WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Baumer Holding AG v. Gee Whiz Domains Privacy Service, Domain, Admin, Nevis Domains Case No. D2008-1882 1. The Parties
The Complainant is Baumer Holding AG, Frauenfeld, Switzerland, represented by Blumbach Zinngrebe, Germany.
The Respondents are Gee Whiz Domains Privacy Service, Las Vegas, Nevada, United States of America; Domain, Admin, Nevis Domains, Charlestown, Nevis, Saint Kitts and Nevis. 2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 8, 2008. On December 9, 2008, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On December 15, 2008, Moniker Online Services, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 16, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 18, 2008. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 December 24, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 13, 2009. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on January 15, 2009.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on January 22, 2009. 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
1. The Complainant is a Swiss company formed in 1952. Originally a manufacturer of electro-mechanical devices, it now makes a wide range of measuring and sensing equipment.
2. The Complainant has used the trade mark BAUMER in relation to those goods since its inception and has trade mark registrations in many countries.
4. The Complainant has not licensed or otherwise permitted the Respondents to use the trade mark or to register or use any domain name incorporating the trade mark.
5. The disputed domain name was registered on March 11, 1996.
6. The disputed domain name corresponds with a website which on first inspection might seem to be a website maintained by the Complainant. The website carries links to third party re-sellers of the Complainant's goods but also to retailers of goods sold in competition to the Complainant's goods.
7. Pre-Complaint correspondence directed towards a possible purchase of the domain name faltered on account of the demanded consideration.
8. The Complainant petitions the Panel to order transfer of the disputed domain name from the Respondents to the Complainant. 5. Parties' Contentions A. Complainant
The Complainant asserts trade mark rights and states that the disputed domain name is legally identical to the trade mark.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant alleges that the Respondent registered and used the disputed domain name in bad faith.
The detail of the Complaint is included where necessary in Part 6 of this Decision. B. Respondent
The Respondents did not reply to the Complainant's contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, a 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 and is being used in bad faith. A. Preliminary Issue: Identification of Respondent
Further to the Procedural History set out above, the Complaint originally nominated Gee Whiz Domains Privacy Service as the Respondent. The named Respondent appeared to be a proxy service company. On December 15, 2008, the Registrar disclosed what seems to be another proxy service business, Nevis Domains, as the registrant (the full name provided by the Registrar is “Domain, Admin, Nevis Domains”) of the disputed domain name. Subsequently, at the invitation of the Center, the Complaint was amended to nominate Gee, Whiz Domains Privacy Service and Domain, Admin Nevis Domains as Respondents (collectively “Respondent”).
This Panel endorses the pragmatic view taken by former panels that if the identity of the beneficial owner of the domain name is known, can be readily identified, or is revealed by a registrar in response to a complaint, then it should be the named respondent and the case under the Policy should be made against that party. That is not the case here. In response to Complainant's communications directed at purchase of the domain name prior to filing of the Complaint, mail was sent by a person named “Greg”, but that far from enabled the Complainant to identify the true owner of the domain name.
In view of (1) the concealment of identity of the beneficial owner; (2) the attempted cyberflight; and (3) the fact that the first proxy service company was in all likelihood still the registrant at the time of filing of the Complaint, and the second proxy service company is now the registrant, this Panel takes the view that the Complainant has proceeded correctly in naming both proxy service companies as Respondent. B. Identical or Confusingly Similar
On the evidence, there is no doubt that the Complainant has trade mark rights acquired through both use and registration1. Moreover, applying the principles developed under the Policy which now having wide support, the disputed domain name is legally identical to the Complainant's trade mark2.
The Panel accordingly finds that the Complainant has satisfied the first element of the Policy. C. Rights or Legitimate Interests
The existence of proxy service companies as domain name registrants has invited a number of questions concerning interpretation of the Policy which have engaged the close attention of other panels3. There is clearly a manifest fiction entailed by investing a proxy service company with either good faith or bad faith intentions. At the same time this Panel is conscious that the overriding intention of the Policy is to provide a practical alternative to court proceedings to combat abusive domain name registrations. That intention should not be frustrated.
The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the domain name. Nevertheless, it is well settled that the Complainant need only make out a prima facie case, after which the onus shifts to the Respondent to demonstrate rights or legitimate interests4.
Notwithstanding the lack of a response to the Complaint, paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a 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 noncommercial 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 WhoIs data does not support any argument that the Respondent might be commonly known by the disputed domain name. There is no evidence that the Respondent has any trade mark rights in the name, registered or not. The Complainant has stated there to be no relationship between the parties.
The Respondent does not appear to be using, nor has it presented evidence of any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Rather, the Respondent appears to be using the disputed domain name to confuse Internet users as to the provenance of the website and re-direct those Internet users to commercial websites that promote the goods of competitors in the same business as the Complainant. It is established by former decisions under the Policy that such action is not a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use of the domain name5.
The Panel finds that the Complainant has succeeded in making out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and that the Respondent in failing to reply has not discharged the onus which fell to it as a result. The Panel finds that the Respondent has no rights or legitimate interests in the domain name and so the Complainant has established the second limb of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out the circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are:
(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.
What is noteworthy about paragraphs 4(b)(i)-(iv) of the Policy is that they are cases of both registration and use in bad faith. Paragraph 4(b) of the Policy is not exhaustive and other instances of bad faith might be in evidence. However, the Panel will turn to first test the facts against the enumerated examples.
The Complaint does not make specific reference to any of paragraphs 4(b)(i)-(iv) of the Policy but it is fairly plain that the Complainant believes that the Respondent's conduct falls under paragraph 4(b)(ii) of the Policy. Paragraph 4(b)(ii) requires a pattern of abusive domain name registrations. By the Complainant's own admission there is no evidence of that, however it seeks to rely on what might be described as misuse of known third party trade marks at the same website. That is not enough to satisfy the Policy.
Nevertheless, on the facts of the Complaint, the Respondent's conduct can readily be analysed in terms of paragraphs 4(b)(i), (iii) or (iv).
This Panel has no hesitation in finding that the Respondent's attempt to auction the domain name and, prior to that, sell it to the Complainant for USD35,000 prove that it is more likely than not that the Respondent registered the disputed domain name opportunistically and that its actions fall squarely under paragraph 4(b)(i).
In terms of paragraph 4(b)(iii), the Panel finds that Respondent's creation of a website homepage which might be characterised as a poorly crafted facsimile of what could be the Complainant's “official” website is clear evidence of an intention to disrupt the Complainant's business, nevertheless, it cannot be said that the Respondent is a competitor of the Complainant and so this paragraph is not satisfied.
Paragraph 4(b)(iv) of the Policy requires a use of the domain name creating a likelihood of confusion with the Complainant's mark as to the source of the online location to which Internet users are attracted. The Panel has already found the disputed domain name to be confusingly similar to the trade mark. The Panel finds that the likelihood of confusion as to source is therefore highly likely. Paragraph 4(b)(iv) of the Policy also requires an intention for commercial gain. What is required is proof that it is more likely than not that intention existed; absolute proof is not required and the Panel is entitled to accept reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory6. The Complainant alleges that the Respondent is benefiting from pay-per-click revenue. That Panel accepts that allegation as more likely than not to be true. Moreover, use of a domain name in this same manner is very frequently for commercial gain7. The Panel finds that the Respondent's action also falls under paragraph 4(b)(iv).
For these reasons, the Panel finds that the Complainant has satisfied the third and final limb 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 disputed domain name be transferred to the Complainant.
Debrett G. Lyons
Sole Panelist
Dated: February 5, 2009
1 See State Farm Mutual Automobile Insurance Company v. Periasami Malain, NAF Case No. FA705262 (“Complainant's registrations with the United States Patent and Trademark Office of the trademark STATE FARM establishes its rights in the STATE FARM mark pursuant to Policy paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, NAF Case No. FA174052 (finding that the complainant's registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant's rights in the mark for purposes of Policy paragraph 4(a)(i)).
2 See Vin Diesel v. LMN a/k/a L.M. Nordell, NAF Case No. FA804924 finding to be identical to complainant's mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (‘gTLD') ‘.com' [is] insufficient to differentiate the disputed domain name from Complainant's VIN DIESEL mark under Policy 4(a)(i)”.
3 See Mrs. Eva Padberg v. Eurobox Ltd.,WIPO Case No. D2007-1886 (March 10, 2008); see also Baylor University v. Domains By Proxy Inc., a/k/a Mark Felton a/k/a Thomas Bassett a/k/a William Bunn a/k/a Fertility Specialists of Dallas a/k/a Becky Chatham a/k/a Amanda Scott a/k/a Nathan Flaga a/k/a Lisa Payne a/k/a Victor Weir III, NAF Case No. FA1145651 (May 26, 2008).
4 See Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Case No. FA741828; AOL LLC v. Jordan Gerberg, NAF Case No. FA 780200.
5 See, for example, Bank of America Corporation v. Azra Khan, NAF Case No. FA124515 (finding that the respondent's diversionary use of the domain name to was not a bona fide offering of goods or services, was not noncommercial use, and was not fair use); see also Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903.
6 See Vertical Solutions Management, Inc. v. webnet-marketing, inc., NAF Case No. FA95095 (holding that the respondent's failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); See also Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009 (In the absence of a response, it is appropriate to accept as true all allegations of the complaint.).
7 See The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064 (finding that redirecting users to the website “www.” was for commercial gain and was bad faith registration and use); Ticketmaster Corporation v. Amjad Kausar,WIPO Case No. D2002-1018 (holding that “[t]he Respondent is clearly acting in bad faith by using the Complainant's trade mark to profit in the form of commissions by linking of the T Affiliate Program”); Yahoo! Inc. v. DFI Inc., NAF Case No. FA147313 (holding that, because respondent participated in an affiliate program whereby it earned a commission for each user redirected from its infringing site, its ultimate goal was commercial gain and thus it was using the name in bad faith); and Showboat, Inc. v. Azra Khan, NAF Case No. FA125227 (redirecting users for a commission is using a confusingly similar domain name for commercial benefit, which is evidence of bad faith).
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