WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Infranor Holding SA, Infranor SA v. Michael Robert Case No. D2008-1938 1. The Parties
The first Complainant is Infranor Holding SA, of Coppet, Switzerland and the second Complainant is Infranor SA, of Coppet, Switzerland, represented by Altenburger, Switzerland.
The Respondent is Michael Robert, of Lawrenceville, Georgia, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with OnlineNic, Inc. d/b/a China-C. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2008. On December 19, 2008, the Center transmitted by email to OnlineNic, Inc. d/b/a China-C a request for registrar verification in connection with the disputed domain name. On December 22, 2008, OnlineNic, Inc. d/b/a China-C 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” 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 29, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 18, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 19, 2009.
The Center appointed Johan Sjöbeck as the sole panelist in this matter on January 26, 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
The first Complainant has submitted evidence that it is the owner of the following trademark registrations:
CYBELEC, class 9 with Swiss registration No. 382677, registered April 26, 1991.
CYBELEC, class 9 with international registration No. 570198, registered April 25, 1991 based upon Swiss registration No. 382677.
The second Complainant has submitted evidence that it is the owner of the following trademark registration issued by the United States Patent and Trademark Office (“USPTO”):
CYBELEC, class 9 with registration No. 1715128, registered September 15, 1992.
The disputed domain name was registered by the Respondent on August 29, 2004. 5. Parties' Contentions A. Complainant
The first Complainant, Infranor Holding SA and the second Complainant, Infranor SA are joint stock corporations under Swiss law. The first Complainant is a wholly owned subsidiary of Infranor Inter AG which is the parent company of Cybelec SA.
The Complainants use the CYBELEC trademarks for components, amplifiers and motors. The Complainants have an organization of agents and service partners in Italy, the United State of America, Spain, China, Turkey, Australia, Brazil, Canada, Denmark, France, Germany, New Zealand, Sweden, Switzerland, the Netherlands and the United Kingdom of Great Britain and Northern Ireland.
The Complainants have actively been using the CYBELEC trademarks before the Respondent registered the disputed domain name in 2004. As evidence of such use, the Complainants submit have submitted copies of business reports, invoices and order confirmations between 2001 and 2008. According to the Trademark Electronic Search System (TESS) of the United States Patent Office, first use in commerce was 1985.
The disputed domain name is identical to the Complainants' trademark CYBELEC, except for the generic Top Level Domain “.com” which should be disregarded for these purposes.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. There is no evidence that the Respondent has used, or has made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services before any notice of the dispute.
The disputed domain name resolves to a website displaying sponsored links which are generating revenues via the “pay per click system”. The Respondent earns commission whenever an Internet user visits the website and clicks on the sponsored links.
The Respondent has not registered “cybelec” as a trademark and is not commonly know by the domain name as an individual, business or other organization. The term “cybelec” is not the family name of the Respondent. Neither is the Respondent a licensee or authorized agent for the Complainants or in any other way authorized to use the Complainants' trademark CYBELEC.
The disputed domain name was registered and used in bad faith by the Respondent. The Respondent has placed the disputed domain name for sale at with no price indication. The Complainants offered USD 300 but received no answer from the Respondent, thus indicating that the Respondent seeks to generate a higher price, clearly in excess of the registration costs for the disputed domain name. The Respondent's behavior amounts to bad faith.
The Respondent is intentionally attempting to attract Internet users, by creating a likelihood of confusion with the Complainants' trademark CYBELEC as to the source. Each time an interested customer wants to check the information regarding “cybelec” at , the Respondent will make money.
The Complainants sent a cease and desist letter to the Respondent on August 13, 2008 but the Respondent failed to reply. Failure to respond to such a cease and desist letter, despite the notice that the disputed domain name is identical to the registered trademark CYBELEC, constitutes bad faith according to previous decisions. B. Respondent
The Respondent did not reply to the Complainants' contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainants must prove each of the following:
(i) that the Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainants are, according to the submitted evidence, the owners of the registered trademarks CYBELEC. The Complainants have submitted evidence of owning a Swiss trademark registration, an international trademark registration and a trademark registration in the United States of America. All of the Complainants' trademark registrations for CYBELEC predate the registration of the disputed domain name .
The disputed domain name incorporates the trademark CYBELEC in its entirety.
Having the above in mind, the Panel concludes that the disputed domain name is identical to the Complainants' trademark CYBELEC and that the Complainants have proved the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainants must show that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(a) that he has made 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 prior to the dispute; or
(b) that he is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) that he intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Complainants have not licensed or otherwise in any way consented to the Respondent's use of the Complainants' trademarks CYBELEC in connection with the disputed domain name which is identical to the trademarks. The Respondent has not submitted any evidence indicating that the Respondent is the owner of any trademark rights or that the Respondent is commonly known by the disputed domain name.
From the evidence submitted by the Complainants, it is clear that the Respondent's website, to which the disputed domain name resolves, contains numerous sponsored commercial links and that the Respondent is offering the disputed domain name for sale at . The Respondent's use of the disputed domain name serves the purpose of generating revenue via advertised pay-per-click products and links and it has been held in previous cases that such use in the circumstances does not represent a use in connection with a bona fide offering of goods and services. See e.g., Sigikid H. Scharrer & Koch GmbH & Co. KG, MyBear Marketing-und Vertriebs GmbH, Mr. Thomas Dufner v. Bestinf,WIPO Case No. D2004-0990.
By not submitting a Response, the Respondent has failed to invoke any circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the disputed domain name. Thus, there is no evidence in the case that refutes the Complainants' submissions, and the Panel concludes that the Complainants have also proved the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include:
(i) circumstances indicating the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the domain name has intentionally been used in an attempted to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on a website or location.
From the submitted evidence it is clear that the Complainants' registered CYBELEC trademarks predate the registration of the disputed domain name . The Complainants sent a cease and desist letter to the Respondent on August 13, 2008 requesting that the Respondent transfer the disputed domain name to the Complainants. On August 15, 2008 the Complainants sent a copy of the letter via e-mail to the Respondent. The Respondent did not reply to the Complainants' letter or e-mail message.
It has been established in this case that the Respondent is actively offering the disputed domain name for sale at . Subsequently, on October 31, 2008 the Complainants placed an offer of USD300 for the disputed domain name via the Respondent's selling page at but the Respondent did not accept the offer. It has been argued by the Complainants that the Respondent is seeking a higher price for the disputed domain name. The Panel finds that the submitted evidence suggests that the disputed domain name was registered or acquired primarily for the purpose of selling or transferring the disputed domain name to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name.
It has also been established that the website to which the disputed domain name resolves contains numerous advertising links to websites promoting and/or offering third party products. The Respondent's website appears to generate revenues via a
pay-per-click system. Such exploitation of the reputation of trademarks to obtain click-through commissions from the diversion of Internet users is an indication of use in bad faith according to previous UDRP decisions. See e.g., L´Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623 and F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451. The circumstances in the case before the Panel indicate that the Respondent was aware of the Complainants' CYBELEC trademarks when registering the disputed domain name and that it has intentionally been and is being used in an attempt to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainants' trademarks as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on a website.
There is no evidence in the case that refute the Complainants' persuasive submissions.
The Panel concludes that the Complainants have proved the requirements under paragraph 4(b) of the Policy and that the disputed domain name has been registered and used in bad faith. 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 first Complainant, namely Infranor Holding SA.
Johan Sjöbeck
Sole Panelist
Dated: February 9, 2009
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