WIPO Domain Name Decision D2009-1505 for mbsconsulting.com

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION MBS Consulting SPA v. mbsconsul inc. / web master Case No. D2009-1505 1. The Parties

The Complainant is MBS Consulting SPA of Milano, Italy.

The Respondent is mbsconsul inc. / web master of Singapore. 2. The Domain Name and Registrar

The disputed domain name is . It is registered with eNom, Inc. (the “Registrar”). 3. Procedural History

According to the information provided by the WIPO Arbitration and Mediation Center (the “Center”), the history of this proceeding is as follows:

- The Complaint was filed with the Center on October 29, 2009.

- On November 9, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name.

- On November 10, 2009, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named respondent and contact information in the Complaint.

- On November 11, 2009, the Center sent an email communication to the Complainant providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.

- The Complainant filed an amended Complaint on November 16, 2009.

- The Center verified that the Complaint together with the amended 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 Rules paragraphs 2(a) and 4(a), on November 17, 2009 the Center formally notified the Respondent of the Complaint, and the proceedings were commenced.

- In accordance with Rules paragraph 5(a), the due date for Response was December 7, 2009. The Respondent did not submit any response.

- On December 8, 2009, the Center formally notified the parties that the Respondent was in default because it has failed to submit a Response, and that the proceeding would continue with a single-member Administrative Panel.

- On December 10, 2009, the Center appointed Bradley Freedman as the sole panelist in this matter. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with Rules paragraph 7.

Based upon the information provided by the Center, the Panel finds that it was properly constituted in accordance with the Rules and the Supplementary Rules, and that all technical requirements for this proceeding have been met. 4. Factual Background

The following information is derived from the Complaint and supporting evidence submitted by the Complainant:

- The Complainant uses the business name “MBS Consulting”.

- The Complainant has used the MBS CONSULTING trademark in advertising for its management and business support services business since December 2003. In particular, since December 2003 the Complainant has used the MBS CONSULTING trademark on its business website, which is accessible using the domain name . The domain name was registered on February 27, 2003. The Complainant's website is available in both English and Italian.

- The Complainant is the owner of the Community Trademark MBS CONSULTING (registration no. 007358179, registration date May 14, 2009) registered for use in association with services regarding management and business assistance and services regarding financial operations (EN classes 35 and 36).

- The Complainant is the owner of the Community Trademark MBS CONSULTING and design (registration no. 007358121, registration date May 14, 2009) registered for use in association with various consulting services and services regarding financial operations (EN classes 35 and 36).

- The disputed domain name was registered on October 13, 2006.

- On both May 12, 2009 and October 20, 2009, the disputed domain name resolved to a single page website that stated, in relevant part, as follows: “This domain is for sale - USD1890 - (This price is strictly non negotiable).”

- The contact information provided by the Respondent in respect of the registration of the disputed domain name is incomplete. In particular, there is no proper postal address or fax number for either the administrative contact or the technical contact for the disputed domain name.

- There is no relationship between the Complainant and the Respondent.

- The Respondent does not appear to use MBS CONSULTING as a trademark or otherwise, except in connection with the disputed domain name.

The Respondent has not filed a Response to the Complaint or answered the Complainant's factual assertions or evidence in any other manner. 5. Parties' Contentions A. Complainant

The Complainant contends as follows:

(i) The Complainant is the owner of the MBS CONSULTING trademark, and the disputed domain name is identical or confusingly similar to the Complainant's MBS CONSULTING trademark.

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name.

(iii) The Respondent registered and is using the disputed domain name in bad faith because the Respondent registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain name. B. Respondent

The Respondent has not filed a Response to the Complaint or answered the Complainant's contentions in any other manner. 6. Discussion and Findings

The Policy is narrow in scope. It applies only to disputes involving alleged bad faith registration and use of domain names – conduct commonly known as “cybersquatting” or “cyberpiracy”. The Policy does not apply to other kinds of disputes between trademark owners and domain name registrants. The narrow scope of the Policy reflects its origin as a novel form of dispute resolution designed to balance a wide range of perspectives regarding the regulation of Internet conduct.

The application of the Policy is limited to situations in which a complainant asserts and proves the following requirements set forth in Policy paragraph 4(a): (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) the registrant has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. The burden is on a complainant to prove all three required elements in order to be entitled to relief under the Policy. It is not sufficient for a complainant to make assertions without providing proof.

i) The Respondent's Default

Rules paragraph 10(a) requires that the Panel ensure that each party is given a fair opportunity to present its case. Rules paragraph 14 reads as follows:

Default

(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.

(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.

The Respondent was given notice of this proceeding in accordance with the Rules. The Center discharged its responsibility under Rules paragraph 2(a) to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint.

The Registrar's Registration Agreement requires the Respondent to keep its contact information (including postal address and email address) current and complete. The Respondent cannot hide behind the provision to the Registrar of incorrect or out-of-date contact information.

In the circumstances, the Panel finds that the Respondent has been given a fair opportunity to answer the Complaint, and the Panel will proceed to a decision.

The Respondent's default does not automatically result in a decision in favor of the Complainant. The Complainant must still prove each of the three elements required by Policy paragraph 4(a). Rules paragraph 15(a) provides that the Panel shall decide the 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 Rules paragraph 14(b), the Panel may draw such inferences as are appropriate from the Respondent's failure to reply to the Complainant's assertions and evidence or to otherwise contest the Complaint. In the circumstances, the Panel's decision is based upon the Complainant's assertions and evidence and inferences drawn from the Respondent's failure to reply, as set forth in this decision.

(ii) Identical or Confusingly Similar

The Complainant is the owner of the Community Trademark MBS CONSULTING registered for use in association with various services, including consulting services, and uses that mark in association with the advertising of its business, including through a website using the domain name . The Complainant asserts that it has used the MBS CONSULTING trademark to advertise its business since December 2003. The Complainant's assertions in this regard are supported by documentary evidence. The Respondent has not contested the Complainant's assertions. In the circumstances, the Panel finds that the Complainant has rights in the trademark MBS CONSULTING.

The Complainant's MBS CONSULTING trademark was registered after the Respondent registered the disputed domain name on October 13, 2006. However, the Policy does not require that a complainant's trademark rights be based upon a registered trademark, or that the complainant's trademark be registered before the domain name. The fact that a disputed domain name predates a complainant's trademark registration may be relevant to the assessment of bad faith pursuant to Policy paragraph 4(a)(iii), which is considered below. See Uniroyal Engineered Products, Inc. v. Nauga Network Services,WIPO Case No. D2000-0503 (July 18, 2000); AB Svenska Spel v. Andrey Zacharov,WIPO Case No. D2003-0527 (October 2, 2003); Madrid 2012, S.A. v. Scott Martin-MadridMan Websites,WIPO Case No. D2003-0598 (October 8, 2003); Australian Trade Commission v. Matthew Reader,WIPO Case No. D2002-0786 (November 12, 2002); and Imperial College v. Christophe Dessimoz,WIPO Case No. D2004-0322 (June 30, 2004).

In addition, and aside from the Complainant's trademark registrations, the Complainant has used the MBS CONSULTING trademark since December 2003, almost three years before the Respondent registered the disputed domain name. The Complainant also has used the business name “MBS Consulting”. The Complainant's long-term use of the MBS Consulting business name and the MBS CONSULTING trademark are sufficient to establish that the MBS CONSULTING trademark has become a distinctive identifier of the Complainant and its services.

The Policy requires that the disputed domain name be “identical or confusingly similar” to the MBS CONSULTING trademark. Neither the Policy nor the Rules provide any guidance with respect to the test to be applied regarding the confusing similarity requirement of the Policy. Nevertheless, the consensus reflected in the decisions is that the appropriate test for confusing similarity is a literal comparison of the disputed domain name and the complainant's trademark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, section 1.1.

The literal comparison approach is supported by a number of considerations, which have been discussed in various decisions. See: Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698 (January 25, 2001); Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Ms. Patricia Chung, WIPO Case No. D2004-0490 (August 27, 2004); Pancil, LLC v. Wan-Fu China, Ltd., WIPO Case No. D2007-0492 (May 31, 2007) Highlights for Children, Inc. v. Services LLC,WIPO Case No. D2007-0337 (May 28, 2007); and Scania CV AB (Publ) v. ScaniaF,WIPO Case No. D2008-0113 (March 14, 2008).

For those reasons, the Panel considers the appropriate test for confusing similarity to be a literal comparison of the disputed domain name and the Complainant's trademark.

The “.com” suffix is irrelevant for the purpose of determining whether a challenged domain name is identical or confusingly similar to a trademark. Rather, one looks to the second level domain for such a determination, since the “.com” suffix is merely descriptive of the registry services. Similarly, the omission of spaces between components of a trademark, or the omission of design elements used in a domain name (which is a function of the technological limitations of the Internet domain name system), should be disregarded when determining whether the domain name is identical or confusingly similar to the trademark. See The Toronto-Dominion Bank v. Boris Karpachev, WIPO Case No. D2000-1571 (January 15, 2001); Ticketmaster Corporation v. Harold R. Brown, II, Harold R. Brown III, and Ted Waitt, WIPO Case No. D2001-0716 (July 18, 2001); The Chancellor, Masers and Scholars of the University of Oxford v. DR Seagle t/a Mr. Oxford-University, WIPO Case No. D2001-0746 (August 14, 2001); Pancil, LLC v. Wan-Fu China, Ltd.,WIPO Case No. D2007-0492 (May 31, 2007); Highlights for Children, Inc. v. Services LLC,WIPO Case No. D2007-0337 (May 28, 2007); and Scania CV AB (Publ) v. ScaniaF,WIPO Case No. D2008-0113 (March 14, 2008).

The disputed domain name and the Complainant's MBS CONSULTING trademark are visually and phonetically identical. The only difference between the Complainant's MBS CONSULTING trademark and the disputed domain name is the “.com” suffix, which is irrelevant for these purposes.

For those reasons, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant's MBS CONSULTING trademark. Accordingly, the Panel finds that the Complainant has satisfied the first element required by the Policy.

(iii) Rights and Legitimate Interests

The second element required by Policy paragraph 4(a) – the registrant has no rights or legitimate interest in the domain name – requires a complainant to prove a negative proposition, which can be particularly difficult. The consensus reflected in the decisions is that the burden of proof on a complainant regarding this element is necessarily light, because the nature of the registrant's rights or legitimate interests, if any, in a domain name lies most directly within the registrant's knowledge. As a practical matter, once a complainant makes a prima facie showing that a registrant does not have rights or legitimate interests in a domain name, the evidentiary burden shifts to the registrant to rebut the showing by providing evidence of its rights or interests in the domain name. See Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110 (April 14, 2004); Group Kaitu, LLC , Darkside Productions, Inc. v. Group Kaitu LLC aka Manila Industries, Inc.,WIPO Case No. D2005-1087 (January 20, 2006); and Alfa Laval AB, Laval Corporate AB v. Caribbean Online International Ltd.(ALFALAVALL-COM-DOM),WIPO Case No. D2007-1893 (February 27, 2008).

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because the disputed domain name is not used for an active website and is offered for sale for a price in excess of the actual costs of registration.

Except for the assertions in the signed and certified Complaint, the Complainant has not provided any evidence of trademark searches or other investigations to indicate that the Respondent does not have any interest in any marks that include the term “mbs consulting” and is not commonly known as “mbs consulting”. In some circumstances, the omission of such evidence would be fatal to a complaint under the Policy. Nevertheless, in the circumstances of this dispute, the signed and certified Complaint together with an adverse inference from the Respondent's failure to reply to the Complaint or provide any justification for its registration and use of the disputed domain name, are sufficient to satisfy the Complainant's evidentiary burden.

Even though the Respondent has not filed a Response to the Complaint and has not contested the Complainant's assertions, it is incumbent upon the Panel to consider whether the Respondent's use of the disputed domain name demonstrates rights or legitimate interests in the domain name. According to Policy paragraph 4(c), the following circumstances, if proved, demonstrate a registrant's rights or legitimate interests in a domain name:

(i) the registrant used or demonstrably prepared to use the domain name or a corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute;

(ii) the registrant (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or

(iii) the registrant is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainant's mark.

Policy paragraph 4(c)(i) is not applicable. The Respondent is not using the disputed domain name for a website that offers any goods or services.

Policy paragraph 4(c)(ii) is not applicable. The Respondent does not contend, and there is no evidence that, the Respondent has been commonly known by the disputed domain name or that the disputed domain name is derived from one of Respondent's trademarks or trade names.

Policy paragraph 4(c)(iii) is not applicable.

For those reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

(iv) Registered and Used in Bad Faith

Policy paragraph 4(a)(iii) requires the Complainant to prove that the Respondent registered and has used the disputed domain name in bad faith. The language of Policy paragraph 4(b)(iii) is conjunctive and requires that both bad faith registration and bad faith use be proved.

“Bad faith” within the meaning of the Policy is a term of art, and is not intended to apply to distasteful conduct that might constitute bad faith in the ordinary sense of the term. Policy paragraph 4(b) provides that each the following circumstances are deemed evidence that a registrant has registered and used a domain name in bad faith:

(i) circumstances indicating that the registrant has registered or has 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 the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or

(ii) the registrant has 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 the registrant has engaged in a pattern of such conduct; or

(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to its website 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 its website or location or of a product or service on its website or location.

The Policy expressly states that those circumstances are non-exclusive.

In order to establish that a registrant registered and is using the disputed domain name in bad faith, a complainant need only establish one of the four non-exhaustive criteria set forth in Policy paragraph 4(b).

Policy paragraph 4(b)(i) applies if the Complainant establishes that the Respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name. There is no direct evidence that the Respondent knew of the Complainant or its MBS CONSULTING trademark, or registered the disputed domain name for the purpose of selling it for a profit. Nevertheless, the Respondent's knowledge and intention may be determined by common sense inferences from circumstantial evidence.

The Panel notes the following circumstances: (a) the Complainant's MBS CONSULTING trademark is specific to the Complainant in connection with its consulting services business; (b) the disputed domain name was registered almost three years after the Complainant began using its MBS CONSULTING trademark on the Internet and otherwise; (c) the Respondent used the disputed domain name for a single page website that stated, in relevant part, as follows: “This domain is for sale - USD1890 - (This price is strictly non negotiable)”; and (d) there is no apparent connection or relationship between the disputed domain name and the Respondent or its business or any other justification for the Respondent's registration and use of the disputed domain name.

The fact that the disputed domain name was registered before the Complainant registered its MBS CONSULTING trademark does not assist the Respondent, because the Complainant was using its MBS CONSULTING trademark on the Internet and otherwise for almost three years before the domain name was registered.

The fact that the Respondent's offer to sell the disputed domain name is posted on a website and is not directed specifically to the Complainant or its competitors does not assist the Respondent, because the disputed domain name is identical to the Complainant's MBS CONSULTING trademark and there is no evidence that the disputed domain name would be of interest to anyone other than the Complainant or its competitors.

In addition, the Panel draws an adverse inference from the Respondent's failure to provide any explanation or rationale for its registration and use of the disputed domain name

In the circumstances, the Panel finds that the Respondent knew of the Complainant's MBS CONSULTING trademark, and registered and is using the disputed domain name in bad faith primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the domain name.

Accordingly, the Panel finds, pursuant to Policy paragraph 4(b)(i), that the Respondent registered and is using the disputed domain name in bad faith. In the circumstances, the Panel need not consider whether there are other grounds for finding that the Respondent registered and is using the disputed domain name in bad faith. 7. Decision

The Complainant has established each of the three requirements set forth in Policy paragraph 4(a) – the disputed domain name is confusingly similar to the Complainant's MBS CONSULTING trademark, the Respondent does not have any rights or legitimate interests in the disputed domain name, and the Respondent registered and is using the disputed domain name in bad faith.

The Panel therefore orders that the disputed domain name be transferred to the Complainant.

Bradley Freedman
Sole Panelist

Dated: December 23, 2009

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