(ii) and (iii) of the Policy than of paragraph 4(a)(i).
The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has never authorized the Respondent to use and/or register the name “Pneu On Line” as a domain name.
The Respondent did not deny this fact, but has shown its own rights and legitimate interests in the domain name at issue:
The Respondent offers its services via Internet since the year 2000 (Annex 4). Following the submitted documents and contentions by the Complainant, it is the Panels view, that at least until the application for the figurative trademark in August�2003, the sign “PNEU ON LINE” was a common word and descriptive term without secondary meaning in favor of the Complainant. Such common words and descriptive terms are legitimately subject to registration as domain names on a “first come, first served” bases. The registration of a domain per se, does not give rights.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is not fulfilled, because of the fact, that the Respondent has its own legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
Just for the sake of completeness, the Panel wants to point out, that also paragraph 4(a)(iii) is not fulfilled.
Paragraph 4(b) of the Policy lists certain factors which, if found by the Panel to be present, shall be evidence of registration and use of a domain name in bad faith. This is not an exclusive list, and includes:
(i) circumstances indicating that you [the Respondent] 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.”
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove use in bad faith and registration in bad faith. Neither use in bad faith nor registration in bad faith, alone, is a sufficient ground for obtaining a remedy under the Policy.
The Complainant could not show a secondary meaning of “Pneu On Line” of its favor and had no other trademark rights at the time of the registration of the domain names at issue (2001 and 2002, see Annex 3) Nor has the Complainant established that the Respondent - in any other way -had the Complainant in mind when he registered the disputed domain names. It has not been proven that the Respondent registered the disputed domain names in bad faith.
This decision is of course not in any way meant to prejudge or influence an eventual national court proceeding between the parties, which would be conducted under different procedural and substantive rules.
The Panel thus finds that also paragraph 4(a)(iii) of the Policy is not fulfilled.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Peter Burgstaller
Sole Panelist
Dated: June 15, 2006
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