WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Springrealm Ltd t/a Peter Werth v. Domain Admin Case No. D2009-0969 1. The Parties
The Complainant is Springrealm Ltd t/a Peter Werth of Enfield, United Kingdom of Great Britain and Northern Ireland, represented by fJ Cleveland, United Kingdom.
The Respondent is Domain Admin of Tuvalu. 2. The Domain Name and Registrar
The disputed domain name is registered with Dynadot, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2009. On July 17, 2009, the Center transmitted by email to Dynadot, LLC a request for registrar verification in connection with the disputed domain name. On July 17, 2009, Dynadot, LLC 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 July 21, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 10, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 11, 2009.
The Center appointed Knud Wallberg as the sole panelist in this matter on August 14, 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 trade mark registrations for PETER WERTH registered in several jurisdictions around the world. The official records for the registrations were attached to the Complaint.
The Complainant, or its predecessor in-title, has used its trade mark PETER WERTH since at least 1975 in the United Kingdom in respect of clothing and other fashion accessories.
The Complainant's current use of its trade mark on the Internet can be seen on its website under the domain name . Print outs from this website was attached to the Complaint. 5. Parties' Contentions A. Complainant A.1
The domain name is identical to the trade mark in which the Complainant has rights. A.2
It is submitted that the Respondent has no rights or legitimate interests in respect of the domain name that is the subject of the Complaint.
The Respondent has parked the disputed domain name and there is no 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.
It is submitted that the Respondent is not commonly known by the name Peter Werth.
The Complainant has never issued any express or implied licence or consent to the Respondent for use of its trade mark PETER WERTH. The Complainant's representatives wrote to the Respondent in June 2009 with a reminder in July 2009 setting out the Complainant's earlier trade mark rights, but no response to those communications have been received. A.3
The domain name was registered primarily for the purpose of disrupting the business of a competitor. The Respondent is thus intentionally attempting to attract for commercial gain, Internet users to the Respondent's 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 the Respondent's web site or location. Specifically, the Respondent is attracting Internet traffic to its site from customers of the Complainant who would naturally search for the Complainant on the Internet under the domain name when seeking branded PETER WERTH goods. Customers of the Complainant when reaching the Respondent's website are then diverted to the other related websites (some of which are competitors of the Complainant) which thereby diverts business from the Complainant. In addition, the Respondent is presumably obtaining “click through” fees from the sponsored links on its website-fees obtained by consumers mistakenly visiting its site but then being directed elsewhere. WIPO UDRP panels have held in previous cases that such use of a domain name by a respondent amounts to bad faith under the Policy.
Furthermore, panels have on previous cases, accepted bad faith by the respondents including “Domain Admin c/o Dynadot Privacy”. The Complainant request that the Panel draw the inference that the current Respondent is related to these previous respondents and that the findings of bad faith registration made against “Domain Admin c/o Dynadot Privacy” should also be made against “Domain Admin” particularly in view of the fact that this point was drawn to the Respondent's attention in the Complainant's initial letter of Complaint to the Respondent.
It is also submitted that the WHOIS details for the Respondent's address etc. are a factor supporting a bad faith finding. The phone number noted is unobtainable and the message “No valid address domain pending transfer” - it is submitted - is likely simply to be a method to avoid legitimate communications from a complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, 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 there from as it considers appropriate. A. Identical or Confusingly Similar
The Complainant has held registered trade marks rights to PETER WERTH since 1996 and has used the mark for several years before that.
The disputed domain name was first registered on August 6, 2001. It is not clear to the Panel, whether the Respondent was the original Registrant of the Domain name, but since this issue is not decisive in relation to the present dispute, the Panel will not pursue this matter further.
The disputed domain name contains the Complainant's distinctive trademark PETER WERTH in its entirety, with the addition of the “.com” designation. For the purpose of these proceedings the domain name is found to be identical to the Complainant's trademark.
The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled. B. Rights or Legitimate Interests
According to the Complaint the Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for any domain name incorporating the mark.
The Panel is satisfied that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the domain name. The Respondent has not rebutted this by way of a formal Response or otherwise. Both the wording in the Complainant's mark and the disputed domain name can be conceived as consisting of two personal names. Nevertheless, the words in the Complainant's mark is a unique combination of two different personal names and the Respondent's domain name was registered several years after the Complainant registered and started using its trade mark, and the Respondent is using the disputed domain name, namely for a website that contains only links to other websites – among others links to websites that offers sale of clothing and fashion. The Respondent thus could not credibly claim that the domain name is intended to be used for any legitimate interests and such a claim would in any event also be contrary to the way the Respondent has been using and is still using the disputed domain name, namely for a website that contains only links to other sites. The Panel further refers to its below findings in relation to the actual use made of the domain name.
Consequently the Panel finds that the conditions in paragraph 4(a)(ii), cf. 4(c) of the Policy are also fulfilled. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy further provides that the Complainant must prove the Respondent's registration and use of the domain name in bad faith. Paragraph 4(b) of the Policy sets out, by way of example, the kind of evidence that may be put forward.
Given the extent of use of the Complainant's trademark and the distinctive nature of the mark in relation to clothing and fashion accessories, it is inconceivable to the Panel in the current circumstances that the Respondent registered the domain name without prior knowledge of the Complainant and the Complainant's mark.
This is underlined by the fact that the disputed domain name, at the time of the filing of the Complaint was used for a website that contained links to other websites including links related to clothing and fashion. The Panel therefore finds that the Respondent by its registration and its use of the domain name, intentionally created a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the domain name in dispute with the purpose of attracting Internet users to the website for commercial gain. The fact that the wording of the webpage “www.” as well as of the contained links have changed somewhat after the filing of the Complaint, does not alter this assessment.
Furthermore, the Respondent appears to have given incorrect or perhaps even false contact details in breach of the registration agreement, which constitutes evidence of registration in bad faith, see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and several subsequent decisions.
The Panel is not in the position to, and does not find it necessary to decide whether the current Respondent is identical to a respondent with an almost identical name and which has been subject of previous decisions under the UDRP as mentioned in the Complaint.
Considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case. 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.
Knud Wallberg
Sole Panelist
Dated: August 24 2009
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