WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Günter Krauter v. BusinessService Ltd, WebDesignService Ltd., Domain Admin Case No. D2010-0048 1. The Parties
The Complainant is Günter Krauter of Rudersberg, Germany, represented by Harmsen.Utescher, Germany.
The Respondents are BusinessService Ltd (First Respondent) and WebDesignService Ltd. Domain Admin (Second Respondent) of St. Petersburg, Russian Federation; appearing pro se. 2. The Domain Name and Registrar
The disputed domain name is registered with DomReg Ltd. d/b/a LIBRIS.com. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 12, 2010. On January 13, 2010, the Center transmitted by email to DomReg Ltd. d/b/a LIBRIS.com. a request for registrar verification in connection with the disputed domain name. On January 20, 2010, DomReg Ltd. d/b/a LIBRIS.com transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named (First) Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 21, 2010 providing the registrant and contact information given by the Registrar, and requesting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on January 22, 2010. The Center verified that the Complaint together with the amendment to 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 Respondents of the Complaint, and the proceedings commenced on January 28, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 17, 2010. A separate Response was filed with the Center by both Respondent entities on February 17, 2010.
The Center appointed Ladislav Jakl as the sole panelist in this matter on March 5, 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.
On January 21, 2010, the Center transmitted by email to the parties a communication regarding the language of proceedings in both Russian and English. On January 22, 2010, the Complainant submitted a request that English be the language of proceedings and argued that the Respondents displayed an excellent command of English. The Respondents did not comment on the language of proceedings by the due date. The Panel grants this request, taking into account the circumstances of this case and a number of recent UDRP proceedings and the reasons cited therein (BrandStrategy, Inc. v. BusinessService Ltd.,WIPO Case No. D2007-0749; Laboratoire Biosthétique Kosmetik GmbH & Co. KG and MCE S.A.S. v. BusinessService Ltd.,WIPO Case No. D2007-1836). 4. Factual Background
The Complainant and the Respondents asserted, and provided evidence in support of, and the Panel finds established, the following facts.
The Complainant is the owner of the trademark SPEQ, of German trademark registration No. 301 66 454 for SPEQ with priority of November 16, 2001. The term of protection of this German trademark is from the date on which the application was filed. Moreover the Complainant is the owner of the community trademark registration No. 7 509 243 for SPEQ. Respective excerpts from the trademark registers were attached to the Complaint.
The Complainant is the owner and managing director of SPEQ GmbH which is the exclusive licensee of the Complainant and which was registered in the commercial register on April 7, 1993. Respective excerpt from the commercial register was attached to the Complaint.
The Complainant further introduces that the above mentioned trademarks and trade name SPEQ are extensively used for sporting articles, such as bike helmets and gloves, ski helmets and glasses, motor bicycle helmets, clothing, gloves, sun glasses, swimming glasses, inline skater helmets, protectors and related products since January 1993. A product catalogue, samples of product packagings and an owner's manual were attached to the Complaint.
The Second Respondent in his submitted Response to the Complaint introduces that it purchased the disputed domain name on December 2, 2009, for the price which does not exceed normal out-of-pocket expenses that could have been incurred by the seller BusinessService Ltd, the First Respondent. The disputed domain name was initially registered on November 21, 2001. On December 28, 2009 the Second Respondent received a letter from previous holder of the disputed domain name (the First Respondent) demanding to change the WhoIs information to reflect the correct identity of the current registrant and stating that the new registrant does not fully accomplish the obligations set forth in the Domain Name rights transfer agreement, executed on December 2, 2009. The First Respondent asked the Registrar to change the WhoIs data in a letter dated December 29, 2009. 5. Parties' Contentions A. Complainant
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an Amendment to Complaint on January 22, 2010. On the basis of this fact, the Complainant's contentions incorporate also this amendment.
The Complainant introduces that it is the creator and owner of the trademark SPEQ, in particular of German trademark registration No. 301 66 454 for SPEQ with priority of November 16, 2001, and community trademark registration No. 7 509 243 for SPEQ. Respective excerpts from the trademarks registers were attached to the Complaint.
The trademark and trade name SPEQ is extensively used for sporting articles, such as bike helmets and gloves, ski helmets and glasses, motor bicycle helmets, clothing, gloves, sun glasses, swimming glasses, inline skater helmets, protectors and related products since January 1993.
The Complainant contends that the disputed domain name is identical with the Complainant's aforementioned trademark and that it is also identical with the trade name SPEQ of the company name of the exclusive licensee which is solely controlled by the Complainant.
The Complainant argues that the Respondents do not own any trademark, trade name or other rights in the name “Speq” and there is no relationship between the Respondents and the Complainant. Neither are the Respondents a licensee of the Complainant nor have the Respondents otherwise obtained any authorization to use the disputed trademarks and/or trade name. Moreover the Respondents are neither using the disputed domain name, nor have they made any demonstrable preparations to use it in connection with a bona fide offering of goods or services. The only use that can be found is that of parking-site on which click-through-advertisements appear and that there is a consensus view that such use cannot be considered a bona fide offering of goods or services, or a noncommercial of fair use. For the above-cited reasons, the Complainant concludes that the Respondent has no rights or legitimate interests with respect to the disputed domain name.
The Complainant argues that the disputed domain name is designated to attract Internet users who are looking for Complainant's Speq goods, cause confusion with the Complainant's mark, disrupt his business by diverting consumers away from the Complainant's own offers, and do all of these things for commercial gain because the (First) Respondent profits from the revenue generated by the pay-per-click websites it is operating under the disputed domain name. As the Respondents are in complete lack of intellectual property rights in the disputed domain name this further demonstrates bad faith. Where a domain name is so obviously connected to a particular product or service and the registrant is found to have no connection to that product or service, panels regularly find the registrant acting in “opportunistic bad faith”. The Respondents are offering to sell the disputed domain name which further demonstrates that the registration and use of the disputed domain name is clearly in bad faith, with the intent to sell it to the Complainant or its competitors.
The Complainant submits that the last minute deletion and transfer of the disputed domain name from the First Respondent to the Second Respondent constitutes cyberflight. And with reference to Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696, the Complainant is defining cyberflight as “an attempt to avoid or delay judicial or UDRP proceedings by changing domain registration details or registrars after learning of a complaint” and noting that panels have concluded that cyberflight is indicative of registration and use in bad-faith under paragraph 4(b) of the Policy.
The Complainant requests the appointed Panel in this proceeding to issue a decision to the effect that the disputed domain name be transferred to the Complainant. B. Respondents
The Second Respondent in section 3 A. of his Response of February 17, 2010, declares that it does not challenge the fact that the disputed domain name is identical with the Complainant's trademark.
The (Second) Respondent strongly believes that the Complainant may not claim the exclusive right to use his trademarks in the identical domain name for products and services not covered by the classes of International (Nice) Classification of Goods and Services for which the Complainant registered the trademarks, because the Complainant has not proven that the trademark SPEQ has accrued well-known, famous or secondary meaning.
The Respondents argue that bad faith may not be found if the disputed domain name was registered before the trademark. Further, the Respondents argue that the circumstances where a trademark did not exist at the time the disputed domain name was registered, cannot serve as the basis for a claim under the Policy. Moreover, it is submitted, that the Complainant presented no proof that he was doing business under the “Speq” name before registration of the disputed domain name and that the Complainant applied for trademark registration as a physical person not on behalf of the Speq GmbH company. This fact is asserted also to prove that the Complainant was not in position to associate the trademark SPEQ with the trade name of the company which existed at the time domain name was registered. Further, it is submitted that the Complainant presented no proof to his allegation that Speq GmbH is the exclusive licensee of the Complainant and submitted a print-out from what he avers to be the commercial register without complying with an ordinary duty to verify it by the relevant authority, including, that at the date of creation of the disputed domain name he had any links to the company, Speq GmbH or that he would have been one of the founders thereof. Finally, it is submitted that for a long period of time, namely from April 1993 up to November 21, 2001, the Complainant never attempted to register the disputed domain name or, after 2001, contest its ownership. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent 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.
Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant. A. Identical or Confusingly Similar
The Complainant and the Respondents submit that the disputed domain name is identical with the Complainant's trademarks. The disputed domain name consists of a term “speq”, which is identical with the Complainant's trademark. It is a well-established principle that non-distinctive additions to a trademark as well as the inclusion of the gTLD suffix “.com” does not avoid confusing similarity of domain names and trademarks (AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758 and Accor v. Lee Dong Youn, WIPO Case No. D2008-0705).
The Panel finds that the disputed domain name is identical or confusingly similar to the Complainant's registered trademark and that the requirements in paragraph 4(a)(i) of the Policy therefore are fulfilled. B. Rights or Legitimate Interests
The Panel finds that the arguments of the Complainant, namely that the Respondents do not own any trademark, trade name or other rights in the name “Speq” and that there is no relationship between the Respondents and the Complainant, correspond to the facts in this matter. In accordance with the Complainant's submissions, the Panel finds that the Respondent is not affiliated with the Complainant in any way, nor have the Respondents been authorized by the Complainant to register and use the Complainant's trademarks or to seek registration of any domain name incorporating said marks.
The Respondents are not a licensees of the Complainant and did not obtain any authorization to use the trademarks and/or trade name of the Complainant. The Panel notes that the submitted use of the disputed domain name is to display a parking-site on which click-through-advertisements appear. There is a consensus view by previous UDRP panels that such use cannot be considered a bona fide offering of goods or services, or a noncommercial of fair use in circumstances as the ones that are present in this case (Bridgestone Corporation v. Horoshiy, Inc., WIPO Case No. D2004-0795; Deutsche Telekom AG v. Dong Wong,WIPO Case No. D2005-0819).
The Panel notes that the current holder of the disputed domain name, the Second Respondent, is not commonly known under the name “Speq” or any similar term but rather under the name “WebDesignService Ltd.”. Since the disputed domain name is confusingly similar to the Complainant's trademark, and having regard to the overall circumstances of this case, including the transfer of the disputed domain name from the First Respondent to the Second Respondent in the manner established by the case file, the Second Respondent, in this Panel's opinion, cannot reasonably pretend it was intending to develop a legitimate activity, especially where no convincing arguments or proof of such intent has been forwarded by the Second Respondent.
For the above-cited reasons, the Panel finds on balance that the Respondents have no rights or legitimate interests in the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled. C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) sets out certain circumstances which, in particular but without limitation, are to be construed as evidence of both. These include, inter alia, paragraphs 4(b) (i), (ii), (iii) and (iv):
(i) the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is owner of the trademark or service mark or to a competitor of that complaint, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 it has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant's mark as to source, sponsorship, affiliation, or endorsement of its website or of a product on that website.
The Complainant argues that the First Respondent registered the domain name primarily for the purpose of selling the domain name, which would demonstrate that the registration and use of the disputed domain name was in bad faith, with the intent to sell it to the Complainant or its competitors (See VENTURUM GmbH v. Coventry Investments Ltd., DomainCollection Inc.,WIPO Case No. D2003-0405). The Panel accepts the standpoint of the Complainant that the transfer of the disputed domain name from the First Respondent to the Second Respondent constitutes cyberflight as per paragraph 8 of the Policy and that such cyberflight is indicative of bad-faith registration and use (See Fifth Third Bancorp v. Secure Whois Information Service,WIPO Case No. D2006-0696).
In this Panel's opinion, there is no doubt that the Respondents have registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name.
The Panel accepts the arguments of the Complainant, that the disputed domain name causes confusion with the Complainant's mark, and may disrupt his business by diverting consumers away from the Complainant's own offers. The Panel has already found that the Respondents have no rights in the disputed domain name, this further indicates bad faith. Where a domain name is so obviously connected to a particular product or service and the registrant is found to have no connection to that product or service, panels regularly find the registrant's conduct showing “opportunistic bad faith”. The First Respondent offered publicly to sell the disputed domain name which further suggests in the circumstances of this case that the registration and use of the disputed domain name was in bad faith.
Moreover, by using the disputed domain name at one point for pay-per-click advertisement, the First Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's trademark. Such conduct has been found to signal bad faith in other cases (Six Continents Hotels, Inc. v. Ramada Inn,WIPO Case No. D2003-0658).
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.
Ladislav Jakl
Sole Panelist
Dated: March 15, 2010
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