WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION MULTIVAC Sepp Haggenmüller GmbH & Co. KG v. Domains by Proxy Inc. / Pro-Pac Services, Inc. Case No. D2009-1488 1. The Parties
The Complainant is MULTIVAC Sepp Haggenmüller GmbH & Co. KG of Wolfertschwenden, Germany, represented by Husch Blackwell Sanders LLP, United States of America.
The Respondent is Domains by Proxy Inc. / Pro-Pac Services, Inc. of Ringwood, New Jersey, United States of America and Scottsdale, Arizona, United States. 2. The Domain Names and Registrar
The disputed domain names and
(the “Domain Names”) are registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 2, 2009. On November 3, 2009, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain names. On November 3, 2009, GoD, Inc. 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 November 9, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 29, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 30, 2009.
The Center appointed David Taylor as the sole panelist in this matter on December 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 factual background is taken from the submissions contained in the Complaint and the Exhibits annexed thereto given that no Response was filed.
The Complainant submits that, together with its subsidiaries and affiliated companies, it is the industry leader in the field of packaging machinery and it sells packaging equipment under the trade mark MULTIVAC around the world.
The Complainant owns several registered trade marks in the term MULTIVAC, including for instance the following:
- United States Trade Mark MULTIVAC, registration number 1166134, registered on August 25, 1981, in international class 7;
- Community Trade Mark MULTIVAC, registration number 000753392, registered on September 29, 1999, in international classes 6, 7 and 9;
- Canadian Trade Mark MULTIVAC, registration number TMA179350, registered on November 5, 1971.
The Respondent registered the Domain Names on January 12, 2008. The Domain Name points to a website containing sponsored links, including links to websites of other packaging equipment companies, in competition with the Complainant. The Domain Name resolves to a website containing sponsored links to websites relating to the automobile industry. 5. Parties' Contentions A. Complainant
Firstly, the Complainant contends that the registrant of the Domain Names is Pro-Pac Services, Inc. The company Pro-Pac Services was the first holder of the Domain Names and, even though the WhoIs information became anonymous, Pro-Pac Services never denied being the Domain Names' holder after the anonymisation of the WhoIs data, according to the Complainant.
(i) The Complainant contends that the Domain Names are confusingly similar to the Complainant's trade mark.
The Complainant asserts that considering the significant goodwill associated with the MULTIVAC trade mark, consumers are likely to believe that any domain name which incorporates the MULTIVAC trade mark or a confusingly similar term is associated with the Complainant. The Complainant points out that the Domain Names are likely to confuse Internet users into mistakenly believing that the Domain Names and websites referenced are associated with the Complainant.
The Complainant underlines that the Domain Names incorporate the trade mark MULTIVAC in its entirety, the only distinction being the inclusion of the generic terms “machines” and “parts” in the respective Domain Names. The Complainant considers that these additions do not distinguish the Domain Names from the Complainant's trade mark and do nothing to change the overall impression of the respective Domain Names being related to the Complainant's trade mark.
The Complainant further states that allowing the Respondent to continue holding the Domain Names would be detrimental to the Complainant as such use will infringe the Complainant's trade mark, create a widespread confusion of customers and cause irreparable damage to the Complainant's business and goodwill.
(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Names.
The Complainant submits that the Respondent has no rights to the term MULTIVAC and is not commonly known by the Domain Names.
In addition, according to the Complainant, the Respondent has no legitimate claim to any trade mark or service mark rights in the Domain Names. To support this view, the Complainant explains that the Respondent markets itself and is known by the name Pro-Pac Services and the Respondent does not utilize the Domain Names in connection with its corporate website.
The Complainant asserts that the websites associated with the respective Domain Names contain no bona fide use of the term MULTIVAC or the “multivacmachines” or “multivacparts” phrases.
In the Complainant's view, the Respondent is acting with the intent to misleadingly divert consumers or others looking for the Complainant for the Respondent's own commercial gain. As a result, the Complainant believes that the Respondent is not making a legitimate use of either of the Domain Names.
Considering the content of the respective websites, the Complainant contends that the Respondent does not make a bona fide use of either of the Domain Names.
Finally, the Complainant asserts that the Respondent is not making a legitimate non-commercial or fair use of the Complainant's trade mark.
(iii) The Domain Names were registered and are being used in bad faith.
The Complainant claims that the Respondent is using the Domain Names for commercial gain in order to misleadingly divert the consumers to its website, disrupt the Complainant's business and tarnish its image.
The Complainant states that the Domain Names do not have a connection to a bona fide offering of goods or services by the Respondent.
The Complainant claims that the Respondent had advance knowledge of the Complainant's rights in the term MULTIVAC prior to the registration of the Domain Names.
The Complainant asserts that the Respondent is using the Domain Names to re-direct Internet users to third parties' websites including websites of packaging equipment companies. For the Complainant, this is evidence of the Respondent's bad faith.
Furthermore, the Complainant contends that even if the Respondent was not actively utilizing the Domain Names to redirect Internet users, the Respondent fails to make any legitimate use of the Domain Names. The Complainant's contention that the Respondent had advance knowledge of the Complainant's trade mark rights in the term MULTIVAC is further evidenced by the allegation that the Respondent is competing with the Complainant with respect to servicing of and replacement parts for the Complainant's machines and is a further proof of the Respondent's bad faith in registering and using the Domain Names.
For all the foregoing reasons, the Complainant requests that the Domain Names be transferred to it. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 15 of the Rules states that the Panel shall decide a Complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In accordance with paragraph 10 of the Rules, the Panel shall ensure that the Parties are treated with equality and shall determine the admissibility, relevance, materiality and weight of the evidence.
In the case of default by a party, Rule 14 states that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom at it considers appropriate.
In this case the Respondent has not submitted any Response and consequently has not contested any of the contentions made by the Complainant. The Panel is therefore obliged to make its decision on the basis of the factual statements contained in the Complaint and the documents made available by the Complainant to support its contentions.
If the Complainant is to succeed, it must prove each of the three elements referred to in paragraph 4(a) of the Policy, namely that:
(i) the Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
The Panel will proceed to establish whether the Complainant has discharged the burden of proof in respect of each of the three elements referred to in paragraph 4(a) of the Policy.
As a preliminary point and in view of the elements put forward by the Complainant, the Panel agrees that it is more likely than not that the Domain Names' holder, and therefore the Respondent, is Pro-Pac Services, Inc.
Taking each of these issues in turn, the Panel decides as follows: A. Identical or Confusingly Similar
The first element that needs to be established is whether the Complainant has rights in the term MULTIVAC.
The Complainant submits evidence that it has rights in the term MULTIVAC. The Complainant states that it owns many registered trade marks in the term MULTIVAC worldwide, including in the United States and in the European Union. Based on the evidence produced by the Complainant, the Panel is satisfied that the Complainant has rights in the term MULTIVAC.
The second element which the Complainant needs to substantiate is whether the respective Domain Names are identical or confusingly similar to the term MULTIVAC in which the Complainant has rights.
Both Domain Names reproduce the exact Complainant's trade mark in the term MULTIVAC with the mere addition of the generic words “machines” and “parts” and the gTLD “.com”. The Panel finds that the dominant element of the respective Domain Names is the word “Multivac” which is identical to the Complainant's trade mark. The additional words “machines” and “parts” forming part of the Domain Names are generic. Indeed, the use of generic terms that are integral to the packaging equipment business reinforces the risk of confusion in the mind of the reasonable Internet user, who could believe that the Domain Names are associated with the Complainant.
In addition, the Panel finds that the addition of the generic words “machines” and “parts” do not change the overall impression that the Domain Names are connected with the Complainant (see PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS),WIPO Case No. D2003-0696).
With regard to the addition of the gTLD “.com”, it is widely accepted that it is irrelevant in considering the issue of confusing similarity between a trade mark and a domain name.
The Panel therefore finds that the Complainant satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Domain Names, in accordance with paragraph 4(a)(ii) of the Policy.
The Policy (paragraph 4(c)) sets out various ways in which a Respondent may demonstrate rights or legitimate interests in the domain name, as follows:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Panel has considered the evidence put forward by the Complainant and considers that the Complainant has presented a clear prima facie showing of the Respondent's lack of rights or legitimate interest in the respective Domain Names.
The Panel considers that it is generally the case that failure to file a response is an element which can suggest (but which is by no means is conclusive) that the Respondent lacks rights or legitimate interests in the Domain Names.
The Respondent submits no evidence to suggest that the Complainant had authorized the Respondent to make any use of the term MULTIVAC. Moreover, the Respondent itself acknowledges on Pro-Pac Service's corporate website that it is not affiliated with the Complainant. The Panel is of the view that these elements support the fact that the Respondent has no rights or legitimate interests in the Domain Names.
No evidence was presented to suggest that the Respondent has ever been commonly known by either of the Domain Names or that the Respondent had made, prior to their registration, any use or preparation to use the Domain Names in connection with a bona fide offering of goods or services.
The Panel is of the view that directing Internet users to a website containing various links to third party commercial websites (including websites of competitors in the case of ), using Domain Names which are confusingly similar to the Complainant's trade mark, cannot be considered as a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy referred to above (see Mpire Corporation v. Michael Frey,WIPO Case No. D2009-0258).
The Panel is of the view that the Respondent is acting with the intent to divert the consumers for its own commercial gain which cannot be considered as a bona fide offering of goods or services.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the Domain Name and therefore satisfies the requirement of paragraph 4(a)(ii). C. Registered and Used in Bad Faith
The Complainant must prove that both Domain Names have been registered and are being used in bad faith in the sense of paragraph 4(a)(iii) of the Policy.
Paragraph 4(b) of the Policy sets out various circumstances which may be treated by the Panel as evidence of the registration and use of a domain name in bad faith, as follows:
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you 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.”
It is the Panel's view that the Respondent knew of the Complainant and the Complainant's rights in the term MULTIVAC at the time of registration of the Domain Names. Firstly, the Respondent carries out its activities in the same industry as the Complainant, specialising in rebuilding machines manufactured by the Complainant. Secondly, on its corporate website, the Respondent acknowledges, through a disclaimer, that the trade mark MULTIVAC belongs to the Complainant and that the Respondent is not affiliated with the Complainant. These two factors clearly show that the Respondent was well aware, at the time of registration, of the existence of the trade mark MULTIVAC and has registered the Domain Names in bad faith.
As far as the Domain Name is concerned, the bad faith of the Respondent is further evidenced by the fact that some of the links contained on the website relate to competitors of the Complainant and target the goods and services of the Complainant.
The Panel is of the view that the Respondent knew of the Complainant and its services and trade marks in the term “Multivac” and only registered the Domain Names to benefit from the goodwill or reputation of the term “Multivac” by generating advertising revenue.
In view of this, the Panel is satisfied that the Respondent registered both Domain Names in bad faith.
As for use of the Domain Names in bad faith, the Panel considers that the Domain Names are being used to attract consumers and make a commercial gain by providing sponsored links to third-party commercial websites. In order to do this, the Respondent takes unfair advantage of the goodwill and the likelihood of confusion with the Complainant's trade mark and legitimate business, in a way that could be detrimental to the Complainant.
The Panel believes that the use made of the Domain Names is likely to lead to initial interest confusion (see L'Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623, “However, even where internet users realize when they view the Respondent's web page that it is not connected with the owner of the mark, the Respondent is liable to profit from their initial confusion, since they may still be tempted to click on the sponsored links”), which is a further suggestion of the Respondent's bad faith.
Furthermore, the Panel considers that the refusal to transfer the Domain Names upon requests by the Complainant and the subsequent use of a domain privacy service are additional indications of the Respondent's bad faith. The Panel believes that the Respondent used a domain privacy service with a view to evading the enforcement of the Complainant's rights, which constitutes a further bad faith conduct. It is a shame that this case is yet another example of a bad actor making use of domain name privacy services, which have legitimate and useful purposes, to seek to hide its identity and cover up its tracks.
Finally, the Respondent's failure to rebut any of the Complainant's arguments is a further element showing the Respondent's bad faith.
As a result, the Panel finds that the Respondent registered and is using the Domain Names in bad faith pursuant to paragraph 4(a) of the Policy. 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 names and be transferred to the Complainant.
David Taylor
Sole Panelist
Dated: December 24, 2009
Full & Egal Universal Law Academy