WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Channel21 GmbH v. Whois Protected, VCN - Whois Protection Case No. D2009-1787 1. The Parties
Complainant is Channel21 GmbH, of Hannover, Germany, represented by Kalra Krieger, Germany.
Respondent is Whois Protected, VCN - Whois Protection, of Panama City, Panama. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Key-Systems GmbH dba . 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on December 23, 2009. On December 28, 2009, the Center transmitted by email to Key-Systems GmbH dba a request for registrar verification in connection with the Domain Name. On December 30, 2009, Key-Systems GmbH dba . transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 18, 2010. The Center verified that the Complaint together with 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 20, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 9, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on February 10, 2010.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on February 19, 2010. 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
Complainant, Channel21 GmbH, has been operating from at least May 2006 in the field of teleshopping for the German-speaking marketplace and also operates an online shop using the domain name for its website.
Complainant is the owner of the German trademark CHANNEL21.
Respondent registered the Domain Name on January 10, 2009 and uses it to operate a website in the German- language offering pornographic content. 5. Parties' Contentions A. Complainant
Complainant contends that the Domain Name is identical or confusingly similar to a trademark or service mark in which it has rights. In particular, the Domain Name is identical to Complainant's trademark. Complainant states that Respondent is using the this identical Domain Name for a website operated in the same language and in relation to the same class of goods (under the Nice Classifications) as Complainant.
Complainant argues that Respondent has no rights or legitimate interests in respect of the Domain Name. Because the content of Respondent's website is pornographic, there is no room to suggest that Respondent has any rights or legitimate interests with respect to the Domain Name.
Finally, Complainant urges that the Domain Name was registered and is being used in bad faith. In particular, Complainant is well-known in Germany and was part of the RTL Media Group operating worldwide. By using the Domain Name, Respondent is 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 Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's web site or location or of a product or service on Respondent's web site or location. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and 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 Complainant must prove each of the following:
(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and,
(iii) that the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant has provided evidence of ownership of a number of trademark registrations for the mark CHANNEL21 having effect in Germany, such as CHANNEL21, German registration No. 302008075312, filed on November 28, 2008, and granted as a Word mark on February 26, 2009, and the Community trademark CHANNEL21, CTM No. 008128282, filed on February 27, 2009 and granted registration on January 21, 2010. Complainant's trademark registrations specify a number of Nice Classifications including Nos. 38 and 41, providing coverage for access to information on goods and services via the Internet; providing access to ring tones, music, speech, MP3 files, game files, images, animations, films, video sequences, information and messages via telecommunications networks, in particular for downloading from the Internet; and online entertainment program and videos.
If the complainant owns a registered trademark then it satisfies the threshold requirement of having trademark rights. The Domain Name comprises Complainant's trademark and the generic domain name suffix “.biz”. The suffix may be ignored for the purpose of considering identity or confusing similarity. The Panel finds that, clearly the Domain Name is identical to Complainant's mark.
In view of the above, the Panel finds that Complainant has proved that the Domain Name is identical to the trademark of Complainant according to paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
While the overall burden of proof is on Complainant, the element of possible rights or legitimate interests of Respondent in the Domain Name involves Complainant proving matters that are peculiarly within the knowledge of Respondent. It involves Complainant in the often difficult task of proving the negative, particularly where, as here, Respondent has failed to submit any response. This should, as indicated correctly in Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110, be approached as follows: Complainant makes the allegation and puts forward support. Then Respondent, in response, has to demonstrate its rights or legitimate interests in respect of the Domain Name under paragraph 4(c) of the Policy.
Here, Respondent has failed to submit any response and therefore has not provided any evidence or circumstances of the type specified in paragraph 4(c) of the Policy giving rise to a right to or legitimate interest in the Domain Name. Complainant has not licensed or otherwise permitted Respondent to use its trademarks. The Panel is therefore in no doubt that Complainant has established a prima facie case. The Domain Name is not the name of Respondent. Self-evidently it is identical to Complainant's marks and Complainant is well-known in the on-line community within Germany, where Respondent targets its pornographic website. Inevitably, one asks oneself why Respondent registered somebody else's trademark as a domain name. In this case it seems probable that Respondent registered the Domain Name with a view to attracting visitors to its website and presumably for commercial gain.
Clearly, Respondent has a case to answer, but Respondent has not submitted a Response. Moreover, the Panel can think of no reason why Respondent might justifiably be said to have rights or legitimate interests in respect of the Domain Name. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, 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 the Domain Name in bad faith:
(i) circumstances indicating that the holder 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 that Complainant, for valuable consideration in excess of the holder's documented out-of-pocket costs directly related to the domain name; or
(ii) the holder 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 holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder's web site or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on the holder's website or location.
In view of all the circumstances of this case, the Panel believes it likely on the balance of probabilities that the Respondent registered the Domain Name, as Complainant asserts, with a view to using it to attract Internet users for commercial gain by creating a likelihood of confusion with Complainant's trademarks as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on the holder's website or location.
The Panel finds that the Domain Name is not a sign that traders would legitimately choose unless seeking to create an impression of association with Complainant. Ciba Specialty Chemicals Holding, Inc. v. G,WIPO Case No. D2003-0717. Moreover, Complainant has been operating in Germany from 2006 and was well-known prior to the time Respondent registered the Domain Name that is identical to Complainant's trademarks. Respondent's website targets German-language Internet users, which is the same on-line area where Complainant is well-established. In light of the choice of a domain name which is identical to the Complainant's mark and the likelihood that Respondent registered the Domain Name to attract Internet users to its pornographic website for commercial gain, the Panel concludes that Respondent was likely aware of the existence of the trademarks of Complainant. The Panel also observes that Respondent has failed to respond to the Complaint or to deny any of its allegations and has therefore not provided any evidence of nor alleged any actual or contemplated good faith use of the Domain Name. The Panel thus concludes that Respondent has no answer to Complainant's allegations.
Accordingly, the Panel finds that the Domain Name was registered in bad faith and is being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(iv) 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 Name, , be transferred to Complainant.
Christopher S. Gibson
Sole Panelist
Dated: March 18, 2010
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