WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION ebm papst St. Georgen GmbH & Co KG v. Admin, Domain Case No. D2008-1380 1. The Parties
The Complainant is ebm papst St. Georgen GmbH & Co KG, St. Georgen, Germany, represented by HK2 Rechtsanwälte, Germany.
The Respondent is Admin, Domain, West Bay (KY), Cayman WB, overseas territory of the, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with R Services Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2008. On September 10, 2008, the Center transmitted by email to R Services Corp a request for registrar verification in connection with the domain name at issue. On September 11, 2008, R Services Corp 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 September 19, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 9, 2008. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on October 10, 2008.
The Center appointed Sir Ian Barker as the sole panelist in this matter on October 15, 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. 4. Factual Background
The Complainant is one of the ebm-papst Group which was formed as a result of a merger between three companies, including the Complainant. The Group is one of the world's largest manufacturers of fans, blowers, pumps and motors.
The Complainant owns many trademarks for the word PAPST. These trademarks are registered in numerous countries. A trademark was first registered in Germany in 1957, the European Union in April 1996, the United States of America in February 1976, China, Korea, Thailand and Taiwan SAR of China in 1996 and Japan in 1979 and 1984.
The Complainant's group produced 55.6 million fans and motors in 17 production facilities in the fiscal year 2007/08, generating sales revenues of €1.1076m and employing some 10,000 employees. It invests extensively in research and development. Exports amount to some 54% of its production.
On the website accessed through the disputed domain name is a caption “Welcome to ” - For ads on Cooling fans and Axial fans” Related searches “pop-up” the bottom of the website give links to major competitors of the Complainant.
Categories on the left-hand side of the Respondent's website mostly relate to general product categories of the Complainant's products such as cooling fans and axial fans and other product groups. At the same time, the categories on the left hand side are annexed by two more categories, giving links to major competitors of the Complainant. On one of these (“Nmb”) opens a list offering links to the products of Nmb, a major competitor.
The disputed domain name was registered to the Complainant in January 16, 1996. No reason was given by the Complainant for waiting until 2008 to bring these proceedings.
The Respondent, in various guises, has been a party in various other administrative proceedings under the Policy. It registers numerous domain names under the style of Domain, admin, DomainManager or BWI Domains.
BWI domains has been the respondent in numerous administrative proceedings in both WIPO and the National Arbitration Forum. A transfer of the domain name has been ordered in most cases where the Respondent had used “click-through” advertising sites to third party websites. 5. Parties' Contentions A. Complainant
The disputed domain name is identical to the Complainant's trademarks. The Complainant gave no authority to the Respondent to use its trademarks and reflect them in a domain name. The Respondent has not provided any evidence to show that it comes within paragraph 4(c) of the Policy.
The Respondent is exploiting the Complainant's trademark in order to redirect Internet traffic to other commercial websites, particularly to links leading to major competitors of the Complainant. The Respondent has registered domain names similar to registered trademarks or to the names of well-known personalities such as “Happy Pillow”, “Hilary Clinton” and “Maria Carey”. BWI Domain owns some 28,000 domain names and bwidomains@ is associated with approximately 32,000 domain names.
The disputed domain name was registered and is being used in bad faith. By using the disputed domain name, the Respondent intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the website. See Les Publications Grand Public PGP v. BWI Domains,WIPO Case No. D2008-0905.
The use and exploitation of trademarks to obtain “click-through” revenues has been found to be bad faith in many proceedings under the Policy.
The Respondent had prior knowledge of the Complainant's trademark, as can be deduced from the fact that the Respondent used the disputed domain name in conjunction with “click-through” advertising and should have known of the registration of the trademarks of the Complainant prior to registration of the disputed domain name.
The word “papst” means “Pope” in German. The trademark is known worldwide. It is well-known in the areas of industrial fans and motors. Registration of a domain name identical to a well-known trademark without authorization is in itself evidence of bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions and has not made any submissions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the 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. A. Identical or Confusingly Similar
The disputed domain name is identical to the numerous trademarks owned by the Complainant which has, therefore, satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has established that it has given the Respondent no rights in respect of the disputed domain name. Therefore, the onus falls on the Respondent to demonstrate that it comes within paragraph 4(c) of the Policy. No Response has been filed. The Complainant, therefore, succeeds in paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
A difficulty for the Complainant is that the disputed domain name was registered in 1996 but the administrative proceedings in respect of the disputed domain name were not commenced by the Complainant until 2008. No explanation was given for a delay of over 12 years. There is no evidence of any ‘cease and desist' letters ever having been written to the Respondent.
Normally, with a delay of such magnitude between registration of the disputed domain name and the commencement of a proceeding, there are often insurmountable difficulties for a complainant in establishing bad faith at the time of registration.
Bad faith use is proved in this case because the Complainant is using the disputed domain name as a “click-through” site to advertise inter alia products of the Complainant's major competitors. The Respondent is responsible for the content of a “click-through” site which uses its domain name.
However, the Panel is prepared to infer bad faith registration even as long ago as 1996, for the following reasons:
(a) The name and reputation of the Complainant in many countries as a manufacturer of specialized engineering equipment is well-known as is demonstrated by its statistics.
(b) The Respondent is flagrantly using the Complainant's trademark as a “click-through” site which, amongst other things, relates to the competitors of the Complainant.
(c) The Respondent or its associates has a track record of registering domain names in bulk. Breaches of the Policy by it have been found on numerous occasions.
Accordingly, the Panel is able to infer that the disputed domain name was registered and is being used in bad faith. Therefore, the Complainant has satisfied paragraph 4(a)(iii) of the Policy and the Complaint is upheld. 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.
Hon. Sir Ian Barker, QC
Sole Panelist
Dated: October 24, 2008
Full & Egal Universal Law Academy