WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION AHI Invest GmbH v. Site Service International, Richard Sorensen Case No. D2009-0561 1. The Parties
The Complainant is AHI Invest GmbH, Vienna, Austria, represented by Hule/ Bachmayr-Heyda/ Nordberg, Austria.
The Respondent is Site Service International, Richard Sorensen, Dallas, Texas, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 29, 2009. On April 29, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the disputed domain name. On May 1, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR 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 May 11, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 31, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 2, 2009.
The Center appointed Ian Blackshaw as the sole panelist in this matter on June 11, 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 Complainant is the proprietor of the international trademark AHI, which was registered with WIPO on September 30, 1993, under registration number 616359, in respect of certain goods and services in Classes 36, 37 and 42 of the Nice Classification. The Complainant's business relates to construction and property management.
The Panel has been provided with a copy of the IPDL search result confirming the trademark registration.
The disputed domain name was first registered on February 20, 1991. 5. Parties' Contentions A. Complainant
The Complainant makes the following contentions:
A1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), (b)(ix)(1))
As the disputed domain name is identical with the registered trademark AHI in which the Complainant has rights, this requirement of the Policy and the Rules is satisfied.
A2. The Respondent has no rights or legitimate interests in respect of the domain name;
(Policy, paragraph 4(a)(ii), Rules, paragraph 3(b)(ix)(2))
The Respondent has no rights or legitimate interests in respect of the disputed domain name because there is no evidence that the Respondent has been commonly known by the domain name or any variant of it. The Respondent's use of a domain name incorporating the Complainant's trademark AHI, even without anything more, supports a finding of a lack of rights or legitimate interests.
The Respondent is not a licensee of the Complainant; it has no relationship or association with the Complainant; nor is the Respondent otherwise authorized to use the Complainant's name or marks in any way.
Furthermore, the Respondent is not making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain, misleadingly to divert consumers or to tarnish the Complainant's trademark AHI.
A3. The domain name was registered and is being used in bad faith;
(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraphs 3(b)(ix)(3))
The Complainant bought the disputed domain name on April 11, 2003 from Artificial Horizons, Inc., San Carlos, California (copies of the relevant e-mail correspondence have been provided to the Panel). The Registrar was Network Solutions, Inc. Since then the domain name has been used by the Complainant.
In October, 2006, without the knowledge or consent of the Complainant, a Company, named Direct Information PVT Ltd d/b/a PublicDomainR became the Registrar and the Respondent the Registrant. Since June, 2008, a Company named Directi Internet Solutions PVT Ltd d/b/a PublicDomainR became the Registrar. The Complainant never approved the (illegal) transfer of its domain name - the disputed domain name - to such Registrar and Registrant. The Respondent hijacked the disputed domain name and is using it in bad faith.
Since the transfer of the disputed domain name, the Respondent has not made any amendments to the website.
More recently, the Complainant became aware of the illegal transfer of the disputed domain name.
The Complainant refers the Panel to the rulings in JAI A/S v. Site Services International, Richard Sorensen,WIPO Case No. D2007-1685; Regan Campbell Ward-McCann v. Site Services International, Richard Sorensen,WIPO Case No. D2008-0386; and Wall Street Webcasting and Douglas Estadt v. Site Services International, Richard Sorensen, NAF Case No.955052, Olympic Credit Fund, Inc. v. Site Services International, Richard Sorensen, NAF Case No. 910790, all of which rulings were brought against the Respondent, based on identical or similar facts as in the present case, and all of which proceedings resulted in the transfer of the domain name in each case to the Complainant. B. Respondent
The Respondent, having been duly notified of the Complaint and of these proceedings, did not reply to the Complainant's contentions or take any part in them. 6. Discussion and Findings
To qualify for cancellation or transfer of the disputed domain name, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:
(i) The disputed domain name is identical or confusingly similar to a trademark 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 disputed domain name has been registered and is being used in bad faith.
In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
In accordance with paragraph 14(a) of the Rules, in the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint; and (b) if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.
In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.
In previous UDRP cases in which the respondent failed to file a response, the panel's decisions were based upon the complainant's assertions and evidence, as well as inferences drawn from the respondent's failure to reply. See The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064; and also Köstritzer Schwarzbierbrauerei v. Macros-Telekom Corp.,WIPO Case No. D2001-0936.
Nevertheless, the panel must not decide in the complainant's favor solely based on the respondent's default. See Cortefiel S.A. v. Miguel García Quintas,WIPO Case No. D2000-0140. The panel must decide whether the complainant has introduced elements of proof, which allow the panel to conclude that its allegations are true. A. Identical or Confusingly Similar
It is well established in previous UDRP cases that, where a domain name incorporates a complainant's registered mark, this may be sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525.
In the present case, the disputed domain name incorporates in its entirety the Complainant's well-established trademark AHI.
The disputed domain name also incorporates the essential and denominating part, namely, AHI, of the Complainant's corporate/business name.
The addition of the suffix “.com” to the disputed domain name does not affect the position for trademark distinguishing purposes, as its presence in the disputed domain name is for Internet registration purposes only. See Samsung Electronics Col. Ltd. v. Selim Civelek,WIPO Case No. DRO2008-0005 and the other UDRP cases cited therein.
In view of all this, the Panel finds that the disputed domain name registered by the Respondent is identical to the Complainant's well-established trademark AHI, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has well-established rights and commercial use of the same prior to the registration of the disputed domain name by the Respondent. B. Rights or Legitimate Interests
In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed domain name (paragraphs 3(b)(ix)(2) of the Rules and 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:
– whether before any notice to the Respondent of the dispute, there is any evidence of the Respondent's 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;
– whether the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights;
– whether the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests with respect to registering the disputed domain name. On the contrary, if the Respondent had any such rights or legitimate interests, the Respondent would have reasonably been expected to assert them, which the Respondent clearly has not done, by not replying to the Complaint. See 1-800-F, Inc, Fresh Intellectual Properties, Inc., Fannie May Confections, Inc. v. G Design,WIPO Case No. D2006-0977.
Neither is there any evidence before the Panel that the Respondent has been authorized or licensed by the Complainant to use the Complainant's well-established trademark AHI. Indeed, the adoption by the Respondent of a domain name identical to the Complainant's trademark AHI inevitably leads to confusion on the part of Internet users and consumers seeking information about the Complainant and its activities and services (see further on this point below) and the consequential tarnishing of the Complainant's trademark AHI and also the goodwill that the Complainant has established in this trademark through its commercial use of the same, sufficient evidence of which has been provided to the Panel, without any right or legal justification for doing so.
Also, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed domain name; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the disputed domain name.
Therefore, for all the above reasons, the Panel concludes that the Respondent has neither rights nor legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris,WIPO Case No. D2003-0366.
Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:
“(iv) by using the domain name, [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to its web site 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 [the Respondent's] web site or location or of a product or service on its web site or location.”
Based on the record in the case file, the Panel agrees with the Complainant's contention that the Respondent, by registering the disputed domain name, is trading on the Complainant's goodwill established in its well-established trademark AHI.
Again, by registering and using the disputed domain name incorporating the Complainant's trademark AHI, the effect is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent's activities are approved or endorsed by the Complainant. None of which, on the basis of the record in the case file, is, in fact, the situation. Such misleading consequences, in the view of the Panel, constitute bad faith on the part of the Respondent. See Columbia Insurance Company v. Pampered Gourmet,WIPO Case No. D2004-0649.
Furthermore, the fact that the disputed domain name includes without any modification the well-established trademark AHI of the Complainant, held and used by the Complainant some thirteen years prior to the date the Respondent became the registrant of the disputed domain name, is a further factor supporting a conclusion of bad faith. See Segway LLC v. Chris Hoffman,WIPO Case No. D2005-0023; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Cellular One Group v. Paul Brien,WIPO Case No. D2000-0028. For a domain name would typically be used in good faith by the owner of the respective right or by a licensee, neither of which is the situation in the present case.
In addition, the particular circumstances in which the Respondent became the registrant of and is using the disputed domain name, as stated by the Complainant in 5. A3 above, also indicate bad faith on the part of the Respondent. See the panel's findings on this point in Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094.
Furthermore, the Respondent, as mentioned and evidenced by the Complainant, again in 5. A3 above, has been the subject of previous adverse findings by the WIPO UDRP Panels against the Respondent in similar circumstances to those obtaining in the present case, and the Panel agrees with the Complainant's contention that such previous history and pattern of behavior by the Respondent is a further indication supporting a finding of bad faith on the part of the Respondent in the present case. See Tom Cruise v. Network Operations C/Alberta Hot Rods,WIPO Case No. D2006-0560.
Finally, the failure of the Respondent to answer the Complaint or take any part in the present proceedings are, again in the view of the Panel, further indications of bad faith on the part of the Respondent. See Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787.
Therefore, taking all these particular circumstances into account and for all the above-mentioned reasons, the Panel concludes that the Respondent has registered and is using the disputed domain name 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 Complainant.
Ian Blackshaw
Sole Panelist
Dated: June 15, 2009
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