WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION ehotel AG v. Network Technologies Polska Jasinski Lutoborski Sp.J. Case No. D2009-0785 1. The Parties
1.1 The Complainant is ehotel AG of Berlin, Germany, represented by Patent- und Rechtsanwälte Bettinger Schneider Schramm, Germany.
1.2 The Respondent is Network Technologies Polska Jasinski Lutoborski Sp.J. of Konstancin Jeziorna, Poland. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2009. On June 15, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day the Registrar 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”).
3.2 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 June 17, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 7, 2009. The Respondent sent an email which had the time and date “Tue 07/07/2009 23:02”, but which appears to have been received by the Center at 00:02 hours on July 8, 2009. The email attached the Respondent's Response.
3.3 The Center appointed Matthew S. Harris as the sole panelist in this matter on July 9, 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.
3.4 On July 9, 2009, the Complainant's representative sent a request to the Center seeking a suspension of these proceedings for two weeks to enable it to double check and verify allegations contained within the Response.
3.5 On July 14, 2009, the Panel issued a Procedural Order (“Procedural Order No. 1”) inviting the parties to submit a further submission primarily limited to the issue of whether or not the Respondent had ever operated and continued to operate a business using the “ehotel” name. The Procedural Order No. 1 also recorded the Panel's view that the call for further submissions meant that there was no need to address the Complainant's request for a suspension and extended the time for the issuing of a decision in this matter until July 31, 2009.
3.6 In accordance with Procedural Order No.1 the Respondent filed a further submission with the Center on July 20, 2009 (the “Respondent's Supplemental Submission”). The Complainant did not file any substantive further submission. Instead, the Complainant sent a communication to the Center on July 27, 2009 asking for a further suspension of proceedings in order to explore the possibility of settlement with the Respondent. It also stated that is wished to have further time to investigate certain factual matters.
3.7 On July 28, 2009, and at the instigation of the Panel, the Center sent an email to the parties noting the Complainant's request for suspension and stating as follows:
“The Panel notes this request but is not in possession of any material from the Respondent which confirms that the Respondent has agreed to that suspension. Further, whilst the Panel does not want to stand in the way of the parties resolving this matter amicably, it also bears in mind that proceedings under the Policy are intended to provide a quick and streamlined procedure for the resolution of domain name disputes and that paragraph 10 (c) of the UDRP Rules places upon an obligation on the Panel to ensure that any administrative proceeding takes place with due expedition.”
3.8 In the email the Center also informed the parties that if the Respondent indicated its consent by no later than July 31, 2009, then the Panel was minded to grant a short suspension of proceedings to enable settlement negotiations to take place. However, the email also made it clear that if the Respondent's consent was not forthcoming then the Panel was likely to proceed to issuing a decision. In this email the Center also informed the parties that in the meantime the Panel extended the time for issuing a decision in this matter until August 5, 2009.
3.9 No consent to suspension was forthcoming from the Respondent and accordingly the Panel now proceeds to issue its decision in this matter. 4. Factual Background
4.1 The Complainant is a company incorporated under the laws of Germany. It is a provider of online hotel booking services and is the successor in business to a company founded in 1998. In 2008 it had annual sales amounting to EUR 9.7 million.
4.2 The Complainant is the owner of the following trade mark registrations:
(i) German trade mark registration 39845897 for the words “eHotel Service” in classes 38, 39 and 42 with a date of registration of October 8, 1998; and
(ii) Community trade mark registration 4676491 for the word “ehotel” in classes 39 and 42 with a date of registration of October 5, 2006.
4.3 The Domain Name was registered in the name of Mr. C. Lutoborski on April 5, 2003. From June 2003 to January 2004 the Domain Name was used in connection with a web page purporting to promote “eHotels” in Warsaw, Cracow and Zakopane that were “opening December 2003”.
4.4 In or about January 2004 there were discussions between Mr. Lutoborski and the Complainant regarding an agreement whereby hotel booking through the Domain Name would be forwarded to the Complainant for fulfilment. There is a dispute as to the extent to which any formal agreement was entered into by the parties at that time, but from about March 2004 to February 2007 the Domain Name redirected Internet users to the Complainant's website operating from .
4.5 From approximately February 2007 the Domain Name ceased to redirect users to that site and instead redirected them to a page similar to that operating from the Domain Name back in 2003, but referring solely to the “eHotel Zakopane – Jasinówka”.
4.6 In or about March 15, 2007 the Domain Name was transferred to the Respondent. As is described in greater detail later in this decision the Respondent is a company with which Mr. Lutoborski is connected. 5. Parties' Contentions A. Complainant
5.1 The Complaint refers in extensive submissions to a very large number of cases under the Policy to support the contention that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights. It is claimed that (a) the Domain Name “wholly incorporates [the] Complainant's EHOTEL mark” and that therefore the Domain Name is identical to its trade mark and that (b) the Domain Name is confusingly similar to the Complainant's EHOTEL SERVICE mark in that it “fully incorporates the distinctive part EHOTEL”.
5.2 On the questions of rights and legitimate interests it maintains that “the word EHOTEL is obviously connected with [the] Complainant's mark EHOTEL and is not a word a trader or private person would legitimately choose unless seeking to create an impression of an association with [the] Complainant”. It is claimed that there is no evidence of use or demonstrable preparations to use the Domain Name or a name corresponding to the Domain Name with a bona fide offering of goods or services. In this respect it is claimed that the Respondent's use of the mark constitutes trade mark infringement. Reliance is placed on the decision in Serta Inc. v. Maximum Investment Corporation,WIPO Case No. D2000-0123 which is said to provide authority for the proposition that “[i]t is beyond doubt that there is no bona fide offering of goods and services where the use of the domain name for such offering constitutes trade[ ]mark infringement”1.
5.3 It is further denied that the Respondent trades under the domain name or the name EHOTEL or is commonly known by these names or is making a legitimate noncommercial or fair use of the Domain Name within the meaning of paragraph 4(c)(iii) of the Policy.
5.4 On the question of bad faith registration and use the Complainant cites various cases that the requirement of bad faith registration can be satisfied if there is bad faith at the time of acquisition of a domain name subsequent to initial registration. The Complainant, therefore, seems to maintain that in this case bad faith registration can be assessed in March 2007 when the Domain Name was transferred from Mr. Lutoborski to the Respondent.
5.5 It is claimed that “[t]he Respondent was obviously aware of [the] Complainant's rights in the mark EHOTEL based on his participation in [the] Complainant's affiliate program [and that] [t]herefore [the] Respondent's registration of the [Domain Name] occurred in bad faith”. Further, it is said that the current website operation from the Domain Name is said to involve a diversion of traffic intended for the Complainant's website by creating a likelihood of confusion with the Complainant's mark within the meaning of paragraph 4(b)(iv) of the Policy. B. Respondent
5.6 The Response is filed by Mr. C. Lutoborski. He claims that the “eHotel brand” has been used for “our small hotels” since 2001. He claims that the Domain Name was transferred for unspecified “technical reasons” to a new registrar on March 15, 2007.
5.7 The Respondent seeks to make a number of points based upon the scope of the Complainant's marks and the fact that Poland only acceded to the European Union on May 1, 2004.
5.8 The Respondent claims that “e” as a prefix is commonly used to describe products and services with an electronic dimension and that therefore the term “ehotel” is said not to be directly connected with the Complainant. Reference is made to the “Ehotel Tennis” which is said to be in Lithuania.
5.9 The Respondent claims that the website was used in 2003 to promote “3 hotels with the same name, owned by one owner and located only in Poland”. It denies that it ever participated in the Complainant's affiliate programme. It claims that the contract was never signed by Mr. Lutoborski and that “no invoice was issued, no money was transferred [and] no exchange of goods or services was conducted”.
5.10 The Respondent's explanation for the diversion to the Complainant's website is as follows:
“I ... agreed on [an] experiment [that] Mr. Garke [, a representative of the Complainant,] proposed - to see amount of traffic the domain itself attracts. As it did no harm to me I had link[ed] my domain with his reservation website . Nevertheless he was surprised that the domain itself does not attract as much traffic as he predicted. He also noticed that although some people got through , they returned to .”
5.11 On reviewing the papers in this matter the Panel formed the view that there did not seem to be credible evidence before it that the Respondent currently operated or had in the past operated a genuine “eHotel” branded business. However, in light of the fact that the Complainant had not put its case in this fashion, the Panel considered that it was appropriate to allow the parties to put in further submissions in this respect. This was provided for by Procedural Order No.1. In response to that order, the Respondent filed in evidence:
(a) a leaflet in Polish that appears to be dated 2002 and which provides pictures and addresses for 6 hotels, one of which is identified as the “eHotel Zakopane – Jasinówka”;
(b) a receipt dated 20 November 2001 which carries the name and address of the “eHotel Zakopane – Jasinówka”.
However, the Respondent did not provide any evidence that any hotel under this name continues to operate to this day.
5.12 The additional submission in which this evidence was provided was also signed by Mr. Lutoborski. In that submission Mr. Lutoborski confirmed:
(a) that the Respondent was a business “dealing with operation of web and e-mail servers for many customers and obviously my own”; and
(b) that the Respondent was a business in which Mr. Lutoborski was a “partner”. 6. Discussion and Findings
6.1 The Complainant must make out its case in accordance with the requirements set out in paragraph 4(a) of the Policy. Namely the 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 (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.2 The Panel will address each of these issues in turn. A. Identical or Confusingly Similar
6.3 The Complainant possesses both German and Community trade marks that comprise the terms “eHotel Services” and “eHotel” respectively. Each is in respect of services that cover the making of travel arrangements. The Domain Name can only be sensibly understood as the English word “hotel” prefixed with the letter “e”, together with the “.com” TLD. In the circumstances, the Panel finds that the Domain Name is confusingly similar (as that term is understood under the Policy) to the Complainant's German registered trade mark and is virtually identical to the Complainant's Community trade mark.
6.4 The Respondent appears to contend that as it is based in Poland, the Complainant had no rights in Poland as at the date that the Domain Name was initially registered. It also appears to contend that although the Complainant possesses a Community trade mark that prima facie covers Poland, the fact that Poland only acceded to the European Union in 2004, limits the scope of the Complainant's rights in this territory.
6.5 These contentions are not relevant to the assessment of this aspect of the Policy. Paragraph 4(a)(i) of the Policy is a threshold test that simply requires the Complainant at the time of the Complaint to hold rights in a relevant mark somewhere in the world (see, for example, Research in Motion Limited v. One Star Global LLC,WIPO Case No. D2009-0227). The fact that this mark may relate to a different territory to that in which the Respondent operates and may post date the relevant domain name's registration date does not matter so far as this initial assessment is concerned (although this may well be significant to the assessment of rights and legitimate interests and bad faith).
6.6 Similarly, the Panel is un-persuaded by the Respondent's contentions that the letter “e” is often used as a prefix to indicate goods or services that are or have some electronic or Internet related element should lead to a different conclusion on confusing similarity. That the letter “e” is used in this way is undoubtedly true. This fact might have been highly relevant to the assessment of confusing similarity if the only similarity between the Complainant's marks and the Domain Name was the use of that single letter as a prefix. However, the similarities in this case are more extensive than simply that.
6.7 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
6.8 Before assessing the question of rights or legitimate interests (and for that matter the question of bad faith) it is necessary to consider who is the person or entity that should be treated as the Respondent for the purposes of that assessment.
6.9 The underlying facts in this case are somewhat unclear, but what is known is that the Domain Name was registered in the name of Mr. Lutoborski in 2003 but was transferred into the name of the Respondent, Network Technologies Polska Jasinski Lutoborski Sp.J. in March 2007. Therefore, prima facie it would seem that at the time of the filing of the Complaint, Network Technologies Polska Jasinski Lutoborski Sp.J. is to be treated as the Respondent and the question is whether it (rather than Mr. Lutoborski) has a right or legitimate interest (see, for example, Smith & Nephew plc v. Wesley Perkins, Smith and Nephew Trading,WIPO Case No. D2008-1029).
6.10 In the Panel's view, it is difficult to see how Network Technologies Polska Jasinski Lutoborski Sp.J. could have a right or legitimate interest in the Domain Name. The evidence suggests that it is an information technology company that provides Internet related services for its customers. It would appear neither to have ever owned rights in the “eHotel” name, nor to have operated a business under that name. Were it to be treated as the “true Respondent” for the purposes of this assessment, it seems reasonably clear that the Complainant can and would succeed under paragraph 4(a)(ii) of the Policy.
6.11 The difficulty in this case is that although the Domain Name is now registered in the name of the Respondent, the Respondent contends that the Domain Name is still controlled by and held on behalf of Mr. Lutoborski. Should then Mr. Lutoborski be treated as the “true Respondent” for the purposes of this assessment?
6.12 There are some similarities here with the facts in Axelion GmbH v. Eric H. Schunk,WIPO Case No. D2008-1701. In that case the complainant was engaged in a dispute with the original registrant of a domain name and the domain name was then transferred into the hands of a lawyer in the United States. In that case, notwithstanding suggestions that the lawyer held the domain name on behalf of the original registrant, the panel still held that it was the existence or otherwise of rights or legitimate interests of the lawyer that were significant.
6.13 However, in Axelion, supra, the exact relationship between the lawyer and the original registrant was unclear. Further, the peculiar facts of that case were such that if the new registrant had no interest in the domain name then this in turn suggested that both old and new registrants were colluding in a sham transaction to frustrate the operation of separate legal proceedings in the German courts. It was against that unusual background that the panel held that the new registrant was the proper registrant for the purposes of the rights and legitimate interests assessment.
6.14 In this case there seems to be no dispute that it is Mr. Lutoborski, and Mr. Lutoborski alone, who has an interest in the Domain Name. The Complainant contends that Network Technologies Polska Jasinski Lutoborski Sp.J. is “the company of Mr. Lutoborski” and Mr. Lutoborski seems to admit this, asserting that he is “a partner” in that business. More significantly, the Respondent's Supplemental Submission makes it clear that the Respondent simply holds the Domain Name on behalf of Mr. Lutoborski and it is noticeable that it is Mr. Lutoborski personally who has filed both the Response and the Respondent's Supplemental Submission in this matter.
6.15 In the circumstances, the Panel is not prepared to find in the Complainant's favour so far as this heading of the Policy is concerned solely on the basis that Network Technologies Polska Jasinski Lutoborski Sp.J. has no right or legitimate interest in the Domain Name. The Complainant's case in this respect stands or falls on whether at the time of the filing of the Complaint Mr. Lutoborski had such an interest.
6.16 For reasons that the Panel describes in greater detail under the heading of bad faith below, even if the Panel were to give Mr. Lutoborski the benefit of the doubt and to assume that at the time of original registration of the Domain Name he was operating a legitimate business under the “eHotel” name, the Panel is not convinced that he retained such a right or interest at the time that the Domain Name was transferred into the name of the Respondent or at the time of the filing of this Complaint. In the Panel's view, by that time the reason why he held the Domain Name was to take advantage of its associations with the Complainant.
6.17 In the circumstances, the Panel holds that on the balance of probabilities on the evidence before it that the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
6.18 As has already been explained under the heading of rights or legitimate interests above, the Panel is prepared to accept for the purposes of this decision that all times the Domain Name has been under the effective control of Mr. Lutoborski. It is against Mr. Lutoborski that the question of bad faith registration and use is to be judged.
6.19 However, this still leaves the question whether the question of bad faith registration is to be judged at the date of original registration in 2003 or when the recorded registrant changed in 2007. This is important since the Complainant does not allege that the Domain Name was originally registered with the Complainant in mind. There is no evidence of the size of the Complainant's business or the degree of fame that it had achieved by 2003. Further, as has already been explained the Domain Name can only sensibly be understood as the ordinary English word “Hotel” pre-fixed with the letter “e” and the Panel accepts the Respondent's contention that the letter “e” is commonly used in this fashion to indicate the electronic provision of goods or services. In other words, the term “eHotel” is not so inherently distinctive that the only plausible explanation for its initial registration was with the Complainant's business in mind. Therefore, if bad faith registration were to be assessed as at 2003, then on the basis of the material before the Panel the Complainant's Complaint would be likely to fail.
6.20 However, as the Complainant correctly states, where a domain name is transferred from one entity to another entity then this can be treated as a fresh “registration” for the purposes of the Policy. In such a case bad faith can be assessed at the date of that transfer rather than as at the date of initial registration. The Complainant cites a number of cases in support of that proposition, but it has also long been recorded as a “consensus view” at paragraph 3.7 of the “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”.
6.21 Here although there has been a change to the listed registrant of record, there appears to have been no change in control over the Domain Name. Does this latter factor make a difference in the circumstances of the present case? In the opinion of the Panel it does not. Not all changes in registration details necessarily involve transfers and re-registrations for the purposes of the Policy. Examples might be where a registrant seeks to correct a typographical error in its name, or a company changes its name and changes the register to reflect that change. There may be other examples (see the discussion of the consequences of company “mergers” in Aubert International SAS and Aubert France SA v. T Co.,WIPO Case No. D2008-1986). However, where there has been a change in registration details from one legal entity to another, then in the opinion of the Panel there will typically be a fresh registration. A transfer into the hands of an agent or proxy may still be a transfer and re-registration for the purposes of the Policy, even if that agent holds the domain name on the instructions of the original registrant. Therefore, whatever the arrangement between Mr. Lutoborski and the Respondent, and notwithstanding Mr. Lutoborski's apparent involvement in the Respondent's company, the Panel finds that there has been a fresh registration in this case.
6.22 Such an approach may mean that a domain name owner who transfers a domain name to another legal entity as evident from the WhoIs risks losing a domain name that may once have been legitimately acquired but is now being used in bad faith even where there is no change in underlying control. However, the Panel is unconvinced that this provides a good reason for interpreting the concept of registration under the Policy more restrictively. If at the time of transfer of the domain name the owner is using and intends to continue to use the domain name in good faith, then he will have nothing to fear. Second, it is questionable whether the Policy should be that indulgent to those who decide to use registration details that do not properly reflect or disguise (whether before or after a transfer) the true owner of that domain name.
6.23 Therefore, in this case the key question is the nature of Mr. Lutoborski's intentions in relation to the Domain Name at the time of the 2007 transfer.
6.24 Mr. Lutoborski appears to claim that the intention was to use the Domain Name in connection with a pre-existing business that used the eHotels name. As has already been described above, on considering the papers in this matter the Panel was sceptical that such a business existed. The form of the web pages that had operated from the domain name in late 2003 and since February 2007 did not strike the Panel as the sort of web pages that one would expect to be operated by a legitimate business, and certainly not one that professed to be engaged in the business of online hotel booking. The early web page comprised little more than the text “eHotel Warsaw”, “eHotel Cracow” and “eHotel Zakopane” with no contact details. The latter web page refers to “eHotel Zakopane” and provides an address, but there is no other information about this supposed hotel. Put frankly, the web pages look amateur and contrived. This was particularly strange given Mr. Lutoborski professed involvement with a company that provides Internet related services.
6.25 The Respondent then provided some material that would suggest that a small business operating to some degree under the eHotel name may have existed in Zakopane in about 2002. That material is far from compelling. For example, Mr. Lutoborski does not offer a proper explanation of his involvement or connection with this business. Further, the original web page referred to “ehotels” in Warsaw and Cracow and yet no evidence at all is provided of these hotels' existence. Further, the web page claims that all these hotels were “opening in December 2003” and yet the material provided in the Respondent's Supplemental Response purports to show a business in operation in 2002.
6.26 The Complainant has asked for further time to investigate these matters but the Panel does not think it is appropriate to grant this request. It was the one that choose to commence these proceedings and Procedural Order No.1 already provided it with additional time to address this question. Further, on its own case the Complainant had dealings with the Respondent in late 2003. If it has material to address this issue it can and should have brought this before the Panel by now.
6.27 Therefore, the Panel is prepared (albeit with some hesitation) to give the Respondent the benefit of the doubt on this issue, and to accept that in or about 2002, Mr. Lutoborski operated a small business in Zakopane under the eHotel name.
6.28 However, the Respondent has failed to bring forward any evidence that any business continued to operate under that name in more recent years and crucially in about March 2007, which according to the evidence provided by the Complainant, is the time at which the Domain Name was transferred to the current Respondent. This is despite being given an express opportunity to provide such evidence and having been told of likely adverse inferences that might be drawn if it did not do so.
6.29 There is also the undisputed fact that between March 2004 and February 2007 the Domain Name redirected Internet users to the Complainant's website operating from the domain name . There is a dispute between the parties as to whether this was done pursuant to some form of contractual arrangement or otherwise. However, regardless of whose version of events is correct, this shows that at least from March 2004, Mr. Lutoborski was aware of the Complainant's business and using the Domain Name to further that business, rather than any business of his own.
6.30 Further, on Mr. Lutoborski's version of events, he obtained no monies and only agreed to allow this redirection as an “experiment” at the request of a representative of the Complainant. Three years was an extraordinarily long period of time to have run such an “experiment” if Mr. Lutoborski also had an ongoing business that was continuing to use the “eHotel” name and could have profitably used the Domain Name.
6.31 Ultimately, the Panel is of the view that regardless of what may have been the original motivations for the registration of the Domain Name, by March 2004 Mr. Lutoborski had come to the conclusion that the real value to him of the Domain Name lay in taking advantage of its associations not with any business of his own but with the Complainant's business. Further, it seems implausible that Mr. Lutoborski would not have known that the continued use of the Domain Name in connection with the Complainant's business for nearly three years is likely to have strengthened and reinforced that association.
6.32 The Panel, therefore, finds on the balance of probabilities that it was with that primary purpose that the Domain Name was held by the Respondent from March 2004 onwards, and that this was so regardless of whether or not Mr. Lutoborski also continued to operate a small business under the “eHotel” name.
6.33 There is also no evidence before the Panel that the subsequent registration in 2007 was with the consent or connivance of the Complainant. Similarly there is no evidence before the Panel that the Complainant consented to the use being made of the Domain Name at that time. Even if the initial redirection of traffic to the Complainant's website had been (as Mr. Lutoborski alleges) partially at the instigation of the Complainant, that use had come to an end a month before the transfer took place.
6.34 In the circumstances, the Panel finds that the registration of the Domain Name in 2007 was registration in bad faith and the continued holding of the Domain Name thereafter with a view to obtaining such an advantage was, and is, the use of a Domain Name in bad faith.
6.35 In the circumstances, the Panel holds that the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.
6.36 It might be argued that the conclusion in this case is unfair to Mr. Lutoborski or the Respondent. If a respondent has registered a domain name for a legitimate business purpose, and another business comes along that chooses to use the same name, should he not be allowed to take advantage of that fact? The answer to that question depends upon how exactly the domain name is used. If he merely intends to continue to do what he has always legitimately done, then it is difficult to see how that continued use could be characterised as use in bad faith.
6.37 The problem is that the Mr. Lutoborski did not do this. Instead, he effectively abandoned his own prior use and actively sought to associate the Domain Name with the Complainant's business. This combined with the subsequent transfer of the Domain Name proved fatal to his case.
6.38 Finally, it is worth noting that in coming to its conclusion in this case, the Panel has not given any weight to the Complainant's claims that the Respondent's use of the Domain Name involved acts of trade mark infringement. For reasons that are set out in greater detail in Delta Air Transport NV (trading as SN Brussels Airlines) v. Theodule De Souza,WIPO Case No. D2003-0372 and 1066 Housing Association Ltd. v. Mr. D. Morgan,WIPO Case No. D2007-1461, the Panel does not consider this to be of relevance to the question of whether there has been abusive registration under the Policy.
6.39 The Complainant relies on Serta, Inc., supra, as holding otherwise. However, this is simply not correct. There is no mention of infringement in that decision. Even if an infringement analysis did form part of the underlying reasoning in that case (as the references to “nominative fair use” and “US case law” perhaps might suggest) matters have moved on significantly since 2000 when that case was decided. In the opinion of the Panel, the approach adopted in Delta Air Transport NV, supra, is to be preferred. 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.
Matthew S. Harris
Sole Panelist
Dated: August 5, 2009
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