WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION eprimo GmbH v. Fei Fei / Lan Fei Case No. D2009-0598 1. The Parties
The Complainant is eprimo GmbH, Neu-Isenburg, Germany, represented by Siebeke Lange Wilbert, Germany.
The Respondent is Fei Fei / Lan Fei, Shanghai, China. 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 May 6, 2009. On May 7, 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 8, 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. In response to the Center's observation that the WhoIs details however listed “Fei Fei” as the registrant, the Center invited the Complainant to amend its Complaint to identify that person as the Respondent also. An amendment to the Complaint was accordingly filed such an amendment to the Complaint on May 22, 2009. 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 May 29, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 18, 2009. No formal Response was filed, however the Center received an email communication from the Respondent on June 11, 2009.
The Center appointed James A. Barker as the sole panelist in this matter on July 1, 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. Because of exceptional circumstances, the Panel extended the due date for the decision. 4. Factual Background
As indicated in the WhoIs details, the disputed domain name was registered on March 13, 2007.
At the date of this decision, the disputed domain name reverts to a ‘portal' or ‘pay-per-click' (PPC) landing website. As typical with such websites, the website includes a miscellany of links, in English and French, with such titles as “Maisons Vendre”, “Location”, “Hgh Human Growth Hormone”, “Travel Insurance”, and “Film Sexuel”. However, the Complainant provides copies of those webpages as at March 13, 2009 and April 29, 2009. On those dates, the website included links to e.g. “Vattenfall” which is a competitor of the Complainant, as well as links to websites such as “” that compare energy suppliers.
The Complainant distributes gas and energy throughout Germany. The Complainant is the holder of German and Community trademarks for EPRIMO. The Complainant has maintained a presence on the Internet for a number of years, and owns numerous cctld and gtld domain names incorporating the term “eprimo”. 5. Parties' Contentions A. Complainant
The disputed domain name and the Complainant's trademarks and trade name are confusingly similar. The only difference between the disputed domain name and the Complainant's mark is the letter “r” at the beginning of the domain name. The addition of the letter “r” in the disputed domain name does not serve to adequately distinguish the disputed domain name from the Complainant's trademarks. The disputed domain name is confusingly similar to the Complainant's registered trademark. Especially due to the similar sound of the domain name and the trademark, Internet users are likely to get confused.
It is very likely that the Respondent has employed minor misspellings of the Complainant's mark to take bad faith advantage of spelling errors made by Internet users who attempt to enter the Complainant's internet address. Typing “reprimo” instead of “eprimo” is a common misspelling. On the keyboard the buttons for “r” and “e” are side by side. Confusion is very likely since the Respondent offers links to several power and energy suppliers which are all competitors of the Complainant. The Respondent has therefore engaged in “typosquatting”.
The Respondent has no rights or legitimate interests in the disputed domain name. The use of the domain name in connection with a PPC website is not a bona fide non-commercial use pursuant to the Policy, paragraph 4(c)(iii). Secondly, the Respondent has engaged in typosquatting to divert, for commercial gain, consumers looking for the Complainant's services on the Internet. This eliminates the possibility of legitimate non-commercial or fair use.
The website at the disputed domain name shows the Complainant's name and trademark on the left side. The Respondent obviously is aware of the Complainant and its trademarks.
The choice of a domain name incorporating a well-known and distinctive trademark, in the absence of any evidence of rights or legitimate interests, is itself indicative of bad faith registration. Furthermore, the Respondent has engaged in typosquatting. Typosquatting has been held under the Policy to be evidence of bad faith registration of a domain name.
The disputed domain name leads to websites that are domain name parking pages. The Respondent earns commissions whenever an Internet user visits his website and clicks on a sponsored link. Thus the Respondent is deriving a financial benefit from web traffic diverted through the disputed domain name, being confusingly similar to the Complainant's trademark, which underlines the Respondent's bad faith. B. Respondent
The Respondent did not file a formal Response. However, on June 11, 2009, the Respondent sent an email to the Center which stated:
“I have not yet received this dispute officially, maybe it was too big (I filter away emails too big) Anyway this is is my official answer (I do not have a fax and can not afford to send one):
R is about as 'confusingly similar' to E as R would be 'confusingly similar' to E or R would be 'confusingly similar' to E
That means - Primo and Reprimo are realy words while Eprimo is not real word, therefore this case is totally without merit, is absurd and is just attempt for reverse domain hijacking of generic word Reprimo under false pretense of “confusing similarity” of made-up linguistic nonsense.
Proof: ”. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(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 disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
These elements are discussed as follows, immediately following a discussion of a procedural issue. A. Receipt of Complaint
In its email to the Center, the Respondent claims that it did not receive the Complaint “officially”. This raises the question of whether the Complaint was properly notified to the Respondent in accordance with paragraph 2 of the Rules. On the case file, which includes evidence of the Center sending the Complaint to the Respondent in accordance with paragraph 2(a) of the Rules, the Panel is satisfied that the Respondent received actual notice of the Complaint, in accordance with that paragraph. In any case, while brief, the Respondent has submitted a response which shows that it knows something of the allegations against it. This suggests that the Respondent actually received the Complaint. The Respondent was also clearly aware that the Complaint had been filed. B. Identical or Confusingly Similar
There is no dispute that the Complainant has registered marks for EPRIMO. The disputed domain name relevantly incorporates that mark with the addition of “r” at the beginning. The disputed domain name is not identical to the Complainant's mark. The question is whether it is confusingly similar, despite the addition of the “r”.
The Respondent appears to suggest that the domain name is no more confusingly similar than e.g. “refinance” would be to “eFinance”. In other words, the Respondent seems to be saying that both “reprimo” and “primo” are generic or descriptive words, and that the “e” in “eprimo” is the common prefix added to generic words to denote an Internet-based version of the term. The difficulty with this argument is that the Respondent provided little evidence to support it. The Respondent refers only to an article in Wikipedia, which relevantly states that: “The gene reprimo has been found to be downregulated in several cancers but rarely in healthy cells. Its role appears to be related to its interaction with p53 (tumor protein 53)”. The suggestion seems to be that the Respondent chose the disputed domain name because it incorporates the name of the “reprimo” gene. The Panel thinks this unlikely. The names of particular genes are recondite and specialized. Nothing in the nature of the Respondent's website (as evidenced by the Complainant or more recently visited by the Panel) contains any reference to genes, including the “reprimo” gene.
There is no other evidence before the Panel that the term “reprimo” is used by the Respondent because it has a generic meaning. The Complainant provided no evidence about the derivation of the term “eprimo”. The Panel is not aware that “primo” or “eprimo” has any meaning in German or Chinese: which seem to be the obvious language against which to test descriptiveness, these being the languages of the country in which the Complainant and Respondent respectively are located.
With the Complainant's evidence of the reputation and registration of its mark, and the lack of evidence of any general descriptive meaning, the Panel is led to the conclusion that the Complainant's mark is distinctive as such, at least in Germany (and probably also in China). As the Complainant notes, the incorporation in a domain name of a distinctive mark in its entirety creates the potential for confusing similarity. (In addition to the cases cited by the Complainant, see relevantly EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047 in relation to the addition of “e” to a registered mark). On top of this, the disputed domain name is phonetically and visually similar to the Complainant's mark.
For these reasons, the Panel finds that the disputed domain name is confusingly similar to the Complainant's mark. C. Rights or Legitimate Interests
Essentially, the Complainant's case is that the Respondent registered a slight variation of its mark to derive a financial benefit from those who would be mislead by that variation. In support, the Complainant refers to links which appeared at one time on the Respondent's website, relating to competitors of the Complainant, as well as a German website offering comparisons of energy suppliers to the German market. This, says the Complainant, cannot constitute a bona fide offering of services within the meaning of paragraph 4(c)(i) of the Policy. The Complainant can find no other basis for the Respondent to be able to assert a right or legitimate interest of the type otherwise set out in paragraph 4(c) of the Policy.
The Respondent has provided no information or explanation concerning its activities or motivation for registering and using the disputed domain name, to rebut the case mounted against it by the Complainant. There is little other evidence in the case file to support a finding that the Respondent has a right or legitimate interest.
As noted above, the Respondent's website is a “portal” website. The registration of domain names in connection with portal websites (otherwise referred to as “directory”, “parking” or “pay-per-click (PPC) landing” sites) has been the subject of numerous prior decisions under the Policy. Such websites typically offer a list of automatically generated links. Also typically, the search function on such websites provides results only for search terms for which particular advertisers have paid. “The reason these pages are structured in this way is that, each time an Internet user clicks on a listed link, it creates an opportunity for the owner of the PPC landing page to receive a small (typically automated) payment from the advertiser in consideration for having delivered the Internet user to the advertiser's web page.” See Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415.
Where the links on a portal website are based on the trademark value of the domain name, rather than any descriptive value, the trend in decisions under the Policy is to recognize that such practices generally do constitute abusive cybersquatting. (See, mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; Ranbaxy Laboratories Ltd v. Jucco Holdings,WIPO Case No. D2007-1562, and the cases cited in those ones.) In other words, panels have found that such practices do not amount to a bona fide offering of goods or services, for the purpose of paragraph 4(a)(iii) of the Policy.
The evidence in this case supports a similar finding. The Respondent's registration and use of the disputed domain name appears to have been based on the trademark value of the Complainant's mark. There is little evidence available to the Panel to suggest a different conclusion. The Respondent's website has included links to the Complainant's competitors and to services of the kind offered by the Complainant. While that site appears to have changed between the date of this decision, and the date the site was investigated by the Complainant, the Panel gives this little weight. If intentional, it might clearly have been a self-serving attempt to avoid an unfavorable decision under the Policy.
For these reasons, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name. D. Registered and Used in Bad Faith
Paragraph 4(b)(iv) of the Policy provides that there is evidence of bad faith where:
“(iv) by using the domain name, you [the Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
The Panel finds that the evidence in this case supports a finding under this paragraph. As noted above, the disputed domain name is confusingly similar to the Complainant's mark. The evidence suggests that it is more likely than not that the Respondent has targeted the Complainant's mark in the hope of obtaining a commercial benefit via its portal website. The Complainant provided evidence of its substantial business (including of the companies with which it is associated). The Respondent's intention to capitalize on the value of the Complainant's mark is also suggested by the content of the Respondent's portal website. As noted above, the links on that site, on dates shortly before the Complaint was filed, related to the field and jurisdiction in which the Complainant does business.
For these reasons, the Panel finds that the Complainant has established that the disputed domain name was registered, and has been 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 Complainant.
James A. Barker
Sole Panelist
Dated: August 4, 2009
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