WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION PLAN.NET Agenturgruppe für digitale Kommunikation GmbH & Co. KG v. Patrizia Colonnelli Case No. D2010-0671 1. The Parties
The Complainant is PLAN.NET Agenturgruppe für digitale Kommunikation GmbH & Co. KG of München, Germany, represented by CMS Hasche Sigle, Germany.
The Respondent is Patrizia Colonnelli of Rome, Italy. 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 April 28, 2010. On April 28, 2010, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On April 28, 2010, Network Solutions, LLC transmitted by email to the Center its verification response confirming that 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 May 4, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 24, 2010. The Response was filed with the Center on May 24, 2010.
The Center appointed Dennis A. Foster as the sole panelist in this matter on June 2, 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 part of a large German advertising agency group and has operated since 1997. Along with other European registrations for the same mark, the Complainant owns a Community Trade Mark (“CTM”) registration for the mark, PLAN NET (Registration No. 001335280; issued July 7, 2003).
The Respondent has submitted proof the disputed domain name, , was initially registered on June 3, 1998. The Respondent is co-owner of an Italian company named “Plannet sas”, which was formed in 1998, and obtained an Ufficio Italiano Brevetti E Marchi (“UIBM”) trademark registration for PLANNET (Registration No. 002148; issued April 29, 1998). 5. Parties' Contentions A. Complainant
The Complainant, Plan.Net, was established in 1997 as a German advertising agency. It was the first such agency in Germany to provide services online. As part of a German advertising agency Group that contains 30 companies and nearly 1000 employees, the Complainant helps to support customers in 27 countries, including Italy, where the Respondent resides. The group is the third largest advertising agency in Europe.
The Complainant owns a CTM trademark for the mark PLAN NET as well as other European country trademark registrations for the same mark.
The disputed domain name, , is identical to the Complainant's registered trademarks. That name contains the same two crucial elements, “Plan” and “Net”, in the same order. The addition of a hyphen and the gTLD, “.com”, are of no consequence in this analysis.
The Respondent has no rights in the mark, PLAN-NET, and there are no European country trademark registrations for that mark. The Complainant has granted the Respondent no consent to use the Complainant's PLAN NET mark.
The Respondent has no legitimate interest in the disputed domain name as evidenced by its non-use. There is no content to be found at that domain name and for months it has been inaccessible.
The disputed domain name was registered and is being used in bad faith.
The Respondent exhibited bad faith at the time of acquisition of the disputed domain name in 2008. Because CTM trademarks are applicable and easily searched throughout Europe, including Italy, the Respondent must have been aware of the Complainant's trademark at that time. Even without conducting a trademark search, the Respondent must have been aware of the Complainant's mark because of its broad recognition throughout Europe.
Despite several attempts by telephone and through email, the Complainant could not contact the Respondent. That failure to react by the Respondent demonstrates his knowledge of his trademark violation, and is evidence of bad faith.
The Respondent's failure to actively use the disputed domain name demonstrates that the only purpose of the Respondent's ownership is to withhold the disputed domain name from the Complainant. Once again, this passivity is evidence of bad faith use of the disputed domain name. B. Respondent
The Respondent is co-owner of an Italian company named “Plannet sas”, which duly registered the trademark PLANNET with the UIBM on April 29, 1998. That registration was renewed on October 24, 2008.
On June 3, 1998, the Respondent registered the disputed domain name, , for use on behalf of her company. Thus, the Respondent has a legitimate interest in said name. 6. Discussion and Findings
Policy paragraphs 4(a)(i) – (iii) provide that, in order to prevail in this proceeding and obtain a transfer of the disputed domain name , the Complainant must show that:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has presented the Panel with concrete evidence (Complaint Annex 5) of the Complainant's valid CTM trademark registration for the mark PLAN NET. The Panel judges such evidence to be sufficient to establish the Complainant's rights in that mark. See, PartyGaming Plc., PartyGaming IA Limited v. Harry Thomas,WIPO Case No. D2008-1275 (“…Complainant PGIA owns a Community Trade Mark registration for the GAMEBOOKERS mark…The Panel therefore finds that…Complainant “has rights” in the trademark in the sense to which Policy paragraph 4(a) refers.”); and Pirelli & C. S.p.A. v. Were ,LLC, NAF Claim No. FA938180 (“…Complainant has a single CTM registration for the identical trademark ZERO…The Panel therefore finds that Complainant has established trademark rights in ZERO…”).
The disputed domain name, , varies only slightly from the Complainant's mark. The minor differences are the addition of a hyphen between the two terms of the mark and the gTLD, “.com”. These minor differences might negate a finding of identity between the name and the mark but, in the opinion of the Panel, they certainly do not effectively mitigate a finding that the name is confusingly similar to the mark. See Anastasia International Inc. v. Domains by Proxy Inc./rumen kadiev,WIPO Case No. D2009-1416 (finding confusingly similar to the mark ANASTASIA INTERNATIONAL, and opining “[i]n comparing this mark to the disputed domain name, the Panel has disregarded…the hyphen in the disputed domain name…”); and VeriSign, Inc. v. Onlinemalls,WIPO Case No. D2000-1446 (finding and to be confusingly similar to VERISIGN, the panel stated “[t]he addition of the generic top-level domain (gTLD) “.com” is without legal significance from the standpoint of comparing the disputed domain names to [the complainant's mark] since use of a gTLD is required of domain name registrants…”).
In line with the analysis above, the Panel finds that the Complainant has proven that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. B. Rights or Legitimate Interests
Although not intended to be exhaustive of the ways in which a respondent may establish its rights in a disputed domain name, the Policy in paragraph 4(c) sets forth three avenues by which a respondent might do so, as follows:
(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.
In this case, the Complainant has contended without contradiction from the Respondent that the Respondent has made no use of the disputed domain name for many years. Moreover, the Respondent has provided the Panel with no evidence of the Respondent's preparations to use the name. As a result, the Panel can rule out quickly the application of either subparagraphs (i) or (iii) above.
With respect to subparagraph (ii), the Respondent has not averred explicitly that her company has been or is commonly known as the disputed domain name. However, the Panel does not have to stretch its imagination too far to believe that the company that the Respondent owns, “Plannet sas” (Response Annex 1), might be known as or some close variation. The names are very close in spelling and phonics. However, the Panel is not required to reach a decision on the application of this subparagraph, as explained below.
The Policy does not limit the Panel to the consideration of the criteria enumerated in paragraph 4(c) in determining whether the Respondent has rights or legitimate interests in the disputed domain name. In this case the Respondent provided the Panel with compelling evidence (Response Annex 2) that her company obtained a UIMB trademark registration for the mark, PLANNET, less than two months before registration of the disputed domain name. The close association between that mark and the disputed domain name convinces the Panel that the Respondent would have a legitimate interest in registering that name, whether or not she ever actually used the disputed domain name or became commonly known by said name.
The Complainant has the burden of showing that the Respondent did not have such a legitimate interest, but nowhere in the Complaint is the issue of the Respondent's UIBM trademark registration addressed directly. The Complainant claims that the Respondent owns no European country trademark registration for the mark, PLAN-NET, but does not consider the Respondent's UIBM registration for the mark, PLANNET. The Complainant contends that the Respondent acquired ownership of the disputed domain name in 2008, not in 1998 as claimed by the Respondent. However, even if accepted by the Panel, this latter contention does not negate the Respondent's legitimate interest in obtaining a domain name, , that is so close in spelling and look to the Respondent's Italian trademark, PLANNET, and company name, “Plannet sas”. In sum, the Complainant's contentions fall far short of sustaining a compelling case that the Respondent has no legitimate interests in the disputed domain name.
In conclusion, the Panel finds that the Complainant has failed to carry its burden to show that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Although not required to consider whether the disputed domain name was registered or being used in bad faith due to the Complainant's failure to satisfy the preceding Policy element, the Panel will opine that the Complainant would also fail to prove that the disputed domain name was registered in bad faith, as the Respondent has submitted believable evidence to the Panel that such registration preceded the registration of the Complainant's trademark and occurred within a year of the Complainant's inception. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Dennis A. Foster
Sole Panelist
Dated: June 16, 2010
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