WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Audioline GmbH v. Whois privacy services, provided by DomainProtect/Imena Ltd dba AMPLEA AMACOM Case No. D2010-0468 1. The Parties
Complainant is Audioline GmbH of Neuss, Germany, represented by F P S Rechtsanwälte & Notare, Germany.
Respondent is Imena Ltd. d/b/a Amplea Amacom of Saint Petersburg, Russian Federation. 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 March 26, 2010. On March 26, 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 April 1, 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 Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 16, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on April 20, 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 Respondent of the Complaint, and the proceedings commenced on April 23, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 13, 2010. The Response was filed with the Center on May 13, 2010.
The Center appointed Clark W. Lackert as the sole panelist in this matter on May 28, 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.
The Complaint was submitted in English. According to the response received from the registrar DomReg Ltd. d/b/a LIBRIS.com, the language of the registration agreement for the disputed domain name is Russian. On April 16, 2010, the Center transmitted by e-mail to both parties a communication regarding the language of the proceeding requesting that Complainant provide reasoning by April 19, 2010 as to why the proceedings should be conducted in English. This communication also invited Respondent to submit comments in response to any communication transmitted by Complainant regarding the language of the proceedings by April 21, 2010. On April 16, 2010, Complainant responded to the Center's communication requesting that English be recognized as the language of the administrative proceedings. Since no communication in objection to this request was submitted by Respondent, these proceedings are being conducted in the English language.
On June 7, 2010, Complainant submitted a supplemental filing, namely Comments to the Response. This supplemental filing was acknowledged by the Center on June 9, 2010 and forwarded to the Panel on that date. On June 10, 2010, Respondent submitted a supplemental filing replying to Complainant's Comments to the Response. Respondent's supplemental filing was acknowledged by the Center on June 10, 2010 and forwarded to the Panel on the same date. 4. Factual Background
Complainant is a German company which specializes in the development and manufacturing of consumer electronics. In addition to other goods, Complainant distributes cell phones and landline phones under the trademark AMPLICOM. Phones distributed under the trademark AMPLICOM are designed for easy handling and are recommended for use by handicapped and elderly people.
Complainant is the owner of a German registration for a trademark incorporating AMPLICOM, namely German Registration No. 30 2008 005 314 featuring the AMPLICOM word and design. The mark is registered for the class headings in classes 9 and 38, specifically for the following descriptions of goods and services:
Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus
Class 38: Telecommunications
The application for the German registration was filed on January 28, 2008. The mark was entered into the German register on March 12, 2008 and published on April 11, 2008. The registration has been granted validity through January 31, 2018.
Complainant has also filed a Community Trade Mark application for the same mark for the same goods and services identified above. The Community Trade Mark application was filed on January 24, 2008 and is currently pending.
Respondent is a Russian corporate entity which owns the domain name which was registered on August 25, 2006. 5. Parties' Contentions A. Complainant
Complainant's contentions may be summarized as follows:
The domain name is identical or at least confusingly similar to a trademark in which Complainant has rights.
Complainant has used the trademark AMPLICOM since September of 2008.
The domain name is an address for a website on which Respondent has placed sponsored links to websites featuring identical or at least confusingly similar goods and services.
There is no connection between Complainant and Respondent.
Complainant has not licensed or authorized Respondent to use its trademark.
Respondent has used the domain name to display links to third party websites. This use creates a likelihood of confusion among the public, whereby the average consumer is likely to confuse Complainant's trademark and the domain name. Respondent is not using the domain name in connection with a bona fide offering of goods or services, has acquired no trademark or service mark rights in the disputed domain name, and has not been commonly known by the “Amplicom” name.
Respondent has registered the disputed domain name and is using the disputed domain name in bad faith. Specifically, Respondent has no rights in the disputed domain name and has registered the domain name without commercial purposes, rather only registered the domain name with an intent to sell, rent, or otherwise transfer the domain name to Complainant or another third party in excess of out-of-pocket costs directly related to registration of the disputed domain name. Further, the links featured on Respondent's website are “only fake”, and with the exception of one regarding a notice stating that the registrant is accepting offers from interested parties willing to obtain ownership rights in the disputed domain name. Said notice links to a third party website through which Complainant offered USD 1,000 for purchase of the disputed domain name at some time prior to July 4, 2008. The offer for USD 1,000 was refused in a communication transmitted on July 4, 2008. The communication requested consideration for the disputed domain name which was clearly in excess of Respondent's out-of-pocket costs directly related to the disputed domain name. B. Respondent
Respondent's contentions are as follows:
Respondent acknowledges that the domain name is identical to the trademark of Complainant.
The domain name was registered on August 25, 2006, before the trademark of Complainant was registered.
Respondent is in the process of developing a project named “Amplicom” involving speech recognition products.
Respondent has made legitimate use of the domain name through rendering of file transfer protocol services including granting of rights for accessing various servers and establishing e-mail addresses.
Respondent has used the disputed domain name as a landing page for automatically generated search engine results featuring specific keywords and phrases for indexing by search engines. This use was terminated when Respondent found that the pay-per-click advertising campaign had “proved to be commercially unsuccessful and technically out of control of the Respondent”.
Respondent has never intentionally or unintentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other online location by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location.
Respondent outsourced responsibility for negotiation of potential sale of the domain name to a third party, namely S, LLC.
Respondent uses the disputed domain name for rendering services other than those covered by Complainant's trademark registration.
Complainant's initiation of a UDRP proceeding amounts to an attempt of reverse hijacking of the disputed domain name. 6. Discussion and Findings
The Panel has reviewed the Complaint and the Response, the documents annexed to the Complaint and the material filed with the Response, and the supplemental filings. Set forth below are the Panel's findings. A. Identical or Confusingly Similar
The Panel finds the domain name is identical to the AMPLICOM trademark owned by Complainant.
Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The domain name was registered on August 25, 2006, roughly 2 years prior to the Complainant's trademark registration. Respondent claims that legitimate efforts have been made to initiate use of the disputed domain name in connection with the offering of scientific research dedicated to speech recognition. In support of these claims, Respondent has filed documents evidencing potential commercialization. This evidence demonstrates that preparations were made by Respondent to use the disputed domain name in connection with a bona fide offering of goods and services before notice of the dispute was received.
Complainant has alleged that Respondent's use of the disputed domain name has not been bona fide, providing evidence of past use of the domain name having displayed sponsored links, which upon review included links relating to computer games, software downloads, watches, human hormonal supplements, employment, and credit cards. This use is acknowledged by Respondent, which emphasizes that the featured links were auto-generated and that such use was temporary and discontinued due to a lack of control and commercial success. Websites displaying sponsored links have been regarded as illegitimate use of a domain name when there is evidence that the links displayed are efforts to trade off the goodwill of an established trademark. See, e.g., Champagne Lanson v. Development Services/MailP, Inc., WIPO Case No. D2006-0006 (sponsored links landing page not legitimate where advertisements are directly related to the trademark value of the domain name); The Knot, Inv. v. In Knot We Trust LTD, WIPO Case No. D2006-0340 (similar opinion); Brink's Network, Inc. v. Asproductions,WIPO Case No. D2007-0353 (similar opinion). There is no evidence in this record that Respondent's monetization efforts were attempts to trade off Complainant's trademark.
Nevertheless, the Panel need not make a finding under that element, in light of its below discussion and finding. C. Registered and Used in Bad Faith
The domain name was registered on August 25, 2006, well before Complainant's acquisition of rights in the AMPLICOM mark in 2008. Thus, on the record before it, the Panel is not persuaded that there was sufficient indicia of registration in bad faith at the time of the registration of this disputed domain name, especially as the trademark did not even exist at that moment. See, e.g., E-Duction, Inc. v. Zuccarini, d/b/a The Cupcake Party & Cupcake Movies,WIPO Case No. D2000-1369; Digital Vision, Ltd. v. Advanced Chemill Systems,WIPO Case No. D2001-0827; PrintForBusiness B.V v. LBS Horticulture,WIPO Case No. D2001-1182, and John Ode dba ODE and ODE - Optimum Digital Enterprises v. Intership Limited,WIPO Case No. D2001-0074. Moreover, in this Panel's view, a domain name registration registered in good faith cannot be deemed in bad faith later on due to changing circumstances. Accord, Telaxis Communications Corp. v. William E. Minkle,WIPO Case No. D2000-0005.
Accordingly, the Panel finds that Complainant has not satisfied the requirements of paragraph 4(a)(iii) of the Policy. D. Reverse Domain Name Hijacking
In view of the decision in this proceeding, the Panel need not decide on Respondent's claim of reverse domain name hijacking. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel finds that Complainant has not met all of the requirements of the UDRP. Thus, Complainant's request to transfer the domain name to Complainant is denied.
Clark W. Lackert
Sole Panelist
Dated: June 11, 2010
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