WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Grant Thornton International v. Martin Schmitz
Case No. D2006-1085
1. The Parties
The Complainant is Grant Thornton International, Chicago, United States of America, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, United States of America.
The Respondent is Martin Schmitz, Cologne, Germany.
2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Schlund + Partner AG (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August�25,�2006. On August�27,�2006, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name at issue. On August�31,�2006, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the Domain Name 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 August�31,�2006. In accordance with the Rules, paragraph 5(a), the due date for Response was September�20,�2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September�21,�2006.
The Center appointed Assen Alexiev as the sole panelist in this matter on October�2,�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.
On October�17,�2006, Complainant submitted to the Center a request for suspension of the proceedings. Respondent did not express any opinion in this regard, and the Panel issued its Procedural Order No.1 for the suspension of the proceedings until November�17,�2006. On November�20,�2006, the Panel was informed by the Center that Complainant had requested the reinstatement of the proceedings. Respondent again remained silent, and on November�20,�2006, the Panel issued its Procedural Order No.2, reinstating the proceedings, and setting the decision date on November�27,�2006.
The Panel notes that the language of the registration agreement for the Domain Name is German. However, there is evidence in the case file that correspondence in English was exchanged between the parties. Moreover, the Complaint and all annexes to it are filed in English, and all correspondence from the Center, including the Notification of commencement of the administrative proceeding, and the Notification of Respondent Default, were sent in English. There has been no comment in this regard by Respondent. Therefore, the Panel decides that the language of this administrative proceeding shall be English.
4. Factual Background
For many years, Complainant has licensed its GRANT THORNTON marks to independently-owned and managed member and correspondent firms in many countries throughout the world. These member and correspondent firms provide accounting and financial advisory services to mid-cap, small-cap, and privately held companies in a wide variety of industries.
Complainant owns numerous valid registrations of the trademark GRANT THORNTON, issued by many countries throughout the world, including among others, registration for the territory of Germany with reg. No. 30113171, for goods and services in International Classes 9, 16, 35, 36, 41 and 42, registered on April�5,�2001.
Complainant’s licensee and member firm in the United States, Grant Thornton LLP, is the registrant and owner of the domain name .
The Domain Name was registered by Respondent on September�12,�2001.
5. Parties’ Contentions
A. Complainant
1. The domain name is virtually identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
Complainant contends that for many years its licensees have provided accounting and financial advisory services throughout the world under Complainant’s GRANT THORNTON trademark. Complainant’s licensees have sold several millions of dollars worth of accounting and financial advisory services, and have spent millions of dollars to advertise and promote such services, under the GRANT THORNTON mark throughout the world.
Complainant contends that, by virtue of the long use, advertising and promotion of the GRANT THORNTON mark by Complainant’s licensees, the GRANT THORNTON mark has become widely known and famous, and it possesses a strong secondary meaning signifying Complainant, as well as the accounting and financial advisory services offered under the GRANT THONRTON mark throughout the world.
Therefore, Complainant submits, the Domain Name is identical or confusingly similar to the trademark of Complainant.
B. The Respondent has no rights or legitimate interests in respect of the Domain Name.
Complainant contends that Respondent is not commonly known by the GRANT THORNTON mark and has not acquired any trademark or service mark rights in the GRANT THORNTON mark. Gallup v. Amish Country Store, Case No. FA96209 (Respondent does not have rights in domain name when respondent is not known by mark).
Complainant has not licensed or otherwise permitted Respondent to use the GRANT THORNTON mark or to apply for or use any domain name incorporating the mark.
On information and belief of Complainant, Respondent has made no active use of the Domain Name on the Internet. Complainant submits that Respondent’s failure to use the Domain Name provides additional evidence that Respondent has no rights or legitimate interests in the Domain Name.
C. The Respondent has registered and used the Domain Name in bad faith.
According to Complainant, Respondent registered the Domain Name long after Complainant’s adoption, use, and registration of its GRANT THORNTON mark. Based on the fame of the GRANT THORNTON mark, Complainant concludes that Respondent necessarily has actual knowledge of Complainant’s rights.
Complainant also contends that because Respondent had knowledge of Complainant’s trademark rights in the GRANT THORNTON mark, Respondent could not have registered the Domain Name with the intention of using it legitimately.
Respondent has not used the Domain Name on the Internet, nor has Respondent developed an active website for the Domain Name. Many panels have held that the passive holding of a domain name without making legitimate use of it suggests bad faith. See, e.g. Telstra Corp.; Nike, Inc. v. Azumano Travel, WIPO Case No.D2000-1598; Thomas Cook Holdings Ltd. v. Tailor Made Travel, WIPO Case No. D2001-0435.
Complainant submits that on August�15,�2005, Respondent solicited Grant Thornton LLP, asking for an offer for the transfer of the Domain Name. When Grant Thornton LLP suggested 100 US Dollars, Respondent replied that he wanted 2500 US Dollars. According to Complainant, Respondent’s offer to resell the Domain Name for a substantial profit constitutes strong evidence of bad faith registration and use of the Domain Name. America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713.
Complainant contends that Respondent’s actual knowledge of Complainant’s prior rights combined with the fame of the GRANT THORNTON mark, in addition to Respondent’s offer to sell the Domain Name to Complainant’s member firm for valuable consideration in excess of its out-of-pocket expenses, are circumstances sufficient to demonstrate bad faith registration and use of the Domain Name under paragraph 4(b)(i) of the Policy.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that, to justify transfer of a domain name, the Complainant must prove each of the following:
(i) That the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) That the Respondent has registered and is using the Domain Name in bad faith.
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to Respondent, in compliance with Rules, paragraph 2(a), and Respondent was given a fair opportunity to present its case.
According to paragraph 5(b)(i) of the Rules, Respondent is expected to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…” In the event of a default, under paragraph (14)(b) of the Rules: “…the Panel shall draw such inferences therefrom as it considers appropriate.”
As stated by the panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No.�D2000-0004:
“Here, the potential evidence of good faith registration and use was in respondent’s control. Respondent’s failure to present any such evidence or to deny complainant’s allegations allows an inference that the evidence would not have been favorable to respondent.”
As stated by the panel in Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443:
“Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant. In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence.”
In this administrative proceeding, Respondent’s default entitles the Panel to conclude that Respondent has no arguments or evidence to rebut the assertions of Complainant. The Panel accordingly makes its decision on the basis of the statements and documents submitted by Complainant and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
A. Identical or Confusingly Similar
Complainant has provided evidence and has thus established its rights in the trademark GRANT THORNTON, registered in many jurisdictions around the world.
It is an established practice to disregard gTLDs such as “info” for the purposes of the comparison under Policy, paragraph 4(a)(i).
Apart from the gTLD “info”, the Domain Name contains only the letter sequence “grantthornton”, which reproduces the trademark of Complainant, the only difference being the lack of the space between the two words that form the trademark. It is commonly known that technically the letters in domain names cannot be separated by spaces, so many companies that have trade names or trademarks that consist of two or more words, use them as domain names without spaces in between. Therefore, the lack of space between the parts “grant” and “thornton” in the Domain Name cannot, in all likelihood, make any Internet user distinguish the Domain Name from the trademark.
Therefore, the Panel finds that Complainant has established the first element of the test, required under paragraph (4)(a)(i) of the Policy. The Domain Name is confusingly similar to the trademark of Complainant.
B. Rights or Legitimate Interests
Complainant has contended that Respondent has no rights or legitimate interests in the Domain Name, claiming that Respondent’s conduct does not meet any of the criteria set in paragraph 4(c) of the Policy.
Thus Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name.
Once Complainant makes out a prima facie case under paragraph 4(a)(ii) of the Policy, the burden shifts to Respondent to rebut the showing by providing evidence that it has rights to or legitimate interests in the Domain Name.
Respondent, by its default, has chosen not to present to the Panel any allegations or documents in its defense despite its burden under paragraph 5(b)(i) and 5(b)(ix) of the Rules, or the consequences that the Panel may extract from the fact of a default (paragraph 14 of the Rules). If Respondent had any legitimate reason for the registration or use of the disputed Domain Name, it could have brought it to the attention of the Panel. In particular, Respondent has failed to contend that any of the circumstances described in paragraph 4(c) of the Policy - or any other circumstance not anticipated in the Policy - are present in its favor.
The Whois information contains no evidence of rights or legitimate interests of Respondent in the Domain Name, apart from its rights as registrant of the latter.
There is no website linked to the Domain Name, and the latter is confusingly similar to the trademark of Complainant. The trademark, as contended by Complainant, has been used for a long time in many countries, and has become established on the respective markets as a widely known trademark. Respondent, being aware of the goodwill of the Complainant’s trademark, has tried to sell the Domain Name to Complainant for an amount exceeding Respondent’s out-of-the-pocket expenses. Lastly, despite the contentions made by Complainant for Respondent’s lack of any rights or legitimate interest in the Domain Name, Respondent has not submitted any arguments or evidence in rebuttal.
Taken together, all these facts support the contentions of Complainant, and the Panel finds that Respondent has no rights or legitimate interests in the Domain Name. Complainant has established the second element of the test, required under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Domain Name is confusingly similar to the widely known trademark of Complainant, as it reproduces it entirely, thus directly referring to Complainant and its related companies worldwide, and to the services offered by them. This supports a finding that Respondent had knowledge of Complainant and of the goodwill of its trademark at the time of registration of the Domain Name.
Respondent does not actively use the Domain Name and has not established any rights or legitimate interests in it. Further, Respondent requested the price of 2500 US Dollars for the transfer of the Domain Name to Complainant. Such an amount is indisputably well in excess of the usual out-of-pocket costs related to a domain name.
On the basis of these circumstances, the Panel is of the opinion that Respondent registered the Domain Name, confusingly similar to Complainant’s widely known trademark, with a purpose that cannot be regarded as bona fide - to sell the Domain Name to Complainant, for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the Domain Name. This constitutes bad-faith registration and use of the Domain Name under paragraph 4(b)(i) of the Policy. Aurora Foods Inc. v. David Paul Jaros, WIPO Case No. D2000-0274, The Chase Manhattan Corporation and Robert Fleming Holdings Limited v. Paul Jones, WIPO Case No. D2000-0731.
Therefore, the Panel concludes that Complainant has established the third element of the test under paragraph 4(a) 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 Name be transferred to the Complainant.
Assen Alexiev
Sole Panelist
Dated: November 30, 2006
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