WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Solon AG v. eXpensiveD Project
Case No. D2008-0881
1. The Parties
The Complainant is Solon AG, of Berlin, Germany, represented by Unverzagt von Have, Germany.
The Respondent is eXpensiveD Project, of California, United States of America.
2. The Domain Name and Registrar
The disputed domain name, (the “Domain Name”), is registered with Dotster, Inc (the “Registrar”)
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 9, 2008. On June 11, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 12, 2008, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 June 18, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 8, 2008. The Response was filed with the Center on June 25, 2008.
The Center appointed Tony Willoughby as the sole panelist in this matter on July 18, 2008. 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 July 9, 2008, the Complainant filed a further submission contending that the Panel should admit it into the evidence, because it demonstrated that the Response was “fraudulently incorrect”.
The Panel duly admitted the document into the evidence and gave the Respondent until close of business on July 25, 2008 to respond to it. The Respondent replied on July 24, 2008.
4. Factual Background
The Complainant is the registered proprietor of five German national trade mark registrations and two Community Trade Mark registrations of marks comprising or including the name Solon. All those registrations are for goods/services associated with the production, storage, transport and distribution of energy.
The Respondent is a domainer i.e. “someone who buys and sells domain name registrations, often generating income through domain parking and/or website development, with the main purpose of generating revenue from advertising click through. Income is also generated through sales, advertising and affiliate commissions.” 1
The Domain Name was registered on April 4, 2006. It has not been used to connect to any active website.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the Respondent is a serial cybersquatter: “The Respondent’s sole business, aptly named “ExpensiveD”, consists of selling squatted domains to the people that have a legitimate interest in them.”
The Complainant contends that the Domain Name is identical or confusingly similar to its registered trade marks featuring the name Solon.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name and points to the fact that the Respondent’s sole interest in the Domain Name is in its value as a commodity to be sold or rented out at a profit.
The Complainant contends that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(i) of the Policy. The Complainant quotes extensively from the Respondent’s website, which confirms that the Respondent acquired the Domain Name solely for the purposes of selling it and or renting it out at a profit. The Complainant contends that the name is clearly a trade mark and not a generic word.
B. Respondent
The Respondent denies that it is a cybersquatter. It admits to being a domainer, but asserts that the focus of the business is not so much on selling domain names, but in using them for web development projects and deriving advertising revenue. The Respondent says: “We’re not cybersquatters and we’ve never registered any domain which might directly or indirectly infringe other companies trade marks or rights nor create confusion among their customers.”
The essence of the Respondent’s defence to the Complainant’s allegations is that Solon is the name of a city in Ohio with a population of 22,000 inhabitants and the Domain Name is one of several geographical names, which the Respondent has registered as domain names.
The Respondent claims to have acquired the Domain Name along with other single dictionary words and geographical names for the purpose of a “detailed and long term development project to create a big network of developed websites”. Pending completion of the work on that project, the domain names in question (including the Domain Name) are parked.
The Respondent asserts that it was completely unaware of the existence of the Complainant until it received the Complaint.
In support of its case that the Domain Name is a geographical name and that, as such, the Domain Name should not be taken away from the Respondent, the Respondent cites HER MAJESTY THE QUEEN, in right of her Government in New Zealand, as Trustee for the Citizens, Organizations and State of New Zealand, acting by and through the Honourable Jim Sutton, the Associate Minister of Foreign Affairs and Trade v.Virtual Countries, Inc, WIPO Case No. D2002-0754 relating to the domain name, .
C. Complainant’s Supplemental filing
The Complainant has undertaken an investigation into the Respondent’s domain name portfolio and contends that the Respondent’s claim that it is not a cybersquatter is untrue. It exhibits a list of over 2,400 domain names said to be held in the name of the Respondent.
It cites seven of the Respondent’s domain name registrations, which feature names and/or trade marks of others.
The Complainant objects to the practice of registering domain names solely for their
re-sale value, a practice, which blocks genuine businesses and enhances the re-sale value of the domain names by virtue of the scarcity of domain names thereby caused.
The Complainant objects to the Respondent’s case citation referred to above and contends that the facts of that case are very different from the facts of this case.
D. Respondent’s response to Complainant’s Supplemental filing
The Respondent admits that four of the seven domain names identified by the Complainant in its supplemental filing violate the trade mark rights of others. It contends that these are just a tiny minority, which have slipped through the net accidentally. It says that on the occasions when this happens, it lets the domain names lapse or, if the trade mark owners request transfer, it hands them back to the trade mark owners.
The Respondent states that it has never set out to sell domain names, but it gets so many enquiries that it will be prepared to sell them if the price is high enough. Its main focus is on deriving advertising revenue.
6. Discussion and Findings
A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith.
B. Identical or Confusingly Similar
The Domain Name comprises the Complainant’s name and trade mark, SOLON, and the generic domain suffix. For the purposes of assessing identity/confusing similarity, the suffix may be ignored.
The Panel finds that the Domain Name is identical to a trade mark in which the Complainant has rights.
C. Rights or Legitimate Interests
In light of the Panel’s finding under the next head (bad faith registration and use), it is unnecessary for the Panel to address this issue.
D. Registered and Used in Bad Faith
The Complainant contends that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(i) of the Policy. In other words, the Complainant is contending that the Respondent registered the Domain Name, knowing that it featured a trade mark of the Complainant, with the intention of selling or renting out the Domain Name to the Complainant or a competitor of the Complainant at a profit.
The Respondent denies this, stating that until it received the Complaint, it was unaware of the existence of the Complainant. It states that it acquired the Domain Name, because of its geographical significance, Solon being a town or city in Ohio of some 22,000 inhabitants.
If the Respondent is telling the truth, the Complaint must fail, for if that be the case there was never at any time any bad faith intent directed at the Complainant.
In its supplemental filing, the Complainant contends that the Response was fraudulently inaccurate. In the Response the Respondent states: “We’re not cybersquatters and we’ve never registered any domain name which might directly or indirectly infringe other companies trade marks ….”
Exhibited to the Complainant’s supplemental filing is a list of over 2,400 domain names said to be held in the name of the Respondent. The Complainant demonstrates that 7 of those domain names (in addition to the Domain Name) feature the names or trade marks of others. The domain names in question are , , , , , and .
The Panel discounts the two surnames, which could refer to anyone of those names. As to the rest of them, 4 are US trade marks and one is Italian. Clearly, even if one discounts and on the basis that they are very descriptive and might not have been inspired by the trade marks, the absolute statement of the Respondent quoted above is, as the Complainant contends, incorrect. The Respondent does hold some (albeit a small number) of domain name registrations, which appear to infringe the rights of third parties.
The inference that the Panel is being asked to draw is that the Respondent deliberately told an untruth in order to conceal the fact that it is a cybersquatter. It would then follow, according to the Complainant’s argument, that the Respondent (in his capacity as a cybersquatter) registered the Domain Name because it was the trade mark of the Complainant and with a view to commercial gain.
It is important for the Panel to look at this proportionately and in context. Domainers typically hold very large portfolios of domain names. The Panel has examined the list of the Respondent’s domain names exhibited by the Complainant. There are indeed over 2,400 of them. The Panel was particularly interested to see if they contained a strong German element and/or an element devoted to the Complainant’s field of activity (the generation, storage, transport of energy). If that were the case, it would be much easier to draw the inference that the Respondent set out to exploit the Complainant’s trade mark rights for commercial gain when registering the Domain Name.
The Panel found that the vast majority of the domain names in the list were generic. Those that featured what might be regarded as obvious trade marks were a tiny minority. There was a very strong Italian flavour to the list and there were a large number of geographical names. The parties have agreed the geographical content at around 150. The Panel suspects that that is a significant underestimate. The Panel counted about 50 geographical names from those with the initial letters ‘A’ and ‘S’ alone. The Domain Name appears in the list flanked by (Solana Beach is a city near San Diego), (Somma Vesuviana is a town near Naples) and (Sonthofen is a town in Southern Germany).
The Panel saw nothing in the list to suggest to the Panel that the Respondent had any special interest in Germany or the Complainant’s field of activity. Indeed, the Panel did not notice any German words or names other than geographical names.
As indicated in Section 4 above, the Complainant has put before the Panel five German national trade mark registrations and two Community Trade Mark registrations of marks comprising or including the name Solon. Of those registrations, two pre-date the registration of the Domain Name and they date back to 1998 and 2000 and are both German national registrations of a device mark, the textual element of which reads “SOLON AG f�r Solartechnik”.
The Panel is not persuaded that the Respondent registered the Domain Name with the Complainant or its SOLON trade mark in mind, nor, in the particular circumstances of this case, that Respondent should have known about the Respondent’s trademark. The only embarrassment for the Respondent is the inaccuracy to which the Complainant has drawn attention, but it is not of a level sufficient for the inference to be drawn that the Respondent registered the Domain Name in a capacity as a cybersquatter and with a view to exploiting the Complainant’s trade mark rights. The Panel accepts the Respondent’s evidence that these registrations were rogue registrations acquired with a large number of other registrations, which slipped through the Respondent’s screening process.
Before closing, the Panel should address the contention made in the Complainant’s Supplemental Filing that “the Respondent ‘eXpensiveD Project’ is one of the most prolific cybersquatters in existence to-day.” This was a surprising allegation in light of the Complainant’s evidence demonstrating, to its satisfaction, that a mere 7 of those 2,400+ domain names were the names or trade marks of third parties.
The explanation is to be found in the closing paragraphs of that Supplemental Filing:
“As shown before, the Respondent ‘eXpensiveD Project’ is an extremely active cybersquatter whose entire business lies in the grabbing of domains for the only reason of resale. We once more direct the Panels’s attention to the Respondent’s homepage …. on which he describes his idea of good business.
Companies like the Respondent, who block thousands of domain names without any genuine interest in them besides their resale value cause significant shortages in the domains available to genuine businesses such as the Complainant. They do not generate any value but only try to profiteer from the scarcity they create in the first place.”
The Complainant evidently takes the view that domain name dealers are cybersquatters, because they acquire domain names without any intention of making any genuine active use of them and for no reason other than to sell them on at a profit.
That is not the definition of a cybersquatter envisaged by the Policy. While domain name dealing carries with it the disadvantages to which the Complainant has drawn attention, it is of itself a lawful activity in most countries and it is not, of itself, a vice at which the Policy is directed. In his testimony on July 28, 1999 to the United States House of Representatives Congress Subcommittee on Courts and Intellectual Property, Mr. Francis Gurry of the World Intellectual Property Organization stated inter alia :
“The most egregious manifestation of this problem is the exploitation in bad faith of the ease and simplicity of obtaining a domain name registration in order to register, as a domain name, the trademark of another person with a view to extracting a premium from the owner of the mark.”
This is replicated in paragraph 4(b)(i) of the Policy, the very paragraph under which the Complainant asserts bad faith registration and use. Using and/or selling a domain name for commercial gain is only caught by the Policy if the registrant registered or acquired the domain name, when he knew or should have known, that he would be taking unfair advantage of the complainant’s trade mark rights.
The Complainant has failed to persuade the Panel that the Domain Name was registered and is being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(i) of the Policy as asserted by the Complainant.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Tony Willoughby
Sole Panelist
Dated: August 1, 2008
1 The definition adopted by Nominet UK, the ‘.uk’ registry
Full & Egal Universal Law Academy