WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Ruff GmbH v. Private Registrations Aktien Gesellschaft Case No. D2010-0434 1. The Parties
The Complainant is Ruff GmbH of Grafing, Germany, represented by Heussen Rechtsanwaltsgesellschaft mbH, Germany.
The Respondent is Private Registrations Aktien Gesellschaft of Kingstown, Saint Vincent and the Grenadines. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 22, 2010. On March 22, 2010, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On the same date, Network Solutions, 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 March 29, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 18, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 20, 2010.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on April 2 9, 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
The Complainant is a German limited liability company incorporated in 2008 which has its origins in a private limited partnership established in 1948. The Complainant supplies table, bench and floor toroidal winding machines to more than 800 customers in over 65 countries. In 1995, the Complainant founded a subsidiary company named RUFF, Inc. to conduct business on its behalf in the United States of America. The disputed domain name was registered on June 5, 1997 and was originally used by RUFF, Inc. for a website to promote sales of the Complainant's products in the Americas. In 2008 RUFF, Inc. was closed following disputes between its CEO and the Complainant. The Complainant subsequently noticed that the disputed domain name had been transferred to the Respondent. The Complainant had not consented to this transfer.
As at the date of this Decision, the disputed domain name resolves to a website carrying hyperlinks leading to further “sponsored links” to websites featuring information about vendors of products in competition with the products of the Complainant. The website also has a heading which carries an email link bearing the question “Are you interested in buying this domain name?”
The Complainant is the owner of the following trademarks for the word mark RUFF:
- Community Trademark no. 002319481, registered on October 2 4, 2002;
- German Trademark no. 30146077, registered on November 2 6, 2001; and
- International trademark registration no. 775465, registered on January 2 9, 2002. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to trademarks in which it owns rights; that the Respondent has no right or legitimate interest in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The annex “-inc” in the disputed domain name is an abbreviation for incorporated which refers to the legal form of a corporation. The addition of this annex to the Complainant's trademark is not sufficient to avoid confusion.
The Respondent has not been licensed by the Complainant to use the Complainant's trademark, is not commonly known by the disputed domain name and is not using the disputed domain name in connection with a bona fide offering of goods or services.
The Respondent is using the disputed domain name intentionally to attempt to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant's trademark as to the products and services on the website. The Respondent has acquired the disputed domain name for the purpose of disrupting the business of the Complainant. Between 1997 and 2008, the Complainant promoted and distributed its products using the website accessible under the disputed domain name. The disputed domain name is still well-known by the Complainant's customers.
The disputed domain name has been registered in order to prevent the Complainant from reflecting the trademark in a corresponding domain name. Shortly after the Complainant's decision to set up a new website for RUFF, Inc., the disputed domain name was transferred to the Respondent. The Respondent has engaged in a pattern of such conduct.
The Complainant believes that the disputed domain name was registered or acquired primarily for the purpose of selling it to the Complainant for valuable consideration. The Complainant was planning to set up a new subsidiary company under the name RUFF, Inc. and to set up a new website under the disputed domain name. It was obvious that the Complainant would need the disputed domain name for this purpose. However, shortly after this decision, the disputed domain name was transferred from the former CEO of the closed subsidiary company to the Respondent. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in Paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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. A. Identical or Confusingly Similar
The Panel notes that the disputed domain name incorporates the Complainant's trademark in its entirety together with the suffix “-inc”. This suffix is commonly used to denote a corporation formed under the laws of the United States of America. The Panel considers that the suffix is generic in nature and is insufficient to distinguish the disputed domain name from the Complainant's trademark. The dominant part of the disputed domain name is the Complainant's trademark. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant's RUFF trademark and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
It is worth adding that while the disputed domain name was registered in 1997 and the trademarks cited by the Complainant were registered in 2001 and 2002, paragraph 4(a)(i) of the Policy does not require that the trademarks be registered prior to the disputed domain name. The fact that the disputed domain name predates the Complainant's trademark registrations may only be relevant to the assessment of bad faith pursuant to paragraph 4(a)(iii), which is considered below. This approach has been adopted in numerous cases under the Policy and is clearly expressed in paragraph 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name:
“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 non-commercial 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 consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case against the respondent.
The Complainant has asserted that the Respondent is not commonly known by the disputed domain name, and has not been given any licence or other authorization to use the Complainant's trademark therein. The Complainant has also provided evidence that the website associated with the disputed domain name has been used to publish sponsored links for third party websites, where the links promote various goods or services of the Complainant's competitors. It is well established that this type of use of a domain name, which in effect trades off the Complainant's reputation and trademark, offering competing goods and services, is not bona fide and it is clear to the Panel that the Respondent's use of the disputed domain name in this manner cannot confer any rights or legitimate interests upon it.
In these circumstances the Panel is satisfied that the Complainant has made out a prima facie case in terms of paragraph 4(a)(ii) of the Policy. The Respondent has chosen neither to explain its conduct nor to set out evidence of any rights or legitimate interests in respect of the disputed domain name. In these circumstances, the Panel finds that the Complainant has proved that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, 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”.
The Panel notes that the website to which the Respondent has pointed the disputed domain name clearly targets the Complainant's rights in its RUFF trademark. There are a considerable number of hyperlinks on the website which advertise products in competition with those manufactured by the Complainant. In the Panel's view, the Respondent's use of the disputed domain name constitutes an attempt on the part of the Respondent to attract Internet users to its website, for commercial gain, by creating a likelihood of confusion with the Complainant's mark. In these circumstances, the Panel is satisfied on the balance of probabilities that the disputed domain name has been used in bad faith.
A separate issue arises in connection with the Panel's consideration of registration in bad faith. The disputed domain name was originally registered by or on behalf of the Complainant's United States subsidiary corporation in 1997. It appears to have been continuously renewed since that date and the original registration was evidently made in good faith. However, in the Panel's view this does not preclude a finding of registration in bad faith if, as is demonstrated by the evidence in the present case, the disputed domain name has been subject to a transfer. Such transfers can be treated as equivalent to a new registration of the domain name concerned.
This situation is envisaged by paragraph 3.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions which states:
“While the transfer of a domain name to a third party does amount to a new registration, a mere renewal of a domain name does not amount to registration for the purposes of determining bad faith. Registration in bad faith must occur at the time the current registrant took possession of the domain name.”
Accordingly, in the present case, the question of registration in bad faith falls to be decided as at the time that the Respondent took possession of the disputed domain name and not at the original date of registration. The timing of the transfer to the Respondent is not entirely clear on the evidence and the Complainant does not give a precise date, although the Panel appreciates that this may have been difficult to identify. Nevertheless, the Panel considers that it is reasonable to infer that the transfer must have been effected during or after 2008 because the Complainant asserts that it took place at some point following the closure of its United States subsidiary corporation.
By 2008, the Complainant's distinctive trademark had been registered for a substantial period and had been in continuous use for all of that time. Furthermore, the Complainant's United States subsidiary had been trading online under the name RUFF, Inc., and had been employing the disputed domain name for that purpose, for more than a decade. In these circumstances, the Panel considers that it is reasonable to infer that the Respondent had the Complainant's trademark in mind when it acquired the disputed domain name and that it intended to target the Complainant's rights by way of the advertising links described above and also primarily by offering the disputed domain name for sale either to the Complainant or one of its competitors for valuable consideration in excess of the Respondent's documented out of pocket costs. The Respondent, in choosing not to file a Response in these proceedings, has provided no evidence of any good faith intent or suitable explanation for its conduct. In these circumstances the Panel is satisfied that the Respondent was acting in bad faith at the time that it took possession of the disputed domain name and thus that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied (in the absence of any Response, the Panel accepts the Complainant's uncontested factual assertion in this regard). 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.
Andrew D. S. Lothian
Sole Panelist
Dated: May 10, 2010
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